Missing the mark in cyberspace: misapplying trademark law to invisible and attenuated uses.

• Author: Folsom, Thomas C.

"... its chief selling points are the words 'Don't Panic' ..." (1)

ABSTRACT

Leading cases have misapplied ordinary principles of trademark and unfair competition law in cyberspace, especially to attenuated and invisible uses. Though the leading cases uniformly assert they are merely applying ordinary principles of trademark law to cyberspace, they are actually in conflict with one another and with ordinary principles of trademark law. The leading cases are in conflict because they tend toward the extremes of over-protecting or under-protecting marks in space, and both extremes are wrong. These cases put trademark law on a path that will either diminish the value of cyberspace by imposing liability on an indexer who tries to recover costs by selling targeted advertising, or will disfigure the law itself as it adjusts the meaning of "use" to exonerate such activity. This article explains why current approaches are unlikely to resolve the conflicts in the cases, and suggests a desired solution.

TABLE OF CONTENTS Abstract Summary of the Argument I. The Benchmark: Ordinary Principles of Trademark Related Law A. Trademark Law and Likelihood of Confusion 1. The first generalization: not mere inconvenience or possibility of confusion 2. The second generalization: sponsorship as well as source 3. The third generalization: not for the small number of confused consumers 4. The fourth generalization: questions of fact 5. The fifth generalization: special cases and context 6. An almost-final, sixth observation: a flexible remedy (and eBay) 7. The final, seventh observation: the multiple ambiguity of "use". B. Extreme Trademark Cases and Doctrinal Creep C. Other Legal and Extra-Legal Controls in Cyberspace 1. FTDA/TDRA factors 2. ACPA factors 3. UDRP factors 4. Architectural factors II. Missing the Mark in Cyberspace A. Over-Protection B. Under-Protection ("no use, no foul"--no remedy) C. Counting Cases on the Internet III. Why There Is a Problem with Marks in Cyberspace A. Institutional Economics B. Paradigms a Dozen: The Capability Problem 1. The Juridical Capability Problem 2. The Academic Capability Problem: insufficiency of current trademark doctrinal solutions (looking for a new heuristic in all the wrong places) 3. The New Technological Use Problem: the elephant--or the horse, train, shoe or billboard, whale or cloud--in the living room C. The Desired Solution Conclusion and Concluding Postscript Appendix A: Cyberspace Glossary Appendix B: Evidence of "Use" to Support Registration SUMMARY OF THE ARGUMENT

This article explicitly defends the assertion, implicit in a prior article: (2) there is a problem with invisible and attenuated uses on the Internet or in cyberspace. That is, the current cases really do miss the mark in space. In the three parts that follow, Part I will set forth the benchmark of ordinary principles of trademark law most relevant to invisible or attenuated uses, including a broader context of related law and social norms, Part II will summarize or count the cases that over-protect and under-protect marks in space relative to ordinary principles, and then Part III will draw upon concepts from institutional economics to explain that the systemic juridical capability problem with marks in space is not entirely surprising. A concluding postscript will suggest the outlines of a solution to the problem of marks in space.

Leading cases have misapplied ordinary principles of trademark and unfair competition law in cyberspace, especially to attenuated or invisible uses. They are wrong because they do not reach the correct results, do not do so for the right reasons, and are not persuasive. (3) When even the more influential cases dealing with marks in cyberspace are wrong--when they miss the mark in cyberspace--it is time for a reassessment. (4) The cases are wrong because they have not purposefully defined the nature of cyberspace, nor have they usefully distinguished the kinds of conflicts that typically occur among the characteristic users there. As a result, the cases do not now and cannot in the future, except by luck, hit the right target for the right reason or for any persuasive reason.

This article asserts that there is a fundamental conflict in the cases that will not be resolved by any simple application of ordinary principles of trademark law, unaided by an explicit understanding of cyberspace itself. To make this article more accessible to a general readership and to identify some of the relationships between this article and a prior article, a preliminary note follows. Readers who are specialists in trademark law in cyberspace may skip immediately to Part I of the article which follows this preliminary note, but all readers might benefit from reviewing the preliminary note, either before or after reading the rest of the article.

Preliminary Note on Law and Technology: The Prior Article

This article concerns technical trademark law in two senses, but is intended for a general audience. This is because the technical or formal aspects of trademark-related law are self-contained in Part I of this article and because the technical or "high tech" aspects of cyberspace can be, and in a prior article have been, adequately explained so that ordinary lawyers familiar with ordinary principles of law can engage in the analysis. What follows are some of the reference points contained in a prior article and which will help the reader to follow the "high tech" propositions used in this one.

It is possible to define an objective cyberspace with characteristic values. (5) Once this is understood, conflicts in cyberspace can be resolved in a way that is principled, predictable and practical. Moreover, the law's interventions might also enhance the values of cyberspace, rather than destroy them. The prior article concludes that a new factor, "the nature and place of use," can transform existing law to accommodate cyberspace disputes generally arising in fields such as contract, trademark, copyright, personal jurisdiction, and choice of law. (6)

An objective cyberspace includes both a gateway and a distinctive activity set, the former defining its architecture, the latter defining its function or use, and both together defining its values. (7) These may be summarized as follows:

A cyberspace gateway is any embodied switched network for moving information traffic which may satisfy the further characteristics of cyberspace. Examples of such gateway technologies forming the architecture of space include the Internet and the phone system. (8) The cyberspace activity set is a distinctive set of activities enabled or enhanced by a cyberspace gateway or technology. These include: access, navigation, information-activity, augmentation (and trust). (9) Cyberspace values (characteristics or virtues) are the distinguishing features in its architecture (design) and in its function (use). Any particular event that intersects with or occurs within an objective cyberspace is more or less valuable to the extent it actually implicates the distinctive characteristics of cyberspace. Other things being equal, and the law being open for development in one way or another, there is a substantial advantage in choosing to develop the law along a path that furthers the values of cyberspace, rather than along a path that doesn't. (10) As cyberspace implies navigation, the prior article suggested that "markers" in space can be used as invisible or attenuated addresses, magnets or marks (or as roadblocks or detours). (11) Understanding the nature of use in the context of navigational interests and conflicts in an objective cyberspace may be summarized as follows:

A marker in cyberspace is any expression placed in cyberspace that functions as a visible, invisible, or attenuated address or magnet to draw a user to an expected destination. Some markers aid in the access, navigation and information-activity of cyberspace; other markers retard those values while destroying trust, making augmentation dangerous, and constructively denying access. Invisible markers include hidden text or unseen metatags placed within a web site, or deployed within keywords that trigger targeted advertisements, all of which act as magnets to draw traffic. Attenuated markers include vanity domain names or phone numbers, both of which act as addresses to draw traffic to the site or to the dialed number. Other dispositions of invisible markers might occur when an expression is warehoused, or otherwise removed from circulation, effectively acting as a roadblock to spoil another's use of that expression as a marker; or when an expression is used as a detour to trap or divert traffic from an otherwise intended destination. The spoiling or trapping marker hinders a user from reaching an otherwise expected destination, or deceives a user into going to a different destination than intended. (12) The concept of markers in space, functioning as they do, allows for a distinction between harmful or predatory activity on the one hand, and helpful or value-adding services on the other. (13) This may be summarized as follows:

A pirate in cyberspace includes any person who changes the "map" to cyberspace by moving markers, taking markers out of circulation, or placing false markers, thereby planting deceptive magnets and addresses, or otherwise spoiling or tampering with the ability of users to navigate in cyberspace. A magnet or address is deceptive to the extent it draws a user to an otherwise unintended destination, or hinders a user from reaching an expected destination. Piracy is the more harmful to the extent it is the more uninvited, predatory and non value-adding. (14) A guide in cyberspace is any person (a mapper) who places or who controls the placement of addresses or magnets, publishes addresses or magnets in the form of a directory or search engine, or otherwise promotes navigation in cyberspace; or any map, chart, directory, search engine or comparable...