Former Beach Boy wipes out in Ninth

In Brother Records Inc v Jardine, the Ninth Circuit has affirmed the decision of the US District Court for the Central District of California that use by a former member of the Beach Boys of marks that incorporated the BEACH BOYS mark was neither a descriptive nor a nominative fair use, and therefore constituted trademark infringement.

Al Jardine was a member of the Beach Boys. In 1967 the band members placed ownership of the BEACH BOYS mark in a holding company. Following the break-up of the band, Jardine continued to perform with his own band, using marks such as THE BEACH BOYS FAMILY AND FRIENDS, BEACH BOYS AND FAMILY and simply THE BEACH BOYS. The holding company sued Jardine for trademark infringement.

The appellate court affirmed the district court's grant of injunction, holding that Jardine's use of the BEACH BOYS mark was neither a descriptive fair use nor a nominative fair use. The court held that the descriptive fair use defence was inapplicable because Jardine did not use the words 'beach boys' in their descriptive sense. On the question of nominative fair use, the appellate court restated the principles it had established in New Kids on the Block v New Am Publishing Inc, 971 F2d 302 (9th Cir 1992):

"First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder."

Although the court held that Jardine's uses of the BEACH BOYS mark satisfied the first two criteria, it held that the defence failed under the third because Jardine's promotional materials used the mark in a way that suggested sponsorship by the holding company.

The result in this case is the latest in a series of Ninth Circuit cases demonstrating the continued durability of the nominative fair use doctrine. By contrast, the Seventh Circuit decided at least two cases last year in which the doctrine might have been applied, but was neither discussed nor rejected. Until the Seventh Circuit squarely confronts the New Kids analysis, it will remain unclear whether there is in fact a split between the circuits.

John C Nishi, Wilson Sonsini Goodrich & Rosati, Palo Alto

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