One and inseparable: Dilution and infringement in trademark law

Minnesota Law Review

Volumn 85, Issue 4, 2001, Pages 949-1035

  Magliocca, Gerard N ^a  

^a Covington and Burling ^*  (United States)

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EID: 0347018527     PISSN: 00265535     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (425)

1. Frank I. Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV. 813, 824 (1927).
2. 170 F.3d 449, 456 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999).
3. See generally TRUMAN CAPOTE, BREAKFAST AT TIFFANY'S (1958).
4. Of course, trademark law covers more than words like "Tiffany" and "Denny's." See 15 U.S.C. § 1127 (1994) (stating that trademarks include "any word, name, symbol, or device or any combination thereof"). One example is trade dress, which refers to "that arrangement of identifying characteristics connected with a product, whether by packaging or otherwise, intended to make the source of the product distinguishable from another and to promote its sale." Esercizio v. Roberts, 944 F.2d 1235, 1239-40 (6th Cir. 1991). When trade dress is alleged in the good itself rather than in its packaging, protection of the so-called "product configuration" is sometimes treated differently from ordinary marks and trade dress. Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1434 (3d Cir. 1994). For ease of reading, the terms "marks" and "trademarks" will be used interchangeably to refer to all valid representations of commercial identity.
5. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995) (internal citations and quotation marks omitted).
6. Id. at 164.
7. Id.
8. See, e.g., David L. Lange, The Intellectual Property Clause in Contemporary Trademark Law: An Appreciation of Two Recent Essays and Some Thoughts About Why We Ought to Care, 59 LAW & CONTEMP. PROBS. 213, 222 (1996) ("In the field of trademarks and unfair competition, . . . it often seems that the river is over its banks; the boundaries among doctrines are no longer clear.").
9. 15 U.S.C. § 1125(a); see, e.g., Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1053 (9th Cir. 1999); Patrick M. Bible, Defining and Quantifying Dilution Under the Federal Trademark Dilution Act of 1995: Using Survey Evidence to Show Actual Dilution, 70 U. COLO. L. REV. 295, 296-98 (1999);
10. Robert N. Klieger, Trademark Dilution: The Whittling Away of the Rational Basis for Trademark Protection, 58 U. PITT. L. REV. 789, 792 (1997).
11. For more on dilution, see, e.g., Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 214-28 (2d Cir. 1999); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 453-58 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999); 4 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:90 (4th ed. 2000);
12. Elizabeth Cutter Bannon, Revisiting The Rational Basis of Trademark Protection; Control of Quality and Dilution - Estranged Bedfellows?, 24 J. MARSHALL L. REV. 65, 90-109 (1990).
13. See generally Klieger, supra note 9; David S. Welkowitz, Reexamining Trademark Dilution, 44 VAND. L. REV. 531 (1991);
14. Note, Dilution: Trademark Infringement or Will-O'-The-Wisp, 77 HARV. L. REV. 520 (1964). Klieger's article is the most influential analysis of dilution in the recent literature. See, e.g, Ringling Bros., 170 F.3d at 454, 460 (citing Klieger, supra note 9).
15. See, e.g., Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 873 (9th Cir. 1999); I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 36 (1st Cir. 1998); Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 369 N.E.2d 1162, 1164-66 (N.Y. 1977); Jessica Litman, Breakfast with Batman: The Public Interest in the Advertising Age, 108 YALE L.J. 1717, 1723-24 (1999).
16. Schechter, supra note 1, at 825. Many dilution statutes have expanded Schechter's concept to include competing as well as non-competing goods. See infra text accompanying note 68.
17. See, e.g., Wedgwood Homes, Inc. v. Lund, 659 P.2d 377, 378 (Or. 1983); Model State Trademark Act § 12 (1964), reprinted in 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 22:8 (4th ed. 2000). For more on the definition of dilution, see infra text accompanying notes 69-75.
18. Pub. L. No. 104-98, 109 Stat. 985 (codified at 15 U.S.C. §§ 1125, 1127).
19. See id.; see also Ringling Bros., 170 F.3d at 455-56; Gregg Duffey, Trademark Dilution Act of 1995: You've Come a Long Way Baby - Too Far, Maybe?, 39 S. TEX. L. REV. 133, 135 (1997); Klieger, supra note 9, at 795.
20. See, e.g., Ringling Bros., 170 F.3d at 454 (noting that about half of the states enacted a dilution remedy prior to the passage of the FTDA). While the conflict between dilution and infringement remained muffled until recently, the issue was never totally ignored.
21. See, e.g., Ralph S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 YALE L.J. 1165, 1191-98 (1948) (criticizing the dilution formula).
22. See, e.g., RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25 cmt. b (1995) ("A broad antidilution theory also has the potential to render superfluous the traditional likelihood of confusion standard of liability."); Klieger, supra note 9, at 865 ("The [FTDA] seems well on its way to displacing the consumer protection model with a system of trademark rights in gross.");
23. Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687, 1697 (1999) ("Courts seem to be replacing the traditional rationale for trademark law with a conception of trademarks as property rights.").
24. Klieger, supra note 9, at 795; see Ringling Bros., 170 F.3d at 456 (explaining that the FTDA could "create property rights in gross in the narrow category of marks it protected, making them comparable (though without their time-limits) to those protected by patent and copyright law"); I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 51-52 (1st Cir. 1998) (Boudin, J., concurring) (stating that dilution claims for trade dress may present constitutional difficulties under the Patent Clause); Welkowitz, supra note 10, at 532 ("[Dilution] has the potential for granting a virtual exclusive property right in a trademark to its owner, something that traditional trademark law has eschewed.").
25. See Welkowitz, supra note 10, at 588; see also Klieger, supra note 9, at 865-66 ("Unless these state [dilution] statutes and the Federal Trademark Dilution Act are repealed or read into obscurity by the courts, trademark law's historic balance between free and fair competition will falter.").
26. See, e.g., Bannon, supra note 10, at 71-72; Kristine M. Boylan, The Corporate Right of Publicity in Federal Dilution Legislation Part II, 82 J. PAT. & TRADEMARK OFF. SOC'Y 5, 17-19 (2000);
27. Rudolf Callmann, Unfair Competition Without Competition?, 95 U. PA. L. REV. 443, 461 (1947); Note, supra note 10, at 523.
28. See Klieger, supra note 9, at 815-19 (summarizing the hostile attitude of the courts toward dilution after the 1940s); Beverly W. Pattishall, The Dilution Rationale for Trademark - Trade Identity Protection, Its Progress and Prospects, 71 NW. U. L. REV. 618, 621 (1976) ("[T]he [dilution] concept seemingly has remained so misunderstood or unpalatable to the judicial taste that it largely has been ignored by the courts despite the plain dictates of the statutes and the voluminous urgings of academics." (footnote omitted)); Note, supra note 10, at 528 (commenting on "[t]he persistence and ingenuity displayed by able federal judges in drawing the teeth of state dilution statutes"); cf. Ringling Bros., 170 F.3d at 464 (reading the FTDA to require proof of actual dilution even though such "[p]roof will be difficult").
29. Ringling Bros., 170 F.3d at 456; see Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 625 (2d Cir. 1983) (calling dilution a "nebulous concept"); Welkowitz, supra note 10, at 533 ("The courts are foundering hopelessly in their efforts to promulgate a rational structure for analyzing dilution cases. Whatever the merits of dilution protection in theory, it is producing a confusing body of case law.").
30. See Ringling Bros., 170 F.3d at 456-57; Klieger, supra note 9, at 821; Note, supra note 10, at 529; see also Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 217 (2d Cir. 1999) ("It is not yet entirely clear how courts should determine whether a junior use causes a senior mark to suffer dilution."). The term "junior user" refers to a party that uses a mark resembling one that is already registered, or in commercial use by someone else (the senior user). See Nabisco, 191 F.3d at 215. Depending on its distinctiveness, junior users sometimes have rights with respect to an existing mark, although the senior user ordinarily has priority. See id. at 216-17.
31. Ringling Bros., 170 F.3d at 455-56; see also Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875 (9th Cir. 1999) (noting that "a carefully-crafted balance exists between protecting a trademark and permitting non-infringing uses"); Klieger, supra note 9, at 821; cf. Schechter, supra note 1, at 831 ("[T]he preservation of the uniqueness of a trademark should constitute the only rational basis for its protection . . . .").
32. See Duffey, supra note 15, at 148-49; Ira S. Nathenson, Internet Infoglut and Invisible Ink: Spamdexing Search Engines with Meta Tags, 12 HARV. J.L. & TECH. 43, 118-21 (1998) (advocating dilution as the best approach to metatag regulation).
33. See generally Scott N. Barker, Note, Famous.com: Applying the FTDA to Internet Domain Names, 22 U. DAYTON L. REV. 265 (1997) (proposing that "the federal trademark dilution statute should be applied to Internet domain names that are similar to trademarks").
34. See, e.g., Panavision Int'l L.P. v. Toeppen, 141 F.3d 1316, 1326-27 (9th Cir. 1998); 141 CONG. REC. S19312 (daily ed. Dec. 29, 1995) (statement of Sen. Leahy) ("[I]t is my hope that [the FTDA] can help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others."); Nathenson, supra note 25, at 118-21.
35. But see Jennifer Golinveaux, What's in a Domain Name: Is "Cybersquatting" Trademark Dilution?, 33 U.S.F. L. REV. 641, 671 (1999) (concluding that dilution should not be used to address domain name disputes). For more on trademarks and the Internet, see infra Part VI.
36. See, e.g., Duffey, supra note 15, at 135; Lemley, supra note 17, at 1701-03.
37. "Obsolescence" in this context refers to legal standards that are inadequate because they are based on pragmatic assumptions made under substantially different economic and social conditions.
38. See, e.g., Lange, supra note 8, at 240 ("[C]onfusion is often little or nothing more than a makeweight, observed ex hypothesi").
39. See, e.g., Bible, supra note 9, at 296-301; Brown, supra note 16, at 1195-98; Klieger, supra note 9, at 800-11. See generally FRANK I. SCHECHTER, THE HISTORICAL FOUNDATIONS OF THE LAW RELATING TO TRADE-MARKS (1925) (offering a broad critique of early twentieth century trademark doctrine).
40. See S.C. Johnson & Son, Inc. v. Johnson, 175 F.2d 176, 180 (2d Cir. 1949) (L. Hand, C.J.) (establishing that trademark infringement extended to uses on non-competing products if the unauthorized use might "stain the [mark] owner's reputation in the minds of his customers"); Justin Hughes, "Recoding" Intellectual Property and Overlooked Audience Interests, 77 TEX. L. REV. 923, 998 (1999) (noting the paradox that "the likelihood of confusion . . . is arguably increased the more the infringing goods are of the same quality as the trademark owner's goods" notwithstanding the doctrine's opposite position); see also Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (Friendly, J.) (analyzing infringement under the modern eight-factor test).
41. See, e.g., Duffey, supra note 15, at 147-49; Nathenson, supra note 25, at 111-15.
42. "Common law" in this context refers to the judicial elaboration of statutes that have delegated broad lawmaking authority to the courts. Since the middle of this century, trademark law has been based on broad statutes such as the Lanham Act. See Lanham Trade-Mark Act, 15 U.S.C. §§ 1051-1127 (1994) (the Lanham Act); see also Stephen L. Carter, The Trouble With Trademark, 99 YALE L.J. 759, 759 n.1 (1990) (explaining that federal trademark statutes prior to the Lanham Act did not create substantive rights).
43. Dilution is one of many doctrines that update obsolete intellectual property law. See Bruce P. Keller, Condemned To Repeat the Past: The Reemergence of Misappropriation and Other Common Law Theories of Protection for Intellectual Property, 11 HARV. J.L. & TECH. 401, 412 (1997);
44. Douglas Gary Lichtman, The Economics of Innovation: Protecting Unpatentable Goods, 81 MINN. L. REV. 693, 732-33 (1997).
45. See, e.g., Klieger, supra note 9, at 810 ("Judged in its historical context, Schechter's dilution proposal is best understood as a dramatic reaction to the inability or unwillingness of courts and legislatures to reform trademark law in light of the post-Industrial Revolution trade explosion."). From this Klieger draws the conclusion that "ensuing reforms [to consumer confusion] . . . quickly deprived dilution of any legitimate role in modern trademark law." Id. As this analysis will demonstrate, Klieger overstates his strong case against the broad application of dilution statutes.
46. To see how this interpretation explains the development of trademark "tarnishment" law, see infra Part V.A-B.
47. See Schecter, supra note 1, at 814-16.
48. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 P.3d 449, 454 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999); Bannon, supra note 10, at 69, 86-87; Klieger, supra note 9, at 802-05; Schechter, supra note 1, at 816.
49. See, e.g., Golinveaux, supra note 26, at 654-68 (explaining the development and expansion of dilution as courts have applied it to cybersquatter cases).
50. See Anticybersquatting Consumer Protection Act of 1999, Pub L. No. 106-113, 113 Stat. 1501A-545; Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000), cert. denied, 120 S. Ct. 2719 (2000); Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1062-64 (9th Cir. 1999).
51. See, e.g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 7 (2d Cir. 1976) (Friendly, J.); S.C. Johnson & Son, Inc. v. Johnson, 175 F.2d 176, 177 (2d Cir. 1949) (L. Hand, C.J.); id. at 180 (Clark, J., dissenting); Triangle Publ'ns, Inc. v. Rohrlich, 167 F.2d 969, 970 (2d Cir. 1948) (A. Hand, J.); id. at 974 (Frank, J., dissenting).
52. See, e.g., Carter, supra note 33, at 761.
53. See id.; Klieger, supra note 9, at 790.
54. See Carter, supra note 33, at 762-63. See generally George J. Stigler, The Economics of Information, 69 J. POL. ECON. 213 (1961) (noting the difficulty in matching buyers and sellers due to search costs).
55. See Carter, supra note 33, at 762-63; William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspective, 30 J.L. & ECON. 265, 269-70 (1987).
56. See Carter, supra note 33, at 762-63 (noting that higher consumer search costs would result if companies lose the incentive to mark their goods).
57. See id. at 764.
58. Yale Elec. Corp. v. Robertson, 26 F.2d 972, 973 (2d Cir. 1928) (L. Hand, J.).
59. International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 919 (9th Cir. 1980). Trademark property rights differ significantly from those created by patent and copyright law. See infra text accompanying notes 156-59.
60. See, e.g., 15 U.S.C. § 1114(1); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992) (citation omitted).
61. 287 F.2d 492 (2d Cir. 1961) (Friendly, J.).
62. See id. at 495. On the definition of junior and senior users, see supra note 23.
63. The factor focusing on the quality of the defendant's product is an important element in the development of trademark infringement and dilution, as is discussed in Parts IV and V.
64. See, e.g., Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1058 (9th Cir. 1999).
65. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (Friendly, J.). Fanciful, arbitrary, and suggestive marks are considered "inherently distinctive" and therefore entitled to protection. See Melissa R. Gleiberman, Note, From Fast Cars to Fast Food: Overbroad Protection of Product Trade Dress Under Section 43(a) of the Lanham Act, 45 STAN. L. REV. 2037, 2041 (1993). Descriptive marks can obtain protection only if they have acquired distinctiveness (also called secondary meaning) through use in commerce. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). The final category of marks - generic - receives no protection. See id. at 768.
66. See Abercrombie & Fitch Co., 537 F.2d at 9.
67. As explained in Part IV.A-B, the junior and senior users need not be in direct competition for an infringement action to succeed.
68. See, e.g., Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 409-10 (2d Cir. 1917).
69. See, e.g., Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir. 1993).
70. See, e.g., I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 36 (1st Cir. 1998). Arguably, there is a third category of trademark protection. Congress has granted some organizations a monopoly - enforceable by criminal and civil penalties - over their marks. See San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 532 n.8 (1987) (listing statutes granting such rights to the American National Red Cross, the 4-H Club, Smokey Bear, Woodsy Owl, the Daughters of the American Revolution, the Boy Scouts, the Girl Scouts, and Little League Baseball); Hughes, supra note 31, at 971-72 (discussing the special protection given to cultural symbols).
71. Brown, supra note 16, at 1187.
72. As Justice Felix Frankfurter once explained, If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942).
73. See Bannon, supra note 10, at 90 (noting that dilution statutes protect a mark's commercial value); Welkowitz, supra note 10, at 533 (explaining that Schecter thought the real value protected by a trademark was its advertising power).
74. See Bannon, supra note 10, at 92 (quoting Judge Learned Hand regarding the dangers of dilution); Schechter, supra note 1, at 831 (noting that the selling power of a trademark is based on its uniqueness); Welkowitz, supra note 10, at 533-34 (explaining that Schecter was critical of trademark protection limitations on non-competing goods).
75. Hearings Held Before the House Comm. on Patents, 72d Cong., 1st Sess. 15 (1932) (statement of Frank I. Schechter). Schechter's argument for dilution is examined more closely in Part II.
76. See 4 MCCARTHY, supra note 10, § 24:90; Kristine M. Boylan, The Corporate Right of Publicity in Federal Dilution Legislation, 81 J. PAT. & TRADEMARK OFF. SOC'Y, 815, 819 (1999).
77. See Welkowitz, supra note 10, at 536-37.
78. MODEL STATE TRADEMARK BILL § 12 (1964), reprinted in 3 MCCARTHY, supra note 13, § 22:8, cited in Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 456 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999); Welkowitz, supra note 10, at 536-37 (quoting the anti-dilution provision of the Model State Trademark Act).
79. See, e.g., Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 42 (2d Cir. 1994) (applying New York law); Hyatt Corp. v. Hyatt Legal Servs., 736 F.2d 1153, 1157 (7th Cir. 1984) (applying Illinois law); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 494-95 (1st Cir. 1981) (applying Massachusetts law).
80. See Bannon, supra note 10, at 100. Some have pushed for the elimination of the distinctiveness prong on the ground that weak marks are more susceptible to dilution than strong marks. See Welkowitz, supra note 10, at 540; infra text accompanying notes 166-67.
81. There are marks comprised of generic terms that have acquired secondary meaning and become quite strong. One example is General Motors, which contains words used in many brand names, but still identifies an established set of products.
82. A direct competitor of a firm with a weak mark might still want to copy the mark to injure that specific firm, but that kind of harm would normally be covered by infringement.
83. Deere, 41 F.3d at 42; see also Note, supra note 10, at 531 (quoting Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1031 (2d Cir. 1989)). Courts have been unable to reach a consensus on how to analyze blurring and tarnishment claims. For more on the chaotic state of dilution doctrine, see Part II.D.2.
84. Deere, 41 F.3d at 43; see Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Celozzi-Ettelson Chevrolet, Inc., 855 F.2d 480, 485 (7th Cir. 1988) (finding that "The Greatest Show on Earth" was blurred by "The Greatest Used Car Show on Earth").
85. Deere, 41 F.3d at 43; see also Cmty. Fed. Sav. & Loan Ass'n v. Orondorff, 678 F.2d 1034, 1037 (11th Cir. 1982) (holding that the use of "Cookie Jar" by a topless dance bar tarnished the mark of a savings and loan). Tarnishment can raise serious First Amendment questions by chilling commercial speech or parodies of well-known marks. See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 33-34 (1st Cir. 1987) (holding the Maine anti-dilution statute unconstitutional on this basis). While these kinds of First Amendment issues are worth exploring, this analysis strives to avoid constitutional difficulties and focuses instead on tarnishment's role within the trademark regime.
86. Schechter led the first unsuccessful attempt to pass a federal dilution law in 1932. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 454 n.2 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999). In 1988, a dilution provision passed the Senate but was not taken up by the House of Representatives. See I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 46 & n.10 (1st Cir. 1998).
87. 15 U.S.C. § 1127 (Supp. IV 1999).
88. The FTDA was passed without any hearings in the Senate and only a few in the House. See 4 MCCARTHY, supra note 10, § 24:87. Some courts have relied on the more extensive legislative history of the unsuccessful 1988 dilution provision to interpret the FTDA. See I.P. Lund, 163 F.3d at 46 & n.10. Using legislative history from a bill that failed seven years prior to the FTDA's enactment, however, is highly dubious.
89. H.R. REP. NO. 104-374, at 3 (1995).
90. 15 U.S.C. § 1125(c)(1) (Supp. IV 1999). The FTDA contains exceptions for (1) fair use of a trademark in comparative advertising, (2) non-commercial uses of a mark, and (3) news reporting and commentary. See id. § 1125(c)(4).
91. Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 874 (9th Cir. 1999). The Second Circuit has held that the FTDA requires a mark to be distinctive as well as famous to receive dilution protection. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999). This conclusion is based on language in the statute indicating that only "famous and distinctive" marks are covered. See id. (citing 15 U.S.C. § 1125(c)(1)). One leading commentator argues that the inclusion of a separate distinctiveness element in the FTDA was a drafting error and is redundant given that the statute only protects famous marks. See 4 MCCARTHY, supra note 10, § 24:91. That view, however, was expressly rejected by the Second Circuit. See Nabisco, 191 F.3d at 216 n.2. The Second Circuit's construction is more consistent with the text of the FTDA. On the other hand, the court in Nabisco appears to have interpreted distinctive to mean inherently distinctive. The opinion provides examples of famous marks, such as American Airlines and Allied Stores, that are not inherently distinctive and hence would not be eligible for dilution relief. Id. at 227-28. Both of these marks, however, have acquired distinctiveness (i.e., secondary meaning) through use in commerce and are distinctive in that sense. Famous marks with secondary meaning may deserve less protection than famous and inherently distinctive marks, see Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (Friendly, J.), but Nabisco says that famous marks without inherent distinctiveness should get no dilution protection at all, Nabisco, 191 F.3d at 219. Nabisco does not explain why the term "distinctive" in the FTDA ought to be construed as encompassing only inherently distinctive marks. The construction is particularly odd given that the statute's fame prong refers explicitly to "inherent or acquired distinctiveness." 15 U.S.C. § 1125(c)(1)(A). Interpreting distinctive to include acquired and inherent distinctiveness, however, would render the term distinctive in the statute meaningless, since a mark cannot be famous without having at least some acquired distinctiveness. Perhaps the phrase "famous and distinctive" should be read as a single term of art - whether the product of a drafting error or not - rather than as establishing separate fame and distinctiveness elements. See Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 166-67 (3rd Cir. 2000), cert. denied, No. 00-470, 2001 WL 12465 (Jan. 8, 2001).
92. The FTDA states, In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to - (A) the degree of inherent or acquired distinctiveness of the mark; (B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used; (C) the duration and extent of advertising and publicity of the mark; (D) the geographical extent of the trading area in which the mark is used; (E) the channels of trade for the goods or services with which the mark is used; (F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought; (G) the nature and extent of use of the same or similar marks by third parties; and (H) whether the mark was registered under the [trademark statutes]. . . . 15 U.S.C. § 1125(c)(1). Before determining what marks should get dilution protection, we need to understand what dilution means. It should be said, however, that as a practical matter the fame or distinctiveness determination in dilution cases has almost always turned on whether the mark at issue needed transitional protection due to infringement obsolescence. This highly pragmatic view of what is a famous mark has been carried over into the FTDA, which permits courts to examine a wide range of evidence in making a fame determination.
93. Cf. The Trademark Cases, 100 U.S. 82, 94, 97-98 (1879) (holding that Congress has no power to regulate marks pursuant to the Patent and Copyright Clauses).
94. See Panavision Int'l v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998); 4 MCCARTHY, supra note 10, § 24.90.
95. See Brown, supra note 16, at 1189-90; Klieger, supra note 9, at 793.
96. See RESTATEMENT, supra note 17, § 25 cmt. b; Brown, supra note 16, at 1190; Klieger, supra note 9, at 851-52.
97. See, e.g., Klieger, supra note 9, at 851 n.369.
98. See, e.g., Nabisco Brands, Inc. v. PF Brands, Inc., 191 F.3d 208, 219 (2d Cir. 1999) ("Consumer confusion would undoubtedly dilute the distinctive selling power of a trademark."); James Burrough, Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 n.16 (7th Cir. 1976) (stating that dilution necessarily follows from consumer confusion); Klieger, supra note 9, at 812 (stating that "[an] antidilution statute, read literally, render[s] the consumer confusion test immaterial"). Supporters of dilution strenuously object to the argument that dilution necessarily follows from confusion. They maintain that dilution and infringement are different theories "positing a different kind of damage to a mark caused by a different form of consumer conception." 4 MCCARTHY, supra note 10, § 24:71. That analysis is conceptually flawed and has been uniformly rejected by the case law. See, e.g., Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Celozzi-Ettelson Chevrolet, Inc., 855 F.2d 480, 484 (7th Cir. 1988). Moreover, no court has ever found a likelihood of consumer confusion and then not also found dilution for a mark that was eligible for dilution protection.
99. Welkowitz, supra note 10, at 548; see also, e.g., Duffey, supra note 15, at 149 ("The elements required to establish a trademark infringement claim will likely suffice to establish a prima facie case under the FTDA." (citation omitted)).
100. See, e.g., RESTATEMENT, supra note 17, § 25 cmt. b; Welkowitz, supra note 10, at 546 ("Courts have expressed reservations that a stringent application of antidilution statutes would swallow up much of the law of trademark and unfair competition . . . ."); Note, supra note 10, at 529 (stating that a proper dilution remedy would allow courts to dispense with most infringement and unfair competition doctrine).
101. One way to mitigate the conflict between infringement and dilution would be to make infringement the sole remedy for disputes between competitors, while confining dilution to claims involving non-competing goods. See Pro-Phy-Lac-Tic Brush Co. v. Jordan Marsh Co., 165 F.2d 549, 553 (1st Cir. 1948). This idea, however, has never gained any support. E.g., Nabisco, 191 F.3d at 222-23.
102. Klieger, supra note 9, at 847-48 (footnote omitted).
103. See id. at 865-66; Welkowitz, supra note 10, at 587-88.
104. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875 (9th Cir. 1999) (stating that the fame prong preserves the proper balance between public and private rights).
105. See Klieger, supra note 9, at 848-49; Lemley, supra note 17, at 1698.
106. See Wedgewood Homes, Inc. v. Lund, 659 P.2d 377, 380 (Or. 1983); Klieger, supra note 9, at 849-51; Lemley, supra note 17, at 1698.
107. See Klieger, supra note 9, at 851. Some of the cases in which the definition of fame has been stretched involve the Internet. See, e.g., Jews for Jesus v. Brodsky, 993 F. Supp. 282, 305-06 (D.N.J. 1998) (finding "Jews for Jesus" famous); Hasbro, Inc. v. Internet Entm't Group, Ltd., 40 U.S.P.Q.2d (BNA) 1479, 1480 (W.D. Wash. 1996) (finding "Candyland" famous); cf. Sporty's Farm L.L.C. v. Sportsman's Mkt, Inc., 202 F.3d 489, 497 (2d Cir. 2000) (stating that the new Anticybersquatting statute "was adopted specifically to provide courts with a preferable alternative to stretching federal dilution law when dealing with cybersquatting cases"). To see why courts might strain to extend dilution to the Internet, see infra Part VI.A.
108. See Lemley, supra note 17, at 1698-99 & n.51.
109. See Klieger, supra note 9, at 846-47; Litman, supra note 11, at 1724 n.44; infra text accompanying notes 163-67 (discussing the superfluous nature of dilution).
110. See, e.g., Welkowitz, supra note 10, at 588 ("If legislatures cannot summon the will to repeal dilution statutes, the statutes should be limited as much as their language will permit.").
111. See Boylan, supra note 66, at 816 ("[C]ourts had declined to enforce the statutes literally; they restricted dilution protection in various ways that the statutory language simply did not support."); Klieger, supra note 9, at 819 ("Whatever the approach of a particular court, the 'plain, literal language' of the antidilution statutes was universally ignored, and the dilution cause of action thoroughly 'emasculated,' in case after case." (footnote omitted)).
112. See Esquire, Inc. v. Esquire Slipper Mfg. Co., 243 F.2d 540, 542-43 (1st Cir. 1957); Cue Publ'g Co. v. Colgate-Palmolive Co., 256 N.Y.S.2d 239, 243-44 (N.Y. Sup. Ct. 1865), aff'd, 259 N.Y.S.2d 377 (N.Y. App. Div. 1965); RESTATEMENT, supra note 17, § 25 cmt. b; Klieger, supra note 9, at 817-18.
113. See Klieger, supra note 9, at 818-19; Laura M. Slenzak, Dilution Law in the United States and Canada: A Review of the State of the Law and a Proposal for United States Federal Dilution Protection, 83 TRADEMARK REP. 205, 215 (1993). A predatory intent requirement does not make much sense. Most of the time, someone who copies a famous mark does not want to injure that mark. Damaging the famous mark only diminishes its value and limits what the putative dilutor can reap through copying.
114. Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 458, 461 n.6 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999); Westchester Media, L.L.C. v. PRL USA Holdings, Inc., 214 F.3d 658, 670-71 (5th Cir. 2000). But see Nabisco, Inc. v. PF Brands, Inc. 191 F.3d 208, 223-25 (2d Cir. 1999).
115. Note, supra note 10, at 528; see also Pattishall, supra note 21, at 628 (stating that courts had "relegated [dilution] to the legal junk yard").
116. See Arthur Conan Doyle, The Final Problem, in THE ORIGINAL ILLUSTRATED SHERLOCK HOLMES 327, 337 (Castle n.d.) (describing the final duel between Sherlock Holmes and his archenemy, Professor Moriarty).
117. See generally Schecter, supra note 1.
118. See Bannon, supra note 10, at 69-70; Klieger, supra note 9, at 801-02; Schechter, supra note 1, at 816.
119. See Schechter, supra note 1, at 814.
120. See Klieger, supra note 9, at 796; Schechter, supra note 1, at 814. This is not to say that there were no widely-known brand names at that time. In particular, certain luxury items like porcelain or jewels may well have been made by well-known craft firms. This constituted, however, only a small portion of commercial activity.
121. See, e.g., Brown, supra note 16, at 1185-87; Klieger, supra note 9, at 797-98.
122. Of course, many local producers sold their goods themselves rather than relying on a merchant. If Spark owned a store at his forge, then his mark - via a storefront sign - would indicate the retail location of his products. For more on the location-identifying function of marks, see infra Part VI.A.
123. Benjamin G. Paster, Trademarks - Their Early History, 59 TRADEMARK REP. 551, 552 (1969).
124. Before the likelihood of confusion test emerged, an action for trademark deceit would only lie if there was an actual diversion of sales from the senior user to the junior user. See, e.g., Schechter, supra note 1, at 821.
125. Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959); see also Carter, supra note 33, at 790.
126. See, e.g., Dawn Donut, 267 F.2d at 364 ("[I]f the use of the marks by the registrant and the unauthorized user are confined to two sufficiently distinct and geographically separate markets . . . then the registrant is not entitled to enjoin the junior user's use of the mark.").
127. See Klieger, supra note 9, at 796; Litman, supra note 11, at 1724 n.41; Schechter, supra note 1, at 820-22.
128. Ainsworth v. Walmsley, L.R. 1 Eq. 518, 524-25 (1866).
129. See, e.g., Klieger, supra note 9, at 799.
130. See Brown, supra note 16, at 1185-87; Schechter, supra note 1, at 814; see also Walter Baker & Co. v. Slack, 130 F. 514, 518 (7th Cir. 1904) ("We may safely take it for granted that not one in a thousand knowing of or desiring to purchase 'Baker's Cocoa' or 'Baker's Chocolate' know of Walter Baker & Co., Limited.").
131. See, e.g., Klieger, supra note 9, at 800; Edward C. Lukens, The Application of the Principles of Unfair Competition to Cases of Dissimilar Products, 75 U. PA. L. REV. 197, 204-05 (1927).
132. See Klieger, supra note 9, at 800; Schechter, supra note 1, at 814. Judge Learned Hand was one of the first to recognize the change in the source-identifying function when he said that "[i]t is, of course, not necessary, that [the mark owner] should be known as the maker; on the contrary, it will suffice if the article be known as coming from a single, though anonymous, source." Coty, Inc. v. LeBlume Import Co., 292 F. 264, 267-68 (S.D.N.Y. 1923), aff'd, 293 F. 344 (2d Cir. 1923).
133. See, e.g., Shredded Wheat Co. v. Humphrey Cornell Co., 250 F. 960, 963 (2d Cir. 1918); Brown, supra note 16, at 1185-86. Of course, marks in the modern economy also act as product identifiers (i.e., the product's name), but this adds little to trademark analysis. Distinctions between product lines (as opposed to brand names) involve only direct competitors, and therefore settled infringement doctrine should be able to address issues arising from potential product confusion.
134. See Bannon, supra note 10, at 66; see also Klieger, supra note 9, at 801-02 ("Judicial recognition of the quality representation function of trademarks, perhaps the most important development in trademark law this century, developed largely as a result of Schechter's proposal." (footnote omitted)).
135. Sidney A. Diamond, The Public Interest and the Trademark System, 62 J. PAT. & TRADEMARK OFF. SOC'Y 528, 529 (1980).
136. Schechter, supra note 1, at 818.
137. Klieger, supra note 9, at 799-800. The development of national markets also meant that marks often needed protection over a wider area than in the past.
138. See id. at 800; Lukens, supra note 121, at 204-05.
139. See, e.g., Klieger, supra note 9, at 803.
140. See id.
141. See Brown, supra note 16, at 1195-98; Klieger, supra note 9, at 800-01; Litman, supra note 11, at 1724 n.41.
142. See, e.g., Klieger, supra note 9, at 800-01; Litman, supra note 11, at 1724 n.41.
143. See Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 409-12 (2d
144. Schechter, supra note 1, at 824.
145. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 454 (4th Cir 1999), cert. denied, 528 U.S. 923 (1999); SCHECHTER, supra note 30, at 164-71; Klieger, supra note 9, at 801.
146. See Ringling Bros., 170 F.3d at 454; SCHECHTER, supra note 30, at 164-71; Klieger, supra note 9, at 801.
147. See Ringling Bros., 170 F.3d at 454; Schechter, supra note 1, at 830-33. Although Schechter never actually used the word "dilution" to describe his proposal, he relied on several German dilution cases and thus his article has been construed as the genesis of dilution in American law.
148. Schechter, supra note 1, at 818-19.
149. Id. at 823.
150. Id. at 825 (alteration in original).
151. See Ringling Bros., 170 F.3d at 454; Klieger, supra note 9, at 804-05.
152. Schechter, supra note 1, at 818.
153. Id. at 830. Although Schechter denied that he wanted to create property rights in gross though dilution, see id. at 822, that was belied by his statement that marks should be protected like plant machinery.
154. Id. at 825.
155. Id. at 819.
156. See id. at 830.
157. Id. at 825.
158. See, e.g., H. Scott Gordon, The Economic Theory of a Common-Property Resource: The Fishery, 62 J. POL. ECON. 124, 124 (1954) (examining an economic theory for commonly owned natural resources).
159. See Carter, supra note 33, at 762.
160. Schechter, supra note 1, at 826.
161. See id. at 826-28.
162. Id. at 830-31.
163. If marks have a persuasive function, and trademark law is geared towards preventing mark functions from being substantially impaired, then why should persuasiveness go unprotected? The answer is that trademark doctrine already protects the commercial magnetism of marks indirectly. See Klieger, supra note 9, at 861-62. As framed by Schechter, however, dilution argues that persuasiveness should receive additional protection and become the focal point of trademark analysis. We therefore need to determine if there is any reason to follow this prescription. See id. at 862.
164. A sophisticated argument defending dilution partly on natural rights grounds has been made recently by Kristine Boylan. See Boylan, supra note 20, at 18-21. Boylan contends that Schechter's proposal should be construed as embodying a Lockean labor theory of property. See id. at 18-26. She also suggests that an appropriate analogy for dilution is the common law right of publicity, which gives celebrities control over the use of their personas in advertising. See, e.g., Onassis v. Christian Dior-New York, Inc., 472 N.Y.S.2d 254, 263 (Sup. Ct. 1984); Boylan, supra note 20, at 28. Just as famous personalities have a property right in themselves, Boylan says, dilution can be understood as giving famous corporations a property right in their corporate personas. Boylan, supra note 20, at 31. There are two major problems with this analysis. First, a natural rights theory of dilution is inconsistent with the utilitarian justifications that support property rights elsewhere in the law. Second, the analogy between dilution and the right of publicity does not work well. A right of publicity is usually justified on two grounds. First, Presser argued that the common-law right of privacy gives celebrities an inherent right to profit from their own likeness. See William L. Prosser, Privacy, 48 CAL. L. REV. 383, 389 (1960). This obviously does not carry over well into the corporate context. Second, some have argued that famous celebrities need protection because their personalities are valuable social resources that face commons depletion.
165. See generally Mark F. Grady, A Positive Economic Theory of the Right of Publicity, 1 UCLA ENT. L. REV. 97 (1994) (arguing that the right of publicity is needed in order to ensure that publicity assets are not wasted through exploitation). As we saw earlier, Schechter's original proposal was based on a similar commons rationale. See supra text accompanying notes 148-50. The subsequent discussion demonstrates, however, that no social benefit comes from safeguarding the persuasiveness of marks beyond the protection already provided by infringement doctrine. Boylan's approach boils down to an argument that dilution constitutes "unjust enrichment" and therefore must be stopped. See Boylan, supra note 20, at 28. But this does not get us very far. Under Boylan's theory, dilution is unjust mainly because the mark owner has a Lockean property right. Without this natural rights premise - for which there is no support - Boylan's position basically collapses.
166. Some other theories offered by dilution supporters can be quickly dismissed. Bannon argues that without dilution junior users would obtain an unjustified "naked license." Bannon, supra note 10, at 109. This refers to the traditional view that marks cannot be licensed to other firms unless there is some assurance that the licensee will produce goods similar in quality to the mark owner. Id. at 79-80. Unfortunately, Bannon does not explain why ordinary infringement doctrine fails to address the "naked license" problem. Junior uses falling outside the reach of consumer confusion are so tenuously connected to the associations created by a mark that they cannot really be characterized as licenses at all. Another rationale for dilution is that it prevents "genericide." This doctrine describes the revocation of trademark rights once a mark becomes the commonly used term for a type of good rather than just a brand name. See Welkowitz, supra note 10, at 558-59; see, e.g., Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 116 (1938) (finding "Shredded Wheat" to be generic); Bayer Co. v. United Drug Co., 272 F. 505, 510-11 (S.D.N.Y. 1921) (finding "Aspirin" generic). By preventing the common use of a strong mark, dilution halts genericide in its tracks. There is, however, no particular reason to think that genericide ought to be prevented. If the phenomenon occurred frequently, then an argument could be made that the resulting disruption to trademark rights requires a remedy. Genericide, however, is a rare event. The doctrine revokes the rights of very few mark owners, but in so doing avoids giving protection to marks that have become synonymous with the product itself. See Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999) (discussing generic marks). This strikes a sensible balance between public and private rights, and hence using dilution to protect those few senior users who may lose their investments due to genericide would be inappropriate.
167. See, e.g., Klieger, supra note 9, at 864-65 (comparing inventors rights in patent, copyright, and trademark law).
168. See, e.g., Landes & Posner, supra note 45, at 287 (stating that trademarks are tied to distinct physical property).
169. Id.
170. Product designs may constitute an exception. See Ralph S. Brown, Design Protection: An Overview, 34 UCLA L. Rev. 1341, 1403 (1987) (arguing for short-term design protection). After all, a pleasing product design might well add value to certain products. In a few trade dress cases, courts have employed the language of dilution to expand protection for product designs. See, e.g., Esercizio v. Roberts, 944 F.2d 1235, 1245 (6th Cir. 1991); see also id. at 1250-51 (Kennedy, J., dissenting). Some commentators have argued that this is appropriate because design patents do not provide enough incentives for designers.
171. See Daniel J. Gifford, The Interplay of Product Definition, Design and Trade Dress, 75 MINN. L. REV. 769, 779-92 (1991). Others contend that the indirect protection of designs through trademark law is wrong and that the answer lies in a new design patent statute. See Gleiberman, supra note 55, at 2070-71. This debate repeats a theme that runs throughout this Article: namely, that dilution is best conceived as an obsolescence remedy. To the extent that dilution fixes obsolete design patent law, that role might be appropriate in an abstract sense. The practical interaction of dilution with design patents, however, basically renders the question moot. Product designs (as opposed to ordinary marks or labels) only run in a particular line of goods (i.e., the Cadillac tail fin does not get put on sofas). Trade dress claims involving designs are therefore likely to occur only between direct competitors, where infringement protection is at its zenith. Accordingly, dilution will almost never extend more protection to strong product designs than infringement already provides. See infra text accompanying notes 165-67.
172. Moreover, protecting mark persuasiveness may have significant anti-competitive effects by erecting barriers to entry in a variety of markets. For a detailed discussion, see Klieger, supra note 9, at 862-63.
173. U.S. CONST, art. I., § 8, cl. 8 (stating that Congress has the power "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries").
174. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 456 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999); I.P. Lund Trading ApS, Inc. v. Kohler Co., 163 F.3d 27, 50-51 (1st Cir. 1998); id. at 51 (Boudin, J., concurring).
175. This line of attack is somewhat unfair. When Schechter was writing, the range of non-confusing uses was much greater than it is today precisely because of the infringement obsolescence that he was trying to correct. As a result, it was much easier for Schechter to assume that non-confusing uses would dilute marks. Nevertheless, evaluating his dilution proposal requires us to look at the law in the here and now.
176. Welkowitz, supra note 10, at 538 (emphasis added).
177. The best analysis on this point is by Welkowitz. See id. at 539-44.
178. See id. at 540.
179. See, e.g., 3A RUDOLPH CALLMANN, THE LAW OF UNFAIR COMPETITION, TRADEMARKS AND MONOPOLIES § 21.12 (4th ed. 1983).
180. See Litman, supra note 11, at 1722; Schechter, supra note 1, at 826.
181. Litman, supra note 11, at 1722.
182. See, e.g., Klieger, supra note 9, at 861-62; Litman, supra note 11, at 1724 n.44.
183. See Klieger, supra note 9, at 830 ("If the aim of dilution law is to prevent the gradual whittling away of trademark value by enjoining junior uses of a mark that threaten to destroy the selling power of the mark only in the aggregate, then tarnishment should not qualify as dilution at all.").
184. See Bannon, supra note 10, at 111; Klieger, supra note 9, at 830-31; Welkowitz, supra note 10, at 587-88.
185. Beverly W. Pattishall, Dawning Acceptance of the Dilution Rationale for Trademark - Trade Identity Protection, 74 TRADEMARK REP. 289, 306-07 (1984) (footnotes omitted).
186. See, e.g., Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 455-56 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999).
187. 875 F.2d 1026, 1035 (2d Cir. 1989) (Sweet, J., concurring). Tarnishment law is not a model of clarity either, but this discussion will look at how courts have handled blurring actions since they reflect Schechter's original model.
188. See id. at 1035.
189. See Ringling Bros., 170 F.3d at 464; I.P. Lund Trading ApS, Inc. v. Kohler Co., 163 F.3d 27, 49-50 (1st Cir. 1998); Welkowitz, supra note 10, at 572-73.
190. See I.P. Lund, 163 F.3d at 49-50.
191. See Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 468-69 (7th Cir. 2000).
192. See Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 168 (3d Cir. 2000), cert. denied, 69 U.S.L.W. 3259 (Jan 8, 2001); Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 217-22 (2d Cir. 1999).
193. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 879 (9th Cir. 1999). There is probably no meaningful difference between the Second, Third, and Ninth Circuit approaches, but the Ninth Circuit's framework of analysis in dilution cases is still a little unclear.
194. See Westchester Media L.L.C. v. PRL USA Holdings, Inc., 214 F.3d 658, 670-71 (5th Cir. 2000); Ringling Bros., 170 F.3d at 463-65.
195. See Westchester, 214 F.3d at 670-71.
196. Eli Lilly, 233 F.3d 456, 468-69 (7th Cir. 2000); see Nabisco, 191 F.3d at 224.
197. The Fourth and Fifth Circuit's faith in consumer surveys seems misplaced. As Nabisco noted, consumer surveys are quite subject to manipulation and are therefore not highly reliable. See Nabisco, 191 F.3d at 224. But see Bible, supra note 9 (advocating the use of consumer surveys to prove dilution under the FTDA). As for the Second, Third, and Ninth Circuit frameworks, there is nothing wrong with applying the confusion factors in a blurring case since dilution follows from confusion. The problem is that dilution claims often do not involve consumer confusion, and then the confusion factors will not be helpful. For a closer examination of why the confusion factors may not speak to dilution, see Klieger, supra note 9, at 826-27; Welkowitz, supra note 10, at 573-74.
198. For more on how the FTDA ought to be interpreted, see infra Part V.D.3.
199. As the Roman Emperor Hadrian (117-138 A.D.) once commented, "Laws change more slowly than custom, and though dangerous when they fall behind the times [they] are more dangerous still when they presume to anticipate customs." MARGUERITE YOURCENAR, MEMOIRS OF HADRIAN 113 (Grace Frick trans. 1954).
200. See, e.g., Heydon's Case, 3 Co. Rep. 7a, 7b, 76 Eng. Rep. 637-38 (1584) (noting that "the office of all the Judges is always to make such construction as shall suppress the mischief, and advance the remedy").
201. See Ringling Bros.-Barnum & Bailey, Inc. v. Utah Div. of Travel Dev., 170 F.3d, 449, 454 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999); SCHECHTER, supra note 30, at 164-66.
202. See Schechter, supra note 1, at 813-14, 818, 824, 826.
203. See Boylan, supra note 20, at 25; Klieger, supra note 9, at 810; Litman, supra note 11, at 1724 n.41.
204. See GUIDO CALABRESI, A COMMON LAW FOR THE AGE OF STATUTES 75 (1982).
205. See generally James McCauley, Landis, Statutes and the Sources of Law, in HARV. LEGAL ESSAYS 213 (1934);
206. Roscoe Pound, Common Law and Legislation, 21 HARV. L. REV. 383 (1908);
207. Harlan F. Stone, The Common Law in the United States, 50 HARV. L. REV. 4 (1936).
208. CALABRESI, supra note 192, at 75; see GRANT GILMORE, THE AGES OF AMERICAN LAW 60-61 (1977).
209. For more on the obsolescence problem and a statutory solution, see CALABRESI, supra note 192, at 44-58; infra text accompanying notes 201-06. Schechter was sympathetic to the idea of getting administrative agencies heavily involved in trademark protection. In his treatise, he suggested that the regulation of marks could be removed from the common law entirely and placed under the auspices of the Federal Trade Commission. See SCHECHTER, supra note 30, at 164-65; Klieger, supra note 9, at 807.
210. It could be argued that legislatures passed dilution laws pursuant to Schechter's reasoning, and therefore statutes are being interpreted (or reinterpreted) by providing a new reading to Schechter's article. Although his argument certainly formed the backdrop of state dilution laws and the FTDA, little in the text or legislative history of these statutes refers directly to Schechter or to his ideas. Moreover, legislatures have not simply enacted Schecter's proposal jot-for-jot, hence we should not give his rationale the authority of a statutory enactment. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 456 (4th Cir.), cert. denied, 528 U.S. 923 (1999).
211. Once dilution is cast as an obsolescence remedy, however, many conceptual objections to dilution disappear. First, dilution no longer seeks to protect the persuasive power of marks, so that ground of criticism becomes moot. Second, there are no constitutional problems with using dilution primarily as a means of extending protection in the face of outdated consumer confusion test - assuming that such obsolescence actually exists. One could still argue that dilution is unnecessary because infringement law is currently providing adequate protection, but this attack is unavailing. For one thing, proponents of a limited version of dilution can concede that it is not needed now but maintain that it should be kept on the books in case infringement ever stumbles. More important, as Part VI shows, dilution has recently proven useful in safeguarding the location-identifying function of marks on the Internet. See infra Part VI.B.
212. See, e.g., CALABRESI, supra note 192; WILLIAM N. ESKRIDGE JR. & PHILLIP P. FRICKEY, LEGISLATION: STATUTES AND THE CREATION OF PUBLIC POLICY (1988);
213. Jack Davies, A Response to Statutory Obsolescence: The Nonprimacy of Statutes Act, 4 VT. L. REV. 203 (1979);
214. Henry J. Friendly, The Gap in Law Making - Judges Who Can't and Legislators Who Won't, 63 COLUM. L. REV. 787 (1963);
215. Donald C. Langevoort, Statutory Obsolescence and the Judicial Process: The Revisionist Role of Courts in Federal Banking Regulation, 85 MICH. L. REV. 672 (1987). In the intellectual property context, Bruce P. Keller has pointed out that a variety of archaic common law doctrines help fix obsolescence in copyright and trademark law. See Keller, supra note 34, at 403. For instance, he argues that the Supreme Court's creation of the oft-criticized tort of misappropriation in International News Service v. Associated Press, 248 U.S. 215 (1918), was largely the result of technology outpacing the development of federal copyright statutes. See Keller, supra note 34, at 406-07; see also Brown, supra note 16, at 1200 (criticizing misappropriation as based on a "gross fallacy"). Just as an aside, Keller notes that some of the early misappropriation cases would probably have fallen within the scope of dilution had it existed at the time. See Keller, supra note 34, at 412 n.52; see also Brown, supra note 16, at 1200 (comparing dilution and misappropriation).
216. As Grant Gilmore once quipped, we have witnessed an "orgy of statute making." See GILMORE, supra note 193, at 95. Some fifty percent of the Supreme Court's opinions each term concern statutory interpretation. See WILLIAM N. ESKRIDGE JR., DYNAMIC STATUTORY INTERPRETATION 335 n.3 (1994).
217. Some of the obstacles to legislative action include (1) legislative committees, (2) bicameralism, (3) filibusters, and (4) the executive veto.
218. Eskridge and Frickey identify four categories of statutory obsolescence: (1) quantity (specific figures that fall out of date), (2) policy (the fit between an old statute and more current law), (3) priority (the attention given to a particular issue as against others), and (4) remedy. ESKRIDGE & FRICKEY, supra note 197, at 844-45.
219. See, e.g., Daniel A. Farber, Statutory Interpretation and Legislative Supremacy, 78 GEO. L.J. 281, 283 (1989).
220. ESKRIDGE, supra note 198, at 112.
221. See Langevoort, supra note 197, at 729-30. Langevoort's argument is that advances in financial practices over the decades made the intent behind Depression-era banking statutes like the Glass-Steagall Act increasingly obsolete. See id. To limit the potential damage of these laws, courts construed them literally and thereby blunted their impact. See id. at 716-19, 729-30.
222. See CALABRESI, supra note 192, at 91-167.
223. See id. at 44-59.
224. For thoughtful essays questioning the entire project of resolving obsolescence through judicial action, see Robert Weisberg, The Calabresian Judicial Artist: Statutes and the New Legal Process, 35 STAN. L. REV. 213 (1983);
225. John Copeland Nagle, Newt Gingrich, Dynamic Statutory Interpreter, 143 U. PA. L. REV. 2209 (1995)
226. (reviewing WILLIAM N. ESKRIDGE JR., DYNAMIC STATUTORY INTERPRETATION (1994)).
227. See supra text accompanying notes 192-94 (describing the prevailing thought on common-law obsolescence).
228. See CALABRESI, supra note 192, at 73 ("Obsolete laws do not really exist, the devotees of the common law would say, when legal rules respond in a changing, accretional, and continuous way to the underlying principles of the people."). This is a debate that need not be resolved here. It is worth pointing out, however, that legislative inertia prevented Schechter's proposal from being enacted for more than twenty years. See infra text accompanying notes 246-48. Furthermore, by the time dilution laws were finally passed, the common law had made considerable progress in easing infringement's obsolescence. See infra text accompanying notes 246-48. As a result, Schechter's confidence in the legal-process superiority of legislatures may have been misplaced.
229. Edward L. Rubin, Law and Legislation in the Administrative State, 89 COLUM. L. REV. 369, 371-72 (1989).
230. Of course, applying dilution as a substantive rule of law creates all kinds of problems. See supra Parts II.C-D.
231. The Latin maxim "Quis custodiet custodiens?" (Who guards the guards?) captures the second issue.
232. The best way to understand how dilution works is to think of a dog race. To get the dogs to run faster, the track releases a mechanical rabbit from the starting gate so that they will have something to chase. The rabbit goes much faster than any dog could possibly run, but this is precisely what makes it a good lure. Dilution, like the dog-track rabbit, sets a bar of trademark protection that is much higher than society would actually want. Yet this is what allows dilution to exert a gravitational pull that can lift infringement out of its obsolescence when necessary.
233. If dilution was primarily a substantive rule, on the other hand, then dilution should basically display a linear relationship that is unconnected to infringement. One could argue that dilution might initially be interpreted narrowly as befits a new remedy, and then gradually expand as it gained acceptance. This pattern is markedly different from the cyclical pattern that would be produced by an obsolescence reading.
234. See infra Parts IV-V.
235. See White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1513 (9th Cir. 1993) (Kozinski, J., dissenting from the denial of rehearing en banc) ("Overprotecting intellectual property is as harmful as underprotecting it. Creativity is impossible without a rich public domain. . . . Culture, like science and technology, grows by accretion, each new creator building on the works of those who came before. Overprotection stifles the very creative forces it's supposed to nurture.").
236. In the context of the judicial or interpretive solutions to statutory obsolescence canvassed earlier, the overshooting phenomenon tends to get wrapped up in a discussion about legitimacy. Rather than focusing on whether courts charged with eradicating obsolescence will go too far and anticipate legal developments, opponents of judicial obsolescence remedies usually challenge the constitutional and democratic validity of judicial value judgments that would override prior legislative decisions.
237. Although there are many circumstances in which courts construe statutes narrowly for policy reasons, that decision is ordinarily premised on the notion that the statute was drafted poorly and therefore needs to be constrained. In the case of dilution, however, there is no error in the statutory language. We want dilution laws to be broad, but we also want them interpreted narrowly on certain occasions. Perhaps the closest analogy is the criminal law. Penal statutes are ordinarily written in sweeping terms in order to give prosecutors the authority they need to obtain guilty pleas and flip witnesses for information about other crimes. Applying these kinds of laws literally, however, would probably overdeter marginal activity. To prevent this result, the criminal justice system has developed many methods, including prosecutorial discretion, jury discretion, extensive procedural protections, and the rule of lenity to control the application of broad criminal statutes. In the dilution context, however, the burden of preventing overshooting rests entirely on interpreting courts.
238. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).
239. See, e.g., Stork Restaurant, Inc. v. Sahati, 166 F.2d 348 (9th Cir. 1948); Philadelphia Storage Battery Co. v. Mindlin, 296 N.Y.S. 176, 179 (N.Y. Sup. Ct. 1937); Tiffany & Co. v. Tiffany Prods., Inc., 264 N.Y.S. 459, 462 (N.Y. Sup. Ct. 1932), aff'd, 260 N.Y.S. 821 (N.Y.A.D. 1 Dept. 1932), aff'd, 188 N.E. 30 (N.Y. 1933); Callmann, supra note 20; Klieger, supra note 9, at 814; Beverly Pattishall, The Case for Anti-Dilution Trade-mark Statutes, 43 TRADE-MARK REP. 887 (1953). Brown contended that in these early years dilution "made little headway." See Brown, supra note 16, at 1195 & n.124. He correctly observed that dilution was not cited in a large number of cases and that there was an element of confusion in each case where dilution was mentioned. Nevertheless, Schechter's idea was almost always cited favorably when it was discussed, and its use was relatively frequent when one considers that it had not been enacted anywhere during that time. See infra text accompanying notes 246-48. As for the existence of confusion in these early cases, that coheres quite well with an argument that courts used dilution as a tool to extend trademark protection in marginal situations. If no evidence of confusion was present, then, under an obsolescence reading of dilution, using dilution to grant mark owners protection would have been inappropriate. After all, even an updated infringement regime would not have granted relief in such a case.
240. 264 N.Y.S. at 462.
241. See id. at 460; Klieger, supra note 9, at 815; Welkowitz, supra note 10, at 534.
242. See Tiffany & Co., 264 N.Y.S. at 462; Klieger, supra note 9, at 815; Welkowitz, supra note 10, at 534; see also Note, supra note 10, at 525 ("As the likelihood of confusion in any particular case becomes attenuated, the operative role of dilution in prompting relief increases, however orthodox the language in which the decision is announced.").
243. Tiffany & Co., 264 N.Y.S. at 462-63.
244. 69 F. Supp. 543 (D. Mass. 1947).
245. Id. at 544-45.
246. Id. at 545.
247. See id.
248. Id. at 547.
249. Id. The Court's concern about the low quality of the junior user's product was a leading indicator of the role quality would play in the development of dilution law. See infra Part V.B.
250. 26 F.2d 972 (2d Cir. 1928) (L. Hand, J.).
251. See id. at 974. Hand based his decision on the "Aunt Jemima" doctrine, which held that very closely related products could support a finding of likely consumer confusion. See Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 410 (2d Cir. 1917) (finding likely consumer confusion between Aunt Jemima pancakes and syrup). The Yale opinion, however, gave an expansive reading to Aunt Jemima that would then be limited for a time by the Second Circuit. This portion of the analysis focuses on Second Circuit cases. During the relevant time period, Learned Hand's court was the unquestioned leader in trademark law.
252. Yale Elec. Corp., 26 F.2d at 974. Even at this early stage, Hand understood that tarnishment could constitute an injury to the quality-representing function of marks. See id.; infra Part V.
253. 72 F.2d 272 (2d Cir. 1934) (L. Hand, J.).
254. Id. at 273.
255. See id.
256. See S.C. Johnson & Son, Inc. v. Johnson, 116 F.2d 427 (2d Cir. 1940) (L. Hand, C.J.) (Johnson I), on motion to modify injunction, 175 F.2d 176 (2d Cir. 1949) (L. Hand, C.J.) (Johnson II); 4 MCCARTHY, supra note 10, § 24:55.
257. 116 F.2d 427 (2d Cir. 1940) (L. Hand, C.J.).
258. See Johnson I, 116 F.2d at 428-29. In the second appeal of the case, the plaintiff moved to modify the decree due, inter alia, to the intervening passage of the Lanham Act. See Johnson II, 175 F.2d at 177. The plaintiff argued that the Lanham Act enhanced the substantive rights of mark owners. See id. at 178. Hand wrote for the majority and rejected the plaintiffs motion. In keeping with his new, conservative view of trademark protection, Hand declared that the Lanham Act only codified the existing common law of infringement. See id. at 179. Judge Clark condemned this effort to cut the statute down "to a size consistent with the court's conceptions of public policy." See id. at 180 (Clark, J., dissenting).
259. See Johnson I, 116 F.2d at 430.
260. See, e.g., Fed. Tel. & Radio Corp. v. Fed. Television Corp., 180 F.2d 250, 252 (2d Cir. 1950) (L. Hand, C.J.). It is unclear what led to Hand's change of heart, but there was a significant trend towards anti-monopoly thinking in intellectual property law during the 1930s and 1940s. See, e.g., Standard Brands, Inc. v. Smidler, 151 F.2d 34, 41-42 (2d Cir. 1945) (Frank, J., concurring).
261. See Johnson I, 116 F.2d at 429.
262. The failure to address this part of the trademark story leads Klieger's dilution analysis a little bit astray. In essence, Klieger contends that the consumer confusion test had expanded adequately by the 1940s to render dilution unnecessary. By anticipating the eventual expansion of infringement law, Klieger fails to see that the link between dilution and infringement that he brilliantly identified in Schechter's original proposal continued afterwards. In particular, Klieger does not recognize how infringement's expansion explains the development of dilution by tarnishment. See infra Part V.
263. See Pattishall, supra note 219, at 892-93.
264. See Brown, supra note 16, at 1195-98. This relaxed baseline eventually became the standard. Cf. Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183, 1190 (E.D.N.Y. 1972) (defining the ordinary purchaser as including the ignorant purchaser).
265. In this sense, Schechter's dilution proposal was not quite as radical as its detractors claim. An expansion of the consumer confusion test only looks less problematic because it was a change in degree instead of a change in kind. But a sweeping change in degree - like the one proposed by Brown - can be just as radical as developing a new framework of analysis like Schechter did.
266. See, e.g., Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 454 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999).
267. See supra Part III.B.
268. See Act of May 2, 1947, ch. 307, § 7a, 1947 Mass. Acts 300 (codified as amended at MASS. GEN. LAWS ANN. ch. 110B, § 12 (West 1999)); Klieger, supra note 9, at 812. The Illinois and Massachusetts dilution laws may well have been specifically intended to fix infringement obsolescence. See Klieger, supra note 9, at 812 n.126.
269. See Schechter, supra note 1, at 823.
270. This step still went too far for Judge Frank. He argued that in non-competing goods cases a mark owner "should always be required to prove that defendant's product is so substandard that, if that product be associated by consumers with plaintiff, impairment of plaintiffs good-will is a likely result." Triangle Publ'ns, Inc. v. Rohrlich, 167 F.2d 969, 981 (2d Cir. 1948) (Frank, J., dissenting).
271. See supra text accompanying note 130.
272. See Brown, supra note 16, at 1186.
273. See Hughes, supra note 31, at 998 (arguing that the likelihood of consumer confusion increases when the products are the same quality).
274. Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir. 1993) (emphasis added).
275. See infra Part V.
276. Assume for purposes of this hypothetical that Tiffany does not sell oriental rugs and thus that there is no direct competition.
277. Of course, the consumer may not discover the fraud until he or she has already purchased the low-quality rug. After that, however, the difference between the false Tiffany and genuine items will be more obvious.
278. Hughes, supra note 31, at 998.
279. See, e.g., Triumph Hosiery Mills, Inc. v. Triumph Int'l Corp., 308 F.2d 196, 199 (2d Cir. 1962); see also infra text accompanying notes 296-98.
280. See supra text accompanying notes 50-52 (discussing factors relevant to likelihood of confusion).
281. See infra Part V.B.
282. 4 MCCARTHY, supra note 10, § 24:56 (footnotes omitted).
283. See Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 204 F.2d 223, 226 (2d Cir. 1953) (Clark, J., dissenting); 4 MCCARTHY, supra note 10, § 24:56 (footnotes omitted). At that time, the Second Circuit frowned on hearing cases en banc, which would have been an obvious way to heal the court's split.
284. 167 F.2d 969 (2d Cir. 1948) (A. Hand, J.), overruled on other grounds by Monsanto Chem. Co. v. Perfect Fit Prod. Mfg. Co., 349 F.2d 389 (2d Cir. 1965).
285. See id. at 970.
286. See id. at 972.
287. Id.
288. Id. at 974 (Frank, J., dissenting).
289. See id. at 975.
290. Indeed, Frank's view was far more restrictive. See supra note 250.
291. See Triangle, 167 F.2d at 981.
292. See id.
293. 204 F.2d 223 (2d Cir. 1953) (Swan, J.).
294. See id. at 224.
295. See id. at 224-26.
296. Id. at 226 (Clark, J., dissenting).
297. See id. at 229.
298. See id.
299. See id.
300. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (Friendly, J.).
301. See 4 MCCARTHY, supra note 10, § 24:57.
302. See Hyde Park, 204 F.2d at 229 (Clark, J., dissenting).
303. See Klieger, supra note 9, at 815-16. The Seventh Circuit's favorable treatment of the Illinois anti-dilution statute appears to be an exception to this trend. See Polaroid Corp. v. Polaraid, Inc., 319 F.2d 830 (7th Cir. 1963). This case involved Polaroid's infringement and dilution suit against a refrigerator maker. See id. at 832. A panel majority (over a strong dissent) held that the plaintiff was entitled to relief under infringement and dilution (blurring) theory. See id. at 836-37; id. at 837 (Schnackenberg, J., dissenting). Upon closer examination, however, the case actually supports an obsolescence reading of dilution. The district court in this Polaroid case ruled against the plaintiff because there was no evidence of actual confusion and because the parties were not in direct competition. See id. at 835. To remedy this cramped view of trademark protection, the panel majority used dilution to buttress their infringement arguments much like courts did in the years following the publication of Schechter's article. See generally White v. Samsung Elecs America, Inc., 989 F.2d 1512 (9th Cir. 1993). Interestingly, Polaroid used dilution in this way even though the Illinois statute had never been interpreted by a state court. See Polaraid, 319 F.2d at 836.
304. 243 F.2d 540 (1st Cir. 1957).
305. See Act of May 2,1947, ch. 307, § 7a, 1947 Mass. Acts 300 (codified as amended at MASS. GEN. LAWS. ANN. ch. 110B, § 12 (West 1996)); Esquire, 243 F.2d at 544.
306. See Esquire, 243 F.2d at 542-43; Klieger, supra note 9, at 818-19 & n.157; Note, supra note 10, at 526.
307. See Note, supra note 10, at 527.
308. See Cue Publ'g Co., Inc. v. Colgate-Palmolive Co., 256 N.Y.S.2d 239, 246 (N.Y. Sup. Ct. 1965) (collecting authorities).
309. See Pattishall, supra note 21, at 624.
310. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999).
311. See Langevoort, supra note 197, at 715.
312. This approach could be construed as a kind of "dynamic statutory interpretation." See ESKRIDGE, supra note 201, at 112. That theory, however, contemplates giving statutes broad readings to alleviate obsolescence, not narrow readings to avoid overshooting.
313. 308 F.2d 196 (2d Cir. 1962).
314. Id at 198.
315. S.C. Johnson & Son, Inc. v. Johnson, 175 F.2d 176, 179-80 (2d Cir. 1949) (L. Hand, C.J.) (emphasis added).
316. See Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir. 1993). Indeed, many circuits have adopted the basic Polaroid framework while declining to include product quality as a factor in their analysis. See, e.g., Keds Corp. v. Renee Int'l Trad. Corp., 888 F.2d 215, 222 (1st Cir. 1989); Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979).
317. Nikon, 987 F.2d at 95.
318. See Part IV.B (analyzing the use of quality as a part of infringement analysis).
319. 306 F.2d 433 (5th Cir. 1962).
320. Id. at 434. Since the defendant's product was both an insecticide and a floor cleaner, presumably the defendant did not tell consumers that their kitchen floors would be made so clean that they could eat off them.
321. Id. at 437 (emphasis added).
322. See also Tiffany & Co. v. Boston Club, Inc., 231 F. Supp. 836, 843 (D. Mass. 1964) (holding that consumer confusion and reputational injury were caused by a restaurant's use of "Tiffany," since the restaurant served cheap meals and placed newspaper advertisements on the same page as ads for "Any Man's Woman," "Not Tonight, Henry," "The Horror Chamber of Dr. Faustus," "Illicit Love," "The Stripper," and "Bozo the Clown").
323. See Note, supra note 10.
324. Id. at 521.
325. See supra Part IV.D (discussing the period of dilution's retreat in case law).
326. Note, supra note 10, at 522.
327. Id. at 531 (emphasis added).
328. Of course, the idea of tarnishment was hinted at in the Yale opinion, but that statement was not given any explanation. See supra text accompanying note 232. At about the same time that the Harvard Note was published, a district court in Massachusetts independently replicated the Note's analysis and placed tarnishment under the rubric of dilution. See Tiffany & Co. v. Boston Club, Inc., 231 F. Supp. 836, 843 (D. Mass. 1964).
329. See Part II.D.1.
330. The fluid state of trademark law at this time is demonstrated by Cue Publishing Co. v. Colgate-Palmolive Co., 256 N.Y.S.2d 239 (N.Y. Sup. Ct. 1965). Plaintiff "Cue" magazine brought infringement and dilution claims in state court against the manufacturer of "Cue" toothpaste. See id. at 240. The court rejected the plaintiffs suit. See id. at 247. In analyzing the case, the court treated infringement, tarnishment, and dilution as separate heads of trademark protection, with dilution referring only to Schechter's proposal. See id. at 243. The point is that tarnishment could easily have developed as a third component of trademark protection alongside infringement and dilution rather than as part of dilution itself. The Harvard Note, however, proved more influential than the Cue decision.
331. See, e.g., Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 n.7 (2d Cir. 1994) (citing Gemini and Busch as tarnishment cases).
332. See supra text accompanying notes 219-29 (highlighting court cases seeking an expansion of trademark protection in non-competing goods cases).
333. 346 F. Supp. 1183 (E.D.N.Y. 1972).
334. See id. at 1187.
335. Id. at 1188.
336. Id. at 1189.
337. Id. at 1190.
338. 604 F.2d 200 (2d Cir. 1979).
339. Id. at 204.
340. Id. at 205.
341. Id.
342. Id. (quoting Gemini, 346 F. Supp. at 1189).
343. Id.
344. Pillsbury Co. v. Milky Way Prods., 215 U.S.P.Q. 124, 135 (N.D. Ga. 1981).
345. Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 1038-39 (N.D. Ga. 1986).
346. Eastman Kodak Co. v. D.B. Rakow, 739 F. Supp. 116 118 (W.D.N.Y. 1989).
347. Cmty. Fed. Sav. & Loan Ass'n v. Orondorff, 678 F.2d 1034 (11th Cir. 1982).
348. Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838, 839, 40 (S.D.N.Y. 1977).
349. During this period of dormancy dilution statutes were enacted in additional states to extend additional protection to mark owners. See Howard J. Shire, Dilution Versus Deception - Are State Antidilution Law an Appropriate Alternative to the Law of Infringement?, 77 TRADEMARK REP. 273, 285 (1987) ("[T]he dilution statutes had very little impact on trademark law for approximately the first 30 years of their existence."). Nevertheless, these laws were quickly eviscerated by the courts in those states.
350. 369 N.E.2d 1162 (1977).
351. See id. at 1165.
352. See id. at 1163.
353. See id at 1165.
354. See, e.g., Wedgwood Homes, Inc. v. Lund, 659 P.2d 377, 382-83 (Or. 1983) (finding the local trademark Wedgwood Homes blurred by Wedgwood apartments and retirement communities).
355. 319 F. Supp. 358 (C.D. Cal. 1970).
356. Id. at 360.
357. Id. The phrase was meant to describe the confusing claims of competing pain relievers. Id.
358. Id. at 360, 363.
359. Id. at 363.
360. 41 F.3d 39 (2d Cir. 1994).
361. See id. at 41.
362. See id.
363. Id. at 45. Deere declined to characterize its holding as either blurring or tarnishment. See id. at 44. Subsequently, Deere has been read as a broad tarnishment case. See Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 507 (2d Cir. 1996).
364. Pushing the Deere logic a little further, presumably competition between two businesses that results in the bankruptcy of one would be an actionable tort. After all, the bankrupt firm has suffered damages that can be traced to a specific cause-in-fact (i.e., the competitor). The absurdity of this result applies just as well to decisions that turn comparative advertising into a trademark violation.
365. WALTER BAGEHOT, THE ENGLISH CONSTITUTION 53 (Oxford University Press 1963) (1867);
366. see also HENRY SUMNER MAINE, ANCIENT LAW 24-30 (Oxford University Press 1931) (1861) (describing legal fictions).
367. Of course, there is a separate question of whether more dilution statutes ought to be enacted once their dependent role in trademark protection is clear. Right now, the discussion is focused on how an obsolescence reading of dilution influences its application by courts.
368. See generally Cass R. Sunstein, The Supreme Court, 1995 Term - Foreword: Leaving Things Undecided, 110 HARV. L. REV. 4 (1996).
369. Other cases that have relied on blurring, but are not clear examples of overshooting are more properly understood as likelihood of confusion cases. See Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 219 (2d Cir. 1999); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Celozzi-Ettelson Chevrolet, Inc., 855 F.2d 480, 484 (7th Cir. 1988); Hyatt Corp. v. Hyatt Legal Servs., 736 F.2d 1153, 1156-58 (7th Cir. 1984); Instrumentalist Co. v. Marine Corps League, 509 F. Supp. 323, 330-33 (N.D. Ill. 1981).
370. One idea embedded in the Gemini case probably deserves more attention. Gemini suggested that tarnishment was more likely if there were many different substitutes for the senior user's product. See supra text accompanying note 317. Presumably, this is because even the slightest injury to such a company's mark (e.g., Coca-Cola) could cause significant shifts in consumer behavior. This should be contrasted with companies that have a more exclusive and secure market niche, and whose marks must be harmed quite seriously before customer preferences are altered. Whether this contextual factor proves helpful in tarnishment litigation, however, remains to be seen.
371. See supra Part II.D.2.
372. See supra Part II.D.2.
373. See supra Part II.D.2.
374. See supra Part II.D.2.
375. See supra Part II.D.2.
376. Since dilution serves primarily as an infringement supplement, it follows that a dilution analysis should incorporate all of the elements of the likelihood of confusion test. See supra text accompanying notes 51-52. Not all of these factors may be relevant in a transitional context, but that will depend on the circumstances of each transition.
377. See cases cited in supra notes 182-83 and accompanying text.
378. For more on intellectual property and the Internet, see generally Dan L. Burk, Trademark Doctrines for Global Electronic Commerce, 49 S.C. L. REV. 695 (1998);
379. Katherine E. Gasparek, Comment, Applying the Fair Use Defense in Traditional Trademark Infringement and Dilution Cases to Internet Meta Tagging or Linking Cases, 7 GEO. MASON L. REV. 787 (1999);
380. Jeffrey R. Kuester & Peter A. Nieves, Hyperlinks, Frames and Meta-Tags: An Intellectual Property Analysis, 38 IDEA 243 (1998);
381. Maureen A. O'Rourke, Fencing Cyberspace: Drawing Borders in a Virtual World, 82 MINN. L. REV. 609 (1998).
382. See supra text accompanying notes 111-13.
383. E-commerce reverses this trend to some degree, since websites make it much easier for consumers to buy goods directly from manufacturers.
384. Of course, people using other means to find where a store is located (i.e., the Yellow Pages or ads) do rely on marks to match up the relevant information with a particular company. But marks in an ordinary advertisement are identifying a source or a product, not quality or location. The fact that quality or location information (or anything else) can be put into the ad does not mean that the marks themselves are conveying that information.
385. People might correctly assume that, for instance, a McDonald's will not be located next to the local landfill or chemical plant, but this does not help identify the specific location of a franchise.
386. In this scenario, doctrines designed to protect the source and quality functions may extend sufficient protection, but that presumption is problematic in the Internet context.
387. Just as in the prior example, trademark doctrine founded on protecting source and quality information might cover the problem. In addition, as a practical matter it is unlikely that anyone would include specific location information in their mark unless their store was already at that location. The
388. For a more technical explanation of how the Internet (or Web) works, see, e.g., Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1044-45 (9th Cir. 1999).
389. Such a directory will probably be created someday. See infra Part VI.C. For now, the explosive growth of the Web seems to be outstripping the ability to catalogue websites.
390. The suffix ".com" is only one of many that can currently be used in a domain name. Others currently include ".edu" (educational), ".org" (organization), ".gov" (government), ".net" (network provider), and ".mil" (military). See Brookfield Communications, Inc., 174 F.3d at 1044.
391. E.g., Sporty's Farm L.L.C. v. Sportsman's Mkt. Inc., 202 F.3d 489, 497-98 (2d Cir. 2000), cert. denied, 120 S. Ct. 2719 (2000); Interstellar Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1110 (9th Cir. 1999); Brookfield Communications, Inc., 174 F.3d at 1055 (collecting authorities).
392. For more on how search engines work, see Brookfield Communications, Inc., 174 F.3d at 1045; Nathenson, supra note 25, at 60-65.
393. Teletech Customer Care Mgmt, Inc. v. Tele-Tech Co., 977 F. Supp. 1407, 1410 (C.D. Cal. 1997).
394. See Brook field Communications, Inc., 174 F.3d at 1045; Nathenson, supra note 25, at 62-65.
395. Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998).
396. This is an illustration of the importance of "architecture" in shaping the regulation of Cyberspace. See LAWRENCE LESSIG, CODE AND OTHER LAWS OF CYBERSPACE 30-42 (1999).
397. "Brick and mortar" refers to traditional stores that occupy physical space. In a certain sense, there is analogy between the greater scope the Internet has given to the mark's location role and the wider range mass marketing gave to the mark's quality function during the early part of this century. See supra text accompanying note 127.
398. See, e.g., Panavision Int'l, 141 F.3d at 1325. Some have argued that this expectation is misguided and should hence be treated as "user carelessness." Jon H. Oram, Note, The Costs of Confusion in Cyberspace, 107 YALE L.J. 869, 873 (1997).
399. This would not change much if people understood that company domain names might well show up at "trademark.org" or "trademark.net" instead of "trademark.com." Naturally, this would weaken consumers' assumptions about finding things at "trademark.com," but people would still be inclined to think that a company's mark was an integral part of its domain name.
400. This is different from the situation with phone numbers. A phone directory does rely on marks to match up the relevant number with a particular company. Phone directories or operators, however, are quite precise and can almost always match a search to a specific number. Search engines are not yet this accurate. In response to a search request, the best they can do is generate a large list of probable websites, which leaves the consumer in the position of figuring out which one is the page he or she needs. For more on the relationship between phone numbers and domain names, see infra Part VI.C.
401. One objection is that marks cannot be important both for search engines and for a "trademark.com" search. According to this view, users who fail to find the website they are looking for at "trademark.com" will not use the mark as a term in a search engine inquiry. Thus, at least for those Internet users who conduct "trademark.com" searches before turning to search engines, the location function is of limited importance for effective search engines. There is some truth to this observation, but as more domain name suffixes are developed for commercial use (e.g., ".aero," ".biz," ".coop," ".info," ".museum," ".name," and ".pro") over the next few years, the "trademark.com" method of searching will become very unreliable. See Ariana Eunjung Cha, New Web Domains Provoke .deja vu: Suffix Expansion Starts Address Grab, WASH. POST, Nov. 18, 2000, at E1. Under those circumstances, search engine inquiries will become even more important because there will be no other effective method for finding websites except by plugging in some variant of the company's mark into a search engine.
402. The most critical variable is almost certainly consumer expectations. If people did not instinctively link marks and domain names, then the importance of the mark's location function would shrink considerably. After all, in brick-and-mortar space people do not normally make that association. On the other hand, expectations do not develop out of thin air. People commonly refer to the new Internet economy as the "dot.coms" because most companies are, in fact, located at a "trademark.com" address. Figuring out which came first - the consumer expectation or the facts upon which the expectation is based - is a headache best left to someone else.
403. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 872 (9th Cir. 1999). In 1999, a new competitive scheme of domain name allocation was implemented. Id. at 872 n.1.
404. See Brookfield Communications, Inc. v. West Coast Entm't Corp 174 F.3d 1036, 1044 (9th Cir. 1999) (stating that NSI did not check whether its registrants have any right to use a particular domain name).
405. One could say that the resulting delays in finding the correct web page are not significant enough to warrant special protection. In this early stage of the Internet's development, however, the costs of such delays may be high.
406. Many have argued that cybersquatting is not a problem at all. If a junior user registers a "trademark.com" before the mark owner does, then perhaps that junior user should reap the rewards. A mark owner could, as many have, just buy the domain name from the cybersquatter and make everyone better off. Establishing a first-in-time rule for domain names could encourage the development of Cyberspace by minimizing litigation and forcing mark owners to claim their space on the Internet sooner rather than later. While this argument is intriguing, there are two obstacles. First, the law has unequivocally rejected this view, as this Part explains, second, when the bargaining for a domain name involves only two parties - the senior user and the cybersquatter - the resulting "bilateral monopoly" generates high transaction costs. See RICHARD A. POSNER, ECONOMIC ANALYSIS OF LAW 61-62 (4th ed. 1992). This may make it difficult for effective contractual solutions to develop.
407. See 15 U.S.C. §§ 1114(1)(a), 1125(a)(1) (1994); Duffey, supra note 15, at 147. Of course, if a junior user acquired a senior user's "trademark.com" and started selling goods there, courts could easily use traditional source and quality confusion to enjoin the junior use. See Brookfield Communications, Inc., 174 F.3d at 1054-61.
408. See, e.g., Panavision Int'l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998); Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998); Teletech Customer Care Management, Inc. v. Tele-Tech Co., 977 F. Supp. 1407 (C.D. Cal. 1997); Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227 (N.B. Ill. 1996); Duffey, supra note 15, at 148-49.
409. 141 CONG. REC. S19312-01, S19312 (daily ed. Dec. 29, 1995) (statement of Sen. Leahy). Admittedly, Leahy was the only Senator who expressed any interest in how dilution would regulate Cyberspace.
410. There are some difficulties in using dilution for cybersquatting. First, the FTDA requires that the junior use be "commercial" to receive protection. If cybersquatters did not sell any goods, then how could their actions be commercial? Courts answered this question by ruling that cybersquatters were engaged in commercial activity by seeking to sell the name itself back to the senior user. See, e.g., Panavision, 141 F.3d at 1325. But see Golinveaux, supra note 26, at 641 (stating that courts have misapplied the "commercial use" requirement to get at cybersquatters). Second, the FTDA only protects famous marks. What if someone cybersquatted on a non-famous mark? In practice, the answer is that all marks attacked by cybersquatters were found to be "famous," whether they were really famous or not. See supra note 97.
411. Panavision, 141 F.3d at 1327. Courts have generally treated cybersquatting as a separate category of dilution distinct from blurring and tarnishment. See id. at 1326.
412. See Anticybersquatting Consumer Protection Act of 1999, Pub L. No. 106-113, 113 Stat. 1501; Sport's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000). Some British courts have extended infringement protection in cybersquatting cases. See British Telecomms. P.L.C. v. One in a Million, Ltd. (Ch. 1997); Golinveaux, supra note 26, at 670.
413. Pub L. No. 106-113, § 3002(d)(1)(A)(i)-(ii), 113 Stat. 1501, 1501A.545-46 (1999) (emphasis added). In addition to the ACPA, an elaborate international arbitration system has now been set up to resolve domain name disputes using similar principles.
414. See supra text accompanying notes 168-70 (noting the claim by critics that dilution is superfluous). Of course, the ACPA uses a "confusingly similar" standard rather than "likelihood of confusion." See Sporty's Farm, 202 F.3d at 497 n.11. Under a "confusingly similar" test, courts usually compare only the marks themselves and ignore the contextual Polaroid factors. See Wella Corp. v. Wella Graphics, Inc., 37 F.3d 46, 48 (2d Cir. 1994). This does not mean, however, that contextual factors are irrelevant under the ACPA. See Sporty's Farm, 202 F.3d at 498 n.12, 499 (setting forth some contextual elements that are useful in evaluating the bad faith element in the statute). Instead, the ACPA simply recognizes that the Polaroid framework may not work well against the threat posed to the location-function by cybersquatting.
415. See Nathenson, supra note 25, at 60-65.
416. Dr. Seuss Enters, v. Penguin Books, USA, Inc., 109 F.3d 1394, 1405 (2d Cir. 1997); see Grotrian, Helffrich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975). Initial interest confusion has been described as "a brand of confusion particularly applicable to the Internet." Playboy Enters., Inc. v. Netscape Communications Corp., 55 F. Supp.2d 1070, 1074 (C.D. Cal 1999).
417. See, e.g., Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206-08 (1st Cir. 1983) (arguing that only confusion that influences "the ultimate decision of a purchaser whether to buy a particular product" can support infringement actions); Teletech Customer Care Mgmt., Inc. v. TeleTech Co., 977 F. Supp. 1407, 1414 (C.D. Cal. 1997) (concluding that initial interest confusion is not cognizable under the Lanham Act); see also Munsingswear Inc. v. Jockey Int'l Inc., 31 U.S.P.Q.2d (BNA) 1146, 1149 & n.6 (D. Minn.), aff'd, 39 F.3d 1184 (8th Cir. 1994) (noting the split in authority on initial interest confusion). This Article takes no position on the validity of initial interest confusion in brick-and-mortar commerce.
418. See Nathenson, supra note 25, at 114-16; Maureen O'Rourke, Defining the Limits of Free-Riding in Cyberspace: Trademark Liability for MetaTagging, 33 GONZ. L. REV. 277, 298-300 (1997-1998).
419. Nathenson, supra note 25, at 115 (internal quotation marks and footnote omitted). He goes on to say that dilution provides the best framework for evaluating metatag claims. See id. at 118-24.
420. See supra Part IV.C.
421. See Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1062-65 (9th Cir. 1999). One might wonder why this court was able to move directly to adapt the confusion test rather than relying on dilution to manage the transition. The answer lies in the fact that the parties in Brookfield were virtually direct competitors. See id. at 1056 ("Not only are they not non-competitors, the competitive proximity of their products is actually quite high."). This made it easier for the court to view the case in traditional "confusion" terms. Metatag cases involving non-competitors may, however, still need dilution to support an extension of protection.
422. See id. at 1041-43.
423. See id. at 1066.
424. Brookfield Communications, Inc., 174 F.3d at 1064 (emphasis added).
425. See, e.g., Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675 (2d Cir. 1989) (granting protection to 1-800-MATRESS).