A Look Back at <i>New Kids on the Block</i> : Ninth Circuit Expands the Nominative Fair Use Doctrine

Trademark fair use under the common law and '33(b)(4) of the Lanham Act has long permitted a defendant to use terms descriptively to refer to the defendant's own product or service; in contrast, the doctrine of nominative fair use permits a defendant to use a plaintiff's mark to describe the plaintiff's product or service. Unlike the common law and statutory fair use defense, the nominative fair use doctrine is a judicially created defense of relatively recent vintage. Prior to the development of the nominative fair use defense, courts occasionally declined to enjoin the copying of nondescriptive marks used to refer to the plaintiff's products or services, however, a true doctrinal basis for that result was not expressly articulated until New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

In that decision, USA Today and The Star independently conducted polls of their readers in connection with a news story about the popular boy-band NEW KIDS ON THE BLOCK. The survey, which referred to the NEW KIDS ON THE BLOCK, asked readers to call a 900 number to vote and express their opinions about which “New Kid” was the most popular or the sexiest. The group, which ran their own 900 numbers for fans, sued the papers for, among other things, trademark infringement based on their unauthorized commercial use of the group's trademark NEW KIDS ON THE BLOCK. Judge Alex Kozinski, writing for the court, explained that the papers' use of the mark could best be understood as involving nontrademark use of a mark:

“we may generalize a class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one. Such nominative use of a mark – where the only word reasonably available to describe a particular thing is pressed into service – lies outside the strictures of trademark law: Because it does not implicate the source-identification function that is the purpose of trademark [law], it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder.” Id. at 307-08.

The New Kids court noted that “this is not the classic fair use case where the defendant has used the plaintiff's mark to describe the defendant's own product. Here, the New Kids trademark is used to refer to the New Kids themselves.” Id. at 308. The court, therefore, did not apply the elements of fair use found in '33(b)(4) of the Lanham Act, but instead held that:

“where the defendant uses a trademark to describe the plaintiff's product [or service], rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Id. (footnotes omitted)

With respect to the first element of this test – that the product or service not be readily identifiable without use of the trademark – the court explained by way of example that:

“many goods and services are effectively identifiable only by their trademarks. For example, one might refer to “the two-time world champions” or “the professional basketball team from Chicago,” but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls. … Indeed, it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark. For example, reference to a large automobile manufacturer based in Michigan would not differentiate among the Big Three; reference to a large Japanese manufacturer of home electronics would narrow the field to a dozen or more companies. Much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark.” Id. at 306-07.

With respect to the second element of this test – that the defendant use only so much of the mark as is reasonably necessary to identify the product or service – the court suggested that the defendant's choice not to use the plaintiff's distinctive lettering or logo would weigh in favor of a finding that not too much of the plaintiff's mark was used. As an example, the court noted that “a soft drink competitor would be entitled to compare its product to Coca-Cola or Coke, but would not be entitled to use Coca-Cola's distinctive lettering.” Id. at 308.

The court found that the newspapers used the trademark NEW KIDS ON THE BLOCK only to the extent necessary to identify the group as the subject of the telephone polls; they used only the trademark without the group's distinctive logo; and they did nothing else that would suggest sponsorship or endorsement by the group. Finding that the newspapers had satisfied the three elements of nominative fair use, the court upheld the grant of summary judgment in their favor.

Ten years after New Kids, the Ninth Circuit again addressed the nominative fair use doctrine in Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). Terri Welles, who was on the cover of Playboy magazine in 1981 and chosen as the Playboy Playmate of the Year for 1981, used the title “Playboy Playmate of the Year 1981″ and other trademarks owned by Playboy on a Web site that offered information and photos of Welles, advertised memberships in her photo club, and promoted her services as a spokesperson. The court separated Welles' use of Playboy's trademarks into the following three categories based on how they were used on Welles' Web site: headlines and banner advertisements, metatags, and web site wallpaper. (Metatags, a part of the computer code for a Web site that is not ordinarily visible to users, are often used to describe the content of the Web site. An Internet search engine may use the metatags to find Web sites that contain particular information relevant to a search conducted through the search engine. See id. at 803.)

Applying the New Kids nominative fair use test, the court concluded that Welles' use of the trademarks in the headlines and banner advertisements as well as in the metatags on her Web site constituted nominative fair use of those trademarks. The court also held “that nominative uses, by definition, do not dilute the [plaintiff's] trademarks.” Id. at 805.

With respect to the headlines and banner advertisements, the Ninth Circuit agreed with the lower court that had explained that:

“there is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases. To describe herself as the “nude model selected by Mr. Hefner's magazine as its number-one prototypical woman for the year 1981″ would be impractical as well as ineffectual in identifying Terri Welles to the public.” Id. at 802.

According to the Ninth Circuit, Welles could only readily identify herself to the public using Playboy's trademarked title. Also, citing the New Kids decision's reference to a competitor being able to use Coke's trademarks without the distinctive lettering, the Ninth Circuit explained that the headlines and banner advertisements satisfied the second element of the New Kids test “because they use only the trademarked words, not the font or symbols associated with the trademarks.” Id. The court also determined that Welles had done nothing to suggest sponsorship or endorsement by Playboy. In fact, the court noted that Welles' use of the year 1981 served to show that any sponsorship or endorsement occurred in the past. Additionally, Welles included a statement on her Web site disclaiming any current connection to Playboy.

The court also found that the terms “playboy” and “playmate” used in the Web site's metatags were a nominative fair use. The metatags used only so much of the marks as reasonably necessary and Welles did nothing to suggest any sponsorship or affiliation with Playboy. The court did note, however, that the use of Playboy's trademarks in the metatags may not have been a nominative fair use “if the metatags listed the trademarked term so repeatedly that Welles' site would regularly appear above [Playboy's] in search[es] for one of the trademarked terms.” Id. With respect to Welles' use of the abbreviation “PMOY '81,” which stands for “Playmate of the Year 1981,” as wallpaper on her Web site, the court found that the first prong of the nominative fair use test was not satisfied because the “repeated depiction of 'PMOY '81' is not necessary to describe Welles. Id. at 804.

Another case decided by the Ninth Circuit in 2002 both clarified and further expanded the scope of the nominative fair use doctrine. Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002), involved a suit brought by the executors of the estate of Diana, Princess of Wales and the trustees of the Diana Princess of Wales Memorial Fund against the Franklin Mint based on the Mint's use of the name and likeness of Princess Diana on jewelry, collector plates, and dolls. First, the Cairns court, like the Playboy court, reiterated that at least in the Ninth Circuit, while the classic fair use analysis complements the traditional test of likelihood of confusion, the nominative fair use analysis replaces the traditional test.

Second, the Cairns court removed some confusion regarding the nominative fair use doctrine. Classic fair use had been understood as applying where a defendant used a plaintiff's mark to describe the defendant's product or service; nominative fair use had been understood as applying where a defendant used a plaintiff's mark to describe the plaintiff's product or service. In most circumstances, however, a defendant will not refer to the plaintiff's product or service unless it ultimately helps the defendant describe its own product or service. Recognizing this fact, the court explained that:

“[t]he nominative fair use analysis is appropriate where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product. Conversely, the classic fair use analysis is appropriate where a defendant has used the plaintiff's mark only to describe his own product, and not at all to describe the plaintiff's product.” Cairns, 292 S.3d at 1151.

Although the defendant's ultimate goal may be to describe its own product or service, as long as the defendant's use of the plaintiff's mark refers to the plaintiff's product or service, the nominative fair use analysis applies instead of the traditional likelihood of confusion test complemented by classic fair use.

Applying the nominative fair use defense to the facts before it, the Ninth Circuit described the plaintiff's product as Princess Diana herself and the plaintiff's marks as Princess Diana's name and likeness. With regard to the first element of the New Kids nominative fair use test – that the plaintiff's product not be readily identifiable without use of the plaintiff's trademark – the Cairns court held that Princess Diana is not readily identifiable without the use of her name and that Princess Diana's physical appearance is not readily identifiable without the use of her likeness. The Franklin Mint, for example, advertised the realism of its Princess Diana doll and its accessories and clothing by juxtaposing photographs of the doll with photographs of Princess Diana. The Ninth Circuit, like the district court, looked to the law of Great Britain, where Princess Diana was domiciled at her death, and concluded that a postmortem right of publicity did not exist.

The Ninth Circuit also concluded that the Mint's use of the name and likeness of Princess Diana satisfied the second New Kids element – that the defendant use only so much of the plaintiff's mark as is reasonably necessary to identify the plaintiff's product or service. Although noting that what is reasonably necessary to identify a plaintiff's product will vary from case to case, the court remarked that the Mint had not used any distinctive lettering or any particular image of Princess Diana “intimately associated” with the plaintiffs. The court also noted that the Mint would likely not be able to sell its products if it were not able to make prominent reference to Princess Diana. Some of the Mint's customers, the court explained, would be unable to identify the Mint's Princess Diana dolls and accessories if the name and photographs of Princess Diana were not used in the Mint's advertising.

The court described the third element of the New Kids nominative fair use test – that the defendant do nothing that would suggest sponsorship or endorsement by the plaintiff – as the most difficult for the Mint; however, the court ultimately found that this element also favored a finding of nominative fair use. In its advertising, the Mint explained that proceeds from the sale of its Princess Diana products would be donated to “Diana, Princess of Wales' Charities.” The court concluded that there was no evidence that the phrase was associated with the plaintiffs such that it would suggest sponsorship or endorsement by the plaintiffs. Similarly, the court explained that the Mint's use of the term “Certificate of Authenticity” in connection with a collector plate “from Capodimonte, the European Masters of floral portraiture” did not refer to the plaintiffs, but instead referred to the origin of the plate with the plaintiffs or Capodimonte.

While defendants have had reasonable success in avoiding findings of infringement as a result of prevailing on nominative fair use theories in the Ninth Circuit, even that circuit has, on occasion, found a defendant liable on an evidentiary showing inadequate to sustain that defense. Recently, the Ninth Circuit considered a trademark infringement claim brought by a corporation formed by the members of the band THE BEACH BOYS against Al Jardine, one of the original members of the band, based on his use of the term “The Beach Boys” in connection with the promotion of his band “The Beach Boys Family and Friends.” Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003). Applying the New Kids test, the Ninth Circuit easily concluded that Jardine met the first two prongs. As the court noted, “it is virtually impossible to refer to the Beach Boys without using the trademark,” and the plaintiff did “not allege that Jardine uses any distinctive logo or anything else that isn't needed to identify the Beach Boys.” Brother Records, 318 F.3d at 908.

The court, however, concluded that Jardine failed to meet the third New Kids requirement because his promotional materials displayed “The Beach Boys” more prominently than “Family and Friends” and testimony from Jardine's management indicated that they used the term “The Beach Boys” to suggest sponsorship by the plaintiff. Id. In the absence of such prominent use of the plaintiff's trademark or the testimony from Jardine's management, the court may well have found the third factor satisfied and have permitted a former band member to use, without authorization from the band, the band's name as part of his own mark.

Eleven years after its New Kids decision, the nominative fair use doctrine has continued to win acceptance in the Ninth Circuit. Originally adopted by that court to permit newspapers to solicit reader commentary in connection with news stories, the current nominative fair use test articulated by the Ninth Circuit may enable some defendants to make unauthorized use of a plaintiff's trademark regardless of the possibility for confusion, or indeed, even if significant actual confusion exists. While it is unclear whether the Ninth Circuit will continue to expand the scope of the nominative fair use doctrine or whether other circuits will follow the Ninth Circuit's lead, it is clear that the power of the nominative fair use doctrine as a defense will make it more likely that increasing numbers of defendants will argue that their otherwise infringing use should be protected as a nominative fair use.

Trademark fair use under the common law and '33(b)(4) of the Lanham Act has long permitted a defendant to use terms descriptively to refer to the defendant's own product or service; in contrast, the doctrine of nominative fair use permits a defendant to use a plaintiff's mark to describe the plaintiff's product or service. Unlike the common law and statutory fair use defense, the nominative fair use doctrine is a judicially created defense of relatively recent vintage. Prior to the development of the nominative fair use defense, courts occasionally declined to enjoin the copying of nondescriptive marks used to refer to the plaintiff's products or services, however, a true doctrinal basis for that result was not expressly articulated until New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

In that decision, USA Today and The Star independently conducted polls of their readers in connection with a news story about the popular boy-band NEW KIDS ON THE BLOCK. The survey, which referred to the NEW KIDS ON THE BLOCK, asked readers to call a 900 number to vote and express their opinions about which “New Kid” was the most popular or the sexiest. The group, which ran their own 900 numbers for fans, sued the papers for, among other things, trademark infringement based on their unauthorized commercial use of the group's trademark NEW KIDS ON THE BLOCK. Judge Alex Kozinski, writing for the court, explained that the papers' use of the mark could best be understood as involving nontrademark use of a mark:

“we may generalize a class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one. Such nominative use of a mark – where the only word reasonably available to describe a particular thing is pressed into service – lies outside the strictures of trademark law: Because it does not implicate the source-identification function that is the purpose of trademark [law], it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder.” Id. at 307-08.

The New Kids court noted that “this is not the classic fair use case where the defendant has used the plaintiff's mark to describe the defendant's own product. Here, the New Kids trademark is used to refer to the New Kids themselves.” Id. at 308. The court, therefore, did not apply the elements of fair use found in '33(b)(4) of the Lanham Act, but instead held that:

“where the defendant uses a trademark to describe the plaintiff's product [or service], rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Id. (footnotes omitted)

With respect to the first element of this test – that the product or service not be readily identifiable without use of the trademark – the court explained by way of example that:

“many goods and services are effectively identifiable only by their trademarks. For example, one might refer to “the two-time world champions” or “the professional basketball team from Chicago,” but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls. … Indeed, it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark. For example, reference to a large automobile manufacturer based in Michigan would not differentiate among the Big Three; reference to a large Japanese manufacturer of home electronics would narrow the field to a dozen or more companies. Much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark.” Id. at 306-07.

With respect to the second element of this test – that the defendant use only so much of the mark as is reasonably necessary to identify the product or service – the court suggested that the defendant's choice not to use the plaintiff's distinctive lettering or logo would weigh in favor of a finding that not too much of the plaintiff's mark was used. As an example, the court noted that “a soft drink competitor would be entitled to compare its product to Coca-Cola or Coke, but would not be entitled to use Coca-Cola's distinctive lettering.” Id. at 308.

The court found that the newspapers used the trademark NEW KIDS ON THE BLOCK only to the extent necessary to identify the group as the subject of the telephone polls; they used only the trademark without the group's distinctive logo; and they did nothing else that would suggest sponsorship or endorsement by the group. Finding that the newspapers had satisfied the three elements of nominative fair use, the court upheld the grant of summary judgment in their favor.

Ten years after New Kids , the Ninth Circuit again addressed the nominative fair use doctrine in Playboy Enterprises, Inc. v. Welles , 279 F.3d 796 (9th Cir. 2002). Terri Welles, who was on the cover of Playboy magazine in 1981 and chosen as the Playboy Playmate of the Year for 1981, used the title “Playboy Playmate of the Year 1981″ and other trademarks owned by Playboy on a Web site that offered information and photos of Welles, advertised memberships in her photo club, and promoted her services as a spokesperson. The court separated Welles' use of Playboy's trademarks into the following three categories based on how they were used on Welles' Web site: headlines and banner advertisements, metatags, and web site wallpaper. (Metatags, a part of the computer code for a Web site that is not ordinarily visible to users, are often used to describe the content of the Web site. An Internet search engine may use the metatags to find Web sites that contain particular information relevant to a search conducted through the search engine. See id. at 803.)

Applying the New Kids nominative fair use test, the court concluded that Welles' use of the trademarks in the headlines and banner advertisements as well as in the metatags on her Web site constituted nominative fair use of those trademarks. The court also held “that nominative uses, by definition, do not dilute the [plaintiff's] trademarks.” Id. at 805.

With respect to the headlines and banner advertisements, the Ninth Circuit agreed with the lower court that had explained that:

“there is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases. To describe herself as the “nude model selected by Mr. Hefner's magazine as its number-one prototypical woman for the year 1981″ would be impractical as well as ineffectual in identifying Terri Welles to the public.” Id. at 802.

According to the Ninth Circuit, Welles could only readily identify herself to the public using Playboy's trademarked title. Also, citing the New Kids decision's reference to a competitor being able to use Coke's trademarks without the distinctive lettering, the Ninth Circuit explained that the headlines and banner advertisements satisfied the second element of the New Kids test “because they use only the trademarked words, not the font or symbols associated with the trademarks.” Id. The court also determined that Welles had done nothing to suggest sponsorship or endorsement by Playboy. In fact, the court noted that Welles' use of the year 1981 served to show that any sponsorship or endorsement occurred in the past. Additionally, Welles included a statement on her Web site disclaiming any current connection to Playboy.

The court also found that the terms “playboy” and “playmate” used in the Web site's metatags were a nominative fair use. The metatags used only so much of the marks as reasonably necessary and Welles did nothing to suggest any sponsorship or affiliation with Playboy. The court did note, however, that the use of Playboy's trademarks in the metatags may not have been a nominative fair use “if the metatags listed the trademarked term so repeatedly that Welles' site would regularly appear above [Playboy's] in search[es] for one of the trademarked terms.” Id. With respect to Welles' use of the abbreviation “PMOY '81,” which stands for “Playmate of the Year 1981,” as wallpaper on her Web site, the court found that the first prong of the nominative fair use test was not satisfied because the “repeated depiction of 'PMOY '81' is not necessary to describe Welles. Id. at 804.

Another case decided by the Ninth Circuit in 2002 both clarified and further expanded the scope of the nominative fair use doctrine. Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002), involved a suit brought by the executors of the estate of Diana, Princess of Wales and the trustees of the Diana Princess of Wales Memorial Fund against the Franklin Mint based on the Mint's use of the name and likeness of Princess Diana on jewelry, collector plates, and dolls. First, the Cairns court, like the Playboy court, reiterated that at least in the Ninth Circuit, while the classic fair use analysis complements the traditional test of likelihood of confusion, the nominative fair use analysis replaces the traditional test.

Second, the Cairns court removed some confusion regarding the nominative fair use doctrine. Classic fair use had been understood as applying where a defendant used a plaintiff's mark to describe the defendant's product or service; nominative fair use had been understood as applying where a defendant used a plaintiff's mark to describe the plaintiff's product or service. In most circumstances, however, a defendant will not refer to the plaintiff's product or service unless it ultimately helps the defendant describe its own product or service. Recognizing this fact, the court explained that:

“[t]he nominative fair use analysis is appropriate where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product. Conversely, the classic fair use analysis is appropriate where a defendant has used the plaintiff's mark only to describe his own product, and not at all to describe the plaintiff's product.” Cairns, 292 S.3d at 1151.

Although the defendant's ultimate goal may be to describe its own product or service, as long as the defendant's use of the plaintiff's mark refers to the plaintiff's product or service, the nominative fair use analysis applies instead of the traditional likelihood of confusion test complemented by classic fair use.

Applying the nominative fair use defense to the facts before it, the Ninth Circuit described the plaintiff's product as Princess Diana herself and the plaintiff's marks as Princess Diana's name and likeness. With regard to the first element of the New Kids nominative fair use test – that the plaintiff's product not be readily identifiable without use of the plaintiff's trademark – the Cairns court held that Princess Diana is not readily identifiable without the use of her name and that Princess Diana's physical appearance is not readily identifiable without the use of her likeness. The Franklin Mint, for example, advertised the realism of its Princess Diana doll and its accessories and clothing by juxtaposing photographs of the doll with photographs of Princess Diana. The Ninth Circuit, like the district court, looked to the law of Great Britain, where Princess Diana was domiciled at her death, and concluded that a postmortem right of publicity did not exist.

The Ninth Circuit also concluded that the Mint's use of the name and likeness of Princess Diana satisfied the second New Kids element – that the defendant use only so much of the plaintiff's mark as is reasonably necessary to identify the plaintiff's product or service. Although noting that what is reasonably necessary to identify a plaintiff's product will vary from case to case, the court remarked that the Mint had not used any distinctive lettering or any particular image of Princess Diana “intimately associated” with the plaintiffs. The court also noted that the Mint would likely not be able to sell its products if it were not able to make prominent reference to Princess Diana. Some of the Mint's customers, the court explained, would be unable to identify the Mint's Princess Diana dolls and accessories if the name and photographs of Princess Diana were not used in the Mint's advertising.

The court described the third element of the New Kids nominative fair use test – that the defendant do nothing that would suggest sponsorship or endorsement by the plaintiff – as the most difficult for the Mint; however, the court ultimately found that this element also favored a finding of nominative fair use. In its advertising, the Mint explained that proceeds from the sale of its Princess Diana products would be donated to “Diana, Princess of Wales' Charities.” The court concluded that there was no evidence that the phrase was associated with the plaintiffs such that it would suggest sponsorship or endorsement by the plaintiffs. Similarly, the court explained that the Mint's use of the term “Certificate of Authenticity” in connection with a collector plate “from Capodimonte, the European Masters of floral portraiture” did not refer to the plaintiffs, but instead referred to the origin of the plate with the plaintiffs or Capodimonte.

While defendants have had reasonable success in avoiding findings of infringement as a result of prevailing on nominative fair use theories in the Ninth Circuit, even that circuit has, on occasion, found a defendant liable on an evidentiary showing inadequate to sustain that defense. Recently, the Ninth Circuit considered a trademark infringement claim brought by a corporation formed by the members of the band THE BEACH BOYS against Al Jardine, one of the original members of the band, based on his use of the term “The Beach Boys” in connection with the promotion of his band “The Beach Boys Family and Friends.” Brother Records, Inc. v. Jardine , 318 F.3d 900 (9th Cir. 2003). Applying the New Kids test, the Ninth Circuit easily concluded that Jardine met the first two prongs. As the court noted, “it is virtually impossible to refer to the Beach Boys without using the trademark,” and the plaintiff did “not allege that Jardine uses any distinctive logo or anything else that isn't needed to identify the Beach Boys.” Brother Records, 318 F.3d at 908.

The court, however, concluded that Jardine failed to meet the third New Kids requirement because his promotional materials displayed “The Beach Boys” more prominently than “Family and Friends” and testimony from Jardine's management indicated that they used the term “The Beach Boys” to suggest sponsorship by the plaintiff. Id. In the absence of such prominent use of the plaintiff's trademark or the testimony from Jardine's management, the court may well have found the third factor satisfied and have permitted a former band member to use, without authorization from the band, the band's name as part of his own mark.

Eleven years after its New Kids decision, the nominative fair use doctrine has continued to win acceptance in the Ninth Circuit. Originally adopted by that court to permit newspapers to solicit reader commentary in connection with news stories, the current nominative fair use test articulated by the Ninth Circuit may enable some defendants to make unauthorized use of a plaintiff's trademark regardless of the possibility for confusion, or indeed, even if significant actual confusion exists. While it is unclear whether the Ninth Circuit will continue to expand the scope of the nominative fair use doctrine or whether other circuits will follow the Ninth Circuit's lead, it is clear that the power of the nominative fair use doctrine as a defense will make it more likely that increasing numbers of defendants will argue that their otherwise infringing use should be protected as a nominative fair use.