Second Circuit muddies nominative fair use more than 9th Circuit ever has

International Information Systems Security Certification
Consortium, Inc. v. Security University, LLC, No. 14-3456-cv (2d Cir. May 18,
The Second Circuit manages to make its multifactor confusion
test worse (and you thought it had already hit rock bottom by considering
quality of the goods, which hurts the defendant if there’s a quality difference
and hurts the defendant if there’s equal quality).  ISC2 sued Security University and Sondra
Schneider, alleging that SU’s use of ISC2’s certification mark constituted
trademark infringement and dilution. 
The district court’s finding of lack of fame and thus no dilution isn’t
challenged on appeal.  The court of
appeals reversed the district court’s finding of nominative fair use and
remanded both for consideration of the multifactor test, now with three new
factors added, and also for consideration of endorsement confusion as well as
source confusion.
ISC2 registered a certification mark, CISSP, to denote a “Certified
Information Systems Security Professional” who has met certain requirements and
standards of competency in the information security field, including passing
the CISSP certification examination that ISC2 administers.  Schneider is CISSP-certified, and offers
information security training through SU, which used the CISSP mark in
connection with certification-specific training courses.  ISC2 doesn’t object to SU using the mark to
indicate that its services attempt to prepare students for the CISSP certification
examination. SU instructors also may accurately identify themselves as being
CISSP-certified, so long as they follow ISC2’s regulations governing the use of
the mark.
But ISC2 objected to ads run between 2010 and 2012, which,
ISC2 argued, misleadingly suggested that SU’s instructor, Clement Dupuis, had
attained some higher level of certification as a “Master CISSP” or “CISSP
Master.” E.g., “MASTER THE CISSP DOMAINS with the Master CISSP Clement Dupuis”;
“You are
taught by CISSP Master Clement Dupuis, the father of website.”  When ISC2 objected, Schneider responded 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.” (I share Eric
Goldman’s distaste for this response
The district court found that, applying nominative fair use,
there was no source confusion.  Adding “Master”
didn’t implicate source confusion or mislead anyone about who was offering the
services in question.  It reasoned that, “[b]ecause
a certification mark is intended to signal a quality-related characteristic of
the good, rather than source or origin, . . . it is hard to imagine a case in
which use of a certification mark by a person who has met the requirements for
certification would likely lead to confusion as to source or origin, or would
not be a nominative fair use.”  Though the
district court “asserted” that no reasonable juror could find sponsorship or
endorsement, “its conclusion was based entirely on the fact that the
advertisements did not ‘suggest[] that (ISC)2 itself is offering the classes.’”  The district court also pointed to
disclaimers at the bottom of some of the ads disclaiming
endorsement/sponsorship by ISC2.
The court of appeals began by chiding the district court for
not applying the standard multifactor test. 
“[T]he Polaroid factors are not, of course, ‘exclusive’ and should not
be applied ‘mechanically.’ No single factor is dispositive, and cases may
certainly arise where a factor is irrelevant to the facts at hand. But it is
incumbent upon the district judge to engage in a deliberate review of each
factor, and, if a factor is inapplicable to a case, to explain why.” 
Also, confusion over source isn’t the only actionable
confusion; confusion over affiliation or sponsorship is also actionable. Weight
Watchers International, Inc. v. Luigino’s, Inc., 423 F.3d 137 (2d Cir. 2005)
(confusion over endorsement of or other involvement in defendant’s product was
actionable); Original Appalachian Artworks, Inc. v. Granada Electronics, Inc.,
816 F.2d 68, (2d Cir. 1987) (unauthorized importation and sale of Cabbage Patch
dolls manufactured in Spain with the foreign language adoption papers and birth
certificate infringed because plaintiff’s “domestic good will is being damaged
by consumer confusion caused by the importation of the [Spanish] dolls,” which
were materially different from American dolls).
Further, a certification mark can be infringed in numerous
ways. A professional who uses the mark without being certified can infringe, as
can a competing certification organization, but it’s also possible to infringe
in other ways, even if the party has met all the requirements for certification.
The court of appeals pointed to a TTAB ruling that “even where a defendant’s
product contains ingredients which have been certified by the owner of a
certification mark, the defendant’s incorporation of that certification mark
into its own composite trademark might be likely to cause confusion as to
sponsorship, affiliation or connection.” Tea Bd. of India v. Republic of Tea,
Inc.,  U.S.P.Q.2d 1881 (T.T.A.B. 2006).  Thus, SU  may have infringed on ISC2’s certification
mark by identifying its certified instructor as “Master CISSP” and “CISSP
Master.”  Just to hammer the point home,
the court of appeals noted that it wasn’t necessary that the defendant’s use be
use “as a [certification] mark.” Even though neither ISC2 nor SU offers a “Master
CISSP” or “CISSP Master” certification, “customers [may] be led to believe
[ISC2] has introduced a new line” of certifications. The court could also take
into account the lack of such a certification in the proximity of the
products/bridging the gap factors.
So what is the
proper analysis?  “This Court has
repeatedly urged district courts to apply the Polaroid factors even ‘where a factor is irrelevant to the facts at
hand.’”  Nominative fair use is a test
that replaces the ordinary multifactor test in the Ninth Circuit and thus is
used to determine whether confusion is likely. 
It’s an affirmative defense in the Third Circuit, which “affords
defendants broader protection” because it applies even if confusion is likely. [Note
that this is a really weird reading of the defense; in practice the Ninth
Circuit version is a ton broader.]  The
court of appeals rejected both approaches; nominative fair use isn’t an
affirmative defense because it’s not in the statute, unlike descriptive fair
And the Ninth Circuit approach is wrong because “we see no
reason to replace the Polaroid test
in this context,” even though “we also recognize that many of the Polaroid factors are a bad fit here and
that we have repeatedly emphasized that the Polaroid
factors are non-exclusive.” [This is really, really dumb lumping.  “Bad fit” and “irrelevant” aren’t reasons?  The Second Circuit has doubled down on its
initial decision, decades ago, to treat infringement of competing and
noncompeting goods with the same test.] 
In Tiffany v. eBay,
the Second Circuit already “recognized that a defendant may lawfully use a
plaintiff’s trademark where doing so is necessary to describe the plaintiff’s
product and does not imply a false affiliation or endorsement by the plaintiff
of the defendant.”  [Apparently the court
is not overruling its prior decision in Tiffany,
even though that decision didn’t apply the Polaroid
factors or fulfill its alleged duty to explain why the Polaroid factors didn’t apply, because reasons.  If I were a defendant, I would point to this
court’s endorsement of Tiffany to
justify sticking with the initial analysis.]
As a result, “district courts are to consider the Ninth
Circuit and Third Circuit’s nominative fair use factors, in addition to the Polaroid factors.”  Specifically, 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 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.
In assessing (2), 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.”  In assessing (3), “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.”  [How
would you tell whether the defendant did “anything” other than using the mark that
would suggest sponsorship or endorsement? 
I will let the classic X-Files episode Jose Chung’s From Outer Space
answer for me:]
“How the hell should I know?”
[So, does comparative advertising qualify for the defense in
the Second Circuit?  It does in the Ninth
Circuit version because using the P’s mark is necessary to identify the P,
which is all that the Ninth Circuit requires. 
It does not in the Third Circuit version because using the P’s mark is
not necessary to identify the D, even if it is necessary to convey the
comparative message.  If district courts
are to consider both circuits’ factors, as suggested by the Second Circuit’s
initial language, then comparative advertising at least has a case for
nominative fair use protection, but if courts are to consider only the
restatement offered by the Second Circuit here, which tracks the Third
Circuit’s version, then comparative advertising should be excluded.]  
Remand “for reconsideration of the Polaroid factors in addition to the nominative fair use factors,
keeping in mind the numerous types of confusion that are relevant to an
infringement analysis other than mere source confusion and the numerous ways in
which a certification mark may be infringed.” 
That ought to be fun.

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