15.23 DEFENSES—NOMINATIVE FAIR USE
The [owner] [assignee] [licensee] of a trademark cannot exclude others from making a [nominative] fair use of that trademark. A defendant makes [nominative] fair use of a mark when the defendant uses it as other than a trademark, to accurately [describe] [name] [identify] the plaintiff’s goods or services.
The defendant contends that it did not infringe the trademark because the alleged infringement was a nominative fair use of the trademark to [describe] [name] [identify] the plaintiff’s product or service, even if the defendant’s ultimate goal was to describe its own product. The defendant has the burden of proving its nominative fair use of the mark by a preponderance of the evidence.
A defendant makes [nominative] fair use of a trademark when the defendant:
1. Uses the mark in connection with the plaintiff’s [product] [service], which was not readily identifiable without use of that [trademark] [mark];
2. Used only so much of the [trademark] [mark] as was reasonably necessary to identify the [product] [service] in question; and
3. Did not do anything that would in connection with the trademark suggest sponsorship or endorsement of the defendant’s product or service by the plaintiff. [A product is not readily identifiable without use of the trademark when there are no equally informative words describing the product.
[A product cannot be effectively identified without use of its trademark when there would be no other effective way to compare, criticize, refer to or identify it without using the trademark.]
[A reasonably necessary use of a trademark occurs when no more of the mark’s appearance is used than is necessary to identify the product and make the reference intelligible to the consumer. For example, if a particular word is the plaintiff’s trademark, the defendant reasonably uses it when the defendant does not use any distinctive color, logo, abbreviation, or graphic that the plaintiff uses to display the trademark than is necessary to identify the product.]
[You may consider whether the defendant did anything that would, in conjunction with the trademark suggest sponsorship or endorsement by the plaintiff. A use of the plaintiff’s trademark does not suggest sponsorship or endorsement of the defendant’s product when the defendant does not attempt to deceive, or mislead, or capitalize on consumer confusion, or when the defendant appropriates the cachet of the plaintiff’s product for the defendant’s. A defendant’s use of the plaintiff’s trademark to describe the plaintiff’s product may not necessarily suggest plaintiff’s sponsorship or endorsement, even if the defendant’s ultimate goal is to describe the defendant’s own product.]
[The fact that the defendant’s use of the trademark may bring the defendant a profit or help in competing with the mark owner does not mean the use was not a fair use.]
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 15.22 (Defenses—"Classic" 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 15.22 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 nominative fair use defense set out in this instruction are drawn from: Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1065–66 (9th Cir.1999) (Lanham Act does not prevent one from using a competitor’s mark truthfully to identify the competitor’s goods, or in competitive advertisements, even in cyberspace; nominative fair use may occur if one uses a trademark because it is the "only word reasonably available to describe a particular thing."); Abdul-Jabbar v. General Motors Corp., 85 F.3d 407, 412 (9th Cir.1996) (whether defendant’s use of celebrity’s name in television commercial was fair use or whether it attempted to "appropriate the cachet" of the celebrity was an issue of fact, defendant auto maker refers to sports celebrity who won award three years in a row in commercial for defendant’s car that also won an award three years in a row); Downing v. Abercrombie & Fitch, 265 F.3d 994, 1000, 1009 (9th Cir.2001) (defendant used trademarked names and photos of plaintiff surfers to sell defendant’s shirts which were copied from the shirts worn by the plaintiffs in the photos); In re Dual-Deck Video Cassette Recorder Antitrust Litigation, 11 F.3d 1460, 1466-67 (9th Cir.1993) (fair use existed where there was no possibility consumers would buy defendant’s plainly labeled product thinking that it was made by the plaintiff, as a result of the defendant labeling videocasette attachments that would attach to the plaintiff’s product, by labeling the attachment with a term trademarked by plaintiff).
Nominative fair use defense applies only if defendant "does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one." Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 1041 (9th Cir.2003) (nominative fair use defense unavailable to defendant who failed to show that defendant’s use of plaintiff’s trademark did not suggest sponsorship or endorsement by the trademark holder of defendant’s product) (citing New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 306 (9th Cir.1992); see Brother Records, Inc. v. Jardine, 318 F.3d 900, 905-08 (9th Cir.2003) (extensive discussion of cases in considering application of nominative and classic fair use defense finding neither available where a defendant’s use of a trademark was not in its primary descriptive sense, and used to suggest sponsorship or endorsement by the trademark holder); Cairns, 292 F.3d at 1151 ("The nominative fair use analysis is appropriate where a defendant has used the plaintiff’s mark to describe the plaintiff’s product, even if the defendant’s ultimate goal is to describe his own product.") (footnote omitted).
For application of fair use defense in trade dress cases or for application of First Amendment doctrines as a "fair use," see Comment to Instruction 15.22 (Defenses—"Classic" Fair Use).