AALS Section on Intellectual Property, part one

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

My notes only – I understand that podcasts will eventually be available at the AALS website.

Barton Beebe began by saying that we are in the fourth wave of trademarks, in which the brand is a symbol of itself and everything is branded, including every product feature and tagline. Everything is distinctive of itself – it has an identity or at least could have an identity -- and this seems to occur spontaneously, a process he called semiogenesis (if I understood him correctly). TRIPS, which allows assigment of marks in gross, recognizes this detachment of mark from underlying product, though the US may not have fully incorporated that particular change into law yet.

Beebe traced the legal recognition of this phenomenon to Breyer in Qualitex, who refused ontological distinctions and said anything can be a mark. The new subject matter of trademark is not products or services but meaning itself. This is the key to the recent wave of Supreme Court case law, which, with the exception of K.P. Permanent and Moseley, concerns what can count as a mark rather than issues such as infringement, assignability, etc.

What’s the Court’s response to the potentially infinite expansion of non-ontologically-defined trademarks? Functionality or efficiency are the limits offered. The Court’s opinions tend to be terse and conclusory – there have been no dissents beginning with Two Pesos. Dissents were pretty scarce before that, too, present in Bulova, Park ‘n Fly, and Kellogg, but no others in Beebe’s survey.

Why such unanimity? Two Pesos and Qualitex came back to haunt the Court in Wal-Mart and Traffix respectively. The Court in recent years has thus been burned badly by what appears to be a small field but has lots of confusion. In Moseley, the Court spent a little time on the issue and got out. No one wants to write another disaster. (I’m not sure this is anything but a recipe for another disaster; Beebe may well agree, but he didn’t comment.)

The panel’s title indicates a perception that the Court is cutting back on trademark rights, but it could have been even more restrictionist in results. Has Moseley, for example, made any difference in lower courts? Beebe alleged that courts were already hostile to dilution before the Supreme Court acted.

I must disagree; having clerked in the Third Circuit, with its awful Sporting News decision, I’d say that lower courts were deeply divided about dilution, with some handing out plaintiffs’ verdicts on very thin reasoning. I haven’t checked recently, but at least for a year after Moseley I found no reported cases in which a dilution claim succeeded that didn’t also involve a successful infringement claim, which suggests to me that lower courts responded aggressively to the Supreme Court’s anti-dilution signal. (And by the way, it’s pretty wacky how state dilution claims get dragged around by the scruff of their necks in this process, with courts routinely saying “the analysis is the same” based on circuit precedent that preceded Moseley’s declaration that state and federal dilution claims are very different creatures.)

But Beebe’s broader point is more persuasive – he argued that the Court could have insisted on an explanation for trademark rights founded in search costs rather than accepting the overall expansion. Slowing that expansion doesn’t count as restrictionist in his book.

What about Dastar? People have read it as an apology for Eldred. Beebe thinks the Court rendered “origin” in the Lanham Act meaningless. Contrary to what the Court said, origin need not refer to a producer. In modern trademark, Beebe argued, a mark is essentially a certification mark. Dastar illustrates the whack-a-mole approach of the Supreme Court: each case solves a single problem, but that creates problems for the rest of the doctrine. (I wonder if the metaphor of epicycles helps here; is trademark’s Copernicus anywhere out there?)

Beebe ended by talking about a particular kind of commodity fetishism. Modern marketing encourages us to assume the natural existence of products: they just appear on store shelves, with no need to trace origin or investigate conditions of production. Trademarks are about speaking to us, not about product origin. Dastar did nothing to attack this basic arrangement.