Monday, December 11, 2006

Dilution and free speech: further comments

At Rochelle’s kind invitation, I talked about my work on cognitive psychological explanations of dilution, which are offered in support of the consumer protection/mental search costs theory. I referred to Diane Zimmerman’s point (2): First Amendment doctrine makes it very hard to regulate non-false speech, but easier to regulate false speech at least when the speech is also commercial. Dilution turns out to target the Achilles’ heel of the true/false divide. In what way is the name “Tiffany Strip Club” either false or true? In what way is it an opinion? It isn’t even, I think, an idea. So we have no real guidance on which side of the line to put it – no positive theory of why it deserves full First Amendment protection, but also no negative theory based in First Amendment law of what makes it harmful. Relatedly, we have no good theory for distinguishing speech that changes preferences from speech that is misleading in that it leads people to make decisions based on bad reasons, reasons that we think are incompatible with their objective best interests. An increase in meanings that makes people have to think harder about “diluted” brands, or makes them like them less in the case of tarnishment, can be characterized as interference with preferences or a change in preferences, and it’s probably more consistent with recent First Amendment commercial speech doctrine to call it the latter. In that case, we should be deeply skeptical of trademark owners’ claims that the stability of meaning is a neutral principle or one that can justify suppressing others’ nonfraudulent speech.

Jane Ginsburg: The exclusions in the current act should deal with many First Amendment issues, so what problems are left?

Zimmerman: What’s a commercial use? Parodic trademark uses: if someone calls a coffee shop Lowbucks, she thinks there’s a speech issue. (See the recent Chewy Vuitton case, which was decided under general blurring theory rather than the idea that the exceptions applied, which they may well not have done.) She hopes it will be a very broad range, which will reduce the risks, but it’s not clear what will happen. State statutes also remain troubling.

My response invoked Cincinnati v. Discovery Networks: you can’t regulate commercial speech and not noncommercial just because it’s easier to regulate commercial speech; there has to be some nexus between commerciality and harm. Dilution law doesn’t have that; the exceptions swallow the rule. I just don’t think the law is rational enough to survive First Amendment scrutiny unless commercial dilution can be conceived of as misleading commercial speech.

Dianne Cahill: Babewatch/Baywatch – what if it’s on T-shirts?

I think it would be obviously noncommercial speech for First Amendment purposes; hard to tell if it’s a trademark use; harder to tell which rule wins.

Zimmerman: Right of publicity cases have put a lot of pressure on this, considering T-shirts, buttons, etc. as commercial uses, though courts may be starting to recognize that this is problematic.

Halpern: Congress enacted the TDRA with full knowledge of Kozinski in the Barbie case; one therefore has to intepret “commercial” in the First Amendment sense – anything other than the offering of a commercial transaction is excluded. That doesn’t deal with concerns over trade names (and things like Chewy Vuitton), but it means the law is narrow. The courts have also bought into Rogers v. Grimaldi, protecting artistic works with a higher threshold for confusion. Limitations have also been applied even to state dilution statutes.

Dreyfuss: Our idea of rights in gross/non-stockpiling of marks has a First Amendment dimension; as we allow rights in gross and property-like concepts, we move inexorably towards less concern for free expression, especially in commercial contexts where defendants are trying to communicate with consumers. In Europe it may be different, and in fact property concepts may be moving towards greater recognition of human rights.

Dinwoodie: Would the Gay Olympics case be decided the same way today? Does the copyright jurisprudence (Eldred) have any indications for us, in its discussion of traditional contours?

(My answer: The USOC would lose, at least 7-2.)

Zimmerman: Her gut feeling is that the Court has tended to see IP cases as isolated little bits not affecting the overall environment. Eldred contributed to a growing public and judicial awareness that you can’t look at these little carveouts, like taking “Olympic” and giving it to the USOC, without considering the overall impact on speech. The Moseley Court would not write the Gay Olympics case; it would take a broader view.

Kur: Free speech works differently in Europe. We normally expect that legislation contains within it everything you need to decide a case. The fact that France, the civil law country par excellence, found it necessary to go beyond its TM law and appeal to its constitution, shows that the problems are difficult and that, though resources exist to deal with free speech concerns, the TM law is not properly configured to deal with them.

She thinks the outcome of cases under US and European law will be reasonably similar, with good and bad decisions.

Carroll: The First Amendment protects freedom of association. The famous brand owner doesn’t want to be associated with a parodist etc. – shouldn’t it have the right? The Ivory brand is part of people’s self-definition. So why not prohibit people from opening the Ivory Hotel?

My answer: Because the free play of meaning has value and doesn’t need independent justification. The burden is on the regulator, not the speaker, as Zimmerman said. (What is the difference between giving Ivory a right against tarnishment to prevent negative associations and giving P&G a right against picketers outside stores selling its products? First Amendment negative association rights are about not having to take people or ideas into one’s intimate circles, and occasionally not into one’s communal organizations; they do not provide a right to avoid all “associations,” however defined.)

Heins: We still need to worry about dilution claims that don’t get to court and don’t get decided by Judge Kozinski. Gatekeepers in the world of expression, including insurance companies that require filmmakers to certify that every last image has been licensed before they’ll issue insurance. This allows pervasive control of speech without any plaintiff ever winning a dilution case.

Bone: If we suppose that the noncommercial use exception is expanded to cover the dilution version of Saderup, T-shirts in general will be okay under dilution law. In that case, plaintiffs may just shift over to likelihood of confusion claims, as in the Mutant of Omaha case (this is enabled by the fact that the use as a mark requirement is less well settled in confusion cases).

Zimmerman: This is a real risk, and should make us think about the definition of harm that we’ll accept in confusion cases as well.

Mühlendahl: There’s a difference between criticism, comparative advertising, etc. and simply using a mark to sell a different product. Why deny protection in the one case merely because you deny it in others? Isn’t American local free speech doctrine simply out of step with international law? No constitutional court in Europe would find local free speech doctrines to allow the Ivory Hotel. (I should say that I agree that mine is a local/doctrinal conclusion; one could have a perfectly well-functioning system of free speech that allowed silly laws. It is my contention, however, that First Amendment doctrine, moving as it has towards a regime that severely limits the government’s ability to regulate markets by controlling the speech that takes place in those markets, logically must imperil dilution laws.)

Kur: European cases in which free speech defenses are raised are in nontraditional cases.

Dreyfuss: Isn’t the Arsenal case troubling?

Mühlendahl: Not at all. Selling unlicensed goods when someone else owns the TM interferes with that person’s livelihood.

Dreyfuss: For us the idea that a fan can’t display loyalty without paying Arsenal’s price is troubling.

Mühlendahl: You can have your mother make you a jersey; a third party just can’t sell you the merchandise. (Comment: Why can’t Arsenal proceed against Mom, or Mum? She is helping you avoid the customary price and interfering with Arsenal’s livelihood.)

Kur: America was first to protect sports marks licensing. But go back to Justice Laddie’s point: This is not a use that tells anyone about commercial origin or licensing.

Mühlendahl: Laddie lost that one.

Christine Haight Farley: Victoria’s Secret was in the news – an environmental group argued they were destroying Canadian forests by sending out a million catalogs a day. Elizabethtown, KY where Victor’s Little Secret was, has a population of 15,000 and receives 39,000 VS catalogs. So the environmental group ran an ad with a lingerie-clad woman in angel wings with a chainsaw, surrounded by bags with the VS logo, “Victoria’s Dirty Secret.” VS didn’t sue for infringement or dilution, but instead agreed to change their practices. Why not sue? Is VS worried because of the new act’s exclusions (noncommercial use; nominative use)? Does VS think it didn’t benefit from the publicity of the last suit? It matters a lot whether you think of this as a TM case or a speech case. To a dilution true believer, this is a dilution case. You don’t need to harm VS to make a general point about catalogs. So it matters a lot what the presumptions and categories are. For true believers, strong marks are seen as simultaneously delicate. We should say that TM law just doesn’t have a place for such claims unless the defendant is using the mark as a designation of source for its own goods and services.

Ginsburg: There are many optimistic things to say about the TDRA exclusions. Unlike copyright’s fair use, they are specific and allow you to tell someone who sends a C&D letter to go to hell. They also have a potential to drive growth in TM, by referring to “any fair use, including nominative or descriptive use,” other than as a designation of source. These are all judge-made concepts for dealing with confusion law, now statutorily blessed. Also this raises the question of how broadly to read “as a designation of source.” If you want to use Lowbucks as your café name, you have a problem under this statute (raising the question of a constitutional right to free ride; this is where the US/EU breakdown occurs), but that’s a very narrow range. The spillover effects on confusion will be interesting to see.

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