THOMAS JEFFERSON SCHOOL OF LAW 2003 RESEARCH PAPER SERIES Public Law and Legal Theory Abusive trademark litigation and the Shrinking doctrine of consumer Confusion: Rethinking trademark paradigms in the Context of entertainment Media and Cyberspace By: Kevin J. Greene Harvard Journal of law and Public Policy, Vol 27 ( forthcoming) This paper can be downloaded without charge from the social Science Research Network electronic Paper Collection at: http://ssrn.com/abstract=446100
THOMAS JEFFERSON SCHOOL OF LAW 2003 RESEARCH PAPER SERIES In Public Law and Legal Theory Abusive Trademark Litigation and the Shrinking Doctrine of Consumer Confusion: Rethinking Trademark Paradigms in the Context of Entertainment Media and Cyberspace By: Kevin J. Greene Harvard Journal of Law and Public Policy, Vol. 27 (forthcoming) This paper can be downloaded without charge from the Social Science Research Network Electronic Paper Collection at: http://ssrn.com/abstract=446100
Trademark abuse in the Context of Entertainment Media and Cyberspace, by Abusive trademark litigation and the shrinking doctrine of Consumer Confusio K. Greene The recent challenge to the extension of the copyright term was grounded in the notion that Congress was giving away benefits to IP owners, typically large corporate entities without any corresponding public benefit that underlies the constitutional authority for IP grants. The giant conglomerates of the copyright industry-companies like Time-Warner/AOL, Disney, and Viacom ultimately won the day before the U.S Supreme Court. Perhaps though, the seeds for an IP counter-expansion revolt to"just say"no"to knee-jerk expansions of IP law have been planted. For example,the Supreme Court has recently limited the rights of big corporations with famous trademarks of actual economic harm rather than a mere likelihood of dilution y guiring a showing to attack smaller companies under the theory of trademark dilution, re The expansion of trademark law and its use to silence dissent from corporate mega-companies poses as great, if not greater, threat to social discourse as does copyright extension and expansion. Trademark law blossomed in an environment of robber capitalism, and was designed to prevent acts of fraud such as removing from boxes the cereal of a competitor, placing the cereal in boxes with ones own mark, and passing it I Assistant Professor. Thomas Jefferson School of Law. j.D. Yale Law School 1989. This article was upported by a research grant from Thomas Jefferson School of Law. Thanks to Professors Susan lefenbrun, Arnold Rosenberg, Sandra Pierson and Aaron Schwabach for helpful comments on earlier drafts of this article 2 See Eldred v. Ashcroft, S Ct., 65 U.S.P. Q 2d 1225(2003) S It has been noted that"no one writes to Congress protesting how copyright is being abused on the Net. no one holds demonstration. See The Cultural Anarchist vs the Hollywood Police State", Los Angeles Times Sept. 22(2002)(exploring views of Professor Lawrence Lessig on copyright extension case ge Moseley v. V Secret Catalogue, No. 01-1015(2003)
1 Abusive Trademark Litigation and the Shrinking Doctrine of Consumer Confusion —Trademark Abuse in the Context of Entertainment Media and Cyberspace, by K.J. Greene1 The recent challenge to the extension of the copyright term was grounded in the notion that Congress was giving away benefits to IP owners, typically large corporate entities without any corresponding public benefit that underlies the constitutional authority for IP grants. The giant conglomerates of the copyright industry—companies like Time-Warner/AOL, Disney, and Viacom ultimately won the day before the U.S. Supreme Court2 . Perhaps though, the seeds for an IP counter-expansion revolt to “just say ‘no’” to knee-jerk expansions of IP law have been planted.3 For example, the Supreme Court has recently limited the rights of big corporations with famous trademarks to attack smaller companies under the theory of trademark dilution, requiring a showing of actual economic harm rather than a mere likelihood of dilution.4 The expansion of trademark law and its use to silence dissent from corporate mega-companies poses as great, if not greater, threat to social discourse as does copyright extension and expansion. Trademark law blossomed in an environment of robber capitalism, and was designed to prevent acts of fraud such as removing from boxes the cereal of a competitor, placing the cereal in boxes with one’s own mark, and passing it 1 Assistant Professor, Thomas Jefferson School of Law, J.D. Yale Law School 1989. This article was supported by a research grant from Thomas Jefferson School of Law. Thanks to Professors Susan Tiefenbrun, Arnold Rosenberg, Sandra Pierson and Aaron Schwabach for helpful comments on earlier drafts of this article. 2 See Eldred v. Ashcroft, ___S. Ct. ___, 65 U.S.P.Q.2d 1225 (2003). 3 It has been noted that “no one writes to Congress protesting how copyright is being abused on the Net…[n]o one holds demonstration.” See The Cultural Anarchist vs. the Hollywood Police State”, Los Angeles Times Sept. 22 (2002)(exploring views of Professor Lawrence Lessig on copyright extension case). 4 See Moseley v. V Secret Catalogue, No. 01-1015 (2003)
off as ones own. Today, corporations routinely litigate or threaten to litigate trademark cases that are seemingly devoid of any likelihood of consumer confusion. Particularly, in connection with entertainment-related product such as film and music, the cases seem to come from the theatre of the absurd and reflect that trademark law is being used in an abusive manner out of sync with any traditional trademark rationale Some examples from recent years illustrate this dynamic. The manufacturer of SPAM sandwich meat brought trademark infringement charges against a motion picture production company for its depiction of a Muppet character known as"Spam"in the film" Muppets Treasure Island". Owners to a film clip of old footage of the"Three Stooges"upon which copyright protection had expired sued a filmmaker for 30 seconds worth of use of the clip in the film "The Long Kiss Goodnight?7 A sneaker company sued a filmmaker for displaying its sneakers in a film displeased with a characters monologue, played by Cuba Gooding Jr, ending in"F Reebok? " in the film"Jerry Maguire". The use of the phrase"Are You Ready to Rumble? by a band in a song led to a suit of trademark infringement by the owner" of s This conduct was known at common law as"palming off"or passing off, and as a British jurist asserted in 1842, a man [sic] is not to sell his own goods under the pretense that they are the goods of another man See DAVID LANGe, et al, INTELLECTUAL PROPERTY: CASES AND MATERIALS 88-89(1998) ( detailing common law trademark approaches). For a perceptive history of the development of trademark law, see also Kenneth J. Vandevelde, The New Property of the Nineteenth Century Development of the Modern Concept of Property, 29 BUFF. L REV. 325, 341(1980)(noting that early common law provided protection for trademarks only upon establishment of fraud) Hormel Foods Corp. v. Jim Henson Productions, Inc. 73 F 3d 497(2Cir. 1996) (rejecting Hormel's trademark and dilution claims) Comedy Ill Productions, Inc. v. New Line Cinema, 200 F 3d 593(9 Cir. 1999)(rejecting plaintiffs trademark infringement claims) See Complaint, Reebok Int'I Ltd. v. Tri-Star Pictures, Inc, no 96-8982 SVW(C D. Cal. 1996), available onwww.courttv.com/legaldocs/business/reebok/html.ReebokwasparticularlydispleasedwithTri-star because it believed the parties had contracted to include a trailer/commercial at the end of the film that would praise the virtues of Reebok. The released film did not include the trailer
2 off as one’s own.5 Today, corporations routinely litigate or threaten to litigate trademark cases that are seemingly devoid of any likelihood of consumer confusion. Particularly, in connection with entertainment-related product such as film and music, the cases seem to come from the theatre of the absurd, and reflect that trademark law is being used in an abusive manner out of sync with any traditional trademark rationale. Some examples from recent years illustrate this dynamic. The manufacturer of “SPAM” sandwich meat brought trademark infringement charges against a motion picture production company for its depiction of a Muppet character known as “Sp’am” in the film “Muppet’s Treasure Island”.6 Owners to a film clip of old footage of the “Three Stooges” upon which copyright protection had expired sued a filmmaker for 30 seconds worth of use of the clip in the film “The Long Kiss Goodnight”.7 A sneaker company sued a filmmaker for displaying its sneakers in a film, displeased with a character’s monologue, played by Cuba Gooding Jr., ending in “F…. Reebok” in the film “Jerry Maguire”.8 The use of the phrase “Are You Ready to Rumble?” by a band in a song led to a suit of trademark infringement by the “owner” of 5 This conduct was known at common law as “palming off” or passing off, and as a British jurist asserted in 1842, “a man [sic] is not to sell his own goods under the pretense that they are the goods of another man.” See DAVID LANGE, et al, INTELLECTUAL PROPERTY: CASES AND MATERIALS 88-89 (1998) (detailing common law trademark approaches). For a perceptive history of the development of trademark law, see also Kenneth J. Vandevelde, The New Property of the Nineteenth Century: The Development of the Modern Concept of Property, 29 BUFF. L. REV. 325, 341 (1980)(noting that early common law provided protection for trademarks only upon establishment of fraud). 6 Hormel Foods Corp. v. Jim Henson Productions, Inc. 73 F.3d 497 (2nd Cir. 1996)(rejecting Hormel’s trademark and dilution claims). 7 Comedy III Productions, Inc. v. New Line Cinema, 200 F.3d 593 (9th Cir. 1999)(rejecting plaintiff’s trademark infringement claims). 8 See Complaint, Reebok Int’l Ltd. v. Tri-Star Pictures, Inc., no. 96-8982 SVW (C.D. Cal. 1996), available on www.courttv.com/legaldocs/business/reebok/html. Reebok was particularly displeased with Tri-Star because it believed the parties had contracted to include a trailer/commercial at the end of the film that would praise the virtues of Reebok. The released film did not include the trailer
the phrase. Mattel sued a record label for use of the title"Barbie Girl", and lyrics that offended Mattel in a song 10 In these and other cases, a likelihood of consumer confusion seems remote, and trademark law would seem an unwieldy weapon. However, it has increasingly become the weapon of choice for those seeking to control corporate and product image. At the same juncture, the explosion of computer technology and the rise of the Internet have created a surge in litigation, legislation, and academic commentary about the future of intellectual property ("IP")protection in cyberspace. New technologies and the Internet have profoundly impacted every area of IP, including copyright, patent, 2 trade secret the right of publicity 4and trademark law. In the realm of trademark law Michael Buffer, the boxing announcer, has trademarked the phrase " Are You Ready to Rumble"and sued a record company that released a sound recording containing the phrase. See Buffer v. Auerus Record CV97-9332 RAP(C D Cal. 1997). The phrase has purportedly generated $150 million in licensing fees for Buffer, who has admittedly instituted"maybe over one hundred"actions regarding the phrase. See Andrew Chang, Squeezing Millions from a Phrase: How a Few Words in Right Hands Can Mean a Fortune, abcnews.go. com/sections(April 11, 2002) Mattel, Inc. v. MCA Records, Inc, 296 F 3d 894(9 Cir. 2002). Mattel gained a bit of infamy by seeking an injunction under trademark infringement and dilution theories against the distributors of the the Ninth Circuit Court of Appeals both rejected Mattel's trademark infringement and dilution claims. Not content to lose at both the trial and appellate level, Mattel has filed a petition before the Supreme Court to overturn the lower courts rulings. The Supreme Court declined to hear Mattel's appeal See e. g, Trotter Hardy, Copyright and"New Use"Technologies, 23 NOVA L REV. 659(1999)(noting that"today's copyright concerns often center on the new digital technologies, especially the Internet. " See e.g., Jason R. Berne, Court Intervention But Not in a Classic Form: A Survey of Remedies in Internet Trademark Cases, 43 ST LOUIS U. LJ 1157, 1158(1999) s See e. g, Note, Bruce T Atkins, Trading Secrets in the Information Age: Can Trade Secret Law Survive he Internet? 1996 ILL. L REV.1151(1996) 14 See e.g, Joseph J. Beard, Casting Call at Forest Lawn: The Digital Resurrection of Deceased EntertainersA 2/ Century Challenge for Intellectual Property, 8 HIGH TECH LJ(1993). See also eah Phillips Falzone, Note, Playing the Hollywood Name Game in Cybercourt: The Battle Over Domain Names in the Age of celebrity-Squatting, 21 LOY. L.A. ENT. L rEV. 289(2001(exploring domain name disputes over celebrity identity)
3 the phrase.9 Mattel sued a record label for use of the title “Barbie Girl”, and lyrics that offended Mattel in a song.10 In these and other cases, a likelihood of consumer confusion seems remote; and trademark law would seem an unwieldy weapon. However, it has increasingly become the weapon of choice for those seeking to control corporate and product image. At the same juncture, the explosion of computer technology and the rise of the Internet have created a surge in litigation, legislation, and academic commentary about the future of intellectual property (“IP”) protection in cyberspace. New technologies and the Internet have profoundly impacted every area of IP, including copyright,11 patent,12 trade secret13 the right of publicity,14 and trademark law. In the realm of trademark law, 9 Michael Buffer, the boxing announcer, has trademarked the phrase “Are You Ready to Rumble” and sued a record company that released a sound recording containing the phrase. See Buffer v. Auerus Records, CV 97-9332 RAP (C.D. Cal. 1997). The phrase has purportedly generated $150 million in licensing fees for Buffer, who has admittedly instituted “maybe over one hundred” actions regarding the phrase. See Andrew Chang, Squeezing Millions from a Phrase: How a Few Words in Right Hands Can Mean a Fortune, abcnews.go.com/sections (April 11, 2002). 10 Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). Mattel gained a bit of infamy by seeking an injunction under trademark infringement and dilution theories against the distributors of the song “Barbie Girl” by the musical group Aqua, objecting to lyrics which included the phrases “I’m a blond bimbo girl in a fantasy world…. you can brush my hair, undress me everywhere.” The District Court and the Ninth Circuit Court of Appeals both rejected Mattel’s trademark infringement and dilution claims. Not content to lose at both the trial and appellate level, Mattel has filed a petition before the Supreme Court to overturn the lower court’s rulings. The Supreme Court declined to hear Mattel’s appeal. 11 See e.g., Trotter Hardy, Copyright and “New Use” Technologies, 23 NOVA L. REV. 659 (1999)(noting that “today’s copyright concerns often center on the new digital technologies, especially the Internet…”). 12 See e.g., Jason R. Berne, Court Intervention But Not in a Classic Form: A Survey of Remedies in Internet Trademark Cases, 43 ST. LOUIS U. L.J. 1157, 1158 (1999). 13 See e.g., Note, Bruce T. Atkins, Trading Secrets in the Information Age: Can Trade Secret Law Survive the Internet? 1996 ILL. L. REV. 1151 (1996). 14 See e.g., Joseph J. Beard, Casting Call at Forest Lawn: The Digital Resurrection of Deceased Entertainers—A 21st Century Challenge for Intellectual Property, 8 HIGH TECH. L.J. (1993). See also, Leah Phillips Falzone, Note, Playing the Hollywood Name Game in Cybercourt: The Battle Over Domain Names in the Age of Celebrity-Squatting, 21 LOY. L.A. ENT. L. REV. 289 (2001)(exploring domain name disputes over celebrity identity)
the ascendance of the Internet has spawned new legal terminology for wrongful conduct in the virtual world-cyber squatting, "reverse domain name hijacking", typo-pirating and"metatag infringement". The Internet explosion has also invited a fresh examination of norms and principles in trademark law, a formerly rather stodgy area of Ip that is now arguably the hottest field of all. Indeed, commentators have noted that]o area of law has seen more Internet-related litigation than trademark law. The on-going expansion of the rights of trademark holders perhaps reached its zenith recently, when Congress singled out cybersquatters"as the new bogeymen of trademark law with the enactment of the Anti-cyber squatting Consumer Protection Act of 1999. Yet the connection between the condemnation of internet domain name squatters and the interest of consumers seems tenuous at best The expansion of IP rights has given rise to a schizophrenic divide in how IPRs are viewed by three major constituents in the debate over IP protection--Congress commentators and the courts. Congress in recent years has consistently churned out legislation that dramatically expands the rights of IP owners. In contrast, a chorus of academic commentators posit that the real harm to the interests of consumers and society A metatag consists of hidden text associated with a Web site that causes an Internet search engine to direct users to the site who have entered a search term contained in the metatag. "'E. Gabriel Perle. John Taylor Williams Mark A Fischer, Electronic Publishing and Software, Part 1,17 COMPUTER L 15, 21 (2000)For a discussion of the various types of domain name trademark disputes see Danielle Weinberg Swartz, The Limitations of Trademark Law in Addressing Domain Name Disputes, 45U.C. L.A. L REV 1487,1494(1998 Berne. supra note 43 ST LOUIS LJ. at 1158 15USC.s.1125d)(1999
4 the ascendance of the Internet has spawned new legal terminology for wrongful conduct in the virtual world—“cyber squatting”, “reverse domain name hijacking”, typo-pirating” and “metatag infringement”.15 The Internet explosion has also invited a fresh examination of norms and principles in trademark law, a formerly rather stodgy area of IP that is now arguably the hottest field of all. Indeed, commentators have noted that “[n]o area of law has seen more Internet-related litigation than trademark law.”16 The on-going expansion of the rights of trademark holders perhaps reached its zenith recently, when Congress singled out “cybersquatters” as the new bogeymen of trademark law with the enactment of the Anti-cyber squatting Consumer Protection Act of 1999.17 Yet the connection between the condemnation of Internet domain name squatters and the interest of consumers seems tenuous at best. The expansion of IP rights has given rise to a schizophrenic divide in how IPR’s are viewed by three major constituents in the debate over IP protection—Congress, commentators and the courts. Congress in recent years has consistently churned out legislation that dramatically expands the rights of IP owners.18 In contrast, a chorus of academic commentators posit that the real harm to the interests of consumers and society 15 A metatag consists of “hidden text associated with a Web site that causes an Internet search engine to direct users to the site who have entered a search term contained in the metatag.” E. Gabriel Perle, John Taylor Williams Mark A. Fischer, Electronic Publishing and Software, Part II, 17 COMPUTER L. 15, 21 (2000) For a discussion of the various types of domain name trademark disputes see Danielle Weinberg Swartz, The Limitations of Trademark Law in Addressing Domain Name Disputes, 45 U.C.L.A. L. REV. 1487, 1494 (1998). 16 Berne, supra, note ___, 43 ST. LOUIS L.J. at 1158. 17 15 U.S.C. s. 1125(d) (1999)
at large is posed not as much by cyber squatters but by the abusive use of trademark law by trademark owners, typically large corporate interests who seek to control corporate image at the expense of the marketplace of ideas paradigm. Finally, as the Supreme Courts recent opinion in Mosely indicates, courts by and large generally appear to take a more conservative view toward the expansion of IPRs, particularly trademark rights, even in the face of expansionist legislation such as the Trademark Dilution Act of 1996 This article examines and critiques the expansion of trademark law in the context of the entertainment industry and the internet. Entertainment-media issues, involving film, music, art and publishing, frequently stand at ground zero in the battleground of Ip disputes, and in such disputes we see the convergence of (and conflict between)owner- centered interests, the public domain, and the marketplace of ideas. This article contends that the aggressive trademark litigation strategy of companies such as playboy and 18 One commentator has characterized IP as"a kind of unrelenting organic force [that] Congress and the courts cultivate new varieties of every day... See Robert P Merges, Contracting into Liability Rules Intellectual Property Rights and Collective Rights OrganizationS, 84 CAL L REV. 1293, 1294(1996) I Commentators have recognized that"o]ne characteristic of legally granted monopolies is their tendency to be misused by those in power. See Robert Patrick Merges and Glenn Harlan Reynolds, The Proper Scope of the Copyright and Patent Power, 37 HARV. J ON LEGIS. 45, 47(2000)(contending Constitution limits Congress' power to expand intellectual property protection for the benefit of individual companies See Ringling Bros.-Barnum Bailey Combined Shows, Inc. v Utah Div. of Travel Dev, 170 F3d 449 (4 Cir. 1999)(outlining historical hostility of courts toward dilution doctrine) 2SeeCourtneyMacavinta,playBoywinspiracysuithttp://news.cnetcom(4-22-98),notingthat (Playboy] has ferociously scoured the Net for unauthorized uses of its famous nude pictorials, and subsequently has slapped Web site operators with costly lawsuits"). In similarly aggressive litigation, Playboy sued former playmate Terri Welles for, inter alia, Welles depictions of herself on the web site as former playmate of the year. The Ninth Circuit (duh)rejected Playboy's claims. See Playboy Enterprises, Inc. v. Welles, 7 F. Supp 2d 1098(S D. Cal. 1998). But cf, Dan McCuaig, Halve the Baby An Obvious Solution to the Troubling Use of Trademarks as Metatags, 18 J. MARSHALL J COMPUTER AND INFORMATION L 643, 655 (2000)(contending that while"Playboy has long been at the forefront of the rush of trademark holders to protect their trademarks from unscrupulous use on the Internet. [Playboys conduct] is more likely attributable to the relative commercial value of [Playboys marks as metatags than to any super-litigious nature of [Playboy")
5 at large is posed not as much by cyber squatters but by the abusive use of trademark law by trademark owners, typically large corporate interests who seek to control corporate image at the expense of the marketplace of ideas paradigm.19 Finally, as the Supreme Courts recent opinion in Mosely indicates, courts by and large generally appear to take a more conservative view toward the expansion of IPR’s, particularly trademark rights, even in the face of expansionist legislation such as the Trademark Dilution Act of 1996.20 This article examines and critiques the expansion of trademark law in the context of the entertainment industry and the Internet. Entertainment-media issues, involving film, music, art and publishing, frequently stand at ground zero in the battleground of IP disputes, and in such disputes we see the convergence of (and conflict between) ownercentered interests, the public domain, and the marketplace of ideas. This article contends that the aggressive trademark litigation strategy of companies such as Playboy21 and 18 One commentator has characterized IP as “a kind of unrelenting organic force [that] Congress and the courts cultivate new varieties of every day…” See Robert P. Merges, Contracting into Liability Rules: Intellectual Property Rights and Collective Rights Organizations, 84 CAL. L. REV. 1293, 1294 (1996). 19 Commentators have recognized that “[o]ne characteristic of legally granted monopolies is their tendency to be misused by those in power.” See Robert Patrick Merges and Glenn Harlan Reynolds, The Proper Scope of the Copyright and Patent Power, 37 HARV. J. ON LEGIS. 45, 47 (2000)(contending Constitution limits Congress’ power to expand intellectual property protection for the benefit of individual companies). 20 See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449 (4th Cir. 1999)(outlining historical hostility of courts toward dilution doctrine). 21 See Courtney Macavinta, “Playboy wins piracy suit”, http.//news.cnet.com (4-22-98), noting that “([Playboy] has ferociously scoured the Net for unauthorized uses of its famous nude pictorials, and subsequently has slapped Web site operators with costly lawsuits”). In similarly aggressive litigation, Playboy sued former playmate Terri Welles for, inter alia, Welle’s depictions of herself on the web site as “former playmate of the year.” The Ninth Circuit (duh) rejected Playboy’s claims. See Playboy Enterprises, Inc. v. Welles, 7 F. Supp.2d 1098 (S.D. Cal. 1998). But c.f., Dan McCuaig, Halve the Baby: An Obvious Solution to the Troubling Use of Trademarks as Metatags, 18 J. MARSHALL J. COMPUTER AND INFORMATION L. 643, 655 (2000)(contending that while “Playboy has long been at the forefront of the rush of trademark holders to protect their trademarks from unscrupulous use on the Internet…[Playboy’s conduct] is more likely attributable to the relative commercial value of [Playboy’s] marks as metatags than to any super-litigious nature of [Playboy]”)
others, has the capacity to bring about several bad results such as the depletion of the public domain,and the decrease of the marketplace of ideas, and the debasement of cardinal trademark principles based on preventing consumer confusion. Others have made that case well. Others have also explicated how trademark law has undergone a paradigm shift away from protecting consumer interests toward protecting trademark owner interests. A modest insight of this paper is that trademark cases in cyberspace and entertainment make no sense under any of the traditional theories of IP or trademark specific theories, save one: personality interests. The cases also indicate that the interests of trademark owners and the public interest does not necessarily coincide assuming the public interest subsists in an expansive public domain The entertainment media and cyberspace cases validate in dramatic fashion the notion that as trademark law moves away from confusion theory, the potential for abusive, antisocial trademark litigation which has a chilling effect on the expression of Mattel Corporation, owner of Barbie, is another company that arguably brings lawsuits that impinge on expressive conduct and the public domain, See Lisa Bannon, Barrister Barbie? Mattel Plays Rough, www.s-t.com/dailv/01-98/01-09-98/b021i044.htm(jan.1,1998)(detail sive lawsuits and threats to ue alleged infringers by Mattel regarding its"Barbie " mark) A leading jurist, for example, has cogently argued elsewhere that"[o]verprotecting intellectual property is as harmful as underprotecting it. [c]reativity is impossible without a rich public domain. White v Samsung Electronics America, Inc, 989 F 2d 1512,(9 Cir. 1993)(Kozinski, J, dissenting) 24 See Alison P. Howard, A Fistful of Lawsuits: The Press, the First Amendment, and Section 43 (a) of the Lanham Act, 88 CALIF. L. REV. 127(2000)(lawsuits by plaintiffs seeking to avoid obstacles in defamation claims by using trademark law "disregards both the First Amendment 's goal of promoting the free exchange of ideas and section 43(a)'s goal of reducing consumer confusion rather than protecting plaintiffs reputations") See Kenneth L Port, The Congressional Expansion of American Trademark Law: A Civil Law System in the Making, 35 WAKE FOREST L REV.827, 828-29(2000) 26 See BEVERLY W. PATTISHALL, DAVID C. HILLIARD JOSEPH NYE WELCH, I1, 9 TRADEMARKS& UNFAIR COMPETITION (3Ed. 1998):(remarking that"[t ]he public interest against deception is necessarily a fundamental consideration in trade identity unfair competition cases, yet the treatment of that interest is ordinarily residual to what is primarily a private complaint
6 others,22 has the capacity to bring about several bad results such as the depletion of the public domain,23 and the decrease of the marketplace of ideas,24 and the debasement of cardinal trademark principles based on preventing consumer confusion. Others have made that case well. Others have also explicated how trademark law has undergone a paradigm shift away from protecting consumer interests toward protecting trademark owner interests.25 A modest insight of this paper is that trademark cases in cyberspace and entertainment make no sense under any of the traditional theories of IP or trademarkspecific theories, save one: personality interests. The cases also indicate that the interests of trademark owners and the public interest does not necessarily coincide, assuming the public interest subsists in an expansive public domain.26 The entertainment media and cyberspace cases validate in dramatic fashion the notion that as trademark law moves away from confusion theory, the potential for abusive, antisocial trademark litigation which has a chilling effect on the expression of 22 Mattel Corporation, owner of Barbie, is another company that arguably brings lawsuits that impinge on expressive conduct and the public domain. See Lisa Bannon, Barrister Barbie? Mattel Plays Rough, www.s-t.com/daily/01-98/01-09-98/b02li044.htm (Jan. 1, 1998)(detailing oppressive lawsuits and threats to sue alleged infringers by Mattel regarding its “Barbie” mark). 23 A leading jurist, for example, has cogently argued elsewhere that “[o]verprotecting intellectual property is as harmful as underprotecting it…[c]reativity is impossible without a rich public domain.” White v. Samsung Electronics America, Inc., 989 F.2d 1512, ____ (9th Cir. 1993)(Kozinski, J., dissenting). 24 See Alison P. Howard, A Fistful of Lawsuits: The Press, the First Amendment, and Section 43(a) of the Lanham Act, 88 CALIF. L. REV. 127 (2000)(lawsuits by plaintiffs seeking to avoid obstacles in defamation claims by using trademark law “disregards both the First Amendment’s goal of promoting the free exchange of ideas and section 43(a)’s goal of reducing consumer confusion rather than protecting plaintiff’s reputations”). 25 See Kenneth L. Port, The Congressional Expansion of American Trademark Law: A Civil Law System in the Making, 35 WAKE FOREST L. REV. 827, 828-29 (2000). 26 See BEVERLY W. PATTISHALL, DAVID C. HILLIARD & JOSEPH NYE WELCH, II, 9 TRADEMARKS & UNFAIR COMPETITION (3rd Ed. 1998): (remarking that “[t]he public interest against deception is necessarily a fundamental consideration in trade identity unfair competition cases, yet the treatment of that interest is ordinarily residual to what is primarily a private complaint.”)
ideas increases. Long after court cases and legislation make cybersquatting a problem of the past, an entrenched set of norms that enshrine property rights in trademarks for rich and powerful corporate interests will hamstring an expansive public domain and the ideal of democratic communication the Internet represents Communicative media such as the internet and entertainment vehicles such as film and music increasingly have become targets by trademark owners seeking to control product and trademark image. However little or no corresponding public benefit accrues that provides justification for the private ownership and IP protection. Trademark, no less than other IP regimes, should"set demanding standards" in exchange for the grant of exclusive rights. Indeed, trademark arguably poses a greater threat to both the core concepts of the marketplace of ideas and the public domain than other IPRs, such copyright law. A specter is haunting cultural production and societal dissent: the threat of private, albeit state-sponsored, suppression of speech is rising to new prominence [in light of] new media of expression,, such as Internet technology. A reexamination of trademark law paradigms is desirable given that"trademark protection intrudes on first amendment rights more often than courts have recognized. 3 Part I of this essay examines the dramatic expansion of intellectual property law generally and summarizes the theoretical underpinnings that gird the four paradigms of 27 See Marina Lao, Federalizing Trade Secret Law in an Information Economy, 59 OHIO ST. L.J. 1633 1640-41(1998) 28 See Note, Putting the Meat Back in Meta-Tagsl, I U. ILL.J. LAW, TECH& POLICY 129, 158 (2001)(contending that"It he continual expansion of a trademark holders rights is detrimental to all of ciety and to the American economy) See Dan L. Burk, Patenting Speech, 79 TEX L REV. 100(2000 (analyzing dangers to free speech and marketplace of ideas arising from patent protection for software)
7 ideas increases. Long after court cases and legislation make cybersquatting a problem of the past, an entrenched set of norms that enshrine property rights in trademarks for rich and powerful corporate interests will hamstring an expansive public domain and the ideal of democratic communication the Internet represents. Communicative media such as the Internet and entertainment vehicles such as film and music increasingly have become targets by trademark owners seeking to control product and trademark image. However little or no corresponding public benefit accrues that provides justification for the private ownership and IP protection. Trademark, no less than other IP regimes, should “set demanding standards” in exchange for the grant of exclusive rights.27 Indeed, trademark arguably poses a greater threat to both the core concepts of the marketplace of ideas and the public domain than other IPR’s, such as copyright law.28 A specter is haunting cultural production and societal dissent: the “threat of private, albeit state-sponsored, suppression of speech is rising to new prominence [in light of] new media of expression”, such as Internet technology.29 A reexamination of trademark law paradigms is desirable given that “trademark protection intrudes on first amendment rights more often than courts have recognized.”30 Part I of this essay examines the dramatic expansion of intellectual property law generally and summarizes the theoretical underpinnings that gird the four paradigms of 27 See Marina Lao, Federalizing Trade Secret Law in an Information Economy, 59 OHIO ST. L.J. 1633, 1640-41 (1998). 28 See Note, Putting the Meat Back in Meta-Tags!, 1 U. ILL. J. LAW, TECH. & POLICY 129, 158 (2001)(contending that “[t]he continual expansion of a trademark holder’s rights is detrimental to all of society and to the American economy”). 29 See Dan L. Burk, Patenting Speech, 79 TEX. L. REV. 100 (2000)(analyzing dangers to free speech and marketplace of ideas arising from patent protection for software)
trademark law--confusion theory, unfair competition/false endorsement, dilution and the newest entrant, cybersquatting. Part II explores the interests of trademark owners and the public interest. Part Ill examines the paradigms and the relevant interests in the context of entertainment media and Internet cases. Part IV suggests a policy framework for the entertainment industry in approaching IP litigation I. Theoretical foundations A. Underlying Theories of IP Protection Although characterized with various terms, legal justification for IP protection ests upon the foundation of four underlying theoretical rationales-labor/investment, economic incentive/efficiency, misappropriation and moral rights or personality theories Identifying underlying rationales for IP protection is critically important from a policy perspective for two reasons. First, even more so than traditional forms of property, IP protection imposes unique burdens on society, requiring justification for IP monopolies. Second, underlying rationales may be outcome-determinative in assessing IP entitlements The labor/investment rationale for IP posits thatthat intellectual property ought to be protected because of labor and investment by IP creators. The economic and efficiency rationale asserts that IP rights are justified because of economic incentive and efficiency considerations. The third rationale urges that society should enjoin infringement of IP rights because of it constitutes a form of theft or taking--ie.a 50 See Robert N. Kravitz, Trademarks, Speech and the Gay Olympics Case, 60 BOSTULREV.131, 132 (1989) 5I See Mathias Strasser, The Rational Basis of Trademark Protection Revisited: Putting the Dilution Doctrine into Context, 10 FORDHAM INTEL. PROP. MEDia ent. L.j. 375, 421-22(2000)(noting that IP laws"are generally thought to require a special justification. 8
8 trademark law—confusion theory, unfair competition/false endorsement, dilution and the newest entrant, cybersquatting. Part II explores the interests of trademark owners and the public interest. Part III examines the paradigms and the relevant interests in the context of entertainment media and Internet cases. Part IV suggests a policy framework for the entertainment industry in approaching IP litigation. I. Theoretical Foundations A. Underlying Theories of IP Protection Although characterized with various terms, legal justification for IP protection rests upon the foundation of four underlying theoretical rationales—labor/investment, economic incentive/efficiency, misappropriation and moral rights or personality theories. Identifying underlying rationales for IP protection is critically important from a policy perspective for two reasons. First, even more so than traditional forms of property, IP protection imposes unique burdens on society, requiring justification for IP monopolies.31 Second, underlying rationales may be outcome-determinative in assessing IP entitlements. The labor/investment rationale for IP posits that that intellectual property ought to be protected because of labor and investment by IP creators. The economic and efficiency rationale asserts that IP rights are justified because of economic incentive and efficiency considerations. The third rationale urges that society should enjoin infringement of IP rights because of it constitutes a form of theft or taking—i.e. a 30 See Robert N. Kravitz, Trademarks, Speech and the Gay Olympics Case, 60 BOST. U. L. REV. 131, 132 (1989). 31 See Mathias Strasser, The Rational Basis of Trademark Protection Revisited: Putting the Dilution Doctrine into Context, 10 FORDHAM INTEL. PROP. MEDIA & ENT. L.J. 375, 421-22 (2000)(noting that IP laws “are generally thought to require a special justification.”)
morality/misappropriation theory. Finally, it is contended that IP creations contain elements of a creator's personality, and taking harms those deeply heartfelt interests that creators feel towards their works-this is often called a personality or moral rights Labor/Investment Rationales A labor theory resonates in the writings of John Locke, who postulated that men [sic]ought to have property rights in the fruits of their labor. At its full extension,a labor theory of IP postulates that "one has the right to reap the full value of one's creation. >3> Historically, labor theories of IP have played an important role in the development of IP doctrine, although they fallen into disfavor by the courts in recent decades a collaray of labor theory is investment theory, which provides that the law should protect value created when an IP owner invests significant time, effort and money in an IPR. The courts frequently recognize the investment rationale in the context of trade secrets, where the more a trade secret owner has invested in maintaining secrecy in an invention or process, the more likely the court will enjoin appropriation of the trade secret. Similarly, it is recognized in the patent context that inventors would not invest 32 See J. LOCKE, SECOND TREATISE OF GOVERNMENT 27 (1953) 33 See David S. Welkowitz, Trade Dress and Patenk-the Dilemma of Confusion, 30 RUTGERS L.J. 289 (1999)(noting that courts have rejected the labor theory of IP in its most extreme form). Id $4 The Supreme Court for example has rejected the so-called"sweat of the brow theory in the context of copyright protection. See Feist, Publications v. Rural Telephone Service 499 U.S. 340(1991)Under the sweat of the brow doctrine, "the underlying notion was that copyright was a reward for the hard work that lo 5S The Restatement of Torts, for example, sets forth six factors to consider in determining whether information qualifies as a trade secret, including the amount of effort or money expended by [the trade secret owner] in developing the information. RESTATEMENT OF TORTS
9 morality/misappropriation theory. Finally, it is contended that IP creations contain elements of a creator’s personality, and taking harms those deeply heartfelt interests that creators feel towards their works—this is often called a personality or moral rights theory. Labor/Investment Rationales A labor theory resonates in the writings of John Locke, who postulated that men [sic] ought to have property rights in the fruits of their labor.32 At its full extension, a labor theory of IP postulates that “one has the right to reap the full value of one’s creation.”33 Historically, labor theories of IP have played an important role in the development of IP doctrine, although they fallen into disfavor by the courts in recent decades.34 A collaray of labor theory is investment theory, which provides that the law should protect value created when an IP owner invests significant time, effort and money in an IPR. The courts frequently recognize the investment rationale in the context of trade secrets, where the more a trade secret owner has invested in maintaining secrecy in an invention or process, the more likely the court will enjoin appropriation of the trade secret.35 Similarly, it is recognized in the patent context that inventors would not invest 32 See J. LOCKE, SECOND TREATISE OF GOVERNMENT 27 (1953). 33 See David S. Welkowitz, Trade Dress and Patent—the Dilemma of Confusion, 30 RUTGERS L.J. 289 (1999)(noting that courts have rejected the labor theory of IP in its most extreme form). Id. 34 The Supreme Court for example has rejected the so-called “sweat of the brow” theory in the context of copyright protection. See Feist, Publications v. Rural Telephone Service 499 U.S. 340 (1991) Under the “sweat of the brow doctrine, “the underlying notion was that copyright was a reward for the hard work that went into compiling facts.” Id. 35 The Restatement of Torts, for example, sets forth six factors to consider in determining whether information qualifies as a trade secret, including “the amount of effort or money expended by [the trade secret owner] in developing the information.” RESTATEMENT OF TORTS