SIVACRACY.NET: More on the Aggie "Saw'em Off" conflict

Michael Madison at Madisonian.net:

... There is a use-it-or-lose-it mentality to lots of trademark law, but that logic shouldn’t apply here. Trademark law doesn’t require that UT abandon good sense; there is no reason that UT’s mark and all kinds of non-confusing parodies can’t co-exist. Moreover, I don’t know that an independent First Amendment or parody defense is needed here, and I don’t know whether there is or should be a constitutional right to make fun of someone. But if that right exists nowhere else, it has to exist when it comes to talking about your college’s archrival. ...

And William McGeveran over at Info/Law writes:

As has been reported widely (such as this AP story), the University of Texas recently sued a small business that sells fan-wear to supporters of its football archrival Texas A&M. Some of the defendants’ products feature a parody of the Longhorns’ trademarked logo, involving those horns being sawed off. Defendants claim that variations of “Saw ‘Em Off!” have been standard cheers for A&M supporters for decades. (Demonstrating the tone-deafness of some of my fellow lawyers, the complaint was filed days after the Longhorns suffered an embarrassing loss to the Aggies on the football field.) Of course, defendants now have a web site calling attention to their plight and seeking donations for their legal defense. The great commentary available online includes observations from Mike Madison and also a pained Siva Vaidhyanathan choosing between two of his great loves, the Longhorns and the public domain.

As they both point out, this is another example of overreaching by trademark holders. It is also, though, a marvelous example of the disarray in trademark fair use doctrine, a subject I have been studying. The defendants’ answer to the complaint advances three distinct affirmative defenses related to the fairly straightforward idea that they have a right to make fun of UT using the team’s logo. Those defenses are labeled “First Amendment,” “Texas Constitution,” and “Fair Use/Parody.” (The Texas constitutional defense, of course, applies only to state law claims, which are roughly half the counts of the complaint.)

It seems obvious that there ought to be a single doctrine within federal trademark law that covers such cases, and that resort to constitutional defenses should be unnecessary. But there isn’t any such clear guidance about what rules cover the “fair use/parody” type of defense. In infringement cases, the statute provides only limited protection for use of trademarked terms in their English-language descriptive sense — not the situation here. There are exclusions for certain types of fair uses under the newly revised federal law on trademark dilution, but it is not even crystal-clear that this situation falls within those exclusions either. So counsel for the Aggie fans (led by an important partner at a major Texas law firm) are left with an uncertain legal landscape. This is one of the big doctrinal problems in trademark law.