101 Iowa L. Rev. 1949 (2016)
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Abstract
The ever-expanding reach of trademark law and the narrowing strictures of trademark law’s fair use doctrine demand new ways of thinking about defenses in artistic use cases. Trademark law currently acknowledges two types of expressive use as “fair”: works that target or comment upon a trademarked work itself, and works that somehow “transform” the original. Defending a claim of infringement on these grounds is lengthy, fact-intensive, and, above all, expensive—thereby chilling protected expression. These defenses also do not adequately capture numerous modes of modern-day artistic expression, many of which do not even recognize a unique “original” to comment upon. This Article argues for increasing the use of genericide or genericness defenses in expressive use cases.
Genericide is a doctrine in which a formerly-protectable mark is held to be unprotectable because it no longer signifies the source or producer of the product (e.g., Aspirin as a product made by Bayer) but instead a category or genus of product (aspirin as pain reliever that a generic manufacturer can call their product). Defendants in expressive use cases should argue that the formerly-protectable mark has become generic in a specific market or industry as signifying not the producer but a category or genus of product—for example, that Cristal has become, in the rap industry, generic for champagne. Rather than claiming transformativeness or critical commentary in the hopes of winning a fair use defense, artists should emphasize that they did not, for example, reference Louis Vuitton to target or comment on either the mark itself or its producer—but rather that Louis Vuitton has become generic in the art industry as a general way of signaling a luxury product.
This defense would have the advantage of invalidating a trademark once and for all within a specific industry. The law’s present focus on forcing every expressive use into the fair use defense does art a disservice by recognizing only one type of expressive use—parody—as “fair.”