NYU dilution confernence: Diane Zimmerman

Session 3: Countervailing considerations. Due cause, free speech and effective competition.

Diane Zimmerman, NYU School of Law: Zimmerman doesn’t do TMs, but has a longstanding interest in free speech. From that perspective, dilution looks odd, which may help explain American hostility to dilution. TMs are communicative goods. Thus they are potentially First Amendment subjects, and courts have begun to realize this when, for example, an artist incorporates a Barbie doll into a photograph.

The cases fall into a broader pattern: an upsurge of so-called food disparagement laws, which made Oprah Winfrey go to the Fifth Circuit to get off the hook for saying that she was off hamburger for life after learning about mad cow. Creeping into the cases is some discussion of how a use of a TM can be justified, which is similar to discussions of fair use in copyright. But note the posture: The reason you get a chance to use the mark is justification; absent that justification, you have no right to another’s property. From a First Amendment perspective, Zimmerman asks how a TM comes to be property in the first place. The Constitution recognizes copyright and patent, but not TM.

The Supreme Court treated TM like property in the Gay Olympics case, but that was decided at an unusual time, the nadir of protection for commercial speech. There was also still a failure to see that there was a relationship between things called “speech” and things called “property.” Since that time, awareness of the potential risks to speech posed by IP law has increased. She sometimes wonders whether V’s Secret was really a nascent First Amendment opinion as much as it was a statutory interpretation opinion.

What are the relevant First Amendment principles? (½) The First Amendment doesn’t like injunctions. (1) Individuals and entities are presumptively free to speak; one is not required first to offer a justification or a need to speak. The burden is on the regulator. (2) The burden of supporting the regulation will virtually never be successful when the speech is not false – if it is opinion, idea, or factually accurate. With commercial speech (advertising, which does not include all the things TM law assumes are “commercial”), it may be easier than regulating noncommercial speech, but it still requires more than a rational basis – a substantial interest backed by proof that the regulation both works and is limited in scope to the need identified. (3) Speech that is false or misleading has less claim to constitutional protection. There needs to be something more than falsity/misleadingness for regulation to kick in – where the falsity has led to some sort of palpable harm. Proof of falsity is a burden borne by plaintiff.

Thinking about dilution in this framework: The best analogy is one to dignitary torts such as defamation. Dilution looks different from even the pre-First Amendment common law tort of product disparagement, which was very hard to prove, requiring proof of falsity, damage, and intent. Constitutionalization of defamation law has not improved things from the commercial plaintiff’s perspective, because it requires proof of knowledge or recklessness and often proof of damage.

So, dilution may not have a legal leg to stand on. It is out of sync with comparable laws. No one has had any problem striking down “veggie libel” laws, even though we know that the 60 Minutes Alar program cost apple growers a lot of money. We know that there’s harm in such cases, but protections for free speech carry the day nonetheless. The trajectory of the Court’s commercial speech cases is that more and more is being asked of the state to justify regulations on commercial speech.

This may help us understand why dilution has generated so much tension in the courts. It’s not just that it’s a law looking for a justification – in other words, not just a policy concern. Rather, as we increasingly connect IP with free speech, dilution seems odder and odder. Zimmerman was amazed that courts aren’t raising free speech issues on their own, without prodding by lawyers, according to Long. It’s odd to have these little pockets of law that are unconnected to broader free speech doctrines.