3rd Annual Trademark Works in Progress event at AU

Charles Colman, Trademark Law and the Prickly Ambivalence of Post-Parodies: The way that people play with trademarks that companies have deliberately infused with atmospherics, per Jessica Litman, and to which people have predictable emotional responses.  TM doesn’t have good ways to deal with these playful uses, especially with respect to images—have more precise rules for language (whether or not those rules are good) and the rules just don’t map—there’s no such thing as syntax/plain meaning (or, I’d say, the syntax of the image is different).  His examples: used on apparel and thus not subject to Rogers or other First Amendment protections—infringing/dilutive but still expressive/satirical.  These images don’t lend themselves to one definitive, articulable message as parody law demands, partly because of the nature of imagery. Even trained artists have trouble expressing abstract concepts in recognizable forms.  Hyundai/LV example: the court didn’t find a coherent message.  Won’t always have narrative, or indices of what images mean—it’s not manageable to have canons about what a triangle means or what it means when it’s next to a circle: artist intention/audience reception will be diverse.

Companion paper: possible avenues of approach.  (1) Take author at their word. Creates problem w/authors who lie or don’t speak intelligibly.  (2) have the jury interpret.  Less productive even than confusion b/c of diversity of interpretations.  (3) compulsory licensing? Something between all-out infringement and total freedom—like a cover song.  Not a critique; not a market failure, but using the mark in a way that justifies some compensation.  Hard to implement. (4) Allow all ornamental uses of TMs.  There’s a major disconnect b/t the notion of a TM use in the courts and a notion of TM use in the PTO: examiners don’t allow specimens that are ornamental.  Courts haven’t adopted this notion explicitly, though they sometimes do it through other means.  Under this approach, these are all ornamental uses under the PTO’s interpretation. (5) disallow all these uses, but he thinks that’s unconstitutional because these are artistic uses.

Leah Chan Grinvald: RT’s idea of double identity would clash w/your proposal; that’s what the Arsenal football case was about. 

Colman: true, these are artistic uses but they are uses on clothing. TM has been obsessed w/economics, efficiency, search costs but TMs serve a lot of noneconomic functions that the law hasn’t properly addressed.  “Copyright” uses of TMs.  The First Amendment should trump efficiency concerns.  What Posner thinks of as waste, when consumers sort out things in their minds, is actually constructive—they have to think. 

Mary LaFrance: why not just say these aren’t TM uses?

Colman: because that doctrine hasn’t been accepted. At least ornamentality is a doctrine that exists at the PTO. Other countries don’t belabor the issue as they do here.

LaFrance: if these things were on a wall, they’d be Rogers. Why not here?

Colman: still requires a TM use inquiry. Need to bypass that inquiry, as compulsory licensing does. Or maybe you only get injunctive relief.  Images can’t be descriptive fair use because images don’t have clear descriptive meaning.  Courts either pretend the meaning is obvious or say that any expression there doesn’t count for TM purposes.

LaFrance: is compulsory licensing a potential trap for the unwary? College kids doing fundraising?

Colman: possible; maybe an ASCAP like system where the university has a license.

LaFrance: concerns about that—not all naïve people w/messages are affiliated w/institutions.

Colman: preferable to being sued!  (Can you stop TM owners from threatening suit even in a compulsory license situation?  ASCAP threatens all the time.)  Not inclined to compulsory licensing as a practical matter because of the TRIPS problem.  Where TRIPS conflicts w/the 1A, though, domestic law controls.

Dan Hunter: praises thick description of what’s going on in fashion.

Colman: we need these studies; it’s also ignored because of devaluation of the feminine.

Hunter: too hard on Veblen. 

Colman: his theory continues to dominate judicial thinking—post-sale confusion.  Beebe points out issues w/his theory; Sheff’s article on Veblen Brands shows that it continues to wield influence.  There are many other roles for fashion, but wasn’t trying to write a comprehensive account.

Hunter: he’s never interested in 1A law.  Ornamental use is the flip side of the merchandising right.  All our assumptions these days about merchandising on products in a non-source-identifying way are that this is ok.  In looking at rise of merchandising right, could we say: we’ll give you that right, but in exchange, this sort of ornamental referential use to your merchandising is allowed.

Colman: yes, brands sort of got what they deserved in embuing these products with atmospherics.  Hard to get too far based just on equity.

Hunter: not equity; why we’re ok w/merchandising right, which seems contrary to stated aims of TM law. We’ve just given in? 

Colman: result of ambiguity of 43(a)’s language of source, affiliation, sponsorship.  Would have to tackle irrelevant confusion. Not sure he has new things to say about that general topic.

Cathay Smith: In the ideal situation, would Rogers v. Grimaldi work? 

Homies T-shirt in Hermes style font

Colman: it’s a conceptual non sequitur.  You can’t discuss whether Hermes has relevance to this shirt because it’s an image.  Transformativeness has no meaning in TM law.  Parody test in TM, because of Campbell, has gotten so narrow; it hasn’t benefited from concomitant expansions in fair use though so we’re left without First Amendment breathing room. Thought about © fair use, but if you can’t interpret the image then it comes down to how much is taken and how you determine whether it’s transformative other than the judge’s intuition. Market substitution: at least that’s somewhat empirical, unless you go down the licensing rabbit hole.

With parodies, the confusion test gets turned upside down. Use of the whole mark doesn’t matter; strength of the mark favors defendant; etc. Courts are pretending to apply confusion/are intuiting that this is free expression. Doesn’t want to draw distinctions about what’s art and what’s not.  Larger percentage of viewers may be able to agree on Barbie messages than on these—visually simple/interpretable compared to his examples.  (I really disagree.)

Sarah Hinchcliffe: how realistic is jury as proxy for image interpretation?  Also, why not consider economic rights/property rights as a balance to expressive rights?

Colman: can’t put a price on 1A rights; Rogers avoids economic inquiry altogether. The definition of property is what’s up for debate.  If TM is about efficiency of communication, then it’s often an efficient way to convey information for other speakers.

RT: There are other cases on confusion/parody where the defendant wins in circumstances where there’s no clear message: LV in the Fourth Circuit; Timmy Holedigger.  Barbie: take a look at those photos and try to articulate their message.  I have: it’s hard to do!  Nonetheless both levels of courts recognized them as parodic even in the presence of a consumer survey.  So there’s not consensus on the need for a particular type of humor. Go back to history when there wasn’t a parody/satire distinction. I do think Rogers can be applied meaningfully: Pig Pen case; Tiger Woods case: there’s artistic relevance because it’s about him. Why isn’t Hermes relevant because this is a riff on Hermes? Rogers might just always remove liability but that doesn’t make it incoherent. It just makes Rogers a strong protection: right of publicity cases.  Check out Zahr Said on interpretivism, dealing w/similar problems in ©.  (I think it’s not the ambiguity of the language of 43(a) that gave us the merchandising right; it’s the equation of recognition w/confusion in Boston Hockey + lack of a materiality requirement that used to be inherent in the statute.)