Friday, July 24, 2015

ISHTIP at Penn, part 9

Session 6 | Josh Sarnoff (DePaul University), Moderator
In Search of a Trade Mark: Search practices and Bureaucratic Poetry
Jose Bellido and Hyo Yoon Kang (University of Kent, UK)
Commentator | Amanda Scardamaglia (Swinburne Law School)
Enhanced searching: bureaucratic poetry—early manual searches. TM office was tasked with organizing words and devices for the first time: a new commodity of commercial information in signs and words and the ability to find them on the register.  Needed a system of classification to register marks; classifications changed over time to reflect commercial change.  Patent system classified according to subject matter; a different endeavor.
TM clerk was very different from patent counterparts—technical expertise v. experts in delicate art of distinguishing and classifying signs and words.  TM agent emerged, esp. after 1883 amendments opening registration for invented words, leading to significant increase in number of applications. Agents were skilled in navigating and searching the register.  Profession attempted to limit access to registration data, as patent agents had before them; closing of profession was linked to increasing openness of TM registers.  Index clerks and TM abstractors: index w/range of general marks; divisional index of devices arranged according to things like birds, buildings, and beasts; index arranged alphabetically by prefixes and terminal endings/suffixes—third index was the most important. 
Significant impact on development of TM law—led to deconstruction of words and assisted w/creating new marks by creating comparisons.  Deconstruction of words was evident in TM infringement cases as well, which focused on comparing sequences of letters in the same way.  Indexes were strategic—could find out about what competitors were doing b/c they’d register preemptively. Initially available only to agents but eventually opened to public, though agents were still powerful actors who specialized in searching the register.
Index cards and punched cards; final phase of computerized searching and privatization of search services—entrusted to private services, with a direct and immediate impact on search.  Computerization affected registrations: TMs were redesigned for mechanical purposes; transformed the way search happened—algorithms made it possible to search across subjects & geography quickly. Removed obstacles to manual search.  Transformed registry from visual markers of ownership to a metalevel database.
Discussion points: evidence of how the processes impacted the legislation itself?  Registries internationally were introduced around the same time.  What indexes if any were used at that time? Did that impact others’ indexes?  Did others’ indexes affect Britain’s? What were the tradeoffs in moving from mechanical to digital?  Paper says openness increased, but was the info the same?
Bellido: we wanted to explore bureaucratic property. Were surprised that first TM clerks in UK were A.E. Housman, Griffin, and other poets and antiquaries.  Bureaucratic poetry: indexing techniques have something to say about how TMs were conceived and developed.
Kang: TM is more complicated than patent b/c of two different forms of numbering—application number, then publication/registration. Can be complicated to retrieve full info.  Shows how unstable the nature of property is in legal practice.
Bellido: the more open the register was, the more experts could claim to be able to navigate this massive endeavor.  Legal expertise is founded in the management of retrieval tools that may look more technical/less interesting to legal scholars, but it’s everyday routine that constitutes the subjectivity of the TM expert.
Kang: relates to issue of legal agency: what does TM law actually do?
Bellido: registration practice can make the TM a thing/object of law/property even before there is a product in the market.
Kang: complicate picture of TM as consumer-driven. 
Bellido: registering invented words: impact on the legal profession—agents could then sell the possibility of providing new words to companies. We haven’t touched colonial indexing.   
You sometimes see trolling behavior around descriptive words/changing descriptive words around to try to make them registrable.  Or an agent could identify marks that were not quite as good but were usable until the register relaxed its standards.
The Modern Expansion of Trademark Rights, and How One Forgotten Treaty Made It Possible
Christine Haight Farley (American University Washington)
Commentator | Dan Hunter (Swinburne Law School)
Big claim: a forgotten treaty did a lot more than we thought it did in creating TM rights.  Hunter is not sure that this treaty made expansion of rights possible.
Paper is a detective story.  Interamerican Convention on Trademark and Commercial Protection (IACTCP) (1929).  TM comes from one of two or maybe three/4 foundations: passing off, concerns over confusion, search costs.  Does this convention give us new insights into the foundations of TM law?  Offers unfair competition as a distinct foundation.  Can we tell that the convention is a contributor to the modern day understanding?  Even if we could, so what?  The lawyer’s question: what does that tell us? 
Why was the convention ignored?  The architect of both IACTCP and the modern Lanham Act (1946) was one man, Edward S. Rogers, founder of first specialized TM firm and lover of unfair competition. 
Significance of Inter-American TM Convention (1929)—self-executing, and yet completely forgotten.  Modest number of cases in TTAB and courts, startlingly small # of cases.  Yet this is law.  Why forgotten?  Or has it been?  Are Ps all just dumb?  That seems unlikely.  Erie says there’s no general federal common law. Then there’s the Lanham Act §43(a), but also and especially 44(h) and (i).  The Lanham Act is, for all intents and purposes, federal common law, and the paper suggests that 44(h) and (i) need to be more talked about, b/c §44 is generally about recognizing TMs from outside the US; in fact Rogers included them largely to include unfair competition w/in the American system.
Questions: is the paper trying to get us to apply the Convention?  Are you arguing that unfair competition is foundational to the Lanham Act? Just b/c it’s in the Lanham Act doesn’t make it foundational.
Farley: A treaty still in force about TM—we don’t have many of those in the US.  Modern parallels were interesting about how the US makes the law of other countries and then has a strategy of making US law also through that undemocratic process.  Beyond that, this text is so interesting b/c of its novelties and timing, as well as the characters involved.  Inordinate influence of a couple of people has no modern analogue.  We can inadvertently make a mistake by privileging moments of development of IP; IP has not always had pride of place in law, society, or commerce.  Especially in TM law: early 20th c., it was a teeny field. TMs weren’t as valuable as they are; there was no TM bar, certainly not in Latin America, just a handful of people in US.  These particular people could have outsized influence.
The ground was shifting under their feet b/c the nature of marketing was changing, markets were changing, global markets were changing.  Amorphousness of IP and particularly TM.  Doing this history, evident how unsettled and indeterminate the foundations of TM are.  The story that we have an ancient idea of unfair competition, within it a new thing called TM law, isn’t right. These were simultaneously being developed and playing off one another.  Early development was a mess.  These guys are making up new law in this treaty.  Provisions don’t appear anywhere else.  Rights that suited US businesses at that moment for expansion into Latin America.
Then the Lanham Act comes along, and federal common law is pulled out.  Given the fact of the treaty, and their overlapping author, and that Rogers argues the first TM Supreme Court case after Erie, there was a unique opportunity to write a new chapter in TM as clean, settled, organized.  And we don’t get that. We get slivers of clarity, and then this space/haze around the rights. We focus on §43(a) as a site of expansion and a site for unfair competition, but these sections in 44 are what the drafters intended.
US corporations exercise their rights under the treaty in Latin America all the time; drafters expected that b/c of US dominance.  Lanham Act makes vague reference to the treaty (was explicit reference in first draft); Rogers argued that the treaty was self-executing and the SCt agreed.  Conclusion: give those rights to go after unfair competition to US citizens as well.  We didn’t get that. §43(a) was reaction of patent bar trying to put the brakes on what Rogers was trying to do in §44.  Rogers deals with this by taking §43(a), designed as substitute for 44, in the law too. 
RT: Another suspect: What is unfair competition that isn’t infringement?  Trade secret misappropriation was a possibility bruited about in the 1940s; maybe also antitrust violations.  But that kind of understanding seems impossible to recover now, especially given other laws—no court is going to find that there’s been a federal trade secret law for 70 years.  Trademark infringement-like activities that aren’t infringement but are still unfair competition?  US courts have no current understanding of what that gap might be: collapse b/t protection and registrability, absence of a passing off category in US law.
A: Many law review articles written at the time clearly stated that many things were under the umbrella of unfair competition but were nowhere collected; some understanding that it would be collected in Lanham Act: trade secret, tortious interference w/ business relations, antitrust.  Not so much interested in those things, but is interested in what the haze might be surrounding the concept.  (What might a clever P’s lawyer argue?)
Possible to bring something like a TM case w/o a possibility of confusion.  Rogers brought a case where there were nonproximate goods, a different name but phonetically similar, and no bad faith.  That was meant to be one of the §44 cases—not really a theory of confusing the public, but unfettered right to expand business.  Haze of rights as buffer around TM rights.  Rogers won, but we only talk about Frank Schecter, who lost; Rogers won by making subtle moves.
Q: compare to avoision in tax law: indeterminancy of whether someone is engaging in avoidance (ok) and evasion (not ok).  Infinite ingenuity of malefactors to get around intent of law w/o letter of law.
Madison: concepts in the law having agency v. the agency of individual humans like Rogers. Rhetorical constructs enabled by disciplinary angles. 
Q: role of timing?
A: may have been related to the Depression; also to Erie and resulting uncertainty for TM lawyers.  Treaty was a bit premature for the Latin American market.  Responding to a Europe in which the US lacked a big place, anticipating Americas as a market to dominate. WWII meant that vision didn’t come about as anticipated.  Not that many businesses were demanding these kinds of protections; just on the cusp.
Sarnoff: if the idea is to remember, do you expand rights in unpleasant ways?  Is this a comedy and not a mystery—a tale of laughter and forgetting?

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