Tuesday, April 15, 2008

Iowa Trademark Scholars' Roundtable, Session 2: dilution

Session 2: Trademark Use and Dilution.

Beebe: What is the relationship between tarnishment and search costs? Despite his sympathy with Lemley & Dogan, the search costs explanation for dilution is actually so similar to confusion that it takes dilution apart, but tarnishment appears different.

One way to approach use in dilution is to ask what is our theory of the TDRA? New §43(c)(1) requires “use of a mark or trade name in commerce” likely to dilute “the famous mark,” thus apparently imposing a “use as a source-identifier” requirement. Beebe is even willing to say that the plaintiff’s burden in dilution is to show that defendant’s mark is perceived as a mark (in which case even Haute Diggity Dog might have been ok), but then again the language is similar to the old FTDA, and “designation of source” was deliberately dropped from the law.

The TDRA might even be a model for writing a use requirement into the Lanham Act more generally. It also gives us potential redundancy in the fair use provision by protecting any fair use other than as a designation of source.

Dogan: Tarnishment is a more harmful version of blurring.

Lemley: Tarnishment has a potentially different mental effect that can come more readily from a single use than blurring—the salacious/problematic use is so relevant that it by itself influences my view of the mark.

My thoughts:

For those who do not believe in a separate trademark use requirement and think that proof of confusion is proof of use, like McKenna, it would logically follow that proof of dilution is proof of use for purposes of dilution. But this creates serious problems for the US concept of dilution; too many things cause dilution that we still want to allow, so we need a bunch of exclusions. If we defined dilution as commercial free riding and disfavored comparative advertising, parody, and so on the way the Europeans do, we’d have a lot fewer problems of definition, though I obviously think that would make dilution an even worse idea. In fact, I have taken the position that our concept of dilution, combined with our exclusions, render current dilution law an unconstitutionally irrational regulation of commercial speech.

Relatedly, if your definition of dilution is interference with source significance. Trademark owners quite vocally claim that non-source-identifying uses can be dilutive, specifically tarnishing and genericizing uses. We may disagree, but I have to respectfully part ways with Mark McKenna’s argument that use as a mark or as an indicator of source is inherent in the concept of dilution (as he more persuasively argues that it is also inherent in confusion). Interference with source-identifying function can be caused by acts that are in themselves not source-identifying. Only a purely Schechterian dilution law, which nobody seems to have (or want) would be tied to the junior user’s source-identifying use.

I increasingly see trademark use as a heuristic—a way of implementing two intertwined propositions, one normative and one descriptive. Normatively, certain practices are desireable, usually because they either promote competition or free speech; we thus should exclude them from the scope of trademark law, whether confusion or dilution. Descriptively, such practices are also exceedingly unlikely to cause the harms targeted by trademark law, whether confusion or (perhaps less persuasively) dilution.

Seen in this way, a use requirement joins a number of other useful heuristics in trademark law, most prominently nominative fair use and the rule in Rogers v. Grimaldi, but also rules like the secondary meaning requirement in Wal-Mart for product design. Justice Scalia is quite up-front about intertwining descriptive and normative—he acknowledges the possibility of inherently distinctive product design in occasional cases, but declares that the game isn’t worth the candle. It’s not surprising that the language of use as a mark and consumer perceptions of use as an identifier of source show up in these kinds of cases too.

Here’s a radical claim: the multifactor confusion test has been a mistake. It leads to continual expansion of the law. Notably, the major innovations (and the classic limiting doctrines) take the form of substitutes or bypasses for the confusion test. Along with Rogers and Wal-Mart, there’s functionality; TM use; nominative fair use; abandonment; genericity; and the proposed materiality requirement that McKenna, Barrett, and I like. Kozinski holds in Mattel v. Walking Mountain that transformativeness in copyright fair use is a matter of law, no matter what your consumer survey says; why not make most of these doctrines, including confusion, into a matter of law?

This move would be even more important in dilution because we have no idea what dilution is; rather than searching for harm, simply ban identical or nearly identical uses of very famous marks (subject to exceptions, like use in noncommercial speech).

This might enable us to avoid confusion/dilution conundrums because we would no longer be asking about the harm, if any, from a particular act, but about the type of behavior. Competition might be better off if “exclusive right to use” really meant “exclusive right to use” within the scope of registration (again, subject to exceptions/defenses like descriptive fair use). We wouldn’t ask about confusion as part of plaintiff’s case, though lack of confusion might be a defense. Note that this is not a restrictionist position—TM owners get a lot out of not having to show likely confusion within their field of registration—but it might be better for restrictionists overall if that enabled lots of uses by noncompetitors.

Bone: He blames the Polaroid case! Maybe we have to worry about noncompetitive goods causing harm in certain cases; the Second Circuit gave up, though, and made potential sources of harm factors in every case.

The exclusions in dilution define a set of activities that don’t create the harms we care about. But we might say there’s no such set. Here’s a story about the harm of the Tiffany strip joint: the meanings of “Tiffany” jewelry are part of the product, so tarnishing uses change the product for the users. It’s more likely, however, that a branding use will affect the firm—Tiffany in a porn movie won’t have as much effect on Tiffany as a store as Tiffany in a source-identifying context. The similarity in marketplace contexts—that they’re both source-identifying—causes the dilution.

There’s a network/node information quality story to tell about blurring.

Bone: On the enforcement cost side, a TM use requirement for blurring is good. Free riding cuts across everything, creating a huge risk that judges will use blurring against anyone. You want to nip that in the bud with a TM use requirement.

Tarnishment may be different; categorical defenses might suffice to protect parody, etc.

Goldman: If you buy these harms, the TM use requirement seems counterproductive; a blurring use could be noncommercial.

Bone: The harms flow from source-identifying uses.

Litman: If dilution did work that way, naming my dog Tiffany would be different than naming my store Tiffany. If our minds don’t work that way, Bone’s story doesn’t work.

Comment: This seems like a just-so story to me. I don’t think there’s any evidence that mental categories map in any way to “use as a mark.” In other words, “car” is no closer to “jewelry” than it is to “dog,” so the name of any one of them is no more or less likely to have an effect on the others.

Lemley: It might be that all these uses dilute, but we worry more about restricting the non-TM uses for other (speech) reasons than about restricting TM uses. We’re also quite sure that a dilution law without a TM use requirement is unconstitutional, but a limited law might be constitutional. (I’m quite sure it’s not!)

Beebe to Dinwoodie: Does §43(c) strengthen your argument that use isn’t a separate requirement in the rest of the Lanham Act?

Dinwoodie: People will make that argument, but Congress wasn’t thinking about the issue.

Dogan: Referential uses tend to change meaning of marks but still reinforce their singularity as source identifiers. Source identification is a very strong limiting principle.

Bone: The other account of blurring is added associations, which can come from references. If you reject that account of blurring, source identification makes more sense.

Dinwoodie: The Europeans are limiting dilution to the “essential function” of a mark—its marketing function—a move that forces courts to ask what they’re meant to be protecting. A German court found that toy replicas of cars were allowed because they didn’t interfere with the essential function of the mark for cars.

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