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1054 UNSW Law Journal Volume 34 3, as an underlying rationale3 or a separate ground for relief 4 is a concern to prevent. other traders from taking a free ride on the investment that a trade mark owner. has made in its famous brand, In the countries where they have been enacted anti dilution provisions have. prompted extensive and heated debate 5 Dilution doctrine is condemned for. interfering with the rights of traders to access shared marketing language and. with consumer opportunities to resist subvert and recode brands and use them. in personal and collective expression 6 Commentators have been so fiercely. critical of anti dilution law for its interference with competition and expression. that it has become perhaps the most vilified doctrine within contemporary trade. mark law 7 Since vocal support of the doctrine has come almost exclusively. from corporations that own famous marks and their representatives on the basis. 3 In the United States free riding is not actionable per se However some scholars regard all anti dilution. law as being built upon a desire to punish free riding see eg David J Franklyn Debunking Dilution. Doctrine Toward a Coherent Theory of the Anti Free Rider Principle in American Trademark Law. 2004 56 Hastings Law Journal 117 cf Wendy J Gordon On Owning Information Intellectual Property. and the Restitution Impulse 1992 78 Journal of Legal Studies 149 167 8 A culture could not exist if. all free riding were prohibited Culture is interdependence and requiring each act of deliberate. dependency to render an accounting would destroy the synergy on which cultural life rests emphasis in. 4 The European Court of Justice has held that free riding itself is prohibited under European Union trade. mark law L Or al SA v Bellure NV C 487 07 European Court of Justice 18 June 2009 The Court. found that the defendant must not ride on the coat tails of a mark with a reputation in order to benefit. from the power of attraction the reputation and the prestige of that mark and to exploit without paying. any financial compensation the marketing effort expended by the proprietor of the mark at 50 See. also Dev Gangjee and Robert Burrell Because You re Worth It L Oreal and the Prohibition on Free. Riding 2010 73 Modern Law Review 282, 5 Anti dilution provisions of some variety have been enacted in several jurisdictions including the. European Union Canada New Zealand and parts of Asia Since the law in the United States is the most. developed it will be the focus of this article For comparative analyses see J Thomas McCarthy. Dilution of a Trademark European and United States Law Compared 2004 94 Trademark Reporter. 1163 Martin Senftleben The Trademark Tower of Babel Dilution Concepts in International US and. EC Trademark Law 2009 40 IIC International Review of Intellectual Property and Competition Law. 45 Jasmine Karimi Avoiding Dilution of Well Known Marks in the US EU and Asia asialaw April. 2007 http www asialaw com Article 1971062 Search Results Avoiding Dilution of Well known. Marks in the US EU and Asia html Keywords Jasmine Karimi There has also been heated debate on. the merits of anti dilution law in South Africa Alan Smith Trade Mark Dilution You Can t Laugh It. Off 2004 12 Juta s Business Law 197 New Zealand Mark Sumpter and Paul Sumpter Has Trade. Mark Law Gone Mad 2003 3 New Zealand Intellectual Property Journal 225 and Singapore where. the adoption of anti dilution measures was a requirement of the United States Singapore Free Trade. Agreement of 2003, 6 Sonia K Katyal Semiotic Disobedience 2006 84 Washington University Law Review 489 489 The. major arguments made against anti dilution law are discussed in Part II below. 7 See eg Ilanah Simon Fhima Dilution by Blurring A Conceptual Roadmap 2010 Intellectual. Property Quarterly 44, 2011 Forum Evaluating Trade Mark Dilution from the Perspective of the Consumer 1055.
of the need to provide strong protection for brand investment 8 the debate has. manifested as a dichotomy between the interests of major rights owners and those. of everybody else 9 In more recent times however some scholars have suggested. a more nuanced view of anti dilution law considering the ways in which the. interests of consumers and not just trade mark owners might be served by this. type of trade mark protection Although this re conceptualisation of anti dilution. law has not yet reached the mainstream several considered arguments have been. made in its favour that are worthy of discussion and evaluation Part II of this. article sets out the background against which the consumer based justifications of. anti dilution law have emerged Part III analyses each of the main consumer. interest arguments that have been made in favour of the doctrine The article. concludes that although there is merit in reconsidering the traditionally polarised. nature of the dilution debate the consumer based justifications of anti dilution. law that have been put forward to date lack internal consistency and practical. application,II BACKGROUND, The idea that some brands might be harmed by the whittling away of their. unique identity made its first notable appearance in the American trade mark. scholarship in 1927 in a seminal paper by Frank Schechter 10 Schechter argued. that a brand s value rests essentially in its uniqueness 11 which he also called its. individuality 12 identity 13 and singularity 14 According to Schechter the. unauthorised dilution of this quality of uniqueness should be prohibited. Schechter was especially concerned with the progressive harm that would result. from multiple uses of a formerly unique mark He famously explained to. Congress in 1931 if you allow Rolls Royce restaurants and Rolls Royce. 8 The strong development of anti dilution law in the United States has been attributed in large part to the. lobbying efforts of the International Trademark Association which has described itself as the largest. organization in the world dedicated solely to the interests of trademark owners International Trade Mark. Association www inta org See also Barton Beebe A Defence of the New Federal Trademark. Antidilution Law 2005 16 Fordham Intellection Property Media and Entertainment Law Journal. 9 See also Jason Bosland and Megan Richardson Competing Discourses of Rights and Harms in. Trade Mark Law in Kathy Bowrey Michael Handler and Dianne Nicol Emerging Challenges in. Intellectual Property Oxford University Press 2011 103 from a cultural studies perspective Jason. Bosland The Culture of Trade Marks An Alternative Cultural Theory Perspective 2005 10 Media. Arts Law Review 99 102 The fact that cultural studies has its roots planted firmly in the Marxist. struggle over commodity fetishism and working class culture means that private property is ab initio. treated with not only zealous suspicion but outright contempt especially private property in the. intangibles which facilitate commodity culture, 10 Frank I Schechter The Rational Basis of Trade Mark Protection 1927 40 Harvard Law Review 813. 11 Ibid 825 6,12 Ibid 822,13 Ibid 827,14 Ibid 831,1056 UNSW Law Journal Volume 34 3. cafeterias and Rolls Royce pants and Rolls Royce candy in 10 years you will. not have the Rolls Royce mark anymore 15 Despite an initial lukewarm reception. by the legal establishment dilution was gradually translated into a state and then. federal cause of action providing trade mark proprietors with an alternative to. consumer confusion upon which to base infringement proceedings 16 The. present day anti dilution provision in the United States protects marks that are. both famous and distinctive from any use that is likely to cause dilution by. blurring or dilution by tarnishment of the famous mark regardless of the. presence or absence of actual or likely confusion of competition or of actual. economic injury 17 Similar provisions have been enacted in many other. jurisdictions 18, Anti dilution provisions around the world have had a troubled history 19. Dilution doctrine is often criticised as a form of corporate censorship and control. over meaning empowering private entities to consecrate their symbols and. images allowing for a particularly robust form of incontestability 20 In. particular detractors contend that allowing companies to sue for dilution. undermines our freedoms of competition and speech In relation to competition. it is said that anti dilution protections reduce the marketing vocabulary with. which traders can identify and promote their products 21 They empower the. owner of a famous mark to withhold a word or device from markets that are. completely unrelated to its business and in which it never intends to participate. Stephen Carter notes that such language exclusivity is not problematic if marks. are fungible in the sense that each mark has as much marketing value as the. next and if they are unlimited in number 22 Reasonably assuming however that. some marks are more effective than others in generating goodwill APPLE for. 15 Frank I Schechter Hearings Before the House Committee on Patents Speech delivered at the United. States House of Representatives 72nd Congress 1932 quoted in Robert Burrell and Michael Handler. Dilution and Trademark Registration 2008 17 Transnational Law Contemporary Problems 713. 16 For a history of the protection in the United States see Sara Stadler Nelson The Wages of Ubiquity in. Trademark Law 2003 88 Iowa Law Review 731 in Anglo Australian jurisdictions see Bosland and. Richardson above n 9,17 15 USC 1125 c 1,18 See above n 5.
19 See eg Fhima above n 7 44 On the raging inconsistencies in the application of dilution law in the. United States see Milton W Handler Are the State Antidilution Laws Compatible With the Natural. Protection of Trademarks 1985 75 Trademark Reporter 269 285 7. 20 Sonia K Katyal Semiotic Disobedience 2006 84 Washington University Law Review 489 491 See. also Rosemary J Coombe Objects of Property and Subjects of Politics Intellectual Property Laws and. Democratic Dialogue 1990 69 Texas Law Review 1853 1873 4. 21 See eg Stephen L Carter The Trouble with Trademark 1989 99 Yale Law Journal 759 768 Laura R. Bradford Emotion Dilution and the Trademark Consumer 2008 23 Berkeley Technology and Law. Journal 1227 1230,22 Carter above n 21, 2011 Forum Evaluating Trade Mark Dilution from the Perspective of the Consumer 1057. example is a more instinctively appealing brand than DURIAN 23 then if we. allow early entrants and even non competitors to withdraw the more valuable. words from a market s lexicon this means new entrants must work harder to. compete 24, In relation to expression the argument starts from the idea that in a society. increasingly driven by consumption famous marks have become powerfully. expressive devices that merge into our shared language 25 The connotations of. Calvin Klein cologne smooth operator and Smeg kitchenware trendy. homemaker were certainly kick started by the efforts of these brands. proprietors to imbue their marks with attractive connotations in order to sell more. products 26 However famous brands regularly transcend their role in purchasing. decisions and become vehicles for the expression of values and identity 27. Sometimes the message is the one designed and promoted by the brand owner. what Candace Bushnell uses Manolo Blahniks to say in Sex and the City for. example is fairly close to the designer s intended message In other cases brands. take on collateral cultural meanings without having been prompted by the brand. owner for example we are expected to infer something about the personality of. pop singer Fergie by virtue of the fact that she still goes to Taco Bell drive. thru 28 Perhaps most relevantly in the dilution context famous brands are also. used in social commentary and critique that is unappealing offensive and even. harmful to the interests of their proprietors To go shopping for groceries and. people to hack to death the protagonist in American Psycho wears blue jeans by. Armani a white Polo shirt an Armani sport coat no tie hair slicked back with. Thompson mousse a pair of black waterproof lace ups by Manolo Blahnik. three knives and two guns carried in a black leather Epi attach case 3 200 by. Louis Vuitton 29 Brands are employed here as vehicles for comment on moral. emptiness and degradation in a world overly obsessed with material things. 23 Firms invest substantially in testing and developing brands before first use to identify in advance those. marks that will naturally attract consumers and thereby minimise the costs associated with generating. goodwill This behaviour would be irrational if all marks were equally capable of drawing consumer. interest See also Carter above n 21, 24 See also John J Ohala Leanne Hinton and Johanna Nichols eds Sound Symbolism Cambridge. University Press 1995, 25 See eg Rosemary J Coombe Critical Cultural and Legal Studies 1998 10 Yale Journal of Law the. Humanities 463 Rochelle Cooper Dreyfuss Expressive Genericity Trademarks as Language in the. Pepsi Generation 1989 65 Notre Dame Law Review 397 Jessica Litman Breakfast with Batman The. Public Interest in the Advertising Age 1999 108 Yale Law Journal 1717. 26 See also Naomi Klein No Logo No Space No Choice No Jobs Picador 2009. 27 See eg Douglas B Holt How Brands Become Icons The Principles of Cultural Branding Harvard. Business School 2004 3 4 emphasis in original, For brands like Coke Budweiser Nike and Jack Daniel s customers value the brand s stories largely for their.
identity value Acting as vessels of self expression the brands are imbued with stories that consumers find. valuable in constructing their identities Consumers flock to brands that embody the ideals they admire brands that. help them express who they want to be The most successful of these brands become iconic brands Joining the. pantheon of cultural icons they become consensus expressions of particular values held dear by some members of. 28 Fergie Glamorous The Duchess Interscope Records 2006. 29 Bret Easton Ellis American Psycho Random House 1991 155. 1058 UNSW Law Journal Volume 34 3, Similarly trade marks feature widely in corporate activism Activist magazine. Adbusters is particularly famous for the trade mark parodies that it uses to. criticise consumer culture 30 The proliferation of online anti branding. communities has seen an increase in the use of brands in organised anti. consumerist dissent 31, There is a substantial body of scholarship that documents the social risks. involved in allowing trade mark holders to control the connotations of their. marks for example by litigating for dilution and the impacts this can have on. freedom to engage in these various forms of social commentary 32 One response. is that dilution law is concerned with unauthorised use of famous marks in. commercial or branding contexts and does not seek to restrain expressive or. critical uses of brands However as will be discussed in further detail below the. boundaries of the protection have been malleable In the United States for. example anti dilution provisions have been invoked against junior users33 for. singing about Barbie 34 mocking the well known pine tree shaped air freshener 35. making fun of Starbucks36 and using the word Kodak as a comedian s stage. name 37 Commentators have observed a regulatory spillover from the prevention. of dilutive commercial speech 38 into more general restrictions on expression It. is important to ensure that such restriction is justified by desirable and achievable. policy goals, In light of speech and competition concerns the strong protection of brand. value offered by anti dilution laws has caused substantial judicial and academic. unease Since the first dilution statutes were introduced in the United States. 30 Magazine 7 October 2011 Adbusters Culturejammer Headquarters Journal of the Mental Environment. http www adbusters org magazine, 31 See eg Esso Soci t Anonyme Fran aise SA v Association Greenpeace France and Soci t Internet FR. Tribunal de Grande Instance de Paris 02 56935 8 Jul 2002 reported in 2003 EMTR 35 a case. concerning a French website that criticised the environmental track record of oil company Esso and its. involvement in lobbying against the implementation of the Kyoto Protocol On uses of trade marks in. corporate activism see also Rosemary Coombe The Cultural Life of Intellectual Properties Authorship. Appropriation and the Law Duke University Press 2008 73 4. 32 See eg Coombe Objects of Property above n 20 1873. In jurisdictions that enforce dilution laws it might not be safe to comment upon the sexual objectification of. women in a mattress company s ads by way of a feminist film suggesting a rape on a mattress identified with its. trademark Nor could you be sure of your freedom to comment upon multinational capital if you depicted a Nestle. billboard in the midst of Third World squalor and malnutrition. 33 Some of the aforementioned cases failed on the facts However legal action does not need to succeed in. court in order to restrain behaviour An unauthorised user who receives an effectively worded letter of. demand from a well resourced rights holder and who does not have the capital or inclination to engage in. a lengthy dispute may well choose the easier option of simply abandoning the conduct in question. Prohibitions against the making of groundless threats exist but generally have a low threshold. 34 Mattel Inc v MCA Records Inc 28 F Supp 2d 1120 CD Cal 1998 Mattel v MCA Records. 35 Car Freshner Corp v Big Lots Stores Inc 314 F Supp 2d 145 154 ND NY 2004 granting summary. judgment for plaintiff, 36 See Sarah Mayhew Schlosser The High Price of Criticizing Coffee The Chilling Effect of the Federal.
Trademark Dilution Act on Corporate Parody 2001 43 Arizona Law Review 931. 37 Eastman Kodak Co v Rakow 739 F Supp 116 117 WD NY 1990. 38 The operation of the commercial speech doctrine as a limit on anti dilution law is discussed in greater. detail below, 2011 Forum Evaluating Trade Mark Dilution from the Perspective of the Consumer 1059. plaintiffs have come up against substantial resistance from the courts 39 which. have been suspicious of a law regarded as clearly not motivated by an interest in. protecting consumers 40 Academic criticism of the doctrine s strong defence of. brand investment has ranged from the bewildered f ew can successfully. explain it without encountering stares of incomprehension or worse 41 through. the sceptical t he lack of clear normative direction gives particularly wide. latitude to industry groups to influence the legislative process in ways that serve. their private interests at the expense of the public interest 42 to the scathing the. federal dilution statute as well as most state dilution statutes are unconstitutional. restrictions on commercial speech 43 There has been widespread concern among. commentators that anti dilution law departs dangerously from traditional. justifications for trade mark protection with detrimental social consequences. Against this background a body of scholarship has emerged which. challenges the idea that anti dilution law is on balance detrimental to consumer. interests Three main justifications are made for anti dilution law on consumer. interest grounds One is that dilution doctrine promotes rather than hinders. speech because it preserves the meaning and connotations of a famous mark and. thereby enables the mark s continued use as a building block for expression The. second is that by precluding multiple uses of marks anti dilution law prevents. consumers from incurring unnecessary and burdensome imagination costs when. retrieving marks from memory The third is that famous brands are valuable. cultural artefacts and that protection against dilution creates important incentives. for their creation One feature shared by each of these newer justifications for. anti dilution law is considerable rhetorical appeal Promoting critical and cultural. expression preventing unnecessary burdens on our minds and maintaining a. vibrant popular culture are all attractive goals However these consumer interest. based justifications for anti dilution law do not bear closer scrutiny. This article engages with each of these consumer focused approaches to. dilution to demonstrate their considerable weaknesses Challenging and testing. these justifications for dilution doctrine is important Although anti dilution. 39 On judicial interpretation and application of anti dilution statutes see also Clarisa Long Dilution. 2006 106 Columbia Law Review 1029, 40 Moseley v V Secret Catalogue Inc 537 US 418 2003 429. 41 McCarthy above n 5 1163, 42 Robert Bone A Skeptical View of the Trademark Dilution Revision Act 2006 11 Intellectual Property. Law Bulletin 187 188, 43 Mary LaFrance No Reason to Live Dilution Laws as Unconstitutional Restrictions on Commercial. Speech 2007 58 South Carolina Law Review 709 711,1060 UNSW Law Journal Volume 34 3.
provisions do not yet feature in Australian law 44 there have been initial. rumblings of interest in importing this type of trade mark protection into our. legal system 45 If anti dilution provisions do not live up to the emerging. consumer interest rhetoric and the doctrine does not actually offer any. perceivable benefits to consumers this should be the starting point of any. discussion as to whether we should introduce anti dilution law into the Australian. trade mark landscape 46,III THE CONSUMER INTEREST ARGUMENTS. A Anti dilution Law Facilitates Expression,1 Introduction. In response to widespread concerns that protecting valuable brands from. dilution comes at too high a cost to freedom of expression some trade mark. scholars have sought to determine whether anti dilution provisions can be. reconceptualised as benefiting both investment and speech Michael Spence. tackles this issue from the perspective of the trade mark owner arguing that an. essential corollary to freedom of expression is the right to refrain from speech. and that dilution doctrine preserves that right by preventing the forced. 44 There is some disagreement as to whether Trade Marks Act 1995 Cth s 120 3 should be interpreted as. an anti dilution provision Cf eg Michael Handler Trade Mark Dilution in Australia 2007 29. European Intellectual Property Review 307 Maurice Gonsalves and Patrick Flynn Dilution Down. Under The Protection of Well Known Trade Marks in Australia 2006 28 European Intellectual. Property Review 174 Intellectual Property Research Institute of Australia Submission to the Advisory. Council on Intellectual Property ACIP Issues Paper on Review of Enforcement of Trade Marks 11. June 2002 27 35 http www acip gov au submissions Ipria pdf For the purposes of this article it is. assumed that dilution doctrine does not presently form part of Australian trade mark law This was the. conclusion of ACIP in its Review of Trade Mark Enforcement see ACIP Review of Trade Mark. Enforcement April 2004 http www acip gov au library reviewtmenforce pdf ACIP Review. 45 The ACIP Review considered the international position on protection of well known marks against. dilution Despite noting the considerable inconsistency in such protection in other jurisdictions ACIP. recommended that the Government should support research into the economic and legal benefits of and. costs associated with extended protection of well known marks and that Australia should continue to. actively participate in international discussions regarding well known marks ACIP Review above n 44. 21 See also Intel Corporation Submission to ACIP Issues Paper on the ACIP Review 1. http www acip gov au submissions Intel PDF Law Council of Australia Submission to ACIP Issues. Paper on the ACIP Review 18 June 2002 http www acip gov au submissions council pdf Megan. Richardson Trade Marks and Language 2004 26 Sydney Law Review 193. 46 On the differences between the Australian and American trade mark contexts that would preclude an easy. migration of anti dilution principles across the jurisdictions see Robert Burrell and Michael Handler. Australian Trade Mark Law Oxford University Press 2011 ch 1. 2011 Forum Evaluating Trade Mark Dilution from the Perspective of the Consumer 1061. participation of a trade mark owner in speech with which it disagrees 47 Jason. Bosland makes a related argument from the perspective of the consumer 48 He. suggests that we can only harness a mark s meaning and connotations for use in. our expression if they are at least to some extent fixed 49 To refer to an earlier. example the argument is that if the marks ARMANI and LOUIS VUITTON no. longer denote luxury fashion houses or connote exclusivity and chic the author. of American Psycho would no longer be able to utilise these marks as shorthand. for the dangers of rampant consumerism 50 Viewed in this way protecting. famous marks against dilution might be regarded as protecting rather than. hurting the speech interests of the consumer This approach is interesting in that. it makes room for both rights and economics avoiding the conceptual myopia. that often accompanies scholarly consideration of dilution. 2 Brand Substitutability, One problem with the idea that dilution doctrine facilitates expression in this. way however is that in their capacity as vehicles for expression brands are. substitutable If the cultural meaning of a mark is diluted by society s interactions. with it there will inevitably be another brand ready and able to take its place. This was illustrated for example in the context of the temporary reputational. decline of British luxury fashion house Burberry At the start of the millennium. Burberry lost its place as the darling of the fashion world when it became the. chosen brand of l abel conscious football hooligans 51 By 2005 the BBC had. reported that people thought that Burberry would be worn by the person who. mugged them and that for fear of violence and general bad behaviour pubs and. clubs around Britain had adopted policies of refusing entry to customers wearing. Burberry items 52 Needless to say this significantly diminished and in some. parts of the United Kingdom completely eradicated the ability of the mark. BURBERRY to convey its intended messages of exclusivity elegance and style. 47 Spence above n 1 506 Spence illustrates his theory using the facts of Girl Scouts of the United States of. America v Personality Posters Manufacturing Co 304 F Supp 1228 DC NY 1969 This case concerned. a poster picturing a Girl Scout wearing the organisation s uniform which includes its trade mark and. holding her pregnant belly Next to her in the picture was the Girl Scout s motto Be Prepared. According to Spence the use of the Girl Scouts mark and motto in effect conscripted the organisation to. participate in the poster manufacturer s speech by expressing a message about sexual activity with which. it disagreed Faced with this problem the Girl Scouts had limited options to abandon the motto. amounting to what Spence refers to as silencing to lose control over the message that its own motto. conveys or to pursue legal action against the poster manufacturer. 48 Bosland above n 9 108 16,49 Ibid 112, 50 This approach is reminiscent of the prescriptivist view of language formation See eg Laura A Heymann. The Grammar of Trade Marks 2010 14 Lewis Clark Law Review 1313 1322. The prescriptivist school takes an objective view of language asserting that there are correct meanings. pronunciations and grammars in a language with rules that proper speakers of the language are taught to follow. Language s formalist nature under this theory yields a set of building blocks word parts that form words which. in turn form sentences which in turn form discourse. 51 Clair Bothwell Burberry versus The Chavs BBC News online 28 October 2005. http news bbc co uk 2 hi business 4381140 stm,1062 UNSW Law Journal Volume 34 3.
However the temporary disgrace of Burberry did not interfere meaningfully with. the ability of individuals to express their wealth through fashion Customers who. were no longer inclined to use Burberry handbags as statement pieces could still. rely on the Versace Prada and Fendi equivalents to say the same thing Very. rarely if ever will a brand have such unique and distinctive connotations that. there is no available brand synonym with which to make the same point 53. To leave the analysis here would be unfair since like Schechter s thesis the. argument that dilution doctrine benefits expression is based on the concept of. progressive harm If the meaning of the mark BURBERRY is diminished and. VERSACE s after that and PRADA s and FENDI s in turn and if this. destabilisation of meaning is mirrored in infinite other product categories then. our public sphere might indeed be in danger of descending into a morass of. indistinct signifiers 54 However progressive harm reasoning can be convenient. and artificial Robert Burrell and Michael Handler provide an elegant analogy to. highlight this point noting that although chaos and injury would eventuate if. everyone in a given city attempted to board one train at the same time this does. not provide a moral or reasonable legal basis against preventing any individual. person from boarding the train 55 Floodgate type arguments have considerable. rhetorical appeal because they paint a dystopic future that we want instinctively. to avoid However rhetoric alone is not an acceptable basis for legal. intervention If the substitutability of brands means it is unlikely that one or even. many dilutive uses would genuinely interfere with expression then a speculative. progressive harm argument surely cannot suffice to justify anti dilution. protection,3 Commercial vs Expressive Speech, Assuming that anti dilution law does benefit speech there is still a need to. consider how the negative speech impacts of the doctrine discussed in Part II. above can be limited so that the net outcome of the protection is a benefit to. expression Proponents of anti dilution law often argue that dilution doctrine is. properly limited if it is applied to prevent only commercial and not expressive. 53 Consumers adoption of new marks for expressive purposes as old favourites lose relevance is consistent. with descriptivist views of the formation of language See eg Heymann above n 50 1323. The descriptivist school by contrast to the prescriptivist view described in above n 50 takes a subjective view of. language rejecting the idea of a correct meaning usage or pronunciation of a word Descriptivists define language. in terms of actual use such that meaning is derived from how people communicate rather than from an external set. of rules Indeed descriptivists assume that both speakers and listeners are to use the legal terminology. reasonable persons that they proceed according to the conventions of the language in which they are conversing. and that they share an interest in effective and efficient communication. 54 Michael Spence Restricting Allusion to Trade Marks A New Justification in Graeme B Dinwoodie and. Mark D Janis eds Trademark Law and Theory A Handbook of Contemporary Research Edward Elgar. Publishing 2008 324 340, 55 Burrell and Handler Dilution and Trademark Registration above n 15 743 In the train hypothetical. one solution would be to impose a maximum number of passengers who can be aboard the train at any. one time However this type of remedy would introduce considerable and perhaps crippling enforcement. difficulties even in the context of the example and would do the same if extrapolated to the vexed context. of trade mark dilution, 2011 Forum Evaluating Trade Mark Dilution from the Perspective of the Consumer 1063. junior uses of trade marks 56 However courts have struggled to find a clear line. between these types of communication Was the seller of Enjoy Cocaine. posters for example promoting its product the poster parodying Coca Cola s. advertising or using a reference to the product s history to comment on its. present day addictive and unhealthy nature 57 Did the t shirt that parodied South. African Black Label beer with a mock up of the beer label that read Black. Labour White Guilt intend to sell t shirts or comment on apartheid 58 It is often. superficial to divorce the commercial content of a use from its underlying. parody criticism or commentary 59, Courts have vacillated between the view that the slightest amount of. commercial intent content or effect should cause the entirety of the speech in. question to be regarded as commercial60 and the notion that even the most trivial. expressive content or purpose must render speech non commercial lest freedom. of expression become illusory 61 Both approaches have their problems the. former ostensibly overprotects brands and is liable to chill speech while the. latter would render any anti dilution law completely meaningless The. uncertainty caused by this divergence of opinion has led to unpredictable and. often unsatisfactory application of the distinction between commercial and. expressive speech in United States anti dilution litigation 62. 4 An Alternative Approach, Bosland proposes an alternative model for ensuring that anti dilution law.
results in a net benefit for speech He first suggests that the problems with the. commercial expressive speech distinction can be mitigated by differentiating. instead between junior uses made in the context of trade that is for branding. purposes and uses that are actually part of the new product such as lyrics in a. song or a picture printed on a poster or t shirt 63 This distinction is a broader. version of the existing idea in trade mark law that a junior use must be use as a. 56 In the United States there is a statutory exemption for non commercial use see 15 USC 1125 c 3 C. as well as other exemptions for comparative advertising and news reporting and commentary. 57 Coca Cola Co v Gemini Rising Inc 346 F Supp 1183 1193 ED NY 1972. 58 Laugh It Off Promotions CC v South African Breweries International Finance BV 2005 2 SA 46. 59 See eg Robert Burrell and Dev Gangjee Trade Marks and Freedom of Expression A Call for Caution. 2010 41 IIC International Review of Intellectual Property and Competition Law 544. 60 See eg Planned Parenthood Federation of America Inc v Bucci 42 USPQ 2d 1430 SD NY 1997 Jews. for Jesus v Brodsky 993 F Supp 282 D NJ 1998 affirmed in Planned Parenthood Federation of. America Inc v Bucci 159 F 3d 1351 3d Cir 1998 Bihari v Gross 119 F Supp 2d 309 SD NY 2000. cited in Patrick Curran Diluting the Commercial Speech Doctrine Noncommercial Use and the. Federal Trademark Dilution Act 2004 71 University of Chicago Law Review 1077. 61 See eg Hoffman v Capital Cities ABC Inc 255 F 3d 1180 9th Cir 2001 Mattel v MCA Records 28 F. Supp 2d 1120 CD Cal 1998 American Family Life Insurance Co v Hagan 266 F Supp 2d 682 ND. Ohio 2002 cited in Curran above n 60, 62 See also David F McGowan A Critical Analysis of Commercial Speech 1990 78 California Law. Review 359 359 Burrell and Gangjee above n 59,63 Bosland above n 9 113 14. 1064 UNSW Law Journal Volume 34 3, trade mark before a court will intervene on the basis of infringement 64 and is. open to many of the same criticisms 65 However Bosland adds to it a dual. causation based model by which to further limit the extent to which dilution. doctrine impinges on speech interests, The first branch of the proposed causation based model provides that there. should be no protection against dilution where a junior use creates only positive. associations with the primary brand Bosland provides the example of an. advertisement for James Boag beer in which a half naked woman climbs. provocatively onto the hood of a black Mercedes and opens a bottle of boutique. beer using the Mercedes badge The argument is that since Mercedes Benz would. presumably be pleased with the association between its luxury vehicles and this. fashionable beverage this use should be allowed 66 I will call this the positive. connotations argument Secondly Bosland s model would allow junior uses that. rely on associations that already exist in the public mind prohibiting only those. uses that generate new negative connotations that would freshly tarnish the. primary brand For example a junior use of the mark NIKE that draws on. recognised associations between Nike and sweatshops should be permitted but. an advertisement for adult entertainment featuring a woman wearing only Nike. sneakers should be prohibited provided there did not yet exist in the public mind. an association between Nike and promiscuity I will call this the no new. tarnishment argument Both elements of this causation based model for limiting. the speech impacts of anti dilution law are problematic. 5 The Positive Connotations Argument, Considering first the positive connotations argument the neat differentiation.
between positive and negative associations is an uncomfortable one To. suggest that any sign or use of a sign conveys indisputably good connotations. ignores the raft of interpretations that meet even the most superficially. uncontentious signs Take for example the traditional yellow and black smiley. face which graces coffee mugs bumper stickers and infinite other happy knick. knacks around the globe The evil twin of this wholesome symbol was spawned. in the popular 1980s Watchmen comics which turned the smiley into a visual. metaphor for a narrative that examines guilt failure megalomania and. compromise with a corrupt power structure 67 Or perhaps they are smiley. 64 Consider the earlier Mercedes beer example The Mercedes mark was not used as James Boag s own. brand use as a trade mark but it was used to promote the beer through its prominence in the beer. advertisement use in the context of trade Both approaches essentially distinguish between the. branding and non branding use of a mark, 65 For a critique of trade mark use theory see also Graeme B Dinwoodie and Mark D Janis Lessons from. the Trademark Use Debate 2007 92 Iowa Law Review 1703 1704 Even amongst those who accept the. doctrine its content is unsettled compare eg Dinwoodie and Janis at 1704 and Stacy L Dogan and Mark. A Lemley Grounding Trademark Law Through Trademark Use 2007 92 Iowa Law Review 1669. 66 Bosland above n 9 115, 67 Jon Savage A Design for Life The Guardian online 21 February 2009. www guardian co uk artanddesign 2009 feb 21 smiley face design history. 2011 Forum Evaluating Trade Mark Dilution from the Perspective of the Consumer 1065. triplets since for many consumers our rounded optimist represents late 80s acid. house culture and modern day acid retro fashion 68 If there can be such. contradictory interpretations of a sign as ostensibly one dimensional as the. smiley face what then of the Mercedes beer example Although this depiction. may well fit the desired image of the Mercedes Benz owner as affluent suave. and immeasurably successful with women reasonable interpretations of the. advertisement could hurt the manufacturer s interests One could be forgiven for. construing the advertisement as sexist Or in light of graphic government. campaigns against drink driving prominently associating Mercedes Benz with. alcohol might not politically desirable for the brand The overarching problem. with the positive connotations approach is that meaning is far more subjective. than it makes room for Reasonable persons will too often disagree as to the. meaning and connotations of marks and of their authorised and unauthorised. Megan Richardson suggests an approach similar to Bosland s positive. connotations model that contains a further step She posits that in addition to. evaluating the impact of an unauthorised use on the primary mark the court or. registry should evaluate the social utility of the junior use Only if the expressive. value of the use outweighs the damage it causes to the famous mark should the. appropriation be allowed 69 To illustrate the need for this cost benefit analysis. Richardson considers Mattel s unsuccessful dilution action against MCA Records. over the use of the mark BARBIE in Aqua s pop song Barbie Girl 70 Mattel s. claim failed on the basis that Aqua s use was expressive rather than. commercial 71 Richardson suggests however that the results are perverse if all. expressive uses no matter how meagre their contribution to social discourse how. destructive they may be to a trade mark s integrity or imagery and how. commercial their flavour now find exemption 72 Rather Richardson considers. that the court should have taken the second step of weighing the value of the. expression against the harm caused to Mattel to determine whether the use. should or should not be allowed Richardson notes that the song Barbie Girl. might have survived this test as it is not terribly damaging to Mattel and there is. some social utility in encouraging young girls to question Barbie s image. However she points to Barbie Enjoys Cocaine t shirts and an adult. Barbiesplaypen com website as examples of uses that might be prohibited under. her proposed model 73, Richardson s proposal adds nuance to the positive connotations approach. However measuring the social value of a junior use in this way involves the. same kind of problematic value judgements that are implicated by Bosland s. model Without wishing to comment on the value of Aqua s own contribution. 69 Richardson above n 45 216 20, 70 Mattel v MCA Records 28 F Supp 2d 1120 CD Cal 1998. 71 Ibid 1140,72 Richardson above n 45 219,73 Ibid 219 20.
1066 UNSW Law Journal Volume 34 3, history provides us with no shortage of philosophical political artistic scientific. and other contributions that are recognised for their value only years after their. time Johannes Sebastian Bach s thousand fugues cantatas and motets attracted. only condescending notice during his lifetime So too of Paul Gauguin who died. down and out defeated by poverty 74 while his rebellion against pretended. rules went on to revolutionise Impressionist painting We have good historical. reasons to be sceptical of our ability to pick up on the value of every new. expression at its first utterance Even Mattel seems to agree 12 years after suing. MCA Records over the Barbie Girl song it adopted an amended version of the. song for a mass advertising campaign which included a dance called The. Barbie choreographed to Aqua s music According to Senior Vice President for. marketing of Barbie at Mattel Barbie has always been a part of pop culture. the beauty of Barbie is that she gets to kiss and make up 75. 6 The No New Tarnishment Approach, The second element the no new tarnishment element of the causation. based model is also flawed This branch of the causation based model stipulates. that a junior use should be permitted if it draws on associations that already exist. in the public consciousness because the use in this case cannot reasonably be. said to have caused any new harm Again this type of analysis invites highly. subjective questions At what point do we consider any given idea or association. to exist in the public mind How many consumers need to have drawn the. connection How much media exposure must it have had What if the public. once knew of the association but has since forgotten about it What geographical. reach will suffice One might ask whether the public is aware for example of. the connection between Nestle and the Ethiopian treasury 76 Woolworths and tree. logging 77 Lynx deodorant and untimely death 78 Wizz Air and the mocking of. Ukrainian passengers 79 The no new tarnishment approach uses the psyche of a. monolithic public as the yardstick for determining whether a tarnishing use is. new However geographical cultural and other differences will mean that. various issues have different levels of exposure in different publics This is not. to say it is necessarily inappropriate to choose a subsection of the public to serve. 74 Henri Perruchot Gauguin World Publishing Co 1964 359. 75 Stuart Elliot Years Later Mattel Embraces Barbie Girl New York Times New York online 26. August 2009 http mediadecoder blogs nytimes com 2009 08 26 years later mattel embraces barbie. 76 Ethiopia Nestle Under Fire for Debt Demands Business Respect 27 December 2002. www businessrespect net page php Story ID 756, 77 See eg New Dodgy Labelling Woolworths Puts Illegally Logged Tissue Back on the Shelves 10. October 2007 Expose Woolworths www exposewoolworths blogspot com see also Woolworths. Under Fire Over Green Paper Sydney Morning Herald Sydney 10 October 2007. 78 Andy Dolan Boy 12 Collapsed and Died After Using Too Much Lynx Deodorant Mail Online 20. November 2008 http www dailymail co uk news article 1087772 Boy 12 collapsed died using Lynx. deodorant html, 79 Wizz Air Mocks Ukrainian Passengers MIGNews com ua 23 December 2009. http mignews com ua en articles 4543 html, 2011 Forum Evaluating Trade Mark Dilution from the Perspective of the Consumer 1067.
as the relevant tool of measurement However where a proposed system. necessitates the selection and preferencing of a section of the public to represent. the so called public mind the onus should be on its advocates to identify and. justify their chosen representative 80, Because a use does not have to be new to be damaging the no new. tarnishment approach is unlikely to succeed in its goal of preventing harm to the. mark owner Even if it could the proposed distinction between old and new. tarnishment is artificial A junior use that contributes to validates or strengthens. an existing negative association is surely no less tarnishing for its lack of. originality An association will gain new exposure and credibility if it comes. from a particularly well regarded source consider for example the high profile. swipe taken at Twentieth Century Fox by popular street artist Bansky and the. writers of The Simpsons in relation to Fox s outsourcing of animation to South. Korea 81 Or the use may bring an association to the attention of a new audience. who had not previously made the connection as occurred through the publication. of Edwin Black s New York Times best seller IBM and the Holocaust 82 The. distinction would also lead to unfair application of anti dilution law The starting. point of the causation based model is that the protection should be available If. so surely Facebook should not be any less entitled to go after Shagbook just. because some people already associate the social network with the online pursuit. of intimate encounters 83 Further what if despite a negative association being. popularly accepted it has no basis in fact Tommy Hilfiger was widely but. falsely rumoured to have made racist remarks on the Oprah Winfrey show The. fact that many people still believe this is true does not make associations of the. mark TOMMY HILFIGER with xenophobia and bigotry any less harmful to. either the man or the brand 84, The distinction would also have problematic practical impacts Consider the. earlier hypothetical example of an adult entertainment advertisement featuring. the mark NIKE If Nike chose not to pursue this use thereby allowing the. association to gain public exposure this could prevent the company from. restraining any subsequent junior use that tarnished the mark along similar lines. For example if a range of adult toys were subsequently released under the mark. NIKE and Nike sued in dilution the case could turn on whether the earlier and. unrelated advertisement had received sufficient market exposure to have brought. the association between Nike and promiscuity to the public mind In effect Nike. 80 See also Laura A Heymann The Reasonable Person in Trade Mark Law 2008 52 St Louis University. Law Journal 781, 81 Bill Barol The Simpsons and Banksy Peel Back the Curtain Huffington Post online 11 October 2010. http www huffingtonpost com bill barol the simpsons and banksy p b 758386 html. 82 Edwin Black IBM and the Holocaust The Strategic Alliance Between Nazi Germany and America s. Most Powerful Corporation Crown Publishers 2001, 83 See Trademark Trial and Appeal Board Inquiry System Proceeding Number 91200221 Application for. Mark Shagbook United States Patent and Trademark Office. http ttabvue uspto gov ttabvue v pno 91200221 pty OPP. 84 On rumours about corporate brands see also Coombe The Cultural Life of Intellectual Properties. Authorship Appropriation and the Law above n 31 143 65.

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