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Supreme Court Will Decide Whether Fair Use Defense Survives a Showing of Likely Confusion

By Stephen W. Feingold, Gerry A. Fifer and Elyse A. Marcus

On Jan. 9, 2003, the U.S. Supreme Court granted certiorari to decide whether a fair use defense to trademark infringement can trump a finding of likely confusion. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061 (9th Cir. 2003), cert. granted, 124 S. Ct. 981 (2004). The decision to grant certiorari in this case is especially interesting in light of other recent cases also from the Ninth Circuit in which certiorari was denied.

Among the cases not accepted by the Court is Jardine v. Brother Records, Inc., 318 F.3d 900 (9th Cir.), cert. denied, 124 S. Ct. 155 (2003). In that case, the Ninth Circuit re-articulated its understanding of the fair use and nominative fair use doctrines and found that the defendant's use of THE BEACH BOYS was not traditional fair use because the term was not used in its ordinary descriptive sense, but as a trademark. The Ninth Circuit also found that the “nominative fair use defense” did not apply because the defendant could not show that he had done nothing to imply sponsorship or endorsement by the plaintiff.

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