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“Trademarklawpocalypse” by Charles E. Colman, Esq.

* With academics, attorneys, and the public distracted by the raging debate about the 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’s mischief is placed in high relief by an absurd lawsuit filed this week by the owner of the late 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 the modern federal Lanham Act, passed in 1946 and existing in substantially similar form today, 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 this language4 (especially the “sponsorship [or] approval” bases for liability), leading to improbable rulings. For example, in 2011, a Syracuse federal judge declined to grant a motion to dismiss a trademark infringement lawsuit premised solely on the inclusion of a

Founder/Attorney, Charles Colman Law, PLLC ( © 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 HISTORY OF AMERICAN LAW 559 (3d ed. 2005) (“Trademarks, too, in [the first 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 dismiss stage, it had “‘no idea’ whether Plaintiffs can prove that a consumer would believe that Plaintiffs sponsored or otherwise approved of the use of the Tree Marks in the images displayed 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 the Virginia-based owner of the late Faulkner’s intellectual property rights sued New Yorkbased Sony – in Mississippi, a forum both inconvenient for Sony and most sympathetic to its famed resident – over the use of two lines in Woody Allen’s Midnight in Paris. In its Complaint, the Plaintiff recounts the “Infringing Quote”: “The past is not dead. It’s not even past. You know who said that? Faulkner. And he was right….”8 (The Complaint then provides the original passage: “The past is never dead. It’s not even past.”) Putting aside the Plaintiff’s frivolous copyright infringement claim, the Complaint alleges that Sony has engaged in trademark infringement because its movie “is likely to cause 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,

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Car-Freshner Corp. v. Getty Images, Inc., 822 F. Supp. 2d 167 (N.D.N.Y. 2011). 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 CarFreshner judge, and simply punt to a jury? It doesn’t have to—and it shouldn’t. Just a few months ago, a New York City federal judge dismissed a trademark infringement claim brought by Louis Vuitton against Warner Brothers over an allegedly fake bag in the film The Hangover: Part II.9 The court 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 doctrine granting extra protection to creators of artistic works that allegedly infringe others’ trademarks.10 With that said, the Hangover decision is currently on appeal, its fate uncertain.11 More to the point, allegations of trademark infringement, and the serious free speech concerns they raise, do not always involve works deemed “artistic.”12 Federal trademark 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 discussions of, other people, companies, brands, products, and works. As the Faulkner case makes clear, trademark law is broken. In a working paper, I propose that the federal courts fix this body of law by adopting an equitable “trademark misuse” defense representing a

Louis Vuitton Mall[e]tier v. Warner Brothers Ent., 11 Civ. 9436 (ALC) (HBP), 2012 U.S. Dist. LEXIS 83646 (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, 875 F.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 (identifying six issues for appellate review, including “[w]hether the District Court erred by not accepting the allegations in the complaint as true on a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6) and by making factual determinations including, without limiting, determinations relating to the fact-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 be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [works claimed to be ‘artistic’], outside of the narrowest and most obvious limits.”)


hybrid of the copyright fair use, copyright misuse, and patent misuse doctrines13—but this is, of course, just one possible solution. If the federal courts continue to duck important public policy questions raised by trademark claims, causing free speech rights to constrict as the public’s “likelihood of confusion” increases, plaintiffs will be emboldened to bring increasingly far-fetched infringement suits, like Faulkner Literary Rights v. Sony Pictures. This will produce what I call a “likelihood of confusion feedback loop,” through which trademark rights can be expected to gradually encompass nearly all third-party uses.14 Trademark law might not scream as loud as copyright and patent law, but this alarming prospect certainly warrants the immediate attention of the public, the courts, and Congress alike.

Charles E. Colman, “‘Trademark Misuse’: Crafting a Safety Valve for a Normatively Deficient Body of Law” (Working Paper, Oct. 8, 2012 draft), abstract and introduction available for download at 14 See discussion id. at Section I.e.i (“The Insidious ‘Likelihood-of-Confusion Feedback Loop’”).