Trademark Clearance for Fiction Writers: Navigating Nominative Fair Use
I was visiting the Sundance Film Festival 2025 in Park City, Utah. It was an incredible experience—meeting filmmakers, networking with creative minds, and enjoying the screenings. Despite the cold weather (13°F!) and heavy snowfall, I had a lot of fun. I frequently create posts inspired by questions people ask me at these events, and today’s post tackles a topic relevant to fiction writers: trademark clearance in creative works.
Trademark Issues in Fiction: The Basics
When writing fiction, authors often incorporate real-world brands, products, and trademarks to lend authenticity to their stories. For instance, a character might drive an old Ford pickup, sip Coke at a restaurant, or even own a vintage airplane. While this adds realism, it raises legal questions about trademark use.
Trademarks are protected to prevent consumer confusion and preserve the goodwill of the brand. However, authors can rely on legal doctrines, such as nominative fair use, to include trademarks in their stories. Nominative fair use allows the use of trademarks to describe or reference a product accurately, as long as the use meets certain criteria:
- The product or service must be one not readily identifiable without the trademark.
- Only as much of the trademark as necessary is used.
- The use does not suggest sponsorship or endorsement by the trademark owner.
Practical Examples in Fiction
- Old Ford Pickup: If your character drives an old Ford, you’re likely safe as long as you’re merely referencing the brand to describe the vehicle.
- Vintage Airplane: Similar to the Ford example, describing a plane’s make and model is typically permissible under nominative fair use.
- Coke in Restaurants: Mentioning a character ordering Coke in a restaurant is a common and realistic scenario. As long as the brand isn’t disparaged or used misleadingly, this should fall under fair use.
The Circuit Split on Nominative Fair Use
There’s an ongoing circuit split in the U.S. regarding the application of nominative fair use. The split centers on whether nominative fair use is an affirmative defense or part of the likelihood-of-confusion analysis in trademark cases. Here’s an overview of the key positions:
- Third Circuit: Treats nominative fair use as an affirmative defense. This approach allows defendants to assert nominative fair use even if there is a likelihood of consumer confusion. Being an affirmative defense means that the burden of proof is on the defendant to demonstrate that their use of the trademark satisfies the criteria for nominative fair use. This provides broader protection for trademark defendants and acknowledges that some level of confusion may exist if the use meets the fair use elements.
- Ninth Circuit: Does not recognize nominative fair use as an affirmative defense. Instead, the Ninth Circuit treats confusion in a nominative case as a “foregone conclusion” and focuses on whether the use meets the fair use criteria without separately analyzing confusion. This creates a different framework, one that avoids confusion analysis entirely but may leave defendants with less clarity about their legal position.
- Other Circuits: Some circuits have not fully addressed the issue, leading to uncertainty and inconsistencies in how courts handle these cases.
What is an Affirmative Defense?
An affirmative defense allows a defendant to introduce evidence that, even if the plaintiff’s claims are true, justifies or excuses their conduct. In the context of nominative fair use, this means the defendant acknowledges using the trademark but argues that the use was necessary to describe their own product or service and does not constitute infringement. However, the burden of proving an affirmative defense falls entirely on the defendant, making litigation challenging and potentially costly.
Patents vs. Trademarks: Differences in Litigation
Unlike trademark cases, patent cases are appealed exclusively to the Federal Circuit. This centralized appellate jurisdiction eliminates inter-circuit splits on patent law issues. While intra-circuit splits can occur within the Federal Circuit, they are relatively rare due to the uniformity of decisions in this specialized court. This structure contrasts sharply with trademark law, where the lack of a unified appellate body allows circuit splits, like the one on nominative fair use, to persist. The centralized nature of patent appeals ensures more consistent guidance and predictability for litigants.
More Than Just Trademarks: Other IP Concerns
Trademarks are not the only intellectual property concerns writers and creators should keep in mind. Copyrights and rights of publicity can also impact creative works. Copyright law protects the expression of ideas, such as books, films, and music, while the right of publicity safeguards an individual’s name, image, or likeness from unauthorized commercial use. When crafting realistic stories that involve real-world figures, events, or creative works, it’s essential to ensure compliance with these additional legal frameworks to avoid potential litigation.
My Experience with Nominative Fair Use
In my experience conducting trademark clearance, I’ve found that many large companies simply ignore emails requesting permission to use their trademarks. This can be frustrating for creators seeking clarity and legal certainty. On the other hand, some companies provide clear trademark fair use policies on their websites, outlining how their marks can be used without explicit permission. These policies can be a helpful resource for navigating trademark use.
Publicly Available Trademark Policies
Some companies take proactive steps to address trademark use by publishing publicly available policies. These guidelines often clarify how trademarks can be referenced in creative works, including limits on usage and examples of what is permissible. Checking these policies can save time and provide clear direction, especially when direct communication with the trademark owner is unresponsive.
Changes in Law Must Be Made
Trademark defenses such as descriptive fair use have been codified in the Lanham Act for decades. Despite the practical necessity of nominative fair use, it has yet to be codified into the Lanham Act. While the Supreme Court has offered guidance on descriptive fair use, there is currently no such guidance with respect to nominative fair use. Currently, our best guidance is a confusing three-way Circuit Split on how to approach nominative fair use. Other circuits have largely remained uncertain in how to approach the doctrine or have outright avoided using the doctrine. In analyzing the intricacies of nominative fair use, this note comes to the conclusion that the Third Circuit’s approach best resolves the split by treating the doctrine as an affirmative defense, avoiding judicial confusion and waste, and allowing for the coexistence of consumer confusion and nominative use. In 2017, the Supreme Court denied a petition for certiorari on a Second Circuit case dealing with nominative fair use, leaving the three-way circuit split intact. This leaves amending the Lanham Act as the most direct and sensible approach. The Congress should therefore amend the Lanham Act, formally recognizing the Third Circuit’s approach to nominative fair use to address the Circuit Split and expand the freedoms of trademark defendants by allowing them to use the trademarks of others in a justifiable way.
Best Practices for Writers
To minimize legal risks:
- Use trademarks sparingly: Only include them when necessary for the story.
- Avoid implying endorsement: Ensure the context makes it clear that the trademark owner is not associated with your work.
- Consult a lawyer: Especially if your story includes extensive or controversial use of trademarks.
- Consider disclaimers: A disclaimer in your book can clarify that the use of trademarks is for descriptive purposes only and not endorsed by the trademark owner.
Example of a Book Disclaimer
“This is a work of fiction. All characters, places, and events are either products of the author’s imagination or used in a fictitious manner. Any resemblance to actual persons, living or dead, or actual events is purely coincidental. All brand names and trademarks mentioned are the property of their respective owners and are used here for descriptive purposes only. Their inclusion does not imply sponsorship or endorsement of this work by the trademark owners.”
Trademark clearance is a nuanced area of law that continues to evolve. By staying informed and seeking advice when needed, authors can navigate these challenges and create compelling, realistic stories without overstepping legal boundaries.
Disclaimer: This post is for informational purposes only and does not constitute legal advice. For specific legal questions or concerns, please consult a qualified attorney.
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