In a case raising vital issues for a host of Internet-related
activities, an Orrick appellate team today asked the U.S. Supreme
Court to resolve a sharp conflict among the courts of appeals on
the proper standard for trademark's so-called "nominative
fair use" doctrine. The cert petition, filed on behalf of
defendants Security University and its CEO and founder, Sondra
Schneider, urged the Supreme Court to overturn a decision earlier
this year by the U.S. Second Circuit Court of Appeals, warning that
the standard established by that court undermines the nominative
fair use defense.
The nominative fair use doctrine developed to protect the use of
another's trademark for purposes of referring specifically to
that trademark or the product it represents—for example, a
car mechanic advertising that it can fix a certain make of car, or
a cell phone carrier claiming that its 4G coverage is superior to a
competitor's. The petition argues that the proper standard for
protecting such uses is the widely-recognized three-factor test
first articulated by the Ninth Circuit in a case called New Kids on
the Block. Security University and Schneider won under that
standard before the district court, but the Second Circuit reversed
and adopted a new 11-factor test for nominative fair use cases. The
resulting conflict between the circuits is "a mess only this
Court can sort out," the petition explains.
As the petition notes, nominative fair use protections are
"more important now than ever before" in an era of online
platforms delivering enormous benefits to consumers for comparing
and purchasing products. And nominative fair use protects not only
advertising and comparative advertising, but also secondary and
after-market retailers, websites that allow consumers to compare
prices and features and select among products, consumer reviews,
gripe sites, and even political commentary, exposé and
parody. "A clear and predictable nominative fair use defense
is critically important to competition and free speech because it
protects the ability to speak good or ill of a brand without fear
of liability for trademark infringement," argues the petition.
The Second Circuit's 11-factor test "dilutes protection
for such uses," and in any event is "so convoluted that
most litigants in the Second Circuit won't know their fate
until the jury comes back, if they aren't pressured into
settlement long before."
Security University, which offers training courses in
information security, engaged in a classic nominative fair use when
it advertised that it prepares students for plaintiff (ISC)2's
"CISSP" certification exam. As the district court found,
Security University had no choice but to use the CISSP mark to
communicate what it was offering, used no more of it than
necessary, and did nothing to suggest that (ISC)2 was offering,
endorsing, or affiliated with the classes. "That has long been
thought enough to defeat a trademark suit," the petition
explains, and "this case would almost certainly be over in the
Ninth Circuit, Third Circuit, and several others."
The petition urges the Court to reject the Second Circuit's
standard and side with decades of case law offering a meaningful
defense, invoking Justice Holmes' sage observation that "a
page of history is worth a volume of logic." The petition is
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