Fourteenth Trademark Scholars Roundtable, part 2

 Session 2:        Responding to Anachronisms

Introduction:   Mike Grynberg

VIP may tell us a lot about what the potentials are. Incrementalism: read Lanham Act along with other things like its common law foundations and First Amendment principles—not empty formalism; recognize normative component of TM. Semi-autonomous body of law with some principles of its own. Developments at SCt should give some pause about their reliability—textualism shouldn’t be simplistic, but Romag looks like empty textualism. Gorsuch’s opinion says the Lanham Act exercises considerable care in mens rea, which is then picked up by Jack Daniels; redefining section 43 remedies. This is in contrast to looking, as Leval did in Rescuecom, at what each change to the law actually did (whether you like that outcome or not). Hana Financial: tacking as a pure question of fact; Booking.com, the same. Questionable factfinding is a big route of problems in Rogers cases—like district court ignoring criticisms of P’s survey in VIP. Maybe TM automony is anachronistic as opposed to cts just glomming on to a particular test and not looking at radiating effects on TM system as a whole. Tam & Brunetti: wiping away bars and then putting pressure on failure to function as the limit on registration.

Do we prefer reconfiguration? Hard to do without statutory change. 1A and Article III standing are there, but worrisome; casualness over stare decisis does suggest courts are willing to look at things from scratch—Vintage Brands; Netchoice—everything might be up for grabs.  Courts could very well adopt a property frame, redefining what TM’s pluralism is about—free riding stories won’t go away, no matter how much people in this room want them to.

Laura Heymann: Don’t conflate goals of system w/way system is organized to achieve those goals. Does “brand personality” online change what TMs are about? What are user rights for: Democratization of brand meaning; access to luxury goods; something else? What does association mean in the age of brand persona, and what cognitive processes if any are of concern?

Be willing to let go of shorthands: LOC is probably not a useful concept for what TM is actually doing now; so too with distinctiveness and source identification in a world of licensing and outsourcing and merchandising.

Do we value easy to apply rules? Or more flexibility for new tech and interests as they arise? Courts get outpaced by market. But maybe we can learn from how other communities respond to changes—Twitter made retweeting part of the system, finding ways to give credit; TikTok too. Study Amazon: what do we learn from systems developed to serve some of the same purposes that are changing much more quickly than Congress or courts can.

Scholarship: help courts feel free to be more flexible?

Discussants:    Lisa Ramsey

Constitutional analysis, not just courts but also Congress! Shouldn’t be intermediate scrutiny on a case by case basis, but an overall reconsideration of the goals of TM law. Display on front of T-shirt: ornamental, decorative; have legislature consider purposes of TM and PTO as well to be gatekeeper to protect public domain.

Lifeguard example of abuse: threatens lots of users of “Lifeguard” on front of search; court denies attorneys fees when someone decided to fight and raise valid defenses of abandonment via naked licensing, genericity, etc.; the TM clamaint got out of it w/a covenant not to sue. Maybe more fees for prevailing Ds. Audience, speaker, and message must be considered when considering benefits of competition in marketplace of ideas.

Jessica Litman

Morphing of meaning over time complicates assessments of “anachronism.” 100 years ago, a TM was a fanciful or arbitrary word or symbol attached to a good at the point of sale, and nothing else was a TM. Other things were protected—by unfair competition. All the things we rail about were protected then by courts in equity, but we didn’t need a failure to function doctrine very much. Courts don’t know this, so when they are looking at the Lanham Act, not only do we have difficulty remembering the words don’t mean the same things, the people who wrote those words didn’t imagine they’d come to mean what they’ve come to mean. Textualist courts tend to make flatly wrong assumptions about what the Lanham Act was and was not trying to do. Makes it much more complicated to figure out whether a doctrine is looking at the world through a distorted lens b/c the world has changed.

Lemley: Logistics of this: one possibility is larger paradigm project that says we’re outside of confusion and here’s a new set of rules. Burrell points out the incentive is to write terrible rules, but there are counter-incentives; why do we actually have these forms of protection, as divorced from competition? Makes us articulate the answer to that question w/o relying on things from earlier and narrower vision. Attracted to Ramsey’s idea of using 1A, meaning that bad drafting can’t ruin it all for us. But how does that get implemented? Courts regularly strike down claims as applied? That still seems difficult. To be successful, it needs something like a Rogers equivalent for different doctrines. Every time a court uses Rogers, it’s covertly holding that it would be unconstitutional to apply a broader set of rights; we’re tailoring the test with this in mind. But the test doesn’t say 1A every time; you just use the test.

Ramsey: do it w/broad fair use/general rules.

Lemley: his instinct is for standards so that they adapt, but he gets that people have different preferences.

Goldman: how do we know when a rule has become anachronistic? If there’s no consensus, there’s no mechanism to move forward. IIC—not possible to get movement in Congress; and common law is a one-way ratchet. Sunsets are a way to avoid anachronism. But there’s no concept like that in the common law. Stare decisis is instead a barrier.  

RT: if you’re looking for speech protective tests that don’t require individual case by case balancing, we do have them by adding elements to the cause of action (e.g., we could add harm back in to the TM test): defamation has these too; patent/false advertising interface requirement of knowing the claim was meritless.

Linford: don’t trust legislatures to handle speech issues. Concerned about industry carveouts that seem to have been typical in last 30 years of © Act.

Sprigman: Does uncertainty mean confusion? “I don’t know” who puts this out could be claimed as confusion if you take that seriously. That’s the shapeshifting quality of the concept of confusion. Deception would be a different concept than confusion—confusion is too capacious a concept for what we’re talking about.

Litman: Deception is closer to the original meaning of confusion when we have now.

Ramsey: it’s in the purpose statement of the Lanhan Act! Textualists should love this.

Burrell: technically in the UK, passing off requires deception, and it hasn’t made one iota of difference, so don’t look there! It wasn’t enough to show “I wonder,” but you had to show a positive assumption. But what caused the distinction to collapse was that courts decided to accept that evidence of wondering meant that there were other, unidentified customers out there who would assume without wondering. Maybe that’s not enough for deception.

Sprigman: Beebe & Sprigman just finished a project on levels of certainty—it’s pretty heterogenous about what they expect. There are cases making distinctions b/t deception and confusion (e.g. cases say that inquiries are not evidence of confusion) but also authority for collapsing them (cases that say they are evidence).

Beebe: would also change the term “consumer.” We should stop referring to consumers. It’s a charged term that carries with it the whole law & econ approach. Marketplace deception; Dustin Marlan proposes citizen; at least “purchaser.”

All of TM law is now “branding” law, so he might just use that term. We now use the part—TM—to stand for the whole—reputation.

McKenna: a whole bunch of other terms we use now to denominate a category, like trade dress, that weren’t coherently defined under unfair competition b/c there was no need to define it. After Wal-Mart, attempts by parties to call anything trade dress show the wisdom of that—we used to have one line that mattered (technical TM) but now that’s not true so we need a bunch more terms.

I yield to know one in cynicism about changing words changing outcomes, but deception has some things going for it—in particular, deception tends to imply materiality. And it ties into harm. We have a whole bunch of ideas about confusion that are hard to link to cognizable harm, but courts tend to assume that confusion is itself harm. We have a whole body of law about fraud, and you never win a fraud claim by showing that a person wondered about something—you have to show that the person then changed their behavior as a result.

McGeveran: You confused me is a much different accusation than you deceived me.

McKenna: we can’t really mean that a state of uncertainty is actionable—if we did, “I don’t know whether X makes this” would be actionable/part of the “confused” group.

Fromer: every single word in TM is now weird: “secondary meaning” is both confusing and misleading. The reason is that TM in many ways has drifted from its narrower and different origins.

Ramsey: Rogers uses the phrase explicitly misleading; both of those words do work and perhaps allow more rulings as a matter of law.

RT: a word of caution: in false advertising, courts found it necessary to reinvent exceptions to false/misleading distinction, resulting in the doctrine of falsity by necessary implication: both the Rogers title v title exception and the terrible result in Gordon v. Drape are essentially trying to do that, the latter in a much less coherent way.

Lemley: Heightened standard for confusion is another way to say that—a sufficiently high number of people, even if not everyone, are going to be fooled.

RT: the problem is that LOC factors are really bad, including surveys, so a heightened standard won’t do much good unless you use different factors. One possibility: a double identity-type rule where same mark/same goods=necessary implication, which fits the examples in Rogers and Gordon v. Drape. This would be another way of handling what I’ve called speaker deception, a narrower concept than Lanham Act source identification.

Lemley: but that gives you no way to handle the Borden v. Borden situation [which I am not trying to solve]; once you’re past literal falsity, we’re then looking for a standard about what’s close enough and that’s difficult.

RT: Ambiguity is the touchstone in Lanham Act false advertising case: the D must convince the court that there’s at least one reasonable non-false interpretation of the claim at issue, and if so we move out of literal falsity into misleadingness.

Ramsey: We could cover false statements and statements that mislead as to source. [but what does source mean?] She would define source more narrowly, but would then have to decide what to do w/a survey that said 15% of consumers thought P was the source.

Mid-Point Discussants: Jeremy Sheff

Amicus efforts: are they doing what we want? [Cue Taylor Swift reference.] What else should we be doing if that’s not enough: drafting instructions? Other forms of education?

Stacey Dogan: begins teaching TM with hypotheticals, trying to draw out students’ ideas of affirmative goals in recognizing/enforcing rights + countervailing concerns. Every single factual context we encounter in the course uses this paradigm: argument in favor of recognition versus countervailing concerns. We’ve lost that balancing, but every single TM doctrine should consider that balancing. Think about that with an eye towards stakeholders: purchasers, citizens, consumers of speech, creators and speakers, competitors (we often think of them in their role as providing better or cheaper products in particular markets, but there’s a broader way of thinking of them as contributing to a creative and dynamic innovation system).

We’re troubled by analytical incoherence, but we should focus on what costs the system is imposing on these stakeholders. Antimonopoly movement is giving us a model right now: openness to thinking critically about our version of capitalism. Color and shape of drugs as assisting elderly patients know which drugs to take when: example of the kind of evidence of costs associated w/TM rights. We shouldn’t just be reactionaries but embrace an affirmative theory of TM law that isn’t based on the early 20^th century but that is more responsive/reflective of current commercial markets.

Bob Bone: We have theories but not agreement on them. TM as an institution can’t do everything; we should consider the core features of the institution. Knowing that something is anachronistic doesn’t tell you what to do about it. Strategy is extremely important.

Lemley: Assuming we don’t get to rewrite the statute, we should think about what to do instead.  Antitrust is one place; right to repair movement that might get some bipartisan support as well as substantial business opposition. People understand what it is to have something break and not to be able to fix it. Dovetails perfectly w/some aspects of TM reform. Environmental movement is another possibility: one thing that the response to climate change will involve is reaction against mindless consumerism, and there are ways to harness that for coalitions, or at least for persuasive arguments.

RT: Dogan’s contribution makes me think about the effects of doing balancing internally to a doctrine v. adding defenses: Florabama case is a really intriguing example of the potential difference where the court’s view, and especially the concurrence, frames the question as interference with a speech right first, making balancing unlikely to occur or, if it occurs, to weigh in favor of the TM claimant. Rogers itself did something a bit different: it engaged in categorical balancing of First Amendment & TM rights and then announced a replacement test. The Ninth Circuit followed suit, as did the 11^th.  Rogers as defense after infringement is found, by contrast, would seem likely to behave very differently—once you have already decided there was infringement, excusing it seems harder; same thing is what destroyed descriptive fair use in the 9^th Circuit on remand from KP Permanent.

Dogan: This is a very subtle distinction but worth considering: even rule-based doctrines may reflect balancing even if they don’t call for balancing within the individual case, and that’s what we should think about presenting.

Linford: humans may be wired to think of free riding as unfair. Language of unfair competition invites those common intuitions.

McKenna: right of repair, first sale are good places to look for intuitions/coalitions about what is fair competition. Courts don’t just follow the empirical evidence; there’s deep normativity in these doctrines even if they aren’t self-conscious; implicitly sometimes courts limit the universe of confusion, especially in first sale and nominative fair use—that’s categorical balancing. It has built in structure that tips the balance strongly in favor of speech but isn’t a free pass. Reminding courts that categorical rather than retail balancing is often the best path is a good approach.

Bone: part of the rejection of rules is the fear of firms strategically responding to the rule—e.g., a TM use requirement in Rescuecom—and abusing it. He thinks we can respond to abuse of the rule in the future, but courts clearly do want to threaten liability in the existing standard rather than dealing with abuses as they arise. [I think this is related to my point about asymmetric design against abuse: the fear is almost always of the imagined infringer, not the abusive TM claimant.]