This NYT article caught my eye the other day: apparently the Fieldston School has an annual fashion show, where the operative constraint is that the outfits can be made of anything except fabric. So the students and faculty made clothes out of magazines, photographs, and beads. The Gray Lady’s article makes it clear that the students find this a fantastic exercise, and that it’s generally wonderful, creative, inventive, and something to be admired.
At the same time as reading this, I was pondering the latest trademark case out of the Ninth Circuit, Au-Tomotive Gold v Volkswagen. This was a case where Au-Tomotive had bought genuine badges from VW and Audi, and mounted them on license plates, plate frames, keychains, and the like. VW and Audi sued on the basis of consumer confusion, arguing that consumer might purchase these keychains thinking that they came from the car sellers. Au-Tomotive defended on the basis that (1) there was no consumer confusion, and (2) that trademark’s “first sale” doctrine insulated them from liability. The former argument is pretty standard, but the first sale doctrine is a little more unusual: like the doctrine of the same name in copyright, essentially it says that an IP owner cannot control all uses of a product that happens to have that intellectual property in it. So, once I buy a (physical) book, the publisher generally has no right to control what I do with the physical object of the book, even though the publisher retains copyright in it. And in trademark law, first sale is supposed to limit the control that a trademark owner has over the physical object that I’ve bought: in theory, the trademark owner shouldn’t be able to control what I do with the trademarked product unless I create an actionable consumer confusion using that product.
The brains trust that is the Ninth Circuit Court of Appeals found in favor of VW and Audi, on the basis of post-sale confusion. That is, it said that people looking at the Au-Tomotive product might think that it comes from Audi or VW, even though they’re not actually doing anything other than looking at the Au-Tomotive product. Like pretty much every post-sale confusion case, this is stupid and mis-conceived. Not every kind of confusion should be actionable. Trademark shouldn’t protect against every time that someone has to think or wonder; trademark should concern itself with harms to the consumer that involve purchasing mistakes or diversions. But lots of courts, especially ones dealing with post-sale confusion, think that the trademark owner has a property interest in gross that should be protected, and so create confusion-based rubrics to conclude in their favor.
Which brings us to the Fieldston School. Au-Tomotive is a stupid decision (one of many in trademark law) but not one that the Fieldston School’s Fashion Show needs to worry about, surely? Actually, no. The kinds of uses that the kids at Fieldston make of trademarked products is exactly the kind of thing that Au-Tomotive proscribes. If someone might wonder that this dress was actually licensed by Campbell’s Soup (or the Warhol Estate), or think that this one should have been made with the permission of the owner of Pink Batts, or that this one comes from Sports Illustrated, then we have exactly the kind of post-sale confusion “harm” that the Ninth Circuit was so anxious to protect in Au-Tomotive. Applied on it’s face, Au-Tomotive gives trademark owners more-or-less complete control over the uses of their products, in a manner that is profoundly anti-innovation. Which sucks for the kids at the Fieldston Fashion Show.
And for all of us.