Saturday, September 29, 2007

WIPIP Panel 3

Jasmine Abdel-Khalik, University of Missouri-Kansas City School of Law
Is a Rose by Any Other Image Still a Rose? Disconnecting Dilution’s Similarity Test from Traditional Trademark Concepts
Abstract | Paper

Dilution is about the mark itself, unconnected to any goods; it’s about interfering with the story of the mark, rather than interfering with source identification. So how do you tell how similar a mark has to be before it dilutes? Schecter wanted protected marks to be coined, arbitrary, or fanciful, and they’d be protected against identical uses. The change in modern law, allowing acquired distinctiveness to suffice for dilution protection, is important because the mark owner is now adding its own story to an existing term, which means it fights against preconceived ideas – it’s prediluted. So we need to focus on the number of 3rd-party marks out there, not just whether the claimant has acquired distinctiveness. That is purportedly captured by the fame requirement – it means your story has to have won out.

Substantial similarity is the killer question. In the 9th Circuit TREK and ORBITREK are apparently similar enough for dilution; query whether that would have been similar enough for Schecter. Another case: DOGIVA and CATIVA; the court skipped past similarity, especially for the latter. Many other –IVA marks exist; there must be something more that triggers substantial similarity. Moseley said mental association wasn’t enough to demonstrate similarity, but didn’t say what would be enough. What about sight, sound, and meaning, the standard infringement trilogy? But with likelihood of confusion, you always look at the mark in context, which influences judgments of similarity. She would like to talk about uniqueness, which to her resembles copyright more than trademark – it’s about originality.

Goldman: Invoking substantial similarity from copyright creates a bunch of problems; it’s so unpredictable. Perhaps there’s some more precise test (as copyright has in special subfields).

Q: Arbitrariness alone is super-distinctive, but doesn’t deserve dilution protection without fame. If you push for uniqueness, don’t you lose MCDONALD’S and protect all those unknowns?

A: She’d offer thinner protection to MCDONALD’S than to a unique mark.

Q: The more famous the mark, the less you can dilute it.

A: That ties in to the concept that it’s the death by a thousand cuts, not the first cut, that matters.

McKenna: There’s a bunch of cognitive psych literature that says some marks are just unassailable. That leaves open what happens to the others. But it’s hard for TM owners to make a straight-faced claim about this – they have to say “we’re really famous, but not that famous.” I think very badly of TM law, but I think worse of copyright. Substantial similarity is just a crapshoot. But you could at least evaluate similarity on basic principles; copyright similarity is about market substitution, but that doesn’t make sense here, and that’s a function of the fact that we don’t know what the harm of dilution is.

Irene Calboli: Why do you think the test should be different from the infringement test? Similarity should be required in both cases. What about the old technical/nontechnical trademarks division?

(My thought: with confusion, less similarity can trade off with mark strength and relatedness of goods – CATIVA for candy is a different thing than CATIVA for cellphones. I don’t think we want that for dilution.)

Lunney: Schecter was writing about technical trademarks, since they were the only ones that could be “TMs.” Why do you want a similarity screen before going to the blurring test?

A: Because we’re going to make mistakes on blurring.

Q: So why not just fix the blurring doctrine?

A: Similarity as a screen allows better evaluation of risks by potential market entrants than a multifactor test.

Sean Pager: What about the filtration procedure from copyright; could it be applied to the trademark in evaluating its position relative to other marks (applying semiotic theory)?

My comment: The funny thing to me is that when marketers talk about unique brand stories, they often speak in one-word terms – this brand is about YOUTH, or POWER, or whatever. And those are the farthest thing from unique, even though the brands themselves are distinctive and powerful. So seeing dilution as about preserving brand stories makes dilution even more puzzling to me.

Katja Weckström, University of Turku
Trademark Dilution, Trade Mark Use and Trademark Law Theory- In Search of A Logical Connection
Abstract | Paper

Dilution is a right to control meaning: what are the appropriate limits on that right? The US and European conclusions are very different. The ECJ has said that TM use can’t be a categorical limit on the TM owner’s right to prevent infringement or dilution (and indeed the line between infringement and dilution is less clear there). Weckström likes the European system of flexibility in factors, which invites the ECJ to look at general legal principles without finding facts, because she finds it less burdensome to defendants – though it might not work the same way here.

Lunney: Do search engines behave differently in Europe?

A: There are the same problems, but on a national level, and hasn’t reached the ECJ yet. It’s not part of harmonization. The ECJ has no interest in making exceptions or special rules (e.g., how search engines should be treated). She would guess the UK is close to the US, but other countries will have strong protectionist caselaw that will usually find in favor of the TM owner.

Christine Haight Farley, American University Washington College of Law
The Feminine Mystique of the Brand in Trademark Today

Her argument isn’t that dilution proponents make explicit, conscious use of metaphor, but rather that they evoke a submerged association between the brand and the vulnerable feminine subject in need of protection. It gives us a moral justification for dilution, which sorely needs one. It draws on past ideas about purity, like the old torts that protected male property interests in their female relations. It makes an affirmative claim that the harm is unmeasurable in market terms and that’s why we need to give legal redress – performing conceptual ju-jitsu on the “you can’t identify the harm” objection. That’s ironic given the strength of today’s brands.

The traction dilution gained in the 1970s and 80s tracks what was happening in the world of marketing, which was the rise of brand extension. Brands were exploiting themselves, creating their own vulnerability. Also, brands were no longer associated with a set of goods, but a set of ideas. And that’s always more tenuous – holding on to a “luxury” reputation is harder than holding on to a “bracelet” reputation.

Matthew Sag: How do Europeans talk about the same phenomenon? Brand extension goes beyond the US; we can learn about cultural meaning from the comparison. Maybe this is a function of the American prudish obsession with sex.

McKenna: Wants to challenge the historical narrative – state dilution is much older than federal protection, and state cases say the same thing decades back, though sometimes they say they’re deciding based on confusion.

A: Farley identifies an evolutionary development over time.

McKenna: See also the rise of the right of publicity, which does the same thing for people. Really this is about tarnishment – does blurring fit this story or not? Also, the John Deere case is a great example for you, “feminizing” a masculine brand.

A: Tarnishment is conceptually hard to separate from blurring, especially when the plaintiff is trying to sell one kind of sex (teasing) and defendant is using it more explicitly (porn) (e.g, the Victoria’s Secret case, the Dallas Cowboys Cheerleaders case).

Calboli: Does the older rhetoric of TM as property fit in here? During the same period, women’s reputations were protected as property, so the analogy is strong. Also, international development of protection may offer some lessons, especially in countries like Benelux that protected against any “association” or unfair advantage. (Unfair advantage has real resonance with the gender metaphor here.)

Me: The consumer also loses in this model of dilution, her attitudes changed to her detriment – kind of a “think of the children” thing. I now wonder about a slightly different metaphor, that of vulnerable child, who is unable to reason and subject to predation. Middle-class anxiety over managing children’s every experience is even greater than anxiety about women – and of course it’s young women’s sexuality that we worry most about. Though I’m not sure whether it’s the consumer or the brand who’s the child here; we could do a model of the TM owner as benevolent patriarch, TM as mother, consumers as children being guided in the proper way to think – and why should outsiders get to interfere with the parent-child relationship?

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