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Webcast Title Using Trademarks of Another Deemed Nominative Fair Use

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By Robert A. Clarke and David G. Barker

The Ninth Circuit Court of Appeals recently held that the title of a webcast, which included two trademarks belonging to another party, constituted nominative fair use, which protected the defendants from trademark infringement claims.

The plaintiff in Applied Underwriters v. Lichtenegger offers workers’ compensation insurance to employers through its EquityComp program.  Applied Underwriters owns federally registered trademarks for “Applied Underwriters” and “EquityComp.”  Defendants published a webcast critiquing EquityComp’s services, entitled “Applied Underwriters’ EquityComp® Program: Like it, Leave it, or Let it be?”  Applied Underwriters sued defendants for trademark infringement for including the trademarks in the webcast’s title, asserting that defendants were attracting customers to their webcast because of the customers’ mistaken impression that defendants’ webcast is sponsored or affiliated with Applied Underwriters.  In response, defendants contended that the use of the marks in the webcast’s title was nominative fair use.

To qualify for the nominative fair use defense, the mark used must be the only word “reasonably available to describe a particular thing,” which requires parties asserting the defense to satisfy three requirements: (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark may be used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Siding with defendants, the court held that defendants’ webcast title qualified as nominative fair use because it “did not discuss workers’ compensation programs generally, but rather [Applied Underwriters’] specific offering.”  Defendants therefore “needed to communicate that they critiqued the EquityComp program.”  The court also noted that defendants did not use more of the trademarks than was necessary to convey their message.  As such, defendants met the first two requirements.

The court also held that facts pertaining to the third requirement of nominative fair use in this case were especially persuasive, because defendants had clearly used the marks only to identify the products they were criticizing.  “[C]riticism of a product tends to negate the possibility of confusion as to sponsorship and endorsement.”