Fourth Trademark Scholars Roundtable: Boundary Problems

DePaul University College of Law

Graeme Dinwoodie and Mark Janis: Welcome and Introduction

Dinwoodie: boundaries are not a new issue, though more salient of late.  Why more acute of late?  Causes are problems connected to subject matter and problems connected to scope of rights.  One response is to try to roll back some subject matter/scope.  There may be justifications for those extensions, though, so keep that in mind.

Teller’s lawsuit for copyright/TM infringement over copying his rose trick.  Most people had a gut feeling that the TM claim was wrong, but different intuitions about how to get there or whether the doctrine could bear that.  Does the doctrinal rule we articulate need to match up transparently with the “why” or normative justification for the limit—functionality, for example?

In Europe, for example, they’re considering revising their version of functionality, and it’s bubbling in the US too.  French bill on right to use TM in certain ways in connection with generic versions of drugs.

Janis: Turns out to be surprisingly complicated to teach students to distinguish copyright from TM.  Sign of fundamental conceptual difficulties.  In-house counsel’s reaction: isn’t it wonderful how we can create these cumulative webs of protection—where design fails, claim copyright, where that fails, claim TM, and so on.

Session 1: Boundary Policing: Rationales and Sources of Law.

Introduction: Bob Bone

Boundary problems exist in any multiple legal regime.  We think of copyright and TM, TM and patent. But there are other IP regimes—false advertising, right of publicity, even contract when licensing is at issue.  Functionality is a prominent aspect; genericity; contributory infringement in some contexts where one concern is restricting generics with an expired patent—Inwood Labs wanted to avoid a broad remedy there. 

Boundary problems/doctrines are flexible.  Cumulation of rights—costs include transaction costs of evaluating all potential legal regimes, and uncertainty about what liability might be which produces chilling effects.  Conflict of rights: TM conflict with patent/copyright.  One way to think about conflict is as of a right to copy.  Finds that rhetorically useful but analytically unhelpful.  Doesn’t think there’s a natural right to copy; after Golan hard to say there’s a constitutional right to copy, though perhaps regulatory schemes under cl.8 have some preference to those under the commerce clause when there’s a conflict.  Are there policy conflicts between the two legal regimes?  A kind of Kewanee preemption analysis, even in non-preemption contexts.  (Isn’t this conflict preemption?)

First, you want to make sure there’s a serious TM case—serious consumer harm of the kind TM law is meant to stop.  If there’s still a conflict with freedom to copy, such as with an expired patent, ask why Congress wanted freedom to copy there.  Maybe to incentivize downstream innovation, or to facilitate competition and get rid of deadweight loss.  Maybe a direct competitor is copying, in which case downstream innovation is less of a problem, so competitive necessity should be the test; maybe it is follow-on innovation as with the Jay Franco circular towel.  (Hunh?)  Then you have to choose which body of law you should prefer, and that takes him back to the Constitution, which may help break ties in favor of patent/copyright over TM/commerce.

Barton Beebe

One reason we care about boundaries is that we care about the boundary between unfair competition and IP.  TM might be better thought of as unfair competition.  Thus our discussion is different from a patent/copyright boundary discussion. A European approach wouldn’t link attribution right with expiration of the copyright.

What is the just-so story we tell ourselves about the rise of these fields?  These laws began long ago, independently of one another. Unfair competition was separate from patent/copyright, but then started butting up against each other. What are the cases where the judges first had to deal with this and set the terms of the conversation?  Was it the rise of “goodwill”?  Comparatively, is it different in other countries?

Why are we asking these questions now?  Dastar is his impetus (right of publicity in the background).  What do we do as claims start being made over public domain works?  He’s sympathetic to authors’ rights, and listing names as a matter of tradition.  Finally, level of abstraction. If we talk about dividing patent law into rules/tech sectors, we could also talk about boundaries w/in copyright law or w/in trade dress (packaging/design)—who benefits from moving up and down that scale in making divisions—which industries? Capital v. labor? Americans v. Europeans?

Primary Discussant: Robert Burrell

Why are IP lawyers obsessed with boundaries?  Other parts of the legal academy attempt to break down boundaries, e.g. imposing liability in new tort situations.  Is it just the expectation that works will fall into the public domain at a particular time and we don’t want that expectation thwarted, most obviously by TM? Is it changes in the way goods/services are being marketed—growth in character branding/merchandising?  Popeye is licensed since 1915; can you put his image on your own brand of spinach just because the image is in the public domain?

Boundary concerns have always been with us in IP.  But scope expansion and subject matter are important—if we didn’t have post-sale confusion, would the Louboutin case be as disturbing?  If plaintiff really had to show confusion among consumers at the point of sale, the dangers associated with a passing off action would look different (he suggests this might be true in UK).  New forms of TM don’t fit very comfortably with the aim of TMs.  Take graphic representations in registrations. If you look at defendants’ arguments in Louboutin, there’s real doubt about what it is that the plaintiff is seeking to claim. Likewise with the European registration, they seem to be trying to claim the idea of a red soled shoe in any particular shape, which shouldn’t be allowed.  If you wanted to solve the problems of graphic representations of 3-D marks, you’d want to move more towards a patent/design system, with a detailed textual representation whose scope would be interpreted rather than a sort of bizarre drawing.

Boundary between TM and consumer protection. In Australia: logics from registered TM system have been taken to consumer protection without further analysis.  Junior user can never sue senior user even with lots of confusion—adopted in consumer protection field.  Should think harder before we do that.

Mark Lemley: Why now?  Dastar is symptom and not cause.  Should treat right to copy as a co-equal participant in the system; otherwise competition simply retreats as rights expands. You need some theory of, if not a constitutional right, a social value of competition worth achieving.

Historically, we should think more about why we threw out the doctrine of election of rights.  The other thing to put on the table is the state/federal axis. State TM law has largely receded, but there are still circumstances, especially around dilution, where state laws are significantly less restrictive than the federal system. State TM rights that do go further, he thinks, ought to be preempted; there are cases from the 1940s saying this but they then disappear.

Annette Kur: Cumulation—what do we call that?  May be 2 different IP rights pertaining to a physical object: a patented machine with a TM applied. That’s probably not anything we care about. As long as we can distinguish the machine and the mark, we don’t worry much. The closer the two get, though, the more we worry: if the rights pertain to the same aspect of the physical object—design patent, copyright, TM all covering the same feature.  Even there, we wouldn’t have so much reason to worry if the difference persisted in the immaterial idea (TM only covers conveying distinct commercial origin; design/copyright only covers aesthetics). But if these two also merge, so you can’t find a clear distinction, then you have the real disturbing cumulation.

Conflict of rights: what might seem to be a conflict might not be such a problem if the aspects that justify the protection granted under one regime are actually sufficiently weighty to justify the result that we get.  If the patent in the machine lapses, there’s no reason for TM right to lapse as long as it’s fulfilling its function. Even after the lapse of design protection, if use of the shape in commerce would confuse customers as to source, that might still justify protection. 

Mark McKenna: All IP is really about unfair competition. The boundaries of all the IP regimes individually are deeply informed by competition norms. One concern about the overlap is that we think about things in silos. We think very carefully about the boundaries of patent in the AIA, with no consideration about how those boundaries would be undermined by TM law etc.  Thrown out of whack if you can circumvent by swiveling to the next IP regime.

Right to copy: Doesn’t want to get bogged down in right v. norm, but we generally discuss the background rule of free copying in the economy and IP rights are exceptions, which is why we need to give reasons for them.  Dogan has said: we’ve flipped the presumption in many cases, requiring defendants to give reasons why it’s ok to copy in this particular case.  That’s the risk of not using the language of rights and freedom. 

Lionel Bently: History—modern conception of IP is completely inextricable from boundary problems. Emergence of different categories arose from trying to figure out what the essences of the categories were—what was the difference between design and patent, and design and copyright? Led to an articulation of the essences: design (form), patent (innovation), copyright (creativity).  Period leading to 1875 TM registration act—you see people registering labels under copyright law, and registering them as designs.  People use what they think is available.  Highlights that the categories are themselves born out of boundary problems, attempts to purify design and patent that help spur emergence of TM.  Then the registration system/bureaucracy leads people to think of TM as part of a collective body of rights.  Only in last 20/30 years there’s actually been an IP category in the law rather than a category of laws.  Copyright is used to supplement/reinforce TM as well—for example in the Arsenal case or in its use to prevent importation/reimportation of grey-market goods.

Janis: similar attempt to use design patent in the US before there was federal TM protection.

My comments: History: people weren’t very sure—design ends up in the US patent regime instead of copyright basically by accident; there may be something more to the constant media confusion about which is which than we want to admit.  Bently’s point about categories born out of boundary problems reminds me of Adrian Johns’ argument that the concept of copyright is born out of the concept of piracy rather than the reverse.

Question for Bone: follow-on innovation as with the Jay Franco circular towel.  He explains: He meant that the case stands for the proposition that basic design elements should be unprotected—an idea/expression thing in the context of TM.

My reaction to Kur’s point about how some conflicts aren’t that troubling if the second, unlapsed right is still serving its own purpose: Two possibilities it seems to me: maybe we don’t trust confusion determinations in exotic mark situations (Wal-Mart—courts are likely to get this wrong so often that the game isn’t worth the candle--how does this work in a European/registration system with a double identity rule in place, where it might not be functioning as a mark in reality but it’s registered?) and maybe we want to incentivize adoption of marks that don’t create that risk in the first place.

Graeme Austin: TM serves a communicative function, which is why we might be nervous about nontraditional marks.  If we take TM seriously, the only message is “I stand behind these goods,” and so idea/expression means something different when we talk about a right to copy.  The idea when there is a need/right to copy is that the thing constituting the TM actually also says something else.  A tacit assertion by TM proprietors: I have the right to communicate source in any way I choose.  Austin would interrogate that structurally: why make it easy to claim the right to communicate in a particular way if there are good alternatives?

Bill McGeveran: We accept overlapping claims a lot in law.  The cumulation problem reduces to a conflict with freedom of action.

Dinwoodie: Can look at purpose—are the regimes doing different things?  He finds that largely unpersuasive because you can usually make out a case that the design is still indicating source.  Or you can look at what aspects are protected.  Or you can look at outcome, which he thinks is the real issue.  Is the use enjoined in a way that looks like enjoining reproduction in copyright?

In conflict of laws, you’re talking about boundaries of a different source.  “False conflicts” are deemed so by weighing interests.  Some of that methodology might be useful—comparative impairment.  Which interest will be more adversely affected by not having its rule applied?  Some of this in Vornado or Duraco—trade dress isn’t all that significant a part of TM while patent is very important.  He thought that approach was too categorical, but should ask questions about whether, for example, a TM claimant could avoid the problem by picking a non-design mark, which would be evidence that the TM interests were less weighty than the copyright/patent/right to copy interests.

Laura Heymann: Striking that we don’t see more copyright claims in merchandising in the US. Not aware of a lot of cases along those lines, but you’d think TM owners would turn to them readily as copyright claims.

Jeremy Sheff: note that LV has been doing that a lot.

Heymann: but not Boston Hockey.

Jessica Litman: in the earlier cases, there were notice problems.  (Which suggests a path dependency: lawyers were trained to do TM proceedings/seizures, and as McKenna points out TM gave them everything they wanted, so why bother?)

Heymann: changing view of disclaimers and their effectiveness; might be a preferable remedy to an outright ban.  Scholarly work saying disclaimers don’t work comes from the TM bar; there’s more work to do.

Also interested in the “right to copy.”  Different traditions have different baselines about what competition means.  US-focused view; and a view that thinks of IP largely as a commodity to be traded, rather than as involving personality interests. Also tied to rhetoric of copyright “bargain.”  Are all bets really off after the term ends?

Michael Grynberg: Louboutin in a world without post-sale confusion.  Underscores that when we think about boundaries they’re not just a way of mitigating IP problems, but they have a salutory effect of their own. There’s a benefit to the quality of the regime.  Smith v. Chanel: assuming the court was right that the defendant’s wrong could be addressed through false advertising claims, we had some clean understanding of nominative uses.  Now we see problems with the more recent cases, but the sense of a boundary made TM law better, independent of its relationship to other doctrines/spillovers.

Bone: thinks right to copy obscures the analysis.  What are the underlying policies? 

Robert Burrell: agrees that we should consider incentives for potential TM claimants to choose marks that don’t interfere with competition. In a registration based system, though, registries have abandoned any role in protecting the public interest.  How the registry should deal with the title of a work, for example: the registry doesn’t want to deal with the idea that it might have to reject marks where there might be interference with public interests.  Now they’ve said that they’ll police for titles of public domain works, but not works still in copyright.

Sheff: Is competition a positive or a residuum?  Opposed to IP or inherent in it?  Also, what’s being communicated by something in which IP rights are claimed?

Competition means something different in TM than in other forms of IP.  Subject matter as form of info: in TM, the info is about something else—the subject matter of the exchange over which we want to have competition.  That’s not true in copyright, patent, or design, where the subject matter of the exchange is the info itself. Implications for how you look at the competition values you’re trying to protect. Maybe you can have competition over the subject matter of exchange without strong IP protection for the marks that indicate source or other features of the goods, in ways you couldn’t necessarily promote competition where the subject matter is the goods themselves.

Kur: Finds it useful to ID the types of cumulation, which may differ. The closer the points to which the rights are attached come, the more problems we’re likely to find.  That’s just a starting point—can still have problems if the purposes are different.  With double identity rule, no possibility of balancing other interests like competition. Asymmetric convergence: the requirements for protection tend to converge—rights are granted simply because what has been created is different from what has come before, regardless of degree of creativity or degree of distinctiveness—but the limitations remain the same, tailor-made to each distinctive right.  Then it’s likely that things can go wrong. 

McKenna: Dinwoodie’s conflicts analysis: in most functionality cases, and many cases we’re talking about, TM values would almost never be seriously harmed by giving way. We’re not talking about TM v. nothing, we’re talking about TM in design v. TM only in labeling.  Remedies could be directed to packaging, labels, etc.

Dogan: gravitating towards a TM defenses approach, as a pragmatist. We’ve been waving our hands for so long, saying courts are getting wrong in defining the affirmative rights.  TM isn’t about free riding, but about preventing injury!  There’s a deeply held value among courts/legislatures against free riding.  (I have lots of thoughts about the relationship of this trend to the 1% v. the 99% and whose contributions to collective value get noticed and whose are invisible/background/fair game for appopriation, but set that aside.)  Whether normatively justified or not, when courts don’t see a compelling value on the other side, it seems unfair.  There are lots of successes on the defense side in the last decade, but we’re still waving our hands because (1) courts can erect theoretically protective doctrine, but if it’s fact intensive enough the risk of strike suits & C&Ds chills anyway, and (2) we have a different shared idea about the role of free riding.  Courts think free riding is bad except when they see the competition reasons—descriptive mark that people need access to.  We need to shift our focus to be more effective: interests of particular classes of defendants in access.

Rebecca Tushnet: A bit of feminist/Foucauldian theory: Boundaries exist to be penetrated. This isn’t just done by rights claimants making TM claims that we think should be copyright claims (Dastar).  For Graeme: raises issues of territoriality and the questions I had last week about Grupo Gigante’s nonstatutory implication of a special “well-known marks” test for confusion—the penetration of extraterritorial meaning in order to address what the court feels is unfair copying (note that copyright territoriality is very different).  As Burrell said with the logics of the regimes in Australia, so here.  Materiality crept out of TM to false advertising and should return back to TM; creativity; fair use and the parody/satire distinction.  The paired copyright/TM claims like Teller’s, the lawsuit against John Carter of Mars comics—we tend to think that if the copyright claim fails the TM claim must necessarily fail, so we’re borrowing the same logic of penetration (if it’s copyright fair use, it’s necessarily nominative fair use) if only by default.

I’m also interested in non-IP regimes (surprised to hear Bone refer to false advertising as an IP regime) such as false advertising, antitrust (which used to be thought of a significant limit on the scope of TM rights; something happened internal to antitrust that removed it as a boundary constraint, but there are still issues of market definition capable of crossing boundaries, as Lemley & McKenna argue), defamation, and commercial speech doctrine.  Why didn’t courts initially notice that dilution was defamation-lite?  The Supreme Court has been active in preventing evasion of defamation restrictions in other areas, e.g., intentional infliction of emotional distress.  The First Amendment can useful in establishing lexical priority of defamation-type rules, with liability only allowed when strict defamation-type constraints are satisfied (Mattel v. MCA), though that is not applied rigorously as yet (V’s Secret).  Why not ask similar questions about the right of publicity?

Jeremy Sheff: Competition, framed positively or negatively; problem of drawing boundaries is determining whether and on what terms competitive copying will be permitted.  Who benefits?  Maybe we think competition increases welfare; maybe we think restrictions on competition should be defended against rent-seeking, which is often/inevitably attendant on creation of rights.  Moral/personality interests may also need to be taken into account.  So we ought to ask: who has an interest in a given set of facts? 

Relationship between rhetoric/parables of competition and the application of those to particular cases.  Dogan’s right that moral intuitions loom large.

McKenna: Sheff notes that the moral intuition of courts, when they have to apply things in a case by case way, leads to results with troubling structural outcomes; instinct that the benefits and burdens are different in different cases leads courts to want doctrinal structures that offer them freedom of movement in individual cases. But that doesn’t work.  The best structures prevent courts, at least presumptively, from having to engage in balancing in any particular case.  The strong form of Traffix: doesn’t engage in balancing of competitive need for this particular competitor, but asks more generally if this is useful for the product.  The alternative tends to get bogged down in “is this def’t a bad guy?” 

Eric Goldman: TM is fundamentally an equitable doctrine.  Funky linedrawing based on intuition is inevitable. If we don’t want that, we need to build in bright line boundaries. 

TM is designed to fix only one problem: certain defects in a competitive marketplace.  There are limiting doctrines: defamation can sit side by side with TM, but only if we think of it as solving a different problem.  Why are we so casual about pleading in the alternative?  Why do we allow four different doctrines aimed at the same problem?  He hates a dozen causes of action based on the same facts.  So wasteful.  If any one gets past a motion to dismiss/for SJ, the costs go up for not much extra benefit.

Lemley: He’s a standards guy more than a rules guy, so he disagrees with McKenna somewhat.  (He liked TM use, McKenna points out.)  The more formal the structure, the more brittle it is for changes in the facts or the law.  Abstraction is necessary for when things like keyword ads show up.  Also true of defenses.  We did a creditable job of writing defenses in the TDRA, but some things just won’t fit within those categories but defenses are still appropriate, and the more we write specific lists the more judges are likely to abdicate their role of figuring out what actually makes sense of the law (*cough*Silstar*cough*).  At the end of the day, juries are still making substantial numbers of TM decisions (though there are some bench trials) if they go to trial—it makes a difference.  If we’re asking juries factual questions, the jury is unlikely to pay a great deal of attention to boundary questions; not likely to be asking whether this fits into a TM box or a copyright box. 

Dogan: spirit of her project is really not just about defenses but limiting doctrines in TM more generally. We need to be more articulate about the social value promoted by certain uses.  In many cases, it’s better to think about encouraging courts into thinking about internally limiting doctrines, not just defenses.

Aesthetic functionality has an internal boundary-drawing inquiry that’s trying to draw lines between source-identifying functions and intrinsic values of the products. The indeterminacy of this inquiry is incredibly frustrating. Courts are asking themselves to disentangle these roles, and it’s really an impossible task.  As we think about boundaries, ask whether there is any satisfying alternative that we could offer.  The basic inquiry is just unmanageable.

Jessica Litman: For Goldman: what does it mean to say TM is designed to fix only one problem? Not historically descriptive of the design.

Goldman: Fixing a problem of competition in the market where info presented to consumers causes them to make wrong choices.  This is a normative proposition about what TM should be trying to do.

McGeveran: Pleading in the alternative is an aggressive response to an ossified system that had a writ for everything and you used the wrong one at your peril—inflexible, encouraged gamesmanship.  Thought: same behaviors could implicate multiple legitimate concerns of the law; why force someone to pick one legal theory.  Not problematic/wasteful/inefficient if attacking different troubling aspects of the same behavior.  Doctrinal tidiness as itself a goal seems unnecessary.  Might help keep the home doctrines tied to their animating principles, but that seems a long way away from one doctrine per customer.  Also runs into problems of design—how do you figure out what the plaintiff’s claim is at an early stage?  Looking for essence is appealing but he’s not sure it delivers.

Grynberg: in favor of rigidity: we talk about the value of adaptation, but it’s adaptation that allows expansion in the first place. Thus we want some baseline to keep courts from going wild.  What’s left if there’s no right to copy?  The intuition that free riding is wrong!  Never understands what restrictionists think we get from embracing standards. 

Dinwoodie: judicial method.  In the past 20 years, behavior is different than the past 60 years.

Bone: Justifications have normative extensions. If our problem is purchaser confusion, when we probe the justification for intervening, that can be extended into post-sale confusion. Then we package the extension in terms of the doctrine.  Suddenly we have a confusion idea that has even further extension.  Not easy to cabin by saying we just have one problem.

Cumulation of rights: transaction costs; uncertainty costs; always costs from cumulation, but we might be more worried here if there is a chill on innovation or creativity.  Doctrinal migration is also a cost.  Fair use in copyright à nominative use in TM. We might like that result, but the phenomenon can have pernicious effect if not reasoned out at the level of justification.  All of that can happen without conflict of rights.

Judges may be responding to other moral values as well.  (Personality?) We have to respond to those in a more direct way—respond to the affirmative case for protection as well as to the defenses.

McKenna: what we are talking about now as defenses or limitations are deeply informed by what we think of as the natural boundary of the right itself. If you look at most of the older cases we now think of as “defenses” they are mostly telling you that TM is limited and doesn’t implicate the thing at issue. Problem: TM doesn’t limit itself in that way any more, and we still need ways to explain why certain behavior is ok.  (Compare the evolution of fair use and Folsom v. March.)  We allocate burdens so that some things look like defenses, but basically nothing in TM works as a defense that trumps the right—all the defenses have a caveat that confusion matters (other than perhaps the strong form of Traffix). 

Heymann: Can’t recharacterize defamation as IIED because you’re evading defamation doctrine. We’re going to make sure the same First Amendment limitations apply.  If that is instructive here, we need to think about the overarching limiting principle you’re doing an end run around, and whether that necessarily has to be of constitutional magnitude to be a backstop, or whether that can be defined in terms of what the tort is about.  Dastar is an example: the Court reads cases about right to copy as being a right without attribution, even though that wasn’t present before.  Worries about creating rules that are categorical because of the ways in which, for example, the satire/parody distinction has been employed categorically.

Dinwoodie: doctrinal creep in both directions.  Dastar is a good example.  Why?  The facts are very defendant-favorable.

How do you fix a preference between two regimes?  If copyright/patent conflicts with TM, we’ve pretty much assumed that TM loses.  Grey goods: is that an example of where you want the TM rule to prevail instead?  The ECJ has said: if you can do it under TM, you have to be able to do it under copyright?  Even if you say that copyright/patent defines the negative space, then which is it?  What happens if it’s not patentable but is copyrightable?  Is negative space defined by novelty or by originality?

McGeveran: sometimes we love doctrinal migration.  Many people have proposed porting materiality from false advertising to TM (I would say “back to TM”), and other things. It’s not tidiness for tidiness’ sake. It’s not that movement of doctrines across is bad. Sometimes there’s an underlying normative instinct.

Sheff: scope of competition is just different, which is why copyright/patent prevail over TM.  If the issue is use of info, we’d be particularly concerned over other claims to control that info.  TM is second-order info. So when you come to a TM-based claim directed as info as info, such as how to build a street sign or Eisenhower’s biography, you implicate concerns about how that info gets disseminated in a way that’s not necessarily TM’s prerogative.  (Does that address the grey goods issue?)

Austin: question about which set of rights is superior is partly about framing.  Dastar: sometimes it’s difficult to point to a public interest served by mislabeling—valuable info may be denied in that instance.  But if the frame is broader and we see Dastar as a cipher for broader issues about copyright owners dictating to others about how they go to market, there’s a problem of ambush.  Fox was able to sit back and say “you didn’t provide this information that you should’ve.” 

Kur: Dastar from the European point of view.  The problem isn’t that TM doesn’t recognize attribution, but that from European point of view there’s insufficient authorship. After copyright terminates, from the German point of view it would be natural to accept that TM identifies the commercial source and does not in addition give authorship attribution.

Copyright is often stronger because of its moral rights. We do recognize parodies, though!  Examples of use of copyright: Swedish copyright used to prevent sales of lamps throughout Europe.  Maybe need a catalog of basic user rights that cut through all categories.  Parody; first sale; maybe some others.

Dinwoodie: easier to construct from the back end by defining what def’ts can do rather than by carving them out of four different regimes.

Dogan: those two approaches can work in tandem.  If you persuade courts of the social value of the use, then various doctrinal tools can promote them.

Margreth Barrett: why do we have a pecking order?  In US, it’s patent, copyright, and then TM. In each case we say that they balance a particular interest (incentive/efficient market) against competition as the one constant.  Makes sense then to think of right to copy/public domain as having a single shape.

RT: maybe the Omega district court result—finding copyright misuse used to prevent grey market watches—isn’t a reversal of the copyright/TM hierarchy, but an application of Sheff’s principle. This isn’t really a copyrighted work you’re selling, it’s an underlying good, and as such copyright isn’t even applicable. 

Litman: change in how goods are sold has caused the question of what’s being sold to get ever blurrier.  T-shirt: world’s best father, with a drawing of Darth Vader making waffles.  People have differing views about whether George Lucas ought to control the existence of these shirts. If we don’t take that into account, it’s hard to persuade. So how do we channel that impulse?  Maybe by identifying liability-negating behavior. No reasonable person would look at that and say it must be a Lucasfilm shirt—except some people do.  (And Lucasfilm did license a similar product!)  Maybe encouraging disclaimers could help.

Heymann: may also have similar conflicts when two people assert rights in the same object: Snoopy is subject to a copyright, and also to MetLife’s use as a mark.  Gershwin’s music: copyright for Gershwin estate and trademark for JetBlue.  What happens when the copyright expires?  What if the license isn’t exclusive?  Is the exercise of a copyright now TM infringement or contributory infringement?  (Marilyn Monroe/Marilyn Merlot photos situation.)  This isn’t one entity claiming lots of rights, but two with potential conflicts and a different kind of boundary issue.

Dinwoodie: speaks to the importance of resisting categorical rules.

Bently: have UK cases of this; some have got round this by reallocating ownership of copyright in cases of “abuse.”  Court constructs an implicit assignment of the copyright.  The case he’s thinking of involved a work created to be a logo.

McKenna: picking up on Sheff’s idea, we don’t have to be concerned with the social functions of TM because that’s not the business of the law; we are just interested with source identification.

Sheff: those social values may have informational value we may want to protect in other ways notwithstanding source identification.

Dinwoodie: you seem to be saying that info itself is more important than second-order info which is valuable only insofar as it gives you information about something else that has social value.

Sheff: yes.

Bone: but why? It’s all info.

Sheff: because the second-order info can be found in other ways, and the first-order info can’t.

McKenna: Rhapsody in Blue: easy to see that the use of the creative work is designating the source of something other than itself. In many cases that distinction is pretty elusive. Imagine if you could avoid Dastar if you simply pled that your material designates the source of the videotapes.  In that case Dastar is meaningless.  What if it were the case that other people could use Snoopy in ads when he entered the public domain?  Well, then you’d give people an incentive not to use characters as TMs.  There would be transition costs, but okay.

Dogan: Fair point, but not all that realistic.  We might see emerging, as we do in right of publicity, a division in commercial/noncommercial uses.  As Goldman pointed out with the LV basketball case, courts may simply say it’s not right to use this in an ad.  That might not be right/principled, but they’re likely to do it.  The courts are trying to use commercial speech as the dividing line.  (As Dogan recognizes, while I fully concede the descriptive validity of this account, I think it’s a defiance of the supposed contours of commercial speech doctrine, which in every other area purports to draw a distinction between false/misleading commercial speech and truthful commercial speech, and the stuff being regulated here falls on the latter side without being subjected to Central Hudson scrutiny as it in theory should be; this blind spot comes, I think, from the fetishization of goodwill/property thinking.)

Sheff: Coase Theorem: what role private ordering plays in resolving boundary disputes. Where private parties have allocated the rights that might arise under various IP regimes between them, do we respect that?  Coase would say yes, with implications for the private ordering we expect going forward. We’d expect Schultz etc. to reserve all sorts of rights to do stuff with Snoopy; otherwise MetLife would be willing to pay for more rights to prevent exercise of copyright rights. (But then when the copyright expires that deal has to end at least as to the public, as McKenna points out.)

Heymann: theoretically, what’s the big deal about letting the logos survive as advertising as long as there’s protection for expressive uses?