Discussion of The “Fair Use” Legal Framework

Tarzan and the John Carter Files are independent sites which provide commentary and criticism on matters relating to Tarzan and John Carter and, more generally, Edgar Rice Burroughs and his creations.  While the original Tarzan and John Carter books are in the public domain, “Tarzan” and “John Carter” are trademarked terms and thus some explanation of how they are used legally here is in order.

Descriptive  Fair Use

Under the traditional or “classic” form of fair use in U.S. trademark law, it is allowable for Party A to use Party B’s mark in a purely descriptive sense, that is, to describe the Party B’s own product. When a trademarked term also describes a person, place or attribute of goods or services, the trademark owner cannot claim exclusive rights to the use of the term in its primary or descriptive sense. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004)

Nominative Fair Use

Nominative fair use comes into play when Party A uses Party B’s trademark to refer to Party B’s  products in, for example, a website or other materials. In the United States, such uses are non-infringing “nominative fair uses” if they do not cause confusion and there is no indication of sponsorship or endorsement. This nominative fair use “does not try to capitalize on consumer confusion or to appropriate the cachet of one product for a different one.” See New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992) (quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir. 1980)). For example, when it is for purposes of criticism, news reporting or comparison, or as a point of reference, use of a third-party mark generally does not constitute infringement.  The Ninth Circuit in New Kids enunciated a three-part test for nominative fair use, which is set out below.

(1) No need for absurdities… Referring to a third-party product or service by its trademark may at times be necessary in order to be clear about the subject matter under discussion. To put it another way, trademark law does not compel individuals to use “absurd turns of phrase” simply to avoid trademark liability. See Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 804-05 (9th Cir. 2002). For example, one could refer to the Chicago Bulls as “the professional basketball team from Chicago,” but it is far simpler and acceptable under trademark law to refer to them by their name. New Kids, 971 F.2d at 306.

(2) Less is more… The third party must use only so much of the plaintiff’s mark as is reasonably necessary to identify the plaintiff’s goods or services. When former Playmate Terri Welles created a website using “Playboy” and “Playmate of the Year 1981” in the headings, metatags and banner ads of her website, the Ninth Circuit determined that Welles fairly used the title that she had earned to describe herself. Welles, 279 F.3d at 804. However, the use of the abbreviation “PMOY ’81” repeatedly as a watermark on the website was more than was necessary to describe herself and was not fair use. Id. Compare J.K. Harris & Co. v. Kassel, 253 F. Supp. 2d 1120 (N.D. Cal. 2003) (finding fair use in reference to plaintiff’s mark, though frequent and obvious, on website for purposes of criticism).

The use of a word mark, and avoiding font, symbols, logo, or design of the mark,  generally  weighs in favor of a finding of fair use. See  New Kids, 971 F.2d at 308 n.7 (finding that the defendant newspapers did not use New Kids on the Block’s distinctive logo); Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 230 (3d Cir. 2005) (defendant used plain block lettering and not the distinctive lettering used in the trademark); Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) (auto repair business did not use Volkswagon’s distinctive lettering style, color scheme or VW emblem); Wham-O, Inc. v. Paramount Pictures Corp., 286 F. Supp. 2d 1254, 1264 (N.D. Cal. 2003) (the main character in the movie Dickie Roberts: Former Child Star said “Slip ’N Slide” twice in the film, but there was no depiction of logos).

(3) Don’t get too close… The use must accurately portray the relationship between the user and the trademark owner. Although two newspapers used the New Kids on the Block name to publicize their telephone polls about the band, neither magazine’s advertisements gave the impression that the band sponsored the contest. In fact, one magazine asked if “[New Kids on the Block] are a turn off.” See New Kids, 971 F.2d at 308. See also Wham-O, Inc., 286 F. Supp. 2d at 1256-58 (use of the SLIP ’N SLIDE mark was part of the “jumble of imagery” in the film, such that nothing in defendants’ use of the mark would give a consumer the impression that plaintiff endorsed it); Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003) (viewers of movie George of the Jungle II were unlikely to believe sponsorship or endorsement of Caterpillar as a result of the use of the earth-moving equipment in the movie).=

In some cases, disclaimers have been found to be persuasive evidence that a use was fair. In Welles, the defendant affirmatively disavowed any sponsorship or endorsement with the plaintiff through the use of a disclaimer where eleven of fifteen pages on the defendant’s free website used a disclaimer at the bottom indicating that the website was not endorsed by the plaintiff. Welles, 279 F.3d at 796 n.1; see also Hensley Manufacturing, Inc. v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009) (defendant fairly used name of trailer hitch designer along with a disclaimer of designer’s former affiliation with plaintiff).

Limitations and Caveats 

Keeping in mind the foregoing, it is my intention to do the following to make sure that my usage fall clearly within fair use parameters:

Disclaimer—I will place a disclaimer on the site as follows:  “This is an independent web resource for history, commentary, and criticism purposes, and is not owned, sponsored by, or affiliated with any third party including Edgar Rice Burroughs, Inc, or Warner Bros Studios.”

No More than Necessary  I will not use any logo, design, or special font in referring to Tarzan.

In the editorial content I will make certain that it is clear that I do not speak for or represent Edgar Rice Burroughs, Inc., or the Burroughs family, or any other entity associated with the Tarzan mark.