3d Circuit decision concerning nominative fair use

A couple of weeks ago (sorry, I've been pretty busy), the Third Circuit handed down a VERY LONG split opinion concerning the proper way to analyze "nominative fair use" arguments. Nominative fair use concerns situations where Company A uses Company B's trademark to refer to Company B in Company A's name or advertising. Examples loosely taken from past cases include the company name "Stan's Independent VW Repair Shop" or advertising by Terri Welles that stated, among other things, that she was a former "Playboy Playmate of the Year."

Generally, courts have largely followed the 9th Circuit's approach to such cases (since the 9th Circuit has more opinions on the subject than any other court), which holds that a nominative use is fair if: (1) the product or service in question is not readily identifiable without use of the trademark; (2) the defendant uses only so much of the mark as is reasonably necessary to identify the product or service (i.e., no multiple or repeating uses, no use of the other company's distinctive logos, scripts, or trade dress, etc.); and (3) the user must do nothing to suggest sponsorship or endorsement by the trademark holder. Further, the Ninth Circuit and most other circuits view nominative fair use not as an affirmative defense, but as a way to negate likelihood of confusion.

Well, this wasn't good enough for the 3d Circuit. In Century 21 Real Estate Corp. v. Lending Tree, Inc., No. 03-4700 (this .pdf file will take time to load, and you may need to click "refresh" several times before you can upload it), the court held that nominative fair use IS an affirmative defense. It seemed to think this was required by the recent Supreme Court decision in KP Permanent Make-Up. Although by itself this doesn't really matter in my view (given that civil cases are based on a "more likely than not" standard of proof and a defendant is going to put on this evidence no matter who's got the ultimate burden), the problem is that the 3d Circuit went further held that plaintiff's in cases where nominative fair use is an issue can succeed in showing a likelihood of confusion based solely on a showing on a shortened list of confusion factors: price, level of consumer care, actual confusion, and intent.

The dissenting judge (in his own very long opinion) thought that this tinkering with the 9th Circuit's test simply muddied things up. Although I don't have time right now to explain fully why (and you'd all be bored silly if I tried) I think the dissent got it right. KP Permanent Make-Up dealt with a statutory affirmative defense. Nominative fair use isn't in the statute. It's a court-made doctrine, and the courts that made it have always viewed it as a way to negate likelihood of confusion. Making it a defense and simultaneously making it easier for the plaintiff to show likelihood of confusion not only doesn't make sense, but also would tend, I think, to seriously limit a defendant's ability to make the case for nominative fair use.

Anyway, it's a thought-provoking exchange if you've got a couple of hours.