Aaron Morris' Business Law Alert : Orange County Business Litigation Lawyer & Attorney : Morris & Stone Law Firm : Santa Ana, Tustin, Irvine, Newport Beach, Southern California, CA

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In what has caused some concern in certain sections of the legal community¹, on November 5, 2008 the 9^th Circuit Court of Appeals set forth another ruling on how to assess whether 1^st Amendment protection is afforded to what is otherwise trademark infringement.² Beginning in 1997 the 9^th Circuit adopted a likelihood of confusion test in making the determination in a case that involved use of Dr. Seuss trademarks in a parody of O.J. Simpson.³ Five years later in Mattel v. MCA Records⁴ the Court was faced with a uniquely different set of facts, and ruled that use of the "Barbie" trademark for the catchy song "Barbie Girl" was constitutionally protected because the expressive interest in commenting on Barbie outweighed any likelihood of confusion posed by the use of the trademark.⁵

Finally, in E.S.S. Entertainment 2000 Inc. v. Rockstar Videos Inc.⁶ the Court held that use of trademarks in an expressive work is permissible unless it has no artistic relevance to the underlying work or the use explicitly misleads as to the source or content of a work. Dr. Seuss and its progeny have led to the obvious question: What test applies? In an abundance of caution, all three approaches must be considered. Although E.S.S. proceeded Mattel and Dr. Seuss, it would not be unlogical to apply the various tests in a staggered approach similar to the following.

First, parties would like to address the extent to which use of the trademark bears artistic relevance to the source. As highlighted by Mr. Lee of the L.A. Daily Journal, considering that in E.S.S. the issue revolved around the use of a strip club’s trademarked name in the video game Grand Theft Auto for no apparent purpose other than to make a reference to it, this prong should be easily satisfied.⁷

The second issue to be argued would be the extent to which use of trademark by the proponent causes a likelihood of confusion, followed by a balancing of the two competing issues in a manner consistent with Mattel. This approach, though simple and redundant, would ensure that the parties duly consider all major aspects of each of the 9^th Circuit’s rulings, leaving them prepared for the certain scrutiny they will face from the Court.

1.  Mark S. Lee, The 9^th Circuit’s Doublespeak, L.A. Daily Journal 5 (Dec. 2, 2008).

2.  See E.S.S. Entertainment 2000 Inc. v. Rock Star Videos Inc., 2008 WL4791705 (9^th Cir. Nov. 5, 2008).

3.  Dr. Seuss Enterprises, LP v. Penguin Books USA Inc., 109 F.3d 1394 (9^th Cir. 1997).

4.  296 F.3d 894 (9^th Cir. 2002).

5.  Id.

6.  E.S.S., Supra, n. 2.

7.  Lee, Supra, n. 1 at ¶10.