Discussants: Laura Heymann: What is the end of empirical work? Which of our legal principles are based on assumptions or are not meant to be connected to the Q of how consumers actually behave? Lots of research about design remains to be done: what aspects of design are performing the various functions we care about, etc.
Are there additional costs from having trade dress protection that don’t already arise from design protection? V. versa. Damages questions: if we are to have apportionment, how shall it be done? What motivates consumers w/r/t specific features versus entire collection of features/general reputation?
Aesthetic functionality came up a lot. Figuring out how to parcel out the issues that are now grouped under that umbrella.
Unfair competition: relates to question of remedies.
Graeme Dinwoodie: Private practice/private ordering: uncovering what’s there. We might be in a pretty good position to exploit that.
Empiricism is fashionable, but it’s hard to engage w/that legally w/o a normative structure; we often gloss over normative foundations b/c we think we know them but they’re often quite contested, especially when it comes to remedies. European remedies also deserve reexamination. Often taught last in a rush even though they may be the most important part of the case.
Lemley: A lot of theoretical justifications for TM, and for defenses/limitation, are or ought to be essentially resistant to evidence. We might want to know what people think when they see a can of Coke appear in a movie. Almost all his students think there’s a sponsorship relationship, but should that inform TM law?
Bone: Empirical results are often a mess. We as scholars may take it to extremes: pick studies that support us, or review a lot of studies but ignore their methodological limitations. Sounds a note of caution. If you’re uncertain, do you default to current rules? Reform nonetheless?
McKenna: think more broadly about remedies and relation b/t TM and unfair competition, if remedies are starting to divide more b/t technical TMs and others. There’s much history to be mined. Key structural difference b/t technical TM and unfair competition was precisely remedies, so we should reengage that project.
Dinwoodie: Echo Bone’s skepticism re empirical work—additional knowledge can’t be harmful if we understand what it does and doesn’t tell us. Also, empirical work is really good if you have a particular utilitarian view of the world. Otherwise, you need other value systems.
Bone: not so much utilitarian as consequentialist.
Yen: we might be horrified by what we found out about empirics.
Lemley: It doesn’t follow that we don’t need the evidence, but we must think intelligently about how to use that evidence. Even a nonconsequentialist would want to know the impact of rules.
McGeveran: Empirics doesn’t mean big data; Silbey’s qualitative work is empirical and interrogates TM myths. Some may unravel tidy assumptions about consumer use of info/autonomy. There’s also lots of myths that are used in normatively undesirable ways. Take the bitter w/the sweet.
Dogan: we should see who’s suing whom in product design: qualitative examination of cases; also the registry.
Dinwoodie: CTM regime may be clogged; companies are getting more sensitive to costs.
McKenna: more evidence on clearance costs may be available. One woman he talked to advises clients not to change packages b/c clearance costs are so extraordinary: need to clear TMs, designs across EC and nationally. Interview studies about how people decide on packaging could be very useful.
Lemley: A nominative fair use doctrine for product configuration: communicating similarity but not confusion.
McGeveran: would you care if there were empirical evidence of confusion from certain nominative fair use? I wouldn’t.
Bently: Basic confusion level is pretty high—no matter what, some people will misattribute a Visa ad to Mastercard.
Yen: Does that confusion interfere w/the operation of the market? It doesn’t seem to make people skeptical about what they’re buying in stores.
Heymann: there are always anecdotes of people who accidentally buy the house brand in the CVS.
[Discussion about search attributes and the complexity of search; plus consumers may well just have general impressions when they go to the store.]
Dogan: how would you fix secondary meaning??
McKenna: there’s no good standard even for word marks. We assume that, if people say, “I think they make it b/c of that word,” there’s secondary meaning and move on. W/design, consumers can assume that but also not be using the design as an indicator of source. Length & manner of use, advertising etc. don’t answer the question, just tell you people are familiar with the thing—not how they interpret it. Same is true for word marks, but we’re more willing to assume that long exposure to word = treat it as a TM. If we actually try to do it right, it will be so hard that we will rarely succeed/it will be very expensive. Litigation surveys particularly.
Bently: accept that there are many myths around TM. People think the largest word on a product must be the TM.
McKenna: Tom Lee’s study shows it doesn’t matter what the word is [unless it’s generic]; majorities think it’s the brand if it’s presented in a certain way on the package. This is to say that we really say a term is descriptive when it would be too costly to prevent other people from using it.