Over at his interesting blog (which Mark Schultz plugged a little while back), Grant McCracken has a post discussing modern marketing practices in terms of their “roundness” or “sharpness.” He suggests that all marketing used to be round, by which he means that there could only be one unique and relatively straightforward selling proposition for a brand. He suggests that things have changed, and that consumers now crave sharper marketing – we want marketers to leave some manageable amount of pattern detection to us as consumers. He has several examples of rounded versus sharpened marketing, and the one that resonated most with me was Wayne Newton versus Cirque du Soleil (though Microsoft vs. Google was pretty good too).

I’m not qualified to analyze McCracken’s post from a marketing and/or anthropological perspective, but it got me wondering. He seems to be suggesting that consumers don’t want such straightforward, clean understandings of brands. That is, at some level, a remarkable observation if it is in fact true as a general proposition. Trademark law has acted for the last 50 years on exactly the opposite assumption.

The tools of modern trademark law increasingly operate for the purpose of allowing a mark owner to manage the meaning of its brand. Think about it – dilution law is all about allowing the owner of a brand to create a singular, clean meaning for its brand. It’s for Disney to remain special to Mark Schultz in the same way it was special to him as a kid, and specifically to prevent anyone else from interfering with that simple and immediate reaction.

I’ve mentioned before, probably too often, how trademark law makes all kinds of assumptions about consumer behavior that are based on zero empirical data. If McCracken is right in his assessment of what consumers want from brands, shouldn’t trademark law account for that? I’m not completely sure I know how radically it should change as a result, but it seems to me that this ought to be a fertile ground for further study. I’d be curious to know what my co-bloggers think about this.

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If I told you that a famous professor from a well-known law school was arguing on his/her blog that law schools should consider discounting their tuition by 1% for each year a graduate stayed in the work force (with the purpose of encouraging attendance by those to whom the law school education would add the most value), what school would you guess that professor was from? It’s an easy question for me – University of Chicago, where everything can be reduced to dollars and cents. And that’s precisely right – it’s Judge Posner, responding to an article in the New York Times a couple of weeks ago about how some female Yale undergrads expect to leave the workforce at some point after having children [The article was not empirical, and it has been very controversial].

I think Posner is greatly oversimplifying the economics involved here. The evidence pretty clearly suggests that fewer and fewer people are advancing to partnership at big firms (where the big money is), as firms create ever more heirarchical structures. Thus, going to law school with the expectation of making a lot of money down the road is becoming more and more like a lottery, with lots of people buying tickets and few hitting the jackpot. [I realize that, in the big scheme of things, first year associates making $135,000 is hardly peanuts. But I take it that Posner is talking about people who stay in the workforce for a long time, and you can’t stay an associate forever]. But people’s willingness to pay huge amounts of money to go to law school is based in large part (and, according to Posner, should be based entirely) on that person’s expected lifetime return. Lifetime return, of course, is determined by the supply and demand in the market for attorneys – and that market presumes that a certain percentage of lawyers will drop out, whether to raise children, become a high school english teacher, or whatever. If we adopted Posner’s system, it seems to me that the expected return would have to go down, since supply of attorneys would rise without any reason to believe demand would rise at the same time. Thus, students’ willingness to spend exorbitantly on law school may well go down.

I don’t know whether that would happen or not, but it seems to me an equally plausible scenario as Judge Posner’s, and determining which one is more likely requires a lot more data. This is one of the reasons I have a hard time with law and economists sometimes – you can make a lot of assumptions that greatly oversimplify reality and then smuggle in normative goals under the guise of “neutral” economics. And it seems to me that is precisely what Posner is doing.

On its face, that point has little to do with marketing. Dig a little deeper though, and you’ll see that a great deal of the economic assumptions made in the context of trademark law are just the type of assumption Posner made. They assume that consumers will behave in certain ways and make little attempt to empirically demonstrate that behavior. Those assumptions are normatively loaded, but they are often expressed as though they were neutral descriptions of the way the market works. It doesn’t have to be that way; we can learn a lot about consumer behavior if we only learn to ask the right questions.

As a final, and to some extent unrelated point, let me loop back to the beginning of my post. I asked at the outset which school you would associate Judge Posner’s position with. If it was an easy answer for you as it was for me, it is because the University of Chicago has done a good job of branding itself. What we make of that brand is a different, and more interesting, question.

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The Seattle Post-Intelligencer has a story about SparkNet’s attempts to enforce trademark rights in the name of a radio show format (SparkNet refers to the format of a mishmash of musical artists and styles as “Jack”). SparkNet also summarizes this style as “playing what we want” and apparently doesn’t like when other people “play what they want.” The “playing what we want” phrase seems like quite a weak mark, if it qualifies as a trademark at all. Fortunately, at least one court has injected some sanity into this story, when a magistrate judge in my former home district (the Northern District of Illinois) rejected SparkNet’s claim against Bonneville International’s use of the slogans “whatever we feel like” and “whatever we want” for one of its radio shows. Quite sensibly, the court said that this was a dispute better dealt with in the marketplace.

The more interesting aspect of this story, I think, is SparkNet’s attempt to claim the mark “Jack.” In the abstract, “Jack” has a much better chance of qualifying as a trademark since it is at least suggestive if not arbitrary as applied to radio shows. But the way I read the story, SparkNet uses “Jack” to refer to the format of its show. If that’s true, then it seems to me that “Jack” runs a real risk of being generic. If SparkNet can’t protect the format itself (and I doubt it can), and if the format can’t be easily described in some other way, then it’s very likely that “Jack” will become the common way of referring to the format.

This is a risk that anyone who creates a new paradigm has to deal with. The marketing folks want a particular term to become synonomous with that product or service, but trademark law cautions against creating true convergence between term and genre. This kind of issue comes up most often with respect to marks for products that were once subject to patent protection (think shredded wheat, or certain pharmaceuticals), and trademark lawyers have a whole bunch of rules for their clients to protect against it. But, at the end of the day, there isn’t that much that creators of new things can do about this – it’s sort of an occupational hazard.

The other interesting thing about this article is that it quotes someone from SparkNet saying, incredulously, that people in radio just don’t care about trademarks. Anecdotally, it seems to me that people choose radio stations based on the type of music they play and the personalities the station employs. Because they operate on uniqe frequencies (at least within markets), it strikes me that it’s probably true that branding really doesn’t matter much for radio stations. But when I think about it, there are probably other examples like this, and trademark law really doesn’t take account of that reality.

Hat tip, Mark Partridge

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A couple of days ago I received an email from Restoration Hardware advertising its Famous Fall Lighting Sale(R). On top of my mild annoyance at yet another piece of spam, I couldn’t help but ask: “Are you serious?”

Are they seriously claiming that they’ve registered “Famous Fall Lighting Sale” as a trademark? Well, they have. And I’m almost speechless.

It’s not so much that I can’t believe they were able to register this laudatory/descriptive phrase – I rarely can work up much indignation about the things that the PTO will register these days. I’m speechless because I cannot figure out what value claiming this mark possibly could add to Restoration Hardware’s business. Seriously, the scope of protection for this phrase has to be incredibly narrow. They can’t stop other companies from advertising their “fall lighting sales” and I doubt they could even stop someone from saying that have a “famous fall lighting sale,” if in fact they do. But even if they could, do they really think that this mark matters to consumers whatsoever? Ooh, another retailer claiming that their sale is “famous” – that’ll really pack ’em in!

It strikes me that some lawyer convinced them that they needed to register this thing, so they did. But it probably also reflects how branding has gone completely haywire. I hope they don’t sue me for the title of this post.

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The blogosphere is abuzz with discussion of the Authors Guild’s lawsuit against Google. See here, here, and here, in addition to Eric’s post here. UPDATE: this post collects the reaction of a number of commentators.

I don’t have that much to add to the doctrinal discussion – I think there’s a reasonable fair use defense here, though I think I’m less certain than Larry Lessig is that it would prevail. I think Larry’s probably suggesting that it should be fair use more than arguing that it is, and on that score I think he has a lot of allies. But several people, including Eric, have been very skeptical that the fair use defense would work here.

The more interesting aspect of the discussion, I think, is the observation that a loss by Google has much more significant implications than just those for Google Print, since the basic concept is indistinguishable from what search engines do. I think that’s right, and that’s why I hope Google loses.

Let me be clear – I think Google Print could be a tremendously valuable resource and that copyright owners are foolish to challenge this product, which will make huge numbers of otherwise obscure books available to general audiences. And I think that it’s crazy that copyright law would get in the way of this type of venture. But I think it would take a threat to something like Google’s core search engine business – which is widely seen as legitimate and hugely valuable – for Congress to create any meaningful restrictions on the scope of copyright protection. And that’s ultimately what we need – not some disingenuous attempt by a court to distinguish Google Print from search engines in order to avoid a disastrous result.

Maybe I’ll regret having said this in 10 years of Congress doesn’t do its job, but in the meantime, I’m rooting for the Authors Guild. Call me crazy.

UPDATE: One of the comments below suggested that Congress was too much in the pocket of the content industry and would force search engines and the like to adopt some type of filtering mechanism if there was a statutory response. I’m skeptical of that, partially because I think there’s a constituency supporting Google, but also because I don’t think it’s that easy to differentiate the search engines from the content providers anymore. Case in point: I understand that Yahoo! is among the big proponents of the US signing onto a broadcasting/webcasting right that has been operational in Europe for a while. So Yahoo! would have to decide which part of its business it would spite on any legislation related to filtering.

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Brett Frischmann tells a story about trying to buy his son a cookie with M&M’s on it and having the person working at the cookie stand insist on calling the cookies “B&B” cookies, not M&M cookies. According to the store clerk, they are not allowed to call the cookies M&M cookies.

Brett seems to think that the cookie stand owner has instructed its employees not to call the cookies M&M cookies on its own. I sort of doubt that, given the pervasiveness of the use of brand names to inform customers about the ingredients of their products. I can think of a number of food examples off the top of my head, such as Oreo cookie ice cream and Jack Daniels BBQ sauce. And what about all those ice cream shops where you can have ingredients added into your ice cream (like Marble Slab Creamery and Cold Stone Creamery)? They have a whole array of branded products that you can incorporate into their ice cream.

While my instinct was to agree with Brett that this should be a slam dunk nominative fair use case (assuming of course that the “B&Bs” really were M&Ms and not some other small coated chocolate candies that looked an awful lot like M&Ms), I’ll bet M&M Mars objected to their use. If I am wrong that the B&Bs really were M&Ms, then the objection might have been based on a legitimate concern about genericide – a concern that the cookie stand was calling all coated chocolate candies M&M’s, regardless of their source. This is exactly what gets Coca-Cola all worked up when someone calls any dark soda a “coke,” (which, my students remind me every semester, happens all the time).

But if the cookie stand really was using M&Ms on their cookies, then it’s a much different story. I’ve been wondering for some time how long it would take before trademark owners started objecting to people using their marks to note that they in fact make products containing the branded product, so I did a little research.

When I was in Ben & Jerry’s with my son the other day (Brett and I apparently have the same childcare priorities), I noticed that they don’t use “oreo” in the name of their “Sweet Cream & Cookies” ice cream, which are of course made with “broken chocolate sandwich cookies.” I also recalled that TGI Friday’s has several food items that are made with Jack Daniel’s bbq sauce, and I noticed that they say on their web page that they use “Jack Daniel’s” under license.

So, if this anecdotal evidence means anything, I’ll bet that the hapless cookie stand got a cease and desist letter from M&M Mars telling them they couldn’t say they were selling M&M cookies, when in fact they were. As I said before, I’ve thought this was coming for some time. Despite some half-hearted attempts to protect users who employ a trademark to accurately describe their products, we’ve gotten so far down the road towards rights in gross, that the M&M argument probably doesn’t seem far-fetched. M&M will argue that, when customers see “M&M cookies”, they will assume that M&M Mars has given permission to the store to use their mark. The only basis on which consumers could draw that conclusion, of course, is that the cookie stand is saying the cookies have M&Ms on them. But that would hardly make the case unwinnable for M&M. As Brett points out (by reference to Stacey Dogan and Mark Lemley’s article), we have other examples of areas where the only reason consumers might suspect some form of connection is the use of the mark by itself.

And the doctrine of exhaustion probably doesn’t work to block liability here. Exhaustion usually applies when someone resells a product without change. Here, the downstream users are not merely reselling initial products without changing them – they are incorporating them into their own food products, which may or may not be any good.

Still, if we mean it at all when we say that trademark rights are not rights in gross, then it can’t be trademark infringement to tell consumers that your product is made of ingredients that it is in fact made of. I certainly hope that nominative fair use would take care of this, because it if wouldn’t, then trademark owners in a very real sense get to control the use of their products after they’ve made their way into commerce.

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Guest blogger Brett Frischmann has a really good post over at madisonian.net. He argues that at least some of the problems New Orleans has experienced in the aftermath of Hurricane Katrina are consequences of shortsightedness. I’ve been thinking a lot about this lately, in very similar terms.

Brett notes that much of the destruction could have been avoided if we had only invested in infrastructure. We don’t because the benefits of those investments are fuzzy and won’t be realized until sometime in the distant future. The costs, on the other hand, must be incurred now. This certainly is true in the context of New Orleans, but there’s a much broader point to be made here, which Brett hints at. Shortsightedness is pervasive in American public policy.

In his article, Brett mentions social security and the environment as examples of our failure to invest current funds to avoid much more expensive problems down the road. There are many other examples that could be added to the list. The budget deficit is an obvious place to start.

There are several less obvious examples too. We have very good information about the kinds of programs that work to reduce violent crime and keep young kids involved in productive activities. Nevertheless, our prisons are bursting at the seams. Because we refuse to make the necessary investments, we have a much more expensive problem on our hands down the road. A similar story could be told about early childhood education. Unfortunately, but predicatably, the costs of shortsightedness tend to fall disproportionately on those who can afford it least. There’s another level on which class has everything to do with the hurricane.

So what in the world does this have to do with technology and marketing? Not very much, except that cognitive science has a lot to say about the natural tendency to be shortsighted. Maybe if we pay more attention to that tendency we can work to offset it.

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The 6th Circuit today released an interesting decision restricting the application of initial interest and post sale confusion doctrines, at least in the context of product configuration.

Gibson Guitar Corp. has manufactured its Les Paul line of guitars more or less consistently since the the early 1950’s. Gibson argues that the Les Paul guitar is distinctively shaped and serves as a trademark. In 2000, Paul Reed Smith began making a similarly shaped guitar, and Gibson sued. The court rejected Gibson’s claim by finding no likelihood of confusion between the two companies’ guitars.

There is a lot I could say about this case, but I will highlight a couple of mostly unrelated things I thought were interesting about the case.

1. I still can’t figure out why Gibson sought leave to amend its complaint to limit its claim to infringement of its federally registered two dimensional depiction of the guitar. The court goes out of its way to say that, if the claim is based only on the two dimensional depiction, then the district court shouln’t have considered other design features like color and knob placement. That seems right, but I couldn’t figure out why it should matter, and it wouldn’t have if they had kept their trade dress claim since it would have been a distinction without a difference.

2. There seems to be something of a minor movement afoot to cut back on initial interest confusion. This decision is the second in just a few weeks to refuse to apply the doctrine (see the 4th Circuit’s decision in Lamparello v. Falwell). While I’m glad to see courts expressing greater skepticism about that potentially pernicious doctrine, I’m somewhat disappointed that both decisions did so by unpersuasively distinguishing prior cases rather than having the courage to simply say that initial interest confusion isn’t actionable or is actionable only in limited circumstances.

2. It’s really quite ironic that the 6th Circuit refuses Gibson’s initial interest confusion claim and distinguishes its prior recognition of the doctrine on the ground that Paccar (its earlier case) was about initial interest confusion with respect to domain names. Falwell’s claim was based on use of a misspelling of his name in an internet domain name, and yet the 4th Circuit rejected Falwell’s claim and argued that you can’t determine initial interest confusion without considering the context of the web page to which the domain name resolves. That’s not initial interest confusion – the whole point of that doctrine is that the confusion is dispelled when further context is introduced – and the 4th Circuit should have just rejected the doctrine altogether. But the 6th Circuit seems to think that initial interest confusion is only applicable in the context of domain names (or, to read the decision more narrowly, at least doesn’t apply in the context of product configuration – more on that below). I don’t see any reason to treat domain names differently in terms of causing initial interest confusion, so I have to conclude that this was just an excuse for the court to restrict initial interest confusion without having to say Paccar was wrong.

3. The court claims that the implications of recognizing initial interest confusion claims are more serious/important in the context of product configurations because there are a limited number of ways in which a product can be made. But I think Judge Kennedy (concurring in part, dissenting in part) clearly has the better of this argument. If it’s true that products can only be made in certain ways, and that lots of products look vaguely similar at least from a certain perspective, then the plaintiff should have difficulty establishing that the shape denotes source and/or that the mark has any real strength. That seems to me to affect the scope of rights in a product configuration and might suggest that a certain amount of initial interest confusion has to be tolerated by those mark owners, but I don’t see why it means initial interest confusion shouldn’t be applied at all. Incidentally, I think Judge Kennedy’s proposed rule – that the issue of whether something inidcates source should be viewed from the same perspective at which the plaintiff claims confusion, is quite sensible.

4. I have similarly ambivalent feelings about the court’s discussion of post-sale confusion. Its attempt to distinguish Esercizio (the Ferrari case) is rather pathetic – it claims that, unlike in the Ferrari case, there’s no risk that PRS will affect Gibson’s reputation because PRS makes high quality guitars. This is striking because courts generally don’t let defendants off the hook on evidence of good quality, saying things like “it leaves the plaintiff’s reputation in defendant’s hands” and showing concern that the defendant might someday decide to make poor quality products. So whether or not PRS makes good guitars, it doesn’t mean that consumers might not think Gibson makes the guitars, and it doesn’t mean that PRS won’t someday cut costs and make poor substitutes. This seems like another relatively bald attempt to reject the doctrine without saying it rejected the doctrine.

5. This case raises a question I’ve been thinking about for a long time – why do we recognize trade dress rights in product configuration? At least for any products that can effectively be labeled, product configuration operates at most as a secondary or tertiary source identifier. And if the labeling is actually done, it’s almost inconceivable that anyone is really confused at the time of purchase (assuming the labeling itself is done clearly). In fact, Gibson’s counsel admitted in oral argument that “you’d have to be an idiot not to know which guitar you’re buying.” Gibson’s complaint seems to boil down to the complaint of every product configuration claimant I’ve ever seen – we developed an attractive product that consumers want, and we should be the only ones to exploit that design. But isn’t that exactly what design patent protection is all about? What marginal value do we get out of trade dress protection of this stuff? (I mean we as in consumers – I know why Gibson wants it).

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William Patry has an interesting post over at his blog about how courts go about determining substantial similarity in copyright infringement actions. The post resonated with me for a couple of reasons.

First, I always have great difficulty teaching substantial similarity to students. I’ve found that all you can really do is give lots of examples of things found substantially similar and things that were not. But devining any methodology in determining whether the allegedly infringing work is substantially similar to the plaintiff’s work is an exercise in futility. Patry notes that right now, copyright law exists at the crude level of Potter Stewart’s “I know it when I see it.” There’s a lot of truth in that, and it’s not a particularly good thing. It puts a lot of power in the hands of a judge. Despite courts’ protestations that substantial similarity should be judged from the standpoint of an ordinary consumer of the copyrighted works, usually the question is viewed from the standpoint of an ordinary federal judge and/or his clerks (I use “his” purposefully here, because although things are getting better, the federal judiciary is still predominantly populated with white men, most of them probably not that familiar with popular culture). Thus, this test probably tends to favor the types of works middle aged white men consume, and tends to disfavor the types of works with which they are not familiar. I don’t want to overstate the disparate impact point, but it seems pretty real to me. There’s a good paper to be written on this I suspect.

The other reason I really liked Patry’s post is that it contemplates using modern research on cognition to aid the substantial similarity determination. I’m currently fascinated with cognitive psychology and am working on something with Dan Hunter trying to apply some of its lessons to trademark law. It seems like a no-brainer really. If we’re trying to figure out how ordinary folks compare things and make decisions, why would we not look to research that seeks to understand how people in fact make decisions? There is an answer to that question, but it’s a cynical one. At least in trademark law, if we really tried to figure out what people were thinking, we’d probably find a lot less infringement. When trademark law is written by INTA and pushed predominantly by companies with valuable trademarks, is it any wonder we haven’t gone down the reality road?

Update: Mike Madison discusses Patry’s post over at Madisonian.net. I should have mentioned this before, but Mike has a couple of interesting papers that deal to some extent with cognition. He links to them in his post – check them out.

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In another example of trademark enforcement on steroids, we have

Monsanto’s recent demand that the author of the Bitter Greens Journal blog stop using Roundup Ready as the header for a series of blog posts. See Overlawyered and The Trademark Blog.

I find it extremely hard to believe that Monsanto has any kind of claim here. But it’s almost impossible anymore to know for sure that a trademark claim is specious. As I noted before, and as Eric lamented, trademark law is rapidly expanding to the point where any use of another’s trademark is an infringement, regardless of how it’s used.

What the Monsanto example demonstrates, I think, is that trademark owners think we’re already at the point that they get to control any and all uses of their marks. Monsanto’s first objection to the Bitter Green Journal’s use of Roundup, ready was:

1) You are using our trademark without our consent. This use of the term could cause your readers to think that your journal is in some way sponsored by Monsanto or that Monsanto supports the positions set out in your journal.

Sure they wind up couching the objection in terms of confusion, but do they really think anyone will be confused? I doubt it. I suspect that the first sentence really captures their complaint – someone used their mark without their consent. Period. We need to figure out how to stop the momentum in this direction.

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