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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Monday, November 20, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will provide guidance for IP counsel on nominative fair use. The panel will compare it with statutory fair use and examine it as an affirmative defense. The panel will also discuss the relationship to confusion and its impact on comparative advertising strategies and provide best practices for nominative fair use.

Faculty

Ian C. Ballon
Shareholder, Co-Chair Global Intellectual Property & Technology Practice Group
Greenberg Traurig LLP

Mr. Ballon is an intellectual property and internet litigator. He represents clients in copyright, DMCA, trademark, trade secret, right of publicity, privacy, security, software, database and internet- and mobile-related disputes and in the defense of data privacy, cybersecurity breach, adtech and behavioral advertising, TCPA and other internet-related class action suits. Mr. Ballon is the author of the five-volume legal treatise, E-Commerce and Internet Law: Treatise With Forms 2d Edition (West 2008 & 2022 Cum. Supp.)

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Heidi Howard Tandy
Partner
Berger Singerman

Ms. Tandy has handled matters involving the internet, social media, privacy, intellectual property and tech law issues, for large and small corporate clients and individuals, from retail stores to groundbreaking online content creators, as well as hotels, restaurants, jewelry designers, educators, podcasters, website and app developers, novelists, theatrical producers and an Emmy-award winning makeup artist. She’s worked with content creators, technology builders, individual business owners, and large corporations to successfully protect websites, apps, copyrights and trademarks. Since the 1990s, Ms. Tandy’s work has included the creation of terms of service and privacy policies and best practices, as well as creating website accessibility policies and general internet policies and procedures. She has filed hundreds of trademark applications, litigated before the Trademark Trial and Appeal Board and in federal and Florida courts, created and negotiated license agreements and assignments, and protected the rights of clients around the world. 

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Joshua M. Dalton
Partner, Leader Global Trademark and Copyright Practice
Morgan, Lewis & Bockius LLP

As a pretrial, trial, and appellate lawyer in IP litigation, Mr. Dalton takes a bold, creative approach to resolving even the most complex trademark, trade dress, false advertising, copyright, patent, and trade secret/non-competition disputes for clients across a wide variety of business sectors. He has appeared in courts throughout the U.S. as well as before the Trademark Office and Trademark Trial and Appeal Board and the International Trade Commission and has been recognized as a leading lawyer in IP litigation. Mr. Dalton enjoys practicing as well as speaking at various events, and regularly shares his insights on a variety of IP and related topics, including trademark protection, consumer surveys, copyright infringement, false advertising, product design protection, domain name disputes, artificial intelligence, copyright recapture, patent false marking, and Do Not Call legislation. He is also a National Institute of Trial Advocacy-certified trial skills trainer and has served as faculty in a number of trial advocacy workshops.

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Description

The Lanham Act has long recognized the concept of "statutory" or descriptive fair use which allows the use of a term even if it is a trademark provided that the use is consistent with its ordinary meaning, is not used as a trademark, and is made in good faith. In 1992, the Ninth Circuit coined the term "nominative fair use" to describe the use of a trademark other than by its owner for purposes of identifying the trademarked product.

In the seminal New Kids on the Block decision the Ninth Circuit posited that such use would not be an infringement if (1) the product or service in question is not readily identifiable without use of the trademark, (2) the user only takes what is reasonably necessary to identify the product, and (3) the user does nothing to suggest that he is connected to or sponsored by the trademark owner.

Fair use cases were relatively rare until around 2000, but the number of both statutory fair use and nominative fair use cases has substantially increased since. Many questions still arise about the interplay between confusion and both statutory fair use and nominative fair use, the proper test for addressing confusion in such cases, and who bears the burden of proof.

Listen as our authoritative panel of IP attorneys briefly compares nominative fair use with statutory/classic fair use. The panel will discuss statutory fair use and explain the issue of what it means for fair use to be an affirmative defense and then examine nominative fair use, exploring it as an affirmative defense, its relationship to confusion, its impact on comparative advertising strategies, and court treatment of nominative fair use. The panel will also provide best practices for nominative fair use.

Outline

  1. Statutory fair use
    1. Does confusion matter in deciding if a use is statutory fair use?
    2. What is "use other than as a trademark"?
    3. Implications on brand clearance and enforcement
  2. Nominative fair use
    1. Is this an affirmative defense or just a category of cases that requires a different test for evaluating likely confusion?
    2. Should the strength of a mark matter in a nominative fair use case?
    3. When is use of a trademark reasonably necessary to describe a product or service?
    4. How are the circuit courts treating nominative fair use?
  3. Statutory and nominative fair use
    1. Best practices for both
    2. Litigation strategies

Benefits

The panel will review these and other key issues:

  • What factors should counsel consider when analyzing nominative fair use?
  • Is nominative fair use an affirmative defense or just another way of analyzing confusion?
  • How have the courts addressed the issue of nominative fair use and its application?
  • What is the impact on a brand owner when AI generates content for a third party that includes a trademark or slogan?
  • Are third-party uses on social media nominative or classic fair use, or something else entirely?