Friday, October 02, 2009

WIPIP at Seton Hall part 2

David (Jake) Barnes, Seton Hall University School of Law

One Trademark Per Source

Here are some practices: End cap: a marketing device, placement at the end of the aisle—not trademarkable. Twofers—two for one deals—and moneyback guarantees are also not trademarkable because we need them for competition.

Contrast: green machines (John Deere)—Deere would like to be the only supplier of machines in that color, but courts said that farmers like to have all their equipment match so it’s necessary for competition. Holstein boxes: Gateway computer boxes. It’s a marketing device too. iPod “Nano”—is that a marketing device? Also a source indication—is it primarily a marketing device? Connoting cool/hip/modern/up to date. They could be trademarks, but we might not give exclusive rights to these designs/names in order to protect competition.

Sprite, Woolite, Cadillac: obviously trademarks, but also obviously marketing devices and harmful to competition. Sprite is a good name for a sparkling, clear beverage—it has marketing power. We have never been able to figure out how to protect source indicating power without protecting marketing power. People can charge more for Woolite because customers don’t know exactly what it means and thus can’t figure out what the substitute is.

His proposal: limit each source to one trademark. Coke could keep Sprite, but would have to call its cola Sprite. (This reminds me of comedic/satiric films in which LargeMart or the like brands everything with its own single mark.) Proper role for a mark: control over quality and characteristics of the goods. What is one source? Look at external principles for control—contributory liability might be a guide. What is one mark? Look at the tacking rule—does it create the same commercial impression? (Compare the way in which Wal-Mart and Target change their marks on their house brands imitating the trade dress of national brands—Target in particular changes the color of its target to match.)

The benefit: greater competition. Barnes could produce his own Sprite, and Coke could call its product Coke’s Sprite. Coke has every incentive to put its one trademark on its goods.

Problems: Politically impossible. Nestle has 1300 marks. He’d allow a phaseout period. What about potential consumer confusion? He’d allow some limited remedies. And protection via false advertising law against false claims of authenticity. Anyone could make Mrs. Field’s cookies, but only one could claim to be the original.

Another motivation: theoretical. It offends his sense of balance between access and exclusivity, that’s mostly apparent in copyright and patent, but also applies in trademark. Protection should be tailored to the minimum necessary to create the relevant source information.

Irene Calboli: one mark per product makes some sense, but just one mark would create huge confusion, or move to different trade dress. Five children: all come from the same source, but you give them different names so you can distinguish them.

A: Different model numbers! Coca-Cola Sprite, or Coca-Cola Lemon Lime.

Calboli: Also, consumers don’t necessarily care about source.

A: So how do you search for goods? Well, if consumers don’t care, then he doesn’t care about protecting them.

Heymann: You’ve ID’d two problems: consumers don’t know the corporate producer, and it’s hard to compete with a branded product because consumers don’t know how to ask for the alternative. Couldn’t you solve these problems by requiring disclosure of corporate identity and a really robust nominative fair use doctrine?

A: From a public goods perspective, the incentive should only be the minimum necessary. It’s a question of default.

My Qs: Lisa Ramsey has proposed one mark per product as a matter of First Amendment doctrine. Also, you’ve got to define what you mean by preserving a remedy in cases of falsity—what would it take to be a new version of Mrs. Field’s cookies? This proposal may not do what you want if small differences can defeat equivalence claims and give rise to false advertising claims. What if the original manufacturer changes the recipe? Can it force everyone else to follow or lose the right to use the name?

A: His proposal doesn’t make things worse. And the answer on falsity depends on what consumers believe a Mrs. Fields cookie is.

Q: What if they don’t have a specific belief about what a Mrs. Fields cookie is that can answer the ingredient question?

A: Then there’s no problem. (Me: Ok, but is there a point at which the claim to be a Mrs. Fields cookie would be false, then? If you think that, then there is a truthful meaning of “Mrs. Fields cookie” and now we have to struggle to find it.)

Q: This is like an inversion of genericide: once a mark has secondary meaning, it is generic and available to competitors. But if consumers don’t care about corporate source and don’t tie a mark to the manufacturer but instead to the quality of the product, your proposal doesn’t seem to be helpful. Congress overruled the Anti-Monopoly case.

Davida Isaacs, University of Maryland Law School

Can States Master a Domain Name: What are the Practical, Constitutional and Policy Ramifications of State Attempts to Seize Domain Names?

Domain name seizure comes up in various contexts: gambling; domain name used to advertise travel to Cuba solely for non-Americans—company was based in Europe and only did European travel, only registering the domain name in the US. US nonetheless ordered it shut down. ACPA’s in rem provisions in general allow US governance of non-US content. Questionable use of US government power—a taking? Note that the Supreme Court is going to decide whether there can be a “judicial taking.”

Questions then arise over whether domain names are property. Christine Haight Farley says domain names aren’t even as close to property as trademarks, because domain names have no goodwill requirement. Anupam Chander: they are property, because ownership is assertable against third parties. Courts are divided and the theories don’t produce a clear answer. The alternative is contract, and the payoff is that not every contract interest is property for takings purposes. She ultimately hesitates to put domain names in the category of property.

Barnes: Another approach: why do we have takings law? Are those purposes fulfilled by recognizing these acts as takings?

Jacqueline Lipton: Ned Snow wrote a piece on takings and domain names worth looking at. Also, be careful to separate analysis in TM and non-TM domain names—if it’s also a TM, then you have a different type of takings claim.

Jacqueline Lipton, Case Western Reserve University School of Law

Bad Faith in Cyberspace: Grounding Domain Name Theory in Trademark, Property and Restitution

Pragmatically: what theories of domain name law are emerging from the decided cases? Three themes behind regulatory impetus: trademark, property, restitution.

We don’t have a coherent domain name theory, because there’s no institution with a constitutional competence to create domain name policy. ICANN has only limited technical competence, and the UDRP is arguably overreaching. Any theory thus has to be bottom-up and developed by arbitrators, national courts, and the like.

So what we’ve got are TM (ACPA, UDRP, trademark lawsuits for infringement and dilution); property theory (conversion actions such as the case); and restitution (personal name disputes; clickfarms where the plaintiff has no TM or property right in the domain name).

Details: She classifies ACPA as a TM law, not a property law, because ACPA doesn’t do much more than infringement and dilution did—it’s not so much taking an asset from one party and giving it to another who can make better use of it as it is basically TM law, though we can come up with a few examples in which the ACPA produces a victory that standard TM wouldn’t.

Restitution varies a lot in various countries. But basically if you’ve benefited by harming someone else, you have to return the gain. This may make sense of Lanham Act §1119 and personal name cases, where you don’t have to show TM status, along with geographic name cases where TM theory is a bad fit. We’re straining the bounds of TM too far if that’s our only regulatory mechanism for protecting a legitimate interest in domain names—you see that in UDRP actions and occasional judicial decisions. But other impulses are also worth honoring, and restitution is a way to recognize that.

She’s tried to create a matrix of motivations of registrant compared to the term registered. Motivations include: for sale, for clickfarming, for expression, for legitimate commercial use. Terms include: TM, personal name, cultural/geographic indicators, generic words & phrases, deliberate misspellings of trademarks, deliberate misspellings of personal names, trademarksucks names. Depending on the intersection, use is more or less likely to be found legitimate. (Great anecdote: Obama is a city in Japan, which had registered; there was no dispute because they voluntarily transferred it to him, but it’s a great example of collision of justifications for use.)

Consider how the various rationales intersect with other doctrines, such as genericity in TM: is generic, but there are still things that one can do with that will trigger liability to other people based on the domain name. Registrar liability for misuse/misappropriation of domain names: TM theory excuses registrars, but property theory doesn’t (again, case).

No comments: