Monday, April 16, 2018

TM scholars' roundtable, part 5

Session 3: The Implications of Tam (and Brunetti)

What are the implications of the Tam Court’s First Amendment analysis for other subsections of Lanham Act Section 2?  What are the implications beyond Section 2?  For example, is dilution protection now vulnerable?  Did Brunetti correctly apply Tam?

Introduction:   Lisa Ramsey
Source-ID function v. other functions; the Court has to decide whether Slants is commercial/noncommercial, and expressive component is noncommercial; as to the commercial, Central Hudson would apply. If your mark is only conveying source ID information, Central Hudson applies.  Regulating expressive component, then strict scrutiny required.

But expressive and commercial are not mutually exclusive.  Descriptive terms can be both.  Comparative advertising can be both. 

Registrations can also chill speech. The Court needed to weigh the harm from registration and denial, but the Court didn’t do so.  Still, can apply the analysis to registrations: a registration for pink buildings can chill others’ use of pink on buildings.

Vague TM laws: infringement, dilution, secondary meaning.

Court rejected theories that would take TM/registration out of the scope of the 1A: government speech.  Could have made a categorical exclusion, but it didn’t do that.

Viewpoint v. content based. Is that distinction made because of the viewpoint of the lawmakers who enacted the laws?  Protecting against confusion isn’t disapproval of the content of the mark itself.  But other cases like Reed say that you don’t look at what the law’s motive was, but rather what the law does—it targets particular content and is thus content based.  You have to compare the speech of the P and the speech of the D.  The remedies target content.

Important to get this right.  There’s a debate about whether © is content based; it is.

Level of scrutiny: Court doesn’t decide what kind of constitutional test should apply in the TM context. Alito + 3 says won’t decide whether TM also regulates noncommercial speech; doesn’t even pass Central Hudson scrutiny. Process: identify substantial gov’t interests at stake, and determines whether laws directly further those interests, and then figure out what’s the harm to free speech. Thomas says strict scrutiny even if it’s commercial; etc. – strong signals.

Rebecca Tushnet: with Ramsey present I don’t have to be the optimistic advocate for working the law pure, so I can be the cynic.  Should Tam be understood as death blow for dilution/tarnishment and more?  Tarnishment seems obviously gone.

Incoherence in Alvarez about whether dilution is even distinguishable from confusion for constitutional purposes/lack of disavowal of USOC v. SFAA.  Can the legislature make wholesale decisions about confusion or must it work retail?  The various parts of section 2 very much depend on that if the interest at stake is only consumer understanding/confusion—e.g., prohibition on  registration of flags & insignia.

Separately, could dilution survive b/c confusion isn’t the only interest the gov’t is allowed to protect?  The appeal of a property concept (and its interaction w/a registration system—here is perhaps the weak point from the perspective of the libertarian-esque Justices; the rights created by registration are very clearly additions to the common law background and thus not “natural” in the way that rights stemming from use are).

Registration system as a whole and Central Hudson: the only interests that a registration system more directly advances than common law are (1) treaty compliance and (2) notice/administrative convenience functions. 

Tam allows you to avoid all this with viewpoint analysis, but Brunetti does not because it decides that scandalousness is content based, which is bass-ackwards given that scandalousness is far more obviously viewpoint based than disparagement, which applied to disparagement from the viewpoint of any targeted group.  I don’t think that “being mean” is a viewpoint (though those who know me might disagree).

Linford: On the treaty point, Eldred & Golan might allow the Court to say that Congress gets to make decisions in light of treaty obligations.  Maybe arguments are stronger for dilution/tarnishment, but their decision to wave off treaty issues in those © cases might signal a willingness to do the same.

McKenna: TM law is so coherent compared to 1A law.  What are the legitimate interests protected by TM? We are probably going to see cts assert that protection of property rights is a legit gov’t interest/water down scrutiny. But if that’s the case, then we lose Rogers, all the expressive use considerations—there’s no 1A need b/c those doctrines are meant to protect 1A interests.  It’s hard to conceive a way to understand these cases that doesn’t do sweeping things w/in TM unless we start making a bunch of distinctions w/o a difference. E.g., Tam: why doesn’t the Court approach this as a gov’t program; Alito says “those gov’t programs from previous cases are all about cash” (which isn’t true) but even if it were true why would it make a constitutional difference?

Dinwoodie: even more skeptical.  The doctrine seems like a mess, but wholesale/retail framing is useful.  He takes the property point distinguishing enforcement from registration, but is it a get out of jail free card?  Still need to look at less restrictive means.   TM does a lot of different things—industrial policy, etc.—Breyer gloms onto source identification, but were they invited to think about other things? 

Litman: SG raised the issue of Congress trying not to give imprimatur/anti-discrimination norms.

Dinwoodie: the problem w/those rationales is that they run into instinctive speech responses: you can’t suppress just b/c you don’t like.  But there might be issues about other things like notice and treaty compliance. 

Grynberg: Tam oral argument, the focus was on source identification—he wrote about why disparaging terms are inherently less likely to identify source [though that gets us back to wholesale/retail].

Burrell: In Brunetti: why was the court so desparate to get its hands on the 1A issues? Most systems wouldn’t have called FUCT scandalousness.

RT: (1) to get affirmed; (2) because vagueness is the other half of the 1A vise and so many other fuck-type marks had been rejected.

Dinwoodie: how much room is left open for a prophylactic approach?  Gov’t program type conceptualization of what TM is about that would prevent ongoing litigation of any TM issue from a 1A lens.

RT: I talk about that in my Tam paper a bit—given the interest in having a registration and infringement system, the costs are worth bearing.  [It may be that examination on absolute grounds is constitutionally required here; we couldn’t just register w/o examination and grant the rights we do.  But see ITUs.]

Ramsey: focus on regulation of commercial speech and misleadingness.  Gov’t has interest in fighting fraud, and also in promoting fair competition (including use of nonmisleading terms).  Any registration laws that promote competition (functionality, genericness, exclusions of nondistinctive symbols) will be ok, and facilitating truthful source ID is also ok.  Tam says gov’t interest in deterring offensive speech is not sufficient.  Not just protection of property rights, but property rights in language. There’s a difference b/t cars and colors.

Dinwoodie: EU allows property rights even upon application. [Asks about my speculation that under Central Hudson substantive examination might be required; though treaties leave us a lot of flexibility, the narrowest implementation of our treaty obligations easily allows substantive examination.]

McG: why wouldn’t non-examination and challenge post issuance be good enough to satisfy the 1A?

RT: compare to obscenity: it’s the closest analogy I can think of, though still distant—a licensing regime where you absolutely can’t put the burden on the affected parties to make a challenge. This is a regulatory regime very different from most others we’ve seen challenged.

Grynberg: property/TM conflation has been making a mess for a long time.  What’s different now? Why would that endanger Rogers?  [Because of Michelob Oily.]  As long as we maintain a commercial/noncommercial distinction …

McK: the significance of commercial/noncommercial is in obvious flux. [And obvious contradiction among types of law: © commercial is not 1A commercial.]

Realistically, there isn’t going to be significant will to challenge the whole registration system.  And so where it will play out is enforcement. The Court ignored an obvious issue: enforcement is prohibition of speech directly; denying registration is a much subtler impediment.  Surely our current functionality doctrines are not the least restrictive means for dealing w/functionality.  How do we decide whether a particular provision is necessary to promote competition, at which level of generality?  It’s a silly Q.

When you look at enforcement, a lot of times the P is objecting not entirely because of confusion but b/c of use on goods/in ways the P doesn’t like. That’s expressive at least in part.

Dinwoodie: compare to European concept of advertising function, whatever that is, versus source identifying function.

Linford: Sorrell v. INS: speech the state can’t regulate—how far are we from having no distinction b/t commercial and noncommercial speech?  Similar to Citizens United.  Would that have an impact in © and TM or would they handwave on a property basis? Maybe harder to handwave in TM than in ©.  Harper & Row addresses 1A some and still gives Ford a right of first entrance to the market despite speech rights. Campbell = release valve.  If you look at statutory offramps for noncommercial use and commentary, and the fact that we’ve doctrinally imported them into standard TM analysis, a court could limit Tam & Brunetti in the same way Eldred/Golan did—we can have our cake & eat it too.  Would that survive if we really do see shaving of the commercial/noncommercial distinction to nothing?

Diamond: speak more about blurring.

RT: Brunetti says there’s no gov’t interest in promoting some marks over others.  There’s also a Q of what blurring really is/what the harm might be, especially to famous marks.  Also, City of Cincinnati v. Discovery Networks: given the exemptions, the remaining coverage is limited and that small contribution to the overall harm means that the regulation flunks Central Hudson.

Beebe: Rogers step 0: is it an artistic work?  That seems to pick up all the commercial/noncommercial stuff.

Ramsey: consider a nonprofit using a mark to fundraise—that’s more of a TM/commercial use. But offering religious services—e.g., a breakaway congregation—seems so noncommercial that it should be protected.  For some marks it depends so much on context, and so some challenges can be facial while others can be as applied.

Eric Goldman: Denying benefits based on someone’s speech always seemed like an easy case of unconstitutionality to him.  Does think that enforcement is a different question.  Denying © registration to Democrats would also be a problem.  [But that’s not what disparagement was: it denied registrations that disparaged Democrats, Republicans, or nonvoters—and allowed Democrats any registrations except those that disparaged, as others were also denied.  But I understand I’ve lost that debate; the question is what else is viewpoint-based.  Tam is not much help in determining what the next viewpoint-based regulation will be.]

Bill McGeveran: Note that cases raising these issues will be thin on the ground—most dilution claims aren’t litigated and most dilution cases aren’t litigated alone but rather have confusion claims.  TM owners would have to be willing to press their luck.  [LV, I’m looking at you.]  Continued invocation in C&D letters might look better. Cts have a long list of avoidance doctrines, e.g., finding dilution unlikely or a 43(c) defense succeeding.  Won’t have to make other moves w/in 1A doctrine that would be bad.  Harm = vestigial doctrine w/ zombie life in C&Ds.  Remember that parodists no longer lose.  Radiance v. NAACP district court opinion v. appellate opinion—the former looks like a case from the 80s. Judges in the last 20 years want to look like defenders of free speech. These cases about registration may continue to have real-world effects in the registration system, and it’s conceivable they could break out into infringement but thinks the likelihood is really low.

Dinwoodie: motion practice to isolate constitutional issue?

McGeveran: in almost any scenario the nonconstitutional issues would be available on the motion too.  Section 2 bars don’t take away from the core function of TM as judges see it.  To invalidate dilution, a judge would have to take away a piece of TM rather than expanding TM protection as w/invalidating a §2 bar. 

McK: but you’d be supporting the speech of someone else.

McG: whereas allowing registrations increases the scope of TM.  Prediction: it’s a big ask to tell a judge to get rid of a congressionally enacted protection.

Dinwoodie: you could get a dilution claim for an opposition—the Coach case.

McG: thinks that’s more likely.

Grynberg: consider impersonation—could we have a specific claim for impersonating an entity even in a nonprofit context—impersonation as defamation or other harm?

RT: Eugene Volokh has a great paper about, among other things, using defamation to deal w/impersonation cases. Consider also the treatment of false advertising cases alleging false patent claims: courts have imposed a higher intent requirement than ordinary Lanham Act cases; we could do something similar with political/religious cases like United We Stand or religious schism cases, requiring actual confusion (the problem remaining being that they won’t have deceptive intent insofar as they will believe they’re the real thing, and this is a real conflict that we will have to resolve).

Bently: EU takes the position that denying registration puts very little burden on speech, and if there’s some legitimate interest in preventing commercialization of the sign, that’s good enough.

RT: but aren’t those two things the same? If there’s no burden, then there’s no deterrence of commercialization—those are commensurate.

Bently: yes, but we’re ok with that—similar things in patent law. Some is about artificial incentives—we don’t want extra incentives to do undesirable things but we won’t prevent them if they’re truly committed.

Dinwoodie: European/British approach: we have no problem making gov’t judgments of what’s un/desirable where US would leave it to the market.

Burrell: Australia’s scandalous marks provision has been almost entirely hollowed out. Where he sees that as undesirable—case last year where Commonwealth Games Committee appropriated a term from the local indigenous language, while building a stadium in the middle of traditional land.  TM Office says it doesn’t matter b/c we’re banning some terms & reserving rights for indigenous rights/important people.  The Office is pushing the line: if we don’t like it, just ban the use, which absolves us of any responsibility. He’d prefer an intermediate category w/o ban but no registration either.

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