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CharlesColman-Trademarklawpocalypse

CharlesColman-Trademarklawpocalypse

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Published by: Charles Colman Law, PLLC on Oct 28, 2012
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12/04/2012

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“Trademarklawpocalypse”
 by Charles E. Colman, Esq.
*
 With academics, attorneys, and the public distracted by the raging debate aboutthe use and abuse of copyrights and patents, the quietest sibling of the intellectual property family, trademark law, has been up to no good. The danger of trademark law’smischief is placed in high relief by an absurd lawsuit filed this week by the owner of thelate William Faulkner’s literary rights.
1
(More on that in a bit.)Traditionally, trademark law had modest goals: it sought primarily to prevent one party from “passing off” his goods or services as those of another, or the reverse. But themodern federal Lanham Act, passed in 1946 and existing in substantially similar formtoday, goes much further,
2
providing for trademark liability when a defendant’s conduct“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.”
3
 Federal courts have been largely unable, or unwilling, to limit the reach of thislanguage
4
(especially the “sponsorship [or] approval” bases for liability), leading toimprobable rulings. For example, in 2011, a Syracuse federal judge declined to grant amotion to dismiss a trademark infringement lawsuit premised solely on the inclusion of a
*
 
Founder/Attorney, Charles Colman Law, PLLC (http://charlescolmanlaw.com). © 2012 Charles E.Colman.
 
1
 
 Faulkner Literary Rights v. Sony Pictures Classics, Inc.
, 3:12-CV-00100 (N.D. Miss. Oct. 25, 2012)
2
 
See
Lawrence M. Friedman, A
 
H
ISTORY OF
A
MERICAN
L
AW
559 (3d ed. 2005) (“Trademarks, too, in [thefirst mid-Twentieth Century,] an era of intense competition for the consumer’s money, took on even greater significance than before. The Lanham Act (1946) codified and strengthened the law of trademarks.”)
3
U.S. Lanham Act, Section 43(a)(1)(A),
codified at 
15 U.S.C. § 1125.
4
 
 But see generally Dastar Corp v. Twentieth Century Fox Film Corp.
, 539 U.S. 23 (2003).
 
 pine tree-shaped air freshener in a landscape photo taken from the driver’s seat of a car.
5
 Car-Freshner, the owner of a trademark registration in the shape of its air fresheners,claimed that consumers would likely be confused about whether it had “sponsored” or “approved” the defendant’s photo. The court ruled that, at least at the motion to dismissstage, it had “‘no idea’ whether Plaintiffs can prove that a consumer would believe thatPlaintiffs sponsored or otherwise approved of the use of the Tree Marks in the imagesdisplayed on Defendants’ website….”
6
The implication: this was a case for a jury trial.In this day and age, of course, that usually means settlement.But while the
Car-Freshner 
decision was disturbing, the Faulkner case is truly beyond the pale. In
 Faulkner Literary Rights v. Sony Pictures Classics, Inc.
,
7
theVirginia-based owner of the late Faulkner’s intellectual property rights sued New York- based Sony – in Mississippi, a forum both inconvenient for Sony and most sympathetic toits famed resident – over the use of two lines in Woody Allen’s
 Midnight in Paris
. In itsComplaint, the Plaintiff recounts the “Infringing Quote”: “The past is not dead. It’s noteven past. You know who said that? Faulkner. And he was right….”
8
(The Complaintthen provides the original passage: “The past is never dead. It’s not even past.”)Putting aside the Plaintiff’s frivolous copyright infringement claim, the Complaintalleges that Sony has engaged in trademark infringement because its movie “is likely tocause confusion, to cause mistake, and/or to deceive the Infringing Film’s viewers as to a perceived affiliation, connection or association between William Faulkner and his works,
5
 
Car-Freshner Corp. v. Getty Images, Inc.
, 822 F. Supp. 2d 167 (N.D.N.Y. 2011).
6
 
 Id.
at 178.
7
3:12-CV-00100 (N.D. Miss. Oct. 25, 2012) (Complaint).
8
 
 Faulkner Literary Rights,
3:12-CV-00100, Complaint at ¶ 9.
 
on the one hand, and Sony, on the other hand.” Will the court take the cue of the
Car- Freshner 
 judge, and simply punt to a jury?It doesn’t have to—and it shouldn’t. Just a few months ago, a New York Cityfederal judge dismissed a trademark infringement claim brought by Louis Vuitton againstWarner Brothers over an allegedly fake bag in the film
The Hangover: Part II 
.
9
Thecourt grounded its ruling in both the Supreme Court’s recent approval of district courts’assessing the “plausibility” of allegations on motions to dismiss, and on a doctrinegranting extra protection to creators of artistic works that allegedly infringe others’trademarks.
10
With that said, the Hangover decision is currently on appeal, its fateuncertain.
11
 More to the point, allegations of trademark infringement, and the serious freespeech concerns they raise, do not always involve works deemed “artistic.”
12
Federaltrademark law’s “see no evil, hear no evil” stance, embodied in the
Car-Freshner 
case,threatens our collective right to express our views through references to, and discussionsof, other people, companies, brands, products, and works. As the Faulkner case makesclear, trademark law is broken. In a working paper, I propose that the federal courts fixthis body of law by adopting an equitable “trademark misuse” defense representing a
9
 
 Louis Vuitton Mall[e]tier v. Warner Brothers Ent.
, 11 Civ. 9436 (ALC) (HBP), 2012 U.S. Dist. LEXIS83646 (S.D.N.Y. Jun. 15, 2012) (Carter, J.).
10
 
 Id.
at *9, *12
et seq.
The so-called “
 Rogers
artistic works” test originated in
 Rogers v. Grimaldi
, 875F.2d 994 (2d Cir. 1989), and has been adopted by various other circuit courts.
See
,
e.g.
,
discussion at 
 
Univ.of Ala. Bd. of Trs. v. New Life Art, Inc.
, 683 F.3d 1266, 1276 (11th Cir. 2012).
11
 
 Louis Vuitton Mall[e]tier v. Warner Brothers Ent.
, 12-2885, 11-CV-9436 (2d Cir.) (Appellant’s Form C,Addendum B, “Issues to Be Raised on Appeal,” filed Aug. 8, 2012,
available at 
http://bit.ly/VOg8W0)(identifying six issues for appellate review, including “[w]hether the District Court erred by not acceptingthe allegations in the complaint as true on a motion to dismiss pursuant to Federal Rule of Civil Procedure12(b)(6) and by making factual determinations including, without limiting, determinations relating to thefact-intensive
 Rogers
and
 Polaroid 
[
e.g.
, ‘likelihood of confusion’] balancing tests....”)
12
 
See also
 
 Bleistein v. Donaldson Lithographing Co.
, 188 U.S. 239, 251 (1903) (Holmes, J.) (“It would bea dangerous undertaking for persons trained only to the law to constitute themselves final judges of theworth of [works claimed to be ‘artistic’], outside of the narrowest and most obvious limits.”)

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