THOMAS JEFFERSON SCHOOL OF LAW 2003 RESEARCH PAPER SERIES Public Law and Legal Theory Abusive trademark litigation and the Shrinking doctrine of consumer Confusion: Rethinking trademark paradigms in the Context of entertainment Media and Cyberspace By: Kevin J. Greene Harvard Journal of law and Public Policy, Vol 27 ( forthcoming) This paper can be downloaded without charge from the social Science Research Network electronic Paper Collection at: http://ssrn.com/abstract=446100
THOMAS JEFFERSON SCHOOL OF LAW 2003 RESEARCH PAPER SERIES In Public Law and Legal Theory Abusive Trademark Litigation and the Shrinking Doctrine of Consumer Confusion: Rethinking Trademark Paradigms in the Context of Entertainment Media and Cyberspace By: Kevin J. Greene Harvard Journal of Law and Public Policy, Vol. 27 (forthcoming) This paper can be downloaded without charge from the Social Science Research Network Electronic Paper Collection at: http://ssrn.com/abstract=446100
Trademark abuse in the Context of Entertainment Media and Cyberspace, by Abusive trademark litigation and the shrinking doctrine of Consumer Confusio K. Greene The recent challenge to the extension of the copyright term was grounded in the notion that Congress was giving away benefits to IP owners, typically large corporate entities without any corresponding public benefit that underlies the constitutional authority for IP grants. The giant conglomerates of the copyright industry-companies like Time-Warner/AOL, Disney, and Viacom ultimately won the day before the U.S Supreme Court. Perhaps though, the seeds for an IP counter-expansion revolt to"just say"no"to knee-jerk expansions of IP law have been planted. For example,the Supreme Court has recently limited the rights of big corporations with famous trademarks of actual economic harm rather than a mere likelihood of dilution y guiring a showing to attack smaller companies under the theory of trademark dilution, re The expansion of trademark law and its use to silence dissent from corporate mega-companies poses as great, if not greater, threat to social discourse as does copyright extension and expansion. Trademark law blossomed in an environment of robber capitalism, and was designed to prevent acts of fraud such as removing from boxes the cereal of a competitor, placing the cereal in boxes with ones own mark, and passing it I Assistant Professor. Thomas Jefferson School of Law. j.D. Yale Law School 1989. This article was upported by a research grant from Thomas Jefferson School of Law. Thanks to Professors Susan lefenbrun, Arnold Rosenberg, Sandra Pierson and Aaron Schwabach for helpful comments on earlier drafts of this article 2 See Eldred v. Ashcroft, S Ct., 65 U.S.P. Q 2d 1225(2003) S It has been noted that"no one writes to Congress protesting how copyright is being abused on the Net. no one holds demonstration. See The Cultural Anarchist vs the Hollywood Police State", Los Angeles Times Sept. 22(2002)(exploring views of Professor Lawrence Lessig on copyright extension case ge Moseley v. V Secret Catalogue, No. 01-1015(2003)
1 Abusive Trademark Litigation and the Shrinking Doctrine of Consumer Confusion —Trademark Abuse in the Context of Entertainment Media and Cyberspace, by K.J. Greene1 The recent challenge to the extension of the copyright term was grounded in the notion that Congress was giving away benefits to IP owners, typically large corporate entities without any corresponding public benefit that underlies the constitutional authority for IP grants. The giant conglomerates of the copyright industry—companies like Time-Warner/AOL, Disney, and Viacom ultimately won the day before the U.S. Supreme Court2 . Perhaps though, the seeds for an IP counter-expansion revolt to “just say ‘no’” to knee-jerk expansions of IP law have been planted.3 For example, the Supreme Court has recently limited the rights of big corporations with famous trademarks to attack smaller companies under the theory of trademark dilution, requiring a showing of actual economic harm rather than a mere likelihood of dilution.4 The expansion of trademark law and its use to silence dissent from corporate mega-companies poses as great, if not greater, threat to social discourse as does copyright extension and expansion. Trademark law blossomed in an environment of robber capitalism, and was designed to prevent acts of fraud such as removing from boxes the cereal of a competitor, placing the cereal in boxes with one’s own mark, and passing it 1 Assistant Professor, Thomas Jefferson School of Law, J.D. Yale Law School 1989. This article was supported by a research grant from Thomas Jefferson School of Law. Thanks to Professors Susan Tiefenbrun, Arnold Rosenberg, Sandra Pierson and Aaron Schwabach for helpful comments on earlier drafts of this article. 2 See Eldred v. Ashcroft, ___S. Ct. ___, 65 U.S.P.Q.2d 1225 (2003). 3 It has been noted that “no one writes to Congress protesting how copyright is being abused on the Net…[n]o one holds demonstration.” See The Cultural Anarchist vs. the Hollywood Police State”, Los Angeles Times Sept. 22 (2002)(exploring views of Professor Lawrence Lessig on copyright extension case). 4 See Moseley v. V Secret Catalogue, No. 01-1015 (2003)
off as ones own. Today, corporations routinely litigate or threaten to litigate trademark cases that are seemingly devoid of any likelihood of consumer confusion. Particularly, in connection with entertainment-related product such as film and music, the cases seem to come from the theatre of the absurd and reflect that trademark law is being used in an abusive manner out of sync with any traditional trademark rationale Some examples from recent years illustrate this dynamic. The manufacturer of SPAM sandwich meat brought trademark infringement charges against a motion picture production company for its depiction of a Muppet character known as"Spam"in the film" Muppets Treasure Island". Owners to a film clip of old footage of the"Three Stooges"upon which copyright protection had expired sued a filmmaker for 30 seconds worth of use of the clip in the film "The Long Kiss Goodnight?7 A sneaker company sued a filmmaker for displaying its sneakers in a film displeased with a characters monologue, played by Cuba Gooding Jr, ending in"F Reebok? " in the film"Jerry Maguire". The use of the phrase"Are You Ready to Rumble? by a band in a song led to a suit of trademark infringement by the owner" of s This conduct was known at common law as"palming off"or passing off, and as a British jurist asserted in 1842, a man [sic] is not to sell his own goods under the pretense that they are the goods of another man See DAVID LANGe, et al, INTELLECTUAL PROPERTY: CASES AND MATERIALS 88-89(1998) ( detailing common law trademark approaches). For a perceptive history of the development of trademark law, see also Kenneth J. Vandevelde, The New Property of the Nineteenth Century Development of the Modern Concept of Property, 29 BUFF. L REV. 325, 341(1980)(noting that early common law provided protection for trademarks only upon establishment of fraud) Hormel Foods Corp. v. Jim Henson Productions, Inc. 73 F 3d 497(2Cir. 1996) (rejecting Hormel's trademark and dilution claims) Comedy Ill Productions, Inc. v. New Line Cinema, 200 F 3d 593(9 Cir. 1999)(rejecting plaintiffs trademark infringement claims) See Complaint, Reebok Int'I Ltd. v. Tri-Star Pictures, Inc, no 96-8982 SVW(C D. Cal. 1996), available onwww.courttv.com/legaldocs/business/reebok/html.ReebokwasparticularlydispleasedwithTri-star because it believed the parties had contracted to include a trailer/commercial at the end of the film that would praise the virtues of Reebok. The released film did not include the trailer
2 off as one’s own.5 Today, corporations routinely litigate or threaten to litigate trademark cases that are seemingly devoid of any likelihood of consumer confusion. Particularly, in connection with entertainment-related product such as film and music, the cases seem to come from the theatre of the absurd, and reflect that trademark law is being used in an abusive manner out of sync with any traditional trademark rationale. Some examples from recent years illustrate this dynamic. The manufacturer of “SPAM” sandwich meat brought trademark infringement charges against a motion picture production company for its depiction of a Muppet character known as “Sp’am” in the film “Muppet’s Treasure Island”.6 Owners to a film clip of old footage of the “Three Stooges” upon which copyright protection had expired sued a filmmaker for 30 seconds worth of use of the clip in the film “The Long Kiss Goodnight”.7 A sneaker company sued a filmmaker for displaying its sneakers in a film, displeased with a character’s monologue, played by Cuba Gooding Jr., ending in “F…. Reebok” in the film “Jerry Maguire”.8 The use of the phrase “Are You Ready to Rumble?” by a band in a song led to a suit of trademark infringement by the “owner” of 5 This conduct was known at common law as “palming off” or passing off, and as a British jurist asserted in 1842, “a man [sic] is not to sell his own goods under the pretense that they are the goods of another man.” See DAVID LANGE, et al, INTELLECTUAL PROPERTY: CASES AND MATERIALS 88-89 (1998) (detailing common law trademark approaches). For a perceptive history of the development of trademark law, see also Kenneth J. Vandevelde, The New Property of the Nineteenth Century: The Development of the Modern Concept of Property, 29 BUFF. L. REV. 325, 341 (1980)(noting that early common law provided protection for trademarks only upon establishment of fraud). 6 Hormel Foods Corp. v. Jim Henson Productions, Inc. 73 F.3d 497 (2nd Cir. 1996)(rejecting Hormel’s trademark and dilution claims). 7 Comedy III Productions, Inc. v. New Line Cinema, 200 F.3d 593 (9th Cir. 1999)(rejecting plaintiff’s trademark infringement claims). 8 See Complaint, Reebok Int’l Ltd. v. Tri-Star Pictures, Inc., no. 96-8982 SVW (C.D. Cal. 1996), available on www.courttv.com/legaldocs/business/reebok/html. Reebok was particularly displeased with Tri-Star because it believed the parties had contracted to include a trailer/commercial at the end of the film that would praise the virtues of Reebok. The released film did not include the trailer
the phrase. Mattel sued a record label for use of the title"Barbie Girl", and lyrics that offended Mattel in a song 10 In these and other cases, a likelihood of consumer confusion seems remote, and trademark law would seem an unwieldy weapon. However, it has increasingly become the weapon of choice for those seeking to control corporate and product image. At the same juncture, the explosion of computer technology and the rise of the Internet have created a surge in litigation, legislation, and academic commentary about the future of intellectual property ("IP")protection in cyberspace. New technologies and the Internet have profoundly impacted every area of IP, including copyright, patent, 2 trade secret the right of publicity 4and trademark law. In the realm of trademark law Michael Buffer, the boxing announcer, has trademarked the phrase " Are You Ready to Rumble"and sued a record company that released a sound recording containing the phrase. See Buffer v. Auerus Record CV97-9332 RAP(C D Cal. 1997). The phrase has purportedly generated $150 million in licensing fees for Buffer, who has admittedly instituted"maybe over one hundred"actions regarding the phrase. See Andrew Chang, Squeezing Millions from a Phrase: How a Few Words in Right Hands Can Mean a Fortune, abcnews.go. com/sections(April 11, 2002) Mattel, Inc. v. MCA Records, Inc, 296 F 3d 894(9 Cir. 2002). Mattel gained a bit of infamy by seeking an injunction under trademark infringement and dilution theories against the distributors of the the Ninth Circuit Court of Appeals both rejected Mattel's trademark infringement and dilution claims. Not content to lose at both the trial and appellate level, Mattel has filed a petition before the Supreme Court to overturn the lower courts rulings. The Supreme Court declined to hear Mattel's appeal See e. g, Trotter Hardy, Copyright and"New Use"Technologies, 23 NOVA L REV. 659(1999)(noting that"today's copyright concerns often center on the new digital technologies, especially the Internet. " See e.g., Jason R. Berne, Court Intervention But Not in a Classic Form: A Survey of Remedies in Internet Trademark Cases, 43 ST LOUIS U. LJ 1157, 1158(1999) s See e. g, Note, Bruce T Atkins, Trading Secrets in the Information Age: Can Trade Secret Law Survive he Internet? 1996 ILL. L REV.1151(1996) 14 See e.g, Joseph J. Beard, Casting Call at Forest Lawn: The Digital Resurrection of Deceased EntertainersA 2/ Century Challenge for Intellectual Property, 8 HIGH TECH LJ(1993). See also eah Phillips Falzone, Note, Playing the Hollywood Name Game in Cybercourt: The Battle Over Domain Names in the Age of celebrity-Squatting, 21 LOY. L.A. ENT. L rEV. 289(2001(exploring domain name disputes over celebrity identity)
3 the phrase.9 Mattel sued a record label for use of the title “Barbie Girl”, and lyrics that offended Mattel in a song.10 In these and other cases, a likelihood of consumer confusion seems remote; and trademark law would seem an unwieldy weapon. However, it has increasingly become the weapon of choice for those seeking to control corporate and product image. At the same juncture, the explosion of computer technology and the rise of the Internet have created a surge in litigation, legislation, and academic commentary about the future of intellectual property (“IP”) protection in cyberspace. New technologies and the Internet have profoundly impacted every area of IP, including copyright,11 patent,12 trade secret13 the right of publicity,14 and trademark law. In the realm of trademark law, 9 Michael Buffer, the boxing announcer, has trademarked the phrase “Are You Ready to Rumble” and sued a record company that released a sound recording containing the phrase. See Buffer v. Auerus Records, CV 97-9332 RAP (C.D. Cal. 1997). The phrase has purportedly generated $150 million in licensing fees for Buffer, who has admittedly instituted “maybe over one hundred” actions regarding the phrase. See Andrew Chang, Squeezing Millions from a Phrase: How a Few Words in Right Hands Can Mean a Fortune, abcnews.go.com/sections (April 11, 2002). 10 Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). Mattel gained a bit of infamy by seeking an injunction under trademark infringement and dilution theories against the distributors of the song “Barbie Girl” by the musical group Aqua, objecting to lyrics which included the phrases “I’m a blond bimbo girl in a fantasy world…. you can brush my hair, undress me everywhere.” The District Court and the Ninth Circuit Court of Appeals both rejected Mattel’s trademark infringement and dilution claims. Not content to lose at both the trial and appellate level, Mattel has filed a petition before the Supreme Court to overturn the lower court’s rulings. The Supreme Court declined to hear Mattel’s appeal. 11 See e.g., Trotter Hardy, Copyright and “New Use” Technologies, 23 NOVA L. REV. 659 (1999)(noting that “today’s copyright concerns often center on the new digital technologies, especially the Internet…”). 12 See e.g., Jason R. Berne, Court Intervention But Not in a Classic Form: A Survey of Remedies in Internet Trademark Cases, 43 ST. LOUIS U. L.J. 1157, 1158 (1999). 13 See e.g., Note, Bruce T. Atkins, Trading Secrets in the Information Age: Can Trade Secret Law Survive the Internet? 1996 ILL. L. REV. 1151 (1996). 14 See e.g., Joseph J. Beard, Casting Call at Forest Lawn: The Digital Resurrection of Deceased Entertainers—A 21st Century Challenge for Intellectual Property, 8 HIGH TECH. L.J. (1993). See also, Leah Phillips Falzone, Note, Playing the Hollywood Name Game in Cybercourt: The Battle Over Domain Names in the Age of Celebrity-Squatting, 21 LOY. L.A. ENT. L. REV. 289 (2001)(exploring domain name disputes over celebrity identity)
the ascendance of the Internet has spawned new legal terminology for wrongful conduct in the virtual world-cyber squatting, "reverse domain name hijacking", typo-pirating and"metatag infringement". The Internet explosion has also invited a fresh examination of norms and principles in trademark law, a formerly rather stodgy area of Ip that is now arguably the hottest field of all. Indeed, commentators have noted that]o area of law has seen more Internet-related litigation than trademark law. The on-going expansion of the rights of trademark holders perhaps reached its zenith recently, when Congress singled out cybersquatters"as the new bogeymen of trademark law with the enactment of the Anti-cyber squatting Consumer Protection Act of 1999. Yet the connection between the condemnation of internet domain name squatters and the interest of consumers seems tenuous at best The expansion of IP rights has given rise to a schizophrenic divide in how IPRs are viewed by three major constituents in the debate over IP protection--Congress commentators and the courts. Congress in recent years has consistently churned out legislation that dramatically expands the rights of IP owners. In contrast, a chorus of academic commentators posit that the real harm to the interests of consumers and society A metatag consists of hidden text associated with a Web site that causes an Internet search engine to direct users to the site who have entered a search term contained in the metatag. "'E. Gabriel Perle. John Taylor Williams Mark A Fischer, Electronic Publishing and Software, Part 1,17 COMPUTER L 15, 21 (2000)For a discussion of the various types of domain name trademark disputes see Danielle Weinberg Swartz, The Limitations of Trademark Law in Addressing Domain Name Disputes, 45U.C. L.A. L REV 1487,1494(1998 Berne. supra note 43 ST LOUIS LJ. at 1158 15USC.s.1125d)(1999
4 the ascendance of the Internet has spawned new legal terminology for wrongful conduct in the virtual world—“cyber squatting”, “reverse domain name hijacking”, typo-pirating” and “metatag infringement”.15 The Internet explosion has also invited a fresh examination of norms and principles in trademark law, a formerly rather stodgy area of IP that is now arguably the hottest field of all. Indeed, commentators have noted that “[n]o area of law has seen more Internet-related litigation than trademark law.”16 The on-going expansion of the rights of trademark holders perhaps reached its zenith recently, when Congress singled out “cybersquatters” as the new bogeymen of trademark law with the enactment of the Anti-cyber squatting Consumer Protection Act of 1999.17 Yet the connection between the condemnation of Internet domain name squatters and the interest of consumers seems tenuous at best. The expansion of IP rights has given rise to a schizophrenic divide in how IPR’s are viewed by three major constituents in the debate over IP protection—Congress, commentators and the courts. Congress in recent years has consistently churned out legislation that dramatically expands the rights of IP owners.18 In contrast, a chorus of academic commentators posit that the real harm to the interests of consumers and society 15 A metatag consists of “hidden text associated with a Web site that causes an Internet search engine to direct users to the site who have entered a search term contained in the metatag.” E. Gabriel Perle, John Taylor Williams Mark A. Fischer, Electronic Publishing and Software, Part II, 17 COMPUTER L. 15, 21 (2000) For a discussion of the various types of domain name trademark disputes see Danielle Weinberg Swartz, The Limitations of Trademark Law in Addressing Domain Name Disputes, 45 U.C.L.A. L. REV. 1487, 1494 (1998). 16 Berne, supra, note ___, 43 ST. LOUIS L.J. at 1158. 17 15 U.S.C. s. 1125(d) (1999)