Nominative fair use: The Second Circuit names names

Thurgood Marshall US Courthouse
Second Circuit

Nominative fair — the “unauthorized” use of a trademark as a trademark specifically to invoke the trademark, as opposed to its “non-trademark” use to describe the alleged infringer’s goods or services use — has now come East, courtesy of the Second Circuit Court of Appeals in International Information Systems Security Certification Consortium Inc. v. Security University LLC. 

Let’s call this bumbling, cumbersome caption by the short title, “Security University.”

The opinion (link here) (hat tip to Law360) is an important one for a couple of reasons, of which the ruling on nominative fair use is certainly the more important one.  As Bill Donahue’s Law360 piece explains:

The ruling came in a clash between a small IT security company called Security University LLC and the International Information Systems Security Certification Consortium Inc. over whether company misused the organization’s “Certified Information Systems Security Professional” certification mark in advertising its services.

In particular — get this — the defendant was going around calling one of its trainers a “Master” of this particular techie domain, and just wouldn’t stop:

ISC2 objects to some of 1 SU’s advertisements, run between 2010 and 2012, which, ISC2 argues, misleadingly suggested that SU’s instructor, Clement Dupuis, had attained some higher level of certification as a “Master CISSP” or “CISSP Master.” . . .

SU began using the term “Master” 1 in May 2010. On June 9, 2010, ISC2’s counsel wrote to Schneider asking that she cease using the phrase “Master CISSP” in SU’s advertisements. On June 13, 2010, Schneider emailed Marc Thompson, an employee of a third party entity that oversees seminars on ISC2’s behalf, stating that “SU will continue to use the word Master. Master Clement Dupuis is a Male Teacher [and] thus he is a Master according to the dictionary.”

“He is a Master according to the dictionary.”  

This was the point, as we have learned, at which it should have been clear that if this case were to be litigated, someone’s story was really, really going to stink up the place.

Security UniversityAnd, indeed, this was evidently the point at which the Second Circuit found it necessary not, as some other courts do, to upend the law and even its own precedent to do justice, but address a longstanding question and actually fix up a fairly problematic lower-court decision. 

One thing that did not happen was anything particularly flashy or earth-shattering (or, as we’ll see, anything that is all that easy to recite over that third or fourth draft beer at Meet the Bloggers, so don’t ask me).  For one, the court rejected the approach of the Third Circuit, which treats NFU as an affirmative defense whereby if a defendant can show NFU, it’s done, and there’s no LIKELIHOOD OF CONFUSION analysis (Century 21 Real Estate Corp. v. Lendingtree, Inc., 1 425 F.3d 211 (3d Cir. 2005)). The court justifies this in hauntingly familiar language (you’ll see what I mean), explaining that it won’t go where Congress wouldn’t go:

The Third Circuit’s basis for treating nominative fair use as an affirmative defense is that the Supreme Court has treated classic, or descriptive, fair use as an affirmative defense. But in treating descriptive fair use as an affirmative defense, the Supreme Court [in KP Permanent Make?Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118?20 (2004)] was interpreting a provision of the Lanham Act which provided that claims of infringement are subject to various defenses, including . . . [descriptive fair use].  That is, under the Supreme Court’s interpretation, the Lanham Act explicitly provides that descriptive fair use is an affirmative defense. And nominative fair use cannot fall within § 1115(b)(4)’s language, as nominative fair use is not the use of a name, term, or device otherwise than as a mark which is descriptive of and used merely to describe the goods or services of the alleged infringer. Nominative use involves using the mark at issue as a mark to specifically invoke the mark?holder’s mark, rather than its use, other than as a mark, to describe the alleged infringer’s goods or services. If Congress had wanted nominative fair use to constitute an additional affirmative defense, it would have provided as such. We therefore hold that nominative fair use is not an affirmative defense to an infringement claim.

Security University at 36-37 (emphasis added; citations and internal quotes omitted).  

What’s the hauntingly familiar part?  “If Congress had  wanted, of course” — kind-of-sort-of the same strict interpretation of the Lanham Act’s language the Second Circuit employed in ITC Ltd. v. Punchgini, Inc., 482 F. 3d 135 (2d Cir. 2007) (ITC, benefiting a defendant; in Security University, benefiting a plaintiff) — which formulation, as noted in this post, was utilized but kind-of-sort-of turned right on its head to mean more or less the exact opposite of what it seems to say.

Again, though, that’s where the similarities end.  

Indeed, far from a quick, dramatic stroke, the Second Circuit wouldn’t even go as far as the Ninth Circuit, which switches out its usual likelihood of confusion analysis to a different one to be employed when nominative fair use has been shown.  Instead, the Second Circuit created its own hybrid (see pages 38-39):

Because we believe that the nominative fair use factors will be helpful to a district court’s analysis, we hold that, in nominative use cases, district courts are to consider the Ninth Circuit and Third Circuit’s nominative fair use factors, in addition to the Polaroid factors.  When considering a likelihood of confusion in nominative fair use cases, in addition to discussing each of the Polaroid factors, courts are to consider: (1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and (3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or 1 endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services.

Ninth Circuit Court of Appeals
Ninth Circuit

Did I suggest this would be simple?  No, I didn’t, right?  Good.  Because this isn’t the Seventh Circuit, where they just say punchy things and get it done with — there’s more:

When assessing the second nominative fair use factor, courts are to consider whether the alleged infringer “step[ped] over the line into a likelihood of confusion by using the senior user’s mark too prominently or too often, in terms of size, emphasis, or repetition.” [A page of citations and parentheticals.]

Additionally, when considering the third nominative fair use factor, courts must not, as the district court did here, consider only source confusion, but rather must consider confusion regarding affiliation, sponsorship, or endorsement by the mark holder.  . . .

Which brings us in a roundabout way to another important holding here, which is that it was evidently necessary to remind even a district court judge of something that even lesser persons could forget from time to time, which is that the Lanham Act was amended even before LIKELIHOOD OF CONFUSION® was born.

Congress struck language requiring confusion, mistake or deception of “purchasers as to the source of origin of such goods and services” in 1962.  And supercharging the law for maximum revenue generation, in 1989 it revised Section 43(a) (if I may say) to protect against likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, or approval.

That’s good as far as it goes, and the court goes on at length about this in the opinion.  And that’s one thing that’s a bit odd here.  Well, one of two things.

The court in fact spends a lot of time, for some reason, explaining all about enforcement of certification marks under 15 U.S.C. § 1054, ending with the commonplace that “[c]ertification marks are generally treated the same as trademarks for purposes of trademark law,” quoting Levy v. Kosher Overseers Ass’n of Am., Inc., 104 F.3d 38, 39 (2d Cir. 1997).  And, as I said, the panel then goes on to set the district court right on the point about origin versus affiliation, sponsorship, etc.  But of course, even if the Lanham Act had not been amended in 1962 and again in 1989, … well, certification marks aren’t about origin at all!  Look how they’re defined in 15 U.S.C. § 1127:

The term “certification mark” means any word, name, symbol, or device, or any combination thereof—

(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,

to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

Nothing to do with origin, by definition.  The opinion acknowledges this in footnote 3 on page 19, which says, yeah, “Indeed, considering only source confusion would make little sense in the context of certification marks, as certification marks are generally not used to designate source at all.”

Marshall Courthouse, late afternoon, spring 2016
Second Circuit a second time

Little sense.  Doing so was plain error by the trial court.  But the sentence just quoted should have been all the discussion necessary.  So why does the decision go on for four pages talking about all the different kinds of confusion that aren’t source confusion?

Color me likely to be confused.

And then there’s the other thing I can’t figure.  Pardon the repetition:

SU began using the term “Master” 1 in May 2010. On June 9, 2010, ISC2’s counsel wrote to Schneider asking that she cease using the phrase “Master CISSP” in SU’s advertisements. On June 13, 2010, Schneider emailed Marc Thompson, an employee of a third party entity that oversees seminars on ISC2’s behalf, stating that “SU will continue to use the word Master. Master Clement Dupuis is a Male Teacher [and] thus he is a Master according to the dictionary.”

Trademark lawyer Ron ColemanI don’t get how this didn’t set off the district judge’s, um, baloney alarm.  Or maybe it just did, but the court nonetheless concluded there was no legal remedy for the scam.  And maybe, ultimately, there isn’t — the Second Circuit, after all, didn’t rule that there is, only that the claims were erroneously dismissed under Rule 12(b)(6) and should be reinstated and the case remanded for further proceedings.

That is still a long way from proving that anyone was harmed by the rather bizarre aggrandizement of “Master Clement Dupuis” here.  In the case of a certification mark, there is perhaps an argument to be made that the owner of such a mark is entitled to close control over the manner in which that mark is “modified.” Remember that plaintiff’s argument is that this use “misleadingly suggested that SU’s instructor, Clement Dupuis, had attained some higher level of certification as a ‘Master CISSP’ or ‘CISSP Master,'” — which would presumably cheapen the value of “generic” CISSP-certified trainers, who would be presumed to be cadets or midshipmen. Presumably.

And, on the other hand… as stupid as the “male teacher” and “dictionary” riposte was… It is possible, after all, that the answer here is that the defendant was trying to get across that Clement Dupuis is The Man at giving this training.

And who, really, knows what the back story is here between Clement Dupuis and the International Information Systems Security Certification Consortium Inc.?  Maybe, in fact, the district judge knows, and — as happens only about 90% of the time — the appellate opinion tells us nothing about that story at all?

Either way, if you haven’t bailed on me yet, the takeaway is that whether bad cases or so-so cases or perfectly fabulous cases, it’s cases what make the law, and the law in the Second Circuit is that nominative fair use is a thing. It’s not an affirmative defense, but it gives judges a bunch of extra, and eminently reasonable prongs (or elements, or factors, or whatever they call them now) that live alongside Polaroid if NFU gets into the case and has any legs.

And now you, sir (sorry — this social construct only works for boys!) have mastered NFU too!

Ron Coleman

I write this blog.