–Sharon Armstrong, Attorney
With Independence Day just around the corner, perhaps it is time to reflect on some of the freedoms that we enjoy by residing in the land of purple mountains majesty. Freedom of speech? Check. Freedom of assembly? Check. Freedom to use other people’s trademarks, the very basis from which their brands spring, in descriptive and/or non-source identifying ways? Check.
The doctrine of fair use in trademark law can be a great freedom (or a great bane) depending on which side of the doctrine one falls – user or trademark owner. Although there are two branches of fair use – descriptive and nominative – for all intents and purposes, the non-owner user of a trademark may successfully meet the criteria for fair use of a mark provided that he shows he’s not using the mark to identify his source of goods and services.
The Northern District of Illinois recently discussed the doctrine of descriptive—or classic – fair use—when it denied a request for a temporary restraining order filed by Lettuce Entertain You Enterprises, Inc. (“LEYE”) in connection with its complaint for trademark infringement against Leila Sophia AR, LLC, and its principal, Shahram Tehrani (collectively, “Tehrani”). LEYE is the owner of over 70 restaurants nationwide (including Mon Ami Gabi and Maggiano’s Little Italy, as well as some in our fair Minnesota) and takes issue with Chicago-area restaurant owner Tehrani’s use of “Lettuce mix” and “Let us be” (replete with images of lettuce heads) in a temporary sign erected above a soon-to-open and as-yet publicly unnamed restaurant. Interestingly, the Court limited its analysis and its decision to the “Let us be” portion of the sign.
The Court recognized LEYE’s decades-long and extensive use of the word LETTUCE to identify its restaurant services in the following family of marks – LETTUCE ENTERTAIN YOU ENTERPRISES, LETTUCE ENTERTAIN YOU, LETTUCE, LETTUCE PARTIES, and LETTUCE PLANET. At the end of the day, however, the Court bought Tehrani’s argument that his use of “Let us be” was fair because 1) he was not using this portion of the sign as a service mark – that is, to identify his business as a source of restaurant services under the terms of the banner and 2) he was using the terms on the banner to describe his services.
Because the fair use analysis must assume that the defendant is using the plaintiff’s marks, the Court analyzed the nature of “the message conveyed through use of the marks” and determined that Tehrani’s “use conveys a meaningful message other than that claimed by” LEYE, namely that Tehrani uses “Let us be!” not to describe his restaurant, but to “express protest of LEYE’s aggressive action against Tehrani’s intended use of the word ‘Lettuce’ as a service mark.”
Thus, the Tehrani is free to use his parody for the time being. As the Court did not address his use of “Lettuce mix,” it remains to be seen whether Tehrani will enjoy equivalent freedom to use his puns as well.