Tuesday, June 30, 2015

Trademark scholars roundtable: the consumer in different contexts

Session 3:  The Consumer in Different Trade Mark Contexts
Do the questions that we have looked at in the first two sessions vary in different trademark and adjacent contexts? Is assessment of the reaction of the average consumer in trade mark law the same assessment that is performed in examining consumer reactions in the context of passing off or unfair competition law or consumer protection or trade practices law? For example, can we compare the doctrinal apparatus surrounding the “average consumer” now at the heart of EU trade mark law with the means of determining the reaction of a “substantial proportion of the public” test under common law passing off jurisprudence? Is this useful? Does it tell us anything about the (actual or potential) roles for complementary bodies of law in this space? Even within the body of trade mark law proper, is the construct of the consumer different in registration proceedings as opposed to infringement contexts?
Introduction:   Ansgar Ohly: The notion of average consumer in unfair competition and right of publicity/right of personality (German law).  Unfair competition: development of the notion in European law and relation to TM law.
Notion of average consumer has origins in unfair competition law, 1984 Directive against misleading advertising, and also in cases involving free movement of goods. W/o harmonization, standards for advertising were different—protection very strict in Germany, 10-15% misled = sufficient for misleading. Some saw this as undue restriction on free movement. ECJ decided it was disproportionate to ban misleading advertising where an average consumer wouldn’t be misled. Originally created as a harmonization device.
Some complain that average consumers aren’t as sophisticated as ECJ assumes.  Directive on B2C relations: defines average consumer as one who’s reasonably well informed and reasonably attentive/circumspect, taking into account cultural and linguistic factors. There must be consumer relevance: the consumer must be caused to take a transactional decision which he or she otherwise wouldn’t have taken.  ECJ stresses Directive is committed to higher level of consumer protection—much more protective than it used to be.  Purely Creative/Office of Fair Trading about aggressive sales practices. Reminds one of 1970s German case law: consumers ar easily misled.  Also, causing confusion is misleading advertising.
27 of 28 provide civil law remedies, except the UK, to enforce the Directive, so competitors can bring a private action. Evident problem of overlap in most countries. German SCt: Hard Rock CafĂ© in Heidelberg—not licensed by the Hard Rock Group.  How can this be?  He was there before they were, early 1980s when there was only a London Hard Rock and not a protected TM. He has older rights and also there’s an acquiescence issue. But if you ask whether there’s an issue of consumer confusion, then yes: tourists particularly.  (German © law would not cover the Hard Rock logo, which he used.)  Conflict b/t TM logic and unfair competition law: German SCt decided that TM logic prevailed and that TM logic needs to be taken into account in unfair competition analysis, even though Directive does not have exceptions or provisions for balancing competing interests.
TM law: in past, would’ve said TM was less fact specific and more formal, looking at similarity of signs, similarity of goods, and distinctiveness of the mark, and not much at what the consumer does in particular circumstances.  However, TM law might become more unfair competition-like: (1) keyword cases.  Needs to be inquiry into “adverse effect on the origin function,” and such an effect is assumed if ad suggests commercial link or is so unclear that consumer doesn’t know.  Duty of providing information = unfair competition concept. (2) Specsavers: using factors external to the register are taken into account in confusion inquiry. Less certainty.  Risk of overprotection. But also makes clearer what the functions of a TM are and you may avoid overprotection/protect only when there’s a real likelihood of harm.
Personality/merchandising rights: German law is much closer to US law than English law.  German = personality right protecting privacy and publicity at the same time, monistic. UK = no right of publicity, so only way to protect Rihanna against sale of T-shirts w/her image is to use passing off, which requires confusion.  Rihanna: High Court decided this was passing off, on the merit of those particular facts, b/c there had been a previous relationship w/Rihanna and Top Shop. So consumers might think she was behind this particular campaign.  At pains to stress this was very fact specific.  Contrast b/t passing off approach and German law. He thinks: if you want publicity rights you should say so; looking at the consumer clouds the issues of a monopoly right over use of name/image. Doesn’t think consumers care whether T-shirt is official or unofficial.  Either choose IP or nothing.
Rebecca Tushnet

US: average consumer is target consumer; 10-15% can be sufficient.  Accidental convergence or rough justice at least from a Western perspective?  Idea of considering alternatives: what could the advertiser have done instead to communicate its message?  In TM, we say the alternatives are infinite so we don’t need to worry about losing information from suppressing a particular use, but that might not be true. In false advertising we should worry more: if there’s a truthful message received by 50%, we might not want to suppress it if suppression reduces confusion to 5% but also reduces comprehension of the truthful message to 5%. Richard Craswell’s work on this is excellent.
Jennifer Davis persuasively argues that changing economic and social conditions allowed the courts, in trade mark cases, to abandon a view of consumers as heterogeneous and divided by class, education and income and instead to assume the existence of an average consumer whose perceptions were key.  I want to reiterate my call to think of consumers and not the consumer—the plurality/bell curve concept is logically independent of the idea of treating consumers differently in different contexts, but I think that conceiving of consumers in the plural more easily allows us to adjust to different contexts, such as the nuclear reactor not run by Homer Simpson.  Also, though Barton Beebe as usual insightfully criticizes the way that the shift to variations among TMs, not variations among consumers, has become more central to TM tests, I think there’s also a role for seeing the consumer change as she moves through her day.  The marketing and psychological evidence does suggest many contextual determinants of attention and choice, though how that can fruitfully be translated into TM cases remains to be seen. Indeed, I’ll suggest that the marketing evidence might disrupt the project of TM law as distinguished from unfair competition/false advertising law law.
Surveys in false advertising cases: Part of a general pattern of offering a rich account of the reasonable consumer and what s/he cares about and what she doesn’t care about, even when the cases don’t involve surveys.  Individual buyer testimony is relatively more common, and the buyers get to tell their whole stories—why they made the decisions they did, or at least why they think so though they may not have great insight into their own motivations and they too are of course affected by what we’ve been calling the Heisenberg principle that asking the consumer changes how the consumer thinks.  But regardless, we do get a more 3D picture of the consumer in the false advertising cases because of the concept of materiality: TM law structurally isn’t set up to offer this thicker account of consumer decisionmaking.  One reason, I think, is because many times the TM would be part of what doesn’t matter to most consumers, so the account of the consumer compressed only into her response to the TM is inherently contradictory: it is at least not empirical.
US false advertising law has taken a very different approach to surveys from US TM law, dividing cases sharply into those involving literal falsity, where no other evidence of consumer reaction is required, and implicit falsity where only survey evidence—and usually not expert testimony or testimony from individual consumers—is considered sufficient.  Doctrines exist to blunt the force of this division and it doesn’t work that well in my opinion, but it’s notable that this is essentially a cost management doctrine: surveys aren’t worth their costs in many cases where the message is clear.  It’s not a normative decision but an empirical one, in the division we’ve been using.  So the consumer is notionally the same consumer as we confront in TM but we have different ideas about how to figure out what she’s thinking when it comes to false advertising instead of TM.  We could instead try to ramp up the evidentiary requirement in certain troubling infringement cases, as apparently the European courts have done in dilution by requiring proof of an economic effect on the mark—it wouldn’t be that the consumer differs, but that our confidence in whether we can determine the outcome without a greater investigation into the specifics of the plaintiff’s particular consumers differs.
Another specific type of consumer I would like to discuss is the consumer we reject: Found in the context of counterfeiting cases (or even post-sale confusion cases, such as the Atmos clock case in the US).  She’s the bad consumer: the one who is seeking counterfeits. Reaction of this consumer is generally excluded from our averaging process—not a matter of comprehension, but a matter of valuation.  She knows quite well that she is not getting the authentic version and doesn’t care.  She fits on the “nonconfused” end of the spectrum, but it turns out that we don’t just want a 2-dimensional spectrum; we exclude her and shift our inquiry to the more easily confused.  (She is also the only defendant-side consumer whose existence is routinely acknowledged, which makes things even rougher on defendants, pace Mike Grynberg’s work.)
Primary Discussants:    Graeme Austin: Typical C&D in NZ says we’ll get you for passing off, TM infringement, and violation of consumer law. Many cases: courts just work through those causes of action.  (Google keywords was litigated as consumer protection matter, not private cause.)  Array of similar causes of action. 
Coherence: we lack a coherent approach to unfair competition, but Australia wants coherence in all private law.  High Court has said this is an important value.  We should try to achieve coherence between common law and regulatory/statutory law.  In a case expanding TM owners’ rights, Australian court said: policy of TM Act shifted balance of objectives of TM more toward identification and protection of TM owners than the protection of consumers, though that remains an objection. Misleading conduct laws also protect consumers. Reasoning: consumer protection law does the necessary job of protecting consumers, so TM can shift more to producers.  Jigsaw: different statutes doing different things; TM is buffered by modern regulatory laws directed at consumer welfare.
Licensing arrangements/settlements: these can affect consumer welfare, but we don’t police them against misleading/deceptive conduct. Maybe, if those private arrangements result in misleading consumers, we should look to consumer protection and not TM (RT: which would lead to the end of the naked licensing doctrine).  Divergences b/t Aust. and NZ: NZ law says consumer protection shouldn’t override TM law, but Austl. allows consumer protection to pop up in copyright etc.  History of consumer protection law in Aust/NZ: NZ took the Australian Trade Practices Act prohibition against deceptive practices, then added broader consumer protection laws, borrowed by Aust. in recent laws—sense that traders should be subject to one body of law. Interestingly, TM laws of both countries have some significant divergence; parliament is not seeing TM as part of this jigsaw of consumer protection.
Compare statements of statutory purpose: TM statutes are about TMs, not consumer protection. Reflects historical position that consumer confusion isn’t the only game in town. 
What does this say about relationship b/t TM and consumers, and fundamental purpose of TM law?  Dogan described purpose as lowering search costs/enhancing competition.  Wonders if thinking about TM as part of a cluster of laws that go to information in the marketplace would change that.  Consumer information story: can it be downplayed when there are other consumer protection laws surrounding it?
Remedies: seeing in IP flexibility in the remedies, and that’s possibly a good thing for balance.
Finally: other torts, like negligent misstatement—there the liability is conditioned on reasonable reliance by the recipient on the information.  Normative tool for balancing risks of speaking in the market: the speaker is not the insurer of the recipient of the information. Something to borrow for TM law? The consumer needs to do some work.
Stacey Dogan: Search costs v. other goals: struggling w/role of search costs/competition in TM in the US.  Can’t generalize, but thinks there’s a tension between economic model and TM law in practice which reflects normatively impulses that can’t be explained by the economic model—anti exploitation.  (She calls it economic model b/c if you say “search costs” people get hung up on that and miss the ultimate goal.)  “Taking unfair advantage” doesn’t seem explainable on any economic basis: more like natural rights. Parallels in US law. Economic model is very appealing in that it suggests why we protect TMs and also suggests limits on TM, but may be descriptively inaccurate for many doctrines.
Annette Kur: procedures are not harmonized/type of enforcement is diverse and different courts decide, so in practice harmonization becomes very difficult.  Better to have it all in one law.  Coherence in the way Austin described works if the use of the TM owner is regulated by consumer protection acts.  Something that TM law allows the proprietor to do may still be prohibited by consumer protection law.  But what about Hard Rock? Much more difficult. TM law admits there is a conflict, but there are rules, like priority. From a systemic point of view, we accept the conflict w/unfair competition law.  No good & coherent solution to be found if you have two different legal acts regulating the same behavior. Need coordination beyond a general principle of leaving consumer protection to other laws.
Austin: that was part of my point: we need to give more attention to how TM fits into the consumer protection scheme.
Kur: the bad consumer—in European law we “solved” that problem by saying we don’t care about her b/c we don’t need likely confusion by applying special rules for counterfeits/double identity. Does that solve the problem? It at least deals w/it practically.
Sir Robin Jacob: Ohly said TMs were less fact specific than unfair competition; many times that must be so b/c the registered marks aren’t in use, maybe on both sides. But once there is an actual mark in use suing another use, they may look at the facts on the ground: which is what happened in Specsavers.  But so many TM fights are indeed shadowboxing. We should pay less attention to that kind of case. 
When you have TM comparisons, registries start developing formulae for TM comparisons. And they tend to be ridiculous rules.
British perception of Germans: Germans thought any TM was an infringement of another mark.  Terrapin and Terranova: confusing?!  But that has changed.  Introduction of average consumer did send a message.  But we’ve now made a hell of a mess about the average consumer, when really all the court had in mind was to exclude outliers—there’s a range of average consumers.
10-15% is quite serious—6 million people in this country!  Figure should be lower. But we must be sure they are being deceived, b/c mostly consumers aren’t as stupid as courts/TM offices think they are. 
Enforcement: we’ve made a mistake b/c the best person to look after the deceived consumer is the deceived consumer; we need a cause of action beyond malicious falsehood.  Must allow advertisers to be a bit hyperbolic.
Dev Gangjee: Functional definition of consumer—consumer as citizen where information is a tool; rational consumer in contract law; etc.  Less pressure to go for a single idea. But if we see TM as part of broader ecosystem, and it’s ok for other areas to do the heavy lifting, what’s left of the idea of the consumer in TM?  If meaningful engagement w/consumer is happening elsewhere, are we back to consumer as alibi?
Bill McGeveran: Q of who is the victim in various areas of law: in various areas, we’re no longer looking out for the consumer—e.g., right of publicity.  Without consumer in TM, to what extent would similar interventions have occurred to protect producers/people currently deemed TM owners?  Judge Frank in Haelan who splits privacy and publicity rights and says we need to protect them both.  Nothing in that case on the effect on purchasers of baseball cards.  What law would remain w/o consumers? Would it look all that different?  Consumer may be post hoc rationalization/stalking horse for other interests.
Laura Heymann: Hard Rock: was there any discussion of a possible disclaimer?
Ohly: not an issue b/c court said TM law/acquiescence trumped consumer protection. Few other cases mostly involving the internet did use disclaimers.  We could end up in Arsenal-type situation where we put up a sign and the ECJ says a clear disclaimer is immaterial to TM law. But now it has effect in unfair competition.
Heymann: though we know disclaimers are often ineffective.
Ohly: also very hard to do here specifically: the Hard Rock logo is so recognizable that it’s hard to dissuade consumers.  Court distinguished b/t ongoing operation of restaurant and sale of goods: each sale is a new infringement—so they can’t sell merchandise any more b/c it’s a new TM infringement each time.
Kur: it’s true many TM conflicts are not real world conflicts and the rights are broader in the books than in reality.  Brings us back to distinction between registration and infringement.  But should that lead to a situation where the legal principles we apply differ as between the proceedings?  [RT: The way this conversation is going indicates that we have been using the consumer as a concept to pack in other issues; very little in this discussion is about the consumer.]  For systemic reasons, we don’t distinguish in our black letter law.  TM: Like requiring a distance between cars to avoid crashing.   Unfair competition: geared towards a materialized crash, thus geared more towards examining precise circumstances of crash; scope of protection turns out to be smaller.  (RT: This metaphor raises the ‘congestion/we are building too many highways/we are encouraging too many people to buy cars’ issue pretty clearly.)
Graeme Dinwoodie: if you took the consumer out, what would happen?  We could shrink TM so it wasn’t trying to protect the consumer, but maybe that would broaden the scope of TM rights—paradoxical. 
McGeveran: my prediction as well.
Austin: More nuanced—protection of consumers remains an objective, just shifted.  [RT: also wouldn’t you still need the consumer to evaluate scope, if you were at all interested in actual confusion or dilution?]
Dinwoodie: use can expand scope (Specsavers) or to restrict/confine the scope of the mark. Should we have a unidirectional rule?  Sanctity of register v. consumer protection point in different directions.  Without use after 5 years there’s no need to maintain stuff on the register.
Barton Beebe: Does the US even have TM law, as defined by this slightly more formal approach taken by Europe?  We seem to be unfair competition, very fact-specific.  Much less shadowboxing.  More a question than a claim.
Dinwoodie: our casebook completely assimilated §§32 and 43—effectively the same.
Litman: the first and second edition of our book came out before Two Pesos; there were different rules then.
Beebe: now we tell our students there’s no difference in infringement standards between the two.  (And they ask why we made them learn all the registration stuff!)  Jacob’s criticism of niggling rules for TM offices; but wouldn’t it be worse without these rules?
Jacob: they’ve never had clients, they’re isolated—they’re a kind of monastery.  But you have to understand that the rules are artificial; general courts have less excuse [for deferring to them?].
Beebe: we don’t squarely address commercial ethics/morality in the US, possibly set to the side. TM law without God, secular and utilitarian?  Or talking to God directly, without rules.  At the same time, morality sneaks back in through general sense of fairness. 
UK has no misappropriation law as such: you must show misleadingness to win misappropriation; there’s no raw misappropriation.  What about fairness?
Jacob: it’s legitimate appropriation.
Dirk Visser: or you come up with another thing to call it, like the Rihanna case—just deny there’s a misappropriation theory underneath it.
Jacob: old English libel case, Tolley v. Frye, 1935.  Amateur golfer and chocolate co. published an ad implying endorsement, and golfer sued for libel saying people would think he was taking money for that. He won.
Jennifer Davis: TM, unfair competition, and consumer protection law are 3 quite different things in some ways.  UK 1862: first consumer protection law, while unregistered TM law already existed to protect traders’ goodwill.  1875: first registry bill, b/c traders wanted international reciprocity.  UK: w/out registration, test is whether goodwill has been affected, and one way of finding that is confusion, but there are different ways of thinking about consumers reflected.  Though in practice the confusion might be pretty much the same.
Jacob: I used to say that if there was no passing off there was no infringement as a general rule.  An unused registered mark was another matter.

Davis: empirical evidence: we have split cases deciding liability and then damages.  One of the reasons we avoid empirical evidence so much may be because in the first action we don’t have to show any actual damage.
Jacob: have to show it’s likely.
Davis: but never have to quantify. [But this is also true in the US, for injunctive relief.]
Jacob: most countries split liability and financial compensation.  US often puts them together which doubles the size of the case/changes the whole dynamic.
David Llewellyn: too bad for Hard Rock.
Ohly: but what about the consumers?
Llewellyn: consumer protection law, the consumer is a party or there’s a representative body there for her. We shouldn’t forget that the consumer isn’t represented by the TM owner; not a party to the litigation. This is a commercial dispute; consumer protection law is philosophically very different, and we shouldn’t elide the legal differences.
Cases treat passing off as an add-on.  But statute says likelihood of confusion for infringement; passing off is about/should be about deception, not likelihood. There is a conceptual coherence if you look at them as serving their own functions.  But judges here throw them all in and in the US they do too.  Complete mess.  [Though §43(a) says likely confusion too!]
Mid-point summary:   Robert Burrell: TM infringement as precautionary principle: When you’re acting as an attorney you think you’re acting on the precautionary principle, trying to carve out a space for your clients just in case. So when you register for “software” in general, you think you’re protecting your client, not massively inconveniencing other traders who make completely different kinds of software.
TM law and other actions: registration based systems: quite often when we want to expand protection we jettison discussion of consumers and talk about property rights/fairness/dislike of copying.  Confusion is usually the end of discussion when we talk about consumers, but what happens when we want to impose a limiting doctrine?  We use the average consumer to say there’s no liability, but really she might be and we just don’t care. Lack that vocabulary.
Excision of class distinctions in average consumers.  Need to be careful—illiteracy still exists. If we try to unite consumer protection & TM, keep in mind the other functions of consumer protection law, like regulating payday loans. Careful about letting difficult-to-confuse consumer in TM filter back to consumer protection so the consumer is expected to read and understand a bunch of 6-point type.  [Confusion about what? That question can really help, I think—numeracy is generally low, but brand understanding may be high.]
There is a technocratic element to TM law. When judges are setting rules, they have to be applied by lawyers and bureaucrats, and common understandings develop.  Don’t pretend a small/medium enterprise routinely looks through the TM register; it’s lawyers.  So when we think about rules, bear in mind the rules are applied by people who are immersed in the sytem to people who are not.  Having 3 clear factors is better than “just look at it” given 10s of 1000s of marks and the desire for some consistency.  Also remember the speed at which examiners turn over.  Examiners are often there for only a year or two; they need a set of rules to apply.
Double identity: you abstract away from the actual use sign; you abstract away from the goods to the registered goods; then we have double identity; then we have likely confusion—we’ve gone very far in our precautionary principle—too many layers of precaution.  Practice of industry: lawyers register everything possible; then next layers of precaution pile on.
Michael Grynberg: Problem of multifaceted consumer. The empirical consumer might be the metric of liability, or delineation of property boundary; the consumer as end or policy goal. “Public” or “citizens” might be a better term. Intermingling of conceptions of how consumer should be—divorcing policy priors from that construction is difficult. Go to another regime, raise independent question of what we want that law to do and whether that affects the conception of the consumer.
Another issue: transparency. If we have an IP right, we shouldn’t dress it up as unfair competition, as Ohly says, when the confusion narrative doesn’t hold up.
Coherence: do doctrines fit or overlap [or conflict]. Do we need to interpret different regimes in light of each other and do we need different consumer constructs for each?  [The more I hear this the more troubled I get. The consumer is the same person facing the different regimes. If we want any empirical element, we need to deal with that.]  We don’t always need the construct of the consumer even if the consumer’s public/policy face is present—that’s one role of shortcuts in some doctrines.  We don’t necessarily need to evaluate ideal consumer’s likely confusion.  Given the difficulty courts have of isolating what they mean when they say ‘consumer,’ this multifaceted consumer does need to be contained. One way: doctrines that act as constraint—we don’t go to false advertising surveys if we have literal falsity.  ACPA: doesn’t require consumer confusion if there’s cybersquatting.
Even if courts stop playing games w/ consumers, there are plenty of other heuristics to play with. Even if we had a vision of the consumer we all accepted, the uncertainty/fudging could be shifted to another realm, like confusion.
Michael Handler: Feedback effect: TM expands to consider passing off issues in Australia, then passing off expands to catch things like character merchandising.  Complicates a clean delineation of what the statutes are intended to do. 
What it means for registration in Aust.: The standard of confusion for registered marks is if consumers would “wonder” if there was a connection—very low standard.  Often the case that 250-paragraph judgment with 220 paragraphs looking at market and finding no passing off; then a few more para. saying the standard is lower for registration and thus there’s TM infringement.
Jacob: suing for registered TM infringement v. also adding passing off is a huge decision.  Arsenal case: Arsenal should never have sued in passing off, because they didn’t have evidence of deception.  If they’d done it on TM infringement alone, they’d have needed no evidence—same mark, same goods, done.   Favorable facts: then you add passing off and get emotional impact.
Discussion of protection for generic/descriptive terms against confusion: McGeveran: American example of Blinded American Veterans.  If there really is confusion, should the law act?  Then-Judge Ginsburg used unfair competition principles to say it’s generic, but there’s bad will and resulting confusion.  But this isn’t a pop-up enterprise; it has long established goodwill/attempt to divert it.
Heymann: Remedies—you can use the term but you need a disclaimer. Similar with Murphy bed—you can use the name, but can’t call it the “original.”
McGeveran: pointed to as example of why you need some rump non-TM unfair competition law, whereas in most cases there’s complete overlap.
Dirk Visser: is intent more important or likely confusion?
McGeveran: Good question—case talks about both.  (RT: NY Ct App case in famous marks case of Bukhara requires bad faith; confusion alone wouldn’t be enough and that’s an analogous situation.)
Grynberg: more cited by law reviews than cases; extreme situation.
Litman: incoherence: secondary meaning doesn’t count b/c it’s generic, but secondary meaning also produces unfair competition remedy.
Jacobs: Menswear shop called Cording; breakaway director started Gnidroc.  Bad faith?  No one would be confused.  But if D is trying to get trade, court will presume he’s succeeded in his intent—D knows best the mysteries of his business.
Sentfleben: if one field becomes more empirical, does that create pressure on other related fields to become more normative?  Fine tuning w/unfair competition/passing off.  Apply hard rules on genericism to prevent TM rights, but then unfair competition.
Visser: if you prohibit any IP right, it pops up again under unfair competition whether you like it or not.
Dinwoodie: German law—TM law was supposed to be normative and unfair competition empirical—is this switching places?
Kur: German unfair competition law is also normative to an extent, but at the core the risk of misleadingness would lead Germans to look more to empirics/facts of the case, rather than an abstract kind of space around a given TM. The rule that stronger marks get more protection is normative everywhere.
Burrell:  Not everywhere.  Reputation can be a double-edged sword: recognition will be improved so proof of infringement will be harder in Austl.
Visser: in many countries choice between TM or unfair competition can be triggered by other considerations—France has separate courts and separate remedies. Netherlands: cost award requirement only applies to TM, not unfair competition, so everyone goes for TM; same issue w/intermediate remedies. Don’t look for the theoretically best cause of action, but the practically best. That’s a big reason different countries choose different paths.
Jennifer Davis: People may fear losing registration—if the mark is descriptive.  Unfair competition may be more expansive way to go, not less as we [Europeans] often perceive it.
Jacob: the rule of ECJ, fame equals more protection, is obviously factually incorrect. It must be a rule of law.
Grynberg: Going back to Blinded American Veterans, Ginsburg never ordered any of the remedies we’ve discussed; said the district court could work it out.  Look at their webpages today: no disclaimers. The equitable bailout in US TM law is really very narrow.
Llewellyn: the passing off and registered TM infringement causes of action have converged in Singapore.  Some people suggested that there should be no protection for unregistered marks—that’s one way of approaching the issue, though it didn’t get very far.
Kur: our approach to the conflicts may differ by which rules we’re trying to navigate. If we say the consumer is the same, we just transform those issues into the way in which we assess confusion.
McGeveran: There are some of these claims where we disregard the consumer of entirely—right of publicity.
Dinwoodie: Legal transplants: the ECJ taking the advertising notion of the consumer and transplanting it into TM will be harmful unless they reconstruct it w/attention to the different goals.  But we can get comfortable w/messiness if we take that care.

DMCA exemption followup

The OTW/EFF response to the Copyright Office’s additional questions, filed yesterday, is now available.  Of note, the Copyright Office asked us about the extent to which K-12 students and teachers were covered by the existing noncommercial exemption.

Fourth Circuit destroys literal falsity

In re GNC Corp., -- F.3d --, 2015 WL 3798174 (4th Cir. June 19, 2015)
Well, this is a terrible opinion that makes no sense.  In the Fourth Circuit, if reasonable experts disagree, it’s now impossible for one to be wrong, and therefore impossible for there to be literal falsity.  No more preponderance of the evidence. Perhaps worse, this standard is stated as being the standard for the Lanham Act in a state law consumer protection case, with citation of but no apparent comprehension of the difference between literal falsity and literal truth that is nonetheless misleading.  Of course class action jurisprudence of late represents a general hostility to consumer protection, but that’s mostly done procedurally—this is a deep substantive wound.
Appellants bought joint health supplements produced and sold by GNC and Rite Aid. The accused products all contain glucosamine and chondroitin, and most contain additional purportedly active ingredients.  Appellants alleged violations of various state consumer protection laws because, they alleged, many scientific studies have shown that glucosamine and chondroitin are no more effective than a placebo in treating the symptoms of osteoarthritis, contradicting the labels’ health claims. Those claims include that various products will, e.g.: “promote[ ] joint mobility & flexibility,” “protect[ ] joints from wear and tear of exercise,” “rebuild[ ] cartilage and lubricate[ ] joints,” and provide “[m]aximum strength joint comfort.” The product label for TriFlex Fast–Acting represents that the product was “[c]linically studied” by means of a “12–week multi-center, randomized, double-blind, placebo controlled study of 60 adults ... taking 250 mg/day of the GNC TriFlex Fast–Acting Blend” and was “shown to improve joint comfort and function,” and also promises 20% improvement in joint function and 25-30% improvement in joint flexibility.
The court of appeals affirmed the dismissal of the complaint because “marketing statements that accurately describe the findings of duly qualified and reasonable scientific experts are not literally false.”
I’m going to go Scalia one better and insert some reaction gifs here.

Plaintiffs alleged that “the vast weight of competent and reliable scientific evidence” indicated that glucosamine and chondroitin do not provide the promised health benefits. They cited a number of peer-reviewed studies to this effect, which experts in the field allegedly deemed to be appropriate proxies for users. However, the complaint didn’t contain any allegations about the ineffectiveness of herbal compounds found in some of the products. 
“[T]he district court held that a manufacturer cannot be liable for false advertising so long as at least one qualified expert opines that the representations made are truthful, even if the overwhelming weight of scientific evidence is to the contrary.”
Procedural wrangling omitted. 
The court of appeals found the district court’s ruling accurate “while incorrect in its specific formulation.”  The complaint’s reference to specific studies didn’t matter, since a plaintiff doesn’t need to “forecast” evidence sufficient to prove its case.  Studies cited in the complaint may be statements of fact that make a claim plausible, but don’t comprise the full body of evidence that would ultimately be coinsulted. “[T]he question of falsity hinges on the existence (or not) of scientific consensus and not on the conclusions that hypothetical scientists might draw from those studies referenced in the [complaint].”
Though the Lanham Act didn’t control here, Lanham Act precedent was “instructive” in construing the state laws here.  (This is not so, for a variety of historical and drafting reasons; state UDAP/UCL acts have different purposes—specifically and most notably consumer protection directly, with consumer standing to sue and often to receive statutory/enhanced damages—and state consumer protection cases have essentially never used the Lanham Act explicit/implicit falsity division except when cases are brought by competitors asserting both state and federal claims and the parties don’t dispute that the state test ought to be the same for competitor plaintiffs.)  Lanham Act false advertising cases divide into literally false claims and literally true but misleading claims, the latter of which require extrinsic evidence of actual consumer confusion.  So too here.  “Every statute at issue here imposes liability for misleading representations. Although each state supplies its own test for determining whether true statements are misleading, statements that are literally false are necessarily misleading within the meaning of all of the statutes.” Plaintiffs consistently argued literal falsity, not misleadingness.
Plaintiffs’ theory of the case was a syllogism: “(i) the Companies represent that the products improve joint health; (ii) scientific evidence will show that glucosamine and chondroitin do not improve joint health more than a placebo would; (iii) therefore, the representations must be false because the products do not and cannot improve joint health.”  But that’s not enough, because the complaint failed to allege that “all scientists agree that glucosamine and chondroitin are ineffective at providing the promised joint health benefits” (emphasis added).  Instead, it alleged that the “vast weight” and the “overwhelming weight” of the evidence favored plaintiffs.  This necessarily concedes that some reasonable experts believe that glucosamine and chondroitin can provide the promised symptom relief. This means that the scientific evidence of efficacy is equivocal.  And that means that plaintiffs failed to allege literal falsity. 
Plaintiffs said, quite reasonably, that the court shouldn’t resolve a battle of the experts on the pleadings.  But the court rejoined that it didn’t have to: having determined that there was a battle, the court was confident that the complaint therefore failed to plead literal falsity:
When litigants concede that some reasonable and duly qualified scientific experts agree with a scientific proposition, they cannot also argue that the proposition is “literally false.” Either the experts supporting the Companies are unreasonable and unqualified (in which case, there is no real battle of the experts to begin with) or they reflect a reasonable difference of scientific opinion (in which case the challenged representations cannot be said to be literally false).

False advertising cases could still survive if plaintiffs can, after due diligence, plead that no reasonable scientist would agree with the challenged representations. “Moreover, plaintiffs remain protected from dubious experts by the Federal Rules of Evidence, which ‘ensure that any and all scientific testimony ... is not only relevant, but reliable.’”
And the court promised that it wasn’t insulating supplement makers from liability.  “A manufacturer may not hold out the opinion of a minority of scientists as if it reflected broad scientific consensus.” (But what does it mean to “hold out the opinion of a minority of scientists as if it reflected broad scientific consensus”?  Apparently it can’t be false to state that minority’s opinion as if it were established fact.)  Anyway, the court need not decide whether the claims could be misleading, because plaintiffs never pled misleadingness. 

“In sum, we hold that in order to state a false advertising claim on a theory that representations have been proven to be false, plaintiffs must allege that all reasonable experts in the field agree that the representations are false.”

[That's not what "proof" means.] Also, the complaint failed to allege that the other herbal ingredients, present in almost all the products, didn’t work. This failure was independently fatal, since most of the challenged representations referred to the products as a whole.
The court did reject some grounds for affirmance: defendants argued that the studies cited in the complaint weren’t specific enough to the challenged products to raise any plausible inferences about their efficacy. This argument was “unpersuasive and inconsistent with notice pleading.”  Defendants argued that the studies only looked at people with arthritis, not people who only experience joint pain and stiffness, but the court had to take as true the complaint’s allegation that experts in the field deemed such studies to be appropriate proxies for non-arthritic people as well.  “It may well be that glucosamine and chondroitin work differently in people with arthritis than in people without arthritis, but such a factual dispute is not susceptible to resolution at the motion-to-dismiss stage.”
Plus, the defendants argued that the scientific studies weren’t sufficient evidence of falsity because they didn’t assess “the specific formulations used in the products or the synergistic effects between the products’ ingredients.” But that wasn’t an appropriate inquiry at the motion to dismiss stage.
Okay, deep breaths.

The court of appeals made a category error: reasonability and correctness are not the same, and deliberately so in most of the legal system.  We recognize that reasonable and scientifically accepted methods are sometimes applied wrongly, or sometimes simply produce wrong results—that’s what it means to have an error rate.  Having at least one admissible expert opinion in your defense means that you should be able to fight the charge of falsity in front of a jury, not that you should be able to get the claim dismissed before anyone evaluates the competing expert opinions.  If a reasonable expert is nonetheless wrong in a particular case, the claim that the expert supports is not misleading, it is untrue, that is, false.
Compare: based on intelligence that meets ordinary standards for action, a drone strike hits a building that turns out not to have the target inside it.  Was the statement “our target is inside this building” merely misleading, or was it false?  If you don’t like “false” because of its implication of intent, you’ve already lost that battle in the consumer protection context, but would you accept “that statement was not true, though we reasonably thought it was at the time we said it”?  By contrast, misleadingness relies on inference to complete or extend a claim that is true on its face.  Suppose the claim on the supplement at issue here was “Tired?  Iron can remedy anemia that causes tiredness.”  Surely most if not all reasonable scientists would agree that this is true.  Now suppose that most tiredness does not come from anemia.  Is the claim “iron can remedy anemia that causes tiredness” misleading on a product marketed to consumers in general?  Of course it is, because of implicature, specifically the rule of relevance: connecting it with the nonfactual question “tired?” implies that iron will treat tiredness in general. 
The difference between falsity and misleadingness is not whether reasonable experts can disagree—in the drone/falsity example, they might have disagreed, given how the relevant evidence is interpreted, whereas in the iron example, they are unlikely to disagree at all.  The difference is whether the statement requires consumers who accept that the statement is true to make further inferential leaps to reach the conclusion that benefits the advertiser.  In some cases, those inferential leaps may be so likely that we say that a claim is false by necessary implication.  (Relatedly, the court of appeals’ new standard makes an unintelligible hash of falsity by necessary implication, recognized in every circuit to consider it.  Under the new standard, if lots of experts disagree with a challenged claim but one agrees with it, is that falsity by necessary implication?  Is it a percentage standard now?  This is one reason that (a) Lanham Act cases shouldn’t have a rigid falsity/misleadingness divide, and (b) one ought to be careful before importing Lanham Act doctrines into consumer protection cases, given the different considerations regularly at issue.)

At a minimum, this holding on literal falsity puts the 4th Circuit in conflict with everyone else’s definition of literal falsity, where juries are routinely allowed to resolve battles of the experts in finding literal falsity. E.g., Hot Wax, Inc. v. S/S Car Care, 1999 WL 966094 (N.D. Ill. 1999) (where a product containing mineral seal oil was sold as “wax” for cars, a jury found the claim literally false, rejecting several experts’ testimony that “wax” could be defined broadly, in favor of the plaintiff’s expert testimony that mineral seal oil was plainly not “wax” because it lacked the basic characteristics of wax); Eastman Chemical Co. v. Plastipure, Inc., 775 F.3d 230 (5th Cir. 2014) (taking one side in a scientific debate can be literally false when the ads are directed to the general public, not to experts to whom the details and limitations of a study are disclosed); Kraft General Foods, Inc. v. Del Monte Corp., 28 U.S.P.Q.2d 1457 (S.D.N.Y. 1993) (featuring competing expert definitions of the word “gelatin”).  Literal falsity should be determined by a two step process: (1) what unambiguous message does the ad convey, if any? (2) is that unambiguous message false?   E.g. United Indus. Corp. v. Clorox Co., 140 F.3d 1175 (8th Cir. 1998) (ambiguity is the key divide between explicit and implicit falsity). That has nothing to do with the presence of scientific debate. 
Indeed, the very case that the GNC court here cites to explain literal falsity holds exactly that:
Castrol presented affirmative evidence to prove the literal falsity of Pennzoil’s claims and … [the district judge] did not find Pennzoil’s evidence to rebut Castrol’s proof persuasive. The dissent asserts, however, that a defendant need only establish a reasonable basis to support its claims to render the advertisement literally true. We disagree. Rather, the test for literal falsity is simpler; if a defendant’s claim is untrue, it must be deemed literally false.
Castrol v. Pennzoil Co. 987 F.2d 939, 944 (3rd Cir.1993). GNC cites Castrol to define literal falsity, but neglects its explanation of what literal falsity is; Design Resources, Inc. v. Leather Industries of America, -- F.3d ----, *7 (4th Cir. June 18, 2015), also relies on Castrol for falsity by necessary implication.
Other consumer protection cases as well have easily recognized that falsity means wrongness, not global consensus on wrongness.  For a sampling of cases where a consumer plaintiff’s allegations sufficed by alleging falsity, not total scientific consensus: Zakaria v. Gerber Products Co., No. 15–00200, 2015 WL 3827654 (C.D. Cal. June 18, 2015) (affirmative misrepresentation is actionable when its falsity is properly alleged, as opposed to lack of substantiation for the claim); Bezdek v. Vibram USA Inc., 2013 WL 639145, No. 12–10513 (D. Mass. Feb. 20, 2013); In re Clorox Consumer Litigation, 894 F. Supp. 2d 1224 (N.D. Cal. 2012); Cardenas v. NBTY, Inc., 870 F. Supp. 2d 984 (E.D. Cal. 2012); Prohias v. Pfizer, Inc., 490 F. Supp. 2d 1228 (S.D. Fla. 2007).
Oh, and—what exactly would the extrinsic evidence of confusion be directed to?  The logic of the ruling implies that it would have to be “consumers are confused into thinking there’s a scientific consensus about this claim,” but that doesn’t make sense. (Consider what the court of appeals could want the survey to show: the reception of the explicit messages on the packages, that the supplements improve joint health etc.?  But that’s just a reading test: those are the explicit messages on the packages.  The reason that explicitly false claims don’t require further evidence of consumer reception is that it’s pointless and wasteful to require a survey to see if consumers can read.)  The thing that consumers are deceived by, and likely to think about, is the underlying truth of the claim, not the degree of consensus about it. Those two perceptions are probably reasonably close together to the extent that consumers consider consensus at all, but consensus is a proxy for the fact of interest: truth or falsity of the health claim. The only way this holding can be coherent (if still wrong) is if it is no longer false or misleading to make any claim against which there is no “consensus,” no matter what message consumers receive.
To put it another way: under this rule, what is the remaining place of a battle of the experts in a false advertising case? We regularly expect that some experts are wrong and some are right.  But that’s a matter of evaluating the evidence presented by the experts.  Evidence of consumer perception, collected via a survey, would not help us evaluate the evidence presented by the experts in any way.  But it’s the survey requirement that divides explicit from implicit falsity.  Is the court's idea that we should do a pointless survey so we can then have the actual battle of the experts?

Monday, June 29, 2015

Trademark scholars roundtable: establishing the features of the consumer

Session 2: Establishing the Features of the Consumer
The UK courts have in recent years been quite explicit that the consumer is a normative construct, a fiction, and a benchmark. What does this mean? Does the modifier “average” or “reasonable” serve any useful purpose? Do courts elsewhere understand the concept of the consumer similarly? If the concept is “normative,” from which materials or domains is this normative construct pieced together? From where ought these norms to be derived? And why force those normative concerns into the vehicle of the consumer rather than vindicate them explicitly on their own terms? To what extent and in what trade mark institutions (legislators, administrative offices, courts etc.) is there a role for empirical understandings of the consumer? If there is a role for empirical understandings, how are these to be developed and used? Through surveys? Courts in several countries appear increasingly sceptical of survey evidence? Does this reflect (or will it cause) a different conception of the consumer? Through other forms of evidence from experts in marketing, economic, behavioural sciences? If there is a role for empirical understandings within a normative framework, what is the relationship between empirical and normative assessments? Must one always trump the other? Does a “trump” only work in one direction (e.g., in favour of trade mark owner or third party user)? Does this vary by institutional setting? Is the consumer construct different for different categories of trademark subject matter—e.g., for verbal versus visual marks?
Introduction:               Jessica Litman: US judges and lawyers think what they’re doing is directed at what actual consumers perceive, but the Q is how you figure that out. Corollary: consumers differ by product. Real consumers don’t distinguish TMs from products. Trying to figure out what the consumer is confused about when perceptions don’t track legal categories is challenging. US judges reject surveys a lot, maybe even more and more, not because they think surveys aren’t relevant but b/c they think the surveys don’t reflect empirical reality. They are lawyers and know what they’d do if they were litigating; getting a realistic survey is not good litigation strategy. Some judges are trying to figure out policy for competitive space; starting to see move away from multifactor likely confusion test, especially in the 7th Circuit—this is or isn’t going to confuse the relevant consumer.  Sense is that’s also cropping up in false advertising cases—doctrinal categories that require surveys & judges worm their way out of those categories with, e.g., falsity by necessary implication.
Are there ways to generate more reliable empirical evidence of consumers’ impressions? Independent surveyor is interesting idea.  If consumers can’t tell difference b/t product and brand, would we be better served by a more careful definition of what sort of confusion ought to be actionable?
Kimberlee Weatherall: Must be frustrating to have judge ignore evidence on which you would rely as a business matter. When you know you have to convince the judges about closeness, and that’s what it takes to win, that inherently leads to uncertainty that makes settlement more difficult; hard to predict how judges will see marks. Intellectually dishonest to reject surveys: expect level of perfection from surveys not expected from anything else.  (Preach!)  Other experts; witnesses who testify they were confused, as if witness prep didn’t happen.

But TM law doesn’t ask empirically testable questions: a consumer with a fictional memory for the mark as registered, and then we ask about what the consumer will think of the product’s origin when she sees it. But lots of times the consumer isn’t thinking about product origin at all, but about what taste of ceral they want or what the 3-year-old is pulling off the shelf.  Fictional memory, imaginary state of mind, imagined shopping experience—and then we complain that we don’t have ecologically valid evidence! We’re not asking testable questions; we assume in the law a kind of decisionmaking that cognitive scientists don’t agree w/ in their model of consumer decisionmaking: conscious and unconscious elements of choice that vary across circumstances.
Courts have rejected general testimony about consumer behavior as applied to specific circumstances; not good. She’s been working with cognitive psychologists on word similarity, memory, etc. Asking psychologists how to test some of our assumptions about marks—e.g, beginning of words mattering most; consumers focus on most distinctive part of mark and ignore generic/descriptive elements.  Process is difficult b/c we don’t speak the same language, and they break down the process of consumer decisionmaking differently. We wrongly tell researchers the question to ask and we perhaps should give them scenarios and ask what could be empirically tested: get them to design surveys. But raises practical Q: will a court accept such abstracted testimony as relevant?  (RT: by ordinary relevance standards it really should be accepted!)
Primary Discussant:      Annette Kur: Consider whether we want to influence how consumers react w/law—miss out on that if we concentrate on making surveys function as well as surveys can function.  We can’t be under the illusion that we can get all we’re interested in doing into one litigation.  Complexity of problem might justify giving up trying to get empirical evidence in any particular case, except for secondary meaning.
Registration: if it’s difficult to bring in empirical evidence to litigation, even more impossible when we talk about registration. But we still need rules.  Relative grounds for refusal: attempt to get as close as possible to actual consumer reaction is illusory and simply should be abandoned.
Robert Jacob: Doubts about so-called experts. People who come along and tell you they’ll give expert testimony on royalty rates etc. are legion, but they’re rubbish. It ought to be true for TMs: if it’s that complicated, you haven’t got a TM case.
David Llewellyn: Weatherall’s point about lost bearings w/reality is worth reinforcing. He’d hate having a decent judge abdicate responsibility to experts, who can be appalling. Generalists should have the nerve to make their own judgments.  SMEs: all this survey evidence can be achieved by Pepsi and Coke, but that’s an expensive area; we can all design fantastic ways of getting answers with an open checkbook, but how does the small business w/ a registered TM actually compete? We don’t have contingency fees. Cross-examination and real witnesses are what’s important for a case—real differences in procedure matter, such as presence of contingency fees. 
Weatherall: there are empirical claims you can make as a general matter, such as whether the beginnings of words are most important. Also one reason for the huge expense is b/c courts have set the bar so high. A cheap internet survey may give you more evidence than you had.
Llewellyn: If you pay peanuts you get monkeys; what kind of legal system do you want to have?
McGeveran: distinguish between consumer as beneficiary (as all law is supposed to benefit the public) versus consumer as determining scope/lodestar. A judge who doesn’t feel comfortable is being told this is a complex factual dispute with a multifactor test; that kind of judge—our greatest worry—will be tempted to use a survey. Maybe we should be more explicit about being normative.
Grynberg: courts of appeals are much more comfortable with district courts making those kinds of calls than w/agencies. Example: TTAB’s Pretzel Crisps decision: Fed. Cir. says that TTAB shouldn’t have discounted the empirical evidence/surveys, even though the TTAB deemed them unpersuasive and self serving.
Dinwoodie: w/o empirical tools, you either end up w/judge as your empirical proxy or judge as normative decider. Which is the consequence of rejecting surveys? 

The extent to which courts appear more persuaded by individual entirely unrepresentative witnesses than scientifically conducted but imperfect surveys: why?  Maybe it’s procedural—cross-examination, understanding the thought process of an unrepresentative consumer.  (Or maybe it’s just a standard cognitive bias towards vivid examples.)
Jacob: real consumers in the box are perfectly normal people. Seeing them makes it easy to believe them if they seem competent.
Dinwoodie: getting a grounding in empirics could be presented to judges and policymakers in other fora; wouldn’t need to be presented in particular cases but as part of educating decisionmakers—part of our role as academics.
Weatherall: psychologists can answer questions of perceived similarity; don’t like to talk about confusion: would be more modest in that it would be one piece of evidence that could go into the overall analysis.
Burrell: thinking through what we mean by unrepresentative: are there reasons to think that the ways in which groups differ matter to the perception/confusion question?  We too readily assume that they do. 
Jennifer Davis: maybe no empirical evidence is ever probative—different approaches include psychologists, polling, neurologists, linguists.  They might all have different opinions. No scientific answer to any of these questions.  Courts were never dependent on polls/empirical evidence—from 19th c. to now.  Rare exceptions, but mostly decisions of judges for both registered and unregistered marks.
Michael Handler: Maybe the most that can be hoped for is to put info in front of judges outside of litigation, in a way that isn’t necessarily intended to impact particular outcomes.  Practical impact on bureaucracy/TM offices?  Offices may see their roles as faciltators, not gatekeepers: goal is to smooth path to registration. Perhaps they’d respond better to consumer evidence suggesting that confusion is less likely. Work on rules of thumb on similarity may also be more readily accommodated by registration system, for example in manuals of examining procedure, that can then be used in decisions.  For example, they do that kind of analysis of surnames in Australia.
Weatherall: There is a strain in the work where particularly Jennifer Berg who does word similarity work has been trying to produce a kind of rating of words.  Trying to see whether there are tests that would give us a kind of rule of thumb rating and whether that can be applied in the brand context.
Austin: what do you do with context in this kind of research?  Someone who is in a hurry, for example, is just paying less attention. Quality of decisionmaking/perception is a function of emotional state. Payday loans = decisions made under stress.
Burrell: psychologists don’t even want to talk about confusion, so it won’t help answer the ultimate question.
Dinwoodie: CTM context—is there homogenization of European culture that would map onto Davis’ observations about homogenization of imagined British consumer/decline of class differences in imaginaries?
Level of comfort w/acquired distinctiveness surveys—why? Some of the same problems would seem to exist as in confusion cases.  Perhaps difference is forward-looking v. backward-looking.  Maybe confusion looks more normative as a question than empirical and secondary meaning/acquired distinctiveness looks more empirical, despite normative elements. 
Kur: it’s knowledge v. reaction.
Dinwoodie: consumer reacts to sight of bottle by recognizing—why is that different? [Maybe b/c we still have another bite at the apple in constraining rights by defining the scope of rights later on, even if we accept that a sign is a mark by finding secondary meaning.]
Davis: Maybe there’s homogenization in the sense of a decline of a servant class. Marks & Spencers v. Interflora: J. Arnold said he was computer literate and would understand keywords but doesn’t think average consumer would understand. Seems pretty much the same as pre-Directive paternalism.  Not a hard & fast rule.  Judges are not always well informed.
Dinwoodie: maybe you’d approach a CTM case differently than an EU case.
Davis: it’s helpful for CTM people to think of an average consumer b/c otherwise their task is basically impossible.
Senftleben: You get a second bite at the apple with accepting acquired distinctiveness. Less frightening for a judge to accept acquired distinctiveness by survey; still doesn’t let someone else determine the outcome of the confusion case.  [RT: exactly what I was trying to say.]
Dinwoodie: as long as we emphasize to judges that it’s not outcome determinative, why would it be different?
Senflteben: it’s harder perhaps to manipulate the survey: you show a picture and ask if they recognize something.  If they can name a brand, that’s secondary meaning.
Mid-point summary:   Catherine Ng: Notional consumer: we assume the consumer is rational, reasonably well informed, fluent in 24 languages (Jacob disagrees but Dinwoodie agrees).  Unrepresented consumers: those who actually prefer lookalike products/benefit from initial interest confusion. Gaps and convergences between image and real consumers.  Substantial portion?  Majority? Those questions also continue to arise.  And finally the real individual consumer—not necessarily a representative sample.  The legislature didn’t necessarily have every single consumer in mind when legislating, but they come to the fore in witness statements, and also when judges say that they can make up their own minds without expert/survey evidence: a sample of one. 

UK Gov’t studied desirability of registry: in 1862, law of passing off was found to be very clumsy for traders, esp. those which had to trade internationally in countries w/ a registration system.  Hope was to be inexpensive and certain.  Trader wishes to know what he can/can’t do.
Martin Senftleben: Though we seem to like the general idea of surveys, we also agree that too much can be bad.  Also, this concerns all different areas of TM law: secondary meaning, confusion, and dilution (link established by the consumer, and damage in the form of changed economic behavior, which is almost impossible to show through survey evidence).  Maybe the project of finding empirical evidence is a threat to TM law.  You can ask empirical questions as a vehicle to find the right questions—a link to reality.  We can’t guarantee that survey results will affect the outcome.  Solve the perfection problem: if the role of empirical evidence is only to point to the right questions, then they need not be perfect in all circumstances.
Ilanah Simon-Fhima: Challenged TM owners to prove dilution/blurring with empirical evidence; leads to shut down.  In the US, Victoria’s Secret and TDRA as a result.  TM owners are running scared from the challenge.
RT: As much as I want courts to pay more attention to general psychological/consumer evidence, I find myself in agreement w/Sir Robin that similarity research will not be able to bridge the gap to the legal question of confusion. How similar? Do we look at installed base of cases found confusing in the past, but where the confusion findings were not based on empirics? Confusion examples where there was actual confusion evidence? Context matters too: TRAVATAN/XALATAN had a very high “similarity score” as calculated by the plaintiff’s confusion expert in a case I worked on, versus MEXICAN/AMERICAN, with an even higher confusion score.  But even if you were confident about your comparator set, and even if your P and D get a very high similarity score—high enough to place it well within the boundaries of marks that have been found confusing in past cases—the next problem you face is comparing it to the entire universe of signs that might be compared.  As it turns out, if there’s any false positives at all in your test, the false positives will so vastly overwhelm the true positives that the test becomes useless.  Now there are things you can do about this, like narrowing the set by the fact that people have bothered to litigate about it … but they reduce the utility of bringing in this research in the first place.
Heymann: are we trying to predict harm or prevent it?  Shaping might lead us to different policies.
Andrew Griffiths: We’ve been talking about cognitive features, attentiveness—but what about knowledge? Specialist/niche knowledge.  We are willing to assume literacy, but what about cultural literacy?  Maybe the average consumer is now less likely to regard Homer and Sophocles as conceptually similar and more likely to see Homer and Bart as related.  When popular culture becomes niche: does the average consumer know Breaking Bad or not?
Betty’s Kitchen Coronation Street: registrar divided consumers into 3 categories: aware of soap opera Coronation Street; aware of character Betty; and not aware at all. First group would be likely confused; second group less likely to be accused; third group didn’t matter.  Because one significant group would be likely to confused, registration rejected.
Dinwoodie: whether similarity is a separate threshold—he’s never thought it could be because similarity has to be related to something.  Is an apple similar to an orange?  Well, it depends. But can similarity can be refigured so that it is more useful to the TM endeavor?
Weatherall: when psychologists talk about similarity, they’re trying to rate relative similarity—class of goods/services and look how similar marks across that group tend to be—is this mark more or less similar than those marks tend to be from each other.
Ansgar Ohly: PHOSITA: A reflective device partly informed by reality but also by what we want to keep free. Similar in TM, where we grant broader scope to marks with higher degree of distinctiveness. Average consumer is not detached from reality, but also not empirical in the sense that a certain percentage matters.  We look at rules that are informed by policy.
Bently: research topic: do judges think they’re making empirical decisions? Even if we have a consensus that they’re making normative determinations.
Davis: there’s no such thing as a normative approach. Things happen and we label them as normative.
Bently: maybe they think they’re making factual determinations and we don’t. Maybe “is this empirical?” isn’t an interesting question, and “what work is the ‘average consumer’ doing?” is a more interesting one. Socialization: when I started doing this work, I couldn’t understand the relation between the legal rules on the page and the conclusions judges were reaching. I had to be socialized into learning what made a close case. Average consumer is part of devices used in socializing lawyers into applying standards we believe are relatively consistent.
Graeme Austin: Take the Champion Spark Plugs case in the US: SCt talks about consumers as interested in the original brand, but also interested in getting cheap used versions. Why is that an empirical question/why frame it that way instead of “we want a vibrant aftermarket”? What are we more comfortable with: trial judges calibrating balance in the aftermarket, or using the rhetoric/traditions of language that help the institutional actors think through the problems.  Why is it a problem that we use the consumer to avoid normative questions? Is it because sometimes we don’t like the normative outcomes? (For example, the doctrine that variances, including variance in warranty, results in grey market goods infringing is ridiculous in many cases where the consumer knows quite well what she’s getting; talking about confusion gets us away from the question of what aftermarket we want to have.) 
McGeveran: administrative costs matter (as Bob Bone would say).  Accuracy versus cost of reaching a decision, it’s pretty easy to tip over the point of overspending on finding the right consumers. The nightmare of market definition: consumer has to be followed, at least implicitly, by “of X.”  Consumer of snacks v. chocolate v. this brand can become a pitched battle.  Ends up being a fight about knowledge base/assumptions courts can make about them. The more unstandardized you make the consumer, the higher you raise the stakes in that difficult market determination, and that makes him nervous.
Internet user as something distinct from the consumer: he thinks that’s crazy.  Understands the judicial impulse to set apart a new technological context, but it’s a different iteration of all the many different experiences consumers have—they are different in different countries, different kinds of stores; bad mistake to create a distinct doctrinal line for this particular situation. As the internet becomes more commonplace, becomes increasingly absurd to think of it as different in kind.  If it is justified to think about the internet consumer as categorically different, not clear why there’s not a panoply of different kinds of consumers.  (There already is!)
Litman: Internet consumer got split off b/c judges and lawyers found the internet scary and confusing. We got to see something we haven’t seen anywhere: the consumer got smarter, more sophisticated and more savvy very quickly. In ten years we got from easy initial interest confusion to “consumers understand AdWords.” Without discussing the internet specifically, it would have taken much longer for consumers to get smart.  Good development in the law has resulted, including for likely confusion.
McGeveran: temporary measure for something new makes more sense; but we continue to have cases treating internet users differently from ordinary users, and cases that don’t respect dynamism.
Litman: it’s only been 15 years; give it time. It’s not consistent intellectually to say we’re only going to make these consumers special, but it helped the corner of the law instead of dragging the rest of the doctrine with it as it almost did in the pre-dilution era involving cybersquatting.
Grynberg: leaves doctrinal detritus of domain names—the rules for them are just different.
RT: There is research showing that consumers are more credulous/less able to make distinctions in new modes of communication. That would support a new medium rule.  And we already distinguish between consumers in the checkout line at the grocery store and consumers buying a car.
McGeveran: we use the sophistication/attention of those consumers as one consideration in the multifactor test not the be-all and end-all.
RT: I don’t think so. It’s that the internet cases disproportionately involve comparative advertising, and that’s why you see a generalized “let’s be sensible about this” treatment relatively more than in non-internet cases.
Ng: entire professions dedicated to studying who these consumers are. Marketers have target markets.  Is this a way of us as lawyers trying to replicate that upstream knowledge?
Dinwoodie: see in Europe in keyword cases the AG opinion: we just don’t want to adopt a rule that would kill Google’s advertising revenue.  This normative opinion may be right, but do we want it everywhere/a rule to protect new technologies?
Davis: So much depends on the assumption of rational processing of information by consumers. But the internet features algorithms that give consumers information they may not be looking for; that’s not something that happens as readily when you go into a physical store.
Kur: internet cases are different in that the dynamic element/speed of consumer adaptation is much more present.  Normally if you make a reliable empirical test of how consumers react to a particular offer, then that would still be reliable when the case reaches the Supreme Court, but in internet case by the time it reaches the Supreme Court the behavior of consumers (and of sellers!) may already have changed. 
Return to suggestion of asking judges and people in TM offices what they believe they are doing. Germany: judges would say they are making a normative assessment b/c confusion is normative, but they take reality into account so it is a mixed notion.  TM examiners would say “we apply the law and go through the factors we are required to consider.”
Simon-Fhima: TM office in UK moved from guardian of register to serving customers—it’s up to other market participants to guard their own interests.
Consumers of pharmaceuticals: either doctors who are very educated, or consumers who are consuming products and care very much about their health.  But the application of this idea seems to be less robust: consider how the analysis of similarity goes—any one pharmaceutical is treated as almost identical to any other pharmaceutical, which is at odds with the supposed definition of the average consumer they’re using in the EU.
Grynberg: I always thought of the internet as prompting recall of normative goals of TM in light of empirical situation: a game of analogy in the late 1990s. Is a metatag like a billboard or like stocking goods near branded goods in a store?  Davis suggests that the internet is different because you can do a better job of giving consumers a substitute/giving them something they didn’t specifically ask for [RT: though as compared to the impulse buys at the supermarket, I wonder if that’s so], but so what?  You can ask whether point of sale confusion/its absence ought to matter.
Stacey Dogan: US law is explicitly normative in its focus on intent.  Unfair advantage comes in through the back door: if D is intentionally trying to evoke the P that cuts against it even in absence of intent to confuse. [RT: but only in some cases! Plenty of cases say the opposite!]
Elderly people rely on color/shape of drugs; this is used as justification for copying for generics—we want to make sure that people will take their medicine!  You can manipulate judicial instincts to limit scope of TM rights.
Marco Ricolfi: different TM contexts—border measures/special customs provisions exist. It is for customs officials to step in w/out having to exercise judgment if it’s clear there is a violation. That could tell us how normative/empirical a judgment is.  (RT: I’m suing the government in the US to find out more about what they seize as counterfeit, which might provide some insights on that.)
Dirk Visser: L’Oreal also considers intent to free ride—he believes intent is a determining factor in EU cases as well, though it’s not officially part of the confusion analysis.