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Refashioning Nominative Fair Use: The Implications of International Information Systems Security Certification Consortium v. Security University

Source: Grill IP patents news

Nominative-Third-Use-Second-CircuitAre you allowed to call a spade a spade? When it comes to trademark use, the answer is: depends on which court hears your complaint. It’s all about how to interpret the so-called “nominative fair use” principle, in other words whether you can mention another person’s or organization’s trademark that you reference, even if you don’t have a license to use this trademark. The most recent case illustrates the divide between the Second, Third, and Ninth Circuits over how to assess nominative fair use claims, after the Second Circuit shot down a district court’s grant of summary judgment on behalf of International Information Systems Certification Consortium (ISC 2), which charged Security University with trademark infringement. The University defended its use of ISC 2’s mark under the nominative fair use principle. The lesson is that defendants claiming nominative fair use will have varying levels of success, depending on the standards used by each Circuit.

The Case

ISC 2 is a non-profit organization responsible for developing standards for the information security industry. Its certification program uses the acronym “CISSP®” to describe a “Certified Information Systems Security Professional.” Individuals take a CISSP® certification test administered by ISC 2 to demonstrate a standard of competency in the information security field. Security University is a for-profit company established by CISSP® certified defendant-appellee Sondra Schneider. The University provides instruction in information security, preparing individuals for their certification tests. The purported infringement concerns Security University’s use of ISC 2’s mark in connection with their certification-specific training courses. While ISC 2 does not dispute Security University’s right to use its mark to indicate the nature of its services, the non-profit objected to a series of ads released by the defendant. These ads “misleadingly suggested” that instructor Clement Dupuis reached an advanced level of certification as “Master CISSP/CISSP Master.” The University rejected a request by ISC 2 to remove the title of “Master,” reasoning, “Master Clement Dupuis is a Male Teacher [and] thus he is a Master according to the dictionary. This argument, while based on definitional maneuvering, was enough for the district court, which granted summary judgment to Security University. ISC 2’s claims of false designation of origin and infringement were excluded by the doctrine of nominative fair use. In sum, the University’s apparent misuse of the certification mark had not led to confusion as to the source of the courses or the relationship between the two parties. In International Information Systems Security Certification Consortium v. Security University, LLC, the Second Circuit reversed this summary judgment in favor of the defendant, creating a new standard to evaluate nominative fair use in the process.

Assessing Nominative Fair Use

    The nominative fair use doctrine refers to instances where a third party’s trademark is used to denote a company’s goods or services. Often, this is done when that third party is identifiable exclusively by their trademark. Having a valid nominative fair use defense, the defendant must demonstrate that such use does not misconstrue the relationship between the company and the third party nor create any confusion for consumers. Methods of determining nominative fair use vary from jurisdiction to jurisdiction. In the Third Circuit, nominative fair use is treated as an affirmative defense: any defendant satisfying the conditions of nominative fair use avoids liability for infringement, regardless of the likelihood of consumer confusion. The Ninth Circuit rejects this broad approach, opting to implement a test to assess nominative fair use that substitutes for the multi-factor Polaroid consumer confusion test (based on a landmark judgement from 1961).

    The Second Circuit eschewed both methods, determining that the three fair use factors established by the Ninth Circuit would be considered in addition to standard “likelihood of confusion” factors. Along with examining each Polaroid factor, courts should study:

  • Whether it is necessary to use the plaintiff’s mark to describe both parties’ services
  • Whether the mark is used only so much as is necessary to identify the defendant’s product
  • Whether the defendant’s actions imply a non-existent endorsement from the plaintiff, inappropriately portraying the relationship between both parties

The major differences between the Ninth and Second Circuits’ approaches concern strength of language. The Second circuit adopts stricter language, effectively raising the bar for those claiming a nominative fair use defense. A “not-readily identifiable” Ninth Circuit requirement changed into a “necessary” one, and a “reasonably necessary” identification of the service became simply “necessary.”

Moving Forward

    By adding three nominative use factors to the Polaroid confusion test, the list of requirements necessary to qualify for nominative fair use has expanded from eight to eleven. That makes it slightly more difficult to meet the conditions of nominative fair use, which implicitly adds to the costs of a successful defense. Judges must now consider additional factors, impeding potential rulings for defense on summary judgments and slowing down the litigation process. International Information Systems Security Certification Consortium v. Security University, LLC not only signifies a split between Circuits, but serves as a warning to companies pursuing use of a third party’s mark for marketing purposes. Doing so may lead to varying liability depending on one’s jurisdiction, and these companies should act to clarify any potential confusion, whether among consumers or the mark’s legal owner.

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