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The 2nd U.S. Circuit Court of Appeals last fall declined to permit a golf supplier to use the term “swing” to describe what is done with a golf club. Sound unlikely? In its opinion, the court considered whether the phrase “swing, swing, swing” in a commercial for golf clubs, where three golfers practice to the tune of swing music from the 1930s evocative of the legendary Benny Goodman tune, constituted trademark infringement. The facts of the case and the 2nd Circuit’s decision bears repeating even if the word “swing” doesn’t. The court’s decision should be considered in the context of the limited jurisprudence on the “fair use” defense under trademark law. In EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56 (2nd Cir. 2000), the issue was whether a commercial for golf supplies that utilized the mantra “swing, swing, swing” in combination with background swing music (though not the song “Swing, Swing, Swing” itself) constituted infringement of the trademark “Swing, Swing, Swing” (though not the song) under Section 43(a) of the Lanham Act. The defendant argued it was instead a permissible “fair use” as defined in 15 U.S.C. Section 1115(b)(4). The district court granted summary judgment to the defendant golf supplier, holding that the use of the phrase constituted fair use both because it was “doubly descriptive” of the sport and the music and because there was no bad faith or intent to misappropriate EMI’s good will in the song’s title. On appeal, the 2nd Circuit conducted its own fair-use analysis and reversed the district court. The Lanham Act defines a “fair use” of a trademark as “a use, otherwise than as a mark, … which is descriptive of and used fairly and in good faith only to describe the goods or services.” 15 U.S.C. Section 1115(b)(4). “The fair use doctrine permits use of a protected mark by others to describe certain aspects of the user’s own goods.” EMI, supra. Relevant factors are “physical nature of the use in terms of size, location, and other characteristics in comparison with the appearance of other descriptive matter or other trademarks.” Id.(citing Restatement (Third) of Unfair Competition Section 28 cmt. c (1995)). Significantly, the EMIcourt focused on the repetition of the term “swing.” “Although ‘swing’ undoubtedly describes both the action of using a golf club and the style of music used in the soundtrack … it was error to rule that the alliterative phrase actually used was necessarily identical to the single descriptive word. … Spalding hopes individual consumers will ‘swing’ its irons, presumably after having ‘bought’ them, not ‘swing swing swing’ its irons,” the court wrote. The EMI court also noted that while the “good faith” requirement has not been litigated frequently, “bad faith” has been equated with the subsequent user’s intent to trade on the good will of the trademark holder by creating confusion as to source or sponsorship. The court relied on considerations of “good faith” as one of the factors in the “likelihood of confusion analysis.” See Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503-04 (2nd Cir. 1996); Gruner & Jahr USA Publ’g v. Meredith Corp., 991 F.2nd 1072, 1078 (2nd Cir. 1993). In light of the dearth of interpretations of good faith in the fair-use context, the court held that “because the good faith inquiry in a fair use analysis necessarily concerns the question whether the user of a mark intended to create consumer confusion as to source or sponsorship, we think that the same contextual considerations apply to a court’s analysis of good faith in the fair use defense to a claim under Section 43(a).” It reversed the grant of summary judgment, holding that the district court had erred by failing to adequately consider whether the use of stock swing music in conjunction with the phrase “swing swing swing” was probative of good faith. Specifically, the 2nd Circuit found that the plaintiff had presented evidence that Spalding originally intended to trade on the goodwill of the song by paying for a license, but simply blanched at the high cost of licensing. Why was the 2nd Circuit, which has rendered most of the rulings on fair use under Section 1115(b)(4), so hard on the user of an admittedly descriptive term? Perhaps because the 2nd Circuit is in the minority in finding that it really is an absolute defense. The majority of courts, including the 9th Circuit, have espoused the view that it is inconsistent to find both a “likelihood of confusion” and “fair use.” See1 J. McCarthy, Trademarks and Unfair Competition Section 11.47, at 85-86 (1999). They thus incorporate another requirement into the fair-use defense: proving no likelihood of confusion, even though the Lanham Act has no such requirement. See, e.g., Playboy Enterprises, Inc. v. Terri Welles, Inc., 78 F.Supp. 2nd 1066, 1074 (S.D.Cal. 1999). Witness the 2nd Circuit’s previous treatment of the issue in the high-stakes world of health and beauty aids. In Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28 (2nd Cir. 1997), the court found that “Seal it with a kiss” was a fair use of the registered trademark “SEALED WITH A KISS.” “The challenged phrase … is a clear instance of a non-trademark use of words in their descriptive sense. The phrase conveys the instruction to seal by kissing the complimentary postcard to signify the amorous sentiment conveyed to the recipient of the card. Though the words “Seal it with a Kiss” do not describe a characteristic of the defendants’ product, they surely are used in their ‘descriptive sense’ – to describe an action that the sellers hope consumers will take, using their product,” the Cosmetically Sealedcourt wrote, ( citingRestatement (Third) of Unfair Competition Section 28 cmt. c (1995)). The plaintiff in that suit was forced to kiss its claim goodbye. The 2nd Circuit remained didactic: “The defendants’ phrase is assuredly close to the plaintiff’s mark SEALED WITH A KISS, differing only in the use of the imperative mood ‘seal,’ rather than sealed,’ and the addition of the objective pronoun it.’ If any confusion results, that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase.” The 2nd Circuit dealt plaintiffs another blow in Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267 (2nd Cir. 1995). The defendant’s line of air fresheners known as “Plug-ins” included a “Holiday Pine Potpourri” plug-in during the Christmas season. The plaintiff claimed that the pine tree shaped plug-in freshener violated its trademark rights in a pine-tree-shaped air freshener and its mark “Little Tree.” The 2nd Circuit reversed the district court’s holding that the “fair use” concept could not apply where the plaintiff’s mark is suggestive, not descriptive. While noting that there was authority for that position, the court said, “we believe that notion is misguided. It is true that the doctrine can apply only to marks consisting of terms or images with descriptive qualities. … What matters is whether the defendant is using the protected word or image descriptively, and not as a mark.” The defendant’s use of a pine tree to describe the pine scent of its product and to indicate the season in which it was sold was good enough for the 2nd Circuit. It is significant that the 2nd Circuit has staked out a different position from that of most circuits on the “fair use” defense. Its minority view that a finding of fair use precludes a finding of infringement even if there is a likelihood of confusion could mean dire consequences for a plaintiff with a descriptive mark. Remember the admonition: “If any confusion results, that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase.” Cosmetically Sealed, 125 F.3d at 30. Potential plaintiffs brandishing a descriptive mark with secondary meaning in the 2nd Circuit are forewarned — a defendant who uses the mark to describe and exhibits no tell-tale signs of bad faith may walk away unscathed from evidence that it caused confusion in the marketplace. Claire Ann Fitzgerald is a senior associate at the law firm of Duane Morris & Heckscherwho practices in the area of commercial litigation, including intellectual property litigation.

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