Brother Records, Inc. v. Jardine
318 F.3d 900 (2003)
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Rule of Law:
The nominative fair use defense to trademark infringement is unavailable when a defendant's use of the trademark suggests sponsorship or endorsement by the trademark holder, which can be evidenced by the prominence of the mark in promotional materials and instances of actual consumer confusion.
Facts:
- In 1961, Alan Jardine, Mike Love, and the Wilson brothers formed the band The Beach Boys.
- In 1967, the band members incorporated Brother Records, Inc. (BRI) to hold and administer their intellectual property, including the registered trademark 'The Beach Boys'. Jardine is a shareholder and director of BRI.
- By 1998, personal difficulties led to a situation where Love and Jardine no longer wished to tour together.
- In July 1998, BRI's board, including Jardine, voted to grant each shareholder a non-exclusive license to tour using the band's name.
- BRI executed a license with Mike Love, which contained specific terms to protect the trademark's value.
- Jardine began touring with his own band under names like 'Beach Boys Family and Friends' without a license, after stating one was unnecessary.
- Jardine and BRI failed to agree on license terms; Jardine's proposal contained different royalty rates and unapproved managers compared to Love's license.
- Jardine's use of the name caused actual confusion among concert promoters and audience members, some of whom believed they were booking or attending a show by the original The Beach Boys.
Procedural Posture:
- Brother Records, Inc. (BRI) filed a complaint against Alan Jardine in the U.S. District Court, alleging trademark infringement.
- Jardine answered, asserting affirmative defenses and counterclaimed for breach of employment and license agreements.
- The district court issued a preliminary injunction against Jardine's use of the trademark.
- The district court denied Jardine's motion to amend his counterclaim.
- The district court granted BRI's motion for summary judgment on the trademark infringement claim and on Jardine's counterclaims, issuing a permanent injunction.
- Jardine (appellant) appealed the summary judgment rulings and the denial of his motion to amend to the U.S. Court of Appeals for the Ninth Circuit, with BRI as the appellee.
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Issue:
Does a former band member's use of a band's registered trademark in promoting his separate musical group constitute nominative fair use when the use suggests sponsorship by the trademark holder and causes actual consumer confusion?
Opinions:
Majority - Tashima
No. A defendant's use of a trademark does not constitute nominative fair use if the user does anything that suggests sponsorship or endorsement by the trademark holder. The court distinguished between classic fair use, which applies when a term is used in its primary, descriptive sense (e.g., 'boys at a beach'), and nominative fair use, which applies when a trademark is used to refer to the trademark holder's product itself (the band The Beach Boys). Because Jardine used the mark in its secondary, trademark sense to refer to the band, the nominative fair use analysis applies. To succeed, Jardine had to satisfy a three-part test: (1) the product is not readily identifiable without the mark, (2) only so much of the mark is used as is reasonably necessary, and (3) the use does not suggest sponsorship or endorsement. While Jardine met the first two prongs, he failed the third. The court found that his promotional materials displayed 'The Beach Boys' more prominently than 'Family and Friends,' his management admitted to using the name for its 'marquee value,' and his use resulted in actual, documented consumer confusion. This evidence demonstrated a suggestion of sponsorship, defeating the nominative fair use defense.
Analysis:
This case provides a clear application of the Ninth Circuit's three-part test for nominative fair use, especially clarifying the third prong regarding sponsorship or endorsement. The decision emphasizes that evidence of actual consumer confusion is a powerful factor in determining whether a use suggests sponsorship, making it difficult for defendants to claim fair use in the face of such evidence. For former members of well-known groups, this ruling establishes a critical precedent: they may refer to their prior affiliation descriptively (e.g., 'Alan Jardine, formerly of The Beach Boys'), but cannot incorporate the trademarked name into their new group's identity in a way that creates a likelihood of confusion.
