Fixing Trademark Law

from the is-it-time? dept

Thu, Oct 1st 2009 9:31am — Mike Masnick

Over at the Citizen Media Law Project, Kimberley Isbell, is discussing an article she recently wrote on how to fix trademark law, which is a worthwhile read. The article mainly focuses on "ambiguities" found in trademark law, with the idea of settling some of the issues and making the guidelines more complete. Specifically, she hopes for a more clear delineation of what "fair use" means in trademark law, a better understanding of what defines "use in commerce," and adding a "safe harbor" to cover trademark, since it's the loophole that's left out from the current DMCA and CDA safe harbors that protect third parties from liability online in other issues (such as copyright and defamation).

On the whole, I think it's a good discussion, but I'm not sure I agree entirely. While initially codifying fair use within trademark law sounds like a good idea, my recent conversation with William Patry may have changed my mind on that topic. He pointed out that codifying fair use in copyright law ended up doing more to narrowly limit how fair use was applied, rather than allow judges to make a more expansive and reasonable view of what constitutes fair use. He pointed to the writings of Pierre Leval on fair use, which should be required reading for anyone looking to understand fair use. Given an attempt to codify fair use in trademark law, we might end up with the same set of limitations. While having more clearly defined lines may seem like a good idea, it also provides less flexibility, and more of an opportunity to fence in fair use, rather than letting it adapt as necessary.

On the second suggestion, concerning "use in commerce," we agree that current definitions are all over the map, but again, I wonder if trying to codify it via Congress leads to more problems than solutions. Any attempt will almost certainly screw up unique cases, leading to trouble down the road. Finally, I do absolutely agree on a safe harbor need in trademark, especially as those looking to bring copyright and defamation lawsuits have recently been bending over backwards to sneak in a trademark claim as well to try to avoid the other safe harbors.

As for the improving trademark law in other ways, I would think that the best way to do so, would be to ditch the (relatively) recent concept of "dilution" as trademark infringement, and focus on the real purpose of trademark law: to prevent consumer confusion and "passing off" of one good as made by someone else. As such, I've long been a big proponent of the "moron in a hurry" test that actually has been used in some cases (i.e., "would a moron in a hurry confuse this product and believe it was made by or endorsed by the trademark holder"). Focusing on just that test as a determination of trademark infringement would likely solve many of the common problems with trademark law -- including, most likely, removing the need for either a codified fair use of "use in commerce" clause. Instead, you just apply the moron in a hurry test and toss those lawsuits that wouldn't confuse said morons.

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: dilution, fair use, safe harbors, trademark law, use in commerce

14 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

rw (profile), 1 Oct 2009 @ 9:14am

Moron in a hurry or...
Maybe a Congressman in a hurry?
[ link to this | view in thread ]
Dark Helmet (profile), 1 Oct 2009 @ 9:45am

Re: Moron in a hurry or...
"Maybe a Congressman in a hurry?"

What would Congressmen be hurrying towards? Must be a firesale on DC hookers...
[ link to this | view in thread ]
Designerfx (profile), 1 Oct 2009 @ 10:14am

problem has never been codifying it
the problem has always been congressmen being a bunch of idiots pandering to their lobbyists and paycheck. This is why although technological advancements are better than ever, our laws get ever more draconian/abused/etc. By itself, it sounds like this shouldn't do much.

codifying anything = a how-to and/or what to get around to achieve what you want because it is too narrow a scope.

The issue is that judges are very hesitant to change precedents and are even given instructions accordingly. specifically the laws that congress establishes with wanton disregard for rights or the constitution are left untouched/avoided. Everyone says judges can check congress, but they really don't do it very often and/or blatantly avoid it. it's a known tenet of law which circulates problems and gives congress all of the power.
[ link to this | view in thread ]
:Lobo Santo (profile), 1 Oct 2009 @ 10:14am

Re: Re: Moron in a hurry or...
Who would be selling hookers that are on fire?!!?
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 10:44am

Re: Re: Moron in a hurry or...
and thanks to craigs list, i keep up on all the latest fire sales in the area.
[ link to this | view in thread ]
JJ, 1 Oct 2009 @ 10:55am

Too many lawsuits
The problem with NOT having all these details written down is that we're just letting the courts decide on a case-by-case basis, i.e., lots of law suits.

The reason that's a problem is because these days a lawsuit can be so incredibly expensive (especially when one party has tremendously more money than the other) that far too many cases get settled without a trial in the trademark holders' favor even when the defendant is clearly in the right. (Usually it's as quick and simple as, "Grr, I'm gonna sue you!" "Eep! never mind, I'll just avoid your trademark like the plague!)

That is, right now aggressive trademark holders tend to win by default, without any expensive trials (which they would probably lose, but nobody they threaten wants to test that when the law is so vague).

If the law were more clear, then even a moron in a hurry could tell that many of these cases have absolutely no basis in law.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 11:32am

Well, it really depends on who is doing the codifying and HOW it is codified. For instance, health freedom advocates who see new laws that add more restrictions to food and such want explicit exceptions exempting small farms and mom and pop shops from these expensive to implement requirements. Also, perhaps health freedom advocates may want Congress to pass laws explicitly exempting the FDA or any federal agency from banning certain products without otherwise touching the law. Adding specific code that removes restrictions is good, it's not just a matter of codifying or not codifying the law or making making more or fewer laws, it's also a matter of whether or not the laws in place make sense and have exceptions.

IE:

"fair use is acceptable and includes, but is not limited to

Educational use
Making a political point
up to 30 second clips
etc...

The purpose of fair use is to promote the progress and any actions that do so are allowed. A judge may choose what activities constitute promoting the progress and which ones don't based on the context of the situation but the above activities listed are always considered to promote the progress."

Again, HOW the laws are codified is also important.
[ link to this | view in thread ]
Andrew Mottaz, 1 Oct 2009 @ 12:07pm

Trademark law needs help
Thanks for the interesting article - We received a cease and desist related to use of font names in our product recently -- saying that we could not display font names in a wysiwyg html editor. While I personally thought we were safe due to fair use, we had to accommodate the trademark holders or deal with the legal system. I hadn't thought that trademark would be a barrier to innovation the way that I think patent law can be ( at least in the software arena ), but I guess I was wrong. Wrote an article that includes the cease and desist here: http://blog.protoshare.com/2009/09/22/fonts-html-editors-and-lawyers/
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 12:23pm

Re:
Also, it's important to note that the rich and the powerful have a disproportional influence over the law. So of course any codifying is going to be to the benefit of rich and powerful entities at the cost of society.

For instance, when Obama has those secret ACTA meetings where only rich and powerful entities are allowed and the public are not. Of course the laws that result will benefit the rich and the powerful at the expense of society. DUH, this isn't rocket science it's common sense.
[ link to this | view in thread ]
Anonymous Coward, 1 Oct 2009 @ 2:19pm

Re: Trademark law needs help
Wow, that sucks. What a stupid trademark law.
[ link to this | view in thread ]
Stephan Kinsella (profile), 1 Oct 2009 @ 8:00pm

Trademark vs. patent and copyright
Mike, I've written on this before in Trademark versus Copyright and Patent, or: Is All IP Evil?. In my view the chief IP evils are copyright and patent. Aspects of TM law could be justified on property rights principles and, indeed, unlike patent and copyright, which are artificial legislated schemes, trademark principles could and did evolve in a decentralized court system. However, even trademark law has been corrupted by the state. First, it's imposed nationally via the Lanham Act even though Congress is given no power to regulate trademarks--it only has power to regulate patent and copyright. So Congress and the courts have colluded with the dishonest arguments stretching the interstate commerce clause beyond recognition. Trademark law is better if it's done on the state level, and by courts instead of by legislatures.

Further, it has accumulated manifestly unjust accrustations such as antidilution provisions, which have nothing to do with the valid anti-fraud related underpinnings of trademark law.
[ link to this | view in thread ]
Ronald J Riley (profile), 4 Oct 2009 @ 8:48am

Sect. 230 & Anti-SLAPP Should Include Trademark
Since trademark claims are often used as a vehicle for Strategic Lawsuits Against Public Participation (SLAPP)we need the following:

1) Change section 230 to explicitly include save harbor against trademark claims.

2) Pass anti-SLAPP legislation in all states and perhaps a federal anti-SLAPP law.

3) Fine both the plaintiff and their attorneys for bringing SLAPP cases. Fines should be progressively larger for repeat offenders, say ten times of the second offense and a hundred times the base fine for the third. Both the second and third offense should result in sanctions for the attorney. Perhaps a three month suspension for the second offense, a one year suspension for the third, etc. would be appropriate.

Ronald J. Riley,

I am speaking only on my own behalf.
Affiliations:
President - www.PIAUSA.org - RJR at PIAUSA.org
Executive Director - www.InventorEd.org - RJR at InvEd.org
Senior Fellow - www.PatentPolicy.org
President - Alliance for American Innovation
Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
Washington, DC
Direct (810) 597-0194 / (202) 318-1595 - 9 am to 8 pm EST.
[ link to this | view in thread ]
Mike Masnick (profile), 5 Oct 2009 @ 12:59am

Re: Sect. 230 & Anti-SLAPP Should Include Trademark
Hot damn. For once, I agree with Ronald on everything he wrote.

All three of those are excellent suggestions.
[ link to this | view in thread ]
Ronald J Riley (profile), 5 Oct 2009 @ 5:34am

There is more we would agree on.
For example, I have big problems with both the term of copyright protection and the industry's constant attempts to circumvent fair use. I do not think that their property should be stolen, but I do think that they should only be able to collect a royalty once on any given work in someone's lifetime. The property right so acquired should be transferable.

There are plenty of other issues where I agree with you Mike.

But what little time I have to devote to this forum is taken up dealing with all the anti-patent drivel.

It is bad enough that I and other inventors have to fight all the disreputable transnational corporate crooks without having to deal with those who should know better promoting the patent pirates agenda.

Inventors drive new wealth creation. You cannot have what you call innovation without the work of those who actually invent something.

All businesses depend on new wealth creation, even those who are not creating new wealth themselves.

Transnational companies are doing their best to turn America's patent system into a kings sport in order to stop upstart start companies from getting the upper hand. Where else besides America can someone take on the big companies and win?

Ronald J. Riley,

I am speaking only on my own behalf.
Affiliations:
President - www.PIAUSA.org - RJR at PIAUSA.org
Executive Director - www.InventorEd.org - RJR at InvEd.org
Senior Fellow - www.PatentPolicy.org
President - Alliance for American Innovation
Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
Washington, DC
Direct (810) 597-0194 / (202) 318-1595 - 9 am to 8 pm EST.
[ link to this | view in thread ]