What's next after Elster?

UNH symposium: Section Two Small

Panel III - What’s Next? Moderated by Peter Karol, UNH Franklin Pierce School of Law

RT: Organized my remarks in response to the oral arguments in Elster, hopefully not too repetitive. Strong job by gov’t lawyer, including responding to the questions that asked how © could be distinguished from TM; the government was attempting to resurrect the argument that TM registration is a gov’t benefit; that is, denying someone a government benefit for their speech is different from a ban on their speech and can be content based, even if it can’t be viewpoint based. Although Tam rejected that argument, some of the Court seemed to have buyer’s remorse in Brunetti, recognizing that almost all of TM law is content based; if we’re going to have a registration system at all, we need to make some content based distinctions.

Justices asked Multiple questions about copyright law: even experienced lawyers may conflate copyright and trademark. But I didn’t hear ignorance; I heard Justices seeking to write an opinion reversing the Federal Circuit limited to TM law and asking for guidance on how to do so.

So: if the gov’t can bar registration of a TM including a disparaging reference to a person without that person’s permission, can it also bar you from a © registration if your work disparages a living person? Although the government’s response was fine as far as it went—that © is a different regime with different traditions—it didn’t explain why copyright was different, presumably because that would have started to sound like an unconstitutional conditions analysis which the government didn’t want to risk. The fact of the matter is that copyright is interested in incentivizing creative expression, and whether that expression is about a living person without their permission is irrelevant to copyright’s purpose.

If you just simply say “there’s no tradition of doing this in copyright,” by contrast, you can’t explain why or when you might draw analogies or recognize limits.

Consider, for example, whether Congress could enact a law denying TM registration to entities in the business of producing pornography, or denying registration to marks that refer to pornography. Or abortion. Those are content/speaker based, but are they in any way related to the purposes of TM? To the contrary, they harm consumer protection and business development and have to be understood as punishing a business Congress disagrees with. That would seem to raise serious unconstitutional conditions questions. But the Government’s approach would make it unproblematic.

Unfortunately, the Court’s choose your own adventure approach to history was very much on display in some other exchanges.

For example Justice Gorsuch said: “there's a long historical tradition … of the living-person name, just as there is with geography and other things like that.”

And that’s just completely untethered to the actual history

--no substantive federal TM until the Lanham Act; first attempt struck down as unconstitutional—a tradition that is younger than my parents is not usually the kind of tradition the Court’s current majority pays attention to

--no tradition of requiring consent for registration or use of marks that demean rather than impersonate, whether at the state level or otherwise

--no tradition of treating the fame of a person as equivalent to the secondary meaning required to generate rights in a name alone; the common law would not have understood the idea that Trump could have blocking rights in fields he wasn’t exploiting, or rights against nonconfusing uses even in fields he was exploiting.

History seems to be wielded extremely selectively even in relatively unpoliticized cases, which is perhaps a cautionary note about using traditions generally.

Meanwhile, Elster was essentially arguing for a type of unconstitutional conditions analysis. The gov’t sought rational basis review, whereas Elster argued that the restriction had to be reasonable in light of the gov’t program: Which raises the question: is protecting a person’s dignity beyond potential confusion a reasonable basis? What else would be allowed by that (GIs, flags).

Strongest argument for Elster: protecting dignity against overt criticism is not reasonably related to the acceptable purposes of TM law, and enacts the same sort of viewpoint based tilt as in Tam where praise of groups was ok but criticism was not: if that’s viewpoint based this should be (of course Tam might have been wrongly decided).

Although this case is about registration, it could very easily have implications for infringement. If the Court insists that Elster has the right to use TRUMP TOO SMALL on the front of t shirts even without a registration, and that he couldn’t be prohibited from doing so, even though there is a legitimate interest in prohibiting source-indicating uses of an unconsenting person’s name, then that will suggest a more formalist version of what counts as a trademark use.

Consider for example this argument by Gov’t: “As long as [Elster] can use the expression and as long as he can obtain the benefits of trademark registration by choosing a different source identifier to distinguish his goods from others, he has all he needs [for his free speech]”

This concept of source identifiers is very important: it has to be somewhat normative if we are preserving his ability to use the expression.

But, caveat, compare Booking.com where the Court seems to think that TM has no normative components, it’s all empirical about what is functioning as a mark: the limit case is when TM owners convince 15% of consumers that any reference to them at all requires permission and so there’s at least a 43(a) violation in any unauthorized reference—the Court seemed unwilling to deal with that scenario, which fits the facts of a number of the Rogers cases it distinguished in JDI.

Everything here turns on what the Court understands “trademark” and source identification to mean; if any use that causes any confusion about anything is actionable, then the Court will be allowing huge amounts of speech suppression, but if it adheres to the idea that trademark, source-indicating use can be objectively identified and doesn’t exist merely because there’s some kind of confusion, that can point the way to a workable regime.

My main worry is that the Justices have no interest in the fact that lower courts have routinely considered the existence of confusion about something, including about whether the TM owner gave permission for an accused use, as proof of trademark use.

For example, Justice Jackson said: “trademark is not about expression. Trademark is not about the First Amendment and … people's ability to speak. Trademark is about source identifying and preventing consumer confusion.”

That has to be a normative concept of source identification! And it’s incoherent (if things are confusing, it’s because they send a message about source or sponsorship; she has to mean that trademark infringement is not about protected expression—but that doesn’t really explain what trademark registration is about.)

Justice Jackson’s indifference to expressive elements of TMs also conflicts with the Court’s previous claims in Tam, and even Jack Daniel’s, that TMs themselves often have lots of non-source-indicating expressive meaning. Court can’t seem to figure out how to handle that duality, which continues a tradition of courts pretending that TMs are pure information-sharing devices unless they are also badges of honor—related also to the rapid and stunning about face in the political valence of commercial speech doctrine, which has contributed to the Court’s hesitance to say anything about how to link TMs to commercial speech

Pending PSU case may give us some insight on how a court might think about these TM issues post-JDI and Abitron: use on the front of a T-shirt with distinct branding, does it matter that the front of the T-shirt shows public domain, historic images referring to PSU?

One final comment about Gov’t examples, offered as a reason that 2(c) covered ground that (a) and (d) don’t beyond just preventing critical uses:

“If the Los Angeles Lakers described their product as Jack Nicholson's favorite team or the Chicago Bulls describe their product as Barack Obama's favorite team or a restaurant in which a senator has had dinner, uses the slogan, Senator X Ate Here.

And none of those would really be excludable under 2(a) or 2(d) based on the false suggestion clause because they would imply a connection between the living individual and the product, but what it would be a connection that actually existed.”

First, that just seems false about how the PTO would treat such applications. Second: If the Court agreed that these statements were truthful and didn’t create a false connection that would be fantastic! Right now lower courts would readily find false endorsement because even if the statements are true, the people at issue didn’t agree to have the company promote those things.

Jasmine Abdel-Khalik, University of Missouri-Kansas City School of Law

TM gives a power to suppress speech of third parties; this matters.

Identity disparaging terms are not used in a vacuum; the intent of TM owner is that others will use the term to identify their product. And sometimes that will be to avoid association. But if you choose to wear a Burberry coat, you’ve made that choice. What about the rest of the audience that doesn’t want that affiliation? The only way to refer to that product is to use the TM, e.g. the former name of the Washington Commanders—you become a “captive speaker.” So registration is both giving rights to exclude others’ speech and force the audience to use the name to explain what they do or don’t want to engage with.

History of barring disparaging speech. [Equates defamatory and disparaging; I don’t think that’s accurate, among other things because of the difference between truth/falsifiable statements and nonfalsifiable statements.]

Merchandising cases: part of the problem is that our rules for merchandising are too expansive. Makes more sense for a preexisting business that then makes promotional items, as opposed to a business focused on merchandising messages like “Live, Laugh, Love.”

Alexandra Roberts, Northeastern University School of Law

Substantial overlaps in 2(a), (c), (d). Also note this is not the individual vetoing the use—the PTO says consent is needed.

ROP and dignity claims: is that really what TM is for? The Fed. Cir. Says the gov’t has no valid interest in restricting political speech. Elster: gov’t has no interest in facilitating unconstitutional application of state law. Are there any implications here for a federal right of publicity if the gov’t accepts the goal that is not preventing confusion or aiding the flow of commerce?

Michael Keyes, Dorsey & Whitney

Will Bad Spaniels’ new disclaimer get them out of the doghouse?  Replicated the Jerry Ford survey that found 29% net confusion over all questions (who makes or puts out, affiliation, permission); respondents had to acknowledge that they could read the hangtag. Showed the new hangtag that has the survey questions and proposed answers, with the answer to “why” being “because I’m smart.”

71/216 still said “Jack Daniels” in response to at least one question, 33%. Only 5 people entered “because I’m smart.”

About ½ of confused respondents from both surveys said JD in response to 2 or more questions (48/53%).

On just authorization/approval, on original study 23 out of 67 believed needed JD approval or authorization.

On followup, only 5 of 71 believed that JD’s approval or authorization was required.

But a big jump in those who thought there was a “business affiliation” between VIP and JD—went from 6% to 30%.

What happened? Consumers articulated there were visual similarities in the verbatims.

“Because it looks like a bottle of JD!” “Because they look alike”

Takeaways: disclaimer significantly decreased number that thought BS needed approval or authorization but also appears to have increased the number of consumers who nonetheless believed there was a connection b/t the two companies, netting the same.

Maybe this disclaimer is just too much? People seem to have looked at it to answer the questions differently.

Q: how do we know what people understand “authorization” to mean?

A: we don’t, but that’s the language of 43(a) [though presumably in 43(a) it has a meaning!]

Q: is the disclaimer just too long b/c people don’t read?

A: maybe, but the authorization answer change is interesting. Only 5 respondents read and followed the directive at the end.

Roberts: is the interpretation that the respondents read the hangtag and didn’t believe it? [or from an interpretation of “business affiliation” that includes “this is a reference to that”]

Is this really a point of sale disclaimer if people are buying online?

A: Agreed on point of sale. This survey format is not designed to plumb the depths of understanding of authorization or approval. This is only one variation between the two—test and control. Clearly there’s a difference in responses about authorization in the two surveys. We don’t ask what they think authorization means. That’s not why we do surveys.

Abdul-Khalik: these may be badly written questions, but we also accept that courts accept them all the time.

A: you can say they’re vague and ambiguous but they’re used all the time and you’re trying to replicate market conditions. Can’t tell you why there was a big shift between authorization and business affiliation. But in the “why” answers they said “because they look alike,” which is the insight we can glean into consumer state of mind. [Yeah, that’s I think the point: that they seem to think “business affiliation” and “look alike/reference” are the same thing—or at least you don’t know what “business affiliation” means to them, and it’s a lot more vague and meaningless than “authorization/permission” or “who puts this out?”.]

Linford: we tend not to control for education in these surveys, and that doesn’t get tested; we tend to have class biases and an objectively reasonable consumer standard would leave behind the relatively uneducated consumers. So surveys could be useful (if they were capturing the whole market—which they aren’t always, especially given that online respondents are likely to be more educated/wealthier).

A: agreed that this could matter.

Q: what about flags?

A: The rationale is very similar to 2(c): don’t want the gov’t involved in the indignities of commerce—even if the gov’t is the applicant! Courts also worry about handing gov’t agencies the power to suppress speech outside of a targeted anti-impersonation law; TM rights are too broad.

Q: dilution’s fate?

A: we hope so.

Roberts: yes, there was a lot of focus on confusion, but oral argument also featured bits of propertization: it’s my name so no one can use it without my permission. [That helps explain the bad statutory interpretation of JDI where they used the use as a mark constraint on one exception to interpret another exception that very explicitly does not have that constraint.]