IP Law Daily Second Circuit adopts standard for evaluating nominative fair use
Wednesday, May 18, 2016

Second Circuit adopts standard for evaluating nominative fair use

By Cheryl Beise, J.D.

The federal district court Hartford, Connecticut, erred in ruling that use of the security professional certification mark “CISSP” by a for-profit training company and its founder constituted noninfringing nominative fair use, the U.S. Court of Appeals for the Second Circuit has held. The appeals court took the opportunity to set forth the factors courts in the Second Circuit are to consider, in addition to the Polaroid likelihood of confusion factors, in evaluating confusion in cases where nominative fair use is asserted (International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, May 18, 2016, Pooler, R.). In the case at hand, the appeals court reinstated claims for trademark infringement and false designation of origin under the Lanham Act, and related state unfair practices claims filed by the owner of the CISSP mark, International Information Systems Security Certification Consortium (“ISC2”) against Security University LLC (“SU”) and Sondra Schneider. The district court’s dismissal of ISC2’s trademark dilution claim was affirmed.

Since 1990, ISC2 has been using the certification mark “CISSP” to denote a “Certified Information Systems Security Professional” who has met certain requirements and competencies in the information security field, including passing the CISSP certification examination that ISC2 administers. In 1997, ISC2 obtained a federal registration of CISSP as a certification mark. The registration stated: “The [CISSP®] certification mark is used by persons authorized by the certifier [ISC2] to certify completion of appropriate work experience and/or successfully passing examinations as established by the certifier in the field of security of information systems.”

In 1999, Schneider, a CISSP-certified professional, formed SU to provide training for information security professionals. As part of that training, SU offered classes to individuals who were preparing for the CISSP certification exam. SU began to use the term “Master” in conjunction with “CISSP” in 2010—to explain, for example, that its preparation course for the CISSP exam would be taught by “CISSP® Master.”

ISC2 sued Schneider and SU for trademark infringement, false designation of origin and false advertising, and trademark dilution under the Lanham Act and unfair competition under the Connecticut Unfair Trade Practices Act (CUTPA). The district court granted summary judgment to the defendants on all claims. The court held that the CISSP mark was not famous enough to qualify for dilution protection that the defendants’ references to “Master CISSP” and “CISSP Master” constituted nominative fair use because SU’s alleged misuse of ISC2’s certification mark could not give rise to confusion as to the source of SU’s services.

The Second Circuit affirmed the district court’s ruling as to ISC2’s dilution claims, which ISC2 did not challenge on appeal. However, the court vacated the district court’s the district court’s grant of summary judgment on ISC2’s infringement, false designation of origin and false advertising, and unfair competition. The district court committed reversible error by (1) considering source confusion to be the only type of confusion relevant in an infringement claim, and failing to consider confusion as to sponsorship, affiliation, or connection; (2) failing to consider that a certification mark can be infringed by a duly certified individual; and (3) applying the Ninth Circuit’s test for nominative fair use instead of applying the Second Circuit’s Polaroid test for likelihood of confusion.

Types of confusion. The court noted that the Lanham Act provides that certification marks are generally entitled to the same protection from infringement as are trademarks. The district held that the only type of confusion relevant in determining infringement is confusion as to source. According to the district court, no reasonable juror could find that the defendants’ training courses were sponsored or endorsed by ISC2. This was error, the appeals court said, because the Lanham Act protects against numerous types of confusion, including confusion regarding affiliation or sponsorship.

Certification mark infringement. The district court also took an erroneously narrow view of how certification marks can be infringed. Although a person who is not certified can infringe a certification mark by engaging in unlicensed use of the mark, this is not the only manner of misusing a certification mark that is cognizable as infringement, the court said. In this case, SU could have infringed on ICS2’s certification mark by identifying its certified instructors as Master CISSP” and “CISSP Master.” SU did not have to offer competing certification services. Even though neither ISC2 nor SU offered a “Master CISSP” or “CISSP Master” certification, customers could be led to believe ISC2 had introduced a new line of certifications, the court explained.

Nominative fair use cases. Because the defendants asserted a nominative fair use defense, the district court in this case applied a “nominative fair use” analysis instead of the Second Circuit’s Polaroid “likelihood of confusion” analysis. The court applied the test for nominative fair use developed by the Ninth Circuit in New Kids on the Block v. News America Publishing Inc., 971 F.2d 302 (1992).

Although the Second Circuit has endorsed the principles underlying the nominative fair use doctrine, it has not expressly adopted it. Yet district courts within the Second Circuit have applied the nominative fair use doctrine and Ninth Circuit’s New Kids test.

The Second Circuit took the opportunity to clarify its position on nominative fair use. “After considering other circuits’ nominative fair use tests, as well as our own prior treatment of cases involving nominative use of marks, we hold that nominative fair use is not an affirmative defense to a claim of infringement under the Lanham Act,” the court said. Unlike descriptive fair use, which is an affirmative defense under the Lanham Act,

“nominative fair use is not the use of a name, term, or device otherwise than as a mark which is descriptive of and used merely to describe the goods or services of the alleged infringer.”

Nevertheless, the court recognized that the Polaroid factors alone may not suffice in cases where nominative fair use is asserted and that nominative fair use tests adopted by the Ninth Circuit and the Third Circuit could be helpful in determining consumer confusion in those instances. The court specifically adopted the following test.

[I]n nominative use cases, in addition to considering the Polaroid factors, courts are to consider (1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and (3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services.

The court also emphasized that when considering the third nominative fair use factor, courts must consider confusion regarding affiliation, sponsorship, or endorsement by the mark holder.

The case is No. 14-3456-cv.

Attorneys: Fatima Lanhin and Damian K. Gunningsmith (Carmody Torrance Sandak & Hennessey LLP) for International Information Systems Security Certification Consortium, Inc. William Tucker Griffith (RIFFITH, McCormick, Paulding & Huber) for Security University, LLC and Sondra Schneider.

Companies: International Information Systems Security Certification Consortium, Inc.; Security University, LLC

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