Mike Grynberg: SCt opinions since 2008. Courts don’t care about TM law; every now & then a judge does, but keeping the general rule in mind is useful—can’t expect dcts in particular to be able to sit back and explore all the nuances. Sometimes this indifference gives us delightful things but usually not. TM will generally be secondary, simpler, and less thought out than the things the Justices actually care about. See it in initial indifference to what makes a TM a good identifier (Tam, Brunetti) shifting to a debate about history and tradition (requiring them to distort TM law). Don’t pay attention to actual demands of source identification (w/Barrett and Sotomayor slightly exceptions). Most obvious in Abitron, where Alito carelessly throws in a TM use requirement. The Court will wave it away when the time comes around—an opinion is not a statute.
Textualism, employed in increasing frequency. That will preclude a strong use requirement b/c the arguments about the existence of 33(b)(4)—given previous lazy textualism. JDI doesn’t even mention legislative history endorsing Rogers; the dilution reasoning doesn’t deal with noncommercial speech or structure of statute where adding a provision designed to expand defenses is read as nullifying unchallenged defenses. Lawmaking as a game of Jenga: Romag Fasteners is the same way.
Textualism need not be good textualism.
Court may have sympathy for the vibes of TM use; the opinion of JDI suggests a mental model of classic source confusion. That occasionally penetrated in oral argument when Alito talked about toys and Blatt talked about surveys. General dissatisfaction w/overly broad TM claims, and endorsement of certain applications of Rogers, which could create an opening to draw distinctions. One strand of precedent we haven’t developed is Lexmark and its discussion of proximate causation, which leaves a good opening for considerations of confusion, material or not. But maybe not, b/c JDI suggests an undertheorized affection for the merchandising right. (And for dilution, further signaled by Elster.) If you think TM use is a thing but like the merchandising right, you have to figure out a way to say that merchandising use is TM use. Court’s reasoning could be limited to “JDI is TM use b/c of estoppel,” but he thinks the Ct really did see the use on the toy itself, not just the hang tags, as a TM use. Maybe it can be cabined to merchandising.
Pre-2008: factualism of cases/refusal to use shortcuts, as in Booking.com and JDI. Hana Financial/tacking—consumer perception is still the thing that matters most.
Noncommercial use/use in connection with: Radiance Foundation line of cases—an area still open for exploration. Louboutin case: maybe there’s still some way that someone can be said to not to be using the P’s mark even though there are similarities. Kelly-Brown mentions Louboutin in the idea of whether you’re actually “using” the P’s mark.
Jeanne Fromer: Is there symmetry b/t Ps and Ds, and should there be? There’s a statutory perspective—a lot depends on where a TM use requirement comes from both on acquisition and on D’s side. (1) requirement that a mark be used in commerce; (2) use to distinguish goods/services; (3) likely to cause confusion as to source. If it’s (1) or (2), it’s present for both protectability and infringement. But (3) is only true as to Ds. Maybe Abitron requires us to use (1) but 6th Circuit locates “use in a TM way” in (3). That suggests that P and D understandings of TM use could be different. Being likely to confuse as to source might be a lower standard for TM use than use in commerce or use to distinguish a good/service—those 2 are much more certain, but “likely to confuse” is a likelihood/lower standard.
Granting rights v. stopping a third party from encroaching is also very important. [This would be a resurrection of TM v unfair competition principles.]
From whose perspective do we assess TM use? The party that’s using it’s intent v. the consumer’s? There could be linguistic or other expert perspectives to cabin off certain things. Perspective also affects when TM use is decided/at what stage of litigation. Consumer perspective: early resolution is hard; also hard at the acquisition stage.
Booking.com is very important in this context b/c makes it easier to rely on consumer perspective to “rule in” TM use. Even though that’s about genericity, it has impact on TM use.
Keyword cases: Lerner & Rowe decision: who is doing the TM use? It’s not being shown to the consumer when someone purchases the keyword but the user is using the keyword when they search.
Christine Farley
Kagan’s narrow path in JDI seems a broader curtailment than they thought. Kagan seemed to think that TM use was clear and stable doctrine, so it can be decided by them even though it was never decided or briefed below. VIP claimed a trade dress—but it didn’t clearly claim that it owned rights in the total configuration/appearance; it never said what its trade dress was and that was never litigated—could only have been claiming trade dress in packaging/hang tag. Those used VIP’s marks [but the Bad Spaniels logo was on the hang tag]. Even if this case had been litigated differently, we might still have this problem. The court quotes Timmy Holedigger approvingly, holding that there’s no Rogers defense if the D is “trading on the goodwill of the TM owner”—not “making TM use.” The first appellate court, MSCHF, to handle VIP quotes that much broader statement and says Rogers doesn’t apply. MSCHF court accepts that total look and feel is TM use. Under this thinking, Getty AI cases, where Getty says “using our images for training so GAI spits out images with blurred Getty logos,” that could be a TM use, which would defeat the dilution exceptions. OMG Girls case: case was really about ROP and copying trade dress, but court pointed to the use of OMG in the name of the dolls and so Rogers failed as a defense. Even the use of Waves in the content of the Netflix show Pepperdine sued over could be characterized as TM use, b/c it’s used in the story-world in a standard manner on T-shirts and the like. Courts don’t use “use” to mean “provides source identifying information” but are much broader in their meaning.
What about Abitron? Court takes definition of “use” and definition of “use in commerce” and merges them. Does it overrule Rescuecom? Won’t stake out an opinion. Might have been unwitting, but Court was not doing it accidentally. Court was trying to avoid the 4 Justices’ approach in concurrence—free floating “effects of confusion” test wasn’t a good guide to extraterritoriality. Justice Jackson uses old-school concepts of affixation—it got her vote. Too early to tell what will happen, but looking at the language of 32 might provide the most reach for TM owner b/c of the language of use in commerce in connection w/the advertising. Advertising to US consumers might be a way to get us back to the effects test. If TM use is a prerequisite to territorial rights, TM owners will try to stretch that.
Court also doesn’t say that TM use is required for domestic liability—JDI says that there are two kinds of defendants, one that makes TM use and one that doesn’t. Even though they seem to push TM use as a stable/important doctrine, they will not lead to a meaningful outcome.
Beebe: In terms of taking TM seriously: How could Kagan cite both Janis & Dinwoodie and McKenna & Lemley as stating the same proposition about TM use? I was conditioned to assume that judges have cognitive coherence, but they don’t seem to have it about TM law. As an intellectual enterprise, what do you do?
Lemley: in both JDI and Abitron, notwithstanding the move to naïve textualism across other areas of law and affecting TM in Romag, we do see some common law part: this is the purpose of TM law, and so if it’s within the purpose of TM law we will find that TM law applies and if it’s outside the purpose we won’t—that’s a bit of encouragement across the political spectrum that they know TM is a common law endeavor. How well do they do that? Citing both us and Janis/Dinwoodie could be a recognition that it’s a common law concept that gives opportunities for the courts to do the right thing, though so far they’re grabbing on to picayune details as Farley identifies.
What’s the alternative? Said 20 years ago that w/o TM use we’d spend 20 years recreating it w/other doctrines, and Rogers did a lot of that, but now it won’t, but we do have a revitalized doctrine of failure to function. Keyword ad cases: 9th and 2d both said in the last year that keyword ad buys alone couldn’t ever infringe—a huge waste of time and money that we needed to continue to litigate and force courts to find other ways than use to kill them off, but courts have indeed found those ways. Maybe we can do that more expressly and confront how to define source-IDing use. Not a fan of symmetry b/t acquisition of rights is different from the issues on infringement, which are mostly about the vast expansion of infringement theory—so the doctrine of D’s use is largely directed to handling those expansions beyond the classic common law.
McKenna: What to do? Stop bringing cases to the SCt because it won’t go well.
There’s not a use of P’s TM requirement as such. You must be using something to identify your own goods/services and that thing that you are using causes confusion. This question infects Louboutin, MSCHF, and all of the post-JDI 9th Circuit cases. They say that use in a title might be a TM use b/c it is allegedly a TM for the P. The fact that it’s possible for titles to get secondary meaning is why courts are saying they can’t do it on a motion to dismiss. This isn’t an isolated case: use in a title has been declared to be possibly a TM use; the only non-TM use the court found was in the content and the court said “it’s not TM use b/c it’s not in the title.” No post-JDI cases involving titles find non-TM uses.
On textualism: interpretive methods are incoherent all the way around. Not attentive to fact that TM is a common law statute. Ps want to say they’re making a textualist argument for why the infringement standard includes everything in 43(a), but want to read out “use in commerce” b/c it’s elsewhere in the statute. But there’s no way to read “use in commerce” in any other way than use to identify source. The answer is always purposive—that definition in the statute wasn’t meant to apply to infringement. (2d Cir. in 1-800 Contacts.) But 43(a) was never meant to be an infringement standard at all. So you can’t have both!
Dinwoodie: 1988 changes what 43(a) was for, though.
RT: keyword cases: Highlights the judicial tendency to equivocate over what “use” is when assessing TM use. Fromer says, summarizing the description of the courts, that in keyword cases the user is visibly “using” the mark—borrowing a literary criticism, that’s not using, it’s just typing. If referential uses are not TM uses, then the user is not making a TM use. [Heymann: This is the use/mention distinction.]
Beebe’s question: what do we do in response to incoherence? My answer: Try to give lower courts structures they can use.
Burrell: It’s not better at other apex courts. Australian high court is interested in TM law, but doesn’t seem to understand the interrelationships. They don’t have a sense of how complicated this law is [Ramsey: see also “soft IP”]. What can we do? Pointing out that two principles or citations are in direct conflict can embarrass them and lead lower courts to limit their effects.
Silbey: we are overreading these SCt opinions generally—spending a lot of time trying to make sense of them. They cite to articles that conflict because they don’t think it’s complicated. Almost all of these cases except for Abitron are unanimous (even w/concurrences). They feel pretty sure about the outcomes—what TM is for, how damages should be awarded—don’t overread them when we engage in advocacy. Breyer’s Booking.com dissent; Brunetti was arguably 6-3; but the rest are unanimous. So what do the Justices care about? Bad faith. They think a lot about speech & personhood—TM as an extension of a person. They also think about property rights—do people deserve to control this? Unfortunately broad, nonstatutory values that makes the cases overdetermined. They don’t think of Rogers as their own and so they don’t want it. It came up through the practice area. Have to fit Rogers into these themes, and it won’t survive in the same way but it could survive—invoke First Amendment ideas.
Lemley: consider patent law. Court’s primary interest is to get the facts right in front of them right: the good party should win; only secondarily do they say what happens to the law. Opposite of what you’d want a high court to do, but that’s the pattern he saw in patent and seeing in TM now. The collateral consequences will not be great.
McGeveran: if “not invented here” dooms Rogers, then what we can do is provide structures/opportunities to dcts to do something inside the housing of what the SCt has given. What will resonate better with the SCt’s non-TM obsessions? Meanwhile you have more chances of persuading a dct that your arguments rhyme with the Court—don’t read it like a Talmudic text but part of a larger framework the Court has in mind.
Dogan: hopes Rogers isn’t dead, and majority is pretty deliberate about avoiding the question. Kagan’s opinion implicitly shows admiration for some speech-protective doctrine distinct from likely confusion. If lower courts interpret TM use so broadly to cover uses that Kagan clearly saw as non-uses, like use as title of work, we can point courts in the direction of the need for speech-protective doctrines in cases like Barbie Girl. More use of Sotomayor’s concurrence in JDI: on remand, that actually worked in JDI with respect to the infringement claim.
Grynberg: why did the keyword cases start to move in results? Was it arguments about competitive benefits? Or was it that judges became familiar with the practice and thought it was innocuous? He thinks it was the latter.
Similar w/Rogers: overgrowth of TM leads TM owners to start going after things that courts think can’t possibly be infringing, leading to creation of framework for pattern recognition. Then there is use of that framework a conflict w/the merchandising right, founded in free riding, creating reaction/JDI. [crystals & mud] Need a story to explain why this is a speaker with a message; Kagan just didn’t see that in JDI but Sotomayor saw the risks to political speech.
Sheff: Jessica Litman said 25 years ago that what a mark means is not determinable by the specific actions of the person in front of us right now. He’s argued for “divided use” to resolve these situations.
If there’s anyone who cares less about TM than courts, it’s Congress—that’s why our statute is 80 years old with only occasional bouts of half-baked, targeted interference. Textualism arrogates power to the courts b/c the legislature is broken. But textualism presents itself as a theory of statutory interpretation that is supposed to discipline legislature/invite correction—our role is to do the work of embarrassing the higher court/demonstrating to lower court judges the consequences in a way that invites reconsideration later on.
Ramsey: reasons for optimism: JDI’s focus on source identification as the point of TM law; JDI gives special consideration to parody; we can focus on the better language and help give courts & attorneys direction for more speech-protective TM law. Elster’s concerning language about goodwill might be limited to persons. To protect speech/freedom to operate, wants to discourage people from claiming TM rights in parodies or other expressive uses.