Introduction:
Rebecca Tushnet
What might we derive
from things the Court has said about trademark of late?
The purpose of
trademark is consumer protection; source-identification is the most relevant
consideration but not the entirety of TM law.
[see also Booking: once source identification is shown, all other issues
are dealt with as limitations on rights/incorporated into the confusion test.]
Maybe to this we can
add in Dastar. Source/origin and control over quality is the core of TM and has
special relevance when trying to figure out what rights the plaintiff is claiming
to own; sponsorship/affiliation is of lesser importance, albeit still relevant;
sponsorship/affiliation might be better handled under 43, which could have stronger
guardrails; consider Lexmark as a case about 43(a), which the Court says it is,
and not about 43(a)(1)(B) only. In that case we have a zone of interests test
and a proximate cause test—adding in a harm requirement at least for claims that
sound in 43(a). That could also address some of the Article III standing issues
I’ve been encouraging people to raise.
Compare what’s said
about source/TM use in Abitron; use in commerce as a separate requirement after
Abitron: bona fide is going to give us some trouble but not necessarily a lot
since it is explicitly contrasted with not reserving rights, so it could also
help identify non-source identifying uses.
I was particularly
interested in doing a deep dive on the idea that the Court thought that both Dogan &
Lemley and Dinwoodie & Janis were right, when most of us understood the
two articles to be debating with each other.
Dogan & Lemley: This
article, especially the passage cited by the court, seems to envision a
“trademark use” requirement less as an affirmative test for infringement, and
more to exempt non infringing uses from liability for an absence of use.
Dinwoodie and Janis
taken out of context? They argue that trademark uses are more likely to
infringe, and non-trademark-uses are less likely to infringe, but that using
this dichotomy as an “approximate” in the interest of efficiency is outweighed
by complications that render individual cases (specifically in the example of
keyword purchases) distinct. But if Rogers survives, that’s what it does. Meanwhile,
valuable speech that is source-indicating gets some variant of the regular LOC
test.
The ridiculous
approach to dilution: because one statutory provision says use as a mark, the
neighboring one that doesn’t use that language must also have that concept: As
Graeme Dinwoodie said to me, even if you don’t agree that expressio unis should
mean that the noncommercial use exception doesn’t have a use as a mark
requirement, you should still easily recognize that the 2006 revision of
dilution was designed to expand the defenses, not contract them.
What if we could
read that part of the opinion in ways that were less awful?
Use expressio unis
to get at the fact that the noncommercial use holding is limited to situations
where the challenged use is “used as a mark for a commercial product”; the term
noncommercial use can reasonably include uses as a mark for political
speech—Robert Kennedy, Jr., is using his father’s famous name to promote
himself politically (also highlighting the importance of small differences when
it comes to speech in the political realm). Things can be source identifiers, without
being commercial source identifiers (United We Stand): confusion but not
dilution actionable
Jack Daniel’s didn’t
purport to decide the full scope of the “noncommercial” exclusion. It held:
On the [Ninth
Circuit’s] view, the “use of a mark may be ‘noncommercial’ even if used to sell
a product.” However wide the scope of the “noncommercial use” exclusion, it
cannot include, as the Ninth Circuit thought, every parody or humorous
commentary.” However, the Court concludes: “Today's opinion is narrow. We do
not decide … how far the ‘noncommercial use’ exclusion goes. … On dilution, we
hold only that the noncommercial exclusion does not shield parody or other
commentary when its use of a mark is similarly source-identifying.” (Reference
is to the use of Bad Spaniels as a mark for dog toys). Given that the Supreme
Court has also cautioned not to read its decisions as if they were statutes,
it’s arguable that use for political speech should fall into the noncommercial
use exception, which courts have generally read as covering “noncommercial
speech” as that’s defined by the First Amendment.
What about the use
other than as a mark limit in the parody/commentary exception itself? Is there
any hope there for parodists? Other scenarios: Howard University Alumni
Association should be understood as NFU outside the scope of dilution, as long
as it’s a truthful representation—it’s not using Howard as a mark but rather
the unitary mark Howard University Alumni Association; the exclusion doesn’t,
like other parts of the statute, refer to uses “comprising” the famous mark. There
is something intuitive about the idea that someone who names their organization
“Americans Against Trump” is not “using” the famous trademark “Trump” “as a
designation of source” for their own goods or services—they are instead using
the phrase as a whole to express opposition to Trump, which is the opposite of
using “Trump” as a source identifier.
Mark McKenna: TM is a
creature of common-law courts and we don’t live in that world any more. SCt
used to do private law dispute resolution: Kellogg, Mishawaka, Singer—it’s
treating it as a tort. Scatter plot: common law reasoning doesn’t look to deduce
from a statement of a rule down; you build a rule by accretion over time and
each case is a data point. The line you draw never captures all the lines;
sometimes you see multiple lines emerge and then you can evaluate why. But law
doesn’t develop top-down in this model. For the most part, that’s how we built
TM and unfair competition.
SCOTUS is now a constitutional court, not one that resolves individual cases,
and that’s now apparent in all these cases. Politics of how SCt Justices are
chosen now matters too: they aren’t picked for being good at law generally, but
for views on hot-button issues. Most have never really been lawyers. They were
movement/administration/academics. They’re not doing ordinary judging.
But when we have a
statute with the common law model baked in—tells you very little about what it
means to violate the rights at issue—the Justices now have a very different
idea of what they’re doing, and they think they’re doing textualism even when
the statute is misfitted to that, they don’t have the toolkit to do the common
law reasoning. Romag is a clear example: there’s a complicated history, and
figuring out how to think about it in light of TM’s evolution over time is
hard. But the Court says: we found this one case! 1881 DCt of Alabama. The idea
that finding one case in common-law reasoning matters is ridiculous. How can
you even engage the conversation when it’s a trump card to say “that can’t be
the rule b/c I found one case that says something else.” You can also see it in
Tam & Brunetti—little interest in how TM works, the relationship b/t
registration and enforcement, even though that’s central to the Lanham Act.
Also JDI and
Abitron, where the Court grabs a bumper sticker: focuses on one term in the law.
Citing both Dogan/Lemley and Dinwoodie/Janis is a good example: those articles
don’t say the same thing.
What is to be done?
SCt should get out of business of doing IP, but it’s too late. Even from 20
years ago, it’s a big change—Wal-Mart, Traffix, and Dastar were trying to
resolve hard questions and details of doctrine that affect how things work on
the ground. The 20 thousand foot view of today is a very big difference. They’d
look for some little snippet of text in the Lanham Act; Scalia was a textualist
but he could read a law in its entirety. The way we’ve trained a generation of
judges to think about law is so different and the suppositions about how law
gets done baked into the Lanham Act don’t work any more.
Christine Haight
Farley. The Interamerican Convention enters the chat! That’s a missing link
that helps explain why so much is unstated in the Act. Rogers had been trying
to pass a law, and he didn’t think Congress could enact substantive rights; he
was given the opportunity to write a self-executing treaty that was written
like a statute, for civil law countries. When the Lanham Act passed, he was
convinced it incorporated that already in section 44.
The accident that is
43(a) is also part of this story. It was meant to have a bounded agenda; only
in legislative history, when witnesses noticed section 44, they suggested that
43(a) was more appropriate for unfair competition. Rogers would have been floored
by what came of it.
Congress delegates
to INTA, AIPLA, ABA the role of drafting, and that goes all the way back to
Rogers. How did TM use get into an exception to an exception? It was supposed
to be a limitation on the dilution right, but INTA said it should move and Congress
was none the wiser about the effects.
Codifying 43(a)—but without
codifying LOC, spectrum of distinctiveness, etc.—b/c the TM bar sensed a risk
of loss, of limitation. No one in the TM bar has an interest in cleaning up
things like that, but it means nonexperts don’t get much guidance.
Also helps explain 1962
expansion of confusion; 1988 constructive use; dilution; ACPA. From 1988 on,
Congress is doing substantive law, and special-interest revisions like the
Anti-Monopoly revision.
What about the
courts? The Court seems to think TM law is working really well. There might be
little problems but overall it’s a well-oiled machine. It doesn’t see what
dramatic changes have occurred in TM law (or that they’re a problem). Only when
it’s really doing private law can it see a plaintiff’s overreach. Doesn’t have
a sense of the policy landscape. Breyer, Ginsburg, Scalia had more of that
sense; Justices now focused on different landscapes. Elster might be a way to
get some of that landscape back. Gorsuch is interested in history of old Acts
and TM Office doing public policy that’s a little broader than source/origin
confusion. [Although he seems wrong on the facts about what they were doing.]
The working
relationship of Congress/SCOTUS provides an opportunity to hide the ball about
change, especially in 43(a): Congress says “all we’re doing is codifying common
law” and Court says “all we’re doing is applying what Congress wrote.” But
somehow there’s a big change between Sears/Compco and Taco Cabana. Sears/Compco
said there was a right to copy things in the public domain; how did that go
away?
Dinwoodie: Non TM use
is an important variable—something that affects scope of protection not outer
boundaries, and that worries him less b/c it’s not a dispositive binary
variable. But now you have to analyze it like that (which you see badly in the
post-JDI cases); if you fall outside out of the line, the consequence is just
in the test/scope of the right. You can see that where we have use as a mark in
other tests—KP Permanent—courts have started to use the three elements more as
a spectrum—how descriptive is this? We might be getting to the stage in the
evolution where TM or non-TM use is a relevant variable, which is consistent
w/both articles. Agree that source/affiliation is one way to draw the line, but
that is itself not an easy line to draw—standing behind is not an easy line,
but as a variable it is less worrisome.
Rescuecom: is it
overruled? Only if you believe they’ll stick with their statement about the definition
of “use in commerce.” Which he doesn’t; the opinion applies that reasoning to
32 and 43(a) both. Nobody thought that through—it was a bumper sticker, as
McKenna says. Rescuecom will survive a bit longer.
[I think you could
say that when you claim to have a “mark” subject to 43(a), you use the relevant
definition, but when you’re asserting some other claim under 43(a), you don’t
have to do so.]
They seem to think
the multifactor test is mandated by the statute, but it’s not, so maybe it’s
the statute + some principles drawn from private law? Once you go top-down, it’s
hard to figure out what other nonstatutory stuff will be in play.
Do we have faith in
judicial innovation? RT’s approach is a bit more top-down but we’ve had some success
with bottom-up—do you still make the point that the 1962 legislation was trying
to do something specific or do you give up? Do you still point out that Congress
endorsed Rogers in 2020? Or do you accept the corroded structure and do something
else?
Jeremy Sheff: Not
just judges trained this way now but how lawyers are trained, the materials
they have, and the way they are trained to use those materials technologies.
The clerks who wrote Wal-Mart were the first generation to get unfettered
access to Westlaw. Before, you pulled a treatise off the shelf who’d been
written by someone who read all the cases and condensed them to explain what
they mean and which the most important ones were. JDI, which cites articles
with “TM Use” in the title, is now the model—that’s how lawyers work now, dealing
with huge volumes of materials that they can’t wholly assimilate. The scale is
different; the human reviewing cases and synthesizing them is not the model
now. We’re encouraged to look for the snippet that matches our claim and no
further. This issue is not going to go away.
Similar with
registration agencies—a firehose coming at them. Better algorithmic detection/AI
won’t necessarily be a better way to deal with that. We should think about how
we could train lawyers to be better at this.
Mark Lemley: This
isn’t a TM problem. This is a law problem. The Court, across a wide variety of
doctrines, isn’t just replacing common law with statutes even when statutes
were written with common law in mind. It has embarked on a project of abolishing
equity. Not clear why, but definitely doing it, e.g. in Romag. There’s one
basic rule of disgorgement: you need to be a bad actor. But the Court doesn’t
look at it that way.
Yesterday’s ©
arguments are the same. Ten years ago they abolished laches, creating a
nightmare of 40-year-old claims. Yesterday’s argument was whether the discovery
rule applied to the 3-year damages rule; several Justices across the ideological
spectrum asked “why should there be a discovery rule in general?” Equity
existing alongside the statute is being taken outside the law. Not clear what
to do, but you can’t solve it in TM because it’s not a TM problem.
Dinwoodie: maybe it’s
worse in TM, b/c you don’t have political commitments at least telling you what
will happen.
Lemley: yes, part of
the issue is you’ll see a random walk. They weren’t particularly interested in
helping TM owners get more $, but they were interested in identifying a couple
of words in the statute. Star Athletica is the same way; in the absence of a
precommitment around constitutional issues, it’s weird. When the statute was written
will make a huge difference too, b/c Congress has responded by writing statutes
like the tax code. The earlier statutes will be interpreted in weird ways, see
Warhol, b/c they were written against a backdrop that we now pretend no longer
exists. Is the solution a European style detailed regime? Don’t love that in TM
but that is the obvious response.
Jake Linford:
Thinking about Rogers, JDI, and Dastar: is there a throughline about the line
b/t © and TM? Maybe JDI is suggesting subtextually that there’s a place for
Rogers, and what we mean is works that could qualify for ©. [But the VIP bottle
clearly could!] It’s about maintaining lines and Rogers then helps maintain the
lines. If that’s right, we use expression as another form of heuristic, like
use in commerce/use as a mark. The danger is distortions of the parody/satire
line in ©.
Standing makes him
nervous b/c of privacy. The SCt uses standing to take power and ability to get
relief away from plaintiffs it doesn’t like. TransUnion is a big example;
Congress didn’t satisfy Court’s wisdom about who should get relief. Would be
surprised, given Tam/Brunetti/JDI/Elster trajectory, if Court said we think TM
plaintiffs generally ought to be denied relief based on our gnomic
understanding of standing.
What you’re seeing
is cross-licensing/branding. A move among many of us as scholars to say there
should be space for artistic uses, and if we see a lot of Nike collabs and make
statements about who it wants to collaborate w/or not, perhaps that sends
signals that matter to consumers, and if we want to reflect how consumers
interact w/markets, that might lead to rights expansion. Maybe
sponsorship/affiliation reflects what brands are doing and how consumers think.
We’re trying to return
to a “pure” state of common law: source confusion, double identity. Not sure
that’s a better world, but regardless the mechanisms we’re using aren’t fit for
purpose, like the First Amendment or standing b/c we think they’re more
essentialized and the Court might listen to us about precommitments like that
instead of TM policy. Perhaps you can get that, but do we lose something in masking
the policy intuition behind a technical tool to get us there.
On Sheff’s point: if
you trust the treatise writers, then great. If you don’t, does the search
engine help? Maybe, maybe not.
RT: On ©. The bottle
is ©able.
On standing: Agrees
about prediction that it won’t be much help, but: What is law for? If it’s not
for making reasoned distinctions, then it’s nothing. And there’s some value in
explaining the inconsistency and challenging the TM harm stories; some judges
even listen.
On sponsorship/affiliation:
courts don’t inquire into how it’s done, though. If we listened to what brands actually
do and what consumers actually see, they see Nike x Common, the dual branding
is all over it. But brands don’t signal a collab by having the red wax seal on
one bottle of liquor appear on another bottle with no other sign of
collaboration. They put it all over! Courts actually ask whether consumers
would, e.g., expect a movie company to do cross-branding with a software
security company, but they don’t ask, is this how consumers are accustomed to
seeing collaborations identified?
Jeanne Fromer:
participated in drafting sessions for TMA with Farley & Beebe—were able to
advocate for some changes. Allow PTO to unilaterally cancel marks. Another
issue: the SG’s office is critical. They often come up with strategies to win
that don’t make sense in the larger context of the body of law at issue.
Dinwoodie: SG takes
positions they think the Court will listen to, and that methodology bleeds over
into other things/methods.
Fromer: hard to know
the chicken from the egg.
McKenna: The SG’s
JDI brief made egregious legal errors, hope they’re not going there.
In teaching, try to teach
students where the rules came from, and maybe that’s what we need to be doing
more of. The rules don’t drop out of the sky but evolve. Another big difference
along with legal research is that the TM bar used to be small; now the money is
good so lawyers not really trained as TM lawyers are litigating these cases;
generalists that pick & choose things—you hear that in the arguments. The
SG wouldn’t have put in a brief in older TM cases; the Court asks the SG b/c it’s
now thinking of itself as a constitutional court.
Dinwoodie: judge
discussed how he would have benefited from learning more about functionality
from parties; he looked at the dictionary definition.
Ramsey: standing and
1A seem to have a relationship in examining government’s interest and harm/causation
stories. Jennifer Rothman has written a paper about history of protecting names
of presidents, etc.; may be source of Gorsuch’s interest. So scholarship about
history may be important.
Robert Burrell: Australian
trend—lot of $ coming in to TM, and so nonexpert lawyers are coming in and
litigating, often to damaging effect. See less in UK w/specialist bar and
specialist judges. How do we as a community flag “here there be dragons” or at
least “there are other cases that have considered these issues”? We can do it
in part by embarrassing judges when they get it really badly wrong, but how we
persuade other members of the legal community that they might want to find some
things out before giving it a go is a question.
Farley: Court loses
forest for trees in these cases, and then sees only a cartoon forest. Could we be
painting more accurate pictures of the forest in these cases so they see where
a case sits and what the impacts will be? Scholars used to write short “forest”
pieces, and one of the ways the world has changed is that law reviews like you
to solve a problem/make a recommendation, but there’s room to speak for the
trees.
Mid-Point
Discussants: Jessica Silbey
Compare what’s going
on in patent & © specifically: feels better about TM cases than about
patent and © generally speaking, which is worth thinking about. The only © case
that went well recently was PRO v. Georgia, but © was bad before—Eldred, Golan,
Tasini. We did have some thoughtful TM decisions—Qualitex, Traffix, even Two
Pesos, Moseley might have been a mistake but got fixed by Congress. But still
evidence of hubris: armchair consumer psychology in Wal-Mart etc. Nostalgia isn’t
accurate as to cases like KP Permanent, which were doing policy too. So how
does the Court do IP more broadly?
Methodological
shift: deciding cases on administrative agencies, jury questions. It will be busy
making claims about separation of powers, role of jury in rights/property
claims; the idea that won’t have effects on statutory schemes like TM is ludicrous.
It will affect the TTAB. The cross-disciplinary effects of its methodological decisionmaking
are profound. So what the court says v. what it does: SEC v. Jarkesey—it’s
going to say that the ALJ cases that sound like common law should be brought in
court before a jury. What is the role of the jury in TM? We can talk about
courts’ power, but will it throw everything to the jury? Full of its own
self-worth as judges being gatekeepers. Judicial supremacy: this Court is all
about its own power, so it will say juries are important, but really it is
creating more gateways for it to decide cases. Where is factfinding required?
Distinctiveness, abandonment, etc. Where’s the influence that advocates might
be able to exert on the divide b/t law and facts?
Appellate courts:
there will be tension b/t Fed Cir and regional circuits. As Fed Cir decides IP
cases v. 2d/9th, will we see different kinds of SCt decisions w/r/t
Fed Cir? Insiders versus outsiders: con law phenomenon is spreading.
Opportunity to figure out who those insiders are, including the SG.
Helping TM to be its
best self, whatever that might be. Provocation:
TM restatement! Less controversial than ©; who gets to decide gap-filling
questions and what justifies them being the decisionmakers? The development of
the common law in TM is its own force, and that calls out for the idea of competing
treatises, which a Restatement could be.
Bill McGeveran
Who is a good
guardian of public interest in things like speech and competition? A common law
approach assumes judges will guard the public interest. A delegating structure
assumes that admin agencies will do so. More specific statutes now are Congress
reacting to those responses and trying to embed a view of the public interest
into the statute itself. The Lanham Act is clearly a product of common law, but
Congress passed plenty of other statutes in the 50s, 60s, and 70s. Where is the
public interest being guarded in those statutes? Antitrust is another capacious
common law statute, but there’s been enormous normative struggle—Chicago School
monopoly definition of monopolization, and then countermovement. Big, dominant,
coherent approaches to the public interest permeate antitrust lawmaking. Also,
FTC and DOJ really matter. SEC is similar: the regulator really matters. The
text of the statute doesn’t cover all the regulations, where the public interest
is guarded. Privacy/consumer protection: FTC has jerry-rigged a guardianship of
the public interest; California also passed a specific law with a specific
agency (which Eric Goldman loves). There’s an understanding of where the public
interest is supposed to reside.
What about IP? The
statutes have been amended to make them more and more specific; © and patent
have had comprehensive rewrites since they were created in the common-law era.
But they all have this issue: where is the public interest in a common-law structure
implemented by the statute? It’s supposed to be the courts, b/c the statute
doesn’t embody the specifics. But there aren’t a lot of other old-fashioned
statutes with gap-filling common law that are operating anymore. The
registration process has some of that, but registration isn’t the primary or
only mover here. Nobody has their hand on the tiller.
RT: [Point about
sending everything to the jury: it’s easy to say that won’t happen, because
there aren’t enough courts and juries, but another possibility is that the
system really won’t work/we’ll get decisional paralysis: Indian judicial system
has seized up—in practice, you just don’t have rights. Will businesses be ok
with this? Compare responses to mass arbitration—they do have incentives to
change the law when the law stops working for them.]
McKenna: there’s a
big difference between wholesale judgments about what’s on the whole more
likely than not—Wal-Mart and the other classification cases—we make those
wholesale judgments b/c of the countervailing concerns like competition; very
different from the Court’s current approach, which is that everything is retail
and has to be decided using concepts that won’t be filled in by the Court. Very
different concept of institutional actors. Generalization is itself valuable,
but that feels like it was abandoned.
Registration’s
getting more important, so maybe the PTO will be more of a guardian of the public
interest, b/c Amazon has forced that role on them.
Sheff: Not sure the
allocation is the core problem; we’re interested in the outcomes/the system and
it’s not clear that who has decisionmaking authority is controlling that.
Dinwoodie: dissent
in Samara in 2d Circuit: don’t let juries decide how competitive the economy is
going to be. Worry about juries—think about who’s in the best position to do the
weighing/it’s easier to control the judge’s interpretation of the law.
Surveys: A growing
skepticism of surveys? Sotomayor’s concurrence; others may well be on board. In
the rest of the world, common law in particular, there has been pretty
significant trend against the use of surveys. Maybe that’s one of the issues
where the way you develop facts and prove facts may affect outcomes. JDI survey
did a lot of damage in that case.
Linford: we don’t
have instructions for TM cases in most circuits; that is a leverage point. Court-assigned
experts as in Germany?
Silbey: public
interest location: in © different industries have forced amendments over time;
that’s somewhat policed the different stakeholder interests. What is the
equivalent in TM for that kind of industry diversity that could create wedge
issues? LKQ/repair parts/must-match for trade dress. Off-ramps are hard to
convince Court of when they think that courts are the best places for deciding
these questions and they do it well.
Where are the lines
the Court is drawing that take it out of fact questions?
Commercial/noncommercial? What other things are available doctrinally? 1A is
clearly a line; property rights is another line. We’ll see more takings cases.
Note that Feist, a huge © case, turned on Stevens being mad at telecom
companies. O’Connor wanted to deny cert, then wrote the unanimous majority.
Interesting to see the case file in Wal-Mart. Where did Scalia get those ideas
about the balance of the system?
Dinwoodie: public
interest considerations factoring into the analysis can be a means of constitutional
avoidance, but the Court seems unwilling to do that—forces it to the nuclear
options.
Farley: In JDI,
examples were effective: Blatt said the survey should be relied on because we
don’t want judges deciding these questions because judges don’t understand anything
about whether panties are related to teen girl magazines.
Do plaintiffs waive
jury trials? [PI/SJ is probably most important.]
Lemley: sometimes it’s
because all you want is an injunction/a PI resolves the case. If it’s a
disputed factual question it’s not appropriate for PI, because who knows what a
jury would say? That framing, if you can fit it into PI jurisprudence, which
the Court is messing up as it abolishes equity, could serve as a bulwark not in
speech cases—where you do want to lower costs—but in other cases where the D
might otherwise just be shut down.
Farley: INTA says its
objective is to protect the public through the use of TMs/avoiding deception.
Eric Goldman: the
platforms could be a countervailing force. But they can’t. They’re sidelined by
the techlash. Google fought for keyword advertising but couldn’t win that
today.
Burrell: Judges are
pretty good about “this shouldn’t get monopoly protection in the first place,”
and that might be the 90s cases. But once they’ve decided “Jack Daniel’s is a
trademark” they get much worse at the scope of the right. Could be a shift in
the types of cases.
Dinwoodie: British judicial
enforcement of TMs until 1994 was much more balanced view of range of interests
at stake in TM: often former TM barristers that wrote/enforced law. They had
represented clients on both sides. More sensitive to balance. We’ve lost that.
Ramsey: worked on
INTA’s model TM guidance; really interesting—a lot of them were fine with
speech-protective limits for registration and enforcement. Put into the
language of functionality “any feature that adds substantial non-source-ID’ing
value” but someone on the board of INTA didn’t like it and so it came out.
Compromise is possible, but can be derailed by 1-2 people w/a lot of influence.
Restatement model might be better to avoid those roadblocks.
Failure to function
as a guardrail for the public interest, not just for speech but for cases like
Lettuce Turnip the Beet. But we need some clarity about when secondary meaning should
be enough to overcome failure to function, as with Nike/Automotive Gold, and
when it shouldn’t be, as with DRIVE SAFELY. [Maybe part of the answer is
preexisting meaning: there will always inevitably be non-TM meaning for “DRIVE
SAFELY” but not for Nike/the BMW icon, and the ratio of TM to non-TM
meaning, or the ability of TM meaning to drive non-TM meaning out of the
market, might matter.]
Linford: Dastar as
response to Court’s recognition of Eldred/Golan being extreme—strongest statement
that © can’t be perpetual is found in Dastar, not a © case.
McKenna: it’s true that
the SCt cases we describe as more sophisticated are about policing what counts
as a mark, but it’s never taken a straightup infringement case as the massive
expansion of what counts as infringement occured.
There was a
settlement over validity v. infringement doctrines but TM use puts that in a
blender. We’ve committed to a system where everything is in the scope of TM rather
than using public interest to set boundaries for protection, and that makes it
hard to figure out how to use the public interest in the retail inquiry.
Dogan: consider
differences between arbiter of public interest and advocate for public
interest. INTA represents a consistent value, whereas on the other side there
are different interests and different ways in which expansive TM rights
threaten values we care about. There are clusters of interest groups for
competition, and for speech, in uncoordinated ways. Think about whether there’s
any way to coordinate and make more coherent this set of values threatened by
expansive TM rights. Courts and Congress respond to what they perceive as
broader cultural norms—SOPA/PIPA; to some extent in courts protecting Sony VCR.
How to make values salient to broader public? Economic costs, speech costs,
etc.
Farley: one
challenge is people don’t know when they will become interested. Small
businesses face particular challenges. No representatives of small business in
dilution hearings.
Leah Chan Grinvald:
right to repair as one of these, fighting for 15 years.
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