discomfort in extending personality rights outside of the confines of personal art forms such as painting or music. Somewhat ironically, then, the Lanham Trademark Act has by default become the primary vehicle for the protection of artistic attribution and integrity rights in U.S. law The Theoretical basis of trademark law Categorizing trademark theory is a messy undertaking: it has been noted that trademarks do not neatly fit into the scheme of intellectual property theory as it applies to patent and copyright law. Before the advent of the Internet, trademark laws theoretical foundations gave rise to three paradigms of protection: confusion doctrine, unfair competition, and dilution doctrine. In the post-internet world, cyber-squatting has emerged as a fourth, stand-alone cause of action Confusion Doctrine/Likelihood of Confusion The first paradigm of trademark infringement, confusion doctrine, is based on combating consumer confusion in the marketplace of products and services. The penultimate goal of trademark law is to prevent consumer deception and confusion 63 S9 See Note, Law Review Editing and Choe v. Fordham University School of Law: Is the Courtroom the New Front for the Resolution of Publishing Disputes, 42 WAYNE L REV. 2183, 2200(1996) See Hughes, supra note, 16 CARDOzO ARTS ent L.J. at 142(noting" that there is something deeply unsatisfying about trying to shoehorn scientific invention into the same 'personhood justification as painting and composing music. 6 See Gilliam v. American Broadcasting Companies, Inc, 538 F2d 14, (2d Cir. 1976) noting that courts have long granted relief for misrepresentation of an artists work by relying on theories outside of the statutory law of copyright, such as contract law or the tort of unfair competition. ) Similarly, claims of creen credit misattribution in the motion picture context invariably sound in claims under section 43(a)of the Lanham Act. See e. g, Smith v. Montoro, supra, note ee also King v Innovation Books. 976 F2d 824(2 Cir 1992)(film maker enjoined from promoting film"Lawnmower Man" with possesory credit for Stephen King where King had minimal involvement with film project) 62 Strasser, supra note 10 FORDHAM INTELL. PROP MEDIA &ent. at 421 63 See, e.g Shaughnessy, Trademark Parody: A Fair Use and First Amendment Analysis, 77 TRADEMARK RPTR. 177,(1987)(noting that despite expansion of trademark doctrine beyond
15 discomfort in extending personality rights outside of the confines of personal art forms such as painting or music.60 Somewhat ironically, then, the Lanham Trademark Act has by default become the primary vehicle for the protection of artistic attribution and integrity rights in U.S. law.61 The Theoretical Basis of Trademark Law Categorizing trademark theory is a messy undertaking: it has been noted that “[t]rademarks do not neatly fit into the scheme of intellectual property theory as it applies to patent and copyright law.”62 Before the advent of the Internet, trademark law’s theoretical foundations gave rise to three paradigms of protection: confusion doctrine, unfair competition, and dilution doctrine. In the post-internet world, cyber-squatting has emerged as a fourth, stand-alone cause of action. Confusion Doctrine/Likelihood of Confusion The first paradigm of trademark infringement, confusion doctrine, is based on combating consumer confusion in the marketplace of products and services. The penultimate goal of trademark law is to prevent consumer deception and confusion.63 59 See Note, Law Review Editing and Choe v. Fordham University School of Law: Is the Courtroom the New Front for the Resolution of Publishing Disputes, 42 WAYNE L. REV. 2183, 2200 (1996). 60 See Hughes, supra note ___, 16 CARDOZO ARTS & ENT. L.J. at 142 (noting “that there is something deeply unsatisfying about trying to shoehorn scientific invention into the same ‘personhood’ justification as painting and composing music.”). 61 See Gilliam v. American Broadcasting Companies, Inc, 538 F.2d 14, __ (2d Cir. 1976)(noting that “courts have long granted relief for misrepresentation of an artist’s work by relying on theories outside of the statutory law of copyright, such as contract law or the tort of unfair competition.”). Similarly, claims of screen credit misattribution in the motion picture context invariably sound in claims under section 43(a) of the Lanham Act. See e.g, Smith v. Montoro, supra, note ___. See also King v. Innovation Books, 976 F.2d 824 (2d Cir. 1992) (film maker enjoined from promoting film “Lawnmower Man” with possesory credit for Stephen King where King had minimal involvement with film project). 62 Strasser, supra note_____,, 10 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. at 421. 63 See, e.g. _____ Shaughnessy, Trademark Parody: A Fair Use and First Amendment Analysis, 77 TRADEMARK RPTR. 177, ___ (1987)(noting that despite expansion of trademark doctrine beyond
Accordingly, trademark law prohibits the adoption and use of confusingly similar trademarks under section 32(A)of the Lanham Act. Under confusion doctrine, a classic theory of trademark infringement, a competitor adopts a mark with intent to mislead customers to thinking that its mark is that of another thus diverting sales to the infringer. 65 The primary standard for determining likelihood of confusion"has always een.similarity of appearance". Courts examine similarity of appearance on three levels: sight, sound, and meaning. 67 However, it is difficult to determine confusion trademark cases are fact-driven, and judicial "[d] determinations of likelihood of confusion are necessarily subjective and impressionistic Historically, trademark law permitted the mere use by another of identical words or symbols, provided that" the marks do not create consumer confusion.. [t]hus, ABC can simultaneously be the trademark of a television station and the trademark of a furniture store. The standard for trademark infringement liability is not actual confusion, but"likelihood"of confusion. 70 In order to prove such confusion, litigants confusion paradigm, the notion of consumer confusion remains the foundation of the legal protection of trademarks.”) Lanham Act sect. 32(1), 15 U.S.C. sect. 1114 65 See e. g. Kristine M. Bolan, The Corporate Right of Publicity in Federal Dilution Legislation,83JPAT tRadEMArK OFF. SoC Y 5, 6(2000)(A first user who was losing business and suffering a diversion of trade called upon the law for intervention) 6 PATTISHALL, TRADEMARKS AND UNFAIR COMPETITION, supra, note at139 67 JANE GINSBURG AND JESSICA LITMAN, TRADEMARK AND UNFAIR COMP L(3dEd )398 3 68 See Richard L. Kiltpatrick, Likelihood of Confusion in Trademark Law, PRACT. L INST.6ANNUAL INST FOR INTELLECTUAL PROPERTY, (Vol 2)85, 96(2000)(setting forth a comprehensive analysis of the multi-factor test known as the" Polaroid factors that courts use to gauge likelihood of confusion in 69SeeCyBarristerPage:Trademarks,http://www.sb.com.trademar.html
16 Accordingly, trademark law prohibits the adoption and use of confusingly similar trademarks under section 32(A) of the Lanham Act.64 Under confusion doctrine, a classic theory of trademark infringement, a competitor adopts a mark with intent to mislead customers to thinking that its mark is that of another, thus diverting sales to the infringer.65 The primary standard for determining likelihood of confusion “has always been… similarity of appearance”.66 Courts examine similarity of appearance “on three levels: sight, sound, and meaning.”67 However, it is difficult to determine confusion; trademark cases are fact-driven, and judicial “[d] determinations of likelihood of confusion are necessarily subjective and impressionistic.”68 Historically, trademark law permitted the mere use by another of identical words or symbols, provided that “the marks do not create consumer confusion…. [t]hus, ABC can simultaneously be the trademark of a television station and the trademark of a furniture store.”69 The standard for trademark infringement liability is not actual confusion, but “likelihood” of confusion.70 In order to prove such confusion, litigants confusion paradigm, “the notion of consumer confusion remains the foundation of the legal protection of trademarks.”). 64 Lanham Act sect. 32(1), 15 U.S.C. sect. 1114. 65 See e.g. Kristine M. Bolan, The Corporate Right of Publicity in Federal Dilution Legislation, 83 J. PAT. & TRADEMARK OFF. SOC’Y 5, 6 (2000)(“A first user who was losing business and suffering a diversion of trade called upon the law for intervention).” 66 PATTISHALL, TRADEMARKS AND UNFAIR COMPETITION, supra, note _____at 139. 67 JANE GINSBURG AND JESSICA LITMAN, TRADEMARK AND UNFAIR COMP. L. (3rd Ed.) 398- 399 (1998). 68 See Richard L. Kiltpatrick, Likelihood of Confusion in Trademark Law, PRACT. L. INST. 6TH ANNUAL INST. FOR INTELLECTUAL PROPERTY, (Vol. 2) 85, 96 (2000)(setting forth a comprehensive analysis of the multi-factor test known as the “Polaroid” factors that courts use to gauge likelihood of confusion in trademark cases.). 69 See CyBarrister Page: Trademarks, http://www.ssb.com.trademar.html
typically rely on consumer surveys. Whether a likelihood of confusion exists is factual question. Accordingly, no bright-line test exists for how much confusion courts require imposing liability. 75 Trademark confusion doctrine has a strong correlation with both economic efficiency theory and misappropriation theory. From an economic perspective, analysts contend that"trademarks lower consumer search costs by providing consumers with a means for distinguishing between products that differ in quality but that, absent a brand name, would be difficult to distinguish at the point of purchase. Thus, while the use of confusingly similar marks obviously decreases social welfare, making consumer choices more costly, it also offends the moralistic notions of fair play and free riding at the heart of the misappropriation doctrine. Accordingly, trademark confusion doctrine in the abstract, is not controversial, and broad consensus would exist to enjoin competitors in a field from adopting similar marks Unfair Competition/Section 43(a) The second paradigm of trademark infringement is unfair competition, which is concerned not merely with consumer confusion, but with opportunistic conduct by competitors, i.e., free riders. Free riding is socially undesirable, in that the free rider a plaintiff in a classic trademark infringement case can readily get an injunction upon proving a likelihood of confusion, but must prove actual confusion to get monetary damages. See e. g. Foxtrap, Inc. v Foxtrap, Inc, 671 F2d 636 (D.C. Cir. 1982) 7 See e.g, Universal City Studios, Inc v. Nintendo Co., Ltd 746 F2d 112, 118(2d Cir. 1984)(discounting survey evidence that video game "Donkey Kong" infringed on trademark"King Kong) 73 See Welkowitz, supra note 30 RUTGERS L.J. at 321-22 74 See Roger D. Blair& Thomas F. Cotter, An Economic Analysis of Seller and User Liability in Intellectual Property Law, 68 U CIN. L REV., 13 (1999). See also RICHARD A POSNER, ECONOMIC ANALYSIS OF LAW 43 (4 ed 1992)(contending that"[t]he economic function of trademarks is, by giving assurance of uniform quality, to economize on consumer search costs
17 typically rely on consumer surveys.71 Whether a likelihood of confusion exists is a factual question.72 Accordingly, no bright-line test exists for how much confusion courts require imposing liability.73 Trademark confusion doctrine has a strong correlation with both economic efficiency theory and misappropriation theory. From an economic perspective, analysts contend that “trademarks lower consumer search costs by providing consumers with a means for distinguishing between products that differ in quality but that, absent a brand name, would be difficult to distinguish at the point of purchase.”74 Thus, while the use of confusingly similar marks obviously decreases social welfare, making consumer choices more costly, it also offends the moralistic notions of fair play and free riding at the heart of the misappropriation doctrine. Accordingly, trademark confusion doctrine in the abstract, is not controversial, and broad consensus would exist to enjoin competitors in a field from adopting similar marks. Unfair Competition/Section 43(a) The second paradigm of trademark infringement is unfair competition, which is concerned not merely with consumer confusion, but with opportunistic conduct by competitors, i.e., free riders. Free riding is socially undesirable, in that the free rider 70 A plaintiff in a classic trademark infringement case can readily get an injunction upon proving a likelihood of confusion, but must prove actual confusion to get monetary damages. See e.g. Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636 (D.C. Cir. 1982). 71 See e.g., Universal City Studios, Inc. v. Nintendo Co., Ltd. 746 F.2d 112, 118 (2d Cir. 1984)(discounting survey evidence that video game “Donkey Kong” infringed on trademark “King Kong”). 72 Id. 73 See Welkowitz, supra note _____ 30 RUTGERS L.J. at 321-22. 74 See Roger D. Blair & Thomas F. Cotter, An Economic Analysis of Seller and User Liability in Intellectual Property Law, 68 U. CIN. L. REV. 1, 13 (1999). See also RICHARD A. POSNER, ECONOMIC ANALYSIS OF LAW 43 (4th ed. 1992)(contending that “[t]he economic function of trademarks is, by giving assurance of uniform quality, to economize on consumer search costs.”)
diverts"value from a business rivals efforts without payment ". Unfair competition doctrine tracks the misappropriation principle. The Lanham Act prohibits unfair competition, particularly as to source of origin, sponsorship or endorsement under section 43(a)of the Lanham Act Section 43(a) was largely obscure until recent decades, where it has become "today ' s unrivaled legal instrument to combat unfair competition,77 A 43(a)claim exists where the plaintiff can show"that a representation of a product, although technically true, creates a false impression of the products origin, and that the representation harms plaintiffs reputation. 43(a)of the Lanham Act also prohibits other commercially offensive behavior, such as false advertisingand also protects unregistered trademarks that have been used in interstate commerce. 80A Lanham Act 43(a)claim has few limiting principles: courts have wide latitude in fleshing out the contours of unfair competition and adapting the language of the statute to changing commercial circumstances. Although a 43(a) claim technically requires a showing of consumer confusion, section 43(a)'s broad formulation goes far beyond uses See Dale P. Olson, Common Law Misappropriation in the Digital Era, 64 MISSOURI L REV.837, 879 (1999) See Foxworthy v Custom Tees Inc 879 F Supp 12000(N D Ga 1995) nJ. Thomas Mc Carthy, Lanham Act S 43(a: The Sleeping Giant is Now Awake, 59 J. L. CONTEMP PROB.45,46(1998 See Otto W. Konrad, A Federal Recognition of Performance Art Author Moral Rights, 48 WASH& LEL.REV.1579,1595(1991) l A false advertising claim is established"by proving either that an advertisement is false on its face or that he advertisement is literally true or ambiguous, but likely to mislead and confuse consumers. See Clorox Co. Puerto Rico v. Proctor and Gamble Commercial Corp, 228 F 3d 24(1Cir 2000) See two Pesos, Inc v. Taco Cabana, Inc, 505 U.S. 763(1992) See e. g, David Klein, The Ever-Expanding Section 43(4): Will the Bubble Burst, 2 U. BALT. INTELL PROP.L.J.65,87-88(1993)
18 diverts “value from a business rival’s efforts without payment”.75 Unfair competition doctrine tracks the misappropriation principle. The Lanham Act prohibits unfair competition, particularly as to source of origin, sponsorship or endorsement under section 43(a) of the Lanham Act.76 Section 43(a) was largely obscure until recent decades, where it has become “today’s unrivaled legal instrument to combat unfair competition.”77 A 43(a) claim exists where the plaintiff can show “that ‘a representation of a product, although technically true, creates a false impression of the product’s origin’, and that the representation harms plaintiff’s reputation.”78 43(a) of the Lanham Act also prohibits other commercially offensive behavior, such as false advertising79 and also protects unregistered trademarks that have been used in interstate commerce.80 A Lanham Act 43(a) claim has few limiting principles: courts have wide latitude in fleshing out the contours of unfair competition and adapting the language of the statute to “changing commercial circumstances.”81 Although a 43(a) claim technically requires a showing of consumer confusion, section 43(a)’s broad formulation goes far beyond uses 75 See Dale P. Olson, Common Law Misappropriation in the Digital Era, 64 MISSOURI L. REV. 837, 879 (1999). 76 See Foxworthy v. Custom Tees Inc. 879 F. Supp. 12000 (N.D. Ga. 1995). 77 J. Thomas McCarthy, Lanham Act S 43(a): The Sleeping Giant is Now Awake, 59 J. L.& CONTEMP. PROB. 45, 46 (1998). 78 See Otto W. Konrad, A Federal Recognition of Performance Art Author Moral Rights, 48 WASH. & LEE L. REV. 1579, 1595 (1991). 79 A false advertising claim is established “by proving either that an advertisement is false on its face or that the advertisement is literally true or ambiguous, but likely to mislead and confuse consumers.” See Clorox Co. Puerto Rico v. Proctor and Gamble Commercial Corp., 228 F.3d 24 (1st Cir. 2000). 80 See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). 81 See e.g., David Klein, The Ever-Expanding Section 43(A): Will the Bubble Burst?, 2 U. BALT. INTELL. PROP. L.J. 65, 87-88 (1993)