Trademark

The Hybrid Trademark and Free Speech Right Forged From Matal v. Tam

The Hybrid Trademark and Free Speech Right Forged From Matal v. Tam
By Timothy T. Hsieh* Download a PDF version of this article here    

Introduction

Before the U.S. Supreme Court case of Matal v. Tam, trademarks could not be registered if they “disparage[d] or [brought]…into contemp[t] or disrepute” any “persons, living or dead.”[1] The U.S. Supreme Court concluded in Tam that the “Disparagement Clause” violated the Free Speech Clause of the First Amendment and also offended “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”[2] This legal development has integrated the First Amendment Free Speech right with the traditional rights that a registered trademark possesses. In other words, a new hybrid form of trademark intellectual property has been forged by the U.S. Supreme Court case of Matal v. Tam, a form that combines trademark rights with the Free Speech rights under the First Amendment and no longer restricts the registration of a trademark on any content-based justifications. That is, a trademark can now be registered on any content that the trademark owner desires. This may seem on the surface to improve the vigor of a competitive trademark market place by removing government restrictions and allowing participants to engage in the free-flowing exchange of ideas, but there are concerns that this new hybrid form of trademark will be abused. The United States Patent and Trademark Office (“USPTO”) may start granting registrations to a barrage of offensive racial slurs, sexist terms or other profanities designed to insult individuals on the basis of their ethnicity, gender, sexual orientation, age, and other aspects of their identity. One immediate cause of concern is the “Washington Redskins” trademark and the corresponding litigation over the trademark in federal courts.[3] Because the Disparagement Clause has been struck down, the Washington Redskins now have the right to pursue registration of their mark, which Native American tribes argue is disparaging. In the aftermath of the Matal v. Tam decision, can organizations (like the Washington Redskins) or individuals now register such offensive marks? Will the USPTO be flooded by such “disparaging” trademark applications as a result? This paper proposes that such an outcome is unlikely, or that concern is simply blown out of proportion. Sound marketing practices and goodwill advise against or mitigate that outcome.[4] Common business sense would also suggest that such offensive marks would not be successful in the marketplace. On the other hand, Free Speech in trademarks gives certain artists or organizations, like “The Slants” or “Dykes on Bikes”, the ability to express themselves fully without censorship. Such organizations show that some trademark holders wish to register a mark to “self-disparage” a class that he or she belongs to for an artistic, political or other expression-based purpose. This paper argues that any concern of this new hybrid Free Speech trademark right is outweighed by the right of expression by groups who should be able to exercise the First Amendment in an intellectual property or trademark context. In addition, this paper argues that this new hybrid form of trademark and Free Speech right is now in sync with parallel fields of intellectual property which do not usually recognize “content-based” limitations, such as Copyright Law (being able to copyright anything, even if it is offensive) and Patent Law (the hardly invoked provision preventing the patenting of inventions used for atomic weapons).[5] The comparison to roughly equivalent doctrines in these related fields of intellectual property is to suggest that the effect of removing content-based restrictions (e.g. in the arena of Copyright Law) or attempting to enforce outdated content-based limitations (e.g. in Patent Law) has minimal effect, if any, on the robustness of the underlying intellectual property right. In fact, this paper contends that removing restrictions and infusing trademark rights with Free Speech rights can only lead to benefits. Part II of this Article will survey the cases leading up to and cited by the Matal v. Tam case and analyze relevant law. Part III of this Article will aver that broader business concerns will likely suppress the filing and registration of offensive marks, leaving only exceptional cases, marks having years of built-up history and tradition, such as the Washington Redskins. Part III of this article will additionally argue that the interest of groups in “self-disparaging” for expression-based reason outweighs any concern that the filing and registration of disparaging trademarks will get out of hand. Part IV of this Article compares the new hybrid Free Speech and Trademark right with other approximate equivalents in Copyright Law and Patent Law to argue that the trademark right will not suffer any detriment in being merged with Free Speech rights and may in fact see positive benefits. Finally, Part V of this Article provides a summary of the arguments and points made throughout.

I. The Matal v. Tam U.S. Supreme Court Case

Simon Tam is the lead singer of a band named “The Slants,”[6] which specializes in a brand of music influenced by other 80s pop-synth bands such as Depeche Mode, Joy Division, The Cure, and New Order termed “Chinatown Dance Rock.”[7] In an interview with The New York Times, Tam explains how he decided to name the band “The Slants”:
My first real lesson on the power of language was at the age of 11. On the basketball courts at school in San Diego, I was tormented by other students. They’d throw balls, punches, rocks and insults, while yelling “gook” and “Jap.” One day, I had enough. I threw back, “I’m a chink, get it right.” Stunned, they didn’t know what to do. Confused, they stopped.
The act of claiming an identity can be transformational. It can provide healing and empowerment. It can weld solidarity within a community. And, perhaps most important, it can diminish the power of an oppressor, a dominant group.
The idea of reappropriation isn’t new. The process of turning negative words, symbols or ideas into positive parts of our own identity can involve repurposing a racial epithet or taking on a stereotype for sociopolitical empowerment. But reappropriation can be confusing. Sometimes people can’t figure out the nuances of why something is or isn’t offensive — government bureaucrats in particular.[8]
Tam goes on to state that The Slants “toured the country, promoting social justice, playing anime conventions, raising money for charities and fighting stereotypes about Asian-Americans by playing bold music. Never once, after performing hundreds of shows across the continent, did [they] receive a single complaint from an Asian-American. In fact, [the band’s] name [‘The Slants’] became a catalyst for meaningful discussions with non-Asians about racial stereotypes.”[9]

A. The Rejection by the USPTO and the TTAB Appeal

Acting on their attorney’s recommendation to register “The Slants” as a trademark, Tam filed a trademark application for the mark because that was “something that’s commonly done for national acts” and “a critical step in a music career, not only to protect fans from inadvertently purchasing tickets to another band with a similar name but also because most major record labels and licensing agencies won’t work with acts that can’t register their names.”[10] When Tam sought registration of “THE SLANTS” on the principal register, the Examining Attorney at the USPTO rejected the registration, applying the two-part framework for disparagement under the Disparagement Clause and the Trademark Manual of Examining Procedure (“TMEP”). The Examining Attorney found that there was “a substantial composite of persons who find the term in the applied-for mark offensive.”[11] The Disparagement Clause is a provision of the Lanham Act at 15 U.S.C. § 1052(a) that prohibits the registration of a trademark “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”[12] The two-part framework in determining whether a mark is disparaging first considers “the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services.”[13] “If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols,” the examining attorney moves to the second step, which asks “whether that meaning may be disparaging to a substantial composite of the referenced group.”[14] After these two steps, if the examining attorney finds that a “substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark…to be disparaging in the context of contemporary attitudes,” a prima facie case of disparagement is made out, and the burden shifts to the trademark applicant to prove that the mark is not disparaging.[15] In Tam’s rejection, the examining attorney relied in part on the fact that “numerous dictionaries define ‘slants’ or ‘slant-eyes’ as a derogatory or offensive term”[16] and according to Simon Tam, the examiner also “used sources like UrbanDictionary.com, a photo of Miley Cyrus pulling her eyes back in a mocking gesture and anonymous posts on internet message boards to ‘prove’ that [the mark] was offensive.”[17] Tam then contested the USPTO examining attorney’s denial of registration before the Trademark Trial and Appeal Board (“TTAB”), but was not successful.[18] Thereafter, Tam appealed the TTAB’s decision to the Federal Circuit.

B. The Federal Circuit In re Tam Case

The U.S. Court of Appeals for the Federal Circuit took up Tam’s appeal from the TTAB. According to Tam, for the past seven years, he has “supplied thousands of pages of evidence, including letters of support from prominent community leaders and organizations, independent national surveys that showed that over 90 percent of Asian-Americans supported our use of the name and an expert report from a co-editor at the New American Oxford Dictionary.”[19] In response, the USPTO called Tam’s effort “laudable, but not influential” and further stated in a 2011 decision that “[i]t is uncontested that applicant is a founding member” of a band “composed of members of Asian descent,” and afterwards pointed to Asian imagery on The Slant’s official website, “including photographs of Asian people and an album cover with a ‘stylized dragon.’”[20] According to Tam, “it was as if because we were Asian, because we were celebrating Asian-American culture, we could not trademark the name the Slants. Yet ‘slant’ is an everyday term—one that has been registered as a trademark many times, primarily by white people.”[21] The Federal Circuit, sitting en banc, rendered a majority opinion authored by Judge Moore ruling that the Disparagement Clause was facially unconstitutional under the First Amendment because the Disparagement Clause engaged in viewpoint based discrimination, regulated the expressive component of trademarks and consequently could not be treated as commercial speech—and that the Disparagement Clause was subject to and could not satisfy strict scrutiny.[22] The Federal Circuit also rejected the USPTO’s argument that registered trademarks constituted government speech, as well as the USPTO’s assertion that federal registration was a form of government subsidy.[23] Furthermore, the Federal Circuit held that even if the Disparagement Clause were to be analyzed under the “intermediate scrutiny” standard applied to commercial speech, it would still fail.[24] In a concurring opinion, Judge O’Malley agreed with Judge Moore’s majority opinion but also added that the Disparagement Clause was unconstitutionally vague.[25] Judge Dyk’s opinion concurred in part and dissented in part, opining that trademark registration was a government subsidy and that the Disparagement Clause was facially constitutional, but unconstitutional as applied to “THE SLANTS” mark because it constituted “core expression” and was not adopted for the purpose of disparaging Asian Americans.[26] Judge Lourie delivered a dissenting opinion where he agreed with Judge Dyk that the Disparagement Clause was facially constitutional but concluded for a variety of reasons that it was also constitutional as applied to the “THE SLANTS” mark in this case.[27] Finally, Judge Reyna also posited a dissenting opinion, contending that trademarks are commercial speech and that the Disparagement Clause survives the intermediate scrutiny test for commercial speech because it “directly advances the government’s substantial interest in the orderly flow of commerce.”[28] In the aftermath of the Federal Circuit’s en banc decision of In re Tam, the USPTO filed a petition for certiorari with the U.S. Supreme Court.

C. The Supreme Court’s Majority Opinion in Matal v. Tam

The U.S. Supreme Court granted the USPTO’s petition for certiorari to ultimately decide whether the Disparagement Clause “is facially invalid under the Free Speech Clause of the First Amendment.”[29] In Justice Alito’s majority opinion, before reaching the question of whether the Disparagement Clause violated the First Amendment, the Court considered Tam’s argument that the Disparagement Clause did not cover marks that disparage racial or ethnic groups, an argument that was not raised before the TTAB or the Federal Circuit.[30] The Court held that Tam’s argument about the definition of “persons” (that racial and ethnic groups were neither natural nor “juristic” persons) was meritless; by the plain terms of the Disparagement Clause, a mark that disparages a “substantial” percentage of the members of a racial or ethnic group necessarily disparages many “persons,” namely, members of that group. Moreover, the Disparagement Clause also applied not to just “persons” but also to “institutions and “beliefs”—implying that it extends to members of any group who share particular “beliefs” such as political, ideological and religious groups, “institutions” and “juristic” persons such as corporations, unions, and other unincorporated associations. Thus, the Disparagement Clause was not limited to marks that disparage a particular natural person.[31] The Court also found unpersuasive Tam’s arguments that his interpretation of the Disparagement Clause was supported by its legislative history and by the USPTO’s willingness for many years to register marks that were offensive to African-Americans and Native Americans because: (i) the statutory language of the Disparagement Clause is unambiguous thereby precluding any analysis of the legislative history, (ii) even if the legislative history were to be examined, Tam did not bring to the Court’s attention any evidence in the legislative history showing that Congress meant to adopt his interpretation, and (iii) the registration of offensive marks Tam cited is “likely attributable not to the acceptance of his interpretation of the clause but to other factors—most likely the regrettable attitudes and sensibilities of the time in question.”[32]
1. Government Speech/Subsidy/Program Analysis
Turning to the main question of whether the Disparagement Clause violates the First Amendment, the Court analyzed three arguments advanced by the USPTO: (1) trademarks are government speech, not private speech, (2) trademarks are a form of government subsidy, and (3) the constitutionality of the Disparagement Clause should be tested under a new “government-program” doctrine.[33]
i. Trademarks are Not Government Speech
Justice Alito recited the rule that the Free Speech Clause does not require the government to maintain viewpoint neutrality when its officers and employees speak about a course of action a government entity embarks on, where it necessarily takes a particular viewpoint and rejects others.[34] One simple example was when the Federal Government produced and distributed posters during the Second World War to promote the war effort (e.g., by urging enlistment, the purchasing of war bonds and the conservation of scarce resources) and expressed a viewpoint; “the First Amendment did not demand that the Government balance the message of the posters by producing and distributing posters encouraging Americans to refrain from engaging in these activities.”[35] Justice Alito mentioned that the government-speech doctrine is susceptible to “dangerous misuse” because if “private speech could be passed off as government speech by simply affixing a government seal of approval, [the] government could silence or muffle the expression of disfavored viewpoints.”[36] Furthermore, the Court noted that even though trademarks are registered by the USPTO, an arm of the Federal Government, the Federal Government does not “dream up these marks” and “it does not edit marks submitted for registration;” further, other than the Disparagement Clause, “an examiner may not reject a mark based on a viewpoint that it appears to express.”[37] As a result, “an examiner does not inquire about whether any viewpoint conveyed by a mark is consistent with Government policy or whether any such viewpoint is consistent with that expressed by other marks already on the principal register.” If a mark meets the Lanham Act’s other viewpoint-neutral requirements, then registration is mandatory. If an examiner finds that a mark is eligible for placement on the principal register, that decision is not reviewed by any higher official unless the registration is challenged. Also, “once a mark is registered, the USPTO is not authorized to remove it from the register unless a party moves for cancellation, the registration expires, or the Federal Trade Commission initiates proceedings based on certain grounds.”[38] With all of this in mind, Justice Alito concluded that it is “far-fetched to suggest that the content of a registered mark is government speech” because if the federal registration of a trademark makes the mark government speech, the Federal Government is “babbling prodigiously and incoherently,” “saying many unseemly things,” “expressing contradictory views,” “unashamedly endorsing a vast array of commercial products and services,” and “providing Delphic advice to the consuming public.”[39] The Court then gives several examples of conflicting and variegated registered marks to ask what the Government has in mind when it advises Americans to “make.believe” (Sony), “Think different” (Apple), “Just do it” (Nike), “Have it your way” (Burger King), or was the Government warning about a coming disaster when it registered the mark “EndTime Ministries”?[40] The Court went on to state that the USPTO “has made it clear that registration does not constitute approval of a mark,” “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means,” and “[n]one of [the Court’s] prior government speech cases even remotely supports the idea that registered trademarks are government speech.”[41] The Court discussed and distinguished the case on which the USPTO relies on most heavily, Walker v. Texas Division, Sons of Confederate Veterans, Inc., which the Court declares as likely marking “the outer bounds of the government-speech doctrine.”[42] In Walker, the Court held that messages on Texas specialty license plates bearing the confederate flag were government speech by applying the three factors from the Summum case: (1) whether the medium historically communicated the message of the state, (2) whether the public closely associates the message with the State, and (3) whether the government maintains direct control over the message.[43] First, license plates have long been used by the States to convey state messages; second, license plates “are often closely identified in the public mind” with the State, since they are manufactured and owned by the State, generally designed by the State and serve as a form of “government ID”; and third, Texas “maintain[ed] direct control over the messages conveyed on its specialty plates.”[44] The Court then held that none of the above mentioned factors were present in the current case pertaining to trademark registration, that federal trademark registration is “vastly different” from the government speech found it previous U.S. Supreme Court cases. The Court opined that if the registration of a trademark converted the mark into government speech, this “would constitute a huge and dangerous extension of the government-speech doctrine” for “if the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.”[45] As will be discussed later on in the paper, the Court addressed the concern of extending the USPTO’s application of government speech to copyrights. The Court responded to this concern by stating that trademarks often also have expressive content, and companies spend huge amounts to create and publicize trademarks that convey a message. “It is true that the necessary brevity of trademarks limits what they can say. But powerful messages can sometimes be conveyed in just a few words.”[46] Thus, the Court concluded that trademarks are private, not government speech.[47]
ii. Trademarks Are Not Government Subsidies
The Court addressed the USPTO’s argument that trademarks are government subsidized speech by stating that all the cases that the USPTO relies on involved cash subsidies or the equivalent.[48] The Court stated that the federal registration of a trademark is nothing like the programs at issue in those cases because the USPTO “does not pay money to parties seeking registration of a mark”; to the contrary, applicants must pay the USPTO a filing fee of $225-$600 and Tam himself paid the USPTO a fee of $275 to register “THE SLANTS.”[49] Indeed, the Federal Circuit has stated that those fees have fully supported the trademark registration system for the past 27 years.[50] In response to the USPTO’s argument that trademark “registration provides valuable non-monetary benefits that ‘are directly traceable to the resources devoted by the federal government to examining, publishing, and issuing certificates of registration for those marks,’” the Court stated that “just about every government service requires the expenditure of government funds” such as police and fire protection, the adjudication of private lawsuits and the use of public parks and highways.[51] The Court also mentioned that trademark registration is not the only government registration scheme—there are also federal patents and copyrights. State governments also register titles to real property and security interests in addition to issuing driver’s licenses, motor vehicle registrations, and hunting, fishing and boating licenses and permits.[52] Thus, the Court declined to interpret federal trademark registration as a government subsidy because the case law cited by the USPTO (as well as the universe of case law involving government subsidies) was not instructive.
iii. Trademarks are Not Government Programs
Finally, in response to the USPTO’s argument that the disparagement clause would apply to “government program” cases—a merger of government speech cases and government subsidy cases with “[t]he only new element . . . of two cases involving a public employee’s collection of union dues from its employees,” the Court stated that trademark registration was far removed from that area because “those cases occupy a special area of First Amendment case law.”[53] The Court further mentioned a potentially more analogous line of cases in which a unit of government creates a limited public forum for private speech.[54] When the government creates such a forum, in either a literal or “metaphysical” sense, some content and speaker based restrictions may be permitted.[55] In such cases however, “viewpoint discrimination” is forbidden.[56] Extending the viewpoint discrimination test, where the word “viewpoint” is applied broadly, the Court concluded that the Disparagement Clause discriminates on the basis of “viewpoint” because it “evenhandedly prohibits disparagement of all groups,” it “applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue” and “denies registration to any mark that is offensive to a substantial percentage of the members of any group.”[57] The Court concluded that the Disparagement Clause is viewpoint discrimination because “[g]iving offense is a viewpoint” and that it cannot be saved by analyzing it as a type of government program in which some content and speaker based restrictions are permitted.[58]
2. Commercial Speech Analysis
Justice Alito’s majority opinion then turned to whether trademarks are commercial speech and are thus subject to the relaxed scrutiny test as outlined by the Central Hudson case.[59] The USPTO and the amici that supported the USPTO’s position argued that trademarks are commercial speech because the central purposes of trademarks are commercial and that federal law regulates trademarks to promote fair and orderly interstate commerce, while Tam and his amici argued that many, if not all, trademarks have an expressive component beyond simply identifying the source of a product or service and go on to say something more, either about the product or service or some broader issue (such as “THE SLANTS” mark at issue in the case, which not only identifies the band, but also expresses a view about social issues).[60] The Court determined that the debate need not be resolved because the Disparagement Clause did not withstand even relaxed scrutiny review under Central Hudson, which requires that a restriction of speech serve a “substantial interest” and be “narrowly drawn” in order to be constitutional under the First Amendment. This means that “[t]he regulatory technique may extend only as far as the interest it serves.”[61] The Court reached the conclusion that the Disparagement Clause failed Central Hudson relaxed scrutiny review because even though the Disparagement Clause served two interests—the first being the Government’s interest in preventing speech expressing ideas that offend[62] and the second being protecting the orderly flow of commerce[63]—the Disparagement Clause was not “narrowly drawn” to those interests. That is, the Disparagement Clause was not “narrowly drawn” to drive out trademarks that support “invidious discrimination” because it reached any trademark that disparaged “any person, group, or institution,” applying to trademarks such as “Down with racists”, “Down with sexists”, “Down with homophobes.”[64] In that respect, the Disparagement Clause was not an anti-discrimination clause, it was a “happy-talk clause” and in this way, it went “further than is necessary to serve the interest asserted.”[65] The Court also stated that the Disparagement Clause was overly broad because it protected every person living or dead as well as every institution.[66] The Court finally addressed a “deeper problem” with the argument that commercial speech may be cleansed of any expression likely to cause offense because
[t]he commercial market is well stocked with merchandise that disparages prominent figures and groups and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.[67]
For all the above reasons, the Court majority held that the Disparagement Clause violated the Free Speech Clause of the First Amendment.

D. Justice Kennedy’s Concurring Opinion

Justice Kennedy’s concurring opinion, which Justices Ginsburg, Sotomayor and Kagan joined, stated that the Court correctly held that the Disparagement Clause engaged in viewpoint discrimination, but explains in greater detail why the First Amendment’s protections against viewpoint discrimination apply to “THE SLANTS” trademark here. Justice Kennedy submitted further that the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties.[68] First, Justice Kennedy explained that the First Amendment guards against laws “targeted at specific subject matter,” a form of speech suppression known as content based discrimination, which includes a subtype of laws that are aimed at the suppression of “particular views…on a subject.” Furthermore, a law found to discriminate based on viewpoint is an “egregious form of content discrimination,” which is “presumptively unconstitutional.”[69] Justice Kennedy went on to state that, at its most basic, the test for viewpoint discrimination is whether—within the relevant subject category—the government has singled out a subset of messages for disfavor based on the views expressed. In the present case, the Disparagement Clause reflected the Government’s disapproval of a subset of messages it found offensive, which is the essence of viewpoint discrimination.[70] Justice Kennedy dismissed the Government’s argument that the Disparagement Clause was viewpoint neutral because it applied in equal measure to any trademark that demeans or offends, noting that it missed the point because a “subject that is first defined by content and then regulated or censored by mandating only one sort of comment is not viewpoint neutral,” and to “prohibit all sides from criticizing their opponents makes a law more viewpoint based, not less so.”[71] In response to the Government’s argument that the Disparagement Clause was viewpoint neutral because it applied to trademarks regardless of the applicant’s personal views or reasons for using the mark, Justice Kennedy stated that the Government may not insulate a law from charges of viewpoint discrimination by tying censorship to the reaction of the speaker’s audience.[72] Justice Kennedy stated:
[i]ndeed, a speech burden based on audience reactions is simply government hostility and intervention in a different guise. The speech is targeted, after all, based on the government’s disapproval of the speaker’s choice of message. And it is the government itself that is attempting in this case to decide whether the relevant audience would find the speech offensive. For reasons like these, the Court’s cases have long prohibited the government from justifying a First Amendment burden by pointing to the offensiveness of the speech to be suppressed.[73]
Justice Kennedy summarized the contradictory folly of the Disparagement Clause by stating that “the dissonance between the trademark’s potential to teach and the Government’s insistence on its own, opposite, and negative interpretation confirms the constitutional vice of the statute.”[74] Second, turning to the commercial speech and government subsidy analysis, Justice Kennedy stated that, to the extent that trademarks qualify as commercial speech, they are an example of why that term or category does not serve as a blanket exemption from the First Amendment’s requirement of viewpoint neutrality, and in the realm of trademarks, the metaphorical marketplace of ideas becomes a tangible, powerful reality.[75] Justice Kennedy stated that the question here is not how other provisions of the Lanham Act square with the First Amendment. Rather, the Court’s precedents recognized just one narrow situation in which viewpoint discrimination is permissible: where the government itself is speaking or recruiting others to communicate a message on its behalf.[76] Justice Kennedy also pointed out that this case does not involve the situation where private speakers are selected for a government program to assist the government in advancing a particular message.[77] Finally, Justice Kennedy concluded by stating that a law like the Disparagement Clause can be directed against speech found offensive to some portion of the public and can be turned against minority and dissenting views to the detriment of all.[78] The “First Amendment does not entrust that power to the government’s benevolence” and “[i]nstead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”[79] Justice Thomas, in his concurring opinion, joined in all aspects of Justice Alito’s majority opinion except with respect to Part II, rejecting Tam’s interpretation arguments on “persons” within the Disparagement Clause, because he saw no reason to address this legal question in the first instance.[80] Justice Thomas also wrote separately because he continued “to believe that when the government seeks to restrict truthful speech in order to suppress the ideas it conveys, strict scrutiny is appropriate, whether or not the speech in question may be characterized as ‘commercial.’”[81] However, Justice Thomas joined in Part IV of Justice Alito’s opinion because he opined that it correctly concluded that the Disparagement Clause was unconstitutional even under the less stringent test of Central Hudson review.[82]

II. Predictions on The Aftermath of Matal v. Tam

Simon Tam had this to say about the period leading up to and after the Supreme Court opinion was delivered in Matal v. Tam:
After we won our case in a federal court, the Trademark Office asked the Supreme Court to review the case. That very same week, the office granted another new registration for “slant” to a company that makes industrial coils. I may be the only person denied a registration for “slant” because it was deemed offensive to Asian-Americans.
This week, the Supreme Court reversed the Trademark Office’s decision, striking down the law that denied trademark protection to names deemed derogatory. Some supporters of that law claim that offensive names will now routinely receive trademark protection. (The Washington Redskins is a widely cited example.) But my response is that the Trademark Office doesn’t have the cultural understanding to determine what is or isn’t racist.[83]
Now that the Disparagement Clause has been ruled unconstitutional, will there be a flood of offensive trademarks filed with the USPTO? What about other marks previously denied or cancelled under the Disparagement Clause, such as the Washington Redskins mark? This paper predicts that there will not be a substantial increase in offensive mark filings, due to goodwill concerns and common business sense. Additionally, the fact that the Disparagement Clause survived for nearly 70 years despite major First Amendment concerns suggests that issues with disparaging marks are relatively uncommon. Only in rare cases where businesses have successfully built up goodwill in a mark, despite the mark being potentially disparaging or offensive—such as the Washington Redskins trademark—would the mark be worth registering with the USPTO. This leaves the opportunity to register trademarks for “self-disparagement,” political, or artistic reasons or to reappropriate or reclaim a term, which encourages the free-flow of expression in an ever-changing marketplace of ideas. Encouraging freedom of expression from these groups outweighs any concerns raised by potential, though unlikely, excessive filing of offensive marks.

A. Low Probability of Highly Offensive Mark Filings

An immediate knee-jerk prediction to Matal v. Tam might be a sharp increase in the filing of offensive or derogatory marks with the USPTO. One attorney remarks that the “Trademark Official Gazette may soon require a parental advisory on the cover.”[84] But there is reason to believe this concern is blown out of proportion. The main reason why offensive filings likely will not increase is that there is no indication that there were many offensive mark filings awaiting registration (or were denied registration due to the Disparagement Clause) to begin with. Why else would it have taken nearly 70 years for a trademark applicant to challenge the statute?[85] Simon Tam and The Slants also challenged the statute at roughly the same time as the Washington Redskins did (give or take several years). It appears that the interest in obtaining a disparaging mark is not high amongst brands, companies or groups. In other words, there may not be many trademark applicants who wish to register offensive marks generally. To see why this may be the case, we should look to underlying psychological concerns and motivations of both purchasing consumers and businesses that wish to thrive. Common business sense would dictate that naming one’s company, group, or brand after an offensive word or slur would not exactly be good marketing.[86] Other factors potentially preventing an increase in the registration of marks are the burdens of acquiring registration of a mark, which are rigorous and not to be underestimated.[87] To register a mark, applicants must show that they will actually use the mark in commerce – which may be unlikely for holders of offensive marks.[88] Furthermore, “merely ornamental” marks that do not serve the source identifying purpose behind trademarks will also likely not be registered.[89] The other barriers present in the registration process will likely discourage many applications from registering offensive marks. Many will likely give up after realizing the difficulty. Beyond the registration process, there are other business reasons to not adopt disparaging marks. The “shock factor” of such marks are often temporary or transient at best. Building goodwill, brand loyalty, and trust in the marketplace would prove difficult by relying solely on such a gimmick. There have been examples of marks from French Connection United Kingdom (who stylized their shirts as “fcuk” to mimic the word “fuck”), but that company registered a mark on a misspelling of a cuss word that also happened to be the acronym for its company. One can hardly imagine that company or a similarly situated one now being able to register a mark for “fuck” and generating substantial business from it. Additionally, the post-Matal Federal Circuit case of In re Brunetti reversed the rejection of the mark “FUCT” for various items of clothing under Section 2(a) because the Lanham Act’s ban on registering immoral or scandalous trademarks was unconstitutional on First Amendment grounds, as held by Tam.[90] There may be individuals or companies out there who believe registering offensive marks can lead to promising business opportunities.[91] This may be a new, exciting, and wide-open market, as some commentators suggest that the Brunetti case further expands the realm of potentially offensive subject matter now protectable by federal trademark registration.[92] In the context of racial slurs or words considered insulting to a group (be it political, religious, cultural, etc.), there is even less motivation for a company to brand themselves or a product after such disparaging terms. Not only could they risk alienating large segments of customers with such a choice, but that decision would also chip away and deteriorate whatever sense of reputation or goodwill that company has already built up. Therefore, the scenario in which companies will flock to the USPTO to register disparaging marks seems highly unlikely, unless the company wishes to commit a form of brand suicide. Scandalous, “shocking” advertising campaigns can be achieved through marks like FUCT, now permissible in light of In re Brunetti. Individuals and companies can achieve the same or similar marketing results without using disparaging marks, which run the risk of alienating potential consumers.

B. The Washington Redskins Mark

One class of now-registerable disparaging or offensive marks is the type of mark that has already built up years of goodwill, brand recognition and notoriety. A perfect example of this group of marks is the Washington Redskins mark, which was challenged in litigation both in federal courts and the TTAB.[93] However, as even Justice Alito mentioned in the majority opinion of Matal v. Tam, there have been many other marks considered derogatory, offensive and/or disparaging to minority groups registered due to the nature of the times.[94] The difference with this class of marks is that they have already spent years of time, resources and money building up their brand with an already registered mark—whereas potential trademark owners wishing to now register offensive marks in the wake of Matal v. Tam have to start from nothing, and will likely acquire nothing to build their brand, due to the analysis discussed above in Part III(A). Even though marks like the Washington Redskins trademark or “FUCT” are valid after the Matal v. Tam and In re Brunetti cases, there is some solace for groups disparaged by such marks. These marks are few and far between. The other offensive marks registered according to the condition of standards at the time (as mentioned by Justice Alito), have either expired or are not used by any businesses or enterprises considered even remotely successful.

C. Free Speech Interests Outweigh Offensive Mark Filings

Regardless, a compelling countervailing interest outweighs the concern of increased filing of offensive marks. That interest is our ability to give certain artists or organizations like “The Slants” or “Dykes on Bikes” the right to “self-disparage.” By allowing such groups to fully exercise their Free Speech rights under the First Amendment, the robustness of speech will increase and the marketplace of ideas will be diversified. Groups like The Slants will also be able to reclaim and reappropriate previously offensive terms in order to gain cultural or political ground in other arenas. As mentioned before by the New York Times article penned by Simon Tam, there is power in reappropriation. The possibilities that this hybrid Free Speech trademark right gives to individuals and groups like The Slants and Dykes on Bikes is limitless, and should be encouraged in order to fully reach the potential envisioned by the First Amendment. Notably, filers after the Matal v. Tam case have been primarily aiming to “take back” racial slurs and reappropriate them—from an African American applicant attempting to register “nigga” in order to “reclaim the word” and “sell T-shirts that celebrate themes such as unity and brotherhood” to a patent lawyer in Alexandria, Virginia trying to register the swastika in order to “put it in a drawer and make sure nobody uses it” by selling merchandise such as blankets, shirts, and flags for the exorbitantly expensive price of a thousand dollars each.[95] These examples suggest that the Tam decision has sparked reappropriation of disparaging terms and images, rather than promoted disparagement of minority groups.

III. Comparisons to Patent Law & Copyright Law

This new hybrid Free Speech and Trademark right can also be compared with approximate equivalents in Copyright Law and Patent Law to argue that the trademark right, by itself, will not suffer any detriment in being merged with Free Speech rights and may in fact see positive benefits. Taking copyright law as the first example, copyrights can be obtained and registered for offensive material, mainly because copyrights are so closely tied to expression and are in fact “an engine of free expression.”[96] Being able to copyright anything, even if it is offensive, makes the copyright form of intellectual property stronger, more diverse, and more robust. The same effect will likely occur for this new Trademark and Free Speech right created in the wake of Matal v. Tam. As for Patent Law, there is an outdated and hardly invoked provision from the Atomic Energy Act of 1954 that prohibits the patenting of inventions used for atomic weapons.[97] This provision is somewhat of a “moral” clause, comparable to the Disparagement Clause. This provision has hardly ever been used or cited by the USPTO, or challenged by courts, and thus has a limited impact on patent rights. Thus, the Atomic Energy Act in Patent Law, which runs “parallel” to the Disparagement Clause, goes to show the limited impact such moral provisions have on intellectual property rights.[98]

Conclusion

For the reasons described above, this paper asserts that there will not be a substantial increase in the filings of offensive marks post-Matal v. Tam, and that the free speech interests of groups like The Slants and Dykes in Bikes is sufficient justification for the Free Speech Trademark hybrid right to exist. In addition, upon comparisons to roughly equivalent fields such as Copyright and Patent Law, infusing Free Speech rights into the Trademark intellectual property right can only make trademarks stronger. Perhaps it would be fitting to end with Simon Tam’s final comments on the case and the outcome of Matal v. Tam in the U.S. Supreme Court, in the op-ed he penned for The New York Times:
Social theorists say that our identity can both be influenced by as well as influence the world around us. Every scientific study confirms that the stigma of derogatory terms like “queer” and “bitch” are mediated by perceived power when the referenced groups own them. The role of the government shouldn’t include deciding how members of a group define themselves. That right should belong to the community itself.
The battles about hate speech shouldn’t be waged at the Trademark Office, decided by those who have no connections to our communities. Those skirmishes lead to arbitrary, inconsistent results and slowly chip away at the dignity and agency of oppressed people to decide appropriateness on our terms. A person’s quality of life, opportunities and rights may hinge on that person’s identity. Those rights should not hinge on the hunch of a government employee armed with wiki-joke websites. It’s suppression of speech in the most absurd manner.
Americans need to examine our systems of privilege and the ways unconscious bias affects our attitudes. But that discussion begins with the freedom to choose our language. As we sing on “From the Heart” on our latest album, “The Band Who Must Not Be Named”:
So sorry if you take offense
But silence will not make amends
The system’s all wrong
And it won’t be long
Before the kids are singing our song.[99]

* Visiting Scholar & Senior Researcher, University of California Berkeley School of Law. LL.M., University of California Berkeley School of Law, 2017. J.D., University of California, Hastings College of the Law, 2007. I would like to thank Professor Sonia Katyal, Professor John Haskell, Simon Tam, Tina Loza, and Jennifer Lantz for their contributions to this article.
[1] 15 U.S.C. § 1052(a) (2006). Also cited as § 1052(a), § 2(a) or “Section 2(a)”.
[2] Matal v. Tam, No. 15-1293, slip op. at 1-2 (U.S. June 19, 2017).
[3] See Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005); Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014) (Trademark Trial and Appeal Board (“TTAB”) case involving the Washington Redskins trademark).
[4] See Bill Donahue, Post-Slants, Is USPTO Going To Be Flooded With Bad Words?, Law360 (June 22, 2017, 5:30 PM), https://www.law360.com/articles/937110 (“In the wake of the U.S. Supreme Court’s Slants ruling striking down the government’s ban on offensive trademark registrations, some have worried about a flood of ugly language at the trademark office, but experts say those concerns could be overblown.”).
[5] 42 U.S.C. § 2181 (2012) (“No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.”).
[6] In re Tam, 808 F.3d 1321, 1331 (Fed. Cir. 2015).
[7] See Wikipedia, The Slants, https://en.wikipedia.org/wiki/The_Slants (last visited Mar. 17, 2018).
[8] Simon Tam, The Slants on the Power of Repurposing a Slur, N.Y. Times (June 22, 2017), https://www.nytimes.com/2017/06/23/opinion/the-power-of-repurposing-a-slur.html.
[9] Id. Tam goes on to later state: “We had called ourselves the Slants as a way of seizing control of a racial slur, turning it on its head and draining its venom. It was also a respectful nod to Asian-American activists who had been using the epithet for decades.”
[10] Id.
[11] Matal v. Tam, No. 15-1293, slip op. at 7 (U.S. June 19, 2017).
[12] Id. at 5-6 (quoting 15 U.S.C. § 1052(a) (2006)).
[13] Id. at 6 (citing TMEP § 1203.03(b)(i)).
[14] Id.
[15] Id. The USPTO has also specified in the TMEP that “[t]he fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.” Id.
[16] Id. at 7. The “examining attorney also relied on a finding that ‘the band’s name has been found offensive numerous times’ – citing a performance that was canceled because of the band’s moniker and the fact that ‘several bloggers and commenters to articles on the band have indicated that they find the term and the applied-for mark offensive.” Id.
[17] Tam, supra note 8
[18] Tam, slip op. at 7.
[19] Tam, supra note 8
[20] Id.
[21] Id.
[22] In re Tam, 808 F.3d 1321, 1334-39 (Fed. Cir. 2015).
[23] Id. at 1339-55.
[24] Id. at 1355-57.
[25] Id. at 1358 (O’Malley, J., concurring).
[26] Id. at 1363-74 (Dyk, J., concurring in part, dissenting in part).
[27] Id. at 1376-82 (Lourie, J., dissenting).
[28] Id. at 1376 (Reyna, J., dissenting).
[29] Matal v. Tam, No. 15-1293, slip op. at 8 (June 19, 2017).
[30] Id. at 8-9.
[31] Id. at 9-10.
[32] Id. at 11-12.
[33] Id. at 12.
[34] Id. at 13.
[35] Id.
[36] Id. at 13-14.
[37] Id. at 14.
[38] Id. (citing 15 U.S.C. §§1052(a), 1058(a), 1059, 1062(a), 1064, 1071; 37 CFR §§2.111(b), 2.160, 41.31(a) (2016)).
[39] Id. at 14-15.
[40] Id. at 15 (citing make.believe, Registration No. 4,4342,903; Think Different, Registration No. 2,707,257; Just Do It, Registration No. 1,875,307; Have It Your Way, Registration No. 0,961,016; and EndTime Ministries, Registration No. 4,746,225).
[41] Id. at 15-17 (discussing and distinguishing the government speech in Johanns v. Livestock Mktg. Ass’n, 544 U.S. 550, 560-61 (2005) (holding that government ads promoting the sale of beef products were government speech) and Pleasant Grove City v. Summum, 555 U.S. 460, 464 (2009) (holding that monuments in a city park represented government speech due to many factors) from trademarks).
[42] Id. at 17 (citing Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 576 U.S. __ (2015)).
[43] Id. at 17. See Cong. Research Serv., Legal Sidebar, License Plates and Public Signs: Government First Amendment Speech (2015), available at https://fas.org/sgp/crs/misc/license.pdf (summarizing the three factors from Summum, 555 U.S. 464-65).
[44] Tam, slip op. at 17.
[45] Id. at 17-18.
[46] Id. at 18.
[47] Id.
[48] Id. at 18-19 (citing Rust v. Sullivan, 500 U.S. 173 (1991); Nat’l Endowment for the Arts v. Finley, 524 U.S. 569 (1998); U.S. v. Am. Library Ass’n, 539 U.S. 194 (2003); Regan v. Taxation with Representation of Washington, 461 U.S. 540 (1983); Cammarano v. U.S., 358 US. 498 (1959)).
[49] Id. at 19 (citing 37 C.F.R. §2.6(a)(1) (2016) and 15 U.S.C. §1059(a) (2012)).
[50] In re Tam, 808 F.3d 1321, 1353 (Fed. Cir. 2015).
[51] Tam, slip op. at 19-20.
[52] Id. at 20.
[53] Id. The government program cases are: Davenport v. Washington Educ. Ass’n, 551 U.S. 177, 184-90 (2007) (holding a law constitutional that did not allow an employer to collect a portion of union dues that would be used in election activities, because the law imposed a “modest limitation” on an “extraordinary benefit,” e.g. taking money from the wages of non-union members and turning it over to the union free of charge; refusing to confer a greater benefit did not upset the market-place of ideas and did not abridge the union’s free speech rights); Ysura v. Pocatello Educ. Ass’n, 555 U.S. 353, 355 (2009) (holding constitutional an Idaho law that allowed public employees to elect to have union dues deducted from their wages but did not allow such a deduction for money remitted to the union’s political action committee because “The First Amendment…does not confer an affirmative right to use government payroll mechanisms for the purpose of obtaining funds for expression. Idaho’s law does not restrict political speech, but rather declines to promote that speech by allowing public employee checkoffs for political activities.”); Abood v. Detroit Bd. of Educ., 431 U.S. 209, 224-26 (1977) (more similar to a government cash subsidy case, where the laws conferred a benefit because it was thought that this arrangement served important government interests).
[54] Tam, slip op. at 20. See e.g. Good News Club v. Milford Central Sch., 533 U.S. 98, 106-107 (2001); Rosenberger v. Rector & Visitors of Univ of Va., 515 U.S. 819, 831 (1995); Lamb’s Chapel v. Center Moriches Union Free Sch. Dist., 508 U.S. 384, 392-93 (1993); Legal Services Corp. v. Velazquez, 531 U.S. 533, 541-44 (2001).
[55] See Rosenberger, 515 U.S. at 830-31.
[56] See id. at 831.
[57] Tam, slip op. at 22.
[58] Id. at 22-23. The Court states that they have “said time and again that ‘the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.’” Id. at 22-23 (citations omitted).
[59] Id. at 23 (citing Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n of N.Y., 447 U.S. 557 (1980)).
[60] Tam, slip op. at 23-24.
[61] Id. at 24 (citing Cent. Hudson, 447 U.S. at 564-65).
[62] Tam, slip op. at 24. The court points out that one way to achieve this interest is to prevent “underrepresented groups” from being “bombarded with demeaning messages in commercial advertising.” Id. at 24-25 (citing In re Tam, 808 F.3d 1321, 1364 (2015) (Dyk, J., concurring in part and dissenting in part)). It also notes that an amicus supporting the USPTO suggests that the disparagement clause serves this interest by “encouraging racial tolerance and protecting the privacy and welfare of individuals.” Id. at 24-25 (citing Brief for Native American Organizations as Amici Curiae at 21, Matal v. Tam, 582 U.S. __ (2017) (No. 15-1293)). Nonetheless, the court states that “[s]peech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’” Tam, slip op. at 25 (citing United States v Schwimmer, 279 U.S. 644, 655 (1929) (Holmes, J., dissenting)).
[63] Tam, slip op. at 25 (citing Tam, 808 F.3d at 1380-81 (Reyna, J., dissenting)) (“Commerce, we are told, is disrupted by trademarks that ‘involv[e] disparagement of race, gender, ethnicity, national origin, religion, sexual orientation, and similar demographic classification.’ . . . . Such trademarks are analogized to discriminatory conduct, which has been recognized to have an adverse effect on commerce.”)). See Brief for Petitioner at 49, Matal v. Tam, 582 U.S. __ (2017) (No. 15-1293); see also Brief for Native American Organizations as Amicus Curiae, supra note 62
[64] Tam, slip op. at 25.
[65] Id.
[66] Id. at 25-26. “Is it conceivable that commerce would be disrupted by a trademark saying: ‘James Buchanan was a disastrous president’ or ‘Slavery is an evil institution’?” Id. at 26.
[67] Id. at 26.
[68] Matal v. Tam, No. 15-1293, slip op. at 1 (U.S. June 19, 2017) (Kennedy, J., concurring).
[69] Id. at 2.
[70] Id. at 2-3.
[71] Id. at 3 (“The logic of the Government’s rule is that a law would be viewpoint neutral even if it provided that public officials could be praised but not condemned. The First Amendment’s viewpoint neutrality principle protects more than the right to identify with a particular side. It protects the right to create and present arguments for particular positions in particular ways, as the speaker chooses. By mandating positivity, the law here might silence dissent and distort the marketplace of ideas.”).
[72] Id. at 3-4 (“The danger of viewpoint discrimination is that the government is attempting to remove certain ideas or perspectives from a broader debate. That danger is all the greater if the ideas or perspectives are ones a particular audience might think offensive, at least at first hearing. An initial reaction may prompt further reflection, leading to a more reasoned, more tolerant position.”).
[73] Id. at 4.
[74] Id. at 4-5.
[75] Id. at 5-6 (“Here that real marketplace exists as a matter of state law and our common law tradition, quite without regard to the Federal Government. These marks make up part of the expression of everyday life, as with the names of entertainment groups, broadcast networks, designer clothing, newspapers, automobiles, candy bars, toys and so on. Nonprofit organizations – ranging from medical research charities and other humanitarian causes to political advocacy groups – also have trademarks, which they use to compete in a real economic sense for funding and other resources as they seek to persuade others to join their cause. To permit viewpoint discrimination in this context is to permit Government censorship.”).
[76] Id. at 6-7.
[77] Id. at 7.
[78] Id. at 8.8
[79] Id.
[80] Matal v. Tam, No. 15-1293, slip op. at 1 (U.S. June 19, 2017) (Thomas, J., concurring).
[81] Id. (citing Lorillard Tobacco Co. v. Reilly, 533 U.S. 525, 572 (2001) (Thomas, J., concurring in part and concurring in judgment); 44 Liquormart, Inc. v. Rhode Island, 517 U.S. 484, 518 (1996) (same)).
[82] Tam, slip op. at 1 (Thomas, J., concurring).
[83] Tam, supra note 8
[84] Donahue, supra note 4 (quoting attorney Christopher Larus of Robins Kaplan LLP).
[85] See id. (“That’s one of the reasons it took 70 years for the disparagement bar to fall; there just have never been that many companies clamoring to use revolting phrases as trademarks on their products. ‘As a practical matter, I don’t think I’ve ever filed an application that falls into these categories, and I’ve been doing this for over 20 years,’ said Cynthia Walden, the head of the trademark group at Fish & Richardson PC. ‘It just doesn’t really come up much.’”).
[86] See id. (“First and foremost is the fact that offensive subject matter, even if you can now technically register it, is simply bad branding—sort of a big deal when talking about trademarks. ‘You still have to live in the world and you still have to deal with public opinion,’ said Timothy J. Kelly, a partner with McCarter & English LLP. ‘If people are going to look at that [registered] term and be turned off immediately, you’re not going to sell much.’”).
[87] See id. (“As for those who do rush to file applications for objectionable subject matter in the wake of the ruling, experts say they will still face big hurdles at the trademark office, even in a post-Slants world. Many of them will be shot down for the same reason as applications for ‘Covfefe,’ ‘Nasty Woman’ and other trending terms: The applicant fundamentally misunderstands what a trademark registration is. ‘Registration requires more than just filing an application to register registrable matter and paying a fee,” said Alexandra Roberts, a professor at the University of New Hampshire School of Law. Applicants who race out to register must show that they have a bona fide intent to use the name on a particular set of goods and services.”).
[88] See id. (“To get fully registered, they then need to have the capacity to actually use the term as a trademark in commerce. Some of the folks who descend on the USPTO in the wake of the high court’s decision might certainly meet those requirements, but many more likely won’t. ‘The applicants often aren’t serious about making the kind of use necessary to acquire trademark rights,’ Roberts said.”).
[89] See id. (“The trademark office will also refuse to register any mark that’s ‘merely ornamental,’ as well as widespread terms that are used by numerous third parties, because neither serves the source-designating function that’s required of a trademark. Those are two more big sticking points that could stem the tide. ‘Post-Tam, we can expect producers who have long used disparaging marks to register them with little fanfare,’ Roberts said. ‘But when it comes to individuals looking to capitalize on a controversial phrase, many of their applications won’t pass muster.’”).
[90] In re Brunetti, 877 F.3d 1330, 1335 (Fed. Cir. 2017) (“Erik Brunetti appeals from the decision of the Trademark Trial and Appeal Board (“Board”) affirming the examining attorney’s refusal to register the mark FUCT because it comprises immoral or scandalous matter under 15 U.S.C. § 1052(a) (‘§ 2(a)’). We hold substantial evidence supports the Board’s findings and it did not err concluding the mark comprises immoral or scandalous matter. We conclude, however, that § 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. We therefore reverse the Board’s holding that Mr. Brunetti’s mark is unregistrable.”); Dennis Crouch, We are all FUCT, Patentlyo, (December 15, 2017), https://patentlyo.com/patent/2017/12/we-are-all-fuct.html (“Here, the Federal based its decision on content-based discrimination (rather than viewpoint based) which is also reviewed for strict scrutiny. In reaching its decision, the Federal Circuit rejected two particular arguments, holding: 1. Trademark Registration is Not a Government Subsidy Program: If it were a subsidy, then the government could place conditions on the program without violating free speech principles (so long as those are not unconditional conditions). 2. Trademark Registration is more than commercial speech because it does “more than propose a commercial transaction” and often involve expressive conduct. If it were pure commercial speech, then restrictions would be reviewed under a looser standard. However, here the court holds that the immoral or scandalous mark provision ‘is unconstitutional even if treated as a regulation of purely commercial speech.’”).
[91] Indeed, the Federal Circuit commented on this issue. See Brunetti, 877 F.3d at 1354 (“Even marks that reference the indisputably vulgar term ‘fuck,’ like the mark at issue here, are not always rejected as a matter of course. The PTO registered the mark FCUK, but rejected the marks FUCT and F**K PROJECT as scandalous. It allowed the registration of MUTHA EFFIN BINGO, Reg. No. 4,183,272, and IF WE TOUCH IT, IT’S FN GOLDEN, Reg. No. 4,100,978, but not F ALL F’S APPAREL FOR THE F’N ANGRY, Appl. No. 78,420,315.”).
[92] See Beth Goldman, Diana Rutowski, Kristin Cornuelle & Chris Civil, Federal Circuit Makes Way for FUCT, Striking Down the Statutory Bar on Immoral or Scandalous Trademark Registrations as Unconstitutional, Orrick Intellectual Property Alert (Dec. 20, 2017), https://www.orrick.com/Insights/2017/12/Federal-Circuit-Makes-Way-for-FUCT (“On December 15, the U.S. Court of Appeals for the Federal Circuit struck down the Lanham Act’s ban on registering immoral or scandalous trademarks as unconstitutional on First Amendment grounds in In re Brunetti, — F.3d —- (Fed. Cir., Dec. 15, 2017, No. 2015-1109). This decision followed just a few months after the Supreme Court’s significant holding in Matal v. Tam, 137 S. Ct. 1744 (2017), which invalidated the disparagement clause of the Lanham Act on the same grounds. In re Brunetti further expands the new world of potentially offensive subject matter now eligible for federal trademark protection. At issue was Erik Brunetti’s application to register the mark FUCT for various items of clothing. The Examining Attorney refused registration under Section 2(a) of the Lanham Act, finding that the mark comprised immoral or scandalous subject matter because FUCT is the past tense of the vulgar verb ‘fuck.’ The Trademark Trial and Appeal Board affirmed the Examining Attorney’s refusal, citing dictionary definitions uniformly characterizing the word ‘fuck’ as offensive and several images showing Brunetti using the mark in connection with explicit sexual imagery. The Federal Circuit agreed that the mark was vulgar and scandalous, but then turned to examine the constitutionality of the immoral or scandalous clause of Section 2(a) . . . The potential subject matter of registrable trademarks has, for the second time in just a few months, expanded considerably. It will be interesting to see how these new court interpretations affect trademark application filings in the New Year.”).
[93] See Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005); Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014) (Trademark Trial and Appeal Board (“TTAB”) case involving the Washington Redskins trademark).
[94] Such marks were “likely attributable not to the acceptance of his interpretation of the clause but to other factors – most likely the regrettable attitudes and sensibilities of the time in question.” Tam, slip. op at 12.
[95] Ailsa Chang, After Supreme Court Decision, People Race To Trademark Racially Offensive Words, NPR Planet Money (Jul. 21, 2017, 4:25 PM), http://www.npr.org/2017/07/21/538608404/after-supreme-court-decision-people-race-to-trademark-racially-offensive-words.
[96] Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558 (1985).
[97] 42 U.S.C. § 2181 (2012) (“No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon”).
[98] Being able to patent anything does not translate exactly to being able to say or express anything, due to the fact that the moral implications of technology might be a complicated subject that goes beyond Free Speech First Amendment rights. On a related note, there does not appear to be any free speech restrictions on what to title a patent or particular words that can be placed within a patent (e.g. in the specification, claims and/or abstract). Therefore, from a strictly verbal basis — the expressive content of a patent application can be viewed now as being equivalent to the expressive content in copyrights and now, trademarks.
[99] Tam, supra note 8

Tomato, Tamatie? Revising the Doctrine of Foreign Equivalents in American Trademark Law

Tomato, Tamatie? Revising the Doctrine of Foreign Equivalents in American Trademark Law
Download a pdf version of this article here. The growing specter of globalization impacts industries from communication to transportation, resulting in an unparalleled proliferation of cultural diffusion unmatched throughout history. Naturally, this cultural diffusion has familiarized American consumers with foreign brands and foreign languages despite the obvious English dominance domestically, resulting in a trademark quagmire. Under the current American doctrine of foreign equivalents, trademark examiners and courts translate non-English words into English to determine whether they meet the general United States Patent & Trademark Office (USPTO) registration requirements. However, by treating English and non-English words alike, the pool of source-identifying marks is unnecessarily restricted. This note argues that a clear rule-like form that relaxes restrictions of registering descriptive foreign language marks through offering ‘descriptive’ foreign-language a presumption of eligibility for protection would mitigate inconsistent application of the doctrine. Such a rule would also limit costs on consumers and producers that are caused by restricting the range of available marks and inhibiting creative and communicative branding.

Lost and Found: Intellectual Property of the Fragrance Industry; From Trade Secret to Trade Dress

Lost and Found: Intellectual Property of the Fragrance Industry; From Trade Secret to Trade Dress
By Charles Cronin* Download a PDF version of this article here.  

Introduction

The foundations of the modern fragrance industry can be traced to fragrance producers established in the south of France during the sixteenth century.[1] France’s Mediterranean coast offers excellent conditions for cultivating plants whose flowers, fruit, stems, and roots are used to produce fragrances.[2] For centuries fragrance manufacturers located themselves near growers in order to obtain and process the plant materials as soon as possible after their harvest.[3] By the nineteenth century many of the essences produced by these manufacturers were shipped to Paris to be purchased by hundreds of small perfume houses there that mixed them and sold the compounds in branded retail products like fine fragrances, soaps, and cosmetics.[4] Throughout the nineteenth century, the farms, essential oil producers, and manufacturers of branded fragrances, were family enterprises.[5] With small staffs, often comprised of related individuals who spent their entire careers with the same firm, it was relatively easy for these businesses to maintain proprietary information about distillation techniques, the composition of branded perfumes, and other elements of the production process. During the twentieth century, the fragrance industry underwent radical changes. Increasing real estate values in the area of Grasse, coupled with rising labor costs, prompted the sale of land once used to cultivate jasmine and other flowers for more profitable uses like condominium developments.[6] Today, most of the crops used in fragrance manufacture are grown and processed in countries like Algeria and India where land and labor are relatively inexpensive.[7] Most of the small perfumeries in Paris have disappeared or have been consolidated. By the end of the twentieth century, five fragrance and flavor companies – none of them French – had come to supply over half of the world fragrance market.[8] Whereas the perfumeries in Paris in the nineteenth century created their own branded proprietary blends, today most perfumes are developed and manufactured by a few large corporations with branches all over the world.[9] The inexorable consolidation in the fragrance manufacturing industry over the past century has made the remaining fragrance houses more vulnerable to misappropriation of their intellectual property, particularly of fragrance formulas that they develop at significant expense. Members of the close-knit cadres of the small fragrance houses of the nineteenth century worked in one location, and on behalf of one enterprise, their entire career. Today, perfumers, like professionals in other high technology industries, commonly change not only their locations, but also their employers. This itinerancy has engendered an element of unease among fragrance houses as to the security of their most valuable assets: formulas and other trade secrets that can now be readily obtained, copied, and shared by employees with access to the relevant information stored on the company’s servers.[10] Another late-twentieth-century development that has unnerved fragrance manufacturers is the improving accuracy of analytic technologies in revealing a fragrance’s chemical composition. Unlike digital technologies that have unsettled the media industry by enabling surreptitious copyright infringement, chemical analytic technologies do not enable the illegal acquisition or distribution of intellectual property. It is generally considered lawful to use these technologies, not only to obtain the fragrance formulas of competitors, but also to develop competing products.[11] The fragrance business is by no means the only industry that has had to cope with developing analytic and reproduction technologies, or increasingly itinerant employees. For centuries, many industries have struggled to maintain the confidentiality of proprietary business information, and the ongoing viability of these industries has depended in part on negotiating these challenges. Chartreuse liqueur, and Meissen porcelain manufacturers, for instance, effectively confronted such provocations, and may offer perspectives on how the fragrance industry might best come to terms with its weakened capacity to maintain proprietary knowledge. Since the early seventeenth century, monks of the Carthusian Order have produced Chartreuse.[12] In 1903 the French government appropriated the order’s monastery, exiling the monks to Tarragona, Spain, where they reestablished their eponymous liqueur manufactory.[13] The government sold the monks’ distillery in France, along with the Chartreuse trademark, to private investors who attempted to produce the monks’ cordial.[14] In a demonstration of divine justice, the “new” Chartreuse failed utterly in the market because its makers could not determine the complex formula; the Carthusians were careful to leave no trace of their secret recipe and methodology when they were expelled from France.[15] Today the Carthusians thrive in France once again, thanks, in part, to their effective maintenance of this centuries-old trade secret.[16] Their ability to do so stems from the order’s remarkable avoidance of verbal communication, and extremely limited transfer of proprietary information; each monk vows to a life of silence, and only two monks know the formula for Chartreuse at any time.[17] Messien porcelain provides another perspective for how the fragrance industry might face threats to its trade secrets. Early in the eighteenth century Johann Böttiger, an alchemist working for the Saxon king in Meissen, discovered how to make porcelain.[18] Soon thereafter, Böttiger relocated his workshop to Albrechtsberg Castle, atop a high hill, which protected his trade secrets from the predacious eyes of competitors prowling the streets of Meissen.[19] Despite Böttiger’s precautions, his secrets of the materials and manufacturing techniques for porcelain were appropriated, and widely disseminated, within decades of his breakthrough.[20] Böttiger’s motley crew of laborers, artists, and chemists, were notoriously disloyal, tempted by potential financial windfalls from disclosing his secrets, or by establishing competing enterprises implementing them.[21] Despite the loss of its most precious asset, Böttiger’s enterprise still survives as “Meissen Couture” a luxury products manufacturer and retailer that sells an enormous range of products ranging from porcelain to clothing to furniture.[22] This diversification was essential for the survival of the enterprise. It was made possible, however, only by associating thousands of unrelated products to the porcelain on which the company was founded, and for which it is renowned.[23] All Meissen products are branded with the logo of crossed swords with which the company has marked its porcelain since the 1720s.
  The fragrance industry now faces a dilemma similar to that confronting the Meissen porcelain business 250 years ago, when Böttiger’s trade secrets were lost through breaches of physical security measures, and collegial disloyalty. To stanch a similar loss of their proprietary information, fragrance manufacturers could attempt to replicate the Carthusians’ success with Chartreuse. They could adopt the monks’ code of secrecy and silence, and relocate their manufactories to remote locations where they also cultivate the crops used to create new proprietary blends.[24] This solution, however, would be practically, agriculturally, and legally infeasible. Unlike the small cadre of monks whose conduct is governed by regulations that transcend the secular world, the fragrance industry, employs hundreds of thousands of direct and indirect workers, making secrecy practically impossible.[25] Legally, such restrictions would be indefensible, due to the extraordinary constraints on employees’ speech and movement.[26] Therefore, Chartreuse does not offer an apposite potential new business model for the fragrance industry. Meissen porcelain, however, may provide the fragrance industry an encouraging example of the value of reorienting its intellectual property focus. Despite the loss of its greatest asset, the Meissen porcelain business survived, not only by diversifying its merchandise, but also by invigilating over another significant intellectual property asset it has never lost: the crossed swords mark with which it has always branded its goods.[27] Like the secrets of porcelain manufacture, those used to create fragrances have been revealed, or are increasingly vulnerable to discovery, through reverse engineering and disclosure regulation.[28] Meanwhile, fragrances are increasingly being used as a component of trade dress in branding goods and services.[29] It is the corporate customers of the fragrance industry, rather than the fragrance manufacturers themselves, who benefit financially from fragrance trade dress. However, the increasingly widespread application of fragrances in this manner has added value to an expanding number of goods and services, and the fragrance manufacturers should reasonably expect to share in profits generated thereby.[30] This article proposes that while trade secret protections for fragrances have lost much of their efficacy, trademark and unfair competition law may offer currently unrealized legal protection of the use of fragrances as trade dress. Part I chronicles how reverse engineering has undermined the fragrance industry’s reliance, from time immemorial, on secrecy to protect its intellectual property. Part II considers the limited efficacy of copyright and patent protection for fragrances. Part III canvasses the growing practice of using of fragrance as a component of multisensory trade dress, and the potential legal protection of such uses through trademark and unfair competition law. The article concludes by drawing an analogy between the dissemination of fragrances and the performance of musical works, to enhance commercial spaces. It suggests that the fragrance industry might temper the economic injury incurred from the loss of intellectual property protection it once enjoyed by seeking a portion of the economic dividends generated by these enhancements of public and commercial venues.

I. The Fragrance Industry and the Challenge of Reverse Engineering

A. Regulation of Reverse Engineering in the United States and the European Union

In the twenty-first century, trade secrets have become increasingly vulnerable to disclosure, not only because of the ease with which information can be shared, but also because of advances in analytic technologies enabling reverse engineering.[31] Legislatures in both the United States and European Union are aware of this increased vulnerability affecting a broad range of industries, as evidenced in recent legislative proposals.[32] To obtain legal protection as a trade secret, information must be commercially valuable, not generally known, and subject to reasonable efforts to maintain its secrecy.[33] While trade secrets in the United States are not broadly protected under federal statute, they are regarded as intellectual property alongside information protected by patents, copyrights, and trademarks.[34] The recently proposed European Union Trade Secrets Directive, on the other hand, suggests that trade secrets, while intellectual “assets”, should not be protected as “formal” intellectual property rights like patents, etc., but rather as a “complement” or “alternative” to these “classical IP rights.”[35] Unlike owners of patents, copyrights, and trademarks, who are provided the right to prohibit most unauthorized uses of their protected intellectual property,[36] owners of trade secrets, do not enjoy this privilege. While trade secret law may protect a trade secret indefinitely, if another individual or organization acquires the information in question, it is no longer secret, and its original owner cannot prevent others from using it. Moreover, another person may independently develop secret know-how or, more commonly, will learn it through reverse engineering, i.e., by analyzing the composition of an object implementing the trade secret.[37] A trade secret’s vulnerability to reverse engineering depends on both the complexity of the secret and the nature of the product it implements. A material object, like a fragrance, is more tractable to reverse engineering than an intangible product or service, because it provides palpable and otherwise perceptible information. While it may be easier to “crack” trade secrets used in the production of material goods than of immaterial services, it may be more difficult to implement the acquired information, because the value of physical products depends – to varying degrees – upon the materials used in their manufacture. For example, the secret formula for a fine fragrance is more valuable to a company with established ties to suppliers of top-tier natural raw materials than to a start-up sourcing from an unknown grower selling adulterated plant essences. It is generally legally permissible in the United States to acquire trade secrets through reverse engineering.[38] This permissibility is desirable because it forestalls the possibility that trade secret law would provide monopolist protection for innovations, a right under the exclusive purview of federal patent law.[39] Federal legislation has, nevertheless, restricted unauthorized use of information acquired through reverse engineering of certain products. Congress has effected these limitations on reverse engineering by amending the copyright statute to provide sui generis protection for certain products like semiconductor chips, digital content anti-circumvention technologies, and original boat hull designs.[40] These protections constitute legislative “carve outs” from the broad right to reverse engineer a product and use the information learned thereby. In providing these protections, Congress’ purpose was to avert potentially gross unfairness that may occasion market failure, resulting from the easy replication of a technological advancement that may have cost another years of work and hundreds of thousands of R&D dollars.[41] On the other hand, the European Union’s proposed Directive on trade secrets would establish a liberal policy toward the acquisition of trade secrets through reverse engineering, akin to that found under United States law.[42] This approach is somewhat paradoxical: while the fundamental objective of the Directive is to harmonize and strengthen the legal protection of trade secrets across all member states, its permissive approach to reverse engineering would likely weaken extant trade secret protection available under the domestic law of some European Union members, such as Italy.[43] For example, while some states, such as Italy, consider trade secret law as a distinct form of intellectual property, the Directive transforms it into a component of unfair competition law.[44] Furthermore, as argued in a critique from the Max Planck Institute, the Directive’s liberal stance on reverse engineering is particularly troublesome to industries that depend upon innovative products embodying intellectual investment that is not protected as intellectual property.[45] The Institute’s Comments identify fragrance manufacturing as a prime example of such an industry, and suggest that the Directive’s lax approach to the acquisition of trade secrets eventually could result in the evisceration of innovation in this industry and lead to the failure of this market.[46]

B. Challenges to the Fragrance Industry’s Traditional Reliance on Trade Secrets

The modern fragrance industry has a longstanding reputation for exceptional secrecy.[47] Its clandestine nature is an outgrowth of its origins in early medical and pharmaceutical endeavors in France, in which the creators of curative potions and elixirs carefully guarded their formulas.[48] By the nineteenth century, fragrance manufacturing had become largely independent of the pharmaceutical business.[49] Many enterprises had been established in the area of Grasse exclusively for the production of fragrances, particularly perfumes to be applied to the body.[50] Unlike most retail products incorporating materials produced by the fragrance industry today, these goods were considered luxuries to be enjoyed by a few affluent consumers, and produced in small quantities by family-owned enterprises.[51] It was relatively easy to keep manufacturing know-how and formulas secret among the small staffs of these enterprises.[52] Moreover, these teams were often comprised of related employees, most of whom who would spend their entire careers at the company.[53] While the industry still produces luxury products, like fine fragrances, today it is highly consolidated and creates scents used for innumerable consumer products like laundry detergent and hair gel.[54] The largest of these fragrance manufacturers have thousands of employees who commonly move among companies over the course of their careers.[55] The enormous expansion of both the fragrance industry’s now-itinerant workforce, as well as the number of consumer products it affects, has made it much more difficult for fragrance producers today to maintain their trade secrets.[56] This difficulty has been reflected in a flurry of trade secret misappropriation claims made by former employers of perfumers and flavorists who joined competing firms.[57] One of the most acrimonious of these disputes involves the ongoing prosecution by Givaudan, a large Swiss-based fragrance manufacturer, of a claim against its former perfumer James Krivda.[58] The circumstances surrounding this ongoing dispute illustrate both a company’s vulnerability to misappropriation of proprietary information given employees’ itinerancy, and the difficulty of establishing misappropriation without disclosing the secrets themselves. In 2008 Krivda left a vice-president position at Givaudan for a similar appointment at Mane USA, Inc., a direct competitor.[59] Givaudan asserts that in the days immediately prior to resigning, Krivda downloaded and printed from the company’s secure database over 600 proprietary formulas that he brought with him to Mane.[60] At trial Givaudan offered detailed evidence that Mane had capitalized on thirty-four of the formulas that it claimed Krivda misappropriated, by marketing fragrances identical to Givaudan’s under new names.[61] The trial court, however, granted in part the defendants’ motion for summary judgment based on a finding of insufficient disclosure by Givaudan of information about 600 of the additional formulas that Givaudan claimed the defendants had misappropriated.[62] Accordingly, testimony at trial was limited to a small fraction of the information Givaudan claimed Krivda misappropriated. In February 2014 a federal district court jury in New Jersey exonerated Krivda and Mane of all liability, and Givaudan is now seeking a new trial.[63] In prosecuting this claim Givaudan faced a commonplace dilemma of plaintiffs in trade secret litigation. To establish a meaningful claim of trade secret misappropriation, an owner must convey information about the secret both to the court and to the defendant. Once this information is voluntarily disclosed, however, it may no longer be protectable as a trade secret, because its secrecy has been unquestionably compromised.[64] What rattled Givaudan most about Krivda’s alleged theft was that Mane obtained the information without any cost. By purportedly absconding with hundreds of Givaudan’s formulas, Krivda provided its competitor a windfall of valuable information without the reverse engineering costs that would be incurred through legal acquisition. Krivda could have purchased hundreds of products incorporating Givaudan’s fragrances, and worked with Mane’s chemical analysts on the painstaking task of isolating and dissecting them. Given the brief life cycle of most fragrances, however, the market success of an innovative product depends significantly on the potentially dissuasive expense and time lag incurred in reverse engineering and developing a competing product. Therefore, if Krivda provided to Mane the trade secrets Givaudan claims he stole, Mane could not only avoid the temporal and financial cost of reverse engineering, but also produce, within the period of market viability, competing merchandise offered at a lower price. Moreover, because reverse engineering technologies cannot always provide exact and complete information about the chemical composition of a fragrance, a competitor can avoid any potential ambiguities by simply lifting the formula itself.

C. The Impact of Gas Chromatography-Mass Spectrometry (GC-MS) Technologies on the Fragrance Industry

In the popular imagination, consumers have held to the romantic notion that fragrances, particularly perfumes applied to the body, are created from closely held and undetectable formulas. For instance, the conceit of Patrick Süskind’s novel Perfume centers on its murderous protagonist’s prodigious capacity to analyze scents.[65] Tom Robbin’s Jitterbug Perfume, on the other hand, tells the picaresque tale of the arduous quest to discover the formula of an ancient fragrance ultimately revealed to have contained the recherché ingredient of beet blossom essence.[66] In fact, using contemporary GC-MS technologies, one can learn with remarkable accuracy the formula of any fragrance.[67] GC-MS is a technique for separating the components of a vapor by observing the different speed by which each chemical component is expelled from a long tube through which a sample of the vapor is swept.[68] Once the components have been separated, a mass spectrometry apparatus identifies the various separated molecules and their relative volumes in the composition of the vapor.[69] GC-MS technology has disconcerted fragrance houses because it enables practically anyone to obtain a fragrance’s formula swiftly and inexpensively.[70] The most costly component of a fragrance, the formula is typically developed from months, or even years, of research costing hundreds of thousands of dollars.[71] Unsurprisingly, as GC-MS technologies have become increasingly affordable and effective, a parasitical industry has emerged, that manufactures and distributes lower cost “smell-alike” versions of well-known fragrances.[72] Five multinational corporations, four of which originated in Western Europe, dominate the world fragrance market.[73] For years this industrial concentration fostered a tacit agreement among the industry’s largest players. Under this informal understanding, the major fragrance houses would not cannibalize each other by manufacturing competing products based on formulas of a competitor acquired through reverse engineering.[74] Otherwise, a competitor could undercut an innovator’s market by selling products at prices that did not reflect the innovator’s R&D expenditures. The increasing accessibility and accuracy of GC-MS technologies in recent years has tested the stability of this “gentleman’s agreement” among fragrance manufacturers. Moreover, this understanding never extended to the client base of the major fragrance producers, ranging from consumer products giants like Unilever to couture houses like Dior (LVMH), that attach their brands to fine fragrances that are developed and manufactured by large external suppliers.[75] Moreover, GC-MS technologies have provided these clients a new means of negotiating lower prices for the development of new fragrances, as well as those for ongoing supplies of already commissioned products. If a fragrance house balks at the price negotiated by a client for ongoing supplies of a product that it developed for the client, the client could reverse engineer the fragrance, and then buy supplies of it at a lower price from a competitor of the initial supplier. The competitor would have legitimately obtained the formula without incurring the cost of creating it.[76] GC-MS technologies also make it more feasible for clients themselves to produce supplies of perfumes developed at their behest by fragrance houses. This discomfiting potential was realized in 2011, when the luxury conglomerate LVMH built a fragrance compounding facility outside Paris and began producing supplies of concentrates for their popular scents like “Miss Dior Chérie”, “Dior Homme”, and “Kenzo Flowers”.[77] Previously, they had obtained these supplies from Givaudan, Firmenich, and IFF, after these companies had developed the respective formulas.[78] LVMH claimed that the blends that they produced for these brands embodied subtle modifications of those that had been produced by Givaudan, et al., presumably a tactic to avert liability for breaching any contractual obligation to purchase concentrates from the companies that developed the original fragrances.[79] LVMH’s actions were particularly distressing to fragrance houses because they involved the production of successful and well-established perfumes.[80] Profits derived from sale of the liquid blends to produce these goods cover not only the costs of their development, but also the formulation of a constant stream of new proprietary blends that manufacturers use to compete for new business.[81] As the owner of fragrance brands like Givenchy and Dior, LVMH is one of the most significant players in the retail fragrance industry.[82] Moreover, the company is one of the most important clients for fragrance houses, continually commissioning the development of new products that capitalize on their deep R&D expertise. Therefore, fragrance houses are naturally reluctant to alienate themselves from such a powerful client. These companies could contractually preclude clients such as LVMH from certain uses of newly developed formulas, or from obtaining supplies of certain fragrance compounds from other sources. Such terms, however, would be difficult to negotiate in light of the bargaining advantage that analytic technologies now provide to these industry clients. Given the feasibility of legally reverse engineering and independently producing a fragrance, clients would agree not to do so only in exchange for price concessions, or guarantees regarding the ongoing manufacture and quality of a product, e.g., the sourcing of ingredients from a particular supplier. To summarize, over the past few decades, the availability and enhanced capacity of GC-MS technologies have significantly challenged the fragrance industry’s business model. The industry’s most valuable assets, proprietary formulas, can now be legally acquired by anyone with access to a well-equipped laboratory. The effects of the loss of trade secret protection, resulting from use of these technologies, have been compounded by unprecedented calls for greater government regulation of the industry’s products, which could require the public disclosure of the ingredients, or even the formulas, of proprietary fragrance compounds.[83] Now that trade secret protection has been compromised for the fragrance industry, are there other forms of intellectual property for which this industry should seek protection instead?

II. Patent and Copyright Protection for Fragrances

A. Patent

U.S. and E.U. law provides patent holders with a twenty-year monopoly on the manufacture, use, and sale of their inventions.[84] Even those who independently develop or reverse engineer an invention covered by patent are prohibited from unauthorized manufacture, use, and sale of products or services that implement it. However, this sweeping prohibition is tempered by the patent holder’s obligation to disclose, at the time of registration, the composition and functioning of his invention, which information enters the public domain when the patent term expires.[85] Despite the strength of patent protection, the fragrance industry does not rely heavily upon this form of intellectual property for the protection of fragrance formulas, and those of fine fragrances in particular.[86] An invention must be useful to be patentable.[87] Like the jewelry business, the fragrance industry promotes high-end perfumes as pure luxuries. Ascribing utility to these goods tarnishes their cachet of exclusivity, and thereby the economic value associated with entirely discretionary products.[88] Moreover, the fragrance industry eschews the trade-off between patent’s twenty-year term of monopolistic control and full disclosure of the patented invention. This is not only because the market for many of the industry’s high-end products lasts more than twenty years, but also because longevity in the marketplace of some of these products actually makes them more valuable over time.[89] While the fragrance industry does not primarily rely on patents to protect the formulas used to produce fragrances, there have been thousands of applications in U.S. Patent Class 512 covering “perfume compositions”.[90] However, most of these applications are for innovative means for extracting, manufacturing, or delivering fragrances.[91] The relatively few registered patents that protect the formulas of fragrant compounds are grounded in claims of the product’s useful capacity to supplant noxious odors or – more dubitably – to promote physical and mental health.[92] Fragrance companies also rely upon patents to protect some of their most valuable assets: new fragrance molecules that they have developed, known as “captives”.[93] These proprietary molecules typically are not valuable because of the beauty of their scent, but rather for their capacity to create original, safer, or less costly fragrances.[94] The handful of fragrance companies that dominate the world market create and own most captives because only these companies can afford the significant R&D investment required for their creation.[95] Companies that develop patentable molecules may initially manufacture fragrances employing these captives, but much of their profit is derived from selling or licensing them to other fragrance manufacturers that more exhaustively explore and capitalize on their potential.[96]

B. Copyright

Copyright registration is easier to acquire than patent,[97] because the registering author must simply claim that his work is more than de minimus original expression.[98] In other words, an author may register expression already copyrighted or in the public domain, as long as it is his expression produced independently of the preexisting work.[99] Copyright owners enjoy a “bundle of rights” in a protected work, including those to reproduce and perform it, and to create derivative works.[100] The term of copyright is significantly longer than that of a patent, although the protection copyright offers is moderated – particularly in the United States – by “fair use” and other exemptions permitting certain unauthorized uses of copyrighted works for educational and archival purposes.[101] Globally, the scope of copyrightable expression has grown exponentially since enactment of the Statute of Anne in 1710, which established authors’ rights in their books.[102] The margins of protection have expanded, accommodated by evolving copyright statutes that provide illustrative, but not exhaustive, examples of copyrightable works. The French copyright statute, for instance, delineates fourteen exemplary categories of works typically considered works of protectable authorship, but prefaces this list with a broad statement extending copyright protection to all intellectual creations, “regardless of their embodiment, merit, or purpose.”[103] The United States Copyright Statute offers a similarly broad definition of copyrightable authorship, followed by an illustrative list of eight categories of copyrightable works.[104] Because copyrights are easy to obtain and provide lengthy terms of protection, they would appear to be an attractive means of protection for the fragrance industry. Copyrights, like patents, provide owners near monopolies on the use of their protected information, so one could not reverse engineer and reproduce a copyrighted fragrance without authorization from the copyright owner.[105] Moreover, the term of protection offered by copyright is now several times that of a patent, typically providing owners control over their works for the better part of a century.[106] Fragrances are ultimately embodied and perceived as particular combinations of airborne molecules. Nevertheless, fragrances, like pharmaceuticals, may ultimately be reduced to works of information fixed in visual symbols comprising a formula. In this respect – and in others – they are akin to music scores whose visual information is used to produce a performance by which a work of music is typically broadly disseminated, and ultimately perceived as sound. A skilled and patient musician can “reverse engineer” and reproduce a music score from repeatedly listening to a performance.[107] Digital audio technologies can dissect the sounds of performances of even relatively complex musical works and render increasingly accurate scores in traditional music notation.[108] Just as an audio recording of the reading of a book is a copy of a literary work, a music score derived from the sounds of a performance is a copy of the musical work underlying both the performance and the score.[109] Likewise, if we consider man-made fragrances to be copyrightable works of authorship, the dissection and reconstruction of a fragrance, whether by a human with preternatural olfaction or by a mechanical apparatus for molecular analysis, results in a copy of that fragrance, which only the copyright owner is authorized to make. There is no indication, until the latter half of the twentieth century, that perfumers regarded copyright as a means to protect their original blends of fragrances.[110] Apart from the fact that the original focus of copyright protection was literary texts, there was no need for such protection given the difficulty of copying a fragrance by separating the components and determining their role in a particular blend.[111] Given this impediment, fragrance formulas could enjoy perpetual protection as trade secrets rather than merely a term of perhaps fourteen or twenty-eight years as copyrighted works of authorship.[112] By the end of the twentieth century, the breadth of copyrightable subject matter had grown to include works as disparate as fictional characters, and computer programs, far beyond the contemplation of those who promoted authors’ rights in the eighteenth century.[113] At the same time, technologies for molecular analysis had become so advanced and accessible that perfumers could no longer depend upon secrecy to prevent competitors from learning the formulas of their fragrances. Copyright surfaced, therefore, as a potential new means of protecting fragrance formulas, attractive to an increasing number of perfumers who consider themselves authors and artists creating original aesthetic works.[114] Although France is no longer a leading fragrance producer, it remains an influential force in the fragrance industry.[115] Though France has lost much of the agriculture and extraction work associated with the industry, it has retained the expertise for manufacturing fragrances and creating new blends. French ventures have capitalized upon this element of national patrimony, offering education and degrees for the study of fragrance creation.[116] Even today many perfumers at major fragrance companies have trained, at least in part, in France.[117] Not surprisingly then, the most significant débat on whether fragrances are copyrightable expression occurred in France.[118]

C. France and the Netherlands: Odor in the Courts[119]

In the early 1970’s, the French fragrance manufacturer De Laire contracted with the couture house Rochas to create several new fragrances.[120] De Laire agreed to divulge the formulas of these fragrances to Rochas in exchange for Rochas’s promise to purchase from De Laire all concentrates of any new fragrances that the fashion house chose to add to its perfume line. After providing Rochas the formula for one or two perfumes, but subsequently receiving no orders to produce them, De Laire sued, claiming that Rochas had infringed its copyright by producing a fragrance using De Laire’s formula. De Laire’s claim failed when an appeals court upheld a lower court’s finding that perfumes are practical works and therefore eligible only for patent protection.[121] Moreover, because perfumes are not tractable to meaningful and consistent description by those who perceive them, they cannot be considered copyrightable “works of intellect”.[122] The holding reflects a view that perfumes cannot be considered original expression because human olfaction is too crude to perceive and describe fragrances except in broad terms. Fifteen years after the Rochas dispute the French perfume house Molinard created a fragrance marketed as a “smell-alike” of “Angel,” the popular perfume created by Olivier Cresp for Quest International, commissioned by fashion designer Thierry Mugler.[123] When Mugler sued Molinard for copyright infringement, the Paris Tribunal de Commerce discounted the defendant’s argument based on Rochas that as products of industrial technique, perfumes couldn’t qualify as original works of personal intellection.[124] Comparing the formula of a perfume to a music score, the Mugler court suggested that variations among perceptions and reactions to a scent are akin to idiosyncratic receptions among those listening to the same musical work, and do not indicate ineligibility for copyright protection.[125] Several years after Mugler the cosmetic giant L’Oréal sued Bellure, an importer of “smell-alike” fragrances, claiming it was infringing L’Oréal’s copyright in Trésor.[126] Deciding the dispute in favor of L’Oréal, the Paris Cour d’appel noted that the fact that the French Intellectual Property Code does not include fragrances among its list of copyrightable works was not dispositive on the issue of copyrightability.[127] All works of intellect are eligible for copyright protection, even those that might also be patentable, or are not fixed, if they are perceptible and reveal the imprint of the creator’s personality.[128] At the same time L’Oréal was prosecuting its claim against Bellure in France, its subsidiary Lancôme initiated a copyright infringement action against the Dutch perfume seller Kecofa in the Netherlands.[129] Lancôme claimed Kecofa’s Female Treasure was not only a counterfeit of Trésor, but also infringed its copyright. The dispute advanced to the Netherlands’ Supreme Court, which ultimately confirmed the lower courts’ findings that fragrances are copyrightable.[130] The Court also noted that the Dutch copyright statute has a catholic scope of protection, and cannot be read as excluding fragrances that are perceptible, original (i.e., bearing the personal imprint of their creator) and not purely technical (i.e., useful).[131] Back in France, shortly after the conclusion of the Kecofa litigation in the Netherlands, the same Paris appeals court that determined L’Oréal’s Trésor could be protected by copyright reached a consistent conclusion in a claim involving designer Jean-Paul Gaultier’s perfume Le Mâle.[132] Gaultier’s perfume manufacturer, Beauté Prestige International, sued a competitor, Senteur Mazal for infringing the copyrights and trademarks of Gaultier’s perfumes by which it marketed “smell-alikes” sold at prices much lower than those of the Gaultier products.[133] Like the court in the earlier Mugler decision, the Gaultier court discounted the defendant’s argument that variances in human perception of fragrances make it impossible to establish that a perfume possesses the originality required for copyright protection.[134] Responding to this argument the court noted that literary, graphical, and musical works are also perceived variously, but these variations in perception do not undermine the originality of these works.[135] The opinions in these Dutch and French cases, which emphasize the role of the perfume creator, give short shrift to that of the user in determining whether fragrance may be copyrightable. The decision in L’Oréal’s case against Bellure, for instance, expressly found that a perfume could reveal the personality of its creator, and thereby be an original work.[136] Neither L’Oréal, nor any of the other cases, however, addressed the issue of what constitutes the “revelation” of a work, a question that necessarily implicates those perceiving the “revealed” work.[137] The shortcoming of these decisions lies not in their determination that the work of perfumers can be a complex intellectual and aesthetic endeavor akin to writing and painting, but rather in the fact that they do not consider the lack of human olfactory capacity to perceive the complexity of the work rendered from this intellectual investment. The ultimate issue in all of the cases involving the copyrightability of fragrance, therefore, is how perceptible must expression be to be protectable by copyright. Despite the pro-copyright outcomes of the Kecofa, Mugler, and Gaultier cases, the Cour de cassation recently delivered a severe check to those advocating copyright eligibility for fragrances in France, by addressing this issue of perception.[138] In 2006 Patrice Farque was prosecuted for selling counterfeit fragrances at a flea market outside Paris.[139] When the case foundered for lack of evidence Lancôme et al. claimed that by selling imitations of its fragrances Patrice Farque had infringed Lancôme’s copyright in these products.[140] When Lancôme’s case ultimately advanced to the Cour de cassation (commercial section) in 2013, the court determined unequivocally that fragrance is not copyrightable expression.[141] The court separated the act of creating a fragrance from that of perceiving it, finding that while the development of a perfume may involve creative intellection beyond technical know-how, this original thought cannot be broadly communicated because it cannot be sufficiently perceived.[142] With its 2013 decision in Lancôme v. Farque the Cour de cassation dashed expectations that French copyright law might offer the fragrance industry a new means by which to protect its perfume formulas. Courts in the United States have not yet fielded the question of whether fragrances may enjoy copyright protection. In fact, the existing classifications under which works may be registered in the United States would not accommodate an application for a work of fragrance.[143] Accordingly, except in the Netherlands, copyrights, like patents, offer little potential solace to an industry unsettled by the vulnerability of its most valuable intellectual property.

III. Fragrance and Trademark Protection

A. The Expanding Scope of Trademark Protection

Like the sphere of copyrightable expression in the United States, the range of commercial indicators protectable as trademarks increased dramatically in the latter half of the twentieth century. By the end of the century, trademark protection extended to sounds,[144] and even single colors.[145] Moreover, legally protectable visual trademarks were no longer limited to those comprising words and/or designs, but had been extended also to the “trade dress” of products and services.[146] Although U.S. law now protects colors, scents, and sounds, international conventions and other national trademark regimes are typically less accommodating than the United States of these non-traditional marks. For example, the World Trade Organization’s multilateral Agreement on Trade-Related Aspects of Intellectual Property establishes only that combinations of colors may be eligible for trademark protection, and that registration may be conditioned on the mark having already acquired distinctiveness in the market through use.[147] There is considerable variation among national trademark regimes on trademark protection for color marks, and even relatively liberal regimes, like that of Germany, may protect only those single-color marks that have acquired secondary meaning.[148] There is a similar lack of consistency among national trademark regimes with respect to sound marks, stemming in part from the fact that some nations, like Mexico and Brazil, permit registration only of marks that are visually perceptible.[149] While sound marks are not visually perceptible, they can be verbally documented quite accurately. Many sounds, like the iconic NBC chimes comprising the intervals of a rising sixth followed by a falling third, can be represented visually through music notation. Similarly, scent marks can be accurately visually represented using the standard chemical symbols and verbal instructions of formulas, but are less tractable to verbal description than sound marks. Courts have been reluctant to recognize colors, scents, and flavors as trademarks because doing so could allow the initial user to unfairly monopolize the viable marks for particular categories of goods and services.[150] A fundamental purpose of trademark protection is to protect consumers from deceptively labeled goods.[151] However, courts have held that this objective should not limit competition in a market by rewarding early entrants with potentially perpetual exclusive use of a limited number of marks.[152] In particular, scent, flavor, and single-color marks are more readily depleted than design and word marks. This is not because there are fewer potential marks in these classes, but rather because consumers are less able to distinguish among them than among design, word, and sound marks.[153] For example, there are innumerable shades of red, but it is difficult to distinguish readily between Stanford’s “cardinal” and Harvard’s “crimson” without additional verbal or visual information. On the contrary, it is impossible to confuse the different verbal mottos also branding these universities.[154] Consumers would not be served by a prohibition on other universities using the color red as part of their “brand” simply because Harvard was the first to do so. It is desirable, however, to curtail another university’s branding itself with the color red, the motto “Veritas”, and – obviously – the name Harvard, because it curbs potential confusion on the part of consumers, as well as unwarranted derogation that the original Harvard might suffer.[155] Like single colors, scents and flavors are problematic trademarks because the typical consumer cannot distinguish variations in scents and flavors as easily as those of designs and words.[156] While there is an infinite variety of scents and flavors, we tend to classify them, as we do shades of color, using relatively limited taxonomies: “royal blue”, “blood red”, etc. For instance, we use “floral” to describe the scents of hundreds of different flowers, and “spicy” to refer to the taste of hundreds of different piquant flavors. The greater the number of words or designs that are combined in a mark, the more complex and inherently distinctive it is likely to be.[157] This is not true for scents and flavors. Combinations of different scents and of different flavors may yield more complex chemical compounds, but we tend to perceive these not as distinctive new scents and flavors but rather as muzzy blends of the relatively few existing generic categories: “this wine has a citrusy flavor;” “this moisturizer has a vegetal scent.”[158] There are, of course, thousands of varieties of vegetal scents and citrusy flavors but humans cannot readily distinguish among them using a broadly shared taxonomy. Accordingly, because this perceptual inadequacy presents a risk for trademark depletion, most trademark regimes do not accommodate scent marks.[159] International conventions touching on intellectual property, like the TRIPS Agreement and the European Union Trademark Directive, do not expressly permit or prohibit trademark protection for scent marks. However, international courts and national laws have made it difficult or impossible to register them.[160] On the national level the trademark statutes of France and Germany implicitly preempt scent mark registrations by limiting protection to marks that can be visually represented.[161] In 2002 the European Court of Justice (ECJ) considered the question of what constitutes graphical representation of a scent mark.[162] The dispute involved an appeal from the ruling of a German court that upheld the national trademark office’s refusal to register a scent.[163] The applicant, Ralf Sieckmann, had submitted a fragrance claiming it as a mark denoting a range of professional services.[164] As graphical representations of the mark Sieckmann provided a sample of the fragrance in a liquid, the chemical composition of the fragrance (C6H5-CH = CHCOOCH3), and a description of it as “balsamically fruity with a slight hint of cinnamon.”[165] The ECJ determined that none of these submissions, alone or combined, were an effective graphical representation of the scent as a trademark.[166] Although the submissions were visual, they did not enable consumers “… to guarantee the identity of the origin of the marked product or service…by enabling him, without any possibility of confusion, to distinguish that product or service from others…”[167] In other words, these representations are ineffective graphical representations because the appearance of an amber liquid, and the words “balsamically fruity” are so commonplace that when consumers encounter them they will conjure any number of scents (and tastes). Moreover, only a narrow sector of consumers who are trained as chemists might recognize “C6H5-CH = CHCOOCH3” as the fragrant compound Methyl Cinnamate. Consumers’ limited capacity to perceive Sieckmann’s mark through these visual representations would obscure the boundaries of protection trademark registration might provide. This would defeat the purpose of graphical representation, which is required “…specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign,” and would provide overly broad protection that is potentially detrimental both to consumers and competitors of the trademark owner.[168] Moreover, even if consumers recognized the chemical formula for Methyl Cinnamate, as readily as we recognize H2O as that for water, the fragrance mark itself is inherently unstable “…because of different factors which influence the manner in which it can actually be perceived, such as concentration, quantity, temperature or the substance bearing the odor.”[169] Unlike the European Union, the United States does not require that trademarks be represented graphically to be registered. In fact, the United States Patent and Trademark Office (USPTO) has accommodated registration for such marks by establishing a classification for them: Mark Drawing Code 6, “for situations for which no drawing is possible, such as sound.”[170] Nevertheless, while there are many United States trademark registrations for sounds there are remarkably few for scents.[171] The first scent mark registration was issued in 1991, after the Trademark Trial and Appeal Board overturned the USPTO’s initial denial of a trademark registration for a floral scent used to brand sewing thread.[172] Since then, only fifteen additional fragrance marks have been registered, and only four are still “living”.[173] These include the scents of vanilla and citrus for cosmetics and fuel oil respectively, and that of coconut to mark the retail space of a beach apparel seller.[174] Most of the now expired fragrance marks were registered by Smead, Inc., a Minnesota office supplies manufacturer, to protect their branding of their paper products with fragrances like peppermint and peach.[175] The fact that Smead allowed their scent trademark registrations to lapse suggests that the company determined that consumers did not effectively associate the scents with their particular source. Smead might have more successfully developed consumer association between the scent of the paper products and their manufacturer if it had deployed a single fragrance across its entire line of products. While Smead could not monopolize the idea of scenting paper, which stationers have been doing for centuries, it might have monopolized the use of a particular fragrance for paper products. Smead’s use of various fragrances to mark interchangeable products, likely led consumers to associate the fragrance more with the particular variants – scent of peaches for the peach colored file folders, etc. – than with the manufacturer.

B. Growing Significance of Multisensory Trade Dress

Retail sales of consumer goods have always been driven in part by visual cues in the presentation of the merchandise, which comprise not only the distinctive packaging that we identify with specific products, but also the overall visual ambiance in which the products are displayed and sold. While one shops for apparel at Saks, the flattering lighting and carpeted dressing rooms promote lingering, and palliate sticker shock.[176] In contrast, the buzzing fluorescence and concrete floors of Costco generate brisk efficiency for the grim acquisition of huge quantities of “house brand” paper products and similar utilitarian goods sold at “volume discount” prices.[177] In general, the more a product’s economic value stems from its purported refinement and exclusivity (e.g., perfume, jewelry, haute couture) the more its retail sales are tied to visual presentation and other factors extrinsic to the product itself. The cost of presentation and other less immediately apparent external factors, like polite salesclerks, clean washrooms, or a forgiving returns policy, are built into the retail prices of these goods. Accordingly, while Target sells for $80 a two-and-a-half ounce bottle of the eau de toilette of Patou’s Joy, Nordstrom charges $130 for the same item.[178] Retailers also use sound to boost sales, which is not a recent phenomenon. Even before the advent of technologies for recording and broadcasting musical works, department stores engaged musicians whose live performances promoted not only sales of sheet music, but also the sale of other merchandise, once the music had lured customers into the store.[179] Some retailers, restaurants, and hotels still enhance their public spaces with live music performances.[180] However, with the development of recording and broadcasting technologies, this goal is now met mainly through recorded performances of musical works.[181] “Background music” is now so prevalent in commercial spaces in the United States that it is disconcerting to enter a shop or restaurant blessedly free of it.[182] Like the visual décor of commercial spaces, these aural ambiances are now artfully developed and deployed to promote sales of goods and services to specific populations of consumers.[183] This deployment is now so pervasive in retail spaces that the withholding of music and all visual adornment in “big box” stores like Costco, appears to be a deliberate reassurance to customers seeking to purchase goods at “no-frills” prices. Because the sound of recorded music is now so commonplace in retail locations, customers do not listen to it as they might have a century ago. Customers still hear the music, however, and the character of the music becomes a familiar and predictable attribute of a particular commercial milieu.[184] In other words, regardless what music being played, it is being deployed as “muzak”, i.e. an aural enhancement of an environment in which retailers anticipate that we will focus on something else, namely purchasing their goods or services.[185] This ambient music affects the experience and behavior of customers in these retail spaces.[186] Retailers play music to entice customers to linger over merchandise by providing familiar and affirmative “sound tracks”.[187] They tailor the music to appeal to consumers based on factors like age, race, gender, and economic class.[188] While a misogynist rap number broadcast in a Nike store might subliminally flatter the egos of young male customers, it would likely alienate shoppers at Tiffany’s browsing engagement rings and bone china.[189] Accordingly, shopping malls and department stores broadcast varied “soundscapes” in which the disparate “sound tracks” comprising them are regularly updated to conform to the evolving musical tastes of their targeted consumers.[190] Like music, scents have long been used in the marketing of goods and services. The aroma of baking cookies, with its homey associations, has often been used to market houses; the alarming odor of burnt wood has been used to sell fire insurance policies to protect such property.[191] Moreover, developers of scent delivery systems have capitalized upon existing technologies like ink-jet printing and smartphones to create new means of communicating scents, particularly in connection with advertising and entertainment.[192] Marketers, however, increasingly use fragrances not to conjure a narrowly defined good or service, but to mark an overall environment in which retail customers purchase the goods or services of a particular seller.[193] This practice is not limited to sellers of luxury goods and services: today “… marketing using scent is catching on among retailers and in car showrooms, sports stadiums, airports, banks and apartment buildings that seek to distinguish themselves with customers via the deeply influential sense of smell.”[194] For example, the air in the lobbies of all Omni hotels is infused with the scent of lemongrass.[195] Omni anticipates that its repeat customers will learn to associate this scent with comfortable accommodations, and specifically those offered by Omni. Hyatt’s objectives in their use of fragrance are more nuanced than Omni’s. Hyatt scents the air of the public spaces of each of its sumptuous “Park Hyatt” properties with a different and unique bespoke fragrance, which is also used to scent the lotions, soaps, and candles liberally sprinkled throughout the particular hotel’s public and private spaces.[196] Hyatt hopes that because customers will encounter a particular bespoke fragrancs only at the hotel in which it is deployed; they will associate it not with “Hyatt” – which has properties ranging from relatively austere to luxuriant – but with a particular top-tier Hyatt hotel that is purposefully distinct from all other Hyatt properties.[197] Retailers scent their salesrooms hoping to imprint customers’ memories with a positive association between a fragrance and the experience of shopping at their stores. Retailers may do so also to promote sales of the fragrance itself, like Abercrombie & Fitch’s “Fierce.” The distinctive environment of this retailer is a carefully manufactured mix: visual elements like dim lighting and exiguously dressed young clerks; a loud soundtrack of popular music that teenagers find appealing; and an atmosphere constantly infused with the scent of “Fierce,” the retailer’s “signature” scent.[198] As Abercrombie’s website proclaims, “Fierce”, sold as a cologne, body wash, and candles, is “[k]nown as the world’s hottest fragrance…a symbol of masculinity and great American achievement.”[199] In other words, the retailer’s hypertrophic sensory ambiance is intended to evoke that of attractive nuisances like Los Angeles’s Sunset Strip music “clubs” that entice the same customers that Abercrombie targets: just-legal teenagers untethered from their parents, but in possession of their credit cards.[200]

C. U.S. Trademark Protection for Trade Dress

Trade dress is the “total image and overall appearance” of a product, or the totality of elements that “may include features such as size, shape, color or color combinations, texture, graphics.”[201] A product’s trade dress may be a concatenation of elements that are not separately protectable as trademarks, but the amalgamation of these elements is protectable because of its capacity to identify the source of a product or service.[202] In this respect, the whole is greater than the sum of its parts. The trade dress of a product or service might also be the combination of separately protectable marks. If, for instance, a computer manufacturer tagged its products with an image of a lemon, colored them a bright yellow, and imbued their laptops and peripherals with a lemon scent, all three tags contribute to the products’ trade dress despite the fact that each of them might be separately protected as a trademark when applied to computing machinery. Trade dress can now be registered as trademarks on the Principal Register in the United States.[203] Nevertheless, the trade dresses for most products and services have not been registered.[204] This may be because a trade dress, like a trade secret, is typically developed incrementally over time, and its value often becomes apparent to the owner only when another tries to capitalize upon it.[205] Also, trade dress tends to be more protean than word and design marks. Whereas the hairstyle and apparel of Betty Crocker or the Morton Salt Girl needs to be updated only every few decades, the soundscape of a department store must be adjusted to evolving markets far more frequently to retain its potency.[206] Moreover, trade dress often combines non-traditional marks like sounds, colors, and scents that retailers use to create a deeper emotional response in consumers than that engendered by purely visual marks.[207] In recent decades, as these non-traditional marks and trade dress have become more prevalent, U.S. courts have recognized their capacity, like that of traditional word and design marks, to enable consumers to distinguish among sources of goods and services. Two Supreme Court cases, in particular, have established a vastly larger sphere of protectable trademarks than that of half a century ago.[208] In Two Pesos, Inc. v. Taco Cabana, Inc., the Supreme Court determined that trade dress was entitled to the same protection as that afforded to word and design trademarks.[209] The parties were small Mexican fast food chains that deployed a similar décor in all of their restaurants. Taco Cabana was established seven years earlier than Two Pesos, and claimed that Two Pesos infringed its trade dress by using interior decoration confusingly similar to theirs.[210] The plaintiff’s description of their trade dress was more discursive than those typically used for word or design marks, comprising not only specific ornamental objects like “artifacts, paintings, and murals,” but also color schemes and architectural features like “a stepped exterior,” and “bright awnings and umbrellas.”[211] A district court jury found Two Pesos liable for trademark infringement, having determined that that Taco Cabana’s décor was protectable trade dress because it was inherently distinctive, despite the fact that the plaintiff had not demonstrated that its trade dress had acquired secondary meaning.[212] The Fifth Circuit upheld the lower court’s judgment and Two Pesos appealed. The Supreme Court granted a writ of certiorari because of a circuit split; the Second Circuit precedent conflicted with that of the Fifth, holding that, unlike a registered trademark, unregistered trade dress like the plaintiff’s could obtain protection under the Lanham Act only if it were inherently distinctive and had acquired secondary meaning through use in commerce.[213] In Two Pesos, the Supreme Court rejected the Second Circuit’s narrower approach, and upheld the Fifth Circuit’s broader understanding of protection available to trade dress under the Lanham Act. Because trade dress serves exactly the same function as trademarks, the Court reasoned, there is no reason why trade dress should be subject to more stringent standards than traditional registered marks like words and designs, to obtain protection under the federal statute.[214] Three years later, in Qualitex Co. v. Jacobson Prods. Co., the Supreme Court further accommodated trade dress as protectable information, determining that a single color could constitute a valid trademark.[215] The single color at issue was a bilious green/gold hue that Qualitex used on the dry cleaning pads they manufactured.[216] When Jacobson appealed the district court’s ruling that it was liable for infringing Qualitex’s single-color trademark, the Ninth Circuit court overturned this decision, finding that color alone could not qualify for trademark protection.[217] Qualitex, in turn, appealed to the Supreme Court, which granted a writ of certiorari to resolve contradictory precedent from various federal circuit courts on the validity of single-color trademarks.[218] The Supreme Court overruled the Ninth Circuit and upheld the validity of Qualitex’s single-color trademark registration.[219] Like the multifaceted décor indicating Taco Cabana’s restaurant services, the particular shade of green with which Qualitex “dressed” its products distinguished them from those of others, and served no other practical purpose.[220] Moreover, Qualitex had used the color in this capacity for over thirty years, during which it acquired distinctiveness as consumers came to associate it with this company’s product.[221] Qualitex’s trade dress gradually matured into a protectable trademark as it developed secondary meaning through ongoing use in the marketplace.[222] In other words, it is only through ongoing exposure to a single color used to dress a product that consumers will begin to link that particular color with that product’s manufacturer. This gradually built association renders the color protectable despite the fact that consumers may have encountered or associated it with unrelated products. Taco Cabana’s décor, on the other hand, was found to be inherently distinctive and therefore did not require a similar incubatory period in which to establish its eligibility for trademark protection.[223] Such complex trade dress tends to be unique, and consumers are likely to immediately associate it with the source of the product or service it is “dressing”.[224]

D. Fragrance as Trade Dress

Trademark, and specifically trade dress, might ultimately provide the only legally protectable intellectual property to fragrances and their manufacturers. The earlier discussion of patents and copyrights concluded that neither form of legal protection held much potential for safeguarding the fragrance industry’s intellectual property.[225] The term for a patent is only twenty years – shorter than the market lifespan of a successful perfume.[226] Moreover, fragrances must be “useful” to be patented – not a designation that fragrance manufacturers would want applied to most of their products, particularly fine fragrances.[227] As French courts ultimately determined, copyright is not a viable form of protection for fragrances, despite the creative thought their creation may involve, because this intellection cannot be communicated or perceived in an effective and consistent manner.[228] Given these shortcomings of other forms of legal protection for intellectual property, trademark and trade dress emerge as the most viable options for protection. However, a number of idiosyncrasies particular to fragrance trade dress may condition its trademark protection. Recorded music is one of the most commonly used elements to create a distinctive trade dress, but recorded music is more tightly constrained by intellectual property law than is fragrance. Retailers typically do not own the copyrights of musical works that they broadcast in their stores, and therefore must pay royalties to their owners.[229] However, the legitimate use of another’s intellectual property might become part of the user’s legally protectable multisensory trade dress.[230] For instance, if one retailer were to consistently broadcast Bee Gees songs in its shops, it might be able to prevent other retailers from using these songs by claiming that consistent use and consumer association had transformed the music into a protectable component of its trade dress. Such use of another’s copyrighted material does not provide a retailer any legal interest in the music or the recordings themselves. If a retailer owns the underlying musical work being performed in connection with their goods, it might also seek trademark protection for the music itself. While sound marks typically comprise merely a few non-musical sounds or notes – like NBC’s – a larger musical work, like a jingle, can also function as a trademark.[231] The efficacy of such marks, however, may ultimately depend upon consumers’ ongoing familiarity with the words of the jingle that identify the retailer or brand. Accordingly, while NBC’s sound mark continues to be effective, that of Mr. Softee, Inc. for instance, has become genericized.[232] Today the tinkling sound of the Mr. Softee jingle, invariably heard without its long-forgotten words, conjures the sale of aerated ice cream from itinerant trucks by any number of purveyors.[233] In fact, any singsong tune, rendered in a chimey timbre, and sounding from a truck on a city street during the summer will elicit memories of ice cream and popsicles.[234] Because fragrance enjoys relatively limited intellectual property law protection, retailers are less legally constrained in their deployment of fragrance in their public sales spaces.[235] Fragrances are not copyrightable works, so the copyright performance and display rights applicable to musical and artistic works do not regulate their release into communal spaces, even commercial spaces.[236] Many small retailers and service providers like spas routinely scent their atmospheres, delivering established brands of fragrances through various delivery methods, such as aerosols, scented candles, and potpourris. For example, there is nothing objectionable to Diptyque or Shoyeido about a clothing boutique owner lighting a Diptyque candle in his shop, or a spa manager burning a stick of Shoyeido incense on the premises, because doing so promotes sales of these products among customers who inquire about what they smell. Fragrance brands would likely object, however, if a large retailer used their air conditioning system to disseminate one of their fragrances consistently, and without authorization. With scant intellectual property protection fragrance producers possess little control over use of their products, but trademark protection may offer an untapped compensatory benefit. Once Chanel sells a bottle of its well-known No. 5 the company has virtually no legal means of controlling how the buyer uses it. However, trademark may allow it to regain some authority over sales and use of this product. For instance, if Omni Hotels began to scent all of their properties with No. 5, rather than using their proprietary lemongrass fragrance, Chanel would likely assert a claim under the Lanham Act of unfair competition, and “passing off”.[237] Even if Omni used no visual evidence of the brand, Chanel would argue that by “marking” their air with the well-known No. 5 Omni was attempting to lead consumers to believe that its mid-range hotels are legitimately associated with this purveyor of top-tier luxury products. This association would potentially sully Chanel’s image.[238] Therefore, even though no other business uses No. 5 as trade dress, Chanel could prevent such use if it can demonstrate that consistently scenting the air of a commercial space would likely create confusion “as to the source, sponsorship, or association between goods or services.”[239] Fragrance’s relatively brief period of perceptibility affects its trademark capacity. While consumers may “tune out” the sounds and images of a retailer’s trade dress they cannot stop hearing and seeing them unless they block or replace the sounds and images.[240] In contrast, humans become habituated to scent relatively swiftly.[241] Once we have perceived an odor, our awareness of it rapidly wanes even though we continue to be exposed to the same concentration of it in the atmosphere.[242] Because of its brief period of perceptibility, fragrance is more likely to be protected as trade dress when used in a multisensory combination of various stimuli like colors, images, and sounds. When one first enters an interior space, a signature fragrance by itself may be the first confirmation that one is at a particular retailer, hotel, or spa. As that perception wanes, however, visual and aural stimuli will play a more prominent role in consumers’ awareness of a particular vendor. In fact, the consistent combination of a particular fragrance with other visual and aural stimuli will likely strengthen through such amalgamation, the association of that fragrance with a specific retailer. The greater the number of sensory elements comprising a trade dress, the more likely it is to be protectable as a distinctive indicator of a particular source of goods or services. Taco Cabana’s trade dress was protectable only because it combined a number of architectural and decorative elements; the murals, umbrellas, and interior design only become distinctive when combined.[243] The greater the complexity of the trade dress, however, the narrower the scope of its protection. Accordingly, if Abercrombie were to claim a trade dress that comprises visual elements as well as sounds and scents, it would be difficult for this retailer to establish unfair competition based upon a competitor’s use of a discrete element of Abercrombie’s multisensory trade dress. Fragrance’s capacity for trademark protection may directly benefit retailers and fragrance brands, but not the industrial manufacturers of fragrance blends. A fragrance manufacturer cannot protect a fragrance as trade dress for its products or services because fragrances are its products and services. As such they cannot acquire the distinctiveness, or secondary meaning necessary to obtain trademark protection. Manufacturers sell even fine fragrances to retail products manufacturers like couture houses and cosmetic companies that package and label commissioned blends under their own brands.[244] These brands, like retailers and hotel chains that scent their atmospheres, do not publicize the name of the manufacturer that produced the scent. In short, major fragrance manufacturers are akin to ghostwriters who cede copyright in their writings in exchange for fees from the commissioning parties to whom the published works are attributed.[245] Although they are not the primary beneficiaries of fragrance trade dress protection, fragrance manufacturers may indirectly capitalize on the growing accommodation under U.S. trademark law for the protection of non-traditional trade dress. Ghostwriters are aware of the economic value of the copyrights that they assign to the attributed author of their works, and this value is reflected in their fees. The fact that a commissioned fragrance may now be deployed and protected as trade dress adds economic value greater than that of fragrances distributed exclusively as retail products. Given that fragrances increasingly function as valuable and legally protectable branding agents, fragrance creators should factor this development into the fees they charge for the creation and production of products deployed in this innovative manner.

Conclusion

Over the past twenty-five years advances in analytic technologies, and increasingly stringent government disclosure regulations, have challenged fragrance manufacturers’ efforts to maintain exclusive control over their most valuable assets: proprietary information relating to the creation and manufacture of fragrances.[246] As discussed earlier, once this information has been disseminated there is little recourse under copyright or trade secret law to check its distribution or implementation.[247] Patents also are of limited efficacy to fragrance manufacturers, effectively protecting only newly discovered “captive” molecules.[248] Johann Böttiger’s enterprise (Meissen Porcelain) lost its most valuable, and seemingly mission-critical, trade secret within decades of its establishment. Yet, hundreds of years after what would appear to have been a devastating loss, Meissen Porcelain is flourishing not only because it diversified its merchandise, but more importantly because it capitalized upon the prestige associated with the quality of its porcelain, and also its market lead, made possible by the fact that it was the first European enterprise capable of producing it. Like Meissen Porcelain, major fragrance houses have long histories, most having existed for well over a century.[249] Unlike Meissen, however, these fragrance companies have functioned as ghostwriters, creating and manufacturing products ultimately sold as emanations of their customers, including couture houses, retailers, and consumer products companies. To an increasing extent, these fragrances are not merely sold by retailers as consumer products but are also used, like broadcast recordings of musical works, as a component of a larger trade dress by which consumers identify a particular retailer or service provider. The economic potential in fragrance trade dress can be analogized to that inherent in the public performance of copyrighted musical works. Copyright owners of musical works cannot control, or derive financial benefit from, private performances of their songs. When their copyrighted compositions are performed in public, however, they are legally entitled to receive royalties for these uses of their works.[250] Like copyright owners, fragrance manufacturers and retailers cannot control, or derive financial benefit from, private uses of their legitimately acquired products. Nonetheless, as these products are increasingly deployed in public – especially commercial – spaces, they acquire value beyond that ascribable to their hedonic attributes, by contributing to the branding of a commercial product or service. In other words, just as a copyrighted song realizes greater economic value through public performances, a fragrance acquires greater economic value when it becomes part of a legally protectable trade dress through its deployment in a commercial public space. The legal protections for fragrance remain limited. Like the Meissen Porcelain enterprise in the 1720s, individual fragrance manufacturers today can never recapture once-secret information that is now widely known, or readily and legitimately ascertained by others through reverse engineering. Accordingly, trade secret protection is an increasingly elusive quarry for this industry. Patent protection is similarly inefficacious, due to its limited duration and requirement of usefulness — a characterization unpalatable to luxury purveyors. As works of fragrance are not copyrightable, their diffusion in public spaces cannot be regulated as performances of them. When such use results in the establishment of legally protectable trade dress, however, fragrance creators could acquire a portion of the economic value of this interest, in the creation of which they have played a significant role. By capitalizing on the value stemming from the increasing use of fragrances in establishing protected brands, fragrance houses might find through trademark law partial compensation for this loss of intellectual property.
* B.M. Oberlin; J.D. American Univ.; M.A., Ph.D. Stanford; M.I.M.S., Berkeley; Lecturer, USC Law School (ccronin@law.usc.edu). Un grand merci to Claire Guillemin, collègue hambourgeoise, for sustaining my interest in this curious industry.
[1] See Richard Stamelman, Perfume: Joy, Obsession Scandal Sin; A Cultural History of Fragrance from 1750 to the Present 94 (2006).
[2] Id.
[3] See Eugénie Briot, From Industry to Luxury: French Perfume in the Nineteenth Century, 85 Bus. Hist. Rev. 273, 277 (2011).
[4] Id.
[5] See id. at 277–79.
[6] See generally Sue Minter, Fragrant Plants, in The Cultural History of Plants ch. 13 (2005). The small city of Grasse is situated a few miles north of Cannes on the Ligurian sea.
[7] See id. See also Stamelman, supra note 1, at 95 (noting that the production of jasmine in Grasse peaked in the 1920s and 1930s but subsequently declined dramatically).
[8] See Leffingwell & Associates, 1999–2002 Flavor and Fragrance Industry Leaders, http://www.leffingwell.com/top_10_2.htm (last visited Jan. 12, 2016).
[9] See id.
[10] See infra text accompanying note 57.
[11] See infra text accompanying note 38.
[12] In the eleventh century , on a mountainside north of Grenoble, Saint Bruno of Cologne established the Carthusian monastic order. See John F. Fink, 100 Important Events in Catholic History: From Pope Peter to Pope Francis 43 (2013). The region’s harsh climate, however, accommodated the cultivation of little more than medicinal herbs. See La Vallée du Secret, VSD Magazine (Jun. 18, 2014). Faute de mieux, the Carthusians grew herbs that they eventually used in the manufacture of the “elixir” that in the eighteenth century they began to distribute beyond the monastery as “Chartreuse”. See id.
[13] Their expulsion appears to have been motivated by the French government’s resentment of the order’s financial prosperity. See France Banishes Carthusian Monks, N.Y. Times, Mar. 27, 1903, at 3.
[14] See History of the Chartreuse Liqueurs, Chartreuse.fr, http://www.chartreuse.fr/en/histoire/history-of-the-chartreuse-liqueurs/ (last visited Jan. 12, 2016).
[15] See id. Meanwhile, the Carthusians in Spain continued to produce the original liqueur that they then called “Tarragone” because the French government forbade their use of the trademark “Chartreuse” on products sold in France. Id. Accordingly, until 1929, when the trademark “Chartreuse” was restored to the Carthusians, those drinking Chartreuse in cafes and restaurants in France would order “a Tarragone”. Id.
[16] See generally, Into Great Silence (Zeitgeist Films 2005).
[17] See The Carthusian Order, Quick Presentation, http://www.chartreux.org/en/quick-presentation.php (last visited Jan. 11, 2016). Carthusian monks avow a life of silence, which is spent at one monastery. Many aspects of their life are hermetic, but the Carthusians are a coenobitic order in which all monks work for the communal good, with no ambition for personal financial gain. Id. Only two monks know the formula for Chartreuse at any time. See History of the Chartreuse Liqueurs, supra note 14. Like wine, Chartreuse is a volatile drink, the quality of which typically improves over time. Accordingly, even if one successfully reverse engineered the molecular composition of Chartreuse, one would need also to discover the techniques by which to nurse the liqueur to maturity over many years, to match the quality of that of the monks’. See id. Moreover, there are over 100 ingredients in Chartreuse, many of which grow only in Alpine locations like that of the Carthusians’ motherhouse. See Christina Rebuffet-Broadus, Chartreuse, France Today (Apr. 9, 2013), http://www.francetoday.com/articles/2013/04/09/chartreuse.html. Over time there have been a number of attempts to market counterfeit Chartreuse, the bottles of which are displayed at the museum of the Caves de la Chartreuse in Voiron, located near La Grande Chartreuse. WikiMedia Commons, File:Chartreuse-fake.jpg, https://commons.wikimedia.org/wiki/File:Chartreuse-fake.jpg (last visited Jan. 22, 2016).
[18] See Janet Gleeson, The Arcanum 56 (1998). After Vasco da Gama discovered a sea route between Europe and the Orient in the late-fifteenth century, Europeans began to collect Chinese porcelain. As porcelain became popular in Europe, huge quantities were obtained at great cost from China because Europeans did not possess the information needed to manufacture it. Id. at 45 (noting porcelain’s imperviousness to the water damage that threatened other luxuries like tea, silk, and spices shipped from the Orient).
[19] See text panels for exhibition: The Arnhold Collection of Meissen Porcelain, 1710 – 50 (Frick Collection, 2008) (copy on file with author). I am grateful to Frick curator Charlotte Vignon who provided me a copy of these text panels.
[20] See Gleeson, supra note 18, at 295 (noting how “the efforts of discontented employees and wandering arcanists had demolished its monopoly and spread the secret arcanum for porcelain far and wide”). Moreover, the manufacture of Böttiger’s porcelain depended upon a rare white clay called kaolin, available at the time from a sole provider in the Saxon town of Aue. When the Aue clay merchant realized that Böttiger no longer monopolized porcelain manufacture, he increased the price for clay that he charged Böttiger. He also began to sell his clay to Böttiger’s competitors, despite the fact that he was contractually bound to supply only Böttiger’s enterprise. See id. at 106.
[21] Id. In the eighteenth century the nation we now call Germany was comprised of many independent states like Saxony, Bavaria, and Württemberg. Each state had its own legal regime and there was little chance of being prosecuted for a malfeasance like trade secret misappropriation outside the jurisdiction of the owner of the trade secret. See James Sheehan, German History, 1770 – 1866 14 (1989) (noting that the “Reich came from a historical world in which nationality had no political meaning and states did not command total sovereignty.”).
[22] See Meissen Couture, Our Famous Brands, http://www.meissen.com/en/world-meissen-couture/maison-meissen-couture/our-famous-brand (last visited Jan. 11, 2016).
[23] Id. Martin Lindstrom refers to this association as the “Organizational Selling Proposition” in which not a physical product, but rather “the organization or corporation behind the brand in fact became the brand.” See Martin Lindstrom, Brand Sense: Build Powerful Brands Through Touch, Taste, Smell, Sight, and Sound 4 (2005).
[24] The quality of a fragrance, like a culinary dish, depends upon not only the formula or recipe, but also the particular ingredients used to instantiate it. If Chanel were to use jasmine from India rather than that from France to manufacture No. 5 the scent of this perfume would differ slightly from that of No. 5 – made from jasmine grown in the south of France – despite the fact that the same chemical formula would be used in creating it. Accordingly, even if one successfully reverse engineers the formula for a fragrance, one still may not be able to replicate exactly the original without access to the same source of ingredients used in the original. Cathy Newman offers a bird’s-eye view of fragrance manufacturing in her book Perfume: The Art and Science of Scent. (1998).
[25] See Int’l Fragrance Ass’n, The Socio-Economic Impact of Fragrance in Europe 7 (2012).
[26] The tension between employees’ rights of free expression and employment mobility, and employers’ right to control the dissemination of information they consider proprietary underlies most trade secret misappropriation claims today. See Roger Milgrim, Milgrim on Trade Secrets § 5.01 (1994) (noting that “as reliance on trade secret protection increases, controversies between former employers and ex-employees … will not only increase in number, they will be contested for significantly higher stakes”).
[27] See Meissen Couture, supra note 22.
[28] See infra Part I.B.
[29] See infra text accompanying note 189.
[30] Most fragrance manufacturers do not produce retail products but rather develop and produce proprietary blends that are sold to consumer goods producers like Unilever, Proctor & Gamble, and brands like Dior. See infra note 75 and accompanying discussion.
[31] See Tracy Lewis & Jerome Reichman, Using Liability Rules to Stimulate Local Innovation in Developing Countries: Application to Traditional Knowledge, in International Public Goods and Transfer of Technology Under a Globalized Intellectual Property Regime 342 (Keith Maskus & Jerome Reichman eds., 2005).
[32] See infra notes 44, 46 and accompanying text.
[33] See Unif. Trade Secrets Act (amended 1985), 14 U.L.A. 433 (1990). This Act has now been adopted by 47 of the United States. Unif. Law Comm., Legislative Fact Sheet – Trade Secrets Act, http://www.uniformlaws.org/LegislativeFactSheet.aspx?title=Trade%20Secrets%20Act. The same criteria define trade secrets in the pending European Union trade secret legislation. See Commission Proposal for a Directive of the European Parliament and of the Council on the Protection of Undisclosed Know-How and Business Information (Trade Secrets) Against their Unlawful Acquisition, Use and Disclosure, COM (2013) 813 final (Nov. 28, 2013) [hereinafter Commission Proposal].
[34] The United States Economic Espionage Act criminalizes the misappropriation of trade secrets on behalf of a foreign government. See 18 U.S.C. §§ 1831–1839 (2012). In 2015, for the third time, United States legislators have introduced a bill that would create allow civil trade secret claims to be brought in federal court. See Defend Trade Secrets Act of 2015, S. 1890, 114th Cong. (2015). The United States Patent & Trademark Office identifies trade secrets as “a fourth type of intellectual property, in addition to patents, trademarks, and copyrights.” See USPTO, Trade Secrecy Policy, http://www.uspto.gov/patents-getting-started/international-protection/office-policy-and-external-affairs-patent-trade (last visited Jan. 12, 2016).
[35] “Although not protected as a classical IPR, trade secrets are nevertheless a key complementary instrument for the required appropriation of intellectual assets that are the drivers of the knowledge economy of the 21st century. The holder of a trade secret does not have exclusive rights over the information covered by the trade secret.” Commission Proposal, supra note 33, at 3.
[36] Under U.S. law the rights of copyright owners are limited by statutory provisions allowing for unauthorized uses of copyrighted information by journalists, educators, et al. See 17 U.S.C. §§ 107, 108 (2012).
[37] Many manufacturers anticipate and avert such losses through sales contract provisions that prohibit customers from reverse engineering products acquired from the manufacturer.
[38] See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 490–493 (1974) (distinguishing patent protection that operates “against the world” from trade secret protection that does not protect against independent creation or reverse engineering).
[39] See Chicago Lock Co. v. Fanberg, 676 F.2d 400, 405 (9th Cir. 1982) (finding that federal patent law would preempt any state-conferred monopoly through absolute protection of a trade secret).
[40] See Semiconductor Chip Protection Act of 1984, 17 U.S.C. §§ 901–914. (2012) (providing ten years protection for registered computer chip topographies); Digital Millennium Copyright Act, Pub. L. No. 105-304, 112 Stat. 2860 (codified in scattered sections of 5, 17, and 28 U.S.C.) (restricting the production and use of devices whose purpose is to circumvent digital rights management technologies). See Vessel Hull Design Protection Act, 17 U.S.C. §§ 1301–1332 (2012). The fashion industry has attempted, so far unsuccessfully, to obtain similar sui generis federal protection for apparel designs. See Innovative Design Protection and Piracy Prevention Act, H.R. 2511, 112th Cong. (2011).
[41] See J.H. Reichman, Legal Hybrids Between the Patent and Copyright Paradigms, 94 Colum. L. Rev. 2432, 2443 (1994) (discussing the economic and social underpinnings of sui generis intellectual property protection enacted in the United States and Europe “owing to the advent of new, information-based technologies, including computer science … whose industrial applications were costly to develop but vulnerable to rapid duplication.”).
[42] Article 4 of the Directive states: “The acquisition of trade secrets shall be considered lawful when obtained by any of the following means: (a) independent discovery or creation; (b) observation, study, disassembly or test of a product or object that has been made available to the public or that it is lawfully in the possession of the acquirer of the information; (c) exercise of the right of workers representatives to information and consultation in accordance with Union and national law and/or practices; (d) any other practice which, under the circumstances, is in conformity with honest commercial practices.” Commission Proposal, supra note 33. The underlying motivation for the proposed Directive was the lack of harmonization among the trade secret laws of the twenty-eight member states of the European Union. See Study on Trade Secrets and Confidential Business Information in the Internal Market, at 15-16 (Apr. 2013), http://ec.europa.eu/growth/tools-databases/newsroom/cf/itemdetail.cfm?item_id=8269. In June 2015 the EU Parliament approved the key features of the draft prepared by the EU Commission and EU Council. See Report on the Proposal for a Directive of the European Parliament and of the Council on the Protection of Undisclosed Know-How and Business Information (Trade Secrets) Against Their Unlawful Acquisition, Use and Disclosure, COM (2013) 813 final (Jun. 25, 2015), http://www.europarl.europa.eu/sides/getDoc.do?pubRef=-//EP//TEXT+REPORT+A8-2015-0199+0+DOC+XML+V0//EN&language=en – title1. The Directive is now being reviewed by the EU Council that will finalize a draft that will be become EU law and ultimately the basis of member states domestic legislation for trade secrets. See Mark P. Wine, One Step Closer: European Parliament Legal Affairs Committee Approves Trade Secret Directive, Orrick Trade Secrets Watch (Jun. 26, 2015), http://blogs.orrick.com/trade-secrets-watch/2015/06/26/one-step-closer-european-parliament-legal-affairs-committee-approves-trade-secret-directive/.
[43] See Roland Knaak, et al., Comments of the Max Planck Institute for Innovation and Competition On the Proposal of the European Commission for a Directive on the Protection of Undisclosed Know-how and Business Information (Trade Secrets) Against Their Unlawful Acquisition, Use and Disclosure of 28 November 2013, COM (2013) 813 Final, Max Plank Institute for Innovation and Competition Research Paper No. 14-11, 11 (2014) (noting that the Directive does not consider trade secret protection an exclusive right but rather one obtained under unfair competition law, whereas Italian law considers trade secrets to be an intellectual property right).
[44] Id.
[45] See id. ¶ 37.
[46] Id.
[47] “Perfumers work in the strictest secrecy, jealously guarding the mysteries of their art. Since the beginning of perfume, formulas have been kept hidden from prying eyes….” Elizabeth Barillé & Catherine Laroze, The Book of Perfume 45 (1995).
[48] The still-secret formula for the liqueur Chartreuse was originally used to create a more potent potable used as medicine. See History of the Chartreuse Liqueurs, supra note 14.
[49] Napoleon III, Emperor of France between 1852 and1870, was perhaps indirectly responsible for the separation of the fragrance and pharmaceutical industries by promulgating a regulation requiring makers of pharmaceuticals to disclose on the labels of their products the ingredients they contained. To preserve the secrecy of their formulas, perfume manufacturers disassociated themselves and their products with pharmacists and pharmaceuticals. See Stamelman, supra note 1, at 95.
[50] Id.
[51] “Hubigant legend … is that Marie Antoinette, in disguise on her flight to Varennes, was wearing a Houbigant fragrance, which caused her to be identified as royalty when her coach was stopped, because none but royalty would have possessed such a magnificent perfume!” Lightyears Collection: Houbigant, PerfumeProjects.com, http://www.perfumeprojects.com/museum/marketers/Houbigant.php (last visited Jan. 19, 2016).
[52] See Briot, supra note 3, at 276 (reporting that by the end of the nineteenth century there were over 300 perfume producers in France and around 2000 small perfume shops in Paris).
[53] See, e.g., Anna Chesters, A Brief History of Guerlain, The Guardian (Mar. 26, 2012), http://www.theguardian.com/fashion/fashion-blog/2012/mar/26/brief-history-guerlain (discussing the origins of Guerlain, long a family enterprise).
[54] Eighty percent of the fragrances sold today are incorporated into personal care and household care products. See Int’l Fragrance Ass’n, supra note 25, at 14-17.
[55] In 2013, Givaudan, the world’s largest producer of flavors and fragrances had 9,331 employees distributed throughout eighty-eight locations in five continents. Givaudan, Annual Report 3 (2013).
[56] The same factors have simultaneously challenged many other high technology industries that rely on trade secrets, resulting in an enormous increase in trade secret litigation in federal courts. See David Almeling, et al., A Statistical Analysis of Trade Secret Litigation in Federal Courts, 45 Gonz. L. Rev. 291, 293 (2009/10).
[57] One such example is IPRA Fragrances’ (France) claim in 2012 against employees who joined a competitor. See Mathilde Tranoy, Deux Salairiés Accusés d’avoir Vendu des Formules Aromatiques Secrètes, Nice Matin (Mar. 30, 2012, 7:37 AM), http://archives.nicematin.com/faits-divers/deux-salaries-accuses-d%E2%80%99avoir-vendu-des-formules-aromatiques-secretes-a-grasse.830888.html. Another example is Estée Lauder’s claim against ex-employee Shashi Batra for sharing its trade secrets with a direct competitor. See Estée Lauder Cos. Inc v. Batra, 430 F. Supp. 2d 158, 160 (S.D.N.Y. 2006). A third example is, Intarome Fragrance & Flavor’s prosecution of fired employee Michael Zarkades for sharing trade secrets with E.T. Horn, a flavor manufacturer. See Intarome Fragrance & Flavor Corp. v. Zarkades, No. 07-873, 2007 U.S. Dist. LEXIS 22780, *4 (D.N.J. Mar. 29, 2007).
[58] Givaudan Fragrances Corp. v. Krivda, No. 08-04409, 2013 U.S. Dist. LEXIS 153437, *1 (D.N.J. Oct. 25, 2013).
[59] See id.
[60] Id. at *4.
[61] Id. at *6.
[62] See id.
[63] See generally Motion for New Trial by Givaudan Fragrances Corporation, Givaudan Fragrances Corp. v. Krivda, No. 08-04409 (D.N.J. Mar. 7, 2014).
[64] Apparently Givaudan did not trust the efficacy of the court’s protective order that would have purportedly prevented the disclosure of over 600 Givaudan formulas through their inclusion in the docket for this litigation. Because Givaudan would not fully disclose these formulas to the defendant and the court, the court dismissed the case based on its determination that the plaintiff failed to provide defendant adequate notice of the allegedly misappropriated trade secrets. See id. at 7–8.
[65] See generally Patrick Süskind, Perfume: The Story of a Murderer (1985).
[66] See generally Tim Robbins, Jitterbug Perfume (1984).
[67] See Arian van Asten, The Importance of GC and GC-MS in Perfume Analysis, 21 Trends in Analytical Chemistry 698, 699 (2002) (noting that there is little discussion in the open literature about the work of analytic chemists in the fragrance industry because “that is usually not in the best interest of the companies operating in this highly competitive market.”).
[68] See John Daintith, A Dictionary of Chemistry (6th ed. 2008).
[69] See id.
[70] See Arian van Asten, supra note 67, at 701.
[71] See Int’l Fragrance Ass’n, supra note 25, at 22-23.
[72] For example, Pirate Parfum, the self-proclaimed producer of “[t]he greatest perfumes, at impertinent prices,” is a significant player in this industry. It does not sell counterfeits of well-known perfumes, but rather copies of them that are branded with different names, and sold in uniform and non-descript packaging with no resemblance to that of the original products. See Pirate Parfum: Master Perfumer, https://us.pirate-parfum.com (last visited Jan. 19, 2016).
[73] See Leffingwell & Associates, 2010–2014 Flavor and Fragrance Industry Leaders, http://www.leffingwell.com/top_10.htm (last visited Jan. 12, 2016). International Flavors & Fragrances (IFF) is headquartered in the United States, but originated in the Netherlands. See IFF, History Timeline, http://www.iff.com/company/history-timeline – /timeline (last visited Jan. 19, 2016).
[74] See Claire Guillemin, Law and Odeur: Fragrance Protection in the Fields of Perfumery and Cosmetics Part I, § 3 (forthcoming 2016) (discussing the origins of this understanding in the quasi-familial ethos of the fragrance industry through the early twentieth century).
[75] See Nicole Vulser, Le Groupe LVMH se Réapproprie la Fabrication de ses Parfums, Le Monde 16 (May 28, 2011) (noting that LVMH owns the Sephora chain, one of the largest retail outlets for perfume). See also, Fabien Pigalle, Grasse: Louis Vuitton se (Re)met au Parfum, Nice-Matin 36 (Apr. 13, 2012) (discussing LVMH’s plans to open in 2014 a workshop for fragrance development in Grasse).
[76] Vulser, supra note 75.
[77] Id.
[78] Id.
[79] Id.
[80] “We were presented with a fait accompli. Dior did not warn us that it would no longer market one of our flagship products,” said Frédéric Rivoire, CEO of Givaudan Fine Fragrances Europe. The shortfall for the company, even though it is working for other brands, amounts to several million euros of turnover.” Id.
[81] See Int’l Fragrance Ass’n, supra note 25, at 44.
[82] See LVMH, Perfumes & Cosmetics, http://www.lvmh.com/houses/perfumes-cosmetics/ (last visited Jan. 19, 2016).
[83] See, e.g., Commission Regulation 1367/2006 of Sept. 6, 2006, The Application of the Provisions of the Aarhus Convention on Access to Information, Public Participation in Decision-making and Access to Justice in Environmental Matters to Community Institutions and Bodies, 2006 O.J. (L 264) 13, 14 (granting a public right of access to information held by EU agencies relating to “emissions into the environment”).
[84] See 35 U.S.C. § 154 (2012); Convention on the Grant of European Patents, Oct. 5, 1973, 1065 U.N.T.S. 199.
[85] See 35 U.S.C. § 112 (2012).
[86] Within the fragrance industry “fine fragrances” refers to stand-alone perfumes that are worn on the body for aesthetic purposes.
[87] See 35 U.S.C. § 101 (2012).
[88] The appeal and economic value of a perfume are actually enhanced by its lack of utility. Lysol underscores the utility of its stolidly named aerosol Sanitizing Spray as an economical and effective product to control “bathroom, pet, garbage, and diaper odors,” whereas Patou fosters an attitude of hedonic and heedless extravagance in advertising Joy as “the costliest perfume in the world.” See Lysol, Lysol Neutra Air Sanitizing Spray, http://www.lysol.com/products/neutra-air/lysol-neutra-air-sanitizing-spray/ (last visited Jan. 22, 2016); Two Sides of Dear: Demystifying Patou’s Joy Perfume Promotion, Perfume Shrine (May 13, 2014), http://perfumeshrine.blogspot.com/2014/05/two-sides-of-dear-demystifying-patous.html. Economist Thorstein Veblen (1857-1929) pointed out the value associated with conspicuous wastefulness and lack of utility of certain products. “The superior gratification derived from the use and contemplation of costly and supposedly beautiful products is, commonly in great measure a gratification of our sense of costliness masquerading under the name of beauty.” Thorstein Veblin, The Theory of the Leisure Class 128 (Prometheus Books 1998) (1899).
[89] The prestige and prices of Chanel’s No. 5 and Patou’s Joy for instance, are bolstered by the fact that both products have endured since 1929 and 1921 respectively, in a market in which hundreds of new fragrances are launched (and typically fail) annually. On the other hand, most new seasonal or “celebrity” fragrances have such a limited shelf life that they need no IP protection whatever.
[90] See USPTO, USPC Index: Class 512 Perfume Compositions (2011), http://www.uspto.gov/web/patents/classification/uspc512/sched512.htm.
[91] Id. (providing an interactive index of applications).
[92] E.g., U.S. Patent No. 7,169,746 col 1 l. 6–7 (filed Mar. 26, 2002) (Shiseido’s patent for a “perfume for effecting mental control through psycho-sedation or psycho-stimulation.”). United States regulation of fragrances has been relatively sparing. The United States Fair Packaging and Labeling Act requires disclosure of ingredients used in consumer products unless such disclosure would reveal trade secrets. 15 U.S.C. § 1453 (2006). Because fragrance manufacturers assert that their compositions constitute trade secrets, their incorporation into a product is typically indicated not with a list of constituent chemicals but rather simply the term “fragrance”. The United States Food and Drug Administration (USFDA), however, classifies fragrances that are marketed for their aroma-therapeutic capacities as drugs that are subject to the Administration’s more stringent regulation. See USFDA, Aromatherapy (2015), http://www.fda.gov/Cosmetics/ProductsIngredients/Products/ucm127054.htm.
[93] See Erin McAvoy, Chemical Romance: How did Chemists Become the Greatest Force in Fragrance? The Independent (Dec. 10, 2010), http://www.independent.co.uk/life-style/fashion/features/chemical-romance-how-did-chemists-become-the-greatest-force-in-fragrance-2155817.html (noting that “synthetic raw materials, usually single molecules, enable perfumers to create entirely new smells….”).
[94] See id. See also Emma Davies, The Sweet Scent of Success, 2009 Chemistry World 40 (Feb. 2009) (discussing the deployment of several of the most significant proprietary perfume molecules in fragrances like Dior’s Poison and Donna Karan’s Be Delicious).
[95] See Leffingwell & Associates, supra note 73.
[96] See generally Wendy Wolfson, In the Fragrance Business, the Right Molecule Smells like Money, 12 Chemistry & Biology 857 (2005) (discussing Flexitrol’s attempt to become a clearinghouse for scent molecule licensing).
[97] A patent is costly and difficult to obtain because the claimant must establish that his invention effectuates new information for a useful purpose. See 35 U.S.C. §§ 101–103 (2012). Patent prosecution is costly in large part because it involves the work of highly trained examiners who investigate claims of novelty against the state of the art in a given class of goods. See MPEP § 2131 (9th ed. 2014).
[98] One must register an invention to obtain a patent for it; an author automatically obtains a copyright, however, simply by recording his original expression as text, sound, images or other copyrightable content. 17 U.S.C. § 102 (2012).
[99] In the timeworn words of Judge Learned Hand: “if by some magic a man who had never known it were to compose anew Keat’s Ode on a Grecian Urn, he would be an ‘author,’ and, if he copyrighted it, others might not copy the poem, though they might of course copy Keats’s.” Sheldon v. Metro-Goldwyn-Mayer Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936).
[100] See 17 U.S.C. § 106 (2012); WIPO, Summary of the Berne Convention for the Protection of Literary and Artistic Works (1866), http://www.wipo.int/treaties/en/ip/berne/summary_berne.html (last visited Jan. 19, 2016).
[101] See 17 U.S.C. §§ 107-110 (2012). Germany’s copyright law, for instance, has no general fair use provision, and specifies all limitations on authors’ rights under the statute. See Wencke Bäsler, Technological Protection Measures in the United States, the European Union and Germany: How Much Fair Use do We Need in the “Digital World”?, 8 Va. J.L. & Tech. 13, ¶ 4 (2003).
[102] 8 Anne, c. 19 (1710).
[103] Code de la Propriété Intellectuelle [Intellectual Property Code] Art. L. 112-1 (the last of the fourteen categories covers articles of haute couture).
[104] The House Report on the Copyright Act of 1976 states: “The bill does not intend either to freeze the scope of copyrightable subject matter at the present stage of communications technology or to allow unlimited expansion into areas completely outside the present congressional intent. Section 102 implies neither that the subject matter is unlimited nor that new forms of expression within that general area of subject matter would necessarily be unprotected.” H.R. Rep. No. 94-1476, at 51 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5664.
[105] Theoretically, another fragrance manufacturer could independently and legitimately re-create the copyrighted fragrance as long as this effort were done without access to the original fragrance. See discussion supra note 99.
[106] See 17 U.S.C. § 302 (2012).
[107] The most famous example of such a transcription from memory is Mozart’s of the score of Gregorio Allegri’s “Miserere” after hearing two performances of it at the Vatican in 1770. The Vatican owned the only score and parts to Allegri’s work that was performed only twice a year, during Holy Week, in the Sistine Chapel. Performers with access to the score and parts were threatened with excommunication if they were found to have copied or distributed the work outside the Vatican. “The Papacy, realising that it owned a composition of exceptional appeal, shrewdly heightened its reputation by refusing to allow any copy to leave the Sistine Chapel. This ban was supported by threats of severe punishment.” Peter Phillips, Brochure Notes to The Tallis Scholars Recording of Allegri’s Miserere (Gimell Records 1985).
[108] Makers of Sibelius music notation software, for instance, claim that their program can convert the sound of “up to 16 instruments or notes at a time into multiple staves, with up to four voices per staff.” AudioScore Ultimate 8, Sibelius, http://www.sibelius.com/products/audioscore/ultimate.html (last visited Jan. 13, 2016).
[109] See generally U.S. Copyright Office, Circular No. 50, Copyright Registration for Musical Compositions 1 (2012).
[110] See infra note 120 and accompanying text.
[111] This difficulty is nicely illustrated in one of the opening scenes of the film adaptation of Patrick Süskind’s novel Perfume: The Story of a Murderer, in which the hapless perfumer played by Dustin Hoffman struggles vainly to analyze a popular fragrance of one of his competitors. Perfume: The Story of a Murderer (Dreamworks Pictures 2006).
[112] The 1909 Copyright Act that was effective until 1978, provided an initial term of twenty-eight years, which could be renewed. Act of Mar. 4, 1909, Pub. L. No. 60-349, 35 Stat. 1035, as amended (formerly codified at 17 U.S.C. § 1 et seq.). When copyright (and patent) terms expire, the once-protected work enters the public domain and can be used by anyone.
[113] See Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977) (finding that characters used in a McDonald’s television commercial copied not merely the plaintiffs’ idea of fanciful characters in action, but substantially also their specific means of conveying the idea); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983) (finding that if “other programs can be written or created which perform the same function as an Apple’s operating system program, then that program is an expression of the idea and hence copyrightable”).
[114] See About Us, Editions de Parfums-Frédérick Malle, http://www.fredericmalle.com/about-us/frederic-malle (last visited Jan. 13, 2016).
[115] E.g., the American company International Flavors & Fragrances designated the French-educated Carlos Benaim as its first “master perfumer”. IFF Names Carlos Benaim Master Perfumer, Perfumer & Flavorist (Jan. 18, 2013), http://www.perfumerflavorist.com/networking/news/people/IFF-Names-Carlos-Benaim-Master-Perfumer-187443131.html.
[116] See, e.g., Perfumery School, Givaudan, https://www.givaudan.com/fragrances/perfumery-school (last visited Jan. 13, 2016); Perfumery School in Grasse, Grasse Inst. of Perfumery, http://www.grasse-perfumery.com/perfumery-school-in-grasse/ (last visited Jan. 13, 2016).
[117] See generally Perfumery School, supra note 116; Perfumery School in Grasse, supra note 116.
[118] See Guillemin, supra note 74, at Part IV (providing exhaustive coverage of French and Dutch copyright litigation involving fragrances).
[119] Olivia Su, Odor in the Courts! Extending Copyright Protection to Perfumes May Not Be so Nonscentsical: An Investigation of the Legal Bulwarks Available for Fine Fragrances Amid Advancing Reverse Engineering Technology, 23 S. Cal. Interdisc. L.J. 663 (2014).
[120] See Rochas v. de Laire, Cour d’appel [CA] [regional court of appeal] Paris, 4e ch., July 3, 1975, Gaz. Pal. 1976.
[121] See id.
[122] “Oeuvres de l’esprit.” Id.
[123] Mugler v. Molinard, Tribunal de commerce [T. Com.] [court of commerce] Paris, 15e ch., Sept. 24, 1999, Gaz. Pal. 2001, 17-18.01, at 5. Quest International was subsequently acquired by Givaudan in 2006. See Sam Cage, Givaudan Buys Quest from ICI, Reuters Business News (Nov. 22, 2006), http://uk.reuters.com/article/2006/11/22/uk-chemicals-givaudan-idUKL2288827020061122.
[124] See Mugler v. Molinard, Gaz. Pal. 2001, 17-18.01, at 5. Historically, in civil law regimes, like that of France, courts pay less obeisance to case law precedence than their common law counterparts; see generally Vincy Fon & Francesco Parisi, Judicial Precedents in Civil Law Systems: A Dynamic Analysis, 26 Int’l Rev. L. & Econ. 519 (2006). Accordingly, the Mugler court evidently felt no compunction about rendering a decision incompatible with that of the earlier Rochas decision by a higher court.
[125] See Mugler v. Molinard, Gaz. Pal. 2001, 17-18.01.
[126] See Bellure v. L’Oréal, Cour d’appel [CA] [regional court of appeal] Paris, 4e ch. A, Jan. 25, 2006, D. 2006, at 580, J. Daleau, aff’g Bellure v. L’Oréal, Tribunal de Grande Instance [TGI] [ordinary court of original jurisdiction] Paris, May 26, 2004, D. 2004, at 2641, note Galloux.
[127] See id.
[128] Id.
[129] HR 16 juni 2006, NJ 2006, 585 m.nt. JHS (Lancôme/Kecofa) (Neth.).
[130] See id.
[131] Id.
[132] See Beauté Prestige Int’l v. Senteur Mazal, Cour d’appel [CA] [regional court of appeal] Paris, 4e ch., Feb. 14, 2007, D. 2007, at 735, J. Daleau.
[133] Id.
[134] Id.
[135] Id.
[136] See Bellure v. L’Oréal, Cour d’appel [CA] [regional court of appeal] Paris, 4e ch. A, Jan. 25, 2006, D. 2006, at 580, J. Daleau.
[137] See Charles Cronin, Genius in a Bottle: Perfume, Copyright, and Human Perception, 56 J. Copyright Soc’y U.S.A. 427 (2009) (discussing relative acuity of human senses and its relevance to intellectual property protection).
[138] The Cour de cassation is France’s highest appellate court that is separated into six subject-matter divisions, e.g., labor, criminal, civil, etc.
[139] Société Lancôme v. Patrice Farque, Cass. com., Dec. 10, 2013 [pourvoi n° 11-19872] available at http://www.cecoa.eu/images/cecoa/artdroit201312001.pdf.
[140] See id.
[141] Id.
[142] Jean-Michel Bruguière has argued that the court’s rationalizing its decision on the imperceptibility of the intellectual investment in the creation of a fragrance is flawed: “[t]he olfactory notes of Chanel No. 5 or Eau Sauvage are as reliably and accurately identifiable as musical notes – the harmony of the Beach Boy’s “Good Vibrations” or the melody of the Rolling Stones’ “Satisfaction”. Jean-Michel Bruguière, Chroniques: Droit d’Auteur et Droits Voisins [News Column: Copyright and Neighboring Rights], 50 Propriétés Intellectuelles 51, 52 (2014). He also suggests that some contemporary works of [classical] music are no more intelligible to the public than are fragrances. See id.
[143] The U.S. Copyright Office accepts registrations for works of: literature, visual arts, performing arts, sound recordings, and single serials. See eCO Frequently Asked Questions, U.S. Copyright Office, http://copyright.gov/eco/faq.html (last visited Jan. 14, 2016).
[144] See generally Trademark “Sound Mark” Examples, U.S, Patent & Trademark Office, http://www.uspto.gov/trademark/soundmarks/trademark-sound-mark-examples (last visited Jan. 14, 2016).
[145] See, e.g., Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).
[146] See discussion infra Part III.C. “The ‘trade dress’ of a product is essentially its total image and overall appearance. It ‘involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.’” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 n.1 (1992) (citing Blue Bell Bio Medical v. Cin Bad, Inc., 864 F.2d 1253 (5th Cir. 1989), and John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983)).
[147] See Daniel Zendel & Dennis Prahl, Making Sense of Trademarks: An International Survey of Non-Visual Marks, Trademark World, Issue 89 (1996), http://ladas.com/making-sense-trademarks-colors-sounds-scents/.
[148] See id. (noting that while the German Marks Act of 1995 accommodates color marks, the German Patent Office internal guidelines require these marks to be combined with other distinctive features to be registrable).
[149] See id. (noting the “visual perceptibility” requirement of both the Mexican Industrial Property Law and Brazilian Industrial Property Code).
[150] In 1949, for instance, in Campbell Soup Co. v. Armour & Co., the Third Circuit rejected plaintiff’s claim to the exclusive right to use the color combination of red and white on food products: “If they may thus monopolize red in all of its shades the next manufacturer may monopolize orange in all its shades and the next yellow in the same way. Obviously, the list of colors will soon run out.” Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 798 (3d Cir. 1949). Over forty years later, in NutraSweet Co. v. Stadt Corp., the Seventh Circuit rejected the plaintiff’s claim to the exclusive right to use pastel blue on its sugar substitutes packaging: “if each of the competitors presently in the tabletop sweetener market were permitted to appropriate a particular color for its product, new entrants would be deterred from entering the market.” NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028 (7th Cir. 1990). Ultimately, in Qualitex, the Supreme Court “concluded that the color depletion issue would rarely arise and could be resolved, if necessary, by applying the functionality doctrine to prevent anticompetitive results.” 1-2 Gilson on Trademarks § 2.11.
[151] See William Landes & Richard Posner, Trademark Law: An Economic Perspective, 30 J. L. & Econ. 265, 269 (1987) (discussing this benefit as reducing “consumer search costs”).
[152] See NutraSweet, 917 F.2d at 1028.
[153] See Cronin, Genius in a Bottle, supra note 137.
[154] “Die Luft der Freiheit weht” and “Veritas” respectively. The greater the number of different colors in a mark the greater the likelihood of its distinctiveness. Nevertheless, the particular perception of color marks depends to a greater extent than that of word marks on geographical location. San Franciscans will associate a combination of the colors blue and gold with the University of California at Berkeley while residents in St. Paul will think of their city’s Bethel University. Residents of both cities will associate the combination of red, white, and blue with the United States; those of Paris and Lyon, on the other hand, will think of France (though they will reorder the colors to that of their tricolore: blue, white, and red).
[155] See 1-2 Gilson on Trademarks § 2.11 (discussing case law establishing that school colors, when used with “other indicia” of the school, can acquire secondary meaning to qualify for trademark protection).
[156] See Douglas Churovich, Intellectual Property: Policy Considerations from a Practitioner’s Perspective: Scents, Sense or Cents? Something Stinks in the Lanham Act: Scientific Obstacles to Scent Marks, 20 St. Louis U. Pub. L. Rev. 293, 293–94 (2001) (claiming that “the landmark In re Clarke decision was ill-advised since it was founded upon a poor, if not non-existent, understanding of osphresiology and the misguided application of legal principles that fail to apply to scents”); Bettina Elias, Do Scents Signify Source? An Argument Against Trademark Protection for Fragrances, 82 Trademark Rep. 475 (1992) (claiming that “fragrances only rarely, if ever, function as trademarks in the marketplace and, in those few cases in which fragrances do arguably indicate a product’s source, their trademark protection remains doctrinally problematic and potentially impossible to implement and enforce in a consistent fashion.”).
[157] Visually or verbally complex marks, however, may be weaker than simple marks because they demand more intellectual effort on the part of consumers to decipher and recall their association with a particular product or service.
[158] Most notorious is the wine industry’s attempts to suppress the fact of weak human perception of tastes and smells, with the humbuggery it uses to market its products. See David Derbyshire, Wine-Tasting: It’s Junk Science, Guardian (June 22, 2013, 7:01 PM), http://www.theguardian.com/lifeandstyle/2013/jun/23/wine-tasting-junk-science-analysis.
[159] On this question “[t]he door is firmly closed in … countries such as Brazil Japan, China and Taiwan, where scent marks are neither registrable and the courts do not appear to have considered the protection of unregistered scent marks under other legal theories.” See Zendel & Prahl, supra note 147.
[160] See First Council Directive to Approximate the Laws of the Member States Relating to Trade Marks, art. 2, O.J. L 40/1, at 2 (1989) (broadly defining trademarks as comprising “any sign capable of being represented graphically … provided that such signs are capable of distinguishing the goods or services of one undertaking from those of another undertaking”); Agreement on Trade Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments-Results of the Uruguay Round, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) (offering a similarly broad definition of trademarks, and the right of convention members to “require, as a condition of registration that signs be visually perceptible”).
[161] See Zendel & Prahl, supra note 147.
[162] Case C-273/00, Ralf Siekmann v. German Pat. & Tmk. Office , 2002 E.C. R. I- 11754.
[163] Id. at ¶14-15.
[164] Id. at ¶ 10-11.
[165] Id. at ¶11-13.
[166] Id. at ¶39, 45-48.
[167] Id. at 35.
[168] Id. at 54.
[169] Id. at 63.
[170] See TMEP § 807.09 (8th ed. Oct. 2014).
[171] See Trademark “Sound Mark” Examples, supra note 144.
[172] See In re Celia Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990) (finding that “the scent of a product may be registrable if it is used in a non-functional manner”).
[173] Sixteen records were obtained July 21, 2015 using the USPTO’s Trademark Electronic Search System searching the terms “for situations for which no drawing is possible, such as sound,” in the Mark Drawing Code field, and the term “fragrance” in the Description of Mark field. Trademark Electronic Search System (TESS), U.S. Patent & Trademark Office, http://tmsearch.uspto.gov (last visited Jan. 15, 2016).
[174] CITRUS FRAGRANCE, Registration No. 3,726,789 (issued 2009 for biofuel); the mark consists of a coconut scent or fragrance, Registration No. 4,113,191 (issued 2012 for retail sales); the mark consists of a high impact fragrance primarily consisting of musk, vanilla, rose, and lavender, Registration No. 4,057,947 (issued 2011 for cosmetics).
[175] The specific paper products they sought to protect were hanging file folders. See, e.g., APPLE CIDER SCENT, Registration No. 3,140,701 (cancelled in 2013).
[176] See generally, Martin Lindstrom, Buyology: truth and Lies About Why We Buy (2008) (discussing tactics by which retailers and consumer products companies sell products through the use of various sensory stimuli).
[177] See generally id.
[178] These prices were found on websites of these retailers on July 28, 2015. Target does not sell Joy in its physical stores, so its presentation costs for this product are minimal. Target, http://www.target.com/ (last visited July 28, 2015); Nordstrom, http://www.nordstrom.com/ (last visited July 28, 2015). Target’s decision not to sell Joy in stores may have been motivated by fears that the small but relatively expensive item would be attractive to shoplifters. It may also have contracted with Patou not to do so based on Patou’s concern about the pollution of its brand through association with Target. The existing arrangement benefits both companies because underlying it is a conspiratorial understanding between them and consumers who would be embarrassed by purchasing a high-end product at a brick-and-mortar Target bargain-counter. Eau de toilette is the most diluted version of a fine fragrance, and the only version of Joy sold by Target. Nordstrom also sells Eau de parfum that is less diluted, and more expensive, than the Eau de toilette. Nordstrom does not sell the parfum, a half ounce of which is sold only at top-tier shops like Neiman Marcus for about $350. Target, http://www.target.com/ (last visited July 28, 2015); Nordstrom, http://www.nordstrom.com (last visited July 28, 2015); Nieman Marcus, http://www.niemanmarcus.com/ (last visited July 28, 2015).
[179] See David Suisman, Selling Sounds: The Commercial Revolution in American Music 66 (2012).
[180] These venues include not only restaurants featuring the dreaded “strolling musicians” but also Nordstrom department stores where former U.S. Secretary of State Condoleezza Rice once anticipated making a living as a musician. See Elisabeth Bumiller, Condoleezza Rice: An American Life 56 (2007).
[181] See Suisman, supra note 179.
[182] “[M]usic, any music at all, is so welcome to the weak of mind and so readily supplied by their commercial manipulators that almost all the music you hear, at least all you hear inadvertently, is BAD.” Paul Fussell, Bad: Or, The Dumbing of America 126 (1991).
[183] See generally George Prochnik, In Pursuit of Silence: Listening for Meaning in a World of Noise (2010) (discussing soundscapes developed on behalf of Abercrombie & Fitch).
[184] See Lindstrom, Brand Sense, supra note 23, at 72 (observing that “while hearing involves receiving auditory information through the ears, listening relies on the capacity to filter, selectively focus, remember, and respond to sound”).
[185] Broadcasting music recordings has also been used effectively to alienate undesirables from commercial spaces. See Twilight of the Yobs: How Classical Music Helps Keep Order, Economist (Jan. 6, 2005), http://www.economist.com/node/3536150.
[186] See Lindstrom, Brand Sense, supra note 23, at 74 (noting that in Disney World “carefully choreographed sound is piped through the entire park. Even the bird sounds are controlled. It’s a whole environment designed to capture the hearts of children and waken the child within each adult.”).
[187] A Gap store in San Francisco enables customers to use smart phones to select the muzak they hear while shopping. See Gap Pilots In-Store DJ System, Lets Customers Pick and Play Music, VentureBeat (Nov. 21, 2011, 9:13 AM), http://venturebeat.com/2011/11/21/roqbot-gap/. It seems unlikely, however, that retailers would ever provide customers the wondrous capacity simply to turn off a soundtrack.
[188] See generally Prochnik, supra note 183.
[189] Marketing researchers have established that classical music played in a commercial setting increases the “quality sensation”. See Annabel Elliott, The Buy-ology of a Shopping Spree: How Stores like Apple and Victoria’s Secret Use Scent, Sound and Color to Make You Spend More Money, Daily Mail (Dec. 5, 2014), http://www.dailymail.co.uk/femail/article-2861386/The-Buy-ology-shopping-spree-stores-like-Apple-Victoria-s-Secret-use-scent-sound-color-make-spend-money.html. Accordingly, one is more likely to hear classical music in a high-end restaurant or art gallery catering to discerning customers than in a fast-food joint or sneaker shop targeting teenagers. See id.
[190] See id.
[191] In the 1930s, a Connecticut home insurance firm impregnated their advertising brochures with the scent of charred wood. See Marston Bogert, Your Nose Knows, 39 Sci. Monthly 345 (1934). Such uses of scents capitalize on their potential to conjure powerful memories instantaneously, a phenomenon known as the “Proustian effect”. See Sarah Dowdey, Does What You Smell Determine What You Buy?, How Stuff Works, http://money.howstuffworks.com/scent-marketing.htm (last visited Jan. 14, 2016). “When you first perceive a scent, you connect it to an event, person or thing. When you smell the scent again, it often triggers memory in the form of a conditioned response . . . smell can also activate the subconscious and influence your mood. Instead of reminding you of specific details from [a] vacation, [an] ocean scent might make you feel content or happy.” Id.
[192] See Roxie Hammill & Mike Hendricks, Scent Received, With a Tap of a Smartphone, N.Y. Times (July 8, 2015), http://www.nytimes.com/2015/07/09/technology/personaltech/scent-received-with-a-tap-of-a-smartphone.html (discussing “Scentee”, “oPhone Duo” and other mechanisms developed to generate specific scents in response to digitally communicated instructions).
[193] “The real action, however, lies in projecting olfactory character into indoor commercial spaces. This application has been fully embraced in one large business sector: the gaming industry. Las Vegas is the trend’s epicenter; half the major properties on the Strip have scent systems. The MGM Grand has deployed as many as nine scents simultaneously around its property and the Venetian features a corporate logoscent called ‘Seduction’.” Lindstrom, Brand Sense, supra note 193, at 171.
[194] Alexia Elejalde-Ruiz, For Branding, Many Places Adopt Signature Scents, L.A. Times (April 14, 2014, 7:05 PM), at http://www.latimes.com/business/la-fi-scent-branding-20140419-story.html – page=1. Even Goodwill Industries now infuse the air of their retail shops with a bespoke fragrance. See id. Goodwill’s motivations for doing so, however, differ from those of a retailer like Bloomingdales. Bloomingdales scents its air to promote an atmosphere of luxury and exclusivity; Goodwill uses fragrance to counter an atmosphere of frugality, if not penury, associated with the sale of used apparel of questionable cleanliness.
[195] See L. Aruna Dhir, Scent of a Hotel, 4 Hoteliers (Dec. 3, 2013), http://www.4hoteliers.com/features/article/8037.
[196] See Caroline Cerny, A New Scent at Park Hyatt Zurich, Hyatt (May 1, 2008), http://newsroom.hyatt.com/2008-05-01-A-New-Scent-At-Park-Hyatt-Zurich (discussing how parfumeur Blaise Mautin creates different scents for Hyatt depending upon the location of the hotel; Zurich’s commercial vibe is captured in an astringent scent).
[197] “Global Hyatt offers… more than 750 hotels in more than 45 countries.” Id.
[198] In one branding study, a teenager expressed confidence that the Abercrombie jeans she had been handed were authentic, and not a knockoff pair bought from a sidewalk vendor, because they were imbued with Abercrombie’s signature scent. See Lindstrom, Brand Sense, supra note 23, at 2.
[199] Fierce Cologne, Abercrombie & Fitch, http://www.abercrombie.com/shop/us/mens-cologne/fierce-cologne-5217072_01 (last visited Jan. 14, 2016). “Fierce” was created by Christophe Laudamiel, a gay parfumeur from France. See Serguey Borisov, Intervew with Christophe Laudamiel, Fragrantica (Apr. 13, 2014, 7:03 AM), http://www.fragrantica.com/news/Interview-with-Christophe-Laudamiel-5381.html.
[200] Abercrombie & Fitch is a “retailer of men’s and women’s casual clothing, such as t-shirts, outerwear, sweatshirts, woven shirts, sweaters, jeans, khakis, shorts, baseball caps, belts, socks, and other accessories . . . designed primarily to appeal to young men and women of college age.” Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 624 (6th Cir. 2002). See generally Prochnik, supra note 183, at 89 – 106 (2010) (documenting the marketing tactics of Abercrombie and similar retailers to attract young customers by creating alluringly risqué environments)
[201] Tmep, § 1202.02 (8th ed. Oct. 2014).
[202] See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (finding that the overall décor of the respondent’s restaurant was inherently distinctive, and therefore protectable trade dress, even though respondent had not demonstrated that this décor had acquired secondary meaning).
[203] Marks that are not inherently distinctive, but otherwise meet registration requirements, may be registered on the Secondary Register. See Glynn S. Lunney, The Trade Dress Emperor’s New Clothes: Why Trade Dress Does Not Belong on the Principal Register, 51 Hastings L.J. 1131 (2000) (discussing significance of registration on the Principal rather than Supplemental Register).
[204] See 1-2 Gilson on Trademarks § 2A.01 (noting that “although there is no empirical evidence, it appears that most trade dress is not registered and may instead be judicially protected under Section 43(a) of the Lanham Act”).
[205] This was true, for example, of the trade dress at issue in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Qualitex had been using the contested trade dress for about thirty years and only attempted to register it as a trademark when a competitor began using a similar trade dress.
[206] General Mills, History of Innovation: The History of Betty Crocker, www.generalmills.com/~/media/Files/history/hist_betty.pdf; History of the Morton Salt Girl, Morton Salt, http://www.mortonsalt.com/our-history/history-of-the-morton-salt-girl (last visited Jan. 14, 2016).
[207] See 1-2 Gilson on Trademarks § 2.11 (citing Martin Lindstrom’s Brand Sense: Build Powerful Brands Through Touch, Taste, Smell, Sight, and Sound, in which the author argues that given the overload of information in today’s marketplace, retailers must develop multisensory brands to reach consumers). Lindstrom, Brand Sense, supra note 23.
[208] See generally Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).
[209] See Two Pesos, 505 U.S. at 767.
[210] See id. at 766.
[211] See id. at 764.
[212] See id. at 766. The plaintiff’s exhibits of images of the competing restaurants suggest that the district court jury was likely swayed in their verdict of infringement by the fact that the defendant not only copied the plaintiff’s colors, and architectural features, but also the size and arrangement of these features, down to the flower pots along an exterior wall. Photos of both restaurants are provided in the slides of Michael Atkins’ presentation Trade Dress Protection in the United States, given at the University of Washington School of Law. Michael Atkins, Trade Dress Protection in the United States, SlideShare, http://www.slideshare.net/mikeatkins/alicante-presentation-7504041 (last visited Jan. 14, 2016).
[213] See Two Pesos, 505 U.S. at 767.
[214] See id. at 766.
[215] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).
[216] See id. The pads, sold to dry cleaning establishments, look like ironing board covers. See SunGlow Press Pads, Qualitex, http://www.qualitexco.com/http/pads.html (last visited Jan. 15, 2016).
[217] See Qualitex Co. v. Jacobson Prods. Co., 13 F.3d 1297 (9th Cir. 1994).
[218] See Qualitex, 514 U.S. at 161.
[219] See id. at 174.
[220] See id. at 164.
[221] See Qualitex Co. v. Jacobson Prods. Co., 13 F.3d 1297, 1299 (9th Cir. 1994).
[222] See id.
[223] See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992).
[224] See, e.g., AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1536 (11th Cir. 1986) (basing its finding that plaintiffs owned protectable trade dress in their packaging of Klondike ice cream bars on the fact that the images were not “a basic shape or common design [but] . . . [r]ather . . . a complex composite of size, color, texture and graphics . . . [creating] a distinctive visual impression”).
[225] See discussion supra Part I.
[226] See discussion supra Part I.
[227] See discussion supra Part I.
[228] See supra note 139 and accompanying text.
[229] See Copyright Act of 1976, 17 U.S.C. §106 (2012). “Mom & Pop” restaurants and retail establishments are exempt from this requirement. See id. at § 110. These royalties are managed by performing rights organizations, the largest of which is ASCAP. See Am. Soc’y of Composers, Authors & Publishers, http://www.ascap.com (last visited Jan. 14, 2016).
[230] See Kimberlianne Podlas, I Do Not Endorse This Message! Does a Political Campaign’s Unauthorized Use of a Song Infringe on the Rights of the Musical Performer?, 24 Fordham Intell. Prop. Media & Ent. L.J. 1 (2013) (arguing that performers of copyrighted musical works should not be able to prevent uses of their performances that are legitimate under copyright law, based on trademark claims).
[231] See id.
[232] Mr. Softee, Inc. could still assert copyright to control performances of their registered song, written by jingle composer Les Waas in 1958. See Daniel Neely, Ding, Ding!: The Commodity Aesthetic of Ice Cream Truck Music, in Mobile Music Studies, Vol. II 155 (2014). In fact, Les Waas’s melody is highly derivative of the English Folk tune, “How many miles to Babylon?”. See Eloise Hubbard Linscot, Folk Songs of Old New England 18 (1939) (providing words and music notation of the song).
[233] The same fate did not befall Coca Cola Company’s jingle “I’d Like to Buy the World a Coke” despite the fact that Coca Cola later authorized the use of its melody in the pop song “I’d Like to Teach the World to Sing,” recorded by The Hillside Singers. See The “Hilltop” Ad: The Story of a Commercial, Libr. of Congress, http://lcweb2.loc.gov/ammem/ccmphtml/colaadv.html (last visited Jan. 15, 2016). This is because whenever Coca-Cola advertised its products using the jingle, the words identifying Coca-Cola were always heard along with the melody.
[234] See Neely, supra note 232, at 146 (noting that the sound of ice cream truck music is not Pavlovian – i.e. stimulating a reflexive response to want ice cream – but rather plays on an “anamnesis” conditioned on the ability to recognize a specific product through sound).
[235] Health regulations rather than intellectual property rights are more likely to affect a retailer’s use of fragrances in commercial and public spaces. See Stuart Elliott, Joint Promotion Adds Stickers to Sweet Smell of Marketing, N.Y. Times (Apr. 2, 2007), http://www.nytimes.com/2007/04/02/business/media/02adcol.html (discussing the San Francisco’s Municipal Transportation Authority’s order to the California Milk Processor Board to remove chocolate-scented advertisements posted near public bus stops); Rachel Herz, The Scent of Desire: Discovering Our Enigmatic Sense of Smell 14 (2007) (noting that Halifax, Nova Scotia has enacted regulations making illegal the wearing of fragrances in public).
[236] See Copyright Act of 1976, 17 U.S.C. §106 (2012). The possibility of copyright protection for fragrances raises the question how moral rights of attribution, reputation, etc. would be applicable to them under copyright regimes like that of France, that provide such protection. See Code de la Propriété Intellectuelle [Intellectual Property Code] L. 121-1- L. 121-4 (1992).
[237] Lanham Act § 43(a), 15 U.S.C. § 1125 (2012) (prohibiting conduct “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. . . .”).
[238] See John Tagliabue, Why European Computer Makers Flop, N.Y. Times (Oct. 7, 1996), http://www.nytimes.com/1996/10/07/business/why-european-computer-makers-flop.html.
[239] Lanham Act § 43(a), 15 U.S.C. § 1125 (2012).
[240] Such efforts would involve wearing unwieldy headphones, blinders, or similar paraphernalia, the use of which may elicit ambivalence by spectators as to the mental stability of the wearer.
[241] See Jennifer Chen, Human Olfactory Perception: Mechanism, Characteristics, and Functions (May, 2013) (unpublished Ph.D. dissertation, Rice University) (on file with author); see also Avery Gilbert, What the Nose Knows: The Science of Scent in Everyday Life 85 (2008) (positing that “[t]he longer you are exposed to an odor, the more you adapt to it. Step into a garlic factory and the reek will overwhelm you. A few minutes later its intensity fades, and after an hour you might not be able to smell garlic at all, no matter how hard you try. Work there a few months and this adjustment will happen almost as soon as you step in the door”).
[242] See Gilbert, supra note 241, at 85. It is this habituation that prompts retailers of perfumes to keep at hand a saucer of coffee beans, the odor of which contrasts sharply with that of fine fragrances, thereby enabling customers to “reset” their olfaction, allowing them to perceive fragrances anew. Nevertheless, Gilbert notes that: “the bean meme is now a fixture in perfume retailing… The Jo Malone display in Saks had them [coffee beans] in an apothecary jar with a metal lid. It’s all good fun and marketing, but there is not a jot of science behind it. (There are twenty-seven aroma impact molecules in roasted Arabica coffee – how could smelling all these help clear the nose?)” Id. at 108.
[243] See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
[244] Dior’s fragrances like Miss Dior and Diorissimo, for instance, were developed, and manufactured by Givaudan. See supra note 77 and accompanying text
[245] See Roberta Kwall, The Soul of Creativity: Forging a Moral Rights Law for the United States 91 (2009) (suggesting an inherent “degradation” of both attributed author and ghostwriter when the ghostwriter creates most of a literary work but without attribution).
[246] See, e.g., United Nations Economic Commission for Europe, Convention on Access to Information, Public Participation in Decision-Making and Access to Justice in Environmental Matters, June 25, 1998, 2161 U.H.T.S. 450 (granting the public right of access to any information held by European Union agencies relating to emissions into the environment); International Fragrance Association, North America, Federal Regulatory Chart, http://ifrana.org/advocacy/laws-and-regulations/federal/ (identifying seven federal agencies involved in regulating fragrance ingredients and manufacturing in the United States).
[247] See discussion supra Parts I & II.
[248] See discussion supra Part II.A.
[249] Givaudan, the largest fragrance manufacturer, dates its origins to 1786. See A Rich Heritage of Growth, Givaudan, https://www.givaudan.com/our-company/rich-heritage (last visited Jan. 14, 2016). IFF was established in 1889. See History Timeline, Int’l Flavors & Fragrances, Inc., http://www.iff.com/Company/IFF-History (last visited Jan. 14, 2016). Firmenich was established in 1895. See Company, Firmenich, http://www.firmenich.com/en_INT/company.html (last visited Jan. 14, 2016). Symrise merged Haarmaan & Reimer (1874) and Dragoco (1919). See History, Symrise, https://www.symrise.com/company/organization/history/ (last visited Jan. 14, 2016). Only Takasago was established in the twentieth century. See History of Taskago, Takasago, http://www.takasago.com/en/aboutus/history/1920.html (last visited Jan. 14, 2016).
[250] See generally, Podlas, supra note 230 and accompanying text.

A Critical Look at “Use” under the Lanham Act

A Critical Look at “Use” under the Lanham Act
By Krystil McDowall* A PDF version of this article is available here.  

Introduction

There is an old adage in trademark law: “Use it or lose it.”[1] Whilst use of a mark may appear to be an uncomplicated idea, the concept of “use” is somewhat elusive.[2] In order to obtain and maintain a federal registration the “use in commerce” requirement[3] demands a bona fide “sale” or “transportation” of a good bearing the mark,[4] and subsequent activity of the mark owner, which evidences a continuous effort to use the mark in the ordinary course of trade.[5] But not all activities undertaken in connection with a mark are relevant “uses.” For example, various activities, which are often necessary to launch a brand, lie outside the scope of permissible use. Once one delineates what conduct constitutes the requisite use, the question then becomes what use suffices as a “continuous” effort to use the mark. For many years, courts have held that more than de minimis use is required to satisfy the requirement.[6] One of the biggest grey areas in trademark law, and a continual focus of litigation, is how much use will be “continuous use.” The line between what use is de minimis and what use is continuous is a murky one. Trademark owners continue to litigate the use issue because there is little statutory clarity regarding what quantum of use constitutes a sufficient use in commerce and because the current use inquiry does not reflect the commercial realities of many business owners. Particularly affected are start-ups and new market entrants with little capital, and those in industries where there are high barriers to entry or in which products are expensive and sales are therefore infrequent. The difficulty trademark owners face in satisfying the use requirement is not a new issue.[7] Two recent decisions serve as examples of the recurring and frequent difficulties that some trademark owners face when they attempt to persuade a court that the relevant use has been made. In the 2013 decision, Clorox Co. v. Salazar, the trademark owner had used the mark in pre-sale activities, but had not yet sold a mark-bearing product; the Trademark Trial and Appeal Board refused to find a triable issue of fact regarding whether sufficient use of the mark had been made.[8] Similarly, in the 2011 decision, Gameologist Group, LLC v Sci. Games Int’l, Inc., a court refused to find that there were triable issues of fact sufficient to survive a summary judgment motion despite the owner putting forth four documented sales of its product bearing the trademark.[9] The decisions serve as reminders of how volatile certain trademarks are under the current use requirement, which is uniform on its face but unequal in its application. This note explores the use requirement under the Lanham Act.[10] Part I of this note discusses the historical context of the use in commerce requirement under the Act and how trademark owners are required to prove use sufficient to obtain and maintain a federal trademark registration. Part II considers how the use inquiry was applied in Clorox and Gameologist to deny the validity of the marks in issue. Part III critically analyzes the current use standard and, in particular, how the lack of uniformity under the use requirement causes inequity to certain trademark owners. Lastly, Part IV of this note canvasses the Australian concept of use and examines how the standard under Australian law would have produced different, and more favorable, outcomes for the plaintiffs in Clorox and Gameologist. Ultimately, this note argues that congressional amendment to the Lanham Act, to bring it closer to the Australian use standard, would be the most effective way to correct the inequity in the use requirement, make the use standard more predictable, and better protect all trademark owners.

I. The Prerequisites for Federal Trademark Rights

A. Historical Context of “Use in Commerce”

It is a fundamental rule of trademark law that creating or merely adopting a mark, on its own, is insufficient to create trademark rights.[11] In order to obtain registration under federal trademark law, the owner must make “use” of its trademark “in commerce.”[12] The basis for rights under the federal trademark registration regime is not the ingenuity or invention that may accompany the creation of the trademark, but rather making sufficient public use of the mark in the marketplace.[13] It therefore follows that use in commerce of a trademark is one of the prerequisites in order to gain, and maintain, protectable rights in a trademark under the Lanham Act.[14] If a federal registration is issued in circumstances where a trademark has not been properly used, the registration is void ab initio.[15] The Act defines the term “use in commerce” to mean “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”[16] This definition has been in effect for some 27 years and was introduced by the Trademark Law Revision Act of 1988 which implemented a radical change to the concept of use as it was then understood.[17] The revised definition of use in commerce abandoned the practice of “token” use and introduced the concept of “bona fide” use “in the ordinary course of trade” — resulting in a more rigorous use standard.[18] Regarding the shift to bona fide use, the Federal Circuit recently remarked that the “bona fide use language was intended to eliminate token uses, which occurred when applicants used marks in conjunction with selling goods or offering services for the sole purpose of obtaining registration, and with no intention of legitimately using the mark in commerce until a later date.”[19] Under the token use concept, a trademark owner was able to use a mark solely for the purpose of reserving rights in the mark as there was no intent-to-use system.[20] Under the current use standard, a bona fide use of a mark must be made before federal registration will issue and in order to maintain a registration if challenged.[21]

B. Proving “Use in Commerce”

At the outset, it is useful to note that a claimant’s ability to prove it has made a use in commerce of a trademark depends on what type of use is in issue, as the type of use, including the standard applied by the court and the evidence it will consider, may differ depending on the context of the dispute and the claims made by the parties.[22] Of specific relevance to this note is the use required to obtain and maintain a valid federal registration, in which the framework for analyzing use hinges on the definition of “use in commerce.” The current use standard has two aspects: that a bona fide use occur by way of a “sale” or “transportation,” and that continuous use be made of the mark after the initial sale or transportation.[23] Satisfying the “sale” or “transportation” aspect of the use standard requires a technical use, which is use of the relevant mark on, or in connection with, the goods.[24] The affixation requirement was liberalized with the passage of the TRLA, making it easier to satisfy.[25] Generally, the requirement is satisfied by an owner affixing the mark to the goods in question “in any manner” and selling the goods with the mark so affixed.[26] However, the law acknowledges that it is not always practicable to put a mark on goods and, in such circumstances, the trademark owner may place the mark on documents associated with the sale of the goods.[27] A further aspect of the use in commerce requirement is that the sale or transportation be open and public.[28] The logic behind the requirement is that sale or transport will lead intended consumers of the relevant product to become aware of both the availability of the goods and the mark.[29] The terms “sale” and “transportation” do not correspond to ordinary dictionary definitions, as the meaning of both terms in trademark law is influenced by the necessity that the use be open and public. As such, “[s]ecret, undisclosed internal shipments are generally inadequate to support use.”[30] Consequently, there are limitations on what constitutes a sale or a transportation under the Act. For example, intra-company shipments are not a transportation because such transactions are neither arms-length, nor public, and are likely to be considered sham shipments.[31] Lastly, in order to file an application that meets the requirements for registration, a single sale or transportation of a good will suffice.[32] However, in order to maintain registration, the Act requires more than a single public sale or transportation of the good bearing the mark.[33] A mark owner must be able to demonstrate that it has made continuous use of its mark since the initial sale or transportation.[34] The Act, however, does not state how much use constitutes continuous use. The continuous use requirement is therefore one of trademark law’s fuzziest requirements. Despite the lack of a specific statutory threshold regarding the quantum of continuous use, the legislative history and the case law provide some limited assistance in answering the quantum question.[35]

C. Nature and Quantum of Use Necessary to Prove Continuous Use

The Act does not explicitly mandate a specific quantum of use in order to maintain federal registration. The Act’s legislative history, however, states that use adopts a measure of flexibility, with the sufficient amount of use viewed in the context of the trademark owner’s industry. Specifically, Congress has said that use should be interpreted to mean “commercial use which is typical in a particular industry.”[36] Congress, quite rightly, recognized that sales patterns and use vary from industry to industry — indeed, infrequent sales may be part of the ordinary course of trade in some industries, but not in others.[37] The acknowledgement that use differs from industry to industry is the reason Congress urged that the revised definition be interpreted with some flexibility, encompassing “various genuine, but less traditional, trademark uses.”[38] Less frequently cited in literature concerning trademark use is Congress’ intent to preserve ownership rights if a unique situation disrupts the use. Specifically, the Senate Report states that ownership rights should be preserved “if, absent an intent to abandon, use of a mark is interrupted due to special circumstances.”[39] Congress, however, did not elaborate on what type of special circumstances may be encompassed under this concept, and it appears the courts have not considered the passage of the report in case law at any length.[40] Whilst the legislative history provides some guidance as to how the use standard is to be interpreted by the courts, the case law provides insight as to how courts evaluate the quantum issue and whether such use meets the continuous use threshold. A continuous use has been held to mean use that is “maintained without interruption.”[41] Additionally, the case law clearly says that de minimis use of a mark is not continuous use.[42] Nonetheless, de minimis use is not a defined concept, and whether use is de minimis is considered on a case-by-case basis.[43] Despite the lack of definition, the courts hold that some use may be deemed so isolated or minimal that rights are never created in the mark. For example, in Momentum Luggage & Leisure Bags v. Jansport, Inc., a single sale of eight pieces of luggage for $760 in two years was de minimis and insufficient to prove use as a mark.[44] The following examples are other cases in which federal courts have held that the alleged use was insufficient because it was minimal, de minimis, or too sporadic; they demonstrate that attempts at proving use are surrounded with seemingly insurmountable difficulties: · LeBlume Import Co. v. Coty (1923): Occasional casual importations of perfume considered so infrequent that the perfume producer was not entitled to trademark protection.[45] · Vapon, Inc. v. Dreyfuss (1957): Evidence of customer orders, shipping orders and invoices showing one shipment of the product bearing the mark each year between 1944 to 1953 to customers in Connecticut, Massachusetts, New Jersey and Pennsylvania, with a total sales value of $478.44 held to be sporadic and inconsequential use.[46] · United Plywoods Corp. v. Congoleum-Nairn, Inc. (1959): During a period of upwards of two years, the applicant had made two sales of goods bearing the mark; which was held to be sporadic.[47] · Philip Morris, Inc. v. Imperial Tobacco Co. (1965): Sales of cigarettes and tobacco bearing the trademark were considered over a 55 year period. The largest amount of tobacco sold in a year did not exceed 300 pounds and cigarette sales did not exceed $51,000. Sales were considered sporadic, casual and nominal in character and thus created no trademark rights.[48] · D. M. & Antique Import Corp. v. Royal Saxe Corp. (1969): Use relating to one sale was held transitory and minimal.[49] · La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc. (1974): Holding that 89 sales of perfume bottles over a 20 year period was held as a “meager trickle of business” and that could not constitute bona fide use to afford trademark protection.[50] · Paramount Pictures Corp. v. White (1994): Affixing mark to a game consisting of three pieces of paper and distributing the game to promote a musical group was de minimis use.[51] · WarnerVision Entm’t Inc. v. Empire of Carolina Inc. (1996): The plaintiff’s promotional efforts failed to establish sufficient use where only a few presentations were made to industry buyers, even though one resulted in a sale to a major retailer.[52] · S. Indus., Inc. v. Diamond Multimedia Sys., Inc., (1998): Denying summary judgment to the mark owner because sales of five computers for $5,301 over three years were de minimis sales did not establish continuous use under the Act.[53] · Lucent Info. Mgmt. Inc. v. Lucent Techs. Inc. (1999): A single sale and no advertising was held to be inadequate to demonstrate sufficient use.[54] · Harod v. Sage Prods., Inc. (2002): A low level sales of samples to distributors, followed by sporadic sales thereafter, did not establish trademark rights ($70 of sales to distributors in 1996 and sales of $75 in 2000 and $60 in 2001 with no advertising).[55] In Momentum Luggage the court held “a single use in trade may sustain trademark rights if followed by continuous commercial utilization.”[56] However, even where subsequent use is made of the mark by the trademark owner after an initial sale, it may be difficult to satisfy the continuous use requirement as courts interpret use strictly, denying rights in a mark if subsequent use appears objectively haphazard or random. The rationale, as one court observed, is that a single sale of a product followed by “frenetic but futile efforts to make a second sale” does not justify the grant of trademark rights by “denying its use to sellers who can actually sell.”[57] The theory behind such reasoning is that trademark rights become stronger with public acceptance and recognition of the mark, which occurs as the owner makes greater bona fide public use of the mark.[58] As one scholar notes, “[i]f it is true that trademark rights arise from actual use of the mark, it is also true that greater rights arise from greater use.”[59] It can be surmised, then, that under the current standard of use, a single use of a mark without subsequent continuous use in the ordinary course of trade does not create trademark rights sufficient to maintain a federal registration under the Act, but a single sale will suffice to create rights so long as the initial sale is succeeded by a commercial use of the mark which is not merely sporadic or de minimis.[60] As there are no bright line rules regarding what quantum of use will be considered sufficient, or what level of use will cross the threshold to use that is continuous (as distinguished from use that is merely sporadic), the standard for registration use therefore raises practical challenges for trademark owners to knowing what degree of use is required.[61]

II. The Cases

The use inquiry undertaken by the courts is fact-sensitive and compels the courts to consider a number of case-by-case factors including the amount of use, the nature or quality of the transaction, and what use is typical within a particular industry.[62] In Clorox and Gameologist the courts were unimpressed with the alleged uses of the trademarks in question. In Clorox, the applicant had difficultly satisfying the use standard as the applicant’s evidence indicated that annual sales of its product were likely to be one sale (or less) annually. In Gameologist, the court dismissed the plaintiff’s actual evidence of sales as being minimal and did not give any weight to other evidence of marketing and promotions as use of the mark. Each of these decisions serve as examples of the recurring and frequent difficulties that some trademark owners face when attempting to prove the necessary use has been made.

A. Clorox

In Clorox, a 2013 precedential opinion of the Board, the applicant sought to register the term “Clorotec” and an accompanying design for certain electronic equipment relating to the manufacture of various cleaning solutions. The opposer brought a summary judgment application claiming that relevant use of the Clorotec mark had not been made. The Board ultimately blocked registration of the mark, siding with the opposer, and holding that the applicant had not made the relevant use in commerce of its mark at the time of filing.[63]

B. The Arguments and Evidence

A number of grounds for opposition to registration were advanced by the opposer, including that the applicant’s use of the mark was not bona fide use in commerce.[64] This argument was made on the basis of statements made by the applicant in the discovery process to the effect that the applicant had not used the mark on a product sold within the United States. Specifically, in response to interrogatories, the applicant stated (inter alia) that “[it] has not yet used the [m]ark on any product sold in the United States” and “[n]o units have been sold to clients inside the United States.”[65] In response, the applicant alleged that such statements misrepresented the substance of its responses, and the mark had been used in commerce.[66] To further its argument, the applicant pointed to evidence demonstrating the mark had been used in internet advertising offering the goods for sale, as well as evidence demonstrating that machinery parts bearing the mark (but not the actual product) had been shipped interstate from an interstate manufacturer to the applicant in Mexico via the applicant’s licensee.[67] The applicant contended that requiring an actual sale or transportation of its goods would be “inequitable and inconsistent with Congress’ intent.”[68] The alleged inequity, argued the applicant, would occur by requiring sales in low-volume, high-cost businesses: Sales of the applicant’s products only occurred once per year (or even less frequently); price points ranged from $200,000 to $2,000,000 per item; and products were approximately one ton and custom-made to the customers’ requirements.[69]

C. The Board’s Findings

The Board poured cold water on the applicant’s congressional intent argument, ruling that a sale still must be made, even in an industry that has infrequent sales patterns. It emphasized that no authority had been cited to hold otherwise.[70] In holding that the applicant’s congressional intent argument was without merit, the Board noted that the “[a]pplicant’s position is in conflict with the clear and plain statutory definition of use in commerce.”[71] Along a similar line of reasoning, the Board concluded that the applicant’s argument that it had made use of its mark by way of advertising a product bearing the mark was unavailing; ultimately, the Board held that the relevant use requires such advertising to accompany an actual sale or transport of the goods in commerce.[72] Finally, the Board specifically disavowed the applicant’s contention that shipment of parts of goods bearing the mark could constitute use, holding that an actual finished product must be shipped.[73] However, the Board noted that even if a finished product had been shipped, the parts were shipped from the manufacturer to the applicant; this was merely delivery of goods to the trademark owner in preparation for offering the goods for sale, and not a bona fide use of the mark in commerce.[74] The Board granted summary judgment against the applicant, ruling that there was no genuine dispute of material fact and that there had been no bona fide use of the mark in commerce at the time the applicant filed its use-based application.[75]

D. Gameologist

In Gameologist, a 2013 decision of the United States District Court for the Southern District of New York, the plaintiff had a trademark registration for the mark “BLING BLING 2002”[76] and it sought to establish that it had protectable rights for the bling mark in relation to, inter alia, board games.[77] The plaintiff initially sought to register the bling mark in relation to lottery tickets, but the plaintiff failed to file the requisite evidence of its use of the bling mark in connection with lottery tickets.[78] The plaintiff sued for trademark infringement under the Act for the defendant’s use of the term “bling” in connection with the marketing of lottery tickets.[79] In order to sue for infringement, one of the elements the plaintiff was required to prove was that its bling mark was a valid mark entitled to protection. Such a showing required the plaintiff to demonstrate it had made a use in commerce of the mark.[80] The defendant argued that the plaintiff could not succeed in establishing the requisite use and moved to dismiss the suit by way of a summary judgment application. The Court sided with the defendant, holding that the plaintiff’s de minimis use of its mark was not sufficient to maintain its registration.

E. The Evidence and the Arguments

Despite the plaintiff’s application for the bling mark in relation to lottery tickets, the board game is the only product that was both sold by the plaintiff and featured the bling mark.[81] In an attempt to demonstrate that relevant use of the bling mark had been made, the plaintiff put a variety of evidence forward. In particular, the plaintiff had manufactured 500 units of its board game featuring the bling mark and indicated that all 500 units were either sold or given away.[82] However, the number of board games actually sold by the plaintiff was in dispute. The plaintiff submitted documentary evidence substantiating four sales of the board game at about $30 each,[83] claiming that about half of the remaining units were sold via unrecorded cash transactions and the remainder were distributed as promotional items without charge.[84] Additionally, there was evidence that the plaintiff posted an online slot machine, free of charge that bore the mark. Lastly, the plaintiff also relied on negotiations with potential licensees of the bling mark and various advertising, marketing, and promotion using the bling mark.[85]

F. The Court’s Findings

The court curtly dismissed the plaintiff’s claims, stating that the plaintiff “take[s] ‘bling’ too far.”[86] The Court was unconvinced by the plaintiff’s arguments, holding that the evidence of use of the bling mark was minimal and not sufficiently widespread.[87] In relation to the court’s finding that the use made of the bling mark was minimal, the court pointed out that even if plaintiff could substantiate the undocumented case sales, “de minimis sales such as these are insufficient to demonstrate use in commerce under the Lanham Act.”[88] The Court also took issue with the lack of widespread use of the bling mark. The plaintiff attested to it having attended trade shows, publishing press releases and advertisements, producing product prototypes, and purchasing an email blast directed to the gaming industry informing recipients of the “bling bling” casino game.[89] However, the plaintiffs were unable to provide evidence as to how widespread its efforts were.[90] As a result, the Court held that the plaintiff had failed to raise a genuine issue of material fact that its use of the mark was anything other than “sporadic, casual or transitory.”[91] Accordingly, the plaintiff’s mark was not entitled to protection under the Act, and the defendants were entitled to summary judgment on the plaintiff’s infringement claim.[92]

III. Analysis of the Use Requirement

The following analysis of Clorox and Gameologist does not question whether the application of the law or the analytical framework applied by the courts is correct. Indeed, in this note’s view, both decisions largely comport with the law and the established principles for the use standard applied by the courts. Similarly, neither case stands out as causing a significant change in trademark law or would be expected to cause a significant future impact on how courts approach the use inquiry. The importance of Clorox and Gameologist, however, is that the decisions highlight a distinct issue of trademark law which make certain trademark owners more vulnerable than others. The purpose of this section is to analyze the use in commerce requirement and discuss why it is more difficult for certain trademark owners to prove use than others. Ultimately, it can be seen that the unequal application of the use requirement is more acute for business owners who, like the applicants in each of the decisions, offer infrequent sales of large and expensive goods, or are small businesses and start-ups whose initial sales patterns are haphazard or minimal.

A. The Open and Public Use Aspect of the Sale or Transportation Requirement is Burdensome

The Clorox decision demonstrates that, when interpreting the use requirement to prove the validity of a federal registration, the courts follow a literal interpretation of the Act, which mandates a “sale” or “transportation” of the goods bearing the mark.[93] It is this note’s contention that the stringent interpretation of the open and notorious public use aspect of the sale or transportation requirement is inequitable, as it makes it more difficult for trademark owners who operate in industries with high barriers to entry to prove use. In Clorox, the manner in which the sale or transportation requirement was interpreted required the Board to disregard evidence of bona fide use relating to both the applicant’s internet advertising, via its website, and an interstate shipment of parts of the applicant’s products bearing the mark.[94] The shipment of parts of the applicant’s products from Utah to Mexico would have posed no difficulty satisfying the jurisdictional prerequisite that the use in question have an effect on commerce with foreign nations.[95] Thus, inequity follows where the Act requires invalidation of a federal registration in circumstances where an applicant is making a bona fide use of a mark, and significantly investing in its brand, in order to obtain an initial sale.[96] If sales are typically infrequent in a given industry, a sale is going to be unquestionably harder to make in that industry. It logically follows that a trademark owners’ ability to satisfy the sale or transportation requirement of the Act is more burdensome where the standard of use dictates a sale must be made, but the trademark owner’s evidence of its open and public use of the mark in connection with obtaining a sale (which would likely be building some public association between the mark and the good) is disregarded. Consequently, the use requirement is unequal in its application as the sale or transportation requirement does not factor in that sales are more difficult to attain in certain industries. The Act’s legislative history expresses the desire of Congress to interpret use in commerce flexibly, and to accommodate use that is typical in a particular industry.[97] However, Congress’ desire for a flexible interpretation focuses on use of a mark made after an initial sale or transportation of the good bearing that mark. The need for a flexible interpretation of use equally applies to uses that may be made of a mark before an initial sale or transportation of the good has been made. Trademark owners would receive greater protection and certainty if the Act stipulated a more flexible commercial standard of use that incorporated open and public pre-sales use of a mark (that is, use occurring before an initial sale or transportation takes place) as sufficient. This is especially important where applicants, like the applicant in Clorox, operate in an industry where products are high-end, custom made goods and therefore sales are, by their inherent nature, more infrequent and difficult to obtain. As the system currently stands, injustice results to the extent that the law requires businesses to invest in a mark to secure a sale, only to have a registration invalidated at a later date merely because the trademark owner had not actually attained any sales.

B. The Continuous Use Threshold Disadvantages Small Businesses and New Market Entrants

The Gameologist decision, and the litany of cases before it litigating the use issue, indicate that, in order to maintain a valid registration, more than minimal use of a trademark is required.[98] In this note’s view, the continuous approach to use is undesirable as courts are essentially required to make a ruling regarding whether a brand is growing fast enough.[99] In Gameologist, the requirement for more than de minimis use compelled the court to disregard documented bona fide evidence of actual sales of the plaintiff’s products bearing the mark, with the court holding, “de minimis sales such as these are insufficient to demonstrate use in commerce.”[100] In simple terms, the court effectively said that the plaintiff’s use of its mark was not good enough. Thus, Gameologist highlights the difficulty trademark owners face when attempting to determine whether use of the mark crosses the threshold from minimal to sufficient, as there is no bright line test to answer this question.[101] Many start-up and small businesses have sporadic initial sales patterns for a number of justifiable reasons, including a lack of resources or expertise (if the mark owner is new to the industry) or lack of capital (which may prevent the mark owner from obtaining legal counsel). It follows, then, that the continuous use standard is prejudiced in favor of those brands that are already strong, or have sufficient capital, over those that are starting out. In this way, the continuous use standard under the Act is unequal in its application as the standard is biased in favor of the strong. Where de minimis use is in issue, the law says “might is legally right,” or at least, “legally better.” As a result, the continuous use standard deprives some new or start-up businesses from growing a burgeoning brand into a thriving core asset.[102] Leading trademark scholar Jerome Gilson has voiced similar concerns stating that start-ups should not be deprived of obtaining federal registration because of minimal use.[103] Whilst Gilson’s concerns are not identical to the opinions expressed in this note, Gilson has spoken out against the “usage by industry” approach adopted by Congress with the introduction of the TRLA. Gilson rightly notes that the legislative history does not address the fact that usage within an industry varies significantly. Indeed, there are “likely to be as many different levels of product sales and trademark uses as there are businesses.”[104] Accordingly, attempting to find an industry standard in any given industry “would pose a virtually insurmountable problem both for the courts and for businesses attempting in good faith to comply with the statutory requirements.”[105] Furthermore, Gilson notes that attempts to prove an industry standard may be prohibitive from a cost perspective and inconclusive or unreliable due to the sensitivity with which businesses often treat sales figures of products.[106]

IV. Moving Forward: Congressional Amendment to Address the Use Dilemma – an Alternative Approach to Use under Australian Trademark Law

This note advocates equal treatment for all trademark owners under the use inquiry of the Lanham Act. As in United States law, the concept of use is a bedrock principle of Australian trademark law, and it is fair to say that under both systems trademarks are born from use.[107] Whilst both systems require use to a lesser or greater extent in order to maintain federal registration, and both adopt a measure of flexibility in analyzing this type of use, a comparison of use under both systems demonstrates that the differences are more than merely theoretical or academic.[108] The focus on the use being open and public is less pronounced under Australian trademark law. Additionally, in contrast to the United States, Australia mandates a minimal use standard in evaluating whether there has been sufficient use of the trademark.[109] In Australia, minor use will suffice to maintain a registration as long as it is genuine use. Put another way, genuineness trumps volume, resulting in a focus on use that is qualitative rather than quantitative.[110] The analysis of Clorox and Gameologist suggests that uniformity under the Act has not been achieved for certain trademark owners. The benefits that adoption of a broader use requirement may have can be seen when the outcomes for the plaintiffs in Clorox and Gameologist are analyzed under use concept standards akin to the standard in Australia. Under the Australian use standard, the outcomes would have been more favorable to the respective mark owners because the use demands placed on Australian trademark owners are modest in comparison to those placed on their American counterparts. Consequently, there is a need for legislative action to amend the use requirement to better protect trademark owners who are vulnerable under the current standard. Specifically, Congress should revise the Lanham Act, broadening the use requirement to bring it more in line with the less demanding standards of Australian trademark law.

A. Broadening the Use in Commerce Standard

If a broader use requirement is to be effective, any change should indicate the types of use that would qualify as sufficient to maintain federal registration. Looking to the Australian standard, a broader use inquiry should at least include use of a trademark by way of preparatory or other steps showing an objective commitment to using the trademark that meets the jurisdictional prerequisite that the use have the requisite effect on commerce.[111] Under such standard, there would be less emphasis on the use being open and public and greater weight placed on how that use has contributed to, and built, the mark owner’s brand. In order to demonstrate an objective commitment to using the trademark, this category of use may encompass circumstances where an owner has not yet sold or transported a good bearing the mark, but has gone beyond mere consideration of whether to use a mark and has taken objective steps to commit itself to using the mark, such as shipping parts of branded products or building brand awareness by way of preparatory activities.[112] In other words, use would be satisfied under this category where a mark owner could objectively demonstrate carrying its intention to use the mark into effect and such use has the necessary effect on interstate or foreign commerce.[113] For example, if a mark owner had committed itself by taking a number of steps, such as obtaining business cards, letterhead or signs bearing the mark and taken steps towards production, evidence of such activities would constitute an objective commitment to use the mark.[114] The benefits of the suggested statutory amendment can be readily seen when applicants, like the applicant in Clorox, is considered. Under the broader use standard, the applicant in Clorox could have maintained its registration, assuming the applicant was ready to manufacture its custom-made goods.[115] The combination of the advertising of the goods via the applicant’s website and shipping parts of its products across borders would suffice to constitute use under the “objective commitment to using the trademark” category. Opponents may argue that intent-to-use applications could be filed in circumstances where the applicant is in an industry where sales are infrequent.[116] But that argument simplifies the complexity of the matter. The current United States use inquiry does not take into account that, in some industries — especially those in which the products sold have high barriers to entry for the producer of the goods — an initial sale will be harder to obtain and the requirements for registration are thereby harder to satisfy. Additionally, arguing that an intent-to-use application could have been filed is not relevant to the continuous use issue because even if an applicant is able to obtain a sale or transportation of a good, it must continue to use the mark and have more than de minimis use in order to be considered use “in the ordinary course of trade.” Any potential issues that may arise from the proposed changes to a broader use standard are negligible compared to the inequities under the current use standard that permits trademarks whose owners have invested heavily in obtaining a sale to later be invalidated because the use was not good enough. While the current use standard may arguably promote competition by reserving registration only to those trademark owners who have made the best use of a trademark by way of an actual sale or transportation, this rationale works against trademark owners who have to invest in the trademark in order to obtain a sale. A legislative change to broaden the use standard would provide equal protection to trademark owners, irrespective of the ease or difficulty the owner has in obtaining a sale. Such a change would thereby offer greater certainty and predictability to business.

B. The Continuous Use Standard Should be Replaced By a Minimal Use Standard

In order to achieve uniformity under the Act’s use requirement, the more than de minimis use threshold encompassed within the “ordinary course” of a mark owner’s trade should be replaced with a standard of minimal, but bona fide, use that trademark owners can rely on in order to defend against invalidation of a federal registration. In order for a minimal use standard to be effective, the Act should adopt a qualitative, rather than quantitative, analysis that considers evidence of use of the mark after the initial sale. Such evidence may include the mark owner’s ongoing efforts to promote, advertise and market the goods and such use should suffice to create trademark rights if the use is bona fide. Although some case law indicates that registration may be upheld in spite of modest sales programs, that position is not consistently applied in the case law.[117] A lack of consistent subsequent sales after an initial sale should not be determinative of whether requisite use has been made of a mark. The courts should be instructed by legislation to consider other evidence of use including how much the business has spent on use of the mark, how many sales have been made, and what ongoing efforts the mark owner has made to promote and market the goods. Notwithstanding, use of the mark in advertising should be simultaneous with availability of the goods in the marketplace.[118] In other words, advertising alone should not constitute use, but advertising coupled with availability of the advertised goods for sale should suffice to create use so long as the use activities meet the jurisdictional prerequisite that have the requisite effect on commerce. An intermediate standard has been advanced by Gilson, who states that a more realistic inquiry would consider the “ordinary course” of the trademark owners own trade, not the industry in which the mark owner trades in.[119] Under Gilson’s inquiry, relevant considerations are size of the trademark owners business and the volume of products shipped.[120] Gilson elaborates using the following example: “[I]f Company A typically ships 5,000 cases of cola to distributors in a three-state area when launching a new brand, that level of activity should establish a trademark use standard for the company which it can refer to in filing affidavits in the Patent and Trademark Office.[121] The advantages of a minimal use threshold are apparent when considering plaintiffs like the plaintiff in Gameologist. Under a qualitative minimal use focus, which focuses on the bona fides of the transactions regarding the mark, the plaintiff in Gameologist would have maintained its registration as its initial documented sale of the board game, in addition to its substantial efforts to promote its branded goods (e.g., by way of manufacture of 500 products even though only four had been sold, online advertising and negotiations with licensees), would suffice to create the requisite rights. Critics may suggest that a minimal use approach would stem the incentive to compete embedded in the current use standard and that greater competition is fostered under the current standard by encouraging mark owners to establish themselves as quickly as possible. But this argument must be balanced against the fact that the current use standard systematically works against certain segments of the market, such as trademark owners who are small businesses or start-ups who are simply not able to quickly establish themselves. Adopting the minimal “single sale will suffice” standard of Australian law will allow American trademark owners a period of time after registration in which to establish and grow their business, without requiring immediate success judged by sales volume and significant advertising and marketing budgets. One benefit of this type of qualitative approach is that it fosters greater inclusiveness, which would better encompass the vast cross-section of commercial enterprises within the American landscape. It also means fewer federal registrations would be invalidated. Additionally, this type of approach would provide greater certainty to all trademark owners as businesses would be able to invest in a mark with greater certainty in knowing quality of use, not quantity, is the yardstick upon which a federal registration is measured. A legislative change to a qualitative, bona fide, minimal use focus thereby fosters greater equality.

Conclusion

It is time for Congress to empower “weaker” trademark owners by way of added protections to the Lanham Act that achieve greater uniformity in the application of the use requirement. In doing so, Congress would finally provide protection to trademark owners whom the Act, as currently written, denies. In order to ensure the Act’s use requirement is uniform in its application, Congress should amend the Act to broaden the nature of the activities that constitute use and ensure the use inquiry is a qualitative analysis that explicitly includes bona fide but minimal use. The current use requirement is unpredictable and blurry, given that what constitutes a de minimis quantum of use is ultimately at the court’s discretion and is not readily predictable by market participants. The regularity of federal cases litigating the use issue can be explained by the lack of a bright-line rule specifying what types of activity, and what quantum of use, will satisfy the use threshold. Without any change or development in the law, one can expect that actions will continue to saturate the courts. By broadening and clarifying the use provision — including specifying that certain pre-sales activity constitutes use and loosening the quantum of use standard — Congress can keep countless lawsuits from the federal court system while strengthening the underlying spirit of the Act.

* LL.M Candidate, New York University School of Law, 2014, LL.B (Hons), Queensland University of Technology, 2008. Special thanks to the NYU JIPEL Editorial Board, particularly Senior Notes Editor Lin Weeks, for his insightful comments and diligence. Lastly, thank you to my husband, Jay McDowall, for his boundless patience and support.
[1] See, e.g., Menashe v. V. Secret Catalogue, Inc., No 05 Civ. 239 (HB), 2005 U.S. Dist. LEXIS 13324, at *18 (S.D.N.Y. July 7, 2005) (“‘Use it or lose it’ is a fundamental precept of trademark law.” (citing Capitol Records, Inc. v. Naxos of Am., Inc., 262 F. Supp. 2d 204, 211 (S.D.N.Y. 2003); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312 (C.C.P.A. 1976))). Another old adage is “no trade — no trademark.” See La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274 (2d Cir. 1974); Lucent Info. Mgmt. v. Lucent Techs., Inc., 186 F.3d 311, 319 (3d Cir. 1999) (“It is axiomatic that if there is ‘no trade — no trademark.’ ” (quoting id. at 1274)).
[2] See Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009) (“Despite the seeming harmony and simplicity in the application of the use requirement to trademarks . . . opportunity exists for confusion in this area of the law.”); cf. Zazu Designs v. L’Oreal S.A., 979 F.2d 499, 503 (7th Cir. 1992) (“Use is neither a glitch in the Lanham Act nor a historical relic.”).
[3] In this paper, all iterations of the phrase “use in commerce” whether in the form of a noun (a “use in commerce”), a verb (“to use in commerce”), or adjective (“used in commerce”), are intended, without distinction, as instances of that phrase. The “use in commerce” requirement is also referred to as the “use issue,” the “use requirement,” the “use standard,” or the “use inquiry” in this note.
[4] The concept of “use in commerce” is also relevant to whether a trademark has been used in the relevant sense with respect to services, as distinct from physical goods. See, e.g., Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254, 267 (2d Cir. 2011) (“Due to the different nature of the marks, ‘use in commerce’ is defined differently for trademarks and service marks.” (citing 15 U.S.C. § 1127)). For the purpose of brevity, this note limits the discussion to “use in commerce” that is necessary to support an application for trademark registration in connection with goods.
[5] Avakoff v. Southern Pacific Co., 765 F.2d 1097, 1098 (Fed. Cir. 1985) (adopting the following two-part test for use necessary for registration: “(1) Was the application upon which the registration application was founded bona fide; and (2) if [so], was it followed by activities proving a continuous effort to use the mark.”). For more recent support of the two-part test, see Chance v Pac-Tel Teletrac Inc., 242 F.3d 1151, 1157 (9th Cir. 2001) and Dep’t of Parks & Rec. v. Bazaar Del Mundo, Inc., 448 F.3d 1118, 1125–26 (9th Cir. 2006).
[6] See, e.g., Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d 1768, 1774 (T.T.A.B. 1994) (finding that where a game was distributed on a less-than-commercial scale at a de minimis volume to promote a musical group, the mark was not eligible for register).
[7] See, e.g., Le Blume Imp. Co. v. Coty, 293 F. 344, 351 (2d Cir. 1923) (holding that “[a] casual sale or a casual importation does not establish or create a market, within the rule that a trader can protect his trade-mark or trade-name in the markets in which he sells, and prevent another trader from adopting the same trade-mark or trade-name in that territory”). The holding in Le Blume resulted in occasional importations of the perfume being considered too infrequent with the result that the mark owner was not entitled to trademark protection.
[8] The Clorox Co. v. Salazar (Clorox), 108 U.S.P.Q.2d (BNA) 1083 (T.T.A.B. 2013). The Trademark Trial and Appeal Board is referred to as “the Board” throughout this note.
[9] Gameologist Group, LLC, v. Scientific Games Int’l, Inc., 838 F. Supp. 2d 141 (S.D.N.Y. 2011).
[10] The Lanham Act will be referred to as “the Act” throughout this note.
[11] See, e.g., Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 413 (1916) (“[T]he right grows out of use, not mere adoption.”). For more recent pronouncements of this statement, see Aycock Eng’g, 560 F.3d at 1358 (“[M]ere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of . . . the mark.” (quoting Intermed Commc’ns, Inc. v. Chaney, 197 U.S.P.Q. 501, 507–08 (T.T.A.B. 1977))); Int’l Bancorp, LLC v. Societe Des Bains De Mer Et Du Cercle Des Etrangers a Monaco, 329 F.3d 359, 364 (4th Cir. 2003) (“[T]he right to a particular mark grows out of its use, not its mere adoption.” (quoting United Drug Co. v. Theodore Rectanus, Co., 248 US 90, 97 (1918))).
[12] Lanham Act § 1, 15 U.S.C. § 1051(a) (“Application for use of trademark … the owner of a trademark used in commerce may register his trademark. . . .” (emphasis added)); see, e.g., Rescuecom Corp. v. Google, Inc., 562 F.3d 123, 133 (2d Cir. 2009) (stating that “[§ 1] sets the standards and circumstances under which the owner of a mark can qualify to register the mark and to receive the benefits and protection provided by the Act”) (emphasis omitted).
[13] Allard Enters. v. Advanced Programming Res., Inc., 146 F.3d 350, 356 (6th Cir. 1998) (“One of the bedrock principles of trademark law is that trademark . . . ownership is not acquired by federal . . . registration. Rather, ownership rights flow only from prior appropriation and actual use in the market.” (quoting Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100 (6th Cir. 1991)) (internal quotations marks omitted)); S Indus., Inc. v. Diamond Multimedia Sys., Inc., 991 F. Supp. 1012, 1018 (N.D. Ill. 1998) (“Trademark rights are acquired by adoption and use, not by registration.”); Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir. 1975) (“[C]onception of the mark, . . . [does not] establish[] trademark rights.”).
[14] See, e.g., In re Compagnie Generale Mar., 993 F.2d 841, 854 (Fed. Cir. 1993) (“[U]se in commerce . . . is essential to obtain a federal registration of a mark.”).
[15] Aycock Eng’g, 560 F.3d at 1357 (“The registration of a mark that does not meet the use requirement is void ab initio.” (citing Gay Toys, Inc. v. McDonald’s Corp., 585 F.2d 1067, 1068 (CCPA 1978))). “Void ab initio” means “[n]ull from the beginning.” Black’s 1064 (8th ed. 2004); see also Premier Pool Mgmt. Corp. v. Lusk, No. CIV S-11-2896 GEB CKD, 2012 U.S. Dist. LEXIS 63350, at *15 (E.D. Cal. May 3, 2012) (“The registration of a mark that does not meet the use requirement is void ab initio.” (quoting Quia Corp v. Mattel, Inc., No. C 10-1902 JF (HRL), 2011 U.S. Dist. LEXIS 76157, at *10 (N.D. Cal. Jul. 14, 2011))).
[16] Lanham Act § 45, 15 U.S.C. § 1127 (“Use in Commerce”); see Aycock Eng’g, 560 F.3d at 1357 (stating that “[f]or trademarks, the use in commerce requirement is met when a mark is (1) placed on the good or container, or on documents associated with the goods if the nature of the goods makes placement on the good or container impracticable, and (2) that good is then sold or transported in commerce” (internal quotation marks omitted)).
[17] Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935 (effective November 16, 1989) (codified at 15 U.S.C. § 1127 (2006)). The Trademark Law Revision Act of 1988 is referred to as “the TRLA” in this note.
[18] Id. The change to a bona fide use standard has been described as a “stricter” standard. See Allard, 146 F.3d at 357 (explaining that the purpose of the amended standard “was to eliminate token use as a basis for registration, and that the stricter standard contemplates instead commercial use of the type common to the particular industry in question.” (quoting Paramount Pictures, 31 U.S.P.Q.2d at 1774), aff’d, 108 F.3d 1392 (Fed. Cir. 1997)); Chance, 242 F.3d at 1157 (referring to the use standard implemented in 1988 as a “stricter standard”).
[19] Aycock Eng’g, 560 F.3d at 1357 (internal quotation marks omitted); see also Automedx Inc. v. Artivent Corp., 95 U.S.P.Q.2d 1976, at *5 (T.T.A.B. 2010) (explaining that token sales are “artificially made solely to reserve a right in a mark and not made as part of a usual product or service launch” (quoting McCarthy On Trademarks And Unfair Competition § 19:109 (4th ed. 2010))).
[20] See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1199 n.17 (11th Cir. 2001) (“The reason ‘token use’ was expressly eliminated was that the [Trademark Law] Revision Act had created an ‘intent-to-use’ application system that rendered such a ‘commercial sham’ unnecessary.” (citing 134 Cong. Rec. 32,053 (Oct. 20, 1988) (Sen. DeConcini))).
[21] NetJets Inc. v. IntelliJet Group, LLC, No. 15a0138n.06, 2015 U.S. App. LEXIS 2621, at *7 (6th Cir. 2015) (“The requirement that the use in commerce be a bona fide use . . . in the ordinary course of trade . . . requires that the goods or services have been used in a way which is typical in a particular industry . . . .” (internal quotation marks omitted)); Chance, 242 F.3d at 1157 (“[B]ecause token use is not enough, mere adoption of a mark without bona fide use, in an attempt to reserve it for the future, does not create trademark rights.”) (internal quotation marks omitted) (citation omitted); see also Allard, 146 F.3d at 357.
[22] For example, analysis of use is also required when the parties are in a priority dispute. In such disputes, each party is attempting to persuade the trier of fact that it was the first to use the trademark, and is therefore the rightful owner. The standard of use, in addition to the type and quantum of evidence of use that is considered when the court is adjudicating a priority dispute, is different than the use analysis regarding registration use. See, e.g., Allard, 146 F.3d at 358 (holding, in relation to a priority dispute, that “ownership may be established even if the first uses are not extensive and do not result in deep market penetration or widespread recognition.”); Sheila’s Shine Prods., Inc. v. Sheila Shine, Inc., 486 F.2d 114, 123 (5th Cir. 1973) (holding that a low volume of door-to-door sales of goods over ten years was sufficient to establish priority, reasoning that “the mere fact that a business is small and its trade modest does not necessarily militate against its . . . acquiring goodwill and rights in a trademark.”). Additionally, use is also relevant when a trademark owner alleges infringement of its mark but the use analysis regarding alleged infringement by a defendant is entirely different. See, e.g., Rescuecom, 562 F.3d at 133 (noting that “The Act employs the term ‘use in commerce’ in two very different contexts . . . . The first . . . sets the standards . . . under which the owner of the mark can qualify to register the mark . . . [The second] appears as part of the Act’s definition of reprehensible conduct, i.e., the conduct which the Act identifies as infringing of the rights of the trademark owner . . . .”).
[23] See Avakoff, 765 F.2d at 1098, see also Chance, 242 F.3d at 1157 and Dep’t of Parks & Rec., 448 F.3d at 1125–26 (9th Cir. 2006).
[24] Lanham Act § 45, 15 U.S.C. § 1127(1); see also Kelly-Brown v. Winfrey, 717 F.3d 295, 305 (2d Cir. 2013) (stating the “use in commerce” definition and the affixation requirement under § 1127(1) and holding that “the use in commerce requirement . . . is satisfied if the mark is affixed to the goods in any manner.”) (internal quotation marks omitted).
[25] See Rescuecom, 562 F.3d at 135 (discussing and describing the new requirement as “less complicated” and “more accommodating”).
[26] Lanham Act § 45, 15 U.S.C. § 1127(1)(A). Section 45 of the Act states that a mark is deemed to be used in commerce on goods when “it is placed in any manner on the goods . . . .” See, e.g., Blue Bell, 508 F.2d at 1267 (holding that “[e]lementary tenets of trademark law require that labels or designs be affixed to the merchandise actually intended to bear the mark in commercial transactions”).
[27] Lanham Act § 45, 15 U.S.C. § 1127(1)(A).
[28] See, e.g., Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332, 335 (1st Cir. 2004) (stating that “transportation” requires “open and public use before customers” and that “courts . . . require[] an element of public awareness of the use.”) (citing New England Duplicating Co. v. Mendes, 190 F.2d 415, 418 (1st Cir. 1951) (“[U]se in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind . . . is competent to establish ownership, . . . .”); Dynamet Technology, Inc. v. Dynamet Inc., 197 U.S.P.Q. (BNA) 702, 705–06 (T.T.A.B. 1977) (“[U]se must be open and notorious public use directed to the segment of the purchasing public for whom the [products] are intended.”), aff’d, 593 F.2d 1007, 201 U.S.P.Q. (BNA) 129 (1979); Chere Amie, Inc. v. Windstar Apparel, Corp., No. 01 Civ. 0040 (WHP), 2002 U.S. Dist. LEXIS 4950, at *17 (S.D.N.Y. Mar. 25, 2002) (holding that an intra-company shipment is devoid of the requisite open and public use before customers).
[29] See, e.g., Smith International, Inc. v. Olin Corp., 209 U.S.P.Q. 1033, at *10 (T.T.A.B. 1981) (holding that “use of a mark must be open and notorious so that the purchasing public for whom the goods are intended are aware of the availability of the goods and aware of use of the mark . . . .” (emphasis added) (citing Bellanca Aircraft Corporation v. Bellanca Aircraft Engineering, Inc., 190 U.S.P.Q. 158 (T.T.A.B. 1976)).
[30] Mystique, Inc. v. 138 Int’l, Inc., 375 F. App’x 997, 999 (11th Cir. 2010) (quoting Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1196 (11th Cir. 2001)).
[31] Another example of circumstances in which a sale or transportation has not satisfied the requirements of the Act is Jaffe v. Simon & Schuster, Inc., No. 86 Civ. 1577 (GLG), 1987 U.S. Dist. LEXIS 14902, at *46 (S.D.N.Y. Feb. 3, 1987) (internal nominal sales of goods to friends and relatives).
[32] Blue Bell, Inc. v. Jaymar-Ruby, Inc., 497 F.2d 433, 437 (2d Cir. 1974) (recognizing that a number of courts have accepted “a minimal amount of interstate commerce — either a sale or transportation — will suffice [to satisfy the trademark laws]”).
[33] S Indus., Inc. v. Stone Age Equip., Inc., 12 F. Supp. 2d 796, 808 (N.D. Ill. 1998) (holding that a single use of the mark on the goods was insufficient where“[t]here is no evidence that this [single use] was followed by active use that allows consumers to associate a mark with particular goods . . . .” (internal quotations marks omitted)).
[34]La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271–72 (2d Cir. 1974) (holding that “[t]o prove bona fide usage, the proponent of the trademark must demonstrate that his use of the mark has been deliberate and continuous . . . .”); Momentum Luggage & Leisure Bags v. Jansport, Inc., No. 00 CIV. 7909 (DLC), 2001 U.S. Dist. LEXIS 10253, at *21 (S.D.N.Y. July 23, 2001).
[35] White v. Paramount Pictures Corp., 108 F.3d 1392, at *2 (Fed. Cir. 1997) (stating that “[t]he legislative history of the [] Act is instructive as to the quantum of use required for registration.”).
[36] S. Rep. No. 100-515, 100th Cong., 2d Sess. at 44 (Sept. 15, 1988); see also White, 108 F.3d at *3 (citing the Senate Report in determining the required quantum of “use in commerce” under the Act).
[37] S. Rep. No. 100-515 (Sept. 15, 1988); H. Rep. No. 100-1028, 100th Cong., 2d Sess. at 15 (Oct. 3, 1988).
[38] S. Rep. No. 100-515 at 44 (Sept. 15, 1988).
[39] Id. at 45.
[40] A search of cases in Lexis that contain the phrase “interrupted due to special circumstances” generates only two case references: FN Herstal, S.A. v. Clyde Armory, Inc., No. 3:12-CV-102 (CAR), 2015 U.S. Dist. LEXIS 4310, at *27 n.98 (M.D. Ga. Jan. 8, 2015) and Electro Source, LLC v. Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931, 940 (9th Cir. 2006).
[41] Casual Corner Assoc., Inc. v. Casual Stores of Nevada, Inc., 493 F.2d 709, 712 (9th Cir. 1974). For more recent pronouncements of this statement, see, Neurovision Med. Prods. v. NuVasive, Inc., 494 F. App’x 749, 751 (9th Cir. 2012) (quoting Casual Corner, 493 F.2d at 712); Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 762 (9th Cir. 2006).
[42] Planetary Motion, 261 F.3d at 1196 (“In general, uses that are de minimis may not establish trademark ownership rights.”); Allard, 146 F.3d 350 at 359 (“Trademark rights are not created by sporadic, casual, and nominal shipments of goods bearing a mark.” (quoting La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274 (2d Cir. 1974)); Major League Baseball Properties, Inc. v. Opening Day Prods., 385 F. Supp. 2d 256, 265 (S.D.N.Y. 2004) (“[U]se of the mark . . . [must be] deliberate and continuous, not sporadic, casual or transitory.” (quoting La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271 (2d Cir. 1974))); Larsen v. Terk Techs. Corp., 151 F.3d 140, 146 (4th Cir. 1998).
[43] Chere Amie, 2002 U.S. Dist. LEXIS 4950 at *12 (“Whether a trademark has been used in commerce is a question to be determined on a case by case basis, considering the totality of the circumstances surrounding the alleged use of the mark.”) (citing Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 433 (7th Cir. 1999)).
[44] No. 00 CIV. 7909 (DLC), 2001 U.S. Dist. LEXIS 10253 (S.D.N.Y. July 23, 2001).
[45] 293 F. 344, 351 (2d Cir. 1923).
[46] 110 U.S.P.Q. 142 (Comm’r of Patents 1956).
[47] 121 U.S.P.Q. 102 (T.T.A.B. 1959).
[48] 251 F. Supp. 362 (E.D. Va. 1965), aff’d, 401 F.2d 179 (4th Cir. 1968).
[49] 311 F. Supp. 1261, 1270 (S.D.N.Y. 1969).
[50] 495 F.2d 1265, 1272 (2d Cir. 1974).
[51] 31 U.S.P.Q.2d 1768, 1774 (T.T.A.B. 1994).
[52] 915 F. Supp. 639 (S.D.N.Y. 1996).
[53] 991 F. Supp. 1012, 1019 (N.D. Ill. 1998).
[54] 186 F.3d 311 (3d Cir. 1999).
[55] 188 F. Supp. 2d 1369, 1378 (S.D. Ga. 2002).
[56] Momentum Luggage, 2001 U.S. Dist. LEXIS 10253, at *21 (emphasis added).
[57] Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481, 486 (7th Cir. 2007).
[58] See Anne Gilson Ladonde, Gilson on Trademarks § 3.02[9] (“As more and more bona fide public trademark use is made and increasing sales and advertising under the mark show a degree of consumer acceptance, legal rights become stronger and stronger.”).
[59] Id.
[60] See, e.g., Chance, 242 F.3d at 1157 (holding that “where a mark has been placed on goods, a single sale or shipment may be sufficient to support an application to register the mark, providing that [the] shipment or sale . . . is accompanied . . . by activities which . . . tend to indicate a continuing effort or intent to continue such use and place the product on the market on a commercial scale within a time demonstrated to be reasonable in the particular trade.” (citing Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1472–74 (Fed. Cir. 1987))); Custom Vehicles, 476 F.3d at 485–86; Chere Amie, 2002 U.S. Dist. LEXIS 4950, at *11–12.
[61] White, 108 F.3d at *2 (“This court has yet to set any bright line rules concerning the quantum and nature of use necessary to constitute an ‘ordinary use in trade’ under the . . . Act.”).
[62] See, e.g., Electro Source, LLC v. Brandess-Kalt-Aetna Grp., 458 F.3d 931, 940 (9th Cir. 2006) (“Evaluating whether a use is in ‘the ordinary course of trade’ is often an intensely factual undertaking.”); Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 433 (7th Cir. 1999) (“The determination of whether a party has established protectable rights in a trademark is made on a case by case basis, considering the totality of the circumstances.”) (citing New West Corp. v. NYM Co. of Cal., Inc., 595 F.2d 1194, 1200 (9th Cir. 1979) cert. denied, 528 U.S. 1188 (2000).
[63] Clorox, 108 U.S.P.Q.2d at *8.
[64] Id. at 2.
[65] Id. at 2–4.
[66] Id. at 5.
[67] Id.
[68] Id. at 5–6.
[69] Clorox, 108 U.S.P.Q.2d at *5–6.
[70] Id. at 9.
[71] Id. (internal quotation marks omitted).
[72] Id.
[73] Id. at 9–10.
[74] Id. at 10.
[75] Clorox, 108 U.S.P.Q.2d at *11.
[76] Referred to in this note as the “bling mark.”
[77] Gameologist, 838 F. Supp. 2d at 149.
[78] Id. at 149, 153 n.4. As the trademark application filed by the plaintiff was an intent-to-use application, the plaintiff divided its application so a registration would issue for the bling mark in relation to board games. As such, no trademark registration was obtained for the bling mark in relation to “lottery tickets.”
[79] Id. at 147. The plaintiff also sued for a variety of related claims including false designation of origin, unfair competition and false advertising under the Lanham Act. The plaintiff alleged claims under New York common law for unfair competition, passing off, breach of contract, unjust enrichment and quantum meruit.
[80] Id. at 152–54. To succeed on a federal claim for trademark infringement the plaintiff must establish that “(1) it has a valid mark that is entitled to protection under the Lanham Act; and that (2) the defendant used the mark, (3) in commerce, (4) in connection with the sale . . . or advertising of goods or services, 15 U.S.C. § 1114(1)(a), (5), without the plaintiff’s consent.”1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 406–07 (2d Cir. 2005) (internal quotation marks omitted) (citing Time, Inc. v. Petersen Publ’g Co., 173 F.3d 113, 117 (2d Cir. 1999)); see also Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997). Only element one has been discussed as the remaining elements are not relevant to the use requirement which is the focus of this paper.
[81] Gameologist, 838 F. Supp. 2d at 151.
[82] Id.
[83] Id.
[84] Id.
[85] Id. at 155.
[86] Id. at 147.
[87] Gameologist, 838 F. Supp. 2d at 155–56.
[88] Id. at 155 (emphasis added).
[89] Id.
[90] Id.
[91] Id. at 156.
[92] Id.
[93] As noted earlier in this paper, the Board stipulated “sales” must still be made, stating that the “Applicant’s position is in conflict with the clear and plain statutory definition of use in commerce.” Clorox, 108 U.S.P.Q.2d at *9 (internal quotation marks omitted); see also Scorpiniti v. Fox TV Studios, Inc., 918 F. Supp. 2d 866 (N.D. Iowa 2013) (“The language of the statute . . . makes plain that advertisement and actual use of the mark in commerce are required . . . .” (quoting Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1360 (Fed. Cir. 2009))).
[94] Id. at 9–10.
[95] See Rescuecom Corp. v. Google, Inc., 562 F.3d at 133, supra note 12.
[96] But cf. Zazu Designs v. L’Oreal S.A., 979 F.2d 499, 503 (7th Cir. 1992) (stating that “[c]ourts have read ‘used’ in a way that allows firms to seek protection for a mark before investing substantial sums in promotion.”). Zazu Designs then cites to a 1968 pre-TRLA decision, Fort Howard Paper Co. v. Kimberly-Clark Corp., 390 F.2d 1015 (CCPA 1968), in support of this proposition.
[97] S. Rep. 100-515, 100th Cong., 2d Sess., p 44 (Sept. 15, 1988); see also Part I of this note which discusses the legislative history in more detail.
[98] See Part I of this note.
[99] Cf. Bell v. Streetwise Records, Ltd., 640 F. Supp. 575, 580 (D. Mass. 1986) (stating in relation to trademark use, albeit in a priority dispute, that “[I]t is not required that a product be an instant success the moment it hits the market, [but] its usage must be consistent with a present plan of commercial exploitation.” (internal quotation marks omitted) (quoting La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1273 (2d Cir. 1974))).
[100] Gameologist, 838 F. Supp. 2d at 155.
[101] See White, 108 F.3d at *2
[102] See Kathreiner’s Malzkaffee v. Pastor Kneipp Medicine Co., 82 F. 321, 326 (7th Cir. Ill. 1897) (“[I]t is . . . not necessary, . . . that a trade in an article should be fully established, in the sense that the article be widely known, . . . . Otherwise it might be impossible, with respect to a valuable and desirable article or product of manufacture, designated by a particular brand or in a particular manner, ever to establish a trade.”).
[103] Gilson Ladonde, supra note 60, at§ 3.02[8][b][ii] (discussing the commercial use standard).
[104] Id.
[105] Id.
[106] Id.
[107] In Australia, the word trademark is spelled as two words, “trade mark.” See Trade Marks Act 1995 (Cth) (Austl.). For the purposes of consistency, the author has used the American spelling throughout this note.
[108] For example, in Australia the meaning of “trade” encompassed in the phrase “use in the ordinary course of trade” has a much wider meaning than the sale or transportation requirement under the “use in commerce” definition. See, e.g. Angela Christou v Tonch Pty Ltd [2008] ATMO 24, 22 (“The term ‘trade’ . . . is undoubtedly a wide one. It encompasses a wider range of commercial transactions than the actual sale and purchase of marked goods.” (quoting Oakley Inc v Franchise China Pty Ltd [2003] FCA 105; (2003) 58 IPR 452, 459)); Moorgate Tobacco Co. Limited v Philip Morris Limited and Another, [1983-1984] 156 CLR 414, 433 (“it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.”); Malibu Boats West Inc v Catanese [2000] FCA 1141, [27] (“While the mark must be used for the purpose of indicating a connection in the course of trade, this does not mean that any actual trade or dealing in the goods is required.”).
[109] See, e.g., Angela Christou [2008] ATMO 24, 22 (holding that use will “probably amount” to trademark use where a mark owner demonstrates that “it is committed to supplying marked goods to persons prepared to purchase them, activities preliminary to the actual commencement of selling the goods, such as the distribution of marked samples and marked brochures to agents, so that they could show them to prospective customers in soliciting business . . . .” (quoting Oakley, Inc. v Franchise China Pty Ltd (2003) 58 IPR 452, 459)).
[110] Australian courts having consistently held for decades that very minimal use of the trademark is required to prove use under Australian law. See, e.g., Re New Atlas Rubber Co. (1918) 35 RPC 269; Seven-up Co. v. O.T. Ltd (1947) 75 CLR 203, 211; Aston v. Harlee Manufacturing Co. (1960) 103 CLR 391, 400; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 600.
[111] Buying Systems (Aust) Pty Ltd v Studio SrL [1995] FCA 1063; Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, 40.
[112] In order to fit within this category of use, the approach taken by courts in Australia is that a mark owner must have gone beyond simply considering or investigating whether to use a trademark and must have carried its intention to use the mark into effect. See Woolly Bull Enterprises, [2001] FCA 261, 40 (“[T]he owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.”).
[113] In Woolly Bull Enterprises, the court held “[T]he owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.” [2001] FCA 261, 40.
[114] For an example of a case that found that conduct fell within this category, see Buying Systems, [1995] FCA 1063. In Buying Systems, the mark owner had applied for a trademark in respect of magazines. Evidence was filed showing the mark owner had obtained business cards and letterheads bearing the mark and that it had solicited third parties to advertise in the magazine. Although these activities could not constitute a sale of the goods, the activities were held to demonstrate an objective commitment to use the trademark.
[115] This is assuming the applicant in Clorox was ready to accept an order to build one of its custom-made products. The decision did not specifically discuss this issue, but there is nothing in the decision to suggest otherwise.
[116] An intent to use application is based on an applicant’s intent to use the mark at a future date. Lanham Act § 1(b), 15 U.S.C. § 1051(b).
[117] See, e.g., La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1272 (2d Cir. 1974) (“It is true, . . . that trademark rights have often been upheld in spite of modest sales programs . . . [where] the trademark usage, although limited [is] part of an ongoing program to exploit the mark commercially.” (internal citations omitted)).
[118] The approach taken by courts in Australia is that use of a trademark in advertising must be concurrent with the placing of the goods on the market. See, e.g., John Toh v Paris Croissant Co. Ltd [2010] ATMO 34, 11 (“An advertisement on its own does not amount to trade mark use but may amount to preparations for use if the [goods] are concurrently available.”).
[119] Gilson Ladonde, supra note 60, at§ 3.02[8][b][ii] (discussing the commercial use standard).
[120] Id.
[121] Id.

Amicus Brief of the Electronic Frontier Foundation and the ACLU of Virginia in Radiance Foundation, Inc. v. NAACP

Amicus Brief of the Electronic Frontier Foundation and the ACLU of Virginia in <em>Radiance Foundation, Inc. v. NAACP</em>
By Eugene Volokh* and Mairead Dolan** Download a PDF version of this article here.  

Summary of Argument[1]

People often use the names of organizations, celebrities, and trademarked products, to comment on them, critique them, parody them, review their work, and more. A director might make a movie about fictional dancers who imitate Fred Astaire and Ginger Rogers, and call it “Ginger and Fred.”[2] A musical group might write a song mocking Barbie and call it “Barbie Girl.”[3] Some might condemn the NRA by saying that it stands for “Next Rifle Assault” or “National Republican Association.”[4] Others might criticize NBC by saying that it stands for “Nothing But Caucasians,”[5] or the ACLU by saying that it stands for “Anti-Christian Lawyers Union.”[6] Still others might do what Radiance did here: criticize the NAACP by saying that it stands for “National Association for the Abortion of Colored People,”[7] on the theory that the NAACP “has publicly supported Planned Parenthood numerous times,” has “fought to prevent the abortion chain from being defunded while simultaneously fighting to ensure a massive influx of funding for its beloved ally (and annual convention sponsor),” and has otherwise allied itself with Planned Parenthood.[8] Courts have recognized that such speech is constitutionally protected, even when there is a risk that some people might be briefly confused about the source of the speech. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), and Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), for instance, held that using a trademark in an artistic or political work’s title does not violate the Lanham Act unless the use “has no . . . relevance to the underlying work whatsoever.” Rogers, 875 F.2d at 999; Mattel, 296 F.3d at 902. The risk of some consumer confusion, the courts concluded, cannot outweigh the speaker’s First Amendment right to freedom of expression. Likewise, Radiance’s criticism of the NAACP contained in post titles is constitutionally protected. Such uses of trademarks also do not constitute trademark dilution. Title 15 U.S.C. §1125(c)(3) expressly excludes “noncommercial use[s] of a mark” from the dilution cause of action; as Mattel noted, this exclusion protects all uses other than “commercial speech” (i.e., commercial advertising). Mattel, 296 F.3d at 905-06. That the Barbie Girl song involved in Mattel was aimed at making money did not make it a “commercial use” for dilution law purposes. Similarly, that Radiance’s Web site is aimed partly at making money—a property the site shares with nearly all newspapers, magazines, books, movies, and other fully protected materials—does not make Radiance’s political commentary “[c]om­mercial use of a mark” under §1125(c)(3). The district court therefore erred in accepting the NAACP’s trademark infringement and trademark dilution theories. Amici ask this Court to reverse and to hold that Radiance should have been granted a declaratory judgment that its posts were not infringing.

Argument

I. Radiance’s Use of the Term “NAACP” in an Article Title Was Not Infringing on a Confusion Theory

In talking about people, organizations, and products—including talking about them using speech that makes the speaker money—critics and commentators often use trademarks, sometimes in ways that mock or condemn the target. Such speech might also include statements that are facetious, but that help convey the desired message. NRA, the initials of the pro-gun-rights group, actually stand for National Rifle Association, but the mocking label “the National Republican Association” helps the critic express what he views as the organization’s true nature.[9] Such uses of a name might sometimes briefly confuse a handful of listeners. A reader unfamiliar with the organization may mistakenly believe that NRA indeed stands for “National Republican Association,” that the ACLU indeed stands for the “Anti-Christian Lawyers Union,” or that the NAACP is indeed endorsing the abortion of African Americans. But the law cannot undermine the freedom of speech simply because a few people make a mistake. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), and Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), make clear that such uses of trademarks in titles are not actionable even when some viewers are likely to be confused. In Rogers, a filmmaker was sued by Ginger Rogers for his use of the film title “Ginger and Fred.” The film was not about Rogers and her film partner, Fred Astaire, but about two other dancers who imitated the duo onstage. Id. at 996-97 Rogers argued that potential viewers might well be confused by the reference, and might mistakenly believe that Rogers or Astaire had endorsed the film. Id. And indeed it is possible that some viewers might have bought tickets to the film because they believed it to be so endorsed, or at least more directly connected to Rogers’ and Astaire’s lives. Yet despite survey evidence showing likely confusion and evidence of actual confusion, Rogers, 875 F.2d at 1001, the court found that the defendant had not violated the Lanham Act. Id. at 997. The court held that, “in the context of allegedly misleading titles using a celebrity’s name,” there is no Lanham Act violation “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some relevance, unless the title explicitly misleads as to the source or content of the work.” Id. at 999. And the court concluded that, as to Ginger and Fred, “the consumer interest in avoiding deception is too slight to warrant application of the Lanham Act.” Id. at 1000. The Rogers approach was adopted by Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), which dealt with a Lanham Act claim based on a musical group’s song called “Barbie Girl.” Mattel, the owner of the “Barbie” trademark, sued the record company for trademark dilution and infringement. The court disagreed, concluding that, “when a trademark owner asserts a right to control how we express ourselves,” “applying the traditional test fails to account for the full weight of the public’s interest in free expression.” Id. at 900. And the court concluded that letting trademark claims trump free speech rights was especially inappropriate when the use was a title. “A title is designed to catch the eye and to promote the value of the underlying work. Consumers expect a title to communicate a message about the book or movie, but they do not expect it to identify the publisher or producer.” Id. at 902. Therefore, the court held, “literary titles do not violate the Lanham Act ‘unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.’” Id. (quoting Rogers, 875 F.2d at 999). The court concluded that the use of “Barbie” in the title was not enough to satisfy the “explicitly misleads as to the source or the content” test; “if this were enough to satisfy this prong of the Rogers test, it would render Rogers a nullity.” Id. at 902. As in Mattel, Radiance used a trademarked term in the course of criticizing it. The trademark was used in the title of a work and was directly related to the article itself. Just as “[t]he song [Barbie Girl] does not rely on the Barbie mark to poke fun at another subject but targets Barbie herself,” Mattel, 296 F.3d at 901, so the Radiance articles did not rely on the NAACP mark to criticize another subject, but targeted the NAACP itself. As in Mattel, there is the possibility that some people might be confused by the title’s reference. But, as Mattel and Rogers show, that possibility cannot suffice to trump Radiance’s First Amendment rights, given the importance of the right to refer to, comment on, or criticize famous organizations, people, and products. E.S.S Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir 2008), likewise followed the Rogers test. In E.S.S. Entertainment, a video game set in East Los Angeles portrayed a strip club that was clearly representative of the plaintiff’s club; the club owner sued the video game creator for trademark infringement. As in Mattel and Rogers, the court concluded that artistic or political use of a trademark will not violate the Lanham Act so long as “the level of relevance [to the underlying work is] merely . . . above zero.” Id. at 1100. And though “the Game is not ‘about’ the [club] the way that Barbie Girl was about Barbie,” the court held, “given the low threshold the Game must surmount, that fact is hardly dispositive.” Id. Because the neighborhood that the game was trying to recreate was “relevant to Rockstar’s artistic goal,” Rockstar had the right to “recreate a critical mass of the businesses and buildings that constitute it” by “includ[ing] a strip club that [was] similar in look and feel” to the plaintiff’s club. Id. As with the defendants’ speech in Rogers, Mattel, and E.S.S. Entertainment, Radiance’s use of NAACP’s trademark in the title of an article was directly relevant to the article’s political goal and did not explicitly mislead as to the source or content of the article. At most it led some people to briefly misunderstand what “NAACP” stood for—but the risk of misunderstanding the title was present in Rogers and Mattel as well, and the Second and Ninth Circuits held that this risk was not enough to justify restricting defendants’ speech. Rogers, Mattel, and E.S.S. Entertainment show that the First Amendment broadly protects cultural reference, commentary, criticism, and parody, including when such speech uses another’s trademark. The district court thus erred in viewing the possibility of some consumer confusion as trumping Radiance’s free speech rights. The district court likewise erred in admitting the expert report presented by NAACP, given that, under these precedents, the report’s assertions are irrelevant. And the Second and Ninth Circuit’s analyses in Rogers, Mattel, and E.S.S. Entertainment are sound. To be sure, in any group of potential viewers or listeners, some people might not think hard about what is being said and might thus reach the wrong conclusion. But in most situations, a brief further review will clear things up. “[M]ost consumers are well aware that they cannot judge a book solely by its title any more than by its cover.” Rogers, 875 F.2d at 1000. And even if there is some risk of consumer confusion, that cannot justify interfering with the First Amendment rights of artists, social commentators, and political commentators. These precedents also show that the First Amendment protects the expressive use of others’ trademarks for cultural or historical reference, commentary, criticism, or parody. The use of “National Association for the Abortion of Colored People” as a mocking decoding of “NAACP” was indeed “parody,” “defined as ‘a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark”s owner.’” People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001). “[E]ntertainment” need not arouse laughter or light-hearted pleasure; some political criticism can entertain precisely by being caustic. See, e.g., Rosemarie Ostler, Slinging Mud: Rude Nicknames, Scurrilous Slogans, and Insulting Slang from Two Centuries of American Politics (2011). But even if the article title was not parody but was commentary or criticism, it should be protected. “Ginger and Fred,” for instance, was a constitutionally protected reference to Rogers and Astaire but not a parody of them. And more broadly, political criticism must be at least as protected as humor and entertainment; indeed, when the Lanham Act expressly discusses “parodying,” in 15 U.S.C. §1125(c)(3)(A)(ii) (in the dilution section), it treats parodying on par with “criticizing[] or commenting upon” the mark.

II. Radiance’s Use of the Term “NAACP” in an Article Title Was Not Trademark Dilution

A. Radiance’s Speech Was a “Noncommercial Use” and Thus Expressly Exempted from Trademark Dilution Actions

Beyond its mistaken finding of confusion, the court below also mistakenly found trademark dilution by failing to apply the exceptions laid out in 15 U.S.C. §1125(c)(3). To begin with, §1125(c)(3) expressly exempts “any noncommercial use” of a trademark from Lanham Act action. As the Ninth Circuit held in Mattel, “‘[n]oncommercial use’ refers to a use that consists entirely of noncommercial, or fully constitutionally protected, speech,” 296 F.3d at 905—which is to say, speech that “does more than propose a commercial transaction,” id. at 906. As a result, the Ninth Circuit held that the Barbie Girl song, though distributed for profit, constituted a “noncommercial use” of the Barbie trademark. Likewise, this Court has stated that Congress “did not intend for trademark laws to impinge the First Amendment rights of critics and commentators”; one First Amendment protection within “[t]he dilution statute” is that Congress “incorporate[d] the concept of ‘commercial’ speech from the ‘commercial speech’ doctrine,” i.e., “speech proposing a commercial transaction,” into the “noncommercial use” exception. Lamparello v. Falwell, 420 F.3d 309, 313-14 (4th Cir. 2005) (citations omitted). The “noncommercial use” exception thus limits the dilution cause of action to commercial advertising (which does propose a commercial transaction), and excludes fully protected speech, even when that speech—like most speech in newspapers, magazines, films, songs, and similar media—is distributed with an eye towards raising money. Mattel offered a detailed explanation for why this interpretation of “noncommercial use” is correct. Reading the “noncommercial use” exception as limited to non-money-making media, the court held, “would . . . create a constitutional problem, because it would leave the FTDA [the Federal Trademark Dilution Act] with no First Amendment protection for dilutive speech other than comparative advertising and news reporting.” 296 F.3d at 904. But this First Amendment difficulty can be avoided because the FTDA’s legislative history suggests that “‘[n]oncommercial use’ refers to a use that consists entirely of noncommercial . . . speech” in the sense that “noncommercial speech” is used in First Amendment doctrine, id. at 905:
The FTDA’s section-by-section analysis presented in the House and Senate suggests that the bill’s sponsors relied on the “noncommercial use” exemption to allay First Amendment concerns. H.R. Rep. No. 104-374, at 8, reprinted in 1995 U.S.C.C.A.N. 1029, 1035 (the exemption “expressly incorporates the concept of ‘commercial’ speech from the ‘commercial speech’ doctrine, and proscribes dilution actions that seek to enjoin use of famous marks in ‘non-commercial’ uses (such as consumer product reviews)”); 141 Cong. Rec. S19306-10, S19311 (daily ed. Dec. 29, 1995) (the exemption “is consistent with existing case law[, which] recognize[s] that the use of marks in certain forms of artistic and expressive speech is protected by the First Amendment”). At the request of one of the bill’s sponsors, the section-by-section analysis was printed in the Congressional Record. Thus, we know that this interpretation of the exemption was before the Senate when the FTDA was passed, and that no senator rose to dispute it.
Id. at 905-06 (emphasis added, some citations omitted). And this analysis is entirely consistent with this Court’s reasoning in Lamparello. The articles about the NAACP that Radiance posted were not “commercial speech” aimed at “proposing a commercial transaction.” They were political advocacy aimed at communicating Radiance’s views about the NAACP. That they appeared on a site that aimed to raise money for Radiance is irrelevant for purposes of dilution law, just as Barbie Girl being a commercially distributed song—and most movies, newspapers, magazines, and books being aimed at making money—is irrelevant for purposes of dilution law.

B. Radiance’s Speech Was Not Actionable Dilution Because It Was Exempted Commentary and Criticism

Under §1125(c)(3)(A)(ii) any use of a trademark is protected against a dilution claim if it is “identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.” Radiance used the NAACP’s trademark to criticize the practices of the organization and to comment on how abortion affects the African-American community. Such uses are therefore exempted under §1125(c)(3)(A)(ii). Indeed, exceptions for commentary and criticism, such as those laid out for copyright infringement in 17 U.S.C. §107, are a “First Amendment protection[].” See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (2007) (discussing “the First Amendment protections already embodied in . . . the latitude for . . . comment traditionally afforded by fair use”). Likewise, the exception for “parodying, criticizing, or commenting” in §1125(c)(3)(A)(ii)—a close analog to the exception “for purposes such as criticism[ or] comment” in 17 U.S.C. §107—is also an important First Amendment protection. In this instance, and even independently of the “noncommercial use” exception, the §1125(c)(3)(A)(ii) exception protects Radiance’s rights to use NAACP’s mark to criticize what Radiance sees as NAACP’s improper stance on abortion.

Conclusion

Amici ask that this court follow Rogers, Mattel, and E.S.S Entertainment—as well as the plain meaning of §1125(c)(3)(A)(i)-(ii)—and conclude that Radiance’s uses of the NAACP marks constituted neither infringement by confusion nor infringement by dilution.

Interest of Amici Curiae

The Electronic Frontier Foundation (“EFF”) is a nonprofit public advocacy organization devoted to preserving civil liberties in the digital realm. Founded in the nascent days of the modern Internet, EFF uses the skills of lawyers, policy analysts, activists, and technologists to promote Internet freedom, primarily through impact litigation in the American legal system. EFF has no position on the controversy over abortion. EFF views the protections provided by the First Amendment as vital to the promotion of a robustly democratic society. This case is of special interest to EFF because incautiously defined intellectual property rights improperly restrict speech that should receive full First Amendment protections. It is thus important that the Lanham Act not be interpreted in a way that erodes long-standing First Amendment freedoms.[10] The American Civil Liberties Union of Virginia, Inc. is the state affiliate of the American Civil Liberties Union (“ACLU”), a nationwide, non-profit, non-partisan organization with more than 500,000 members dedicated to defending the principles of liberty and equality embodied in the Constitution and the nation’s civil rights laws. Among the top priorities of the ACLU is the defense of the freedom of speech guaranteed by the First Amendment. The ACLU generally strongly supports the NAACP, and its mission of racial justice. The ACLU also vigorously defends reproductive freedom, including a woman’s right to choose an abortion. But despite its disagreement with the speech of Radiance Foundation, the ACLU of Virginia joins this brief in support of Radiance because it believes that the right to parody prominent organizations like the NAACP (and the ACLU) is an essential element of the freedom of speech.
* Gary T. Schwartz Professor of Law, UCLA School of Law (volokh@law.ucla.edu).
** Class of 2016, UCLA School of Law.
[1] To retain consistency with the filed brief citations have been verified, but not re-formatted to conform with blue book standards. Additionally, sections have been moved or deleted to better suit the journal format. For an unedited version of the brief see https://www.eff.org/files/2014/10/11/eff_alcu_amicus_brief_-_radiance_v_naacp.pdf.
[2] Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
[3] Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002).
[4] Chris Williams, The NRA Stands for Next Rifle Assault, The Huffington Post, Jan. 17, 2013, http://www.huffingtonpost.com/chris-williams/the-nra-stands-for-next-r_b_2490767.html; Michael J. McCoy, NRA: The National Republican Association, Times-Herald, Mar. 27, 2013.
[5] Ruben Navarrette Jr., Biggest Story Never Told Is Latinos Missing from the Media, Contra Costa Times, Aug. 24, 2011.
[6] Neo-Con* Tastic, Anti-Christian Lawyers Union, Nov. 16, 2005, http://neo-contastic.blogspot.com/2005/11/anti-christian-lawyers-union.html; Ed Brayton, The Anti-Christian Lawyers Union, Dispatches from the Creation Wars, May 30, 2008, http://scienceblogs.com/dispatches/2008/05/30/the-antichristian-lawyers-unio/, (sarcastically referring to this decoding in a post that stresses that the ACLU actually protects the rights of Christians).
[7] Radiance Found., Inc. v. Nat’l Ass’n for the Advancement of Colored People, 2014 WL 2601747 (E.D. Va. June 10, 2014).
[8] Ryan Bomberger, NAACP: National Association for the Abortion of Colored People, Jan. 16, 2013, http://www.lifenews.com/2013/01/16/naacp-national-association-for-the-abortion-of-colored-peopl/.
[9] Michael J. McCoy, NRA: The National Republican Association, Times-Herald, Mar. 27, 2013.
[10] No party or party’s counsel has authored this brief in whole or in part, or contributed money that was intended to fund preparing or submitting the brief. No person has contributed money that was intended to fund preparing or submitting the brief, except that UCLA School of Law paid the expenses involved in filing this brief. All parties have consented to the filing of this brief.

Brand Renegades

Brand Renegades
By Jeremy Sheff* A pdf version of this article may be downloaded here.  

Introduction

I’m gonna look well smart in me Burberry.[1]
The modern brand[2] is a social phenomenon, not just a commercial one.  As consumers, we use brands as tokens of social differentiation, identification, and expression,[3] and producers covet the commercial advantages that come with the integration of brands into consumers’ sense of identity.[4]  But weaving brands into the social fabric is an unpredictable process, one that cannot be controlled completely by brand owners or by consumers.  The struggle between brand owners and consumers over the social meaning of the brand itself occasionally spills out onto the airwaves and even onto the streets.  Recently, in the space of a single week, we saw two striking examples of this conflict.  In one, the major American fashion retailer Abercrombie & Fitch launched a media offensive to try to assert control over the social implications of reality television star Mike “The Situation” Sorrentino’s prominent consumption of its products on MTV’s Jersey Shore.[5]   Meanwhile, across the Atlantic, managers of global brands like Adidas, Nike, and Levi’s struggled to contain the fallout from their brands being associated with the worst civil unrest Britain has seen in ages.[6] In at least one of these episodes, there has been some suggestion that the brand owners might take some sort of legal action to protect the value of their brands.[7]  This suggestion raises a relatively novel question of law.  Even though social meaning can be one of the primary sources of a modern brand’s value, and the preservation of that value depends on the rights afforded under trademark and unfair competition law, that body of law lacks a coherent framework to deal with conflicts that arise between consumers and producers over brands’ social meanings.  This Article explores one typical point of potential producer-consumer conflict suggested by the examples of the previous paragraph—what I call the “brand renegade.” I define a brand renegade as a consumer who uses branded products out of affiliation with some aspects of the image cultivated by the brand owner, but whose conspicuous consumption of the brand generates social meanings that are inconsistent with that image.[8]  Part I of this Article reviews the theoretical literature on the economics and psychology of trademarks to identify the origins of the brand renegade.  Part II describes some recent examples of brand renegades in action, as well as the responses of brand owners to those brand renegades, pointing the way toward a legal showdown between the two groups.  Part III turns to the availability of legal doctrines to mediate the conflict between brand owners and brand renegades, and finds them surprisingly thin.  In the end, I argue that socially expressive consumption (and portrayals of that consumption) ought to be permissible as a matter of trademark law, but note that it is not clear that we have the doctrinal architecture to enforce this (hopefully uncontroversial) principle.

I. Whence the Renegade?

We can envision more than one model by which a brand can come to have social significance.  Perhaps the simplest model is one in which the brand owner works to establish an image through its marketing activities—advertisements, paid endorsements, product placements, etc.—and consumers individually decide whether to identify with that image (by buying the branded product) or not.  This model is consistent with the dominant theoretical model of trademark law—what I have referred to elsewhere as the “search-costs model.”[9]  Under this model, producers are thought to use trademarks to convey information about the unobservable qualities of their products—the flavor of a soda; the reliability of a car—to buyers who would otherwise be unable to find that information on their own.  By this mechanism, trademarks provide the basis for both consumer choice and producer competition, building goodwill in the process.[10] Of course, this model is essentially useless in describing a great deal of actual observed behavior surrounding consumer brands.  If all consumers cared about were the images generated by the brand owner for adoption or rejection by an atomized consuming public, the fact that a rioting “chav”[11] or a boorish braggart were known to consume the brand would be irrelevant.  But clearly, brand owners care quite a bit about that type of information,[12] most likely in the belief that consumers do as well. This suggests that there is some other type of brand information that consumers and brand owners find important, and that this information relates to the interaction between brands and the people who consume them.  Brand owners could certainly try to generate such information.[13] Indeed, much modern marketing, including the widespread use of celebrity endorsements, is directed at persuading consumers to associate particular personality traits with a brand[14]—the Gerber Baby;[15] the Marlboro Man;[16] the Avon Lady;[17] the Pepsi Generation.[18]  To the extent that such subjective associations are just one more example of brand owners creating and disseminating information to consumers, who passively receive it and react to it solely through their atomized purchasing decisions, they might conceivably be integrated into the search-costs model discussed above—as indeed they have been.[19] The problem is that these personality-based associations—because they do not refer back to anything more substantial than the shifting minds of consumers—behave differently than other types of product information, which refer back to the material qualities of a product.  In particular, personality-based associations are freighted with vital but unstable social meaning.  As consumer psychologists have shown, consumers themselves play an integral role in constructing the social meanings of the brands they consume, not least by forming, expressing and observing one another’s social identities and allegiances through acts of conspicuous consumption:
When brand associations are used to construct the self or to communicate the self-concept to others, a connection is formed with the brand. . . . [A]ssociations about reference groups become associated with brands those groups are perceived to use, and vice versa.  The set of associations can then be linked to consumers’ mental representations of self as they select brands with meanings congruent with an aspect of their current self-concept or possible self, thus forging a connection between the consumer and the brand.[20]
Importantly, however, the power of consumers to contribute to and draw on brands’ social meanings is limited by the instability of those meanings in a fluid and competitive social landscape.  As Professor Barton Beebe explains, “commodified forms of distinction . . . produce in the fashion innovator or adopter a feeling of ‘significant difference,’ of being something other than a mere copy in a mass world of equivalence”;[21] but this feeling is inevitably temporary, as “copying both destroys the distinctiveness of existing fashions and creates the need for new ones.”[22] These features of consumer psychology demand a more dynamic model of the construction of a brand’s social meaning than trademark law currently has.  In particular, they require us to come to terms with a significant amount of back-and-forth between and among brand owners, consumers, and the social audience.  From the brand owner’s perspective, the participatory, decentralized, and non-hierarchical nature of the construction of a brand’s social meaning is a double-edged sword.  On the upside, it allows brand owners to capture a significant amount of value that is created not by the brand owner itself, but by its customers.  On the downside, it creates the risk that brand value could be destroyed by forces beyond the brand owners’ control.  Chief among these forces is the brand renegade.[23]

II. The Renegade in Our Midst

The history of mass marketed brands is rife with examples of brand renegades, but reveals some diversity in brand owners’ responses.  This Part considers some illustrative examples.

A.  Adoption and Co-Option

Consider the cognac market.  For decades, the House of Courvoisier marketed its product as “the brandy of Napoleon,”[24] cultivating associations with European aristocracy (and its wealth and power) through full-page ads in upper-middle-class aspirational magazines like Fortune and Gourmet.[25]  But as American society changed, those associations began to lose their appeal in the spirit’s target market.  By the late 1990s, “you almost couldn’t give France’s most famous brandy away”; cognac in general was seen “as an old fart’s drink, a digestif for tuxedoed geezers smoking cigars in wood-paneled libraries.”[26] But a counter-trend was already underway.  Over the course of the 1990s, cognac had become a fixture in African-American nightlife, and its rise was reflected in hip-hop culture.  As early as 1993, West Coast rapper Ice Cube identified the gangsta rap aesthetic with, among other things, “sippin on Courvoisier.”[27]  By 2002, hip hop had moved from counterculture to mainstream,[28] and Busta Rhymes’s single, “Pass the Courvoisier,”[29] peaked at number 11 on the Billboard Hot 100 charts.[30]  While the old-world image of imperial power and opulence no longer had the same pull for the traditional upwardly mobile (and traditionally white) elite of the American economy, the idioms of material luxury had been appropriated by a formerly marginalized, but now culturally ascendant, segment of that economy.  Importantly, hip hop did not adopt the trappings of Courvoisier’s marketing images even as it adopted the brand as an element of its identity.  Rather than affecting a First Empire salon, Ice Cube situated Courvoisier in the driver’s seat of a two-tone Ford Explorer tearing down the 110 Freeway;[31] Busta Rhymes in a prohibition-era Harlem back alley.[32] While the Napoleonic imagery of Courvoisier’s marketing efforts shares some thematic points with hip hop’s invocations of the brand (among them ostentatious wealth, violence, and misogyny), there are obviously deep cultural differences between the two.  Courvoisier’s expanding young, urban, African-American clientele were, in this sense, brand renegades: they adopted the brand itself as an element of their identity, but did not otherwise change their identity to conform to the brand’s existing marketing strategy.  And given the social dynamic described above,[33] the conspicuous consumption of the brand by these renegades could not help but reflect back on the social meaning of the brand itself.[34] The House of Courvoisier’s response to the reshaping of its brand by forces beyond its control was highly adaptive.  Rather than dispute or resist the changes in their brand’s social meaning, the brand owner co-opted the changes its customers had wrought.  As early as 2000, its marketers had pivoted their messaging to appeal to a new demographic: “young, urban adults who subscribe to hip-hop culture, the vast majority of whom are African-American.”[35]  When Busta Rhymes released his single, Courvoisier’s marketers were already on the scene, “skillfully tr[ying] to capitalize on the event, in sponsoring events with P Diddy, Missy Elliott and Lil’ Kim, in particular.”[36]  By 2007, Courvoisier was touting its product as the brandy of hip-hop mogul Jermaine “JD” Dupri—Napoleon was conspicuously absent from the campaign the company launched that year.[37]  In short, rather than viewing its brand renegades as a threat, Courvoisier welcomed them as an opportunity. As a business matter, Courvoisier’s response to its brand renegades makes perfect sense.  The release of “Pass the Courvoisier” coincided with an 18.9% rise in Courvoisier’s sales,[38] and the adoption of the brand by a new generation of drinkers saved it from a decades-long decline.[39]  Indeed, it is possible that any other course of action might have threatened to damage Courvoisier’s business—as the makers of Cristal champagne learned when they failed to give rapper Jay-Z the respect to which he felt entitled as a successful and influential brand renegade.[40]   Courvoisier was thus in the fortunate position of capturing the positive value of social meanings it did not create by virtue of those meanings becoming associated with its brand through the actions of brand renegades.  But more difficult questions arise when the effect of brand renegades on a brand owner’s bottom line is not so unambiguously positive.  The rest of this Part illustrates these difficulties.

B.  Reality Bites

As the row between Jay-Z and the makers of Cristal shows, brand owners who invest in cultivating a certain image may not always be grateful to brand renegades who change that image.  This ingratitude strikes us as foolish in the hip-hop context, where the adoption of niche luxury brands by a large but marginalized demographic broadly expands those brands’ commercial appeal (and thus their profitability).  But such ingratitude may be entirely understandable where the customers attracted to the social meanings created by a brand renegade may be offset or even overwhelmed by customers who are loyal to the brand’s preexisting image and who find its new meanings repellent.[41] Take the example of MTV’s Jersey Shore.  The reality series is a ratings bonanza for MTV parent Viacom and a bona fide cultural phenomenon.[42]  It is also deeply offensive to a substantial and vocal population.  The arbiters of culture find its cast members—such as the aforementioned “The Situation”[43] and Nicole “Snooki” Polizzi—to be the personification of bad taste and bad character.[44]  And understandably, many people do not want to be associated with such characters.[45]  There are, accordingly, a fair number of brands that do not want to be associated with the cast of Jersey Shore either, and those brands’ owners will go to some lengths to avoid any such association.  For example, in an episode I have discussed elsewhere,[46] it was rumored that some fashion houses were gifting their competitors’ high-priced handbags to Snooki in the hopes that her déclassée image would rub off on those competitors, to the gift-giver’s benefit.[47] To be sure, an association with Snooki—to whom the New York Times once attributed the epithets “[f]lake, cow, loser, slut, idiot, airhead, trash, penguin, creep, moron, midget, freak, Oompa-Loompa, nobody”[48]—is probably not something most customers of most luxury fashion brands want.  But there is a huge population of young people who find her irresistible, even admirable.[49]  The same can be said for The Situation.[50]  As New York Magazine put it, “Jersey Shore . . . made him famous enough to make money off a branded creatine shake.”[51]  And in a recent, highly publicized incident, he stepped into the role of brand renegade. In August of 2011, a retail analyst noted that a recent episode of Jersey Shore had shown The Situation “wearing a pair of neon green A[bercrombie] & F[itch] sweatpants ‘loudly (and proudly)’ on the streets of Florence.”[52]  Abercrombie & Fitch’s “Brand Senses Department” responded swiftly with a press release proposing what it called “a Win-Win Situation.”[53]  The release protested that association with Jersey Shore “is contrary to the aspirational nature of our brand, and may be distressing to many of our fans.”[54]  Accordingly, Abercrombie & Fitch made it known, the company had offered to pay The Situation (and other members of the Jersey Shore cast) not to wear its clothes.[55] This was a bit rich.  As the press reported, Abercrombie & Fitch is “no stranger to controversy, with its racy marketing campaigns featuring nearly naked models.”[56]  As The Situation himself had noted some time before, one of Abercrombie & Fitch’s more popular t-shirts is emblazoned with the word “Fitchuation.”[57]  Even while dutifully reporting the release, major media outlets recognized they were the instruments of a publicity stunt that was curiously timed to coincide with a quarterly earnings call and the announcement of a major expansion.[58] Abercrombie & Fitch did not appear to be seriously distancing themselves from the brand renegade, but at the same time they were not trying to co-opt him, as in the Courvoisier example above.  Rather, the company seemed to be trying to leverage him.  Clearly, Abercrombie & Fitch wanted the public to know two facts about The Situation: first, that he wears the company’s clothes, and second, that the company is not comfortable with him wearing its clothes.  The first message is designed for fans of Jersey Shore; the second, for their bill-paying parents (and the show’s detractors more generally).  If successful, this stunt may succeed in capturing the upside value of The Situation’s social connotations without suffering their downside—a “Win-Win Situation” indeed. Still, this is a dangerous high-wire act for a brand owner to play when faced with a brand renegade.  Even a rumor or hint that the brand owner is trying to distance itself from the social identities of its customers can be commercially devastating.[59]  As the Recording Industry Association of America discovered at great cost, a business strategy that depends on publicly attacking your customer base is likely to be counterproductive.[60]  Still, a constant threat hovers over the brand owner who tries to court the brand renegade without alienating the brand loyalists.  At some point, one of these constituencies may put the brand owner to a choice.

C.  Cutting Loose

On the evening of August 4, 2011, 29-year-old Mark Duggan was shot dead by police in the north London neighborhood of Tottenham.[61]  On August 6, what started as a peaceful protest over the shooting erupted into a violent anti-police riot.[62]  Over the following days, rioting spread throughout London and Britain more generally, evolving into an expression of an undifferentiated amalgam of social, political, and economic discontentment; the conditions of public disorder set the stage for a wave of nihilistic and opportunistic violence and looting.[63]  Young people in particular seemed to see the riots as an opportunity to assert their independence from political, legal, and economic authority; as two young women interviewed by the BBC explained:
It’s the government’s fault . . . . Conservatives . . . whatever, who it is . . . . [T]hat’s what it’s all about, showing the police we can do what we want, and now we have . . . . We’re just showing the rich people we can do what we want.[64]
One thing they wanted was fashion brands.  The press reported that looters of some clothing stores were seen trying things on before they stole them.[65]  One of the most riveting images of the rioting appeared on the front page of the August 9 issue of The Guardian: a masked young man, backlit by the carcass of a burning car, decked head-to-toe in an immaculate Adidas hoodie tracksuit (with the shoes to match).[66]  As looting became widespread, the media began to report that certain brands that had cultivated an image of confrontational, rebellious youth in their marketing—brands like Adidas, Nike, and Levi’s—were particularly targeted by the young rioters for theft.[67]  The implication was that these brands had been playing with fire by glorifying resistance to authority and associating it with their unattainably high-priced goods, and that they accordingly deserved some share of the blame for the destructive actions of their disaffected young customer base.[68]  Whether this was a fair characterization of the rioters’ actions and motives or not,[69] public association with the lawless mayhem on Britain’s High Streets took a toll on several brands,[70] and their marketers went into “lockdown mode” to determine how best to respond to the crisis.[71]  A generation of brand renegades had become a national story. Adidas drew attention in this story not for any specific aspect of its marketing campaign (except perhaps its choice of hip hop artists with criminal records as paid promoters),[72] but rather because so many rioters were conspicuously wearing (and stealing) Adidas-branded clothing.[73]  Like The Situation and the various hip hop artists described above, these looters had become brand renegades—due to their actions the public could not help but associate the Adidas brand with the lawless mobs in the streets.  Adidas responded vigorously against this threat to its brand image, and “took the step of condemning its customers for taking part in the riots[:] ‘Adidas condemns any antisocial or illegal activity,’ the company said. ‘Our brand has a proud sporting heritage and such behaviour goes against everything we stand for.’”[74] Levi’s, in contrast, drew particular attention for a global marketing campaign it had unluckily launched just before the riots erupted.  The flagship television ad for the campaign, entitled “Go Forth,” is a video montage of passionate and rebellious young people set against a reading of Charles Bukowski’s poem, The Laughing Heart.[75]   In one vignette, a young man stands alone in the middle of a ransacked urban square, taunting a phalanx of riot police in view of cowering onlookers, while the narrator passes over Bukowski’s line: “you are marvelous.”[76]  The media seized on the ad,[77] and Levi’s backpedaled as hard as it could without explicitly disavowing the imagery it had used.[78] It postponed its planned release of the “Go Forth” ad in British cinemas and on Facebook, but continued to make it available on YouTube and on the campaign website.[79]  Unlike Adidas, Levi’s resorted to vague generalities and the passive voice in an attempt to put some distance between its brand image and the rioters without explicitly criticizing its young customer base:
We are deeply disheartened about the unprecedented events taking place in the UK at the moment and which have impacted communities across the country. While Go Forth is about embodying the energy and events of our time, it is not about any specific movement or political theme; rather, it’s about optimism, positive action and a pioneering spirit. Out of sensitivity for what is happening in the UK, we have temporarily postponed our cinema and Facebook spots in the country.[80]
Between the responses of Levi’s and Adidas to the UK Riots lies the limit of the win-win strategy’s effectiveness against the brand renegade.  Levi’s seemed to think it could placate the brand renegades’ social critics without alienating the renegades themselves—precisely the strategy pursued by Abercrombie & Fitch.  It attempted to do so by highlighting what its cultivated image and its brand renegades (in this case, rioters conspicuously looting Levi’s goods) have in common, while ignoring what makes those brand renegades different (and threatening to others).  Adidas clearly concluded that it could not strike this balance, and abandoned the brand renegades in favor of the rest of its customer base.  Rather than focusing on what its brand renegades have in common with Adidas’s cultivated image, the company focused on what makes the brand renegades different, and explicitly attacked it. The judgments behind these decisions are both commercial and social.  They test the margins of profit and persuasion in the tradeoff between brand renegades and brand loyalists, all against the backdrop of a wider social audience.  Adidas, alone out of all the brand owners discussed in this Part, seems to have found itself on the wrong side of those margins.  As we approach this limit of the brand owner’s tolerance for the brand renegade, we come to the question that began this Article[81]: is there any role for law in mediating the conflict between them?

III. The Legal Limits of Social Brands

The law of trademarks and unfair competition is at its most lucid when it purports to regulate competition along commercial dimensions.  The most clear-cut applications of trademark law deal with conflicts that arise between competing producers regarding identification of the source of goods offered for sale to the public.  When a consumer thinks she is buying a quality widget from Producer A, but in fact she is getting a shoddy widget from Producer B, both the consumer and Producer A have cause to complain, and the law has long given each of them a remedy without generating significant controversy.[82]  The difficulty arises when the law tries to reach past these types of source-confusion conflicts.

A.  Trademark Law’s Expansion

Trademark law’s relentless expansion is the overarching story of the past century of development in the field.[83]  Whereas once the maker of BORDEN ice cream couldn’t recover against a company selling BORDEN condensed milk,[84] such rigid limits on the market scope of trademark rights began to erode in the early part of the twentieth century.[85]  As consumer markets expanded beyond local and regional boundaries, strict geographic limits on the scope of trademark rights eroded.[86]  And as the law’s treatment of trademark licensing went from overtly hostile[87] to broadly accommodative,[88] courts came to condemn not only commercial practices that led to consumer confusion as to source, but those which might lead consumers to mistakenly believe that a defendant is affiliated with, or sponsored by, a trademark owner.[89]  This shift, combined with the rise of product placement and embedded advertising in popular entertainment,[90] brought the producers of expressive works and cultural products into trademark law’s ambit.[91]  Finally, in 1995, Congress severed the link between competition and trademark liability for “famous” trademarks entirely, by creating a cause of action—dilution—that is explicitly available “regardless of the presence or absence of . . . competition between the owner of the famous mark and other parties.”[92] Importantly, the expansion of liability to encompass sponsorship and affiliation confusion generates its own momentum, in what Professor James Gibson has referred to as a “feedback loop.” [93]  Uncertainty about the limits of trademark rights leads risk-averse commercial actors to submit to trademark owners’ claims (e.g., by taking a license or removing references to the mark) rather than contest them.  The observable results of this behavior then inform consumers’ perceptions as to the prevalence of sponsorship or affiliation relationships in the marketplace.  This changed understanding of consumers, in turn, expands the universe of conduct which could generate confusion as to affiliation or sponsorship.[94]  The result is that trademark liability’s boundary is never clear, and yet clearly always expanding.

B.  The Brand Renegade at the Outer Limit

The brand renegade represents the final frontier of trademark law’s expansion.  The self-generated momentum of that expansion is surely accelerated by brand owners’ decisions to co-opt (or at least try to leverage) brand renegades.  Over time, observers may come to presume that each new brand renegade is actually affiliated with the brand owner—indeed, this already appears to have happened in the hip-hop context.[95]  As subtle, informal, and post hoc cross-promotional relationships become increasingly common in the entertainment industry,[96] and as user-generated content is increasingly incentivized by marketers themselves,[97] the line between independent consumer and sponsored affiliate is already frustratingly difficult to draw.[98]  Finally, as marketers begin to turn to the same social networking tools[99] and participatory demonstrations that have recently become a hallmark of organized civil unrest,[100] it may be only a matter of time until a significant number of consumers genuinely come to believe (perhaps with good reason) that the latest riot tearing through their communities enjoys corporate sponsorship.[101] Despite these trends, our intuition is that there must be some limit to the power of brand owners to control perceptions of their brands, particularly where those perceptions are based on our observations of actual consumers.  As Professor Rebecca Tushnet notes, “[t]here is nothing (as yet) that Coca-Cola can do to erase my memory of the time I spilled a Diet Coke into my keyboard,”[102] and it would strike us as absurd (I hope) to suggest that Coca-Cola might sue Professor Tushnet for having created such a negative association with its brand in her own mind (or, having read her article, in ours).  Similarly, I suspect most people would find it implausible that a consumer could be assessed damages for wearing Adidas to a riot,[103] that a reality television star could be enjoined from walking down the street wearing a pair of neon green Abercrombie & Fitch pants,[104]  or that a rapper could be sued for ordering Courvoisier at a nightclub.[105]  Our intuition is that there must be some intelligible limit on the legal weapons the brand owner can deploy against the brand renegade.  But where in the law are these limits to be found? We might try to satisfy our intuition by setting certain categories of conduct outside trademark law’s reach.  For example, one could argue that consumption of a brand owner’s products, and perhaps the portrayal of that consumption in expressive works, are categories of conduct that should be outside the bounds of trademark liability.  But it is not at all clear that this is the case under current law.   Portrayals of brands in expressive works are not, as a category of conduct, beyond trademark law’s reach.[106]  And there is no doctrine that one can definitively point to in hopes of placing consumption, as a category of conduct, entirely outside of the reach of infringement liability—indeed, there is anecdotal evidence that brand owners are moving to regulate consumption directly.[107]  Moreover, consideration of doctrines that might be invoked to impose such conduct-based limits on trademark liability only serve to demonstrate the absence of such limits. Take, for example, the doctrine of “trademark use” or “use as a mark.”  For approximately a decade, scholars and judges debated whether “trademark use” is an element of a trademark infringement or dilution claim, and if so what trademark use means and how it might be established.[108]  After the spilling of much ink, we appear to have an answer: there is no trademark use requirement at all for infringement claims,[109] but “use as a mark” is a necessary element of dilution claims.[110]  The plaintiff’s burden on this element of its dilution claim is simply to show that the defendant’s use involves some goods or services other than those of the plaintiff.[111]  This limitation on dilution claims would indeed seem to shield the brand renegade in his capacity as consumer from blurring or tarnishment liability.  But it would not shield the producers of expressive works that portray the brand renegade’s consumption, nor would it necessarily shield the brand renegade who consumes in the process of rendering entertainment services—a reality television star on a shoot, for example, or a rapper appearing at a promotional event.  And of course, both the brand renegade and the producer of expressive works portraying his consumption would find no refuge from infringement (as opposed to dilution) liability in the trademark use doctrine.[112] As another potential doctrinal tool to limit brand renegades’ liability, consider the related but distinct requirement of use in commerce.  By both constitutional[113] and statutory command,[114] federal trademark liability may only attach to conduct that constitutes a use of a mark “in commerce”—specifically, in interstate or foreign commerce.  But only minimal reflection is required to conclude that this limitation on the reach of trademark liability offers no shelter to the brand renegade.  With respect to expressive works that are themselves released into the stream of commerce, a plaintiff would have no trouble satisfying this requirement.[115]  And as every law student learns, the scope of “commerce” subject to regulation by Congress is exceedingly broad.  It is no great leap from the proposition that a farmer can be restrained in growing wheat for his own consumption due to the effect of his self-sufficiency on the economy-wide demand for wheat,[116] to the proposition that a consumer can be restrained from consuming branded products due to the effect on the economy-wide market for that brand.  This is particularly true where there is a thriving market for brand affiliation, in which brand owners compensate consumers for their conspicuous consumption of and advocacy for the brands they enjoy.[117]  In short, the use in commerce requirement is perhaps even less useful than the trademark use requirement in satisfying our intuition against holding brand renegades liable to brand owners. In light of these shortcomings of established doctrine in satisfying our intuitive policy inclinations, some commentators have proposed novel, alternative limits on the reach of trademark liability.  Professors Mark Lemley and Mark McKenna, for example, suggest that liability for sponsorship and affiliation confusion might usefully be restrained by investigating whether the confusion at issue in any given case is likely to materially affect consumers’ purchasing decisions, arguing that any other form of confusion is irrelevant to trademark law’s policy objectives.[118]  While the concept of materiality that Professors Lemley and McKenna borrow from false advertising law[119] is a useful criterion for restraining the expansiveness of sponsorship and affiliation confusion liability in general, on reflection it does not seem to do much work in the narrow case of the brand renegade.  Professors Lemley and McKenna argue, convincingly, that brand owners are unlikely to suffer any lost sales from most forms of sponsorship or affiliation confusion, making materiality a useful policy lever.[120]  But clearly, and particularly for brands that trade on social meaning, brand renegades do affect purchasing decisions, at least in some circumstances.[121]

C.  Drawing a Line

I propose that the intuition against imposing liability on brand renegades is better served by a principle that has historically served to limit trademark rights: freedom of expression.  Professors Lemley and McKenna cite this principle as one justification for their materiality proposal,[122] but with respect to brand renegades, it is likely the entire issue.  At stake in the conflicts described in Part II of this Article is the balance between the expressive interests of brand owners and the expressive interests of brand renegades with respect to the social meanings of the brands in which they each claim a stake.  The ultimate question is: will the law give either of these parties any preference in constructing those meanings? Professor Thomas McCarthy, the author of the leading American treatise on trademark law, has advanced the argument that a trademark owner has a First Amendment interest in not being associated with controversial persons (such as brand renegades) and the negative social response to them.[123]  Notably, though, Professor McCarthy’s argument on this point claims exactly zero support from the trademark caselaw.  In contrast, First Amendment concerns are reflected in numerous trademark law doctrines under which courts have shielded persons other than the brand owner from liability: the protection of criticism[124] and parody;[125] the cabining of infringement claims against the titles[126] or contents[127] of expressive works; the doctrines of descriptive fair use[128] and nominative fair use;[129] and the statutory limits on dilution claims,[130] to name just a few.  In general, these doctrines recognize that overbroad assertions of trademark rights can inhibit the expression of ideas that either promote competition (in the case of fair use) or provide socially useful information regarding trademarks and their owners (in the case of defenses for parody and criticism).  To avoid such chilling effects, the law limits the control mark owners may assert over the uses others make of their marks.[131] In many—if not most—of these doctrines courts tend to suggest that the First Amendment interest may be vindicated only where (or even because) there is as a factual matter no consumer confusion of which the brand owner might complain.[132]  But it must be admitted that this is unlikely to be true for brand renegades.  As discussed above, brand renegades by definition affiliate themselves with some aspects of the brand, and as brand owners continue to co-opt and leverage brand renegades, consumers are increasingly likely to be confused as to whether the affiliation runs both ways.  Merely protecting brand renegades who do not confuse as to affiliation or sponsorship is unlikely to avoid trademark infringement liability in the modern marketing environment.  The principle of freedom of expression must trump the concern over confusion for us to conclude that the conduct of brand renegades is not actionable. One doctrine reflects precisely such a prioritization of interests, and it is directly applicable to one of the categories of conduct that is the subject of our intuition against the imposition of liability.  This is the strict test for infringement applied to expressive works.[133]  Under Rogers v. Grimaldi[134] and its progeny,[135] such works will infringe a trademark only where their use of the mark has “no artistic relevance” to the underlying work.  Characterized as an exercise in “balance,”[136] this standard explicitly accepts some degree of confusion in order to avoid chilling expression.[137]  Application of Rogers would almost certainly protect a rapper in his lyrics and a reality television producer in its broadcast, while analogous constitutional privileges of the press would surely protect a newspaper in its coverage of a riot.[138]  While the caselaw interpreting the federal dilution statute is more limited, it suggests a similar result in dilution actions.[139]  Nevertheless, it is not clear that the subjects of these expressive works—the consumer brand renegades themselves—would enjoy similar protection.  Indeed, if Professor McCarthy’s view is correct, there might be some justification for imposing liability against consumers who create such associations. Thus we come, finally, to the ultimate question: whether the brand renegade, who alters a brand’s social meaning by the mere act of conspicuously consuming it, is within the reach of trademark liability.  If our intuition is that the answer to this question must be no,[140] I submit that this intuition can be justified only by recognizing through law what consumer psychologists have concluded through research:[141] that for brand renegades as for the rest of us, consumption itself has an expressive character.[142]  If the reason for tolerating confusion with respect to the expressive works described in the last paragraph is that there is social value in the expression inherent in portrayals of a brand renegade’s consumption, it follows that the ultimate source of that value is the consumptive act itself—passing the Courvoisier, donning Abercrombie & Fitch pants, or wearing Adidas on a looting spree.  As discussed in the first Part of this Article, we engage in such consumption in no small part to forge our social identities, to communicate those identities to others, and to modify our identities in response to similar communications we receive through others’ consumption.[143]  Where that consumption relates to branded goods, the brand itself becomes in at least some measure the subject of a social, not just a commercial, discourse. The possibility of socially expressive consumption is not novel—quite the opposite.[144]  But it is a possibility that American trademark law has yet to fully grapple with—perhaps because the expansion of liability under that body of law is only now reaching the point where consumption itself is implicated.  Where the law and commentary have recognized First Amendment interests, it has generally been with respect to either talking about (and perhaps critiquing) a brand’s cultivated associations, or directly invoking those associations as a kind of shorthand vocabulary.[145]  The brand renegade forces us to recognize a new category of expression—one which both appropriates some aspects of a brand’s meaning and alters that meaning by giving it new social context.  We must recognize that consuming a brand can in itself be a form of commentary on and critique of the social meanings inherent in that brand—particularly where the brand owner explicitly trades on those meanings by cultivating personality associations in its marketing. As brand renegades continue to engage in this form of expression, and brand owners increasingly conflict with them, we are sure to be called on to integrate that conflict into the uneasy legal balance between the ever-expanding sphere of trademark liability and our First Amendment principles.  I submit that in this narrow context, the balance is a relatively easy one to strike.  Professor McCarthy argues that brand owners should be permitted to contribute to a brand’s social meanings, but that nobody else should (at least not without the brand owner’s approval).  He argues, in short, for judicially enforced viewpoint-based restrictions on expression.  In contrast, the intuition against liability that has been the subject of the investigation in this Part demands no such discrimination; it merely demands that the law treat the brand owner and the brand renegade on equal footing with respect to their contributions to the social meaning of a brand.  As between these two alternatives, the intuition investigated in this Part fares far better under the First Amendment than Professor McCarthy’s alternative.[146]  Doctrinally, I propose that the best vehicle for the intuition I have attempted to vindicate in this Part is to extend the balance struck by Rogers and its progeny (and the analogous dilution authorities)[147] from the case of expressive works to the case of expressive consumption.  Absent an explicit claim by the brand renegade that the brand owner approves of his conduct,[148] the expressive dimension of his consumption deserves protection from trademark liability.

Conclusion

In this Article, I have argued that conspicuous consumption of brands whose owners have cultivated particular social connotations is, in itself, an expressive act.  This act cannot help but contribute to the social meanings of the brand itself, and as brand owners increasingly try to actively manage such associations, public confusion as to affiliation or sponsorship may result.  Where the consumption is performed by a brand renegade—someone who identifies with some aspects of the brand’s cultivated image but who also generates social meanings inconsistent with that image—we face a conflict for control between the brand renegade and the brand owner.  My argument in this Article—as elsewhere[149]—is that in this struggle to control social meaning, which implicates not only the identity of the brand but the identity of members of a community, both parties ought to be equally free to make their case, and the social audience should be free to decide between them.[150]  
* Associate Professor of Law, St. John’s University School of Law. Thanks to Professors Laura Heymann, Peggy McGuinness, Mark McKenna, and Zahr Said, and to participants at the Inaugural Academic Conference of the Franklin Pierce Center for Intellectual Property at the University of New Hampshire School of Law for helpful comments.
[1] KingLouisXVII, Chavs in Me Burberry, YOUTUBE (Sept. 16, 2007), http://youtu.be/2WDnukuUc84.  Cf. generally Daniel Gross, To Chav and Chav Not, SLATE (July 12, 2006),http://www.slate.com/id/2145165/.
[2] For purposes of this Article, I am defining a “brand” as the conjunction of a trademark, the marketing efforts behind that trademark, and the set of associations that the public as a whole has come to attach to that trademark.  Cf. 15 U.S.C. §1127 (2010) (“The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods . . . .”); Lisa Wood, Brands and Brand Equity: Definition and Management, 38 MGMT. DECISION 662, 664-65 (2000), available at http://dx.doi.org/10.1108/00251740010379100 (discussing various extant definitions of the term “brand” in the marketing literature, including one that defines a brand as “nothing more or less than the sum of all the mental connections people have around it”).
[3] See, e.g., Barton Beebe, Intellectual Property Law and the Sumptuary Code, 123 HARV. L. REV. 809, 852 (2010), available at http://www.harvardlawreview.org/issues/123/february10/Article_6838.php; Stacey L. Dogan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 EMORY L. J. 461, 491 (2005); Jeremy N. Sheff, Veblen Brands, 94 MINN. L. REV.(forthcoming 2012), available at http://ssrn.com/abstract=1798867.
[4] See, e.g., KEVIN LANE KELLER, STRATEGIC BRAND MANAGEMENT: BUILDING, MEASURING, AND MANAGING BRAND EQUITY 387-88 (2d ed. 2003) (describing “brand attachment” and “brand activity” as important components of a brand’s economic value).
[5] Stephanie Clifford, Abercrombie Wants Off ‘Jersey Shore’ (Wink-Wink), N.Y. TIMES, Aug. 18, 2011, at B1, available at http://www.nytimes.com/2011/08/18/business/abercrombie-offers-jersey-shore-cast-a-paid-non-product-placement.html.
[6] Rupert Neate et al., UK riots: Love affair with gangster-chic turns sour for top fashion brands, GUARDIAN, Aug. 12, 2011, at P8, available at http://gu.com/p/3x7tj.
[7] Clifford, supra note 5.  See also Brian Goldman, Putting Lamborghini Doors on the Escalade: A Legal Analysis of the Unauthorized Use of Brand Names in Rap/Hip-Hop, 8 TEX. REV. ENT. & SPORTS L. 1 (2007) (analyzing the legal claims and defenses in situations similar to those described in Part II.A, infra).
[8] Cf. Renegade Definition, OED ONLINE, http://www.oed.com/viewdictionaryentry/Entry/162410 (last visited Aug. 18, 2011) (subscription required) (“A person who deserts, betrays, or is disloyal to an organization, country, or set of principles. . . . A person who rejects authority and control or behaves in an unconventional manner; a rebel, a nonconformist.”).
[9] Jeremy N. Sheff, Biasing Brands, 32 CARDOZO L. REV. 1245, 1250-51 & n.24, 1254-59 (2011), available at http://ssrn.com/abstract=1681187.
[10] William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspective, 30 J. L. & ECON. 265 (1987); Nicholas S. Economides, The Economics of Trademarks, 78 TRADEMARK REP.523 (1988).
[11] Chav Definition, OED ONLINE, http://www.oed.com/view/Entry/264253 (last visited Aug. 19, 2011) (subscription required) (“In the United Kingdom (originally the south of England): a young person of a type characterized by brash and loutish behaviour and the wearing of designer-style clothes (esp. sportswear); usually with connotations of a low social status.”).  While my use of this term reflects common usage in Britain, an American audience should be aware that the question of its social acceptability stirs some debate in that country.  See, e.g.Stop Use of ‘Chav’ – Think Tank, BBC NEWS (July 16, 2008), http://news.bbc.co.uk/2/hi/uk_news/7509968.stm (“[The word] “[c]hav is . . . deeply offensive to a largely voiceless group.”).
[12] See supra notes 5-6 and sources cited therein.
[13] See generally Jennifer Edson Escalas, Narrative Processing: Building Consumer Connections to Brands, 14 J. CONSUMER PSYCHOL. 168 (2004), available at http://dx.doi.org/10.1207/s15327663jcp1401&2_19.
[14] See Kevin Lane Keller, Conceptualizing, Measuring, and Managing Customer-Based Brand Equity, 57 J. MARKETING 1, 3-8 (1993); see generally Zafer B. Erdogan, Celebrity Endorsement: A Literature Review, 15 J. MKTG. MGMT. 291 (1999); Lawrence Lessig, The Regulation of Social Meaning, 62 U. CHI. L. REV. 943, 1009 (1995) (“[Michael Jordan] endorses Nike shoes.  Some of his social capital is transferred to the product endorsed, and the meaning of wearing Nike shoes changes.”); Grant McCracken, Who Is the Celebrity Endorser?: Cultural Foundations of the Endorsement Processin CULTURE AND CONSUMPTION II: MARKETS, MEANING, AND BRAND MANAGEMENT 97, 97 (2005) (setting forth a “meaning-transfer” theory of the celebrity endorser).  This focus on subjective differentiation has long generated criticism from legal and economic commentators. See generally, e.g., Ralph S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 YALE L. J. 1165 (1948); Shahar J. Dilbary, Famous Trademarks and the Rational Basis for Protecting “Irrational Beliefs, 14 GEO. MASON L. REV. 605, 610-12 (2007) (collecting sources); Glynn S. Lunney, Jr., Trademark Monopolies, 48EMORY L.J. 367 (1999).
[15] WHO IS THE GERBER BABY?, http://www.gerber.com/AllStages/About/Gerber_Baby.aspx (last visited Jan. 22, 2012).
[16] The Marlboro Man, THE ADVERTISING CENTURY: ADAGE.COMhttp://adage.com/century/icon01.html (last visited Jan. 22, 2012).
[17] WookieCookie, 1972 Avon Commercial – The Avon Lady, YOUTUBE (Mar. 15, 2007), http://youtu.be/fK9-scvGGWY.
[18] GiraldiMedia, Michael Jackson Pepsi Generation, YOUTUBE (June 26, 2009), http://youtu.be/po0jY4WvCIc.
[19] See generally Dilbary, supra note 14; see also Economides, supra note 10, at 535 (“I believe that perception advertising provides consumers with products (mental images) that they value, and which would have been scarce in its absence.  It is not a direct waste.  Some resources are wasted, however, in the effort to tie in the desired image with the advertised product.”).
[20] Jennifer Edson Escalas & James R. Bettman, You Are What They Eat: The Influence of Reference Groups on Consumers’ Connections to Brands, 13 J. CONSUMER PSYCHOL. 339, 339 (2003),available at http://dx.doi.org/10.1207/S15327663JCP1303_14.  Cf. Laura A. Heymann, Metabranding and Intermediation: A Response to Professor Fleischer, 12 HARV. NEGOT. L. REV. 201, 202 (2007) (“Brand meaning is not created until the recipient  of the messages both receives those messages and gives them any particular relevance. . . . Thus, a brand’s meaning doesn’t exist in the abstract, nor does it depend on the interpretation intended by the producer; rather, any meaning that exists does so because consumers are willing to give credence to the message that’s conveyed (or, indeed, some alternative message should consumers be so inclined.”); Lessig, supra note 14, at 1009-12 (describing two mechanisms—tying and ambiguation—by which consumers can participate in constructing the meanings of the objects they consume).
[21] Beebe, supra note 3, at 823.
[22] Id. at 821.
[23] See supra note 8 and accompanying text.
[24] See, e.g., COURVOISIER HERITAGE, http://courvoisier.com/heritage/ (last visited Jan. 22, 2012); COURVOISIER COGNAC: THE BRANDY OF NAPOLEON, http://www.napoleonprisonnier.com/images/postmortem/moderne/courvoisier-large.jpg (last visited Jan. 22, 2012).
[25] See, e.g., Courvoisier Advertisement, GOURMET, Oct. 1950, at 25.
[26] Mike Steinberger, Cognac Attack!, SLATE (Apr. 2, 2008), http://www.slate.com/id/2188005/.
[27] ICE CUBE, Down for Whateveron LETHAL INJECTION (Priority Records 1993).
[28] See generally NELSON GEORGE, HIP HOP AMERICA (3d ed. 2005).
[29] BUSTA RHYMES, Pass The Courvoisieron GENESIS (J Records 2001).
[30] Pass The Courvoisier—Busta Rhymes, BILLBOARD.COM, http://www.billboard.com/#/song/busta-rhymes/pass-the-courvoisier/3694375 (last visited Jan. 22, 2012).
[31] ICE CUBEsupra note 27.
[32] allblackamericans, Busta Rhymes feat. P. Diddy & Pharrell – Pass The Courvoisier Part II, YOUTUBE.COM (Feb. 20, 2009), http://youtu.be/JAYXRtNxsGA.
[33] See supra note 20 and accompanying text.
[34] Cf. Jay-Z, Jay-Z on Cristal: ‘Disrespect for the Culture of Hip-Hop’, TIME (Nov. 18, 2010), http://www.time.com/time/arts/article/0,8599,2032217,00.html, (“Everything that hip-hop touches is transformed by the encounter, especially things like language and brands, which leave themselves open to constant redefinition.  With language, rappers have raided the dictionary and written in new entries to every definition . . . The same thing happens with brands—Cristal meant one thing, but hip-hop gave its definition some new entries. . . . Cristal, before hip-hop, had a nice story attached to it: It was a quality, premium, luxury brand known to connoisseurs.  But hip-hop gave it a deeper meaning. Suddenly, Cristal didn’t just signify the good life, but the good life laced with hip-hop’s values: subversive, self-made, audacious, even a little dangerous. The word itself—Cristal—took on a new dimension.”).
[35] Bernard Stamler, A New Campaign for Courvoisier, Brandy of Napoleon, Looks for Younger, Hipper Customers, N.Y. TIMES (Aug. 29, 2000), http://www.nytimes.com/2000/08/29/business/media-business-advertising-new-campaign-for-courvoisier-brandy-napoleon-looks.htmlsee also Hillary Chura, Spirits Marketing: Global Hue to Handle Courvoisier Business, ADVERTISING AGE (Jan. 20, 2003), http://adage.com/article/news/spirits-marketing-globalhue-handle-courvoisier-business/50448/.
[36] JEAN-MARC LEHU, BRANDED ENTERTAINMENT: PRODUCT PLACEMENT AND BRAND STRATEGY IN THE ENTERTAINMENT BUSINESS 175 (2007).
[37] Press Release, Beam Global Spirits & Wine, Courvoisier Launches New Advertising Campaign Inspiring Consumers to ‘Find Greatness Within’ (Oct. 16, 2007), http://finance.bnet.com/bnet/news/read?GUID=3497442.
[38] LEHU, supra note 36, at 175.
[39] See generally Steinberger, supra note 26.
[40] See generally Jay-Z, supra note 34 (explaining the rapper’s decision to publicly boycott the champagne he once touted in his lyrics).
[41] See, e.g., Claire Bothwell, Burberry Versus the Chavs, BBC NEWS (Oct. 28, 2005), http://news.bbc.co.uk/2/hi/business/4381140.stm (“Only five years ago, Burberry was the darling of the fashion world after undergoing one of the most envied brand reinventions of recent years . . .  But all too quickly, the brand became a victim of its own success.  Label-conscious football hooligans started to adopt the distinctive check.  It was associated with people who did bad stuff, who went wild on the terraces.”) (internal quotation marks omitted); Liz Jones, The Luxury Brand with a Chequered Past, Burberry’s Shaken Off Its Chav Image to Become the Fashionistas’ Favourite Once More, MAILONLINE (June 2, 2008), http://www.dailymail.co.uk/femail/article-1023460/Burberrys-shaken-chav-image-fashionistas-favourite-more.html.
[42] See, e.g., Anthony Venutolo, Jersey Shore Season 4 Premiere Sets Ratings Record, NEW JERSEY ONLINE (AUG. 5, 2011), http://www.nj.com/entertainment/tv/index.ssf/2011/08/jersey_shore_italy_florence_ra.html; “Jersey Shore” saves MTV from Ratings Slump, CBS NEWS (Aug. 31, 2010),  http://www.cbsnews.com/stories/2010/08/31/entertainment/main6824265.shtml; David Showalter, MTV’s ‘Jersey Shore’ Success is a Cultural Phenomenon, NEW JERSEY NEWSROOM (July 13, 2011), http://www.newjerseynewsroom.com/movies/success-of-jersey-shore-is-a-cultural-phenomenon.
[43] See supra note 5 and accompanying text.
[44] See, e.g., Neil Genzlinger, Surf, Skin and Jersey. What’s Not to Love?, N.Y. TIMES Jan. 4, 2010, at C1, available at http://www.nytimes.com/2010/01/04/arts/television/04shore.html (“Young People Need Bad Examples. . . .  They have no idea how much ignorance, narcissism, predatory sexism and hair-gel abuse lurk out there in the real world.  Unless they watch ‘Jersey Shore.’”).
[45] See, e.g., Letter from New Jersey Italian American Legislative Caucus to Philippe P. Dauman, President and Chief Executive Officer, Viacom, Inc. (Dec. 22, 2009), http://www.njsendems.com/Docs/Italian%20American%20Caucus%20Letter%20on%20MTV%27s%20%27Jersey%20Shore,%27%2012-23-09.pdf.
[46] See generally Jeremy N. Sheff, The Ethics of Unbranding, 21 FORDHAM INTELL. PROP., MEDIA & ENT. L. J. 983 (2011).
[47] Simon Doonan, How Snooki Got Her Gucci: The Dirt on Purses, N.Y. OBSERVER (Aug. 17, 2010, 5:55 PM), http://www.observer.com/2010/culture/pricey-landscaping.
[48] Cathy Horyn, Snooki’s Time, N.Y. TIMES, July 23, 2010, at ST1, available at http://www.nytimes.com/2010/07/25/fashion/25Snooki.html.
[49]As of this writing Snooki has nearly 4.2 million followers on Twitter.  Nicole Polizzi, TWITTER, http://twitter.com/#!/snooki (last visited Jan. 22, 2012). A substantial number of undergraduates at Rutgers University persuaded their administration to pay her more than $30,000 to appear on campus, and nearly 1,000 lined up for the chance to hear her speak. Aman Ali, Rutgers University defends Snooki’s $32,000 appearance, REUTERS (Apr. 1, 2011), http://www.reuters.com/article/2011/04/01/us-snooki-idUSTRE7305LQ20110401; Rutgers University’s Statement on Nicole “Snooki” Polizzi and her Comedy Act’s Appearance on Campus (Apr. 4, 2011), http://news.rutgers.edu/medrel/statements/2011/statement-from-rutge-20110401.  One commentator noted that Snooki probably generated ten times that sum in free publicity for the University, much as she boosts publicity—and with it, sales—for bars and clubs at which she appears for as little as a few minutes.  Catherine Rampell, Snookinomics, N.Y. TIMES: ECONOMIX BLOG (Apr. 11, 2011), http://economix.blogs.nytimes.com/2011/04/11/snookinomics/.
[50] While The Situation lacks Snooki’s Twitter footprint—at just over a million followers—his Facebook page suggests a much deeper fan base.  Compare Michael Sorrentino, Twitter, http://twitter.com/#!/ITSTHESITUATION (last visited Jan. 22, 2012); with MIKE “THE SITUATION”, FACEBOOK, https://www.facebook.com/MikeTheSituation (last visited Jan. 22, 2012) (Approximately 3.83 million “likes”).
[51] Emma Rosenblum, The Situation with The Situation, NEW YORK MAG. (June 20, 2010), http://nymag.com/guides/summer/2010/66798/.
[52] Elizabeth Holmes, Abercrombie and Fitch Offers to Pay ‘The Situation’ to Stop Wearing Its Clothes, WALL ST. J. SPEAKEASY BLOG (Aug. 16, 2011), http://blogs.wsj.com/speakeasy/2011/08/16/abercrombie-and-fitch-offer-to-pay-the-situation-to-stop-wearing-their-clothes/.
[53] News Release, Abercrombie & Fitch, Abercrombie & Fitch Proposes a Win-Win Situation (Aug. 12, 2011), available at http://phx.corporate-ir.net/phoenix.zhtml?c=61701&p=irol-newsArticle&ID=1597274.
[54] Id.
[55] Id.
[56] Holmes, supra note 52.
[57] Rosenblum, supra note 51; Holmes, supra note 52.
[58] Holmes, supra note 52; see also Andrea Felsted & Alan Rappeport, Abercrombie Sees Off Awkward Brand Situation, FINANCIAL TIMES (Aug. 19, 2011), http://www.ft.com/cms/s/0/0c54f972-ca7c-11e0-94d0-00144feabdc0.html?ftcamp=rss.
[59] See, e.g., Kimberly R. McNeil et al., ‘Did You Hear What Tommy Hilfiger Said?’ Urban Legend, Urban Fashion and African-American Generation Xers, 5 J. FASHION MKTG. & MGMT. 234, 235 (2001) (“[T]he persistence of the Tommy Hilfiger rumour suggests that this urban legend could possibly influence sales of the brand in a core market . . . the impact of such rumours could be tremendous.”); cf. generally Jay-Z, supra note 34.
[60] See generally, e.g., Sarah McBride & Ethan Smith, Music Industry to Abandon Mass Suits, WALL ST. J., Dec. 19, 2008, at B1, available at http://online.wsj.com/article/SB122966038836021137.html (“[T]he legal offensive ultimately did little to stem the tide of illegally downloaded music. And it created a public-relations disaster for the industry, whose lawsuits targeted, among others, several single mothers, a dead person and a 13-year-old girl.”).
[61] England Riots: Maps and Timeline, BBC NEWS (Aug. 15, 2011), http://www.bbc.co.uk/news/uk-14436499 [hereinafter Timeline]; Tottenham Police Shooting: Dead Man Was Minicab Passenger, BBC NEWS (Aug. 5, 2011), http://www.bbc.co.uk/news/uk-england-london-14423942.
[62] Timelinesupra note 61; Riots in Tottenham After Mark Duggan Shooting Protest, BBC NEWS (Aug. 7, 2011), http://www.bbc.co.uk/news/uk-england-london-14434318.
[63] Timelinesupra note 61; cf. Zoe Williams, The UK Riots: The Psychology of Looting, GUARDIAN (Aug. 9, 2011), http://www.guardian.co.uk/commentisfree/2011/aug/09/uk-riots-psychology-of-looting.
[64] London Rioters, ‘Showing the rich we do what we want’, BBC NEWS (Aug. 9, 2011), http://www.bbc.co.uk/news/uk-14458424.
[65] Williams, supra note 63; Anthony France & Brian Flynn, Cops Vow to Nail the Twitter Rioters, THE SUN (Aug. 9, 2011), http://www.thesun.co.uk/sol/homepage/news/3741129/Cops-vow-to-nail-the-Twitter-rioters.html.
[66] Michael Cervieri, Tomorrow’s Cover of the Guardian, FUTURE JOURNALISM PROJECT (Aug. 8, 2011), http://futurejournalismproject.org/post/8658034888/guardian-cover-london-riots.
[67] See, e.g., Neate et al., supra note 6; Janet Street Porter, Big Brands Pay Price of Flirting with Gangsta Chic, DAILY MAIL ONLINE (Aug. 15, 2011), http://www.dailymail.co.uk/femail/article-2025978/UK-riots-Big-brands-like-Nike-Adidas-pay-price-flirting-gangsta-chic.html.
[68] See, e.g., Neate et al., supra note 6; Porter, supra note 67; Chris Roper, The Great UK Shopping Riots, MAIL & GUARDIAN ONLINE (Aug. 10, 2011), http://mg.co.za/article/2011-08-10-the-great-uk-shopping-riots (“[F]orce-feeding people adverts about things they’ll never have, and lives they will never be allowed to share, was almost certain to result in a mob that has decided to steal life, rather than live it vicariously . . . . [T]he thousands who aren’t given the opportunities to earn might eventually, as in the UK, decide to just take . . . . [T]he Great UK Shopping Riots prove that advertising works.  The shops that are being looted are mainly brands that have sold themselves to poor people.”)
[69] See generally Mark Ritson, Spare Us This Riot of Dodgy Brand Theories, MARKETINGWEEK (Aug. 18, 2011), http://www.marketingweek.co.uk/sectors/industry/spare-us-this-riot-of-dodgy-brand-theories/3029361.article.
[70] Rosie Baker, Retailers Targeted by Rioters Suffer Fall in Brand Perception, MARKETINGWEEK (Aug. 17, 2011), http://www.marketingweek.co.uk/sectors/retail/retailers-targeted-by-rioters-suffer-fall-in-brand-perception/3029330.article.
[71] Neate et al., supra note 6.
[72] Porter, supra note 67.
[73] See, e.g., Neate et al., supra note 6; Cervieri, supra note 66.
[74] Neate et al., supra note 6.
[75] Levi’s, Levi’s® Go Forth 2011 (English), YOUTUBE (July 20, 2011), http://youtu.be/KT16DcHcjRA; Charles Bukowski, The Laughing Heartin BETTING ON THE MUSE: POEMS & STORIES 400 (1996) (“your life is your life/don’t let it be clubbed into dank submission./be on the watch.”).
[76] Levi’s, supra note 75.
[77] See, e.g., Tim Nudd, Levi’s Thinks It’s a Good Time for Riot Imagery in Ads, ADWEEK: ADFREAK (Aug. 9, 2011), http://www.adweek.com/adfreak/levis-thinks-its-good-time-riot-imagery-ads-134026.
[78] See, e.g.Post-Riots Levi’s And Nike To Shift Comms And Marketing Strategy From Rebellion, PR WEEK (Aug. 18, 2011), http://www.prweek.com/uk/news/1085216/Post-riots-Levis-Nike-shift-comms-marketing-strategy-rebellion/.
[79] Eliza Williams, Awkward Timing for New Levi’s Ad, CREATIVE REVIEW: CR BLOG (Aug. 10, 2011), http://www.creativereview.co.uk/cr-blog/2011/august/awkward-timing-for-new-levis-spot; Sara Kimberley, Levi’s Ad Yanked Over Riot Police Scene, CAMPAIGN (Aug. 10, 2011), http://www.campaignlive.co.uk/go/news/article/1084242/levis-ad-yanked-riot-police-scene/.
[80] Rosie Baker, Levi’s Pulls Ads Following London Riots, MARKETING WEEK (Aug. 10, 2011), http://www.marketingweek.co.uk/sectors/retail/levi%E2%80%99s-pulls-ads-following-london-riots/3029146.article.
[81] See supra note 7 and accompanying text.
[82] See 15 U.S.C. § 1125(a)(1)(A) (2010) (imposing liability against uses of trademarks that are “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of [the defendant] with another person, or as to the origin, sponsorship, or approval of [the defendant’s] goods, services, or commercial activities by another person”); see generally Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839 (2007)  (tracing the historical development of Anglo-American trademark law).
[83] See, e.g., Mark A. Lemley & Mark McKenna, Irrelevant Confusion, 62 STAN. L. REV. 413, 414 (2010) (“Over the middle part of the twentieth century, courts expanded the range of actionable confusion beyond confusion over the actual source of a product—trademark law’s traditional concern—to include claims against uses that might confuse consumers about whether the trademark owner sponsors or is affiliated with the defendant’s goods.”).
[84] See generally Borden Ice Cream Co. v. Borden’s Condensed Milk Co., 201 F. 510 (7th Cir. 1912).
[85] See, e.g., Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407 (2d Cir.1917); Yale Elec. Corp. v. Robertson, 26 F.2d 972 (1928); see generally Lemley & McKenna, supra note 83, at 423-27.
[86] Compare United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918) (limiting common law trademark rights to geographic region of actual use); with 15 U.S.C. § 1072 (2010) (providing that federal registration of a trademark provides nationwide notice of a trademark claim); Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) (holding that nationwide notice does not entitle the federal registrant to relief where geographic distance makes likelihood of confusion unlikely, but does give the registrant priority when and if it expands into the geographic region of a later adopter’s actual use).
[87] RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 33 cmt. a (1995) (“The historical conception of trademarks as symbols indicating the physical source of the goods led a number of early courts to conclude that the owner of a trademark could not license others to use the mark without destroying the significance of the designation as an indication of source.  Licenses were sometimes declared invalid as a fraud on the public, and licensors risked forfeiture of their rights in the mark through a finding of abandonment.”); see also McKenna, supra note 82, at 1893-95, Lemley & McKenna, supra note 83, at 425-27.
[88] See, e.g., 15 U.S.C. § 1055 (2010) (codifying the principle that licensing of trademarks to related companies does not invalidate, and can strengthen, the licensed mark).
[89] Id.
[90] See generally Zahr Said, Embedded Advertising and the Venture Consumer, 89 N.C. L. REV. 99 (2010).
[91] Anheuser-Busch, Inc. v. Balducci Publ’ns, 28 F.3d 769 (8th Cir. 1994) (parody ad in a humor magazine for fictitious “Michelob Oily” beer held infringing); Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972) (poster copying the style of a Coca-Cola advertisement but altered to read “Enjoy Cocaine” held likely to confuse at preliminary injunction stage); see Lemley & McKenna, supra note 83, at 418-21 (collecting examples).
[92] Federal Trademark Dilution Act of 1995, § 4, 109 Stat. 985, 986 (1996) (codified as amended at 15 U.S.C. § 1127 (2010)).  This statute and subsequent amendments also expanded even further the types of effects on the minds of the public that can give rise to liability.  Owners of famous trademarks may now seek to enjoin uses of their brands that threaten to “impair[] the distinctiveness” or “harm[] the reputation” of those brands, “regardless of the presence or absence of actual or likely confusion . . . or of actual economic injury.”  15 U.S.C. § 1125(c) (2010).
[93] James Gibson, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 YALE L. REV. 882, 907-23 (2007); see also Lemley & McKenna, supra note 83, at 421 (“[M]any [entertainment producers] simply cave in and change their practices rather than face the uncertainty of a lawsuit.”); cf. generally William McGeveran, Rethinking Trademark Fair Use, 94 IOWA L. REV. 49 (2008) (arguing that the cost of litigating a meritorious defense to a claim of trademark infringement creates a chilling effect on expressive uses of trademarks).
[94] Gibson, supra note 93, at 907-23.
[95] The prevalence of brand mentions in hip-hop lyrics has led many to conclude that artists are paid for such mentions—and indeed sometimes they are, even if only after the fact.  Gil Kaufman, Push The Courvoisier: Are Rappers Paid for Product Placement?, MTV (June 9, 2003), http://www.mtv.com/news/articles/1472393/rappers-paid-product-placement.jhtmlsee also Rebecca Tushnet, Running the Gamut from A to B: Federal Trademark and False Advertising Law, 159 U. PA. L. REV. 1305, 1313-14 (2011) (“Given the number of lucrative and highly visible product placement deals, . . . trademark owners can argue that consumers see a brand’s presence practically anywhere as an indication of endorsement.”).  It is thus perhaps unsurprising that MTV’s response to Abercrombie & Fitch’s publicity stunt regarding The Situation was to suggest a product placement deal.  See Clifford, supra note 5 (“MTV played along on Wednesday. ‘It’s a clever P.R. stunt, and we’d love to work with them on other ways they can leverage “Jersey Shore” to reach the largest youth audience on television,’ it said in an e-mail.”).
[96] See Kaufman, supra note 95; Said, supra note 90, at 111-17, 133-38.  Cf. Bruce Feiler, Pocketful of Dough, GOURMET, Oct. 2000, available at http://www.gourmet.com/magazine/2000s/2000/10/pocketful (“Seconds later, with new confidence, I slipped a fifty toward his hand and said, ‘Is there any way you could speed that up?’  The man felt the money, then pushed it back into my hand.  ‘Sorry,’ he said, ‘there really is nothing I can do.’  Four minutes later, though, we were seated at a table for two by the window.  Moreover, the maître d’ came to our table several times to ask if everything was satisfactory.  At the end of the evening, not because I had planned it but entirely because I felt like it, I gave him $30.  He graciously accepted.  Outside, I realized I had just witnessed the gold standard.  The maître d’ turned down the money when it was a bribe, gave us the service anyway, then accepted the money as a well-earned tip.”) (emphasis omitted).
[97] See generally, e.g., Edward Lee, Warming Up to User-Generated Content, 2008 U. ILL. L. REV. 1459; Ellen P. Goodman, Peer Promotions and False Advertising Law, 58 S.C. L. REV. 683 (2007); Rebecca Tushnet, Attention Must Be Paid: Commercial Speech, User-Generated Ads, and the Challenge of Regulation, 58 BUFF. L. REV. 721 (2010); See David Streitfeld, In a Race to Out-Rave Rivals, 5-Star Web Reviews Go for $5, N.Y. TIMES, Aug. 20, 2011, at A1, available at http://www.nytimes.com/2011/08/20/technology/finding-fake-reviews-online.html (noting the growing practice of marketers paying writers to post favorable user reviews on Amazon.com and other sites); Trevor Pinch & Filip Kesler, How Aunt Ammy Gets Her Free Lunch: A Study of the Top-Thousand Customer Reviewers at Amazon.com, , at 52-55, 78(June 12, 2011) (unpublished manuscript) (available at http://www.freelunch.me/filecabinet/HowAuntAmmyGetsHerFreeLunch-FINAL.pdf) (noting the common practice of sending top reviewers free advance copies of new books, and observing that “[a]s Amazon begins to sell more and more different sorts of goods, reviewers too begin to realize . . . that they can gain even more freebies by reviewing such items”).
[98] For example, the Federal Trade Commission’s guidelines on endorsements purport to draw extremely fine distinctions between the types of conduct that turn an ordinary consumer into a paid endorser in the blogging context.  Guides Concerning the Use of Endorsements and Testimonials in Advertising, 16 C.F.R. § 255.0 ex. 8 (2009), available at http://ftc.gov/os/2009/10/091005revisedendorsementguides.pdf.  Even the Commission itself seems to have trouble applying its guidelines consistently.  See, e.g., Nick Bilton, F.T.C. Says It Will Not Investigate Ashton Kutcher, N.Y. TIMES BITS BLOG (Aug. 19, 2011, 1:07 PM), http://bits.blogs.nytimes.com/2011/08/19/f-t-c-says-it-will-not-investigate-ashton-kutcher/.  Another example of the blurring lines between enthusiastic consumer and paid advocate comes from the increasing use of “brand ambassadors” on college campuses.  See Natasha Singer, On Campus, It’s One Big Commercial, N.Y. TIMES, Sept. 11, 2011, at BU1, available at http://www.nytimes.com/2011/09/11/business/at-colleges-the-marketers-are-everywhere.html.
[99] See William McGeveran, Disclosure, Endorsement, and Identity in Social Marketing, 2009 U. ILL. L. REV. 1105, 1107 (2009) (describing marketing through online social networks as “a form of reputational piggybacking”).
[100] Compare Wells Fargo ‘Flash Mob’ Yields 1 Million YouTube Views, THE FINANCIAL BRAND (May 9, 2011), http://thefinancialbrand.com/18345/wells-fargo-times-square-flash-mob-video/with David Downs, The Evolution of Flash Mobs from Pranks to Crime and Revolution, SAN FRANCISCO EXAMINER (Aug. 28, 2011), http://www.sfexaminer.com/local/2011/08/evolution-flash-mobs-pranks-crime-and-revolution.
[101] Cf. L.I. Couple Seeks Trademark for “Occupy Wall St.”, THE SMOKING GUN (Oct. 24, 2011), http://www.thesmokinggun.com/documents/occupy-wall-street-trademark-986531 (reporting an application to register the mark “Occupy Wall St.” for use on apparel, bumper stickers, and accessories, and a separate application for the mark “We are the 99%”—both marks being slogans of the protest movement against economic and financial elites that continues to grow and develop as of this writing).  This report prompted an apt (if not entirely original) quip by my friend and colleague Professor Laura Heymann: “The revolution will be merchandised.”
[102] Rebecca Tushnet, Gone in Sixty Milliseconds: Trademark Law and Cognitive Science, 86 TEX. L. REV. 507, 540 (2008).
[103] See supra Part II.C.
[104] See supra notes Part II.B.
[105] See supra notes Part II.A.
[106] See supra note 91 and sources cited therein.
[107] See, e.g., Lemley & McKenna, supra note 83, at 413-14 (relating an incident in which FIFA required soccer fans to surrender unlicensed team-colored pants as a condition of entering a football match).
[108] See generally, e.g., Graeme B. Dinwoodie & Mark D. Janis, Confusion over Use: Contextualism in Trademark Law, 92 IOWA L. REV. 1597 (2007) (rejecting trademark use as an independent doctrine and arguing for “contextual analysis” that focuses on confusion); Stacey L. Dogan & Mark A. Lemley, Grounding Trademark Law Through Trademark Use, 92 IOWA L. REV. 1669 (2007) (arguing that trademark use is a doctrine made necessary by the broadening scope of novel trademark claims directed at internet intermediaries); Mark P. McKenna, Trademark Use and the Problem of Source, 2009 U. ILL. L. REV. 773 (arguing that trademark use questions inevitably collapse into questions about consumer confusion).
[109] Rescuecom Corp. v. Google, Inc., 562 F.3d 123, 127-40 (2d Cir. 2009); Stacey L. Dogan, Beyond Trademark Use, 8 J. TELECOMM. & HIGH TECH. L. 135, 136 (2010) (“The Second Circuit appears to have settled the issue, at least temporarily, in its recent opinion….  The Rescuecom court held that the Lanham Act contains virtually no limitation on the type of ‘use’ of a mark that can qualify as direct trademark infringement.”).
[110] 15 U.S.C. 1125(c)(3) (2010) (excluding comparative advertising, parody, criticism, and comment, news reporting and commentary, and noncommercial use from the definition of actionable dilution); Stacey L. Dogan & Mark A. Lemley, The Trademark Use Requirement in Dilution Cases, 24 SANTA CLARA COMPUTER & HIGH TECH. L. J. 541, 549-54 (2008) (arguing that the language of the amended dilution statute supports the interpretation that only use “as a mark” can trigger dilution liability); Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 112 (2d Cir. 2010) (effectively adopting the Dogan & Lemley interpretation of the amended dilution statute).
[111] See Tiffany (NJ), 600 F.3d at 112 (holding that there can be no dilution where “there is no second mark or product at issue … to blur with or to tarnish” the plaintiff’s mark); Dogan & Lemley, supra note 109, at 552 (“[T]he only actionable ‘uses’ by a defendant of the plaintiff’s famous mark are those in which a defendant uses a trademark or trade name to identify and distinguish its own goods and services.”).
[112] See supra note 110.
[113] The Trade-Mark Cases, 100 U.S. 82, 95-97 (1879) (invalidating an early federal trademark statute for failure to limit its reach to that sphere of commerce within the power of Congress to regulate).
[114] 15 U.S.C. § 1125(a), (c) (2010) (establishing a private right of action against certain uses of a mark “in commerce”).
[115] See supra note 91 and sources cited therein.
[116] Wickard v. Filburn, 317 U.S. 111, 127-28 (1942).
[117] See supra notes 96-102 and accompanying text.
[118] See Lemley & McKenna, supra note 83.
[119]Id. at 445-53. See generally Tushnet, supra note 95 (comparing the applicable standards under trademark law and false advertising law).
[120]  Lemley & McKenna, supra note 83, at 437-39.
[121] Compare Harry Wallop, Burberry admits chav effect checked sales over Christmas, THE TELEGRAPH (Jan. 13, 2005), http://www.telegraph.co.uk/finance/2903392/Burberry-admits-chav-effect-checked-sales-over-Christmas.html (noting that the association of the brand with “chavs” had “not been helpful” to Burberry’s sales, though other factors also took a negative impact), with Jeremy Mullman, Rap Mogul’s Boycott of Cristal Champagne Unlikely to Hurt Brand, ADVERTISING AGE (June 27, 2006), http://adage.com/article/news/rap-mogul-s-boycott-cristal-champagne-hurt-brand/110203/ (reporting that a boycott by Jay-Z would not impact Cristal’s sales because it is a limited production label which is always sold out).  See supra notes 38-39 and accompanying text.  Professors Lemley and McKenna point to a study suggesting that a brand’s affiliation with a celebrity endorser who later becomes publicly associated with some moral failing tends not to reflect poorly on the brand absent some responsibility of the brand owner for the endorser’s immoral conduct.  Lemley & McKenna, supra note 83, at 437-39 (quoting Nicole L. Votolato & H. Rao Unnava, Spillover of Negative Information on Brand Alliances, 16 J. CONSUMER PSYCHOL. 196 (2006); see also Therese A. Louie, Robert L. Kulik & Robert Jacobson, When Bad Things Happen to the Endorsers of Good Products, 12 MARKETING LETTERS 13 (2001) (testing the effect on firm value of celebrity endorser blameworthiness).  But see Ace Metrix, Celebrity Advertisements: Exposing a Myth of Advertising Effectiveness 1 (2010), available at http://mktg.acemetrix.com/acton/ct/563/p-001d/Bct/-/-/ct14_1/1 (finding that advertisements featuring celebrities “do not perform any better than non-celebrity ads, and in some cases they perform much worse.”).  Of course, the brand owner is, in some sense, responsible for the brand renegade’s conduct, because it is the brand owner’s cultivation of its own image that attracts the brand renegade in the first place.
[122] Lemley & McKenna, supra note 83, at 441-443.
[123] 6 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION, § 31:145 (“A trademark is itself a powerful symbol identifying a single person, corporation or commercial source. When it is used without permission as a vehicle for someone else’s controversial message, it will be a matter of fact whether the ordinary viewer is likely to believe that the owner of the trademark sponsors or approves of the content of the message. Alternatively, the message itself may be so “morally repugnant” that the person or company would be forced to speak in rebuttal. When the property right resides in the symbol of a trademark itself, the link between defendant’s message and the trademark owner should be much more likely to occur than when the property right merely resides in a semi-public shopping center, as in Pruneyard [Shopping Center v. Robins, 447 U.S. 74  (1980)].”).
[124] See, e.g., Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1165 (C.D. Cal. 1998) (“[Plaintiff] is exercising his right to publish critical commentary about [defendant].”).
[125] Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 901 (9th Cir. 2002) (“[W]here an artistic work targets the original and does not merely borrow another’s property to get attention, First Amendment interests weigh more heavily in the balance.”).
[126] Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (allowing trademark liability only if the mark in question bears no “artistic relevance” to the work whatsoever).
[127] Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 495 (2d Cir. 1989) (extending the Rogers test to the content of expressive works).
[128] 15 U.S.C. § 1115(b)(4) (2010); KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 121-22 (2004) (“The common law’s tolerance of a certain degree of confusion on the part of consumers followed from . . . the undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first.”).
[129] New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 307-08 (9th Cir. 1992) (“[W]e may generalize a class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one.  Such nominative use of a mark—where the only word reasonably available to describe a particular thing is pressed into service—lies outside the strictures of trademark law.”).
[130] See supra note 111.
[131] See, e.g., Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. REV. 960, 973 (1993) (“So long as trademark law limits itself to its traditional role of avoiding confusion in the marketplace, there’s little likelihood that free expression will be hindered.”); Robert C. Denicola, Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protections of Trade Symbols, 1982 WISC. L. REV. 158, 206 (1982) (“The First Amendment will not permit the trademark owner the power to dictate the form, and thus the effectiveness, of another’s speech simply because his trademark has been used to express ideas that he would prefer to exclude from the public dialogue.”); Rochelle C. Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 NOTRE DAME L. REV. 397 (1990).
[132] Bally Total Fitness, 29 F. Supp. 2d at 1165 n.2 (“[N]o reasonably prudent Internet user would believe that ‘Ballysucks.com’ is the official Bally site or is sponsored by Bally.”); Cliffs Notes, 886 F.2d at 494 (“A parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.  To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the customer will be confused.”); Rogers, 875 F.2d at 1000 (“[M]ost consumers are well aware that they cannot judge a book solely by its title any more than by its cover.”); New Kids on the Block, 971 F.2d at 308 (“Such use is fair because it does not imply sponsorship or endorsement by the trademark holder.”).
[133] Descriptive fair use doctrine reflects similar priorities.  The Supreme Court has noted that tolerating confusion in descriptive fair use cases is justified, at least in part, by the trademark owner’s role in creating the circumstances that give rise to that confusion.  KP Permanent Make-Up, 543 U.S. at 121-22 (“The common law’s tolerance of a certain degree of confusion on the part of consumers followed from the very fact that in cases like this one an originally descriptive term was selected to be used as a mark.”).  Brand owners who trade on social images cultivated in their own marketing campaigns find themselves in a similar position when a brand renegade invokes those meanings in ways that might give rise to confusion as to affiliation or sponsorship.
[134] 875 F.2d 994 (2d Cir. 1989).
[135] See, e.g.Mattel, 296 F.3d at 901-02 (9th Cir. 2002); Cliffs Notes, 886 F.2d at 494.
[136] Rogers, 875 F.2d at 999; see also Cliffs Notes, 886 F.2d at 495 (describing the Rogers test as a “balancing approach”).
[137] Rogers, 875 F.2d at 1000 (“In these circumstances, the slight risk that such use of a celebrity’s name might implicitly suggest endorsement or sponsorship to some people is outweighed by the danger of restricting artistic expression, and the Lanham Act is not applicable.”).
[138] See Yankee Pub. Inc. v. News America Pub. Inc.  809 F. Supp. 267, 276 (S.D.N.Y. 1992) (“[W]here the unauthorized use of a trademark is for expressive purposes of . . . news reporting, and commentary, the law requires a balancing of the rights of the trademark owner against the interests of free speech.”); cf. New York Times v. Sullivan, 376 U.S. 254, 265 (1964) (holding that private lawsuits against newspapers over the content of their reporting implicate the First Amendment).
[139] See, e.g.Mattel, 296 F.3d at 902-07 (holding that the “noncommercial use” exception to liability under the 1996 dilution statute—preserved in the 2006 amendments—exempts from dilution liability all expressive uses of a mark that do not fall within the definition of commercial speech for First Amendment purposes).
[140] See supra notes 102-105 and accompanying text.
[141] See supra note 20 and accompanying text.
[142] See Sheff, supra note 3, Part III (arguing that conspicuous consumption of status goods is expressive conduct under the First Amendment); cf. Lessig, supra note 14 at 946-47 (discussing the construction of social meaning—idiosyncratically defined differently than the term is used in this Article—through, among other things, individuals’ acts and behaviors).
[143] See supra notes 20-23 and accompanying text.
[144] Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. REV. 621, 703 (2004) (“It has long been a cliché, of social theory as much as of advertising practice, that consumers communicate with each other by the objects they consume.”).
[145] See Lisa P. Ramsey, Increasing First Amendment Scrutiny of Trademark Law, 61 S.M.U. L REV. 381, 386 n.22 (2008) (citing sources); see generally, e.g., Kozinski, supra note 132, at 973; Denicola,supra note 132, at 195–200; Dreyfuss, supra note 132.
[146] See, e.g., Rosenberger v. Rector & Visitors of Univ. of Va., 515 U.S. 819, 828-29 (1995) (stating that government may not regulate speech based on its substantive content or the message it conveys, nor may it favor one speaker over another); R.A.V. v. St. Paul, 505 U.S. 377, 391 (1992) (invalidating special prohibitions on speakers who express disfavored views on sensitive subjects); cf. ALEXANDER MEIKLEJOHN, FREE SPEECH AND ITS RELATION TO SELF-GOVERNMENT 26 (1948) (“Just so far as, at any point, the citizens who are to decide an issue are denied acquaintance with information … which is relevant to that issue, just so far the result must be ill-considered, ill-balanced planning for the general good.  It is that mutilation of the thinking process of the community against which the First Amendment to the Constitution is directed.”) (emphasis in original).
[147] See supra notes 134-140 and accompanying text.
[148] Cf. Rogers, 875 F.2d at 999 & n.5 (holding that expressive works are not shielded from trademark liability, even where their use of a mark has artistic relevance to the work, if that use “explicitly misleads as to the source or the content of the work”).
[149] Cf. Sheff, supra note 3 (arguing that in the absence of confusion as to source or quality, the First Amendment should bar counterfeiting claims for luxury “status” brands); Sheff, supra note 46, at 17 (arguing that the stealth marketing campaign involving Snooki’s consumption of authentic luxury handbags is unproblematic from an ethical standpoint).
[150] Cf. MEIKLEJOHN, supra note 147; Laura A. Heymann, The Public’s Domain in Trademark Law: A First Amendment Theory of the Consumer, 43 GA. L. REV. 651 (2009).

Contributory Liability for Trademark Counterfeiting in an Ecommerce World

By Scott Gelin and G Roxanne Elings* A pdf version of this article may be downloaded here. It has never been easier for sellers of counterfeit goods to avoid getting caught. The Internet is particularly well suited for anonymity, and counterfeiters readily take advantage of the Internet’s cloaking abilities. Counterfeiters are able to register domain names, operate web stores that sell counterfeit goods and/or sell counterfeit goods on third party auction platforms, accept and process credit card payments, and ship these illicit goods directly to customers, all without revealing their true identities to consumers, who often think they are buying the real thing, or to brand owners who might try to stop them. But if brand owners cannot catch the actual counterfeiters and make them pay, why not pursue the selling platforms, credit card processors, shippers, and Internet service providers who make these counterfeit sales possible? After all, these entities garner fees when counterfeiters use their services to sell and distribute fake goods. Also, these service providers may know the counterfeiters’ true identities and be in the best position to make them stop. Another advantage for brand owners to focus on service providers rather than the counterfeiters themselves is that the former are generally easier to locate and often have deeper pockets. Service providers, for their part, maintain that the counterfeiting is far removed from the services they provide. They argue that they serve a large number of customers, the vast majority of whom use these services for legitimate purposes, and that they do not have the resources to monitor each customer’s use of these services.  Service providers also argue that they have no greater knowledge of counterfeiters’ true identities than brand owners because counterfeiters provide them with phony names as well. Service providers worry about breaching privacy laws and customer obligations if they provide brand owners with customer information. Some service providers have adopted programs to take down infringing sales and revoke counterfeiters’ accounts but wonder why more brand owners are not taking greater advantage of these mechanisms. Contributory liability in the context of intellectual property infringement is the concept that a service provider can be held responsible for the acts of an infringer for whom it provides services. While the concept of contributory liability for trademark counterfeiting and other intellectual property infringement has been around for decades, it has become an especially vital topic in the age of global ecommerce. This article discusses the current state of contributory liability for trademark counterfeiting against ecommerce service providers and suggests steps, despite the uncertainty in the law, that brand owners can take to persuade third party providers to stop supporting fake sellers, as well as steps service providers can take to avoid liability. Standard for Contributory Liability in Trademark Counterfeiting Contributory liability in the context of intellectual property is governed by the Supreme Court decision Inwood Labs., Inc. v. Ives Labs., Inc.[FN1] which involved the sale of generic versions of a prescription drug using the trademark of the original drug. While the pharmacists and not the pharmaceutical companies allegedly used the trademark in question to sell the generic drug, Ives Laboratories, the trademark owner, argued that the generic drug makers were contributorily liable for infringement because they had manufactured the generic drug to resemble the brand-name drug, allowing the pharmacists to pass off the generic drug off as the real thing.[FN2] The Supreme Court held that the generic drug manufacturers could be liable for contributory infringement if they had either (1) intentionally induced the pharmacists to infringe or (2) supplied these goods when they knew or had reason to know the pharmacists would use them to engage in trademark infringement. The Supreme Court upheld the District Court’s findings that Ives Laboratories had not met either standard. [FN3] The Inwood test has since been extended from third-party suppliers of goods to apply to third-party service providers, provided the service providers exercise “direct control and monitoring of the instrumentality” used in the infringement. [FN4] As a result, flea market or swap meet operators, [FN5]landlords, [FN6] check-cashing businesses, [FN7] and shipping services [FN8]have all been found liable for trademark counterfeiting by supplying their services to those whom they knew or had reason to know were using these services to commit trademark counterfeiting. As counterfeiters continue to move their operations from brick-and-mortar stores to the Internet, the new battleground for contributory liability is the extent to which Inwood can be applied to ecommerce service providers such as selling platforms, credit card payment processors and Internet service providers. Three recent U.S. cases help focus the parameters of third-party liability in the ecommerce realm. Tiffany (NJ) Inc. v. eBay, Inc. [FN9] The seminal case to set the parameters for contributory infringement in the ecommerce context is Tiffany (NJ) Inc. v. eBay, Inc. In 2004, the iconic jewelry brand Tiffany sued eBay, the world’s largest on-line selling platform, for contributory liability for trademark counterfeiting, among other claims, based on third-party sales of counterfeit Tiffany jewelry on eBay. Tiffany argued that nearly all Tiffany products sold on eBay were counterfeit, that eBay knew about these counterfeit sales and that it not only refused to stop these sales but actively promoted them since it garnered fees for each sale of these counterfeit products. [FN10] eBay argued that it is merely an on-line platform that allows third party sellers to list and sell their own products, products which eBay never inspects or comes into contact with. eBay also argued that it had no obligation to halt sales of all Tiffany goods since many were genuine, but that if a particular Tiffany product were suspected to be fake, eBay would promptly remove the sale. [FN11] In July 2008, after a bench trial, Judge Richard Sullivan ruled in eBay’s favor, finding no liability. [FN12] The Court found that, contrary to eBay’s arguments, eBay exercised direct control and monitoring over sales of counterfeit goods on its selling platform in a way that made it analogous to a swap meet or flea market operator and was thus subject to Tiffany’s contributory infringement claim. [FN13] But the Court held that eBay did not know or have reason to know that all or substantially all Tiffany products being sold on eBay were fake. Indeed, the court found that Tiffany had not established, as it had claimed, that substantially all Tiffany products sold on eBay were fake. [FN14] The Court found that the Inwood standard did not impose a duty on eBay to anticipate future counterfeit sales but rather a duty to act promptly when it learned that a particular Tiffany product was fake. [FN15] The Court found that eBay met this standard. The Court made much about eBay’s proprietary “takedown” program called the Verified Rights Owner program (“VeRO”). Under the VeRO program, when a participating brand owner notifies eBay that it has a good faith belief that a particular eBay sale is for a counterfeit version of its products, eBay will remove that listing within twenty-four hours and unwind the sale if it has already been effectuated. The Court also noted that eBay employed a staff of 4,000 employees dedicated to fraud prevention, including investigating and stopping the sales of fakes goods on eBay. [FN16] The Court observed that Tiffany was not taking advantage of eBay’s VeRO program to remove sales of fake Tiffany products and encouraged Tiffany to do so. [FN17] Tiffany and eBay each appealed parts of the judgment. On April 1, 2010, the Second Circuit upheld the District Court’s finding that eBay was not contributorily liable for the sale of counterfeit Tiffany goods on its selling platform. [FN18] The Second Circuit affirmed the lower court’s interpretation of Inwood and its progeny to find that eBay had no duty to anticipate future sales of counterfeit goods on its platform but rather to stop specific sales when it became aware of them and that had eBay met this standard. [FN19] Louis Vuitton Malletier, S.A. v. Akanoc Solutions Inc. [FN20] Despite the strong ruling in eBay’s favor, the Tiffany v. eBay decision did not foreclose the possibility of contributory liability for trademark counterfeiting in the ecommerce context. In another contributory liability case involving ecommerce service providers brought in the United States District Court for the Northern District of California, a federal jury in August 2009 awarded the fashion house Louis Vuitton Malletier $32.4 million in a contributory trademark and copyright infringement action against the Internet service providers Akanoc Solutions, Inc. and Managed Solutions Group, Inc. for failing to shut down a specific group of China-based websites selling counterfeit Louis Vuitton handbags that Defendants had hosted. [FN21] Louis Vuitton argued that Defendants had direct oversight and monitoring of these web sites that sold counterfeit goods and that it had sent numerous letters to Defendants Akanoc Solutions and Managed Solutions Group putting them on notice of the infringement and demanding that the web sites be taken down, but that Defendants failed to comply. The jury specifically found that Defendants knew or should have known that their customers were engaging in counterfeiting and that they were in a position to stop providing these services but did not.[FN22] The jury found that Defendants had acted willfully [FN23] and awarded Louis Vuitton the then-maximum statutory damages of $1 million for each of Louis Vuitton’s thirteen trademarks, along with maximum copyright statutory damages for various copyrights. In effect, Louis Vuitton was able to satisfy the “know or should have known” prong of the Inwood test that Tiffany was unable to show in Tiffany v. eBay. Gucci America, Inc. v. Frontline Processing Corp. [FN24] In another recent action by a brand owner against ecommerce service providers, the U.S. subsidiary of the fashion house Gucci sued three banks and credit card processors last year in the United States District Court for the Southern District of New York for contributory infringement based on the sale of counterfeit Gucci bags. Gucci had brought an action in 2008 against a web store called The Bag Addiction for trademark counterfeiting. [FN25] Gucci alleged that, in the course of discovery in that action, it learned that Defendants were providing payment processing services for The Bag Addiction while knowing that the web store was selling counterfeit Gucci handbags, and, in fact, were charging higher processing fees because they recognized that there would be more product returns and credit card chargebacks since The Bag Addiction’s handbags were counterfeits. The case is currently pending. Practical Tips for Brand Owners Despite the uncertainties about the current parameters of contributory liability against ecommerce providers, brand owners should take advantage of the procedures many service providers have in place to prevent or remove counterfeit sales. One key reason why eBay prevailed in the Tiffany v. eBay case because the Court found eBay to have acted promptly to remove listings from its site as soon as it became aware that they might be fake. Given the eBay decision and the jury award in Akanoc, service providers have every incentive to act quickly when they are put on notice of an infringement.  While other selling platforms and auction sites might not have as advanced programs as eBay’s VeRO program, almost all of them – even the China-based selling platforms – will remove sales identified as fake by brand owners. Many, like eBay’s VeRO program, will go further by providing brand owners with the identities of infringing sellers and often prohibit these sellers from using their services again. Some on-line selling platforms will even agree to designate a brand name or trademark as a “forbidden” term so that sellers cannot use that term to list or describe their goods. In addition to online selling platforms, other ecommerce service providers like Internet service providers, web hosts, search engines that sell sponsored adwords and payment processors will remove listings and stop providing service upon notice of an infringement. Brand owners should set up a system to send “takedown” notices to various selling platforms on a daily basis. These takedown efforts are a cost-effective way to remove vast numbers of fake goods from the market each month, which may discourage counterfeiters altogether, or at least force them to move on to less enforced brands. Moreover, the information gathered from takedown programs can be used to identify the larger counterfeiters and the most valuable litigation targets. In the event brand owners do not receive compliance from a service provider, the brand owner’s takedown and compliance efforts may help build a case for contributory infringement like Louis Vuitton did in Akanoc. Practical Tips for Service Providers Despite the uncertainties in contributory infringement for ecommerce service providers, it is important for service providers to be aware of the factors involved in proving contributory liability and to stay on the right side of them. The Tiffany v. eBay opinion provides the clearest roadmap to date for how a service provider can avoid liability – essentially by adopting all of the enforcement policies that Judge Sullivan commended eBay for adopting. The biggest factor seems to be whether action is taken when a service provider is put on notice of infringement. While both eBay and the Defendants in Akanoc were found to have been in a position to exercise direct control  and monitoring over the infringing activities, eBay was found to have acted promptly to remove sales and stop providing services while the Akanoc Defendants were found to have intentionally continued providing services after this notice was given. Service providers should have systems in place to remove users who are selling infringing products or using their services to sell infringing goods. Service providers should make sure their posted “terms of use” and agreements with customers clearly prohibit use of their services for counterfeiting and allow them to revoke users and provide the users’ information to authorities or the brand owner. *** *Scott Gelin is a shareholder in Greenberg Traurig’s trademark/brand management group. He counsels clients in a wide variety of IP issues ranging from anti-counterfeiting and brand protection to copyright and trade dress issues. Mr. Gelin represents clients in complex litigation and transactional matters both in the United States and globally. He has significant experience helping clients in the fashion, footwear, luxury goods, beauty products, entertainment and toy industries to protect and enforce their IP rights globally. Mr. Gelin graduated with honors from Cornell Law School and as an undergraduate with honors from Duke University.  Outside of his law practice, Mr. Gelin is the Board President of Creative Arts Workshops for Kids (www.caw4kids.org) a not-for-profit which provides free weekend, after school and summer job arts programming to nearly 2,000 underserved children and teens in Northern Manhattan each year. G Roxanne Elings is a shareholder and co-chair of Greenberg Traurig’s trademark/brand management group. She has experience in a full array of brand management issues, including anti-counterfeiting, prevention of grey-market goods and securing and enforcing clients’ IP rights. Ms. Eligns has specialized in anti-counterfeiting for 20 years. She obtained the first-ever *ex parte* asset restraint order in an anti-counterfeiting action and was involved in the first efforts by the New York City Mayor’s Office to hold landlords liable for counterfeiting on the premises. She has spoken and written extensively in this area. Ms. Elings represents clients in many different industries, including the fashion, luxury goods, fragrance, consumer goods, footwear, interactive gaming and entertainment industries. [FN1] 456 U.S. 844 (1982). [FN2] Id. at 847. [FN3] Id. at 854-55. [FN4] Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999). [FN5] Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996); Hard Rock Café Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir. 1992). [FN6] Cartier Int’l BV v. Ben -Menachem, No. 06 Civ. 3917, 2008 WL 64005 (S.D.N.Y. Jan. 3, 2008); Polo Ralph Lauren Corp. v. Chinatown Gift Shop, 855 F. Supp. 648 (S.D.N.Y. 1994). [FN7] Cartier Int’l B. V. v. Liu, No. 02 Civ. 7926(TPG), 2003 WL 1900852 (S.D.N.Y. Apr. 17, 2003). [FN8] Id. [FN9] 576 F. Supp. 2d 463 (S.D.N.Y. 2008). [FN10] Id. at 494. [FN11] Id. at 494-95. [FN12] Id. [FN13] Id. at 506-507. [FN14] Id. at 507-10. [FN15] Id. [FN16] Id. at 478-79. [FN17] Id. [FN18] Tiffany (NJ) Inc. v. eBay, Inc., No. 08-3947-cv2010, U.S. App. LEXIS 6735 (2d Cir. Apr. 1, 2010). [FN19] Id. at *37. [FN20] Verdict, Agreement and Settlement, Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 2009 WL 3062893 (N.D.Cal. Aug. 28, 2009). [FN21] Id. at 9, 13. [FN22] Id. at 7. [FN23] Id. at 12. [FN24] Complaint, Gucci America, Inc. v. Frontline Processing Corp., No. 09-cv-6925 (S.D.N.Y. Aug. 5, 2009). [FN25] Gucci Am., Inc. v. Laurette Co., Inc., 08 Civ. 5065 (L.A.K.) (S.D.N.Y. June 3, 2008).