WIPIP 2019, Trademark panel

On Gripe Sites and Trademark Rights: Taking Stock of Cooperstock,
Carys Craig
United Airlines v. Cooperstock, Untied.com: United complaint
site with an altered/sadface logo and a popup disclaimer. Sued for © and TM
infringement, and initially held liable for infringement of both—couldn’t have
lost the case more emphatically. He represented himself; it’s now on appeal
with actual representation and intervention by civil liberties groups.
TM use: services is to be interpreted broadly, and includes
providing info to the public. Even if they were noncommercial, there’s no
requirement of monetary/commercial element for info services to be covered. D
argued he hadn’t used it as a mark, but the position of the logo on the website
is where the consumer would expect it to be. There was evidence of actual
confusion: one witness had lodged a complaint on the website, thinking it went to
United, and that was enough.  Also, confusion
was likely because the services were the same: “post-flight engagement services”
and the market was identical: the services were both offered through the
internet. And they were similar because the D wanted people to recognize the
subject matter. Parody and satire aren’t defenses.  An obvious spoof is still cashing in on the
goodwill of the mark.
Dilution/depreciation of goodwill: United invested and
Cooperstock used the mark to disparage the company so it was depreciation of the
mark. No internal limits.  The court also
dismisses external limits—freedom of speech—out of hand. Each step of analysis
leads inexorably to the conclusion that use of a mark to criticize the mark
owner leads to an injunction.
Property right/right of the owner to reap profits from use
without interference.  That’s where we
are in Canada: Michelin & Cie v. CAW (1997): © is private property and so
there’s no right to use it in the service of freedom of expression (but even
that found no TM infringement b/c no commercial use).  Source Perrier v. Fira-Less (1983) says the
same thing for TM. 
Lessons: Canada needs explicit statutory limitations and exceptions.
Could be clarifying of infringement provisions or (better) standalone fair use
provisions. The absence of explicit exceptions/user rights creates an
invitation for overreach/lack of cues to courts to constrain scope of “use” of
Need a real account of “user rights” transcending the
boundaries of IP.  Established for © in
Canada; TM shouldn’t override them, preventing exactly what fair dealing is
designed to protect. The user is central to TM law but appears only in shape of
consumer; need fuller conception of public as consumers and citizens.
Lesson for TM theory: we need to change how we think about
TM. The communicative function provides both the justification for TM rights
and their necessary limits.  Dialogism:
the mark is a textual utterance, which always invites a response. The mark as
text is never static/stable/univocal. The mark owner is privileged in the
public discourse but does not have a monopoly on meaning-making.
RT: Carol Rose: real property communicates too: keep off—so the
response from TM owners at a theoretical level may well be that dialogue =
invitation to bargain/create one’s own mark to intervene in the flow of meaning,
not invitation to act w/o consent.
A: Property based methodology can still be used to disrupt
the notion of control over the property. 
Dev Ganjee: notion of property in the brand v. property in the mark
implies and relies on consumer sociality/communities of brands built through
public discourse. Then there’s a sort of appropriation/co-ownership of the
brand [but maybe that’s just the voluntary allowance of the brand owner for us
to hang out there; we can always be kicked out]. The property paradigm may be
pretty hostile to real understanding of TM.
Lunney: how bad is it? Would unitedsucks have been ok? Is there
any way to avoid the need to spend lots of $ on lawyers to figure out what you
can and can’t do?
A: Answer unclear; try again later.
Protectable Trademark Subject Matter in Common Law Countries
and the Problem with Flexibility,  Lisa
Nontraditional TMs: colors, sounds, positions, etc. Lanham Act’s
provision on the supplemental register goes into more detail about what can be
on the SR than the Principal: configuration of goods, packaging, etc. but doesn’t
mention sound or smell (or taste).  Canada
has the most detailed provision that would allow sound, scent, taste, texture,
positioning of a sign.  All of these
lists are nonexclusive—e.g., hand gestures. Benefits for potential registrants:
you can look at what you’re doing and almost any part of it could be a TM so
you go from there.
Not every common law country has functionality (e.g.,
NZ).  TM examiners often use lack of
distinctiveness instead but that can be defeated w/evidence of secondary
meaning, so that’s a problem.
Flexibility’s costs: uncertainty about the scope of the
resulting right.  TM registration for
vodka in the shape of a skull=successful threats against sale of tequila (and
more disturbingly, hot sauce) in similar bottles.  Nontraditional subject matter may make determining
scope less clear. [The example I use: does registration for the texture of velvet
on a wine bottle—a real US registration—give rights to preclude the use of RED
VELVET as a word mark for wine?  What
about the sale of bourbon in a velvet sack?]
Lunney: Congress tried to prevent the Lanham Act from
allowing registration of trade dress, and courts and PTO just ignored that.
What makes you think it could be more successful now?
A: would have to be very clear: no smells. (Another factor
here is anticompetitive nature of the operation—big firms are better at getting
over the hurdles to register nontraditional marks and there are competitive concerns.)
Rosenblatt: scents are potentially infinite (though you wouldn’t
want to use all of them); are you treating all nontraditional marks the same?
A: No, wants nuance in different classes.
Fromer: one of the problems is acquired distinctiveness: it
is less likely that the person using them is thinking of the arrangement of
features as having a specific defined nature when initially adopted; the fact
that it’s chosen/defined later is a problem of its own.
Abdul-Khalik: mandate for a chemical listing or other
definitive description in order to claim the mark to limit scent?  Another concern: even if you exclude
things/have an exclusive list in the statute, courts will want to provide common
law protection, exactly as California did w/its right of publicity.

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