Against Fair Use: The Case for a Genericness Defense in Expressive Trademark Uses

Against Fair Use: The Case for a Genericness Defense in Expressive Trademark Uses Xiyin Tang  ABSTRACT: The ever-expanding reach of trademark law and the narrowing strictures of trademark law’s fair use doctrine demand new ways of thinking about defenses in artistic use cases. Trademark law currently acknowledges two types of expressive use as “fair”: works that target or comment upon a trademarked work itself, and works that somehow “transform” the original. Defending a claim of infringement on these grounds is lengthy, fact-intensive, and, above all, expensive—thereby chilling protected expression. These defenses also do not adequately capture numerous modes of modern-day artistic expression, many of which do not even recognize a unique “original” to comment upon. This Article argues for increasing the use of genericide or genericness defenses in expressive use cases. Genericide is a doctrine in which a formerly-protectable mark is held to be unprotectable because it no longer signifies the source or producer of the product (e.g., Aspirin as a product made by Bayer) but instead a category or genus of product (aspirin as pain reliever that a generic manufacturer can call their product). Defendants in expressive use cases should argue that the formerly-protectable mark has become generic in a specific market or industry as signifying not the producer but a category or genus of product—for example, that Cristal has become, in the rap industry, generic for champagne. Rather than claiming transformativeness or critical commentary in the hopes of winning a fair use defense, artists should emphasize that they did not, for example, reference Louis Vuitton to target or comment on either the mark itself or its producer—but rather that Louis Vuitton has become generic in the art industry as a general way of signaling a luxury product. This defense would have the advantage of invalidating a trademark once and for all within a specific industry. The law’s present focus on forcing every  Lecturer, Yale University; Visiting Fellow, Yale Law School Information Society Project; J.D, Yale Law School; B.A., Columbia University. Many thanks to Barton Beebe, Ian Ayres, Jack Balkin, and the editors of the Iowa Law Review , especially Robert Fitzgerald, for their helpful comments and insight. For full-color versions of the graphs featured on pages 2060 and 2061, please e-mail me at xiyin.tang@yale.edu. 2022 IOWA LAW REVIEW [Vol. 101:2021 expressive use into the fair use defense does art a disservice by recognizing only one type of expressive use—parody—as “fair.” I. INTRODUCTION ........................................................................... 2022 II. DEFINING “GENERICIDE” AND “GENERICNESS” ........................... 2026 A. T HE E CONOMIC R ATIONALE OF G ENERICIDE ........................... 2026 B. T HE E XPRESSIVE M ODEL OF G ENERICIDE ................................ 2028 C. A S EMIOTIC M ODEL OF G ENERICIDE ....................................... 2031 III. AGAINST FAIR USE ...................................................................... 2032 A. T HE M ANY F ACES OF F AIR U SE ............................................... 2032 1. The Initial Hurdle: “Non-Mark” Uses ........................ 2033 2. “Nominative” and “Classic” Fair Uses ........................ 2034 3. Parodic Fair Uses ......................................................... 2037 4. The Trademark Dilution Revision Act ...................... 2037 B. T HE P ROBLEM WITH P ARODIES AND THE “C OMMENTING U PON THE O RIGINAL ” R EQUIREMENT ...................................................... 2039 1. What is a Parody?......................................................... 2039 2. Gutting the First Amendment .................................... 2040 3. Parody as Commentary: Is That All There Is? ........... 2042 4. The Failure of the Parody Defense: A Case Study .... 2044 IV. GENERICITY IN THE 21ST CENTURY ............................................. 2046 A. W HAT D OES IT A LL M EAN ? ................................................... 2046 B. A L OOK AT MATTEL, INC. V. MCA RECORDS, INC. F ROM THE G ENERICIDE P ERSPECTIVE ............................................... 2048 V. A GENERICNESS APPROACH TO ARTISTIC USE ............................ 2050 A. P OTENTIAL C RITIQUES OF THE G ENERICIDE D EFENSE .............. 2050 B. G ENERIC BY M ARKET ............................................................. 2053 C. G ENERIC BY C ASE .................................................................. 2055 D. G ENERICISM AS A F AIR U SE F ACTOR ........................................ 2058 E. A L AST O BJECTION : I S E VERYTHING F AMOUS . . . G ENERIC ? .... 2059 VI. CONCLUSION .............................................................................. 2062 I. INTRODUCTION In recent years, even those outside the legal community have come to know the two-word phrase “fair use.” 1 It’s become the darling child of 1. E.g. , Randy Kennedy, Apropos Appropriation , N.Y. TIMES (Dec. 28, 2011), http://www.nytimes.com/2012/01/01/arts/design/richard-prince-lawsuit-focuses-on-limits-ofappropriation.html (asking whether Richard Prince’s works are “[t]heft or fair use”); see also 15 2016] AGAINST FAIR USE 2023 transformativeness and critical commentary meant to save the intellectual property laws from overreach, oft-cited by courts as an engine of free speech and First Amendment protection. 2 Yet fair use is riddled with problems, as we all know: it’s a defense, not an affirmative right; there are no bright-line rules; it’s case-by-case; it’s notoriously unpredictable. 3 Nonetheless, everything from rap songs to chewy dog toys have been saved by fair use, in both the copyright and trademark infringement contexts. 4 In recent years, what I like to call the “postmodern problem” has highlighted yet another glaring inadequacy of the fair use doctrine: its insistence that the new work somehow comment on or transform the original work. 5 And yet the postmodern condition suggests that it is precisely the inability of a work to be unique enough to parody (in which the copyrighted or trademarked work, with its “original and separate U.S.C. § 1115(b)(4) (2012) (alleging fair use as a defense to a claim by the holder of a registered mark); 17 U.S.C. § 107 (2012) (discussing limitations on fair use). Because genericide is strictly a trademark defense, this Article focuses on fair use case studies in the trademark context. Nonetheless, fair use case law in the copyright context informs and is quite analogous to that in the trademark context, including its emphasis on commentary on the original work/mark (i.e., parody). See, e.g. , Harley–Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999) (“[W]hatever protection is to be afforded a trademark parody must be informed by the Supreme Court’s recent elucidation in the copyright context of parodies allegedly protected by the defense of fair use.”); Anheuser–Busch, Inc. v. Balducci Publ’ns, 28 F.3d 769, 774 (8th Cir. 1994) (comparing the fair use doctrine’s analysis of parodies in the copyright context to the present trademark parody defense). Therefore, throughout this Article, I sometimes refer to copyright fair use cases by way of elucidating concepts and critical court decisions on, for example, parody and satire. 2. In Eldred v. Ashcroft , 537 U.S. 186, 219 (2003), the Court specifically cites fair use as a “built-in First Amendment accommodation[].” As a result, fair use provides “considerable latitude for scholarship and comment.” Id. at 190 (citing Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985)). 3. See, e.g. , Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1171 (9th Cir. 2012); Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per curiam); Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Opinions, 1978–2005 , 156 U. PA. L. REV. 549, 552 (2008); Jessica Litman, Billowing White Goo , 31 COLUM. J.L. & ARTS 587, 596 (2008); David Nimmer, “Fairest of Them All” and Other Fairy Tales of Fair Use , 66 LAW & CONTEMP. PROBS. 263, 287 (2003). 4. These cases span the range of copyright and trademark, but note the focus on parody as transformative of the original in both. See Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 591 (1994); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 261 (4th Cir. 2007). However, with the recent Second Circuit decision in Cariou v. Prince , 714 F.3d 694, 706 (2d Cir. 2013), in which the court held that commentary on the original was not needed for a fair use defense, the tide may be starting to turn at least in the copyright context where the emphasis on commentary on the original (but not necessarily transformativeness) distinction is concerned. Cariou ’s implications for fair use in the trademark context (or indeed, even on copyright fair use doctrine in other circuits) are unclear, however. 5. See, e.g. , Anheuser–Busch , 28 F.3d at 774; Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g. Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989); Henley v. DeVore, 733 F. Supp. 2d 1144, 1155 (C.D. Cal. 2010); Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559, 1567 (S.D. Cal. 1996), aff’d , 109 F.3d 1394 (9th Cir. 1997). 2024 IOWA LAW REVIEW [Vol. 101:2021 expression, attributable to a different artist” 6 is the object of the new work’s ridicule) that makes art forms like appropriation so urgent today. 7 There is a lesser-mentioned safeguard against intellectual property overreach, which taps precisely into those ideas of the banal and the universal. It is genericide, and it is the bastard child of all defenses, relegated to the backseat of trademark law—and general scholarly interest. 8 Genericide happens when a formerly protectable trademark is held to be no longer protectable because the mark ceases to signify a unique source or particular product but rather a genus or type of product. Genericide does...