The role of creativity in trademark law.

• Author: Fromer, Jeanne C.
• Position: Symposium: Creativity and the Law

INTRODUCTION I. TRADEMARK LAW A. Implementation B. Theory II. THE CREATOR AND CREATIVITY A. The Mark's Creator B. Creativity's Role in Trademark Law CONCLUSION INTRODUCTION

From her outre fashion--such as a dress of bubbles and a lobster headpiece (1)--to her music, Lady Gaga is frequently touted as a creative force in contemporary pop culture. (2) Just who created her moniker, however, is the centerpiece of a 2010 lawsuit filed against her (which has since settled on confidential terms). (3) Her ex-boyfriend and music producer Rob Fusari sued her to recover a percentage of her revenues, alleging a breach of contract pursuant to which Fusari had helped Lady Gaga craft some of the songs on her debut album and introduced her to key music executives. (4) Particularly interesting is the tale Fusari tells in his complaint to build his case. A significant part of his claim rests on the allegation that he created the "Lady Gaga" name. According to Fusari, he crafted the name when he sent Stefani Germanotta (Lady Gaga's birth name) (5) a text message from his cell phone containing the Queen song title, "Radio Ga Ga," which his phone's spell checking program changed to "Lady Gaga." (6) According to Fusari, "Germanotta loved it and 'Lady Gaga' was born." (7) Lady Gaga sings a different tune. As she tells it, she came up with the name following Fusari's repeated singing to her of "Radio Ga Ga" as a joke, due to some Queen-like harmonies in her recordings. (8)

From the vantage point of trademark law, this dispute is fascinating. The disagreement centers on who originated Lady Gaga's brand name: surely a bona fide trademark for her musical services, products, and the like. (9) Nonetheless, nowhere to be found in Fusari's complaint or Lady Gaga's subsequent counter-complaint is any claim that Fusari is the proper owner of the "Lady Gaga" trademark. (10)

This Article situates this lawsuit in trademark law by exploring the role of creativity in trademark law. Trademark law--unlike patent and copyright law, its intellectual property cousins--is not structured to reward creators for producing particular content. (11) That is unsurprising because trademark law and theory--as described in Part I--is significantly different than that of patent and copyright. As the Supreme Court recently remarked, trademark law was "not designed to protect originality or creativity," while patent and copyright law were. (12) Nonetheless, as Part II analyzes, there are critical ways in which trademark law, like patent and copyright law, seeks to encourage creative activity, even without directly rewarding marks' creators. This underappreciated current of incentive to be creative courses through trademark law in ways that complement trademark law's basic purposes. At the same time, however, trademark law's drive to reward creativity has also likely helped justify its expansion in ways unmoored from core trademark theory.

1. TRADEMARK LAW

   As a springboard for analysis of the role of creativity in trademark law, this Part recounts fundamental aspects of trademark law, starting with its current implementation and followed by a discussion of the principles understood to be animating the law.

   1. Implementation

      Words, symbols, logos, and sometimes a product's design or packaging may be protected under trademark law. (13) According to the Lanham Act, these are protectable under federal law so long as they are "used by a person" in commerce in a distinctive way "to identify and distinguish his or her goods ... from those manufactured or sold by others and to indicate the source of the goods, even if that source is Moreover, state laws frequently protect trademarks as well, see, e.g., Joe Cole, Trademark Terms Under the Lanham Act and State Law, 19 J. CONTEMP. LEGAL ISSUES 70, 70-72 (2010), but I do not discuss that avenue of protection herein. unknown." (14) Federal law similarly protects marks that designate services. (15)

      There are two ways in which a mark can qualify as distinctive. First, certain marks are inherently distinctive, in that at the moment of first use in conjunction with a good or service, they are already capable of identifying a unique source of that good or service. (16) Marks are considered to be inherently distinctive if they are arbitrary, fanciful, or suggestive. (17) As the Fifth Circuit explained, "[a]rbitrary or fanciful terms bear no relationship to the products or services to which they are applied." (18) While fanciful terms--like "Kodak" for photographic goods--are new coinages, arbitrary terms--such as "Apple" for computers-are not. (19) A suggestive mark, such as "Polar" to signify air conditioners, "requires imagination, thought and perception to reach a conclusion as to the nature of goods." (20) Although one of its senses connotes coldness, it is not a mere description of air conditioners or one of their qualities. (21)

      Alternatively, marks that are not inherently distinctive, but are descriptive of the particular good or service, can become distinctive if there is proof of secondary meaning. (22) A descriptive term, such as "Vision Center" for a store offering eyeglasses, directly "'identifies a characteristic or quality of an article or service,' such as its color, odor, function, dimensions, or ingredients." (23) Secondary meaning arises once "the primary significance of the term in the minds of the consuming public is not the product but the [particular] producer" of it. (24) When registering a mark, the Patent and Trademark Office (PTO) "may accept as prima facie evidence that the mark has become distinctive ... proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made." (25)

      Terms that are (or become) generic--which can happen by "nam[ing] ... a particular genus or class of which an individual article or service is but a member," (26) such as "computer" as a mark for computers or "aspirin" for the pain relief medication--cannot receive trademark protection, even if secondary meaning is established. (27)

      Distinctive marks used in commerce are protectable, either via registration and enforcement, (28) or through a provision allowing enforcement of unregistered marks. (29) Federal law protects trademark registrants against another's

      use in commerce [of] any reproduction, counterfeit, copy, or colorable imitation of [their] registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. (30) Unregistered marks are similarly protected. (31) In judging the likelihood of consumer confusion between two marks, courts typically look to the following factors: the strength of the plaintiffs mark, the proximity of the goods with which the marks are associated, the marks' similarity, evidence of actual confusion, the marketing channels used with each mark, the type of goods at issue (including how much care a purchaser would typically use before buying), the defendant's intent in using the mark, and the likelihood of expansion into other products. (32)

      Even though protection against infringement is provided whether or not the mark is registered, there are significant advantages to registration. If an entity succeeds in demonstrating to the PTO that a mark it uses is entitled to trademark registration (including that an identical or sufficiently similar mark is not already in use in a way that would confuse consumers), (33) that entity benefits in multiple ways. Among the advantages conferred are nationwide constructive use conferring priority over most users of the same or similar marks, (34) enhanced remedies in federal court, (35) and the possibility of the mark becoming incontestable in many ways after five years. (36) Conversely, there are disadvantages for the owner of an unregistered mark. For that owner, an infringement action might lie only if the unregistered user has priority, typically due to an allegedly infringing use in a geographic area where the marked products or services were already being sold or advertised or where the mark's reputation has been established. (37)

      With this primer on the contours of current trademark law, it is instructive to turn to the law's theoretical foundations.

   2. Theory

      Trademark law originated to protect indications of an article's source, but only in the strictest sense. As Beverly Pattishall explains of nineteenth-century trademark law, "Even though an article may have become well-known under an arbitrary mark, if that mark did not directly denote the article's source, another was free to use it." (38) This rule stemmed from two historical uses of marks: the proprietary mark affixed by owners so that they would be able to identify and retrieve their own goods after shipping, (39) and the regulatory production mark required by law or guilds to be affixed to certain goods so that defective or illegal work might be traced to the goods' originator for varied punishments. (40) Rights in these marks focused primarily on protecting producers from competitors' illegitimate interference with their trade rather than on the consumer. (41)

      As suggested by current trademark law, (42) the law has broadened beyond these narrow, early purposes. Trademark law came to emphasize protecting consumers from confusion to foster fair competition and to justify a more extensive right. (43) The increased production capacity for goods ushered in by the industrial revolution boosted instances of advertising to the public to distinguish between these goods, which popularized trademarks as identifiers of the source of goods. (44) As time marched on, consumers began to know less and less about the specific source of particular goods. (45) Nonetheless, a trademark affixed to goods would help consumers know that those goods...