Reminder: TM scholarship roundtable

Posted on May 20, 2025 by rtushnet

The Trademark and Unfair Competition Scholarship Roundtable
co-hosted by Harvard, NYU, and the University of Pennsylvania will take
place this year at the University of Pennsylvania in Philadelphia, PA.
The Roundtable is designed to be a forum for the discussion of current
trademark, false advertising, right of publicity, and related unfair
competition and IP scholarship, covering a range of methodologies,
topics, and perspectives. Five to six papers will be chosen for
discussion over the course of the Roundtable, with each paper allocated
an entire hour for discussion and assigned a commentator.   

The
Roundtable will be held on Friday, October 10, 2025. If there is a
critical mass of papers, we may also extend the Roundtable through
Saturday morning, October 11th. Participation at the Roundtable will be
limited and invitation-only. We expect all participants to have read the
papers in advance. The Roundtable will cover the travel and lodging
expenses for invited authors.  We invite submissions from scholars
working on any aspect of trademark, false advertising, marketing, right
of publicity, unfair competition, or related areas of the law. Priority
will be given to those who can attend the entire event (including
Saturday) and a dinner the night of Friday, October 10th. Submissions
must be of full drafts in Microsoft word or PDF format. The deadline for
submission is May 27th.

To submit a draft paper, please fill out the form here: https://cvent.me/RXxbZ0 and upload an anonymized
version of your draft.  Please note that the maximum file size that may
be uploaded is 10MB. Appendices or other supporting material or larger
files can be emailed separately to ctic@law.upenn.edu; please do not submit a CV or cover letter. 

For further information about the Roundtable, please email: Jennifer Rothman (Penn): rothmj@law.upenn.edu; Barton Beebe (NYU): barton.beebe@nyu.edu; or Rebecca Tushnet (Harvard): rtushnet@law.harvard.edu.

We look forward to reading your submissions!

Jennifer (Barton & Rebecca)

from Blogger http://tushnet.blogspot.com/2025/05/reminder-tm-scholarship-roundtable.html

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Court finds literal falsity where two supposedly distinct, rated reverse mortgage sellers are actually one

Posted on May 16, 2025 by rtushnet

Longbridge Financial, LLC v. Mutual of Omaha Mortgage, Inc.,
No. 24-cv-1730-DMS-VET, 2025 WL 1382866 (S.D. Cal. May 13, 2025)

Mutual owns defendant Review Counsel and is the first and
only advertising partner of defendant Advisory; those two have similar
websites. Review Counsel’s disclosure banner at the top of its webpages, which
previously stated that Review Counsel was “affiliated with” Mutual of Omaha,
now states that it is “owned and operated by Mutual.” Likewise, Advisory
updated its “Disclaimers” page with a “[l]ist of [a]dvertising [p]artners” that
“have paid to advertise with [Defendant Advisory]”; a list that includes only
Mutual of Omaha. Advisory also added a disclosure to its landing page and
“changed some references on its site [previously] describing it as
‘independent,’ to ‘objective.’ ” Both websites now omit any reference to
Retirement Funding Solutions (RFS), which was previously listed as Defendants’
number two recommended reverse mortgage provider, but which is also Mutual of
Omaha in a different hat.

Longbridge argued that both websites still: (1) falsely
represent those defendants as independent organizations using objective ratings
despite their financial relationship with Mutual of Omaha; (2) use “arbitrary
and statistically unsound criteria” that artificially boost Mutual of Omaha’s rating
as a reverse mortgage provider while deflating other providers’ scores; and (3)
use false and misleading Google ads and landing pages that promise consumers
information about “Top 3” reverse mortgage providers while actually only
promoting Mutual of Omaha.

Longbridge sought an injunction requiring removal of various
webpages and reviews/review metrics, including a review of Longbridge that
falsely listed it as not being licensed in Hawaii. After Longbridge moved for
injunctive relief, Review Counsel stopped using the phrase “Top 3 Reverse
Mortgages” in its sponsored Google ads and instead used “2025’s Best Reverse
Mortgages” and “Top U.S. Reverse Mortgage Companies Reviewed & Ranked.” It
also removed the false statement that Longbridge was not licensed in Hawaii.

The court found that the Hawaii statement was literally
false. And ads promising information about “Top 3” reverse mortgage providers were
literally false “because those ads redirected consumers to landing pages that
highlighted Mutual of Omaha and RFS—which the parties agree are the same
company—as two of the three ‘top’ providers.”

Likewise, “spotlighting and recommending of Mutual of Omaha
and RFS as two separate reverse mortgage providers was literally false by
necessary implication.” Listing them side by side, describing them as “some of
our notable reverse mortgage loan partners” and “industry leaders,” describing
both as having “[e]xcellent customer service” and “[g]reat borrower reviews
from independent sites,” and listing a different phone number for each
necessarily implied that the two were separate and independent entities.

In addition, Longbridge showed that other past statements,
while not literally false, would likely mislead or confuse consumers. Review
Counsel’s previous banner disclosure, stating that Review Counsel was
“affiliated with” Mutual of Omaha and RFS, was “literally true but obfuscated
Mutual of Omaha’s actual control and ownership of Review Counsel.” (The court
didn’t identify extrinsic evidence of deception, though I don’t think it should
have to.)

What about the current websites, highlighting Mutual of
Omaha as their “Featured” or “Top” reverse mortgage company? Longbridge argued
that their disclosures were insufficient and too far removed to reveal the true
nature of Mutual of Omaha’s ownership and control of Review Counsel and
Advisory, and that the sites’ ratings and criteria were “unsound, arbitrary,
deceptive and misleading.”

But the court found the current disclosures sufficient,
again without any consumer reception evidence.  At the top of every Review Counsel webpage is
an evergreen banner stating that “Review Counsel is owned and operated by
Mutual of Omaha Mortgage,” and a bolded “Disclosure” link at the top of the
landing page that repeats the same disclosure.

Review Counsel page with disclosure at top

Advisory with much less impressive disclosure that “the companies” on the page compensate it

Advisory’s current disclosures include a paragraph on the
landing page stating that “[t]he companies listed on this page compensate us as
advertising partners.” And, at the very bottom of Advisory’s full-form
disclaimer page, Advisory added a “[l]ist of [a]dvertising [p]artners” denoting
Mutual of Omaha as the only company to “have paid to advertise with
[Advisory].” Longbridge didn’t meet its burden to show misleadingness: “While a
consumer would have to read Advisory’s long-form disclosure to understand the
true nature of Mutual of Omaha’s advertising relationship with Advisory, the
other two disclosures on the landing page—albeit less informative—should spur a
reasonable consumer to further inquire about Advisory’s advertising
partnerships. Advisory’s long-form disclosure page ultimately provides that
information.” However, without that specific information, the previous
disclosures were misleading, since they only referred to paid partnerships. “That
Mutual of Omaha is Advisory’s only advertising partner is a vital piece of
information consumers should know to avoid being misled or confused. The
information is particularly salient because Mutual of Omaha is featured on
Advisory’s landing page and Advisory makes vague references to ‘[c]ompanies’
who pay Advisory to be promoted or featured on its website without identifying
those companies.

The court rejected Longbridge’s argument that defendants’
“.org” domain names were misleading and confusing because they are primarily
used for “nonprofit websites such as non-governmental organizations (NGOs),
open-source projects, charitable organizations, and educational platforms.” “To
the extent Defendants’ ‘.org’ usage engenders a false sense of trust and
objectivity, Defendants’ current disclosures likely counteract it.”

What about the ratings criteria and ratings? Longbridge
argued that defendants’ criteria were neither relevant nor meaningful to
reverse mortgage consumers and instead were pretextually selected to make
Mutual of Omaha Defendants’ top rated reverse mortgage provider. But the court
found that ratings with this much judgment involved were likely not factual
claims. “[C]hallenges to the selection of purportedly objective criteria which
are summarized by a five-star rating are not actionable under the Lanham Act.”

Likewise, the individual review pages for Longbridge were
not actionable. Review Counsel’s own “3.7” rating for Longbridge showed alongside
another four-star rating and a button to “Read Reviews.” Clicking that button
brings a consumer to Review Counsel’s consumer review section for Longbridge, a
consumer would see that Longbridge’s four-star rating is based entirely on a
single consumer review stating “Yes. I understand.”

A reasonable consumer should notice
that the 3.7 score [that is, nonactionable opinion] and the four-star score are
distinct since they are side-by-side and numerically different. Additionally,
if a reasonable consumer were to click on “Read Reviews” to read the four-star
consumer review, they would likely conclude it was not relevant to evaluating
Longbridge’s services since the consumer review is nonsensical—stating, “Yes, I
understand.”

As for Longbridge’s complaints about Mutual of Omaha’s
individual consumer ratings, there was no suggestion that Review Counsel authored
or influenced them.

However, Advisory’s prior statements that its reviews and
scores “are based upon Advisory’s own independent propriety scoring system” and
that advertisement compensation does not influence Advisory’s reviews, scores,
or ratings of providers, were falsifiable. A claim of independence “is a
statement of fact that can be proven true or false.” Given that Advisory was
founded and owned by Mutual of Omaha’s former General Counsel, the Advisory
website was designed using a “templated design footprint” provided by Review
Counsel, and Advisory’s sole advertising partner is Mutual of Omaha, that was
dubious, but the record didn’t support a preliminary injunction.

Materiality: disclosure of the Mutual of Omaha connection
was material “because it misrepresents an inherent quality or characteristic of
Review Counsel’s services—whether a consumer can trust Review Counsel’s reviews
and recommendations.” Even if reverse mortgage consumers were “savvy” and
needed mandatory counseling from a government-approved agency before they could
take out a reverse mortgage, that evidence was too generalized. “Further, the
mandatory counseling occurs well after consumers are exposed to and potentially
influenced by Defendants’ false and misleading statements. It is also contested
whether these counselors are allowed to redirect consumers from their chosen
reverse mortgage provider.” The same was true for Advisory’s disclosures. “Consumers
are more likely to use Advisory’s website if they can trust and rely on the
information Advisory chooses to present. Failing to disclose the sole source of
income for Advisory, when that source is a reverse mortgage provider
highlighted on Advisory’s website, could certainly influence consumers’
decisions to use Advisory’s website and choose a reverse mortgage provider.”

The court presumed irreparable harm, which defendants didn’t
rebut. It didn’t matter that Longbridge had no evidence of harm or that
defendants voluntarily changed their websites. Even if Longbridge’s business
was growing, that could happen anyway, and its greater growth might have been
stymied by the false advertising. Review Counsel argued that Longbridge itself
paid for favorable placement and ratings on competing comparison/review
websites, but it didn’t Longbridge own and operate any advertising website or
serve as the sole advertiser of a review website that was founded by a former
Longbridge employee. Anyway, “[e]vidence of threatened loss of prospective
customers or goodwill certainly supports a finding of the possibility of
irreparable harm.”

The court also rejected arguments based on Longbridge’s
delay of more than sixteen months in seeking preliminary injunction rebuts the
presumption of irreparable harm.  “ ‘[D]elay
is but a single factor to consider in evaluating irreparable injury’; indeed,
‘courts are loath to withhold relief solely on that ground.’ ” Longbridge
discovered Review Counsel’s false advertising in April 2023, then raised formal
complaints to relevant trade associations and state banking regulators between
July 2023 and January 2024 before eventually suing in September 2024. The
magnitude of Longbridge’s “potential harm [became] apparent gradually,
undermining any inference that [Longbridge] was ‘sleeping on its rights.’ ” Longbridge
attempted to resolve its claims extrajudicially during the delay period, and
then the potential for harm increased with Advisory’s founding in January 2024.
An additional eight months delay wasn’t dispositive under these circumstances.

The good news for defendants: the injunction didn’t require
discontinuing current practices, only that they couldn’t (1) advertise that
Longbridge is not licensed to issue loans in any state or territory where
Longbridge is licensed; (2) advertise to consumers on sponsored Google-search
links that they provide information relating to “Top 3” reverse mortgage
providers when their landing pages advertise fewer than three independent
reverse mortgage providers; (3) advertise RFS on their websites as if RFS were
an independent reverse mortgage provider originating its own loans, including
by representing that RFS has customer support phone lines, reviews, and ratings
that are distinct from Mutual of Omaha; or (4) “diminish” their existing
disclosures.

from Blogger http://tushnet.blogspot.com/2025/05/court-finds-literal-falsity-where-two.html

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Lanham Act false advertising disgorgement is equitable; no jury trial required

Posted on May 12, 2025 by rtushnet

Diamond Resorts U.S. Collection Development, LLC v. Wesley
Financial Group, LLC, No. 3:20-CV-00251-DCLC-DCP, 2025 WL 1334625 (E.D. Tenn.
May 7, 2025)

Another timeshare case! Diamond alleged that defendants
engaged in “a deceptive timeshare cancellation business” that induces Diamond’s
timeshare owners to breach their contractual agreements with Diamond Resorts. It
sued for false advertising in violation of the Lanham Act, the Tennessee
Consumer Protection Act, and for the unauthorized practice of law. As trial
approached, Diamond told the court that it wouldn’t pursue legal relief, only an
injunction, disgorgement, attorneys’ fees, and costs, so that defendants
couldn’t get a jury (which, one infers, might be more sympathetic to defendants
because timeshares can be such nightmares). The court ruled that there was no
statutory or Seventh Amendment right to a jury trial in these circumstances.

“The right to a jury trial is guaranteed by the Seventh
Amendment,” which states that “[i]n Suits at common law, where the value in
controversy shall exceed twenty dollars, the right of trial by jury shall be
preserved.” Common law means “suits in which legal rights were to be
ascertained and determined,” and not suits in which “equitable rights alone
were recognized, and equitable remedies were administered.” Making this
distinction requires a court to compare the action at bar to “18th-century
actions brought in the courts of England prior to the merger of the courts of
law and equity,” because that is an excellent way to run a system. “[A]ctions
that are analogous to 18th-century cases tried in courts of equity or admiralty
do not require a jury trial.” If history doesn’t provide an answer, courts “look
to precedent and functional considerations.” The inquiry also requires the
court to “examine the remedy sought and determine whether it is equitable in
nature.” “Th[is] second inquiry is the more important” of the two. Because of
the value of a jury trial, a court “indulge[s] every reasonable presumption” in
favor of finding a right to a jury trial.

Nonetheless, there was no statutory right to a jury trial in
a Lanham Act case. “Congress has shown that it knows how to provide litigants
with a right to a jury trial when it wants to.”

In Osborn v. Griffin, 865 F.3d 417 (6th Cir. 2017), the
Sixth Circuit observed that “in 18th century chancery courts, what [modern-day
courts] now call disgorgement was embodied in the remedies of ‘accounting,
constructive trust, and restitution,’ ” which “were almost universally
recognized as being within the ambit of courts of equity.” Disgorgement, that
is, was equitable.

More specifically, how did England’s 18th-century courts treat
actions for trademark-related disputes when parties sought disgorgement as a
remedy in those actions? The Sixth Circuit has recognized that, “prior to
statutory protection for trademarks,” English and American courts “treated the
damages portion of such suits as an equitable action in the nature of an
accounting.” Consistent with this history, the Lanham Act allows for
disgorgement “subject to the principles of equity” for claims of false advertising
under § 1125(a).

True, the Sixth Circuit spoke about trademark cases, not
false advertising. But Lexmark says that “the Lanham Act treats false
advertising as a form of unfair competition,” and, the court here reasoned, “unfair
competition is analogous to trademark infringement.” Analogy was good enough
here.

Likewise, the disgorgement remedy was equitable in nature,
even when the disgorgement was sought to redress false advertising rather than
trademark infringement. What about an earlier Sixth Circuit statement that,
“[d]espite this pervasive equity background [in trademark actions], the damages
or accounting aspect of trademark infringement actions are considered legal
actions for purposes of the jury trial clause of the Seventh Amendment.” The
Sixth Circuit relied on Dairy Queen, Inc. v. Wood, 369 U.S. 469 (1962), which held
that “a plaintiff, by asking in his complaint for an equitable accounting for
trademark infringement, could not deprive the defendant of a jury trial on
contract claims subsumed within the accounting.” “In short, Dairy Queen
was an action for compensatory damages.”

But plaintiffs here disavowed seeking compensatory damages.
“In Dairy Queen, the Supreme Court was itself skeptical of Dairy Queen’s
claim because it had shades of a breach-of-contract claim and a
trademark-infringement claim all in one, but the Supreme Court declined to
resolve the ‘ambiguity’ in this claim because it was certain that Dairy Queen’s
request for a ‘money judgment’ was “wholly legal in its nature however the
complaint [was] construed.’” Here, disgorgement would only require proof of
defendant’s sales, meaning that “evidence of compensatory damages arising from
any breach of contract will be off the table at trial.” But, given that the
theory here was that defendants induced Diamond Resorts’s timeshare owners to
breach their contracts with Diamond Resorts, the court would watch carefully to
prevent plaintiffs from using theories of breach of contract to arrive at lost
profits; if they did so, defendants would be entitled to a jury trial.

from Blogger http://tushnet.blogspot.com/2025/05/lanham-act-false-advertising.html

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Georgetown Law Institute for Technology Law & Policy student writing competition

Posted on May 12, 2025 by rtushnet

 The annual Georgetown Law Institute for Technology Law & Policy student writing competition is now open.  We hope you will encourage your students to submit their papers for consideration.


Students
are invited to submit papers that provide analysis or insights on
issues at the intersection of technology law and policy. Example topics
could include artificial intelligence, antitrust and consumer
protection, biotechnology, computer crime, cybersecurity, digital
platform regulation, intellectual privacy, international trade, and
social justice applications of technology. 

Papers
will be judged by a blind panel of judges. The author(s) of the first
place paper will be awarded $1,000. The author(s) of the top paper on an
artificial intelligence-related topic will be awarded $1,000.

Please submit papers via email to techinstitute@law.georgetown.edu. Submissions are due by June 6, 2025.

Papers
will be accepted from students enrolled at any ABA-accredited law
school in the United States during the 2024-2025 academic year. The
paper must be the author’s own work, although students may incorporate
feedback received as part of an academic course or supervised writing project. 

Please visit the Tech Institute’s website for more details and submission guidelines. Questions can be sent to techinstitute@law.georgetown.edu.

from Blogger http://tushnet.blogspot.com/2025/05/georgetown-law-institute-for-technology.html

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court applies issue preclusion to a jury verdict under a different state consumer protection law

Posted on May 6, 2025 by rtushnet

Dent v. Premier Nutrition Corp., 2025 WL 1282627, No.
16-cv-06721-RS (N.D. Cal. May 2, 2025)

Here, the court applies issue preclusion against Premier,
makers of Joint Juice, which lost a bellwether-type trial under NY law (a
ruling affirmed
in relevant part by the Ninth Circuit), on claims against it based on Illinois
consumer protection laws. The court noted that six other state-wide classes
were stayed before it, and a California class was seeking judgment against
Premier in state court.

Specifically, Premier was precluded from relitigating
materiality, sale in commerce, and the measure of damages.

Premier didn’t dispute that Dent and the Illinois purchasers
saw the same labels as Montera and the New York purchasers during the same
relevant time period. Under California law, which supplied the rule of
decision, “[i]ssue preclusion prohibits the relitigation of issues argued and
decided in a previous case, even if the second suit raises different causes of
action.” However, courts have discretion to deny issue preclusion if its
application does not “comport[ ] with fairness and sound public policy.”

“While Premier may not have expected the Montera
trial to have roll-on effects, it does not follow that any effects would be
fundamentally unfair.” Montera and Dent both alleged that Premier’s
advertisement and marketing of Joint Juice was misleading, harming entire
classes of consumers in each state. The advertisement and labeling of Joint
Juice was identical in New York and Illinois, and the time period covered in
both suits was the same. Whether the advertising is deceptive was evaluated
using the same reasonable consumer standard, not individual consumer
understandings.

Premier argued that new scientific advances in the study of
glucosamine’s potential benefits necessitated a full trial on whether Joint
Juice’s label was in fact deceptive. But “new witnesses or cumulative evidence
do not negate issue preclusion.”

Once issue preclusion was available, the question was what
overlapping issues were decided by Montera. The jury decided that Joint
Juice’s label was misleading, and both NY and Illinois use the same materiality
standard, so there was issue preclusion.

However, the Montera jury didn’t need to reach a
conclusion as to whether Premier intended for the class to rely on the alleged
deceptive act or practice, which is required by Illinois law, so that remained
for trial. (Imagine going to the jury and arguing, sure, it was materially
misleading, but we didn’t intend for consumers to rely on it!)

Dent also conceded that she needed to prove individual
causation, but argued that materiality justified an inference of classwide causation.
Illinois’s ICFA requires that the defendant’s deceptive practice proximately
caused the damages suffered by plaintiff, but not actual reliance. It allows
courts to infer proximate causation on a classwide basis when all class members
are subject to a material, standardized misrepresentation. While the court
found Dent’s argument for preclusion on causation “strong,” it determined that
the issue was not “identical.” “While Dent could certainly demonstrate
causation by proving the class was exposed to uniform, materially misleading
misrepresentations, Montera did not actually do so in her case. Moreover, based
on the caselaw presented, such a showing is necessary, but not sufficient for a
finding of ICFA causation.” The court cited Illinois cases articulating a
standard demanding that “the only logical reason” to buy was as a result of the
deception or that “no rational class member would have acted as they did absent
the misrepresentation.”

What about the measure of harm? The ICFA defines damage as
“the value of what [plaintiff] received less than the value of what was
promised”: a benefit-of-the-bargain theory. This means that a full refund is
justified if a product “had no value to consumers.” “The jury in Montera,
in finding liability and awarding the entire purchase price to consumers,
necessarily concluded Joint Juice was valueless for its advertised purpose.”
Premier presented extensive evidence arguing purchasers received benefits apart
from the potentially deceptive joint health ones advertised on Joint Juice’s
label, but the jury declined to reduce its award based on Premier’s suggested
alternative benefits, such as Vitamin C, Vitamin D, antioxidants, and
hydration. Thus, the damages issues in Dent were narrowed to the
calculation of damages due to the Illinois class based on the number of units
sold and the purchase price, and punitive damages.

Premier also argued that it was entitled to raise a First
Amendment defense, which wasn’t raised in Montera until its renewed
judgment as a matter of law after trial. But “issue preclusion requires only
the opportunity to litigate … not whether the litigant availed himself or
herself of the opportunity.” Also, “misleading commercial speech is not
protected,” meaning that Premier couldn’t raise a First Amendment defense
anyway because of the jury findings.

The court also advised the parties that they should settle “this
now antique litigation.”

from Blogger http://tushnet.blogspot.com/2025/05/court-applies-issue-preclusion-to-jury.html

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Burger King’s ads may have told a whopper about burger size

Posted on May 6, 2025 by rtushnet

Coleman v. Burger King Corp., 2025 WL 1294605, No.
22-cv-20925-ALTMAN/Reid (S.D. Fla. May 5, 2025)

Nineteen plaintiffs brought claims under 13 states’ laws
alleging that BK falsely advertised the size/amounts of ingredients in various burgers;
the court denied BKC’s motion to dismiss.

BKC allegedly “advertises its burgers as large burgers
compared to competitors and containing oversized meat patties and ingredients
that overflow over the bun to make it appear that the burgers are approximately
35% larger in size, and contain more than double the meat, than the actual
burger.” The complaint also quotes multiple negative reviews posted by
dissatisfied consumers.

images of ads v actual burgers

Previously, the court found that plaintiffs could assert “consumer-protection counts only for those states in which the named plaintiffs purchased their Burger King products.” And they couldn’t advance a breach-of-contract claim based on BKC’s “out-of-stores ads” since “courts generally consider it unreasonable for a person to believe that an advertisement constitutes a binding offer.” But BKC’s “in-store ‘menu ordering boards’ ” were “very different from the advertisements one might see on the Internet or on TV” and could constitute an “offer” under contract law.

BKC argued that reasonable consumers couldn’t have been deceived because “[s]tyling ingredients for photographic purposes, such as by pulling them forward so a head-on image clearly shows what the burger contains, is not misleading to a reasonable consumer visiting a quick-service restaurant, and no precedent suggests otherwise.”

All but one of the relevant states apply the reasonable-consumer test in (substantially) the same way as Florida does, while Arizona uniquely doesn’t consider reasonableness at all and instead asks us to analyze the allegedly deceptive conduct “from the perspective of the ‘least sophisticated reader,’ ” though “bizarre or idiosyncratic interpretations” will not preserve a patently frivolous claim. Nonetheless, Arizona law requires courts to assume “that consumers of below-average sophistication or intelligence are especially vulnerable to fraudulent schemes” and prohibits us from assessing deceptiveness based on “assumptions about the ‘average’ or ‘normal’ consumer.” Arizona law focuses on whether there was a “capacity to mislead” rather than on whether a reasonable consumer would be misled.

Arizona aside, a reasonable consumer could have been deceived.  “[A]t this very preliminary phase of the case, and drawing all reasonable inferences in the Plaintiffs’ favor, BKC’s advertisements—when compared to other, similar advertisements—have a greater capacity to deceive or mislead reasonable consumers.” Although “exaggeration of an item’s quantity (and, for that matter, quality) with idealized imagery is an extremely common technique in the world of food advertising,” plaintiffs plausibly alleged that the ads here “go beyond mere exaggeration or puffery” and “make it appear that the burgers are approximately 35% larger in size, and contain more than double the meat, than the actual burger.” Even more problematically, BKC’s advertisements allegedly changed in 2017 to “materially overstate the size of its burgers” in comparison to previous years: 

old and new ads

This wasn’t mere exaggeration through common food-styling
practices; plaintiff plausibly alleged that BKC misled customers into falsely
believing that the size of BKC’s burgers has, in fact, increased since 2017.  “[R]easonable consumers could be misled if
the disparity between the size of a burger in an ad and size of the burger in
the real world becomes too great. …Who are we to decide whether such a
seemingly substantial difference between what was promised and what was sold
was (or was not) enough to alter the purchasing preferences of reasonable
American consumers?” The 2017 change was very important here. “A change like
this (the Plaintiffs have plausibly suggested) could lead reasonable consumers
to believe (incorrectly, as it turns out) that BKC increased the size of its
burgers in 2017.”

from Blogger http://tushnet.blogspot.com/2025/05/burger-kings-ads-may-have-told-whopper.html

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Publisher avoids liability for ad that allegedly disparaged plaintiff’s goods

Posted on May 5, 2025 by rtushnet

Jewel Sanitary Napkins, LLC v. Busy Beaver Publications,
LLC, No. 23-cv-126-slc, 2025 WL 1220311 (W.D. Wisc. Apr. 28, 2025)

Jewel makes sanitary napkins containing a layer of material
called graphene that Jewel claims has health benefits, while it touts the risks
of tampons. The Amish community is a major market. “Jewel saw its sales drop
significantly in the Amish community when, in August 2022, defendant Busy
Beaver, a classified advertising publication distributed to Amish and Mennonite
communities, published a reader-submitted letter (the Concerned Sister ad) that
Jewel says made false accusations about its products.” Jewel sued Busy Beaver
for common law libel and trade libel, and the court granted Busy Beaver summary
judgment.

(Frankly, I’m pretty surprised at the chutzpah involved in
suing here, given the Q-Ray-like
nature of the advertiser’s claims, which include that graphene relieves abdominal
cramps and fatigue, helps to eliminate bacteria and aroma, and boosts
metabolism and immunity. Jewel also said that graphene moves heat away from
your core and “contains vibrational energy.” Jewel’s chemist describes graphene
as a “quasimetal” that “shares some properties with semi-conductor materials
like Silicon” and “is highly conductive for both electricity and heat.” Jewel’s
promotional videos show the pad’s graphene strip, or the pad itself, lighting a
lightbulb.)

Busy Beaver has regional editions, and in mid-2022, the Busy
Beaver Pennsylvania office received a completed classified ad submission form
and payment from an individual named Betty Lantz. Lantz checked “no” to the
question asking whether she wanted her name or address included in the ad. Busy
Beaver’s CFO testified that the publication has printed ads without identifying
information, so long as the person who submitted the ad is identified on the
submission form. (“Jewel subpoenaed Lantz but she refused to be deposed in
light of her Amish belief against involvement in legal matters. Jewel did not
seek to compel her deposition.”) The ad:

Attention! Are the Reign products
as safe as they say? Graphene is a conductive metal meaning it attracts
electrical waves/radiation from the air, Do we want this close to our bodies,
Will we see serious consequences for using this product? Don’t just go by what
the company says, A concerned sister.

Months before the ad was published, “rumors had begun
circulating in the Plains [Amish and Mennonite] communities about Jewel’s
products, including that the sanitary napkins caused cancer, were covertly
delivering Covid-19 vaccines to women, and contained radiation and metal.”
(Live by the junk science, die by the junk science?)

The main salesperson for the Pennsylvania Busy Beaver, Ivan
Lapp, is Amish and doesn’t use Google, only email, QuickBooks and specific
websites, such as the Busy Beaver website. He proofread the ad, one of approximately
1,400 ads each week. “Many of these ads make claims about health products, and
about four to six ads each week are advertisements for Reign products. The Busy
Beaver does not independently verify the claims made in the ads it publishes,
and does not publish images of women in bathing suits, promotions for rock
concerts, or political ads.”

Jewel complained about the Concerned Sister ad, and Busy
Beaver offered Jewel free pages in the Busy Beaver every week until the end of
the year (about three months) so that Jewel could “print information on Jewel’s
products and correct any false information that it believed was circulating.” Even
after Jewel sued, Busy Beaver continued to allow Jewel’s distributors to place
ads in the Busy Beaver, just as they did before the lawsuit.

Lapp testified that the ad caught his attention when he
first proofread it because it was “questioning somebody else’s product,” but he
did not have time to do “any research,” did not have a number for Lantz, and
ultimately “left it go” without discussing the ad with anyone. “Lapp noted as a
general matter that he would call [higher-ups] about an ad if he thought it was
inappropriate, such as campaign or entertainment ads that he felt did not fit
the publication’s mission, but had done so only eight or ten times over the
years.”

Although Busy Beaver initially stated that the original
submission form had been shredded after publication, Lapp later recalled that
he had taken the form back to Lantz’s house at some point after Jewel called to
complain about the ad’s publication. He left the form with Lantz’s mother and
said the Busy Beaver would no longer accept such ads. The court denied Jewel’s
motion for sanctions related to the putative destruction/fate of the submission
form; basically that was what you can expect from a small business.

Jewel conceded that it was a limited purpose public figure,
and it couldn’t create a factual issue on actual malice, which requires knowledge
of the falsehood or reckless disregard for the truth, which requires that the
defendant “in fact entertained serious doubts” about the trust of the statement
or that the defendant published it “with a high degree of awareness of [its]
probable falsity.”

Busy Beaver’s proofreader, though, averred that he had no
idea whether the content in the ad was true or not. Jewel’s circumstantial
evidence was insufficient to allow a jury to find knowledge or reckless
disregard.

Jewel argued that actual malice could be inferred from Busy
Beaver’s publication of an “inherently improbable” and “highly disparaging” ad
claiming that graphene is a conductive metal that attracts electrical waves and
radiation from the air. But “it is not the case that the more serious the
charge, the less likely it is to be true.” And, given Jewel’s own claims, a
reasonable jury could not conclude that Concerned Sister’s statement about
graphene was so inherently improbable that Busy Beaver acted maliciously in
publishing it. Nor did it matter that Busy Beaver published the ad “anonymously,”
since Lantz put her name and address on the submission form even if not on the
ad, and that was not inconsistent with Busy Beaver practice.  “Indeed, in the same issue of the Busy Beaver
as the Concerned Sister ad, the Busy Beaver also published an ad with only a
phone number asking readers to consider their personal care products and ‘Go
toxin free.’” Busy Beaver didn’t violate its own policies (against women in
swimming suits, ads promoting rock concerts, or political ads), and, even if
Lapp did depart from “professional standards,” that alone is not enough “for
finding actual malice” in cases concerning public figures.

Jewel argued that Lapp demonstrated willful blindness by
failing to investigate the truth of the ad’s statements, and that the ad could
easily have been proven false “with a quick Google search.” But “reckless
conduct is not measured by whether a reasonably prudent man would have
published, or would have investigated before publishing”; there must be enough
evidence to support the conclusion that a defendant “in fact entertained
serious doubts as to the truth of his publication.” The court highlighted that “Lapp
proofreads approximately 1,400 ads a week and many of these ads make claims
about health products that Lapp does not independently verify.” Moreover, there
was no evidence that Lapp “accesses the internet in any beyond-business
capacity that could include a general internet search about graphene or Jewel’s
products without violating his Amish beliefs.”

Even if Lapp had done an internet
search, the evidence does not bear out that the alleged falsity of the
Concerned Sister ad would have been immediately apparent in the search results
to an Amish man who sells and processes classified ads. In point of fact, Jewel
produced a screenshot in discovery of an internet search resulting in a
description of graphene as “not metallic” but “a quasi-metal since its
characteristics of graphene are similar to those of semi-conducting metals.”

Should non-Amish publishers have to do searches?

Jewel argued that Busy Beaver was biased against it, because
Busy Beaver didn’t print a retraction, but  “Busy Beaver does not print its own
retractions, preferring instead to allow the complainant the opportunity to
print whatever corrective content the complainant wants in the complainant’s
own words.” Jewel chose to sue instead, but that’s not evidence of malice. As
for an alleged threat to cease publication of ads from Jewel’s distributors, that
was a confidential, inadmissible settlement communication from Busy Beaver. Anyway,
Busy Beaver never stopped publishing ads from Jewel’s distributors, “in further
contravention of Jewel’s allegations of ill will.”

from Blogger http://tushnet.blogspot.com/2025/05/publisher-avoids-liability-for-ad-that.html

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Sixteenth Trademark Scholars’ Roundtable Session 4: How We Got to Trademark Use 2.0

Posted on May 3, 2025 by rtushnet

Robert Burrell:
use in Commonwealth systems came from strict liability for double identity—once
that was extended to advertising, there are a whole lot of
nonconfusing/beneficial uses of marks in advertising. TM use was brought in as
a safety valve to allow comparative advertising. Since then TM use has
functioned as a safety valve for nominative and descriptive uses in the context
of a regime that is generally strict liability.

What is the US trying to achieve with use given that LOC is
central to your inquiry already? In Commonwealth it mitigates strict liability
w/no confusion requirement.

One potential answer: use as a mark in Commonwealth
countries was never primarily empirical. If Ds seemed good, the court could
find use not as a mark and say that any confusion was from unreasonable
consumers. Functions not merely as a safety valve to allow nonconfusing uses, but
also to allow courts to ignore unreasonable confusion. Why? If you advocate for
use, are you going to get a rule that allows you to ignore certain forms of
irrelevant/unreasonable confusion?

[If your system hates surveys, maybe you don’t need the same
set of rules]

Most tarnishing uses don’t involve TM use (Enjoy Cocaine on
a poster is not about the source of the poster). Once you’ve opened the door to
dilution, use as a mark isn’t a good line; you need something like the EU
multiple TM function idea.

A lot of Australia’s TM problems flow from the problem of divided
use Sheff identifies—the more work you ask “use” to do, the more doctrinal
incoherence will develop, especially when an apex court decides a question
about use and doesn’t understand the full implications. Case about Barefoot
Wines—Gallo didn’t actively exploit its mark in Australia, but a third party
sold Gallo’s Barefoot in Australia. Had Gallo used its mark? The court found
that conscious projection to Australia was not required for use.

What about the defendant who owns a TM in Singapore who
finds its stuff in Australia without consent? That’s use—so the Singaporean
company could be liable for TM infringement in Australia for conduct not under
its control.

Jessica Silbey: cultural analysis of TM use

Early 1900s cases about territoriality and limitations;
Prestonettes & Kellogg, Champion Spark Plug. Midcentury: new statute, when
TMs are still kind of quaint: Lanham Act’s message is that there’s a lot of
common law. Energizes federal judiciary and lawyers, and comes at a time of
postwar industrialization and boom. We get a lot of TM lawsuits from that and
bloat. Not just territories and resellers. We get the modern LOC test.

TM use moved from local naming to more national, even
global, uses both about source ID in traditional way but also the new commercial
culture—mixing of art and advertising, redefinition of art; new idea of what
TMs are for. Warhol’s Brillo boxes etc. P&G, Kraft, Chevron, RCA, GE. In
the background, we still have lots of lower court decisions like Abercrombie,
addressing this expansion in questions about distinctiveness and confusion. But
there are still unclarified assumptions about TM use—still about affixation but
becoming more attenuated.

1988/1995: new matter, including dilution and new statutory
defenses. SCt is a national narrator and tells stories about the nation. Inwood;
Park n’ Fly, SFAA, Two Pesos—more bloat. Qualitex: SCt gets interested in TM
law, which has been evolving in lower courts for decades w/o SCt.

Merchandising: property rights in gross. Heyday of 70s and 80s:
slashing corporate income taxes, perception of huge boom; the Me Generation/Yuppies;
obsession with financial success—Dynasty, Dallas, Wall Street/Gordon Gecko.

That means that TM is property, any use is valuable, and value
belongs to the owner—those ideas were all embraced.

The internet then came in and gave us keywords, rise of
initial interest confusion. More expansive, aesthetic, hybrid digital reality—ACPA.
Congress isn’t inert—DMCA and CTEA. SCt decides Walmart, Traffix, Victoria’s
Secret, and KP Permanent. 13 years later, after a couple of cases like Lexmark,
B&B, and Hana, then in 8 years we get 3 registration cases, JDI. They come
at a time when the 1A is serving corporate and religious interests mostly.
Congress’s ability to act is constrained both doctrinally and politically, and
cultural policy has become deeply regressive. Court: faux textualism/formalism;
major questions doctrine that curtails Congress’s power to create common law
statutes like the Lanham Act; don’t care about difficulties lower courts face
in implementation. JDI is about merchandising which the Court thinks is fine;
Abitron is about insular nationalism and about confining Congress’s powers/ the
only commerce that matter is in the US.

Conclusion: we can’t avoid the culture of propertizing, property
rights, art as advertising; we need to frame within those.

Bill McGeveran: Rogers was great, Rogers is dead, long live
Rogers. Rogers was good for pattern recognition in judges: there was an
understanding that speech interests needed to be protected, and Rogers was
lightweight/didn’t interfere w/core TM. That meant it overlapped w/TM use. Results
since JDI are not good. Lower courts may overrespond to SCt cases in the
beginning. JDI: pattern recognition was in conflict: two visible patterns: “speech”
v. this is a dog toy/real property rights/business interests are at stake. Now
Rogers has been mangled by the suggestion that you can’t screen before the LOC
test in this way. We might need to start from scratch and start from first
principles. Has criticized TM use as a useful tool, but its time has come. What
are the categories of patterns that will lead to pattern recognition as “of
course this is not what TM law is supposed to be for”? NFU; uses housed within communication
that aren’t offerings in marketplace; any confusion about sponsorship would be
mild/outweighed by free expression concerns. We have to think about the “confusion
doesn’t matter” v. “confusion is inherently not happening” models and he reluctantly
endorses the latter. Perfect is the enemy of the good and we still have NFU. If
they say, this is a dog toy, this is not what Rogers is about, they should also
be saying: this is a movie, this is not what TM is about.

Fromer: Business forms affect how we see TM use. Naked
licensing doctrine affects whether businesses try to control references/use by
affiliates. Amazon has also made big changes in how TM works. Do we want that
to become conventional the way merchandising has done? Now that we live on our
phones, limited real estate may improve the case for NFU of logos for actual communication.
[I’m thinking of the finding in the Apple
injunction case that requiring plain text instead of buttons deterred
people from using the “leave Apple” option, and Apple knew it.]

McKenna: recognize that these defense-win cases are littered
with expressions of incredulity about whether there could be confusion—how do
we get court to honor its intuition that confusion is unlikely when the digits
of LOC seem to line up in favor of confusion? Refocusing on specific factors
and theories of confusion. [And reject bad surveys!]

Christine Farley: JDI doesn’t hold that there’s no test
before the test—it holds there’s a test [use] before the test [Rogers] before
the test [LOC]. Would it be better to start from scratch?

How to read JDI? Don’t overread it. Court could be read to
saying that there is a contained space, a heartland, for TM—could also see Tam
and Brunetti that way. But they don’t give us any means for containing TM, only
say there’s a heartland. So: consider Dewberry, the most recent SCt TM case.
Everyone thought that the result would be the result—you can’t disgorge profits
from an unnamed defendant, and the Court didn’t actually say anything else! But
the oral argument (and hints in the decision) suggest that there is trouble on
the ground and we want TM law to work. If Ds are doing infringement schemes
where you can’t figure out where the money is, we want some solution. So we
need to work on the ground to find principles about what’s inherently not confusing—Alito
in JDI oral argument. “In TM law, context is king”—when can we be categorical
v. insist these are deeply factual questions? Maybe in distinguishing b/t the
heartland/bete noir and the periphery?

Grynberg: there are dangers to abandoning “sometimes we don’t
care about confusion”—if this imperial Court is ever convinced to latch onto an
argument, they can make it the law. SCt has never addressed Article III standing
for non-core TM theories. It has never addressed issues in Radiance Foundation v.
NAACP or noncommercial use more broadly; it has never squarely addressed the
LOC test and whether it is consistent w/history and tradition. It’s a separate
question whether they can/should be convinced these are worth doing.

Beebe: add to Silbey the effects of great wealth
concentration, including on famous brands.

Can we tell the story of UK TM law in the same way as Silbey
did? Israeli/Palestinian TM law?

Rogers was too undisciplined b/c any use can be expressive.

RT: No! Rogers was never about “expressive” uses though
courts often misdescribed it that way. It was/is about noncommercial speech.

Lemley: TM moved from sitting outside the 1A b/c TM owners
didn’t sue people for using existing products in movies or video games or using
TM names in books. But a bunch of insane theories of TM law were in fact
brought and sometimes succeeded. Can Rogers be abused? Sure, maybe. We saw some
efforts to use it in challenging circumstances. But the growth of Rogers was
not creep of 1A doctrine reaching out to existing TM doctrines that were
totally settled; it was the opposite—reflected and limited growth of expansive
theories of TM law that were newly articulated. If it is in fact dead, which is
unclear, or wounded, which is, then we need some other doctrine to deal with
these problems.

McKenna: in almost every application of Rogers it was
applied uncontroversially: movies, TV shows, artworks. No reason to throw out a
doctrine appropriate in 95% of its applications. Hard cases shouldn’t lead us
to junk the whole thing. The problem was the formulation “expressive work”
which is incoherent. The question should always have been are you selling the
speech v. are you using the speech to sell something else? That could have made
JDI a hard boundary case but that wouldn’t undermine the existence of the rule.

INTA suggested: keep Rogers but don’t apply it to “ordinary commercial
products.” But that doesn’t work. Isn’t a video game an ordinary commercial
product? But the Court could have said that the Q was whether what you were selling
was speech. That could have solved JDI or it could have been a hard question,
but the fact that every legal rule creates edge cases doesn’t mean that the
rule is bad.

Farley: Silbey’s account reminded her of Schechter’s theory
that societal change was what justified dilution.

Robert Burrell: pragmatically, we end up w/ a less dreadful
TM system with doctrines that provide a safety valve but also don’t have too
many false negatives (as the court sees it).

Heymann: Add in Citizens United to this account. It’s not
just what it says but the folklore around it—corporations are people (true for
a long time); corporations get to be super-people. Consumer drops out of TM
fights as corporate-v-corporate.

from Blogger http://tushnet.blogspot.com/2025/05/sixteenth-trademark-scholars-roundtable_10.html

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Sixteenth Trademark Scholars’ Roundtable Session 3 continued

Posted on May 3, 2025 by rtushnet

Midpoint discussant: Laura Heymann

Is the goal consistency? Is the goal limiting principles
that can end a case early? Is use the right tool? Is it a proxy? To what extent
should we accept the rest of the landscape as fixed, like the merchandising
right and students’ intuitive sense that there’s a property right involved?

Context: how much does context matter to the question of
use? Should we consider other similar activity by the defendant (VIP’s other
products, for example) to figure out whether any particular thing is a “use”?
Should we consider other words/symbols on the product to figure out what is “use”
versus “nonuse”? Can we test/survey for this?

Context also comes up in the question of whether booking.com
is a mark or an address—same lexical unit can serve both as a mark and other
things (the use/mention distinction analogy). Descriptive fair use is use, but
fair, but what about non-use? Are our main concerns about expressive uses like
titles, or technological uses?

JDI says we care about confusion or apply a screen depending
on what the defendant is doing—a D making a TM use leads us to care more about
confusion.

Jessica Litman: Lemley proposed a deal with the devil: a
property merchandising right for a subset of marks; in return we’ll get old TM
law back for everything else. Ramsey hoped that failure to function would save
us. Some of the work TM use does overlaps with validity doctrines. PTO likes
the F2F tool but courts may or may not get on board with it.

Is part of the problem that non-TM experts don’t understand
the principle that TMs are supposed to be separate from the product whose
source they identify—they’re supposed to be different things! That’s what
symbol/sign relationships are! TM claimants want property rights in the thing
they sell, but could we disseminate more widely the principle of the
Restatement of the Law of Unfair Competition that TM is for that connection
& when that connection is absent b/c the TM and the product are unified,
there’s no TM claim—that could help courts pick the good guy in the room when
deciding cases. TM law is not a good fit for the merchandising right. It’s not
supposed to protect intrinsic value. Merchandising right shouldn’t exist—© is
sufficient in many cases, and people should be able to signal their fandom for
the U of Penn through both licensed and unlicensed merchandise.

Lemley: use of a mark v. use of the identical lexical
content of the mark—is that a useful distinction? Why does it help us? All
these use arguments are about what purposes the use is serving, and he wants to
know about non-word marks in this system. One could use a logo in a non-TM sense,
but is there a parallel to the analysis of “identical lexical content”? What
about a rotten apple logo to make a comment on Apple?

Heymann: Keyword sales are not about meaning but about
matching.

Roberts: lawsuits against UberEats and similar—when they go
to UberEats users see logos; nonpartner restaurants object to use of names and
logos. Logos seem worse.

Lemley: but see negative matching which does try to target when
users are searching using the TM specifically. FTC’s Business Impersonation
rule says it’s deceptive to use

RT: Responding to Heymann’s argument that JDI distinguishes
b/t situations where we care about confusion & says that Rogers means we
don’t care when the D is making an entirely non-TM use in noncommercial speech.
You can also, and Rogers itself did, make an empirical claim about the
likelihood of deception for creating strong rules justified by error and
litigation costs: Dastar, Walmart. That also helps strengthen the Second
Circuit’s principle that in non-Rogers cases asserted against noncommercial
speech (that is, title v title), First Amendment concerns should lead to a more
careful LOC analysis b/c false positives are bad there too—they’re just even
worse when the P lacks its own expressive work, justifying a categorical
rule like Dastar or Walmart. That’s not confusion-indifferent, it’s
confusion-risk-balancing. This is an argument we should keep making.

To Lemley’s Q: Yes, there are NFU image cases. Mattel v.
Walking Mountain is NFU of Barbie’s trade dress. Phone
reseller case: logos are NFU to identify which phones the reseller accepts.
[Kozinski, naming NFU, characterizes it as non-TM use.]

Fromer: can functionality doctrine help us think through
this? If something is being used for its intrinsic value, it’s not TM use.

Lemley: this is where VIP’s language can be abused. Walking
Mountain: if Mattel says the art advertises itself, then the presence of Barbie
advertises/helps sell the art [though I’m not sure that I’d call that a
source-identifying function—it seems to be one of the other functions the
Europeans talk about].

McKenna: biggest mischaracterization of Rogers by JDI is
that it involved an entirely non-TM use with no TM function; Rogers itself was
very clear that the title served a “hybrid” function and still needed
protection.

LOC test itself: survey procedure for Eveready is built on
concerns for a reading test—you ask people “who makes this” and if they answer “Eveready”
they could just be reading. You have to ask “what other products does this
company make?” Otherwise a survey would find confusion between the multiple Deltas.
Which is to say: Using the same word isn’t the same thing as using the same mark,
which brings along with it indications of source. The LOC test is asking
whether it’s a use of the P’s mark or just the same word. Where the factors break
down is where there’s no dispute that the use is referential. Eveready is the
opposite of referential use. Merchandising cases invert the argument, so
forcing them into LOC multifactor tests doesn’t work well. You need something like
NFU or Rogers because the factors are more likely to be wrong.

Stephen Baird: NFU—can you use logos of companies to
indicate that you can buy their shares? TM attorneys would be suspicious of the
“too much” problem. New Kids footnote: a soft drink competitor can compare to
Coke but can’t use Coke’s distinctive lettering, citing a VW case; cf.
copyright fair use. That footnote is dicta within dicta and has been overread. Most
TM lawyers adopt the view that you can never use someone else’s logo; one of
the things that weighs against that was “strength in numbers.” In a car wax ad
featuring only a Porsche, Porsche won. But when there were multiple ads
w/multiple different luxury vehicles, Porsche didn’t sue—when there’s half a dozen
different brands in the ad, it’s hard to say that any one of those is
sponsoring/endorsing. [That logic also helps explain the Xfinity case above; I
also think about the “collage” reasoning in ETW v. Jireh and Hart v. EA, albeit
that’s ROP analysis.]

Burrell: as a person from a registration system, the idea of
being able to use the thing that is on the register blows his mind.

McGeveran: “too much” is one of the NFU factors that
attempts to be a proxy for real confusion, and it is imperfect.

Dinwoodie: Likes the 3d Circuit version of NFU where you
have to reflect the true relationship—it’s a matter of objective truth and that’s
an easier thing to evaluate [query whether the 7th Circuit case
about attributing responsibility to architects calls that into doubt].

McKenna pointed out that the 3d Circuit LendingTree case does
have a tiny bit of logo use (a photo of a woman with a Coldwell Banker sign
partially visible) which the 3d Circuit doesn’t say anything special about
& just remands.

Sheff: can we identify where confusion creeps in to the
alternative doctrines—functionality, we tolerate confusion; descriptive fair
use, we tolerate some confusion. Implicitly the amount of confusion will
sometimes be enough to disqualify the defense. With descriptive fair use, the
consideration of confusion creeps back in as “use as a mark”—w/enough
confusion, the court will find use as a mark. Where will confusion concerns
creep in to various defenses? [I don’t think this is how functionality works (aesthetic
functionality maybe); and the KP Permanent courts, especially on remand, also
think that amount of confusion matters on its own as well as creeping back into
use as a mark.]

Lemley: SCt recognizes that defenses aren’t very helpful if
confusion defeats them—two ways to do it. KP Permanent remand: hike the
standard so 15% isn’t enough. But other defenses like NFU/Rogers can say that
confusion just doesn’t matter. Empire’s use of “Empire” for a music
company might be confusing to a number of people.

[I would say again that the other way to see it is that in
NFU/Rogers cases an individualized determination of confusion just doesn’t
matter b/c it’s so likely to be wrong—b/c the only direct evidence, surveys or
other reports from consumers who have misconceptions about the legal
requirements for parody/commentary is not reliable.]

McGeveran: in an environment of second-rate textualism,
calling Rogers a pre-screen as VIP does (and Rogers did not) creates the risk
that courts will reject it more than explaining it as a set of rules for more
reliably, less false positively determining LOC.

Baird: Declaratory judgment under Rule 57 is equitable—maybe
a way to get the judge to focus on invalidity early on?

Lemley: keeping in mind you can’t get a DJ on something that
would have to go to a jury.

McKenna: one way to see the defenses is confining LOC to the
core—source/passing off. The confusion has to be in the heartland of TM b/c of
these other competing interests—descriptive FU, NFU, and Rogers all have these
limits. It’s not that there’s no TM right at all, it’s that it’s not triggered
without D pretending to be the P. [I’ve
characterized this as D speaking as P for noncommercial speech.]

Dinwoodie: EU’s central function doctrine, that D’s use has
to interfere with the central function of a TM, is operating as what we might
think of as a TM use requirement. The problem is that they then say confusion =
interference w/central function. Once you get into the morass of non-central
functions, it gets worse.

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Sixteenth Trademark Scholars’ Roundtable Session 3: What is the Significance of Trademark Use 2.0?

Posted on May 2, 2025 by rtushnet

Introduction: Mark Lemley:

What VIP actually says: Rogers test insulates from liability
when use is only non-source identifying. Cardinal sin is to undermine
source-indicating functioning: LV modification of mark in suitcase market
implicates the core concerns of TM law. That is a conception of the core of TM
law that Lemley thinks is both traditional and right, and also way narrower
than what TM law does now, more of a 1960s vision.

There are two different things we call “TM” that are causing
difficulties. Classical source confusion: double identity/LOC multifactor test
covering similar but not identical marks/goods. That starts to fall apart b/c
of the rise of brands, as opposed to TM—the TM is valuable in and of itself.
People don’t spend so much on Birkins just b/c of quality—it’s the value of the
logo in and of itself. This is real; but we’ve taken it seriously by trying to
stretch/mutilate TM law designed for source. We include merchandising, which
could be done by a property right, but we don’t admit that, and instead stuff
it into LOC by stretching confusion to any sort of connection/affiliation, not
considering harm, and stretching the individual digits of confusion.
Counterfeiting: post-sale confusion to ignore the fact that no one might be
confused at purchase. These built-in elasticities then have lots of other
consequences—once we’ve established affiliation confusion w/broad/amorphous
tests for confusion, it becomes hard to say that anything is not confusing as a
matter of law. Doctrines developed to protect “apex” brands extend everywhere. Pro
basketball team that decided to start all games at 7:11 pm—that was a co-branding
relationship. If someone else starts all games at 7:11 pm, is that confusing? What
if you see a can of Coke in a movie? 30 years ago no student thought it meant
anything, now 75-80% of students think there was product placement. Since we
don’t require harm, that’s it.

So, what does Article III standing look like? Federal law
might actually require more as a constitutional matter. We might want limiting
doctrines to say that even if you have a property right, it’s not a right to
prevent people from writing/talking about your TM/engaging in comparative
advertising/commenting on your TM. IP has traditionally gotten a free pass in
1A law b/c we’ve viewed it as bound up in the classic justification for IP; if
the IP we have now is not linked to traditional forms of IP, then that should
be revisited. Elster is interesting in that regard.

We could rethink the role of confusion—if the model is
property, then consumer confusion isn’t necessarily important. We wouldn’t
necessarily ask about whether people think there’s a relationship between two
entities but only what the boundaries of the right are. A property right could
allow us to recognize that consumers will detect even smallish differences b/t
famous marks and variants. We could articulate right to repair, reuse, resell,
carry—giving purchase for TM use doctrine to explain what’s in the property right.

Barton Beebe

Providing structures: one proposal is formalism; another is pattern
recognition for judges; but those two might be in tension/the second may be
harder to reduce to rules. Is TM law becoming post-theory, w/courts just trying
to make sure the “right” entity in front of them wins? Is use as a mark a way
of doing that?

Questions about relationship b/t analogous use and use as a
mark; abandonment—if more & more conduct qualifies as use as a mark, won’t
that allow Ps to point to D-side use cases and say “I’m doing at least that
much!”

If we should have training for other forms of survey evidence,
what would a survey look like that surveys for use as a mark? How would that
differ from LOC, distinctiveness surveys? Goes to whether we’re dealing with an
autonomous analytical contribution or something else. What about when the D
presents evidence that it’s no longer using something as a mark—does it affect
remedies?

What about disclaimers? Would “click on this to acknowledge
that this is not use as a mark/use as a designation of source” help?

Lisa Ramsey

McCarthy and others say TM use should be taken into account
in LOC; she thinks that TM use should be defined narrowly, as in JDI—source-identifying
uses. Word “primary” is worrisome though b/c could let affiliation creep in. We
should focus on false statements about licensing, affiliation, etc. not
implications. Naked licensing: we need some symmetry w/rules about
abandonment/enforcement. Only find TM use if it’s ID’ing source or
communicating that TM owner is responsible for quality—not just that they’ve
given permission.

A lot of the time secondary meaning can overcome a failure
to function refusal, but sometimes it can’t—“Drive Safely” for Volvo—that just
can’t be a TM. Concerned about rules that require us to have surveys, b/c then only
big companies can get rights/defend their uses as TM uses (regardless of
whether they should) and small companies can’t (ditto). Better: focus on
reasonable consumer. Shouldn’t have a system that requires consumer surveys.
[Let me introduce you to 43(a)(1)(B) implied falsity cases!]

Grynberg: Acquired distinctiveness allows us to distinguish
Nike from Lettuce Turnip the Beet—looking for where the value was created. If
we’re worried about expressive uses, we can ramp up the acquired
distinctiveness standard. LTTB and Nike are on opposite ends of the spectrum;
we can discuss where to put 100% that Bitch, but courts do want to give rights
to Nike and not to LTTB so we should talk about how to create the doctrinal
framework.

Students surveyed before teaching TM: Should owner of McD’s
mark be able to stop unauthorized use of mark on front of shirt (not on tag)—every
year, at least 90% of students say yes. Tries to teach them the reasons why
not, but only moves a couple of students a year. We have to accept that judges
think this way. When asked: should McD’s control whether a person can set a
fictional movie in a McD’s restaurant? Outset of class: students think that McD’s
should be able to do so; their normative beliefs change after learning
TM law.

Dinwoodie: 1A avoidance doctrine is a useful way to connect
the Court with the relevant concerns for Rogers. It will be harder to convince
the Court that the Lanham Act is a common-law delegation statute, but lower
courts are more open to that.

Lemley: JDI Dct got the message and threw out the survey as not
weighty enough.

Dinwoodie: yes, it matters that this was association confusion
(at least it matters if we tell the story that this was an association confusion
case).

McKenna: TM as exception to free competition is the historical
conception, but that’s no longer the view of “brand owners” and judges. Massive
expansion of role of large law firms is also part of the story—lawyers involved
in writing Lanham Act were experts deeply invested in the TM system. Now though
the big players exist to make the big firms richer and more powerful, and deep
expertise in the area of law is less important—what the big firms have nailed
is the idea of ownership of these marks.

Fromer: Proxies are good b/c they preserve ground for
normative values; better than always going directly to consumer perception.
Consumer perceptions can be off—consumers might think that source-indicating
includes references. Or they might be guided by seeing marks blurred out on TV,
believing that permission is necessary to reference marks (goodbye first
sale!). We need ways to measure what consumer perceptions stem from, but
normative proxies might be better and easier to identify.

Litman: the problem is not that there’s no definition of use
in the statute; use in commerce is all over the statute, but rather that it’s
narrow in ways people don’t like—affixation to a product for goods is required
for infringing use.  And people want to
stretch it. [You could use 43(a) “false representation of fact” for many situations
and say it wasn’t a “mark,” and the affixation requirement is only for “marks.”
I’m not sure how many allegedly infringing uses aren’t really affixed, but it
is weird to have that difference b/t goods and services for infringement
and not just for acquisition of rights.]

Lemley: elaborates on concept of “apex” brands, which would
not be the same thing as fame for dilution. Instead, they’d be the brands for
which affixing the TM on something makes it more valuable to people, where the
brand itself is what people are seeking—you need sufficient reputation, but
Coach and Texas A&M would qualify even though not famous.

Farley: not all “fame” means things are really good source
identifiers—they have secondary meaning.

Burrell: Common law lawyers find it really hard to deal with
systems that don’t have precedent—reacting to European high courts as if they
were binding in other cases even though the definition of distinctiveness keeps
changing at that level, whereas Poland and Germany don’t have that problem.

McKenna: is the SCt still a common law court? And how will
we figure that out?

In TM, priority disputes are about the amount of use, not
the nature of use—it’s about how much latitude you give people to have breaks
in use, things that aren’t technically TM use but might create consumer understanding—but
those things are bound up in the fact that analogous use cases are about which
party is going to own the mark and it will be one of them, not neither of them.

from Blogger http://tushnet.blogspot.com/2025/05/sixteenth-trademark-scholars-roundtable_70.html

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