12B. U.S. Trademark Law: Where Has It Been? Where Is It
Going?
Moderator, Prof. Jeremy Sheff, St. John’s University School
of Law, New York
Prof. Marshall Leaffer, Maurer School of Law, Indiana
University, Bloomington, A Twenty Year Retrospective on U.S. Trademark Law in
10 Cases
10. Bose: many more TM attorneys sleep easier without
fearing that a mistake will result in a cancellation for fraud. Recognized
practical constraints of TM practice.
9. Punchgini: failing to accept the well-known marks
doctrine under US law, even though it’s in the Paris Convention and TRIPS. Generally recognized that countries must
protect a well-known mark even if it’s neither registered nor used in the
country. 2d Circuit: Paris Convention is
not self-executing. Would it be too much
to hope for an amendment? At least,
other circuits should follow Grupo Gigante and recognize the well-known marks
doctrine under §43(a); territoriality has never existed in a pure state.
8. McBee: expanding the extraterritorial application of the
Lanham Act. Jurisdiction over foreign conduct will exist if it produced a
substantial effect in the US. More
expansive standard even though McBee lost.
Justified because we are exposed to an intense internet flow.
7. Dastar: the inevitable conflicts caused by increased
scope of IP rights.
6. Tiffany v. eBay: fashioning a standard for contributory
infringement actions on the internet.
This isn’t the end of the story; maybe we should get a statutory safe
harbor.
5. V Secret v. Moseley, 6th Circuit after
TDRA. First version of the dilution
statute was a mess. Amendments were a
necessary improvement but fundamental questions of proof continue to plague the
courts. “Strong inference” of
tarnishment as a judicial gloss—failed to rebut the probability that customers
would find the mark offensive. Any
sexual connotation disparages and creates a rebuttable presumption—nowhere to
be found in the statute.
4. LV v. Haute Diggity Dog—didn’t apply statutory parody
defense; part of the developing system.
3. Network Automation v. Advanced Systems: adjusting the
case law to the realities of consumer behavior on the internet. Compare a case like Brookfield, which assumed
great naivete.
2. Wal-Mart v. Samara: distinguishing product design from
trade dress & packaging. Read in
conjunction with Qualitex, Dastar, and Traffix as cases that attempt to strike
a balance between protection of TM and protection of market entry.
1. Traffix. Dislikes
it the more he reads it: making functionality more difficult and less
intelligible.
Prof. Barton Beebe, New York University School of Law
Traffix is
defensible if you think TM has grown too powerful; the chaos comes from the Federal
Circuit’s refusal to follow it. A bit of finesse was called for, but if the
rule is “the mark is the reason the device works, we deny it, even if there are
alternatives,” that’s a salutory rule/result.
California Innovations: This makes his list. We agree to
deny protection to certain geographic indications. Then the Fed. Cir. turns
around and changes the standard.
Rescuecom, leading to Network Automation: use is no longer
an issue for purposes of adjudicating liability for search engines—shifted
billions of dollars (at least in litigation costs).
Black Horse v. Pro Football: followup to Harjo with a
petitioner who was not 18 during the laches period and thus wasn’t lached.
Prof. Jane C. Ginsburg, Columbia Law School
Might have paired McBee with the Monte Carlo casino case.
Dastar is a disaster and puts us further out of compliance with
the unenforceable article 6bis. eBay
grafts §512 onto TM. Food Chain barbie
was both copyright and TM case—once it was found to be fair use in copyright,
wouldn’t be found to infringe TM—a lot of doctrine is crossing over.
Prof. Graeme Dinwoodie, University of Oxford, Oxford
Taco Cabana wouldn’t have come out the same way in 2000. If
you look on the cases on their own merits, the cases he doesn’t particularly
like are Wal-Mart and Traffix—a lot of questions raised. But the lower courts
have taken the Court’s signal in both cases—restrict product design trade dress—and
applied it relatively consistently and coherently, despite ignoring the core
holding of Traffix and reinstating Morton Norwich. Dastar is also about helping
commercial actors predictably structure their interactions—the answer that Fox
would’ve sued Dastar if Dastar had put Fox’s name on it was devastating for
Fox.
Cal. Innovations is the worst decision in 20 years. We
agreed to a treaty to change the law, which had consequences, so we better
change the law again so it has no further consequences! Laughable.
(I couldn’t agree more.)
Google: in 4-5 years, we may have enough findings of no
confusion that we may get what is essentially a rule of law of nonconfusion: a
good common-law process rather than having an early bad decision.
Dinwoodie: Less
significant than promised—KP Permanent.
Resolved a circuit split and established that defenses are really
defenses, but left the door open to the relevance of confusion. That’s been read in lower courts to be less
pro-defendant than the SCt probably intended.
Sheff: Century 21 v. Lending Tree: hamfisted way of trying
to honor the SCt’s statement, yet making it very difficult to implement that
guidance.
Dinwoodie: though at least they thought about the prima
facie case. Analytical structure: we
normally have these factors, but some don’t make sense in the nominative
context because if you used them mechanically you’d always find likely
confusion.
Discussion of Redskins mark—Beebe predicts it will be
invalidated. Interesting question
whether 43(a) protection would remain; some reason to think it might not given
the public policy/dignity arguments.
Dinwoodie: Google France is an interesting parallel to the
US cases—use in internal communications.
The standard of confusion protection imposed really nearly immunized
Google. Standard: would it enable a
reasonably well-informed user to draw a distinction, or only with
difficulty? Seemed protective for TM
owners v. the advertisers, but protective for Google.
eBay v. L’Oreal: again, the British courts aren’t all that
far apart on TM liability, but there’s a provision in the directive based on
German law—intermediary can have orders issued against it even if it’s not
liable. Judge Arnold has been sitting on
the case since it was remanded. You
might see more potential measures having to be taken by eBay/ISPs.
Interestingly, Punchgini ended up with a secondary meaning
standard (goodwill in NY) and that may be more expansive than Grupo Gigante,
which requires something more than secondary meaning.
Leaffer: Grupo Gigante is in the right direction—but a
familiarity standard, less than famous but more than secondary meaning, is a
bit hard to explain.
Dinwoodie: pragmatic. Secondary meaning gets rid of
territoriality, which we’re committed to; but going to fame would ignore what
6bis was meant to do with well-known marks.
European standard of mark with a reputation is nothing like fame. Picking something in the middle is amorphous,
but it’s not as if distinctiveness is a science.
Ginsburg: It’s unfortunate that the Second Circuit rejects
it at the federal level then remits the question of compliance with
international law to the 50 states.
Dinwoodie: 43(a): the use in commerce has to be by the
defendant, not the plaintiff.
(Me: Still don’t get how that gets you to the Grupo Gigante
standard. If you’re looking at the
liabilit standard “is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another person” then I don’t see
how you get to secondary meaning-plus as a precondition for protection or coverage by 43(a), as
opposed to a practical barrier to success in the multifactor test where you’re
likely to do badly on market strength.)
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