Saturday, April 17, 2010

Trademark Scholars Roundtable part 2

Session 2: Limits Internal to the Trademark Cause of Action

Fundamentally, to what extent does the statement of the cause of action (whether based on likely confusion or otherwise, and whether for primary or secondary infringement) afford room for the vindication of permissible uses? If not, could we modify the cause of action to create such room? Are the doctrinal or analytical devices by which we assess likely confusion (or dilution) useful/ideal as means of ensuring such vindication?

Introduction: Barton Beebe

Keep in mind the difference between descriptive and prescriptive in our discussion. Cause of action for impairing efficient functioning of the market? That can’t be justified by free speech principles? Trying to design a cause of action that makes it unnecessary to allow defenses is probably impossible. We can’t have a cause of action for inefficient conduct (where the main issue would be standing). A lot of the search cost stuff is cost-benefit all the way down, which is what makes a shift to rights talk appealing. Calibrating our cause of action so that the defendant would never need to bear a burden also won’t work.

Subject matter: he thinks that a sign that is not distinctive or that is generic is not a mark, so we’re not talking about permissible uses of marks but rather about things that are not within the subject matter—that’s his sleight of hand.

Modifying the likelihood of confusion test: First Amendment cases have tried to do this. He finds First Amendment invocations mystical; prefers the Mastercard v. Nader case. The court simply found no likely confusion, without mentioning the First Amendment (which invites reversal), but a factfinding on confusion makes it harder to reverse (which is also true of using confusion v. using nominative fair use).

By modifying likely confusion, we also avoid the problem that certain defenses don’t apply to incontestable marks.

Sometimes we want confusion. Appropriation art: we want the shock that comes with realization that the thing is not what the consumer thought it was. Exploding the illusion is the point.

Blurring/tarnishment: so confusing and unpredictable that they spit in the face of the neat search costs rationale. Tarnishment simply can’t be defended on the search costs theory. Why limit tarnishment protection only to famous marks under search cost theory?

Using the contours of the cause of action: developing a definition of the reasonable consumer and assuming increased sophistication—this should be of far greater importance. Reasonable consumer is implicit in every factor (compare Tom Lee’s work on the empirics of distinctiveness, where consumers use contextual cues to determine function as a mark rather than using conceptual strength). Trademark law should be more than reactive. It is an intervention in the market and does have prescriptive force: consumers shouldn’t be confused, and we can act on the belief that consumers will learn over time that they have to be a bit more careful.

Primary Discussants: Lionel Bently

Distinctiveness for you guys can be assimilated to search costs. But distinctiveness, from a European perspective, does and can incorporate other norms and values. In America, the doctrine of foreign equivalents functions this way: Even if 90% of people in the US don’t speak Ukrainian, and thus would see a Ukrainian word as inherently distinctive, because of a small minority a descriptive term won’t be protected as a TM. From a search costs rationale, this doesn’t make sense, because most people are likely to perceive it as inherently distinctive. But there are other values at stake. Consumer right to information; broader notion of US as an immigrant-friendly country, all of whom should have equal space within the TM polity; or something else.

Another observation: you are confident you know what the other values are. You believe you can do the sorts of balancing ex ante that Jeremy Bentham also believed in. Bently sees TMs as always inevitably involving a plurality of values; irreducible.

Adding in external principles: recycling/environmentally friendly TM—he thinks we’d need a specific exception for, for example, allowing reuse of packaging as long as there was a disclaimer.

Mark McKenna: Wants to contrast TM and copyright. We can think of specific uses that we positively want to make sure the law allows, and then there are permissible uses in the void—permissible not because we want to protect them, but because the right as we’ve defined it just doesn’t reach them. Copyright creates really broad rights and then creates a bunch of exceptions. McKenna’s sense is that this hasn’t worked, because we’re always finding things that should be allowed and aren’t. TM’s logic has been to try to define internally what we do want to reach and then leave everything else outside. Though we talk about TM a lot as an attempt to preserve the marketplace, it’s an exceptional incursion into the marketplace compared to the way things would ordinarily work. (I resist this characterization because the market doesn’t exist without a police force.) We should be modest about what intervention should do, and therefore focus on the kinds of harms the prima facie case tries to reach.

He emphasizes that this is not either/or—defenses and prima facie case. Focusing only on defenses leads to the belief that the TM owner has rights over everything for which there’s not a defense; it’s also allowed TM owners to be very slippery in defining the nature of the harm they’re experiencing. We need to think harder about the harms really at stake and ask whether they are normatively harms we want to prevent. Confusion is just an intermediate step to harm. It was easy to go from confusion to harm with direct competition.

The Polaroid cases don’t help at the edge. Polaroid is helpful when the use isn’t competitive, but is reasonably close. At the edge, the factors don’t speak to the real issues (e.g., expressive uses). Sophisticated users: implicit in Beebe’s point is that there are some kinds of confusion we don’t care about—we only care about confusion that leads consumers to do something we care about. If we care about confusion regardless of whether it affects consumer behavior, then sophistication shouldn’t matter. So we need to do a better job of specifying how confusion interferes with information in the marketplace. Chewy Vuiton may alter information in the marketplace; nobody sees the dog toys and thinks Louis Vuitton is responsible for them, but there are other kinds of information that law & economics tends to ignore. Why does information about quality matter, and not other kinds of information?

Litman: What kinds of info does the dog toy offer?

McKenna: it’s a statement about people who buy Louis Vuitton. Maybe I like that because I want to disassociate from Louis Vuitton, or maybe I hate that because it offends my amour-propre as a Louis Vuitton customer, but it is information. Some kinds of information produce regular, predictable consumer reaction and other kinds are more diffuse and unpredictable.

Another piece of the story: we don’t talk enough about the role of multiple levels of branding. How many TMs need to be on a bottle of Coke to promote the marketplace function of TM? If there are 27 different ® symbols on a package—he counted one the other day—how can that possibly be working to provide information? When we talk about confusion, especially about remedies, we tend to ignore the TMs that travel together.

Dinwoodie: Chewy Vuiton’s homage—4th Circuit essentially agreed that Chewy Vuiton was altering the information environment, but not one that was a harmful intervention.

McKenna: Commentary is intended to convey information in the market, and the question is whether that will be protected by TM law.

Lemley: To rehabilitate utilitarianism: all advantages are comparative. We’re not perfect at utilitarian calculus, but we’re not perfect at picking anything else either. And nonutilitarian theories are by definition incommensurable, so it’s hard for people who don’t share the same theory to communicate. One of the advantages of simply excluding things from the scope of TM law is that they can be applied early; it’s impossible in most cases to say “we’re sure there’s no likelihood of consumer confusion” (though, McKenna says, you can say early on that there is no likelihood of consumer confusion that matters). Mastercard’s theory of confusion was practically the worst theory imaginable, and yet it went through discovery, went to summary judgment, and took three years. When we can conclude that 99% of the time the harm wouldn’t be anything we cared about, we can exclude the category. And usually we care about distortions in consumer purchasing decisions.

We might say the same thing in tarnishment—maybe tarnishment is not bad in itself and is instead a means to an end; we ought to care only if the effect on the TM owner or the consumer is some measurable negative harm, which might provide a justification for the reinforcement theory used in the Chewy Vuiton case—we can’t connect what happened in Chewy Vuiton to cognizable harm.

Dogan: There is a theoretical defense of dilution fitting into a law & economics view (frankly, I think this is on the order of “assume a can opener”). An identical mark on a different product may cause some pollution of the meaning of the mark (by causing the mark to be encountered in the abstract), and blurring and tarnishment have the same harms of pollution. This defense may be purely theoretical, but it’s the best that can be said for it.

Doesn’t want to borrow fair use from copyright, but there is a distinction between commentary that has an adverse effect on someone’s market and commentary that is purely exploitative. People who adopt brands that also happen to be parodies, like Chewy Vuiton—that’s the same kind of harm that you get from direct commentary that isn’t branding. You affect the way people think about the primary brand, but not through pollution of source identification. Whereas purely exploitative or market-supplanting uses (in copyright) or non-commentary forms may be distinguishable. (I think the admitted abstraction of this is the problem: how do you know what isn’t commentary? “Don’t take it so seriously” is a message; why isn’t that enough?)

McKenna: You’ve just described the idea that having to think harder is a harm to consumer, and I’m not comfortable with that. Commits us to initial interest confusion; a lot of uses do entail at least a few moments of processing. Also, what does it mean to encounter a mark in the abstract? How does that happen?

Confusion = decision to purchase the defendant’s product. Dilution speaks to the decision to purchase the plaintiff’s product. No one buys South Butt clothes based on confusion; the fear is that a different decision, at a different time, will change and someone won’t buy North Face clothes.

Dogan: the only defensible tarnishment cause of action is harm that arises through blurring—resulting from unappealing/unattractive use of the mark, which feels more harmful than standard blurring. She’s not necessarily a fan of dilution. She also doesn’t really think that there are encounters with mark in the abstract. The harm comes when encountering the plaintiff’s use, based on prior experience in which the mark now has multiple meanings for different things.

McKenna: But then it’s especially weird to focus on famous marks, the least likely to suffer the problem.

Dogan: They’re the only ones capable of losing singularity of meaning.

McKenna: empirically, they’re tarnishment proof, though.

Goldman: There isn’t a single monolithic consumer. Consumers have different search strategies, awareness of markets, and different needs. Distilling to the single reasonable consumer never made sense to him. How could we fold consumer sophistication into heterogeneity?

Beebe: Yes, we need to talk about the appropriate population. Could establish an average based on a bell curve.

Heymann: Highlights prescriptive/descriptive issues. Tort doctrine has thought about this a lot.

Me: False advertising has also given this issue of the reasonable consumer greater thought, especially with respect to survey controls. Even beyond surveys: Look at the information conveyed by the use at issue. Start with those who aren’t confused, who are usually the majority (often enough because they received no information at all from the use in question). Could that information be conveyed nonmisleadingly, to the consumers who aren’t misled now, by something else, or would you have to suppress the whole message? If you’d have to lose the truthful/nonmisleading message in order to stop confusing the confused consumers, then there’s a better argument for allowing that level of confusion to continue, at least if the level is relatively low. If you could easily change the message and get the truthful information without the confusion, then there’s better reason to find infringement/false advertising.

Bone: There is an empirical problem: difficult to know how various uses affect consumers in general. If we’re uncertain, we can make a case for modesty, and only acting where it’s clear there’s harm. But uncertainty and modesty are not necessarily related—we may be making conclusions about effects based on generalizations about our own reactions.

McKenna: There’s better information than we typically presume; huge marketing literature. All the remotely plausible harms have been folded into TM rather than skepticism/proof.

Bone: that literature doesn’t go to all distortions of information, like Chewy Vuiton. (Me: Some of it does!) We tolerate background risks of harm to information; what we might require is a marginal increase over the tolerated background risks. Static is part of life. We don’t call people negligent unless they increase the risk over a certain level. That could be one way of carving out appropriately actionable risks.

Why not think of the multifactor test as a standard for remedies, not for liability? To get damages, you should have to show actual confusion. But for an injunction, maybe the multifactor test is more appropriate—we do the best we can. We can trade off other stuff in the balance of equities.

In utilitarian calculations, we need to consider administrative/process costs. If we make the prima facie case simple, then perhaps we get a lot of cases that are wrongly brought, inviting defendants to defend and show there’s no harm. Making plaintiffs show harm in the first place deters them from bringing suits. Error costs are also a factor: assignment of burden also affects error costs. There’s nothing special about the nature of the wrong that makes something go in the prima facie case versus a defense from a utilitarian perspective; whereas a moral definition of the wrong would lead you to care very much about prima facie case v. defenses regardless of administrative/process costs.

Burrell: We can factor in environmental impacts in utilitarian terms, but we’ll just never have the data to compare it to the benefits of TM protection. The market we have now is constructed in part by TM law; consumers are quite flexible. When confronted with, say, two Budweisers on two beers, they look for new ways to distinguish them.

Dinwoodie: the question is the level at which we want empirical data. Product shape protection could be determined to interfere with recycling, so we could make a macro level rule as utilitarians. But we have trouble at the micro level.

McKenna: Also a question of what we do by default, in the absence of empirical evidence.

Heymann: earlier comments go to the issue of TM as identity—TM as “who we are,” both from TM owner’s perspective and consumer’s perspective. TM is a way of communicating: may just be producer/consumer tension, but muddies the waters so that it’s hard to distinguish “exploitation” from other communicative uses. In merchandising: it would be fine to have a T-shirt that says “I love the Red Sox,” but using the logo to communicate the same thing would quickly lose you an infringement suit. (General reaction to this statement was that you’d get sued for having the first shirt too, though perhaps that ought not be the case.)

Dilution: the harm occurs in lots of ways in addition to use as a mark—Chewy Vuiton does the same kind of harm as a critique of Louis Vuitton as a brand worn by wasteful, vain people interested in asserting their ideology of superiority. Dilution and merchandising cases both come because TM owners think of TM as an expression of identity—of the TM holder, and the consumer should not be allowed to use it for unapproved expressions of identity. It’s not just multiplication of cognitive processes. Thinking something different about Kodak, as opposed to thinking about two different Kodaks, is what TM owners really fear.

McGeveran: It’s not either/or: we don’t need either a really stripped down prima facie case and a bunch of defenses or a really complicated prima facie case with no defenses; it’s a balance.

Dogan talked about dilution with no extra message and dilution with some extra message directed at the TM owner, as a way of narrowing the realm of the actionable harm. Only the free riding would be actionable, not the commentary. When he hears that, he doesn’t think that’s about the prima facie case. That sounds like a defense—there may be harm, but we accept it if we think that other, communicative things are going on. The harm is the blurring, but if it’s got communication attached then it’s off the hook.

Dogan: disagrees, but the distinction may not be workable for courts.

Lemley: distinction in copyright is between use that causes market harm by suppressing demand, versus use that causes market harm by substituting for demand. He understand Dogan to be making the same distinction: am I injuring your reputation by causing people to laugh at you? That’s ok. Or am I injuring your reputation just by using your mark in a way that, while not purely competitive, harms the TM owner in some way because of substitution?

McKenna: How could there be market replacement in Chewy Vuiton?

Sag: There are expensive Louis Vuitton dog toys.

McKenna: but those aren’t competing. Can you give an example of an actionable dilution claim?

Dogan: It can’t just be free riding. But there is a distinction between commentary through branding and other forms of branding that adopt the same TM in a different context in a way that doesn’t involve direct commentary but does involve pollution. “Aberzombie” T-shirt has an obvious message. But a porn shop called Abercrombie would have a context in which there was no clear direct commentary. (I think these examples demonstrate that this attempted distinction wouldn’t work. McGeveran points out that you will not be able to generate any agreement on what counts as commentary. Dogan agrees that perhaps courts can’t deal with this in a satisfying way.)

Litman: Shows off her South Butt baseball camp. She thinks it’s confusing, not diluting. It’s aftermarket/initial interest confusion, not the kind of confusion that will cause anyone to buy a South Butt jacket instead of a North Face jacket. Nobody will make a buying decision based on confusion, but that shouldn’t be actionable because it’s dispelled before anything happens. The appeal of the idea of narrowing the cause of action is that with a narrower net you catch fewer dolphins. If we start with old TM law, before the market for licensing exploded and we started protecting aftermarkets, and think about what was actionable in 1975, it wasn’t only double identity (same product/same mark), but it did require a certain danger of a mistaken purchasing decision. Empirical evidence is starting to show that TMs are hardier than we feared with respect to both confusion and dilution. South Butt doesn’t cause anyone to buy the wrong hat. So let’s start there and ask what, if anything, other than buying the wrong hat should be actionable.

Barrett: So let’s enumerate harms. Confusion over responsibility for quality; confusion over connection between plaintiff and defendant; harm to reputation; distortion of brand identity (moral right); preclusion of market control/expansion; free riding (why is this a harm?); decreasing distinctiveness; overexposure undermining an aura of exclusivity. What else?

Bone: lost sales? Normative significance has to be assessed—competition causes lost sales too. Consumers not getting what they want is a harm to consumers. Free riding’s not a harm. Loss of value of goodwill—I can use goodwill in various ways, such as by licensing, and without the right to control a use I may lose licensing revenue. (What’s particularly interesting about this argument, it seems to me, is that product placement typically involves payments by TM owners, so their licensing markets work in reverse there.)

Session 2, Continued: 3:30pm-5:00pm

Mid-point summary: Rebecca Tushnet: I’m obviously a big fan of materiality as an explicit element of the cause of action; I don’t have much to say about that until challenged on specifics. I want to speak more broadly about the false advertising-TM relationship, and then about First Amendment defenses, which is a bit beyond the scope of the panel but does seem to be the major alternative to internal limits on the cause of action.

I think about false advertising as the main cause of action, of which TM is a subset. Then we can have TM-specific rules that deal with useful presumptions that do a better job with, e.g., error costs given the narrower range of subject matter. This leads to further subdivision, which I think is the best explanation for nominative fair use: properly understood, it’s a separate test which, if satisfied, justifies the conclusion that there is no confusion as a matter of law.

Burrell & Gangjee circulated a paper expressing skepticism about the possibility of the First Amendment as an external limit, as compared to internal limits: as sympathetic as I am to the overall project, I want to make a point about one aspect of their argument, which is that external protection for parodies could lead to overprotection of parodies, which would interfere with the TM owner’s own free speech rights. This gets to Barton’s point about thinking about the reasonable consumer both normatively and descriptively, and recognizing that the normative shapes the dynamism of our descriptions.

The assumption that a truly confusing parody would interfere with Walmart’s speech rights because of mistaken attribution of a belief to Walmart relies on static consumer perceptions; confusion exists independent of the legal regime. First, that might not be true: a highly parody-protective regime could teach citizens “caveat laugher.” Furthermore, a properly structured speech regime is about what we expect of our citizens both descriptively and normatively. We (in the US) expect citizens to tolerate many statements and investigate many statements that are offensive and wrong, respectively. A judgment about how much falsehood about a person will go unredressable is a judgment about how hardy we expect and require people to be. It turns out that, at least as respects defamation law, we tolerate a fair amount of falsehood, even though (as then-Justice Rehnquist noted in one of his dissents) that can interfere with the person’s ability to communicate her own messages in her own way; this can also be true about a false attribution. It’s a normative commitment to the definition of the personhood of citizens, vulnerable in certain ways and not in others.

The thing that went wrong with nominative fair use was courts’ confusion of descriptive with normative. Separating those out can make clear which characterization we’re using and which kinds of consumers we want to have.

Laura Heymann: Effectiveness of proposed reforms depends on how well we communicate what TM law is supposed to be about.

Example: discussion of counterfeits, where the consumer understands she’s not buying a real Gucci bag. Many people are convinced that the value of the brand is something to which Gucci is entitled regardless of whether it lost any sales or consumers suffered any harm. That’s an intuitive story now: brand with value as brand, identity, personality. Fair use practice guides in copyright might also be important in trademark to present a counternarrative of what TM is about. This also gets to the question of how many harms occur outside the judicial system with C&Ds or myths of TM law that people accept without questioning. Success in creation of a narrative allows victory without using the legal regime.

Connection between the mark and the brand/reputation. Articulated harms often focus on the brand/reputation. Part (almost all?) of the value that comes from the Rolex watch is signalling; so we need to address questions of authenticity. She’s interested in the development of the conventional wisdom on disclaimers: people don’t see them/notice them. Imperfect remedy, though some courts find them useful in certain circumstances. We take a diametrically opposed view about product warnings in products liability, where we deal with messages to consumers that are contrary to the “brand” message—not emotional, not positive, factual and important. Product liability law presumes that consumers do read warnings, which is the predicate for failure to warn claims. Why do we treat warnings so differently?

Disclaimers are starting to get more traction academically as a possible remedy. They seem like a cheap way to reconcile competing values: rather than ban the speech entirely, just add a disclaimer. If consumers don’t understand them, why are we willing to put those consequences to the side? Maybe this is part of a larger set of tolerating imperfection in service of a larger goal. (Also I think allowing disclaimers may be about sub rosa materiality determinations—the confusion at issue doesn’t matter, and if someone is paying sufficient attention that it does matter, then the disclaimer will help.)

Question about amount of confusion—we don’t have a clear sense of how many consumers need to be confused before the courts will act. That number is probably too low at the moment. Courts are intervening when relatively few consumers are confused. This is also related to Tushnet’s point above about Pareto-optimal changes (can you remove the confusion without also removing useful information for nonconfused consumers?).

Leaffer: He thinks the harm to Gucci is obvious and important in the counterfeit case. TM is a way of encouraging investment in brand differentiation—pure utilitarian. Believes that differentiation is good for the competitive process. If you find too many people wearing Rolex watches, this undermines Rolex’s investment in advertising and developing strong brands.

Materiality: a tool for optimizing the system?

McKenna: We should definitely be talking more about remedy. Reduce the likelihood of C&Ds by reducing the size of the carrot. If courts would embrace equitable powers to shape injunctive relief in more limited and tailored ways, that would help a lot. Courts used to be more willing to do that. This relates to disclaimers. When we say they’re ineffective, the question is “ineffective at what?” If it’s supposed to give information about who’s responsible for the product, then it might be more effective than if the point was to undo any association that was created in the first place.

[then, sadly, I had to leave for a bit]

McKenna: Functionality is a great example of where we’ve decided that a consideration simply outweighs confusion on a wholesale level, and that affects how litigation proceeds. That can be compared to situations in which the quantum of confusion matters.

Dogan: this goes to whether nonfunctionality is an element of the pf case: now that’s in the statute as an element of the case for unregistered marks (Dinwoodie points out that for historical reasons though it’s a defense for registered marks).

McKenna: what matters is that the determination is exogenous to the issue of confusion.

Litman: only formally; defies you to find a case in which a court finds something functional and confusing.

Bone: problematic cases can turn on materiality. As with qualified immunity, focus discovery on early materiality inquiry. Then develop a body of judge-made law that further assists deciding problematic cases early on. This would avoid a number of confusion inquiries as a practical matter.

Dinwoodie: can you separate materiality from likely confusion?

McKenna: yes, if you ask about responsibility for quality—if consumers are confused about responsibility for quality, we can presume materiality. If not, then it may be less cleanly decidable than functionality. Some cases will be disposed of more easily; some plaintiffs will be deterred—we see plaintiffs lose false advertising cases on materiality.

Barrett: Zeroing in on confusion about quality is a good idea, but it will be very hard for people to stick to that line. The plaintiff will say that if consumers think there’s a license agreement then they’ll think that the plaintiff controls the quality (as the law purports to require).

McKenna: Some licensing cases might involve attribution of responsibility, but not all, and the most troubling cases—use in entertainment—probably won’t involve consumers who think that Caterpillar is responsible for the quality of George of the Jungle (or that the quality of George of the Jungle says anything about the quality of (other) Caterpillar products). Affiliation can’t just mean any type of relationship, it has to mean responsibility for quality, like McDonald’s.

Barrett: But what about feedback loops?

McKenna: Materiality is not a solution for everything—we still need affirmative defenses.

Bone: Why not ask whether there’s confusion about sponsorship, separate from whether anyone cares? Even if people are confused about whether Gay Toys is sponsored by the Dukes of Hazzard, we would then ask how many people care. Then we’d make a normative judgment about the interests of the people who care that they get the real thing v. the people who are just looking for the lowest price.

Dinwoodie: How would you measure whether people care? Survey?

Bone: However we end up doing it, whether with presumptions or surveys, it can be done early as a discrete issue for discovery.

Dogan: Thinking as a litigator, hard to make that efficient. When you’re drafting your document requests, for example.

Bone: They do it in qualified immunity to kick cases out early.

McKenna: They don’t do it in materiality for false advertising, right? (No.)

Bone: Judge would have to control discovery, based on the idea that it is likely that there is a serious materiality problem. (Hmm. This is sounding less plausible, relying on judicial skepticism, the absence of which is precisely the problem we are now confronting.)

McKenna: you’d need to know in advance the set of cases in which materiality needs to be separated out. And our proposal is to focus that on when the alleged confusion does not involve control of quality.

Dinwoodie: has the sense that there have been many more grants of summary judgment on confusion in defendants’ favor in the past few years than previously.

McGeveran: Bone’s inquiry doesn’t sound like it speeds/simplifies the case significantly, if you need an empirical inquiry into what consumers care about—a complicated factual inquiry. Wouldn’t necessarily speed things. (Well, if you did get a focused inquiry, there’s a lot less to go through—it’s just the issue of how often judges would want to let this happen.)

Bone: the point would be to isolate early on what might be an extremely difficult issue for the plaintiff to prove, and make the plaintiff show a factual issue. After enough of these cases, this will change incentives to file.

Beebe: how does materiality interact with dilution? Dilution is about (at best) later effects on buying plaintiff’s product.

Lemley: short answer, we haven’t written about this, though we’re thinking about it. (There’s something there about the standard of proof.) One still ought to have to show an effect on purchasing decisions, even in the long run, and even if the mechanism of the effect is different.

Dogan: dilution has to be treated as a different animal.

McKenna: the fact is that ,categorically you won’t be able to show a material impact on purchasing decisions; that’s a good reason not to have dilution law.

Lemley: it’s reasonable to say plaintiff should have to show harm, and if it can’t, then too bad. If that makes dilution unusable, so what? At the end of the day, dilution needs to be tied to an injury, a change in behavior.

McKenna: the court is reaching for this in Victoria’s Secret—you need to show an effect on consumers, but might be able to presume an effect with an identical mark.

Dogan: if you could show some effect on the brand value, then that could be enough.

McKenna: he thinks you should have to go a step further.

Dinwoodie: it’s not obvious that materiality is useful, especially if dilution is not about search costs and instead protects different aspects of a mark.

Sag: We’re still dealing with expectations shaped by the law of the past 20 years, which would probably not have developed absent the law—merchandising rights in particular. Buyers (probably) assume that there’s a close connection between the Cubs and a Cubs hat. Are we actually thinking about ideal market structure for merchandising industries? If so, settled expectations may interfere. Or are we looking for a normatively attractive, conceptually coherent framework going forward, accepting existing damage?

McKenna: True, the merchandising ship has sailed. That said, if all that needs to be dispelled is the belief that the university is responsible for quality, then disclaimers etc. can be useful without banning uses.

Litman: Judges hate tailored remedies because people keep coming in to complain that the defendant has crossed the line. Selling it may require jiggering how we tailor injunctions.

Dogan: depends on whether you’re talking about corrective disclaimers on a case by case basis or about disclaimers generally. Merchandising rights evolved based on mistaken interpretations of the Lanham Act; going forward the idea would be judicial intervention would be unnecessary if you model consumer expectations.

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