AALS Section on Intellectual Property, part three

2006 AALS Meeting, Jan. 7
Section on Intellectual Property
Trademarks at the Supreme Court: Evolution or Revolution?

Laura Heymann spoke about the concept of the public domain in trademark law. She defined a trademark commons/public domain not by abandoned or genericized terms, or by a pool of shared expression, but by private parties’ ability or inability to control the meaning and associations of marks. That is, she was concerned not primarily with relations between competitors, but relations with consumers. We should recognize consumers’ capacity to negotiate multiple associations with marks rather than controlling the meanings to which they’re exposed.

Trademark meaning is not just made by producers, but by consumers whose intellectual dexterity lets them recognize what’s at stake. We can get the joke “Where’s the Beef?” in a political campaign, know what a swoosh on clothing means, know that Continental Airlines and Continental Bank aren’t the same. The public can select, accept or reject meanings. That playfulness is guided by advertising but still not fixed. We need to trust consumers to manage and negotiate meanings, and to make distinctions. (This reminds me very much of Ann Bartow’s work on trademark law’s gendered assumptions about consumers’ gullibility.) We should tolerate multiple associations with a mark; not all meaning should be controlled by trademark owners.

Though Heymann is no fan of Dastar’s reasoning, she notes that the Supreme Court at least placed trust in the consuming public to choose wisely. Relatedly, Dastar undercuts Boston Professional Hockey Ass'n v. Dallas Cap & Emblem, 510 F.2d 1004 (5th Cir. 1975), and other promotional goods cases in which the consumer wants to display allegiance to some group but doesn’t much care about the official endorsement of that group; the distinction between expressing allegiance and assuming endorsement is not too fine for an average consumer to make. Likewise, K.P. Permanent posits that, faced with two competing associations, one used as a trademark and one not used that way, courts need not step in because consumers can often tell the difference (or, at least, the existence of some confusion doesn’t justify legal intervention when the difference remains visible and useful to many other consumers).

In dilution, Moseley limits the cases in which consumers are thought not to distinguish marks. Just because one mark reminds a consumer of another doesn’t mean she will fail to separate the two. Indeed, often the second-comer depends on the consumer’s ability to make the distinction and thus get the joke, whether it’s Victor’s Secret or The Greatest Snow on Earth.

Returning to Dastar: Heymann thinks the court made a mistake about the role of attribution in copyright law (to wit, copyright doesn’t protect attribution, though authors may sometimes leverage their copyrights to get contractual protection). Though she wants to trust consumers generally, she sounded a cautionary note about the Court’s trust in consumers’ ability to sort matters out and not mistakenly buy both sets of tapes. That trust is warranted in some cases, especially parodies, but by refusing to consider the possibility of deception at all, the Court put too much burden on consumers. Traditionally courts have held consumers of high-end goods to a higher standard of care, but in Dastar that’s extended to a mass market video and in Moseley to adult novelties.

Given that the war buffs I know tend to have dozens of books about the same events, I find it easy to believe that most consumers of WWII videos who’d consider buying two sets wouldn’t mind some repetition. If it’s just a case of slipping them into different sleeves, as Morrissey sings, that could be deceptive – but the Supreme Court seems to have preserved the possibility of a false advertising claim under such circumstances.

Heymann ended with the suggestion that the trust in consumers displayed in Dastar and K.P. Permanent might affect initial interest confusion, which evidences a lack of faith in consumers’ ability to sort things out for themselves. That would be a great result. My take: In false advertising law, consumers are often held to too high a standard in judging substantive matters – reading nutrition claims, for instance – when they have no relevant expertise. At the same time, trademark law presumes that the very same people are easily confused in an arena in which we are all experts: modern marketing practices.