My Trademark Fair Use Project

I have been relatively absent from the blog for a few weeks as I worked to complete two pieces of writing that have consumed all my time and brainpower. Both concern trademark “fair use” — the defenses available to those who use trademarks to facilitate their free expression.

The first piece, Four Free Speech Goals for Trademark Law, is a paper I delivered at a symposium last November hosted by the Fordham Intellectual Property, Media & Entertainment Law Journal at Fordham Law School. The good folks at that journal will be publishing the essay a little later this year. As the title suggests, it sets out some normative goals for trademark fair use. The underlying theme: while striking the right balance between free speech and the purposes of trademark law certainly is important, it is not the only goal. In fact, it is just one out of four. There are also aspects of the doctrine’s procedural structure that chill speech by making litigation long, expensive, and hard to analyze in advance. The abstract and full paper are available here.

I also submitted a much longer article to various law reviews this week building on the Four Goals piece. I hope one of them offers to publish it. The new article, Rethinking Trademark Fair Use, critiques current doctrine and suggests possible reforms to better satisfy the procedural goals that now are not being met. That paper is not available online yet, but here is the abstract:

The ever-expanding scope and strength of trademark rights has caused justifiable fears of a threat to free expression. Until now, however, concerned scholars focused on perfecting the substance of legal rules that balance free speech against other goals. This effort is misplaced because most cases raising these issues in recent years ended in judicial decisions that favored speech. The real danger arises from the procedural structure of trademark law’s various “fair use” doctrines, which generate excessive ambiguity and prolonged litigation before ever reaching such positive outcomes. Resulting administrative costs discourage speakers from using trademarks expressively in the first place, creating a classic chilling effect. This Article is the first to analyze these problems with trademark fair use comprehensively and recommend pragmatic reform to address the problems. Instead of adding more bells and whistles to already complex law, we should craft simpler affirmative defenses that reduce uncertainty and allow for quick adjudication.

Now that I have sent both of those out the door, I hope you will see a little more of me on this site in the coming weeks!

5 Responses to “My Trademark Fair Use Project”

  1. Congratulations, Bill, on getting your piece out the door! I’ve been looking forward to reading this one since first hearing you drop hints about it long ago. I find your calls for simplification and pragmatism very appealing. I wonder whether we can use your new piece in support of a more general point that intellectual property law needs more plain-old-property law to help weed out some of the needlessly complicated sui generis doctrines that have grown up in the IP domain? Dennis Crouch had a provocative essay a short while back asking why we can’t have a public metes-and-bounds database for patents the way we do with real estate. The very audacity of the proposal — of course you can’t describe patent rights with the same specificity as real property! who’s going to take the measurements? — nearly, but not quite, masked the deeper substantive truth it uncovered, to wit: we tolerate a lot more ambiguity in the reach of IP rights (and limitations on those rights) than we ever would in other property domains. That ambiguity might not be serving anyone, rights holders or the public, as well as the conventional wisdom would suggest.

  2. Congrats, Bill! I’m looking forward to reading the piece, and I know law reviews will be fighting for it.

    It strikes me that TM’s fair use doctrine is less well-mapped than copyright’s doctrine, and I wonder if this is because we think of marks as “mechanical”: labels, helping consumers find products. If so, might we need to help re-conceptualize trademarks, or trademark theory, in order to arrive at a coherent notion of fair use?

  3. Thanks guys.

    Derek: in a word, yes and yes. And, relatedly, because the very existence of a trademark is defined by subjective consumer understanding rather than objective events (like fixation in copyright), there is a habitual fact-intensiveness to trademark litigation. In copyright we can just assume for the sake of argument that IP rights might exist and cut directly to the fair use analysis (even if there are rights, it is a fair use…) TM cases don’t work that way, but they should.

    Tim: I haven’t seen Dennis’ patent piece, but there may be some synergy. I’d say a lot of IP doctrine could use some simpler rules, whether they come from property law or other sources, where excess complexity has grown like kudzu over the initial good intentions of some substantively sensible rule.

  4. I am happy to report that the longer piece will be running in the Iowa Law Review towards the end of 2008.

  5. […] new decision from a federal district court in Atlanta illustrates perfectly what I have been saying is right and wrong with trademark fair use […]