WIPIP part 1

WIPIP/Houston

My apologies—I was a bit sick so I missed some of the discussion.

Mary LaFrance, Distinctly Personal: Trademarks in Individual Names

Fight over registration of Cab Calloway’s name by competing groups of descendants.  Caylee Anthony’s grandparents’ lawyer filed an ITU to use her name for T-shirts, stickers, buttons and underwear.  PTO rejected an unrelated company (unrelated to Caylee or Casey Anthony) to register CASEY ANTHONY for entertainment services. Then, recent spate of ITUs for Blue Ivy Carter (child of Beyonce and Jay-Z).

Common law: secondary meaning is required for names.  But is it a “name” at all?  Funny ruling from Posner involving Niles the Camel in the Peaceable Planet case—did they have to show secondary meaning to protect NILES for a stuffed camel?  Posner says no, it’s a play on words and therefore arbitrary.  Is King perceived as a name or as a statement about the product?  On furniture maybe about the product; permissible to consider the context.  On a camel, would better be treated as a name.

Posner mentions 3 rationales: traditional reluctance to forbid others from using their own names, such as Brooks; some names are so common that confusion is unlikely; allowing someone to use own name conveys useful information to consumers.  Are 2 & 3 contradictory?

What about unusual names like Dweezil, Moon Unit, Blue Ivy?  May be distinctive.  Also much more likely that there’s only one person you think of when a full name is used: Tiger Woods, Cab Calloway.

False suggestion of connection, 2(a): when is the association false?  Is being a relative of Cab Calloway enough to claim a right/connection to Cab Calloway?  His only going concern while he was alive was giving performances.  What would allow him to assign a TM?  Widow claims she received TM assignment in a will—but that’s likely to be assignment in gross if he had nothing to assign as a going concern.  But PTO hasn’t raised a 2(a) objection; seems to assume connection.  Similarly with Caylee Anthony—what’s the connection to her grandparents’ firm?  DNA?  What’s the going concern, and how can the rights be assigned to the lawyer in gross?  Blue Ivy: DNA?  Legal guardianship of parents?  Same issues v. going concern and assignment in gross.

Can parents consent on Blue Ivy’s behalf?  Can she disaffirm years later, even if the mark is incontestable? Disaffirmation didn’t work for Brooke Shields w/r/t nude photos consented to by her mother.

Many of these are characterized as defensive registrations, but shouldn’t the right of publicity be enough to prevent unconsented use?  On the other hand, grandparents of Anthony don’t own her right of publicity.  If purely defensive, is there a bona fide intent to use?  Can they get around this problem with de minimis merchandising?

Bar on 2(e)(4): can’t register a mark something that’s primarily merely a surname.  De facto rule: One initial bad, two initials good: can register MC Escher.  Legislative history—merely the name of an individual; merely and primarily the name of a particular person (sounds like more than a surname); considered also “a name which identifies the particular individual”—weren’t clearly considering a pure surname rule; doesn’t say why a surname is different from other names and indicates some confusion about the purpose of the rule.

Q from Greg Vetter: why is the Calloway transfer by will in gross if he owns his library?

A: she doesn’t know if they inherited any copyrights; might be none they owned.  If there was, that would be a question of whether there’s any active marketing, was he engaged in a business?

Mark Lemley: the past expectation was that you went into business using your name, and doing otherwise might be deceptive.  We’re not in that world any more. Would it be so terrible to throw this all out?

A: we’d then have to get serious about what we mean by distinctiveness.  It IDs a particular person, but does it ID that person as a source of goods/services? 

Lemley: with a law firm, people probably do assume that the last name identifies a person, but there are some weird ones out there.

A: yes, also with foreign names.

Lydia Loren: can the right of publicity do any work in how we think about what a “connection” is?  Jimi Hendrix’s half-brother and sister are fighting over the estate/TM/right of publicity.

A: Elvis’s estate was able to bootstrap inheritance of right of publicity into a TM right (which to me raises a Dastar question of what happens when the right expires).

Lisa Ramsey: courts have applied TM law to noncommercial uses, but not right of publicity—might be worth thinking about with impersonations.

Eric Goldman: given the growth of the right of publicity, should TM law step back/narrow, given that the presumptions TM makes about names are arguably outdated?

Felix Wu: is it possible for more than one person to have a valid connection, resulting in first come first served?

A: sure: if Calloway had an orchestra, each member could claim some connection. 2(a) is phrased negatively, as a bar if you don’t have a connection. Question would be other registration hurdles.

Lisa P. Ramsey, An Impersonation Theory of Trademark Law

Texas Dep’t of Transportation has TM in Don’t Mess with Texas for anti-littering campaign; sued a romance author for using the title Don’t Mess with Texas.  Mutant of Omaha case.  ThinkGeek: April Fool’s joke fake T-shirt: Unicorn, the new white meat.  Received a threat letter from the Pork Board.

This wouldn’t make any sense if we were actually concerned about source identification. But if we’re interested in preventing free riding from attracting attention to expression, then this makes sense.  So how do we limit this expansion/discourage TM owners from making these claims?

Principles: protect comparative advertising, other truthful advertising (spare parts, services, etc. for the markholder’s products), political speech, noncommercial social commentary, news reporting and commentary, artistic and literary expression—and expressive merchandise. 

What about political-on-political disputes, such as United We Stand v. United We Stand NY?  Second Circuit held Lanham Act applied—there was a reason to prevent noncommercial entities from impersonating other noncommercial entities.  Bucci v. Planned Parenthood: she thinks it was rightly decided, b/c Bucci set up a fake plannedparenthood.com website saying “welcome to Planned Parenthood” that was actually anti-choice.  Pretending to be the NYT is a problem, as would be pretending to be JK Rowling.  Maybe Nike should have exclusive rights to put Nike on a T-shirt even if no right to prevent “Nike sucks” or other variations.  Impersonation on Facebook, Twitter, etc.—fake Nine West website asked women to send in personal information.  Not really commercial speech, but it looked like it.  Keyword advertiser who uses the mark confusingly in the content of the ad rather than just to trigger the ad.

How do we distinguish between these types of cases?  Different approaches.  Current TM approaches don’t provide sufficient guidance.  Search cost theories don’t help with certain uses that increase information but may increase clutter.  McKenna says we should focus on unfair competition—illegitimate diversion of trade.  Ramsey thinks that’s underinclusive. Some third-party uses are problematic/can harm consumers.  One possibility: a materiality requirement.  Could also try a “TM injury” requirement.  Margreth Barrett has proposed an associational marketing cause of action that would be limited to situations involving confusion over existence of consent/licensing, e.g., Mutant of Omaha—for non-TM use, initial interest confusion, noncommercial speech.  Would break it off of TM and have higher burden of proof, proximate cause requirement, limited remedies.

Ramsey proposes an impersonation theory: whether there is confusion about the source of the expression after the reasonable person views the content of the expression.  Would take care of the SMG case, where the union handed out flyers that said “special for you” with the restaurant’s name on it.  Compare to the Rogers test: free speech trumps TM if the use is artistically relevant and not explicitly misleading.  That’s a confusion analysis allowing confusion to trump artistic expression.  (RT: I could hardly disagree more about what Rogers is/should be.)  Falsely representing that you’re the markholder is the problem.  False affiliation/sponsorship can be handled by false advertising.

Her test: is the D using the mark as a false designation of source? Do reasonable people believe it? Does the content fail to dispel the confusion? Considering also a materiality requirement, not limited to purchase decisions; perhaps confusion that harms the reputation of the P or causes members of public to take certain actions.

Lemley: you intend this to be speech-protective but it’s not.  TM supposedly drew this line until recently: if people are being confused it’s illegal and if not it’s not.  On that theory, there is no First Amendment defense for expressive speech.  A number of the troubling cases are troubling precisely because we want to allow some confusion to get your message across: all the parody cases involve at least some momentary confusion; all the IIC web cases fit in this category.  Ramsey’s theory: is PETA v. Doughney correctly decided?  Ramsey says you have to look at the content, but then Bucci is wrongly decided b/c the court reasons that the domain name alone was confusing. If you say you have to look at content, maybe that’s the best we can do, but that’s worrisome from a free speech perspective. Maybe the answer is that the Yes Men lose all the time, but for core political speech we might not want that.

Ramsey: you have to look at content, not just the domain name: “welcome to the planned parenthood web page”—not the same as People Eating Tasty Animals.  False statements of fact are not protected by the First Amendment.  (RT: The Stolen Valor Act case might be of interest here.)  False attribution of quotes to a writer—no First Amendment defense (Masson case).  Materiality might matter too.

Me: This isn’t a TM problem.  The harm is done to the people who are deceived, not to the TM owner. Imagine the person who comes to your door and says they’re from Pacific Gas or with the police and then assaults you. That’s the same kind of harm, and it’s from association; there’s no reason to draw the source/association line.  And b/c the harm is done to the victim, not the TM owner, there’s a constitutional standing problem.

Ramsey: thinks that potential harm to the TM owner might justify standing. 

Eric Goldman: there’s no baseline to measure what consumers understand as the source of the expression. There will always be noise.  Extending a muddled concept to a category where it will be worse.

Ramsey: but we do grant TM rights to the NYT, other information providers.  Until we have an impersonation law, courts will use TM to address this kind of problem.  (Why isn’t the Nine West case a fraud case?  We do have fraud law.  And identity theft law.)  Since we’re already heading down this road, this is one way to limit further expansion.

Jeremy Sheff: how do you distinguish between Michelob Oily and Bucci?  Maybe we’re less solicitous of the fools who’re confused by the former.  Not clear that the standard you enunciated is doing the work; maybe a more objective standard about the reasonable consumer.

Ramsey: it’s complicated.  Michelob Oily is a “confusion about consent” case, which she wants to shut down. 
Bill McGeveran: seems like old wine in new bottles. Not clear whether you’re trying a grand unified theory of TM law or a doctrinal mechanism that would dispose of these cases cleanly and predictably. As to the latter, it’s hard to imagine success: relying a lot on consumer perception heuristics to judge the prongs of your proposed test. 

Ramsey: like TM use.

McG: yes, doesn’t like that either. If the idea is to be quick/predictable/efficient, we’re bickering right now about linedrawing, so that might not work. To say this is a unifying theory, by contrast, you need to distinguish it from materiality.  Otherwise this just seems like TM use and materiality.

Ramsey: likes bright line rules, but they won’t always work.  Can do better in creating cases that can be easily disposed of.  (McG says that if the question is whether people think P is the source, there will always be ability to debate that.)

Rebecca Tushnet, A Mask that Eats into the Face: Images and the Right of Publicity

History: the right’s unsoundness and perceived lack of boundaries may be related to its foundation in the image—the picture—which has long caused courts difficulties of understanding and interpretation. TM starts with words, but publicity rights really don’t: the canonical subject matter is the image. 

Preemption: Longstanding and contradictory beliefs that the image is nothing more than an image and also that there is something more than the image in the image, which courts have struggled to articulate leading to much dissatisfaction with the preemption analysis most courts have engaged in with respect to publicity rights.  The image (representation) stands in for the celebrity’s “image,” that is, her special aura that in turn has selling power, or at least provides a cultural referent that consumers will recognize.

Transformativeness: special treatment given to words as bearers of effort/transformativeness. Tony Twist: “[i]f a product is being sold that predominantly exploits the commercial value of an individual’s identity, that product should be held to violate the right of publicity and not be protected by the First Amendment.” Almost impossible to imagine a similar victory against a novel with a minor character named Tony Twist

Three Stooges: “the transformative elements or creative contributions that require First Amendment protection . . . can take many forms, from factual reporting to fictionalized portrayal, from heavy-handed lampooning to subtle social criticism.” Comedy III, 25 Cal. 4th at 406 (citations omitted) … But not portraiture.

More generally, transformativeness is structurally biased in favor of text. A novel or nonfiction work about Marilyn Monroe that does not caricature her, but seeks to represent her realistically, will still inherently seem to involve more contribution by the writer than a picture of her, because the effort required for the visual artist to represent reality will be transparent—invisible as creative effort—both to courts and to audiences, whereas the effort of writing a narrative will be obvious.

The Comedy III court was clear that artistic talent in the visual realm, if aimed at producing a realistic depiction, ought to be ignored in this inquiry: “[w]e ask ... whether a product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness. And when we use the word ‘expression,’ we mean expression of something other than the likeness of the celebrity.” A “conventional portrait of a celebrity” is not protected against a right of publicity claim,  even though a “conventional” biography, reflecting reality in words, would plainly be protected by the First Amendment. 

There is no conventionally understood way to paraphrase an image, because to the extent that images are understood to share an external referent (such as a celebrity) they are the same. 

the claim in Tiger Woods—while the TM claim was rejected on this ground, the publicity claim couldn’t be.

All pictures of the Three Stooges are nothing more than pictures of the Three Stooges, even if they are posed in various ways.  Comedy III itself involved a drawing that apparently had no precise photographic reference, and that indeed heroicized the Stooges compared to the ways in which they were usually photographed, but the court still found against the artist.

The legal treatment of caricature also reflects the idea that, with images, there is a core realistic representation that infringes (unlike the factual biography) and that can be compare d with a distorted, transformative use, in a way that does not exist with respect to text.

Q: 3 stooges: analysis suggested that fictionalized portrayals were ok, but in Winter the court ignored the story surrounding the images, focusing just on the changes to the visuals.  Seemed to make it just about imagery. What if they put the Winter brothers in unaltered into this narrative? Should still be ok.

A: I agree, but focusing on alteration of image makes it easier (if wronger).

Lemley: is this really image discrimination? Maybe what the courts are doing imperfectly & subconsciously is reacting to the fact that the audience reacts differently to images than to words.

Goldman: once we get away from ad cases, it all goes downhill.

Idea/expression distinction is easier to apply to words: maybe courts are less comfortable dividing them with images.

Naked cowboy: statutory “not a picture”: do a section on NY and pictures.

William McGeveran, Competition, Communication, and Confusion

Confusion is a heuristic to ID whether competition or communication are threatened.  Passing off/diversion or inaccurate info into the marketplace.  You might lean towards one or the other, but that captures most everyone’s view. Other things that people talk about as TM’s animating purpose are really just heuristics for measuring/avoiding these things.  IP boundary issues, e.g., Dastar, are also often concerns that competition or communication will be impeded if TM can be bootstrapped into a monopoly.

But courts are mistakenly focusing on confusion as an end in itself. Becomes circular; courts think it must be eradicated at all times. Doctrinal structure of TM does that, forcing cts to confront possible tradeoffs between confusion v. competition/communication in ad hoc ways if at all. Defensive doctrine of nominative use ends up in non-Kozinski cases circling back to confusion.  Functionality: competitive need for a feature, notwithstanding confusion—may do its job better than other doctrines by not returning to confusion.  But there are very few instances, even KP Permanent on remand, where courts think directly about the reasons they’re doing the analysis in the first place.

What do we do? Can restructure some doctrines to embed the normative tradeoffs more explicitly and directly.  More creativity/flexibility around remedies.  More room in the middle: P’s TM is valid but D has an exception; P’s TM is invalid but P has a different remedy for the wrongful activity before the court (Blinded Veterans situation).  This is where he wants Louboutin to go: P’s TM is valid (or could be formulated in a way that would be valid, though this registration isn’t) but D has an exception—Louboutin has a mark only when it’s a contrasting sole.

Vetter: how does TM lubricate communication?

A: often competition and communication are the same thing—often info in the market helps competition.  But in Louboutin, for example, there’s also an expressive reason to use red. Courts have an understanding of the importance of communication but see it as an external, floating “first amendment” concern.

My suggestion: Consider the rhetoric of competitors v. competition—plenty of cases say Lanham Act protects the former, not so much the latter, whereas antitrust law specifically says it’s about competition. When you have a body of law that says it’s about protecting competition, you need to engage with it. Also look at the (frankly weird) limits antitrust doctrine has put on claims that false advertising violates the Sherman Act etc. See, e.g., American Professional Testing Service, Inc. v. Harcourt Brace Jovanovich Legal and Professional Publications, Inc., 108 F.3d 1147 (9th Cir. 1997) (no antitrust remedy for advertising disparaging a competitor).

Gerhardt: why isn’t confusion a heuristic for deception? You’re thinking about the limit/edge cases, not the counterfeit cases which involve consumer harm.

Sheff: we use heuristics because they’re cheaper/easier, and it’s easy to see why confusion meets that standard v. competition/communication generally.  But sometimes the concerns don’t lend themselves to that kind of heuristic.

A: agrees, heuristics are good when they are likely to reduce error costs and other costs. Our problem: we’ve mistaken the heuristic for the purpose in edge cases.

Lemley: there may be other middle solutions, such as disclaimers.  Or grant injunction if P pays the costs of complying.