Breakfast with Batman: the public interest in the advertising age.

• Author: Litman, Jessica
• Position: Ralph Sharp Brown, Intellectual Property, and the Public Interest

In an acquisitive society, the drive for monopoly advantage is a very powerful pressure. Unchecked, it would no doubt patent the wheel, copyright the alphabet, and register the sun and the moon as exclusive trade-marks.(1) When Ralph Brown published Advertising and the Public Interest in 1948, the law of trade symbols was entirely a creature of the federal general common law. The new Lanham Trademark Protection Act had taken effect only months earlier;(2) the federal courts' interpretation of the code had yet to be written. Commercial television was still undergoing beta testing.(3) There was no Internet--not even in the pages of science fiction.(4) Computers barely existed. The ENIAC had just been built; the UNIVAC was yet to come.(5) In 1948, commercial advertising was entitled to no First Amendment protection whatsoever.(6) Neither the world of commercial advertising that matured along with the baby boom generation nor the legal framework within which we would try to constrain it was more than a possibility. Fifty years later, it seems remarkable how presciently Ralph's article described the policies and the arguments that would come to dominate the debate over the law of trade symbols today and how incisively it appraised them.

The past fifty years have seen fundamental changes in the nature of advertising and the value our society attaches to it. The legal boundaries of our protection and regulation of advertising have expanded as it has grown to be an ever more pervasive feature of our environment. Normative arguments that may have seemed uncontestable in 1948 appear more controversial in 1998. It would be surprising if a legal argument framed fifty years ago remained as persuasive today. But Ralph's analysis seems even more compelling, now that we have had a chance to see the world of advertising grow in the intervening years.

In Part I of this Essay, I recount Ralph Brown's justification for the rule that trade symbols' legal protection should be limited to cases of likely consumer confusion. Broader protection of trade symbols, affording legal armor to advertising's persuasive function, would yield no benefits to consumers and would disserve the public interest by shielding firms from healthy competition. In Part II, I discuss the expansion of trade symbol law over the past fifty years, as courts and Congress increasingly have disregarded Ralph's advice. In Part III, I describe shifts in American culture, legal attitudes, and business practices that accompanied--and to some degree explain--that doctrinal change. In particular, I point out that trade symbols have become enormously valuable, outshining in importance the products they identify. In Part IV, I urge that the independent value of trade symbols and advertising atmospherics today does not supply reasons for protecting them under the trademark laws. Rather, as I explain in Part V, a critical look at the role of advertising in our lives today reaffirms the importance of Ralph Brown's original prescription: Legal protection for trade symbols, in the absence of confusion, disserves competition and thus the consumer. It arrogates to the producer the entire value of cultural icons that we should more appropriately treat as collectively owned.

1. ADVERTISING AND THE PUBLIC INTEREST

   In Advertising and the Public Interest, Ralph argued that decisions about what legal protection to afford trade symbols should be driven by an analysis of the degree to which advertising itself served the public interest. The public's chief interest lay in the promotion of competition through advertising, Ralph insisted, by providing information to potential consumers about the products they might choose to consume. Where the law enhanced or protected advertising's informative function, it encouraged competition and advanced the public interest.(7) Of course, advertising was designed by merchants who used it to do more than just supply useful information:

   Advertising has two main functions, to inform and to persuade. With qualifications that need not be repeated, persuasive advertising is, for the community as a whole, just a luxurious exercise in talking ourselves into spending our incomes. For the individual firm, however, it is a potent device to distinguish a product from its competitors, and to create a partial immunity from the chills and fevers of competition. The result of successful differentiation is higher prices than would otherwise prevail.(8) Advertising, thus, made use of trademarks, trade names, and other trade symbols combining informational and persuasive elements. Legal protection of the informational function of trade symbols benefited the public; legal protection of symbols' persuasive power provided no public benefit and some detriment in the form of higher prices and diminished competition.(9)

   Trade symbols in and of themselves were worthless to the public, Ralph argued; the public's interest inhered in the ability of trade symbols to inform and to prevent confusion. The law should protect the integrity of trade symbols in order to prevent consumer confusion or deception; that would protect the ability of product sellers to supply information through advertising. The law should not, however, extend additional protection to trade symbols' persuasive function as well, since that would further encourage sellers' understandable tendency to use trade symbols to disadvantage their competitors, with no corresponding public benefit.(10) Additionally, the impulse to select and develop trade symbols with the greatest possible persuasive function would not require any encouragement.(11)

   Ralph's argument was, as he put it, a "conservative" one:(12) Rather than proposing a new approach to the law of trade symbols, he articulated an inspired rationale for the way that the majority of courts had decided the cases that had come before them. The common law of unfair competition protected most trade symbols in most cases from confusing use by competitors, but it had not gone so far as to accord the owner of a trade symbol the exclusive right to use it in the course of trade.(13) Courts interpreting the Lanham Act in the ensuing years drew the same distinction: Despite language in the statute giving owners of registered trademarks the "exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration,"(14) courts required a showing of likelihood of consumer confusion before finding infringement under the Act.(15) Trademarks, the courts insisted, could not be owned in gross.(16) Trademarks should not be considered freestanding items of property, but instead were only symbols, mere repositories of the goodwill that accumulated around the products that they distinguished.(17)

   That principle bears repeating: Trademarks could not be owned in gross. They were appurtenant to the trade in the products they distinguished. An attempt to transfer or license a mark detached from the associated product goodwill was not only ineffective, it worked an abandonment of the mark itself.(18) Divorced from the product it differentiated and that product's goodwill, a trademark was valueless, or, at least, treated by the trademark law as if it were valueless.(19)

   That model of trade symbol law, of course, incorporated some premises about real-world marketplaces that may never have been factually accurate. Trademarks sometimes do have some intrinsic worth; trademarks often acquire value that is separate from and independent of the goodwill in the products they differentiate.(20) The rule may well have been counterintuitive from the outset,(21) but it captured an important principle: Enforceable trademark rights were limited to rights to protect the identifying, informative function that marks performed. Trademark laws did not permit the mark owner to appropriate a word or symbol from the public domain and control its further use, but only to prevent his competitors from using a confusingly similar word or symbol likely to deceive consumers about the source of the competing products.(22) The law of trade symbols sought to advance the public interest by using the trademark law as a device to snooker merchants into policing each other's abuses and thus into protecting consumers from deception.(23) It rooted that effort in the principle that trademark rights were, at bottom, merely rights to act as a surrogate for consumers' interest, and not rights to be protected from competition.

   Ralph's analysis articulated the normative policy underlying those premises. Black letter law drew the distinctions it did because its purpose was not the protection of trademark owners, but the promotion of competition.

2. THE EXPANSION OF TRADE SYMBOL LAW

   Fifty years after the publication of Advertising and the Public Interest, the world of advertising has grown more pervasive and more complex. The law of trade symbols has evolved along with it. Today, the principle that trade symbols may not be owned in gross, and that they are protected only to the extent necessary to prevent consumer confusion, is still good law--but only barely. It remains the case that trademarks are not property in the usual sense. Plaintiffs in trademark infringement suits remain obliged to predicate any recovery on consumer deception. Procter and Gamble's registered trademark gives it no right to prevent anyone from discussing "Tide" the mark, Tide the detergent, or tide, the lunar phenomenon. Procter and Gamble cannot lawfully sell off the mark without also selling the product line to which it is attached.(24) It cannot license someone--say the Coca Cola Company--to use the mark to market "Tide" brand soda with no conditions save the payment of a royalty.(25) It has no leverage that would allow it to prevent the appearance of an orange box of Tide in a movie about people who do laundry, or people who do not, or people who should.(26) It cannot stop the owners...