Sometimes when legal academics debate each other about some area of theory or doctrine, it doesn’t have much impact on judges and regular lawyers. The current debate about the “trademark use” requirement is not like that. Anyone concerned about free speech and trademark law, or about keyword advertising and related uses of trademarks online, needs to pay attention too. The Iowa Law Review just published an exchange among some of the biggest trademark scholars on just these points. Let me summarize, hopefully in fairly plain English, and also give some links to those important sources that are freely available online.
First, a number of prominent scholars have argued recently that trademark liability requires the use of a trademark “as a mark,” and not in some other capacity. Just what this means is one of the topics of debate, and the various scholars supporting the idea don’t all agree with each other on the point. But essentially they suggest that certain kinds of uses of trademarks as a reference point for one’s product, rather than as an identifier for one’s product, mean that trademark law simply doesn’t apply, by definition. The most obvious example is keyword advertising: if Pepsi buys the keyword “COKE” from search engines, so that an internet user who searched for “Coke” would see a Pepsi advertisement, then by this reasoning that isn’t “trademark use” of “COKE” and so Pepsi cannot be liable for it. (And if Pepsi can’t be liable, then neither can the search engine, because the search engine’s liability is derivative of Pepsi’s, sort of like “aiding and abetting”). The argument goes that Pepsi isn’t pretending to be Coke, just to have some other undefined association with Coke, and that’s beyond the reach of trademark law. [Update: Nor, I should have added, does Pepsi suggest it is sponsored or affiliated with Coke, since that too would give rise to trademark liability.]
The most prominent article advancing this argument is by Stacey Dogan and Mark Lemley. (See Stacey L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, 41 HOUS. L. REV. 777, 822 & n.184 (2005)). Others who published work taking a similar position include Margreth Barrett and Uli Widmaier.
The Iowa Law Review exchange arises from a critique of the “trademark use theory” by two other scholars who are also the co-authors of one of the big trademark law casebooks, Graeme Dinwoodie and Mark Janis. In the main article, these two argue that no fair reading of the federal trademark statute supports the idea that such a rule exists, and that even if it did it would be bad policy to categorically remove such disputes from the ambit of trademark law while the technology is still developing. Dogan and Lemley wrote a reply for Iowa, and then Dinwoodie and Janie wrote a reply to their reply.
Now Mark McKenna has written a great new paper which navigates a middle course between these positions (and which he recently presented at this conference). McKenna argues that, while there is a trademark use requirement embedded in federal law, it doesn’t really matter because it is so bound up with the central inquiries of trademark law — determining whether a use confuses consumers as to affiliation or source — that it doesn’t do any good. The questions needed to determine trademark use are too close to the questions needed to determine liability, so it doesn’t do any independent work. I agree with this conclusion that the impact of any trademark use requirement would be very limited (I’m agnostic on whether it exists or not) and I’d reached the same tentative conclusion myself before Mark spelled it out so persuasively.
What does all this mean? Well, for one, I think it means we shouldn’t look to the notion of a threshold trademark use requirement as a meaningful limit on assertions of trademark rights against uses that should be lawful. Instead, other elements of law will need to change. (I am finishing a paper now that argues one of those areas should be the “fair use” doctrine in trademark law.) Another implication of the failure of trademark use is that keyword advertising cases are really trapped in a legal gray area, and we will need to come up with some distinct rules for dealing with such indexical uses of trademarks. Overall, it means more doctrinal work is needed. Oh goody: future employment for trademark scholars and lawyers alike…