Monday, August 03, 2015

Photo finish: allegedly unauthorized (c) sublicensing isn't false designation of origin

Photographic Illustrators Corp. v. Orgill, Inc., 2015 WL 4572296, No. 14-11818 (D. Mass. July 29, 2015)
PIC specializes in commercial photography.  It took photos of lighting fixtures manufactured by nonparty OSI.  Defendants Orgill and Farm & City Supply distribute OSI products.  PIC sued them for copyright infringement; violation of the DMCA’s CMI provision, §1202, and false designation of origin/false advertising.  Here the court kicks out everything but some copyright infringement claims.
PIC licensed OSI to use photos of OSI products, with a non-exclusive, worldwide license to use, sublicense, and permit use, except that OSI couldn’t sublicense images “in exchange for valuable consideration such as a fee (e.g., as stock photography).” The licensing agreement also provided: “To the extent reasonably possible and practical, OSI shall ... include a copyright notice indicating PIC as the copyright owner and/or include proper attribution indicating Paul Picone as the photographer for Images Used by OSI.”
Orgill is a wholesale distributor for OSI, and used product images from “e-mail, Dropbox, OSI’s external website, or OSI’s internal web server.” Whether Orgill knew about PIC’s license to OSI was disputed.  OSI conducted twice-yearly reviews of its product images for five years and never challenged the way OSI images appeared.  After PIC sued, OSI and Orgill executed a confirmatory copyright sublicense agreement, effective nunc pro tunc as of June 1, 2006.  The sublicensing agreement also included a provision obligating Orgill to include and instruct its sublicensees/dealers to include, “to the extent reasonably possible and practical with respect to size, prominence, aesthetics, and Use, a copyright notice indicating PIC as the copyright owner of the Images.”  It further covenanted not to remove any copyright notice before distributing images.
Farm & City Supply is one of Orgill’s dealers: Orgill uses an ecommerce platform that creates an online store, which dealers then brand and publish with their own names.  To do so, dealers pay a flat $750 setup fee and a monthly fee. Dealers can get pictures from the platform, including the PIC images, but it’s disputed whether these fees cover those pictures.  Orgill also has a product information library on an FTP server, from which dealers may download product images and other data after receiving a secure login.  There’s no additional fee for using the server. Farm & City got the images at issue both from the FTP server and the ecommerce platform.
For a time, Farm & City placed a watermark reading “farmandcitysupply” across the images appearing on its eBay storefront.
Defendants bore their burden of showing that OSI impliedly licensed Orgill’s use of the images, given their longstanding business practices and OSI’s repeated twice-yearly review of Orgill’s catalogues.  The remaining question was whether Orgill’s use of the challenged images exceeded the scope of that license, because OSI couldn’t give Orgill more rights than OSI itself had.  The PIC-OSI license barred sublicensing in exchange for valuable consideration, and required attribution “[t]o the extent reasonably possible and practical.” 
Disputed questions about the fee and attribution precluded summary judgment on infringement. As to the fee, the fact that Orgill provided free FTP access “does not diminish the fact that those images were available in another forum only following an initial payment.” Orgill argued that the fee it charged didn’t depend on how many images customers downloaded, or whether they downloaded images at all, but the fact that Farm & City paid the fee to get a bundle that included the images precluded summary judgment.  (I’m not entirely clear what legal standard the factfinder is supposed to use to resolve the dispute.)
As for attribution, defendants argued that it would not have been “reasonably possible and practical” to include attribution on the images, because Orgill typically “crop[s]” product images “for tighter fit.”  The court wasn’t impressed.  Since the lawsuit, Orgill includes some attribution on OSI images in the form of a “sidenote or footnote for images appearing on websites and in catalogs.” “While it may not be practical for the defendants to include PIC’s full-sized copyright notice, PIC need not demonstrate as much to defeat a motion for summary judgment.” It was enough to show that there was no attribution, but that defendants “have apparently been able to include at least some attribution since learning of PIC’s copyright interest in the images.”  There were also factual issues about whether Orgill knew of PIC’s existence and its copyright interest in the images before the lawsuit, which also precluded Orgill’s innocent infringement defense. [I assume further proceedings will address whether this breach of the license actually results in infringement, or just breach.]
On innocent infringement, Orgill submitted evidence that it had never heard of PIC until the onset of this lawsuit and that, at all relevant times, it believed its use of the images was licensed.  But Orgill’s testimony contradicted the terms of the sublicensing agreement, which purportedly codified the terms of a pre-existing agreement between Orgill and OSI, and which included a covenant to include “a copyright notice indicating PIC as the copyright owner of the Images.” [Comment: Yikes!  The confirmatory sublicense leaves Orgill worse off than it was with just an implied license!]  “Orgill cannot have its lightbulb and eat it, too – either it always knew that PIC existed and that there were certain limitations on its use of the images, or else Orgill did not then, and does not now, know of any such limitations.”  [Well, presumably it knows now.  I understand that the confirmatory sublicense was poorly drafted, but let’s get real—isn’t the most likely scenario that Orgill didn’t know that PIC existed, but believed that OSI had the right to allow it to use the OSI images, whatever their ultimate source?]
Farm & City, however, prevailed on its innocent infringement defense, limiting its potential liability for statutory damages:
Farm & City submitted undisputed evidence that it did not know PIC existed until this lawsuit was filed, that it obtained all of the images at issue from Orgill free of copyright markings, and that Orgill never advised it of any limitations on its use of the images. Moreover, since Farm & City was not party to the sublicensing agreement between OSI and Orgill, there is no indication whatsoever that it might have been aware of its duty to attribute the images to PIC.
PIC also alleged violation of §1202’s prohibition on the provision of false CMI. Farm & City allegedly violated 1202(a) by adding a watermark reading “farmandcitysupply” to some images for use in its eBay storefront. Further, PIC claimed that both defendants removed or altered PIC’s CMI in violation of § 1202(b) before distributing the images.
Farm & City prevailed as a matter of law.  “Farm & City prevails as a matter of law on this issue. To be liable for adding false CMI under § 1202(a), a defendant must intend to ‘induce, enable, facilitate, or conceal infringement.’”  Undisputed testimony explained that the watermark “allows whoever is buying the product to know that they’re buying it from Farm & City Supply,” thus helping to “differentiate yourself from other sellers” and “increase your sales and make money.”  PIC argued that this amounted to a claim of authorship of the photos, but even if so, “Farm & City did not intend to “induce, enable, facilitate, or conceal infringement,” since it did not know of PIC’s existence until this lawsuit was filed and was unaware that it had any attribution obligations.”
Nor did PIC submit evidence to support its claim of CMI removal.  There was no evidence that either defendant ever received images with CMI; rather, the record indicated the contrary.  PIC said that its photographer put PIC attribution with every image he gave to OSI, thus justifying the inference that the defendants removed the CMI. “Given the existence of a third party that has not been deposed and is otherwise absent from the case, it would be too speculative to infer that Orgill removed CMI,” and even more so with Farm & City.
PIC also alleged that Farm & City violated §43(a) by putting the “farmandcitysupply” watermark on the images, constituting false designation of origin and false advertising.
False designation of origin: No.  Dastar.  (I hope the court awards fees.  But it might not, because there are a few cases out there that egregiously misread Dastar and allow similar claims to proceed past a motion to dismiss, even though the pixels/bytes produced by Farm & City were not the pixels/bytes/images produced by PIC, which would be required for true reverse passing off under DastarDastar directs our attention to the entity that produced the copy at issue (here Farm & City, at least with the assistance of eBay), and not to the entity that produced the initial creative work subsequently multiplied in copies.)  PIC argued that, by adding the watermark without otherwise changing the images, Farm & City engaged in mere repackaging of the images and thus in reverse passing off.  The court, despite its jarring willingness to entertain PIC’s argument, ultimately disagreed.  Dastar says that “origin of goods” refers to “the producer of the tangible goods that are offered for sale.” Nothing in Dastar “suggests that the Lanham Act provides a cause of action even where the misrepresentation in question did not concern the source of a tangible good for sale to the public.” 
The tangible good for sale here is OSI’s lightbulbs.  As Dastar held, “[t]he consumer who buys a branded product does not automatically assume that the brand-name company is the same entity that came up with the idea for the product, or designed the product – and typically does not care whether it is. The words of the Lanham Act should not be stretched to cover matters that are typically of no consequence to consumers.”  Similarly, customers on eBay want to buy lightbulbs, and aren’t interested in the author of the product images. “There is no record evidence that any consumer believed that Farm & City’s watermark indicated ownership of the photographs that depicted the lightbulbs.”
False advertising: the court also joined the consensus that plaintiffs can’t save a Dastar-barred §43(a)(1)(A) merely by repleading the same facts under §43(a)(1)(B).   Authorship does not constitute part of the “nature, characteristics, or qualities” of a good for sale.

Plaintiff fails to hit one out of the park with false advertising claim as substitute for TM

Parks, LLC v. Tyson Foods, Inc., 2015 WL 4545408, No. 5:15–cv–00946 (E.D. Pa. July 28, 2015)
Parks sells sausage and other processed meats; its origin is in the H.G. Parks Sausage Company, known for the first African–American–owned company to be publicly traded on a U.S. stock exchange and for its radio and television advertisements that contained “a distinctive plea in the voice of a child for ‘more Parks’ sausages Mom.’”  In 1995, the Parks Sausage Co. declared bankruptcy, and plaintiff Parks acquired its assets in 1996, ultimately licensing Dietz & Watson to produce and sell Parks processed meat products.  Parks also licensed the use of the “Parks” name to Super Bakery Inc., which “specializes in nutrition-oriented foods for schoolchildren and sells food products to the armed services.”

Tyson Foods bought Hillshire Brands Co. and thus acquired the “Ball Park” trademark, which has been used to sell frankfurters for over fifty years.  The Ball Park brand generates over $500 million in sales, primarily from sales of Ball Park-branded hot dogs but also in part from the sale of frozen, pre-cooked hamburger patties sold under the Ball Park brand. Research conducted between 2012 and 2014 found that over 90% of adults over the age of eighteen were familiar with the brand.

In 2014, Hillshire launched a new line of franks under the name Park’s Finest, which Parks alleged constituted false advertising and trademark infringement.  Park’s and Finest are on separate lines of the package, with Hillshire’s Ball Park trademark superimposed in the center. Radio and TV ads describe the product as “Park’s Finest from Ball Park.” A cross-sectional view on the front package also allegedly showed “what appears to be a sausage link,” rather than a frankfurter. Thus, Parks argued, defendants “are marketing and selling their product as PARK’S FINEST sausages.”
Parks sought a preliminary injunction, relying only on its false advertising claim.
Why I love Lanham Act cases: now we learn a little about the market for hot dogs, which is three-tiered.  “At the bottom of the food chain” (heh) are meat hot dogs, primarily consumed by children.  The intermediate level has “beef hot dogs” such as Ball Park hot dogs.  At the top are “super premium hot dogs,” which “tend[ ] to be beef hot dogs with additional benefits, whether that be flavor, or simpler ingredient statements.” Super premium is the fastest growing segment of the market, and includes brands such as Nathan’s Famous and Hebrew National.
Park’s Finest targets this category.  Compared to a Ball Park-branded hot dog, a Park’s Finest hot dog has “more seasoning, a coarser grind, [and] a bit more snap to the exterior” as well as “a cleaner ingredient label” and “no added preservatives” or nitrates. In choosing Park’s Finest as the name, Hillshire desired to invoke its Ball Park brand but also to “communicate[ ] to consumers that [Hillshire was] producing something different and better.” Hillshire viewed Park’s Finest as  a “clear shorthand version of Ball Park” that “convey[s] that this is Ball Park’s finest hot dog.”  Testing found that the name “evoked thoughts among consumers of going to the ball park and that consumers linked PARK’S FINEST to [Defendants’] BALL PARK brand.”  
The packaging was designed with the same objectives in mind (differentiate but link, no pun intended, these hot dogs to the Ball Park brand) and also to call attention to the product’s seasoning, flavors, and lack of artificial preservatives. “When compared to cross-sectional views of the inside of one of Defendants’ Ball Park-brand hot dogs and one of Defendants’ Hillshire smoked sausages, the [cross-sectional view of the] Park’s Finest hot dog bears closer resemblance to a Hillshire smoked sausage than to a Ball Park hot dog.” (When looking at actual sizes, however, the Park’s Finest frank has a notably smaller diameter than a Hillshire smoked sausage.)  This appearance comes from the coarser grind of meat and additional seasonings used in the Park’s Finest product.  But Hillshire didn’t want to sell the product as sausage, because the hot dog market is so much bigger.  Thus, “uncured beef frankfurters” appears prominently on the package.
Park’s Finest had the “biggest launch in the last four years within the hot dog category.”  When he first saw Park’s Finest, Patrick Caputo, an employee of Dietz & Watson and Account Manager for the Parks Sausage Co., believed that the product consisted of link sausages. Giuseppe Harris, an employee of Super Bakery and Marketing Manager for Parks products, had a similar first impression.  One consumer contacted the Parks Sausage Co.’s consumer telephone number “to complain about ‘Parks from Ball Park brand.’” Two others complained to Caputo about the nitrate content of sausage products sold under the Parks name, saying that TV commercials said that Parks sausages didn’t contain nitrates. Caputo believed they were referring to the ads for Park’s Finest, which do say that there are no nitrates.  However, Tyson’s VP and GM of the Ball Park brand, didn’t learn of any instances of consumer confusion, though he was in a position to do so.
The court found that the challenged statement wasn’t literally false.  First, the court determined that the meaning of Park’s Finest was ambiguous.  Parks argued that the only plausible meaning of PARKS was Parks, so the name Park’s Finest meant that Ball Park was now offering Parks’ “finest” products.  Defendants responded that Park’s, in context, unambiguously referred to the Ball Park brand.  While the connection between Park’s Finest and Ball Park might not have been readily apparent if Park’s Finest appeared in isolation, the context made that connection, both on the package and in ads.
Parks argued that this connection was implausible because the Ball Park trademark is associated with franks, not sausages, and that defendants were marketing the Park’s Finest product as a sausage.  But that wasn’t true: they were marketing it as a frank, and even if a customer mistakenly believed that Park’s Finest was a sausage, or even were it a sausage, a consumer could still plausibly understand that Park’s Finest, in context, referred to the Ball Park brand.  Even if there was currently no Ball Park-sausage association, Hillshire “would effectively create that association by integrating the Ball Park trademark into the Park’s Finest word mark.”  (Hillshire already sells about $100 million/year of beef patties under the Ball Park brand.) 
Thus, the name was not unambiguously false. But the court declined to find that this was one of the rare cases in which a claim is so unambiguously true that no further factfinding was required, rejecting defendants’ argument that Park’s Finest unambiguously referred to Ball Park. In defendants’ own survey, out of 200 survey respondents, 26 of them (13%) identified “Parks” or “Park’s” as the company responsible for making the product.  Another 41 respondents (21%) responded that they “did not know” which company made it, and 23 respondents (12%) responded that it was made by a company other than “Ball Park,” “Parks,” or “Park’s.” 116 respondents (58%) identified “Ball Park” as the responsible party.  Because respondents could give multiple answers, between 81-90 respondents, or 40.5-45% of the sample, failed to identify “Ball Park” as the source, making Park’s Finest not unambiguously a reference to Ball Park.
However, whether Park’s Finest misrepresented the nature, quality, or characteristics of the franks depended on whether consumers who didn’t get the Ball Park connection would be deceived into believing that the franks were plaintiff’s “finest.”  (There was no other identified third party who might be referenced.)  Consumers’ failure to understand an association between Park’s Finest and Ball Park wasn’t enough to show misleadingness; in the absence of some further connection, “the name would contain little to no meaning at all, other than the meaning the name derives from its association with the product.”  A seller is free to pick a trade name with no inherent connection to itself, as long as that name isn’t infringing or otherwise deceptive.  Indeed, the court commented, it was questionable whether “a consumer’s mere failure to appreciate the relationship between the Park’s Finest name and the Ball Park brand—if determined to be in some way deceptive—would relate to the ‘the nature, characteristics, qualities, or geographic origin’ of the frankfurters.”
The false advertising claim “effectively collapses into an inquiry into whether consumer surveys or other evidence show that a substantial number of consumers would associate the Park’s Finest name with Plaintiff’s ‘Parks’ name.”  This meant a “substantial overlap” between the §43(a)(1)(A) and (a)(1)(B) claims (a prior registration was allowed to lapse, which is the source of much of Parks’ woes here), and the court thus seemed skeptical that this was an appropriate use of §43(a)(1)(B), though it gave Parks the benefit of the doubt even though false advertising supposedly didn’t require Parks to show secondary meaning. (Which is, by the way, one very good reason to channel trademark claims into §43(a)(1)(A), since we spend a lot of energy preventing people who can’t show that they have valid marks from suppressing the use of similar terms.  Query, however, whether there can be materiality without secondary meaning.)  Anyhow, Parks also made some false advertising-ish allegations, in that they claimed that was false to designate Park’s Finest as the “finest” of the Parks products, suggesting that other Parks products were less fine.
However, Parks did not produce a survey, only the statements of Caputo and Harris, employees of Parks licensees.  Their declarations were insufficient to show likely deception. Even assuming that the statements of the three consumers Caputo mentioned supported a finding of likely confusion, the reactions of three consumers couldn’t be extrapolated to find likely deception of a substantial number of consumers. Nor did Harris and Caputo’s opinions that there would be confusion add any support, given their connections with Parks. Not only was their testimony self-serving, but also, as people who were intimately familiar with Parks, “their perspectives are not representative of the perspectives of consumers who may encounter the Park’s Finest product.”
Meanwhile, defendants did conduct a survey.  Only 13% of respondents identified “Parks” or a variant thereof as the company that made Park’s Finest.  But a consumer’s identification of the name “Parks” is different from a consumer’s identification of Parks, and respondents were subsequently asked whether they’d previously heard of the company they identified as the source.  Only 4% of the sample said yes, and an additional 1.5% were unsure.  When the 4% were asked to name other products made by the company they named, only one was able to identify any of Parks’ products.
Parks objected that its reverse confusion theory meant that defendants surveyed the wrong universe, but that didn’t help given that their theory here was one of false advertising.  A survey limited to people who “had purchased hot dogs at a grocery or convenience store in the past six months and expected to do so again in the next six months” and who were also required to have “purchased 100% beef hot dogs in the past six months,” was “a proper attempt to limit participation in the survey to the persons to whom Defendants’ statements are addressed.”  Other alleged flaws in the survey also didn’t significantly undermine it.  (For example, Parks argued that the survey was leading because it called the products “hot dogs” and not sausages, but the package clearly says “frankfurters.”  Also, the court didn’t buy Parks’ argument that the potential for deception depended on the type of processed meat product the consumer believed Park’s Finest to be, in the absence of evidence, especially given that Super Bakery does use the Parks name to sell other kinds of meat.  While this argument wasn’t devoid of merit, it just wasn’t sufficient to reject the survey.)  Regardless of any flaws, Parks failed to meet its burden to show likely deception.

Friday, July 31, 2015

No silver bullet for innovator in bullion market

Provident Precious Metals, LLC v. Northwest Territorial Mint, LLC, 2015 WL 4522923, No. 3:13–CV–02942 (N.D. Tex. July 27, 2015)
Interesting TM/copyright case that straddles the boundaries of so-called aesthetic and “utilitarian” functionality: is the accuracy of a replica product a matter of utilitarian or aesthetic functionality?  Does it make any difference?
Provident sued NWTM seeking a declaratory judgment of invalidity and non-infringement of NWTM’s alleged copyrights, trademarks, and trade dress rights; NWTM made the counterclaims you’d expect. Provident and NWTM make precious metals in the shape of famous types of ammunition (“replica bullets”). [Slackjawed wonder/gender analysis of this market omitted]
NWTM first conceived of the idea of using silver bullion to copy famous ammunition into sizes that would easily convert to weights in even troy ounces in 2008.  NWTM therefore measured sample ammunition with a digital caliper and micrometer, viewed pictures of sample bullets on the Internet, and consulted published industry standards for ammunition dimensions. NWTM also bought hundreds of different ammunition rounds, focusing on popular shapes and sizes, and sought to recreate bullets at volumes that approximated even weights. NWTM altered the dimensions of the original .45 round it chose to match the desired bullion weight, but still sought to appeal to a “gun person, or anyone buying bullion.” NWTM ultimately resorted to CAD software to make the code used by its manufacturing machines.
According to the designer, once the bullet was “machined,” it would be weighed, and if it “weigh[ed] right they wouldn’t adjust it to meet [the particular dimension].”  The weight dictated the form.  NWTM stamped the base of each bullet with a “head stamp” containing certain information, including the product’s metal designation (silver, or “Ag”), source (NWTM), weight, and purity. “The format of the head stamp intentionally resembled the format of head stamps on actual ammunition, and was intended to convey that the replica bullet ‘has intrinsical [sic] value,’ similar to money.”  NWTM sells its replica bullets in boxes or bags designed to “evoke the feeling of military surplus ammunition,” and to “best present the product to a military customer, to evoke the military design.”  It advertised its replica bullets, which went on sale in January 2013, as “virtually identical to their ammunition counterparts,” claiming for example that one bullet “faithfully duplicates the famed .50 BM so well-known to military personnel and weapon enthusiasts,” that its silver 7.62 NATO (.308) is a “near exact, non-firing replica,” and so on.

Provident claimed to have come up with the replica bullet idea independently of NWTM, but whatever.  It too used CAD and minor adjustments to achieve the desired weight.  Provident instructed its manufacturer to make the head stamp look as similar to live ammunition as possible, and to include the weight, purity, composition, and “PM,” Provident’s “mint mark.” Both parties used Tahoma font, with Provident contending that this was the font that looked closest to real ammunition.  Provident designed its packaging to “look like an ammo box,” and began selling copper replicas in 2013, with silver arriving in November.

NWTM filed three related trademark applications. In January 2013, it filed an ITU application for “SILVER BULLET BULLION,” for use in association with “[p]recious metals, namely, gold and silver bullion,” “BULLION” disclaimed.  This was published for opposition in June 2013, and Provident duly opposed; PTO proceedings have been suspended pending the outcome of this suit.  (B&B and ITUs really don’t fit together, do they?)
In August 2013, NWTM filed another ITU application for “BULLET BULLION,” for use in association with “[p]recious metals, namely gold and silver bullion.”  The PTO issued an office action refusing to register the mark as merely descriptive; the application has been suspended pending final disposition of a prior application filed by a third party, but the examiner rejected NWTM’s argument that the term wasn’t descriptive.
In March 2014, NWTM filed another “COPPER BULLET BULLION,” which Provident opposed after it was published for opposition.
In June 2014, NWTM filed five copyright applications for its five types of silver replica bullets, listing them as “sculptures.”  The Copyright Office denied registration because the new material did “not contain a sufficient amount of original authorship.”  
The court turned first to trademark.  Under governing precedent, “the concept of descriptiveness must be construed rather broadly.”  If imagination is required to connect the term to the product, it’s suggestive; if the term conveys information about the product, it’s descriptive.  Alternatively, courts ask “whether others in the same business would generally need the word to adequately describe their product or service.”
All three claimed word marks, SILVER BULLET BULLION (SBB), COPPER BULLET BULLION (CBB), and BULLET BULLION (BB), weredescriptive, because they immediately conveyed the “characteristics, qualities, and ingredients of NWTM’s replica bullets without requiring the consumer to make any mental leap.”  Bullion is a generic term for precious metals in mass/in bars or ingots.  Though copper isn’t conventionally understood as bullion, the price increases of the last few years, it was reasonable to define “bullion” broadly enough to include copper; Merriam-Webster defined “bullion” as “metal in the mass.”
NWTM argued that the terms were meaningless prior to the existence of its replica bullets, and consumers might have thought of images of bars or coins with bullet-related art on them.  Plus, the SBB and CBB marks had been published for opposition.  But publication for opposition entitles NWTM to no presumption (only actual registration does).  Second, the descriptiveness test isn’t applied in the abstract: it’s applied to these products, which are replica bullets.  The metal words describe the material of the replica, and “bullet” describes the shape.  In the alternative, competitors would “almost certainly” need to use the words in the marks to describe their products.  (I understand why the court didn’t go this far, but silver, copper, and bullet at least are generic.)  “There are simply a limited variety of descriptors that can be used to describe products of this sort, and granting NWTM the trademarks it seeks would effectively preclude potential competitors from marketing goods with the terms ‘bullet’ or ‘bullion.’ NWTM has simply not addressed how its competitors could describe their products without using the terms employed in NWTM’s SBB, CBB, and BB marks.”
NWTM couldn’t show secondary meaning. “The burden to establish secondary meaning is substantial and requires a high degree of proof.”  NWTM didn’t produce any evidence of secondary meaning, and, “in a borderline case where it is not at all obvious that a designation has been used as a mark, survey evidence may be necessary to prove trademark perception.”  NWTM argued that it lacked survey evidence “because NWTM’s customers tend to buy bullion as a hedge against what they see as the U.S. government’s failing monetary policy, and those same customers would be skeptical of a phone call inquiring about the manufacturer of the bullion products they own.”  Nonetheless, the burden of proof was still on NWTM.
NWTM also sought to protect its alleged trade dress, described as a bullion piece of silver or copper that:
(1) has a head stamp with a central circular groove (which suggests the primer cap for a real bullet), surrounded by the following information in a circular pattern towards the outer edge of the base of the bullion piece:
(a) metal designation such as “Ag” or “Cu”;
(b) indication of purity;
(c) a weight; and
(d) abbreviation for the company name;
(2) is sold in packaging that evokes a military or gun enthusiast feel by including:
(a) a caliber designation that is suggested by the general shape of the bullion piece (i.e., .45 ACP, 7.62 NATO (or .308), .50 BMG, or 20 MM, or 12 gauge for shotgun shell);
(b) a designation of “grains” associated with gun powder of the bullet, giving an indication of the power of the associated real bullet type; and
(c) is sold in boxes in rows that evoke the feeling of a real box of ammunition, or in a plastic bag container with the same information in (a) and (b); and
(3) while not being an exact copy or “replica” of a real bullet, has the shape of the bullion piece that evokes the feeling of such a bullet. [NB: if you have to describe your trade dress as evoking a feeling, you are probably in trouble.]
The head stamp was functional.  It identified the weight, composition, purity, and source of the bullion used to make the replica bullet, as is apparently standard practice for bullion products. NWTM argued that the information could be located anywhere on the bullion piece, and that the combination of elements—head stamp, shape, and packaging—had a consistent look that was inherently distinctive.  Nope. 
[T]he features that comprise the head stamp, and the head stamp considered as a whole, were designed to emulate the head stamp on actual ammunition, and therefore, are “essential to the use or purpose” and “affect the cost or quality” of the head stamp. NWTM sought to establish a link with military service members, veterans, and gun enthusiasts. Thus, the head stamp is functional because it emulates actual ammunition, which would give NWTM a non-reputation-related advantage over its competitors, particularly in appealing to military service members and gun enthusiasts, who would very likely perceive head stamps that did not resemble actual ammunition as being of lesser quality.
The head stamp was also not inherently distinctive.  (Although the court didn’t mention this, it can’t possibly be under Wal-Mart: it’s product design, not product packaging.)  Each of its features emulated the head stamp on actual ammunition—it used a standard font, and the circular groove on the base simulated the primer of actual ammunition. If it created a distinctive, consistent look, “that look is that of actual ammunition.” Putting the information elsewhere on the bullet “would undermine the theme and purpose of NWTM’s replica bullets—emulating actual ammunition.”  None of the elements were suggestive, arbitrary, or fanciful, either individually or taken together.

Packaging: NWTM’s packaging referenced the caliber of ammunition and the grain count, which made the packaging resemble, and “evoke[d] the feel of,” real ammunition boxes. This too was functional, because it served to remind consumers of an actual ammunition box, “and allowing it to do so with trade dress protection would put NWTM’s competitors at a significant non-reputation-related disadvantage.”  Even if the packaging were distinctive and nonfunctional, there would be no confusion, as a matter of law. Provident prominently featured its name on the outside of its boxes, and the text on its packaging was inscribed directly on the top of the boxes. NWTM’s boxes had text inscribed on a label on the outside cover that included many of the descriptive features included on the head stamp, with NWTM inconspicuously included on the bottom left corner of the label. There was no “meaningful” evidence supporting a likelihood of confusion other than the general similarity of shape.
Bullet shape: this was unprotectable as lacking distinctiveness.  Any differences between NWTM’s products and actual ammunition were imperceptible to actual consumers, and were also functional. Changes in dimension and weight were designed to make products that weighed in even troy ounces, in part in order to give them intrinsic value as a financial investment—“the weight dictated the form,” according to NWTM’s designer. 
NWTM argued that the combination of these functional, nondistinctive features were distinctive in their “total impression.”  The court wasn’t persuaded.  “[T]he overall impression of the elements, each of which has only trivial differences with the features of actual ammunition, serves to identify NWTM’s product as a bullet.”
Even if the trade dress were nonfunctional, NWTM failed to show secondary meaning. NWTM argued that it heavily promoted the new product; that it sold over 191,000 pieces of SBB and CBB through June 2014; that it had 100% of the market share for silver bullet bullion from January to October 2013; that Provident copied NWTM; that, according to NWTM’s CEO, at least four customers contacted him to ask whether Provident’s products were in fact manufactured by NWTM, and a customer expressed confusion on Provident’s Facebook page; and a video on the “Salivate Metal” YouTube channel featured a reviewer pondering whether the real manufacturer of Provident’s product was actually NWTM.
Even if all of this unambiguously weighed in NWTM’s favor, there was still no empirical evidence of secondary meaning.  There was no admissible consumer testimony or survey evidence; its customers’ posited unwillingness to be surveyed again didn’t relieve it from its burden, “particularly given that its customers constitute a unique demographic.”  (That’s one way to put it.)  The time of use weighed against NWTM—other cases have found 3½ years of exclusivity to be “relatively brief,” while NWTM had 10 months.  While the substantial amount of NWTM’s sales would weigh in its favor, that wasn’t enough.  NWTM claimed that its marketing was successful but provided no evidence on the amount it spent marketing the trade dress.
Turning to copyright:  “A mere reproduction of a work in a different medium does not constitute a sufficient variation to meet the originality threshold for copyright protection.” See L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 491 (2d Cir.1976).  NWTM argued that its replica bullets were original because they didn’t correspond to actual ammunition, sometimes varying in dimension by a quarter of an inch or more. NWTM argued that it was an innovator and that there was significant creative effort that went into making the product, including testing, trial and error, and the creation of numerous prototypes between 2008 and 2012.
No again.  Any differences between the replica bullets and actual ammunition were trivial or functional: (1) the composition, i.e., silver or copper (functional); (2) the dimensions (imperceptible and functional in order to make a bullet in even troy ounces); (3) the shape (functional); and (4) the weight (functional).  Even were that not so, merger would still apply: the expression of a bullet in bullion couldn’t be separated from the idea. “[T]he only way NWTM can express a .45 ACP design is to replicate it, and if NWTM were to make significant variations in its replica, the product would no longer be identifiable as a .45 ACP design.”
NWTM argued that Provident engaged in false advertising/unfair competition by claiming to have its own mint, allowing it to minimize manufacturing costs and pass on savings to consumers. But NWTM failed to timely identify false advertising as the foundation for its unfair competition claim, which it earlier said was based on trademark infringement.  Also, without copyright and trademark claims, there were no actionable unjust enrichment claims.

Thursday, July 30, 2015

Amicus supporting rehearing in MTM v. Amazon

IP Professors, with excellent assistance from Cathy Gellis.

Limiting remedies when a descriptive fair use defense fails

Anhing Corp. v. Thuan Phong Co., No. CV 13-05167, 2015 WL 4517846  (C.D. Cal. Jul. 24, 2015) 
This post-trial ruling covers a lot of detailed ground on descriptive fair use, unclean hands, and remedies.  Anhing successfully sued Thuan Phong for trademark infringement; the court denied Thuan Phong’s motions and granted a permanent injunction. [NB: the Westlaw version gets rid of most of the non-English orthography; I tried to fix that but my apologies for missing instances.] 
Anhing imports food and related products, and has a private label brand, “MỸ THO,” which has existed for thirty-five years. Here are two of its rice products:   Anhing registered MY-THO (no tilde) for rice sticks and rice vermicelli in 1986.  According to the registration, “MY–THO” has a dual meaning in Vietnamese of “beauty and longevity” and “pretty autumn.” At some point, Plaintiff also began selling rice noodles in packaging with the words “MỸ THO” accompanied by ®. 

Thuan Phong is a company that began and continues to operate in the city of Mỹ Tho, Vietnam.  It makes rice paper, sold under the TUFOCO logo. The package features BÁNH TRÁNG MỸ THO in red lettering across the top and three green bamboo trees.  In 2008, it registered the mark and design “BÁNH TRÁNG MỸ THO TUFOCO DAC BIET DE LAM GOI CUON VA CHA GIO VIET NAM BAMBOO TREE HIEU BA CAY TRE VIETNAMESE RICE PAPER” for rice paper.  In 2010, Thuan Phong introduced a rice noodle product with similar packaging.   

The parties began doing business together in 2004, when Thuan Phong agreed to make rice paper for Anhing’s White Elephant Brand private label.  In 2010, Anhing discovered Thuan Phong’s US sales of rice paper with BÁNH TRÁNG MỸ THO on the label, which Anhing considered confusingly similar to its BÁNH TRÁNG MỸ-THO rice paper, and Anhing had the same objections to Thuan Phong’s “BÁNH PHỞ MỸ THO” rice noodles, given Anhing’s “BÁNH PHỞ MỸ-THO” rice noodles.  In response to Anhing’s requests, Thuan Phong maintained that the terms weren’t used as marks, but rather as information about the geographic source of the products.  However, Thuan Phong agreed to discontinue these particular phrases and to sell under “BÁNH PHỞ SẢN XUẤT TẠI THᾺNH PHỞ MỸ THO” and “HỬ TIỀU SẢN XUẤT TẠI THᾺNH PHỞ MỸ THO.”  These phrases state more clearly in Vietnamese that their rice noodles are produced in the city of Mỹ Tho.  Anhing wasn’t satisfied, because the geographic designations would still appear at the top of Defendant’s packaging, with the words “MỸ THO” in bold red lettering and in the same font size as the rest of the words on the packaging. Thuan Phong refused to move the words “MỸ THO” to the bottom of its packaging, and it didn’t change its rice paper packaging or add similar prepositional phrases.     

Anhing sued for infringement of its registered “MY-THO” mark as well as for infringement of its unregistered MỸ-THO mark and for its unregistered trade dress.  A jury found willful infringement of the registered mark and lack of fair use.  However, the jury found that Anhing didn’t prove ownership of a valid mark in “MỸ-THO” (with tilde) or likely confusion with respect to its trade dress.  The equitable issues remaining for the court were Thuan Phong’s affirmative defenses of laches and unclean hands, a counterclaim under the UCL, and Anhing’s request for a permanent injunction. Thuan Phong also sought judgment as a matter of law.   
The court rejected Thuan Phong’s laches defense based on Anhing’s delay in filing suit. Thuan Phong argued that Anhing knew about the infringement as early as 2004, when one of its representatives visited Thuan Phong’s factory, but failed to file suit until July 2013.  Laches doesn’t bar a suit against a deliberate infringer, where the public’s right not to be confused is paramount and where the infringer’s hands are unclean. Given the jury findings and instructions, its finding of “willful use” amounted to a finding of willful infringement.  The jury was instructed that it should award profits if it found willful infringement and skip an accounting otherwise, and it stated $8690.52 as Thuan Phong’s profits attributable to infringement.  Separately, Thuan Phong failed to show prejudice either in its ability to bring evidence forward or in its reliance on Anhing’s inaction to grow its business, given its position that it wasn’t using MỸ THO as a mark but as a statement of information—any delay couldn’t therefore have injured its brand or reputation.
The court further rejected Thuan Phong’s unclean hands defense based on (1) Anhing’s use of ® on rice products not disclosed in its registration for the “MY THO” trademark and next to the unregistered “MỸ-THO” mark; (2) geographic misleadingness; and (3) inequitable conduct in securing its registration. Inequitable conduct must relate to the use or acquisition of the plaintiff’s claimed rights to justify the defense, but need not be illegal or criminal.
The wrongful use of ® disturbed the court; some evidence suggested that the misuse was not inadvertent.  But it still was not sufficiently related to the subject matter of Anhing’s claims based on “MY–THO,” especially given the Ninth Circuit’s focus on balancing the parties’ willfulness and harms to each other.  (Given that the marks are so similar, it seems likely that they’d qualify for tacking if Anhing went ahead and tried to register MỸ-THO.)

Geographic deceptiveness: If the jury found that MỸ THO is confusingly similar to MỸ-THO, Thuan Phong argued, Anhing shouldn’t be allowed to use the mark, because Mỹ Tho is a city.  But the jury didn’t find confusing similarity in the abstract; it found that Thuan Phong’s use of MỸ THO as a trademark was confusingly similar to Anhing’s mark, which didn’t mean that MỸ-THO was misleading or deceptive as to geographic source.  Also, this too was unrelated to Anhing’s acquisition or use of the right it claimed.  (Hmm.  Neither of these reasons seems right to me.  Geographic terms can be used as marks, so there’s no incompatibility between geographic indication and source indication; indeed that’s why we have a descriptive fair use doctrine—to preserve others’ rights when a descriptive term has successfully been used as a mark.  And if the term is geographically deceptive, then Anhing’s claim against a producer who is in fact from the location is fundamentally related to its deceptive appropriation of a geographic term (or a confusingly similar version of the term, since I can’t see why the confusion wouldn’t go both ways).)  The court says that the right at issue is “MY–THO,” and so whether MỸ-THO is understood as a geographical reference is irrelevant, and that the connection between the terms is too tenuous to support an unclean hands defense.  But the connection was strong enough to make the terms confusing!
The court further found insufficient evidence of geographic deceptiveness. Though all of Anhing’s products were made in Thailand, there was conflicting evidence over whether the phrases displayed on its packaging was a geographic reference or pure trademark use.  Thuan Phong didn’t offer persuasive evidence to show that the mark’s “primary significance” was to refer to the city of Mỹ Tho, or any evidence of actual consumer confusion.   The products were all labeled as having been produced in Thailand.   
Unsurprisingly, Anhing’s failure to disclose the existence of the city when it registered its mark also failed to constitute sufficient inequitable conduct to justify an unclean hands defense. There was no evidence of Anhing’s knowledge of the city, understanding that it should disclose the city’s existence, or intent to deceive the PTO.
There was also no basis for Thuan Phong’s UCL counterclaim based on the misuse of ® because there was no evidence that such use caused Thuan Phong to suffer any damages. Nor did a claim based on alleged misrepresentation of source succeed—the jury could reasonably have concluded that MY-THO didn’t stand for a geographic location in most consumers’ minds.
The court also rejected Thuan Phong’s motion for judgment as a matter of law, focused mostly on its descriptive fair use defense.  Though the jury’s finding of likely confusion didn’t preclude the fair use defense under KP Permanent, the evidence supported a finding of use as a mark.  Even after Thuan Phong’s changes, the words still appeared prominently at the top and in bold red lettering, albeit in the same font and color as other words indicating the type of product (rice noodles) and the prepositions indicating geographic source.  “The jury could have found Defendant’s refusal to move the reference to ‘MỸ THO’ to the bottom or back of its packaging, or to reduce the size of the lettering, as evidence Defendant did not take sufficient precautionary measures despite its knowledge of potential infringement,” and likewise the jury could have found that its failure to change the wording on its rice paper packaging indicted an intent to attract public attention. The jury could have found that Thuan Phong displayed MỸ THO more prominently than other design features, such as its blue “TUFOCO” logo and the three green bamboo trees. 
Likewise, the jury could have found a lack of good faith, given Thuan Phong’s conduct after Anhing sent its C&D.  Thuan Phong expressly acknowledged a likelihood of confusion and agreed to modify the wording on its packaging to more clearly state its products were produced in Mỹ Tho, but refused to move this “information statement” to a less prominent place on its packaging. That refusal, combined with the lack of evidence that Thuan Phong consulted legal counsel, was sufficient to support a finding of lack of good faith.  (Wow!)  Finally, the jury was entitled to find that the use was not purely descriptive, because of testimony that Mỹ Tho isn’t a famous city and consumers don’t associate the words with a geographic place. “[T]he evidence is consistent with a finding that consumers do not interpret the words to refer to Mỹ Tho city, and that Defendant did not use the words in a trademark sense.”

As to willfulness, though there was evidence that Thuan Phong independently designed its rice paper packaging before the parties began doing business together, and chose to use “MỸ THO” not to refer to competing products but to inform consumers where its products were produced, that didn’t negate willful infringement given its continued use of the term after it became aware of the MY-THO mark. Nor did Thuan Phong’s own registration, from 2008, preclude a finding of willfulness. Though the registration was evidence of lack of willfulness, it couldn’t be viewed in isolation, and was undermined by Thuan Phong’s own statements in response to the C&D:
The words “BÁNH PHỞ MỸ THO” on the packing of Anhing Corporation and on the packing of Thuan Phong Company are likely to cause confusion in the marketplace. Thuan Phong [C]ompany does not want to use alike name of Anhing’s rice noodle (sic ). We will correct the name of our product on packing clearly in order that it will be quite different to the name of product of Anhing Corporation (sic).
“Use of an infringing mark, in the face of warnings about potential infringement, is strong evidence of willful infringement.” Likewise, failure to consult trademark counsel where such consultation would be reasonable supported a finding of willfulness.
Similarly, the evidence supported a finding of likely confusion, despite what the defendant characterized as minimal evidence of actual confusion.
The jury also awarded $10,000 in actual damages, which was supported by reasonable inferences given Anhing’s evidence that experienced a decline in sales after Thuan Phong entered the domestic marketplace, selling apparently identical/confusing staple products at a cheaper price; Anhing’s other brands didn’t suffer a decrease in sales at the same time.  The amount awarded was about 10% of Anhing’s claimed losses, making it a reasonable inference from the evidence.
Anhing also secured a permanent injunction. “Evidence of intangible injury, such as a loss of customers or damage to a party’s goodwill, can constitute irreparable harm. Evidence of a loss of control over one’s business reputation may also suffice.”  The trial evidence showed the necessary loss of control/harm, particularly because of testimony that Thuan Phong’s products were of inferior quality.  “That the jury found a likelihood of confusion substantiates this conclusion and further supports a finding of irreparable injury.”  (In other words: likely confusion is irreparable injury, so eBay doesn’t matter.) 
Irreparable injury meant legal remedies were inadequate.  “The evidentiary burden Plaintiff faced in establishing its actual damages at trial also favors injunctive relief [even though Anhing submitted evidence on actual damages and the jury made a finding]. Perhaps most important, however, is the risk that Defendant will continue to engage in infringing conduct.”
The balance of hardships favored Anhing; Thuan Phong argued that it would be harmed by being unable to adequately convey the geographic source of its products, but the fair use finding made this argument fail, though it affected the appropriate scope of an injunction. The public interest likewise favored a tailored injunction preventing confusion while allowing fair use.
Anhing argued that Thuan Phong should be limited to using the phrase “Mỹ Tho Industrial Zone” on the back of its packaging, in black ink and no more than 4 centimeters in length and 0.2 centimeters in height. There was no evidentiary basis for requiring Mỹ Tho “Industrial Zone”; the parties didn’t show that consumers would more readily recognize “Mỹ Tho Industrial Zone” as an indication of geographic source than simply “Mỹ Tho.” Nor was there an evidentiary basis for the requirement the source statement be in black ink. Thuan Phong’s packages use red, blue, green, and white ink; black ink is only used on the back, to convey information not included in its trade dress, such as nutrition facts, ingredients, and directions for use. Because the jury found no likely trade dress confusion, requiring black ink would be an unfair limitation on Thuan Phong’s trade dress rights. A ban on putting a source statement on the front of the products was also overly burdensome; some of Anhing’s own products included a statement of geographic source on the front. The jury’s confusion finding didn’t mean that any and all uses of Mỹ Tho on the front of packaging would necessarily infringe.  The same reasoning led the court to reject an absolute size constraint. “Certainly, the jury’s finding of willful infringement requires a change to Defendant’s current use of ‘MỸ THO.’ But it does not require the wholesale relegation of any and all reference to the words to an entirely inconspicuous location.”  The court allowed a six-month sell-off period, given that Anhing hadn’t shown that six more months of use would cause a significantly increased risk of harm.
Thus, Thuan Phong was enjoined from using “Mỹ Tho” in a manner likely to cause confusion; use in the same/similar manner as existing packages would be likely to cause confusion.  It had to immediately cease importing infringing products to the US.  It would be permitted to use Mỹ Tho as a location designator: “The text of the location designation shall state, in Vietnamese, ‘Product made in Mỹ Tho, Vietnam’ or ‘Produced in Mỹ Tho,Vietnam,’” and it couldn’t be bigger than the letters TUFOCO in Thuan Phong’s logo.  If on the front of the package, it couldn’t be at the top, above the “TUFOCO” logo and three bamboo trees. Thuan Phong was also ordered to immediately notify its distributors and customers in writing that it wasn’t associated with, affiliated with, sponsored by, or otherwise related to Anhing, including a copy of the final permanent injunction, and it had to immediately notify its wholesalers in writing that they were required to discontinue sales of the infringing products.     

Transformative use of the day, Lululemon edition

I can't wait to carry this bag around and watch the double-takes.  (Would also fit well on Welcome to Night Vale.)

Somehow the Coke bottle survived this dilutive free riding

1962 Doyle Dane Bernbach ad for the VW Beetle:

Headline: 2 shapes known the world over.

Text: Nobody really notices Coke bottles or Volkswagens any more. They’re so well known, they blend in with the scenery…. (The only reason you can’t buy a VW at the North Pole is that the Volkswagen people won’t sell you one. There’s no VW service around the corner.) We hear that it’s possible to buy yourself a Coke at the North Pole, though. Which makes us suspect there’s only one thing that can get through ahead of a Volkswagen. A Coke truck.

Wednesday, July 29, 2015

4th Circuit denies rehearing in In re GNC


If this ruling sticks and is actually applied in Lanham Act cases (something of which I am uncertain), then the resulting circuit split would probably justify Supreme Court review, given the Court's newfound interest in 43(a)(1)(B).

Friday, July 24, 2015

ISHTIP at Penn, part 9

Session 6 | Josh Sarnoff (DePaul University), Moderator
In Search of a Trade Mark: Search practices and Bureaucratic Poetry
Jose Bellido and Hyo Yoon Kang (University of Kent, UK)
Commentator | Amanda Scardamaglia (Swinburne Law School)
Enhanced searching: bureaucratic poetry—early manual searches. TM office was tasked with organizing words and devices for the first time: a new commodity of commercial information in signs and words and the ability to find them on the register.  Needed a system of classification to register marks; classifications changed over time to reflect commercial change.  Patent system classified according to subject matter; a different endeavor.
TM clerk was very different from patent counterparts—technical expertise v. experts in delicate art of distinguishing and classifying signs and words.  TM agent emerged, esp. after 1883 amendments opening registration for invented words, leading to significant increase in number of applications. Agents were skilled in navigating and searching the register.  Profession attempted to limit access to registration data, as patent agents had before them; closing of profession was linked to increasing openness of TM registers.  Index clerks and TM abstractors: index w/range of general marks; divisional index of devices arranged according to things like birds, buildings, and beasts; index arranged alphabetically by prefixes and terminal endings/suffixes—third index was the most important. 
Significant impact on development of TM law—led to deconstruction of words and assisted w/creating new marks by creating comparisons.  Deconstruction of words was evident in TM infringement cases as well, which focused on comparing sequences of letters in the same way.  Indexes were strategic—could find out about what competitors were doing b/c they’d register preemptively. Initially available only to agents but eventually opened to public, though agents were still powerful actors who specialized in searching the register.
Index cards and punched cards; final phase of computerized searching and privatization of search services—entrusted to private services, with a direct and immediate impact on search.  Computerization affected registrations: TMs were redesigned for mechanical purposes; transformed the way search happened—algorithms made it possible to search across subjects & geography quickly. Removed obstacles to manual search.  Transformed registry from visual markers of ownership to a metalevel database.
Discussion points: evidence of how the processes impacted the legislation itself?  Registries internationally were introduced around the same time.  What indexes if any were used at that time? Did that impact others’ indexes?  Did others’ indexes affect Britain’s? What were the tradeoffs in moving from mechanical to digital?  Paper says openness increased, but was the info the same?
Bellido: we wanted to explore bureaucratic property. Were surprised that first TM clerks in UK were A.E. Housman, Griffin, and other poets and antiquaries.  Bureaucratic poetry: indexing techniques have something to say about how TMs were conceived and developed.
Kang: TM is more complicated than patent b/c of two different forms of numbering—application number, then publication/registration. Can be complicated to retrieve full info.  Shows how unstable the nature of property is in legal practice.
Bellido: the more open the register was, the more experts could claim to be able to navigate this massive endeavor.  Legal expertise is founded in the management of retrieval tools that may look more technical/less interesting to legal scholars, but it’s everyday routine that constitutes the subjectivity of the TM expert.
Kang: relates to issue of legal agency: what does TM law actually do?
Bellido: registration practice can make the TM a thing/object of law/property even before there is a product in the market.
Kang: complicate picture of TM as consumer-driven. 
Bellido: registering invented words: impact on the legal profession—agents could then sell the possibility of providing new words to companies. We haven’t touched colonial indexing.   
You sometimes see trolling behavior around descriptive words/changing descriptive words around to try to make them registrable.  Or an agent could identify marks that were not quite as good but were usable until the register relaxed its standards.
The Modern Expansion of Trademark Rights, and How One Forgotten Treaty Made It Possible
Christine Haight Farley (American University Washington)
Commentator | Dan Hunter (Swinburne Law School)
Big claim: a forgotten treaty did a lot more than we thought it did in creating TM rights.  Hunter is not sure that this treaty made expansion of rights possible.
Paper is a detective story.  Interamerican Convention on Trademark and Commercial Protection (IACTCP) (1929).  TM comes from one of two or maybe three/4 foundations: passing off, concerns over confusion, search costs.  Does this convention give us new insights into the foundations of TM law?  Offers unfair competition as a distinct foundation.  Can we tell that the convention is a contributor to the modern day understanding?  Even if we could, so what?  The lawyer’s question: what does that tell us? 
Why was the convention ignored?  The architect of both IACTCP and the modern Lanham Act (1946) was one man, Edward S. Rogers, founder of first specialized TM firm and lover of unfair competition. 
Significance of Inter-American TM Convention (1929)—self-executing, and yet completely forgotten.  Modest number of cases in TTAB and courts, startlingly small # of cases.  Yet this is law.  Why forgotten?  Or has it been?  Are Ps all just dumb?  That seems unlikely.  Erie says there’s no general federal common law. Then there’s the Lanham Act §43(a), but also and especially 44(h) and (i).  The Lanham Act is, for all intents and purposes, federal common law, and the paper suggests that 44(h) and (i) need to be more talked about, b/c §44 is generally about recognizing TMs from outside the US; in fact Rogers included them largely to include unfair competition w/in the American system.
Questions: is the paper trying to get us to apply the Convention?  Are you arguing that unfair competition is foundational to the Lanham Act? Just b/c it’s in the Lanham Act doesn’t make it foundational.
Farley: A treaty still in force about TM—we don’t have many of those in the US.  Modern parallels were interesting about how the US makes the law of other countries and then has a strategy of making US law also through that undemocratic process.  Beyond that, this text is so interesting b/c of its novelties and timing, as well as the characters involved.  Inordinate influence of a couple of people has no modern analogue.  We can inadvertently make a mistake by privileging moments of development of IP; IP has not always had pride of place in law, society, or commerce.  Especially in TM law: early 20th c., it was a teeny field. TMs weren’t as valuable as they are; there was no TM bar, certainly not in Latin America, just a handful of people in US.  These particular people could have outsized influence.
The ground was shifting under their feet b/c the nature of marketing was changing, markets were changing, global markets were changing.  Amorphousness of IP and particularly TM.  Doing this history, evident how unsettled and indeterminate the foundations of TM are.  The story that we have an ancient idea of unfair competition, within it a new thing called TM law, isn’t right. These were simultaneously being developed and playing off one another.  Early development was a mess.  These guys are making up new law in this treaty.  Provisions don’t appear anywhere else.  Rights that suited US businesses at that moment for expansion into Latin America.
Then the Lanham Act comes along, and federal common law is pulled out.  Given the fact of the treaty, and their overlapping author, and that Rogers argues the first TM Supreme Court case after Erie, there was a unique opportunity to write a new chapter in TM as clean, settled, organized.  And we don’t get that. We get slivers of clarity, and then this space/haze around the rights. We focus on §43(a) as a site of expansion and a site for unfair competition, but these sections in 44 are what the drafters intended.
US corporations exercise their rights under the treaty in Latin America all the time; drafters expected that b/c of US dominance.  Lanham Act makes vague reference to the treaty (was explicit reference in first draft); Rogers argued that the treaty was self-executing and the SCt agreed.  Conclusion: give those rights to go after unfair competition to US citizens as well.  We didn’t get that. §43(a) was reaction of patent bar trying to put the brakes on what Rogers was trying to do in §44.  Rogers deals with this by taking §43(a), designed as substitute for 44, in the law too. 
RT: Another suspect: What is unfair competition that isn’t infringement?  Trade secret misappropriation was a possibility bruited about in the 1940s; maybe also antitrust violations.  But that kind of understanding seems impossible to recover now, especially given other laws—no court is going to find that there’s been a federal trade secret law for 70 years.  Trademark infringement-like activities that aren’t infringement but are still unfair competition?  US courts have no current understanding of what that gap might be: collapse b/t protection and registrability, absence of a passing off category in US law.
A: Many law review articles written at the time clearly stated that many things were under the umbrella of unfair competition but were nowhere collected; some understanding that it would be collected in Lanham Act: trade secret, tortious interference w/ business relations, antitrust.  Not so much interested in those things, but is interested in what the haze might be surrounding the concept.  (What might a clever P’s lawyer argue?)
Possible to bring something like a TM case w/o a possibility of confusion.  Rogers brought a case where there were nonproximate goods, a different name but phonetically similar, and no bad faith.  That was meant to be one of the §44 cases—not really a theory of confusing the public, but unfettered right to expand business.  Haze of rights as buffer around TM rights.  Rogers won, but we only talk about Frank Schecter, who lost; Rogers won by making subtle moves.
Q: compare to avoision in tax law: indeterminancy of whether someone is engaging in avoidance (ok) and evasion (not ok).  Infinite ingenuity of malefactors to get around intent of law w/o letter of law.
Madison: concepts in the law having agency v. the agency of individual humans like Rogers. Rhetorical constructs enabled by disciplinary angles. 
Q: role of timing?
A: may have been related to the Depression; also to Erie and resulting uncertainty for TM lawyers.  Treaty was a bit premature for the Latin American market.  Responding to a Europe in which the US lacked a big place, anticipating Americas as a market to dominate. WWII meant that vision didn’t come about as anticipated.  Not that many businesses were demanding these kinds of protections; just on the cusp.
Sarnoff: if the idea is to remember, do you expand rights in unpleasant ways?  Is this a comedy and not a mystery—a tale of laughter and forgetting?