Copyright Law

How Trademark Law Casts A Dark Cloud Over Free Speech

By Sam Bayard

Bill McGeveran, a University of Minnesota law professor and friend of the CMLP, has published his article, "Four Free Speech Goals for Trademark Law" in the Media & Entertainment Law Journal, volume 18 (available at SSRN). The article makes a compelling case that, while courts in trademark cases ultimately tend to reach results that protect free speech against trademark overreaching, they do so in a muddled way that makes it hard to resolve cases quickly and cheaply and leaves speakers vulnerable to bullying through cease-and-desist letters.

We've had a copy of this article for a while, and I've been using it to get my head around how trademark law might affect the speech activities of bloggers, citizen media creators, and other online publishers. We are launching the intellectual property sections of our legal guide at the end of this month, and a number of the new sections take up the intersection between trademark law and freedom of speech. Professor McGeveran's article has been extremely useful, but also -- um -- slightly disheartening:

If you have ever tried to counsel a client who wishes to use a trademark for expression then you have confronted the deeply muddled state of the law governing such uses. There are many routes to final adjudication, but none is clear and it is difficult to know in advance which ones a court might employ. I'd even speculate that the tangled nature of the doctrine may discourage attorneys from offering pro bono help that might otherwise be available to some of the artists and parodists who most need advice.

Professor McGeveran is refering here to the tangled state of the law regarding what, for lack of a better name, might be called free-expression-related defenses to trademark claims. These include exceptions to liability for "descriptive fair use," "nominative fair use," "noncommercial use" (at least two distinct types), and "news reporting and commentary" (dilution claims only), as well as, in McGeveran's words, "[s]everal different flavors of 'First Amendment' defenses." Not to be discouraged, we are trying to hash all this out for our readers on a page called "Using the Trademarks of Others," which is, alas, still very much forthcoming.

Hat tip to Media Law Prof Blog.

(Note: Bill McGeveran is a former fellow of the Berkman Center for the Internet & Society, which hosts the CMLP.)

Full post as published by Citizen Media Law Project on April 24, 2008 (boomark / email).