'Beach Boys' Ruling Demonstrates Complexity Of Fair-Use Trademark Infringement Defense

The nominative fair-use defense applies in cases in which the defendant uses the plaintiff's mark to describe the plaintiff's product, even if the defendant ultimately intends to describe its own product.

The distinction between these two defenses was at the heart of a recent ruling by the U.S. Court of Appeals for the Ninth Circuit over rights in 'The Beachboys' trademark. Brother Records Inc. (BRI) v. Jardine, 01-57095 (Jan. 28). The court's decision illustrates the confusion that may arise in applying the two tests.

The Beach Boys' intellectual property rights are held by BRI, which was formed in 1967. BRI today is equally owned by original Beach Boys members Al Jardine, Mike Love, Brian Wilson and the estate of Carl Wilson. After Carl Wilson died, a majority of BRI's board voted in 1998 to grant each Beach Boys member a non-exclusive license to use the band name. Mike Love then negotiated a license from BRI to use the Beach Boys name for his band in exchange for preserving the Beach Boys style, working from a BRI-approved list of agents and managers, and paying a license fee of 20% of the first $1 million earned and 17.5% of income thereafter.

Al Jardine also began touring, but as the unlicensed 'Beach Boys Family and Friends.' When BRI protested, Jardine offered to pay a 5% royalty on the first $1 million of gross revenues and 17.5% after that. Jardine also said that he would use an agent and a manager not on the BRI-approved list. BRI's board rejected Jardine's proposal, but he continued to tour under such names as 'Al Jardine of the Beach Boys and Family & Friends,' 'The Beach Boys 'Family and Friends,” 'The Beach Boys, Family & Friends,' 'Beach Boys and Family' and 'The Beach Boys.' When BRI sued Jardine in the U.S. District Court for the Central District of California, the district court issued a preliminary injunction that barred Jardine from using 'The Beach Boys' name other than to describe his past association with the group.

Affirming, the 9th Circuit first noted that Jardine claimed that he was protected by either the classic fair-use defense or the nominative fair-use defense. Jardine's reasoning was that his use of 'The Beach Boys' mark not only described the Beach Boys' product, per the nominative fair-use test, but also that his use of 'The Beach Boys' mark described only himself ' given that he was a founding Beach Boys member ' per the classic fair-use test.

But the appeals court emphasized, 'Where the defendant uses his or her own title, which happens also to be plaintiff's trademark, defendant can argue convincingly both that the use refers to defendant and that the use refers not at all to defendant. In these situations, the reference-to-trademark-holder distinction often proves more frustrating than helpful.' Rather than deciding which category Jardine's use fell into, the court decided to analyze his fair-use claim under both the nominative and classic fair-use tests.

On the classic fair-use test, the 9th Circuit noted that Jardine had not used 'The Beach Boys' in its primary descriptive sense of 'boys who frequent a stretch of sand beside the sea.' Instead, Jardine had used the band name in its secondary meaning of the band whose music helped popularized California surfing culture. 'This is true regardless of whether Jardine's use of the mark refers to Jardine himself or to the band,' the court stated, concluding, '[b]ecause Jardine does not use the mark in its primary, descriptive sense, the classic fair use defense does not apply.' (The classic fair-use defense also doesn't apply if there is a likelihood of consumer confusion, an issue that Jardine didn't contest.)

For the nominative fair-use analysis, the 9th Circuit uses a three-part test from New Kids on the Block v. News Am. Publ'g Inc., 971 F.2d 302 (9th Cir. 1992). Under this test, the product or service at issue must not be readily identifiable without use of the mark, the defendant may use only as much of the mark as is reasonably necessary to identify the product or service, and the defendant cannot use the mark so as to suggest sponsorship or endorsement by the trademark owner.

Jardine met the first prong of this test because it would be 'virtually impossible to refer to the Beach Boys without using the trademark,' the appeals court noted. Jardine also met the second prong because BRI hadn't alleged that he used 'any distinctive logo 'or anything else that isn't needed' to identify the Beach Boys.' However, Jardine failed the third prong and thus the nominative fair-use test because promotional materials for his concerts featured 'The Beach Boys' more prominently than the words 'Family and Friends,' thus suggesting that The Beach Boys sponsored Jardine's shows.

The appeals court went on to note: 'Also, there is evidence that Jardine uses 'The Beach Boys' trademark to suggest that his band is in fact sponsored by the Beach Boys, as Jardine's management testified that they recommended including the trademark 'The Beach Boys' in the name of Jardine's band in order to create or enhance marquee value. Finally, Jardine's use of the trademark caused actual consumer confusion, as both event organizers that booked Jardine's band and people who attended Jardine's shows submitted declarations expressing confusion about who was performing.'

The Ninth Circuit and other federal appeals courts have developed a line of rulings on fair use in trademark infringement cases. But the BRI decision serves as a reminder that fair use claims in such suits are not easy to analyze for either the courts or the parties involved.

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance. He is also an entertainment attorney, chair of Music & Entertainment Industry Studies at the University of Colorado at Denver, and author of the book 'The Fought the Law: Rock Music Goes to Court.' Web site: http://www.theyfoughtthelaw.com/;

The entertainment industry, based on building brand-name content and entities, has a long history of disputes over trademarks. Yet it may be unclear to a court how a defendant in a trademark infringement action intends to use a fair-use defense.

In general, trademarks are grouped on a scale of increasing protection, based on their level of distinctiveness. Generic terms are those with broad-based meanings, such as the word 'movie,' and don't qualify as trademarks. The scale moves up to descriptive marks, which directly describe the quality or characteristics of goods or services, such as 'Loud Music,' in relation to their use as marks. These generally aren't protectible unless they acquire secondary meaning. Suggestive marks are those with an imaginative element, like 'Larkspark Record Productions,' that may be protected without a secondary meaning. Next, arbitrary marks are based on common words that are inherently distinctive, such as 'A-Plus.' The less these marks are used by others, the greater protection they receive. At the top of the scale are fanciful marks, like 'Kodak,' which are new terms created as an exclusive property right.

A defendant in a trademark infringement action may raise two types of fair-use defenses. The classic fair-use defense, set forth in the federal Lanham Act at 15 U.S.C. Sec. 1115(b)(4), applies where a defendant uses a plaintiff's mark to describe only the defendant's product. Section 1115(b)(4) states that 'the use of the name, term or device charged to be an infringement is a use, otherwise than as a mark … of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.' The classic fair-use defense applies to marks that have both primary and secondary meaning, but, as Sec. 1115(b)(4) notes, are used by a defendant only in their primary descriptive sense.

The nominative fair-use defense applies in cases in which the defendant uses the plaintiff's mark to describe the plaintiff's product, even if the defendant ultimately intends to describe its own product.

The distinction between these two defenses was at the heart of a recent ruling by the U.S. Court of Appeals for the Ninth Circuit over rights in 'The Beachboys' trademark. Brother Records Inc. (BRI) v. Jardine, 01-57095 (Jan. 28). The court's decision illustrates the confusion that may arise in applying the two tests.

The Beach Boys' intellectual property rights are held by BRI, which was formed in 1967. BRI today is equally owned by original Beach Boys members Al Jardine, Mike Love, Brian Wilson and the estate of Carl Wilson. After Carl Wilson died, a majority of BRI's board voted in 1998 to grant each Beach Boys member a non-exclusive license to use the band name. Mike Love then negotiated a license from BRI to use the Beach Boys name for his band in exchange for preserving the Beach Boys style, working from a BRI-approved list of agents and managers, and paying a license fee of 20% of the first $1 million earned and 17.5% of income thereafter.

Al Jardine also began touring, but as the unlicensed 'Beach Boys Family and Friends.' When BRI protested, Jardine offered to pay a 5% royalty on the first $1 million of gross revenues and 17.5% after that. Jardine also said that he would use an agent and a manager not on the BRI-approved list. BRI's board rejected Jardine's proposal, but he continued to tour under such names as 'Al Jardine of the Beach Boys and Family & Friends,' 'The Beach Boys 'Family and Friends,” 'The Beach Boys, Family & Friends,' 'Beach Boys and Family' and 'The Beach Boys.' When BRI sued Jardine in the U.S. District Court for the Central District of California, the district court issued a preliminary injunction that barred Jardine from using 'The Beach Boys' name other than to describe his past association with the group.

Affirming, the 9th Circuit first noted that Jardine claimed that he was protected by either the classic fair-use defense or the nominative fair-use defense. Jardine's reasoning was that his use of 'The Beach Boys' mark not only described the Beach Boys' product, per the nominative fair-use test, but also that his use of 'The Beach Boys' mark described only himself ' given that he was a founding Beach Boys member ' per the classic fair-use test.

But the appeals court emphasized, 'Where the defendant uses his or her own title, which happens also to be plaintiff's trademark, defendant can argue convincingly both that the use refers to defendant and that the use refers not at all to defendant. In these situations, the reference-to-trademark-holder distinction often proves more frustrating than helpful.' Rather than deciding which category Jardine's use fell into, the court decided to analyze his fair-use claim under both the nominative and classic fair-use tests.

On the classic fair-use test, the 9th Circuit noted that Jardine had not used 'The Beach Boys' in its primary descriptive sense of 'boys who frequent a stretch of sand beside the sea.' Instead, Jardine had used the band name in its secondary meaning of the band whose music helped popularized California surfing culture. 'This is true regardless of whether Jardine's use of the mark refers to Jardine himself or to the band,' the court stated, concluding, '[b]ecause Jardine does not use the mark in its primary, descriptive sense, the classic fair use defense does not apply.' (The classic fair-use defense also doesn't apply if there is a likelihood of consumer confusion, an issue that Jardine didn't contest.)

For the nominative fair-use analysis, the 9th Circuit uses a three-part test from New Kids on the Block v. News Am. Publ'g Inc. , 971 F.2d 302 (9th Cir. 1992). Under this test, the product or service at issue must not be readily identifiable without use of the mark, the defendant may use only as much of the mark as is reasonably necessary to identify the product or service, and the defendant cannot use the mark so as to suggest sponsorship or endorsement by the trademark owner.

Jardine met the first prong of this test because it would be 'virtually impossible to refer to the Beach Boys without using the trademark,' the appeals court noted. Jardine also met the second prong because BRI hadn't alleged that he used 'any distinctive logo 'or anything else that isn't needed' to identify the Beach Boys.' However, Jardine failed the third prong and thus the nominative fair-use test because promotional materials for his concerts featured 'The Beach Boys' more prominently than the words 'Family and Friends,' thus suggesting that The Beach Boys sponsored Jardine's shows.

The appeals court went on to note: 'Also, there is evidence that Jardine uses 'The Beach Boys' trademark to suggest that his band is in fact sponsored by the Beach Boys, as Jardine's management testified that they recommended including the trademark 'The Beach Boys' in the name of Jardine's band in order to create or enhance marquee value. Finally, Jardine's use of the trademark caused actual consumer confusion, as both event organizers that booked Jardine's band and people who attended Jardine's shows submitted declarations expressing confusion about who was performing.'

The Ninth Circuit and other federal appeals courts have developed a line of rulings on fair use in trademark infringement cases. But the BRI decision serves as a reminder that fair use claims in such suits are not easy to analyze for either the courts or the parties involved.

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance. He is also an entertainment attorney, chair of Music & Entertainment Industry Studies at the University of Colorado at Denver, and author of the book 'The Fought the Law: Rock Music Goes to Court.' Web site: http://www.theyfoughtthelaw.com/;