WIPIP 2022, Session 5

Matt Bodie Trademark, Employees & the Firm

How does TM designate the entity entitled to hold and defend a mark, and what effects does this have on the worker/firm relationship? TM represents source/producer, but is that the same thing as the economic firm? General theory of the firm: production in which several types of resources are used and the product is not a sum of separable outputs of each cooperating resource. Contracts aren’t enough to specify what each person is to do and what percent of the profits they get. A governance system for allocating responsibilities and benefits. When a firm takes over, does it still get to use the TM? Paradox of Theseus’s ship. Comes out often with legacy bands/prior members of big bands.

But firms are no longer using employees to do what the firm does—Uber, FedEx (independent contractors), Apple (subcontractors/other countries), Holiday Inns (outside contractors). Two separate entities—the corporation and its outside labor. TM gives the corp the benefit of kicking people out of the business entity but keeping them within the brand. Disempowers those who participate in TM but not in the ownership of the company.

Potential for using abandonment type doctrines to support workers?

Both are the true ship, and neither are the true ship. There is no one truth.

Mark Lemley: interesting that your examples weren’t traditional franchises like McDonald’s and Starbucks. Does that feel different, and if so just b/c we’ve been doing it so long? Equity: maybe they should be employees, but maybe being able to own a small business is good for [some] of them. Lynn LoPucki wrote a paper trying to tie legal liability to franchises. If you hold yourself out as an entity, then you should be liable when it does bad stuff—franchisor liability for franchisees.

A: Labor law scholarship on this has been extensive.

Jessica Silbey: Hiba Hafiz’s new paper The Brand Defense is relevant. Can TM law solve an employment/labor relations problem? From the consumer perspective, there’s a lot of opportunities for employees or consumers to explain their relationship—I went to SLU, I worked at McDonald’s.

A: interesting to see how much of a repository of value for firms TM is; they can fire employees and not change a thing about TM; employees can’t quit en masse and say we’re the TM owner now. [Lets them have their cake and eat it too. Law as gov’t support for capital and none for labor.] What makes you trust Uber so much you get in a stranger’s car? Uber tries to affect our perceptions of safety. TM’s indifference to whether this needs to be done by employees gives employers much more power.

Bill McGeveran: is this about info conveyed by TM?

Sari Mazzuco: Collective marks is a category that exists in TM—a choice for registrants. Could you say it should be a presumption/requirement in certain cases, including w/changes in what it means to be a collective mark with rights and obligations attached to that?

Betsy Rosenblatt: Consider pseudonyms: if your name is who you are, your pseudonym is who you want people to think you are for this purpose. There’s a connection to control. James Patterson isn’t one person, but many. But there is a human named James Patterson who decides what books are JP books.

A: yes, ROP is an interesting tie in here.

Samuel Ernst Another Free Speech Land Mine in the Lanham Act?

Begin w/Tam and Brunetti and all the arguments they rejected. §2(c): ban on registering marks that consist of/comprise name, portrait or signature that identify a particular living individual except by written consent, or name/sig/portrait of deceased President during life of widow. Legislative history: didn’t want Abraham Lincoln gin. Language of course is far broader and more neutral. PTO reads it broadly. Q is whether public would understand mark as identifying a particular living individual; if so, no registration w/o consent. Some fit model of passing off: ROYAL KATE for jewelry etc. OBAMA PAJAMA (this also seems like failure to function). But commentary, parody, and other public discourse are also covered by 2(c). TRUMP TOO SMALL for t-shirts.

Appeal to Fed. Cir. This is not viewpoint discrimination [well …], but it is content-based burden on speech, as Fed. Cir. has defined that term. Its reach is defined by the subject matter [like the rest of TM registration]. Is strict scrutiny required? Or Central Hudson? Fed. Cir. applied Central Hudson/commercial speech regulation in Brunetti. Does it advance a substantial gov’t interest in a way not more extensive than necessary? Gov’t argued that 2(c) protects the right of publicity. But even if true, the absolute bar is far more extensive than necessary, b/c no state applies an absolute ROP. Also creates viewpoint problem b/c Trump can reject any criticism but approve any praise. There are separate bars that protect against confusion, making limited interpretations of 2(c) harder. At oral argument, the panel seemed to dismiss the idea that PTO/TTAB should be applying First Amendment balancing tests and making distinctions b/t political speech/transformativeness. Vagueness problems would result if there’s not an easily administrable First Amendment test.

Wrinkle: registration may prevent others from using the same political speech, so registering the mark in some ways inhibits free speech. [Not that the SCt gave that argument any traction before.] Viewing 1A in purely negative terms, rather than as a guarantee of vigorous speech society. Current formalism is inadequate to come to terms w/conflicting values of free speech and IP.

Rosenblatt: do you see a difference b/t branding something as the name of another person and branding something as an expression that incorporates the name of another person. From a confusion standpoint, one feels more like passing off and the other more like speech. Trump is a good example b/c of all the Trump-branded things, which are very different from TRUMP TOO SMALL. Would JOE BIDEN tooth veneers be political speech?

A: yes, passing off is different.

RT: Totally with you that 2(c) does appear to flunk even intermediate scrutiny on tailoring grounds, but assuming that’s correct, what are we going to do about failure to function? OBAMA PAJAMA and TRUMP TOO SMALL have pretty clear failure to function issues. One consideration: F2F, among other things, has the effect of giving weight to the interest of other speakers of using the same term that the applicant is claiming as a mark because it’s ornamental or informational. But if there are vagueness problems with 2(c), F2F is much worse.

Mark Lemley: Sure there is plenty of vagueness in this as in all doctrines in TM law, including descriptiveness, but why isn’t the principle perfectly constitutionally acceptable: we will protect things that actually brand goods but not things used for informational content. Perfectly plausible const. line.

RT: I think that’s a fine practical answer but it needs to deal w/doctrinal weight Ct has given to vagueness in 1A context. My own view is that practical vagueness can’t be a barrier when it’s necessary to a system w/700,000/applications/year. At scale, there are vague boundaries to everything.

Aaron Perzanowski & Jake Linford, Politics, Copyright, and Tarnishment

Foo Fighters objected to McCain campaign’s use of music and complained it had potential to tarnish; Sam Moore objected to Obama’s use and said we’re worried people will think we endorsed you. In 2016, b/c of issues from 2012 and McCain, the ASCAP/BMI blanket license added an opt out for political campaigns. McCain was resistant to the usual campaign response of “we’ll stop using it”; McCain said “we paid a license fee so we’re good.”

Is there evidence of market harm from use by campaign? Is there evidence of reputational harm/use of song implies endorsement, or even in the absence of perceived endorsement there’s a tarnishing effect? Have some limited data about track popularity. People are tight-lipped about this sort of thing. Have found minor downward trend after use of one song by Trump. But one causal question: was this caused by use of song by campaign or by performer’s objection to use of song? May be able to look at geog. markets to see R and D effects, but not yet. We also have data on You Can’t Always Get What You Want and a Rihanna song, and don’t see any effects. Maybe compared to industry trends as a whole something will emerge but nothing yet.

Empirical tests of left-associated, right-associated, and made-up artists. Test groups will see news stories—one version: Biden or Trump played song at rally; variation: in keeping w/coverage of events when they really happen, prominent focus on artists’ demand that the campaign not use the song. Ask respondents to rate favorability, likelihood of streaming/buying tickets. Will also try to test endorsement. If a campaign uses a song, are they required to get permission from the artist? May be unlikely that people understand the rules.

Rosenblatt: would it make sense to pretest their opinions of the artists before showing them the stimuli so you can see prior views? Buying music is now a minor part of what people think about when they think about musicians.

A: toyed with that; hope is that the control group will give us a good read on popularity/recognition.

Silbey: Does intensity of reaction matter?

A: there is a range of reactions from artists; Neil Young. Talked about how to measure that but beyond the scope of this project. One prediction: effects will come from the artists’ public rejection—we don’t perceive the relationship until the artist calls attention.

Silbey: but artist may feel conection when the music is played.

A: definitely. But it may not be about financial consequences—visceral reaction of dislike for the politician. Just not clear it translates to the listening public. There is a universe of harm that we can’t measure with this approach. And it’s not clear that the law should give redress for that harm.