American trademark scholars have almost uniformly decried the role of free riding in calibrating the scope of trademark rights. They have argued that the language of “reaping where you have not sown”—to use the famous, but doctrinally discredited, agricultural metaphor of INS v. Associated Press in 1918—distorts trademark law and expands protection beyond that necessary to ensure consumers receive accurate information about the source of goods in the marketplace. Yet, there is a (relatively well-grounded) suspicion that, despite this almost universal scholarly condemnation, the impulse to protect mark owners against free riding remains a resilient force when courts decide trademark cases. If this suspicion is indeed sound, arguments for less expansive trademark rights that rest on the rejection of free riding as a relevant variable are destined to fail.
In Trademark Free Riders, Mike Grynberg brilliantly and persuasively outlines (with real panache) an alternative approach by which to advocate for less robust trademark rights. He assumes arguendo the reality of judicial attention to (and distaste for) free riding and articulates an approach to trademark law that uses the free riding of trademark owners to justify a less expansive scope of protection. That is to say, what happens when trademark owners reap where they have not sown? If courts are in fact sensitive to free-riding as a relevant consideration in allocating rights, might they not confine the scope of right when evidence of trademark owner free-riding is presented to them?
For example, should trademark law (or courts in trademark cases) not take account of the fact that mark owners may opportunistically exploit meanings developed in popular culture generally or, more narrowly, by their customers? The use of HOGS to describe Harley-Davison motorbikes was initially opposed by the company. Its meaning is attributable to efforts of its customers. Should the tardy and begrudging acceptance by the company of a name developed by its customers figure into the ownership and scope of any trademark rights?
Grynberg thus operates in a reality that too many scholars are not even willing to countenance. This approach is very much consistent with Grynberg’s broader approach to trademark law, having written in an important article 15 years ago about the way that consumer interests can be reconfigured (and differently advanced) to secure a more balanced trademark regime than one-sided consumer paternalism might suggest.
This piece thus highlights a fascinating conundrum for scholars and litigants in trademark cases which parallels that faced by advocates before the U.S. Supreme Court. If, as Justice Elena Kagan suggested in her 2015 Scalia Lecture, that “we are all textualists now,” would not a wise advocate or scholar seeking to persuade the court advance textualist arguments? Many litigants, including in intellectual property cases before the Supreme Court, have taken the lesson offered by Justice Kagan on board (in my view, to the detriment of intellectual property law), even as Justice Kagan has voiced doubts about her 2015 pronouncement). So should trademark advocates and scholars grasp the nettle of free riding and make arguments for why trademark owners should have narrower (or no) rights because of their free riding (even if they believe, normatively, that free-riding should have no role to play in trademark law)?
Grynberg does carefully note some reasons why free riding might actually have a resonance for judges in trademark cases. For purposes of this Article, Grynberg is non-committal about the wisdom of that choice. There is surely a case for its relevance at the margins. The legislative history of the Lanham Act explicitly talks of protecting against the exploitative conduct of “pirates and cheats”. It takes some methodological insularity to read that reference and conclude that the statute simply targets “those who increase search costs”, as advocates of law and economics would have us believe. That’s a bigger and more contentious debate, however, and one with which Grynberg does not need to engage to make his point. Grynberg simply takes the relevance of free riding to judges as a given. As a result, he offers an approach to trademark law grounded in the reality of judges who decide trademark cases. And those scholars who wish to influence the development of trademark law would be well-advised to heed his counsel.
Without rehashing all of the numerous examples that are teased out with meticulous rigor, Grynberg develops a taxonomy that would helpfully inform the arguments of litigants and scholars in trademark cases seeking to confine the scope of trademark rights. For example, Grynberg notes that trademark owners free ride on culture, using and potentially appropriating memes and other forms of communal communication (something very much at issue in current debates over the use of the “failure to function” ground for rejecting applications for trademark registration). Likewise, he recognizes that what Mark Janis and I have called “surrogate uses” (where the public adopts a source-identifying term not used, and perhaps opposed, by the trademark owner, such as the HOGS example noted above) represent annexation by the trademark owner of understanding developed without an iota of effort or intent by the mark owner.
Moreover, Grynberg suggests that certain trademark owners may even obtain free rider benefits from competitor activity. Where protection is sought for a term that straddles “source” and “category”, or a shape that is a both a configuration mark and an attractive product design, trademark law seeks to ensure that any trademark rights protect the former and not the latter. But Grynberg points out that when we protect a term or shape that possesses such duality (as we do unless the competitive effects are substantial enough to trigger genericness or functionality doctrine), the mark owner may benefit from rival producers seeking to promote a competing product in the same category or of a similar design. That is, the efforts of competitors may consolidate public understanding of the first producer’s mark. Grynberg offers a vocabulary that the courts appear to recognize instinctually – “they didn’t earn it” – which might persuade courts to discount any public understanding not closely tying the product to the first producer (as opposed to the product type).
Whether one agrees with every example (and there are good debates to be had about some), this is a conversation-changing tour de force of an article. Professor Grynberg opts pragmatically to operate in the world we observe – perhaps the most basic commitment of a social scientist – and offers an approach to trademark law that litigants and scholars seeking (thus far without much success in recent years) to limit the scope of trademark rights, would do well to bear in mind.
