Reconciling Trademark Rights and Expressive Values: How to Stop Worrying and Learn to Love Ambiguity
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Trademarks and free expression are on a collision course. In the early 1990s, I wrote two articles examining the expansion of trademark law from its core focus on confusion about marketing signals, to cover such matters as dilution, implications of sponsorship, and rights of publicity. I suggested that these expansions were putting increasing pressure on speech interests. It seemed to me that signifiers drawn from mythology, history, and literature were losing their potency in a globalized environment in which the populace lacks a shared vocabulary or much interest in the classics. I posited that well-known marks were taking the place of these references. Used as metaphors, similes, and metonyms, trademarks were becoming the lingua franca of the communicative sphere. I was concerned, however, at the extent to which these “allusive uses” were coming under private control: judges were jumping ever more quickly from recognizing the value in a mark, to allowing the mark’s proprietor to capture that value. I thought that, in fact, the significance of a mark was in large part generated by its audience, through the way in which it was recoded and recontextualized. Accordingly, it was incumbent upon courts to understand how signals functioned and to recognize the dual provenance of their value. While it was appropriate to give proprietors marketing control—rights over signaling value—other aspects—expressive value—belonged to the public. I admitted that separating these two dimensions would sometimes be difficult, but suggested techniques to make that division workable. Over the last decade, a solution based on separating the spheres in which symbols operate has become increasingly less tractable. On the trademark holders’ side, interest in and power over marks have expanded considerably. Proprietors use trademarks to maintain exclusivity after patents and copyrights have expired and trade secrets have been exposed; they also use them to leverage reputation across product categories. They engage in “lifestyle marketing”—offering goods across a range of sectors. In some cases, trademarks take on a life of their own: merchandising a mark through various licensing ventures can sometimes earn as much as the sales of the underlying product. Trademark holders have had remarkable success developing law responsive to these concerns: a range of new concepts, such as initial-interest and post-sale confusion; a new focus on trade dress protection; and new and improved rights of action, including federal dilution protection (in the European Community as well as in the United States) and cybersquatting prohibitions (emanating both from law and from contractual obligation). Parallel developments are unfolding at the international level: it is now mandatory for the members of the World Trade Organization to recognize geographical indications and to offer enhanced protection to marks that are well known; accumulating soft law suggests the scope of this protection is quite broad and may encompass protection against dilution. Through a combination of soft law, multilateralism, bilateralism, and old-fashioned industry pressure, less conventional signs, such as scents, sounds, and color, are also becoming the subject matter of trademark protection. And moves are afoot to create new rights to control traditional knowledge, including tribal symbols. Public use of trademarks has also multiplied. Fans have always put marks on tee shirts, sports caps, bumper stickers, buttons, mugs, posters—even birthday cakes—to express their affiliation with schools, teams, social organizations, and products. Some of these usages have become less complimentary. As one South African judge put it, tee shirts decorated with trademarks are now a focus for “young irreverent people who enjoy the idea of being gadflies.” Nor is “gadflying” as limited as was once the case. Digitization reduces the cost of using trademarks in traditional media while the Internet offers fresh opportunities—the chance to create widely available websites to sell marked products or to use trademarks artistically, politically, and humorously, or to critique the trademark holder’s activities, politics, or products. Most important, the dichotomy between the marketing and expressive spheres, which was always somewhat indistinct, has collapsed entirely. In the absence of a means for communicating directly with customers, trademark holders use their marks to send not only traditional messages about the attributes of their products (source, quality and the like), but also a range of other, more expressive (and, as Jessica Litman says, “atmospheric”) kinds of information. “Life style marketing,” after all, requires transmission of lifestyle information—information about social values, ideals, and world-view. Other trademark usages are likewise becoming highly complex. Comparative ads, a staple of U.S. marketing, have spread to other countries. Trade dress and trademarks are particularly useful in such ads because they can create forceful images and sound bites, calling one product to mind while marketing its rival. Trademarks have also taken on a wholly new role: on the Internet, they are navigation tools, used by consumers to find merchants and by merchants to find consumers. Some shoppers look for goods on the Internet by using the trademark as a domain name. If they enter it correctly, they will likely find the trademark holder’s website, but they may also discover that the same mark is used by merchants in remote locations, or incorporated into several Internet addresses. Even if they reach the right trademark holder’s website, they may be treated to a competitor’s ad, set to pop-up when the site is accessed. And, of course, if the mark is typed incorrectly, the consumer may encounter a “typosquatter”—the site of a rival, perhaps, or a griper. Another strategy is to “google” the trademark (enter it into a search engine); such key-word searches will present the consumer with a list of sites, some of which may hawk alternative products—a rival may be gaming the algorithm of the search engine or the listing-cum-ad may be keyed to appear whenever a search on the mark is conducted.
Source Publication
Trademark Law and Theory: A Handbook of Contemporary Research
Source Editors/Authors
Graeme B. Dinwoodie, Mark D. Janis
Publication Date
2008
Recommended Citation
Dreyfuss, Rochelle C., "Reconciling Trademark Rights and Expressive Values: How to Stop Worrying and Learn to Love Ambiguity" (2008). Faculty Chapters. 1189.
https://gretchen.law.nyu.edu/fac-chapt/1189
