15.22 DEFENSES—"CLASSIC" FAIR USE (15 U.S.C. § 1115(b)(4))
The [owner] [assignee] [licensee] of a trademark cannot exclude others from making a fair use of that trademark. A defendant makes fair use of a mark when the defendant uses it as other than a trademark, to accurately describe the [geographic location] [maker of] the defendant’s own [product] [services].
The defendant contends that it fairly used the trademark to describe the defendant’s [product] [service]. The defendant has the burden of proving its fair use of the mark by a preponderance of the evidence.
The defendant makes fair use of a trademark when the defendant:
1. used the mark [other than as a trademark] [other than to distinguish the defendant’s goods from the plaintiff’s and to indicate the source of the defendant’s goods];
2. used the mark fairly and in good faith; and
3. used the mark only to describe the defendant’s goods or services [or their geographic location] as those of the defendant’s [and not at all to describe the plaintiff’s product].
The Ninth Circuit identifies two types of fair use - classic and nominative. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir.2002) ("We distinguish two types of fair use: ‘classic fair use,’ in which ‘the defendant has used the plaintiff’s mark to describe the defendant’s own product,’ and ‘nominative fair use,’ in which the defendant has used the plaintiff’s mark ‘to describe the plaintiff’s product’ for the purpose of, for example, comparison to the defendant’s product.") (citation omitted) (emphasis as in original). See Instruction 15.23 (Defenses—Nominative Fair Use).
Although earlier versions of this instruction applied a "clear and convincing" standard to proof of fair use, the committee has not found any authority specifying the standard of proof for this issue.. See Holbrook & Harris, eds., Model Jury Instructions: Copyright, Trademark, And Trade Dress Litigation 246 (2008) ("The case law dealing with the fair use defense does not address the burden of proof requirement."). Accordingly, this instruction and Instruction 15.23 have been revised to reflect the standard generally applied in civil cases - a preponderance of the evidence. See Grogan v. Garner, 498 U.S. 279, 286 (1991) ("Because the preponderance-of-the-evidence standard results in a roughly equal allocation of the risk of error between litigants, we presume that this standard is applicable in civil actions between private litigants unless ‘particularly important individual interests or rights are at stake.’") (citations omitted); United States v. F/V Repulse, 688 F.2d 1283, 1284 (9th Cir. 1982) ("The preponderance of the evidence standard applies in civil cases.... The few exceptions are very limited and include only those cases involving fraud or possible loss of individual liberty, citizenship, or parental rights. ‘The interests at stake in those cases are deemed to be more substantial than the mere loss of money ....’") (citations omitted); Cf. Comment to Instruction 15.20 (Defenses—Abandonment—Affirmative Defense—Defendant’s Burden of Proof).
The elements of the classic fair use defense set out in this instruction are drawn from: Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150-51 (9th Cir.2002) (court noting that to establish a classic fair use defense under 15 U.S.C. § 1115, a defendant must prove: "‘1. Defendant’s use of the term is not as a trademark or service mark; 2. Defendant uses the term "fairly and in good faith"; and 3. [Defendant uses the term] "[o]nly to describe" its goods or services.’") (citations omitted); Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 1041 (9th Cir.2003).
The first element of the instruction reflects the limitation of the statute, requiring that the mark at issue be descriptive. The classic fair use defense applies only when trademark at issue has both a primary meaning and a secondary meaning. Horphag, 337 F.3d at 1041 ("The classic fair use defense ‘applies only to marks that possess both a primary meaning and a secondary meaning–and only when the mark is used in its primary descriptive sense rather than its secondary trademark sense.’" ((quoting Brother Records, Inc. v. Jardine, 318 F.3d 900, 905–06 (9th Cir.2003) (citations and footnote omitted)).
In considering the second element of fair use, the Ninth Circuit suggests as "relevant factors for consideration by the jury in determining the fairness of the use are the degree of likely confusion, the strength of the trademark, the descriptive nature of the term for the product or service being offered by [plaintiff] and the availability of alternate descriptive terms, the extent of the use of the term prior to the registration of the trademark, and any differences among the times and contexts in which [plaintiff] has used the term." KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608–09 (9th Cir.2005).
The third element of the instruction is drawn from the definition of "classic" fair use involving a defendant’s use of "the plaintiff’s mark only to describe his [defendant’s] own product, and not at all to describe the plaintiff’s product." Cairns , 292 F.3d at 1151, 1152 (footnote omitted) (emphasis as in original).
Prior to 2004, the Ninth Circuit applied fair use analysis only when it had been shown that there was no likelihood of confusion. Cairns, 292 F.3d at 1150-1151 ("In our Circuit, the classic fair use defense is not available if there is a likelihood of customer confusion …. The classic fair use analysis therefore only complements the likelihood of customer confusion analysis…"). The circuit subsequently revisited this application to find that "[t]he fair use defense only comes into play once the party alleging infringement has shown by a preponderance of the evidence that confusion is likely." KP Permanent Make-Up, Inc., 408 F.3d at 608–09 (9th Cir.2005) (citing KP Permanent Make-Up v. Lasting Impression I, Inc., 543U.S. 111, 118, 121 (2004) (application of classic fair use as a complement to determining likelihood of confusion is "a long stretch" because it requires the defendant to prove no likelihood of confusion, reversing the proper allocation of the burden in which "the burden of proving likelihood of confusion rests with the plaintiff, and the fair use defendant has no freestanding need to show confusion unlikely"; determining that it follows (contrary to the view of the Court of Appeals) that "some possibility of consumer confusion must be compatible with fair use, and so it is.")
The fair use defense also applies in the trade dress infringement context. Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792, 809–10 (9th Cir.2003) ("Applying…fair use standards to the trade dress context, we hold that a defendant’s use is classic fair use where the defendant has used the plaintiff’s dress to describe or identify the defendant’s own product and not at all to describe or identify the plaintiff’s product.") (footnotes omitted).
The circuit occasionally refers to other types of "fair use," none appear to involve the classic or nominative fair use tests. For example, the doctrine of trade dress functionality (rendering a feature of trade dress non-infringing was described as "one form of fair use." See Mattel, Inc. v. Walking Mountain Productions, 353 F.3d at 810 n.18 ("It is well-established that use of a product feature or trade dress that has become functional will qualify as one form of fair use."). An instruction governing functionality is provided at Civil Instruction 15.11 (Infringement—Elements—Validity—Trade Dress—Non-Functionality Requirement). Similarly, First Amendment considerations may also be referred to under the rubric of "fair use" and defeat a claim of infringement. See, e.g., Mattel v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir.2002) (noting that the Lanham Act applies "to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression"; adopting the Second Circuit’s First Amendment balancing test for whether the title of an artistic work infringes). Parody may also be characterized as a form of fair use because such use is non-commercial. See Mattel, Inc. v. Walking Mountain Productions, 353 F.3d at 812 (trademark owner "cannot use ‘trademark laws to ... censor all parodies or satires which use [its] name’ or dress.") (quoting New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 309 (9th Cir.1992).