Shark Week v. Shark Fest: Comparative Advertising at its Best

It’s that time of the year again- Shark Week! The Discovery Channel’s annual week devoted to sharks of all sorts has changed from simply raising awareness to becoming the longest-running cable television programming event in history. Running annually since 1988, it’s become such a pervasive part of the pop-culture lexicon that it shows up in memes, drinking games, and even other TV shows.

So, you may have been surprised to see this NatGeo WILD advertisement come up on your TV.

Seems like a gutsy commercial from NatGeo, but it represents a great concept- comparative advertising and nominative fair use. Comparative advertising is a type of fair use implicating trademark rights. When a defendant uses a plaintiff’s trademark to describe the defendant’s product it’s a fair use and an affirmative defense against liability. The key is that the use of the plaintiff’s trademark refers to something other than the plaintiff’s product. So, fair use can be a defense to liability where the term (trademark) is used in good faith to describes the goods or services of a party. The FTC has specifically endorsed using comparative advertising and brand comparisons in commercials, and has even okayed attack ads, all subject to the caveat of the ads being “truthful and non-deceptive.” Although it should be noted that the National Advertising Division of the Council of Better Business Bureaus (NAD) has specified “claims that expressly or implicitly disparage a competing product should be held to the highest level of scrutiny in order to ensure that they are truthful, accurate, and narrowly drawn.”

But let’s say you definitely want to refer to the plaintiff itself, the good news is that the law has got you covered there too. Nominative Fair Use is where the defendant uses the plaintiff’s mark to refer to the plaintiff. Nominative fair use requires that:

  1. the product or service in question is not readily identifiable without using the trademark;
  2. only enough of the mark as is “reasonably necessary” to identify the product or service is used; and
  3. nothing in the use suggests sponsorship.

Protection against sponsorship confusion does not extend to the news, conversations, polls, or comparative advertising. Nominative fair use is applicable even where the use directly competes with that of the trademark holder, in other words, you can profit! Lastly, the burden is on the trademark owner to show that the use is not nominative. Switching the burden of proof from the defendant (to show the use is fair) to the plaintiff (to show the use is not nominative) can be a huge advantage in court.

The concepts of comparative advertising and nominative fair use lie in the First Amendment and the right of freedom of speech. Although, commercial speech is generally subject to less protection than non-commercial speech, courts have consistently allowed such uses in lieu of de facto taking terms and phrases out of the public domain. Courts have to balance the rights of speech with the rights of trademark holders, and generally case law has shown that, even if there is some likelihood of confusion, commercial speech, and in a sense the right to describe, trumps those trademark rights.

This author, for one, can’t wait to see some more shark-on-seal action, and leaves you with the wise words of Tracy Jordan from 30 Rock, “live every week like it’s Shark Week.”

Let's be friends! Picture courtesy of:


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