AALS Section on Intellectual Property, part two

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

Graeme Dinwoodie began by saying that the Court’s decisions looked slow and cautious, filled with routine textual interpretation – even if you think the result in Moseley is strange, the tools used to reach it are familiar. It’s tempting to see a conscious attempt to change the law by finding for defendants, especially given the strained logic of some of the cases, not to mention the important role played by Justice Scalia’s view about what consumers look for when they go to stores. (I bet Scalia does know what it’s like to shop for himself a bit more than George H.W. Bush did, but Dinwoodie’s point is still fair.)

The dicta give more clues to what the Court wants, but the themes are consistent with classical trademark theory. Prudential concerns abound: the Court seeks to promote commercial certainty, as in Wal-Mart, where the secondary meaning requirement was designed to prevent costly litigation, and Dastar, where the concern was that the defendant was likely to get sued no matter what it did as long as failure to attribute was actionable. In K.P. Permanent, the Court didn’t want to burden people with surveys if they could rely in good faith on fair use.

Given recent opinions’ brevity and incoherence, they raise more questions than they answer (which, I hasten to point out, is true in most areas of the law these days; the Court grants cert to deal with circuit splits, then dodges the question or creates a new rationale that itself requires interpretation – trademark is by no means unique). In K.P. Permanent, this incoherence allowed the 9th Circuit to ignore the decision on remand. In Traffix, the questions include how the two tests for functionality (competitive necessity/cost or quality) relate and how, if at all, one rebuts the evidentiary inference generated by an expired utility patent.

Competitiveness has always been a central part of trademark, as is avoiding bad interactions with copyright and patent law. K.P. Permanent’s conclusion that we can live with some level of confusion is thus consistent with functionality doctrine and not tremendously radical.

It’s true that trademark law has expanded since Kellogg and Sears/Compco. So is the Supreme Court pushing a version of “trademark law in exile”? No, there’s no revolution at hand. Much of the expansion was justified by changes in the social and commercial environment, but courts never fully jettisoned common-law principles. The Lanham Act was just supposed to make the common law easier to apply, and courts have always been willing to impose limits on its scope.

We should also remember that the Supreme Court cases are not really about the bulk of trademark law. The recent haul includes two trade dress cases (when most marks are word marks); dilution (only for famous marks, a small subset even if fame is construed broadly); public domain works; fair use where likely confusion is shown – these aren’t core trademark issues, which are fact-intensive. They are important as signals of how the ordinary tests should be applied, though, and Dinwoodie thinks such signals matter. The Third Circuit’s recent Lending Tree decision, for example, extended K.P. Permanent to nominative fair use (I would note that a panel in the 9th Circuit had already determined that nominative use trumped likely confusion, though what a precedent on nominative use means in the 9th Circuit is anybody’s bet). Courts are likewise following the Supreme Court’s signals in trade dress, finding configurations to be product design instead of packaging where the classification is contested.

In the long term, Dinwoodie foresees more deviations back towards expansion. The biggest thing to fear is the assimilation of unfair competition to trademark, so that any free-riding becomes infringement. A major problem is that the Court’s analytic tools are too blunt to deal with trademark’s current goals, which, as Barton Beebe noted, deal with expression and identity, not just search costs.