Commentator: Rebecca Tushnet
International element to the question of how to limit
trademark to protect free speech. TRIPS
doesn’t impose insurmountable barriers to rights-protective legislation, but
international obligations will be raised by high-protectionists as reasons to
avoid reform and so it’s worth thinking about what international law does and
doesn’t constrain. Nations and free
speech advocates should therefore focus their efforts on developing specific,
speech-protective model rules for trademark law to provide guidance to
decision-makers, similar to WIPO’s Joint Recommendation Concerning Provisions
on the Protection of Well-Known Marks and the recent agreement on a treaty on
access to texts for the visually impaired.
Advocates for soft law over mandatory defenses, allowing
states flexibility. One question for further
discussion is how well flexibility in allowed defenses has worked out, not just
in broad international treaties but European harmonization. Are there examples
of success?
Paper starts with summarizing the conflict between aggressive
trademark claims and free speech, then turns to principles for defenses. Ramsey argues that nations should pay more
attention to what they deem the aims of trademark to be, and that
identification of those aims will naturally suggest appropriate defenses. (One risk, it seems to me, is that nations
will decide “we want trademark owners to have rights to protect the dignity and
reputation of their marks, however insulted or harmed”; having done so, that’s
about it for free speech defenses.)
Many nations protect free speech, as do significant international
agreements. But the US is an outlier in articulation, if not in practice when
it comes to IP, and it’s generally recognized that free speech can be limited
in the service of other appropriate goals.
And many nations recognize property as a constitutional or basic right,
and then consider trademarks to be property.
Syllogistically, this suggests that protection of trademark interests
can trump free speech rights, though then the question is, given that trademarks
are intangible, is there a scope of
these property rights that is entailed by the interface between property claims
and free speech claims. With tangible goods,
it is generally unobjectionable to say that a speaker can’t appropriate another
person’s printing press to communicate her own message. But the analogy breaks down when the
boundaries of the property right are what’s up for contestation.
As Ramsey points out, if US courts applied what she calls real
First Amendment doctrine—doctrine applied to things that aren’t IP—then much of
trademark would be constitutionally suspect.
Let me say in passing that I think we have to accept that IP’s First
Amendment is real First Amendment doctrine too. It may be bad, and it is
blatantly conflicting with other First Amendment doctrine, but I believe in it
the way I believe in infant baptism: I’ve seen it. I don’t think we can expect harmonization of
IP and non-IP cases, certainly not harmonization in a speech-favorable
direction, any time soon, and this is what makes US courts not as significant
outliers with respect to speech based limits on trademark as they are with
respect to limits on the regulation of hate speech et cetera.
Anyway, given this situation, Ramsey points to Bill
McGeveran’s work on internal limitations to trademark. By internalizing doctrines as part of the
structure of trademark itself, it’s possible to protect speech interests without
explicit reference to First Amendment limits, using safe harbors and
affirmative defenses. This flexibility
can be accomplished by explicit exceptions created by legislators as well as by
judicial interpretation.
Ramsey thus suggests having a menu “including exclusions
from protectable subject matter, limitations on the scope of trademark rights,
defenses, and remedies” from which nations can select.
As she points out, the ability of nations to deny
registration to nondistinctive terms, descriptive terms, and generic terms is
an important protector of free speech. She suggests that nations might want to
deny protection for descriptive terms even if they’ve acquired secondary meaning,
a suggestion that will probably find a fair amount of resistance but one that
builds on her previous work on descriptiveness.
More mildly, she proposes stepped-up distinctiveness requirements for
protection of descriptive marks, the adoption of a descriptive fair use
defense, and a more limited scope of a mark if it’s descriptive.
She also suggests limiting protection for “cultural heritage
marks” to prevent the privatization of culture.
(Here it would be interesting to engage with the opposite claim that
cultural heritage should be
privatized and put into the hands of particular non state groups; it’s been
argued that trademark-style rights, even expanded rights, would allow
representatives of the culture to best preserve and benefit from it. Denying rights might mean that anyone could
use the culturally significant terms, objects, etc. which might prove
unsatisfactory.)
Ramsey also suggests a limited form of a trademark use defense
for slogans and symbols on standard merchandise, like T-shirts, as a way to
protect common media of personal communication. She points to attempts to
register marks that seem to appropriate common cultural touchstones, like
Disney’s application for Day of the Dead/Dio de las Muertas and various attempts
to register phrases like “Let’s Roll”; “Don’t Mess with Texas”; and “If You See
Something, Say Something.” The latter
raise interesting questions of government control, though I’m not sure people
who aren’t steeped in the First Amendment will object to government control of
symbols in the same way—after all, most nations have copyright in government
works; what’s different about trademark?
Ramsey also takes up the question of whether it’s better to
have exclusions from protection for marks like these or limitations on scope.
Strategically, she argues for the former.
This makes it easier to prevent bullying and aggressive attempts to push
the envelope on supposedly limited scope.
(It would be useful to discuss the limits on bullying that other
countries have, like abuse of rights claims available in some commonwealth
countries.)
Ramsey also suggests certain limitations on scope of rights,
though. TRIPs provides that we have to
protect against unauthorized use of (1) registered trademarks, (2) used in the
course of trade, (3) where the signs and goods/services are identical or
similar to those of the markholder, and (4) this use of the mark causes a
likelihood of confusion. Each of these
parts provides potential limits on scope.
Speech protective measures could limit protection, or limit remedies, to
things outside this core category. Under
the double identity rule, for example, courts presume confusion when an
identical mark is used on the same goods—but that actually leaves plenty of
room for nonidentical marks and nonidentical goods if nations care to use that
space. As for likely confusion, we can
have rules that protect comparative advertising, keyword use, and the like. We are not required to give likelihood of
confusion a broad reading, and Ramsey argues that we should not.
You can tell what her perspective on the protection of well-known
marks is, so I won’t detail it.
Likewise, she points out that rules on secondary liability have speech
implications, and there is plenty of room for states to adopt speech-protective
rules on secondary liability.
The overall point is that there is significant flexibility
in the international system. The nation that created the exception to trademark
rights has the burden under TRIPS Article 17 to prove that (1) the exception is
limited, and (2) the exception takes into account the legitimate interests of
both the trademark holder and third parties. Given that free speech interests
will regularly be significant and legitimate/appropriate for a democratic
society, she concludes that any or even all of these proposed limits would be
acceptable under TRIPS and related agreements, though in some sense TRIPS is
the only one we have to worry about since it’s the only one with enforceable
remedies.
Potential barriers worth discussing: can be summarized as politics,
though that may be seen as an unfair characterization of the claims of
trademark owners who believe that the power of their marks should be reserved
for their own exploitation. Politics are
often most effective when they have intelligible rights claims behind them; the
paper could benefit from more engagement with these rights claims. Why have
speech claims seemed unpersuasive to many thus far? This will lead naturally to ways to answer
objections to Ramsey’s interpretation of TRIPS as allowing for this much
flexibility. One suggestion: discuss
property/takings type arguments made by tobacco companies in response to plain
packaging and other limits on use of their marks.
Ramsey: property rights aren’t an automatic trump; you still
need to consider 1A/free speech: ECJ and national courts have said that
fundamental rights need to be balanced.
Rigidity v. flexibility: advocates for more specific
defenses. But we need to give courts ability to engage in speech-protective
case by case analysis. Want some constraints on judges to prevent
overprotection, but there needs to be more flexibility at the international
level. TRIPS/Paris Convention have
flexible and ambiguous language. Annette Kur etc. have proposed mandatory
defenses added to treaties, but because many nations don’t protect speech as
well, that list wouldn’t be very protective and might encourage nations to
adopt tiny lists.
Q: Cases in the WTO where they use the articles you cite, 7
& 8, for your purposes? Doha takes them into account for pharmaceuticals
but it’s not clear where that’s going. Is there case law saying they’re more
than hortatory? W/regard to flexibility
to nonflexibility: what is the goal? How
do you compare harmonization to flexibility?
A: no cases yet; difficult balancing act.
Betsy Rosenblatt: you cite McGeveran’s predictability
desire. With a lot of globalized expression, one element of free speech is
knowing you can disseminate broadly—predictability is a free speech value. Unauthorized use of TMs in a film can
generate risks.
Cultural property: cultural property to whom? Some may be
relevant to subcultures, but not to the larger group. What should nations be
free to decide?
We in the US don’t put a lot of importance on dignity, but
the EU does. What we might see as overriding value might be the opposite in
many national philosophies about dignity of markholder, which is different from
confusion value.
A: cultural property: valid points about why there might be
reasons to give Maori control. But that just makes the point that there are so
many different approaches that it’s unrealistic to achieve a goal of clear
specific defenses shared by everyone.
Reform at a national level is easier to achieve: the more nations have a
comparative advertising, the better.
Q: But is Barbie culturally significant?
A: would leave it to nations to decide. Protecting Maori should be sui generis, given
free speech implications.
Mark McKenna: will have to tackle sui generis/design rights—some
of the issues you discuss would be rendered moot given the existence of
adjacent rights. If there are carveouts
in TM, people can use unregistered design rights, unless the free speech principle
also controls that. Layering.
Q: TRIPS-plus/bilateral agreements as a major recent mode of
expansion. US doesn’t seem to be interested in exporting free speech principles
in that context—in fact, the US seems happy to raise the bar in IP.
A: European FTA did require descriptive fair use. This is the tension between mandatory
limitations—which then prevent regional FTAs contravening int’l obligations—and
flexibility.
Justin Hughes: claiming greater flexibility for TM may
threaten ability to maintain exceptiosn for copyright and patent under the
3-step test.
A: but article 17 doesn’t require consideration of
unreasonable prejudice—puts third parties on par with the markholder—and so it is more flexible than the provisions
governing copyright and patent. Wants to protect copyright too!
Hughes: they’re different in wording, but that doesn’t mean
they differ in effect. In the Lanham
Act, courts have given the same protection to registered and unregistered marks
despite wildly different statutory language. Sure the 3-step test looks
different, but in the long term we might want to say it offers the same
flexibility.
Ramsey also responded to my comments. Re: bullying: model rules could also allow
creation of threats action. California’s
anti-SLAPP statutes could be another model for protection.
Plain packaging: one argument people make is that there’s a
free speech right not to have other people use their marks. There’s no right against impersonation, in
her view, but criticism without confusion doesn’t justify protection. Graeme
Dinwoodie: we need to consider interests that balance against and justify
tolerating a certain amount of confusion.
Timothy Greene, Trademark Hybridity and Brand Protection
Commentator: Deven Desai
TMs as part of language, particuarly language as
contextual. Homonymy: words can have
unrelated meanings by historical accident—bank (financial institution) and bank
(rivers). Paper can be the material but
also newspaper, or the entity that runs the newspaper (the paper just fired
five journalists). TM law doesn’t deal well with semantic ambiguity.
Word marks are linguistic, and there’s little reason to think
they exhibit characteristics distinct from other words, even if processed as
proper nouns. Semantic ambiguity has been researched in linguistics, and it
helps us. Consumers rarely encounter marks out of context. Even if consumers
experience confusion, it’s less likely that the harm would be commercially
significant than courts think in many situations. A term shouldn’t be thought of as only
generic, or only source-identifying. But all terms, especially TMs, embody
multiple meanings and people use context to resolve ambiguity.
The binary view of TM law won’t work. Primary significance
test doesn’t make sense because it doesn’t cover the spectrum of possibility. Thermos and Teflon surveys set up false dichotomies between brands and common
terms, so they cause more problems.
Detail suggestions: paper suggests likely confusion test be
recalibrated to deal with context. This
is a real possibility, but paper should explain more how hybridity would build
out the contextual analysis and why a judge should consider context equally. Also, what would better empirical
work/surveys look like?
Greene: Likely confusion test currently deals mostly with
linguistic aspects of mark: sight, sound, and meaning focus on the word, rather
than the overall conception of the mark—logo, how displayed to consumers, etc.
Can be problematic in registration where similarity in marketing channels is
presumed and you can get plain word registration.
Rosenblatt: could the same analysis lead to the conclusion
that TM deals better with homonymy than polysemy? We treat words differently in
different classes of goods—generic in one class, descriptive in another,
arbitrary in another, and TM explicitly anticipates that people can deal with
this and still determine whether a word is serving as a mark for goods. It does
worse with polysemy when you refer to the cultural meaning of a particular
mark.
Genericism: A word doesn’t automatically become generic
through sloppy usage: Google, Kleenex regularly used in broad ways—people know
that’s not genericism. Does the
distinction between knowing and using undermine your claim that we should study
how people actually use words? Some of
those surveys like Thermos might then
have been on the right track.
A: when translated into judicial application, it doesn’t make
sense.
Me: Richard Craswell, “Compared to What?”: The Use of
Control Ads in Deceptive Advertising Litigation, 65 ANTITRUST L.J. 757 (1997),
would be very helpful. Explains in a
related context how meaning can differ and how there are tradeoffs when the law
endorses one meaning over another. This may provide a way to translate
linguistic claims, which judges may be wary of, into more conventional
cost-benefit analysis.
Ramsey: more emphasis on problems of registering fancy logo
+ term and then claiming rights in the term: Park ‘n Fly is the classic case. Also leads to issues where if a term is put in
the right place on a T-shirt it’s considered “use as a mark” and if it’s in a
different place it’s not, but then if the registration issues the owner will
threaten any use anywhere on the shirt.
Greene talked more about surveys: all he’s really clear on
yet is that current practices are not reflective of the best linguistic
knowledge. Should acknowledge people who
see term as both mark and generic and put them in both groups.
Ramsey: surveys are expensive! Would this be more to test
than you usually do?
A: doesn’t think it would change the cost, just split up the
ways you count the members of the group.
May be more useful in registration context—justifies allowing far fewer
nonstylized word marks. Context specific
look at what the person actually does or intends to do in commerce is really
important. Cheap Seats for buses might
be different from Cheap Seats for planes.
Q: wouldn’t everything get registration if you could offer a
plausible context in which it’s serving as a mark?
Desai adds that he had the same question: Greene is taking
this in a low-protectionist direction, but couldn’t it be taken differently?
A: looking for context in which consumers actually deal with
marks—is an attempt to look at what is really confusing, and if it is, then it
can be stopped.
Q: if meaning can splinter, doesn’t that support dilution
theory?
A: that assumption is that meanings can crowd each other
out. Psycholinguistic research says no. It’s not crowding out. These meanings
all exist together in your mental representation of a given term. Barbie is a doll and an Australian slang term
etc. Context distinguishes.
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