Home 9 Against the Grain 9 v29 #4 Cases of Note — Nominative Fair Use

v29 #4 Cases of Note — Nominative Fair Use

by | Sep 26, 2017 | 0 comments

Column Editor:  Bruce Strauch  (Retired, The Citadel – haff-kaff-Emeritus) 

New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992).

Ah, the music of the ’80s, a time of boy bands.  And New Kids on the Block were the heartthrobs of millions of teen girlz.

Maxing out the product line is important to the bottom line, and the New Kids had more than 500 products and services bearing their trademark.  You could even call a 900 number and be charged to listen to them talk about themselves.  Or to leave a message!

Not to be left out, USA Today had a 900 number where for a mere fifty cents you could vote on which was your fav.

The Star had a 95-cent call where you could vote on which was the sexiest!

The things teenz did before Facebook.

Fearing loss of control, New Kids filed in federal court trademark infringement, Lanham Act false advertising, commercial misappropriation and seven other things.

USA/Star argued First Amendment and got a summary judgment.  And of course there was an appeal or else we wouldn’t be reading this.

Ninth Circuit

Since the Middle Ages trademarks have identified the source of goods and the law thereof is designed to prevent free-riders on another’s labor and toil.  The Lanham Act put it in federal statutory form.  Taylor v. Carpenter, 23 F.Cas. 742-44 (C.C.D.Mass. 1844).

So how are we allowed to talk about something that is under the protection of a mark?  Do we say “the professional basketball team from Chicago” or “The Chicago Bulls?”  Of course we name the team.  It would be impossible to discuss a product without naming it.  We can’t say “a big auto manufacturer in Michigan” because there are three of them.

Volkswagenwerk v. Church, 411 F.2d 350 (9th Cir. 1969) held that a VW repair shop was allowed to use the mark to show what it specialized in repairing.

WCVB-TV v. Boston Athletic Ass’n. 926 F2d 42,46 (1st Cir. 1991) allowed a TV station to use the words “Boston Marathon” so the viewer would know what he was about to see.

Why would anyone bring such a suit?

This sort of “nominative use” falls outside of trademark as fair use if it does not deceive the public.  Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924).

All of the New Kids’ causes of action hinged on the claim that the newspaper polls somehow implied the New Kids were sponsoring it.

But how is one to anoint the sexiest of the gang without naming him?  And nothing in the poll suggested joint sponsorship or endorsement by New Kids.  It is a nominative fair use.

But, argued New Kids, the newspapers weren’t just reporting news;  they were making money off this.  They should have used an 800 number.

Their fans aren’t made of money.  95-cents spent on a call might have gone to New Kids’ product line.

The court just kind of gave this argument a back-hand, saying New Kids had no right to channel fan money into products sold by them.  They could not prevent an unauthorized biography or censor parodies that used the name, all of which might bring the authors money.

The citation for their position is International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1990).

Well, I had certainly never heard of Job’s Daughters.  Perhaps you have.

It’s a masonic order for girls 10 to 20.  And the case, a bit astonishingly, allowed a jeweler to put their seal on pins and sell them.

But the mark was unregistered.  And Lindeburg never claimed it was “official” jewelry of Job’s Daughters.


Anyhoo, the court signs off with a flippant “all’s fair in love, war and the free market.”

Not that the 9th Circuit seems to believe in a free market.

But the reasoning is that an author of an unauthorized biography could beat New Kids to fan money by coming up with the idea and publishing the book first.  



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