TM Scholars’ roundtable part 3

Fame, Reputation and “Well-Known-ness”

Mark Janis: is fame something distinguishable from distinctiveness, or is it merely the highest degree of distinctiveness?  Possible topics: dilution thresholds v. well-known marks thresholds.  Coach v. Triumph, Fed. Cir., Coach handbags and Coach tutoring services.  Useful illustration b/c Fed. Cir. likelihood of confusion test referred to fame of prior mark, not mark strength.  Says dilution fame and confusion fame are different; court seemed to mean the two were functionally different.  Fame for dilution is either/or, while confusion is a matter of degree. That seems reasonable, given doctrinal contexts.  Creates a linedrawing problem and doesn’t tell us much about the content of fame for either purpose. Magnified if we don’t really know what mark strength or confusion fame is to begin with. Additional soundbites from Coach: fame is more stringent for dilution.  But leads back to measurement questions.  TDRA added general consuming public to eliminate niche market fame and regional fame.  Look back to FTDA, which explicitly included degree of inherent/acquired distinctiveness—that’s a message that fame is a high degree of what we talked about yesterday.

Relationship b/t fame and well-known marks: all the things/factors we talk about above presume use of marks; maybe well-known marks is instead an exogenous construct that identifies a choice to derogate from territoriality. Other sources: TRIPS, WIPO joint recommendation on well-known marks.  Leaves him wondering about basic question: how to think about fame.

Introduction: Bob Bone: I don’t know what fame is either. We don’t have a clear idea of why we have dilution, or why we would derogate from territoriality—we could be trying to do multiple things.  If we did, we can assess costs and benefits and figure out what to measure and where to have the cutoff.  Schecter assumed distinctiveness varied, but had no cutoff—never defined “how much uniqueness,” which doesn’t make much sense in the abstract. He had a different kind of theory than we would necessarily champion today.  Coming to terms w/ a concept w/o a long history.  What are the social benefits we seek from dilution protection?  Do they match up with any meaningful dimensions/metrics for measuring fame?  Anti-free-riding?  The more reputation a mark has, the more benefits there are from free riding?  Why is that relevant to tarnishment, though?  Why would we have a threshold if that’s our concern?

Theories of dilution benefits: brand identity as analogous for personal identity; free riding; prestige goods: you’re protecting/preserving a product in the market.

Well-known marks: Transitional cases: we’re in the middle of a change in the law—making exceptions to territoriality. We have yet to have a theory.  We may be heading to recognize marks in the US when they have secondary meaning; Grupo Gigante asks for something more (what more? Who knows) though there are functional reasons to require more, for example if you’re worried about the stability of the secondary meaning. Spillover of meaning may wax and wane. Bringing machinery of TM law into place may be a bad idea if a year from now there won’t be as much secondary meaning in the US.

Robert Burrell: Reputation standard in Europe differs from well-known in New Zealand differs from famous in the US. We all do something different, so if there’s one answer most of us are doing it wrong. Maybe it’s a litigation cost point: only when you reach a certain level that protection is worth it, but even then most jurisdictions might have it wrong about what that point is [though litigation costs might vary across jurisdictions for the setpoint].  If we start with harms of antidilution sought to be avoided, we might get different answers. Tarnishment isn’t about level of awareness, but about interaction w/mark.  Need to know what and how consumers think about the mark—not quantitative.  Probably also true of free riding. Still need to know what the advantage that has transferred is to the defendant. Engagement w/reputation that is more than recognition.  He’s never understood connection b/t blurring and reputation.  People who are most likely to suffer difficulty carving out marketing space are those whose marks don’t have fame.  Reputation as trigger for other types of protection—compare double identity, where we protect in absence of reputation.  That is: We do have situations protecting against these other harms w/o reputation.

The way in which we interact w/TMs is so varied—we know very little.  Adding reputation on top complicates things we are already too unclear on.  Insofar as we can say anything, reputation can cut in both directions.  At least one TM system does follow Beebe/Hemphill in holding that reputation can cut in both directions—Australian courts describe it as “double-edged sword.”  Clearly intended as substitute/direct competing product, reputation cuts against confusion. Everyone remembers Maltesers; no one will misremember Maltesers; everyone will assume that Malt Balls is an attempt to compete w/them. If there is a brand extension situation rather than competition, though, there’s an assumption that consumers might believe that there was a mark modification.  Koke cola: fame cuts against confusion.  But if you have Koke vodka, consumers might think it’s a brand extension; might think marketer would want to show connection but also signal difference.  Pfizer/Herb-agra case.

Would this rule increase uncertainty for brand owners? Uncertainty is not always a bad thing.  Depends on whether it gets you closer to a desired goal.

Shari Diamond: in the statute it says general consuming public; market can overlap for some products, but in most cases they are quite different.  Pushing by famous mark owners to get property protection; statute is a compromise/limitation on property rights, and judges have reacted to it that way, being not very friendly to dilution in most cases.  Confined to small group of lobbyists—that’s why we have ambiguity. Famous marks may be more likely to attract free riding. But there’s something else in the statute that troubles her—the use of “recognition.” For psychologists, recognition as a measurement issue is very limiting.  Very different to ask about “recall,” “come to mind” in open ended Q v. recognizing on a list.  Putting too much weight on language of statute in giving generosity to how easily you can find fame?  That’s a measurement issue.

Bone: we could just charge $10 million to bring a dilution claim.

Dinwoodie: some countries have a list of well-known marks—you pay an agency to conduct a survey.  Russian model. So that is how it works.  Japan too—but more principled in Japan.

Fame for dilution purposes: the problem is no sound foundation for cause of action; trigger should have some connection to cause of action, and we’ve moved far from Schecter’s uniqueness. Now strange to try to connect to distinctiveness. Defense of well-known marks: distinctiveness that has crossed the border, w/exactly the same harms. Difference is political overlay of nation states that we recognize for efficiency and other reasons; for political reasons we elevate the requirement of secondary meaning to limit search costs.  TRIPS: closest to international recognition of dilution. Brand owners strategically piggybacked dilution on top of well known marks. But well known marks can be grounded in consumer protection in a way dilution can’t—blending of two in international instruments in theoretically insupportable way.

Yesterday: We frequently drifted from discussion of distinctiveness to discussion of confusion—same has happened here w/ fame and connection to harm of dilution.  Differences in causes of action vary by country. Low reputation requirement for dilution in the EU: we protect more in dilution that the US would protect by confusion over association.  You can get into the dilution game more easily in the EU; we wouldn’t force you to show fame for association confusion in the US either.

McKenna: older view of TM law would also say you can’t divert trade from a company not using the mark: well known marks doctrine looks like market preemption/preservation from that perspective. Much more a political judgment than a consumer protection measure.

Temptation is to say fame is distinguishable from secondary meaning b/c it’s not about a particular product relationship; it’s a measure of broader recognition. But how does that differ from strength? That’s precisely about extending rights beyond a particular product.  Distinctiveness is a subset of strength, which is not quite the same thing as fame but is arrayed on that spectrum.  It’s really strength I can’t figure out.

Ramsey: Some argue that TRIPS require us to protect against dilution, but Australia doesn’t have that.  Others say as long as you cover dissimilar goods/services w/confusion cause of action you’re ok, as Australia does.  Different standards may deal with different harms from overprotection of right once established—rather than having to deal w/that at defense stage, high fame standard for dilution prevents entry. Same w/well-known marks protection.

Linford: If product tranches are getting broader b/c everyone makes their own t-shirts these days, then importance of fame may diminish.  W/r/t well-known marks: Perhaps we should protect well-known marks from a border country with a large population of immigrants in the US, but not marks that are well-known elsewhere.

Beebe: Morrin & Jacoby results—the very strongest brands are immune to dilution—comes into effect in dilution context.  Work w/Sprigman & others that’s empirical/experimental, finding the same thing w/superstrong brands. Associations are just so incredibly strong.  Misappropriation: selfish plug for my work on Schecter: when he wrote he was translating from German case, lifting passages. One of the decisive passages is lifted but deleted: the phrase “reap where you have not sown”—deliberately suppresses the misappropriation connection, in order to appeal to the legal realists of his time who were very suspicious of the circularity of misappropriation.

Bone: that’s a lot to infer from an omission; Schecter wasn’t a faux realist. [He was a cool realist.]  Still an intereresting insight.

Dinwoodie: “foreign influenza”—too easy importation of rights from abroad is really troubling.

Bone: tarnishment destroys the product—it’s not worth buying Tiffany jewelry if it’s just jewelry, not Tiffany.  [I point out there’s a Tiffany adult club in Texas, despite the Tiffany strip club example.]

Jeremy Sheff: As scholars, what should we do if we conclude that the fame threshold in dilution is a crass political power grab—class privilege for some and not for others. (1) Shine a light on operations of power w/different rules for strong than for weak—realist tradition.  (2) Try to rationalize it: even if it’s just power, do the best we can with what the legislature gives us, give it the best theoretical framework we can.  (3) Normative response: this is just power and that’s offensive b/c we believe in rationality of legal system/rule of law/equal treatment.  Then we could go at least 2 ways: equalize up or equalize down by getting rid of the privilege.

Grynberg: familiarity w/TM system is important—Belmora court looks at 43(a) and doesn’t see territoriality in it, so doesn’t consider rest of system, just says 43(a) is broad. Conception of fame/scope of rights that’s exogenous to TM doctrine as we know it.  That dovetails w/ongoing problem of general expansion of TM law. Cabining by doctrines internal to TM is one strategy—functionality exclusions; Dastar.  Belmora reflects the limits of this approach, though.

McKenna: Note that statute isn’t just fame, it’s fame as designation of source for goods/services of mark owner.  Bizarre question.  You’re really just asking for recognition in the abstract.  Same problem w/blurring: is it just association or is it association + something else.  Is fame more than recognition/top of mind-ness?

Dinwoodie: actually connects to UK debate about whether recognition w/o reliance or association is enough for secondary meaning.  Salience to the consumer, related to reliance.

Ed Lee: the idea of higher protection for some marks is similar to proposals for patents that have survived re-examination.

Bently: why didn’t India have a registry until 1940?  The British interests didn’t want an Indian TM registry, b/c then they’d have to go register, and they were worried that Indians would register marks in England. If there’d been a well known marks doctrine, they could have relied on that to stop colonial underlings from doing such an outrageous thing as registering a British mark in England.

Leaffer: doing a survey forces people to reveal value.  On the whole though it’s too much rent-seeking (a registry of famous marks). Well-known marks doctrine has a pretty good justification if you take the role of TM owner who has a mark w/a reputation—there’s a lot of bad faith manipulation/free riding in many countries. The cost of keeping up registrations internationally is pretty big; well-known marks doctrine applies a safety valve, especially in a globalizing world.  Even very wealthy companies have a difficulty in keeping registrations in all countries.

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