New paper: Bad Spaniels, Counterfeit Methodists, and Lying Birds: How Trademark Law Reinvented Strict Scrutiny

On SSRN, in advance of the JDI v. VIP case:

Bad Spaniels, Counterfeit Methodists, and Lying Birds: How
Trademark Law Reinvented Strict Scrutiny


Does trademark law cover noncommercial speech, defined as it
is in First Amendment doctrine as speech that does more than merely propose a commercial
transaction? This basic question has three different answers, all regularly
used in any given jurisdiction. The answers are yes, no, and sometimes, a list
both comprehensive and dismaying. The Supreme Court is presently considering a
case that may require it to choose—or may leave the field more confused than

In response to the massive expansion of trademark’s scope
over the last century, lower courts have implicitly devised a compromise by
which trademark is pulled back to a more traditional anti-fraud-like scope when
it is applied to noncommercial speech sold in the marketplace, such as movies,
newspapers, songs, and visual art, or used as the name of an organization with
dues-paying members, such as a political party or congregation. This compromise
explains an otherwise surprising feature of the cases: Political speakers and
religious speakers can expect worse outcomes than “commercial” publishers
engaged in noncommercial speech, given the kinds of cases brought against them.  Of particular note, churches can be
prohibited from using names that their worshipers sincerely believe are
accurate descriptions of their faith. Although the doctrines articulated by
courts are confused and sometimes directly contradictory, the results
approximate what would happen if First Amendment strict scrutiny were applied
to trademark claims brought against noncommercial speech—as long as material
deception, not consciousness of wrongdoing, is the standard for liability.

We would be better positioned to understand the law and to
decide future cases if courts were honest about their uses of the
commercial/noncommercial line to police whether trademark law can be used for
more than anti-fraud purposes. Understanding the relationship of noncommercial
speech to trademark law also offers broader insights into the relevance of
scienter and actual deception for speech regulation.

from Blogger

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