ABSTRACT :: Trademark law is flawed in its approach to trademark uses in entertainment. Infringement turns on whether a consumer is likely to be confused into believing that a markholder sponsored or approved of the use. Because consumers are increasingly aware of product placement and other sponsored mark uses, this likelihood of confusion standard may be met, and infringement found, even for harmless and/or artistically relevant uses, such as uses for purposes of verisimilitude or uses that rely on a mark’s symbolic meaning to assist in conveying a work’s message. This increased likelihood of confusion chills speech by forcing content creators to choose between licensing marks and avoiding marks altogether. Ironically, because negative depictions of marks are less likely to confuse consumers and because trademark dilution law does not apply to expressive uses of marks, trademark law permits gratuitously negative depictions of marks, which may harm markholders. The result is a doctrinally imbalanced system that chills speech, increases the transaction costs of content creation, and disproportionately harms small or independent content creators, while still permitting potentially harmful uses.
There is a solution to this problem: rather than applying the traditional likelihood of confusion and dilution analyses, unauthorized uses of marks should be permitted in an expressive setting unless the use is (1) not artistically relevant or (2) explicitly misleading. This test is based on factors identified by the Second Circuit Court of Appeals in Rogers v. Grimaldi, but differs from that court’s analysis in two significant ways. First, the Rogers approach requires the court to perform a traditional likelihood of confusion analysis and then to balance likelihood of confusion against the public interest in freedom of expression. The proposed test avoids the likelihood of confusion analysis entirely. Second, the proposed test applies a presumption of artistic relevance. This simpler scheme would permit the use of marks as expressive tools, while encouraging content creators to seek permission for uses that are more likely to harm a mark’s source-identifying function.
November 2014, Vol. 66, No. 6
Lily Kahng, The Taxation of Intellectual Capital