Ann Bartow

Not all uses of a trademark constitute trademark use. It is this proposition that brings consternation and confusion to courts and legal scholars alike. Mark McKenna looked into this abyss, the abyss looked back at him, and neither liked what they saw: a pitched but ultimately unhelpful ongoing debate about the “trademark use” doctrine. And so he sought to shrink this chasm with insightful analysis.

The abstract for Mark P. McKenna’s recent article Trademark Use and the Problem of Source is as follows:

This paper mediates a scholarly debate regarding the existence and desirability of a trademark use doctrine. It argues that trademark use is a predicate of liability under the Lanham Act, but those who advocate treating trademark use as a threshold question put much more weight on that concept than it can bear. Courts cannot consistently apply trademark use as a distinct element of the plaintiff’s prima facie case because trademark use is not separable from the question of likelihood of confusion. Under modern trademark law, courts can determine whether a defendant has made trademark use of a plaintiff’s mark only by asking whether consumers are likely to view the defendant’s use as one that indicates the source of the defendant’s products or services. Because such an inquiry is, by its nature, highly context-sensitive, trademark use is not a concept capable serving the limiting function advocates hope. The trademark use debate, however, reveals a fundamental problem in modern trademark law and theory. Consumer understanding, and particularly consumer understanding of source, defines virtually all of modern trademark law’s boundaries. But as trademark law’s dramatic expansion aptly demonstrates, these boundaries are never fixed because consumer understanding is inherently unstable, particularly with respect to an ill-defined term like source.

It is a terrific article because it lays out the complexities of the “trademark use” doctrine in a clear and comprehensive manner. McKenna does a wonderful job of explaining the approaches that courts take to defining and using the “trademark use” doctrine, and also summarizes and critiques the scholarly debate over the concept. McKenna astutely notes that if “trademark use” could be delineated with bright lines, the doctrine could bring predictability to trademark disputes in which courts need to determine whether the unauthorized use of a trademark ought to trigger liability under the Lanham Act. But unfortunately, he ruefully observes, defining “trademark use” in a clear and consistent manner has so far proven impossible. This is because “trademark use” is not susceptible to a fixed definition. Instead it is inextricably linked, piecemeal, to any given court’s determination, usually based on intuition rather than facts, about whether consumers will perceive the use to be source identifying.

McKenna correctly criticizes the view that a signifier of “trademark use” is a deployment that is likely to cause confusion. If likelihood of confusion is the benchmark that creates an actionable wrong, the “trademark use” doctrine adds nothing to a court’s analytical toolbox. But if it is unbound from courts’ projections about consumer understandings of source, and instead given boundaries related to specific relationships, McKenna argues that a reconfigured “trademark use” doctrine can bring renewed coherence to trademark law.

The scope of trademark rights are delineated by use of the mark. If the mark “Smith” is used as a trademark for screwdrivers in commerce, the rights that accrue preclude others from using the same or similar mark on the same or similar products. That is simple enough. Where things start to get complicated is when an online hardware store uses the “Smith Screwdrivers” mark to indicate that Smith screwdrivers can be purchased there. Or when an artist writes a song referencing Smith Screwdrivers and releases it commercially. Or when an Internet search engine assumes the people searching for web pages using the words “Smith Screwdrivers” would like to see results relating to competing brands of screwdrivers as well as the authorized Smith website.  Consumers may well believe that these uses cannot legally be undertaken without the permission of the mark holder, but that does not transmogrify these uses of the Smith trademark into trademark uses. None is an effort to mark or sell counterfeit or competing screwdrivers, so none are uses of the mark in commerce as a trademark. Seems pretty clear to me, but as McKenna aptly illustrates, many courts and commentators would not agree.

In iterating the deficiencies with current conceptions of the “trademark use” doctrine McKenna also constructs a broader critique of trademark law generally; there is a pervasive over-reliance on alleged consumer understandings, which are often discerned primarily via instinct and divination by judges who harbor a wide range of assumptions about the mental capacities of their fellow citizens. This leads to uncertainty and precludes effective checks upon inappropriately broad assertions of trademark powers.

Consumers may indeed harbor many misconceptions about the accrual and scope of trademark rights, but asking judges to attempt to predict and account for projected misunderstandings one case at a time is not a good way to bring clarity or coherence to Lanham Act jurisprudence. Construction of reliable limiting principles for “trademark use” can serve as a model for reigning in expansionist trademark lawmaking generally; McKenna is quite convincing about this, and in my view, absolutely correct.

Michael Carroll

Is there a crisis in the patent system, and if so, what should be done about it?  Two recent books respond to cries of alarm emanating from some in the patent system, and each makes a large contribution to the understanding of this system:  James Bessen & Michael J. Meurer, Patent Failure:  How Judges, Bureaucrats, and Lawyers Put Innovators at Risk (2008) and Dan L. Burk & Mark A. Lemley, The Patent Crisis and How the Courts Can Solve It (2009).  Both books proceed from, or demonstrate, a core empirical premise: those inside the patent system experience its effects quite differently depending on their industrial setting and technical field of innovative endeavor. Both books are well worth reading, but the space here allows only for a few comments on Burk and Lemley’s more recent contribution.

Reprising, updating, and extending arguments made in prior works, Burk and Lemley set out to persuade the reader of three propositions: (1) the tradition of a one-size-fits-all approach to patent law is out of step with the diverse needs of today’s innovators in wide range of industries; (2) the response to diversity should be to retain a single Patent Act rather than to provide industry-specific legislation; but (3) the federal courts should use the flexibilities embedded in that single Patent Act to tailor its application to account for industry diversity.

Not all readers will agree that they succeed in this quest, but the journey rewards all who travel along.  For teachers, Burk & Lemley’s initial summary of the patent system (pp. 7-20) provides an excellent reading assignment for any law or applied sciences class on patent law.  For scholars, the authors helpfully summarize the literature(s) on industry-specificity in innovation and patenting strategies, and they argue that this diversity helps explain the diversity in theoretical justifications for the patent system.

Now the argument.  The authors first sweep aside the prospect that Congress can solve the crisis posed by industry diversity by reviewing the history of some industry-specific legislation and four years of failure to pass broader systemic reform because of warring industry coalitions.  While Burk and Lemley raise many valid concerns and issues on this score, many readers, including this one, would need deeper institutional analysis and analysis of  the economically more important legislative tailoring done by the Bayh-Dole Act and the Hatch-Waxman Act, respectively, before conceding the point.

Nonetheless, the heart of the argument is that the existing Patent Act confers upon federal courts, and in particular the U.S. Court of Appeals for the Federal Circuit, interpretive discretion to take account of salient economic and technological differences among innovators.  This argument, which they first made in Policy Levers in Patent Law, 89 Va. L. Rev 1575 (2003), has been updated, extended, and strengthened by taking into account numerous intervening developments, including significant Supreme Court decisions, that further enlarge the scope of judicial discretion in the patent system.

The book closes with case studies of patent tailoring for inventions arising in the biotechnology and information technology industries.  While again not all readers will accept these accounts, Burk and Lemley succinctly summarize the literature on the economic effects of patents in these fast-moving, economically significant sectors and challenge readers to think more deeply about how the law could more coherently and consistently adapt to the scientific and business realities in these sectors.

The authors acknowledge the limits of their argument by allowing that the courts should not use each and every flexible provision of the Patent Act to fashion industry-specific interpretations and that courts could not realistically do so even if so inclined in light of the dynamism and uncertain trajectories of the innovative sectors.  But they challenge all who are interested in a well-functioning patent system to recognize the real differences in how innovators appropriate returns on their investments and the real costs of a one-size-fits-all approach to patent law imposed on the majority of these innovators.  They show that at least in the domestic context, the federal courts have a range of tools available to play a more active and helpful role in responding to industry difference.  Finally, they recognize that the argument is not complete, and they invite further analysis of innovation policy and institutional design options to respond to industry diversity.

Section Editors

The Section Editors choose the Contributing Editors and exercise editorial control over their section.  In addition, each Section Editor will write at least one contribution (”jot”) per year.  Questions about contributing to a section ought usually to be addressed to the section editors.

Professor Pam Samuelson
Director of the Berkeley Center for Law & Technology, Richard M. Sherman Distinguished Professor of Law and Information at the University of California Berkley School of Law, Boalt Hall

Professor Christopher Sprigman
University of Virginia School of Law

Contributing Editors

Contributing Editors agree to write at least one jot for Jotwell each year.

Professor Ann M. Bartow
University of South Carolina School of Law

Professor Chris Buccafusco
Chicago-Kent College of Law

Professor Michael W. Carroll
Director of the Program on Information Justice and Intellectual Property at American University, Washington College of Law

Professor Kevin Emerson Collins
Indiana University Maurer School of Law

Professor Stacey L. Dogan
Northeastern University School of Law

Professor John Fitzgerald Duffy
Oswald Symister Colclough Research Professor of Law,
The George Washington University Law School

Professor Laura A. Heymann
William and Mary Law School

Professor Lydia Loren
Jeffrey Bain Faculty Scholar and Professor, Lewis & Clark Law School

Professor Paul Ohm
University of Colorado Law School

Professor Dotan Oliar
University of Virginia School of Law

Professor Jason M. Schultz
Director of the Samuelson Law, Technology & Public Policy Clinic at the University of California Berkley School of Law, Boalt Hall

Professor Sara K. Stadler
Emory University School of Law

Jotwell: The Journal of Things We Like (Lots) seeks short reviews of (very) recent scholarship related to the law that the reviewer likes and thinks deserves a wide audience. The ideal Jotwell review will not merely celebrate scholarly achievement, but situate it in the context of other scholarship in a manner that explains to both specialists and non-specialists why the work is important.

Although critique is welcome, reviewers should choose the subjects they write about with an eye toward identifying and celebrating work that makes an original contribution, and that will be of interest to others. First-time contributors may wish to consult the Jotwell Mission Statement for more information about what Jotwell seeks, and what it seeks to achieve.

Reviews need not be written in a particularly formal manner. Contributors should feel free to write in a manner that will be understandable to scholars, practitioners, and even non-lawyers.

Ordinarily, a Jotwell contribution will

• be between 500-1000 words;
• focus on one work, ideally a recent article, but a discussion of a recent book is also welcome;
• begin with a hyperlink to the original work — in order to make the conversation as inclusive as possible, there is a strong preference for reviews to focus on scholarly works that can be found online without using a subscription service such as Westlaw or Lexis. That said, reviews of articles that are not freely available online, and also of very recent books, are also welcome.

Initially, Jotwell particularly seeks contributions relating to:

• Administrative Law
• Constitutional Law
• Corporate Law
• Criminal Law
• Cyberlaw
• Intellectual Property Law
• Legal Profession
• Tax Law

We intend to add more sections in the coming months.

References

Authors are responsible for the content and cite-checking of their own articles. Jotwell editors and staff may make editorial suggestions, and may alter the formatting to conform to the house style, but the author remains the final authority on content appearing under his or her name.

• Please keep citations to a minimum.
• Please include a hyperlink, if possible, to any works referenced.
• Textual citations are preferred. Endnotes, with hyperlinks, are allowed if your HTML skills extend that far.
• Authors are welcome to follow The Bluebook: A Uniform System of Citation (18th ed. 2005), or the The Redbook: A Manual on Legal Style (2d Ed.) or indeed to adopt any other citation form which makes it easy to find the work cited.

Technical

Jotwell publishes in HTML, which is a very simple text format and which does not lend itself to footnotes; textual citations are much preferred.

Contributors should email their article, in plain text, in HTML, or in a common wordprocessor format (Open Office, WordPerfect, or Word) to ed.jotwell@gmail.com and we will forward the article to the appropriate Section Editors. Or you may, if you prefer, contact the appropriate Section Editors directly.

The Journal of Things We Like (Lots)–JOTWELL–invites you to join us in filling a telling gap in legal scholarship by creating a space where legal academics will go to identify, celebrate, and discuss the best new legal scholarship. Currently there are about 350 law reviews in North America, not to mention relevant journals in related disciplines, foreign publications, and new online pre-print services such as SSRN and BePress. Never in legal publishing have so many written so much, and never has it been harder to figure out what to read, both inside and especially outside one’s own specialization. Perhaps if legal academics were more given to writing (and valuing) review essays, this problem would be less serious. But that is not, in the main, our style.

We in the legal academy value originality. We celebrate the new. And, whether we admit it or not, we also value incisiveness. An essay deconstructing, distinguishing, or even dismembering another’s theory is much more likely to be published, not to mention valued, than one which focuses mainly on praising the work of others. Books may be reviewed, but articles are responded to; and any writer of a response understands that his job is to do more than simply agree.

Most of us are able to keep abreast of our fields, but it is increasingly hard to know what we should be reading in related areas. It is nearly impossible to situate oneself in other fields that may be of interest but cannot be the major focus of our attention.

A small number of major law journals once served as the gatekeepers of legitimacy and, in so doing, signaled what was important. To be published in Harvard or Yale or other comparable journals was to enjoy an imprimatur that commanded attention; to read, or at least scan, those journals was due diligence that one was keeping up with developments in legal thinking and theory. The elite journals still have importance – something in Harvard is likely to get it and its author noticed. However, a focus on those few most-cited journals alone was never enough, and it certainly is not adequate today. Great articles appear in relatively obscure places. (And odd things sometimes find their way into major journals.) Plus, legal publishing has been both fragmented and democratized: specialty journals, faculty peer reviewed journals, interdisciplinary journals, all now play important roles in the intellectual ecology.

The Michigan Law Review publishes a useful annual review of new law books, but there’s nothing comparable for legal articles, some of which are almost as long as books (or are future books). Today, new intermediaries, notably subject-oriented legal blogs, provide useful if sometimes erratic notices and observations regarding the very latest scholarship. But there’s still a gap: other than asking the right person, there’s no easy and obvious way to find out what’s new, important, and interesting in most areas of the law.

Jotwell will help fill that gap. We will not be afraid to be laudatory, nor will we give points for scoring them. Rather, we will challenge ourselves and our colleagues to share their wisdom and be generous with their praise. We will be positive without apology.

Tell us what we ought to read!

How It Works

Jotwell will be organized in sections, each reflecting a subject area of legal specialization. Each section, with its own url of the form sectionname.jotwell.com, will be managed by a pair of Section Editors who will have independent editorial control over that section. The Section Editors will also be responsible for selecting a team of ten or more Contributing Editors. Each of these editors will commit to writing at least one Jotwell essay of 500-1000 words per year in which they identify and explain the significance of one or more significant recent works – preferably an article accessible online, but we won’t be doctrinaire about it. Our aim is to have at least one contribution appear in each section on a fixed day every month, although we won’t object to more. Section Editors will also be responsible for approving unsolicited essays for publication. Our initial sections will cover administrative law, constitutional law, corporate law, criminal law, cyberlaw, intellectual property law, legal profession, and tax law — and we intend to add new sections when there is interest in doing so.

For the legal omnivore, the ‘front page’ at Jotwell.com will contain the first part of every essay appearing elsewhere on the site. Links will take you to the full version in the individual sections. There, articles will be open to comments from readers.

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