Against Fair Use: The Case for a Genericness Defense in Expressive Trademark Uses

The ever-expanding reach of trademark law and the narrowing strictures of trademark fair use doctrine demand new ways of thinking about defenses in artistic use cases. The present defenses of First Amendment free speech and fair use, as interpreted by courts, acknowledge just two types of expressive use as “fair”: those that target or comment upon the trademarked work itself, and/or those that somehow “transform” the original. Moreover, defending a claim of infringement — even if the use is ultimately found to be protected — is lengthy, fact-intensive, and, above all, expensive, creating a chilling effect on speech. This Article makes a plea for increasing the use of genericide or genericness defenses in expressive use cases. That is, a defendant would argue that the formerly-protectable mark has become generic in a specific market or industry as signifying not the source of the product but a category or genus of product — for example, that Cristal has become, in the rap industry, generic for champagne. Rather than focusing on arguments of transformativeness in the hopes of winning a fair use defense, artists should emphasize that they did NOT use the work as a means of targeting the work itself — that is, anti-transformativeness. Not only does this defense have the advantage of invalidating a trademark once and for all within a specific industry, thus freeing up the mark for all to use, but the mere threat of having one’s mark be found generic also serves as a deterrent to overzealous trademark owners, who may think twice before pursuing blatantly protected uses of their marks. Furthermore, the more we focus on a secondary use’s “transformativeness” or the original mark’s uniqueness, the less fair other types of artistic use which do not recognize a unique original nor the ability of art to transform — for example, satire, pastiche, and appropriation — become. Conversely, the more we focus on the genericity of a mark, the more likely the mark will in fact be deemed generic, as courts often look to expressive uses to determine if a mark has undergone genericide. But our present focus on fitting every expressive use into the fair use defense does art a disservice, by recognizing only one type of expressive use — parody — as “fair.”