Trademark morality.

• Author: Bartholomew, Mark
• Position: II. Detecting Unfairness C. Privileging Use of Personal Names through Conclusion, with footnotes, p. 122-161

3. Privileging Use of Personal Names

   A trademark treatise writer in 1885 analogized participants in the American economy to knights in a medieval tournament. "Each man stands upon his own merits," he wrote, "just as a knight at a tourney has his own color to identify him with valor and high emprise." (179) In this tournament, it was important for each participant to identify himself to all other competitors. Only then would he be able to fully measure himself against others. Moreover, although a medieval knight was meant to live by a self-imposed code of chivalry, the commercial cavaliers of the late nineteenth century could not be trusted to police themselves. "Piracy must be restrained by the iron grasp of justice, that laudable industry may flourish," proclaimed the treatise writer. It was for the courts to help set the ethical boundaries of this tournament and "uphold a high mercantile morality." (180)

   In keeping with the idea that the marketplace was a place for self-definition and that courts had a role in encouraging this process, late nineteenth-century trademark law chose to recognize an absolute right, even in the face of consumer confusion or competitive injury, for citizens to use their own name for the purposes of trade. Names are an obvious badge of identity, the personal marker we most commonly use for self-presentation. (181) The doctrinal privileges afforded competitive use of personal names can be explained by the moral argument that it was unfair to prevent certain citizens from having the opportunity to shape themselves in economic competitive struggle.

   In 1875, the New York Court of Appeals instructed that "every man has the absolute right to use his own name in his own business, even though he may thereby interfere with or injure the business of another person bearing the same name." (182) In that case, the plaintiffs' mark, "Meneely," had been in use since 1826 and had "become a designation or trade mark of great celebrity and value to the plaintiffs." (183) Use of the same name in the same type of business in the same town by another person named Meneely, however, was not actionable under trademark law despite the consumer confusion produced by such use. (184)

   Such a rule was not justified by prudential concerns. After all, some consumers would inevitably fail to realize that the junior user of the surname was unaffiliated with the senior user. In such circumstances, the senior user was likely to lose some potential sales and some purchasers were likely to buy from the defendant while under the impression that they were trading with the plaintiff. Rather, the privilege granted to use of personal names stemmed from an ethical argument about the accoutrements of personhood. Someone pursuing "the avocation of a lifetime in a corporation" under her own name should not be blocked by an infringement action. (185) As one leading treatise of the time explained, there was a shared belief in this country that the identity concerns bound up in the right to use one's own name in business should trump other concerns:

   The general impression is prevalent that a man's name, like his house, is particularly his own; and an Englishman or American is quick to resent any interference with such rights by the courts. The common law has taught them that every man's house is called his castle....And his name is more dear to him than his house. (186) The Supreme Court agreed, describing the right to use one's name in a business in the strongest of terms:

   A man's name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property. If such use be a reasonable, honest and fair exercise of such right, he is no more liable for the incidental damage he may do a rival in trade than he would be for injury to his neighbor's property by the smoke issuing from his chimney, or for the fall of his neighbor's house by reason of necessary excavations upon his own land. These and similar instances are cases of damnum absque injuria. (187) Reviewing Supreme Court precedent on this issue, the Second Circuit noted in 1905 that the Court '"has reasserted and reaffirmed in clear and unequivocal language the right of every man to use his own name in all legitimate ways." (188) Thus, from the outset, trademark doctrine was structured in a way to bolster attempts to assert one's identity in the marketplace. One must have the right to use one's given name in business, even at the risk of collateral consumer damage. (189)

   The absolute privilege to use one's own name in the marketplace, even if that name confused others, waned over time. As the twentieth century progressed, judges began to mention the competing concern of consumer protection when evaluating whether a defendant accused of infringement should be permitted to use his own name in business. Although still stressing the importance of being able to use one's own name, courts began to require defendants to take precautions to prevent confusion. (190) Many decisions required the second user of a trademarked personal name to attach disclaimers to its packaging or discontinue the use of confusing trade dress. (191) Courts continue to resolve personal name cases in the same manner today. (192)

   Nevertheless, even though the courts' protection of eponymous business owners weakened after its early twentieth-century high-water mark, the privilege for personal name use still remains an important component of modern trademark law. Well into the twentieth century, courts described the ability to use one's own name in business, despite the confusing presence of an identical established trademark, as a "sacred right." (193) Through common law decision making, a "personal names rule" emerged that raises barriers on the trademarking of personal names. Under the rule, personal names cannot be inherently distinctive. In other words, the proponent of a mark based on someone's name has to prove secondary meaning in the minds of consumers before the mark can be legally recognized. (194) In effect, this results in businesses having to wait years before they can trademark a personal name and even then having to go through the costly process of documenting "an association formed in the minds of consumers between the mark and the source or origin of the product." (195) By contrast, other words or symbols not involving personal names are eligible for trademark protection immediately, before any evidence has developed that consumers associate the proposed mark with its proponent. (196)

   Even when a company does manage to prove secondary meaning and receive trademark protection for a personal name, judges will reduce the value of any verdict of infringement against a competitor blessed with the same name, balancing the need to protect the senior user and consumers from injury with the goal of facilitating the use of personal names in business. (197) When the plaintiff wins a trademark infringement suit involving the defendant's confusing use of a personal name, only a limited injunction is granted. This limited injunction permits continued use of the name in some form along with a disclaimer. (198) By sharp contrast, a successful infringement case not involving the defendant's use of a personal name usually results in an injunction completely preventing use of the confusing term. (199) More tailored relief in the form of continuing use with a disclaimer is frowned on. In fact, in cases not involving personal names, courts express great skepticism that disclaimers can ever successfully prevent consumer confusion. (200) Hence, courts offer a half-remedy in personal names cases, one that permits more residual confusion than in the typical successful infringement action.

   What is most striking is that the privilege afforded use of personal names continues at all. Any privilege for use of personal names comes at a cost for consumers. Consumers are likely to be confused by simultaneous use of two personal names and senior users are likely to suffer lost sales. Like the focus on intent, the personal names privilege is hard to square with the efficiency rationale for trademark protection typically voiced by modern judges. If the privilege for competitive personal name use cannot be defended in terms of consumer welfare, the real justification may lie in a belief that it would be unfair to deprive individuals of the spiritual and dignitary value of such uses.

   3. MAINTAINING SEXUAL PURITY

   Judges deciding trademark disputes are motivated by more than fairness concerns. Sexual usage of a trademark triggers moral judgment and leads to particular doctrinal rules. In the early twentieth century, the introduction of sexuality into new commercial environments provoked a legal backlash. Judges adjusted the law of obscenity and slander to police and promote a particular vision of womanhood. Trademark law was invoked to prevent mark uses that clashed with this chaste vision, particularly uses suggesting sex outside of marriage. Concern with sexuality in the marketplace still influences trademark decisions today. The best evidence of this is trademark dilution law's willingness to presume tarnishment from sexual uses, but not from other uses equally likely to harm mark reputation. (201)

1. Biology, History, and Sexuality

   Sexually related activity is a surefire way to trigger our moral judgment. (202) In fact, when asked to describe immoral behavior, the first thoughts of many turn to intimate physical activity. (203) Our instinctive judgment of sexual activity stems from the Purity/Sanctity moral foundation. This category derives from intuitive concerns with physical and spiritual contagion. Humans developed a variety of cognitive reactions to potential illness. These reactions were adaptive responses designed to keep individuals safe from such threats as tainted meat and transmittable diseases. By developing feelings of disgust when viewing such...