Fordham IP: TM developments

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, 6^th 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.)