TM scholars’ roundtable, part 2

Session 1, Cont’d
Mid-Point Discussants:                      
Stacey Dogan: pre-20th c, very few cases of
claims based on noncompeting goods, and even fewer with actual harm
stories.  Can be characterized as chance
or as the functions of the markets of the day, but either way courts were confronted
w/very few claims.  Hard therefore to
describe trade diversion as a principled commitment to a normative concept of TM
law. When these cases began to appear, courts used the tools available to them
creatively and expanded the doctrine. The blending of UC/TM infringement was creativity
in response to what they perceived as the equities of the cases before them.
Doctrinal v. normative: trade diversion is not a normative
concept in itself. The normative concept in McKenna’s Normative Foundation
piece is Lockean natural rights.  The
natural rights to which merchants have claim are rights to their repeated trade,
but I’m not sure that if we view Locke/natural rights as the governing
normative concept that it has a natural limit. If people are entitled to the
fruits of their labor there’s no reason to limit that to expected repeated transactions
with existing customers.  Threatens even
more expansiveness: the only limiting principles are Locke’s enough and as good;
no internal inherent limits.
Role of judicial intuition in definition/lack thereof.  Harm as a defining/limiting principle. That harm-based
conception could be based on trade diversion, misinformation that causes
consumers to be materially misinformed, or we could think about more attenuated
reputational harm that theoretically can result. Judicial intuitions vary in
idiosyncratic ways, but at least we could talk about what that harm might be.
[Is it really idiosyncratic?  Seems that
intuitions have changed a lot over the century.]  But “unfair” isn’t just harm-based. Some
versions reflect misappropriation oriented approach. Similar trends in late 19th/20th
c. in antitrust, which also lacks vigorous, robust contours for “unreasonable” or
“unfair” restraints on trade.  Loose and
manipulable.  [But also changed in
systematic ways over that period as a result of different underlying theories.]  Opportunities for courts to cloak personal
intuitions in what on the surface looks like some kind of formulaic doctrinal
standard. 
Leads back to the question of whether we can define UC in a
way that has inherent limits.  Confusion
doesn’t have those limits, but neither does natural rights.  Two possibilities, which could both be
pursued: (1) Shift or insist on a more harms based approach and try to define
the harms that the law ought to be concerned w/.  Materiality can be a part. (2) Focus more on
limits.  Focus on why some unauthorized uses
are good.  Room for more attention to
whether we can think of these justifications as providing more limitations on
this unconstrained cause of action.  [I
teach this as courts wanting to have their cake and eat it: they routinely
assert both normative and descriptive limits, e.g., in justifying Rogers v. Grimaldi and nominative fair
use.]
Jeremy Sheff: UC/TM discourse happens in the shadow of ideas
about property.  Keeble v. Hickeringill—early
reports of this 1707 case were that it was ratione soli—he owns the land so he
owns the ducks.  A more reliable report,
a century later, talks about the livelihood of catching ducks; it’s a lawful
way of gaining a livelihood, and D unproductively/wrongly interfered with that
livelihood. Diversion through competition is legit, but not what D did.  Innovation in Hickeringill was that in
earlier cases, the act wasn’t independently wrongful (as hiring highwaymen to
terrorize schoolchildren would have been). 
What is it that makes firing on one’s own land wrongful? It’s a period
of transition in thinking about rights in things.  Property theory: Harm inheres in disturbing
baseline w/o consent of person who has endowment; endowments can be justified
on the merits of the endowed.  But the later
report in Hickeringill emerges from Hobbes: we start from a baseline of
equality, and the rights we have are as expansive as they can be consistent
w/equal rights in others.  Constraints in
right to carry out a line of business are those that can be imposed on everyone
equally.  That doesn’t get us as far as
modern concept of confusion, but fairness is always parasitic on some other
legal standard, whether that’s threats of violence or something else.  In Hickeringill, the independently wrongful part
isn’t conduct but motive—acting on spite. 
“Promising” can provide independent normative content. The
kinds of things that everyone carrying out business should be able to rely on
is things that signal a promise. What’s wrongful: uses that make a promise that
the promisor can’t perform w/o cooperation of others who are under no duty to
perform, or interfering w/ others’ ability to credibly make or perform promises
they could otherwise have fulfilled. 
This is consistent w/a beginning premise of equality for all.
Bob Bone: Why don’t we have the same remedial flexibility
with TM as with UC?  From
normative/analytic perspective, this doesn’t make any sense.  Abandoned marks: using UC to deal w/remaining
source ID meaning—we could do that, but instead we treat them like TMs and are
willing to grant full relief.  Belmora just deepened his confusion, b/c
put UC up against territoriality.
Does it make sense to have a category of broad protection/injunctive
relief for TMs?  What do we do with the
rest of them?
RT says: we could have double identity—property like.  You could justify it by saying enforcement
costs etc. justify a conclusive presumption of consumer confusion.  Or you could say that what’s going on is
unfair to sellers—an equity problem not really about consumers.  But if you do that, it makes sense to have
those marks registered—you want to make sure that others have notice of this
broad protection.
The problem with the rest of it is how much flexibility
there should be. How much do we want to use rules v. standards? What scope for
remedies? But practically the first category comes under hydraulic pressure to
allow more of “the rest” into the more-protected category.  So he finds it hard to justify even having
that first category where harm doesn’t have to be shown, though he kindly
allows that my arguments are among the strongest on the other side.
Dinwoodie: Industrial property/metes and bounds claiming/notice
functions—needs a right that’s relatively fixed and static. But one of the
harms we’re interested in is an intangible that is very dynamic, consumer
understanding, which means we want a second regime, tort-like. We then have to
worry about the circumvention of the rule-based static regime by the flexible
regime.
McKenna: Some early TM cases cite Keeble—productive use of
your own property v. destructive use. Analogy that TM cases make: lying to
divert isn’t productive use of your own property, it’s destructive of someone
else’s property.  Equal rights theory
works for this Lockean reasoning too. 
Two threads in conversation: realist—rules don’t matter b/c
market pressure will change results—and rule-based: we need rules to cabin some
expansions. We have to think that doctrine matters in some meaningful way to
limit claims. Though nothing violates antitrust law any more, everything is UC
over on our side.
Blinded Veterans
is a perfectly sensible case if you understand that UC intervenes precisely
when someone does not have a TM. The whole point of the remedies is that UC
would only have something to say w/o a TM; the nature of the remedy has to
account for the fact that you don’t have a TM; you can’t get any injunction on
the use of the words Blinded Veterans, but only about the manner of use.
Problem: b/c we’re so used to emptying UC’s contents into TM, every P wants the
benefits of TM—no proof of harm requirements, no constraints on remedies—without
the constraints of having to demonstrate that it has a TM.  Why do we have that dynamic?  UC needs to be
limited and distinct or it’s a second bite at the apple for a failed TM claim.
Dinwoodie: do you want this to be about
registered/unregistered?
McKenna: pretty hard—have to also decide what registrable
should mean to answer that question.
Dinwoodie: European solution strongly encourages
registration, but w/o limiting very much what is a registrable mark.
RT: Theory matters/does theory matter?  (1) Evolution of the law is not just random, even if it has been path
dependent.  Consider treatment of
comparative advertising in the US and Europe. Antitrust point: change in theory
changes/narrows what’s actionable. (2) But in TM/UC can we do better than intuition
at the edge cases?  Why do so many of us
find the 7th Circuit cases rightly decided but wrongly/unreasoned?  (Is it fair to say that the 7th
Circuit is actually always only deciding UC cases?) What if anything is the
matter w/plausibility instead of nominative fair use etc., which have their own
difficulties with definition. Is my objection merely aesthetic?
Dinwoodie: Derek Visser interviewed Dutch judges who do
pretty much what the 7th Circuit does.  Not just aesthetic, but about structuring
affairs predictably.  [But has it
worked?]  If they’d reason a little more,
then the doctrines could work—Beebe’s empirical work.
McKenna: 7th Cir. hides the normative ball: makes
a determination that some things are plausible or not, but implicitly limiting
the things about which they ask the questions. Court says there’s no risk of
passing off but doesn’t talk about the other things TM law now covers (sponsorship/affiliation)
and doesn’t say why it’s not talking about them.
Dinwoodie: a lot of these cases aren’t close.  [I think this is a matter of excellent legal
writing on the judges’ part—I don’t see the 7th Circuit getting
different kinds of cases than the 6th or 4th.]
Beebe: a tiny part of it is strong judges.  They all want to write like old English
judges.
Litman: they also write their own opinions. If you won’t let
clerks write, you’ll be [less doctrinal?]
Beebe: not consistent w/ the rule of law!
Dinwoodie: They’re so far away from 50/50 cases that he’s
comfortable with that kind of thing.
Ramsey: we want certainty, which is why we’re attracted to
registration, and to inherently distinctive marks that don’t need secondary
meaning.  Double identity, but that
creates needs for things like exceptions for comparative advertising. Vagueness
is a big concern in free speech law. 
Definitional balancing in 1A could be used for “TMs” and then messy case
by case analysis for everything else.
Grynberg: Not just do rules matter, but what exactly is the
source of the rule?  The reason Belmora looks so weird is that it discards
what we’d thought is a systematic rule of TM, helping make TM coherent—you only
have rights when you use a mark in a territory. 
UC: consider the kinds of rules that we think are defining this discrete
concept. 7th Cir. and Belmora:
does it interfere w/courts’ ability to engage in hand-waving that is often
aesthetically displeasing but helps them get to the right result?  Going to the jury as the same kind of thing.
Linford: does the idea of unproductive use open up a space
for policing what’s unproductive, as in ©’s fair use analysis? 
Burrell: Do we want to confine TMs to a more limited
category?  History in the UK, where we
experimented w/ TM that had to be invented/fancy word. Series of really ugly
cases on what that meant—don’t underestimate the costs of linedrawing. Geog. place
names: Phoenix—is that geographic? 
Stone?  Eureka?  If they’re in b/c they have other strong
meanings, where do you go from there?  Political
economy of proposed solutions: McKenna’s solution is not going to happen b/c
offices aren’t going to lose ½ their revenue and we aren’t going back to unharmonized
rights in Europe.  Maybe think about
TRIPS?
RT: ISSCC in 2d Cir. as opposite of 7th Circuit: you have to
consider all the factors and all the types of confusion that might exist—a
useless/counterproductive formalism.  If
those are the choices, maybe I need to reconsider my opposition.  Can we hope for McKenna’s ideal of discussion
of the reasons for rejecting a theory in a given instance?
Mark Janis: ISSCC is like the 7th Cir, but in
more words—at the end you’re told to consider a whole garbage can of elements
and not told how to balance them.
RT: not sure that’s true: 2d Circuit is sending it back for
more factfinding, while the 7th Circuit has seen everything it needs
to give you an answer. They’re both unsatisfying for sure but for different
reasons!
Bone: doesn’t like Sheff’s promissory theory.  The seller doesn’t think it’s an enforceable
promise, and the buyer’s opinion is usually not enough to make a promise,
unless it’s a normative conclusion about an implied promise.
Sheff: that’s a concern, but to the extent the promise is
often/always implied, that’s something you could replace w/the word reliance,
aligning w/materiality proposals by others. 
Empirically, when are consumers relying on aspects of marketing in
forming beliefs about what a product or service will do for them?
Dinwoodie: the problem with, e.g., geographic terms kicked
out of TM, is less problematic if there’s no cliff (if there’s still UC
protection).  TRIPS does allow some
flexibility as long as what you’re doing is protection.  Registration on basis of secondary meaning:
could put on presumptions/burdens that were different for registered inherently
distinctive marks.  If you could show
PHOENIX is being used nongeographically, you could get the higher level of
protection [at least as against geographic uses]. 
Beebe: thinks that the multifactor test is good v. global
plausibility reasoning, especially in the age of Trump.  It’s not great that judges write their own
opinions.  7th Cir. could go
out of control very easily in another set of circumstances; that’s why statutes
& technical TMs are more attractive.
Dinwoodie: but one of the strongest points from your article
is that they aren’t following black letter law!
Beebe: it at least exerts a general background discipline.
The judge can’t get away with as much.  Belmora reduces everything to two elements
where it used to be five (falling w/in the general terms of the statute +
proximate cause), which itself just reduces to proximate cause.  Seems risky when we take out elements and
reduce the issues to less analytical ways of proceeding.
Dogan: Rules & legal realism can complement each other.
McKenna: at least it allows us to criticize the decisions.
Dinwoodie: and yet Beebe has shown that they’re not telling
the truth about using the multifactor test.
Litman: the rules are way more expensive. If you’re in the 7th
Circuit you don’t need a survey unless the judge says s/he wants one.
Jeanne Fromer: why has
UC not swallowed everything up?  Is it
judicial discretion?  Lawyers/clients
limiting the claims they bring?  Or is
there some internal limit we haven’t seen?
McGeveran: it has, it’s just changed its name to TM law.  UC may mostly be vestigial.
Beebe: how do we teach 43(a) differently from 32?
Grynberg: didn’t spend much time on the difference until Belmora.
[RT: I teach 43(a) mostly as trade dress where you get to pick
the contours of what you’re claiming based on what the defendant is doing.]
Shari Seidman Diamond: Cognitive consistency argument:
interprets factors in line w/what the ultimate decision is. One would like the
7th Cir. to use the factors just so it can go back and forth in its
reasoning (reflective equilibrium!). 
Easterbrook was very frustrated b/c he couldn’t get them to print the
pictures of the Top cans in color b/c then the obvious lack of confusion would
be even more obvious to all.
Sheff: could collect evidence on subject matter, etc. for 32
v. 43(a) claims.  Belmora is a weird
43(a) case precisely because it is a word mark.
McKenna: need to distinguish b/t UC as a mode of reasoning or
UC as a doctrine/body of law.  The
former, which is what we are doing now, is very different from and broader than
what UC as a body of law was.  We shouldn’t
use the term UC to describe the mode of reasoning.  Belmora
is problematic, but at least the paragraph at the end emphasizes that a remedy
should take into account traditional TM principles relating to Belmora’s
ownership of the mark.  They should have
said from the beginning that this is an UC case not a TM case, and they can’t
until they get to the remedy case b/c they don’t have the language to do so.
Dinwoodie: complicating factor is that the cancellation
action goes forward in Belmora too
and w/o a registration they may not have a mark.
McGeveran: so much similar language in Blinded Veterans.  Specific
actions increasing likely confusion, but not b/c of a “mark” as such.  Intent, confusion, skullduggery; remand to
figure out a remedy.  They sound like appellate
judges trying to not grow the territory.

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