Friday, February 18, 2022

WIPIP 2022, session 1 (trademark)

Lolita Darden, Stopping Zombie Company Trademark Abuse and Consumer Deception in Trademark Abandonment Cases

Based on clinic work. Larger questions about standards for proving abandonment/relation to abusive acts. Forum-shopping from TTAB/federal court; D secured transfer from Mass. to Cal. b/c standard for proving abandonment is not consistent through US. Standard of focusing on TM owner’s behavior (discontinuance w/ intent not to resume use) ignores goodwill and claimant’s intended use/behavior in the marketplace. Definition should be broader than sale/transportation of goods in commerce.

9th Circuit says: in marketplace context, “use” has meaning that is broader than sale of goods. Includes where mark continues to maintain a public presence before the consumer in identifying/distinguishing good (or service, though hard to imagine how that would work w/abandonment). Public presence shouldn’t have to be activity conducted by the TM owner. E.g., an active community of product owners/users.

Example: Oratone speaker, used to detect flaws in music recording to find how it needs to be balanced. Had fame in the industry from 1960s on. Company claimed to revive an abandoned mark, which allowed them to use marketing materials from the original company and used the original model numbers: leads to a lot of deception. Standing question: who has standing to challenge this; consumers were writing to clients demanding refunds but the products weren’t from the clients.

Betsy Rosenblatt: Two separate reasons for allowing TM to lapse: one is that it’s lost TM meaning, another is that the TM owner doesn’t want it any more. Consumer standing: how do you propose showing consumers are actually affected?

A: False advertising context: FTC/state AGs. Could compile similar evidence b/c the harm is the same: consumers are deceived into buying products that are not legitimate.

Justin Hughes: Isn’t an easy solution to allow consumer to sue under qui tam provisions where the state AG could do so? Then your client could buy just one speaker and bring a class action.

Tyler Ochoa: Zombie imagery suggests a mark that is actually dead that nonetheless wants to feast on the living who want to use it—which is the opposite of your argument.

Jim Gibson: Connection to other forms of abandonment through naked licensing/transfer in gross—it’s difficult to find standing b/c you have to find someone willing to take a chance. There might be a bigger issue of finding standing in problems of abandonment. Laches are another example of where there may be consumer harm but TM owner isn’t allowed

RT: California used to have the ability for any citizen to bring a consumer protection claim/citizen AG and got rid of it (wouldn’t require buying a speaker, and buying a speaker while knowing the problem won’t produce standing in the ordinary consumer protection case). Nike v. Kasky was an example of a person who brought a claim w/o buying the product; California removed that via initiative. Regular consumer protection law does apply—UCL/FAL/CLRA in California, would allow class action and classwide presumptions of materiality and harm under appropriate circumstances—what are the problems you see with that? If you want to give the ex-company standing to represent consumers, that will likely create Article III problems under current law—so far class actions don’t generate the same Art. III problems though one can certainly see it on the horizon.

A: what she wants to do is allow consumers to bring actions. What if the former TM owner was not around at all to bring the action? But also: Family of former owner felt his name was being sullied—should they be able to bring an action to represent the former TM owner? [Jennifer Rothman has written about using ROP claims in this way, but not happily.]

Sari Mazzuco: Sounds like you’re talking about dignitary/personality harms—that’s not something TM necessarily cares about especially if family has no intent to reenter the market. Needs stronger normative justification. Why not ask AGs to bring the claims? They can represent consumers at large and may have extra resources.

A: not opposed to AGs!

Betsy Rosenblatt, Informational Functionality

Genesis of the project: Thinking about fans and how fans use TMs, and thinking about sugar packets where the color of the packet tells us what’s in the packet not who makes the packet. Where does informational functionality fit into source identification reasoning? Did it have meaning that was lost, which looks like genericism? But genericity is ordinarily thought of as words, not colors. Colors of sugar packets aren’t descriptive—they don’t describe what’s in the packet. But using yellow for a saccharin packet might be false advertising, b/c it would communicate the presence of sucralose rather than saccharin. Inwood v. Ives introduced the idea of functional color but didn’t give us a full definition. There are other things, like the shape of wine/port/chianti bottles, that also are informational as to what sort of wine is inside the bottle and not what brand of wine it is. Lemon/lime squirt bottles indicate product and not brand.

Branded products deliver a lot of information, and not all information is about source. We don’t want TM law to intrude on non-source meaning, like pictures of fruit on a yogurt container. Genre—modern typeface might send a different message. Symbol might tell you how to use the product, such as the power symbol on the power button. Can provide information about consumer/target market. Protectability doctrines take this into account as well as fair use. Informational functionality might be an organizing principle around things like nominative FU, descriptive fair use, requirement of secondary meaning for descriptive terms, functionality. But informational functionality may fall through the cracks, and the doctrines vary in the extent to which existence of secondary meaning makes a difference to them.

Is the informational function of marks in providing information about the market, product, or consumer the same? Wearing school colors=information about the person wearing the school colors. Even if TM for the school, also providing information about the person. Cosplay: Some TM owners would like us to think that’s trade dress and marketing the costume might give rise to an argument about affiliation, but the cosplayer is wearing it to provide information about themselves. Lifeguard shirts: claimed as TM, but provide information that the wearer can save us from drowning.

Interoperability symbols are also like this—tells you what products you can use this w/ but that also connects it with a brand. Reminds her of scenes a faire in ©; there are things we don’t protect b/c they’re ubiquitous, needed for expression. Merger also deals w/ the merger of function and expression, but scenes a faire is different b/c it’s a refusal of any ownership.

Struggling w/where this stops. Wearing a brand is a signal about oneself, but is it about liking a brand or about looking good or both? Overlaps w/expressive genericity identified by Rochelle Dreyfuss. But thinks this concept may have additional utility.

Justin Hughes: Bottle shapes are GIs in a lot of jurisdictions—certification marks in the US. Yellow for packets is acquired informational functionality, different from seeing yellow extension cord and knowing you shouldn’t trip on it. Can you draw a distinction b/t sugar packets and diet drinks, where you know by looking that Diet Coke and Coke Zero are different? TM claims there seem stronger.

A: when it becomes a significant aspect of the communication, something feels amiss.

Hughes: Beebe on the sumptuary code is also relevant.

Ochoa: Qualitex/Traffix says Qualitex is about aesthetic functionality and he doesn’t think that’s right, but is informational functionality utilitarian or is it a third type? [BR says a third type.] Cases tend to think secondary meaning can overcome aesthetic functionality—should that be true of informational functionality? Where does it stop? Info about the product=functionality? User using it to communicate=left to TM fair use doctrines?

BR: not sure that’s right. Might also be a third type of fair use. Aesthetic functionality is already a hybrid b/t protectability and user interests.

RT: Aesthetic functionality makes courts nervous b/c they worry about whether the consumer appeal is causally related to the TM claimant’s own promotional activities, and they don’t think that should count as functional b/c that would destroy one of the core mechanisms of TM. Don’t have a solution but think you should address the causation question.

McKenna isn’t here so I’m gonna say Dastar is relevant, especially to the fan activities. Dastar as a kind of functionality case where meaning from the content of an expressive work isn’t TM meaning—though after Star Athletica who knows where the line will be drawn.

Bill McGeveran: Au-tomotive Gold is a key case here. Comes out the other way in your view? [BR: yeah, seems like it.] Have to think about the defenses of the result here.

Felix Wu: How much here is P-side functionality and how much D-side functionality? Is there a defensive functionality rather than only functionality as a basis for denying protection altogether? Examples seem to mix the two together. [BR: doesn’t know yet.]

Ochoa: seems a lot like protecting Xmas trees as TM—symbolic meaning w/o source identification.

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