Southern California IP Professors’ workshop 2

Rebecca Tushnet, Georgetown, Looking at the Lanham Act: Images in Trademark and Advertising Law

--GUEST BLOGGER
This is Wendy Gordon, blogging a report of Rebecca’s talk.
[RT: Thanks somuch to Wendy! I have exercised my host’s privilege to try to make myself a little clearer.]

Rebecca Tushnet:
Her first topic is the role of critical work. Often we ask of scholarship, ‘what’s the payoff,’ but sometimes there are debates to which there is no one solution. Even if I can’t tell the reader what the solution should be, it’s worthwhile to deepen the exploration of such a problem.

Her second topic is the way ‘trademark’ is often grouped under intellectual property, rather than as a species of unfair trade practice. The sstudent papers made her realze she should make clearer that the property analogy isn’t really dominant. Advertisers care about brands, not trademarks. The Lanham Act (1125 of Lanham Act she puts on the screen) embraces both trademarks and false advertising, with the first half of A and B being virtually identical. It’s important to see the two together. If the courts do something different in one than other, we should notice and ask why.

Treatment of images vary. At one extreme courts will see an image as transparent, easily resolved. Or treatment of images as no one can understand, so throw up their hands. Courts don’t acknowledge the variation or how to identify which bailiwick we are in.

She puts on the screen a test from Tom Lee et al.’s work on consumer perception. Fanciful mark did worse re CONSUMER RECONGITION as a mark than the descriptive/suggestive marks. This illustrates the difficulty with whether the Abercrombie test really tracks how consmers recognize whether a given symbol [word] is a mark.

Our vocabulary for talking about images is limited. She puts on the screen a sketch of a male dancer with bowtie and cuffs from the Chippendales case—but the man’s body is in dotted lines, which means in trademark office lingo it’s not part of the mark. But inevitably the naked body IS part of the mark—the thing they apply for is different from what they claim as the mark. They wouldn’t claim a bowtie and cuffs in conjunction with a man wearing a busiess suit. How do we describe this practice?

The net screen shot raises the barrier between words and images. Shot of various drawings of back pockets of jeans. Applicant argues that Levi and others have TAUGHT the world that the back pocket of jeans is a place to communicate source. TTAB rejected the claim that placement should be understood as a part of consumers’ language—I think this result is fairly arbitrary, excluding symbols that serve the same function as words.

Turning to advertising, she shows a cartoon. Cartoons we know aren’t real. But this one threatens that using the competitor’s CAD software is “a real risk you shouldn’t take.” People are on roller coaster except roller caster is built wrong, “I told you we should have rechecked our dimensions.” Is the advertiser really saying, you could kill people if you use other guy’s software? The fact that it’s a cartoon is not dispositive.

Compare to the Glad case discussed in the paper, featuring an animated talking goldfish in peril—the court says this is plainly false. But it’s neither true nor false: there is no goldfish.

I agree, she says, that images can make claims, but we can’t predict from one case to next how courts will respond. One time an image is so obviously wrong as to be unbelievable puffery and thus not false, while in a somewhat similar case it’ll be seen as false.

What the judges see is different from what the rest of us may believe.

Final example: Sometimes images speak loouder than words even when both are present. On screen is fat guy and thin guy, lost 51 pounds. Words “results not typical. Weight lost on prior Nutrisystem program.” People didn’t really understand the disclaimer, according to the FTC’s research.

Courts have been taking the position that if the words are true, the ads can’t be misleading. That’s just wrong, says RT. The words may be unable to correct what the images say.

Trademark law like advertising law should be probabilistic--about the likely reaction of ordinary consumers.

Commentator: Lisa Ramsey, University of San Diego: takeaways from the paper: (1) The meaning of images: difficult to discern, but can have meanings, and those meanings can influence us even if we’re not aware. (2) Courts should consider competition concerns in their decisions explicitly more often.

Images often have hidden meanings: color can indicate environmental friendliness. Can be distinctive of source. Problem: we often don’t know what the meaning of a particular color is. Do you buy a product because it’s green, or because of additional advertising message? Judges often decide they can’t find something actionable. We want to be consistent. If in TM it is clear that a color or image indicates source and can be compared to defendant’s product, we should be willing to have same certainties in false advertising. Ramsey would take away the opposite lesson: courts and legislatures should exercise caution in granting TM to colors and other visual aspects of a product because we don’t know what the meaning is. One way courts have approached this issue is requiring proof of secondary meaning. Maybe we want to limit TM protection on scope: need virtual identity in similarity and/or in products and services if you’re copying a protected color. John Deere shouldn’t be able to control green on other products. Stronger nominative fair use defense should also apply. Another way to deal with this: remedies. Use of a house mark or disclaimer—maybe an image-based disclaimer.

Another question: why do we protect TM? Are we interested in unfair competition, consumer protection, or free riding? Consumer search costs, etc. don’t provide us with guidance on properly balancing public interest in not being confused with the public interest in having competition or free flow of commercial information.

Social science research: images do have meaning, which can influence us often without our knowledge. Useful to look at what’s been done empirically. Attorneys, judges etc. may not have ability to evaluate surveys.

Cigarette ads: plain packaging movement in Australia and other places. In the US, companies argue that they have a free speech right to use colors or images. Can be turned around in TM context. If commercial speech doctrine permits you to fight this regulation, then it should permit challenges to own rights in TMs in colors—shouldn’t everyone have a right to use these marks to sell? Advertisers are trying to get rights to particular advertising messages, and TM shouldn’t protect that. Gov’t should have the burden to prove the regulation addresses a substantial government interest; we haven’t seen that evidence in the case of dilution, for example, which both Ramsey and I think is unconstitutional. Need TM owners to prove harm. With image, proving harm is often hard.

Me: Julie Cohen emphasizes copyright restrictionists’/privacy advocates’ tensions involving control of information; policies that protect against overexpansive copyright may also allow privacy invasions, and policies that enhance control of personal information may also serve to expand copyright rights. Similarly, there’s a tension between people who believe in regulating ads for truth and people who think TM has expanded too far, both of whom are groups to which I belong. I worry about making it harder to sue for false advertising; it’s already pretty hard. I think we can fix TM without gutting advertising law, through materiality.

Empirical evidence: should rely less on litigation surveys and more on general social science.

Q: Technical solutions possible? E.g., algorithms that figure out meaning of images.

Me: it’s about how people react, so that would be pretty hard.

Q: Results not typical example: people didn’t respond to that disclaimer. What should be done? House brands (great example from Lisa of visual disclaimers)?

Netanel: paper seems to say that images are special case, courts muddle through with text—but remarks today suggest that the issue of images is just an illustration about how TM/advertising law don’t get it right with words either

Betsy Rosenblatt: Counterexample? Images may be more powerful than words, but disclaimers and prominent marking are treated differently—often discounted as ineffective because they are ineffective, and prominent marking is heeded, as with house brands.

RT: Courts always have argument 1 (in this case: images are easy to understand, disclaimer irrelevant) and argument 2 (images are hard to understand, go with the disclaimer) available and pick between them at will. Worst example: two 2d Circuit cases decided on the same day, saying completely opposite things about the relevance of a disclaimer. I agree we need more consistency.

Jennifer Rothman: you want to switch to more general evidence about market functioning, but your last comment suggests that things are so situationally dependent (size of text in comparison to image, weight loss market) that maybe we have to go case by case.

RT: Good point—there will always be litigation-specific testimony about how general rules operate in particular situations. I would like to see courts accept more marketing testimony, allowing experts to testify about likely effects of ads rather than only allowing survey evidence. Right now parties rarely even try to get marketer testimony in many instances because courts don’t think it counts.

Q: Tools we have for interpreting what a reasonable consumer would decide are flawed. We end up with decisions that don’t match the standards. Judge substitutes own judgment. Why attack the tools? It’s the standard itself that’s the problem. Quantifying reasonable consumer’s reaction is flawed in itself.

RT: I agree this is a problem (what I’ve elsewhere called a lack of epistemic humility by judges). I think we can improve the tools.

Nimmer: Merges said we could propertize entry into a new market in a TM-like way. Agree?

Merges: might want to grant a non-TM right. Questions of federalism—forms of state protection, like California local producers’ bonus consistent with federal TM scheme that are currently underexplored. Affirmative protection for local initiatives.

Me: we had that, it was called privileges. Conflict with patent/copyright, not with federal TM law.

Ramsey: property right in descriptive terms like Fair and Balanced, colors, product design—these are troubling things to propertize especially when we grant a penumbra of protection for similarity and even dilution. Free speech and competition need to be taken into account. One problem with more expert testimony is that only companies that can fund fullscale litigation can afford to go through trial. Can always get a C&D from someone claiming rights in color.

RT: this helps identify the source of our divergence: I worry about the upstart competitor who now, in the face of false claims by the market leader, has to go through a fullscale survey—turns out you can’t fight false claims in the market without expensive litigation. That said, we absolutely need tools to make it cheaper to get out of certain kinds of cases, especially in TM.

Seana Shiffrin: worries about deception rather than meaning in general. Why focus only on deception about the product; images can also deceive us about related matter, like that rapid weight loss is healthy. Not directly related to the product, but there are health concerns.

Me: I think that is related to the product. (More generally, she’s concerned with the question of whether there can be a falsifiable claim in an ad that isn’t tied to the product, so, for example, showing anorexic models running a marathon might convey a false message about health. After further discussion, I think we are in agreement that such an ad might be regulable by the FTC, though no private actor would be likely to have standing. Ads may convey far more than the advertiser intends to convey; that’s also why I think we need to consider the alternative ads the advertiser might run to convey the same truthful/nonfalsifiable information. If the advertiser can convey its truthful and nonfalsifiable claims without the misleading information, that’s a good argument for eliminating the misleading information.)

Beebe: what if we were to say TM is not unfair competition, it’s misappropriation of goodwill, dignity, autonomy. That sounds like property. It’s material to me that someone’s using my name even if no one else cares.

A: I think this is inconsistent with the definition of the right, which looks to consumer perception to define the boundaries of the right (though it may provide a justification for a right of publicity). No system actually does this—even the Europeans with their more property focused conception of TM look ultimately to consumer reaction to figure out whether the right has been implicated.

Netanel: images and words: if we know anything about images it’s that they can crowd out rational apprehension/information—the weight loss example is a good one; the image overwhelms “results not typical.” Do some of the justifications for protecting free speech apply less to images then?

A: no, I think we often overstate how hard it is to figure out what an image is saying. (Also, again, focus on what needs changing: many images of weight loss may convey the message “this product will help weight loss” or “weight loss is good,” but those may be true or nonfalsifiable. The question is whether you can convey the true message/s without also conveying the false one/s. A picture of a guy who lost 10 pounds, if that’s the typical result, may continue to convey the truth, and the nonfalsifiable claims, and not the falsehood. We want to minimize both Type I and Type II errors.)

Nimmer: what if the 51 pound loss is true, but they gain it back in a year?

A: potentially actionable.