Legal Memorandum: Motion to Dismiss Based on a Fair Use Defense

Issue: Under what circumstances is it appropriate to grant a motion to dismiss based on a fair use defense?

Fair use is an affirmative defense.  Merck & Co. v. Mediplan Health Consulting Inc., 425 F. Supp. 2d 412 (S.D.N.Y. 2006) (defendants’ motions to dismiss); 431 F. Supp. 2d 425 (S.D.N.Y. 2006) (Merck’s request for reconsideration).  An affirmative defense is not a cognizable ground for a motion to dismiss unless the defense appears on the face of the pleading.  Pani, 152 F.3d at 74.

Among the elements of “classic fair use” is the requirement that the use be made “in good faith”.  JA Apparel Corp. v. Abboud, 568 F.3d 390, 400 (2d Cir. 2009); Merck & Co., 425 F. Supp. 2d at 412.  “[T]he inquiry into the defendant’s good faith concerns the question of whether the user of the mark intended to create consumer confusion as to source or sponsorship.”  JA Apparel, 568 F.3d at 401. 

Nominative fair use also includes an element that requires the person who seeks to invoke the defense to show that he did “nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.”  Merck & Co., 425 F. Supp. 2d at 413.  “[This] element of the nominative fair use defense requires that the use of the trademark not create a likelihood of confusion as to the mark-holders sponsorship, endorsement or affiliation.”  Id. at 414. 

But see Cintas Corp. v. Unite Here, 601 F. Supp. 2d 571 (S.D.N.Y. 2009), aff’d, 355 F. Appx. 508 (2d Cir 2009), for the proposition that […]