Lanham Act false advertising disgorgement is equitable; no jury trial required

Diamond Resorts U.S. Collection Development, LLC v. Wesley Financial Group, LLC, No. 3:20-CV-00251-DCLC-DCP, 2025 WL 1334625 (E.D. Tenn. May 7, 2025)

Another timeshare case! Diamond alleged that defendants engaged in “a deceptive timeshare cancellation business” that induces Diamond’s timeshare owners to breach their contractual agreements with Diamond Resorts. It sued for false advertising in violation of the Lanham Act, the Tennessee Consumer Protection Act, and for the unauthorized practice of law. As trial approached, Diamond told the court that it wouldn’t pursue legal relief, only an injunction, disgorgement, attorneys’ fees, and costs, so that defendants couldn’t get a jury (which, one infers, might be more sympathetic to defendants because timeshares can be such nightmares). The court ruled that there was no statutory or Seventh Amendment right to a jury trial in these circumstances.

“The right to a jury trial is guaranteed by the Seventh Amendment,” which states that “[i]n Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.” Common law means “suits in which legal rights were to be ascertained and determined,” and not suits in which “equitable rights alone were recognized, and equitable remedies were administered.” Making this distinction requires a court to compare the action at bar to “18th-century actions brought in the courts of England prior to the merger of the courts of law and equity,” because that is an excellent way to run a system. “[A]ctions that are analogous to 18th-century cases tried in courts of equity or admiralty do not require a jury trial.” If history doesn’t provide an answer, courts “look to precedent and functional considerations.” The inquiry also requires the court to “examine the remedy sought and determine whether it is equitable in nature.” “Th[is] second inquiry is the more important” of the two. Because of the value of a jury trial, a court “indulge[s] every reasonable presumption” in favor of finding a right to a jury trial.

Nonetheless, there was no statutory right to a jury trial in a Lanham Act case. “Congress has shown that it knows how to provide litigants with a right to a jury trial when it wants to.”

In Osborn v. Griffin, 865 F.3d 417 (6th Cir. 2017), the Sixth Circuit observed that “in 18th century chancery courts, what [modern-day courts] now call disgorgement was embodied in the remedies of ‘accounting, constructive trust, and restitution,’ ” which “were almost universally recognized as being within the ambit of courts of equity.” Disgorgement, that is, was equitable.

More specifically, how did England’s 18th-century courts treat actions for trademark-related disputes when parties sought disgorgement as a remedy in those actions? The Sixth Circuit has recognized that, “prior to statutory protection for trademarks,” English and American courts “treated the damages portion of such suits as an equitable action in the nature of an accounting.” Consistent with this history, the Lanham Act allows for disgorgement “subject to the principles of equity” for claims of false advertising under § 1125(a).

True, the Sixth Circuit spoke about trademark cases, not false advertising. But Lexmark says that “the Lanham Act treats false advertising as a form of unfair competition,” and, the court here reasoned, “unfair competition is analogous to trademark infringement.” Analogy was good enough here.

Likewise, the disgorgement remedy was equitable in nature, even when the disgorgement was sought to redress false advertising rather than trademark infringement. What about an earlier Sixth Circuit statement that, “[d]espite this pervasive equity background [in trademark actions], the damages or accounting aspect of trademark infringement actions are considered legal actions for purposes of the jury trial clause of the Seventh Amendment.” The Sixth Circuit relied on Dairy Queen, Inc. v. Wood, 369 U.S. 469 (1962), which held that “a plaintiff, by asking in his complaint for an equitable accounting for trademark infringement, could not deprive the defendant of a jury trial on contract claims subsumed within the accounting.” “In short, Dairy Queen was an action for compensatory damages.”

But plaintiffs here disavowed seeking compensatory damages. “In Dairy Queen, the Supreme Court was itself skeptical of Dairy Queen’s claim because it had shades of a breach-of-contract claim and a trademark-infringement claim all in one, but the Supreme Court declined to resolve the ‘ambiguity’ in this claim because it was certain that Dairy Queen’s request for a ‘money judgment’ was “wholly legal in its nature however the complaint [was] construed.’” Here, disgorgement would only require proof of defendant’s sales, meaning that “evidence of compensatory damages arising from any breach of contract will be off the table at trial.” But, given that the theory here was that defendants induced Diamond Resorts’s timeshare owners to breach their contracts with Diamond Resorts, the court would watch carefully to prevent plaintiffs from using theories of breach of contract to arrive at lost profits; if they did so, defendants would be entitled to a jury trial.

Georgetown Law Institute for Technology Law & Policy student writing competition

 The annual Georgetown Law Institute for Technology Law & Policy student writing competition is now open.  We hope you will encourage your students to submit their papers for consideration.

Students are invited to submit papers that provide analysis or insights on issues at the intersection of technology law and policy. Example topics could include artificial intelligence, antitrust and consumer protection, biotechnology, computer crime, cybersecurity, digital platform regulation, intellectual privacy, international trade, and social justice applications of technology. 

Papers will be judged by a blind panel of judges. The author(s) of the first place paper will be awarded $1,000. The author(s) of the top paper on an artificial intelligence-related topic will be awarded $1,000.

Please submit papers via email to techinstitute@law.georgetown.edu. Submissions are due by June 6, 2025.

Papers will be accepted from students enrolled at any ABA-accredited law school in the United States during the 2024-2025 academic year. The paper must be the author’s own work, although students may incorporate feedback received as part of an academic course or supervised writing project. 

Please visit the Tech Institute's website for more details and submission guidelines. Questions can be sent to techinstitute@law.georgetown.edu.

court applies issue preclusion to a jury verdict under a different state consumer protection law

Dent v. Premier Nutrition Corp., 2025 WL 1282627, No. 16-cv-06721-RS (N.D. Cal. May 2, 2025)

Here, the court applies issue preclusion against Premier, makers of Joint Juice, which lost a bellwether-type trial under NY law (a ruling affirmed in relevant part by the Ninth Circuit), on claims against it based on Illinois consumer protection laws. The court noted that six other state-wide classes were stayed before it, and a California class was seeking judgment against Premier in state court.

Specifically, Premier was precluded from relitigating materiality, sale in commerce, and the measure of damages.

Premier didn’t dispute that Dent and the Illinois purchasers saw the same labels as Montera and the New York purchasers during the same relevant time period. Under California law, which supplied the rule of decision, “[i]ssue preclusion prohibits the relitigation of issues argued and decided in a previous case, even if the second suit raises different causes of action.” However, courts have discretion to deny issue preclusion if its application does not “comport[ ] with fairness and sound public policy.”

“While Premier may not have expected the Montera trial to have roll-on effects, it does not follow that any effects would be fundamentally unfair.” Montera and Dent both alleged that Premier’s advertisement and marketing of Joint Juice was misleading, harming entire classes of consumers in each state. The advertisement and labeling of Joint Juice was identical in New York and Illinois, and the time period covered in both suits was the same. Whether the advertising is deceptive was evaluated using the same reasonable consumer standard, not individual consumer understandings.

Premier argued that new scientific advances in the study of glucosamine’s potential benefits necessitated a full trial on whether Joint Juice’s label was in fact deceptive. But “new witnesses or cumulative evidence do not negate issue preclusion.”

Once issue preclusion was available, the question was what overlapping issues were decided by Montera. The jury decided that Joint Juice’s label was misleading, and both NY and Illinois use the same materiality standard, so there was issue preclusion.

However, the Montera jury didn’t need to reach a conclusion as to whether Premier intended for the class to rely on the alleged deceptive act or practice, which is required by Illinois law, so that remained for trial. (Imagine going to the jury and arguing, sure, it was materially misleading, but we didn’t intend for consumers to rely on it!)

Dent also conceded that she needed to prove individual causation, but argued that materiality justified an inference of classwide causation. Illinois’s ICFA requires that the defendant’s deceptive practice proximately caused the damages suffered by plaintiff, but not actual reliance. It allows courts to infer proximate causation on a classwide basis when all class members are subject to a material, standardized misrepresentation. While the court found Dent’s argument for preclusion on causation “strong,” it determined that the issue was not “identical.” “While Dent could certainly demonstrate causation by proving the class was exposed to uniform, materially misleading misrepresentations, Montera did not actually do so in her case. Moreover, based on the caselaw presented, such a showing is necessary, but not sufficient for a finding of ICFA causation.” The court cited Illinois cases articulating a standard demanding that “the only logical reason” to buy was as a result of the deception or that “no rational class member would have acted as they did absent the misrepresentation.”

What about the measure of harm? The ICFA defines damage as “the value of what [plaintiff] received less than the value of what was promised”: a benefit-of-the-bargain theory. This means that a full refund is justified if a product “had no value to consumers.” “The jury in Montera, in finding liability and awarding the entire purchase price to consumers, necessarily concluded Joint Juice was valueless for its advertised purpose.” Premier presented extensive evidence arguing purchasers received benefits apart from the potentially deceptive joint health ones advertised on Joint Juice’s label, but the jury declined to reduce its award based on Premier’s suggested alternative benefits, such as Vitamin C, Vitamin D, antioxidants, and hydration. Thus, the damages issues in Dent were narrowed to the calculation of damages due to the Illinois class based on the number of units sold and the purchase price, and punitive damages.

Premier also argued that it was entitled to raise a First Amendment defense, which wasn’t raised in Montera until its renewed judgment as a matter of law after trial. But “issue preclusion requires only the opportunity to litigate ... not whether the litigant availed himself or herself of the opportunity.” Also, “misleading commercial speech is not protected,” meaning that Premier couldn’t raise a First Amendment defense anyway because of the jury findings.

The court also advised the parties that they should settle “this now antique litigation.”

Burger King's ads may have told a whopper about burger size

Coleman v. Burger King Corp., 2025 WL 1294605, No. 22-cv-20925-ALTMAN/Reid (S.D. Fla. May 5, 2025)

Nineteen plaintiffs brought claims under 13 states’ laws alleging that BK falsely advertised the size/amounts of ingredients in various burgers; the court denied BKC’s motion to dismiss.

BKC allegedly “advertises its burgers as large burgers compared to competitors and containing oversized meat patties and ingredients that overflow over the bun to make it appear that the burgers are approximately 35% larger in size, and contain more than double the meat, than the actual burger.” The complaint also quotes multiple negative reviews posted by dissatisfied consumers.

images of ads v actual burgers

Previously, the court found that plaintiffs could assert “consumer-protection counts only for those states in which the named plaintiffs purchased their Burger King products.” And they couldn’t advance a breach-of-contract claim based on BKC’s “out-of-stores ads” since “courts generally consider it unreasonable for a person to believe that an advertisement constitutes a binding offer.” But BKC’s “in-store ‘menu ordering boards’ ” were “very different from the advertisements one might see on the Internet or on TV” and could constitute an “offer” under contract law.

BKC argued that reasonable consumers couldn’t have been deceived because “[s]tyling ingredients for photographic purposes, such as by pulling them forward so a head-on image clearly shows what the burger contains, is not misleading to a reasonable consumer visiting a quick-service restaurant, and no precedent suggests otherwise.”

All but one of the relevant states apply the reasonable-consumer test in (substantially) the same way as Florida does, while Arizona uniquely doesn’t consider reasonableness at all and instead asks us to analyze the allegedly deceptive conduct “from the perspective of the ‘least sophisticated reader,’ ” though “bizarre or idiosyncratic interpretations” will not preserve a patently frivolous claim. Nonetheless, Arizona law requires courts to assume “that consumers of below-average sophistication or intelligence are especially vulnerable to fraudulent schemes” and prohibits us from assessing deceptiveness based on “assumptions about the ‘average’ or ‘normal’ consumer.” Arizona law focuses on whether there was a “capacity to mislead” rather than on whether a reasonable consumer would be misled.

Arizona aside, a reasonable consumer could have been deceived.  “[A]t this very preliminary phase of the case, and drawing all reasonable inferences in the Plaintiffs’ favor, BKC’s advertisements—when compared to other, similar advertisements—have a greater capacity to deceive or mislead reasonable consumers.” Although “exaggeration of an item’s quantity (and, for that matter, quality) with idealized imagery is an extremely common technique in the world of food advertising,” plaintiffs plausibly alleged that the ads here “go beyond mere exaggeration or puffery” and “make it appear that the burgers are approximately 35% larger in size, and contain more than double the meat, than the actual burger.” Even more problematically, BKC’s advertisements allegedly changed in 2017 to “materially overstate the size of its burgers” in comparison to previous years: 

old and new ads

This wasn’t mere exaggeration through common food-styling practices; plaintiff plausibly alleged that BKC misled customers into falsely believing that the size of BKC’s burgers has, in fact, increased since 2017.  “[R]easonable consumers could be misled if the disparity between the size of a burger in an ad and size of the burger in the real world becomes too great. …Who are we to decide whether such a seemingly substantial difference between what was promised and what was sold was (or was not) enough to alter the purchasing preferences of reasonable American consumers?” The 2017 change was very important here. “A change like this (the Plaintiffs have plausibly suggested) could lead reasonable consumers to believe (incorrectly, as it turns out) that BKC increased the size of its burgers in 2017.”

Publisher avoids liability for ad that allegedly disparaged plaintiff's goods

Jewel Sanitary Napkins, LLC v. Busy Beaver Publications, LLC, No. 23-cv-126-slc, 2025 WL 1220311 (W.D. Wisc. Apr. 28, 2025)

Jewel makes sanitary napkins containing a layer of material called graphene that Jewel claims has health benefits, while it touts the risks of tampons. The Amish community is a major market. “Jewel saw its sales drop significantly in the Amish community when, in August 2022, defendant Busy Beaver, a classified advertising publication distributed to Amish and Mennonite communities, published a reader-submitted letter (the Concerned Sister ad) that Jewel says made false accusations about its products.” Jewel sued Busy Beaver for common law libel and trade libel, and the court granted Busy Beaver summary judgment.

(Frankly, I’m pretty surprised at the chutzpah involved in suing here, given the Q-Ray-like nature of the advertiser’s claims, which include that graphene relieves abdominal cramps and fatigue, helps to eliminate bacteria and aroma, and boosts metabolism and immunity. Jewel also said that graphene moves heat away from your core and “contains vibrational energy.” Jewel’s chemist describes graphene as a “quasimetal” that “shares some properties with semi-conductor materials like Silicon” and “is highly conductive for both electricity and heat.” Jewel’s promotional videos show the pad’s graphene strip, or the pad itself, lighting a lightbulb.)

Busy Beaver has regional editions, and in mid-2022, the Busy Beaver Pennsylvania office received a completed classified ad submission form and payment from an individual named Betty Lantz. Lantz checked “no” to the question asking whether she wanted her name or address included in the ad. Busy Beaver’s CFO testified that the publication has printed ads without identifying information, so long as the person who submitted the ad is identified on the submission form. (“Jewel subpoenaed Lantz but she refused to be deposed in light of her Amish belief against involvement in legal matters. Jewel did not seek to compel her deposition.”) The ad:

Attention! Are the Reign products as safe as they say? Graphene is a conductive metal meaning it attracts electrical waves/radiation from the air, Do we want this close to our bodies, Will we see serious consequences for using this product? Don’t just go by what the company says, A concerned sister.

Months before the ad was published, “rumors had begun circulating in the Plains [Amish and Mennonite] communities about Jewel’s products, including that the sanitary napkins caused cancer, were covertly delivering Covid-19 vaccines to women, and contained radiation and metal.” (Live by the junk science, die by the junk science?)

The main salesperson for the Pennsylvania Busy Beaver, Ivan Lapp, is Amish and doesn’t use Google, only email, QuickBooks and specific websites, such as the Busy Beaver website. He proofread the ad, one of approximately 1,400 ads each week. “Many of these ads make claims about health products, and about four to six ads each week are advertisements for Reign products. The Busy Beaver does not independently verify the claims made in the ads it publishes, and does not publish images of women in bathing suits, promotions for rock concerts, or political ads.”

Jewel complained about the Concerned Sister ad, and Busy Beaver offered Jewel free pages in the Busy Beaver every week until the end of the year (about three months) so that Jewel could “print information on Jewel’s products and correct any false information that it believed was circulating.” Even after Jewel sued, Busy Beaver continued to allow Jewel’s distributors to place ads in the Busy Beaver, just as they did before the lawsuit.

Lapp testified that the ad caught his attention when he first proofread it because it was “questioning somebody else’s product,” but he did not have time to do “any research,” did not have a number for Lantz, and ultimately “left it go” without discussing the ad with anyone. “Lapp noted as a general matter that he would call [higher-ups] about an ad if he thought it was inappropriate, such as campaign or entertainment ads that he felt did not fit the publication’s mission, but had done so only eight or ten times over the years.”

Although Busy Beaver initially stated that the original submission form had been shredded after publication, Lapp later recalled that he had taken the form back to Lantz’s house at some point after Jewel called to complain about the ad’s publication. He left the form with Lantz’s mother and said the Busy Beaver would no longer accept such ads. The court denied Jewel’s motion for sanctions related to the putative destruction/fate of the submission form; basically that was what you can expect from a small business.

Jewel conceded that it was a limited purpose public figure, and it couldn’t create a factual issue on actual malice, which requires knowledge of the falsehood or reckless disregard for the truth, which requires that the defendant “in fact entertained serious doubts” about the trust of the statement or that the defendant published it “with a high degree of awareness of [its] probable falsity.”

Busy Beaver’s proofreader, though, averred that he had no idea whether the content in the ad was true or not. Jewel’s circumstantial evidence was insufficient to allow a jury to find knowledge or reckless disregard.

Jewel argued that actual malice could be inferred from Busy Beaver’s publication of an “inherently improbable” and “highly disparaging” ad claiming that graphene is a conductive metal that attracts electrical waves and radiation from the air. But “it is not the case that the more serious the charge, the less likely it is to be true.” And, given Jewel’s own claims, a reasonable jury could not conclude that Concerned Sister’s statement about graphene was so inherently improbable that Busy Beaver acted maliciously in publishing it. Nor did it matter that Busy Beaver published the ad “anonymously,” since Lantz put her name and address on the submission form even if not on the ad, and that was not inconsistent with Busy Beaver practice.  “Indeed, in the same issue of the Busy Beaver as the Concerned Sister ad, the Busy Beaver also published an ad with only a phone number asking readers to consider their personal care products and ‘Go toxin free.’” Busy Beaver didn’t violate its own policies (against women in swimming suits, ads promoting rock concerts, or political ads), and, even if Lapp did depart from “professional standards,” that alone is not enough “for finding actual malice” in cases concerning public figures.

Jewel argued that Lapp demonstrated willful blindness by failing to investigate the truth of the ad’s statements, and that the ad could easily have been proven false “with a quick Google search.” But “reckless conduct is not measured by whether a reasonably prudent man would have published, or would have investigated before publishing”; there must be enough evidence to support the conclusion that a defendant “in fact entertained serious doubts as to the truth of his publication.” The court highlighted that “Lapp proofreads approximately 1,400 ads a week and many of these ads make claims about health products that Lapp does not independently verify.” Moreover, there was no evidence that Lapp “accesses the internet in any beyond-business capacity that could include a general internet search about graphene or Jewel’s products without violating his Amish beliefs.”

Even if Lapp had done an internet search, the evidence does not bear out that the alleged falsity of the Concerned Sister ad would have been immediately apparent in the search results to an Amish man who sells and processes classified ads. In point of fact, Jewel produced a screenshot in discovery of an internet search resulting in a description of graphene as “not metallic” but “a quasi-metal since its characteristics of graphene are similar to those of semi-conducting metals.”

Should non-Amish publishers have to do searches?

Jewel argued that Busy Beaver was biased against it, because Busy Beaver didn’t print a retraction, but  “Busy Beaver does not print its own retractions, preferring instead to allow the complainant the opportunity to print whatever corrective content the complainant wants in the complainant’s own words.” Jewel chose to sue instead, but that’s not evidence of malice. As for an alleged threat to cease publication of ads from Jewel’s distributors, that was a confidential, inadmissible settlement communication from Busy Beaver. Anyway, Busy Beaver never stopped publishing ads from Jewel’s distributors, “in further contravention of Jewel’s allegations of ill will.”

Sixteenth Trademark Scholars’ Roundtable Session 4: How We Got to Trademark Use 2.0

Robert Burrell: use in Commonwealth systems came from strict liability for double identity—once that was extended to advertising, there are a whole lot of nonconfusing/beneficial uses of marks in advertising. TM use was brought in as a safety valve to allow comparative advertising. Since then TM use has functioned as a safety valve for nominative and descriptive uses in the context of a regime that is generally strict liability.

What is the US trying to achieve with use given that LOC is central to your inquiry already? In Commonwealth it mitigates strict liability w/no confusion requirement.

One potential answer: use as a mark in Commonwealth countries was never primarily empirical. If Ds seemed good, the court could find use not as a mark and say that any confusion was from unreasonable consumers. Functions not merely as a safety valve to allow nonconfusing uses, but also to allow courts to ignore unreasonable confusion. Why? If you advocate for use, are you going to get a rule that allows you to ignore certain forms of irrelevant/unreasonable confusion?

[If your system hates surveys, maybe you don’t need the same set of rules]

Most tarnishing uses don’t involve TM use (Enjoy Cocaine on a poster is not about the source of the poster). Once you’ve opened the door to dilution, use as a mark isn’t a good line; you need something like the EU multiple TM function idea.

A lot of Australia’s TM problems flow from the problem of divided use Sheff identifies—the more work you ask “use” to do, the more doctrinal incoherence will develop, especially when an apex court decides a question about use and doesn’t understand the full implications. Case about Barefoot Wines—Gallo didn’t actively exploit its mark in Australia, but a third party sold Gallo’s Barefoot in Australia. Had Gallo used its mark? The court found that conscious projection to Australia was not required for use.

What about the defendant who owns a TM in Singapore who finds its stuff in Australia without consent? That’s use—so the Singaporean company could be liable for TM infringement in Australia for conduct not under its control.

Jessica Silbey: cultural analysis of TM use

Early 1900s cases about territoriality and limitations; Prestonettes & Kellogg, Champion Spark Plug. Midcentury: new statute, when TMs are still kind of quaint: Lanham Act’s message is that there’s a lot of common law. Energizes federal judiciary and lawyers, and comes at a time of postwar industrialization and boom. We get a lot of TM lawsuits from that and bloat. Not just territories and resellers. We get the modern LOC test.

TM use moved from local naming to more national, even global, uses both about source ID in traditional way but also the new commercial culture—mixing of art and advertising, redefinition of art; new idea of what TMs are for. Warhol’s Brillo boxes etc. P&G, Kraft, Chevron, RCA, GE. In the background, we still have lots of lower court decisions like Abercrombie, addressing this expansion in questions about distinctiveness and confusion. But there are still unclarified assumptions about TM use—still about affixation but becoming more attenuated.

1988/1995: new matter, including dilution and new statutory defenses. SCt is a national narrator and tells stories about the nation. Inwood; Park n’ Fly, SFAA, Two Pesos—more bloat. Qualitex: SCt gets interested in TM law, which has been evolving in lower courts for decades w/o SCt.

Merchandising: property rights in gross. Heyday of 70s and 80s: slashing corporate income taxes, perception of huge boom; the Me Generation/Yuppies; obsession with financial success—Dynasty, Dallas, Wall Street/Gordon Gecko.

That means that TM is property, any use is valuable, and value belongs to the owner—those ideas were all embraced.

The internet then came in and gave us keywords, rise of initial interest confusion. More expansive, aesthetic, hybrid digital reality—ACPA. Congress isn’t inert—DMCA and CTEA. SCt decides Walmart, Traffix, Victoria’s Secret, and KP Permanent. 13 years later, after a couple of cases like Lexmark, B&B, and Hana, then in 8 years we get 3 registration cases, JDI. They come at a time when the 1A is serving corporate and religious interests mostly. Congress’s ability to act is constrained both doctrinally and politically, and cultural policy has become deeply regressive. Court: faux textualism/formalism; major questions doctrine that curtails Congress’s power to create common law statutes like the Lanham Act; don’t care about difficulties lower courts face in implementation. JDI is about merchandising which the Court thinks is fine; Abitron is about insular nationalism and about confining Congress’s powers/ the only commerce that matter is in the US.

Conclusion: we can’t avoid the culture of propertizing, property rights, art as advertising; we need to frame within those.

Bill McGeveran: Rogers was great, Rogers is dead, long live Rogers. Rogers was good for pattern recognition in judges: there was an understanding that speech interests needed to be protected, and Rogers was lightweight/didn’t interfere w/core TM. That meant it overlapped w/TM use. Results since JDI are not good. Lower courts may overrespond to SCt cases in the beginning. JDI: pattern recognition was in conflict: two visible patterns: “speech” v. this is a dog toy/real property rights/business interests are at stake. Now Rogers has been mangled by the suggestion that you can’t screen before the LOC test in this way. We might need to start from scratch and start from first principles. Has criticized TM use as a useful tool, but its time has come. What are the categories of patterns that will lead to pattern recognition as “of course this is not what TM law is supposed to be for”? NFU; uses housed within communication that aren’t offerings in marketplace; any confusion about sponsorship would be mild/outweighed by free expression concerns. We have to think about the “confusion doesn’t matter” v. “confusion is inherently not happening” models and he reluctantly endorses the latter. Perfect is the enemy of the good and we still have NFU. If they say, this is a dog toy, this is not what Rogers is about, they should also be saying: this is a movie, this is not what TM is about.

Fromer: Business forms affect how we see TM use. Naked licensing doctrine affects whether businesses try to control references/use by affiliates. Amazon has also made big changes in how TM works. Do we want that to become conventional the way merchandising has done? Now that we live on our phones, limited real estate may improve the case for NFU of logos for actual communication. [I’m thinking of the finding in the Apple injunction case that requiring plain text instead of buttons deterred people from using the “leave Apple” option, and Apple knew it.]

McKenna: recognize that these defense-win cases are littered with expressions of incredulity about whether there could be confusion—how do we get court to honor its intuition that confusion is unlikely when the digits of LOC seem to line up in favor of confusion? Refocusing on specific factors and theories of confusion. [And reject bad surveys!]

Christine Farley: JDI doesn’t hold that there’s no test before the test—it holds there’s a test [use] before the test [Rogers] before the test [LOC]. Would it be better to start from scratch?

How to read JDI? Don’t overread it. Court could be read to saying that there is a contained space, a heartland, for TM—could also see Tam and Brunetti that way. But they don’t give us any means for containing TM, only say there’s a heartland. So: consider Dewberry, the most recent SCt TM case. Everyone thought that the result would be the result—you can’t disgorge profits from an unnamed defendant, and the Court didn’t actually say anything else! But the oral argument (and hints in the decision) suggest that there is trouble on the ground and we want TM law to work. If Ds are doing infringement schemes where you can’t figure out where the money is, we want some solution. So we need to work on the ground to find principles about what’s inherently not confusing—Alito in JDI oral argument. “In TM law, context is king”—when can we be categorical v. insist these are deeply factual questions? Maybe in distinguishing b/t the heartland/bete noir and the periphery?

Grynberg: there are dangers to abandoning “sometimes we don’t care about confusion”—if this imperial Court is ever convinced to latch onto an argument, they can make it the law. SCt has never addressed Article III standing for non-core TM theories. It has never addressed issues in Radiance Foundation v. NAACP or noncommercial use more broadly; it has never squarely addressed the LOC test and whether it is consistent w/history and tradition. It’s a separate question whether they can/should be convinced these are worth doing.

Beebe: add to Silbey the effects of great wealth concentration, including on famous brands.

Can we tell the story of UK TM law in the same way as Silbey did? Israeli/Palestinian TM law?

Rogers was too undisciplined b/c any use can be expressive.

RT: No! Rogers was never about “expressive” uses though courts often misdescribed it that way. It was/is about noncommercial speech.

Lemley: TM moved from sitting outside the 1A b/c TM owners didn’t sue people for using existing products in movies or video games or using TM names in books. But a bunch of insane theories of TM law were in fact brought and sometimes succeeded. Can Rogers be abused? Sure, maybe. We saw some efforts to use it in challenging circumstances. But the growth of Rogers was not creep of 1A doctrine reaching out to existing TM doctrines that were totally settled; it was the opposite—reflected and limited growth of expansive theories of TM law that were newly articulated. If it is in fact dead, which is unclear, or wounded, which is, then we need some other doctrine to deal with these problems.

McKenna: in almost every application of Rogers it was applied uncontroversially: movies, TV shows, artworks. No reason to throw out a doctrine appropriate in 95% of its applications. Hard cases shouldn’t lead us to junk the whole thing. The problem was the formulation “expressive work” which is incoherent. The question should always have been are you selling the speech v. are you using the speech to sell something else? That could have made JDI a hard boundary case but that wouldn’t undermine the existence of the rule.

INTA suggested: keep Rogers but don’t apply it to “ordinary commercial products.” But that doesn’t work. Isn’t a video game an ordinary commercial product? But the Court could have said that the Q was whether what you were selling was speech. That could have solved JDI or it could have been a hard question, but the fact that every legal rule creates edge cases doesn’t mean that the rule is bad.

Farley: Silbey’s account reminded her of Schechter’s theory that societal change was what justified dilution.

Robert Burrell: pragmatically, we end up w/ a less dreadful TM system with doctrines that provide a safety valve but also don’t have too many false negatives (as the court sees it).

Heymann: Add in Citizens United to this account. It’s not just what it says but the folklore around it—corporations are people (true for a long time); corporations get to be super-people. Consumer drops out of TM fights as corporate-v-corporate.

Sixteenth Trademark Scholars’ Roundtable Session 3 continued

Midpoint discussant: Laura Heymann

Is the goal consistency? Is the goal limiting principles that can end a case early? Is use the right tool? Is it a proxy? To what extent should we accept the rest of the landscape as fixed, like the merchandising right and students’ intuitive sense that there’s a property right involved?

Context: how much does context matter to the question of use? Should we consider other similar activity by the defendant (VIP’s other products, for example) to figure out whether any particular thing is a “use”? Should we consider other words/symbols on the product to figure out what is “use” versus “nonuse”? Can we test/survey for this?

Context also comes up in the question of whether booking.com is a mark or an address—same lexical unit can serve both as a mark and other things (the use/mention distinction analogy). Descriptive fair use is use, but fair, but what about non-use? Are our main concerns about expressive uses like titles, or technological uses?

JDI says we care about confusion or apply a screen depending on what the defendant is doing—a D making a TM use leads us to care more about confusion.

Jessica Litman: Lemley proposed a deal with the devil: a property merchandising right for a subset of marks; in return we’ll get old TM law back for everything else. Ramsey hoped that failure to function would save us. Some of the work TM use does overlaps with validity doctrines. PTO likes the F2F tool but courts may or may not get on board with it.

Is part of the problem that non-TM experts don’t understand the principle that TMs are supposed to be separate from the product whose source they identify—they’re supposed to be different things! That’s what symbol/sign relationships are! TM claimants want property rights in the thing they sell, but could we disseminate more widely the principle of the Restatement of the Law of Unfair Competition that TM is for that connection & when that connection is absent b/c the TM and the product are unified, there’s no TM claim—that could help courts pick the good guy in the room when deciding cases. TM law is not a good fit for the merchandising right. It’s not supposed to protect intrinsic value. Merchandising right shouldn’t exist—© is sufficient in many cases, and people should be able to signal their fandom for the U of Penn through both licensed and unlicensed merchandise.

Lemley: use of a mark v. use of the identical lexical content of the mark—is that a useful distinction? Why does it help us? All these use arguments are about what purposes the use is serving, and he wants to know about non-word marks in this system. One could use a logo in a non-TM sense, but is there a parallel to the analysis of “identical lexical content”? What about a rotten apple logo to make a comment on Apple?

Heymann: Keyword sales are not about meaning but about matching.

Roberts: lawsuits against UberEats and similar—when they go to UberEats users see logos; nonpartner restaurants object to use of names and logos. Logos seem worse.

Lemley: but see negative matching which does try to target when users are searching using the TM specifically. FTC’s Business Impersonation rule says it’s deceptive to use

RT: Responding to Heymann’s argument that JDI distinguishes b/t situations where we care about confusion & says that Rogers means we don’t care when the D is making an entirely non-TM use in noncommercial speech. You can also, and Rogers itself did, make an empirical claim about the likelihood of deception for creating strong rules justified by error and litigation costs: Dastar, Walmart. That also helps strengthen the Second Circuit’s principle that in non-Rogers cases asserted against noncommercial speech (that is, title v title), First Amendment concerns should lead to a more careful LOC analysis b/c false positives are bad there too—they’re just even worse when the P lacks its own expressive work, justifying a categorical rule like Dastar or Walmart. That’s not confusion-indifferent, it’s confusion-risk-balancing. This is an argument we should keep making.

To Lemley’s Q: Yes, there are NFU image cases. Mattel v. Walking Mountain is NFU of Barbie’s trade dress. Phone reseller case: logos are NFU to identify which phones the reseller accepts. [Kozinski, naming NFU, characterizes it as non-TM use.]

Fromer: can functionality doctrine help us think through this? If something is being used for its intrinsic value, it’s not TM use.

Lemley: this is where VIP’s language can be abused. Walking Mountain: if Mattel says the art advertises itself, then the presence of Barbie advertises/helps sell the art [though I’m not sure that I’d call that a source-identifying function—it seems to be one of the other functions the Europeans talk about].

McKenna: biggest mischaracterization of Rogers by JDI is that it involved an entirely non-TM use with no TM function; Rogers itself was very clear that the title served a “hybrid” function and still needed protection.

LOC test itself: survey procedure for Eveready is built on concerns for a reading test—you ask people “who makes this” and if they answer “Eveready” they could just be reading. You have to ask “what other products does this company make?” Otherwise a survey would find confusion between the multiple Deltas. Which is to say: Using the same word isn’t the same thing as using the same mark, which brings along with it indications of source. The LOC test is asking whether it’s a use of the P’s mark or just the same word. Where the factors break down is where there’s no dispute that the use is referential. Eveready is the opposite of referential use. Merchandising cases invert the argument, so forcing them into LOC multifactor tests doesn’t work well. You need something like NFU or Rogers because the factors are more likely to be wrong.

Stephen Baird: NFU—can you use logos of companies to indicate that you can buy their shares? TM attorneys would be suspicious of the “too much” problem. New Kids footnote: a soft drink competitor can compare to Coke but can’t use Coke’s distinctive lettering, citing a VW case; cf. copyright fair use. That footnote is dicta within dicta and has been overread. Most TM lawyers adopt the view that you can never use someone else’s logo; one of the things that weighs against that was “strength in numbers.” In a car wax ad featuring only a Porsche, Porsche won. But when there were multiple ads w/multiple different luxury vehicles, Porsche didn’t sue—when there’s half a dozen different brands in the ad, it’s hard to say that any one of those is sponsoring/endorsing. [That logic also helps explain the Xfinity case above; I also think about the “collage” reasoning in ETW v. Jireh and Hart v. EA, albeit that’s ROP analysis.]

Burrell: as a person from a registration system, the idea of being able to use the thing that is on the register blows his mind.

McGeveran: “too much” is one of the NFU factors that attempts to be a proxy for real confusion, and it is imperfect.

Dinwoodie: Likes the 3d Circuit version of NFU where you have to reflect the true relationship—it’s a matter of objective truth and that’s an easier thing to evaluate [query whether the 7^th Circuit case about attributing responsibility to architects calls that into doubt].

McKenna pointed out that the 3d Circuit LendingTree case does have a tiny bit of logo use (a photo of a woman with a Coldwell Banker sign partially visible) which the 3d Circuit doesn’t say anything special about & just remands.

Sheff: can we identify where confusion creeps in to the alternative doctrines—functionality, we tolerate confusion; descriptive fair use, we tolerate some confusion. Implicitly the amount of confusion will sometimes be enough to disqualify the defense. With descriptive fair use, the consideration of confusion creeps back in as “use as a mark”—w/enough confusion, the court will find use as a mark. Where will confusion concerns creep in to various defenses? [I don’t think this is how functionality works (aesthetic functionality maybe); and the KP Permanent courts, especially on remand, also think that amount of confusion matters on its own as well as creeping back into use as a mark.]

Lemley: SCt recognizes that defenses aren’t very helpful if confusion defeats them—two ways to do it. KP Permanent remand: hike the standard so 15% isn’t enough. But other defenses like NFU/Rogers can say that confusion just doesn’t matter. Empire’s use of “Empire” for a music company might be confusing to a number of people.

[I would say again that the other way to see it is that in NFU/Rogers cases an individualized determination of confusion just doesn’t matter b/c it’s so likely to be wrong—b/c the only direct evidence, surveys or other reports from consumers who have misconceptions about the legal requirements for parody/commentary is not reliable.]

McGeveran: in an environment of second-rate textualism, calling Rogers a pre-screen as VIP does (and Rogers did not) creates the risk that courts will reject it more than explaining it as a set of rules for more reliably, less false positively determining LOC.

Baird: Declaratory judgment under Rule 57 is equitable—maybe a way to get the judge to focus on invalidity early on?

Lemley: keeping in mind you can’t get a DJ on something that would have to go to a jury.

McKenna: one way to see the defenses is confining LOC to the core—source/passing off. The confusion has to be in the heartland of TM b/c of these other competing interests—descriptive FU, NFU, and Rogers all have these limits. It’s not that there’s no TM right at all, it’s that it’s not triggered without D pretending to be the P. [I’ve characterized this as D speaking as P for noncommercial speech.]

Dinwoodie: EU’s central function doctrine, that D’s use has to interfere with the central function of a TM, is operating as what we might think of as a TM use requirement. The problem is that they then say confusion = interference w/central function. Once you get into the morass of non-central functions, it gets worse.

Sixteenth Trademark Scholars’ Roundtable Session 3: What is the Significance of Trademark Use 2.0?

Introduction: Mark Lemley:

What VIP actually says: Rogers test insulates from liability when use is only non-source identifying. Cardinal sin is to undermine source-indicating functioning: LV modification of mark in suitcase market implicates the core concerns of TM law. That is a conception of the core of TM law that Lemley thinks is both traditional and right, and also way narrower than what TM law does now, more of a 1960s vision.

There are two different things we call “TM” that are causing difficulties. Classical source confusion: double identity/LOC multifactor test covering similar but not identical marks/goods. That starts to fall apart b/c of the rise of brands, as opposed to TM—the TM is valuable in and of itself. People don’t spend so much on Birkins just b/c of quality—it’s the value of the logo in and of itself. This is real; but we’ve taken it seriously by trying to stretch/mutilate TM law designed for source. We include merchandising, which could be done by a property right, but we don’t admit that, and instead stuff it into LOC by stretching confusion to any sort of connection/affiliation, not considering harm, and stretching the individual digits of confusion. Counterfeiting: post-sale confusion to ignore the fact that no one might be confused at purchase. These built-in elasticities then have lots of other consequences—once we’ve established affiliation confusion w/broad/amorphous tests for confusion, it becomes hard to say that anything is not confusing as a matter of law. Doctrines developed to protect “apex” brands extend everywhere. Pro basketball team that decided to start all games at 7:11 pm—that was a co-branding relationship. If someone else starts all games at 7:11 pm, is that confusing? What if you see a can of Coke in a movie? 30 years ago no student thought it meant anything, now 75-80% of students think there was product placement. Since we don’t require harm, that’s it.

So, what does Article III standing look like? Federal law might actually require more as a constitutional matter. We might want limiting doctrines to say that even if you have a property right, it’s not a right to prevent people from writing/talking about your TM/engaging in comparative advertising/commenting on your TM. IP has traditionally gotten a free pass in 1A law b/c we’ve viewed it as bound up in the classic justification for IP; if the IP we have now is not linked to traditional forms of IP, then that should be revisited. Elster is interesting in that regard.

We could rethink the role of confusion—if the model is property, then consumer confusion isn’t necessarily important. We wouldn’t necessarily ask about whether people think there’s a relationship between two entities but only what the boundaries of the right are. A property right could allow us to recognize that consumers will detect even smallish differences b/t famous marks and variants. We could articulate right to repair, reuse, resell, carry—giving purchase for TM use doctrine to explain what’s in the property right.

Barton Beebe

Providing structures: one proposal is formalism; another is pattern recognition for judges; but those two might be in tension/the second may be harder to reduce to rules. Is TM law becoming post-theory, w/courts just trying to make sure the “right” entity in front of them wins? Is use as a mark a way of doing that?

Questions about relationship b/t analogous use and use as a mark; abandonment—if more & more conduct qualifies as use as a mark, won’t that allow Ps to point to D-side use cases and say “I’m doing at least that much!”

If we should have training for other forms of survey evidence, what would a survey look like that surveys for use as a mark? How would that differ from LOC, distinctiveness surveys? Goes to whether we’re dealing with an autonomous analytical contribution or something else. What about when the D presents evidence that it’s no longer using something as a mark—does it affect remedies?

What about disclaimers? Would “click on this to acknowledge that this is not use as a mark/use as a designation of source” help?

Lisa Ramsey

McCarthy and others say TM use should be taken into account in LOC; she thinks that TM use should be defined narrowly, as in JDI—source-identifying uses. Word “primary” is worrisome though b/c could let affiliation creep in. We should focus on false statements about licensing, affiliation, etc. not implications. Naked licensing: we need some symmetry w/rules about abandonment/enforcement. Only find TM use if it’s ID’ing source or communicating that TM owner is responsible for quality—not just that they’ve given permission.

A lot of the time secondary meaning can overcome a failure to function refusal, but sometimes it can’t—“Drive Safely” for Volvo—that just can’t be a TM. Concerned about rules that require us to have surveys, b/c then only big companies can get rights/defend their uses as TM uses (regardless of whether they should) and small companies can’t (ditto). Better: focus on reasonable consumer. Shouldn’t have a system that requires consumer surveys. [Let me introduce you to 43(a)(1)(B) implied falsity cases!]

Grynberg: Acquired distinctiveness allows us to distinguish Nike from Lettuce Turnip the Beet—looking for where the value was created. If we’re worried about expressive uses, we can ramp up the acquired distinctiveness standard. LTTB and Nike are on opposite ends of the spectrum; we can discuss where to put 100% that Bitch, but courts do want to give rights to Nike and not to LTTB so we should talk about how to create the doctrinal framework.

Students surveyed before teaching TM: Should owner of McD’s mark be able to stop unauthorized use of mark on front of shirt (not on tag)—every year, at least 90% of students say yes. Tries to teach them the reasons why not, but only moves a couple of students a year. We have to accept that judges think this way. When asked: should McD’s control whether a person can set a fictional movie in a McD’s restaurant? Outset of class: students think that McD’s should be able to do so; their normative beliefs change after learning TM law.

Dinwoodie: 1A avoidance doctrine is a useful way to connect the Court with the relevant concerns for Rogers. It will be harder to convince the Court that the Lanham Act is a common-law delegation statute, but lower courts are more open to that.

Lemley: JDI Dct got the message and threw out the survey as not weighty enough.

Dinwoodie: yes, it matters that this was association confusion (at least it matters if we tell the story that this was an association confusion case).

McKenna: TM as exception to free competition is the historical conception, but that’s no longer the view of “brand owners” and judges. Massive expansion of role of large law firms is also part of the story—lawyers involved in writing Lanham Act were experts deeply invested in the TM system. Now though the big players exist to make the big firms richer and more powerful, and deep expertise in the area of law is less important—what the big firms have nailed is the idea of ownership of these marks.

Fromer: Proxies are good b/c they preserve ground for normative values; better than always going directly to consumer perception. Consumer perceptions can be off—consumers might think that source-indicating includes references. Or they might be guided by seeing marks blurred out on TV, believing that permission is necessary to reference marks (goodbye first sale!). We need ways to measure what consumer perceptions stem from, but normative proxies might be better and easier to identify.

Litman: the problem is not that there’s no definition of use in the statute; use in commerce is all over the statute, but rather that it’s narrow in ways people don’t like—affixation to a product for goods is required for infringing use.  And people want to stretch it. [You could use 43(a) “false representation of fact” for many situations and say it wasn’t a “mark,” and the affixation requirement is only for “marks.” I’m not sure how many allegedly infringing uses aren’t really affixed, but it is weird to have that difference b/t goods and services for infringement and not just for acquisition of rights.]

Lemley: elaborates on concept of “apex” brands, which would not be the same thing as fame for dilution. Instead, they’d be the brands for which affixing the TM on something makes it more valuable to people, where the brand itself is what people are seeking—you need sufficient reputation, but Coach and Texas A&M would qualify even though not famous.

Farley: not all “fame” means things are really good source identifiers—they have secondary meaning.

Burrell: Common law lawyers find it really hard to deal with systems that don’t have precedent—reacting to European high courts as if they were binding in other cases even though the definition of distinctiveness keeps changing at that level, whereas Poland and Germany don’t have that problem.

McKenna: is the SCt still a common law court? And how will we figure that out?

In TM, priority disputes are about the amount of use, not the nature of use—it’s about how much latitude you give people to have breaks in use, things that aren’t technically TM use but might create consumer understanding—but those things are bound up in the fact that analogous use cases are about which party is going to own the mark and it will be one of them, not neither of them.

Sixteenth Trademark Scholars’ Roundtable Session 2: part 2

Mid-point discussants:  Rebecca Tushnet

Continuing the theme of offering a series of observations:

Picking up on the relevance of 33(b)/referential use. First, for textualists, it may be true that 33(b) indicates that there is no general use as a mark requirement for infringement otherwise 33(b) would be a null set, but 33(b) also proves to textualists that use as a mark is a real thing. Substantively: 33(b) requires “Use other than as a mark” and solely to describe defendant’s goods/services—if “describe” can include description of defendant’s history or content, then the idea that the First Circuit and the Sixth Circuit have played with that descriptive FU includes many instances of nominative FU is not wrong. There’s no reason we can’t make a use/mention distinction and we’ve seen courts be willing to adopt various linguistic concepts, including synecdoche in genericism and implicature in false advertising law. Maybe we need to start building this out as a concept as part of our efforts to help courts operationalize the intuition that there really are things like TM use.

Keyword ads: WhenU could actually be understood as a “it’s a descriptive/non-speaker-identifying use” case: “Rather, WhenU reproduces 1–800’s website address, «www.1800contacts.com.», which is similar, but not identical, to 1–800’s 1–800CONTACTS trademark.” “The differences between the marks [sic] are quite significant because they transform 1–800’s trademark—which is entitled to protection under the Lanham Act—into a word combination that functions more or less like a public key to 1–800’s website.” [informational functionality!] “Moreover, it is plain that WhenU is using 1–800’s website address precisely because it is a website address, rather than because it bears any resemblance to 1–800’s trademark, because the only place WhenU reproduces the address is in the SaveNow directory” (emphasis added).

Among other things, this provides a potential foundation for the use/mention distinction—there may be typographic overlap but that doesn’t mean there’s TM function overlap.

Rescuecom: Distinguishes WhenU because Google is selling the “mark” – of course those transactions don’t cause any confusion; so it’s one action from column A to find use and then another action from column B to find potentially confusing conduct

But then in the Second Circuit’s recent 1-800 v. Warby Parker keyword ad case, the court finds “dissimilarity of the marks” dispositive—which only makes sense if you think that keyword purchase isn’t “use as a mark” so you’re comparing P’s mark with D’s separate mark.

How to deal with Abitron v. JDI on use? What I’ve been telling students: There are several possibilities: (1) Abitron means Rogers never applies; (2) If there’s source confusion, there’s use as a mark; Rogers is only for other kinds of confusion; (3) Abitron is not relevant, and there can be confusion of any kind without use as a mark; but if there’s no use as a mark, Rogers can be applied (but how do you know what use as a mark?).

My favorite of these: Rogers applies to non-source-confusion theories (side note: maybe possible to distinguish some of the language in 43(a); but 43(a) doesn't even say "mark"! How could Ct say that the definition of use in commerce applies to both?).

Rogers for affiliation/sponsorship/endorsement confusion not source confusion would generally protect the content of a work (though if there was use as a mark then all the theories would be available). Dastar would then deal with attempts to say that the content of the work functions as a mark for itself.

But more generally: A core problem is that 43(a) is as broad as 32 except for counterfeiting and presumption of validity, and that's not useful in speech cases/it removes all the substantive distinctions Congress tried to make.

One fix: insist that 43(a) incorporates a common law style harm requirement (a good idea? give up on the idea that TM infringement should require harm beyond that required by Article III; 32 would become an American version of double identity).

edge cases: Belmora: why did the existence of a registration limit the remedies to which Bayer might have been entitled? A textualist might say, as in Romag, that the statute provides for all of these remedies regardless except counterfeiting. Difference b/t 43 and 32 doesn’t seem to fully explain Belmora—registration preemption? [But the statute also does say subject to the principles of equity, which could reasonably include the difference b/t having a registration and not having one; a disclaimer injunction is an injunction, it’s just not a complete prohibition on use.]

Conclusion: if we can't pry apart 32 and 43(a) in what must be proved beyond validity, then defensive/infringment-side doctrines based on use as a mark will not help

Question re: teaching Abitron: how is it going? Deep confusion!

Leah Grinvald: How to stop litigation early/before it starts—a key concern for small businesses. TM use was supposed to be a limiting doctrine to end confusion early. Lerner & Rowe could have prevented years of litigation for other keyword buy cases, but fact that it was decided on a LOC basis [in the context of courts believing that LOC is always intensely factual instead of intensely factual outside of classes of cases we know quite well] makes that difficult.

Mark McKenna

How much poorer we are for having lost the distinction b/t TM and unfair competition! And the related loss of ontological categories, if TM is not a limited category and anything can be a mark. [Also leaves doctrines like “ideas can’t be marks” sitting out in the cold, looking like anomalies.] Affixation is a formalist concept; formalism is used to delineate the category but there’s a residual role for equity with more limited remedies. Modern version: defendant has to disprove that it’s not using something as a mark, where use as a mark means things much beyond source, and the remedy is likely to be a full injunction. All of this is a reversal of past practice where the focus would be on the defendant’s conduct and not the plaintiff’s (unregistered) right. We’ve adopted a model that’s entirely functionalist in asking whether something is a TM, in a world where consumers are used to seeing marketing efforts of all sorts—broad recognition of services is another thing that changed in the 20^th century and provided the foundation for rights in gross type thinking—celebrities are considered marks for themselves. In re Lizzo: makes you think of a celebrity and is therefore functioning as a TM on the front of a shirt.

The impulse about use as a mark in JDI and Abitron hearkens back to the old central concept of source: who made/stands behind the quality of the product, but even there the SCt couldn’t commit—TM cares about that the most, but the Court says nothing about what else TM cares about and to what degree. To recover TM use, we will need some formalism, and we will need to accept judgments at a wholesale level rather than a retail level. It can’t be the case therefore that secondary meaning can override those rules; they should not be default rules.

Graeme Dinwoodie: 43/32 divide in remedies: there are cases granting more limited relief, like Belmora, Blinded Veterans, Newman’s Ferrari dissent—there are datapoints you can use but their mindset is different from that of Alito’s. The capacity to do that does depend on the methodology the court is willing to adopt.

Jessica Litman: started teaching TM before Two Pesos, which merged 43(a) and 32. Before that, what you had to prove to get relief under 43(a) was close to what RT talked about in terms of proving harm, though you had to prove it in the protectability part of the case. You had to prove entitlement to relief as to what D was doing. There isn’t much reasoning in Two Pesos, and many sensible post-Two Pesos SCt rulings were attempts to undercut it.

Ramsey: “Lifeguard” mark for T-shirts—company has gone after many other uses for front of shirts. Benefit of treating failure to function separately from distinctiveness is that you can acknowledge that “lifeguard” on a T-shirt communicates that the wearer is a lifeguard. It shouldn’t be limited to “widely used” phrases since things like TRUMP TOO SMALL are not widely used.

Lemley: Gringo case rejecting Rogers application: doesn’t make any sense to say that D’s use is TM use b/c P’s use as a title is TM use, so he’s against symmetry in that sense.

Burrell: registration system in Australia can make it more attractive to apply to register a parody mark even if you don’t intend to enforce it against other parodists—given the admin context and the fee-shifting it might make more sense to go through the cheaper registration proceeding if the target decides to oppose, and then if you have a registration you have stronger standing against the parody’s target.

McKenna: need to really insist that whether D makes TM use has nothing to do with whether P makes TM use.

Beebe: 43(c): use in commerce—seems to impose burden on P to show D makes use in commerce to show dilution—that it was source-identifying. How to meld w/exceptions such as fair use other than as designation of source?

Lemley: Dilution clearly has TM use—D’s use of a mark or trade name! But if we’ve concluded that it’s use for confusion purposes, maybe it’s also use for dilution purposes.

Dinwoodie: Rescuecom: Leval says something has to be used or displayed for infringement, but not as a mark b/c he says an infringing D can’t make a “bona fide” use. He wants to keep some part of the statutory definition even for defendants. But thinks G does use/display the mark. Louboutin, then, is a case where the court says there was no use—they weren’t saying there was no TM use, they were saying that there was no use at all. [Dispute over whether that makes any sense, is covert defense-side functionality done by limiting scope of mark, or omits the necessary confusion analysis.]

McKenna: Lettuce Turnip the Beet does the best job harmonizing this by saying that tag use is different than front of shirt use.

Janis: it’s hard for students to figure out what the fuss is about with use until you get to Jack Daniels. [Relates to Lemley’s point that maybe Abitron should be taught with the limiting doctrines—situations that are pulled out of the multifactor LOC test.]

Sheff: we have areas of law where balancing tests are the rule, but also special per se rules for certain situations as well. Example: takings jurisprudence: we do regulatory takings balancing except if there’s a total loss, etc. Attempts in TM have failed—remember the internet troika? They fail by being folded back into the multifactor test. NFU: 2d Circuit folds the factors back into the LOC test. Parody cases: we don’t carve it out but we fold it into our consideration of the multifactor test. Not sure exactly why.

Ramsey: JDI creates an opportunity to use that relatively narrow definition of “use as a mark”—use to identify your own goods or services (so referential use would not be TM use).

Stephen Baird: Louboutin example is a good one b/c the registration was far too broad—the sole didn’t pop without contrast—no highlighting, no use.

Sixteenth Trademark Scholars’ Roundtable Session 2: Trademark Use as an Element of Infringement Analysis

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 6^th 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: 9^th 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 9^th 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.