TM Scholars’ roundtable, part 1

Trademark Scholars’ Roundtable, 10th year!
Session 1:  The
Distinction Between Trademark and Unfair Competition Law
Introduction:   Mark
McKenna: Until mid 20th c, could have said that TM and UC were
distinct legal claims that vindicated the same right; thus cts said that TM was
a species of UC.  All UC aimed at
dishonest trade diversion. Use of another’s TM was an egregious example, but
other things w/the same dishonest effect fit under the broader UC
umbrella.  TM was a more limited category,
not conceived of purely in source designating capacity: it was an ontological
category of words/symbols that unambiguously indicated source, arbitrary/fanciful.
Descriptive terms weren’t TMs; you could bring an UC claim against second users
and the nature of the argument was the same, passing off, but not by copying a
TM.  A subject matter distinction.
UC cases did involve uses that might have had legit
explanations—e.g., descriptive use—so they had add’l proof requirements, such
as secondary meaning and in most circumstances an intent to pass off.  UC was also usually characterized by more
limited remedies.  Kellogg—SCt contemplated
remedy directed not at name or shape but packaging, but here Kellogg had
adequately distinguished its products.  Injunctions
were highly tailored and would often include long verbal descriptions of who
was making what and courts found them adequate (maybe just normatively
First federal laws were TM by definition—only technical
TMs.  TM and UC then became
jurisdictional—TM could be under federal statute, but UC common law.  Pre-Erie, would have been general law of UC,
but post-Erie they had to admit that it was common law, so that was a big
motivation for the Lanham Act.  Over the
20th c., some significant trends. First, we lost the idea that trade
diversion was a central concern of UC, fundamentally altering the conceptual integrity
of the whole system, b/c unified concept of nature of harm was lost.  Once TM covered non-diversion, UC became a
slop bucket of ideas about things people were doing that we thought were bad.
When Congress first started having hearings about child labor and convict made
goods, some people suggested that a hook for Congress was unfair competition—producers
in other states were at a cost disadvantage to those who were child labor
users.  At first hearings (1916), that was
dismissed out of hand b/c it’s not passing off, but those theories got more credence
as the years went on and unfair competition is increasingly mentioned in the
legislative responses (1930s).  Suspects,
though doesn’t know, that you’d see same evolving thinking about narrowness of
UC to a term that we apply to things we don’t like in hearings about FTC.
Problem: no new concept is put into place to substitute for
trade diversion.
Second: we gave up on subject matter limits to TM
proper.  Some of that is about
registrable matter.  Unregistered marks
become enforceable as marks under the Lanham Act.  Courts interpret Lanham Act more broadly than
drafters expected.  Disuniformity concerns:
courts invented the idea that the law reached unregistered and unregistrable matter; assimilated UC
into TM.  Abercrombie mashes up categories of TM law with proof requirements
for things that aren’t TMs.  Secondary
meaning = requirement for TMs, when it began as a proof requirement for things
that weren’t TMs.
Those two together leave us w/free floating doctrine, as in Blinded
Veterans, that would be sensible under another system, but look strange in the
modern scheme. We used to have a property-like system of TM as such, with UC as
an equity system.  These days there’s a
lot more pressure in identifying subject matter; the things we’re especially
bad at IDing the boundaries of, like trade dress & complex marks, wouldn’t
have been in TM at all in the past.
Belmora: once upon
a time, it would have been entirely natural to think that even though Bayer lacks
TM in Flanax, it had a right for a limited remedy for things like packaging and
labeling. The reason Belmora strikes
people as such a strange case is that it draws on concepts that no longer fit
our system. B/c so much has been pushed into TM, the Q of rights you might have
in non-TM matter is hard to ask.
Most of this is in motion in the 1920s-1940s.
Lionel Bently: The UK didn’t embrace the UC language/concept
at all. Why not and what effects did not doing so have compared to the US?  Worth starting w/observation that language of
UC becomes widespread from 1890s (or earlier). 
US cts cite lots of case law from England in developing this distinction—buses
using the same livery; 1843 case about boot polish, using label & name;
Stone Ale for beer where Stone is a place in Staffordshire, but had secondary
meaning and was protected.  So US doctrine
is citing all these British cases to establish distinction b/t TM and UC, but
British didn’t see it that way at all. British saw it as one big melange called
passing off.  Engagement w/foreign
countries, trying to develop bilateral relations was part of this, as well as
potential multilateral treaties.  1883
Paris Convention: one British commentator thought that TM had to be defined
before any progress could be made. 
Ontological distinctions of Americans never really stuck in the UK.
Why not: Lots of reasons. 
Has come up w/11, but won’t go through them all.  TM registration in 1875 allowed registration
of only a narrow set, not even word marks. 
1883: invented marks; 1905 became a general definition w/some exclusions,
e.g. of geographic marks.  The effect was
huge—significant uptake, and developed same disinction b/t technical TMs and
UC, except done as registered TM infringement v. passing off, where there was “fraud.”  If you wanted non-fraud protection, you
needed registration. 
Also, there was a House of Lords decision in 1891, Mobil v.
McGregor, a combination b/t traders from which someone was excluded.  Lower ct had said that courts can’t distinguish
b/t fair and unfair competition, and that was reflected in the House of Lords
decision—a big signal from the top that UC wasn’t fit for purpose (at least for
an imperial legal system).  Related circumspection
about courts’ definition of broad legal concepts.  Fear of conflict with existing statutory
regimes, e.g., copyright and patent.  Australian
High Court’s rejection of INS v. AP—someone overlooking a racecourse can
broadcast what occurs at the races: we have all these statutes and we shouldn’t
undermine the legislature. 
Also, Germany & France had UC laws in the 1890s/1900s,
and thus might well have contributed to a higher level of skepticism in the UK.  In the 1800s, Germany didn’t protect TM well,
and there was a lot of counterfeiting; the US didn’t protect copyrights.  Towards the end of the century in both
countries, there was a sense of a need to present the country as moral, and its
businesses as moral.  Herbert Spencer was
a big author for this purpose, especially in the US.  You see in American literature and case law a
surprising level of pride in embracing the notion of UC.  Dennis v. Thomas, 1899 Delaware case—principles
of high business morality gives “luster” to the system.  A sense that the law needs to control
business behavior and also express a moral vision of US capitalism.  The British didn’t seem to need that; cases in
Britain at the same time say (in case about competing seed companies that both
used prizes and one copied language from the other) that the court doesn’t sit
to judge “according to any high standard of honor” what should be allowed—“everything
is fair in trade, as it is in war.” Totally different view.  [Talk about an imperialist legal system!]
Did it matter: Variation in US from 1920 through the Lanham
Act, sometimes the UC label had effects on outcomes and sometimes less so.  In the UK, we can see more expansive
tendencies from time to time even w/o UC. 
We find deception in all sorts of places a right thinking human wouldn’t
find deception, as a means of expansion. 
There are a lot of commentaries that say UC is just the
American term for passing off—a mere terminological difference? But other
people are building big conceptual frameworks to explain the relationship b/t
UC in the sense of passing off and all these other laws like anti-monopoly laws
more generally. Callman in the 1940s etc. start to elaborate ambitious systems
for fitting these things together within a principled notion of regulation of
competition.  Read first 120 pages of
Callman’s 1945 book! It’s amazing, though obviously wrong.  He has an idea of competition as a
relationship—very Germanic, duty of care based. You have to abide by the rules
of the game—lots of sport analogies.  The
umpire is the consumer, so you mustn’t mislead the consumer.  You must compete on your own feet, rather
than misappropriating. 
He thinks that UC was sometimes just passing off and
sometimes not, at different times/jurisdictions.  INS v. AP is the big point for misappropriation.
Most INS commentary says it was a one-off and everyone just distinguished
it.  But more contemporary commentary wasn’t
sure—some very broad statements of the rule. 
When we all leap quickly to Cheney Bros. and later cases, remember that
at the time it seemed to signal some big shift. 
That is a shift away from UC as passing off to UC as any form of
misappropriation.  Erie, and even before
Erie, INS was a casualty of the legal realists.
In the UK: noncompeting goods. 1898, Kodak bicycles
infringed Kodak cameras, as passing off. Walter v. Ashton, the Times newspaper was
infringed by Times for bicycles (again). 
Showing the flexibility of passing off to expand well beyond what we’d
think of as diversion of primary markets. 
Having said that, 1947 we see a case on personality merchandising,
McCulloch v. May, the High Court says that a radio presenter’s name isn’t
infringed by use on breakfast cereal—you need a common field of activity for
there to be passing off.
Discussant:                  Robert
Differing legal climates. Rise of legal realism in the US. Affects
culture in which Schecter was writing, as Beebe has written: problematized the
idea that you could throw around the label of property. It’s a conclusion, not
a reason.  Never had the same influence
in Commonwealth jurisdictions.  Earlier
years of 20th c—passing off as protecting property in goodwill was
taken very seriously by commentators. 
That’s one reason why UK didn’t embrace UC—they thought they were
protecting property.  However, bear in
mind that these things were often close calls. 
We now think of an Australian High Court case [Victoria Park, 1930s?] as
the final rejection of UC in the Commonwealth, but it was a 3-2 decision.
We tend to write out of legal history: there might be a
significant element of chance.  1891 McGregor
case says there’s no law of UC in the Commonwealth, but a load of unregistered
TM cases where you want to find the D liable. 
You have to reach for some other theory. 
If the House of Lords had dealt with a bad guy in 1890 maybe we would
have embraced UC.  By the time the Australian
High Court decides against UC, INS has fallen out of favor even in the US.
UC as nation-building: INS had an idea about nation-building.  Commonwealth had a similar dynamic, there
about ensuring that other bits of the Commonwealth remained in the fold.  Imperial control, and leverage in
international negotiations to create a law of the Empire.  1890s: clear imperial policy to ensure TM law
uniformity, but that was when relations b/t imperial gov’t and self-governing
dominions was becoming increasingly fraught. W/TM, though, happy to follow UK
lead, so there was no need for Privy Council to try to harmonize through
development of the common law—the self-governing dominions were playing nice
and adopting UK law; no point in inflaming things w/massive expansion of
law.  There was also possibly a concern
about being overwhelmed: if there’s a broad law of UC, will courts throughout
the empire keep coming back to the Privy Council for further instruction about
what that means—a docket control concern.
Parliamentary sovereignty: no limit on what it could do. Not
unimportant that in Australia, which did have those considerations, Victoria
Park was in the 1930s/after the 1920s, a key moment of Australian law in which
there was a massive expansion in what the federal parliament could actually do.
There would have been no impediment to federal regulation of things like UC.
Bob Bone: Why create a category of technical TM
infringement? Why did trade diversion drop out? 
His answer to #1 involves a particular conception of property rights;
sometimes concerns about difficulty with granting rights w/nontechnical
Second, trade diversion was never a normative component, it
was a standing requirement so that the firms had a reason to enforce consumer
harms.  If you drop trade diversion as a
normative requirement, you get reasons to protect technical and nontechnical TMs
(w/more proof for the latter), but that distinction isn’t stable as soon as you
start to Q the assumptions of technical TM infringement. And that begins to
happen very early in the 20th c., even in the late 19th.  People recognize that once you drop out the
property theory, TM and UC look very similar. 
A lot of folks saying that UC is about fair dealing in the competitive
market, as well as a leftover idea of UC as passing off.  That latter is largely doctrinal.  People are struggling to see how much further
it can be pushed, and they recognize that UC is exactly what it says: fairness in
the marketplace [but not competition?], and those principles have normative
extensions, such as INS v. AP.  It’s a
matter of overcoming 19th c conceptualism, which becomes legal
realism; you see the boundary b/t TM and UC is porous/disappearing, and then
you have the normative justification (fairness in market) for a further
Graeme Dinwoodie: Q of judicial role: extent to which courts
in UK felt constrained by the statutory monopoly.  In the 1970s, in passing off cases, court
says it can take inspiration from what the legislature is doing and protect
under passing off.  In the US context,
there’s a more developed sense of the Lanham Act as encompassing the broader
subject matter—something like a delegation statute allowing the judiciary to
develop the scope of rights.  Is the line
b/t infringing a registered mark and UC the same as the line b/t registered
& unregistered marks?  Related goods
as a line?  Is any case against an
unrelated good part of the slop bucket, or can they be trade diversion, given
the development of businesses over the 20th c.?
McKenna: The problem was abandoning trade diversion and
putting nothing solid in its place. Searching for a way to understand a theory
of protection against noncompeting goods that is not limitless.  Closely related goods: he thinks that’s ok,
not just vague sponsorship/affiliation. 
Dinwoodie: once late 20th c. becomes all about endorsement,
that’s hard.
Beebe: confusion isn’t a limit?
McKenna: confusion about what?  You need a theory about which forms of
confusion and among whom are relevant.
Bently: thinks the registration system was much more
ambitious initially—designed to replace passing off.

Burrell: agrees, 1875-1900, people were speculating about whether registration
was an absolute precondition.
Stacey Dogan: but it’s also important if there were no cases
saying that.  We think the 20th
c showed a big change, but many of the old cases rejected broad claims b/c
there was an interest on the other side—the D wanted to use a geog term or their
surname. There aren’t a lot of cases from the 1800s where the court says there’s
a lot of confusion and no justification for the D but nonetheless we won’t
intervene. Part of it is changes in commercial context through the 20th
Jake Linford:  Path
dependence/hydraulic pressure.  Could be
caused by good D’s att’ys, but cts don’t like leaving harms that they see
unaddressed.  [Depends on whose,
right?  Poor Joshua!]  Somewhat persuaded by affiliation/sponsorship
confusion as a response to hydraulic pressure: competition could mean more than
it used to mean, and that’s why such confusion is actionable. There are reasons
to be troubled by that, but it is a plausible story for how expansion
happened.  If trade diversion is just
makeweight/standing, why can’t consumers sue for their own confusion?  Path dependence keeping consumers out of
court?  Why shouldn’t consumers have more
power in this space? But trying to vindicate that, w/o carefully defining confusion,
leaves a lot of room for rights overexpansion.
Lisa Ramsey: Is it even possible to have a TM theory that
isn’t limitless/supplies the necessary rules? 
One option is a theory that guides most issues, but uses other
considerations to limit it, such as free speech/competition.
Jessica Litman: in the original and 1988 legislative
history, there is significant evidence that Congress (some members at least)
thought that consumers could go to court, but courts slammed it down—all but
unanimously didn’t want it in the courtroom. 
Ramsey: California state law.
Bill McGeveran: Almost all UDAP laws allow consumer
McKenna: in a bunch of old cases, cts say TM/UC is about
harm to competitors, while consumers have their own claims in fraud & deceit.  There are even a pair of parallel English
cases with consumer/competitor Ps.
Bently: there are different accounts of what’s supposedly the
first TM case; some accounts say it’s brought by the customer and others by the
competing trader.
Dinwoodie: it might be possible to hollow out the concept of
competing goods in the same way so it also doesn’t do work.
McKenna: competition is in UC for a reason.
Ramsey: “deceptive” trade diversion does more work.
McKenna: that’s another thing that happened: “deceptive” is
a lot more limiting than “confusing.”
Bone: we know the theory; the problem is that it becomes
really weak, if supported at all, as we push it, and the empirical basis of the
theory may not be very strong. But the theory of reputational harms from
association is perfectly cromulent.
Dinwoodie: once you accept that the claimant has the
possibility of expansion, it’s not just lost sales but lost potential sales
that matter.
Bone: all that fits the core theory; it just goes too far.
McGeveran: the content of what courts substitute in for
direct competition/other traditional limits is much more inchoate than what
went before: makes it easier for the next bout of hydraulic pressure to lead to
Beebe: material conditions change; the rise of brands.  Current analogy: globalization and
Googlization—tech and social conditions change, and perhaps that helps explain Belmora.  Political conditions also matter: the Depression,
the New Deal, concepts of antitrust/trust—how this affects concepts of TM
law.  They trickle down into the law,
just as current conditions do.  We’ve analyzed
TM through a democratic system, which affects why we ask why consumers don’t
have standing.  What would a
communist/authoritarian TM system look like, where the individual serves the
state and we don’t care about consumers, it’s just secondary.  How would you articulate that version of TM
law or unfair competition outside a liberal democratic system?  [China?] [There’s also a really interesting
book covering Nazi copyright law with a similar set of Qs.]

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