United States: Fair Use Defense Fails Where Use Creates Consumer Confusion

The U.S. Court of Appeals for the Ninth Circuit has held that a fair use defense fails as a matter of law if the defendant’s use creates a likelihood of confusion. Brother Records, Inc. v. Alan Jardine, 2003 U.S. App. LEXIS 1335 (9th Cir. Jan. 28, 2003).

The plaintiff owns the mark BEACH BOYS for musical entertainment services. The defendant, a former band member, performed musical concerts under various names that included the mark BEACH BOYS, such as AL JARDIN OF THE BEACH BOYS and BEACH BOYS and FAMILY. The district court rejected the defendant’s fair use defense and awarded summary judgment to the plaintiff.

The Ninth Circuit affirmed. The court explained that there are two types of fair use defenses: the "classic" fair use defense, where the defendant uses the challenged term in its primary sense to describe the defendant’s services, and the "nominative" fair use defense, where the defendant uses the challenged term to describe the plaintiff’s services. However, both defenses fail as a matter of law if the defendant’s use creates a likelihood of confusion. "The purpose of trademark infringement law is to ensure that the owners of trademarks can benefit from the goodwill associated with their marks and that consumers can distinguish among competing producers." Because the defendant’s use of BEACH BOYS in its name "suggested sponsorship or endorsement by the trademark owner, the defendant’s fair use defense fails as a matter of law."

Practice Note: The regional circuit courts of appeal are split on whether a showing of confusion defeats a fair use defense. The Fifth and Sixth Circuits follow the Ninth Circuit’s rule that the fair use defense fails if there is confusion. The Second and Fourth Circuits hold that the defense still applies if there is confusion. If you have a case where fair use is a significant issue, selecting the appropriate forum could be outcome determinative.