WIPIP, part 2, Session 3 Trademark

Session 3, Trademark
Leah Chan Grinvald, Constructive Consent
Courts adopt as evidence of fame the number of users = strength = fame.  Example: the number of Flipboard users accepted by a court in October.  But that also is read to include shortened forms like the stylized F Flipboard uses.  May be unconscious influence. 
Bad because there’s a theoretical disconnect.  In contract, judges acknowledge that they’re creating a hypothetical world where people assent to terms through reasonable notice, for reasons of efficiency; we want online contracts to be valid and we want to put the burden on the user to read the terms.  In TM, at least in theory, the law takes more of a legal realist approach: we really want to get into consumers’ minds. Though we use proxies like advertising, we are trying to reach consumer thought. Internal criticisms of constructive consent in contract are very strong in themselves—coercion, reality that consumers/users don’t read the terms. 
Judges who do this lower the burden of proof for some TM owners.  Rack up user downloads = strength, but that’s an unfair shortcut.  So don’t import the theory. Scrutinize agreements carefully.  Are the claims based on prominent marks?  Adopt “interactive” theory of fame.
Is this really happening on a large scale?  Aren’t companies like Facebook famous anyway? Yes, but there’s overreach too.  Tumblr = ‘t’ famous?  Efficiency: maybe this is efficient cheap way to prove fame. At least w/r/t current TM doctrine, we want fame to be done on a case by case basis.
Gibson: you don’t have to reject the contract theory to reject it in TM.  Contract = there’s a theory of the informed minority who reads and protects the rest of us.  Fame numbers generated by overall customer base don’t take that into account.  Second, reputational argument: consumers usually work these out as customer service matters and not contract matters, but again that is not a TM context. These theories don’t work for TM purposes.
A: right, that goes to my argument about fit.
Rosenblatt: to what extent is this counting users approach really constructive consent versus a way of figuring out how many people have seen the mark?
A: she thinks it’s unconscious; also it’s a way to prove secondary meaning (which is a factor to prove fame, Rosenblatt points out) but it needs to be scrutinized more carefully. We have all downloaded random apps we don’t know much about/we deleted quickly.
Ramsey: separate issue of using number of users who downloaded versus agreement in fame.  Constructive consent applies to agreeing that its famous. Has any court really explicitly relied on the idea that users have agreed the mark is famous?
A: Run the risk; need to scrutinize evidence carefully.
William McGeveran, What Campbell Can (and Can’t) Teach Trademark Law
Campbell is important for various things, including ill-advised parody/satire distinction. What does it do for TM? Error and administrative burden in adjudicating parody.
Lessons of Campbell: parody is important—significant speech/social value.  Parody is inherently tricky because imitation is inherently necessary to do parody.  No bright-line rules; fact intensive.  Parody should be handled consistent w/the underlying purposes of IP.  Underlying purpose of TM is different from that of ©!  (Though Silbey’s work suggests that laypeople don’t agree.)
Present lessons: Judges get it right. Parody almost always wins nowadays. We don’t have a meaningful error cost problem now, though we did in the past.  Too much discussion suggests that might be the case.  Some markholders get it wrong: overclaiming.  We talk too much about problem #1 (judges) and not enough about problem #2 (overclaiming by TM owners), giving sustenance to the narrative out there that helps sustain overbroad C&Ds by suggesting that parody is vulnerable in court when by and large it’s not. 
Dogan & Lemley; David Simon; Tushnet & Keller have cataloged the scene. There are 12 key cases, and not a ton more. The age of these cases suggests that, whether cause or symptom of change in attitudes, Campbell was an inflection point, w/trend to much better results if they go through full adjudication.  10 of the 12 are from last century; Buttwiper is 2008 and Charbucks 2009.  Some of these lawsuits are probably justifiable b/c parody was cream-skimming ex post justification, or at least you can understand why the court thought so. The reasons parodies lose are varied; there’s not one magic problem.  Direct competitors who’s doing what Campbell was worried about; unjustifiable general concerns over free riding; messing up what confusion is about; just blowing it: NAACP v. Radiance (Nat’l Ass’n for Abortion of Colored People). Hard to figure out any tweak in law that would fix that last one: neither def’t nor court cited Rogers, ESS, or any other relevant case.  The real cost we face is adjudicative cost. Any effort to tweak parody is likely to make that worse rather than better because Campbell teaches us that’s hard.  Start doing work to make adjudication quicker and cleaner.
Future: Think holistically about parody as part of larger set of expressive uses and respond with expressive use reform more generally.  Expressive works, political uses, maybe comparative ads.  Can’t make too big a list b/c then people claim anything not on the list is excluded. Argument will then not be about whether it’s a parody or whether it’s confusing but whether it fits these other parameters.  Presumptions and the Rogerstest.  Confusion isn’t everything.
Lemley: one thing you don’t include is cases where the Q is whether or not it fits in the parody box. Mostly, once we decide something’s a parody, we give it credence. Campbell draws unjustified divide between satire and parody, and people try to tug one way or another because it changes results.
A: I did look at those cases; Ds do really well there too, though it can be costly. Parodic character perceptible = ok. And sometimes when the court disagrees, he thinks the court is right.  Series of fishing nets—scoop up easy cases first.  That might mean some parody cases go to the end of the line, but hopefully that’s where the cases are the hardest.
Heymann: consumer oriented language: reasonably be perceived. Relationship to audience: what is the market you’re talking about?  Market for parody or market for rap in Campbell? Who is perceiving this as parody, and in what market?
A: agree, but hopefully won’t need that level of analysis. But when you do consider full scope in confusion analysis, that would be important.
RT: Makes me think about why transformativeness has expanded in content.  Satire/parody distinction never worked and it was almost immediately apparent that it didn’t.  Timmy Holedigger & Cariou have in common their lack of interest in specifying the transformative/parodic message. [And Chewy Vuiton too, and even Charbucks as it rejects the defense.]
A: yes, agree—we’re working on problems that don’t need much work. Courts haven’t taken up Souter’s invitation to make what is essentially a meaningless distinction, even if at first they were willing to try (Cat NOT in the Hat).
Ramsey: incentive to explain to potential witnesses that commenting = helpful (a problem in the LV Hyundai basketball ad). Global issue?
A: also a problem in Rosa Parks case.  Not going global in a symposium on Campbell, but it is an issue elsewhere. My position = what needs to be reformed is the admin process, which is US-focused.
Gibson: is the point to get more cases before judges b/c judges do a good job? Or what?
A: I want you to be able to reply to a C&D with “no, b/c X.” Categorical defense = great.  Simple & straightforward Rogers-like test = great. If they do sue, resolution should be cheap and early.  Not complicated confusion based tests but simple tests. I’m not trying to improve outcomes, I’m trying to improve defenses. [This actually sounds like a reason to make registration more substantive—and to defer to 2(d) rejections in subsequent confusion cases.]
Xiyin Tang, Against Fair Use: The Case for Genericide Defenses in Artistic Works
Rogers v. Koons: cited in the LV/Hyundai case.  Folded parody/1A defenses into each other.

Genericide: formerly protectable mark is found no longer protectable b/c stopped signifying source but rather the product itself.  Increasing intersection between luxury goods/art/commerce.  Original Campbell’s soup can
à Warhol’s silkscreens of can à Warhol estate-authorized Campbell’s soup cans colored in honor of 50th anniversary of silkscreens.  Genericness in a market = lose protection in that market. Murphy bed used to be a protectable TM, and then became the name for a bed that pulls down from the wall. 
In expressive context: b/c of the way rap employs tropes, like liquor brands and cars.  Rolls Royce sued a rapper named Royce Rizzy, demanding he stop using the RR mark in connection w/stage shows, albums, and merchandise.  Rizzy seems likely to settle. 

Genericness defense could discourage overzealous TM owners from going after expressive uses.  Many uses will just go away if you threaten; many artists lack time/energy to take to full trial.  Court could invalidate mark across a market—Cristal could be generic in the rap industry but retains secondary meaning in liquor industry.  Betty Boop on T-shirts: decorative/aesthetically functional—not a complete invalidation.
Rosenblatt: Genericity is about ordinary descriptive term for the goods; it means that expressive use isn’t applying as we usually understand it unless it’s already a mark for expressive goods.  What you’re talking about isn’t genericity so much as ubiquity or expressive value as a result of ubiquity—wouldn’t that make every famous mark generic for expressive goods?
A: some marks do catch on and are used more often as stand-ins than others.  Cristal in rap, compared to McDonald’s which is not used as much in expressive works.
Ramsey: need to know what marks would qualify. How would judges or juries decide. Also, how do you define what’s artistic?  Artistic designs are applied to shoes, product packaging, etc.
A: category of expressive use. You can create markets where you don’t need to define artistic works as a whole to invalidate a mark in a market.  Should introduce the idea of genericness into the public dialogue.  The way people are actually using it expressively.  “Gucci” to mean “fancy.”  [I was thinking about Idris Elba being, as they say, “one GQ m——-”].
McGeveran: courts are reluctant to find genericism because it’s so radical in consequences. Is this genericity or something else about confusion? Will using the term introduce ideas that you don’t want to have?
A: Abercrombie spectrum shows that you can fine tune genericity—SAFARI generic for hats, not for other apparel.
Heymann: maybe you really want to use the term functionality. 
Gibson: or TM use. 
Lemley: no, we can’t say that, we have to invent 20 different doctrines that serve the same function as TM use.
Q: what would balancing test look like in commercial use cases?
A: case by case.  Do you use mark as general stand-in for category of goods?  Was the brand involved in promotions in the industry in the past?  How close are the goods?
Q: what’s the relationship between nominative fair use and genericide?  You’re using this as references to ideas, not products: Louis Vuitton as a reference to luxury, not to a particular class of products.
A: we’ve seen a collapse between goods and goodwill—the mark is the product.  So the idea could be the thing that’s generic.
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