In 1992, the Ninth Circuit Court of Appeals codified the doctrine of “nominative fair use” of another’s trademark, in the case of New Kids on the Block (“New Kids”) versus News America Publishing, Inc. [1] In the case, New Kids – an American boy band known for songs like “You Got It (The Right Stuff)” [2] and their Grammy-nominated “Hangin’ Tough” [3] – sued newspaper companies of News America Publishing, Inc. (d/b/a Star Magazine) and Gannett Satellite Information Network, Inc. (d/b/a USA Today, Inc.) for two separate nationally published polls (about the New Kids) akin to today’s Buzzfeed quiz. [4] USA Today wanted to know “Who’s the best on the block?”, while Star Magazine needed answers to “Now which kid is the sexiest?” Pre-internet and computer (at least in the modern sense), these polls were published in print and required readers to call-in for a fee to cast their vote for Donnie Wahlberg, or whoever they thought was sexiest New Kid.
While the New Kids were surely interested in the results of the polls (who wouldn’t be?), they took issue with these newspaper companies profiting off the use of their “New Kids” trademark in the published polls.
Ultimately, the district court granted summary judgment for the newspaper companies, and the Ninth Circuit later affirmed this outcome on different grounds. These grounds are what we now commonly refer to as the “nominative fair use” doctrine with the rationale that “where the only word reasonably available to describe a particular thing is pressed into service” such use of the word is nominative and “outside the strictures of trademark law.” [5] Think “Chicago Bulls” instead of “the professional basketball team from Chicago” or “New Kids” instead of “American boy band with Donnie Wahlberg.” In reaching this, the Court laid out a three-part test:
- The product or service in question must be one not readily identifiable without use of the trademark;
- Only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. [6] And so, the legal test for nominative fair use was born, albeit to mixed reviews among the other circuit courts. Today, there is still no consensus or majority view on how to apply it, although it has had a noticeable and lasting impact on trademark law, and in particular in the realm of pop culture (imagine a world without Buzzfeed quizzes and polls!).
Certain circuits have been friendlier to the Ninth Circuit’s approach than others. While friendlier than some others, the Seventh Circuit has never flat out said it has adopted the nominative fair use doctrine. But if it looks like a duck, swims like a duck, and quacks like a duck, then it’s probably adopted the nominative fair use doctrine regardless of whether it has expressly touched the issue since New Kids.
First, while the Seventh Circuit district courts have stated for years that “the Seventh Circuit has not explicitly adopted the nominative fair use doctrine,” [7] these same courts have repeatedly applied the three-part test regardless. [8] And, no such applications have been overturned by the Seventh Circuit. Second, the Seventh Circuit has added the nominative fair use doctrine to its model jury instructions. [9] In doing so, the Seventh Circuit directly lists the three-part test, and further acknowledges, as “[a]uthority” for the instruction, that “[a]lthough the Seventh Circuit has not considered the standards for the nominative fair use defense, the district courts in the Seventh Circuit have applied the Ninth Circuit’s rule for nominative fair use.” [10]
With this in mind, if the issue is ever actually considered by the Seventh Circuit, and the Court needs to address the issue, it seems likely that the Seventh Circuit would adopt the nominative fair use doctrine (now accepting bets on a “popular betting app.” But do I mean FanDuel, DraftKings, or some other?).
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[1] New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992).
[2] https://www.youtube.com/watch?v=tbIEwIwYz-c (accessed Mar. 29, 2022).
[3] https://www.youtube.com/watch?v=By86PcLufOU (accessed Mar. 29, 2022).
[4] https://www.buzzfeed.com/ (accessed Mar. 29, 2022).
[5] New Kids on the Block, 971 F.2d at 308.
[6] Id.
[7] DeVry Inc., v. Univ. of Med. & Health Scis., 2009 U.S. Dist. LEXIS 7876, *14 (N.D. Ill., Feb. 3, 2009).
[8] See e.g., Data Mgmt. Ass’n Int’l v. Enter. Warehousing Sols., 2020 U.S. Dist. LEXIS 242699 (N.D. Ill., Dec. 28, 2020) (applying the nominative fair use doctrine without even referencing to New Kids); Martin v. Wendy’s Int’l, Inc., 2017 U.S. Dist. LEXIS 64435 (N.D. Ill., Apr. 28, 2017) (applying the New Kids’ nominative fair use doctrine through Abdul-Jabbar v. GMC, 85 F.3d 407 (9th Cir. 1996)) aff’d Martin v. Wendy’s Int’l, 714 Fed. Appx. 590 (7th Cir., 2018) (without reaching the issue of nominative fair use); Slep-Tone Entm’t Corp. v. Elwood Enters., Inc., 2014 U.S. Dist. LEXIS 54872 (N.D. Ill., Apr. 21, 2014); Games Workshop, Ltd. v. Charthouse Studios, LLC, 2012 U.S. Dist. LEXIS 168360 (N.D. Ill., Nov. 27, 2012).
[9] https://www.ca7.uscourts.gov/pattern-jury-instructions/7th_cir_civil_instructions.pdf (accessed Mar. 29, 2022).
[10] Id.
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