To show that I am not blindly pro-trademark owner, I thought I would flag an example of overenforcement – ridiculously so – of trademark rights, in the style of Saturday Night Live’s “Really?” segments.

Penn Law School is holding a symposium on fashion law, including the general counsel from Coach, Ralph Lauren, Stuart Weitzman, and Forever 21. The poster for the event includes a clever parody of a Louis Vuitton design. It fits the classic definition of parody: it is similar enough to the original that you know it is a statement about the original, but it is different enough to know that it was not created by the original mark holder.

Part of the poster design is reproduced below:

Louis Vuitton sent a demand letter to the dean of the law school, complaining that the use on the poster was trademark infringement and dilution of a famous mark.  Here’s a key quote: “This egregious action is not only a serious willful infringement and knowingly dilutes the LV Trademarks, but may also mislead others into thinking that this type of activity is somehow ‘legal’  or constitutes ‘fair use’ because the Penn Intellectual Property Group is sponsoring a seminar on fashion law and ‘must be experts.’” The letter goes on to imply that Penn’s IP professors must not know anything about IP law since they let this happen. Penn’s counsel wrote a response that was much more polite that I would have been (or am about to be).

Now is the part of the post where I ask “Really?”

Really, Louis Vuitton? You can’t tell a parody from infringement? Is fair use fictional? So fictional that you use air quotes when you refer to it? I know you have to police your mark, but it seems like picking your battles makes sense. Perhaps you think that if you send enough of these letters, fair use really will become fictional.

For that matter, did you not think that people would notice that you lost a parody case already? A case that they teach in law school, where apparently nobody understands fair use and parody? Really?

And do you really think that anyone will be fooled into thinking you are sponsoring a symposium at a law school featuring the general counsel of your competitors and clearly denoted law firm sponsors but no fashion sponsors? Even if LV were sponsoring this, any consumer would expect to see the real logo, not a parody of it.

Also, have you forgotten that trademark use must be in connection with goods and services? It was clever of you to rename the free “symposium” (an obviously noncommercial educational event) as a “seminar” to imply that it is a service offering.

There are so many things wrong with this cease and desist letter, and your insult to the faculty only makes it worse, because IP professors everywhere will take umbrage.

And while I’m ranting about overpolicing by fashion companies, I’ll add, “Really, Coach?” Really, did you think that you could own the word “Coach” including against every coaching service? [Insert your favorite coach name here] would be appalled.

By opposing the mark “Coach” as applied to standardized test books and software, you must have known that no consumer would confuse your high end goods with educational products. But by pressing the dilution doctrine, you must have been shocked when a court ruled that not only did the educational coach mark not dilute your own, but that your own mark isn’t famous enough to support dilution – at least not based on that weak evidence you submitted.

Ouch, that has to hurt, because now every coaching service that receives your overblown cease and desist letter will have an appellate decision case to cite against you. I guess that’s what happens sometimes when you overpolice and someone pushes back.  You might find out that your mark isn’t as strong as you thought it was and that you might actually prove your claims rather than scare people into submission. Really.

West Virginia University has requested a preliminary injunction to stop MivaMan, LLC/Fastees.com from producing allegedly infringing t-shirts.  WVU strictly polices the production and licensing of apparel containing its registered and common law trademarks.  It is unclear, however, which trademarks are being used in these shirts.  And likelihood of confusion or actionable dilution seems a bigger question.

From the WVU press release, the list of WVU marks linked above, and local news accounts (here and here), it appears that WVU claims Fastees is infringing trademark rights in the words “West Virginia” in connection with the University, and in the slogan “Let’s go Mountaineers!”, as well as by using the official colors and typeface of the University.  Indeed, many shirts do contain the words “West Virginia” and a couple of them reference the common law mark “Let’s Go Mountaineers!” through the language “Let’s Go! Drink Some Beers!”*  The shirts also use blue and gold, which are the University colors.  Those colors are also the official colors of the state of West Virginia, as adopted by the State Legislature in 1963.

Without having seen the Complaint or being privy to the underlying facts, it is not clear to me that Fastees is using WVU’s marks.  And whether any of this is done in a way likely to be confusing to consumers, or actionably diluting by tarnishment, is further in doubt.  In the WVU Statement, Becky Lofstead, vice president of communications, is quoted as saying, “It is WVU’s responsibility to protect the reputation, integrity, image, and goodwill of the University through the proper use of our federally registered marks.”  While some of the t-shirts sold by Fastees are certainly less than classy, I’m not sure trademark law is the best way to protect the WVU image here.

*The middle exclamation mark is a reference to the stadium chant by fans at football games.  One half of the stadium yells, “Let’s Go!” and the other side follows with a resounding, “Mountaineers!”

Dublin Dr. Pepper and Dr. Pepper Snapple Group have settled their trademark licensing dispute and Dublin Dr. Pepper, the beverage darling of the Lonestar State, is no more.

Dublin Dr. Pepper is a Texas favorite.  This original Dr. Pepper was created in 1891, and its birthday is still celebrated every year in the town of Dublin, which changes its name to “Dr. Pepper, Texas” each year on that day.  What makes Dublin Dr. Pepper unique in today’s market is the fact that it has continuously (even during difficult times, including WWII sugar shortages) been manufactured with cane sugar—which gives it a distinct (many would just say “better”) taste.

For years, Dr. Pepper Snapple Group and Dublin Dr. Pepper operated under the terms of a licensing agreement.  The agreement provided, inter alia, that the sales territory for Dublin Dr. Pepper would be limited to six counties in Texas, and that Dr. Pepper Snapple Group would approve designs for the Dublin Dr. Pepper bottles.  Several months ago Dr. Pepper Snapple Group filed a complaint alleging that Dublin Dr. Pepper violated the terms of the agreement by selling Dublin Dr. Pepper outside of its agreed-upon six county territory (through internet sales, telephone sales, and otherwise) and creating a likelihood of confusion in the marketplace.

Dublin Dr. Pepper countersued, claiming that Dr. Pepper Snapple Group wanted to create its own “retro” version of Dr. Pepper, using trade dress similar to that of Dublin Dr. Pepper based on designs Dublin Dr. Pepper had submitted for approval in the past.  (Dublin Dr. Pepper is quick to point out that Dr. Pepper Snapple Group’s version was made with refined beet sugars, however, and not cane sugar.)

The settlement agreement provides, among other things, that Dr. Pepper Snapple Group will make a Dr. Pepper with “nostalgic packaging” sweetened with cane sugar that will be distributed to certain parts of Texas—but it won’t be called “Dublin Dr. Pepper.”  Austin station KXAN reports on the story here, and the Wall Street Journal story can be found here.  Dublin Dr. Pepper’s original response and counterclaim to the lawsuit can be found here.  What the newly named “Dublin Bottling Works will be doing next is discussed in the Dallas Observer blog here.

The underlying issues would be good fodder for a trademark class, including establishment of trademark rights, trade dress, geographic designations, geographic limitations on sales, concurrent use, infringement, and trademark policing.

“Tequila” is registered appellation of origin for spirits produced in five Mexican states. A storm is now brewing over proposals in Mexico sponsored by the tequila industry that would limit the use of the word “agave” — the genus of the blue agave plant from which Tequila is distilled — in connection with both tequila itself and other spirits (mezcal and banacora) distilled from various agave species.

Resistance is growing.  Even the botanical community is pointing out the absurdity of the limiting use of a genus when the tequila industry itself relies on a particular species. Given opposition by Cofemer, Mexico’s Commission on Regulatory Improvement (within the Ministry of the Economy), adoption of the standard is far from a sure thing.

• Coverage from The Economist (”Storm in a shot glass”).
• Opposition by the Tequila Interchange Project (”Stop Nom 186″).
• Coverage and opposition by Diffords Guide.
• Homepage of the National Chamber of the Tequila Industry (CNIT).
• The NOM-186 proposal (in Spanish), from the Ministry of the Economy. A related proposal comes from IMPI, Mexico’s Institute of Industrial Property, or intellectual property agency.

Nearly two years ago, I received an email from the Director of Fordham’s Center for Law and Information Policy, stating that the name of our center infringed the rights of Fordham.  I responded that our center, like many others at law schools across the nation*, uses “center” and “law” in its descriptive title, and then refers to the subject matter of the center—in our case, “intellectual property” (in their case, “information policy”).  I assured him that we always use our school’s name in any materials referencing the center.  The trademark professor in me wanted to write a long missive about both trademark law and policy.  The human being in me wanted to make a goofy yet heartfelt reference and say, “Can’t we all just get along?”  Instead, I closed by saying, essentially, that I think what they are doing is great, and I think what we are doing is great, and what law schools across the country are doing by creating enhanced learning opportunities for students in centers of research and dialogue and policy is great.  I also extended an invitation for him to come visit sometime and see the kinds of things we do at Texas Wesleyan.

(I also told him that we do have a logo, which uses the acronym of the center with the words “Center for Law and Intellectual Property” and our Texas Wesleyan house mark, and I assured him that we always use the name of the school in every piece of material we send about the center, as we have a strong interest in identifying ourselves as a Texas Wesleyan initiative.)

I did not hear from him again.  However, after our email exchange, Fordham revamped the webpage for its center and applied for federal registration of their acronym CLIP for a long list of goods and services (and using the phrase “intellectual property” four times).  That registration issued at the end of October, and the President of Texas Wesleyan has now received a cease and desist letter stating that not only any use of the acronym CLIP but the very name of our center infringes the registered and common law rights of Fordham.

The trademark professor in me wants to write a treatise about trademark law and policy.  The human in me wants to make a goofy yet heartfelt reference and say, “Really?!?”

In this current climate, when budgets are tight and the structure and content of legal education is something we are all debating passionately, when we are all working as hard as we can to provide innovative and dynamic educational opportunities for our students, I can’t help but wonder whether our collective time and resources could be better spent on other things.  On the other hand, in a lemonade-from-lemons sense, my trademark practice students are getting to see the real-world dynamics of practice.  The fact is:  As a university, we are not about to spend our students’ tuition money in this climate defending ourselves in an out-of-state trademark lawsuit, even if we think we are right, even if we think we would win, even if I suspect the best answer on the exam would be “no likelihood of confusion.”

In the end, if we can’t call our center by its descriptive function, perhaps we will go the trademark route.  I always tell my students that FLURM would be an excellent mark, because it is a coined and unattractive word.  Perhaps we’ll change our name from the Center for Law and Intellectual Property to FLURM.  Come to Texas Wesleyan School of Law, and be a part of THE CENTER OF FLURM!  At least then, no one will be confused.

* center such as, eg, the Center for Intellectual Property Law (John Marshall Law School), the Intellectual Property Law Center (Drake Law School), the Center for Intellectual Property Law and Markets (University of San Diego), the Center for Intellectual Property (University of Maryland), the Intellectual Property Center (University of Akron), or the Center for Law and Intellectual Property (Thomas Jefferson School of Law), the Center for Intellectual Property Research (Indiana University Maurer School of Law), to name a few.

I feel like I’m scooping Jacqui here, since she’s the Madisonian Twilight expert, but I was so bothered by the recent district court decision in the Bella’s Jacket Brouhaha that I’m chiming in on the intersection of intellectual property and teen vampires.

Twilight is probably part of basic 21st century cultural literacy, so I’ll presume that, from Jacqui’s posts if from nowhere else, you’re aware of the basic contours of the very profitable films based on Stephanie Meyer’s very profitable books.

So see the jacket at right?  (Image courtesy of SashaW, apparently a big fan of the films.)  See that tiny hangtag on said jacket?  The hangtag presents an image of Kristen Stewart, in the role of Bella, wearing the same jacket.  Apparently, the jacket was originally made by BB Dakota and was formerly known as the “Leigh” jacket.  Production of the jacket was discontinued prior to the making of the first Twilight film.

For some unknown (to me) reason, a costume designer in the employ of Summit Entertainment LLC (the studio responsible for the Twilight franchise) thought that Bella (Kristen Stewart) should wear the jacket in Twilight.  Examples of such wearing from the film are here.  And Summit used the image of  Bella in her jacket as part of the promotional materials for the film, including the iconic Bella/Twilight shot, which is plastered all over the Internet.

So far so good, legally.  Since fashion design is not protected by copyright law (at least at present!) and because consumers don’t think that every piece of clothing in a movie is a sponsored product placement (at least at present!), the makers of the Twilight film did not need to get a license from BB Dakota in order to use images of the jacket in the promotion of Twilight.

Now, admittedly, there is a long-shot claim that might have been made by BB Dakota.  If people looked at the jacket in the film and associated it with BB Dakota, BB Dakota could have claimed that the appearance of the jacket in the movie suggested to viewers that BB Dakota sponsored the film made by Summit.  And if they had thought that, they would have been wrong about that implied endorsement, and that confusion could have been the basis of a trademark claim by BB Dakota.

The standard for that claim is extremely daunting, though.  Not only would BB Dakota have to prove what is called “secondary meaning” in the “trade dress” of its jacket design, it would have to show that consumers actually understood that the appearance of the jacket in the film was indicative of Dakota’s sponsorship of the film.  And even if it did that, BB Dakota would still have to overcome a very powerful (to my mind, at least) potential First Amendment defense on the part of Summit.  Simply put, Summit should not need to seek a license to have a character wear a jacket in a film–to require that would limit Summit’s freedom of expression.

Still, film makers do worry about potential claims like that.  Trademarks in many films and television shows are blurred and/or genericized due to trademark infringement liability concerns.  (They also blur and genericize, in many cases, because company logos can be protected by copyright and fair use is a risky defense.)

Putting aside the law for a second, was it fair for Summit to use the jacket in the film without compensation to BB Dakota?  After all, making a hoodie jacket can be a creative act.  Summit used the Leigh jacket in a film and BB Dakota was not paid for its creative contribution to the film.  But then again, BB Dakota benefited from the use.  If you are BB Dakota, having a troubled & angsty, vampire-loving heroine wear your hoodie jacket in a film targeted at young women is a great way to get young women interested in purchasing said hoodie jacket.  So arguably, Summit did BB Dakota a big favor by having Bella wear the Leigh jacket.  It seems like BB Dakota must have seen things this way–there’s no sign in the factual record that BB Dakota had even an inkling of annoyance that might have lead it to consider the (long shot!) trademark claim it might have brought against Summit.

So the Twilight movie comes out and the many Twilight fans who idolize Bella and identify with her turbulent romantic life seek out her jacket.  It is out there in the stores of a few retailers, but there are not many to go around.

Then things get interesting and the facts get disputed.  As far as I can make out, there are some brief emails from some non-legal folks at BB Dakota to some non-legal folks at Summit that authorize BB Dakota to use a particular image of Bella wearing the jacket in connection with the sales of the jacket.  Apparently, there are some confused talks internally within BB Dakota and there is also some confusion in communications with retailers.  The end result is that the iconic Bella Twilight promotional image is used on the hangtag that goes with the jacket, in part because someone non-legal at BB Dakota suggests that the words “As seen in the movie Twilight” would make that okay.  (However, the tag apparently did not actually use those words.  Update & correction: Professor Risch, in the post following this one, tracks down the tag, which does add those words!) The jacket was also, apparently, referred to in marketing as “the Twilight jacket,” though someone at BB Dakota denies this usage originated with the company.

Again, let’s pause to consider what’s fair now as opposed to what’s exactly legal.  Summit used the jacket in its film without asking permission from BB Dakota.  Now BB Dakota wants to sell the jacket as the jacket worn by Bella in Twilight without permission of Summit.  BB Dakota obviously wants to capitalize on the popularity of the movie, but mostly it wants to capitalize on the new popularity of the jacket it makes.

The key issue is that it adds a small hangtag to the jacket with the iconic Bella image, the one plastered all over the Internet and recognized by Twilight fans as Bella wearing the (BB Dakota) jacket.  Is it fair for BB Dakota to add this hangtag?  Note that this jacket is the jacket that Bella wore in the film, so to the extent the Twilight fans get this information it is truthful and useful information.

Summit sued. Why?

Well, let’s step into Summit’s shoes.  Imagine you are an executive at Summit, policing and monetizing the IP rights to your billion-plus dollar intellectual property franchise.  You’re making tens of millions from licensing your IP alone.  But this isn’t an easy job.  You’re up to your neck in complex negotiations, lengthy agreements, and enforcement efforts.  You want to land the best deals for getting your product line in front of consumers and you want to spin your IP into other areas: games, posters, t-shirts, and anything else you can sell to your demographic.  You’ve got pirates already doing that internationally.  At the same time, you want to maintain the quality in your brand and you don’t want to overexpose Twilight.  But you are also now ringed with hundreds of competitors in the teen supernatural space who are inching their way as closely as possible to the niche genre that you dominate, and who are more than willing to monetize any inch of the terrain that you don’t enter.

I admit that if my day-to-day job consisted of policing and monetizing the IP rights associated with Twilight, I might be a bit miffed if I saw the iconic Bella image on a hangtag of a jacket marketed as the Twilight jacket, since I would view the image and the terms “Bella” and “Twilight” as the core IP that I oversee, and I would probably view the unauthorized use of that IP as free-riding on Twilight’s economic value and goodwill.  If I happened to be a little bit on the aggressive side about the scope of the IP rights in Twilight, this is probably a good thing–it is what my employer wants.  When you’re bullish on the size and value of what you’ve got, you start your negotiations from a strong initial position.  In fact, the less I worried I was about the letter of IP law and the more immersed I was in negotiating IP deals, the more I’d be miffed by that hangtag if I worked for Summit.  (See, e.g, Jim Gibson on how industry IP negotiation dynamics generally push IP rights to expand.)

So it really isn’t too surprising to me that Summit brought a lawsuit against BB Dakota based on the hangtag shown in the picture.  It is disappointing to me, though, that Summit won its case so handily.

Actually, I think it is pretty clear that, starting from first principles, the public interest in IP law would have required a ruling in favor of BB Dakota.  But the case came out otherwise.  (An appeal might be nice, though who knows if it would come out better.)  The district court opinion, by Judge Feess of the Central District of California, is partially about bad Ninth Circuit legal precedent and partially about a rather dismissive approach by the court to BB Dakota’s various arguments.

So let’s look at the opinion.  If you want to read it, the ruling is here on Scribd.

(NB: from here on I will get a bit technical and assume the reader knows the basics of trademark law and civil procedure.)

The ruling grants summary judgment to Summit on two claims: trademark infringement and copyright infringement.  On Summit’s trademark dilution claim, it finds that dilution has occurred, but decides the question of Twilight’s fame needs to be tried.  It rejects BB Dakota’s trademark infringement claim.  I’ll comment on these four rulings in reverse order.

BB Dakota’s TM Infringement Claim

Remember the long shot claim that I suggested BB Dakota could have made based on the use of the jacket in the film?  Well, it asserted that as a counterclaim, which was fair enough as a litigation (and potential settlement) strategy. Unsurprisingly, though, the court found it was a loser.

I think Judge Feess, however, went a bit too far in criticizing BB Dakota’s argument.  From the excerpts in the opinion, it seems like BB Dakota was making the argument it had to make on this claim — people recognized the Leigh (now re-christened Nicola) jacket as the product of BB Dakota and presumed BB Dakota had sponsored Twilight.  It also conceded that it was the Twilight movie that made the jacket popular.

What’s the problem with that?  Judge Feess seems to think it would be impossible for people to watch Twilight and understand that BB Dakota, not Summit, created Bella’s jacket.  Apparently, he thinks that all new brand value created in the Twilight movie must be brand value owned by Summit:

“Common sense dictates that BB cannot sue summit for appropriating or trading off that which Summit has created.”

The thing is that Summit didn’t create the jacket.  Fans that went looking for Bella’s jacket quickly ascertained, based on their own research into the movie and the jacket, that the jacket was made not by Summit, but by BB Dakota.  So yes, Twilight could have created secondary meaning for a jacket made by BB Dakota.  That is a possibility.

As I said before, though, I think the claim was a loser out of the gate, but I think it should have been dismissed on the basis of either BB Dakota’s abandonment of the trade dress prior to the film’s debut or BB Dakota’s failure to provide sufficient evidence of secondary meaning–or some other ground.  But I don’t think the observation that “Summit made the Twilight film” should have killed this claim.

Summit’s Dilution Claim

I can’t get too upset about this one because, like most trademark law professors, I can’t really make heads or tails of what trademark dilution is.  Perhaps that’s why we all keep writing about it?

Under the TDRA, my current impression is that dilution is more or less about preventing unauthorized dilutive associations with famous marks.

So…

Did consumers associate Bella’s jacket with Twilight?  Yes.

(I might add: Does the TDRA’s standard of trademark “association” have any redeeming basis in rational legal thought?  Probably not.)

(I might also add: Does the TDRA have even a smidgen of connection with the public’s interest in trademark law?  No.)

The court finds that the use of Summit’s marks by BB Dakota was dilutive.  It finds this becasue trademark dilution is all about divorcing trademark law from consumer protection and letting it morph into a sort of quasi-copyright protection for “famous” marks.  I’ll note that this is in blatant violation of what the Supreme Court stated about the fundamental nature of trademark law in The Trademark Cases, but I think most trademark lawyers get that — very few people have offered cogent defenses of trademark dilution.  So it is not the court’s fault that it finds the use here dilutive under the TDRA; it’s Congress’s fault for enacting the law in the first place.

Curiously, though, the district court is not convinced that Twilight is famous.  (!!!)

In the early days of the FTDA, the precursor to the TDRA, some courts were strict about fame this way. Then, over time, they decided that very local companies like Wawa (the local coffee and sandwich chain around Philadelphia) were famous for dilution purposes.  The TDRA is designed to prevent that result, but I don’t think it will prevent Summit from successfully arguing that Twilight is famous.  (If dilution law made sense, I might ask if the Twilight mark were famous for clothing, but since the TDRA is so gloriously market-agnostic, completely out of keeping with any sensible understanding of trademark law, I can’t ask that question.)

Summit’s Copyright Claim

Summit’s copyright claim is based on the iconic image of Bella.  BB Dakota used the image in the hangtag and in some other marketing materials (e.g. emails and website.) In other words, it used the same image that is plastered all over the Internet and that several legal bloggers have used to illustrate their commentary on this case.  BB Dakota defended on the basis of consent, equitable estoppel, and fair use.  I’ll ignore consent and estoppel, since I don’t see any problems with the way the court handled those.  But Judge Feess really glosses over BB Dakota’s fair use arguments in a way I find disturbing.

For starters, Judge Feess accepts Summit’s argument that “[w]holesale copying of copyrighted material precludes application of the fair use doctrine.”  The cite is to a pre-Sony case, Marcus v. Rowley (9th Cir. 1983).  I doubt the standard adopted here is really the correct fair use standard (woe be to certain legal bloggers otherwise!) — instead I’d rather say that verbatim copying weighs (strongly?) against a finding of fair use.  Since the “amount used” is the third factor in the fair use test, it would be sort of odd to have a bright-line rule that if that factor = 100%, there is no need to consult the other factors.  Indeed, many courts now have permitted entire works to be copied and found that copying the entire work can be fair use.

Judge Feess then goes on to say that if, arguendo, all four factors were considered, the Bella hangtag would still fail to be a fair use.  BB Dakota made what I think is a plausible case for fair use by marching through the four factors, but the court called it “extraordinarily wooden–at best.”  The court’s analysis, though, extraordinarily brisk–at best.  Judge Feess spends about a sentence or two on each factor and completely glosses over the fact that the image is being used not to sell consumers hangtags, but to inform consumers that this is the same jacket that Bella wore in Twilight. But the specific context of the use here is hardly noticed.  Opinions like this are why predicting the outcome of copyright fair use cases is so impossible.

Not that Judge Feess could have considered this, but why do we even protect copyright in hangtags?  Lisa Ramsey has explained that when images like this are used for advertising promotion, there really isn’t much need for copyright protection.  I tend to agree.  Indeed, the ubiquity of the Bella image on the Internet seems to indicate that Summit isn’t too bothered by its reproduction, when it is not used in conjunction with the sale of jackets.

Summit’s Trademark & Unfair Competition Claims

Of all the rulings, the trademark ruling was the one I found the most disheartening.  In theory, the question the court should be considering is whether the use of the hangtags confused consumers about the source of the jacket.  That’s what trademark law is about.  So did placing the iconic Bella image on the hangtag lead consumers to believe that Summit produced or exercised quality control over the production of the jacket?

Usually courts in the Ninth Circuit march through a list of factors to determine this, but in cases like this one, where the defendant is using the mark to make reference to the plaintiff’s goods, the Ninth Circuit has saddled its district courts with the bizarre doctrine of “nominative fair use.”  I say “bizarre” with full knowledge that this may be an idiosyncratic view–many trademark lawyers know all about New Kids on the Block and think Justice Kozinski’s invention was keen and nifty.  In my opinion, though, the Supreme Court in KP Permanent correctly determined that the so-called defense was actually a presumption in favor of the plaintiff on the issue of consumer confusion.  Judge Kozinski recently revisited the doctrine in Tabari, as Rebecca Tushnet notes in this blog post, but I don’t think he improved the situation very much.

Essentially, the Supreme Court in KP Permanent said that if there is a fair use defense to trademark infringement, then that defense should be raised by the defendant — after the plaintiff meets the burden of establishing a likelihood of consumer confusion created by the defendant’s use.  So what’s the rule in the Ninth Circuit now?  According to Tabari, the plaintiff now has the burden of disproving that the nominative fair use test applies.  If the plaintiff succeeds in negating the defense, this establishes the likelihood of confusion.

If the Ninth Circuit’s nominative fair use test had some strong connection to ascertaining actual consumer confusion — i.e. whether consumers thought that Summit sponsored the jacket — this might be okay.  It would amount to a specialized test for determining confusion in a specialized set of cases.  Federal courts have plenty of these specialized trademark infringement tests and its makes sense to have customized rules for special sorts of cases.

The problem is that the nominative fair use test is skewed toward treating trademarks like copyrights, not toward determining consumer confusion.  The three prongs are whether:

(1) the product was “readily identifiable” without use of the mark;

(2) defendant used more of the mark than necessary; or

(3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.

It’s the second prong of the nominative fair use test that becomes especially pernicious in a case like this.  A test like this makes the exact copy on the hangtag, especially the typeface, important to the court.  BB Dakota’s use of the distinctive typeface borrows “too much” of the Twilight trademark.

But what does that “too much” have to do with how likely it is that consumers would think Summit was actually the party selling or authorizing the sales of the jackets?  The first two prongs of nominative fair use seem way out of line with the standard factors in a consumer confusion analysis, such as the sophistication of purchasers and the proximity of markets.

Nominative fair use in the Ninth Circuit is described as a shield for defendants, but it really operates as a sword for plaintiffs.  The nominative fair use test prevents the court from squarely considering what is going on in the minds of consumers, instead requiring it to get caught up in the misappropriation of the distinctive typeface used on the hangtag.

It would have been nice if Judge Feess could have thought about the Sleekcraft factors, but Tabari says that is not allowed.  Even if Sleekcraft controlled, it is possible that consumers would have believed the Summit endorsed the sale of the jackets due to the hangtag.

Trademark law today very often involves parties that don’t produce goods licensing their marks for use by parties that do produce goods.  So Pixar might license a toy maker to make toys for it.  If an unlicensed entity were to make a toy bearing the Pixar brand and a customer were to buy that toy due to Pixar’s reputation for quality, the consumer could be harmed if the unlicensed good had inferior qualities to those that Pixar would guarantee.

But that’s not the case here!  This is not a situation where some random company starts to make a random jacket and sells it as a “Twilight jacket.”  Rather, this is a case where Summit made a movie where Kristen Stewart did wear this exact jacket in Twilight.  Twilight fans purchasing what BB Dakota is selling are getting exactly what they want: they are getting Bella’s jacket. No harm, no foul–BB Dakota should win.

Of course, BB Dakota doesn’t get to make this argument because trademark law doesn’t even permit BB Dakota to raise it.

Indeed, if Summit were to make its own jacket and sell it to consumers as Bella’s jacket (which it may well do after this case), then that would actually be more deceptive than what BB Dakota did.  The jacket that Summit sells will not be the jacket that Bella wore.  It may be licensed, but the BB Dakota jacket is Bella’s jacket.  Summit did not make Bella’s jacket.

Judge Feess, of course, did not have the freedom to point that out.  He applied the law that applies in the Ninth Circuit, and he didn’t have the freedom to invent an alternative to the nominative fair use dictated by Tabari.

What distresses me is not so much the ruling, but how much the opinion exemplifies the general trend in trademark doctrine of ignoring the interests of consumers in favor of the proprietary claims of powerful franchises.  Ideally, trademark doctrine would primarily reflect government’s solicitude for the public’s interest in truthful commercial communication.

So this has been a longish post (3500 words!), but thanks for reading it through to the end.  Sometimes it seems the smallest things, like the hangtag on a hoodie jacket, provide the easiest avenues for complaining about the largest problems with the contemporary scope of trademark law.

TUMS is also on Twitter.

The term has long been a part of Baltimore’s collective culture, so much so that the city is home to an annual “Honfest,” complete with beehive hairdos, feather boas, and cat’s-eye sunglasses.  It isn’t difficult to see where John Waters, Baltimore native, got his inspiration.

But the proprietor of Honfest, a woman named Denise Whiting, has registered a broad variety of trademarks on “Hon” and “Hon” variations, in connection via a variety of products and services, including retail gift shops, paper goods, restaurant services.  The registrations are owned by Cafe Hon, Inc., which apparently is Denise Whiting’s business.

Now, she’s in hot water over a list of dos and don’ts — mostly don’ts — distributed to vendors who will be selling products at the upcoming Honfest. (The link goes to a Baltimore Sun story from June 3 titled “Festival fliers reignite ‘hon’ controversy”.)

The source of the consternation is principally this:  Honfest insists that vendors not sell a variety of things.  Political items.  Religious items.  And cat’s-eye sunglasses.

I assume that that cat’s eye sunglasses are for sale at the various “Hon” enterprises, including Hontown, which appears to be adjacent to Cafe Hon.  There is no evidence, from what I can see, that Cafe Hon owns a mark on cat’s eye sunglasses with no “Hon” mark affixed to them.

So the issue is this, I think:  On the one hand, Honfest, a private enterprise, has received a permit (or permits) from relevant public authorities to hold a street fair.  Honfest appears to be using a combination of that permit and its federal trademark registrations to prevent vendors at the street fair from selling merchandise that is (i) generic but (ii) competitive with Honfest merchandise.  On the other hand, vendors who don’t like the restrictions don’t have to participate in Honfest.  I assume that the list of banned items is part of some kind of agreement, and vendors can reject the agreement and stay home.

It’s possible that I haven’t picked up all of the relevant facts.  But something is amiss in Bawlmer; this isn’t the first time that the owner of the Hon marks has been accused of bullying.  What’s the right doctrinal vehicle here?  Trademark misuse  comes to mind, but only because there is a fairness problem lurking pretty close to the surface.   Suppose a Honfest vendor sells the wrong type of sunglasses.  Honfest sues (or ejects the vendor, leading to a hypothetical claim by the vendor against Honfest, to which Honfest offers a counterclaim).  Does Honfest rest on the agreement?  Is the agreement authorized, in all of its scope, by the permit granted by the relevant public authority?  Is any of it preempted by federal law?  Does Honfest pursue a claim for trademark infringement?  On what ground?

Updated:  I’ve now seen what appears to be a copy of the flyer distributed by Honfest, and it is just that – a flyer.  The relevant text reads:

“Prohibited items include but are not limited to the following: … Counterfeit designer clothing or handbags, weapons of any kind, cat’s eye sunglasses, or any product bearing the HONfest name or logo. … Prohibited items also include any and all items or products that that may infringe on the Federally registered trademarked logo and names of HONfest, Café HON, Baltimore’s Best HON, HONtown or HON. … HONfest, LLC reserves the right to remove any exhibitor or inventory that has not complied.”

Image source: Cat’s eye sunglasses at the Honfest website.

Via.