Commercial Speech, Commercial Use, and the Intellectual Property Quagmire

Abstract

The commercial speech doctrine in First Amendment jurisprudence has frequently been criticized and is recognized as a highly contested, problematic and shifting landscape. Despite the compelling critique within constitutional law scholarship more broadly, Intellectual Property (“IP”) law has not only embraced the differential treatment of commercial speech, but has done so in ways that disfavor a much broader swath of speech than traditional commercial speech doctrine allows. One of the challenges for courts, litigants, and scholars alike is that the term “commercial” is used to mean multiple things, even within the same body of IP law. In this Article, I not only identify the breadth of the confusion surrounding issues of commerciality in IP law, but also develop a taxonomy of what is meant by “commercial” in the context of IP. Greater precision of what we mean by “commercial” is required not only for clarity’s sake, but also to facilitate the deeper normative analysis that I engage in as I consider whether commercial speech and commerciality more broadly — particularly in the sense of seeking financial gain — are worthwhile determinants of liability in the IP context. I focus on claims arising under trademark, right of publicity, and copyright laws, but the analysis here applies more broadly to other areas of IP law, such as trade secrets and patent law. In Part I of the Article, I identify the different aspects of IP laws that raise the issue of commerciality and point out the many areas of confusion on questions as basic as the elements of these causes of action and defenses to them. In Part II, I develop a taxonomy of what is meant by “commercial” in IP law. In Part III, I consider the justifications for using these various meanings of “commercial” as a basis for making determinations of rights, liability, and defenses to IP claims. The primary justifications for distinguishing commercial from noncommercial speech, and commercial from noncommercial uses (in the “for-profit” sense), are rooted in concerns over free speech and constitutionality, value, harm, and broader principles of fairness. I consider each of these justifications in turn and ultimately conclude that they fail to provide a convincing normative basis for distinctions rooted in commerciality and that none adequately explains the current contours of IP laws. Finally, in Part IV, I provide some preliminary observations about the implications of this analysis and the importance of creating a more coherent IP law that better identifies when commerciality should and should not matter. Being clearer about when and why commerciality matters (and when and why it does not) in intellectual property law may also provide guidance about how to move forward with (or away from) the commercial speech doctrine elsewhere.

Keywords: copyright, trademark, right of publicity, intellectual property, Lanham Act, false advertising, misappropriation, first amendment, constitutional law, commercial speech, fair use, technology, for-profit uses, commercial use

JEL Classification: K10, K11, K13, K19, K20, K39, L82, L83, L86, M37, O33, O34, O38