Identical Cousins? Dilution by Blurring and the Right of Publicity
Both causes of action have evolved from more traditional roots, trademark infringement & right of privacy doctrines. Each has left its origins behind to some extent. Each is a sort of property right, without a confusion requirement. The right of publicity might be called dilution for people.
But publicity has developed under common law as well as statutes in the majority of states; internationally, sometimes publicity rights are statutory, but other times they grow out of privacy traditional torts or even a constitutional right to privacy. By contrast, dilution rights are everywhere statutory, not inferred from broader doctrines.
Both doctrines have proved controversial because of empirical doubts about the existence and magnitude of any injury, as well as normative questions of when it is appropriate to use law to restrain speech to protect merchants; or about whether celebrities should be awarded rights, and how broad those rights should be in covering identity, when in the view of many no such right is needed or deserved according to accomplishments. Also, for both, there’s been no international harmonization even though laws are proliferating worldwide.
And there may be some worldwide judicial reluctance to apply dilution laws. So the TDRA, for example, is a top-down attempt to push judges to do more. British courts are reluctant, even after dilution law from EU harmonization, to dispense with the likelihood of confusion requirement. Canada has had a dilution statute since 1953, but has seen very little use, other than a case finding dilution from truthful comparative advertising, and the courts have not been able to define “likelihood of depreciation.” In Continental Europe, there’s still confusion over the meaning of the terms in the Directive.
As a privacy-based doctrine, by contrast, the right of publicity has general acceptance, and is increasingly recognized as a property right even when it was traditionally privacy-based. Germany decided, without any legislative mandate, that it’s a property right, and descendible. In the UK, this bubbling-up process of stronger publicity rights is especially noticeable – the UK doesn’t recognize much in privacy rights, because of press freedom concerns, but a court went out of its way to find harm to Catherine Zeta-Jones in her wedding photos – a breach of confidence, even though it’s hard to imagine what confidence was shared. But the House of Lords found that the European Human Rights Directive gave Naomi Campbell a privacy right more important than the public’s right to see her leaving a drug treatment facility.
Kenneth L. Port, William Mitchell College of Law
Trademark Dilution in Japan
Dilution-like protection exists – it’s a civil law system, so statutes are required. Japan’s trademark law is silent on anything that might be called “dilution.” The Unfair Competition Prevention Act was amended in 1993 to arguably cover dilution, but it never uses that word; no statute uses the Japanese word for dilution.
The TM law only applies to registered marks, but the UCPA covers using appellations identical or similar to another person’s famous marks, and use of another’s well-known marks that causes confusion – a pretty broad law, but still doesn’t discuss dilution. Japanese courts can’t keep these separate provisions distinct, so some of the most famous “dilution” cases cite the latter “confusion” provision. Either the judges are not very competent or they are fighting the statute because of its apparent breadth.
There is a myth that Japanese don’t litigate; in trademark dilution, the myth is true. There are very few dilution cases.
Elements: (1) famous appellation; (2) same or similar. (1) is something they take seriously, more than well-known, sometimes called an “exacting standard.” But: 18.3% recognition of Levi’s pocket TM was considered famous. (Query whether this was actually suspicion of the survey, if the judge thought the TM was more famous than that.) More than regional fame is required, but Japan is small, narrow and long. Hokkaido is like Minnesota and Okinawa is like Hawai’i. So can a snowshoe manufacturer ever have a famous mark because it would never sell goods in Okinawa? He thinks Japanese courts would be willing to find fame in such circumstances. Commentators say fame requires high quality, uniqueness, abstract distinctiveness, etc.; they are imposing a higher standard than the courts actually do.
How is sameness/similarity determination? Commentators say that this gets extra scrutiny because there’s no confusion requirement. Lexis/Lexus analysis would probably apply in Japan.
Why so few cases? The statute and concept are vague, and courts get confused – in a civil law situation, the statutes are usually a lot more specific. Courts use multiple terms for dilution, including “free rider” and Japanese transliterations of English terms.
David Welkowitz, Whittier Law School
State Dilution Laws
Two waves of state laws, in the 1940s and 1989-96, when states add or change laws based on the Model Bill/failed federal initiative – INTA wanted everyone to have the same law. The new version of the Model Bill requires fame; many states required state registration. By 2003, 37 states had dilutions laws; Indiana added one in 2006. About 60% of those are the newer type. There are quirks, but basic consistencies.
There are some persistent state-law cases, beyond the Allied (NY) case which was a watershed: Sally Gee (1983) (extremely strong mark); Mead Data (multifactor test); Deere (tarnishment); LL Bean & Hormel (dilution has its limits) – notice that almost all are federal cases interpreting state law.
Sidelight: the Restatement of Unfair Competition, which no one has mentioned, which came out a year before the FTDA. It is in some ways more restrictive than many state laws; it seemingly rejects Deere by requiring either TM use or independent tort; surprisingly little influence on courts, except that the Florida Supreme Court adopted its test.
Post-FTDA, state claims are filed as supplemental to federal claims. Courts assume that all state laws use likelihood of dilution. 9th Circuit even implied a fame requirement in California’s law, which doesn’t have one. Exception: the 2d Circuit, which didn’t impose an inherent distinctiveness requirement on NY’s state law, which had plenty of history not requiring inherent distinctiveness. But there wasn’t much action regardless.
Then Moseley made a huge mess. Most states now, by INTA strategy, have “causes dilution” language because they were all modeled on federal law, and even had language saying federal law was persuasive authority. The only states that looked good for TM owners were the ones that had retained the older law, like Texas and NY. But most courts just don’t care about the differences. E.g., the “Charbucks” case in the 2d Circuit, where the court refused to grant relief even under the laxer standard.
What about the TDRA? No state law has the two explicit blurring/tarnishment categories; no state law uses the new fame factors; no state law lists the blurring factors. This will create more problems (comment: or will continue to be ignored). Drafting problems are unsolvable without state legislative action; there are virtually no state court interpretations, so the state judiciary can’t engage in creative interpretation, and federal courts are going to use federal precedent anyway. There are going to be circuit splits on niche fame under state law, but the TDRA has done away with the federal split, so we’re stuck.
Three types of law: TDRA, newer state laws, and older state laws. TDRA and older state laws use “likelihood.” But we don’t know whether it means the same things for both. The federal courts are going to take the easy way out and say “yes.” The TDRA factors distill the wisdom and experience of the past 60 years, so it’s the same.
Remedies: Lanham Act limits damages remedies; state laws may allow punitive damages and attorneys’ fees.
Caveats: older state laws only allow injunctions; newer laws track federal law and limit damages; Congress’s considered judgment should be enough to preempt inconsistent state law remedies.
Proper role for state laws: respond to unique local conditions, but there’s no unique local condition for dilution. Fill in a real gap and push Congress to pass national law, but there’s no gaps worth filling. However, if the Punchgini decision spreads, a gap may be created in the famous marks doctrine, and we may need an exception to territoriality under TRIPs. So state law should go not to dilution but to extraterritoriality, pushing towards a federal law.
McKenna: Given that INTA has written all the recent state and federal laws, why don’t they write a preemption provision?
Welkowitz: Aside from the federalism politics (which are really notional), Copyright Act experience suggests that it is very hard to write a preemption provision that doesn’t do more than you want it to do. Is right of publicity preempted under such a provision? State claims are preempted against a federally registered mark, and that’s about all you can do.
Moderator: Margreth Barrett, University of California Hastings College of the Law: It’s clear that other countries are also uncertain about dilution, arising from uncertainty about justification or purpose. In other areas, differences in common law/civil law countries can lead to different views of property rights. Is the discussion about purpose/explanation of dilution similar to the discussion here, or is there a different set of arguments?
LaFrance: Other countries haven’t extensively discussed the rationale for civil-law protection. Her impression: EU members adopted the provision under the harmonization directive without much discussion and somewhat reluctantly, though it was optional. Thus it’s not surprising that judges are a little puzzled, not knowing the challenge the laws were designed to meet.
Barrett: So why adopt the laws?
Port: In Japan, it’s because America told them to.
LaFrance: Outside the EU, the countries with strong dilution laws are a mixed bag: Mexico, Peru, South Africa. Question for Welkowitz: The state statutes tend to lack the explicit exclusions of the federal law, and courts haven’t been particularly vigilant about examining possible First Amendment defenses, the LL Bean case notwithstanding. This raises concerns of using state statutes as an end run.
Welkowitz: That was more true before the FTDA. A majority of the new states adopted the 1996 version of the model bill, including exclusions. But one of the oddities is Nevada, which defines commercial use in the statute, but not as broadly as the noncommercial use exclusion under federal law. The reality is that it hasn’t mattered, since they get subsumed into the federal analysis.
Congratulations to Eric Goldman and Jasmine Pilgeram for a very well-run conference.
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