Trademark use and the problem of source

University of Illinois Law Review

Volumn 2009, Issue 3, 2009, Pages 773-828

  McKenna, Mark P ^a  

^a NOTRE DAME LAW SCHOOL   (United States)

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EID: 68949179821     PISSN: 02769948     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (388)

1. See Stacey L. Dogan & Mark A. Lemley, Grounding Trademark Law Through Trademark Use, 92 IOWA L. REV. 1669, 1674 (2007) (arguing that "the trademark use doctrine, properly applied, serves as a limited tool for identifying classes of behavior that cannot constitute infringement");
2. see also Margreth Barrett, Internet Trademark Suits and the Demise of "Trademark Use," 39 U.C. DAVIS L. REV. 371, 395-96 (2006) ("In the course of evaluating infringement and dilution claims in this new and unique setting [on the Internet], courts have too often lost sight of the important limiting function the trademark use requirement should play.");
3. Eric Goldman, Deregulating Relevancy in Internet Trademark Law, 54 EMORY L.J. 507, 593-94 (2005) (finding a trademark use requirement in the Lanham Act and arguing for rigorous application of the doctrine to immunize search providers from liability);
4. Uli Widmaier, Use, Liability, and the Structure of Trademark Law, 33 HOFSTRA L. REV. 603, 708 (2004) (arguing that "the misinterpretation of the trademark use requirement-or more accurately, the flat-out disregard of that requirement-has given rise to a veritable cottage industry among the courts, an entire line of cases that are wrongly decided, that impose trademark infringement liability where none exists").
5. Barrett, supra note 1, at 395-96;
6. Dogan & Lemley, supra note 1, at 1670-72.
7. This is not purely an academic argument; defendants increasingly are making trademark use arguments to courts. Google articulated this position in its brief to the Second Circuit in Rescuecom Corp. v. Google, Inc., arguing that bootstrapping a finding of use by alleging other elements of a trademark claim, such as likelihood of confusion, puts the cart before the horse. Just as a plaintiff in a negligence case cannot claim that the allegation that she fell and broke her arm shows that the defendant breached the applicable duty of care, Rescuecom cannot claim that the allegation of a likelihood of confusion shows that Google engaged in trademark use.
8. Brief for Defendant-Appellee at 12-13, Rescuecom Corp. v. Google, Inc., No. 06-4881-cv (2d Cir. Feb. 12, 2007), available at http://claranet.scu. edu/eres/coursepage.aspx?cid=1754&page=docs# [hereinafter Google Brief] (follow "Google's Appellee Brief in Rescuecom v. Google" hyperlink).
9. Dogan & Lemley, supra note 1, at 1695-96.
10. Consumer expectations largely define trademark rights, yet those expectations are influenced by consumers' understanding (or misunderstanding) of the law. See, e.g., Dogan & Lemley, supra note 1, at 1696 (arguing that, because litigation is costly and uncertain, many people who have the right to make a particular use will not, which "in turn may actually affect consumer perceptions of whether such uses are permissible at all");
11. James Gibson, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 YALE L.J. 882, 907 (2007);
12. Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839, 1916 (2007) (arguing that "once courts and Congress began to expand trademark law and committed it to consumer understanding, expansion became self-reinforcing-broader protection begets consumer expectations of greater control, which begets even broader protection").
13. In addition to the academic articles noted above, law professors have authored and signed amicus briefs arguing for recognition of trademark use as a threshold determination and have testified before Congress to stress the importance of the doctrine. See Brief of Amici Curiae Intellectual Property Law Faculty in Support of Affirmance, Rescuecom Corp. v. Google, Inc., No. 06-4881-cv (2d Cir. Feb. 22, 2007), available at http://claranet.scu. edu/eres/coursepage.aspx?cid=1754&page=docs# (follow "Rescuecom v. Google Law Professors Amicus Brief hyperlink);
14. Trademark Dilution Revision Act of 2005: Hearing on H.R. 683 Before the Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. 18-21 (2005) (statement of Mark A. Lemley, William H. Neukom Professor of Law, Stanford Law School).
15. This enthusiasm is not universal, however. Responding particularly to Dogan and Lemley, Graeme Dinwoodie and Mark Janis have rejected the trademark use doctrine both descriptively and prescriptively. Graeme Dinwoodie & Mark Janis, Confusion over Use: Contextualism in Trademark Law, 92 IOWA L. REV. 1597 (2007). I address many of Dinwoodie and Janis's arguments throughout this Article.
16. Dogan & Lemley, supra note 1, at 1682.
17. Margreth Barrett does advocate for the formal understanding, at least to some extent. Barrett, supra note 1, at 379-87.
18. Ironically, the very cases that have animated most scholars' advocacy of a trademark use doctrine-the keyword advertising cases-have come to strikingly different conclusions as to whether the trademark use doctrine exists and whether use of another's mark in keyword advertising constitutes trademark use in commerce. Compare Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310, 323 (D.N.J. 2006) (holding keyword use by advertisers constitutes trademark use in commerce), and Edina Realty, Inc. v. TheMLSonline.com, No. Civ. 04-4371JRTFLN, 2006 WL 737064, at *3 (D. Minn. Mar. 20, 2006) (same),
19. with Merck & Co. v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402, 416 (S.D.N.Y. 2006) (holding keyword use is not trademark use in commerce);
20. compare Washingtonpost.Newsweek Interactive Co. v. Gator Corp., No. Civ. A. 02-909-A, 2002 WL 31356645, at *1 (E.D. Va. July 16,2002) (holding use of keywords to trigger adware constitutes trademark use in commerce),
21. with 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 412 (2d Cir. 2005) (holding use of keywords to trigger adware is not trademark use in commerce),
22. Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734, 764 (E.D. Mich. 2003) (same),
23. and U-Haul Infi, Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723, 729 (same).
24. "Source" is defined broadly here to include not only the actual physical source of a product or service, but those who sponsor or are affiliated with the product or service.
25. Dogan & Lemley, supra note 1, at 1699.
26. See generally Gibson, supra note 4.
27. See NikeStore Customer Service, Privacy/Security, http://www.nike.com/renov/nikestore/us/ vl/us/en/info/privacy.jsp?item=terms (last visited Feb. 28, 2009) ("All trademarks, service marks and trade names (e.g., the NIKE name, the Swoosh design and the Basketball Player Silhouette (Jumpman) design) are trademarks or registered trademarks of NIKE. Unless otherwise restricted, you may use the content of the website only for your own non-commercial use to place an order or to purchase NIKE products. Any other use is prohibited unless agreed to by NIKE in writing."). These overbroad statements are extremely common.
28. See, e.g., Coca-Cola.com Terms of Use, http://www.coca-cola.com/ webstore/en-US/template1/terms-of-use-en-US.html (last visited Feb. 28, 2009) ("Any Content that is a trademark, logo or service mark is also a registered and unregistered trademark of The Coca-Cola Company or others. Your use of any Content, except as provided in these Terms of Use, without the written permission of the Content owner is strictly prohibited. You are also advised that The CocaCola Company will aggressively enforce its intellectual property rights to the fullest extent of the law, including the seeking of criminal prosecution."). Google is somewhat more subtle, though one could plausibly read its terms of service as to prohibit use of Google's trademarks.
29. See Google Terms of Service, http://www.google.com/accounts/TOS? loc=US (last visited Feb. 28, 2009) ("Unless you have agreed otherwise in writing with Google, nothing in the Terms gives you a right to use any of Google's trade names, trade marks, service marks, logos, domain names, and other distinctive brand features.").
30. If the statistics Jim Gibson cites are at all representative, such an expectation of licensed use is entirely realistic. See Gibson, supra note 4, at 924 (citing a 1983 study in which 91.2 percent of respondents agreed that "[n]o product can bear the name of an entertainer, cartoon character, or some other famous person unless permission is given for its use by the owner of the name or character").
31. Of course consumers in this situation may not care whether the use was licensed. But trademark law has no materiality element; liability does not depend on consumers caring.
32. See, e.g., Packman v. Chi. Tribune Co., 267 F.3d 628, 640 (7th Cir. 2001) (describing the Chicago Tribune's use of "The joy of six" as a newspaper headline in contradiction to a trademark).
33. Courts might well be reluctant to impose liability in such cases, and particularly to issue injunctive relief. Any limitations, however, would have to come from the force of the First Amendment. Trademark theory offers no reason to limit liability in such a case, committed as it is to protecting consumer understanding.
34. See McKenna, supra note 4, at 1858-73.
35. See Barrett, supra note 1, at 376-87;
36. Dogan & Lemley, supra note 1, at 1675 ("The recent trademark use decisions, therefore, are simply articulating and refining a longstanding principle of trademark law that finds support in both the Lanham Act and relevant case law, a principle that was, until recently, so widely accepted that trademark owners never sought to challenge it.").
37. Dogan & Lemley, supra note 1, at 1672.
38. Dinwoodie & Janis, supra note 5, at 1602, 1622.
39. Id. at 1607.
40. J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 2:9 (4th ed. 2008).
41. McKenna, supra note 4, at 1888.
42. See id. at 1889.
43. Every federal circuit court applies its own multifactor test of likelihood of confusion to determine liability. There is, however, significant overlap between the various tests, and every circuit includes factors that measure the similarity of the goods or services. Most also consider the likelihood that the plaintiff would expand its offerings to the defendant's market. See 4 MCCARTHY, supra note 21, §§ 24:30-:43 (setting forth each circuit's multifactor test).
44. See McKenna, supra note 4, at 1892-93.
45. See, e.g., Am. Washboard Co. v. Saginaw Mfg. Co., 103 F. 281,287 (6th Cir. 1900) ("It is the party who uses [a designation] first as a brand for his goods, and builds up a business under it, who is entitled to protection, and not the one who first thought of using it on similar goods, but did not use it. The law deals with acts, not intentions." (quoting George v. Smith, 52 F. 830, 832 (C.C.S.D.N.Y. 1892))).
46. One qualification is necessary here. Since 1988 parties have been able to apply to register trademarks prior to making actual use as long as they have a bona fide intention to use the mark. See Lanham Act § 1(b), 15 U.S.C. § 1051(b) (2006). If such applications issue to registration, their owners can claim constructive use of the registered mark from the date of application. Id. § 7(c).
47. But since intent to use applications cannot mature into registration unless the applicant can demonstrate actual use within the statutorily prescribed period, even rights acquired through intent-based registrations ultimately depend on actual use of a mark. Id. § 1(d) (requiring statement of use to be filed within statutory period following notice of allowance).
48. See Dinwoodie & Janis, supra note 5, at 1626.
49. As Rebecca Tushnet notes, "As far as we know, the brain has no use-in-commerce requirement or other distinction that would keep references to Tiffany-the-girl from activating thoughts of Tiffany's-the-jeweler, or vice versa." Rebecca Tushnet, Gone in Sixty Milliseconds: Trademark Law and Cognitive Science, 86 TEX. L. REV. 507, 549 (2008).
50. In a variety of cases, courts have recognized trademark rights in abbreviations or nicknames used exclusively by the public. See Nat'l Cable Television Ass'n v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1577-78 (Fed. Cir. 1991) ("Moreover, even without use directly by the claimant of the rights, the courts and the Board generally have recognized that abbreviations and nicknames of trademarks or names used only by the public give rise to protectable rights in the owners of the trade name or mark which the public modified. Such public use by others inures to the claimant's benefit and, where this occurs, public use can reasonably be deemed use 'by' that party in the sense of a use on its behalf." (footnote omitted));
51. see also Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 434 (7th Cir. 1999) (quoting Nat'l Cable Television, 937 F.2d at 1577);
52. Volkswagenwerk AG v. Hoffman, 489 F. Supp. 678, 681 (D.S.C 1980) (recognizing VW's rights in "Bug" based on public usage of the nickname without VW's protest);
53. Coca-Cola Co. v. Busch, 44 F. Supp. 405, 407 (E.D. Pa. 1942) (finding the public use of "Coke" to refer to Coca-Cola's soft drink sufficient to create rights for Coca-Cola in that term);
54. Am. Stock Exch., Inc. v. Am. Express Co., 1980 WL 30139, at *362-64 (T.T.A.B. June 30, 1980) (attributing to American Express rights in "AMEX" based on public use of that designation to denote American Express);
55. Norac Co. v. Occidental Petroleum Corp., 1977 WL 22645, at *315 (T.T.A.B. Dec. 15, 1977) (earlier use of "OXY" by public determined priority);
56. Pieper v. Playboy Enters., 1973 WL 19991, at *320 (T.T.A.B. June 14, 1973) (recognizing Playboy's rights in "Bunny Club").
57. Dogan and Lemley in particular have pressed the search costs rationale. See Dogan & Lemley, supra note 1, at 1689;
58. Stacey L. Dogan & Mark A. Lemley, A Search-Costs Theory of Limiting Doctrines in Trademark Law, 97 TRADEMARK REP. 1223 (2007);
59. Stacey L. Dogan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 EMORY L.J. 461,466-67 (2005) [hereinafter The Merchandising Right];
60. Stacey L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, 41 HOUS. L. REV. 777 (2004).
61. See Dinwoodie & Janis, supra note 5, at 1610. Barrett concedes that "the case law provides relatively little discussion of when a defendant 'uses a mark as a trademark' for purposes of infringement liability."
62. Barrett, supra note 1, at 378.
63. She also later concedes that inconsistency between the language of section 32 and the definition of "use in commerce" makes it possible that "the literal language of the section 45 'use in commerce' definition is limited to defining the acts necessary to gain ownership and registration of a mark." Id. at 385.
64. Barrett nevertheless concludes that "the trademark use requirement is well-established in statutory language and case law, and it serves a separate and distinct purpose in shaping trademark rights." Id. at 378.
65. Dinwoodie & Janis, supra note 5, at 1614.
66. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9 (1995);
67. see 1 MCCARTHY, supra note 21, § 4:4 (defining technical trademarks).
68. One can reasonably question whether this period is the appropriate reference point for "traditional" trademark principles, since trademark and unfair competition law significantly predate federal legislation and virtually none of the pre-Lanham Act precedent imposed such formal requirements. But even focusing on this era as the appropriate reference point, trademark use advocates overemphasize the significance of a determination that a plaintiff could not claim exclusive rights in a trademark.
69. See McKenna, supra note 4, at 1862-63.
70. The Trademark Act of 1870 required a statement of the "mode in which [the mark] has been or is intended to be applied and used." Act of July 8, 1870, ch. 230, § 77, 16 Stat. 198, 210 (1870).
71. The Supreme Court declared the Act of 1870 unconstitutional in the Trade-Mark Cases, 100 U.S. 82, 97-99 (1879).
72. Later statutes passed in 1881 and 1905 required a party seeking registration to file a statement of the mode in which the mark was applied or affixed to the goods and the length of time during which the trademark had been used. Trademark Act of 1881, ch. 138, § 1, 21 Stat. 502, 503 (1881),
73. superceded by Pub. L. No. 58-84, 33 Stat. 724, 724 (1905),
74. repealed by Lanham Act, Pub. L. No. 79-489, §46(a), 60 Stat. 427, 444 (1946) (codified as amended in various sections of 15 U.S.C. (2006)).
75. See infra notes 57-64 and accompanying text.
76. Davis v. Davis, 27 F. 490, 492 (C.C.D. Mass. 1886).
77. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9 (1995);
78. see also 1 MCCARTHY, supra note 21, § 4:4 (defining technical trademarks as marks that were "fanciful, arbitrary, distinctive, nondescriptive in any sense and not a personal name").
79. MCCARTHY,supra note 21, § 4:5.
80. See Lawrence Mfg. Co. v. Tenn. Mfg. Co., 138 U.S. 537, 546 (1891) ("[I]n all cases where rights to the exclusive use of a trade-mark are invaded, it is invariably held that the essence of the wrong consists in the sale of the goods of one manufacturer or vendor as those of another; and that it is only when this false representation is directly or indirectly made that the party who appeals to a court of equity can have relief. This is the doctrine of all the authorities.");
81. see also Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 413 (1916) ("Th[e] essential element is the same in trade-mark cases as in cases of unfair competition unaccompanied with trade-mark infringement.");
82. JAMES LOVE HOPKINS, THE LAW OF TRADEMARKS, TRADENAMES AND UNFAIR COMPETITION § 4, at 12 (1905) ("The principles involved in trademark cases and tradename cases have been substantially identical.").
83. McKenna, supra note 4, at 1906.
84. Lawrence Mfg., 138 U.S. at 546 (quoting Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 322 (1871)).
85. See id. at 546-47 ("[T]he office of a trade-mark is to point out distinctively the origin or ownership of the article to which it is affixed ." (quoting Canal Co., 80 U.S. (13 Wall.) at 322)).
86. Diederich v. W. Schneider Wholesale Wine & Liquor Co., 195 F. 35, 37 (8th Cir. 1912).
87. Id. at 37-38.
88. This distinction was a more formal version of a distinction some English courts drew between cases in which the plaintiff could prove exclusive title to a mark (in which case equity would act to enjoin others' use of the mark immediately and without evidence of fraud) and those in which the plaintiff could not demonstrate title (in which case equity would not act until the plaintiff had established at law that the defendant nevertheless acted to divert his trade). See McKenna, supra note 4, at 1856-58.
89. Diederich, 195 F. 35.
90. Barrett, supra note 1, at 379.
91. The court noted in Diederich that "[a] trade-mark owes its existence to the fact that it is actually affixed to a vendable commodity." 195 F. at 37 (quoting Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 30 N.E. 339, 344-45 (1892)).
92. Diederich, 195 F. at 37.
93. Id. at 38.
94. The court did not rule on any unfair trade claim, however, because it lacked subject matter jurisdiction over such state law claim, the parties being residents of the same state. Id. at 38.
95. See 1 MCCARTHY, supra note 21, §§ 5:6-:10.
96. See id.;
97. see also Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 457 (1911) (discussing jurisdiction).
98. See 1 MCCARTHY, supra note 21, §§ 5:6-:10.
99. Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 325 (1938) ("If it is a properly registered trade-mark, a ground to support the action is violation of the Trade-Mark Act. If it is not a properly registered trade-mark, the ground is unfair competition at common law. The facts supporting a suit for infringement and one for unfair competition are substantially the same.").
100. See, e.g., Moorman v. Hoge, 17 F. Cas. 715, 718 (C.C.D. Cal. 1871) (No. 9783) (rejecting plaintiffs claim of rights in its distinctively shaped barrels in which plaintiff shipped its whiskey, because a trademark "must be a mark, impressed, cut, engraved, stamped, cast upon, or in some way wrapped around, or appended to, the article, or the package, as something independent of the article itself, or the package used to contain it").
101. -27 F. 490 (C.C.D. Mass. 1886).
102. Id. at 492;
103. see also Diamond Match Co. v. Saginaw Match Co., 142 F. 727, 729-30 (6th Cir. 1906) (rejecting plaintiffs claim of exclusive right in tipped matches with partly red and partly blue heads on the ground that "the two colors. serve not only a useful purpose but an essential function," and noting that, even though the plaintiff limited its claim to heads of two particular colors, the general rule was that color could not be monopolized to distinguish a product given the limited number of primary colors).
104. -11 F. Cas. 605 (C.C.S.D.N.Y. 1877) (No. 6107).
105. Id. at 605-06.
106. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995)).
107. A feature might also be deemed aesthetically functional "[w]hen aesthetic considerations play an important role in the purchasing decisions of prospective consumers" and the design feature "substantially contributes to the aesthetic appeal of a product." RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 17 cmt. c (1995).
108. Unlike cases of mechanical functionality, courts in aesthetic functionality cases focus primarily on whether exclusive use of the claimed feature would put competitors at a "significant non-reputation-related disadvantage." TrafFix, 532 U.S. at 32 (quoting Qualitex, 514 U.S. at 165).
109. -84 F. 640(C.C.R.D. Ill. 1897).
110. Id. at 641.
111. Id. at 640-41.
112. See supra note 37.
113. Coats v. Holbrook, Nelson & Co., 7 N.Y. Ch. Ann. 713, 717 (1845) (describing as trademark law's purpose preventing a defendant from "attract[ing] to himself the patronage that without such deceptive use of such names... would have inured to the benefit of [the plaintiff]").
114. McKenna, supra note 4, at 1866.
115. -84 F. at 641.
116. Diederich v. W. Schneider Wholesale Wine & Liquor Co., 195 F. 35, 38 (8th Cir. 1912). Interestingly, the dissent in Diederich attempted to distinguish the type of use necessary for registration from the type of use necessary to infringe.
117. Id. at 40-41 (Sanborn, J., dissenting) (noting that, while the Acts of 1881 and 1905 required the applicant to file a statement of his trademark and "the mode in which the same is applied and affixed to goods," the 1905 Act made actionable affixing the mark to "merchandise of substantially the same descriptive properties as those set forth in the registration, or to labels, signs, prints, packages, wrappers, or receptacles intended to be used upon or in connection with the sale of merchandise" (emphasis added)).
118. Neither court was able to exercise jurisdiction over potential state law unfair competition claims, however, since diversity was lacking in both cases. See Diederich, 195 F. at 38;
119. Air-Brush, 84 F. at 641.
120. Moreover, because advertising was relatively undeveloped in the early and mid-nineteenth century, there were relatively fewer circumstances in which another party might have made use of a mark apart from the goods. See Robert G. Bone, Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law, 86 B.U. L. REV. 547, 575-79 (2006) (describing the growth of advertising between 1860 and the 1920s), and the sources cited therein.
121. See, e.g., Avery & Sons v. Meikle & Co., 4 Ky. L. Rptr. 759, 763 (1883) (noting that the law allows use of terms that are common property for the ideas that those terms commonly express, so long as the use is not misleading).
122. See Elgin Nat'l Watch Co. v. Ill. Watch Case Co., 179 U.S. 665, 673-74 (1901) (noting that competitors have good reasons to use terms in their primary sense but cannot use terms to divert a producer's trade);
123. Alff v. Radam, 14 S.W. 164, 164 (Tex. 1890) (noting that a party has "no right to appropriate a sign or symbol which, from the nature of the fact it is used to signify, others may employ with equal truth, and therefore have an equal right to employ, for the same purpose" but allowing for the possibility that a plaintiff might nevertheless prevail in such a case if the defendants intentionally simulated the peculiar device or symbol employed by the plaintiff to deceive consumers);
124. Thompson v. Montgomery, (1889) 41 Ch.D. 35, 50,
125. aff'd, [1891] A.C. 217 (H.L.) (U.K.) (holding that the plaintiff had no exclusive right to the use of "Stone Ale" alone as against the world, or any right to prevent the defendant from selling his goods as having been made at Stone, but could prevail against a defendant who used the words fraudulently to pass off its goods).
126. See, e.g., Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U.S. 554, 560 (1908) (modifying decree to "forbid the use of the name 'Hall,' either alone or in combination, in corporate name, on safes, or in advertisements, unless accompanied by information that the defendant is not the original Hall's Safe & Lock Company or its successor, or, as the case may be, that the article is not the product of the last-named company or its successors");
127. W.R. Speare Co. v. Speare, 265 F. 876, 880 (D.C. Cir. 1920) (reversing the decree of the lower court and directing the lower court "to enter a decree prohibiting the [defendant]... from using the word 'Speare' as the name, or part of the name, of their business as undertakers, or in advertisements, telephone directories, signs, or statements of any nature, unless accompanied by the words 'neither the successors of, nor connected with, the original W. R. Speare establishment,' in appropriate juxtaposition therewith, and in conspicuous letters, and from making any statement, oral or otherwise, that they or any one of them is continuing the original business formerly done by W. R. Speare under that name at 940 F street, N. W., and now carried on by the defendants, or that they have any privity or connection by succession, inheritance, or otherwise, with said business, or that said original business is no longer in existence or is not being continued by the plaintiff herein").
128. See Bone, supra note 72, at 575-79.
129. See id. at 576-79.
130. See, e.g., Yale Elec. Corp. v. Robertson, 26 F.2d 972, 974 (2d Cir. 1928) (acknowledging that the decision did "some violence to the language" of the statute, but refusing to allow registration of Yale for flashlights and batteries in light of the plaintiffs prior use of the Yale mark for locks and claiming "it ha[d] come to be recognized that, unless the borrower's use is so foreign to the owner's as to insure against any identification of the two, it is unlawful");
131. Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 409-10 (2d Cir. 1917) (finding that while "no one wanting syrup could possibly be made to take flour," the products were "so related as to fall within the mischief which equity should prevent").
132. See McKenna, supra note 4, at 1893-95.
133. See, e.g., Keebler Weyl Baking Co. v. J.S. Ivins' Son, Inc., 7 F. Supp. 211, 214 (E.D. Pa. 1934) ("An article need not be actually manufactured by the owner of the trade-mark it being enough that it is manufactured under his supervision and according to his directions thus securing both the right of the owner and the right of the public").
134. Lanham Act § 5, 15 U.S.C. § 1055 (2006).
135. See id. § 45.
136. See Dinwoodie & Janis, supra note 5, at 1609 ("There is no statutory language expressly supporting the trademark use theory. Even proponents of the theory concede as much."). The trademark use requirement arguably is more explicit in the recently enacted Trademark Dilution Revision Act of 2006.
137. See Graeme B. Dinwoodie & Mark D. Janis, Dilution's (Still) Uncertain Future, 105 MICH. L. REV. FIRST IMPRESSIONS 98, 100 (2006), http://students.law.umich.edu/mlr/ firstimpressions/vol105/ dinwoodie.pdf ("[I]n rather ambiguous language, the act seeks to impose a requirement that an alleged infringer be using the plaintiffs famous mark as a mark."). I discuss trademark use and dilution below in Part III.B.
138. Dinwoodie & Janis, supra note 5, at 1609-18.
139. Dogan & Lemley, supra note 1, at 1672.
140. Use in commerce is a requirement under both section 32 and section 43(a), though the requirement is articulated somewhat differently in each section. See Lanham Act § 32(1)(a) (stating that "[a]ny person who shall, without the consent of the registrant., use in commerce. shall be liable");
141. id. § 43(a)(1) (stating that "[a]ny person who, on or in connection with any goods or services, or any container for goods, uses in commerce ... shall be liable"). The newly adopted Trademark Dilution Revision Act of 2006 requires as a condition of liability "use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark."
142. Id. § 43(c)(1).
143. -1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 412 (2d Cir. 2005);
144. see also Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393, 400 (N.D.N.Y. 2006).
145. See Rescuecom, 456 F. Supp. 2d at 393-94.
146. By contrast, in another case sometimes cited for the proposition that infringement requires trademark use, the trademark use issue had to do with the plaintiffs rights in 1-800-HOLIDAY, while the issue in terms of infringement was whether the defendant used the plaintiffs mark at all when it registered a telephone number that corresponded to 1-800HOLIDAY but used or promoted the number only as 1-800-405-4329. Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 620, 624 (6th Cir. 1996).
147. See Rescuecom, 456 F. Supp. 2d at 397-98;
148. Holiday Inns, 86 F.3d at 623.
149. Lanham Act §45.
150. Id.
151. When Congress amended section 45 in 1988, it added the preamble language '"use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." Trademark Law Revision Act of 1988, Pub. L. No. 100-667, §134,102 Stat. 3935, 3948 (codified as amended at 15 U.S.C. §1127 (2006));
152. see also S. REP. NO. 100-515, at 5-6 (1988). It made this change at the same time it revised other provisions in the statute to provide for applications to register marks based on good faith intent to use and to make clear that marks could not be registered on the basis of "token use."
153. MCCARTHY, supra note 21, §17:21. This is at least circumstantial evidence that Congress understood the use in commerce definition in section 45 to relate to the use necessary to gain ownership rights in marks.
154. See Dogan & Lemley, The Merchandising Right, supra note 31, at 500-01;
155. cf. Dinwoodie & Janis, supra note 5, at 1614-15 (noting that "the fact that a term is affixed to a product does not in any way guarantee that the term is used as a mark" because the focus of contemporary trademark law is on consumer association rather than formal notions such as affixation).
156. This reading is not inevitable, even if one believes the definition is intended to apply to uses by the defendant. The definition identifies uses that shall be deemed uses in commerce, but it is not clearly an exhaustive list. While the definition provides examples of actions that a court would have to find satisfies the "use in commerce" requirement, nothing in the text forbids a court from recognizing other uses in commerce.
157. Reading the "use in commerce" definition as a comprehensive one would also radically alter the scope of false advertising claims under section 43(a). Section 43(a)(1) specifically limits application of both the unfair competition subsection ((a)(1)(A)) and the false advertising subsection ((a)(1)(B)) to uses in commerce of "any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact." Lanham Act §43(a)(1). If a "use in commerce" means a trademark use as defined in section 45, only trademark uses that
158. See, e.g., Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144, 150 (2d Cir. 2007) (finding literally false defendant's claim that customers would not get "the best picture out of some fancy big screen" without satellite service and that settling for cable was "illogical");
159. Castrol Inc. v. Pennzoil Co., 987 F.2d 939, 941 (3d Cir. 1993) (finding literally false and actionable defendant's product superiority claims, including its claim that Pennzoil motor oil "outperforms any leading motor oil against viscosity breakdown");
160. Coca-Cola Co. v. Tropicana Prods., Inc., 690 F.2d 312, 318 (2d Cir. 1982) (finding defendant's television orange juice commercial false on its face when the visual component made an explicit representation that its orange juice was produced by squeezing oranges and pouring freshly squeezed juice directly into a carton and the simultaneous audio component stated that its juice was "pasteurized juice as it comes from the orange").
161. Lanham Act §32(l)(a) (imposing liability on a party who, without the registrant's consent, "use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive" (emphasis added)).
162. Id. (defining infringement as "use in commerce" of a trademark "in connection with the sale, offering for sale, distribution, or advertising of any goods or services" (emphasis added)).
163. See, e.g., Gen. Conference Corp. of Seventh-Day Adventists v. Perez, 97 F. Supp. 2d 1154 (S.D. FIa. 2000) (national religious organization's "Seventh-Day Adventist" and "SDA" marks infringed by the defendant's use of the marks in church name, church publications, radio broadcasts, and newspaper advertising);
164. Entm't & Sports Programming Network, Inc. v. Edinburg Cmty. Hotel, Inc., 735 F. Supp. 1334 (S.D. Tex. 1986) (receiving subscription television programming from a satellite dish antenna without authorization infringed trade name and trademark "HBO" and "Home Box Office" by distributing the trademark owner's programming to hotel patrons and by advertising the owner's service in the defendant's hotel);
165. U.S. Plywood Corp. v. Zeesman Plywood Corp., 92 F. Supp. 336 (S.D. Cal. 1950) (selling and advertising of grooved plywood under the defendant's trademark "Venetex" infringed plaintiffs "Weldtex" trademark).
166. See, e.g., Weight Watchers Int'l, Inc. v. Stouffer Corp., 744 F. Supp. 1259 (S.D.N.Y. 1990) (using the plaintiff's mark in the defendant's advertising that claimed the defendant's foods could be used in the plaintiff's diet program infringed the plaintiff's rights under section 32);
167. Wendy's Int'l, Inc., v. Big Bite, Inc., 576 F. Supp. 816 (S.D. Ohio 1983) (finding the defendant's imitation of the plaintiff's marks in a purported parody of a fast food restaurant's advertisement infringed the plaintiff's rights under section 43(a)).
168. See, e.g., Mishawaka Rubber & Woolen Mfg. Co. v. Panther-Panco Rubber Co., 153 F.2d 662,666-67 (1st Cir. 1946) (holding that use in advertising met the statutory affixation requirement).
169. Reverse passing off should be contrasted with forward passing off (generally referred to simply as passing off), in which party B sells its own product as though it emanated from A. If, for example, I brewed my own soda and filled Coca-Cola bottles with it and then sold the drink as CocaCola, I would be passing off my soda as Coca-Cola.
170. See Smith v. Montoro, 648 F.2d 602, 606 (9th Cir. 1981) (recognizing claim of reverse passing off as "analogous to those of other complaints which have been held to state a cause of action under section 43(a)");
171. Truck Equip. Serv. Co. v. Fruehauf Corp., 536 F.2d 1210, 1216 (8th Cir. 1976) (finding a violation of section 43(a) when a farm equipment manufacturer used photographs of a competitor's grain trailer labeled as a product of the defendant in the defendant's sales literature, and noting that "the use of another's product, misbranded to appear as that of a competitor [i.e., reverse passing off], has been repeatedly found to be 'a false designation of origin' actionable under [section] 43(a)");
172. John Wright, Inc. v. Casper Corp., 419 F. Supp. 292, 325 (E.D. Pa. 1976) (noting that section 43(a) "prohibits 'reverse palming off,' i.e., conduct whereby the defendant purchases or otherwise obtains the plaintiffs goods, removes plaintiff's name and replaces it with his own"),
173. aff'd in relevant part sub nom. Donsco, Inc. v. Casper Corp., 587 F.2d 602 (3d Cir. 1978);
174. FRA S.p.A. v. Surg-O-Flex of Am., Inc., 415 F. Supp. 421, 423-24 (S.D.N.Y. 1976) (reaffirming previous grant of a preliminary injunction based on allegations that a bandage manufacturer's former distributor violated section 43(a) by continuing to sell boxes of the manufacturer's bandages, after termination of the distributorship, by pasting the distributor's trademark over the manufacturer's name);
175. Matsushita Elec. Corp. of Am. v. Solar Sound Sys., Inc., 381 F. Supp. 64, 66-67, 70 (S.D.N.Y. 1974) (finding a "clear violation" of section 43(a) based on the defendant's conduct in slightly modifying the control panel on the plaintiff's radio, removing the plaintiffs nameplate to substitute the defendant's, and scraping off the embossed labeling on the back).
176. -539 U.S. 23, 30 (2003) ("The Trademark Law Revision Act of 1988 made clear that [section] 43(a) covers origin of production as well as geographic origin. Its language is amply inclusive, moreover, of reverse passing off " (footnote omitted)). It is no answer to suggest, as Barrett does in a new paper, that this difficulty is avoided simply by classifying reverse passing off as a claim for "deceptive marketing," as the Restatement apparently does.
177. See Margreth Barrett, Finding Trademark Use: The Historical Foundation for Limiting Infringement Liability to Uses "in the Manner of a Mark," 43 WAKE FOREST L. REV. 893, 931 n.137 (2008). However one characterizes reverse passing off, the Supreme Court has held it is actionable under section 43(a) despite the fact that reverse passing off entails no use of the plaintiffs mark at all. In other words, the Court found no trademark use requirement in section 43(a), at least for what Barrett calls "deceptive marketing" claims. Even if one could find a robust trademark use requirement elsewhere, it surely would not take plaintiffs long simply to begin filing their claims against search engines as section 43(a) deceptive marketing claims if that allowed them to avoid the trademark use requirement. I doubt the retitled claims would be any less vexing for Google.
178. Lanham Act §45,15 U.S.C. §1127 (2006) (emphasis added).
179. Dogan & Lemley, supra note 1, at 1675-76.
180. Google Brief, supra note 2, at 11-12.
181. Id.
182. Id.
183. see Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393, 400 (N.D.N.Y. 2006) ("A 'trademark use'... is one indicating source or origin." (quoting Pirone v. MacMillan, Inc., 894 F.2d 579, 583 (2d Cir. 1990))).
184. Trademark use advocates have not sworn off the manner of use altogether, however. For example, while Dogan and Lemley concede that section 45 needs to be interpreted somewhat more flexibly in terms of infringement, they maintain that the defendant must somehow present the plaintiffs mark to consumers, and they emphasize that the defendant's use must be as a mark for its own products or services. See Dogan & Lemley, supra note 1, at 1677.
185. The two sections differ to some extent in the language of likelihood of confusion: section 32 refers simply to uses in commerce that are likely to "cause confusion, mistake, or to deceive," Lanham Act §32(l)(a), 15 U.S.C. §1114(l)(a) (2006), while section 43(a) refers more specifically to use "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities," id. §43(a)(1)(A).
186. See id. §33(b)(4) (making a defense to trademark infringement "the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin").
187. Dinwoodie & Janis, supra note 5, at 1617.
188. Id. at 1609 n.48. The recently enacted Trademark Dilution Revision Act of 2006 has a similar exemption for fair uses, though it too requires that the defendant use the famous mark "other than as a designation of source."
189. See Lanham Act §43(c)(3)(A) (exempting "[a]ny fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services").
190. Dinwoodie & Janis, supra note 5, at 1617.
191. This reading does render section 33(b)(4) inescapably superfluous, but as I describe below, superfluity hardly distinguishes the descriptive fair use defense.
192. Lanham Act §32(l)(a).
193. Section 43(a) does explicitly say so-it defines infringing uses as those "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association... or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities." Id. § 43(a)(1)(A).
194. See, e.g., Syntex Labs., Inc. v. Norwich Pharmacal Co., 437 F.2d 566, 568-69 (2d Cir. 1971);
195. Dinwoodie & Janis, supra note 5, at 1654.
196. See Lanham Trade-Mark Act of 1946, Pub. L. No. 79-459, §32(l)(a), 60 Stat. 427,437.
197. Lanham Act §32(l)(a).
198. See Glynn S. Lunney, Jr., Trademark Monopolies, 48 EMORY L.J. 367,470-75 (1999) (analyzing the amendment and arguing that, while Congress meant to expand the scope of actionable confusion beyond actual purchasers to potential purchasers, it did not intend deletion of "as to the source or origin of goods" to be considered a substantive change);
199. Sara Stadler Nelson, The Wages of Ubiquity in Trademark Law, 88 IOWA L. REV. 731, 800-01 (2003).
200. See Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 711 (3d Cir. 2004);
201. Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 295 (3d Cir. 2001) (citing deletion of the phrase "purchasers as to the source of origin of such goods or services" from the end of the former definition as evidence that the Lanham Act condemns confusion beyond the traditional source-of-origin confusion);
202. Syntex Labs., 437 F.2d at 568.
203. See Lanham Act §43(a)(1)(A);
204. see also Dinwoodie & Janis, supra note 5, at 1653-54 (arguing that the broader interpretation of the 1962 amendments as having obviated the need to show confusion as to source of origin was affirmed legislatively by the 1988 revisions to section 43(a)).
205. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 776, 768 (1992) (noting that "[s]ection 43(a) 'prohibits a broader range of practices than does [section] 32,' which applies to registered marks, but it is common ground that [section] 43(a) protects qualifying unregistered trademarks and that the general principles qualifying a mark for registration under [section] 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under [section] 43(a)" (citation omitted));
206. id. at 776 (Stevens, J., concurring) (characterizing the majority opinion interpreting section 43(a) "as having created a federal cause of action for infringement of an unregistered trademark or trade dress and concluding] that such a mark or dress should receive essentially the same protection as those that are registered");
207. ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915, 921 (6th Cir. 2003) ("Section 43(a) of the Lanham Act provides a federal cause of action for infringement of an unregistered trademark which affords such marks essentially the same protection as those that are registered.");
208. Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1383 (Fed. Cir. 2002) ("Unregistered marks receive essentially the same protection as registered marks-----").
209. If the claim was unfounded, of course, it might constitute false advertising under section 43(a). Lanham Act §43(a)(1)(B). That liability turns on the falsity of the claim, however, and not consumer confusion.
210. For this reason Dogan and Lemley's emphasis on whether a defendant uses the plaintiff's mark to designate the source of its own products or services does not aid the inquiry. See Dogan & Lemley, supra note 1, at 1677-79.
211. See, e.g., Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 197-98 (1985).
212. -4 MCCARTHY, supra note 21, § 23:11.50.
213. Google similarly mischaracterizes the issue when it claims in its brief that "people are often confused, but only confusion caused by trademark use is actionable." Google Brief, supra note 2, at 6. More accurately, not all confusion is relevant; only confusion about source is actionable. And since only use of a source designator can cause confusion as to source, infringement necessarily entails use that designates source.
214. Dinwoodie & Janis, supra note 5, at 1625.
215. Id. at 1627.
216. Id. at 1627-28 & n.138. It is true that this type of use would not likely be treated as a sufficient use to demonstrate use for purposes of registration, but that focuses too much on the technical requirements of registration. This affixation requirement is a proxy for consumer understanding, but consumer understanding controls. If a party could show that this type of use on packaging was in fact viewed by consumers as a source indication, that party could prevail in an infringement suit even without a registration.
217. Dinwoodie and Janis acknowledge in a footnote that some uses of another's mark in a narrative sentence, such as Zazu's use of Nike in fifty-four point bright red type, might be considered trademark uses. Id. at 1628 n.139.
218. Dinwoodie and Janis claim, however, that such a conclusion merely substantiates their central claim that the character of the defendant's use is "ultimately a function of context." Id. To the extent Dinwoodie and Janis seek merely to demonstrate that trademark useunderstood formally-cannot resolve all cases, I agree. But if these examples are meant to disprove the existence of a trademark use requirement, Dinwoodie and Janis go too far.
219. Id. at 1626 (footnote omitted).
220. Id. at 1654 (footnote omitted). Dinwoodie and Janis express doubt that the trademark use advocates meant to cast doubt on merchandising though Dogan and Lemley have explicitly questioned the validity of the merchandising right in at least some contexts.
221. See Dogan & Lemley, The Merchandising Right, supra note 31, at 464.
222. Lanham Act §33(b)(4), 15 U.S.C §1115(b)(4) (2006). Though by their own terms the defenses listed in section 33(b) are applicable only to alleged infringement of an incontestable mark, section 33(a) incorporates all of the defenses in section 33(b)(4), making them legitimate defenses to infringement of any registered trademark. Id. §33(a).
223. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 119 (2004) ("[A]s to plaintiff's trademark claim, '[t]he use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake the origin or ownership of the product[.]'" (quoting William R. Warner & Co. v. Eli Lily & Co., 265 U.S. 526, 528 (1924)));
224. Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 327 (1871) ("Purchasers may be mistaken, but they are not deceived by false representations, and equity will not enjoin against telling the truth.").
225. See William R. Warner & Co., 265 U.S. at 528 (emphasizing that the truthful use of descriptive terms, even if confusing, is not actionable);
226. Canal Co., 80 U.S. (13 Wall.) at 327.
227. Lanham Act §33(b)(4), 15 U.S.C. §1115(b)(4) (2006).
228. -543 U.S. at 121.
229. Id. at 118.
230. The Solicitor General argued in KP Permanent that the "used fairly" requirement in section 33(b)(4) requires "only that the descriptive term describe the [defendant's] goods accurately." Id. at 123.
231. Though the Court ultimately did not determine what the "used fairly" language means, it gave some implicit support to the Solicitor General's interpretation by rejecting the plaintiffs contention that "used fairly" imported an absence of confusion. Id. at 120-21.
232. See Lanham Act §33(b)(4).
233. See supra Part III. A.2.
234. -543 U.S. at 123 ("It suffices to realize that our holding that fair use can occur along with some degree of confusion does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant's use is objectively fair. Two Courts of Appeals have found it relevant to consider such scope, and commentators and amid here have urged us to say that the degree of likely consumer confusion bears not only on the fairness of using a term, but even on the further question whether an originally descriptive term has become so identified as a mark that a defendant's use of it cannot realistically be called descriptive."); Shakespeare Co. v. Silstar Corp. of Am., Inc., 110 F.3d 234, 243 (4th Cir. 1997) ("[T]o the degree that confusion is likely, a use is less likely to be found fair-----");
235. Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1059 (7th Cir. 1995).
236. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 609 (9th Cir. 2005). Thus, having found a question of fact on likelihood of confusion that precluded summary judgment for the defendant, the court found that summary judgment on the fair use defense also was inappropriate.
237. Id. ("Among the relevant factors for consideration by the jury in determining the fairness of the use are the degree of likely confusion, the strength of the trademark, the descriptive nature of the term for the product or service being offered by [the defendant] and the availability of alternative descriptive terms, the extent of the use of the term prior to the registration of the trademark, and any differences among the times and contexts in which [the defendant] has used the term.").
238. See, e.g., Clicks Billiards Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1265 (9th Cir. 2001) (''[T]rial courts disfavor deciding trademark cases in summary judgments because the ultimate issue is so inherently factual [T]he question of likelihood of confusion is routinely submitted for jury determination ...."
239. (quoting Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1355 n.5 (9th Cir. 1985)));
240. Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 318 (4th Cir. 1992) ("Likelihood of confusion ... has long been recognized to be 'a matter of varying human reactions to situations incapable of exact appraisement.'"
241. (quoting Colburn v. Puritan Mills, Inc., 108 F.2d 377, 378 (7th Cir. 1939)));
242. Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231,246 (2d Cir. 1983) ("[L]ikelihood of confusion is frequently a fairly disputed issue of fact on which reasonable minds may differ-----").
243. Lanham Act §33(b)(4).
244. The nominative fair use defense is not clearly grounded in the Lanham Act, at least with respect to infringement claims, and there is therefore no statutory construction question here. The Trademark Dilution Revision Act of 2006 does refer to the defense explicitly, though it is somewhat unclear how the defense applies to dilution claims. See id. §43(c)(3).
245. -971 F.2d 302 (9th Cir. 1992).
246. Id. at 308. Even this decision is a bit of a puzzle, however. Judge Kozinski writes that "[b]ecause [this type of use] does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder."
247. Id. If it were true that such uses did not imply sponsorship or endorsement, then the use should not be considered infringing anyway and there is no need for the defense.
248. Id.
249. This is not to say that nominative fair use would be predictable or clear under these conditions. As Bruce Keller and Rebecca Tushnet noted, the determination of whether a defendant has used only so much of the mark as reasonably necessary to identify the product or service is inescapably subjective. See Bruce P. Keller & Rebecca Tushnet, Even More Parody than the Real Thing: Parody Lawsuits Revisited, 94 TRADEMARK REP. 979, 1006 (2004) ("Establishing a conceptual floor [for nominative fair use] in the form of 'no more than necessary' is too vague and manipulable and does not give sufficient leeway to free speech interests.").
250. Indeed it is not even clear that the New Kids court understood nominative fair use this way. In another part of its decision, the court wrote that "[b]ecause [the use of the mark] does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder." 971 F.2d at 308.
251. -318 F.3d 900 (9th Cir. 2003).
252. Jardine initially planned to perform with his band as "Beach Boys Family and Friends," and later performed under various "Beach Boys" names, including "Al Jardine of the Beach Boys and Family & Friends," "The Beach Boys 'Family and Friends,'" "Beach Boys Family & Friends," "The Beach Boys, Family & Friends," "Beach Boys and Family," as well as, simply, "The Beach Boys." Id. at 902.
253. Id. at 908.
254. Id. at 908 n.5.
255. Id. Since the nominative fair use analysis replaces the traditional likelihood of confusion analysis, it seems the plaintiff is entirely relieved of its responsibility to prove likelihood of confusion when the defendant claims nominative fair use.
256. Cf. William McGeveran, Rethinking Trademark Fair Use, 94 IOWA L. REV. 49, 91 (2008) ("This substitution [of nominative fair use for the traditional likelihood of confusion test] also shifts burdens unfairly.").
257. -425 F.3d 211 (3d Cir. 2005).
258. Id. at 222-23. KP Permanent was decided purely on statutory grounds, and nominative fair use is a common law doctrine, so the holding of that case technically says nothing about the status of nominative fair use.
259. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 134 (2004).
260. Century 21,425 F.3d at 222.
261. Id.
262. Id.
263. New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302,308 (9th Cir. 1992).
264. See McGeveran, supra note 159, at 91 (describing the "collapse of the requirements for nominative fair use into a substitute likelihood of confusion test").
265. See, e.g., Dinwoodie & Janis, supra note 5, at 1628 (describing a potential "comparative advertising defense").
266. -402 F.2d 562 (9th Cir. 1968).
267. Id. at 563. Chanel's claim was based on the defendant's advertisement for "The Ta'Ron Line of Perfumes" in a trade journal directed to wholesale purchasers of perfume.
268. Id. The advertisement stated that "the Ta'Ron perfumes 'duplicate 100% perfect the exact scent of the world's finest and most expensive perfumes and colognes at prices that will zoom sales to volumes you have never before experienced!'"
269. Id. The advertisement further "suggested that a 'Blindfold Tesť be used 'on skeptical prospects,' challenging them to detect any difference between a well known fragrance and the Ta'Ron 'duplicate.' One suggested challenge was, 'We dare you to try to detect any difference between Chanel #5 ([$]25.00) and Ta'Ron's 2nd Chance. $7.00.'"
270. Id. The advertisement also contained an order form in which "each Ta'Ron fragrance was listed with the name of the well known fragrance which it purportedly duplicated immediately beneath. Below 'Second Chance' appeared '*(Chanel #5).'
271. The asterisk referred to a statement at the bottom of the form reading 'Registered Trade Name of Original Fragrance House.'" Id.
272. Id. at 569.
273. Id.
274. Id.
275. See 4 MCCARTHY, supra note 21, §25:52 ("[I]t is neither trademark infringement nor unfair competition to truthfully compare competing products in advertising, and in doing so, to identify by trademark, the competitor's goods. However, such comparative advertising will not be permitted if it is likely to confuse buyers as to exactly what they are getting.");
276. see also Hypertherm, Inc. v. Precision Prods., Inc., 832 F.2d 697, 701 (1st Cir. 1987) (holding that an imitator may use in a truthful way an originator's trademark when advertising that the imitator's product is a copy, so long as no confusion as to the source is likely to result); Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500, 503 (8th Cir. 1987) ("An imitator may use in a truthful way an originator's trademark when advertising that the imitator's product is a copy so long as that use is not likely to create confusion in the consumer's mind as to the source of the product being sold.").
277. See Stacey L. Dogan & Mark A. Lemley, The Trademark Use Requirement in Dilution Cases, 24 SANTA CLARA COMPUTER & HIGH TECH. L.J. 101,109-14 (2008).
278. Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1) (2006) (emphasis added).
279. The Act defines "dilution by blurring" as "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark," id. §43(c)(2)(B), and "dilution by tarnishment" as "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark,"
280. id. §43(c)(2)(C).
281. Id. §43(c)(1).
282. Id.
283. Id. §43(c)(3)(A).
284. Id. (emphasis added).
285. To find a trademark use limitation in the claim language, one must distinguish between the plaintiffs famous mark and the other mark used by the defendant, and infer a requirement that the defendant use the other mark as an indication of the source of its goods or services. The exclusion provision, by contrast, applies only when the defendant is using the plaintiff's famous mark-in other words, when there is no second mark. Id. (excluding "any fair use, including a nominative or descriptive fair use ...of a famous mark by another person" (emphasis added)).
286. Id.
287. Rather than define fair use for purposes of dilution, the statute notes that fair use includes nominative and descriptive fair use, as well as uses to comment on, criticize, or parody the mark owner. Id. It remains unclear how courts will interpret the exemptions, particularly with respect to the parody defense. In the context of infringement, parody is most frequently evaluated according to the extent to which it causes confusion.
288. See 6 MCCARTHY, supra note 21, §31:153 ("Some parodies will constitute an infringement, some will not. But the cry of 'parody!' does not magically fend off otherwise legitimate claims of trademark infringement or dilution. There are confusing parodies and nonconfusing parodies. All they have in common is an attempt at humor through the use of someone else's trademark. A non-infringing parody is merely amusing, not confusing."). Confusion obviously is not relevant to a dilution claim, and it remains to be seen whether courts can adequately identify parody without reference to confusion.
289. These courts would require that the defendant's use (1) describe the defendant's products or services, (2) be otherwise than as a mark, and (3) be fair and in good faith. See, e.g., EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 64-68 (2d Cir. 2000) (evaluating whether the defendant's use was descriptive separately from the issue of whether the use was in good faith);
290. see also Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 796 (5th Cir. 1983) (considering probative, in evaluating a fair use claim, the defendant's lack of intent to use "fish fry" in a trademark sense and conscious packaging so as to avoid confusion). As these decisions make clear, however, the three factors cannot easily be disentangled.
291. In EMI, for example, the court treated the issue of descriptiveness in contrast to trademark use. 228 F.3d at 64-65.
292. It considered, the "physical nature of the use in terms of size, location, and other characteristics in comparison with the appearance of other descriptive matter or other trademarks." Id. at 65 (quoting RESTATEMENT (THIRD) OF UNFAIR COMPETITION §28 cmt. c (1995)).
293. Good faith, on this account, deals with the defendant's intent (or lack of intent) to trade on the good will of the trademark owner by creating confusion about sponsorship or affiliation. Id. at 66.
294. Since direct evidence of intent rarely is available, courts consider "the overall context in which the marks appear and the totality of the factors that could cause consumer confusion." Id.
295. Or, to be more precise, only non-trademark uses that are fair uses would be exempted under section 43(c)(3)(A). Uses that might also be considered non-trademark uses are exempted to the extent they qualify as news reporting or non-commercial uses under section 43(c)(3)(B) or (C). See Lanham Act §43(c)(3)(B)-(C).
296. See 17 U.S.C. §107 (2006) ("Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work ... is not an infringement of copyright.");
297. Campbell v. Acuff-Rose Music Inc., 510 U.S. 569, 590 (1994) ("Since fair use is an affirmative defense, its proponent would have difficulty carrying the burden of demonstrating fair use without favorable evidence about relevant markets." (footnotes omitted));
298. cf. SunTrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1260 n.3 (11th Cir. 2001) ("I believe that fair use should be considered an affirmative right under the 1976 Act, rather than merely an affirmative defense, as it is defined in the Act as a use that is not a violation of copyright. However, fair use is commonly referred to as an affirmative defense and, as we are bound by Supreme Court precedent, we will apply it as such." (citations omitted)).
299. See supra Parts III. A-B.
300. See supra Part III.A.2.
301. See Lanham Act §14(3) ("The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used." (emphasis added)).
302. Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118 (1938) (emphasis added);
303. see also Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.ll (1982) ("[Secondary meaning [is acquired when]... in the minds of the public, the primary significance of a product feature... is to identify the source of the product rather than the product itself.").
304. Indeed, it does not even matter whether the party using the name actually has the name as her surname. What matters is consumer perception. See, e.g., 815 Tonawanda St. Corp. v. Fay's Drug Co., 842 F.2d 643, 648 (2d Cir. 1988) (requiring the plaintiff, asserting rights in the personal name Fay, to prove secondary meaning even though there was "no one named Fay... associated with Fay's Leader"). Likewise, even if the mark actually is comprised of surnames, secondary meaning is not required if consumers are not likely to view the mark as such. See Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047,1054 (6th Cir. 1999) (finding that while the CarMax mark was purportedly a combination of the first names Carson and Max, the public would
305. Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 594 (6th Cir. 1989) ("Where it is determined that the mark as perceived by potential purchasers describes the geographic origin of the goods the mark is primarily geographically descriptive.").
306. A claimed mark is deceptively misdescriptive, and therefore denied registration, when (1) "the mark misdescribe[s] the goods or services" with which the mark is used; and (2) "consumers [are] likely to believe the misrepresentation." In re Phillips-Van Heusen Corp., 2002 WL 523343, at *1048 (T.T.A.B. Mar. 28,2002). A mark is adjudged deceptive, and therefore denied registration, when: (1) "the term [is] misdescriptive of the character, quality, function, composition or use of the goods [or services]"; (2) "prospective purchasers [are] likely to believe that the misdescription actually describes the goods or [services]"; and (3) "the misdescription [is] likely to affect [consumers'] decisions to purchase.
307. " Id. (quoting In re Budge Mfg. Co., 857 F.2d 773, 775 (Fed. Cir. 1988)).
308. The Court of Customs and Patent Appeals was a precursor to the Federal Circuit and heard appeals of registration decisions. That court was abolished by the 1982 Federal Courts Improvement Act, and its jurisdiction was consolidated into the new Federal Circuit. Federal Courts Improvement Act, Pub. L. No. 97-164,96 Stat. 25 (1982);
309. see also S. Corp. v. United States, 690 F.2d 1368,1370 (Fed. Cir. 1982) (en banc) (adopting precedent of the United States Court of Claims and United States Court of Customs and Patent Appeals as binding).
310. Chun King Corp. v. Genii Plant Line, Inc., 403 F.2d 274,276 (C.C.P.A. 1968) (quoting In re Singer Mfg. Co., 225 F.2d 939, 941 (C.C.P.A. 1958)) (finding "Living Earth" registrable as a trademark because "it would be regarded as a trademark by purchasers of petitioner's goods").
311. TRADEMARK MANUAL OF EXAMINING PROCEDURE §1202.01 (5th ed. 2007) (emphasis added).
312. For this reason, all of these determinations are regarded as questions of fact, often not easily resolvable on summary judgment.
313. See, e.g., Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 793-94 (5th Cir. 1983) (noting that categorization of a term and existence of secondary meaning are questions of fact);
314. MCCARTHY, supra note 21, §15:29 (recognizing that secondary meaning is a question of fact) .
315. Functional product features, even ones that have source significance, are not eligible for trademark protection.
316. See Lanham Act §§2(e)(5), 14(3), 33(b)(8), 43(a)(3), 15 U.S.C. §§1052(e)(5), 1064(3), 1115(b)(8), 1125(a)(3) (2006). According to the Supreme Court, "a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001). A feature may also be deemed aesthetically functional, and therefore unprotectable, if exclusive use of that feature "would put competitors at a significant non-reputation-related disadvantage."
317. Id. at 32-33. These definitions do rely to some extent on consumer behavior. Consumer demand presumably is relevant, for example, to the question of whether a feature is "essential to the use or purpose of the article." Likewise, whether exclusive use of a feature "would put competitors at a significant non-reputation-related disadvantage" depends on consumer demand for the feature. But neither definition depends on consumer understanding regarding source.
318. In Dastar, the Supreme Court dealt with the issue of reverse passing off claims in which the "false designation of origin" by the defendant was its unattributed presentation of uncopyrighted content created by another. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 31 (2003). The Court narrowly construed "origin of goods" as used in section 43(a) to refer only to the origin of the physical articles in which creative content is embodied.
319. Id. at 37 ("[I]n light of the copyright and patent laws (which were [designed to protect originality and creativity]), we conclude that the phrase [origin of goods] refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods."). Consequently, under Dastar, creative content embodied in books, movies, or other forms seems categorically incapable of performing a source-indication function that courts will recognize.
320. McCarthy therefore offers no more than his assessment of the likely impact on consumers when he concludes that a hypothetical software company does not make trademark use of "Microsoft Windows" when it advertises that its "new [software] program will run flawlessly on MICROSOFT WINDOWS" and that a magazine does not use "Microsoft" as a trademark when it "features on its cover in bold letters the teaser ad 'INSIDE: NEWS ON THE LATEST MICROSOFT PRODUCT!'" 4 MCCARTHY, supra note 21, at §23:11.50.
321. See Heartland Bank v. Heartland Home Fin., Inc., 335 F.3d 810, 820 (8th Cir. 2003) (Smith, J., concurring) ("[I]n a trademark case, circumstantial evidence may be all that is available to establish secondary meaning.");
322. Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 596 (6th Cir. 1989) ("Direct proof of secondary meaning is difficult to obtain.").
323. See Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28, 30-31 (2d Cir. 1997) (focusing on the defendant's prominent display of its better-known trademarks and lack of use of the contested term on packaging or promotional materials); Car-Freshner Corp. v. S.C Johnson & Son, Inc., 70 F.3d 267, 270 (2d Cir. 1995) (finding the defendant's use of a pine tree shape for its pine-scented air fresheners use "otherwise than as a mark" where air fresheners came in a box prominently bearing the "Glade Plug-Ins" trademark as well as the Johnson's corporate logo and each unit had "Glade" imprinted across the front of the product itself);
324. Zatarains, 698 F.2d at 796 (finding the defendant's use of "fish fry" to be fair use when the defendant did not intend to use the term in a trademark sense, had never attempted to register the words as a trademark, believed "fish fry" was a generic name for the type of coating mix they manufactured, and consciously packaged and labeled its products in such a way as to minimize any potential confusion in the minds of consumers); Venetianaire Corp. of Am. v. A & P Imp. Co., 429 F.2d 1079, 1082 (2d Cir. 1970) (focusing on typestyle and prominence of "hygienic" to determine whether defendant's use was "otherwise than as a trade or service mark").
325. See Heartland Bank, 335 F.3d at 820 (Smith, J., concurring) ("Various circuits and authorities recognize that in the absence of direct proof, the court must draw reasonable inferences from the evidence of money spent in advertising to establish that the mark is from a particular source, of the type of advertising used, of long-term usage of the mark, and of sales volume." (emphasis added)); Comm. for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814, 822 (9th Cir. 1996) (calling survey evidence "one of the most persuasive ways to prove secondary meaning" but not requiring it); Co-Rect Prods., Inc. v. Marvy! Adver. Photography, Inc., 780 F.2d 1324, 1333 n.9 (8th Cir. 1986) ("Consumer surveys are recognized by several circuits as the most direct and persuasive evidence of secondary meaning.");
326. see also Berner Int'l. Corp. v. Mars Sales Co., 987 F.2d 975, 982 (3d Cir. 1993) (noting that, while not required, "direct consumer evidence, e.g., consumer surveys and testimony is preferable to indirect forms of evidence").
327. One can imagine more difficult cases in which it is not clear that consumers recognize the term used by the defendant as a trademark of the plaintiff. In such a case, consumers are unlikely to be confused even if the defendant uses the term to indicate the source of its own products or services.
328. Dogan & Lemley, supra note 1, at 1694 ("By hypothesis, non-trademark uses often involve the identical mark. This is because the defendant employs the mark itself either as a signal of consumer preferences or to refer to the trademark or something that it represents."). 205. 134 F.3d 749 (6th Cir. 1998).
329. Id. at 753.
330. Id. at 753-55 (holding that the plaintiff had not acquired any trademark rights in a depiction of its museum because it had not created a consistent commercial impression in its use and that the defendant's use did not constitute trademark use because defendant's depiction of the museum was not readily recognized as an indication of source).
331. The court aptly demonstrated the difficulty of distinguishing between trademark and nontrademark use in its attempt to distinguish the posters at issue from a hypothetical photograph of a Coca-Cola bottle.
332. Id. at 754. In support of its claim, the museum had argued that the posters of the museum were analogous to a picture of a Coke bottle, in which the subject of the picture served both as an appealing visual image and as a designation of source.
333. Id. The court rejected the analogy, noting that-unlike the Coke bottle-the museum was never presented in a consistent manner such that consumers might recognize it as more than a picture of an extant building.
334. Id. At the same time, however, it recognized that the Coke bottle was a much harder case, and accepted that "a photograph which prominently depicts another person's trademark might very well, wittingly or unwittingly, use its object as a trademark."
335. Id. It left open the question of how a court would determine when a prominent depiction of another's trademark used that object as a trademark.
336. -326 F.3d 687 (6th Cir. 2003).
337. Id. at 695.
338. Id.
339. Id. at 696.
340. Id. at 698.
341. -978 F.2d 1093 (9th Cir. 1992).
342. Id. at 1097-98.
343. Id. at 1111 (quoting the trial court's jury instructions).
344. Id.
345. -610 F. Supp. 612 (S.D.N. Y. 1985).
346. Id. at 627 & n.8, 632. The case settled prior to trial, with National Video reportedly paying Allen $425, 000. Woody Allen Settles Lawsuit Involving Advertiser's Use of "Look Alike" Performer for $425,000, ENT. L. REP., Oct. 1986, at 20.
347. Allen, 610 F. Supp. at 627 n.8.
348. To be sure, courts do not always believe that the complained of use really is likely to cause confusion. In ETW Corp. v. Jireh Publishing, Inc., for example, the court refused to consider "any and all images of Tiger Woods" a trademark of Woods, holding that "[n]o reasonable person could believe that merely because these photographs or paintings contain Woods's likeness or image, they all originated with Woods." 332 F.3d 915, 922 (6th Cir. 2003).
349. Likewise, the court in Kournikova v. General Media Communications Inc., rejected tennis player Anna Kournikova's false endorsement claim against Penthouse magazine, which had published photos of a topless sunbather who the magazine falsely identified as Kournikova. No. CV 02-3747,2002 WL 31628027 (CD. CaI. Aug. 2,2002). It rejected Kournikova's claim because it found that no reasonable reader would believe that Kournikova endorsed the magazine when the story, the cover headline ("CAUGHT UP CLOSE ON NUDE BEACH"), and context made it clear that the neither plaintiff nor the person in the photos voluntarily posed for the magazine.
350. Id. at *1620. But the important point here is that, even when courts reject a claim, they do so because they believe the use does not suggest endorsement, evaluated from the perspective of consumers.
351. Google Brief, supra note 2, at 11-12.
352. Id. at 23.
353. Cf. Coca-Cola Co. v. Old Country Rd. Diner, Inc., 1971 WL 16669, at 219-20 (E.D.N.Y. Dec. 22,1971) (finding a violation of a previously entered consent judgment when the "plaintiffs trade examiners made visits to the place of business of the defendant and placed orders for 'Coca-Cola', or 'Coke', and in thirty-four (34) instances were served a product not 'Coca-Cola'; and without explanation").
354. -1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400,409 (2d Cir. 2005).
355. See id. ("A company's internal utilization of a trademark in a way that does not communicate it to the public is analogous to a [sic] individual's private thoughts about a trademark. Such conduct simply does not violate the Lanham Act, which is concerned with the use of trademarks in connection with the sale of goods or services in a manner likely to lead to consumer confusion as to the source of such goods or services.").
356. The Second Circuit is therefore wrong to focus on whether the trademark is communicated to the public as opposed to utilized internally.
357. See id. The issue is consumer understanding, not communication by the defendant. Communication may be a proxy for consumer understanding in some cases, but it is only a proxy.
358. Section 43(a) makes clear this requirement that the defendant's use indicate the source of its own goods or services. Lanham Act §43(a), 15 U.S.C. §1125(a)(1)(A) (2006) ("Any person who ... uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person" (emphasis added)). Opponents of the trademark use doctrine have sometimes ignored the fact that the statute requires this specific type of confusion and have argued about the search engine cases by pointing to broader confusion search engines might generate.
359. See, e.g., Dinwoodie & Janis, supra note 5, at 1635-36 (arguing that the trademark use doctrine prevents trademark law from sufficiently regulating the presentation of search results, particularly with respect to differentiation of paid and unpaid search results); Glynn S. Lunney, Jr., Trademarks and the Internet: The United States' Experience, 97 TRADEMARK REP. 931, 937 (2007) (arguing that the Second Circuit's treatment of keyword advertising cases through the trademark use doctrine "may vindicate the conduct of a particular defendant, but in addition to other difficulties, is poorly tailored to protecting the relevant consumer interests at stake. Some keywordtriggered ads can materially confuse consumers, leading them to buy from company A believing they are buying from company B, while other triggered ads do not"). These commentators' concerns about more generalized confusion caused by search engines, of course, merit serious consideration. But the type of confusion they describe falls outside the reach of trademark law regardless of the trademark use doctrine.
360. Google Brief, supra note 2, at 12 (citations omitted). This type of confusion might conceivably be the basis of secondary liability for Google, though the tests for secondary trademark liability are stringent. See Perfect 10, Inc. v. Visa Int'l Serv., Ass'n, 494 F.3d 788,806 (9th Cir. 2007) ("The tests for secondary trademark infringement are even more difficult to satisfy than those required to find secondary copyright infringement."). "To be liable for contributory trademark infringement, a defendant must have (1) 'intentionally induced' the primary infringer to infringe, or (2) continued to supply an infringing product to an infringer with knowledge that the infringer is mislabeling the particular product supplied. "
361. Id. at 807 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 855 (1982)). When the alleged direct infringer supplies a service rather than a product, under the second prong of this test, the court must "consider the extent of control exercised by the defendant over the third party's means of infringement. "
362. Id. at 807 (quoting Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980,984 (9th Cir. 1999)). For liability to attach, there must be "[d]irect control and monitoring of the instrumentality used by a third party to infringe the plaintiff's mark." Lockheed Martin, 194 F.3d at 984. Vicarious liability for trademark infringement requires "a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product." Perfect 10, 494 F.3d at 807 (quoting Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1150 (7th Cir. 1992)) .
363. McKenna, supra note 4, at 1866-71 (noting that courts traditionally tolerated substantial confusion in situations in which the defendant could not be characterized as illegitimately seeking to divert sales from a competitor).
364. Cf. Gibson, supra note 4.
365. See, e.g., Lucas v. S.C. Coastal Council, 505 U.S. 1003, 1034 (1992) (Kennedy, J., concurring) (noting the circularity in the context of government takings: "if the owner's reasonable expectations are shaped by what courts allow as a proper exercise of governmental authority, property tends to become what courts say it is"); United States v. White, 401 U.S. 745, 786 (1971) (Harlan, J., dissenting) (noting, in the context of the Fourth Amendment's protection of our reasonable expectations of privacy, that "[o]ur expectations, and the risks we assume, are in large part reflections of laws that translate into rules the customs and values of the past and present"); Gibson, supra note 4, at 951 n.262; Sara K. Stadler, Incentive and Expectation In Copyright, 58 HASTINGS L.J. 433,454 (2007) (noting in copyright law that "[w]hen Congress acts to provide creators with the rewards they expect... the result is a circularity of expectation that leads... to an increase in exclusivity").
366. See McKenna, supra note 4, at 1866.
367. Courts generally articulate the relevant standard as a question of whether the defendant's use is likely to cause confusion among "an appreciable number of ordinarily prudent purchasers." McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126,1130 (2d Cir. 1979) ("[A]n appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of
368. the goods-----" (quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978), cert denied, 439 U.S. 1116 (1979)));
369. see also Int'l Ass'n of Machinists & Aerospace Workers, AFL-CIO y. Winship Green Nursing Ctr., 103 F.3d 196,201 (1st Cir. 1996) ("The law has long demanded a showing that the allegedly infringing conduct carries with it a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care."). While there is no absolute quantitative threshold for determining what level of confusion is "appreciable," courts have generally been persuaded by evidence of 15 percent confusion.
370. See, e.g., Exxon Corp. v. Tex. Motor Exch. of Houston, Inc., 628 F.2d 500, 507 (5th Cir. 1980) (finding a 15 percent level of confusion was strong evidence of likelihood of confusion); RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1061 (2d Cir. 1979) (finding a 15 to 20 percent level of confusion corroborates likelihood of confusion); James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 279 (7th Cir. 1976) (finding a 15 percent level of confusion was neither small nor de minimis). In one case, the court called evidence of 8.5 percent con-fusion "strong evidence" of a likelihood of confusion. Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F. Supp. 707, 716 (S.D.N.Y. 1973), modified on other grounds, 523 F.2d 1331 (2d Cir. 1975).
371. For American Idol, this is only the beginning of the product placement.
372. See Katherine Neer, How Product Placement Works, HOW STUFF WORKS, http://money.howstuffworks.com/ productplacement6.htm (last visited Feb. 28, 2009) (noting other product placement strategies on the show, such as having the contestants wait in the Coca-Cola room during elimination episodes). American Idol is hardly alone in this practice.
373. See ROB WALKER, BUYING IN: THE SECRET DIALOGUE BETWEEN WHAT WE BUY AND WHO WE ARE 129 (2008) (reporting that, in 2006, six minutes and twenty-two seconds of a typical prime-time television show were devoted to paid product placements and that, in the third quarter of 2006 alone, episodes of Rockstar: Supernova included 1,609 product or brand image shots).
374. See OJ Fagbire, Transformer Movie Incorporates the Strongest Product Placement in Film History, PRODUCT PLACEMENT NEWS, July 16, 2007, http://www.productplacement.biz/200707172268/ news/product-placement/transformer-movie-incorporates-the-strongest-product- placement-in-filmhistory.html.
375. See Richard Sandomir, White Sox Have New Start Time: 7-Eleven, N.Y. TIMES, Oct. 11, 2006, http://www.nytimes.com/2006/10/ll/sports/ baseball/llsox.html.
376. Mark owners generally have understood this, and they have been able to achieve their current level of control by arguing within trademark doctrine, using the language and logic of the search costs theory. See McKenna, supra note 4, at 1916 ("Producers are able to frame just about any argument for broader protection in terms of consumer expectations, which they are in position to influence systematically through marketing.").
377. Functionality does depend to some extent, of course, on consumer expectations in the marketplace. In assessing mechanical functionality, a court must determine whether a feature is "essential to the use or purpose of the article or affects the cost or quality of the article." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,165 (1995)). One could imagine fairly objective criteria on which to evaluate cost, but whether a feature is essential to the use or purpose of an article depends, at least to some extent, on how consumers expect to use the article. The focus on consumers is perhaps more significant in the context of aesthetic functionality since a feature is deemed aesthetically functional if its "exclusive use ... would put competitors at a significant non-reputation-related disadvantage."
378. Id. (quoting Qualitex, 514 U.S. at 165). Whether parties need to use certain features to compete effectively in a given market depends to a substantial degree on how one defines the relevant market. Assuming that is done by focusing on the substitutability of different products, consumers ultimately define the relevant markets.
379. See 6 MCCARTHY, supra note 21, §11:45.
380. Lanham Act §43(a)(1)(B), 15 U.S.C. §1125(a)(1)(B) (2006).
381. Id.
382. The Fifth Circuit has held that materiality can be presumed when the challenged statement is literally false. Pizza Hut, Inc. v. Papa John's Int'l, Inc., 227 F.3d 489, 497 (5th Cir. 2000). Though it cited some cases from other circuits for this proposition, those cases do not clearly support the Fifth Circuit's position. Castrol, Inc. v. Quaker State Corp., for example, imposes a "different burden in proving literally false the advertised claim that tests prove defendant's product superior, than it does in proving the falsity of a superiority claim which makes no mention of tests." 977 F.2d 57, 62 (2d Cir. 1992). But that decision does not deal with any distinction between literally false statements and literally true but misleading statements. The only other circuit that has explicitly addressed the question is the Eleventh Circuit, and it has expressly held that materiality must be proven in all cases, even where the defendant's statement is literally false. Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242, 1250-51 (11th Cir. 2002) ("To the extent that the Fifth Circuit decision marks a circuit split, we stand with the First and Second Circuits, concluding that the plaintiff must establish materiality even when a defendant's advertisement has been found literally false."). In my view, the Eleventh Circuit's approach is sound. As that court noted, regardless of the reason any particular statement deceives consumers, "not all deceptions affect consumer decisions."
383. Id. at 1250.
384. -105 F.3d 841 (2d Cir. 1997).
385. Id. at 855.
386. W.; see also Pizza Hut, 227 F.3d at 503-04 (finding Papa John's advertising slogan "Better Ingredients. Better Pizza" misleading in the context of the advertisements at issue, but that there was "no evidence demonstrating that the slogan had the tendency to deceive consumers so as to affect their purchasing decisions"). Some courts have allowed that statements relating to "inherent qualities] or characteristic[s]" of products are presumed material.
387. See, e.g., Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 311-13 (1st Cir. 2002) (finding the statement that women's blazers were a blend of wool and cashmere material as to the content of the product because it related to an "inherent quality or characteristic" of the product, requiring only that defendant's misrepresentation was likely to influence consumers' purchasing decisions).
388. Because source is defined differently here, we would not be concerned that consumers wrongly attributed production of the genuine IBM computers to IBM.