DMCA exemption followup

Posted on June 30, 2015 by rtushnet
The OTW/EFF response to the Copyright Office’s additional questions, filed yesterday, is now available.  Of note, the Copyright Office asked us about the extent to which K-12 students and teachers were covered by the existing noncommercial exemption.
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Fourth Circuit destroys literal falsity

Posted on June 30, 2015 by rtushnet
In re GNC Corp., — F.3d –, 2015 WL 3798174 (4thCir. June 19, 2015)
 
Well, this is a terrible opinion that makes no sense.  In the Fourth Circuit, if reasonable experts disagree, it’s now impossible for one to be wrong, and therefore impossible for there to be literal falsity.  No more preponderance of the evidence. Perhaps worse, this standard is stated as being the standard for the Lanham Act in a state law consumer protection case, with citation of but no apparent comprehension of the difference between literal falsity and literal truth that is nonetheless misleading.  Of course class action jurisprudence of late represents a general hostility to consumer protection, but that’s mostly done procedurally—this is a deep substantive wound.
 
Appellants bought joint health supplements produced and sold by GNC and Rite Aid. The accused products all contain glucosamine and chondroitin, and most contain additional purportedly active ingredients.  Appellants alleged violations of various state consumer protection laws because, they alleged, many scientific studies have shown that glucosamine and chondroitin are no more effective than a placebo in treating the symptoms of osteoarthritis, contradicting the labels’ health claims. Those claims include that various products will, e.g.: “promote[ ] joint mobility & flexibility,” “protect[ ] joints from wear and tear of exercise,” “rebuild[ ] cartilage and lubricate[ ] joints,” and provide “[m]aximum strength joint comfort.” The product label for TriFlex Fast–Acting represents that the product was “[c]linically studied” by means of a “12–week multi-center, randomized, double-blind, placebo controlled study of 60 adults … taking 250 mg/day of the GNC TriFlex Fast–Acting Blend” and was “shown to improve joint comfort and function,” and also promises 20% improvement in joint function and 25-30% improvement in joint flexibility.
 
The court of appeals affirmed the dismissal of the complaint because “marketing statements that accurately describe the findings of duly qualified and reasonable scientific experts are not literally false.”

 
I’m going to go Scalia one better and insert some reaction gifs here.

 
Plaintiffs alleged that “the vast weight of competent and reliable scientific evidence” indicated that glucosamine and chondroitin do not provide the promised health benefits. They cited a number of peer-reviewed studies to this effect, which experts in the field allegedly deemed to be appropriate proxies for users. However, the complaint didn’t contain any allegations about the ineffectiveness of herbal compounds found in some of the products. 
 
“[T]he district court held that a manufacturer cannot be liable for false advertising so long as at least one qualified expert opines that the representations made are truthful, even if the overwhelming weight of scientific evidence is to the contrary.”
 
Procedural wrangling omitted. 
 
The court of appeals found the district court’s ruling accurate “while incorrect in its specific formulation.”  The complaint’s reference to specific studies didn’t matter, since a plaintiff doesn’t need to “forecast” evidence sufficient to prove its case.  Studies cited in the complaint may be statements of fact that make a claim plausible, but don’t comprise the full body of evidence that would ultimately be coinsulted. “[T]he question of falsity hinges on the existence (or not) of scientific consensus and not on the conclusions that hypothetical scientists might draw from those studies referenced in the [complaint].”
 
Though the Lanham Act didn’t control here, Lanham Act precedent was “instructive” in construing the state laws here.  (This is not so, for a variety of historical and drafting reasons; state UDAP/UCL acts have different purposes—specifically and most notably consumer protection directly, with consumer standing to sue and often to receive statutory/enhanced damages—and state consumer protection cases have essentially never used the Lanham Act explicit/implicit falsity division except when cases are brought by competitors asserting both state and federal claims and the parties don’t dispute that the state test ought to be the same for competitor plaintiffs.)  Lanham Act false advertising cases divide into literally false claims and literally true but misleading claims, the latter of which require extrinsic evidence of actual consumer confusion.  So too here.  “Every statute at issue here imposes liability for misleading representations. Although each state supplies its own test for determining whether true statements are misleading, statements that are literally false are necessarily misleading within the meaning of all of the statutes.” Plaintiffs consistently argued literal falsity, not misleadingness.
 
Plaintiffs’ theory of the case was a syllogism: “(i) the Companies represent that the products improve joint health; (ii) scientific evidence will show that glucosamine and chondroitin do not improve joint health more than a placebo would; (iii) therefore, the representations must be false because the products do not and cannot improve joint health.”  But that’s not enough, because the complaint failed to allege that “all scientists agree that glucosamine and chondroitin are ineffective at providing the promised joint health benefits” (emphasis added).  Instead, it alleged that the “vast weight” and the “overwhelming weight” of the evidence favored plaintiffs.  This necessarily concedes that some reasonable experts believe that glucosamine and chondroitin can provide the promised symptom relief. This means that the scientific evidence of efficacy is equivocal.  And that means that plaintiffs failed to allege literal falsity. 
 
Plaintiffs said, quite reasonably, that the court shouldn’t resolve a battle of the experts on the pleadings.  But the court rejoined that it didn’t have to: having determined that there wasa battle, the court was confident that the complaint therefore failed to plead literal falsity:
 
When litigants concede that some reasonable and duly qualified scientific experts agree with a scientific proposition, they cannot also argue that the proposition is “literally false.” Either the experts supporting the Companies are unreasonable and unqualified (in which case, there is no real battle of the experts to begin with) or they reflect a reasonable difference of scientific opinion (in which case the challenged representations cannot be said to be literally false).
 

False advertising cases could still survive if plaintiffs can, after due diligence, plead that no reasonable scientist would agree with the challenged representations. “Moreover, plaintiffs remain protected from dubious experts by the Federal Rules of Evidence, which ‘ensure that any and all scientific testimony … is not only relevant, but reliable.’”
 
And the court promised that it wasn’t insulating supplement makers from liability.  “A manufacturer may not hold out the opinion of a minority of scientists as if it reflected broad scientific consensus.” (But what does it mean to “hold out the opinion of a minority of scientists as if it reflected broad scientific consensus”?  Apparently it can’t be false to state that minority’s opinion as if it were established fact.)  Anyway, the court need not decide whether the claims could be misleading, because plaintiffs never pled misleadingness. 
 

“In sum, we hold that in order to state a false advertising claim on a theory that representations have been proven to be false, plaintiffs must allege that all reasonable experts in the field agree that the representations are false.”
 

[That’s not what “proof” means.] Also, the complaint failed to allege that the other herbal ingredients, present in almost all the products, didn’t work. This failure was independently fatal, since most of the challenged representations referred to the products as a whole.
 
The court did reject some grounds for affirmance: defendants argued that the studies cited in the complaint weren’t specific enough to the challenged products to raise any plausible inferences about their efficacy. This argument was “unpersuasive and inconsistent with notice pleading.”  Defendants argued that the studies only looked at people with arthritis, not people who only experience joint pain and stiffness, but the court had to take as true the complaint’s allegation that experts in the field deemed such studies to be appropriate proxies for non-arthritic people as well.  “It may well be that glucosamine and chondroitin work differently in people with arthritis than in people without arthritis, but such a factual dispute is not susceptible to resolution at the motion-to-dismiss stage.”
 
Plus, the defendants argued that the scientific studies weren’t sufficient evidence of falsity because they didn’t assess “the specific formulations used in the products or the synergistic effects between the products’ ingredients.” But that wasn’t an appropriate inquiry at the motion to dismiss stage.
 
Okay, deep breaths.
 

The court of appeals made a category error: reasonability and correctness are not the same, and deliberately so in most of the legal system.  We recognize that reasonable and scientifically accepted methods are sometimes applied wrongly, or sometimes simply produce wrong results—that’s what it means to have an error rate.  Having at least one admissible expert opinion in your defense means that you should be able to fight the charge of falsity in front of a jury, not that you should be able to get the claim dismissed before anyone evaluates the competing expert opinions.  If a reasonable expert is nonetheless wrong in a particular case, the claim that the expert supports is not misleading, it is untrue, that is, false.
 
Compare: based on intelligence that meets ordinary standards for action, a drone strike hits a building that turns out not to have the target inside it.  Was the statement “our target is inside this building” merely misleading, or was it false?  If you don’t like “false” because of its implication of intent, you’ve already lost that battle in the consumer protection context, but would you accept “that statement was not true, though we reasonably thought it was at the time we said it”?  By contrast, misleadingness relies on inference to complete or extend a claim that is true on its face.  Suppose the claim on the supplement at issue here was “Tired?  Iron can remedy anemia that causes tiredness.”  Surely most if not all reasonable scientists would agree that this is true.  Now suppose that most tiredness does not come from anemia.  Is the claim “iron can remedy anemia that causes tiredness” misleading on a product marketed to consumers in general?  Of course it is, because of implicature, specifically the rule of relevance: connecting it with the nonfactual question “tired?” implies that iron will treat tiredness in general. 
 
The difference between falsity and misleadingness is not whether reasonable experts can disagree—in the drone/falsity example, they might have disagreed, given how the relevant evidence is interpreted, whereas in the iron example, they are unlikely to disagree at all.  The difference is whether the statement requires consumers who accept that the statement is true to make further inferential leaps to reach the conclusion that benefits the advertiser.  In some cases, those inferential leaps may be so likely that we say that a claim is false by necessary implication.  (Relatedly, the court of appeals’ new standard makes an unintelligible hash of falsity by necessary implication, recognized in every circuit to consider it.  Under the new standard, if lots of experts disagree with a challenged claim but one agrees with it, is that falsity by necessary implication?  Is it a percentage standard now?  This is one reason that (a) Lanham Act cases shouldn’t have a rigid falsity/misleadingness divide, and (b) one ought to be careful before importing Lanham Act doctrines into consumer protection cases, given the different considerations regularly at issue.)
 

At a minimum, this holding on literal falsity puts the 4th Circuit in conflict with everyone else’s definition of literal falsity, where juries are routinely allowed to resolve battles of the experts in finding literal falsity. E.g., Hot Wax, Inc. v. S/S Car Care, 1999 WL 966094 (N.D. Ill. 1999) (where a product containing mineral seal oil was sold as “wax” for cars, a jury found the claim literally false, rejecting several experts’ testimony that “wax” could be defined broadly, in favor of the plaintiff’s expert testimony that mineral seal oil was plainly not “wax” because it lacked the basic characteristics of wax); Eastman Chemical Co. v. Plastipure, Inc., 775 F.3d 230 (5th Cir. 2014) (taking one side in a scientific debate can be literally false when the ads are directed to the general public, not to experts to whom the details and limitations of a study are disclosed); Kraft General Foods, Inc. v. Del Monte Corp., 28 U.S.P.Q.2d 1457 (S.D.N.Y. 1993) (featuring competing expert definitions of the word “gelatin”).  Literal falsity should be determined by a two step process: (1) what unambiguous message does the ad convey, if any? (2) is that unambiguous message false?   E.g. United Indus. Corp. v. Clorox Co., 140 F.3d 1175 (8th Cir. 1998) (ambiguity is the key divide between explicit and implicit falsity). That has nothing to do with the presence of scientific debate. 
 
Indeed, the very case that the GNC court here cites to explain literal falsity holds exactly that:
 
Castrol presented affirmative evidence to prove the literal falsity of Pennzoil’s claims and … [the district judge] did not find Pennzoil’s evidence to rebut Castrol’s proof persuasive. The dissent asserts, however, that a defendant need only establish a reasonable basis to support its claims to render the advertisement literally true. We disagree. Rather, the test for literal falsity is simpler; if a defendant’s claim is untrue, it must be deemed literally false.
 
Castrol v. Pennzoil Co. 987 F.2d 939, 944 (3rd Cir.1993). GNC cites Castrol to define literal falsity, but neglects its explanation of what literal falsity is; Design Resources, Inc. v. Leather Industries of America, — F.3d —-, *7 (4th Cir. June 18, 2015), also relies on Castrol for falsity by necessary implication.
 
Other consumer protection cases as well have easily recognized that falsity means wrongness, not global consensus on wrongness.  For a sampling of cases where a consumer plaintiff’s allegations sufficed by alleging falsity, not total scientific consensus: Zakaria v. Gerber Products Co., No. 15–00200, 2015 WL 3827654 (C.D. Cal. June 18, 2015) (affirmative misrepresentation is actionable when its falsity is properly alleged, as opposed to lack of substantiation for the claim); Bezdek v. Vibram USA Inc., 2013 WL 639145, No. 12–10513 (D. Mass. Feb. 20, 2013); In re Clorox Consumer Litigation, 894 F. Supp. 2d 1224 (N.D. Cal. 2012); Cardenas v. NBTY, Inc., 870 F. Supp. 2d 984 (E.D. Cal. 2012); Prohias v. Pfizer, Inc., 490 F. Supp. 2d 1228 (S.D. Fla. 2007).
 
Oh, and—what exactly would the extrinsic evidence of confusion be directed to?  The logic of the ruling implies that it would have to be “consumers are confused into thinking there’s a scientific consensus about this claim,” but that doesn’t make sense. (Consider what the court of appeals could want the survey to show: the reception of the explicit messages on the packages, that the supplements improve joint health etc.?  But that’s just a reading test: those are the explicit messages on the packages.  The reason that explicitly false claims don’t require further evidence of consumer reception is that it’s pointless and wasteful to require a survey to see if consumers can read.)  The thing that consumers are deceived by, and likely to think about, is the underlying truth of the claim, not the degree of consensus about it. Those two perceptions are probably reasonably close together to the extent that consumers consider consensus at all, but consensus is a proxy for the fact of interest: truth or falsity of the health claim. The only way this holding can be coherent (if still wrong) is if it is no longer false or misleading to make any claim against which there is no “consensus,” no matter what message consumers receive.
 
To put it another way: under this rule, what is the remaining place of a battle of the experts in a false advertising case? We regularly expect that some experts are wrong and some are right.  But that’s a matter of evaluating the evidence presented by the experts.  Evidence of consumer perception, collected via a survey, would not help us evaluate the evidence presented by the experts in any way.  But it’s the survey requirement that divides explicit from implicit falsity.  Is the court’s idea that we should do a pointless survey so we can then have the actual battle of the experts?
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Trademark scholars roundtable: establishing the features of the consumer

Posted on June 29, 2015 by rtushnet
Session 2: Establishing the Features of the Consumer
 
The UK courts have in recent years been quite explicit that
the consumer is a normative construct, a fiction, and a benchmark. What does
this mean? Does the modifier “average” or “reasonable” serve any useful
purpose? Do courts elsewhere understand the concept of the consumer similarly?
If the concept is “normative,” from which materials or domains is this
normative construct pieced together? From where ought these norms to be
derived? And why force those normative concerns into the vehicle of the
consumer rather than vindicate them explicitly on their own terms? To what
extent and in what trade mark institutions (legislators, administrative
offices, courts etc.) is there a role for empirical understandings of the
consumer? If there is a role for empirical understandings, how are these to be
developed and used? Through surveys? Courts in several countries appear
increasingly sceptical of survey evidence? Does this reflect (or will it cause)
a different conception of the consumer? Through other forms of evidence from
experts in marketing, economic, behavioural sciences? If there is a role for
empirical understandings within a normative framework, what is the relationship
between empirical and normative assessments? Must one always trump the other?
Does a “trump” only work in one direction (e.g., in favour of trade mark owner
or third party user)? Does this vary by institutional setting? Is the consumer
construct different for different categories of trademark subject matter—e.g.,
for verbal versus visual marks?
 
Introduction:               Jessica
Litman: US judges and lawyers think what they’re doing is directed at what
actual consumers perceive, but the Q is how you figure that out. Corollary:
consumers differ by product. Real consumers don’t distinguish TMs from
products. Trying to figure out what the consumer is confused about when
perceptions don’t track legal categories is challenging. US judges reject
surveys a lot, maybe even more and more, not because they think surveys aren’t
relevant but b/c they think the surveys don’t reflect empirical reality. They
are lawyers and know what they’d do if they were litigating; getting a
realistic survey is not good litigation strategy. Some judges are trying to
figure out policy for competitive space; starting to see move away from multifactor
likely confusion test, especially in the 7th Circuit—this is or isn’t
going to confuse the relevant consumer. 
Sense is that’s also cropping up in false advertising cases—doctrinal categories
that require surveys & judges worm their way out of those categories with,
e.g., falsity by necessary implication.
 
Are there ways to generate more reliable empirical evidence
of consumers’ impressions? Independent surveyor is interesting idea.  If consumers can’t tell difference b/t
product and brand, would we be better served by a more careful definition of
what sort of confusion ought to be actionable?
 
Kimberlee Weatherall: Must be frustrating to have judge
ignore evidence on which you would rely as a business matter. When you know you
have to convince the judges about closeness, and that’s what it takes to win, that
inherently leads to uncertainty that makes settlement more difficult; hard to
predict how judges will see marks. Intellectually dishonest to reject surveys:
expect level of perfection from surveys not expected from anything else.  (Preach!) 
Other experts; witnesses who testify they were confused, as if witness
prep didn’t happen.

But TM law doesn’t ask empirically testable questions: a consumer with a
fictional memory for the mark as registered, and then we ask about what the
consumer will think of the product’s origin when she sees it. But lots of times
the consumer isn’t thinking about product origin at all, but about what taste
of ceral they want or what the 3-year-old is pulling off the shelf.  Fictional memory, imaginary state of mind,
imagined shopping experience—and then we complain that we don’t have
ecologically valid evidence! We’re not asking testable questions; we assume in
the law a kind of decisionmaking that cognitive scientists don’t agree w/ in
their model of consumer decisionmaking: conscious and unconscious elements of
choice that vary across circumstances.
 
Courts have rejected general testimony about consumer
behavior as applied to specific circumstances; not good. She’s been working
with cognitive psychologists on word similarity, memory, etc. Asking
psychologists how to test some of our assumptions about marks—e.g, beginning of
words mattering most; consumers focus on most distinctive part of mark and
ignore generic/descriptive elements. 
Process is difficult b/c we don’t speak the same language, and they
break down the process of consumer decisionmaking differently. We wrongly tell
researchers the question to ask and we perhaps should give them scenarios and
ask what could be empirically tested: get them to design surveys. But raises
practical Q: will a court accept such abstracted testimony as relevant?  (RT: by ordinary relevance standards it
really should be accepted!)
 
Primary Discussant:     
Annette Kur: Consider whether we want to influence how consumers react w/law—miss out on that if we
concentrate on making surveys function as well as surveys can function.  We can’t be under the illusion that we can get
all we’re interested in doing into one litigation.  Complexity of problem might justify giving up
trying to get empirical evidence in any particular case, except for secondary
meaning.
 
Registration: if it’s difficult to bring in empirical
evidence to litigation, even more impossible when we talk about registration.
But we still need rules.  Relative
grounds for refusal: attempt to get as close as possible to actual consumer
reaction is illusory and simply should be abandoned.
 
Robert Jacob: Doubts about so-called experts. People who
come along and tell you they’ll give expert testimony on royalty rates etc. are
legion, but they’re rubbish. It ought to be true for TMs: if it’s that
complicated, you haven’t got a TM case.
 
David Llewellyn: Weatherall’s point about lost bearings
w/reality is worth reinforcing. He’d hate having a decent judge abdicate
responsibility to experts, who can be appalling. Generalists should have the
nerve to make their own judgments.  SMEs:
all this survey evidence can be achieved by Pepsi and Coke, but that’s an
expensive area; we can all design fantastic ways of getting answers with an open
checkbook, but how does the small business w/ a registered TM actually compete?
We don’t have contingency fees. Cross-examination and real witnesses are what’s
important for a case—real differences in procedure matter, such as presence of
contingency fees. 
 
Weatherall: there are empirical claims you can make as a
general matter, such as whether the beginnings of words are most important.
Also one reason for the huge expense is b/c courts have set the bar so high. A
cheap internet survey may give you more evidence than you had.
 
Llewellyn: If you pay peanuts you get monkeys; what kind of
legal system do you want to have?
 
McGeveran: distinguish between consumer as beneficiary (as
all law is supposed to benefit the public) versus consumer as determining
scope/lodestar. A judge who doesn’t feel comfortable is being told this is a
complex factual dispute with a multifactor test; that kind of judge—our greatest
worry—will be tempted to use a survey. Maybe we should be more explicit about
being normative.
 
Grynberg: courts of appeals are much more comfortable with
district courts making those kinds of calls than w/agencies. Example: TTAB’s
Pretzel Crisps decision: Fed. Cir. says that TTAB shouldn’t have discounted the
empirical evidence/surveys, even though the TTAB deemed them unpersuasive and
self serving.
 
Dinwoodie: w/o empirical tools, you either end up w/judge as
your empirical proxy or judge as
normative decider. Which is the consequence of rejecting surveys? 

The extent to which courts appear more persuaded by individual entirely
unrepresentative witnesses than scientifically conducted but imperfect surveys:
why?  Maybe it’s procedural—cross-examination,
understanding the thought process of an unrepresentative consumer.  (Or maybe it’s just a standard cognitive bias
towards vivid examples.)
 
Jacob: real consumers in the box are perfectly normal
people. Seeing them makes it easy to believe them if they seem competent.
 
Dinwoodie: getting a grounding in empirics could be
presented to judges and policymakers in other fora; wouldn’t need to be
presented in particular cases but as part of educating decisionmakers—part of
our role as academics.
 
Weatherall: psychologists can answer questions of perceived
similarity; don’t like to talk about confusion: would be more modest in that it
would be one piece of evidence that could go into the overall analysis.
 
Burrell: thinking through what we mean by unrepresentative:
are there reasons to think that the ways in which groups differ matter to the perception/confusion
question?  We too readily assume that
they do. 
 
Jennifer Davis: maybe no empirical evidence is ever
probative—different approaches include psychologists, polling, neurologists,
linguists.  They might all have different
opinions. No scientific answer to any of these questions.  Courts were never dependent on
polls/empirical evidence—from 19th c. to now.  Rare exceptions, but mostly decisions of
judges for both registered and unregistered marks.
 
Michael Handler: Maybe the most that can be hoped for is to
put info in front of judges outside of litigation, in a way that isn’t
necessarily intended to impact particular outcomes.  Practical impact on bureaucracy/TM
offices?  Offices may see their roles as
faciltators, not gatekeepers: goal is to smooth path to registration. Perhaps
they’d respond better to consumer evidence suggesting that confusion is less likely.
Work on rules of thumb on similarity may also be more readily accommodated by
registration system, for example in manuals of examining procedure, that can
then be used in decisions.  For example,
they do that kind of analysis of surnames in Australia.
 
Weatherall: There is a strain in the work where particularly
Jennifer Berg who does word similarity work has been trying to produce a kind
of rating of words.  Trying to see
whether there are tests that would give us a kind of rule of thumb rating and
whether that can be applied in the brand context.
 
Austin: what do you do with context in this kind of
research?  Someone who is in a hurry, for
example, is just paying less attention. Quality of decisionmaking/perception is
a function of emotional state. Payday loans = decisions made under stress.
 
Burrell: psychologists don’t even want to talk about
confusion, so it won’t help answer the ultimate question.
 
Dinwoodie: CTM context—is there homogenization of European
culture that would map onto Davis’ observations about homogenization of
imagined British consumer/decline of class differences in imaginaries?
 
Level of comfort w/acquired distinctiveness surveys—why?
Some of the same problems would seem to exist as in confusion cases.  Perhaps difference is forward-looking v.
backward-looking.  Maybe confusion looks
more normative as a question than empirical and secondary meaning/acquired
distinctiveness looks more empirical, despite normative elements. 
 
Kur: it’s knowledge v. reaction.
 
Dinwoodie: consumer reacts to sight of bottle by recognizing—why
is that different? [Maybe b/c we still have another bite at the apple in
constraining rights by defining the scope of rights later on, even if we accept
that a sign is a mark by finding secondary meaning.]
 
Davis: Maybe there’s homogenization in the sense of a
decline of a servant class. Marks & Spencers v. Interflora: J. Arnold said
he was computer literate and would understand keywords but doesn’t think
average consumer would understand. Seems pretty much the same as pre-Directive
paternalism.  Not a hard & fast
rule.  Judges are not always well
informed.
 
Dinwoodie: maybe you’d approach a CTM case differently than
an EU case.
 
Davis: it’s helpful for CTM people to think of an average
consumer b/c otherwise their task is basically impossible.
 
Senftleben: You get a second bite at the apple with
accepting acquired distinctiveness. Less frightening for a judge to accept
acquired distinctiveness by survey; still doesn’t let someone else determine
the outcome of the confusion case.  [RT:
exactly what I was trying to say.]
 
Dinwoodie: as long as we emphasize to judges that it’s not
outcome determinative, why would it be different?
 
Senflteben: it’s harder perhaps to manipulate the survey:
you show a picture and ask if they recognize something.  If they can name a brand, that’s secondary
meaning.
 
Mid-point summary:   Catherine
Ng: Notional consumer: we assume the consumer is rational, reasonably well
informed, fluent in 24 languages (Jacob disagrees but Dinwoodie agrees).  Unrepresented consumers: those who actually
prefer lookalike products/benefit from initial interest confusion. Gaps and
convergences between image and real consumers. 
Substantial portion?  Majority?
Those questions also continue to arise. 
And finally the real individual consumer—not necessarily a
representative sample.  The legislature
didn’t necessarily have every single consumer in mind when legislating, but
they come to the fore in witness statements, and also when judges say that they
can make up their own minds without expert/survey evidence: a sample of
one. 

UK Gov’t studied desirability of registry: in 1862, law of passing off was
found to be very clumsy for traders, esp. those which had to trade
internationally in countries w/ a registration system.  Hope was to be inexpensive and certain.  Trader wishes to know what he can/can’t do.
 
Martin Senftleben: Though we seem to like the general idea
of surveys, we also agree that too much can be bad.  Also, this concerns all different areas of TM
law: secondary meaning, confusion, and dilution (link established by the
consumer, and damage in the form of changed economic behavior, which is almost
impossible to show through survey evidence). 
Maybe the project of finding empirical evidence is a threat to TM
law.  You can ask empirical questions as
a vehicle to find the right questions—a link to reality.  We can’t guarantee that survey results will
affect the outcome.  Solve the perfection
problem: if the role of empirical evidence is only to point to the right
questions, then they need not be perfect in all circumstances.
 
Ilanah Simon-Fhima: Challenged TM owners to prove
dilution/blurring with empirical evidence; leads to shut down.  In the US, Victoria’s Secret and TDRA as a
result.  TM owners are running scared
from the challenge.
 
RT: As much as I want courts to pay more attention to
general psychological/consumer evidence, I find myself in agreement w/Sir Robin
that similarity research will not be able to bridge the gap to the legal
question of confusion. How similar? Do we look at installed base of cases found
confusing in the past, but where the confusion findings were not based on
empirics? Confusion examples where there was actual confusion evidence? Context
matters too: TRAVATAN/XALATAN had a very high “similarity score” as calculated
by the plaintiff’s confusion expert in a case I worked on, versus
MEXICAN/AMERICAN, with an even higher confusion score.  But even if you were confident about your
comparator set, and even if your P and D get a very high similarity score—high
enough to place it well within the boundaries of marks that have been found
confusing in past cases—the next problem you face is comparing it to the entire
universe of signs that might be compared. 
As it turns out, if there’s any false positives at all in your test, the
false positives will so vastly overwhelm the true positives that the test
becomes useless.  Now there are things
you can do about this, like narrowing the set by the fact that people have
bothered to litigate about it … but they reduce the utility of bringing in this
research in the first place.
 
Heymann: are we trying to predict harm or prevent it?  Shaping might lead us to different policies.
 
Andrew Griffiths: We’ve been talking about cognitive
features, attentiveness—but what about knowledge? Specialist/niche knowledge.  We are willing to assume literacy, but what
about cultural literacy?  Maybe the
average consumer is now less likely to regard Homer and Sophocles as
conceptually similar and more likely to see Homer and Bart as related.  When popular culture becomes niche: does the
average consumer know Breaking Bad or not?
 
Betty’s Kitchen Coronation Street: registrar divided
consumers into 3 categories: aware of soap opera Coronation Street; aware of character Betty; and not aware at all.
First group would be likely confused; second group less likely to be accused;
third group didn’t matter.  Because one significant
group would be likely to confused, registration rejected.
 
Dinwoodie: whether similarity is a separate threshold—he’s
never thought it could be because similarity has to be related to
something.  Is an apple similar to an
orange?  Well, it depends. But can
similarity can be refigured so that it is more useful to the TM endeavor?
 
Weatherall: when psychologists talk about similarity, they’re
trying to rate relative similarity—class of goods/services and look how similar
marks across that group tend to be—is this mark more or less similar than those
marks tend to be from each other.
 
Ansgar Ohly: PHOSITA: A reflective device partly informed by
reality but also by what we want to keep free. Similar in TM, where we grant
broader scope to marks with higher degree of distinctiveness. Average consumer
is not detached from reality, but also not empirical in the sense that a
certain percentage matters.  We look at
rules that are informed by policy.
 
Bently: research topic: do judges think they’re making
empirical decisions? Even if we have a consensus that they’re making normative
determinations.
 
Davis: there’s no such thing as a normative approach. Things
happen and we label them as normative.
 
Bently: maybe they think they’re making factual
determinations and we don’t. Maybe “is this empirical?” isn’t an interesting
question, and “what work is the ‘average consumer’ doing?” is a more interesting
one. Socialization: when I started doing this work, I couldn’t understand the relation
between the legal rules on the page and the conclusions judges were reaching. I
had to be socialized into learning what made a close case. Average consumer is
part of devices used in socializing lawyers into applying standards we believe
are relatively consistent.
 
Graeme Austin: Take the Champion Spark Plugs case in the US:
SCt talks about consumers as interested in the original brand, but also interested
in getting cheap used versions. Why is that an empirical question/why frame it
that way instead of “we want a vibrant aftermarket”? What are we more
comfortable with: trial judges calibrating balance in the aftermarket, or using
the rhetoric/traditions of language that help the institutional actors think
through the problems.  Why is it a
problem that we use the consumer to avoid normative questions? Is it because
sometimes we don’t like the normative outcomes? (For example, the doctrine that
variances, including variance in warranty, results in grey market goods
infringing is ridiculous in many cases where the consumer knows quite well what
she’s getting; talking about confusion gets us away from the question of what
aftermarket we want to have.) 
 
McGeveran: administrative costs matter (as Bob Bone would say).  Accuracy versus cost of reaching a decision,
it’s pretty easy to tip over the point of overspending on finding the right
consumers. The nightmare of market definition: consumer has to be followed, at
least implicitly, by “of X.”  Consumer of
snacks v. chocolate v. this brand can become a pitched battle.  Ends up being a fight about knowledge
base/assumptions courts can make about them. The more unstandardized you make
the consumer, the higher you raise the stakes in that difficult market
determination, and that makes him nervous.
 
Internet user as something distinct from the consumer: he thinks
that’s crazy.  Understands the judicial
impulse to set apart a new technological context, but it’s a different
iteration of all the many different experiences consumers have—they are
different in different countries, different kinds of stores; bad mistake to
create a distinct doctrinal line for this particular situation. As the internet
becomes more commonplace, becomes increasingly absurd to think of it as
different in kind.  If it is justified to
think about the internet consumer as categorically different, not clear why
there’s not a panoply of different kinds of consumers.  (There already is!)
 
Litman: Internet consumer got split off b/c judges and
lawyers found the internet scary and confusing. We got to see something we
haven’t seen anywhere: the consumer got smarter, more sophisticated and more savvy
very quickly. In ten years we got from easy initial interest confusion to “consumers
understand AdWords.” Without discussing the internet specifically, it would
have taken much longer for consumers to get smart.  Good development in the law has resulted,
including for likely confusion.
 
McGeveran: temporary measure for something new makes more
sense; but we continue to have cases treating internet users differently from
ordinary users, and cases that don’t respect dynamism.
 
Litman: it’s only been 15 years; give it time. It’s not
consistent intellectually to say we’re only going to make these consumers
special, but it helped the corner of the law instead of dragging the rest of
the doctrine with it as it almost did in the pre-dilution era involving
cybersquatting.
 
Grynberg: leaves doctrinal detritus of domain names—the rules
for them are just different.
 
RT: There is research showing that consumers are more
credulous/less able to make distinctions in new modes of communication. That
would support a new medium rule.  And we
already distinguish between consumers in the checkout line at the grocery store
and consumers buying a car.
 
McGeveran: we use the sophistication/attention of those
consumers as one consideration in the multifactor test not the be-all and end-all.
 
RT: I don’t think so. It’s that the internet cases
disproportionately involve comparative advertising, and that’s why you see a
generalized “let’s be sensible about this” treatment relatively more than in
non-internet cases.
 
Ng: entire professions dedicated to studying who these
consumers are. Marketers have target markets. 
Is this a way of us as lawyers trying to replicate that upstream
knowledge?
 
Dinwoodie: see in Europe in keyword cases the AG opinion: we
just don’t want to adopt a rule that would kill Google’s advertising
revenue.  This normative opinion may be
right, but do we want it everywhere/a rule to protect new technologies?
 
Davis: So much depends on the assumption of rational
processing of information by consumers. But the internet features algorithms
that give consumers information they may not be looking for; that’s not
something that happens as readily when you go into a physical store.
 
Kur: internet cases are different in that the dynamic
element/speed of consumer adaptation is much more present.  Normally if you make a reliable empirical
test of how consumers react to a particular offer, then that would still be
reliable when the case reaches the Supreme Court, but in internet case by the
time it reaches the Supreme Court the behavior of consumers (and of sellers!)
may already have changed. 
 
Return to suggestion of asking judges and people in TM
offices what they believe they are doing. Germany: judges would say they are
making a normative assessment b/c confusion is normative, but they take reality
into account so it is a mixed notion.  TM
examiners would say “we apply the law and go through the factors we are
required to consider.”
 
Simon-Fhima: TM office in UK moved from guardian of register
to serving customers—it’s up to other market participants to guard their own
interests.
 
Consumers of pharmaceuticals: either doctors who are very
educated, or consumers who are consuming products and care very much about
their health.  But the application of
this idea seems to be less robust: consider how the analysis of similarity goes—any
one pharmaceutical is treated as almost identical to any other pharmaceutical,
which is at odds with the supposed definition of the average consumer they’re
using in the EU.
 
Grynberg: I always thought of the internet as prompting
recall of normative goals of TM in light of empirical situation: a game of
analogy in the late 1990s. Is a metatag like a billboard or like stocking goods
near branded goods in a store?  Davis
suggests that the internet is different because you can do a better job of
giving consumers a substitute/giving them something they didn’t specifically
ask for [RT: though as compared to the impulse buys at the supermarket, I
wonder if that’s so], but so what?  You
can ask whether point of sale confusion/its absence ought to matter.
 
Stacey Dogan: US law is explicitly normative in its focus on
intent.  Unfair advantage comes in
through the back door: if D is intentionally trying to evoke the P that cuts
against it even in absence of intent to confuse. [RT: but only in some cases!
Plenty of cases say the opposite!]
 
Elderly people rely on color/shape of drugs; this is used as
justification for copying for generics—we want to make sure that people will
take their medicine!  You can manipulate
judicial instincts to limit scope of TM rights.
 
Marco Ricolfi: different TM contexts—border measures/special
customs provisions exist. It is for customs officials to step in w/out having
to exercise judgment if it’s clear there is a violation. That could tell us how
normative/empirical a judgment is.  (RT:
I’m suing the government in the US to find out more about what they seize as
counterfeit, which might provide some insights on that.)
 
Dirk Visser: L’Oreal
also considers intent to free ride—he believes intent is a determining factor
in EU cases as well, though it’s not officially part of the confusion analysis.

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Trademark scholars roundtable: establishing the features of the consumer

Posted on June 29, 2015 by rtushnet
Session 2: Establishing the Features of the Consumer
 
The UK courts have in recent years been quite explicit that the consumer is a normative construct, a fiction, and a benchmark. What does this mean? Does the modifier “average” or “reasonable” serve any useful purpose? Do courts elsewhere understand the concept of the consumer similarly? If the concept is “normative,” from which materials or domains is this normative construct pieced together? From where ought these norms to be derived? And why force those normative concerns into the vehicle of the consumer rather than vindicate them explicitly on their own terms? To what extent and in what trade mark institutions (legislators, administrative offices, courts etc.) is there a role for empirical understandings of the consumer? If there is a role for empirical understandings, how are these to be developed and used? Through surveys? Courts in several countries appear increasingly sceptical of survey evidence? Does this reflect (or will it cause) a different conception of the consumer? Through other forms of evidence from experts in marketing, economic, behavioural sciences? If there is a role for empirical understandings within a normative framework, what is the relationship between empirical and normative assessments? Must one always trump the other? Does a “trump” only work in one direction (e.g., in favour of trade mark owner or third party user)? Does this vary by institutional setting? Is the consumer construct different for different categories of trademark subject matter—e.g., for verbal versus visual marks?
 
Introduction:               Jessica Litman: US judges and lawyers think what they’re doing is directed at what actual consumers perceive, but the Q is how you figure that out. Corollary: consumers differ by product. Real consumers don’t distinguish TMs from products. Trying to figure out what the consumer is confused about when perceptions don’t track legal categories is challenging. US judges reject surveys a lot, maybe even more and more, not because they think surveys aren’t relevant but b/c they think the surveys don’t reflect empirical reality. They are lawyers and know what they’d do if they were litigating; getting a realistic survey is not good litigation strategy. Some judges are trying to figure out policy for competitive space; starting to see move away from multifactor likely confusion test, especially in the 7th Circuit—this is or isn’t going to confuse the relevant consumer.  Sense is that’s also cropping up in false advertising cases—doctrinal categories that require surveys & judges worm their way out of those categories with, e.g., falsity by necessary implication.
 
Are there ways to generate more reliable empirical evidence of consumers’ impressions? Independent surveyor is interesting idea.  If consumers can’t tell difference b/t product and brand, would we be better served by a more careful definition of what sort of confusion ought to be actionable?
 
Kimberlee Weatherall: Must be frustrating to have judge ignore evidence on which you would rely as a business matter. When you know you have to convince the judges about closeness, and that’s what it takes to win, that inherently leads to uncertainty that makes settlement more difficult; hard to predict how judges will see marks. Intellectually dishonest to reject surveys: expect level of perfection from surveys not expected from anything else.  (Preach!)  Other experts; witnesses who testify they were confused, as if witness prep didn’t happen.
But TM law doesn’t ask empirically testable questions: a consumer with a fictional memory for the mark as registered, and then we ask about what the consumer will think of the product’s origin when she sees it. But lots of times the consumer isn’t thinking about product origin at all, but about what taste of ceral they want or what the 3-year-old is pulling off the shelf.  Fictional memory, imaginary state of mind, imagined shopping experience—and then we complain that we don’t have ecologically valid evidence! We’re not asking testable questions; we assume in the law a kind of decisionmaking that cognitive scientists don’t agree w/ in their model of consumer decisionmaking: conscious and unconscious elements of choice that vary across circumstances.
 
Courts have rejected general testimony about consumer behavior as applied to specific circumstances; not good. She’s been working with cognitive psychologists on word similarity, memory, etc. Asking psychologists how to test some of our assumptions about marks—e.g, beginning of words mattering most; consumers focus on most distinctive part of mark and ignore generic/descriptive elements.  Process is difficult b/c we don’t speak the same language, and they break down the process of consumer decisionmaking differently. We wrongly tell researchers the question to ask and we perhaps should give them scenarios and ask what could be empirically tested: get them to design surveys. But raises practical Q: will a court accept such abstracted testimony as relevant?  (RT: by ordinary relevance standards it really should be accepted!)
 
Primary Discussant:      Annette Kur: Consider whether we want to influence how consumers react w/law—miss out on that if we concentrate on making surveys function as well as surveys can function.  We can’t be under the illusion that we can get all we’re interested in doing into one litigation.  Complexity of problem might justify giving up trying to get empirical evidence in any particular case, except for secondary meaning.
 
Registration: if it’s difficult to bring in empirical evidence to litigation, even more impossible when we talk about registration. But we still need rules.  Relative grounds for refusal: attempt to get as close as possible to actual consumer reaction is illusory and simply should be abandoned.
 
Robert Jacob: Doubts about so-called experts. People who come along and tell you they’ll give expert testimony on royalty rates etc. are legion, but they’re rubbish. It ought to be true for TMs: if it’s that complicated, you haven’t got a TM case.
 
David Llewellyn: Weatherall’s point about lost bearings w/reality is worth reinforcing. He’d hate having a decent judge abdicate responsibility to experts, who can be appalling. Generalists should have the nerve to make their own judgments.  SMEs: all this survey evidence can be achieved by Pepsi and Coke, but that’s an expensive area; we can all design fantastic ways of getting answers with an open checkbook, but how does the small business w/ a registered TM actually compete? We don’t have contingency fees. Cross-examination and real witnesses are what’s important for a case—real differences in procedure matter, such as presence of contingency fees. 
 
Weatherall: there are empirical claims you can make as a general matter, such as whether the beginnings of words are most important. Also one reason for the huge expense is b/c courts have set the bar so high. A cheap internet survey may give you more evidence than you had.
 
Llewellyn: If you pay peanuts you get monkeys; what kind of legal system do you want to have?
 
McGeveran: distinguish between consumer as beneficiary (as all law is supposed to benefit the public) versus consumer as determining scope/lodestar. A judge who doesn’t feel comfortable is being told this is a complex factual dispute with a multifactor test; that kind of judge—our greatest worry—will be tempted to use a survey. Maybe we should be more explicit about being normative.
 
Grynberg: courts of appeals are much more comfortable with district courts making those kinds of calls than w/agencies. Example: TTAB’s Pretzel Crisps decision: Fed. Cir. says that TTAB shouldn’t have discounted the empirical evidence/surveys, even though the TTAB deemed them unpersuasive and self serving.
 
Dinwoodie: w/o empirical tools, you either end up w/judge as your empirical proxy or judge as normative decider. Which is the consequence of rejecting surveys? 
The extent to which courts appear more persuaded by individual entirely unrepresentative witnesses than scientifically conducted but imperfect surveys: why?  Maybe it’s procedural—cross-examination, understanding the thought process of an unrepresentative consumer.  (Or maybe it’s just a standard cognitive bias towards vivid examples.)
 
Jacob: real consumers in the box are perfectly normal people. Seeing them makes it easy to believe them if they seem competent.
 
Dinwoodie: getting a grounding in empirics could be presented to judges and policymakers in other fora; wouldn’t need to be presented in particular cases but as part of educating decisionmakers—part of our role as academics.
 
Weatherall: psychologists can answer questions of perceived similarity; don’t like to talk about confusion: would be more modest in that it would be one piece of evidence that could go into the overall analysis.
 
Burrell: thinking through what we mean by unrepresentative: are there reasons to think that the ways in which groups differ matter to the perception/confusion question?  We too readily assume that they do. 
 
Jennifer Davis: maybe no empirical evidence is ever probative—different approaches include psychologists, polling, neurologists, linguists.  They might all have different opinions. No scientific answer to any of these questions.  Courts were never dependent on polls/empirical evidence—from 19th c. to now.  Rare exceptions, but mostly decisions of judges for both registered and unregistered marks.
 
Michael Handler: Maybe the most that can be hoped for is to put info in front of judges outside of litigation, in a way that isn’t necessarily intended to impact particular outcomes.  Practical impact on bureaucracy/TM offices?  Offices may see their roles as faciltators, not gatekeepers: goal is to smooth path to registration. Perhaps they’d respond better to consumer evidence suggesting that confusion is less likely. Work on rules of thumb on similarity may also be more readily accommodated by registration system, for example in manuals of examining procedure, that can then be used in decisions.  For example, they do that kind of analysis of surnames in Australia.
 
Weatherall: There is a strain in the work where particularly Jennifer Berg who does word similarity work has been trying to produce a kind of rating of words.  Trying to see whether there are tests that would give us a kind of rule of thumb rating and whether that can be applied in the brand context.
 
Austin: what do you do with context in this kind of research?  Someone who is in a hurry, for example, is just paying less attention. Quality of decisionmaking/perception is a function of emotional state. Payday loans = decisions made under stress.
 
Burrell: psychologists don’t even want to talk about confusion, so it won’t help answer the ultimate question.
 
Dinwoodie: CTM context—is there homogenization of European culture that would map onto Davis’ observations about homogenization of imagined British consumer/decline of class differences in imaginaries?
 
Level of comfort w/acquired distinctiveness surveys—why? Some of the same problems would seem to exist as in confusion cases.  Perhaps difference is forward-looking v. backward-looking.  Maybe confusion looks more normative as a question than empirical and secondary meaning/acquired distinctiveness looks more empirical, despite normative elements. 
 
Kur: it’s knowledge v. reaction.
 
Dinwoodie: consumer reacts to sight of bottle by recognizing—why is that different? [Maybe b/c we still have another bite at the apple in constraining rights by defining the scope of rights later on, even if we accept that a sign is a mark by finding secondary meaning.]
 
Davis: Maybe there’s homogenization in the sense of a decline of a servant class. Marks & Spencers v. Interflora: J. Arnold said he was computer literate and would understand keywords but doesn’t think average consumer would understand. Seems pretty much the same as pre-Directive paternalism.  Not a hard & fast rule.  Judges are not always well informed.
 
Dinwoodie: maybe you’d approach a CTM case differently than an EU case.
 
Davis: it’s helpful for CTM people to think of an average consumer b/c otherwise their task is basically impossible.
 
Senftleben: You get a second bite at the apple with accepting acquired distinctiveness. Less frightening for a judge to accept acquired distinctiveness by survey; still doesn’t let someone else determine the outcome of the confusion case.  [RT: exactly what I was trying to say.]
 
Dinwoodie: as long as we emphasize to judges that it’s not outcome determinative, why would it be different?
 
Senflteben: it’s harder perhaps to manipulate the survey: you show a picture and ask if they recognize something.  If they can name a brand, that’s secondary meaning.
 
Mid-point summary:   Catherine Ng: Notional consumer: we assume the consumer is rational, reasonably well informed, fluent in 24 languages (Jacob disagrees but Dinwoodie agrees).  Unrepresented consumers: those who actually prefer lookalike products/benefit from initial interest confusion. Gaps and convergences between image and real consumers.  Substantial portion?  Majority? Those questions also continue to arise.  And finally the real individual consumer—not necessarily a representative sample.  The legislature didn’t necessarily have every single consumer in mind when legislating, but they come to the fore in witness statements, and also when judges say that they can make up their own minds without expert/survey evidence: a sample of one. 
UK Gov’t studied desirability of registry: in 1862, law of passing off was found to be very clumsy for traders, esp. those which had to trade internationally in countries w/ a registration system.  Hope was to be inexpensive and certain.  Trader wishes to know what he can/can’t do.
 
Martin Senftleben: Though we seem to like the general idea of surveys, we also agree that too much can be bad.  Also, this concerns all different areas of TM law: secondary meaning, confusion, and dilution (link established by the consumer, and damage in the form of changed economic behavior, which is almost impossible to show through survey evidence).  Maybe the project of finding empirical evidence is a threat to TM law.  You can ask empirical questions as a vehicle to find the right questions—a link to reality.  We can’t guarantee that survey results will affect the outcome.  Solve the perfection problem: if the role of empirical evidence is only to point to the right questions, then they need not be perfect in all circumstances.
 
Ilanah Simon-Fhima: Challenged TM owners to prove dilution/blurring with empirical evidence; leads to shut down.  In the US, Victoria’s Secret and TDRA as a result.  TM owners are running scared from the challenge.
 
RT: As much as I want courts to pay more attention to general psychological/consumer evidence, I find myself in agreement w/Sir Robin that similarity research will not be able to bridge the gap to the legal question of confusion. How similar? Do we look at installed base of cases found confusing in the past, but where the confusion findings were not based on empirics? Confusion examples where there was actual confusion evidence? Context matters too: TRAVATAN/XALATAN had a very high “similarity score” as calculated by the plaintiff’s confusion expert in a case I worked on, versus MEXICAN/AMERICAN, with an even higher confusion score.  But even if you were confident about your comparator set, and even if your P and D get a very high similarity score—high enough to place it well within the boundaries of marks that have been found confusing in past cases—the next problem you face is comparing it to the entire universe of signs that might be compared.  As it turns out, if there’s any false positives at all in your test, the false positives will so vastly overwhelm the true positives that the test becomes useless.  Now there are things you can do about this, like narrowing the set by the fact that people have bothered to litigate about it … but they reduce the utility of bringing in this research in the first place.
 
Heymann: are we trying to predict harm or prevent it?  Shaping might lead us to different policies.
 
Andrew Griffiths: We’ve been talking about cognitive features, attentiveness—but what about knowledge? Specialist/niche knowledge.  We are willing to assume literacy, but what about cultural literacy?  Maybe the average consumer is now less likely to regard Homer and Sophocles as conceptually similar and more likely to see Homer and Bart as related.  When popular culture becomes niche: does the average consumer know Breaking Bad or not?
 
Betty’s Kitchen Coronation Street: registrar divided consumers into 3 categories: aware of soap opera Coronation Street; aware of character Betty; and not aware at all. First group would be likely confused; second group less likely to be accused; third group didn’t matter.  Because one significant group would be likely to confused, registration rejected.
 
Dinwoodie: whether similarity is a separate threshold—he’s never thought it could be because similarity has to be related to something.  Is an apple similar to an orange?  Well, it depends. But can similarity can be refigured so that it is more useful to the TM endeavor?
 
Weatherall: when psychologists talk about similarity, they’re trying to rate relative similarity—class of goods/services and look how similar marks across that group tend to be—is this mark more or less similar than those marks tend to be from each other.
 
Ansgar Ohly: PHOSITA: A reflective device partly informed by reality but also by what we want to keep free. Similar in TM, where we grant broader scope to marks with higher degree of distinctiveness. Average consumer is not detached from reality, but also not empirical in the sense that a certain percentage matters.  We look at rules that are informed by policy.
 
Bently: research topic: do judges think they’re making empirical decisions? Even if we have a consensus that they’re making normative determinations.
 
Davis: there’s no such thing as a normative approach. Things happen and we label them as normative.
 
Bently: maybe they think they’re making factual determinations and we don’t. Maybe “is this empirical?” isn’t an interesting question, and “what work is the ‘average consumer’ doing?” is a more interesting one. Socialization: when I started doing this work, I couldn’t understand the relation between the legal rules on the page and the conclusions judges were reaching. I had to be socialized into learning what made a close case. Average consumer is part of devices used in socializing lawyers into applying standards we believe are relatively consistent.
 
Graeme Austin: Take the Champion Spark Plugs case in the US: SCt talks about consumers as interested in the original brand, but also interested in getting cheap used versions. Why is that an empirical question/why frame it that way instead of “we want a vibrant aftermarket”? What are we more comfortable with: trial judges calibrating balance in the aftermarket, or using the rhetoric/traditions of language that help the institutional actors think through the problems.  Why is it a problem that we use the consumer to avoid normative questions? Is it because sometimes we don’t like the normative outcomes? (For example, the doctrine that variances, including variance in warranty, results in grey market goods infringing is ridiculous in many cases where the consumer knows quite well what she’s getting; talking about confusion gets us away from the question of what aftermarket we want to have.) 
 
McGeveran: administrative costs matter (as Bob Bone would say).  Accuracy versus cost of reaching a decision, it’s pretty easy to tip over the point of overspending on finding the right consumers. The nightmare of market definition: consumer has to be followed, at least implicitly, by “of X.”  Consumer of snacks v. chocolate v. this brand can become a pitched battle.  Ends up being a fight about knowledge base/assumptions courts can make about them. The more unstandardized you make the consumer, the higher you raise the stakes in that difficult market determination, and that makes him nervous.
 
Internet user as something distinct from the consumer: he thinks that’s crazy.  Understands the judicial impulse to set apart a new technological context, but it’s a different iteration of all the many different experiences consumers have—they are different in different countries, different kinds of stores; bad mistake to create a distinct doctrinal line for this particular situation. As the internet becomes more commonplace, becomes increasingly absurd to think of it as different in kind.  If it is justified to think about the internet consumer as categorically different, not clear why there’s not a panoply of different kinds of consumers.  (There already is!)
 
Litman: Internet consumer got split off b/c judges and lawyers found the internet scary and confusing. We got to see something we haven’t seen anywhere: the consumer got smarter, more sophisticated and more savvy very quickly. In ten years we got from easy initial interest confusion to “consumers understand AdWords.” Without discussing the internet specifically, it would have taken much longer for consumers to get smart.  Good development in the law has resulted, including for likely confusion.
 
McGeveran: temporary measure for something new makes more sense; but we continue to have cases treating internet users differently from ordinary users, and cases that don’t respect dynamism.
 
Litman: it’s only been 15 years; give it time. It’s not consistent intellectually to say we’re only going to make these consumers special, but it helped the corner of the law instead of dragging the rest of the doctrine with it as it almost did in the pre-dilution era involving cybersquatting.
 
Grynberg: leaves doctrinal detritus of domain names—the rules for them are just different.
 
RT: There is research showing that consumers are more credulous/less able to make distinctions in new modes of communication. That would support a new medium rule.  And we already distinguish between consumers in the checkout line at the grocery store and consumers buying a car.
 
McGeveran: we use the sophistication/attention of those consumers as one consideration in the multifactor test not the be-all and end-all.
 
RT: I don’t think so. It’s that the internet cases disproportionately involve comparative advertising, and that’s why you see a generalized “let’s be sensible about this” treatment relatively more than in non-internet cases.
 
Ng: entire professions dedicated to studying who these consumers are. Marketers have target markets.  Is this a way of us as lawyers trying to replicate that upstream knowledge?
 
Dinwoodie: see in Europe in keyword cases the AG opinion: we just don’t want to adopt a rule that would kill Google’s advertising revenue.  This normative opinion may be right, but do we want it everywhere/a rule to protect new technologies?
 
Davis: So much depends on the assumption of rational processing of information by consumers. But the internet features algorithms that give consumers information they may not be looking for; that’s not something that happens as readily when you go into a physical store.
 
Kur: internet cases are different in that the dynamic element/speed of consumer adaptation is much more present.  Normally if you make a reliable empirical test of how consumers react to a particular offer, then that would still be reliable when the case reaches the Supreme Court, but in internet case by the time it reaches the Supreme Court the behavior of consumers (and of sellers!) may already have changed. 
 
Return to suggestion of asking judges and people in TM offices what they believe they are doing. Germany: judges would say they are making a normative assessment b/c confusion is normative, but they take reality into account so it is a mixed notion.  TM examiners would say “we apply the law and go through the factors we are required to consider.”
 
Simon-Fhima: TM office in UK moved from guardian of register to serving customers—it’s up to other market participants to guard their own interests.
 
Consumers of pharmaceuticals: either doctors who are very educated, or consumers who are consuming products and care very much about their health.  But the application of this idea seems to be less robust: consider how the analysis of similarity goes—any one pharmaceutical is treated as almost identical to any other pharmaceutical, which is at odds with the supposed definition of the average consumer they’re using in the EU.
 
Grynberg: I always thought of the internet as prompting recall of normative goals of TM in light of empirical situation: a game of analogy in the late 1990s. Is a metatag like a billboard or like stocking goods near branded goods in a store?  Davis suggests that the internet is different because you can do a better job of giving consumers a substitute/giving them something they didn’t specifically ask for [RT: though as compared to the impulse buys at the supermarket, I wonder if that’s so], but so what?  You can ask whether point of sale confusion/its absence ought to matter.
 
Stacey Dogan: US law is explicitly normative in its focus on intent.  Unfair advantage comes in through the back door: if D is intentionally trying to evoke the P that cuts against it even in absence of intent to confuse. [RT: but only in some cases! Plenty of cases say the opposite!]
 
Elderly people rely on color/shape of drugs; this is used as justification for copying for generics—we want to make sure that people will take their medicine!  You can manipulate judicial instincts to limit scope of TM rights.
 
Marco Ricolfi: different TM contexts—border measures/special customs provisions exist. It is for customs officials to step in w/out having to exercise judgment if it’s clear there is a violation. That could tell us how normative/empirical a judgment is.  (RT: I’m suing the government in the US to find out more about what they seize as counterfeit, which might provide some insights on that.)
 
Dirk Visser: L’Orealalso considers intent to free ride—he believes intent is a determining factor in EU cases as well, though it’s not officially part of the confusion analysis.
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Trademark scholars roundtable: roles for the consumer in TM

Posted on June 29, 2015 by rtushnet
Seventh Trademark Scholars Roundtable: The Construction of
the Consumer in Trade Mark Law
 
Session 1: Roles for the Consumer in Trade Mark Law
What role does the “consumer” (whether “average” or
“reasonable” or otherwise) play in trade mark law? Does consideration of the
consumer simply help explain trademark law at some general level? Is the
consumer useful merely to help legislators or policymakers shape the direction
of trademark law? Is consideration of the consumer useful purposively to help
determine outcomes in particular cases? Or is the trope of the consumer largely
counterproductive? How should the answers to these questions inform doctrine?
Are some doctrines more suited for analysis through the lens of the consumer
than others? Importantly, are there trade mark doctrines where the consumer
should have no (or only a limited) role in determining outcomes? If so, why,
and what are they?
 
Introduction:   Jennifer
Davis: Continuity and change with the average consumer in European law.
Continuity: there’s a continuous question about the average consumer’s identity
and role.  Change: Many will accept that
the average consumer originally came via consumer protection law through
classical economics: utility-maximizing rational actor. The law itself, EU
Directive, also has a basis in neoclassical economics, most importantly so in
the fact that any TM can be registered as long as it is acting as a TM.  These include marks that are purely
descriptive in their startup; shapes; marks in limited supply such as
colors.  Key that the question of whether
the mark can be registered comes down to whether or not the average consumer
sees it as distinctive. Confusing similarity also comes down to the average
consumer.  Confusion inquiry also goes
back to whether court thinks average consumer will perceive marks as
particularly distinctive.  It’s the
perceived views of the average consumer that delimit the amount of protection
the EU will give to the mark. If TM is property, it is property defined by the
supposed perceptions of the average consumer.
 
So what about when we aren’t talking about market efficiency
but free riding or tarnishment?  Even
here, law looks for average consumer. 
ECJ has determined that tarnishment, dilution, free riding require the
average consumer to make a link between the two marks at issue, as a way of
delimiting extent of protection.
 
Change: It was not ever thus everywhere before the TM
directive.  Whether or not TM received
protection was seen as balancing act between TM owner, consumer, and
competitors. Use perceived views of consumer to determine distinctiveness and
confusion, but felt free to override consumer perception if in the public
interest to do so. Huge change from that. Descriptive signs; colors; shapes;
slogans: example is Kit-Kat/Have a Break. 
1983 applied to register Have a Break as separate TM, though used with
Kit-Kat name always. Court said it was irrelevant whether it was distinctive;
it’s a term other traders might wish to use/it’s not used as a TM and thus
can’t be registered. After the TM directive, went to CJEU, which said that a
sign always used with a mark could be registered; never asked the question of
public interest in leaving phrase free. Only question was whether average
consumer saw it as distinctive.
 
Free market principles of TM directive: sometimes courts
have tried to get around this by saying, for example, that average consumer is
less likely to see shapes or colors as TM and registration is therefore
resisted absent use.  Similar use of
average consumer to limit scope of dilution. CJEU has looked at the functions
of the mark, not just the origin function but investment, advertising,
communication function—tried to reinject interest of competitors as well as
consumers, by the back door.  Are we happy
for the courts to use their own judgments as they used to before?  Remember competitors who may get lost if we
only talk about average consumers.
 
Barton Beebe: Questions about consumers—very difficult to
focus on one area without crossing over into others.  What the average consumer is; consumer as
subject v. object of TM law.  Consumer as
limiting restraint on TM law v. consumer as alibi for expansion of TM. Consumer
as gauge of effective competition policy. 
Consumer as political/liberal subject. 
 
Who is the agent in TM law? 
Who is the active force, the subject, the thing engaging in
self-initiated conduct?  More appealing
to think of modern TM law as: the subject is the TM, searching for
consumers.  We are trying to restore the
human/the consumer: language is consumers constructing TM, not TM constructing
consumers.  Not commodities floating
around.
 
Europeans talked so much about average consumer, who speaks
24 languages—we know the consumer is not the moron in a hurry. More
sophisticated: not an illiterate or abnormally
stupid or ignorant.  Canadian case:
relevant consumers would not be confused into purchasing the wrong nuclear
reactor. That Homer Simpson might be confused is irrelevant.
 
Subject v. object: is TM law descriptive or normative? Is
consumer the empirical anchor, measure of all things such as distinctiveness or
confusion? Or is the consumer the object of TM law, who law tries to form or
inform?  Raise consumer sophistication or
allow it to decline? Maybe TM shouldn’t be as descriptive as it is in the US,
where we like surveys.  Maybe we should
accept some degree of confusion to achieve some other purpose. Consumer as
endogenous, not exogenous; and changeable by TM law. Underneath this is the Q
of circularity: is it true that the consumer internalizes implications of
various TM cases, such as US Boston
Hockey case or Arsenal in
UK/Europe: consumers are trained to think that association is only allowed
under licensing terms. But is that true? Does law have that much effect on
consumer perception?
 
Orthogonal to this: is the consumer essentially just a
source or target of general policy, and not any outcome under doctrine?  Dilution: does consumer perception
matter?  Schecter would have preferred
not, that it be an entirely grammatical/formal/linguistic theory that would
never ask about whether consumers perceived an association.
 
TM scholarship: consumer as restraint on TM v. alibi for
expansion—raised in readings. US: shift away from property concept of late 19th
c. towards a consumer protection justification arguably licensed a massive
expansion. Consumer is less a delimiter in US scholarship than the licensor of
expansion, b/c consumer perception is malleable when you have good counsel.
Also raises Q of materiality—seen as way to limit TM rights in the US, in
tradition of American false advertising law. Is confusion material to decision
to purchase? If not, won’t enjoin—but courts haven’t accepted it (largely).
 
Consumers and competition: one likes to dream of a shift in
US law towards a competition focus. TM isn’t about minimizing search costs, but
facilitating effective/socially optimal levels of competitions. TM
restrictionists see competition as a way to find a limiting principle not based
on vagaries of consumer protection. We should ask how the consumer would
interact w/ TM as competition policy as compared to consumer protection policy.
 
Consumers and politics: consumers are citizens. Average
consumer = average citizen. If we ascribe some degree of sophistication to
them, these people are mostly voters, so that’s the liberal subject. We
shouldn’t just think about competition policy but political ideology: how we
conceive of subject of modern marketplace/political systems. Jennifer Davis:
class consciousness among judges in English law of 19th c.—consumers
were like servants; judges distinguished among classes of people. Today,
instead, distinguish among classes of goods—looking
at the commodity instead.
 
Primary Discussant:     
Lionel Bently: Impact of registration on freedoms of other traders was
much more central to pre-harmonized regimes. If trader would have a legitimate
reason, without improper motive, to use a particular sign, then another trader
should not get a registration/monopoly—geographical marks, etc.  So trader is another actor we could consider
building a TM regime around. 
 
Trademark Directive/int’l legislation: term consumer isn’t
present; it’s the “public” who is protected against likely confusion. Public is
another concept around which we might build TM. What is at stake in the
collapse of the public into the consumer? 
Perhaps this notion of the citizen might be an alternative.
 
Weird things that go on in our use of “consumer” and in the
assumptions that it causes us to carry with it. 
Normally when we talk about consumer protection we’re concerned w/ a particular
category of consumers regarded as vulnerable: lack the same level of info as
businesses in the marketplace. Protection overcomes those perceived problems.
In TM law that’s not the same consumer at all—the purchaser of nuclear reactors
as well as of sweets.  But he’s concerned
that we carry with us a different set of assumptions about chief
characteristics of consumer—relative stupidity and vulnerability.
 
Distinction between consumer and citizen: Discomfort w/how
Qs of inherent distinctiveness are assessed b/c starting point is that we are
looking at signs that might qualify as TMs. 
ECJ tends to say that when you’re assessing whether something is devoid
of distinctive character/unregistrable, you use the POV of the consumer, and
descriptive things are likely descriptive v. distinctive. But things that
aren’t explicable to consumers are just assumed to be fodder for the TM
system.  Any attribute of a product that
can’t be explained immediately has the capacity to be a TM. That’s just weird.
That’s not how I look at the world—that anything I can’t understand is a TM. So
why should European TM law assume that the person who is looking at the world
is only using one spectrum?
 
Stacey Dogan: Relationship between search costs &
consumers & competition: reflect on the literature/case law that suggests
that reducing search costs in itself is the goal of TM.  Appropriate use of search costs is not as
goal in itself, but reducing search costs to promote competition. Better
information in markets should promote reduction in search costs, but if you
inhibit competition by granting rights you shouldn’t grant those rights.
 
Annette Kur: ECJ uses public interest concept, but divides
it into public interest of consumer in identifying products; public interests
of competitors to be able to use things they want to keep available. Slashed in
two. It should be one concept. Cardinal mistake: not allowing you to look into
the second prong except for descriptive signs. Needs to be in measurement of
scope of protection granted, which was thrown out in Adidas where they said that part two of public interest was
irrelevant in determining scope of mark. 
 
Competition also has a connection to the perception of those
who operate in the market. These people don’t function in the way we picture
the mind of the consumer to function. 
It’s not (just) about diminished search costs.  We need to know much more about what’s
happening in the impact of TM on consumers’ minds.  When people decide whether to buy, what’s
going on?
 
RT: For Dogan: I saw a very subtle equivocation there: if
you really believe that search costs is only a means toward the competitive end,
shouldn’t you in each case balance the decrease in search costs from granting
TM protection to a design with secondary meaning with the increase in monopoly
profits in cases in which the design also has functionality? Sometimes mild
functionality might not overwhelm the search cost benefit of protection as TM,
unless you’ve already created a hierarchy of things that help competition. (Bob
Bone says we should do exactly this case by case balancing in a paper, but I
think he’s wrong.)
 
Another possibility: the subtle influence of language.  Use of “the legislator” in Europe as
indicating a more plausible bearer of intent than the US “the legislature”
where the criticism that the legislature as a body does not regularly have a
coherent or consistent intent has of late been extremely influential, as we saw
in the recent health care case.  Use of
the “average consumer” may have similar effects in smushing down the variation
that we know exists—we want to see more understanding of variation and the
common lack of coherent consumer “intent” or “belief” in the way the law
assumes.  So maybe we should always be
talking about consumers!
 
Dev Gangjee: you have to have an abstract concept, and that
interacts with nationality.  Can we set
up a pre-large national registration system understanding of consumers?  How do courts initially/historically treat
the task of figuring out what large groups of consumers are likely to
think?  Property plus scale may force us
to reach for an abstraction.
 
Ilanah Simon-Phima: Everybody in European law talks a lot
about the average consumer, but nobody does anything about him or her.  Nontraditional marks: our average consumer
has stock reactions.  That may or may not
be correct, but it’s a cut and paste job: from sound to color etc. This is an
excuse. Blame things you don’t want to register on the consumer. Maybe
rejection on relative grounds is doing something similar—Community TMs, courts
take great pains to define average consumer in detail, but do nothing with it.
Paragraph about what the average consumer is, and then the court doesn’t come
back to it in the rest of the judgment.
 
Dirk Visser: agrees, the courts don’t like these TMs and
then just create a consumer who doesn’t recognize them. Normatively he agrees,
but they’re dressing up a normative decision in a factual way.
 
Robin Jacob: No, they’re right! Consumers are much more
straightforward than this discussion says. 
Consumers recognize smells but don’t think they’re TMs.  They love or hate smells/tastes, but not as
TMs.  The ECJ has used the right tool:
ordinary people don’t go by this to make buying decisions—buy because they
like, not b/c it comes from a particular brand.
 
Graeme Dinwoodie: If in fact you were wrong, why not say it
like that?  Why dress it up as empirical.
 
Jacob: we can do that too.
 
Visser: We should do that to recognize the public interest
in continued freedom.
 
Martin Senftleben: should we care that much about what we
call the consumer/public at all? In practice, there may not be much difference.
There are easy cases: Coca-Cola is a well-known mark, which you could know
without any survey.  In practice, three
surveys say yes and three say no depending on how the questions are designed
and analyzed.   “Consumer” is just an
argumentation tool. Asking who this consumer is overstretches the whole
concept.
 
Marco Ricolfi: A number of provisions in TM law refer to the
public.  (RT: Then consistent judicial
and academic resort to “consumer” is at least psychologically revealing!)  Underline that this is the case with immoral
signs.  Public bears the cost of the
immoral sign.
 
Freedom of movement of goods across national borders/unitary
system is an important value that also needs to be accounted for.
 
Beebe: What the implications are of speaking in plural
versus singular of consumers?  He saw a
European fascination w/average consumer as individual: fictional character,
asked whether this individual is
confused.  US law speaks much more of
populations of consumers; bell curve of sophistication. We might look at a
mean, but we ask what proportion of
this bell curve is confused.
 
Individual rhetoric = licensed to speak more normatively
about what this person should think. 
Americans with their bell curves are more prone to think of what people
actually do think.  Thatcherite slogan:
there is no such thing as society. This invariably creates a political effect.
 
Compelling idea: reasonable consumer is more rule-like than
standard-like, from Laura Heymann’s article.
 
Davis: what we think competition is differs across time. 
Average consumer fits w/neoliberal idea of avoiding as much market
regulation as you can.  Underlies current
TM law. Given US as archetypal neoclassical economics, it’s interesting that
there’s been more resistance to the individual consumer in the US. Why?
 
Austin: are we defining the middle through extreme cases?
What if we stripped the consumer out of the discourse and looked at judicial
calibration of competition in individual cases? Would we think that the courts
were capable of getting that right? Consumer as tool of perceived judicial
restraint.  Forensic realities of
individual cases: inability to get the kind of data that would allow us to look
at true consumer perception.  Plea for a workable approach to these kinds of
questions.  Fast-moving case law.
 
David Llewellyn: use of the word consumer is like success of
the word “piracy” by © lobbies. Once you choose “consumer” you do put things
into a particular box.
 
Mike Grynberg: Use of the consumer as an argumentative tool:
dependent on one’s larger views of TM policy. How much can consumer concept
constrain the courts or constrain theorists? Not much, except for the idea of
consumer as construct v. consumers generally. Some conceptions of consumers are
easier to administer from a judicial perspective than others. Some constructs
may be more susceptible to racism/sexism than others.  What can we do to go beyond our policy
priors?
 
Robin Jacob: Consumer is not
at the heart of contemporary TM law; that’s ownership. No consumer oriented
favoring system would have decided L’Oreal
where consumers wouldn’t have cared. 
There’s a difference in TMs directed at hoi polloi and TMs directed upmarket—luxury/prestige
brands get greater protection from the courts, even if the public wouldn’t
endorse that.
 
Annette Kur: L’Oreal had
to come out that way b/c of the comparative advertising directive.  That directive prohibits presenting something
as a replica.  That’s not consumer
protection; smuggled in by the French perfumers. TM law is not necessarily
going straight towards expansion of protection.
 
Robert Burrell: L’Oreal:
you can’t say it’s not TM law; it may not have started that way but it is TM
law now. To say it’s an imitation—I didn’t think it was a replica.  (Sir Jacob didn’t think so either.) Idea that
ECJ is bound by legislative intent in TM is great, but “goods that are not
similar” is not easy to be bound by.
 
Kur: L’Oreal says
it’s for the national judge to decide effects on the TM function.
 
Heymann: language we use at least suggests a
methodology—“average” suggests empirical/range as opposed to “reasonable” which
suggests more normative.
 
TMs as communication from consumer to consumer: communicative
function of a particular mark is often that way.  Prescriptive/descriptive debate happens in
linguistics generally.
 
Observation effect: much of what we talk about comes about
through litigation.  Asking the question
in a survey changes the answer you’re likely to get, even in a descriptive
mode. Thus move to corpus analysis etc. is a better way to figure out
communicative function separate from/prior to litigation and its artificiality.
 
RT: Barton Beebe: The US focus on the bell curve also helps
us make more sense of a descriptive fair use defense than perhaps is possible
in Europe—what Annette Kur has discussed here as the scope of rights once granted, we would often call descriptive fair
use or even non-TM use as in the YSL v. Louboutin case.  Heymann says the use of “average” suggests
empirical inquiry: Interestingly we are happy to be normative in describing
average consumer (note modification in European cases to average reasonably
prudent consumer) and descriptive in identifying the reasonable consumer—if
lots of consumers do it it’s probably reasonable.  (Why US is different: Some speculation: Same
basic philosophy, different implementation. More openness to separating
equilibria among consumers? Readier acceptance of behavioralism?  More openness to preferences as
exogenous/it’s ok to like Cheetos, as something that comes from within the
consumer as opposed to from an investment by the producer?  Empirical evidence about marketing in general and how it works—might be a response to Graeme
Austin’s concern of how much evidence we can really expect to have.)
 
Consumer protection: is it just lower prices? Why isn’t
consumer protection also defending quality and class distinction?  There is a strain of argument, at least
historically, that it’s bad for consumers to have cheap, degraded versions
available to them—replica perfumes, or bread that’s full of preservatives and
not freshly made.  That seems like
protection to the people who advocate for it.
 
Mid-point summary:   William
McGeveran: Themes: (1) Consumer as heuristic, device to get to something else,
“coping mechanism” (Gangjee).  That helps
explain some of what we see.  “Consumer”
as servant to TM’s larger goals. Extent to which public interest ought to be
set aside in doing a consumer analysis. 
Is public interest extrinsic to that heuristic?  Clearly the heuristic is designed improperly
if it’s not serving the goals it’s meant to be serving: the reason to use the
heuristic is to get to the ultimate goal. Search costs as mid-level principle,
means to an end of competition goals. 
Article w/McKenna: “Confusion Isn’t
Everything”: confusion is a heuristic in itself for the larger goals of the
TM system; could have called it “The Consumer Isn’t Everything.” We could add
to the heuristic, or substitute a different heuristic in specific cases. The
stakes are high because the concept is so much used, but we should remind
judges and ourselves that it’s just a device.
 
(2) Registration: are some doctrines more suited for use of
consumers than others?  Consumers’ role
in registration and judging infringement. 
At least in American structure, infringement inquiry is more likely to
be time-sensitive than registration inquiry. 
As an American, I’m not that bothered by how consumer is used in
registration because that can be sorted out later, though B&B may change that. There’s still room for defenses like
descriptive fair use/other phase 2/infringement limits. Maybe that’s not as
true in regimes where registration is more important.
 
(3) Totalized consumer: the public/consumers v. a consumer
(singular).  How much it was ever
possible to find “the” consumer even before scale/crossing national borders.
Heymann on the reasonable consumer: even a supposedly monolingual jurisdiction
is not monolingual in ways that can be very important to TM law (also cultural
references).  Shift of degree rather than
kind to look at multinational environment—can no longer be swept under
rug.  Finally, Mike
Grynberg’s important piece on consumers who are not confused: unfair fight
where registrant gets to fight on behalf of consumers, where defendants should
be more often allowed to fight on behalf of nonconfused consumers whose
interests are furthered by being able to use defendant’s mark as a mark.  “An average consumer” picks sides in a way
that might be troubling.
 
Dirk Visser: Is the consumer part of “the people” on whose
behalf policy is supposed to be made?  It
is very dangerous to go direct to consumers v. representation.  Famous TMs have broader protection—but
sometimes fame makes it easier for consumers to distinguish differences. This
reasoning threatens the whole edifice, though, so its occasional appearance in
European cases is suppressed.  Idea:
Unfair to give less protection to famous TM. 
(RT: This idea of “less” protection is a signal that we aren’t using the
consumer to measure protection as we often claim: if confusion and dilution
were really defined by reference to consumer reaction, then consumers who were
capable of distinguishing fine differences would provide the famous mark with exactly as much protection as other
marks: protection from confusion (and perhaps dilution) which in theory defines
the scope of the right.  This claim that
we can’t “narrow” protection for strong marks means that we are defining scope
in some other way than confusion—relative distinctiveness, as Barton Beebe has
written.)
 
Public opinion surveys are always manipulated and judges
know that.  They only like it if it’s
parallel with their own opinions. We’d rather have an impartial judge who’s
familiar with TM law decide, rather than people who can’t be controlled.
 
If it’s a descriptive term, we don’t allow traders to
monopolize a term because others may need to use it. Hard to explain to
students how secondary meaning through spending a lot of money can be allowed
to change that.  Maybe: if other
competitors allow you the time to acquire secondary meaning, the need to keep
the sign free was not as great, otherwise they would have jumped in. He’s not
convinced, but at least that’s some kind of argument.
 
Same reasoning should apply to nontraditional TMs.  European judges don’t like them, especially not
shape marks—children’s chair. Have said that the level of distinctiveness is
the same for all marks, but also that it’s harder to get over the threshold for
nontraditional marks, which sounds ridiculous to an outsider since both those
things can’t be true.  We should simply
ban nontraditional TMs.  One problem: If
we did so, it would go underground and pop up somewhere else under the guise of
competition law.  This happens with things
like perfume.  Also hyperlinking: if ©
doesn’t forbid it, they’ll try to use unfair competition law. Some will say
fine, then it’s judged case by case. But in a marketplace that might end up the
same way (given risk tolerances). TM = perpetual protection, so that’s a very
important policy distinction.
 
Martin Senftleben: How can we find out what the consumer
really is or wants?  We are already
making a normative assumption by combining consumer w/other words like
confusion or protection—already paternalistic. 
We’d need to say something about consumer without that, which gets
philosophical: need a conception of good/better life.
 
Austin?: but that might be a bit too hard.  Heymann claims that language matters:
ordinary/reasonable/prudent/average—but those terms are manipulated.  Does calibration of those differences really
make a difference to the stories we tell about what’s happened in the
market?  Skeptical that we can make the
different terms make a difference. 
 
David Llewellyn: One big problem is that judges don’t think
about consequences of registration at the infringement level. Practicing for
years: people abuse registered TMs. Always write a letter and expect people to
give in even though you know you’re overreaching. Allowing these very valuable
rights so easily is abused in the real world. 
On nontraditional TMs: Visser asks whether it’s better to keep it in the
system than allowing passing off. 
Whirlpool case is classic example of unregistrable mark made registrable
by adding a word that wasn’t really visible in use; that then got a reputation
by being sold; then was used to repress competition.

Visser: agrees that kicking them out would create fewer problems. Registration
= impresses other people and builds on itself.
 
Kur: there was a time in Germany when German Patent Office
was concerned about registering too much because of potential misuse: “need to
keep free.”  A terrible time for
lawyers!  Repercussions on Court of
Justice: strong repulsion against any “need to keep free” echoed what happened
in Germany with overuse of that term—a pendulum swinging too far.
 
Kim Weatherall: Giving courts permission to override
quantitative evidence may be a good thing.
 
Marco Ricolfi: significant portion of the population?  Tension b/t notion of average consumer and
notion of significant portion.  How do we
think about this?  Can we divide some
issues that should be more normative while others should be empirical?
 
Senftleben: Internet surveys: very cheap ($1000 €) and quick!  May not replicate market conditions, an
available criticism, but easy to run. Just a starting point.
 
Ricolfi: the tribunal can say it’s not reliable.
 
Senftleben: yes, there is always a reason to get rid of a
survey for not replicating market conditions, time of day, subject
population.  But internet survey is fast
and cheap.
 
Kur: There is a strong, established place for surveys in
Europe w/r/t acquired distinctiveness, but not likely confusion where surveys
are rarely accepted, strongly impacted by normative considerations.  (RT: would like to hear more on what those
are.)  Survey never tells you exactly the
answer on acquired distinctiveness; needs to be weighed.
 
Weatherall: UK and Australia as well: active distinction:
reputation surveys are fine, but not confusion.
 
Ohly: even in unfair competition law, there are very few
cases in Germany relying on surveys.
 
Andrew Griffiths: consumers as subjects v. objects. As
objects: in a market economy, they provide the focal point for attracting
demand. Allows people to choose on some basis signified by the TM: accountability.
Then we can ask: accountability for what? Usually quality. Mechanism for
channeling demand. Consumers are people engaging with the market economy. Vast
areas of life previously outside the realm of the consumer have been brought
in.
 
TMs and brands are implicated in 2 huge developments: (1)
reorganization of production, much outsourcing. 
Weightless corporations—retailers, marketing firms.  Consumers have no conception of who produces
the products they buy, only of the brand. Huge space between production and
consumption. (2) Rise of consumerism/consumer capitalism: huge amount of
product differentiation. Consumers, for better or worse, attach value to
differentiation/emotional benefits.  Need
for greater levels of sophistication in a market economy.  Chinese registration system: student says
that consumers are confused about whether registration represents government
endorsement.  Led to need to restrict
advertising.  People haven’t been
programmed as consumers to recognize branding/TM for what they are. 
 
Accountability: Traditionally it was accountability for
quality.  Search costs arguments rest on
that.  But it can include other things:
behavior—corporate social responsibility; supply chains.  (RT: A way of reestablishing the link from
production to consumption?  Perhaps only
an imaginary one?  A Marxist might
identify a human longing for a relation to production.)  Link consumer to citizen—things that we once
expected people to react to politically, we now expect them to react to as
consumers.  (Which has huge resonances
w/gay rights in the US, in many ways, from Chik-Fil-A consumption/boycotting as
political expression to the move for “religious freedom” in commercial
transactions like employing people and providing services to people.)
 
Gangjee: One way transmissions, left up to TM owner: even in
certification marks, there is no accountability to the consumer if the
standards are violated. Projection, not conversation.
 
Acquired distinctiveness: pre-litigation surveys. Surveys
cause bias; uncertainty/interference w/sample; expense. But if pre-litigation
surveys are palatable as RT suggested, then that mediated reality is ok—judges might
be more accepting of them.  But how would
judges react when the surveys contradict their reactions?
 
Davis: People have gone from “riders” on a train to “consumers”
of train services—depoliticized; takes place of engaged participation.
 
Senftleben: Contra Gangjee: large TM owners are worried about
what consumers say on Twitter—much more so than about minor litigation.  Taking wrong action against TM parody can
cause Twitterstorm that harms the brand/the stock.  Bad publicity has always been possible but
can escalate suddenly. Consumer may decide it’s wrong to take action against a
certain kind of TM parody, and that’s working. 
Reaction against Kit Kat using palm oil/destroying
the forest—a parody in which a consumer bit into a Kit Kat and blood came out
of it—but acting against it would cause even more negative attention.
 

Greenpeace bleeding Kit Kat ad
Ricolfi: surveys may be suppressed if unfavorable, as with
pharmacos that only report favorable results. This is still an important
practical question. 
 
Mike Grynberg: Gets to whether we’re talking about the
consumer or the public. The consumer is a Swiss Army knife, used to define a
lot of aspects of TM.  We need a
construction of “consumer,” and certain incarnations are workable.  Average/reasonable consumer can work for
confusion at the point of sale, but it’s too narrow when thinking about
overarching policy issues of competition, free expression. Judges are boundedly
rational, though, and it’s hard to think outside of that construction to
broader concerns.
 
Bill McGeveran: We could say: we have a question about TM.
Should we look at consumer reaction or at something else? The American system
will go ahead and recognize TM rights in lots of nontraditional TMs, and worry
downstream about exempting certain kinds of uses. European system may
categorically reject some kinds of symbols. 
Where we deploy the consumer is a distinct Q from who that consumer is
once the decision is made to deploy her. 
Sometimes we may simply reject asking the consumer.  (RT: Though it’s super hard for judges to
avoid the impulse to say “and the consumer isn’t likely to be confused anyway,”
e.g. in cases like Rogers v. Grimaldi
where there are empirical claims alongside the normative ones.)
 
Graeme Dinwoodie: are there some doctrines that are
inappropriate for using consumers in the first instance?  Goods w/which the mark is likely to be used,
or goods we’re comfortable giving rights in for a 5 year period to the TM
applicant?  Q of whether a mark is
identical for purposes of double identity—does that address consumer perception?  One court said yes, and that the consumer should know that if they find it identical
then there will be infringement w/o confusion: but why put that in the consumer
lens? My sense is that it’s more likely to be inappropriate to invoke the
consumer at the registration context.
 
McGeveran: Functionality in the US.
 
Jennifer Davis: aren’t Europeans more likely to take the
consumer into account in registration, opposite to what Dinwoodie wants?
 
Dinwoodie: yes for acquired distinctiveness, maybe not
elsewhere.
 
Stacey Dogan: Traffix/functionality
deals w/ policy issues not endogenous to TM law. Even though the SCt in Dastar purported to make claims about
consumer expectations, it was really about the right to copy after a work
enters the public domain. Societal interests distinct from market based
transactions that sometimes ought to be taken into account.  Bizarre blending of rationales, but deference
to ©’s public domain was institutional deference.
 
McGeveran: speech concerns in the US, Rogers v. Grimaldi, explicitly recognizes that we wouldn’t care
about confusion if the factors were met.
 
Jessica Litman: Not sure whether this is a shift as opposed
to a pendulum, but in past 10 years we’ve seen a backing off from normative
considerations to override our sense of empirically what the consumer is about.  Example: scandalousness. At one time, the
TTAB would just look at the mark and say it’s scandalous.   Redskins: lots of empirical evidence, and
resistance to taking seriously what it showed; but now it seems pretty likely
that the Fed. Cir. will say it’s unconstitutional to have that bar in the
statute at all; if consumers perceive it as a mark, it’s a mark, and the gov’t
lacks any interest in saying that’s inappropriate.  Looks like a retreat from a notion that the
public interest has some say in what can be a TM separate from what consumers
perceive.
 
Dirk Visser: Fact that © ends is something the public doesn’t
understand. Come to believe that everything is licensed (except parody), and
the artificial limitation of time is not internalized by them. They could
accept it if told, but they wouldn’t have an opinion on it and would assume you
need a license for any character T-shirt, whether or not the character was in
the public domain.

Barton Beebe: Functionality and genericism (a version of functionality), where
courts look to dictionaries; the test can be much more formal than consumer
focused, though surveys are also used. Dastar.  Dead presidents: bar on registering name
until widow/widower dies.  And the issue
of GIs. Even though Americans consider “champagne” generic, the US is going to
try to phase it out: imposing on democratic society a hierarchical system, b/c
we agreed with the French.  (RT: Should
that violate the First Amendment?)  Also the
US right of publicity.  Fed court says
confusion doesn’t matter; therefore Rogers
v. Grimaldi also doesn’t apply b/c right of publicity is about
misappropriation.
 
Compare PHOSITA, or more discerning observer in copyright
law. Anchor of © is the reader/audience—interesting to consider
comparisons. 
 
Eveready survey:
do you think the D needed permission from the P for this use? Legal question
but we ask it of consumers and courts accept that.
 
Ansgar Ohly: do/should we consider the consumer in questions
of use as a trademark? ECJ: TM use is being dissolved and collapsed into the
normative “functions” of a TM theory. Moving away from investigating what
consumer actually thinks.
 
Acquired distinctiveness: Q arises whether this finding can
be corrected by public policy concerns; clash between German and European
approaches. German: more public policy concerns = higher distinctiveness
required.  ECJ has rejected this time and
again; reluctant to get into fact specific investigations of what consumers
think, perhaps b/c it’s only in charge of the law.
 
Always market integration is in the back of the mind of the
ECJ so the image of the normative European consumer may be a more important referent
for them.
 
Kur: but they still insist all these questions are questions
of fact that they then hand back to the national courts: a real contradiction.

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Ninth Circuit rejects class certification because ads differed

Posted on June 29, 2015 by rtushnet
Cabral v. Supple LLC, — Fed.Appx. —-, 2015 WL 3855142,
No. 13–55943 (9th Cir. June 23, 2015)
 
The court of appeals vacated the certification of a class of
purchasers of a dietary supplement. The certified class was “[a]ll persons
residing in the State of California who purchased [the supplement] for personal
use and not for resale since December 2, 2007,” for the usual California
statutory claims.  The court of appeals
found that predominance was wanting, because it was “critical” that the
misrepresentation at issue be made to all class members.  The record here didn’t support a
determination that all the class members “saw or otherwise received” the
misrepresentation that the supplement was “clinically proven effective in
treating joint pain.” “While some deviations from precise wording in the
language of advertisements or representations might not be fatal to class
certification, advertisements that did not declare the [supplement] to be ‘clinically
proven effective in treating joint pain’ are a far cry from advertisements that
did.” The court of appeals expressed no opinion on whether a different class
could be certified.

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claim of “improved” version of competitor’s product not likely to confuse

Posted on June 29, 2015 by rtushnet
Arborjet, Inc. v. Rainbow Treecare Scientific Advancements,
Inc., 63 F.Supp.3d 149 (D. Mass. 2014)
 
Arborjet sued Rainbow over an alleged breach of a sales
agency agreement and won a preliminary injunction.  Arborjet makes insect and pest control
products for direct injection into trees. Rainbow makes pesticides to protect trees
and also distributes pesticides manufactured by other companies; it competes
directly with Arborjet.
 
In 2008, Arborjet began selling an emamectin benzoate
product, TREE-age, which protects trees from the emerald ash borer and other
destructive pests. TREE-age was successful, and Rainbow solicited Arborjet to
become its distributor of the full line of Arborjet’s products, including
TREE-age.  During negotiations, Arborjet
allegedly expressed concern about Rainbow’s possible copying of Arborjet’s
products, and Rainbow allegedly assured Arborjet that it had no such intention.  So they entered into a Sales Agency Agreement
and Rainbow agreed to devote its best efforts to the promotion and sale of
Arborjet’s products. 
 
The Agreement included a confidentiality and nondisclosure
provision, and said “in view of the confidential information regarding
Arborjet’s business affairs, plans, and necessities, [Rainbow] will not engage
in affairs intended to replicate the Arborjet’s products or processes.”  Plus, it had a noncompete provision that said
Rainbow wouldn’t “replicate the Arborjet system of using a plug which seals the
formulation in the xylem and a needle which injects behind the plug” for two
years after the agreement ended.  Arborjet
didn’t allege a breach of this last provision, but the parties disputed its
relevance to Arborjet’s breach of contract claim.
 
Instead, Arborjet alleged that Rainbow violated the part of
the agreement prohibiting Rainbow from “engaging in affairs intended to
replicate” its products.  Rainbow began
developing and testing ArborMectin, its competitor for TREE-age, as early as
2011, when the Agreement was still in force. 
(Rainbow terminated the Agreement in 2013.)  Arborjet didn’t allege that Rainbow used confidential
information, but said that didn’t matter. 
 
In 2014, Rainbow sent a blast marketing email to customers with
the subject line “Improved TREE-age! NEW ArborMectin Speed VIDEO.” The text said
that “Rainbow is excited to offer ArborMectin™, an improved 4% emamectin
benzoate (TREE-age) tree injection formulation. …Treat trees 30–70% faster
using ArborMectin™ versus TREE-age.”  The
email linked to a video that characterized ArborMectin as a replacement for
TREE-age and indicated that ArborMectin is “backed by science,” “proven to be
effective,” and treats trees “consistently faster than TREE-age.”
 
Arborjet argued that, while the Agreement was in effect,
Rainbow was contractually barred from engaging in “affairs intended to
replicate” Arborjet’s products, even absent misappropriation of Arborjet’s
proprietary confidential information. Moreover, Rainbow allegedly breached the
implied covenant of good faith and fair dealing given that it knew Arborjet’s
purpose in the Agreement was to stop copying.
 
Rainbow argued that it didn’t “replicate” TREE-age because
ArborMectin was not a “copy” or “duplicate.” Though the products have the same
active ingredient, ArborMectin is less toxic and has lower viscosity than
TREE-age. The court found this argument unpersuasive.  First, the fact that the final product had
differences didn’t matter, given that the contract covered activities “intended
to replicate” Arborject products. Given how Rainbow marketed the product as
“improved TREE-age,” the court found its activities covered. Plus, it was
unreasonable to read the contract as barring only exact copies “in light of
Arborjet’s particular, expressed concern about direct competition with its own
products.” Thus there was likely success on the merits of the contract claims.
 
Lanham Act false advertising: Arborjet argued that claims
that its product was “backed by science”, “proven effective” and “treats trees
30–70% faster than TREE-age” were establishment claims.  The tests Rainbow relied on were allegedly unreliable
because none of them was subject to peer review and the studies tested only
five or six trees whereas studies of TREE-age tested between 60 and 100 trees. Thus,
the study results didn’t prove the claim that ArborMectin was an improvement
over TREE-age. The court found that Arborjet hadn’t demonstrated the studies’
unreliability at this stage, without industry or regulatory standards regarding
peer review or sample size.  The claim
that ArborMectin was an “improved TREE-age” was a non-establishment claim, just
a general claim of superiority. Arborjet didn’t show actual falsity, because
ArborMectin had lower toxicity and viscosity than TREE-age and those
differences could be regarded as improvements.
 
However, the court expressed concern that the “improved
TREE-age” claim was likely to mislead customers into thinking the products came
from the same company. Rainbow indicated that it would no longer make that
claim.
 
Arborjet also argued that Rainbow’s website infringed
Arborjet’s registered trademarks “without including the symbol or any other
attribution to the owner,” which would cause customer confusion.  But, as Rainbow pointed out, none of the
other confusion factors favored Arborjet, such as the dissimilarity between TREE-age
and ArborMectin.  RT: Also, it has never
been the rule that failing to use a ® is misleading.  Unfortunately, the court also said that
Rainbow “should be more careful with its attribution of proprietary marks in
its communications,” even though Arborjet was unlikely to succeed on the
merits.  Rainbow should clearly be more
careful about suggesting that it produced an “improved version” of someone else’s
product—there are lots of ways of saying that which are nonconfusing—but
failing to use ® is not one of the ways in which it was careless.
 
Given Arborjet’s substantial likelihood of success on the
merits of the contract claim, it had less of a burden to show irreparable harm
under the First Circuit’s sliding scale. 
The court found irreparable harm because of the significant risk of
damage to Arborjet’s reputation and relationships with its consumers.  “Although plaintiff can be compensated for
lost profits by monetary damages, the effect on its goodwill and reputation are
particularly hard to quantify.”
 
The balance of equities tipped in Arborjet’s favor, but only
slightly given Rainbow’s investment in a new product.  Rainbow also argued that the public interest
favored competition and that this lawsuit would suppress competition, but “here
the parties voluntarily and knowingly contracted to limit their competition.”
Thus, it was in the public interest to enforce a limit on competition in this
case.

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False patent marking isn’t material to business customers

Posted on June 29, 2015 by rtushnet
Pactiv, LLC v. Multisorb Technologies, Inc., 63 F.Supp.3d
832 (N.D. Ill. 2014)
 
Pactiv and Multisorb compete to sell oxygen absorbers—“packets
of chemicals that react with moisture to absorb oxygen when placed inside food
containers,” keeping food fresher longer. The parties have sued each other for
patent infringement, and Multisorb also counterclaimed for tortious
interference and unfair competition and false advertising in violation of the
Lanham Act. Pactiv’s patent claims are currently stayed pending re-examination
before the PTO.  The court found that
prosecution history estoppel barred Multisorb from pursuing its doctrine of
equivalents-based patent claim, and therefore Multisorb lost its patent
infringement counterclaim.
 
The remaining counterclaims arose from a failed business
arrangement with Pactiv. Multisorb agreed to manufacture and sell oxygen
absorber packets to Pactiv for use in its fresh meat packaging system, the ActiveTech
System. The ActiveTech System is comprised of the ActiveTech Product (the
oxygen absorber packet), a “case ready” packaging system, and Pactiv’s methods
for packaging products. Shortly after the companies entered into a supply agreement,
Pactiv received a patent on a packaging system and a method for sealing and
preserving raw meat in a low or reduced oxygen environment. At Pactiv’s
request, Multisorb marked the oxygen absorber it supplied with a stamp
indicating that the product was protected under the patent.
 
Over ten years later, in 2008, the parties’ business
relationship soured after Multisorb began selling oxygen absorbers to Wal-Mart
and Wal-Mart vendors directly, taking business from Pactiv. Pactiv switched to
Dessicare to make a new oxygen absorber, continuing to mark the Dessicare
absorber with the Pactiv patent number.
 
Multisorb charged Pactiv with initiating “sham litigation”
against Multisorb with the intention of interfering with its prospective
business relationships. Internal Pactiv documents indicated that suing
Multisorb had business reasons more than IP-related reasons, and that Pactiv
desired to “tie [Multisorb] up” and force it to spend money.  But sham litigation relates to antitrust
claims, not tortious interference.  And
anyway Multisorb couldn’t prove sham litigation; even assuming Pactiv’s
statements indicated bad faith, the court couldn’t find that Pactiv lacked a
reasonable chance of success on the merits. Though its patents were recently
declared invalid in reexamination (a decision under appeal to the Federal
Circuit), there was nothing in the record to show that Pactiv would have known
of the invalidity at the time it sued. 
Thus, the tortious interference claim failed: “the mere filing of a
lawsuit cannot serve as a basis for a tortious interference claim when there
has been no showing that the litigant knew or should have known the case was
meritless or otherwise unjustified.”
 
As for false marking, Multisorb failed to show that Pactiv
intended to deceive the public by marking the oxygen absorber with its patent
number.  At best, the evidence showed
mere negligence: Pactiv “did not recall any discussions as to what patent
number to put on the Desiccare oxygen absorber” and Pactiv “did not have a
formal process in place to approve product covers.”
 
As for Multisorb’s Lanham Act counterclaim, Multisorb argued
that Pactiv misled customers by telling them that the ActivTech System was
protected by a patent when, in fact, it was not. However, Multisorb failed to
show deceptiveness or materiality.  “[N]one
of the customers deposed in this case indicated that they cared the least bit
whether the ActiveTech System was patent protected.”  The Executive VP/COO of one meatpacking
company testified that the existence of patents didn’t influence his decision
to use Pactiv’s system; the GM of another meatpacking company “testified
similarly that patents play no role in its purchasing decisions.”  Another customer witness didn’t recall any
discussion of patents relating to the system with Pactiv.  A final customer witness testified that
patent protection “didn’t really affect our decision-making process,” and
indicated that the validity of the patent wouldn’t have altered its buying
process.

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Trademark scholars roundtable: roles for the consumer in TM

Posted on June 29, 2015 by rtushnet
Seventh Trademark Scholars Roundtable: The Construction of the Consumer in Trade Mark Law
 
Session 1: Roles for the Consumer in Trade Mark Law
What role does the “consumer” (whether “average” or “reasonable” or otherwise) play in trade mark law? Does consideration of the consumer simply help explain trademark law at some general level? Is the consumer useful merely to help legislators or policymakers shape the direction of trademark law? Is consideration of the consumer useful purposively to help determine outcomes in particular cases? Or is the trope of the consumer largely counterproductive? How should the answers to these questions inform doctrine? Are some doctrines more suited for analysis through the lens of the consumer than others? Importantly, are there trade mark doctrines where the consumer should have no (or only a limited) role in determining outcomes? If so, why, and what are they?
 
Introduction:   Jennifer Davis: Continuity and change with the average consumer in European law. Continuity: there’s a continuous question about the average consumer’s identity and role.  Change: Many will accept that the average consumer originally came via consumer protection law through classical economics: utility-maximizing rational actor. The law itself, EU Directive, also has a basis in neoclassical economics, most importantly so in the fact that any TM can be registered as long as it is acting as a TM.  These include marks that are purely descriptive in their startup; shapes; marks in limited supply such as colors.  Key that the question of whether the mark can be registered comes down to whether or not the average consumer sees it as distinctive. Confusing similarity also comes down to the average consumer.  Confusion inquiry also goes back to whether court thinks average consumer will perceive marks as particularly distinctive.  It’s the perceived views of the average consumer that delimit the amount of protection the EU will give to the mark. If TM is property, it is property defined by the supposed perceptions of the average consumer.
 
So what about when we aren’t talking about market efficiency but free riding or tarnishment?  Even here, law looks for average consumer.  ECJ has determined that tarnishment, dilution, free riding require the average consumer to make a link between the two marks at issue, as a way of delimiting extent of protection.
 
Change: It was not ever thus everywhere before the TM directive.  Whether or not TM received protection was seen as balancing act between TM owner, consumer, and competitors. Use perceived views of consumer to determine distinctiveness and confusion, but felt free to override consumer perception if in the public interest to do so. Huge change from that. Descriptive signs; colors; shapes; slogans: example is Kit-Kat/Have a Break.  1983 applied to register Have a Break as separate TM, though used with Kit-Kat name always. Court said it was irrelevant whether it was distinctive; it’s a term other traders might wish to use/it’s not used as a TM and thus can’t be registered. After the TM directive, went to CJEU, which said that a sign always used with a mark could be registered; never asked the question of public interest in leaving phrase free. Only question was whether average consumer saw it as distinctive.
 
Free market principles of TM directive: sometimes courts have tried to get around this by saying, for example, that average consumer is less likely to see shapes or colors as TM and registration is therefore resisted absent use.  Similar use of average consumer to limit scope of dilution. CJEU has looked at the functions of the mark, not just the origin function but investment, advertising, communication function—tried to reinject interest of competitors as well as consumers, by the back door.  Are we happy for the courts to use their own judgments as they used to before?  Remember competitors who may get lost if we only talk about average consumers.
 
Barton Beebe: Questions about consumers—very difficult to focus on one area without crossing over into others.  What the average consumer is; consumer as subject v. object of TM law.  Consumer as limiting restraint on TM law v. consumer as alibi for expansion of TM. Consumer as gauge of effective competition policy.  Consumer as political/liberal subject. 
 
Who is the agent in TM law?  Who is the active force, the subject, the thing engaging in self-initiated conduct?  More appealing to think of modern TM law as: the subject is the TM, searching for consumers.  We are trying to restore the human/the consumer: language is consumers constructing TM, not TM constructing consumers.  Not commodities floating around.
 
Europeans talked so much about average consumer, who speaks 24 languages—we know the consumer is not the moron in a hurry. More sophisticated: not an illiterate or abnormallystupid or ignorant.  Canadian case: relevant consumers would not be confused into purchasing the wrong nuclear reactor. That Homer Simpson might be confused is irrelevant.
 
Subject v. object: is TM law descriptive or normative? Is consumer the empirical anchor, measure of all things such as distinctiveness or confusion? Or is the consumer the object of TM law, who law tries to form or inform?  Raise consumer sophistication or allow it to decline? Maybe TM shouldn’t be as descriptive as it is in the US, where we like surveys.  Maybe we should accept some degree of confusion to achieve some other purpose. Consumer as endogenous, not exogenous; and changeable by TM law. Underneath this is the Q of circularity: is it true that the consumer internalizes implications of various TM cases, such as US Boston Hockey case or Arsenal in UK/Europe: consumers are trained to think that association is only allowed under licensing terms. But is that true? Does law have that much effect on consumer perception?
 
Orthogonal to this: is the consumer essentially just a source or target of general policy, and not any outcome under doctrine?  Dilution: does consumer perception matter?  Schecter would have preferred not, that it be an entirely grammatical/formal/linguistic theory that would never ask about whether consumers perceived an association.
 
TM scholarship: consumer as restraint on TM v. alibi for expansion—raised in readings. US: shift away from property concept of late 19thc. towards a consumer protection justification arguably licensed a massive expansion. Consumer is less a delimiter in US scholarship than the licensor of expansion, b/c consumer perception is malleable when you have good counsel. Also raises Q of materiality—seen as way to limit TM rights in the US, in tradition of American false advertising law. Is confusion material to decision to purchase? If not, won’t enjoin—but courts haven’t accepted it (largely).
 
Consumers and competition: one likes to dream of a shift in US law towards a competition focus. TM isn’t about minimizing search costs, but facilitating effective/socially optimal levels of competitions. TM restrictionists see competition as a way to find a limiting principle not based on vagaries of consumer protection. We should ask how the consumer would interact w/ TM as competition policy as compared to consumer protection policy.
 
Consumers and politics: consumers are citizens. Average consumer = average citizen. If we ascribe some degree of sophistication to them, these people are mostly voters, so that’s the liberal subject. We shouldn’t just think about competition policy but political ideology: how we conceive of subject of modern marketplace/political systems. Jennifer Davis: class consciousness among judges in English law of 19th c.—consumers were like servants; judges distinguished among classes of people. Today, instead, distinguish among classes of goods—looking at the commodity instead.
 
Primary Discussant:      Lionel Bently: Impact of registration on freedoms of other traders was much more central to pre-harmonized regimes. If trader would have a legitimate reason, without improper motive, to use a particular sign, then another trader should not get a registration/monopoly—geographical marks, etc.  So trader is another actor we could consider building a TM regime around. 
 
Trademark Directive/int’l legislation: term consumer isn’t present; it’s the “public” who is protected against likely confusion. Public is another concept around which we might build TM. What is at stake in the collapse of the public into the consumer?  Perhaps this notion of the citizen might be an alternative.
 
Weird things that go on in our use of “consumer” and in the assumptions that it causes us to carry with it.  Normally when we talk about consumer protection we’re concerned w/ a particular category of consumers regarded as vulnerable: lack the same level of info as businesses in the marketplace. Protection overcomes those perceived problems. In TM law that’s not the same consumer at all—the purchaser of nuclear reactors as well as of sweets.  But he’s concerned that we carry with us a different set of assumptions about chief characteristics of consumer—relative stupidity and vulnerability.
 
Distinction between consumer and citizen: Discomfort w/how Qs of inherent distinctiveness are assessed b/c starting point is that we are looking at signs that might qualify as TMs.  ECJ tends to say that when you’re assessing whether something is devoid of distinctive character/unregistrable, you use the POV of the consumer, and descriptive things are likely descriptive v. distinctive. But things that aren’t explicable to consumers are just assumed to be fodder for the TM system.  Any attribute of a product that can’t be explained immediately has the capacity to be a TM. That’s just weird. That’s not how I look at the world—that anything I can’t understand is a TM. So why should European TM law assume that the person who is looking at the world is only using one spectrum?
 
Stacey Dogan: Relationship between search costs & consumers & competition: reflect on the literature/case law that suggests that reducing search costs in itself is the goal of TM.  Appropriate use of search costs is not as goal in itself, but reducing search costs to promote competition. Better information in markets should promote reduction in search costs, but if you inhibit competition by granting rights you shouldn’t grant those rights.
 
Annette Kur: ECJ uses public interest concept, but divides it into public interest of consumer in identifying products; public interests of competitors to be able to use things they want to keep available. Slashed in two. It should be one concept. Cardinal mistake: not allowing you to look into the second prong except for descriptive signs. Needs to be in measurement of scope of protection granted, which was thrown out in Adidas where they said that part two of public interest was irrelevant in determining scope of mark. 
 
Competition also has a connection to the perception of those who operate in the market. These people don’t function in the way we picture the mind of the consumer to function.  It’s not (just) about diminished search costs.  We need to know much more about what’s happening in the impact of TM on consumers’ minds.  When people decide whether to buy, what’s going on?
 
RT: For Dogan: I saw a very subtle equivocation there: if you really believe that search costs is only a means toward the competitive end, shouldn’t you in each case balance the decrease in search costs from granting TM protection to a design with secondary meaning with the increase in monopoly profits in cases in which the design also has functionality? Sometimes mild functionality might not overwhelm the search cost benefit of protection as TM, unless you’ve already created a hierarchy of things that help competition. (ETA: Bob Bone discusses this issue; he believes in general rules though I understand him to want more inquiry into the balance of functionality and distinctiveness.)
 
Another possibility: the subtle influence of language.  Use of “the legislator” in Europe as indicating a more plausible bearer of intent than the US “the legislature” where the criticism that the legislature as a body does not regularly have a coherent or consistent intent has of late been extremely influential, as we saw in the recent health care case.  Use of the “average consumer” may have similar effects in smushing down the variation that we know exists—we want to see more understanding of variation and the common lack of coherent consumer “intent” or “belief” in the way the law assumes.  So maybe we should always be talking about consumers!
 
Dev Gangjee: you have to have an abstract concept, and that interacts with nationality.  Can we set up a pre-large national registration system understanding of consumers?  How do courts initially/historically treat the task of figuring out what large groups of consumers are likely to think?  Property plus scale may force us to reach for an abstraction.
 
Ilanah Simon-Phima: Everybody in European law talks a lot about the average consumer, but nobody does anything about him or her.  Nontraditional marks: our average consumer has stock reactions.  That may or may not be correct, but it’s a cut and paste job: from sound to color etc. This is an excuse. Blame things you don’t want to register on the consumer. Maybe rejection on relative grounds is doing something similar—Community TMs, courts take great pains to define average consumer in detail, but do nothing with it. Paragraph about what the average consumer is, and then the court doesn’t come back to it in the rest of the judgment.
 
Dirk Visser: agrees, the courts don’t like these TMs and then just create a consumer who doesn’t recognize them. Normatively he agrees, but they’re dressing up a normative decision in a factual way.
 
Robin Jacob: No, they’re right! Consumers are much more straightforward than this discussion says.  Consumers recognize smells but don’t think they’re TMs.  They love or hate smells/tastes, but not as TMs.  The ECJ has used the right tool: ordinary people don’t go by this to make buying decisions—buy because they like, not b/c it comes from a particular brand.
 
Graeme Dinwoodie: If in fact you were wrong, why not say it like that?  Why dress it up as empirical.
 
Jacob: we can do that too.
 
Visser: We should do that to recognize the public interest in continued freedom.
 
Martin Senftleben: should we care that much about what we call the consumer/public at all? In practice, there may not be much difference. There are easy cases: Coca-Cola is a well-known mark, which you could know without any survey.  In practice, three surveys say yes and three say no depending on how the questions are designed and analyzed.   “Consumer” is just an argumentation tool. Asking who this consumer is overstretches the whole concept.
 
Marco Ricolfi: A number of provisions in TM law refer to the public.  (RT: Then consistent judicial and academic resort to “consumer” is at least psychologically revealing!)  Underline that this is the case with immoral signs.  Public bears the cost of the immoral sign.
 
Freedom of movement of goods across national borders/unitary system is an important value that also needs to be accounted for.
 
Beebe: What the implications are of speaking in plural versus singular of consumers?  He saw a European fascination w/average consumer as individual: fictional character, asked whether this individual is confused.  US law speaks much more of populations of consumers; bell curve of sophistication. We might look at a mean, but we ask what proportion of this bell curve is confused.
 
Individual rhetoric = licensed to speak more normatively about what this person should think.  Americans with their bell curves are more prone to think of what people actually do think.  Thatcherite slogan: there is no such thing as society. This invariably creates a political effect.
 
Compelling idea: reasonable consumer is more rule-like than standard-like, from Laura Heymann’s article.
 
Davis: what we think competition is differs across time.  Average consumer fits w/neoliberal idea of avoiding as much market regulation as you can.  Underlies current TM law. Given US as archetypal neoclassical economics, it’s interesting that there’s been more resistance to the individual consumer in the US. Why?
 
Austin: are we defining the middle through extreme cases? What if we stripped the consumer out of the discourse and looked at judicial calibration of competition in individual cases? Would we think that the courts were capable of getting that right? Consumer as tool of perceived judicial restraint.  Forensic realities of individual cases: inability to get the kind of data that would allow us to look at true consumer perception.  Plea for a workable approach to these kinds of questions.  Fast-moving case law.
 
David Llewellyn: use of the word consumer is like success of the word “piracy” by © lobbies. Once you choose “consumer” you do put things into a particular box.
 
Mike Grynberg: Use of the consumer as an argumentative tool: dependent on one’s larger views of TM policy. How much can consumer concept constrain the courts or constrain theorists? Not much, except for the idea of consumer as construct v. consumers generally. Some conceptions of consumers are easier to administer from a judicial perspective than others. Some constructs may be more susceptible to racism/sexism than others.  What can we do to go beyond our policy priors?
 
Robin Jacob: Consumer is notat the heart of contemporary TM law; that’s ownership. No consumer oriented favoring system would have decided L’Orealwhere consumers wouldn’t have cared.  There’s a difference in TMs directed at hoi polloi and TMs directed upmarket—luxury/prestige brands get greater protection from the courts, even if the public wouldn’t endorse that.
 
Annette Kur: L’Oreal had to come out that way b/c of the comparative advertising directive.  That directive prohibits presenting something as a replica.  That’s not consumer protection; smuggled in by the French perfumers. TM law is not necessarily going straight towards expansion of protection.
 
Robert Burrell: L’Oreal: you can’t say it’s not TM law; it may not have started that way but it is TM law now. To say it’s an imitation—I didn’t think it was a replica.  (Sir Jacob didn’t think so either.) Idea that ECJ is bound by legislative intent in TM is great, but “goods that are not similar” is not easy to be bound by.
 
Kur: L’Oreal says it’s for the national judge to decide effects on the TM function.
 
Heymann: language we use at least suggests a methodology—“average” suggests empirical/range as opposed to “reasonable” which suggests more normative.
 
TMs as communication from consumer to consumer: communicative function of a particular mark is often that way.  Prescriptive/descriptive debate happens in linguistics generally.
 
Observation effect: much of what we talk about comes about through litigation.  Asking the question in a survey changes the answer you’re likely to get, even in a descriptive mode. Thus move to corpus analysis etc. is a better way to figure out communicative function separate from/prior to litigation and its artificiality.
 
RT: Barton Beebe: The US focus on the bell curve also helps us make more sense of a descriptive fair use defense than perhaps is possible in Europe—what Annette Kur has discussed here as the scope of rights once granted, we would often call descriptive fair use or even non-TM use as in the YSL v. Louboutin case.  Heymann says the use of “average” suggests empirical inquiry: Interestingly we are happy to be normative in describing average consumer (note modification in European cases to average reasonably prudent consumer) and descriptive in identifying the reasonable consumer—if lots of consumers do it it’s probably reasonable.  (Why US is different: Some speculation: Same basic philosophy, different implementation. More openness to separating equilibria among consumers? Readier acceptance of behavioralism?  More openness to preferences as exogenous/it’s ok to like Cheetos, as something that comes from within the consumer as opposed to from an investment by the producer?  Empirical evidence about marketing in general and how it works—might be a response to Graeme Austin’s concern of how much evidence we can really expect to have.)
 
Consumer protection: is it just lower prices? Why isn’t consumer protection also defending quality and class distinction?  There is a strain of argument, at least historically, that it’s bad for consumers to have cheap, degraded versions available to them—replica perfumes, or bread that’s full of preservatives and not freshly made.  That seems like protection to the people who advocate for it.
 
Mid-point summary:   William McGeveran: Themes: (1) Consumer as heuristic, device to get to something else, “coping mechanism” (Gangjee).  That helps explain some of what we see.  “Consumer” as servant to TM’s larger goals. Extent to which public interest ought to be set aside in doing a consumer analysis.  Is public interest extrinsic to that heuristic?  Clearly the heuristic is designed improperly if it’s not serving the goals it’s meant to be serving: the reason to use the heuristic is to get to the ultimate goal. Search costs as mid-level principle, means to an end of competition goals.  Article w/McKenna: “Confusion Isn’t Everything”: confusion is a heuristic in itself for the larger goals of the TM system; could have called it “The Consumer Isn’t Everything.” We could add to the heuristic, or substitute a different heuristic in specific cases. The stakes are high because the concept is so much used, but we should remind judges and ourselves that it’s just a device.
 
(2) Registration: are some doctrines more suited for use of consumers than others?  Consumers’ role in registration and judging infringement.  At least in American structure, infringement inquiry is more likely to be time-sensitive than registration inquiry.  As an American, I’m not that bothered by how consumer is used in registration because that can be sorted out later, though B&B may change that. There’s still room for defenses like descriptive fair use/other phase 2/infringement limits. Maybe that’s not as true in regimes where registration is more important.
 
(3) Totalized consumer: the public/consumers v. a consumer (singular).  How much it was ever possible to find “the” consumer even before scale/crossing national borders. Heymann on the reasonable consumer: even a supposedly monolingual jurisdiction is not monolingual in ways that can be very important to TM law (also cultural references).  Shift of degree rather than kind to look at multinational environment—can no longer be swept under rug.  Finally, Mike Grynberg’s important piece on consumers who are not confused: unfair fight where registrant gets to fight on behalf of consumers, where defendants should be more often allowed to fight on behalf of nonconfused consumers whose interests are furthered by being able to use defendant’s mark as a mark.  “An average consumer” picks sides in a way that might be troubling.
 
Dirk Visser: Is the consumer part of “the people” on whose behalf policy is supposed to be made?  It is very dangerous to go direct to consumers v. representation.  Famous TMs have broader protection—but sometimes fame makes it easier for consumers to distinguish differences. This reasoning threatens the whole edifice, though, so its occasional appearance in European cases is suppressed.  Idea: Unfair to give less protection to famous TM.  (RT: This idea of “less” protection is a signal that we aren’t using the consumer to measure protection as we often claim: if confusion and dilution were really defined by reference to consumer reaction, then consumers who were capable of distinguishing fine differences would provide the famous mark with exactly as much protection as other marks: protection from confusion (and perhaps dilution) which in theory defines the scope of the right.  This claim that we can’t “narrow” protection for strong marks means that we are defining scope in some other way than confusion—relative distinctiveness, as Barton Beebe has written.)
 
Public opinion surveys are always manipulated and judges know that.  They only like it if it’s parallel with their own opinions. We’d rather have an impartial judge who’s familiar with TM law decide, rather than people who can’t be controlled.
 
If it’s a descriptive term, we don’t allow traders to monopolize a term because others may need to use it. Hard to explain to students how secondary meaning through spending a lot of money can be allowed to change that.  Maybe: if other competitors allow you the time to acquire secondary meaning, the need to keep the sign free was not as great, otherwise they would have jumped in. He’s not convinced, but at least that’s some kind of argument.
 
Same reasoning should apply to nontraditional TMs.  European judges don’t like them, especially not shape marks—children’s chair. Have said that the level of distinctiveness is the same for all marks, but also that it’s harder to get over the threshold for nontraditional marks, which sounds ridiculous to an outsider since both those things can’t be true.  We should simply ban nontraditional TMs.  One problem: If we did so, it would go underground and pop up somewhere else under the guise of competition law.  This happens with things like perfume.  Also hyperlinking: if © doesn’t forbid it, they’ll try to use unfair competition law. Some will say fine, then it’s judged case by case. But in a marketplace that might end up the same way (given risk tolerances). TM = perpetual protection, so that’s a very important policy distinction.
 
Martin Senftleben: How can we find out what the consumer really is or wants?  We are already making a normative assumption by combining consumer w/other words like confusion or protection—already paternalistic.  We’d need to say something about consumer without that, which gets philosophical: need a conception of good/better life.
 
Austin?: but that might be a bit too hard.  Heymann claims that language matters: ordinary/reasonable/prudent/average—but those terms are manipulated.  Does calibration of those differences really make a difference to the stories we tell about what’s happened in the market?  Skeptical that we can make the different terms make a difference. 
 
David Llewellyn: One big problem is that judges don’t think about consequences of registration at the infringement level. Practicing for years: people abuse registered TMs. Always write a letter and expect people to give in even though you know you’re overreaching. Allowing these very valuable rights so easily is abused in the real world.  On nontraditional TMs: Visser asks whether it’s better to keep it in the system than allowing passing off.  Whirlpool case is classic example of unregistrable mark made registrable by adding a word that wasn’t really visible in use; that then got a reputation by being sold; then was used to repress competition.
Visser: agrees that kicking them out would create fewer problems. Registration = impresses other people and builds on itself.
 
Kur: there was a time in Germany when German Patent Office was concerned about registering too much because of potential misuse: “need to keep free.”  A terrible time for lawyers!  Repercussions on Court of Justice: strong repulsion against any “need to keep free” echoed what happened in Germany with overuse of that term—a pendulum swinging too far.
 
Kim Weatherall: Giving courts permission to override quantitative evidence may be a good thing.
 
Marco Ricolfi: significant portion of the population?  Tension b/t notion of average consumer and notion of significant portion.  How do we think about this?  Can we divide some issues that should be more normative while others should be empirical?
 
Senftleben: Internet surveys: very cheap ($1000 €) and quick!  May not replicate market conditions, an available criticism, but easy to run. Just a starting point.
 
Ricolfi: the tribunal can say it’s not reliable.
 
Senftleben: yes, there is always a reason to get rid of a survey for not replicating market conditions, time of day, subject population.  But internet survey is fast and cheap.
 
Kur: There is a strong, established place for surveys in Europe w/r/t acquired distinctiveness, but not likely confusion where surveys are rarely accepted, strongly impacted by normative considerations.  (RT: would like to hear more on what those are.)  Survey never tells you exactly the answer on acquired distinctiveness; needs to be weighed.
 
Weatherall: UK and Australia as well: active distinction: reputation surveys are fine, but not confusion.
 
Ohly: even in unfair competition law, there are very few cases in Germany relying on surveys.
 
Andrew Griffiths: consumers as subjects v. objects. As objects: in a market economy, they provide the focal point for attracting demand. Allows people to choose on some basis signified by the TM: accountability. Then we can ask: accountability for what? Usually quality. Mechanism for channeling demand. Consumers are people engaging with the market economy. Vast areas of life previously outside the realm of the consumer have been brought in.
 
TMs and brands are implicated in 2 huge developments: (1) reorganization of production, much outsourcing.  Weightless corporations—retailers, marketing firms.  Consumers have no conception of who produces the products they buy, only of the brand. Huge space between production and consumption. (2) Rise of consumerism/consumer capitalism: huge amount of product differentiation. Consumers, for better or worse, attach value to differentiation/emotional benefits.  Need for greater levels of sophistication in a market economy.  Chinese registration system: student says that consumers are confused about whether registration represents government endorsement.  Led to need to restrict advertising.  People haven’t been programmed as consumers to recognize branding/TM for what they are. 
 
Accountability: Traditionally it was accountability for quality.  Search costs arguments rest on that.  But it can include other things: behavior—corporate social responsibility; supply chains.  (RT: A way of reestablishing the link from production to consumption?  Perhaps only an imaginary one?  A Marxist might identify a human longing for a relation to production.)  Link consumer to citizen—things that we once expected people to react to politically, we now expect them to react to as consumers.  (Which has huge resonances w/gay rights in the US, in many ways, from Chik-Fil-A consumption/boycotting as political expression to the move for “religious freedom” in commercial transactions like employing people and providing services to people.)
 
Gangjee: One way transmissions, left up to TM owner: even in certification marks, there is no accountability to the consumer if the standards are violated. Projection, not conversation.
 
Acquired distinctiveness: pre-litigation surveys. Surveys cause bias; uncertainty/interference w/sample; expense. But if pre-litigation surveys are palatable as RT suggested, then that mediated reality is ok—judges might be more accepting of them.  But how would judges react when the surveys contradict their reactions?
 
Davis: People have gone from “riders” on a train to “consumers” of train services—depoliticized; takes place of engaged participation.
 
Senftleben: Contra Gangjee: large TM owners are worried about what consumers say on Twitter—much more so than about minor litigation.  Taking wrong action against TM parody can cause Twitterstorm that harms the brand/the stock.  Bad publicity has always been possible but can escalate suddenly. Consumer may decide it’s wrong to take action against a certain kind of TM parody, and that’s working.  Reaction against Kit Kat using palm oil/destroying the forest—a parody in which a consumer bit into a Kit Kat and blood came out of it—but acting against it would cause even more negative attention.
 

Greenpeace bleeding Kit Kat ad
Ricolfi: surveys may be suppressed if unfavorable, as with pharmacos that only report favorable results. This is still an important practical question. 
 
Mike Grynberg: Gets to whether we’re talking about the consumer or the public. The consumer is a Swiss Army knife, used to define a lot of aspects of TM.  We need a construction of “consumer,” and certain incarnations are workable.  Average/reasonable consumer can work for confusion at the point of sale, but it’s too narrow when thinking about overarching policy issues of competition, free expression. Judges are boundedly rational, though, and it’s hard to think outside of that construction to broader concerns.
 
Bill McGeveran: We could say: we have a question about TM. Should we look at consumer reaction or at something else? The American system will go ahead and recognize TM rights in lots of nontraditional TMs, and worry downstream about exempting certain kinds of uses. European system may categorically reject some kinds of symbols.  Where we deploy the consumer is a distinct Q from who that consumer is once the decision is made to deploy her.  Sometimes we may simply reject asking the consumer.  (RT: Though it’s super hard for judges to avoid the impulse to say “and the consumer isn’t likely to be confused anyway,” e.g. in cases like Rogers v. Grimaldiwhere there are empirical claims alongside the normative ones.)
 
Graeme Dinwoodie: are there some doctrines that are inappropriate for using consumers in the first instance?  Goods w/which the mark is likely to be used, or goods we’re comfortable giving rights in for a 5 year period to the TM applicant?  Q of whether a mark is identical for purposes of double identity—does that address consumer perception?  One court said yes, and that the consumer should know that if they find it identical then there will be infringement w/o confusion: but why put that in the consumer lens? My sense is that it’s more likely to be inappropriate to invoke the consumer at the registration context.
 
McGeveran: Functionality in the US.
 
Jennifer Davis: aren’t Europeans more likely to take the consumer into account in registration, opposite to what Dinwoodie wants?
 
Dinwoodie: yes for acquired distinctiveness, maybe not elsewhere.
 
Stacey Dogan: Traffix/functionality deals w/ policy issues not endogenous to TM law. Even though the SCt in Dastar purported to make claims about consumer expectations, it was really about the right to copy after a work enters the public domain. Societal interests distinct from market based transactions that sometimes ought to be taken into account.  Bizarre blending of rationales, but deference to ©’s public domain was institutional deference.
 
McGeveran: speech concerns in the US, Rogers v. Grimaldi, explicitly recognizes that we wouldn’t care about confusion if the factors were met.
 
Jessica Litman: Not sure whether this is a shift as opposed to a pendulum, but in past 10 years we’ve seen a backing off from normative considerations to override our sense of empirically what the consumer is about.  Example: scandalousness. At one time, the TTAB would just look at the mark and say it’s scandalous.   Redskins: lots of empirical evidence, and resistance to taking seriously what it showed; but now it seems pretty likely that the Fed. Cir. will say it’s unconstitutional to have that bar in the statute at all; if consumers perceive it as a mark, it’s a mark, and the gov’t lacks any interest in saying that’s inappropriate.  Looks like a retreat from a notion that the public interest has some say in what can be a TM separate from what consumers perceive.
 
Dirk Visser: Fact that © ends is something the public doesn’t understand. Come to believe that everything is licensed (except parody), and the artificial limitation of time is not internalized by them. They could accept it if told, but they wouldn’t have an opinion on it and would assume you need a license for any character T-shirt, whether or not the character was in the public domain.
Barton Beebe: Functionality and genericism (a version of functionality), where courts look to dictionaries; the test can be much more formal than consumer focused, though surveys are also used. Dastar.  Dead presidents: bar on registering name until widow/widower dies.  And the issue of GIs. Even though Americans consider “champagne” generic, the US is going to try to phase it out: imposing on democratic society a hierarchical system, b/c we agreed with the French.  (RT: Should that violate the First Amendment?)  Also the US right of publicity.  Fed court says confusion doesn’t matter; therefore Rogers v. Grimaldi also doesn’t apply b/c right of publicity is about misappropriation.
 
Compare PHOSITA, or more discerning observer in copyright law. Anchor of © is the reader/audience—interesting to consider comparisons. 
 
Eveready survey: do you think the D needed permission from the P for this use? Legal question but we ask it of consumers and courts accept that.
 
Ansgar Ohly: do/should we consider the consumer in questions of use as a trademark? ECJ: TM use is being dissolved and collapsed into the normative “functions” of a TM theory. Moving away from investigating what consumer actually thinks.
 
Acquired distinctiveness: Q arises whether this finding can be corrected by public policy concerns; clash between German and European approaches. German: more public policy concerns = higher distinctiveness required.  ECJ has rejected this time and again; reluctant to get into fact specific investigations of what consumers think, perhaps b/c it’s only in charge of the law.
 
Always market integration is in the back of the mind of the ECJ so the image of the normative European consumer may be a more important referent for them.
 
Kur: but they still insist all these questions are questions of fact that they then hand back to the national courts: a real contradiction.
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Ninth Circuit rejects class certification because ads differed

Posted on June 29, 2015 by rtushnet
Cabral v. Supple LLC, — Fed.Appx. —-, 2015 WL 3855142, No. 13–55943 (9th Cir. June 23, 2015)
 
The court of appeals vacated the certification of a class of purchasers of a dietary supplement. The certified class was “[a]ll persons residing in the State of California who purchased [the supplement] for personal use and not for resale since December 2, 2007,” for the usual California statutory claims.  The court of appeals found that predominance was wanting, because it was “critical” that the misrepresentation at issue be made to all class members.  The record here didn’t support a determination that all the class members “saw or otherwise received” the misrepresentation that the supplement was “clinically proven effective in treating joint pain.” “While some deviations from precise wording in the language of advertisements or representations might not be fatal to class certification, advertisements that did not declare the [supplement] to be ‘clinically proven effective in treating joint pain’ are a far cry from advertisements that did.” The court of appeals expressed no opinion on whether a different class could be certified.
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