Policing the Border Between Trademarks and Free Speech: Protecting Unauthorized Trademark Use in Expressive Works

Artists and other creators of expressive works often include trademarks and trademarked products as part of their works. They do so for a number of reasons, including lighthearted humor, critical cultural commentary, parody, or even simply to shock. In instances where such use is both unauthorized by and perceived as disparaging to the mark owner or the trademarked product, owners have attempted to sue under trademark law to enjoin the expressive use. This Article argues that, under a proper analysis of trademark law, precedent, and the free expression ideal enshrined in the First Amendment, mark owners should rarely, if ever, prevail in such actions. This Article evaluates the current state of the law, criticizing its inconsistencies and equivocations, and suggests that the correct analytical framework for these disputes must protect the public, creative nature of trademarks and their cultural meaning. The proposed framework mandates balancing of the competing public interest factors of marketplace confusion and free expression to resolve infringement cases, with the assumption that this approach will rarely lead to liability for defendants. As for claims of reputational harm, the free expression concerns compel defendant-friendly results in all cases. After defending this framework, this Article then scrutinizes the background legal doctrine framing this debate-the Supreme Court's commercial speech doctrine-to discern its relevance to controversies occasioned by unauthorized trademark use. The Article concludes that as commercialism in artistic works such as feature films increases, the line between commercial and noncommercial speech will blur and will again force reconsideration of the border between trademark law and free speech. IN TR O D U CTION 888 I. DEVELOPMENT OF THE LAW 895 A. Current Statutory Framework 895 B. Misguided Beginnings to the Analysis of Trademark Claims in the Context of Expressive Works 899 C. Untethering Trademark and Real Property: The Uneasy Emergence of Constitutional Consideration 901 II. DEFICIENCIES IN THE CURRENT ANALYSIS 906 . With significant contributions from Robert C. Welsh. Mr. Welsh is a partner at the Century City, California office of the law firm of O'Melveny & Myers, L.L.P. Pratheepan Gulasekaram is an Acting Assistant Professor at NYU School of Law. Mr. Gulasekaram would like to thank Anoop Prasad (J.D. expected 2006, Loyola University New Orleans) for his research assistance. Special thanks to Professors Robert Verchick, John Lovett, and Monica Wallace of Loyola Law School New Orleans for their helpful comments. And a very special thanks to Professor Emily Buss of the University of Chicago Law School and Professors Barbara Fried and George Fisher of Stanford Law School for their encouragement. Finally, the author would like to thank the editorial board of Washington Law Review for their tireless work on this Article. HeinOnline -80 Wash. L. Rev. 887 2005 Washington Law Review A. The Proper Private Real Property Analogy 907 B. Untenable Subject-Matterand Genre-Based D istinctions 9 10 C. Limited Holdings and Inappropriate Legal Doctrines 916 III. UNAUTHORIZED TRADEMARK USE IN EXPRESSIVE WORKS: THE PROPER ANALYTICAL FRAMEWORK ......... 922 IV. THE REAL QUESTION: SHOULD EXPRESSIVE USE ALWAYS COUNT AS NONCOMMERCIAL SPEECH? 931 A. The Advent of Product Placement and Current Analysis of Motion Pictures Under the Commercial Speech Doctrine .... 933 B. Pushing the Definitional Bounds of Noncommercial Sp eech 936 C. Increasing the Likelihood of Confusion 940 C O N C L U SIO N 94 1