Louis Vuitton's Inability To Take A Joke Opens Up A Chance To Fix Our Broken Trademark Laws
from the my-other-bag--has-law-professors dept
As you may recall, earlier this year we wrote about a good ruling in a ridiculous lawsuit by the notoriously overaggressive trademark enforcers at luxury goods giant Louis Vuitton. You can look back at some of their earlier lawsuits, but the one we wrote about this year was particularly ridiculous. It sued a small bag maker called "My Other Bag" who made a simple tote bag that played on the famous joke bumper sticker "My Other Car is A...." with some sort of luxury car brand listed as the final point. People would put those on not-nearly-as-nice cars. In fact, when I was a kid, my dad had a Ford Pinto (yes, the exploding kind) and it had "My Other Car is a Porsche" as a bumper sticker. It's not a very funny joke (and I totally didn't get it as a kid), but it's a joke. And a fairly common one. So My Other Bag did the same thing with the following tote:
Louis Vuitton is, by its own description, an “active[] and aggressive[]” enforcer of its trademark rights.... In some cases, however, it is better to “accept the implied compliment in [a] parody” and to smile or laugh than it is to sue....The court later pointed out that the fact that LV doesn't find the joke funny is immaterial.
For whatever reason, LV appealed this decision. And while one hopes that the appeals court will make quick work of the case and back the district court ruling, something interesting may be happening as well. A group of law professors has jumped into the case with a fascinating amicus brief, not just arguing in favor of My Other Bag, but actually making a constitutional argument that the very concept of dilution in trademark law is unconstitutional under the First Amendment.
A little background first: as we've noted many times over the years, the original intent of trademark law was not to be some form of "intellectual property" akin to patents or copyrights. Instead it was designed as a consumer protection statute, to protect individuals from buying Bob's Cola thinking that it was really Coca Cola. That is, trademark isn't about locking up some sort of "property right" as much as it's a way to protect consumers from being fooled or tricked into buying a product that is not what it says it is. And yet, as the concept of "intellectual property" became a bigger and bigger thing, trademark lawyers kept repositioning trademark law as being just a third prong of the same kind of "intellectual property" as patents or copyrights.
A key part of this was inventing, basically out of thin air, the concept of "dilution." Historically, in order to prove trademark infringement, you had to show "a likelihood of confusion" from consumers, fitting with the point above about how it's for consumer protection. However, trademark lawyers found that way too constraining, and added this idea of "dilution," which was a situation where you could be found to violate trademark law if you merely "diluted" the original mark, even if there were no likelihood of confusion. For years, we've pointed out what a bad idea this was, but Congress, always eager to do short-sighted things in support of expanding intellectual property concepts, allowed the concept of "dilution" to be added to trademark law.
Enter the amicus brief from a group of excellent law professors, led by Chris Sprigman and Rebecca Tushnet (both of whom have been mentioned here on Techdirt many times before). The brief was also signed by some other legal all-stars, including Pam Samuelson, Mark Lemley and Robert Brauneis (also mentioned here many times). They argue, first, that MOB isn't causing any customer confusion. But then they also argue that the very concept of dilution itself is unconstitutional as a restriction on the First Amendment:
At the outset, it is important to recognize that the First Amendment landscape has changed substantially in recent years. This Court has ruled that content-based suppression of non-misleading speech, including non-misleading commercial speech, is presumptively unconstitutional and, to be upheld, must be shown to be narrowly tailored to serve compelling state interests....In other words, there's a big problem with the very concept of dilution in trademark law, and it's about time someone did something about it.
[....]
Trademark law’s anti-dilution provision creates a content-based right that applies to non-misleading commercial speech. Unlike defamation, it is a right unknown to the Framers of the Constitution. It was developed in the early decades of the twentieth century, when truthful commercial speech received no constitutional protection. LV claims that dilution law allows it to prevent the creation of unauthorized new associations with its mark, which is to say, to prevent consumers from forming new opinions and beliefs even in the absence of deception. This is not just content-based suppression of speech, it is viewpoint-based suppression of speech – the prime evil against which the First Amendment protects. Yet Congress provided no compelling interest to sustain its new restriction on non-misleading commercial speech when it enacted the federal dilution law, nor did it attempt to use the least restrictive means to achieve any such interest
Chances are this argument goes nowhere right now. Courts are (somewhat reasonably) loathe to take on constitutional issues when they can deal with a case directly on the law. And in this case, it seems fairly clear that My Other Bag's totes are not confusing and not trademark infringing in the slightest. So it's possible that the 2nd Circuit will avoid the constitutional issue altogether. But this is an issue that's not going away. There's been a pretty constant push to expand dilution law and lots of big companies regularly claim dilution to get around a lack of customer confusion in trademark lawsuits. That means that sooner or later a court is really going to have to address this issue, and it's difficult to see how the dilution concept can pass First Amendment muster.
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Filed Under: dilution, first amendment, jokes, trademark
Companies: louis vuitton, lvmh, my other bag
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But...
Dilution is also an issue with other things - in the 60's and early 70's there was the classic picture circulated of the Disney characters engaged in an orgy. It's clearly a parody of the Disney "sweet and pure" image. Nobody in their right mind would assume Disney produced that, but the idea that people would have a right to produce such parody with impunity and spread it far and wide does not seem right; it's more like the trademark equivalent of slander, perhaps...
So I don't see anything wrong with the handbags, but there's got to be a limit of some sort on how you depict a trademark graphic before it becomes a negative. (How about "Lois Vuitton garbage can stickers?")
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Re: But...
First of all, there is absolutely no such concept in copyright law.
Second, while there is a generally-agreed-upon principle that trademarks must be affirmatively protected, it's (1) tied into the concept of dillution that is criticized in this piece and (2) based on some very old precedents. It's true that some companies have lost their trademarks to genericization; "aspirin", "heroin", and "escalator" all used to be brand names.
But can you cite any examples more recent than the 1950's?
Kleenex, Band-Aid, Dumpster, and Sharpie are all brand names, off the top of my head, that still enjoy trademark protection despite the public's frequent use of those words as generic terms.
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Re: Re: But...
Trademark owners can lose for failure to police not only through the mark becoming generic, but also through a defense like laches (there was a successful laches defense recently, I think, in some Fraternity-related case where the trademark owners waited a couple decades or so to bring an action). So if you're not taking steps to police use that you may not really care about, I suppose that use could evolve into something you do care about and your previous inaction used against you as an equitable defense.
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This is the danger of a trademark that is overly fanciful or even just overly successful. Just look at ELEVATOR or SHREDDED WHEAT.
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Mike,
I know you don't care, and you will continue to make this false claim no matter how much evidence to the contrary you are presented with, but for the readers who might care I'll correct your mistake.
Trademark law, from the beginning, was actually about protecting mark owners from unfair competition. The notion that trademark is intended to protect against consumer deception is more recent. This is a fact, and no matter how much Mike resists the reality, it's fundamentally true and easily verified.
The fact that trademark law is intended to protect mark owners is mentioned explicitly in the Lanham Act:15 U.S.C. § 1127.
And the Supreme Court has said it numerous times, e.g.:Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773 (1992).
An excellent law review article on the foundations of trademark law is this: Mark P. McKenna, The Normative Foundations of Trademark Law, 82 Notre Dame L. Rev. 1839 (2007), available at: http://scholarship.law.nd.edu/cgi/viewcontent.cgi?article=1309&context=ndlr
Says McKenna, with ample support:I know Mike won't read it, but perhaps someone else here will find it enlightening. It's amazing what you can learn if you actually do your homework instead of just repeating anti-IP rhetoric that has little basis in history or reality.
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Re: Re:
I would suggest you read McKenna's paper, which is one of the most-cited IP articles. See, for example, here: http://writtendescription.blogspot.com/2014/09/most-cited-ip-law-articles-over-last-10_24.html
He explains that "'traditional' trademark law was primarily intended to protect producers and not consumers." Consumer confusion was relevant insofar as that confusion was how competitors would pass off producers' goods as their own. The original goal was not to protect consumers from confusion, but to protect producers from having their trade diverted by infringers whose passing off was unfair competition. The idea that protecting consumers from confusion was also a goal in its own right came later.
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Re: consumer protection
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Re: Re: consumer protection
I think most people "forget" it because it's not really true?
The FFDCA was passed in 1938, years before the Lanham Act. The FTC was formed in 1914, and the FDA in 1906. The Lanham Act itself contains a prohibition against false advertising, which sounds an awful lot like it protects consumers against false claims about products to me.
While it's true that Nader's consumer advocacy had a significant impact on legal protections for buyers, and the word "consumer" wasn't widely used until relatively recently, that doesn't mean that consumer protections didn't exist prior to 1965.
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Re: Re: consumer protection
And like so many other bad ideas from the 60s, the sooner it dies, the better. Caveat emptor is a barbaric principle. When I say this I'm not speaking in the colloquial sense, as an insult to something I don't like, but in the literal sense: the principle advocates barbarism, the opposite and antithesis of civilization.
The basic, unspoken idea underlying caveat emptor is that, for a buyer to be properly wary, he needs to be able to competently evaluate his prospective purpose. This, of course, requires expert knowledge in the subject. But how many people do you know who are experts on food, clothing, housing, automobiles, consumer electronics, medicine, and all the other myriad things people buy over the course of a perfectly ordinary modern life?
No one, of course, for one simple reason: it's literally impossible to become an expert in everything! We don't have the time or the brainpower to do so. So we came up with a better way: civilization, which is based on the fundamental principle of specialization. Everyone becomes an expert in their own specific field, freeing everyone else up to specialize in other things without needing to know all the details about them.
The problem is, the civilized model is trust-based by necessity, and when that trust is violated by evil and cynical people throwing around barbaric rhetoric like caveat emptor in an attempt to justify themselves, it begins to fall apart. So let's purge that term, and the ideas it represents, from our vocabularies, please?
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Re:
Nice try (complete with insults), but your sources don't actually say what you want them to say. Notice that all the quotes you mention talk about stopping "deception." And "unfair competition" is the same exact issue. The "unfair" part about the competition is that it's designed to fool consumers. The fact that it harms both the producer and the consumer is meaningless here. The idea was to prevent consumer confusion.
It's dilution that was added late to the game, and then lawyers looked to retroactively make it look like it had always been there.
So, yeah, I guess since your sources don't actually say what you wanted them to say, you felt the need to resort to ad homs instead. Typical. But, really, doesn't it get kind of tiring to have to always do that kind of thing?
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Re: Re:
Looking past the hilariousness that you still, after all these years, have no idea what unfair competition is, my sources do not say that the "idea was to prevent consumer confusion." You really should take an hour or two and actually read McKenna's paper. His message is quite the opposite, and he calls your view a "falsely imagined past." He continues:How does that not support what I'm saying, i.e., that McKenna shows that preventing consumer confusion was not the primary, original goal of trademark? And, honestly, why are you so opposed to actually learning more about the historical foundations of IP? I know it doesn't suit your narrative, but your misrepresentations appear intentional at this point. That's why I say you don't care about the truth. I've seen you ignore the truth for so many years that I can see deduce no alternative.
It's dilution that was added late to the game, and then lawyers looked to retroactively make it look like it had always been there.
Yes, dilution came later. But that does not change the fact that protecting PRODUCERS came first, followed by the later-coming notion that protecting CONSUMERS was also an end unto itself.
So, yeah, I guess since your sources don't actually say what you wanted them to say, you felt the need to resort to ad homs instead. Typical. But, really, doesn't it get kind of tiring to have to always do that kind of thing?
My sources say exactly what I said they say. Tiring? Not in the least. I'm happy to spend my time teaching you things. The weird part is that you are so completely closed to the idea that I might even know something you don't. In my experience, based on years of observations and interactions, you vastly over-simplify IP, leaving out the inconvenient truths that you simply don't like.
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Re: Re: Re:
I was talking about your quotes of the law itself, which make it quite clear that they're talking about unfair competition and deception. Yes, as part of commercial law, it's designed to protect the producers, but FOR THE PURPOSE of not deceiving consumers. i.e., both issues are satisfied under it. But trademark law was NEVER meant to be a "property right" as you and your funders now wish to make it out to be.
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This pretty much sums up your ridiculous approach to IP. You simply label McKenna a "maximalist" and then refuse to engage anything he says on the merits. Of course, you simply cannot refute his claims, so your only play is to brush him aside in this manner. It's predictable on your part--hence my prediction that you won't read his paper or actually discuss the possibility that maybe you don't grasp the foundations of trademark law. You've proved me right already.
The reality is that McKenna has written extensively about how trademark law has become unmoored from its original purpose. For example, his paper with that crazy maximalist Mark Lemley: http://law.stanford.edu/wp-content/uploads/sites/default/files/publication/259015/doc/slspublic/Irre levant%20Confusion%20Lemley.pdf
If you bothered to read McKenna's scholarship--which we both know you won't do--you'd know that he thinks trademark law has gone too far. As is typical, you assume that if the foundation of trademark law is to protect producers, the end result must be trademark law gone amok. McKenna shows that the reason trademark law has gone off the rails is because the relatively modern concern of consumer confusion. If trademark law were to return to its unfair competition roots, the doctrines would not be so expansive. So while you label him, wrongly, as a "maximalist," his scholarship shows that he's not so.
Coincidentally, the same dynamic appears in other branches of IP. You think that anyone recognizing copyrights, trade secrets, patents, etc. as property are maximalists who would expand those doctrines far and wide. The reality is that by focusing on the original roots of those doctrines, the expansions are much harder to justify. I know this is counter-intuitive for you, as it doesn't comport with the conventional wisdom you've adopted without much thought, but I'll just throw it out there anyway.
I was talking about your quotes of the law itself, which make it quite clear that they're talking about unfair competition and deception. Yes, as part of commercial law, it's designed to protect the producers, but FOR THE PURPOSE of not deceiving consumers. i.e., both issues are satisfied under it. But trademark law was NEVER meant to be a "property right" as you and your funders now wish to make it out to be.
My "funders"? Hilarious. I notice that you again are not addressing anything McKenna says on the merits. His scholarship, as well as that of many others, goes into great detail about how you are exactly wrong. The original purpose was to protect producers from unfair competition. The idea that protecting consumers was an end unto itself is very much more modern. I've cited McKenna's paper, and I can cite others. Can you cite one single source to back up your claim?
It's quite obvious that you haven't researched this, just as it's obvious that you have no intention of ever digging deeper. You think property = bad, and that's that. Of course, if you truly understood the property basis of IP, you'd know that it's far more limited and limiting. In fact, it suits your narrative of narrow IP far more than you realize. It's funny to watch you balk at it. The property view of trademark, as opposed to the consumer confusion, is actually far narrower.
But to provide more cites, and I'm happy to provide them all day long, I'll point you to the Seventh Circuit in 1912:Borden Ice Cream Co v. Borden's Condensed Milk Co, 201 F. 510, 513 (7th Cir. 1912)
Not only does the appellate court say, over 100 years ago, that good will is "property," that notion is so well-settled that it requires no explanation. Of course it's property. But note also that the court explains how deception, i.e., consumer confusion, is relevant because it injures the producer. This is why, in case you might not notice, the producer has a cause of action. And the court explicitly says that the "sound and true basis" is to protect the producer, not "protection of the public."
Now, I've provided yet another source to show that protecting consumers was not the original purpose. What can you show to back up your claim that "it's designed to protect the producers, but FOR THE PURPOSE of not deceiving consumers"? You would seem, as my cite again shows, to have it backwards.
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You're right. That was both uncalled for and wrong...
I got McKenna confused with someone else and overreacted and I apologize for that. My original comment was not about McKenna's paper at all, but about the quotes you gave from the law. That was it. Then I overreacted and wrote something up quickly when in a rush and that was a mistake.
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I got McKenna confused with someone else and overreacted and I apologize for that. My original comment was not about McKenna's paper at all, but about the quotes you gave from the law. That was it. Then I overreacted and wrote something up quickly when in a rush and that was a mistake.
So you're wrong about McKenna. That's great. What about the actual substantive point being made, namely, that trademark law, as a foundational matter, was not and is not only about protecting consumers? That's the issue, and you noticeably are not addressing it.
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Here's the Supreme Court of Connecticut in 1868 calling trademarks "property" (because they're based on labor, gasp!) and then explaining that it's about BOTH protecting producers and consumers:Boardman v. Meriden Britannia Co., 35 Conn. 402, 413–14 (1868)
I've got lots more if you're interested--though I have no doubt you are not. As per usual, you don't want to consider anything that doesn't fit your preconceived narrative. Plus, it's kind of nuanced, and that doesn't appear to be your thing. You're more of a broad-brush guy.
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Re: Anonymous Person vs Mike
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Here's the rub!... and where your argument falls flat!... AND WHERE THE CONSTITUTIONAL PAYDIRT IS TO BE FOUND! And it's my take on the very material you've quoted from McKenna!... and, you're free to disagree with me if you want! Simply put, to the extent that the courts have opened the door to CONSUMER PROTECTION, it has virtually CLOSED THE DOOR TO PRIORITY CONSIDERATION OF MERE COMPETITIVE CONSIDERATIONS!
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Anonymous!... if, in a case involving a trademark matter that-- due to some trademark deception!-- the very HEALTH of a given consumer (and let me not cite an example!... I'm sure there are plenty to be found!) was adversely impacted, NO "LESSER COURT (let alone, a 'CONSTITUTIONAL COURT'!)" would give-- nor should give!-- GREATER CONSIDERATION to mere competative aspects of the trademark breach! And so!... in weighing the balance between which of the two concerns should be given GREAT PROTECTION (I.E., CONSUMER HEALTH VS "COMPETITIVE HEALTH"!), a WISE COURT would side in favor of CONSUMER HEALTH (i.e., to the extent that the "trademark deception" impacted on a consumer's health and well-being!)!
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To sum up... whether "consumer protection" or "competative protection" came first, is immaterial!... by virtue of the fact that consumer protection was entertained (i.e., such protection that demonstrated protection against HARM to a consumer!), the TRADEMARK PRIORITY shifted-- AND WILL FOREVER BE SHIFTED!-- from mere "competitive considerations", to "consumer health considerations"!
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Anonymous!... courts are not in the habit!... AND ESPECIALLY, CONSTITUTIONAL COURTS!... of allowing lesser considerations to "rule the day"! Now... this depends, of course, on WHAT is being argued!... and HOW the what is being argued! And in this instance, the WHAT would be a HEALTH CONSIDERATION!... and the HOW would be dovetailing any and all lesser laws-- but yea, Constitutional provisions!-- THAT AID AND ABBET IN THE "CLARIFICATION" OF THE "PRIORITY CONSIDERATIONS OF THE TRADEMARK LAW" UNDER "JUDICIAL REVIEW"! And!... and as I've said!... HEALTH "TRUMPS" MERE COMPETITITON (no "political pun" intended!)!
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Please!... no emails!
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Re:
The fact that you cite the Lanham Act as your evidence that he is mistaken only proves his point and undermines yours, given that the Lanham Act was passed in 1946.
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Re:
It was really this wonderful moment of honesty and clarity that succinctly explained the current state of trademark litigation.
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It's all "intellectual property"
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Another
I do think there's a limit to what trademark should protect, but can I really sell a stick-on for trash cans complete with LV logo saying "My other trash can is a Louis Vuitton"? There is a certain amount of undeserved brand "slander" there.
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Re: Another
Oh come on, that is not slander but taking the snobbishness joke to its extreme. So it obviously highlights "Louis Vuitton" as the top of the scale in the joker's mind.
Have this PVP strip.
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Trademarks are NOT just about consumers
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Trademarks are NOT just about consumers
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