Policing the Border Between Trademarks and Free Speech: Protecting Unauthorized Trademark Use in Expressive Works

Artists and other creators of expressive works often include trademarks and trademarked products as part of their works. They do so for a number of reasons, including lighthearted humor, critical cultural commentary, parody, or even simply to shock. In instances where such use is both unauthorized by and perceived as disparaging to the mark owner or the trademarked product, owners have attempted to sue under trademark law to enjoin the expressive use. This Article argues that, under a proper analysis of trademark law, precedent, and the free expression ideal enshrined in the First Amendment, mark owners should rarely, if ever, prevail in such actions. This Article evaluates the current state of the law, criticizing its inconsistencies and equivocations, and suggests that the correct analytical framework for these disputes must protect the public, creative nature of trademarks and their cultural meaning. The proposed framework mandates balancing of the competing public interest factors of marketplace confusion and free expression to resolve infringement cases, with the assumption that this approach will rarely lead to liability for defendants. As for claims of reputational harm, the free expression concerns compel defendant-friendly results in all cases. After defending this framework, this Article then scrutinizes the background legal doctrine framing this debate - the Supreme Court\u27s commercial speech doctrine - to discern its relevance to controversies occasioned by unauthorized trademark use. The Article concludes that as commercialism in artistic works such as feature films increases, the line between commercial and noncommercial speech will blur and will again force reconsideration of the border between trademark law and free speech