Saturday, October 06, 2007

Trademarks without Pity: What is a source identifying function?

Mark Lemley and Stacey Dogan have argued, quite persuasively on normative grounds, for a "trademark use" requirement before infringement can be found. Graeme Dinwoodie and Mark Janis have picked apart the statutory and historical support for such a requirement, but these days I'm leaning mostly towards Mark McKenna's primary argument (also made by Dinwoodie & Janis): as long as anything can serve a source-identifying function (remember Breyer's rejection of ontology in Qualitex), trademark use isn't a helpful limit.

Here's an interesting set of examples. Glarkware sells, among other things, merchandise associated with TelevisionWithoutPity, the TV recap/commentary/discussion site. This merchandise often refers to shows, though the references will be obscure to nonfans. So there are shirts for Smallville, Supernatural, Battlestar Galactica (on the first, the font is similar to the show font), Heroes (much more obscure in its reference than the T-shirt from a few weeks ago), The Daily Show, Lost (II), Jeopardy, Veronica Mars (the second particularly interesting because it initially appeared in the show as a shout-out to TWoP), House, 24, Star Trek, America's Next Top Model, Six Feet Under, Gilmore Girls, Alias (II) (III) (IV), Prison Break, Desperate Housewives, and many more, including ones I just didn't understand.

The copy is coy as well, winking to those in the know, which is either clever marketing or clever legal advice, possibly both. E.g., the second BSG shirt says: "A toaster is capable of a lot more than you might think at first glance. Even more than toasting your bread, actually. Treat it poorly, and it will find a way to collude with other toasters to overthrow humanity. But treat it well, and...well, you and that little old toaster might actually find love. It's not a love that either of your communities will sanction or even understand, but you know best: that seemingly simple appliance loves you from the coils of its heart."

So, assuming that the relevant consumers (TWoP-using fans) will understand the references -- which is why they buy the shirts in the first place, so it seems pretty likely -- are the images and words serving as indicators of source? Should trademark owners have the right to authorize such merchandise? I think not -- and I doubt that consumers regularly perceive references as indications of source or sponsorship, even if they've been successfully trained to expect authorization for ordinary repetitions of a primary mark on promotional goods like T-shirts. But I'm not sure trademark use can help in that analysis.

(The image at the top of the post appeared on a shirt with the words "Look upward," which were used in the opening voiceover on later seasons of Farscape, the brilliant SF show; the image is of the Farscape module against a wormhole. I wish I'd ordered that shirt when I had the chance.)


  1. Great examples, Rebecca. Given the scope of "source" in mondern TM law, I'm not sure that consumers won't perceive these references as indications of source or sponsorship. For purposes of the TM use debate, I think the important point is that I doubt seriously that we can say with any real confidence that consumers definitely *don't* view these as source indicators.

  2. Well, my strong intuition is that the depth of knowledge required to recognize the reference will also signal a tongue-in-cheek relationship to the original shows, which consumers won't expect to come from official merchandise. I don't want to overstate the extent to which "everything must be authorized" conditioning has succeeded; I really don't think it's gone that far yet. In many ways, I'd want to use a variant of nominative fair use on these: they don't use the primary mark, which might in the context of promotional goods like T-shirts signal source, and so this is a necessary way of commenting on the shows that should be treated as nonactionable as a matter of law.

  3. I'm with you, Rebecca. I am not at all ready to impute essentially a "derivative works" right to a trademark in the title of a TV show or movie, because that truly turns the trademark into a right in gross. If I saw the "Who's your Spy Daddy?" T-shirt, as a dedicated TWoP AND Alias fan, I would presume TWoP was the source. In fact, I would argue that there's no possibility for sponsorship confusion because someone who didn't read TWoP wouldn't know to what "Spy Daddy" referred.

  4. "Derivative works" is a really helpful way to put it, and indicates some of the TM/copyright cross-pollination that goes on, usually in the direction of ever-expanding rights for the owner. And I agree with your point about SpyDaddy, though not all of the shirts require TWoP knowledge to get -- the WB would never authorize Clex Appeal shirts, but it's not a term unique to TWoP (as opposed to, say, Gayest Look of the Episode), and the BSG shirts use referents from the show itself, not the TWoP nicknames.