TM Scholars’ Roundtable, part one

Trademark Scholars’
Roundtable, Boston University
Session 1:  Product Design Protection and Trademark First
Given what we know
about the costs and benefits of using trademark/unfair competition law to
protect product design, is the whole enterprise worth the candle?  Why, or why not?  How does design protection fit with the
competing normative conceptions of trademark law?  What does each of these models suggest about
appropriate limits (thinking strictly about “intrinsic” – i.e.,
trademark-specific – concerns)?  In other
words, what would trademark law’s own intrinsic goals tell us about whether to
protect product design, and if so, with what exclusions or limitations?  Is functionality – either TrafFix-type or
aesthetic – up to the task?  Given that
courts treat functionality as a factual question, is there any viable strategy
or policy proposal to resolve functionality issues earlier in litigation?  What is the role of error costs in assessing
trade dress protection for product design? 
If we are concerned about negative effects, what particular effects do
we find most worrisome?  Can we think of
case studies that offer compelling demonstrations of these costs, or empirical
work that might help?
Introduction:  Bob Bone: Design protection/functionality as
internal constraint on TM, or external? Thinks about this as a tension that
needs balance: pro-TM protection policies v. preserving robust competition in
product market and preserving patent/©’s public domain, as well as 1A
issues.  Can you characterize TM policies
themselves as providing those limits? 
What level of generality should you use? 
If you say TM is for promoting competition, then functionality would be
internal.  But doesn’t give you traction
on concrete/specific questions of defining functionality, b/c we lack metric
for resolving two kinds of competition. 
Same with the idea of unfair competition: need to sort within that
Another approach:
how often does product design serve as a true source identifier?  Really using design as an indicator of hidden attributes, not a design as
indicator that it has a design I like—qualities that aren’t evident on
inspection. That’s what real TM meaning is: a shortcut.  Not clear that people often approach design
in that way.  If they merely say “X
design indicates Y source and I like X design,” they are unlikely to care
(w/exception of status goods, which may require different analysis).  [This may provide another way to explain why
the Sleptone cases should be defense victories. 
There are no hidden qualities when you claim that the trade dress is the
manner of presentation of music files.]
Dynamism: if you don’t
protect designs under TM, producers will switch to word marks and consumers
will learn to rely on the word marks; confusion might exist in the transition
but it would not likely persist. Might be worth bearing that transition cost.
Determining and
balancing countervailing policies: I don’t think there’s a right to copy, but
there is a public domain policy. It’s not enough to say public domain is good;
need to know why.  Idea of channeling
collapses into other policy goals, which usually collapse into robust
In TM law, we tend
to deal with these Qs in an all or nothing way. 
If functional, no protection; if generic, not protectable except for
against passing off/other acts.  Problem
that functionality addresses also exists in © and maybe in patent; the linkage
problem. You have something that would ordinarily be protected, but used in a
context you want to promote.  Linkage problem
when Y (context) needs X (usually protectable). 
That’s merger in ©.  We also use
thin ©/adjust the infringement standard; we also have fair use; remedies such
as compulsory licensing.  Odd to require
all or nothing.
Word marks can also
be functional; not useful to deal with this by asking whether a symbol is
functional for P or D.  Ask what are the
policy reasons why we want this activity to happen.  [It seems to me this is contrary to Bone’s
usually justified focus on administrative costs.] 
Functionality has
lots of applications where people just want the surface appearance of the mark—the
features have consumption value for the product (can be word marks, or design).
If so, then this isn’t just about product design.
Discussant:  Annette Kur: Continental European background,
while you are embedded in US doctrines. But we are here talking about
fundamentals.  Is the game worth the
candle?  Maybe not—the EU has extremely
generous design protection and unfair competition laws—we could do without
formal shape marks protection. What we need is some sort of protection against
imitation of shapes when they actually give a message about commercial origin
and that’s misused so consumers are misled. That’s about info transmission,
necessary for competition, but no formal TM protection required.

But we have it, so what do we do with it. 
If appearance should be free to public after a certain time, then TM
protection for shapes prevents that. 
Functionality is supposed to help us out of that dilemma.  Bone is right to think that functionality is
not a separate clear cut doctrine; it’s not an aim in itself but meant to
maintain competition goals. Can go beyond shapes.  In EU, until recently functionality was just
shapes; now opened up to other characteristics such as color.
If an item serves a
true TM function, it should be protected even if there was design protection
first.  Or, if TM protection post-design
protection doesn’t serve competition, then no sign of this type should be
protected whether or not it received design protection before. It’s not the
overlap that matters.  Competitive
interests need to be looked at throughout the life of the TM/design.
Autodesk case: Court
of Justice said that once a mark is registered, you can no longer invoke
competition as a reason to influence decisions on likely confusion—only look at
consumer reactions (or what the court thinks consumers think) regardless of the
impact of protecting the mark.  Bad idea!
RT on Bone: It seems
to me this idea of going back to fundamental policies for each determination is
contrary to Bone’s usually justified focus on administrative costs.  Rules are much, much cheaper and when you
talk about the costs and deterrent effects of threatened litigation in TM in
particular, that seems important. 
Blinded Veterans, Belmora—these increase the costs of knowing what you
can do.
Mark Lemley:  Intermediate approaches in general may not be
a bad idea, but worries that we’re not very good with “you’re in the door, but
only a little bit, so you get very narrow rights.” Once we say you’re in the door,
you get almost carte blanche when it comes to infringement in practice.
Structured ways of balancing help. Samara: doesn’t disallow protection forever,
but requires a certain threshold to be crossed.
Once you’re in the
door, we should think about limiting doctrines other than gatekeeping. Bone
said: law’s not very good at balancing two kinds of competition. But we do that
in other circumstances, such as antitrust/IP intersection. Actavis, 2013, takes
approach not of avoiding overlap but that you have to have a robust
conversation b/t these two visions of competition to give these their due.
Graeme Dinwoodie:
Limits from source identification/distinctiveness test is useful idea.  European idea: Nestle case, now on appeal to
Court of Appeal: it’s not enough that consumers recognize it, they have to rely
on it.  Thinks English courts are wrong
about that, but it’s the passing off test for decades. That might be
normatively correct, but we’ll see what the court of appeal does.
Using policy levers:
yes, we should think about that—defenses, filters, remedies, thin marks?  Wallace in the 2d Cir.; Louboutin to some extent endorses that approach of thin marks.
Europe has a problem w/that b/c we haven’t recognized that something might have
just gotten over the line of protectability when we later analyze its
In Europe we don’t
need as much shape protection b/c design laws are so expansive.  Also expansive unfair competition laws;
US  might not have either of those.
Why worry about
overlaps/channeling?  The reality is that
everything’s a potential design, including words.  The instinct of separateness comes from the
early 20th c. when the different regimes were more confined. 
The idea that we
have clarity from the functionality rules is perhaps overstated.  Though if you think that no product design
will survive, maybe that would be clear; but he wouldn’t say that functionality
has had rule-like characteristics.  [I
meant more what happened after the functionality determination had been made,
but fair point!]
Mark McKenna: If you
have high functionality threshold, and high secondary meaning standard, and
want to carefully confine scope, and we think that very few marks will pass
through, isn’t that an extraordinary cost to the system, especially given that
many such marks will not, as Bone says, signal hidden features—isn’t that just
not worth it?  Why not just do unfair
competition/labeling and packaging are the only possible remedies and prospects
of attack.  © has a variety of doctrines
and doesn’t do them well, so doesn’t think we should borrow from that.
applied to words gets detached from our usual considerations; could be thought
to also be descriptiveness/genericity/comparative advertising; should we just
have a bucket entitled “competitive needs”? Thinks not because there are
different concerns for different categories.
Mike Grynberg:
Plenty of examples where courts see design as performing TM function in
nebulous sense and give it thick protection—Maker’s Mark case is the same year
as Louboutin; it was clear that there
was not going to be confusion b/t a bottle of Jose Cuervo tequila and a bottle
of Maker’s Mark, but the court decided to focus not on source confusion but on
affiliation.  Doctrinal tools are being
deployed to exclude all the distinguishing context b/t uses.
Bone: Implementation
of optimal balance is a different Q; he’s all for rules.  Marks can be thin in a variety of ways—Louboutin is one way. You can also make
a thin mark with a higher confusion requirement or a harm requirement. [Double
identity as thin but strong?]  Why have
so many buckets—maybe the old story about the difference b/t technical TM
infringement and unfair competition is some explanation; genericity had to
develop in technical TM context, and functionality in unfair competition; only
now have they united in the underlying cause of action and we see they serve a
common function.
Kur: Would like to
see study about costs of protecting different elements of an article.  All rights are monitored, litigated, searched
separately—this must be generating a lot of costs w/o market justification.
Lemley: we could
imagine a descriptive fair use concept: I’m using this shape descriptively,
which is sensible b/c we’ve already said that designs are descriptive by
Stacey Dogan: we don’t
call it market definition in TM, but we talk about need for access to product
features to compete in a market. We are sympathetic as a group of the notion
for broad access; courts have opposite instinct, as long as there is some
infection of the brand value in what the defendant is trying to copy, they’re
unsympathetic.  You have to demonstrate
as D that the thing you’re trying to copy is completely unrelated to reputation
of TM holder to show competitive need, at least in aesthetic
functionality.  Would like to talk about
level of generality in market definition. Could we get some traction w/courts
Dinwoodie: if we
were willing to think about more flexibility in defenses and remedies, maybe we’d
worry less about intake issues.  Devices
that allow you to address the problem: Europe has both descriptive mark and
indistinctive mark as concepts, and we should allow descriptive and
indistinctive fair uses.  “Descriptive”
works for word marks, and may work for some other marks, but indistinctiveness
captures the broader concept.  It’s also
a TM use type issue.  Indistinctiveness
is “I’m using this, but not in a way that indicates source.”  [Around the table there is some amusement at
this embrace of TM use.]
Lionel Bently:
indistinctiveness needs to be in accordance with good industrial practice; we
don’t really know its scope. The court has said that if there’s dilution, free
riding, or confusion, then you can’t use it. 
[Like descriptive fair use in the US.] 
Everything you prove to show infringement undermines the defense.
Kur: You’re wrong.
RT: Louboutin as thinness or Louboutin as failure of ability to
analyze b/c of inability to talk about non-confusion-based values?  I see it as more like the Wittgenstein moment
of US TM law: “Whereof one cannot speak, thereof one must be silent.”  Louboutin just can’t coexist w/a consumer
confusion analysis: There has to be something there about TM as instead a business
activity/competition regulator; thin mark would require us to leave behind how
consumers perceive the mark once recognized as valid by not even asking whether
they’re confused, which is exactly what Louboutin does. 
Even if you did what
Bone suggested and imposed a higher confusion requirement you’d be derogating
from what courts have decided “real” consumer confusion is—if they’re
ordinarily going to count affiliation confusion or endorsement confusion, then
they need to have a reason not to do so, which has to be something about market
structure.  And if the problem is w/ the
affiliation/endorsement confusion allowed for others, then all marks should be
thin in this way!  This leads me to think
of double identity as a kind of thinness in scope, but also thickness in terms
of rights.  The harm requirement for uses
outside double identity then would reverse that: broad scope in theory, but
thin in terms of which uses are actually covered when you get to the end of the
McKenna: That’s a
reinstatement of TM infringement v. unfair competition.  [Yeah, I’m finally getting making my peace
with that, though I still want some channeling/preemptive effect from patent
and other regimes even when it comes to unfair competition, at least to the
extent that Sears/Compco imposed.]
Retail-level competitive harm analysis, rather than categorical rules, create
effects as Dogan described—it’s hard for courts to define relevant markets b/c
they don’t get full info and lack a conceptual frame.  [Dogan: think about how to convince courts to
move to that global level.]  One thing
courts do seem to get is interference w/ other rights regimes. That’s why they
latched on to stronger channeling in utility area: patent law makes a decision
about whether to protect a thing or not, and that has competition norms baked
in; that decision is not TM’s to undo. Easier for courts to get; doesn’t
require them to do the work of defining the relevant market.
Lemley: easy for an
expired patent.
McKenna: or for Jay Franco—if it has useful features and
you can’t/haven’t made it through the gates, too bad for you.
Bone: That’s not
enough; what if there’s good reason to protect this thing from TM perspective?  The patent system hasn’t always made a
Dogan: but if it’s w/in
the subject matter of patent, then we can infer it’s not protected.  Unless you meet standard for patentability, competition
is the norm.
Bone: not sure
patent law is helpful in defining markets.
Dogan: but courts
think the work has been done for them, descriptively.
McGeveran: will also
endorse this normatively.  How
influential is the gravitational pull of some other regime? Utility patent is
one, but maybe design patent increasingly will/should be.  Once you start to cast things as 1A matters,
the courts also find a gravitational pull. 
Descriptively: when you ID other areas of law with big footprints,
courts tend to defer more. Would like to do that more with design patent and
1A. Question: can you present this competitive need consideration in a way
w/the same gravitational pull; not sure there’s as tidy a place you can point.
Robert Burrell:
[Something I’m not sure I completely got, but was very interesting: the idea
being that direct copies were likely to compete solely on price, but partial
copies would have at least some R&D costs associated w/them, so the price
competition if extant wouldn’t be solely based on free riding.]
Dogan: Thinks that
both kinds of copying should be allowed, but descriptively courts don’t like
the pure copying.
Fred Yen: When we
say trademark meaning, do we care about intent of P or D?  In Traffix,
was the spring chosen b/c it worked or b/c the P thought it was jazzy looking/would
eventually become a distinguishing feature? 
Or consumers’ POV?  Hooks into
what we think we’re doing w/TM law—courts are very interested in investments
made by P; but other parts of TM are about protecting how consumers operate in
the marketplace.  When you ask about
perspective, if we are about investment protection, then P’s perspective
matters a lot—incentive function.  But
present in a lot of these cases is the sense that we use consumer POV as a
reason to give value to P even if there was no investment at all and they put
it there for non-trademarky reason; windfall.
Lemley: The D’s
perspective: matters a great deal whether this is a defense or part of the
cause of action.  Even if TM owner
treated it as TM and consumers do, in some circumstances if the use wasn’t
intended to take adv. of the presence of competition, then we protect it—descriptive
fair use.
McGeveran: so too
w/functionality: we judge from the D’s perspective.
Dinwoodie: w/in the
Continental tradition there’s unfair competition (consumer protection) and
slavish imitation (which is about ethical norms).  Why, other than the Supremacy Clause, is it
patent that establishes the competitive baseline? Why should patent control TM,
and not the other way around?  And why
isn’t © at least as controlling?  Lots of
stuff is ©able.  Would make lots of stuff
unTMable.  [Great Q.  Maybe something about the difference between
communicating and doing other things in the world?  TM and © are both communicative, and on that
logic so too design patent might be.]
Alexandra Roberts: These
defendants are often copying for the sake of copying, not b/c we want it for
consumers but b/c it’s the one that sells—generic or store brand shampoo.  Mixed motive—not intent to deceive, but
intent to incorporate these features b/c they signal a cheaper version of
something that’s already selling.
Yen: Not terribly
sympathetic to going after lookalikes, but one thing that’s going on is that
someone who does that is using the mark-like aspects for descriptive purposes:
the message is “the stuff is equivalent to the branded stuff.”
Laura Heymann: but
why not just use the words?
Yen: it’s efficient;
easier to see from far away.
Heymann: we assume
these things, but is that true?

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