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Tuesday, 17 May 2011

INTA Special Report: A Century of Trade Mark Law

As Day 197 (or so it feels) of INTA 2011 enters the afternoon lull between the early morning breakfasts and the late evening cocktails, the AmeriKat has stolen herself away to her hotel room to report on one of the concurrent sessions - A Century of Trade Mark Law: Looking Back and Looking Forward. The special session was to commemorate the 100th anniversary of The Trademark Reporter and the large number of INTA attendees reflected the esteemed panel.

Miles Alexander of Kilpatrick Townsend & Stockton LLP opened his discussion by quoting the comic strip, Pogo:

"We have met the enemy and he is us"
Miles stated that the criticism of trade mark law is not of trade mark lawyers or the law per se, but the excesses in the trade mark, copyright and patent laws that rightsholders take advantage of and lobby for that go beyond their legitimate interests. From a fundamental level trade mark law, like any law, is a series of maxims along the line of "Thou shall not reap what you did not sow". At the heart of these maxims are a recognition that we consider some sort of conduct in the use of trade marks as "being immoral in our own minds". Courts will thus still recognize what they believe to be inherently wrong conduct when enforcing (or not) trade mark rights. This is something that has lasted the past 100 years. What has changed, however, is that the legislature is beginning to recognize that another form of immoral conduct can come from the rights owners themselves, such as trade mark bullies (see previous AmeriKat report here). Miles also stated that he believed that trade mark is "being tainted by what others in copyright" are experiencing (i.e. large damages awards against individuals).

Miles stated that what has been the more difficult area of practice in recent years is that where clients have a valuable mark being used by another party in circumstance where there is no trade mark use, no dilution and no real trade mark harm but where the use is still potentially damaging to the mark's reputation, it has been challenging to advise clients to let the matter go. This issue was picked up later by Eric Goldman when he spoke about the blurring of use between commercial and non-commercial use which has been exacerbated by the internet and social-media use.

Miles stated that for counterfeiting to ever stop, the law must criminalize the most dangerous areas of counterfeiting where there is a lot of harm being done. The sanctions must be incredibly harsh in order to make a real effect on this. He also stated that the internet "will solve more problems than it will create" because knowledge will help inform brand owners of what is taking place on-line and in the real world. He also stated that social networks will give consumers easily accessible information pertaining to what products are counterfeit goods. Brands will also be able to more easily assess what marks they should register and how consumers view and cognitively assess their brands which will streamline the trade mark registration process. Miles closed his bit my stating something the AmeriKat tells everyone "We are all products". The AmeriKat lost the reasoning why Miles was stating this, but it is still a powerful statement.

Santa Clara University School of Law professor and fellow blogger, Eric Goldman, was up next speaking on the impact on technology on trade marks. He stated that the biggest overarching change was that trade mark owners have lost the ability to control their marks on-line and how consumers receive information on trade marks. Eric stated that back in the day (whenever that is, he says) brands were able to tightly control the marketing channels. There were defined roles of the press and how one communicated and promoted their brand to its consumers. Now, the once-controlled channels have degraded and multiplied. The concept of the press has transformed to that of social-media. The rise of new intermediaries who talk about the brand, and even the consumers themselves (says the AmeriKat), have meant that there is more information about the brand but less control by the brandowner of that information. The "online word-of-mouth" has contributed to this incredibly fast and massive scale impact on the rules of consumer engagement on trade mark owners and their marks.

Eric also stated (as refered to above) that the impact of technology has also resulted in the crumbling distinction between commercial and non-commercial use in trade mark law. US trade mark law is predicated on the constitutional basis of commerce law so trade mark law and use has to be "in commerce" and so, where there is a dispute, the dispute needs to be in relation to how the law should regulate how parties sell and use marks as against each other in commerce. However, where the definition of "in commerce" is not present, trade mark law cannot deal with it although it desperately tries to.

Eric stated that unlike times gone-by, commercial activity is not necessary in order to reach large audiences, i.e. posting a parody video on YouTube or a parody Twitter account. For example, analogue examples of use include Mickey Mouse with a gun and Pillsbury Doughboy in Screw magazine. Now with Twitter we see the BP parody Twitter account. These uses, however, are not trade mark uses in commerce but trade mark owners and the law struggle with this. Eric also gave the example of the tension between trade mark registered rights and private name spaces such as user accounts and domain names. So even though there may be a prior trade mark registration, you may not necessarily be able to get your domain name or a Twitter account. Eric explained that trade mark law struggles each time a "private name space" arises and has to formulate its own rules, as in the case of 1-800 phone numbers.

Eric's final point dealt with what Miles referred to - overzealous enforcement of trade marks by owners. Eric stated that when the concepts of confusion and dilution were established they were established by the courts who were not educated by how consumers process information. Consumers today arguably have more sophisticated channels to process information and thus are more sophisticated in not being confused by trade mark use. However, this increased sophistication of a consumer is not reflected in trade mark law. Trade mark litigators try to "inject social science" by way of consumer surveys "into trade mark adjudications", but as we all know how unfortunate survey evidence can be in trade mark cases in the UK and the US (expensive to produce, cheap to destroy). Eric indicated that there is a need for lawmakers to be educated in the social science of consumers and trade marks before law is made. The AmeriKat could not agree more!

For Sir Robin's following speech, click here.

1 comment:

Ron Coleman said...

But I don't think that last bit is what Eric said.

The questioner (ahem) responded to his earlier comment that actually was as follows: The statutory history of the Lanham Act and its predecessors goes back to a an antique, pre-social-sciences model of "likelihood of confusion." So too the dilution provisions of the statute, which although they are of much more recent provenance are still based on doctrines formulated 75-100 years ago.

These models, Eric argued here (and has argued elsewhere of course) are obsolete. But Congress is essentially powerless to change them, because it seldom deals with serious questions of policy in this area but rather is caught up in the horse-trading or rent-seeking claims of stakeholders in the IP area.

The courts, however, he argued, have to some extent softened the sharp edges of this antique thinking about consumer behavior via the device of the consumer confusion survey. Notwithstanding what a mess the jurisprudence is in this area (i.e., expert standards in trademark cases), given Congress's hopeless state in terms of policymaking here at least this aspect of thoughtful consideration of the empirical basis of a confusion claim presents a ray of hope.

The question, then, which he subsequently responded to was: But shouldn't Congress, not the courts, make policy if we see that the statutory language once deemed sufficient to protect trademarks is obsolete? And besides separation of powers issues, isn't one by-product of judicial policymaking in the U.S. -- wildly inconsistent results across circuits and districts -- a serious policy problem in and of itself?

He agreed with the definition of the problem but, as you say, he made a point of the fact that trademark and unfair competition are creatures of the common law, and of necessity will always involve judicial shaping and interpretation. But, again, he agreed with the questioner that inconsistency of results, as well as a degree of "interpretation" of the statute which at this point reaches a level so high as to implicate "doctrine" or "policy" (my words, not is), is not a formula for optimism about where this area of law is going and how those affected by it can predict legal outcomes and make appropriate choices in their own behavior.

See what I'm sayin'?

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