Panel #2, TM,
moderated by Vice Dean Felix Wu
Jack Daniels says
that use as a trademark is special: like copyright’s bête noire, confusion caused
by trademark use is the central concern of trademark law. While I have many questions
about and concerns with the Court’s approach, I want to focus today on how the
concept of use as a trademark—as an indicator of source for a product or
service—interacts with other things that the Court has said about the Lanham
Act and how we might reconstruct trademark law to focus on what the Court has
told us is important instead of what it’s doing now.
I’m going to start
by going back to some earlier cases, Two Pesos v. Taco Cabana, from 1992. As
you may or may not recall, §32 of the Lanham Act provides for a cause of action
for infringement of registered marks; courts have read 43(a) to provide a
similar cause of action for “unregistered marks”—matter that is not registered
with the PTO but serves a trademark function of indicating source. In Two Pesos,
the Supreme Court tells us that “the general principles qualifying a mark for
registration under § 2 of the Lanham Act are for the most part applicable in
determining whether an unregistered mark is entitled to protection under §
43(a).”
It doesn’t really
tell us what the “for the most part” caveat might mean, but I’m going to focus
on this point: “entitled to protection” is not the same thing as “entitled to
the same presumptions, scope of rights or remedies.” Indeed, in recent years
the Supreme Court has repeatedly emphasized the multiple benefits of
registration to a trademark claimant, including in the recent cases of Matal v.
Tam and Brunetti, striking down various bars on registration.
Then, in Lexmark v.
Static Controls in 2012, a Lanham Act false advertising case, the Court gave us
two more principles for interpreting section 43: a statutory cause of action
extends only to plaintiffs whose interests “fall within the zone of interests
protected by the law invoked.” And here there is a very clear statement in the
statute of that zone of interests, which most relevantly includes “to regulate
commerce … by making actionable the deceptive and misleading use of marks in …
commerce; …; to protect persons engaged in … commerce against unfair
competition.” I’ve left out the parts specific to registered trademarks and the
reference to treaties.
Second, the Lexmark
court says, 43(a) has a proximate cause requirement: a plaintiff suing under § [43](a)
ordinarily must show economic or reputational injury flowing directly from the
deception wrought by the defendant’s advertising; and that that occurs when
deception of consumers causes them to withhold trade from the plaintiff.
So, putting Two
Pesos together with Lexmark, that an unregistered mark might be entitled to
protection doesn’t mean has the same scope of rights as a registered mark—national
scope of registration is just one example; Lexmark’s standing requirement of
showing the kind of harm against which 43(a) is directed as part of the plaintiff’s
main case, rather than presuming harm, makes sense as another, and some lower courts
in trademark cases have noticed that Lexmark by its terms demands this showing
from all 43(a) plaintiffs, not just false advertising plaintiffs.
Then, in Jack Daniel’s
last term, the Court told us that use as a mark to identify the source of goods
is trademark law’s central concern; when there’s use as a mark, the likely
confusion test provides enough protection for any First Amendment interests. The
Rogers test is for situations in which the use does not indicate source, as in
the title of the song Barbie Girl or the use of images of trademarked goods in
artwork or movies.
But, by indicating
that the Rogers speech-protective test that insulates against claims of
infringement could only apply when there wasn’t use as a mark to indicate source,
and by saying that it wasn’t ruling on whether Rogers was ever appropriate, the
Court necessarily implied that some things that aren’t uses as
indicators of source could be actionably confusing.
The obvious candidates
are uses that, in the words of 43(a), “deceive as to the affiliation,
connection, or association of such person with another person, or as to the
origin, sponsorship, or approval of his or her goods, services, or commercial
activities by another person.” That is, Rogers is for uses that might
confuse, but not about source.
So I’m going to
suggest that Jack Daniel’s, in combination with the last term’s other TM case, points
towards a revitalized distinction between the treatment of registered marks
used to indicate source—which get the highest level of protection—and everything
else; to whit, uses of registered marks that don’t indicate source but might
indicate something else, and uses of unregistered marks, where plaintiffs
should have to show not only validity but also harm from the use. We already
make this kind of distinction in other contexts, for example, someone who has a
valid mark can oppose registrations on 2(d) confusion grounds, but if you don’t
have a mark but do have fame that you aren’t using as a mark in commerce on
goods or services, you can oppose using 2(a), which bars registration of
trademarks that “falsely suggest a connection with persons, living or dead”
or with institutions. And the practical burden of showing false connection is
probably higher, just because the things that make confusion more likely—having
competing goods and services in the market, having a commercial reputation and
not just a general reputation—are missing if you don’t sell goods or services
yourself.
The last piece of
the puzzle then is the Court’s rather convoluted decision in Abitron v.
Hetronic. The court there was deciding the extent of the Lanham Act’s extraterritorial
application, but in the course of their reasoning, several opinions said things
about standard trademark use, some of which were embarrassing but at least one
majority holding of which has potentially broad implications especially in
interaction with Jack Daniel’s.
In Abitron, the
opinion of the Court insisted that “Congress has premised liability on a
specific action (a particular sort of use in commerce),” and further stated
that both 32 and 43(a) “treat confusion as a means to limit liability to only
certain ‘bona fide use[s] of a mark in the ordinary course of trade.’” As for
that, the Court continued, such use must serve to “identify and distinguish
[the mark user’s] goods . . . and to indicate the source of the goods.”
That is, the infringer,
to violate 32 or 43(a)’s analogous trademark protection, must be using the mark
in a way that is bona fide—that is, not inconsistent or sporadic, but in a way
that would—absent the existence of the prior rights claimant—be enough to make
it a mark for the defendant. The Court is very clear about this: there is only
one definition of use in commerce in the statute, and it applies to both what
the plaintiff must do to claim rights and what the defendant must do to violate
those rights.
That doesn’t mean
that 43(a) couldn’t go beyond classic trademark protection. As Mark McKenna has
elaborated, there’s a distinct class of acts that constitute unfair competition
that we could easily read as part of 43(a). But the difference is profound,
because when a use is not bona fide trademark use, the plaintiff should not get
the benefits of the various presumptions we give to trademark claimants—it should
have to show harm, even absent some doctrine like Rogers for non-trademark
uses. Moreover, when there is non-source confusion, the remedies ought to be
different—disclaimers or other redesigns are the appropriate remedy, not
prohibitory injunctions.
Indeed, Justice Sotomayor’s
concurrence in Abitron for three Justices suggests that the Court is thinking about
source confusion, trademark use, and harm as linked concepts; as she points
out, along with use in commerce, “Plaintiffs must also generally show, for
example, that their “injuries are proximately caused by violations of the
statute.” citing Lexmark and concludes that “The Court is thus mistaken that
“abstract consumer confusion is sufficient” to recover under the Lanham Act.”
The problem we face,
of course, is that lower courts have expanded the concept of confusion so far
beyond source confusion that the Court’s thousand-foot vision does not describe
the system on the ground. But it could, and in many ways that would be a return
to the common law system in which trademarks got special treatment in terms of
remedies compared to acts of unfair competition, which could also be enjoined
but only on a higher evidentiary showing. And this move—firmly distinguishing
source confusion from other kinds of confusion, this time with a statutory
basis, would have salutary effects on free speech and competitive freedom to
operate, which are topics I believe the other speakers will take up in more
detail.
Stacey Dogan &
Jessica Silbey: Jack Daniels & the False Promise of Trademark Use.
Kagan/majority is
too sanguine about ability of existing doctrines to protect speech that Kagan
views as important. Title may seem surprising b/c Dogan advocated for TM use to
distinguish b/t secondary and direct liability in TM law. Why not celebrate
that Court embraced trademark use? The TM use doctrine is not up to the task
given it: policing line b/t expressive speech that deserves special protection
and run-of-the-mill commercial uses of marks.
Kagan appears
sympathetic to idea that certain expressive uses deserve special protection
against infringement suits, whether through varying the confusion test or
otherwise. Kagan expresses no explicit view on whether Rogers is the right test
for traditional expressive works, though seems to agree some special insulation
is required. But no special protection should apply when D has used mark as a designation
of source for its own goods/services: in the way the Lanham Act most cares
about. Most parodies will be recognized as such and not confusing, but in cases
involving TM use, standard likelihood of confusion test applies, regardless of
D’s expressive purpose. W/o TM use, can use other doctrines more protective of
speech interests.
But what is TM use?
Kagan describes it as “designation of source.” Notion of source identification
appears throughout as essence of TM function and the type of use that doesn’t
perform a source ID function. Completely confident that this will ensure
continued protection for the uses Rogers allowed: cases where TM is used not to
designate a work’s source but solely to express something: Barbie Girl, Univ.
of Ala, LV v. Warner Bros/Hangover II is non-TM/purely expressive and not
source indicating v. Hog Farm motorcycle shop, United We Stand v. United We Stand,
Timmy Holedigger perfume. But examples are not analytical tools. She thinks it’s
intuitively obvious that the former are purely expressive, but what are the
characteristics to use going forward.
We might try to
distinguish based on the nature of the product: expressive works/other types of
products, including mundane products like mugs and other merchandise (Univ. of
Ala). But how do we know a mug’s not expressive? What about greeting cards,
sneakers, a T-shirt, an NFT, a doll? As in MGA v. Harris, a case about dolls
where the court granted Ps new trial after JDI, TM use requires a detailed
factual analysis that precludes early resolution before trial.
The lower courts are
not drawing the line b/t use and non-use that is consistent w/Kagan’s gut level
formulation. Most courts have found Ds to be engaged in use as a mark, for
movies, books, and TV show titles, the very type of use that Rogers was
designed to protect. HomeVestors: title of TV show. Davis v. Amazon: dismissed
claim, but not b/c of Rogers, for movie title. Morlu v. Amazon, Storm Raven
title—possibility that it would be perceived as TM use is a problem. JHT v.
AMC: Liberty Tax services, granted motion
Didn’t maintain the
line Kagan expected it to hold. Implicit line doesn’t survive move to explicitness.
Another possibility:
limit “TM use” to situations where D would have plausible claim to TM rights if
asserting them, as happened with VIP/Bad Spaniels. Punchbowl News/Hog Farm
cases seem like branding uses—establishing independent identity under the mark.
This approach could get rid of cases where TM holders’ claim isn’t to source
confusion, but sponsorship. But it’s not clear this would achieve Kagan’s
goals, b/c courts have found TM uses and source identification in cases involving
these protected types of works. [Purely expressive doesn’t work well, but designates
something other than source might?]
Real problem w/TM
use as device for protecting speech interests: in its original conception,
Rogers was devised not b/c TMs in expressive works can’t ever serve TM
functions, but b/c there’s something special about speech in this context that requires
more than the ordinary LOC test. Titles are hybrid! They have both commercial
and artistic elements. Inextricably intertwined: title promotes movie and
significant means of expressing what artist wanted to express. Consumers have a
dual interest in not being misled, but also in receiving results of author’s
free expression.
Another approach:
incorporate Rogers-type concerns into LOC test; one might worry whether that
test is capable of protecting speech interests, particularly at an early stage
of litigation. If it can’t be used that way, lots of Ds will roll over rather
than fight.
In the wake of the
Barbie movie, does Barbie Girl come out the other way? The
argument was in part that people won’t license third parties to make fun of
them, but after the Barbie movie, how persuasive is that?
Christine Haight Farley, Parody Perils Post Jack Daniel’s
Sotomayor thought that parody might need a special test at
oral argument; the opposite of what the decision said, though it did say that
LOC test isn’t blind to confusion. That kind of message matters in assessing
confusion b/c consumers aren’t so likely to think that maker of a mocked
product is itself doing the mocking. So we don’t need a special test. Maybe
generally right; a lot of cases aren’t confusing. But are parodies really safe?
If so, how? When the court takes away this speech-protective test, it wants us
to believe there’s no sacrifice of speech interests.
3 perils: (1) Survey evidence on authorization; (2)
Application of the LOC factors; (3) generally proving parody.
On authorization, Sotomayor concurs to warn that surveys may
reflect mistaken beliefs that all parodies require permission from owner. JDI:
survey expert found 29% confused. Shari Diamond looked at responses; 29/62
counted as confused were only confused by questions about authorization or
affiliation. E.g. “The bottle is mimicked after the Jack Daniel BBQ sauce. So
they would hold the patent therefore you would have to ask permission to use
the image.” [Like Luke Skywalker says, every word in that sentence was wrong!]
Balducci: court accepted survey showing more than half of respondents thought
you needed permission to use Michelob name/logo.] What do we do about the
statutory language which includes “affiliation” or “approval”? That will take
some work (not just assuming that the words in the statute are transparent to
consumers).
(2) SG took the position that the dct erred in failing to
factor parody into the LOC factors. Chewy Vuiton is a good example of that, but
it’s really just strength/similarity that get special treatment in parody. [I
think intent does too.] But Balducci said that it was an error of law to do
this. In Vans, the court didn’t adjust the factors at all.
(3) Courts say: Not all parodies are nonconfusing, but only
successful parodies fare well! What is a successful parody and how do we figure
it out? That seems to be a threshold test prior to LOC. That test has to be
pretty low-level—not whether you succeed (that would make LOC superfluous) but
whether it’s plausibly a parody. But how do you measure that? The LOC test depends
on the relevant consumer. The reasonable person? Cliff Notes v. Bantam
Doubleday might be an example of that. Pokes fun at the original. The Onion’s amicus
brief in a non-TM case notes that parodies are an old literary tradition, and
not every one has to slap you across the face to be successful. Demanding a
clear message is a tall order! Cliff Notes said that parody has extra 1A
protection; but is that true? Tommy Hilfiger says: when a parodist makes TM use
of another’s mark, it should be entitled to less indulgence even if this
results in residual effect on free speech rights of commercial actors—the opposite
of Cliff Notes. Paid out in Vans v. MSCHF: that shoes were conceived of as a
parody doesn’t matter—message of ridicule has to be clear; if it leaves
confusion, parody hasn’t succeeded and there’s infringement.
[4th peril: dilution! If anything is TM use, then
everything will be excluded from both of the exceptions that were intended to
protect noncommercial speech.]
Wu: TM use: suppose you
could just decide the role of TM use in the system. How would you design it?
What if we took Rogers seriously about titles’ hybridity? If a non-TM use, no
infringement; you need Rogers when there’s a hybrid function.
Dogan: the hybrid
case is the kind of case that Kagan says need to be bundled into TM use and not
treated specially, b/c she says TMs are expressive all the time. As long as it’s
a TM use type, then you have to throw it into LOC.
Wu: but you’re
saying Kagan’s wrong. So what would you design from scratch?
Dogan: to me, the
main value is in distinguishing b/t parties selling their own products or
services and third parties that might be enabling them/helping them—informational.
Internet intermediaries. Is Google using TMs as marks? No. It should be liable
if at all only under contributory infringement standards. TM use can be use in
those “easy” cases. What Kagan is trying to do is possible, but TM use is not a
very effective boundary-setting doctrine, b/c it’s inherently circular—inevitably
brings in questions of confusion. How do we decide whether someone who’s put a
symbol on their shirts is engaged in TM use? Ends up a mucky, fact-intensive
inquiry. In wake of JDI, we need to do something to firm up the speech
protections in LOC analysis and move more in Chewy Vuiton direction and allow
courts to make earlier judgments that perceive parody and commentary and throw
cases out based on lack of LOC.
Intent should also
matter to LOC—intent to comment should be relevant.
Jessica Silbey: How
do we know that what Bad Spaniels is doing is use as a mark? If you just saw
it, would you think that’s their brand? They had lots of other dog toys with
other jokes. None of those were branding uses. They had VIP on the hangtag. We
should use other defenses, like nominative and descriptive fair uses to
tolerate certain kinds of confusion; we should have that here when there’s
hybrid use. SCt is hypocritical in this context; they wave the 1A flag for
bakers and florists and website designers; what about this speech? Why are TM/©
not within that protected sphere? Property is elevated over speech.
Farley: following
JDI, if you’re making TM use, you don’t get nominative fair use (or plaintiffs
will argue that for sure). That’s where Gorsuch’s suggestion that anything not
in the statute doesn’t count is so worrying. Vans case: TM use was not analyzed;
depended on their reaction to the rest of the case. Kagan’s opinion tried to
give us insight into what she thought TM use was, but then she pointed to the
hangtag with the little dog “logo.” This case was about the trade dress, but
the analysis makes it hard to separate TM use from parody products.
RT: Alex Roberts has
cataloged TM use at the registration stage; we could start there. The Court was
very clear in Abitron that the D has to be making bona fide TM use in order for
there to be liability; maybe it didn’t mean that, but we should try holding it
to its word.
Wu: what would
Farley do?
A: would lean hard
on certain things in JDI: parodies should be protected. Along the lines of
Ginsburg’s “fair use is the built in 1A protection” take for ©. First decide if
it’s a parody at a very low level of inquiry, then filter through LOC factors.
If intent is properly applied, we wouldn’t need to flip any analysis: intent to
confuse should be the only relevant intent. Really have a theory of the case
about why this is a successful parody. If she could change the world, proposes
a broader fair use defense that recognizes that LOC is not enough to protect
speech.
RT: My view:
commercial/noncommercial speech should be the line.
Dogan: Rogers became
a victim of its own success—expressive uses did so well [appropriately!]; we’re
seeing a swing in the other direction. Trial court hated VIP! Accepted
testimony of psychologist who testified that consumers would start thinking of
poop every time they drank Jack Daniel’s. If we have a legal standard that
gives discretion to these factfinders to reach the equitable result, bad things
will happen.
Farley: when the SCt
decides a TM case, it’s not paying attention to how it’s working on the ground
or how far the law has expanded—it thinks TM law is working pretty well.
Hetronic is an example of that. It only applies when you’re making a bona fide
use in commerce!
Silbey: big visible
wins=people might stop suing as much. But you don’t want to have to take it
case by a case to a jury and then to the SCt.
from Blogger http://tushnet.blogspot.com/2024/02/cardozo-symposium-trademark.html
Rebecca Tushnet 
