Best of 2008: Color me infringing

First posted on December 8, 2008.

Trademark law continues to slip from its moorings in subtle ways.  From Inside Higher Ed (hat tip to its editor, Doug Lederman, for sending it along):

On Wednesday, the U.S. Court of Appeals for the Fifth Circuit — ruling in a case involving an apparel manufacturer that made T-shirts that incorporated the colors but not the names or logos of major college football programs — declared that the use of “color schemes along with other indicia” that have come to be strongly associated with a university can be enough to trigger a finding of trademark violation when they create a “a probability of confusion” in the mind of consumers.

What’s the thinking here, exactly?

A federal court in 2006 endorsed the universities’ arguments that Smack’s products were purposefully similar enough to their own licensed products that they were likely to mislead consumers into believing that the company’s goods were produced by or associated with the universities’ own. . . . The three-judge panel of the Fifth Circuit appeals court took very much the same stance as the lower court. . . .

“[W]e conclude that there is no genuine issue of fact that Smack’s use of the universities’ color schemes and other identifying indicia creates a likelihood of confusion as to the source, affiliation, or sponsorship of the t-shirts. As noted above, the digits of confusion — particularly the overwhelming similarity of the marks and the defendant’s intent to profit from the universities’ reputation — compel this conclusion,” the court’s opinion states.

I hadn’t entirely assimilated this “digits of confusion” terminology, though it’s been out there for a while, but, bigger picture — what’s really going on is somewhat troubling.  I’ve been following it for years, mainly with respect to merchandise meant to announce sports affiliations (and would argue that personal endorsement cases implicate different issues), but have never quite enunciated it before quite this way:

Trademark law is no longer merely protecting professional sports teams (such as those in Major League Baseball or the NCAA) from LIKELIHOOD OF CONFUSION as to source or even as to what we would argue is the original meaning of affiliation or sponsorship.  Those words once meant that the law would prevent consumers from being under the mistaken impression that merchandise was of a quality such that the trademark owner, which by virtue of secondary meaning was itself associated with a certain level of quality, was one of two things:

1. affiliated with the unauthorized user, i.e., they shared common ownership and hence a mutual interest in maintaining the quality level associated with the brand; or
2. sponsoring the unauthorized user, i.e., was affirmatively holding out the sponsored good or service as being of a quality worthy of association with the brand

Notwithstanding the boilerplate recitations used by plaintiffs in rogue sponsorship cases about the teams’ concern for merchandise quality and other such nonsense, the development of trademark law has removed consumer protection considerations — i.e., the once-fundamental concept that the main purpose of a trademark is to tell the public “what you think you’re buying is what you really are buying” — from its rationale.  It gives trademark owners the sole right to exploitation of their brand equity in almost any way imaginable, with no consideration whatsoever of the reason LIKELIHOOD OF CONFUSION is at the heart of a claim for infringement.

That is not, in and of itself, offensive, though there is something to be said for a simpler time when, even if such rights could be enforced as they are today, they were not feverishly pursued at every conceivable juncture as they are now.

My problem, however, is that courts are failing to remember what should be a corollary about extending trademark rights once we go beyond trademark as a “source identifier” in any coherent sense of the term.  True, no one thinks football teams, by virtue of the qualities associated with them and which is projected within the meaning of their secondary meaning, are able to convey those qualities in a meaningful way to sports-emblem junk.  Fine:  This is brand equity as we understand it today.

But my posited corollary is this:  Once so removed from their original mission, there should be a presumption against the extension of trademark rights, already extended as to type of protection, additionally as to what is protected, i.e., “the scope of the mark.”

This, courts are neglecting, or refusing, to do, as this decision demonstrates.  And thus trademark’s girth continues to bloat.  The rich get richer, the range of possibility for both free commerce and expression contracts — and the “brand equity” in society of the law and those that interpret it sinks like a stone.