Rebecca Tushnet Bad
Spaniels, Deceptive Raptors, and Tiny Hands: The Persistence of Commercial
Speech as a Category
Jennifer
Rothman has done related work, but her focus has been on the different
definitions of commerciality across IP regimes; I’m interested in a different
question: holding constant the definition of commercial speech as defined by
First Amendment jurisprudence, which is basically speech that does no more than
merely propose a commercial transaction, does the Lanham Act cover commercial
speech? This basic question has three different answers, all regularly used in
any given jurisdiction—this is not a matter of circuit splits. The answers are
yes, no, and sometimes, a list both comprehensive and dismaying.
In response
to the massive expansion of trademark’s scope over the last century, courts
have, mostly implicitly, devised a compromise by which trademark is pulled back
to a more traditional anti-fraud-like scope when it is applied to noncommercial
speech sold in the marketplace, such as movies, newspapers, songs, and visual
art, or used as the name of an organization with dues-paying members, such as a
political party or congregation. This compromise explains an otherwise
surprising feature of the cases: Political speakers and religious speakers can
often expect worse outcomes than “commercial” publishers engaged in
noncommercial speech, given the kinds of cases brought against them. The key here is that when I say fraud, I do
not mean fraudulent intent, but materially deceptive effect.
Summary of current
treatment:
Although courts have
often referred to “expressive” or “artistic” works as shorthand for the scope
of Rogers, they have applied it to speech that qualifies as noncommercial under
the Supreme Court’s First Amendment precedents—speech that does not propose a
commercial transaction and is instead the product being offered to the
public. This is unsurprising: Rogers
itself was based on an opposition between “artistic expression” and “commercial
speech.”
While Rogers thus
supplies the rule for most of what people think of as “speech,” there are
caveats: Rogers has not been applied to disputes about the names of
noncommercial organizations. In addition, not all circuits have adopted Rogers,
though neither has any court of appeals rejected it. The Sixth Circuit has adopted Rogers but read
“artistic relevance” narrowly, so that certain artistic techniques like rap
freestyling might not qualify. The Ninth
Circuit has adopted Rogers but tinkered with what counts as “explicit”
falsehood, holding that some non-explicit content might qualify as explicitly
false if there’s nothing else present that allows consumers to identify the
true source of an expressive work.
Rogers itself may
not fully replicate direct First Amendment analysis of a liability claim
against noncommercial speech. In general, the content of noncommercial speech
may be regulated only to further a compelling government interest, and the
regulation must be narrowly tailored and the least restrictive means of
accomplishing that compelling interest.
At least in its “explicit falsity” prong, though, Rogers tailors
potential liability for noncommercial speakers more closely to classic fraud,
excluding most noncommercial speech from trademark liability. But there are
several remaining problems. First, requiring artistic relevance wrongly puts
the burden of justification on the noncommercial speaker and invites errors
such as that made by the Sixth Circuit.
Second, Rogers does not impose a materiality requirement, and it is hard
to see how the government has a compelling interest in protecting consumers
from confusion they don’t care about.
Finally, Rogers does not require courts to consider a disclosure remedy
instead of the full range of Lanham Act remedies including injunctions and
damages, suggesting a failure of narrow tailoring.
Rogers is therefore
imperfectly matched to the general requirements for regulating noncommercial
speech. But by drastically shrinking the set of potentially
trademark-infringing noncommercial speech acts, it does eliminate many
potential conflicts with the First Amendment. And an explicitly false claim
that a biography is authorized by its subject—something that Rogers leaves
actionable—would meet the ordinary requirements for fraud. Thus, in Rogers
cases, most non-fraud-like conduct has been excluded from the scope of the
Lanham Act, making its application to First Amendment noncommercial speech
tolerable.
II. Gripers and Political Critics
Cases involving
criticism of ordinary commercial actors provide a fascinating contrast to both
noncommercial speech sold in the market and to political and religious
conflicts. Courts have increasingly found that critics simply weren’t engaged
in commercial speech covered by the Lanham Act even if there was some tenuous
connection between the allegedly infringing speech and a distant potential for
the defendant to profit. The 9th Circuit
in Bosley v. Kremer, the 4th in Radiance Foundation v. NAACP—these courts very
clearly say that trademark law applies to commercial speech, defined as it is
in First Amendment case law, and not to noncommercial speech.
the Sixth Circuit reasoned that, “The Lanham
Act is constitutional because it only regulates commercial speech, which is
entitled to reduced protections under the First Amendment.” Other cases cite Representative Kastenmeier’s
statement that the law “specifically extends only to false and misleading
speech that is encompassed within the ‘commercial speech’ doctrine developed by
the United States Supreme Court.” They
thus conflict with the cases in the previous Part, which apply the Lanham Act
to noncommercial speech, albeit with a modified test—it would be hard to
maintain that Fred and Ginger is “entitled to reduced protections under the
First Amendment” or “encompassed within the ‘commercial speech’ doctrine
developed by the United States Supreme Court.” In practice, many of the gripe
cases say they are following First Amendment precedents, only when they’re
confronted by a subset of noncommercial speech—that which does not solicit the
purchase of the speech itself.
But the political speech
cases don’t fit into that subset, because the speakers are often soliciting
monetary support for their speech, if not exactly purchases of speech. [Quote
from Nader] [quote from Radiance Foundation] Likewise, these cases held that
the Lanham Act did not apply to noncommercial speech.
This line of cases
does more than create a conflict with Rogers and its progeny. It also creates a
conflict with a third line of cases: The Lanham Act is applied with no
adjustment when political or religious plaintiffs, as opposed to ordinary
marketplace actors, bring suit against competitors who claim to represent the
true ideology behind the trademark. The result is a near-complete division in
the case law: when a political or religious plaintiff sues a political or religious
defendant for trademark infringement, it can often win, whereas a commercial
actor that sues a political actor will often lose on the ground that the Lanham
Act simply doesn’t apply to the political actor’s speech.
III. Schisms: Political and religious
organizations in conflict
It may seem odd that
political and religious speakers are the noncommercial speakers still losing in
this new speech environment. Perhaps they lose because courts are in practice
more sensitive to private commercial interests in speech than public political
or religious interests, though my hypothesis is that there really are a higher
percentage of fraud-like cases litigated under the heading of political speech
conflicts than there are in ordinary trademark disputes, given trademark’s
general expansion far beyond fraud.
But the formal
justification for the results in these cases is not based in an explicit
distinction between “ordinary expansive trademark law” and “noncommercial
speech that is fraudulent.” Instead, in the political speech cases, courts
speak in blanket terms about whether the Lanham Act applies to political
speech, answering “yes” or “no,” usually rendering rough justice in the case
before them but creating problems for future political speech cases that present
different plaintiff/defendant configurations. In religion cases, meanwhile,
there is no meaningful division in the cases: breakaway sects are routinely
enjoined from using the names that they believe truly reflect their religious
commitments.
While courts in
“artistic speech” cases have reassessed the weight of First Amendment defenses
over the past few decades, they have not done so within religion-v-religion
cases, for reasons that are not elucidated in the cases themselves. Unlike
Rogers cases, these cases say, for example, that courts are in agreement that
there is no “exception to trademark law for religious, political, and cultural
expression” —a framing that accepts trademark’s broad coverage of almost all
fields of human endeavor, rather than seeing coverage of noncommercial speech
as an extension in need of justification.
While Rogers
rejected any consideration of whether the speaker had adequate alternatives to
using the plaintiff’s trademark because speakers are entitled to choose their
own ways of speaking, the religious
cases embrace the concept of adequate alternatives. Thus, it may not even be
descriptive fair use to use the name of the religion from which the dissenters
have parted.
As long as believers
are allowed to use generic terms to identify their “faith,” they may be
enjoined from using non-generic terms as the name of their “church,” a
distinction that courts are confident they can make.
While I admit to
some skepticism about this conclusion,
anti-fraud principles arguably explain why audience interests outweigh
schismatic believers’ interests in describing themselves in ways that they
believe truthful. The breakaway sects, by all accounts, sincerely believe that
they are delivering exactly what they say: the religious services associated
with a faith known to them by a particular name. To disagree with them in the trademark
context does seem to require holding that they are wrong: they are not
delivering the true faith, at least according to the name by which it is
known.
Some of the work is
also done by the idea that trademark control extends only to the name/logo of a
congregation and not to other elements of worship. But trademark law elsewhere extends far past
product/service names to things like a building’s layout, slogans, uniforms,
and other aspects of the “product” itself; indeed, the PTO has granted
registration for NKJV for Bibles, referring to the New King James Version. If a church adopted a distinctive name for
G-d, then general trademark law would, in theory, allow it to prohibit other
churches from using that name. Courts’ use of genericity as a boundary in
religious cases seems to be designed to limit sects’ trademark control over
anything but a church name or logo —which aligns it with an anti-fraud regime,
but not with modern trademark law.
Another factor
contributing to the siloing of religious schism cases is that most analysis of
their First Amendment implications focuses on free exercise, not freedom of
speech. Courts have said that applying
trademark law to schismatics is not a free exercise problem because the
governing law is based on neutral principles of who has priority and who has
the legal right to control the trademark.
Under Employment Division v. Smith, that would seem to end the
question—just as safety codes can be imposed on churches as they are imposed on
other buildings, so too with trademark law.
But the treatment of noncommercial nonreligious speech under Rogers
suggests that in fact religious schismatics are being treated worse than other
noncommercial speakers, at least at the level of the general principle being
applied. The Supreme Court has recently begun to suggest that religions are
entitled to a kind of most-favored-nation treatment: any exception or limit on
a generally applicable law must be extended to religion. At a minimum,
therefore, it would seem that schismatics would be entitled to Rogers-style
explicit misleadingness analysis, and that small differences in schismatic
entities’ names, or the presence of clear disclosures of nonaffiliation, could
be enough to avoid explicit misleadingness.
Compared to the
Rogers line of cases, the religious cases reveal a startling inattention to the
defendant’s own interest in expressing itself in a way that is truthful to the
defendant’s own beliefs and intended meaning.
Registration works
like the last set of cases, indifferent to the commerciality of the
registrant’s speech.
A. Lessons for Trademark Law
First, noncommercial
speech both is and isn’t covered by the Lanham Act. Cases like Rogers often seem protective of
First Amendment interests in noncommercial speech, but only because the
baseline coverage of the Lanham Act has grown so broad. Compared to the
reasoning in the gripe cases—which clearly state that the Lanham Act covers
only commercial speech as the Supreme Court has defined it in the First
Amendment context, that is, invitations to transact in the marketplace—Rogers
is fairly weak tea. It holds out, and occasionally delivers, the prospect of
liability for noncommercial speech even if consumers don’t care about the
source or sponsorship of the speech at issue, but just want to listen to a
catchy song or buy a funny greeting card.
One possibility: we
should the political v. political cases and religion v. religion cases out of
the “trademark infringement” frame and make them show fraud
Explicitly limiting
noncommercial trademark infringement claims to situations that meet the fraud
pattern—direct competition between the parties plus deception that is material
to consumers—could force courts to confront the fact that trademark law now
prohibits immaterial confusion among a small percentage of consumers who are
not deciding between two competing products. And that admission itself might be
uncomfortable, especially as the level of constitutional protection for
truthful, nonmisleading commercial speech has been raised in non-trademark
contexts.
B. Lessons for First Amendment Law
Should We Care
About Intent or Should We Care About Effect?
The political and
religious liability pattern is Fraud minus insincerity. This requires us to
consider how serious we are about scienter as a requirement for liability for
false speech. The special scienter requirements for defamation perhaps ought to
be understood descriptively as specific to the risks of chilling negative
speech about others, since we are very willing to suppress core political and
religious self-identification when it seems both material and deceptive to
outsiders.
In the political and
religious trademark cases, courts prioritize effect over intent. While the case
results suggest that courts will intervene to prevent fraud-like outcomes, they
should be more explicit about why the Lanham Act is being extended to
noncommercial speech in situations where such extension can survive strict
scrutiny.
Also suggests
something about Rogers: It is still too weak because it doesn’t care about
materiality. Explicit deceptiveness might justify an inference of materiality,
but artistic relevance is useless in sorting the value of noncommercial speech
and should be discarded. A version of Rogers that focused on fraud would be
consistent with the political/religious cases and the griper cases, despite their
varying answers to the current question: does the Lanham Act cover
noncommercial speech? “Yes, but only where consumers are materially harmed in
ways that resemble classic fraud” would be the ultimate rule.
Jeanne Fromer: parallel
universes. How would you understand megachurch/religion as big business.
Jessica Silbey:
Aesthetics, politics, and religion as categories that the Court uses. IP keeps
the categories separate for exceptions purposes, but the SCt probably doesn’t.
Do you really want to flatten that out in IP?
Betsy Rosenblatt:
Whether these categories are doing work: should it always have the same answer—why?
If Lanham Act is about speech versus
competition, it seems natural that different kinds of uses would be treated
differently, since they’ve led to different potential kinds of confusion.
Church thing is weird but leading to something that feels a lot like confusion.
Felix Wu: Courts in
political/church cases are trying to get at and see “more source identification”
than other uses. May not just be types of cases but types of uses—naming the
organization feels more source identifying. Seems more Lanham Act like. [which
is true but emphasizes how weird the “core” Lanham Act liability scope has gotten]
Q [Aviv Gaon?]: theory
of selection effects makes sense—which cases make it to litigation affect the
words the court uses, not just the outcomes. [Pathway to how selection effects affect the
substance of the law.]
Bill McGeveran:
soliciting donations comparing to another kind of organization that doesn’t
engage in speech in the same way: nonprofit that fights cancer. Some ways of
resolving that could have the impact of burdening P markholders in these
categories than similarly situated nonprofits that aren’t religious or
political.
Julia Lang: court seems
concerned w/loss of control over name of a church like “Methodist Episcopal Church”—“not
fair”—those words seem at best descriptive. Who is the TM owner? [The key thing
is that courts say that TM’s generic/descriptive categories and likely
confusion test for scope of rights work w/o modification for religions.]
Mark Lemley & Sari
Mazzurco, The Exclusive Right to Customize
Aftermarket
customization, sometimes shoes into art and sculpture, sometimes shoes into
more decorated shoes. Satan Shoes from Lil Nas X made from modified actual
Nikes. Sometimes there are brand partnerships—Nike and Ben & Jerry’s—but sometimes
aftermarket customization adds more brands, like Nikes customized w/Amazon Prime
logos. And sometimes brands do unauthorized customizations—McDonald’s
customized a PS4 with painted McD fries. Is it art, collaboration, or something
else? Brands themselves want in on the act, officially sponsoring artists’
modifications. And sometimes the customizers might not start with an authentic
shoe.
Aftermarket
customizations also can involve repurposing products—taking a face off a watch
but keepign the mechanism; taking a Cartier watch and adding jewels to make it
look more like a more expensive Cartier watch; furniture made out of FedEx
boxes. Replica auto bodies.
We have a lot of doctrines
to deal w/this.
Confusion as to
source? Unlikely in most cases, but the shoes that look like customized Nikes
might cause confusion.
Confusion as to
sponsorship? Will people assume co-branding? It’s hard to tell in the modern world.
Balenciaga and Gucci have agreed to mashup crossovers that look like graffiti.
It’s really hard to know in this world whether McDonald’s and PS have a
partnership or whether Amazon and Nike have one.
Post-sale confusion:
applied to kit car cases; he thinks it’s quite dubious people will be confused,
but it’s possible that low-end Cartier watches passed off as high-end Cartier
watches is an actual problem. Not exactly counterfeiting, but feels
counterfeit-y.
Reverse passing off—Lil
Nas X makes shoes, not Nike—a bit implausible.
Dilution by
tarnishment w/o confusion.
I told you 15 years
ago that if we killed off TM use it would need to be resurrected in another
guise. Here it is: First sale doctrine (material changes to product may defeat
this); nominative use (circuit split on how to test for it); expressive use/Rogers.
We suggest that Rogers needs to apply to a category of things that is
beyond what has traditionally been thought of as an “expressive work”—things w/content
inside them—to TM products themselves where the point of the modification is to
express an opinion. Applies to Satan Shoes.
Proposal: flow chart
for looking at whether customization is commercial; if not (personal use later
resold or unquestionably art) then outside TM’s scope. If it is, then is the customization
an expressive work? If so, Rogers. Etc.
Why are we here? We
wouldn’t be here 40 years ago b/c of the expansion of TM law and b/c
sponsorship didn’t used to work this way; mixing has become more significant
for brands and for artists, so it’s currently impossible to know what’s
sponsored. TM law as norm follower v. norm entrepreneur; tolerating confusion in
the interest of expression.
Rosenblatt: Does
identify of speaker matter for Rogers? (1) KitchenAid puts out a coffeemaker
that says “Range Rover.” That does something more than merely propose a
commercial transaction, but not a lot more. (2) Range Rover puts out a
coffeemaker that says “Range Rover.” (3) I take my KitchenAid and put “Range
Rover” on it to express my belief that coffee gets me through the day.
Mazzuco: a
linedrawing problem does exist. We don’t want to make it depend on the speaker
or the speaker’s categorization, though that is relevant. W/o a plan to sell
it, there’s definitely no commercial use, but if KitchenAid or Range Rover is
doing it, it’s more likely to be commercial speech b/c of the roles they play
in the commercial market, but the presumption should be different for an
individual. We don’t want it to be based on intent—McDonald’s can intend art.
Lemley: Hard to
separate artists from art. McDonald’s doing it has a very different feel.
Rosenblatt: Are fan
clubs artists or companies?
Lemley: we want very
much to not draw lines on who it is. But it’s not obvious where you should draw
the line. If we knew what “art” was the problem would be solved. Fan club
probably falls on art side of line.
Fromer: doctrinal
framework is focused on the customizer, and less on the original TM owner. But
some of your bigger questions have much more to do with the TM owner. Nike has
changed its business strategy so there are drops every day, collaborations
every day, new colors every day. What Nike has done is occupy the space to make
it hard for anyone but experts to understand what’s going on. It’s a deliberate
business strategy to target collectors and niche audiences. The TM owner bears
some responsibility for causing confusion in the marketplace in a way that didn’t
exist before.
Lemley:
customization is now everywhere—the Google doodle isn’t the same twice. The
idea of a brand that changes every day is nutty from the perspective of 40
years ago. Not to punish Nike for it, but we’ve made confusion part of the business
model so saying that there is confusion can’t have the effect on artistic uses
that it might otherwise.
Jim Gibson: Dastar
might be relevant. Reverse passing off as a theory based on the content of the
art might be precluded.
Lemley: interesting
that there’d be a cause of action if you took the logo off the Satan Shoes and
if you didn’t—that’s problematic.
Mazzuco: there were
older cases saying it was ok to make big changes if you took the TM logo off,
but that’s gone.
Elizabeth Townsend
Gard, Just Wanna Trademark Experiment
Building a brand in
the quilting space—podcast, Just Wanna Quilt, with logo chosen by vote. Did a
book on © and one on TM and sold out of the TM book in an hour at a quilt
industry show. Opportunity to teach TM to law students and quilters as well as
other entrepreneurs. Not client-based b/c we all talked about everything.
Problems: JELLY ROLL
is registered for fabric, but the public uses it generically to describe strips
from a fabric line rolled into a roll. What do we do with that? Born generic: sewcial, for sewing bee in
social media age; but SEWCIAL is registered for services and now sending C&D
letters to all the other users of the term. What to do next? As expert in the
field, people come to her for advice. TM bullying w/ a public domain quilt,
claiming rights over “Dear Jane” as quilt/software. Says you can’t write a book
w/o her permission. Why does she believe it’s hers? Because she registered a TM
for educational services, software and jewelry; she never tells the PTO it’s
quilt-based. What do you do to deal with that as a community? Related: ©
threats.
Next thing that
happened: Omaha Quilt Guild copied Just Wanna Quilt’s logo for its show.
Interesting to experience the emotional reaction to the appropriation. 4 years
of effort!
Colleen Chien:
describing community norms would be useful.
A: They’re all
afraid of Moda’s claims over JELLY ROLL. It’s not a source identifier, it’s a
fear identifier. Dear Jane and Sewcial are also aggressive in perplexing ways. The
PTO enabled it by registering generic terms.
Lemley: internet
intermediaries: Redbubbles of the world take down content no matter what the ®
is for; that is safer for them then keeping it up and getting sued. Need a
counterweight to deal w/internet bullies—obligation to ignore threat letters
from them.
RT: file
cancellations! For Dear Jane, look at the 5th Circuit bead dog case
which finds invalidity of marks when they’re descriptive for images of X on
products even if they aren’t descriptive for the product in the abstract. File
declaratory judgments; file suit against the senders of takedowns to Redbubble,
who cause concrete economic harm; interference w/business expectations—actually
available as a cause of action b/c there’s no 512 equivalent for TM. [Also talk
to Rebecca Curtin.]
Jess Meirs: SHOP
SAFE is going to make this a ton worse. Speak out against it.
Rosenblatt: you can
also file letters of protest for pending applications. You could find someone who is using Dear Jane
or Jelly Roll, or you could seek your own mark that competes with theirs and
see what happens. Do your own Dear Jane tutorials.
Q: Dear Jane seems
like the name of the thing—generic—not merely descriptive and a clear case of
not functioning as a mark. Jelly Roll—there are other names, even if people colloquially
say jelly roll.
A: but they do that
out of deference to Moda. Look at the age of registrations and whether they’re
incontestable.
Gibson: if Dear Jane
is also bringing bogus © claims, linking those in the same case could be rhetorically
powerful. TM may seem thornier.
A: registered © in
book but didn’t disclaim photos therein that were PD.
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