at large is posed not as much by cyber squatters but by the abusive use of trademark law by trademark owners, typically large corporate interests who seek to control corporate image at the expense of the marketplace of ideas paradigm. Finally, as the Supreme Courts recent opinion in Mosely indicates, courts by and large generally appear to take a more conservative view toward the expansion of IPRs, particularly trademark rights, even in the face of expansionist legislation such as the Trademark Dilution Act of 1996 This article examines and critiques the expansion of trademark law in the context of the entertainment industry and the internet. Entertainment-media issues, involving film, music, art and publishing, frequently stand at ground zero in the battleground of Ip disputes, and in such disputes we see the convergence of (and conflict between)owner- centered interests, the public domain, and the marketplace of ideas. This article contends that the aggressive trademark litigation strategy of companies such as playboy and 18 One commentator has characterized IP as"a kind of unrelenting organic force [that] Congress and the courts cultivate new varieties of every day... See Robert P Merges, Contracting into Liability Rules Intellectual Property Rights and Collective Rights OrganizationS, 84 CAL L REV. 1293, 1294(1996) I Commentators have recognized that"o]ne characteristic of legally granted monopolies is their tendency to be misused by those in power. See Robert Patrick Merges and Glenn Harlan Reynolds, The Proper Scope of the Copyright and Patent Power, 37 HARV. J ON LEGIS. 45, 47(2000)(contending Constitution limits Congress' power to expand intellectual property protection for the benefit of individual companies See Ringling Bros.-Barnum Bailey Combined Shows, Inc. v Utah Div. of Travel Dev, 170 F3d 449 (4 Cir. 1999)(outlining historical hostility of courts toward dilution doctrine) 2SeeCourtneyMacavinta,playBoywinspiracysuithttp://news.cnetcom(4-22-98),notingthat (Playboy] has ferociously scoured the Net for unauthorized uses of its famous nude pictorials, and subsequently has slapped Web site operators with costly lawsuits"). In similarly aggressive litigation, Playboy sued former playmate Terri Welles for, inter alia, Welles depictions of herself on the web site as former playmate of the year. The Ninth Circuit (duh)rejected Playboy's claims. See Playboy Enterprises, Inc. v. Welles, 7 F. Supp 2d 1098(S D. Cal. 1998). But cf, Dan McCuaig, Halve the Baby An Obvious Solution to the Troubling Use of Trademarks as Metatags, 18 J. MARSHALL J COMPUTER AND INFORMATION L 643, 655 (2000)(contending that while"Playboy has long been at the forefront of the rush of trademark holders to protect their trademarks from unscrupulous use on the Internet. [Playboys conduct] is more likely attributable to the relative commercial value of [Playboys marks as metatags than to any super-litigious nature of [Playboy")
5 at large is posed not as much by cyber squatters but by the abusive use of trademark law by trademark owners, typically large corporate interests who seek to control corporate image at the expense of the marketplace of ideas paradigm.19 Finally, as the Supreme Courts recent opinion in Mosely indicates, courts by and large generally appear to take a more conservative view toward the expansion of IPR’s, particularly trademark rights, even in the face of expansionist legislation such as the Trademark Dilution Act of 1996.20 This article examines and critiques the expansion of trademark law in the context of the entertainment industry and the Internet. Entertainment-media issues, involving film, music, art and publishing, frequently stand at ground zero in the battleground of IP disputes, and in such disputes we see the convergence of (and conflict between) ownercentered interests, the public domain, and the marketplace of ideas. This article contends that the aggressive trademark litigation strategy of companies such as Playboy21 and 18 One commentator has characterized IP as “a kind of unrelenting organic force [that] Congress and the courts cultivate new varieties of every day…” See Robert P. Merges, Contracting into Liability Rules: Intellectual Property Rights and Collective Rights Organizations, 84 CAL. L. REV. 1293, 1294 (1996). 19 Commentators have recognized that “[o]ne characteristic of legally granted monopolies is their tendency to be misused by those in power.” See Robert Patrick Merges and Glenn Harlan Reynolds, The Proper Scope of the Copyright and Patent Power, 37 HARV. J. ON LEGIS. 45, 47 (2000)(contending Constitution limits Congress’ power to expand intellectual property protection for the benefit of individual companies). 20 See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449 (4th Cir. 1999)(outlining historical hostility of courts toward dilution doctrine). 21 See Courtney Macavinta, “Playboy wins piracy suit”, http.//news.cnet.com (4-22-98), noting that “([Playboy] has ferociously scoured the Net for unauthorized uses of its famous nude pictorials, and subsequently has slapped Web site operators with costly lawsuits”). In similarly aggressive litigation, Playboy sued former playmate Terri Welles for, inter alia, Welle’s depictions of herself on the web site as “former playmate of the year.” The Ninth Circuit (duh) rejected Playboy’s claims. See Playboy Enterprises, Inc. v. Welles, 7 F. Supp.2d 1098 (S.D. Cal. 1998). But c.f., Dan McCuaig, Halve the Baby: An Obvious Solution to the Troubling Use of Trademarks as Metatags, 18 J. MARSHALL J. COMPUTER AND INFORMATION L. 643, 655 (2000)(contending that while “Playboy has long been at the forefront of the rush of trademark holders to protect their trademarks from unscrupulous use on the Internet…[Playboy’s conduct] is more likely attributable to the relative commercial value of [Playboy’s] marks as metatags than to any super-litigious nature of [Playboy]”)
others, has the capacity to bring about several bad results such as the depletion of the public domain,and the decrease of the marketplace of ideas, and the debasement of cardinal trademark principles based on preventing consumer confusion. Others have made that case well. Others have also explicated how trademark law has undergone a paradigm shift away from protecting consumer interests toward protecting trademark owner interests. A modest insight of this paper is that trademark cases in cyberspace and entertainment make no sense under any of the traditional theories of IP or trademark specific theories, save one: personality interests. The cases also indicate that the interests of trademark owners and the public interest does not necessarily coincide assuming the public interest subsists in an expansive public domain The entertainment media and cyberspace cases validate in dramatic fashion the notion that as trademark law moves away from confusion theory, the potential for abusive, antisocial trademark litigation which has a chilling effect on the expression of Mattel Corporation, owner of Barbie, is another company that arguably brings lawsuits that impinge on expressive conduct and the public domain, See Lisa Bannon, Barrister Barbie? Mattel Plays Rough, www.s-t.com/dailv/01-98/01-09-98/b021i044.htm(jan.1,1998)(detail sive lawsuits and threats to ue alleged infringers by Mattel regarding its"Barbie " mark) A leading jurist, for example, has cogently argued elsewhere that"[o]verprotecting intellectual property is as harmful as underprotecting it. [c]reativity is impossible without a rich public domain. White v Samsung Electronics America, Inc, 989 F 2d 1512,(9 Cir. 1993)(Kozinski, J, dissenting) 24 See Alison P. Howard, A Fistful of Lawsuits: The Press, the First Amendment, and Section 43 (a) of the Lanham Act, 88 CALIF. L. REV. 127(2000)(lawsuits by plaintiffs seeking to avoid obstacles in defamation claims by using trademark law "disregards both the First Amendment 's goal of promoting the free exchange of ideas and section 43(a)'s goal of reducing consumer confusion rather than protecting plaintiffs reputations") See Kenneth L Port, The Congressional Expansion of American Trademark Law: A Civil Law System in the Making, 35 WAKE FOREST L REV.827, 828-29(2000) 26 See BEVERLY W. PATTISHALL, DAVID C. HILLIARD JOSEPH NYE WELCH, I1, 9 TRADEMARKS& UNFAIR COMPETITION (3Ed. 1998):(remarking that"[t ]he public interest against deception is necessarily a fundamental consideration in trade identity unfair competition cases, yet the treatment of that interest is ordinarily residual to what is primarily a private complaint
6 others,22 has the capacity to bring about several bad results such as the depletion of the public domain,23 and the decrease of the marketplace of ideas,24 and the debasement of cardinal trademark principles based on preventing consumer confusion. Others have made that case well. Others have also explicated how trademark law has undergone a paradigm shift away from protecting consumer interests toward protecting trademark owner interests.25 A modest insight of this paper is that trademark cases in cyberspace and entertainment make no sense under any of the traditional theories of IP or trademarkspecific theories, save one: personality interests. The cases also indicate that the interests of trademark owners and the public interest does not necessarily coincide, assuming the public interest subsists in an expansive public domain.26 The entertainment media and cyberspace cases validate in dramatic fashion the notion that as trademark law moves away from confusion theory, the potential for abusive, antisocial trademark litigation which has a chilling effect on the expression of 22 Mattel Corporation, owner of Barbie, is another company that arguably brings lawsuits that impinge on expressive conduct and the public domain. See Lisa Bannon, Barrister Barbie? Mattel Plays Rough, www.s-t.com/daily/01-98/01-09-98/b02li044.htm (Jan. 1, 1998)(detailing oppressive lawsuits and threats to sue alleged infringers by Mattel regarding its “Barbie” mark). 23 A leading jurist, for example, has cogently argued elsewhere that “[o]verprotecting intellectual property is as harmful as underprotecting it…[c]reativity is impossible without a rich public domain.” White v. Samsung Electronics America, Inc., 989 F.2d 1512, ____ (9th Cir. 1993)(Kozinski, J., dissenting). 24 See Alison P. Howard, A Fistful of Lawsuits: The Press, the First Amendment, and Section 43(a) of the Lanham Act, 88 CALIF. L. REV. 127 (2000)(lawsuits by plaintiffs seeking to avoid obstacles in defamation claims by using trademark law “disregards both the First Amendment’s goal of promoting the free exchange of ideas and section 43(a)’s goal of reducing consumer confusion rather than protecting plaintiff’s reputations”). 25 See Kenneth L. Port, The Congressional Expansion of American Trademark Law: A Civil Law System in the Making, 35 WAKE FOREST L. REV. 827, 828-29 (2000). 26 See BEVERLY W. PATTISHALL, DAVID C. HILLIARD & JOSEPH NYE WELCH, II, 9 TRADEMARKS & UNFAIR COMPETITION (3rd Ed. 1998): (remarking that “[t]he public interest against deception is necessarily a fundamental consideration in trade identity unfair competition cases, yet the treatment of that interest is ordinarily residual to what is primarily a private complaint.”)
ideas increases. Long after court cases and legislation make cybersquatting a problem of the past, an entrenched set of norms that enshrine property rights in trademarks for rich and powerful corporate interests will hamstring an expansive public domain and the ideal of democratic communication the Internet represents Communicative media such as the internet and entertainment vehicles such as film and music increasingly have become targets by trademark owners seeking to control product and trademark image. However little or no corresponding public benefit accrues that provides justification for the private ownership and IP protection. Trademark, no less than other IP regimes, should"set demanding standards" in exchange for the grant of exclusive rights. Indeed, trademark arguably poses a greater threat to both the core concepts of the marketplace of ideas and the public domain than other IPRs, such copyright law. A specter is haunting cultural production and societal dissent: the threat of private, albeit state-sponsored, suppression of speech is rising to new prominence [in light of] new media of expression,, such as Internet technology. A reexamination of trademark law paradigms is desirable given that"trademark protection intrudes on first amendment rights more often than courts have recognized. 3 Part I of this essay examines the dramatic expansion of intellectual property law generally and summarizes the theoretical underpinnings that gird the four paradigms of 27 See Marina Lao, Federalizing Trade Secret Law in an Information Economy, 59 OHIO ST. L.J. 1633 1640-41(1998) 28 See Note, Putting the Meat Back in Meta-Tagsl, I U. ILL.J. LAW, TECH& POLICY 129, 158 (2001)(contending that"It he continual expansion of a trademark holders rights is detrimental to all of ciety and to the American economy) See Dan L. Burk, Patenting Speech, 79 TEX L REV. 100(2000 (analyzing dangers to free speech and marketplace of ideas arising from patent protection for software)
7 ideas increases. Long after court cases and legislation make cybersquatting a problem of the past, an entrenched set of norms that enshrine property rights in trademarks for rich and powerful corporate interests will hamstring an expansive public domain and the ideal of democratic communication the Internet represents. Communicative media such as the Internet and entertainment vehicles such as film and music increasingly have become targets by trademark owners seeking to control product and trademark image. However little or no corresponding public benefit accrues that provides justification for the private ownership and IP protection. Trademark, no less than other IP regimes, should “set demanding standards” in exchange for the grant of exclusive rights.27 Indeed, trademark arguably poses a greater threat to both the core concepts of the marketplace of ideas and the public domain than other IPR’s, such as copyright law.28 A specter is haunting cultural production and societal dissent: the “threat of private, albeit state-sponsored, suppression of speech is rising to new prominence [in light of] new media of expression”, such as Internet technology.29 A reexamination of trademark law paradigms is desirable given that “trademark protection intrudes on first amendment rights more often than courts have recognized.”30 Part I of this essay examines the dramatic expansion of intellectual property law generally and summarizes the theoretical underpinnings that gird the four paradigms of 27 See Marina Lao, Federalizing Trade Secret Law in an Information Economy, 59 OHIO ST. L.J. 1633, 1640-41 (1998). 28 See Note, Putting the Meat Back in Meta-Tags!, 1 U. ILL. J. LAW, TECH. & POLICY 129, 158 (2001)(contending that “[t]he continual expansion of a trademark holder’s rights is detrimental to all of society and to the American economy”). 29 See Dan L. Burk, Patenting Speech, 79 TEX. L. REV. 100 (2000)(analyzing dangers to free speech and marketplace of ideas arising from patent protection for software)
trademark law--confusion theory, unfair competition/false endorsement, dilution and the newest entrant, cybersquatting. Part II explores the interests of trademark owners and the public interest. Part Ill examines the paradigms and the relevant interests in the context of entertainment media and Internet cases. Part IV suggests a policy framework for the entertainment industry in approaching IP litigation I. Theoretical foundations A. Underlying Theories of IP Protection Although characterized with various terms, legal justification for IP protection ests upon the foundation of four underlying theoretical rationales-labor/investment, economic incentive/efficiency, misappropriation and moral rights or personality theories Identifying underlying rationales for IP protection is critically important from a policy perspective for two reasons. First, even more so than traditional forms of property, IP protection imposes unique burdens on society, requiring justification for IP monopolies. Second, underlying rationales may be outcome-determinative in assessing IP entitlements The labor/investment rationale for IP posits thatthat intellectual property ought to be protected because of labor and investment by IP creators. The economic and efficiency rationale asserts that IP rights are justified because of economic incentive and efficiency considerations. The third rationale urges that society should enjoin infringement of IP rights because of it constitutes a form of theft or taking--ie.a 50 See Robert N. Kravitz, Trademarks, Speech and the Gay Olympics Case, 60 BOSTULREV.131, 132 (1989) 5I See Mathias Strasser, The Rational Basis of Trademark Protection Revisited: Putting the Dilution Doctrine into Context, 10 FORDHAM INTEL. PROP. MEDia ent. L.j. 375, 421-22(2000)(noting that IP laws"are generally thought to require a special justification. 8
8 trademark law—confusion theory, unfair competition/false endorsement, dilution and the newest entrant, cybersquatting. Part II explores the interests of trademark owners and the public interest. Part III examines the paradigms and the relevant interests in the context of entertainment media and Internet cases. Part IV suggests a policy framework for the entertainment industry in approaching IP litigation. I. Theoretical Foundations A. Underlying Theories of IP Protection Although characterized with various terms, legal justification for IP protection rests upon the foundation of four underlying theoretical rationales—labor/investment, economic incentive/efficiency, misappropriation and moral rights or personality theories. Identifying underlying rationales for IP protection is critically important from a policy perspective for two reasons. First, even more so than traditional forms of property, IP protection imposes unique burdens on society, requiring justification for IP monopolies.31 Second, underlying rationales may be outcome-determinative in assessing IP entitlements. The labor/investment rationale for IP posits that that intellectual property ought to be protected because of labor and investment by IP creators. The economic and efficiency rationale asserts that IP rights are justified because of economic incentive and efficiency considerations. The third rationale urges that society should enjoin infringement of IP rights because of it constitutes a form of theft or taking—i.e. a 30 See Robert N. Kravitz, Trademarks, Speech and the Gay Olympics Case, 60 BOST. U. L. REV. 131, 132 (1989). 31 See Mathias Strasser, The Rational Basis of Trademark Protection Revisited: Putting the Dilution Doctrine into Context, 10 FORDHAM INTEL. PROP. MEDIA & ENT. L.J. 375, 421-22 (2000)(noting that IP laws “are generally thought to require a special justification.”)
morality/misappropriation theory. Finally, it is contended that IP creations contain elements of a creator's personality, and taking harms those deeply heartfelt interests that creators feel towards their works-this is often called a personality or moral rights Labor/Investment Rationales A labor theory resonates in the writings of John Locke, who postulated that men [sic]ought to have property rights in the fruits of their labor. At its full extension,a labor theory of IP postulates that "one has the right to reap the full value of one's creation. >3> Historically, labor theories of IP have played an important role in the development of IP doctrine, although they fallen into disfavor by the courts in recent decades a collaray of labor theory is investment theory, which provides that the law should protect value created when an IP owner invests significant time, effort and money in an IPR. The courts frequently recognize the investment rationale in the context of trade secrets, where the more a trade secret owner has invested in maintaining secrecy in an invention or process, the more likely the court will enjoin appropriation of the trade secret. Similarly, it is recognized in the patent context that inventors would not invest 32 See J. LOCKE, SECOND TREATISE OF GOVERNMENT 27 (1953) 33 See David S. Welkowitz, Trade Dress and Patenk-the Dilemma of Confusion, 30 RUTGERS L.J. 289 (1999)(noting that courts have rejected the labor theory of IP in its most extreme form). Id $4 The Supreme Court for example has rejected the so-called"sweat of the brow theory in the context of copyright protection. See Feist, Publications v. Rural Telephone Service 499 U.S. 340(1991)Under the sweat of the brow doctrine, "the underlying notion was that copyright was a reward for the hard work that lo 5S The Restatement of Torts, for example, sets forth six factors to consider in determining whether information qualifies as a trade secret, including the amount of effort or money expended by [the trade secret owner] in developing the information. RESTATEMENT OF TORTS
9 morality/misappropriation theory. Finally, it is contended that IP creations contain elements of a creator’s personality, and taking harms those deeply heartfelt interests that creators feel towards their works—this is often called a personality or moral rights theory. Labor/Investment Rationales A labor theory resonates in the writings of John Locke, who postulated that men [sic] ought to have property rights in the fruits of their labor.32 At its full extension, a labor theory of IP postulates that “one has the right to reap the full value of one’s creation.”33 Historically, labor theories of IP have played an important role in the development of IP doctrine, although they fallen into disfavor by the courts in recent decades.34 A collaray of labor theory is investment theory, which provides that the law should protect value created when an IP owner invests significant time, effort and money in an IPR. The courts frequently recognize the investment rationale in the context of trade secrets, where the more a trade secret owner has invested in maintaining secrecy in an invention or process, the more likely the court will enjoin appropriation of the trade secret.35 Similarly, it is recognized in the patent context that inventors would not invest 32 See J. LOCKE, SECOND TREATISE OF GOVERNMENT 27 (1953). 33 See David S. Welkowitz, Trade Dress and Patent—the Dilemma of Confusion, 30 RUTGERS L.J. 289 (1999)(noting that courts have rejected the labor theory of IP in its most extreme form). Id. 34 The Supreme Court for example has rejected the so-called “sweat of the brow” theory in the context of copyright protection. See Feist, Publications v. Rural Telephone Service 499 U.S. 340 (1991) Under the “sweat of the brow doctrine, “the underlying notion was that copyright was a reward for the hard work that went into compiling facts.” Id. 35 The Restatement of Torts, for example, sets forth six factors to consider in determining whether information qualifies as a trade secret, including “the amount of effort or money expended by [the trade secret owner] in developing the information.” RESTATEMENT OF TORTS