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Abstract:
The First Amendment's free speech clause limits the government's ability to grant and enforce trademark rights in words, names, and symbols. Congress and courts currently incorporate free speech values directly into certain parts of trademark doctrine. Congress protects free expression in the Federal Trademark Act, more commonly known as the Lanham Act, by only granting rights in distinctive marks, limiting exclusive trademark rights, and allowing certain defenses, such as the fair use defense. When interpreting the Lanham Act, some courts have protected expression by narrowly construing trademark rights and broadly applying statutory and common law defenses. A few have even considered an independent First Amendment defense. Certain judges have also taken First Amendment interests into account when drafting remedies in trademark cases.

Despite this deference to First Amendment interests in the trademark statute and litigation, Congress and courts have also allowed trademark law to suppress expression that is constitutionally protected. Trademark law unduly restricts the free flow of commercial expression when firms are allowed to register and protect trademarks consisting of descriptive terms and catchy slogans. Some common law trademark doctrines, such as the doctrine of initial interest confusion, may limit consumers' access to information about competing goods on the Internet. When construing the Lanham Act, some courts have not adequately protected the unauthorized use of another's mark in expression on the Internet and in artistic works. This chapter analyzes how Congress and courts currently protect, and fail to protect, First Amendment values when granting and enforcing trademark rights.

First Amendment, Constitutional, Unconstitutional, Trademark, Lanham Act, Intellectual Property, Descriptive Trademarks, Slogans, Infringement, Dilution, Cybersquatting, Commercial Use, Misleading Use, Trademark Use, Fair Use, Nominative Use

Abstract:
Utilitarianism provides the primary theoretical justification for intellectual property protection. This Article considers whether copyright protection of advertising and trademark protection of slogans has a satisfactory utilitarian justification.

Utilitarian theory may not justify strong copyright protection of advertising. Many advertising works will likely be produced regardless of copyright incentives. Even if copyright does provide some incentive to create certain advertising works, it is unclear whether the government should encourage the creation of advertising. An increase in advertising triggered by copyright protection will not necessarily result in a net social benefit. The best reason to continue to protect copyright in advertising is the cost of eliminating advertising from the subject matter of copyright.

Utilitarian theory may also fail to justify trademark protection for slogans. When firms include slogans in advertising or on product packaging with the brand name, any additional source-identifying information provided by the slogan is usually cumulative and unnecessary. As firms can and do use product names and other marks to identify and distinguish their brands, additional trademark protection for slogans likely provides no significant incremental reduction in consumer search costs. Moreover, removing trademark protection for slogans should not decrease the incentive to manufacture products of consistent quality because consumers can still use product names to identify brands. Any public benefits of protecting intellectual property rights in advertising are likely outweighed by the costs, which include harm to the free flow of commercial information. Legislators should therefore consider reducing copyright protection of advertising and eliminating trademark protection of slogans.

Advertising, Intellectual Property, Copyright, Trademark, Advertisements, Slogans, Utilitarian, Economic, Incentives, Bleistein

Abstract:
The protection of exclusive rights in descriptive trademarks is an unconstitutional restriction of speech under the First Amendment. Trademark laws that prohibit a competitor from using trademarked descriptive words to sell a product fail to satisfy the Central Hudson test for evaluating the constitutionality of commercial speech regulations. The use of a descriptive term to accurately describe a product is not misleading expression regardless of whether another business claims trademark rights in that term. Although the government has a substantial interest in protecting the ability of consumers to identify and distinguish among the products of a business and its competitors, descriptive trademark laws do not directly advance this interest and are more extensive than necessary. Descriptive marks do not identify the source of a product as well as a mark that is fanciful, arbitrary, or suggestive because descriptive marks retain their original descriptive meaning. As descriptive marks quickly and cheaply provide consumers with information regarding the attributes of a product, protecting exclusive rights in such marks does not directly and materially further trademark law's goal of helping consumers identify and distinguish among the products of competing manufacturers. Current trademark law also stifles the free flow of commercial information more than necessary when it protects exclusive rights both in inherently distinctive marks and descriptive marks. The consumer-oriented goals of trademark law are satisfied if the government grants and enforces trademark rights only in inherently distinctive marks.

trademark, descriptive trademarks, first amendment, Central Hudson

Abstract:
Trademarks consist of language. Trademark law regulates certain uses of trademarked language to communicate information or ideas, yet few courts subject trademark law to First Amendment scrutiny. This Article argues that more courts should. Not every infringing use of a trademark is misleading commercial speech. The Supreme Court has struck down other nonmisleading commercial speech regulations using intermediate constitutional scrutiny. Moreover, the Court's First Amendment jurisprudence dictates that content-based trademark laws regulating noncommercial speech should be subject to strict scrutiny analysis. This Article provides a detailed framework for understanding how trademark law can raise serious First Amendment concerns and sets forth the options for courts who acknowledge this conflict. Most courts protect speech by narrowly construing trademark claims and broadly interpreting defenses. This doctrinal approach protects expression in individual cases, but protected speech is still harmed by trademark law in the real world. It is often difficult to predict the outcome of trademark law's multi-factor balancing tests. Those who cannot afford to litigate will self-censor rather than fight for their right of free expression. Trademark law will better serve First Amendment interests if it contains more speech-protective trademark rules or categorical safe harbors for certain uses of trademarks. Among other benefits, categorical rules create more predictability and make it easier for courts to dispose of frivolous trademark disputes early. Finally, when trademark laws suppress or chill protected expression, courts should not hesitate to apply First Amendment scrutiny and find that law unconstitutional.

Trademark, Constitutional, First Amendment, Free Expression, Free Speech, Commercial Speech

Abstract:
Trademark infringement law may apply to the unauthorized use of trademarks to impersonate markholders on social network sites and elsewhere. Where “brandjacking” on social networks causes confusion about the source of information, that expression may be infringing even where the imposter is not creating confusion about the source or quality of commercial products for sale. Commercial use of the mark is not explicitly required for infringement under the Lanham Act, and some courts apply the federal infringement statutes in cases involving unauthorized use of marks in noncommercial speech. If a third party uses another’s mark to falsely claim to be the markholder and indicates that the markholder is the author of expression written by that imposter, courts may find infringement if the public is confused about the source of that third party’s “information services” and believes and relies on that false statement of identity. Of course, just because a markholder has a cause of action does not mean it should file suit against an individual who uses its mark in this way.

By prohibiting unauthorized uses of trademarks that cause confusion regarding the source of information or advertising, trademark law can reduce consumer search costs. Moreover, such restrictions on use of another’s mark will not violate the First Amendment if reasonable persons believe the third party’s false statement of identity and authorship. This is not anonymous or pseudonymous speech protected by the First Amendment; it is a false statement of fact. Yet courts will harm free speech values if they apply the affiliation/sponsorship confusion doctrine to unauthorized uses of a mark in expression of information or ideas. Courts should limit the scope of trademark rights by requiring source-confusion in infringement cases involving expression.

Brandjacking, Social Networks, Social Networking, Trademark, Constitutional, First Amendment, Free Expression, Free Speech, Commercial Speech, Noncommercial Speech