As you may recall, earlier this year we wrote about a good ruling
in a ridiculous lawsuit by the notoriously overaggressive trademark enforcers at luxury goods giant Louis Vuitton. You can look back
at some of their earlier lawsuits, but the one we wrote about this year was particularly ridiculous. It sued a small bag maker called "My Other Bag" who made a simple tote bag that played on the famous joke bumper sticker "My Other Car is A...." with some sort of luxury car brand listed as the final point. People would put those on not-nearly-as-nice cars. In fact, when I was a kid, my dad had a Ford Pinto (yes, the exploding kind) and it had "My Other Car is a Porsche" as a bumper sticker. It's not a very funny joke (and I totally didn't get it as a kid), but it's a joke. And a fairly common one. So My Other Bag did the same thing with the following tote:
Got it? That's a picture of a bag that looks like a Louis Vuitton bag on the side of a tote. It's obviously a joke, and the district court made that point to LV:
Louis Vuitton is, by its own description, an “active and aggressive” enforcer of its trademark rights.... In some cases, however, it is better to “accept the implied compliment in [a] parody” and to smile or laugh than it is to sue....
The court later pointed out that the fact that LV doesn't find the joke funny
For whatever reason, LV appealed this decision. And while one hopes that the appeals court will make quick work of the case and back the district court ruling, something interesting may be happening as well. A group of law professors has jumped into the case with a fascinating amicus brief
, not just arguing in favor of My Other Bag, but actually making a constitutional argument
that the very concept of dilution
in trademark law is unconstitutional under the First Amendment.
A little background first: as we've noted many times over the years, the original intent of trademark law was not
to be some form of "intellectual property" akin to patents or copyrights. Instead it was designed as a consumer protection statute, to protect individuals from buying Bob's Cola thinking that it was really Coca Cola. That is, trademark isn't about locking up some sort of "property right" as much as it's a way to protect consumers from being fooled or tricked into buying a product that is not what it says it is. And yet, as the concept of "intellectual property" became a bigger and bigger thing, trademark lawyers kept repositioning trademark law as being just a third prong of the same kind of "intellectual property" as patents or copyrights.
A key part of this was inventing, basically out of thin air, the concept of "dilution." Historically, in order to prove trademark infringement, you had to show "a likelihood of confusion" from consumers, fitting with the point above about how it's for consumer protection. However, trademark lawyers found that way too constraining, and added this idea of "dilution," which was a situation where you could be found to violate trademark law if you merely "diluted" the original mark, even if there were no likelihood of confusion. For years, we've pointed out what a bad idea this was
, but Congress, always eager to do short-sighted things in support of expanding intellectual property concepts, allowed the concept of "dilution" to be added to trademark law.
Enter the amicus brief from a group of excellent law professors, led by Chris Sprigman and Rebecca Tushnet (both of whom have been mentioned here on Techdirt many times before). The brief was also signed by some other legal all-stars, including Pam Samuelson, Mark Lemley and Robert Brauneis (also mentioned here many times). They argue, first, that MOB isn't causing any customer confusion. But then they also argue that the very concept of dilution itself is unconstitutional
as a restriction on the First Amendment:
At the outset, it is important to recognize that the First Amendment landscape has changed substantially in recent years. This Court has ruled that content-based suppression of non-misleading speech, including non-misleading commercial speech, is presumptively unconstitutional and, to be upheld, must be shown to be narrowly tailored to serve compelling state interests....
Trademark law’s anti-dilution provision creates a content-based right that applies to non-misleading commercial speech. Unlike defamation, it is a right unknown to the Framers of the Constitution. It was developed in the early decades of the twentieth century, when truthful commercial speech received no constitutional protection. LV claims that dilution law allows it to prevent the creation of unauthorized new associations with its mark, which is to say, to prevent consumers from forming new opinions and beliefs even in the absence of deception. This is not just content-based suppression of speech, it is viewpoint-based suppression of speech – the prime evil against which the First Amendment protects. Yet Congress provided no compelling interest to sustain its new restriction on non-misleading commercial speech when it enacted the federal dilution law, nor did it attempt to use the least restrictive means to achieve any such interest
In other words, there's a big problem with the very concept of dilution in trademark law, and it's about time someone did something about it.
Chances are this argument goes nowhere right now. Courts are (somewhat reasonably) loathe to take on constitutional issues when they can deal with a case directly on the law. And in this case, it seems fairly clear that My Other Bag's totes are not confusing and not trademark infringing in the slightest. So it's possible that the 2nd Circuit will avoid the constitutional issue altogether. But this is an issue that's not going away. There's been a pretty constant push to expand dilution law and lots of big companies regularly claim dilution to get around a lack of customer confusion in trademark lawsuits. That means that sooner or later a court is really going to have to address this issue, and it's difficult to see how the dilution concept can pass First Amendment muster.