TMSR, part 3

Session 3: Defining Marks in Trademark Law vs. Defining
Subject Matter in Adjacent Areas of IP
In formulating rules about defining marks in trademark law,
what (if anything) can be learned from the longstanding debate about defining pictorial,
graphic, and sculptural works in copyright law? What can be learned from the
nascent modern debate in design patent law about defining design patent subject
matter through the disclosure in a design patent document? How do these mainly
doctrinal questions feed into conceptual inquiries—such as, what is a “design”
for purposes of design patent law, and how does that compare to what we think a
“mark” is in modern trademark jurisprudence? Is the ornamental visual
impression associated with an article of manufacture (as per design patent law)
distinct from the non-functional goodwill-symbolizing combination of visual
characteristics (as per trademark law)? To what extent can we use doctrine in
these areas to help draw the line between trademarks and other forms of
intellectual property?
Introduction:   Rebecca
Apologies for not doing a great job answering these
questions directly; I found myself thinking about the analogical project rather
than diving into the details.  Borrowing
lessons may be especially tricky b/c of the temptation to hope that the grass
is greener in another field, where in fact there’s likely to be fractal
complexity/just as much uncertainty on similar details as there is in the
fields we know well. Sarah Burstein’s been doing a great job explaining to us
the unsettled and/or unsettling parts of design patent claiming, suggesting
that we might not get as much help as we want from comparisons to design patent
except in very broad strokes.
A special problem here discussed in detail yesterday, is
that claiming will be lagging in TM as long as Ps can claim that confusion is
the foundation of the cause of action; putting weight on claiming is
antithetical to preventing consumer confusion at least in the sense of having
an individualized inquiry. Claiming only makes sense as part of a broader
commitment to structural features of the regime that we think will produce
beneficial results overall; it is inherently in tension with an individualized
confusion determination though not necessarily in tension with an error costs
account of a regime that overall seeks to minimize consumer confusion. This is
one reason to expect resistance from crossover with non confusion based
doctrines whether copyright or patent.
In particular, TM can resist importation from other
doctrines by contesting how much definitions even matter. We haven’t spent as
much time on the point that unfair competition is the antithesis of
non-case-specific definition—under Kellogg-type doctrines, you may need a
definition of what the defendant can’t do, and you may get a definition of what
people in general can do (as long as they take differentiating steps) but you
don’t necessarily need a before the fact definition of the plaintiff’s rights. My
version of “negative space”: stuff you can do, but it may imply that you have
to do other stuff as well if you choose to do the allowed stuff (e.g., can copy
an unpatented article, but must use your own house mark on it)—not quite
negative in the ordinary sense.
Roland Barthes and the writerly versus readerly texts: The
writerly text is one that demands input from the reader who must herself enter
into the infinite play of meaning of text, becoming herself a writer to receive
it. Readerly texts, by contrast, don’t give the reader a role as a site of the
production of meaning, “but only as the receiver
of a fixed, pre-determined, reading
I think there might be something there for marks generally, but right
now I want to offer the idea of producerly and consumerly definitions of
marks.  Producer-oriented definitions of
marks can draw more from other fields of IP, where we have normative and
empirical commitments to the scope of rights that are usually less dependent on
the social meaning of a particular work or use and more dependent on social
policy writ large.  Consumer-oriented
definitions of marks set themselves against the usual incentive or
labor/natural rights-based justifications for patents and copyrights, demanding
flexibility to the consumer’s perception. 
Registration is producerly; unfair competition is consumerly.
Lots of our principles are fundamentally producerly: For
example, Why not protect style? What if we were convinced that it was serving
as an indicator of source, as it often does for creative works?  Consider Milstein v. Gregor, involving
die-cut greeting cards in the shape of the objects depicted in a
photograph—bouquet of daffodils, a sunflower, a butterfly, a pair of ballet
shoes: Trade dress does not protect an idea or concept. Note that this is not
an issue of definition of the trade dress. The problem of competitive freedom
to operate does not go away even if you have a very clear definition of the
trade dress; it was relatively easy to figure out what the plaintiff was
claiming, but the claimed matter was still too abstract.  And yet: if people really would be confused,
why would it matter that the claimed subject matter was abstract?  That is, why couldn’t a plaintiff own a
trademark right in a concept, if in fact every implementation of that concept
made people think that the implementation came from the trademark owner? 
Some other provocations: Does the incentive justification
for ©/patent play a role in the definitions of what is the work or the patented
invention? Abraham Drassinower’s work on this is relevant, and suggests that
the answer is that the incentive justification doesn’t do much work on
definitions of the protected matter as a whole, even if it might affect what
parts of the work are free for others to copy. 
As he points out, we don’t generally even ask if protecting ideas would
get us more ideas b/c ideas aren’t w/in scope of copyright.  Implication, and it may contradict what I just
said about consumer-oriented definitions—I’m still thinking this through—is
that many of the tools that we have from other areas of IP might be
transferable because they aren’t fundamentally incentive based; rather, at
least some of them are about what we think judges and juries might be competent
to do. Bob Bone might identify at least some of them as error-cost-based tools,
and error-cost based tools might well be similar across areas of IP with
different justifications.
Static v. dynamic justifications: how responsive do we think
claimants will be to the legal regime? How responsive will consumers be? If one
group is responsive or nonresponsive enough perhaps we need not worry too much
about the other…  And there are reasons
to think that people may be pretty nonresponsive to the legal regime.  References on Twitter as indicating
source/sponsorship—would it even be possible to change Twitter users’
perceptions about who has the right to decide whether a person can use a
hashtag associated with a brand?  On the
other side, I really love the Regents of the University of Wisconsin TTAB case,
which finds that lack of control over the mark for nearly fifty years doesn’t
destroy the university’s rights because public perception continues to
associate the mark with the university—lack of supervision doesn’t work to
eliminate rights. In those circumstances, then, we may have to take consumers
as we find them.
The one very specific point that occurred to me as I
reviewed the materials about lessons to be learned from other regimes comes
from design patent: Sarah Burstein’s argument that we should take the design as
a whole as the unit of analysis, because that’s what consumers see. This is of
course also true for TM—the consumer sees the whole thing, which creates
challenges for filtering out unprotectable elements when trade dress is
claimed. But I’m really intrigued by the concept of limping marks—marks that are
theoretically capable of bearing trademark meaning, and sort of do so, but not
really because consumers always see them with more prominent or salient marks,
usually conventional word marks.  I think
the argument that we should consider the design patent as being for an entire
article or service is actually structurally similar to the argument for having
a limping marks doctrine.
Lisa Ramsey: could we find something in TM law that is
analogous to “article of manufacture” to motivate the rule for looking at the
whole good/service?  [how do you look at
the service as a whole? The visual trade dress of the provider of the service,
perhaps, but why even limit it to the visual?] Distinctiveness might be one
hook.  Morality/illegality (tax evasion)
exclusions in patent—could we connect those to TM morality exclusions?  Could be used to deny TM protection to
culturally significant works, per Martin Senftleben.
Prosecution history estoppel: great argument by Gangjee that
you should use it to limit the scope of the mark.  Standard scenario: Apply for a mark, submit
T-shirt w/specimen that’s a huge print on the front; PTO rejects the specimen
on ornamentality, but when the applicant resubmits w/mark printed on a hangtag,
they get the registration.  But if we
allow such registrations, we shouldn’t allow the TM claimant to sue someone for
putting it on the front of the T-shirt—they’ve accepted that it isn’t
functioning as a mark/to indicate source when it’s on the front of a
T-shirt.  [The I heart DC case might be a
good place to start with this argument.]
Until we have more statutory defenses, categorical
exclusions for certain types of subject matter, the project will be difficult.
Scenes a faire/merger as analogous: should we have a “thin
TM” in certain kinds of marks? Those that are inherently valuable expression,
such as descriptive terms, socially valuable images that had value before
adoption as a mark.  Virtual identity as
w/© should be required to infringe.
Skeptical about channeling—not too troubled by Mickey Mouse
as © and TM subject matter. But more troubled by claiming preexisting symbols.
Discussant:      Jessica
Separability as a way to help?  All the doctrines are converging on a big
mess, resisting admitting aesthetic truth that we know to be true when you
study design practice: aesthetics and functionality are not separable.  Various techniques in the doctrines
purporting to distinguish these things are kinds of denial.  Most people who make marks do not distinguish
between their aesthetics and their utilitarian impacts. When you talk to people
about how they developed a mark or why they assert rights (as opposed to how
the complaint is drafted), they don’t talk about confusion as much as they talk
about defamation—attached to a relationship created w/groups of people through
the mark.  Sentimentality rather than
Interviewers w/designers: what is a design?  One consistent story: they have a metric for
good design/design practice that resists separating functional from aesthetic
as disciplinary matter. Most designers they’ve interviewed don’t even file for
patents though their clients will. 
Design as experience: great design changes the way you relate to your
environment, e.g. the Swiffer that made people’s experience of living
in/cleaning the home better—it’s more pleasurable to clean the floor when you
can rip off the dirty cover and see what you’ve done. Similarly, photographers
say the value they add is the experience they bring—professional behavior to
the production of the work; they sell the work but they’re really selling their
service of creating photos.
Doctrines are muddled b/c of fact that separability is
fiction. Infringement is stuff that’s dishonest or that prevents them from
engaging in the practice/discipline of aesthetic practice. What would taking
inseparability seriously look like?
Lemley: U Wisc. example: interesting juxtaposition b/t that
and all the sponsorship and affiliation cases. 50 years of not policing Bucky
Badger doesn’t change affiliation w/university or harm university’s reputation,
but adopting a color with no logo is somehow going to injure the university in
Smack Apparel. Is there any way to tie these insights together? With TDRA we’ve
done better in defining relevant action as association that diminishes distinctiveness, but can we bring that back into
infringement doctrine.
If it’s the integration of form & function that we
desire, then either functionality will preclude all protection or we have to
abandon functionality as a limit in the design context.  You see design patent & TM pushing
towards alternative formulations: design patent has essentially eliminated
functionality as a constraint and TM has not. But if you believe your designers
perhaps design patent is right [at least w/article of manufacture properly
Gordon: Drassinower point: he’s big on © as communication
and author v. author conflicts.  Doesn’t
see TM as that kind of Kantian communication. 
Speaker v. speaker no-liability rules don’t have much relationship
between to TM.  Incentives as not
explaining ©: his reasons for saying that doesn’t make sense for me—you can
justify a machine called © where there are long rights and a defense of
independent creation; patent is short and no independent creation defense. What
kinds of things fit into the copyright machine v. patent machine?  Frequent simultaneous inventions and need for
monopoly to profit = justification for patent. 
Structures do lead to definitions of subject matter.  Old TM definitions: only protected against
passing off/real confusion as a requirement—that machine fit TM law better,
though the current law doesn’t work. 
Economic approach shows irrationality of current system. [We had a
debate about idea protection and whether idea torts were designed to
incentivize idea generation.]
Sheff: connection b/t resistance of consumer psychology to
legal rules and vice versa and Silbey’s point about separability/designers’
perception of what they’re doing v. the legal rules that purport to govern what
they’re doing – cf. Beebe’s semiotic account of TM protection.  One account of consumer psychology is that as
rights expand the observed universe of TMs changes; consumers observe that
universe and alter their perceptions of what the law allows accordingly (Jim
Gibson). Another: Zahr Said’s entrepreneurial consumer who is savvy and
skeptical. That’s an empirical question. But the underlying theoretical
question is to what extent legal rules and consumer perception are independent
of one another v. causally related in a deterministic way.  Requires us to distinguish b/t subject matter,
the right itself, and the experience of the right in the market.  One of the issues w/claiming is that each
other system approaches the claim & subject matter differently. Utility:
the subject matter is the invention and the claim is the descriptions drawn to
the invention. ©: Fixation is the claim, which is the thing itself.  This relates to Beebe’s distinction b/t
signifier, signified, but is more complicated. 
[I’m pretty sure I missed a lot here.]
McGeveran: Statutory safe harbors for intermediaries against
claiming are example of borrowing that looks appealing to him, though grass is
indeed always greener on the other side of a doctrine.  But the differences b/t regimes affect the
levers you have to change things.  Note
that statutes are just written with a bunch more detail now, which affects how
dilution looks in the statute v. how infringement looks.  Maybe the US is just broken no matter which
legislation you look at.
Burrell: prosecution history estoppel as promising.  Only reservation: think carefully about how
TM bar would then respond.  At the
moment, they get away with anything b/c not held to what they say. Rather than
messing around w/an examiner, you could go straight to a hearing, make the same
arguments orally and hope that not too much got reflected in the judgment.
McKenna: designers think utilitarian function is nothing
special to them. It’s not a special kind of constraint from the other
constraints under which they operate. 
It’s a legal construct.  The
dimensions of separation, not just separability, are a myth.  Our legal doctrines are protecting
outputs/artifacts, but designers don’t talk about the stuff, which is just
enabling what they’re doing: change how people are going to operate in the
world. The artifacts are not the apotheosis of the design. Sometimes the result
of design is an artifact, but sometimes not. Sometimes they mean digital
experience, but sometimes they mean “what happens when you call the call
center?”—that’s equally designed. Artifacts are ancillary. One area where you
see claims trying to capture that is in trade dress, and we recoil at that as a
description of a business—Fair Wind Sailing case where they use a particular
catamaran to train people how to sail—that actually resonates w/ designer.  Not interested in necessarily conforming law
to designers’ beliefs but understanding the interaction b/t law and practice.
Overwhelmingly designers don’t think about law. That’s the
client’s problem. The law matters, b/c sometimes the clients care enough about
freedom to operate etc., but it’s not how they think.
Janis: in plant breeding, he found plant breeders started
talking about plant variety, which wasn’t a biological concept; they adopted it
b/c of the patent system. 
Heymann: these things are not completely distinct but not
expressed in legal terms. Designer might encourage a client to adopt something
to create a distinction, or might use elements that communicate “this is a
shopping center.”  Distinctiveness/source
indication may come out through the design, as personality concerns, but not
separate legal concepts.
Beebe: lawyers shouldn’t retreat in the face of the romantic
artist concept; they’re subject to law like everyone else.
Austin: narratives of origin v. narratives in the
marketplace. What happens when the assignee gets hold of something, starts
speaking about the object in terms that track the legal constructs more
closely? An artist might design a yacht to create experiences for people on a
boat, but a firm may tout its speed.
Silbey: consulting designers don’t seem to have continuing
attachments to the thing they designed. Have asked them what unfair competition
is; the other day, someone said that they have skills and that the client can
only have a part of that, an artifact, at the end of the day.  Privileged in their distance from the
market.  [Then unfair competition would
involve employment/noncompete agreements, I would think.]
Fromer: precisely b/c designers don’t separate design &
function, we must do so through the law. 
There are a lot of the same people on Apple/Microsoft utility &
design patents. What’s going on?  Design
& utility patents are used in conjunction to capture the design/function
fusion, but that is the opposite of the conceptual framework of patent &
TM. Sometimes design patents are being used to capture elements of appearance
made possible by function, and utility patents are used to capture functions
that appear because of design.  If you
were to protect only the integration and take inseparability seriously, you’d
only protect that precise version—not any difference in function or form.  Protecting the integration of the two
requires the protection of each, form and function, separately. 
McKenna: if what we think designers do is to integrate, then
we should protect the integration. If others can separate them and made a
different use, then why not allow that?
Bone: why should we care as lawyers about this very
interesting work?  We do want to know how
designers will react to a given legal regime. How would a designer want to use
a previous design? That could help understand social costs of exclusivity over
a particular design.  Does the literature
by people who write/teach in the field teach anything different?
Silbey: design industry is relatively new, moving from
automotive & fashion.  Started in the
60s with strong personalities at 4-5 firms. 
New generation of designers may be more attuned to legal issues—they do
worry about trolls and look at prior art. They are trying to make, e.g., the
best safety system for their client, and they’re going to look at other safety
systems.  Resists the idea that law on
the books is distinguishable from behavior in the way posited—ignorance of law
or actual behavior is highly relevant to how the law on the books got there and
develops. C&D practice etc. are part of law on the books.  Not pragmatic as much as this is what it
means to study law.
Burrell: should we be reacting so strongly to an industry so
new?  We had design patent in the UK in
the 1840s; be cautious about temporary change in the design industry.
Dinwoodie: whether we should map legal doctrine to
reality—some depends on why we think we’re protecting the rights. If they don’t
respond to incentives and that’s our justification, that’s a different issue
than if our justification is desert or some other theory. On constraint: Design
Directive excludes things that are dictated by functional considerations, and
British courts interpret that much more broadly than European court—market can
constrain as well as any other utilitarian demand.
Gangjee: why not protect style?  If consumers recognize it.  V. limping/supported marks. Perhaps one
answers the other: you never look at style in the abstract, it’s always
supported by something. Which takes him back to distinctiveness, which may be
the great underlying issue.  [Which means
the no-style rule is an irrebuttable presumption. I’m ok with that!]  History of TM law: injunctions often are
context-specific—requiring differentiation.
RT: Integration of form and function as a kind of aesthetic
discrimination?  That’s not the standard
we actually impose on design patentees.  Normative
and empirical question: why should our rules focus on the experience and
desires or even needs of elite designers? As far as I can tell, that’s not what
most design patents look like, and query whether it’s true of most utility
patents at least outside of consumer electronics.  This isn’t copyright where there is a case
(not fully convincing to me) that the rules should be set for market-incentivized
works even though the rules then cover all works.  Here, the set of people who file for design
patents is going to have a different relationship to the law and responsiveness
to change in the law, and maybe it’s them we should be targeting with our
rules—which gets back to Burrell’s points about looking at the incentives and
responses of people who actually interact with the registration authority.
Grinvald: do the design consultants really avoid the law/get
McKenna: in house designers are different, but consultancies
say that it’s the client’s problem; sometimes the designers have to listen to
the lawyers brought in by clients but that’s not how they try to solve the
Silbey: contractually they do not have liability.
Heymann: ad agencies say the same thing.
Silbey: photographers too—it’s the client’s problem.  The creators are not that different even if
the legal regimes differ. Designers of multitools think they are art, like
Mid-Point Discussants:           Laura
Heymann: Knowing that there’s divergence b/t law and lived experience doesn’t
tell us how or whether the law should change. Especially given feedback loops
in responses to what the law says or what people think the law says.  Remedies are also related to the Q of
experience/written law.  Lawyers say we
need an injunction; designers want an acknowledgement. Maybe that disconnect is
inherent in commercialized world.
Mike Grynberg: TM is the regime ostensibly concerned
w/information in the ordinary sense of the word.  Trade dress is the use of a design qua
design: info that this is pretty or useful or both. Use of design to convey non
design info: this is a cocktail shaker. 
Use of design to convey source info: this is a cocktail shaker from a
particular source.  There is a mix of
potential motivations in use of the design: satisfying consumer expectations;
to compete unfairly (active deception: core of TM); to convey information
(classic fair use). There are litigation mismatches, when D uses design to
convey nonsource information; court may use the label functionality b/c it has
a hard time managing the range of meanings that might be embodied in a TM.
Auto-motive Gold: use is associational/complementary, but court reacts as if it
endangers the core of TM meaning. Courts lack good language for talking about
interplay of meanings. Exists for word marks as well too, possibly exacerbated
w/design marks.  Hydraulic expansion of
design patent: maybe we can tell courts they don’t have to do this in TM b/c
there’s a place people can go to protect the value if there’s really something
there.  Word mark choices are also
affected by “design” considerations. 
Flizzatz is a protectable mark for deodorant, but a bad name.  An attractive name would be something like
Clean, which comes prefilled with information, but TM law would make it harder
to protect. Wal-Mart does the same thing with product design, but courts
haven’t necessarily internalized that we should also be careful at the
infringement inquiry stage to ensure that we aren’t allocating rights because
it’s attractive/has positive connotations.
Silbey: so many descriptions of harm are personal harms:
integrity. They are also complaints about a system that’s abusive, not working
for them. Lack of proportionality in return for labor. Lack of
transparency.  Incumbency problem.
Linford: has written about how things like sounds can convey
features. We make assumptions about marks from the category from which they’re
picked.  Courts don’t allow generic terms
to become marks even if meaning changes over time. Are these stories about how
designers aren’t thinking about source significance when they design relevant
if source signification develops over time? We can be skeptical about whether
this process has actually occurred, or is likely to occur, but shouldn’t we offer
the option?  [Style?]
Burrell: our sense of what harm is in TM: in Australian law,
when “confusion” is established, they describe the harm as: customers used to
look at you as provider of unique products, and now that relationship is
disrupted, so here’s some money. That’s where the harm of “brand” analysis is

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