Session 3: Lessons from Boundary Problems
Introduction: Bill McGeveran
What’s on the other side of the boundary? It’s not the case that overlap alone for its
own sake is problematic. Why is TM the
bad guy here that has to give way? The
value judgments are in play because TM’s structure is (1) less explicit about
freedom to copy as a value, with the bargain expressed more explicitly with
other regimes, and (2) less certain about what TM is for. Tidy boundaries are a means not an end,
embodying value judgments.
We spent a lot of time on aesthetic functionality and Dastar.
Other overlap issues were mentioned—what about TM extensively
overlapping with other regimes when we let it do so? E.g., defamation and dilution. Celebrities in ads: federal and state infringement,
federal and state dilution, false endorsement, defamation, and right of
publicity are all possibilities. Maybe
we don’t have the same concerns about freedom to copy the celebrity, but why
not talk about our willingness to get rid of these overlapping rights (no int’l
barriers to doing so in comparison)?
Maybe we don’t think that the redundancies there are troubling—value
clashes/inconsistencies. (That’s
unlikely to be true! TM’s boundaries
look a lot better than right of
publicity’s, though.)
Boundaries also help you think about what the interior is.
Jessica Litman: goal is to improve results in real
cases/prevent bad cases from being filed.
Legal realism must creep in: if TM owners can tell a free riding story,
finders of fact will be sympathetic. (I
wonder how inherent this is. There are
some people whose efforts seem to be free to ride on, because of ideas about
contract and (presumed) consent. I don’t
think those have always been the same sets of people even in the past 100
years, so is there room for change?)
Some best tools are not doctrinal but stories of overreaching and
greed. The flyonthewall case: the court
says “no further.”
International harmonization might help sell the idea of
limiting §43(a) to false representations and not protecting unregistered marks;
it’s not very doctrinally pure, though, and she’s grabbing at an available
tool.
Primary Discussants: Michael Grynberg
Distinction between learning from another doctrine and
blindly importing from another doctrine. Consider the regulatory nature of a
lot of consumer protection law—often administered by an agency. One boundary in
IP should be a greater appreciation of the power dispensed by
courts/legislatures to private actors to exercise a kind of regulatory power.
We have skepticism about this delegation in admin law; have evolved doctrines
to ensure that they exercise it legitimately.
You see some attempts to limit the scope—Tushnet’s written about
prudential standing in false advertising—but the principle that we should be
careful who we let muck around with the free market—is a sound one. This may also help explain the appeal of
materiality.
Copying elements of trade dress/keywords as a way to
communicate category similarity: I am like X.
Mostly people in the room think that’s salutory, and if communication of
similarity is false we can deal with it through false advertising. If you’re
communicating “I’m a generic of drug X,” we might have more discomfort
offloading that to false advertising but since we have the FDA behind this it’s
not troubling. We are making an implicit
judgment of the quality of an underlying regulatory regime in another
area. If such cases are common, which
they might or might not be, we have to consider the state of play in other
areas of law (*cough*antitrust*cough*).
Mark Lemley: Tendency to interpret boundaries as
“limits.” Boundary against what? It’s one thing to say TM stops and something
else starts, and another to say TM just stops (and then perhaps the right to
copy/compete begins). Articulating
what’s on the other side of the border helps our theory of why we want to limit
TM law.
Group of TM lawyers: no one actually questioned supremacy of
patent/copyright in cases of conflict.
Why? Could tell a constitutional
story, but not clear that works given the Commerce Clause. Could tell a historical story: longer
pedigree, though that too isn’t necessarily satisfying. Could tell an earlier vesting story: you don’t
get TM until well after whatever actions would have vested a patent/copyright,
though after ITU it’s not clear that story works either. Maybe TM just has a less well articulated
theory of the public domain—but he thinks patent and copyright don’t have them
either, and to the extent articulated it’s been done so in a statutory vacuum.
We do presume TM dominates state and common law doctrines,
and to the extent that unfair competition/misappropriation runs afoul of TM’s
animating principles, TM wins out. Maybe a federalism story makes sense, but
he’s been thinking about maybe a numerus clausus principle for legislation
protecting IP. Maybe we need not one but some limited number of some legal
regimes and 10 causes of action might not be the right number.
Starting to question whether we need 2 functionality
doctrines. You can articulate the rationale/desirability of functionality in a
single unified way, which might help a.f. not be treated as the poor
stepchild. Part of that articulation
might not actually be most desirable as a boundary condition, channeling
patent/copyright and TM, but instead as an intrinsic limit. Boundary conditions
make the implicit assumption “there’s got to be some law out there that
protects this thing,” but that’s corrosive to the idea that market competition
is the default unless there’s some significant market failure. Right to copy as a right against which we
must bump up is needed if that’s the boundary.
Dogan: patent in particular tends to come in tension w/TM
only in product configuration trade dress. Assumption that patent trumps comes
from idea that TMs are about information, and there’s some widely shared
skepticism about how much info is actually conveyed by design and how hard it
is to convey that info by alternate means. Thus the benefit gained from TM
feels thin relative to the costs of granting TM protection over things that
could threaten patent values. False
positive mistakes are costly and true positives are not all that beneficial.
Lemley: he gets that because the protection is at the fringe
of TM anyway; but what about copyright?
Dogan: much harder in copyright. Had different instincts about copyrightable
works created as logos v. use of Snoopy, created for other purposes, then
transferred into TM by licensing.
Functionality convergence: attractive but comes with
risks. It does seem like the right thing
to do but Lemley thinks it will make a.f. more robust and it might actually
water down Traffix functionality if
courts have to define it. We think: any
time a feature adds utility, it should be functional. That’s appealing, but as
a practical matter courts have too much accumulated case law that it’s ok to
pick an attractive feature as an identifier and that we should encourage people
to choose attractive trade dress.
McKenna: you don’t have to make judgments about other
regimes. You should say ‘this doesn’t
belong in TM, and if some other system isn’t working then we should fix that
system instead.’ Why TM gives way: it’s
TM that has grown into patent’s space and not the other way around. It’s not
that patentable subject matter has expanded, it’s encroachment into patent’s
area. Lemley: copyright is tougher. McKenna: agreed. We have trouble figuring out how this would work
in copyright. But one could imagine
focusing on boundaries in copyright law—useful articles; limiting protection
for logos (which used to be the case!).
Staying out of each other’s space need not create a rank ordering. (Feminist me is skeptical of this claim.)
Grynberg: Litman says courts don’t necessarily care about
working doctrine pure; Grynberg thinks that they can be attracted to doing so
in appropriate circumstances. That’s a
consideration in thinking of “this isn’t TM’s job” as an argument.
Kur: in logos/labels, copyright has grown into TM, but
that’s not watertight.
McKenna: he’s just making a descriptive argument.
Kur: don’t build a hierarchy on that gut feeling.
TM law doesn’t protect something valuable as
such/achievement as such. Everyone is free to copy the thing designated by the
TM, but must use another sign to indicate origin. Thus the interference with first-order
creation/competition is less. Only true
insofar as acquisition of TM remains competition neutral in the sense of not
giving competitive advantage to registration. General theory is that this is not
the case because TM signs exist in infinite numbers and a different one isn’t
competitively disadvantageous. But that’s not true—some signs are limited. Colors, descriptive designations, shapes. Implications: no registration for
configuration without secondary meaning, contrary to current EU approach. (Discussion: there is not formally a
post-sale confusion doctrine in the EU, but some suggest it is coming soon.)
Dinwoodie: before functionality was added to defenses to
incontestability, US courts got around that by calling functionality
descriptiveness.
Kur: “used as a mark” can also be deployed this way.
Bently: ECJ has ruled out descriptive use in this way in a
case concerning toy replicas of cars (though did use “use”).
Barrett: Rosetta Stone district court was following that
instinct, but used the wrong label. More
sense to say use is a fair use. It’s the
nature of d’s use that matters.
Dinwoodie: benefit is also that it doesn’t knock out p’s
mark in its entirety.
McKenna: it doesn’t fit in any of these existing boxes—it’s
all the same instinct, d’s using this for something other than source.
Dinwoodie: Kur suggests you can fit it in the box if you
understand “descriptive” in a non-literal sense.
Kur: words and drawings can all be descriptive.
McGeveran: so the Louboutin red sole is describing red?
McKenna: if you can use descriptive this way, why not
functionality?
Dinwoodie: Vornado
uses descriptiveness this way.
McKenna: interesting that we want a harder meaning for
functionality.
Dinwoodie: but that’s because of the consequence of
invalidating the mark.
McKenna: that need not be the consequence! (This is my Louboutin argument.) Courts
are the ones that created the consequence.
Bone: but we run up against the expectation that it would invalidate
the mark. So why not shift over to fair
use, which might also accomplish the result more effectively. True that we don’t have to make functionality
work that way.
Lemley: but to use fair use we have to change the parameters
of that doctrine too.
Dinwoodie: true, requires more expansive reading; but if
courts are conceiving of product designs as descriptive, it’s not alien. Shakespear/Silstar
was a classic example because they couldn’t
use functionality as a statutory matter at the time.
Dogan: if there’s actual passing off, the court should be
able to require labeling. A cleaner way of getting there than saying the thing
is protectable and that people acting in good faith to copy it.
Litman: cleanest way is to say these uses don’t cause likely
confusion.
Lemley: but we have to take that to trial.
Heymann: we want to say even if they do cause a little
confusion it’s still fair use.
Descriptive fair use is like that, use of generic terms with de facto
secondary meaning, etc. Unify a bunch of
different kinds of activity that are appropriate even if there is some
confusion.
Janis: design patent law: there are two types of
functionality—a line of cases that uses functionality to restrict scope, as
well as to invalidate rights. So it’s
conceivable to do that though it’s sub silentio.
Bone: why copyright ought to trump TM in certain respects:
one intuition is legislation v. common law. We think of copyright fair use as
being a fairly well crafted statute that tries to strike a balance—at least a
legislative effort—between protection and copying. While the Lanham Act is so heavily common
law; there may be less willingness to intrude in copyright. (But as Litman has pointed out, most of the
expansion of copyright came from the courts too, so that is a story but it
doesn’t track the cases.)
Boundaries are, in theory, defined in more general terms than
other limits, which tend to be more case by case. Our boundary doctrines tend to be
case-focused though. Some case-specific
things may not be about boundaries.
Sheff: going back to distinction between info with value in
itself and info with value that can be realized in other ways because it’s
functioning as source indicator and there’s always another source indicator you
can use. Does that mean that these distinctions should be embodied in limits on
subject matter? Scope? Defenses? Just
the remedies? Maybe the last is the most
promising.
Grynberg’s point on consumer protection regulation: the
interesting Q in that boundary is what conditions are necessary to get the
administrative state to move on consumer protection, which may be industry
specific. Industries in which TM is
alive and well, but there’s some other uncorrected market failure requiring
command and control. TM not only serves
as info facilitator but can also serve to manipulate consumer decisions in ways
that lead to undesirable results, and food and drugs are clear examples of
that. Marketing can influence decisions
even if not “unfair competition” in ways that lead to very high social costs.
That might trigger the regulatory state. The boundary problem is identifying
those industries/those conditions.
Perhaps we need to say TM is not enough and we need additional measures.
Dinwoodie: note that in Australia Google got hit by the
regulators for unfair competition in keyword ads. So we have to ask institutional questions of
competence.
Both Dastar and Samara, the Court says, don’t worry
there’s another regime out there to take care of abuse. This helps make design
patent relevant—but are we comfortable that design patent is effective in the
US?
Why prefer patent/copyright to TM? Maybe we need to kick stuff out of copyright
where TM does a better job. Two examples of kicking copyright to design
instead. Britain has a slightly strange
rule that Kur now thinks invalid: restricts term of copyright once there’s an
industrial application. If you look at conceptual separability: the idea was to
push these claims into the design regime, not destroy them entirely.
Lemley: Omega is
an obvious case—copyright is treading on TM’s territory.
RT: Actually, when it comes to tobacco and marketing unhealthy
foods to kids, activists and increasingly regulators, though mainly not in the
US, say TM should not be allowed. Plain
packaging and ad restrictions are about pushing TM out of the realm of certain
segments of the market.
My note re: functionality.
McCarthy attempts to unify it too!
He does it differently than watering down Traffix functionality, but by talking about market demand and
pretending there’s no such thing as a.f. while still using the a.f. cases to
define the scope of functionality. That’s
worth noting as a possible outcome of unification as well.
McGeveran: will courts go for the broad definition of “utility.” We talk about what “courts” generally would
be willing to do; the Supreme Court
might well be willing to do this if there were proper briefing. If we had an impact litigator willing to try
to fix TM, you could design the kind of case to address these problems. The SCt seems to have a very different view
of freedom to copy than the circuit courts, especially the Fed. Cir. Doesn’t know why that is, but descriptively
true, and it’s a prescription for anyone who actually wanted judicial reform.
Lemley: possible theory: SCt views its job as articulation
of principles across cases, at least in theory. Lower cts view their job as
resolving cases on facts in front of them. Latter makes you more susceptible to
bad facts/free rider feelings. Clearly
not always true, but harder to articulate “free riding bad” as a general
principle.
McKenna: note that these cases are never close.
Janis: SCt also sees itself as the arbiter of boundaries—taking
cases framed as boundary cases.
McKenna: and it sees patent cases and the 7th
Circuit doesn’t.
McGeveran: boundary framing as a useful rhetorical tool in
amicus briefs and so on?
Austin: we are compartmentalizing what we see as the SCt’s
drive to enforce a right to copy from regulatory responses that occur outside
the IP appellate decisions. (Also Golan, which can be seen as affirming
such a regulatory response.)
McKenna: dangerous to keep things in TM because we think the
other schemes aren’t working because of the collateral damage to TM.
Dinwoodie: there has to be some affirmative justification
for applying TM—secondary meaning of a product design, for example. But since that also creates problems we can
think about whether there are other better regimes.
Sheff: the problem is that allowing TM protection for
harmful medicines/devices leads to bad results, which can be dealt with not by
limiting TM protection but by setting up a collateral regime to address the bad
results in the industry.
RT: I think there’s some ground here to think about the
right of publicity/false endorsement, which we haven’t talked much about—courts
are hopelessly confused about whether false endorsement is a matter of
§43(a)(1)(A) or (a)(1)(B), and that’s no surprise.
Dinwoodie: but it’s picked up because there’s some
justification in TM.
Dogan: bleed between false endorsement and the right of
publicity. NCAA cases: you see the players saying ‘the NCAA is getting paid, so
we should get paid too.’ That’s not
without intuitive appeal.
McKenna: that’s the basic RoP theory.
Dogan: but it’s reinforced by the breadth of TM rights—if TM
holders are getting paid, that’s juxtaposed to the unpaid use of the players’
images.
Lemley: but that’s contextual. Universities sell T-shirts and tickets, and
no one looks at that and says the students have a RoP to share in those
benefits.
Dogan: but it’s a self-reinforcing.
Lemley: and it’s about framing. In many other contexts we accept the
asymmetry.
Heymann: you see bleed the other way too; in L’Oreal you see
the 7th Circuit say the RoP requires false endorsement. (That’s TM trumping RoP, it seems to me, if
we want to talk about supremacy.)
Bone: suppose a TM owner licenses a symbol, but it turns out
that there’s no protectable mark. Is the contract still enforceable? (E.g., the Facebook ToS.)
McKenna: licensee estoppel?
Lemley: that was thrown out in patent law because of a
policy judgment that we want people to challenge overbroad/invalid patents.
McKenna: hasn’t been accepted in TM cases.
Bone: Market solutions can come in to provide consumers with
info, not just regulatory solutions.
McGeveran: a lot of RoP cases would be subject to nominative
fair use; you’re reporting facts about Lew Alcindor; the court’s just not
interested in that as a limit.
Interesting that a regime on the other side of TM that doesn’t have
baked into it any acceptance of freedom to copy, resulting in no pressure to
manage the boundary between TM and RoP.
Mid-point summary: Eric Goldman
Absolutist: TM law is designed to fix only specific defects
in a marketplace. Of course TM law does
much more than that, and he’s not trying to go back to some halcyon time, but
he does think that first principles can help.
Institutional competence question is quite helpful. We know that competitor lawsuits are an
essential part of an advertising regulatory system—competitors know what’s
going on and are willing to sue to protect their interests, but there are also
defects in relying on them because they don’t put consumers first. That’s why we have agencies designed to
enforce for consumers where industries are more likely to collude/ignore
falsity; that’s also why we have consumer lawsuits, foreign TM; then we have
certification bodies/private solutions; and the market itself can correct some
problems. TM fits into a broader advertising law space. Might be empowering to know TM doesn’t have to
be everything to everyone.
He’s a big fan of tidiness for tidiness’ sake. And he thinks tidiness diminishes transaction
costs.
Lionel Bently
Do we think it’s easier to manipulate TM law? Compare ease of modifying copyright’s
originality requirement to exclude logos (and ease of dealing with Snoopy as
advertising mechanism).
TM as regulatory mechanism to shape the behavior of
potential TM owners when they select their marks. He is very keen on this
notion. Producing behavior rather than merely reflecting it.
How TRIPS-compatible is US false advertising law, with our
without Litman’s suggestion? Although Paris
Convention art. 10bis is not very
clear, might not be compatible. What
would it be like without protection for unregistered marks? Huge explosion in
application for registration? Difficulty policing marks, though will force ex
ante specificity. But TM office won’t
really look for aesthetic functionality ex ante, especially when many marks
turn out to be completely valueless.
Litman: there’d be transition problems, as well as First
Amendment problems from things like exclusion of disparaging marks from
registration.
Bently: Registration has its own fears and costs. Registered product designs have chilling
effects too.
Kur: has been threatened with suit for mentioning a TM as an
example of a bad case—use for teaching purposes, noncommercial purposes, etc.
should be thrown into discussion as explicit exceptions/limitations as a
charter of users’ speech rights applicable across IP rights.
Lemley: the problem with regulatory agencies is that they
tend to regulate. It’s what they do.
Australian Competition Commission ruling on Google: wasn’t that supposed
to promote competition? FTC having a
false advertising mandate is fine as actually experienced, but there’s a real
worry about bringing in a regulatory agency with concurrent/overlapping
authority because the end effect is more restriction on freedom of competition.
RT: What we fear depends on where we stand. Don’t think anyone is suggesting roving TM
enforcement, but FTC also does antitrust; maybe the enforcers should take
harder looks at anticompetitive uses of TMs.
Heymann: thinking more concretely about
overlaps/conflicts. I can perform Romeo
& Juliet without permission, but not in the middle of 5th
Avenue. That’s unobjectionable. Why are
some overlaps more objectionable? Is
there a higher order consideration about the First Amendment or the public
domain?
Think about how we educate our students. The classic
issue-spotter: here’s a set of facts; identify as many causes of action as you
can. We’re training them to be plaintiff’s
lawyers and cautious defense lawyers.
Goldman: You could say “what’s the best theory, what’s the
best defense” and still have an issue-spotter.
Never underestimate the costs to people who want to do the right thing
in the market but can’t figure it out.
Some discussion of fee-shifting in cases where there are
some successful claims and some unsuccessful, though Lemley notes that often
success is all or nothing at least in patent cases.
McGeveran: multiple theories are a problem when they aren’t
doing independent work. That doesn’t necessarily mean that every behavior
should have only one legal theory that applies. It’s a criticism of needless
duplication. But maybe sometimes there’s more than one troubling thing going
on. So kitchen sink complaints are bad
(fed infringement, state infringement, fed dilution, state dilution—though they
tend to stand or fall together)—but we need some ability to say “several bad
things happened.”
TM law is more than a time, place, or manner restriction, as
in ‘no performances on 5th Avenue.’
If a TM in Popeye effectively constrains me from making any use I can
share with other people, that’s a much bigger problem.
Dinwoodie: TM is affected by the intensity of the interest
on the other side of the wall. Lessons
for proposed short-term design laws: if the slightly watery conviction we have
that there’s limited TM harm here, is our analysis different if we have a
design law on the other side of TM instead of the free market?
Dogan: We don’t know!
This is an empirical question of whether there’s a market failure in
design/whether we’d incentivize more design, and whether the amount
incentivized is worth the competitive price.
European experiment strikes her as terrifying from a notice perspective—unregistered
design rights for any design; you don’t know which feature is protected. (But if you could actually trade product design trade dress as per
Litman’s suggestion for short-term design, incentives wouldn’t be the only
consideration.)
Goldman: at this point, his energies are going to safe
harbors and immunities cutting across doctrines that can protect against
cumulation of rights for activities that we want to have happen. §512 fixes
only one problem (maybe); §230’s brilliance is that it fixes all doctrines
except for those specifically enumerated, so it doesn’t matter if you plead
IIED, unjust enrichment, unfair competition, and tortious interference. That works really well.
Dogan: for the intermediary!
Goldman: fixing the transaction cost problem. We need a doctrine that cuts across all
advertising law claims, including TM.
Litman: aren’t there costs for the woman who wants Yahoo! to
take the bad information down? Many
people would like to get intermediaries to remove stuff and might have reasons
for that. Transaction costs of finding
and going after the original poster go up for her.
Goldman: consider the right to forget. Has received threats based on reporting on
the fact that a case was filed. The immunities/safe harbors cut through all
this. The problem is not that the
threatener is irrational, the problem is that there are so many claims he could
at least theoretically allege (e.g., interference with employment
opportunities).
McKenna: back to Heymann’s 5th Avenue example:
one difference is the meaningfulness with which you’re able to use a work. Vornado
says ‘you can use the design however you like, just not to cause confusion,’
but in that case the only reasonable use was as part of a fan. The promise was empty unless you can use it
in a meaningful way. Dastar: there’s
no meaningful right to use the work if you can’t use the work without
attribution, because you’ll be sued if you do use it with attribution.
Grynberg: would we be willing to trade design protection in
TM for a short term design right? If
that bargain could be struck, we’d have a negative space issue—not knowing what
the boundary between patent/copyright and TM is, we’d have the same questions
about a design right. So you’d need a very explicit
definition/negotiation/preemption provision (Dogan suggests election).
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