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Friday, December 02, 2011

When Easy Cases Make Bad Law

I'm glad to be back, and thanks to Prawfs for having me.  I hope to blog on a few different issues, and use my visit to rejuvinate my permablogging at Madisonian. I want to start by picking up a topic nicely covered by my Madisonian co-blogger, Greg Lastowka -- the recent case involving Bella's jacket from the movie Twilight. Perhaps you've heard of it -- the movie, I mean, not the case.

There is a maxim that "Hard Cases Make Bad Law." Today I want to talk about a lesser used maxim - when easy cases make bad law. But first, a bit about the case after the jump.

I've never seen the movie, but apparently the Bella Swan character wears this jacket. A jacket so popular that...it was discontinued before the movie ever came out. Not surprisingly, the jacket became wildly popular. Indeed, Bella wears the jacket in key promo photos, in this country and others. As Greg notes, the image is everywhere.

And so the manufacturer, BB Dakota, brought the jacket back. But here's the kicker. They renamed it the "Twilight" jacket. And, they put a hang-tag on it that used the very same promo photo described above. Here is one on sale at eBay. To be fair, BB Dakota did not just use the picture - it added information - here is an image of the hangtag, which BB Dakota sent widely with instructions to use the image in advertising, which retailers did.

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See how the words "BB Dakota as seen in Twilight" were added the image? This is where things get interesting. BB Dakota argued that the purpose of the hangtag was "nominative." That is, it used the image to call Twilight by name, much in the same way I might say, "Did you see Twilight?" The idea is that it can't be trademark infringement if you are just calling a product by its name.

 This is also where things get seriously confused. As Greg makes clear (and others of my IP colleagues have noted offline), nominative use doctrine - though well meaning - is a real mess. The district court here goes down the rabbit hole and does little to clarify things.

Thus, I want to make clear that I agree with my colleagues that the state of the law is a mess, and this opinion is not so great. Greg does a great job of analyzing the problems. Instead, I want to take a step back. Specifically, this was a ridiculously easy case. Greg notes: "What distresses me is not so much the ruling, but how much the opinion exemplifies the general trend in trademark doctrine of ignoring the interests of consumers in favor of the proprietary claims of powerful franchises."

I would go a step further and say that despite the troubling general trend this is not a case BB Dakota was ever going to win, any time, in front of any judge. This was not a case to make policy, and at no time, whether before or after I entered academia, would I have ever counseled a client to pursue this strategy.

Don't get me wrong - there has to be a way for BB Dakota to communicate that this was the jacket worn. The added language for example. A poster next to the display with a screen cap from the actual movie. Something, anything, other than renaming the jacket the "Twilight" jacket and putting a promotional poster image on a hangtag.

Note that I say this is an easy case holistically, without reference to specific doctrine (which I will do in a bit). Instead, I say it as a rule of thumb - when you name your product after a well known movie that it appears in, and put the movie poster on a hangtag, you lose. In the same way that you lose if you try to argue that peer to peer music sharing is fair use. You just can't win, and you never could.

Now, to the part where some of my colleagues might disagree with me. BB Dakota should have lost in this case, as a matter of doctrine and as a matter of policy.

Start with copyright. Yes, the image is everywhere, thanks to fan sites. That's a fair use and I would say should be protected. Greg takes issue with the court giving dispositive weight to the fact that the whole image was copied. I agree that this has the potential to create bad precedent, but it's not the first time a court spent little time on a weak fair use argument. Greg worries that cases like this make fair use unpredictable, but (if I haven't said it already) this one was a predictable loss. 

Let's look at the fair use factors:

1. Nature of the use: non-transformative, slavish copying, and commercial. 

2. Nature of the copyrighted work: creative photography that is much more than point and shoot, though admittedly it does have the product at issue in it

3. Amount copied: all of it

4. Effect on the market: It might look like there isn't any, but consider that the plaintiff Summit might have wanted to license the image for use on sanctioned products (vampire teeth or what have you). If everyone could use this image on products (and this isn't trademark, so we aren't limited to non-confusing uses), then the value of that opportunity is reduced.

And the policy: The image was used on the product, in ads, in marketing, etc. There are few (and I can't think of any) cases where this kind of use is considered fair. It is just not the type of activity that fair use is intended to protect. I can see an argument for a screen capture, or some other image, but the promotional poster? No way.

On to trademark. The first mistake - and I think the one that proves the maxim that easy cases make bad law - was for the court to entertain the nominative use defense at all. This was not a nominative use. A nominative use might have been just the red inset "BB Dakota as seen in 'Twilight'" That's information. That's the name of the movie. 

Instead of nominative use, this was a trademark use. They called it "The Twilight Jacket." They used the promotional poster as a hangtag not only in advertising but on every jacket sold. That's not naming Twilight, that's branding the jacket. When viewed this way, you get right to the likelihood of confusion factors. And under those factors there is certainly confusion - it's the promotional poster! You don't get much closer to appearing to be sponsored by the makers of Twilight than that. My "actual confusion" survey of one (my wife, who has seen the movie) pretty clearly thought that the moviemakers had sponsored or otherwise were associated with the jacket makers. I won't go through the confusion factors here, but I believe they clearly favor a finding of likely confusion as to source, sponsorship, or association.

The irony here is that the nominative use defense is suppose to help the defense, but the law in the Ninth Circuit is such a disaster that when you assert it wrongly (as BB Dakota did here) you are almost sure to lose. But sometimes that's the right outcome. In an effort to give BB Dakota the benefit of the doubt, it considered this ill-applied defense to make this easy case more difficult than it had to be, making the law worse.

And a point about policy. While I agree with Greg about the trend in general, the traditional consumer confusion policies might apply here. I suspect that a) the costume crew used multiple jackets, b) that the jacket survived apparent harms it might not have because those harms were actually special effects, and c) there were repairs made to the jackets over time in shooting. In other words, clothes in movies are indestructible. (Jack Bauer in 24, anyone?). Perhaps someone buying the "Twilight" jacket might have expected that indestructibility. Or more simply, what if manufacturing efficiencies meant that the coloring was off a bit - the Twilight folks, if sponsoring, might want some quality control over that. Or what if the price is higher at retail and secondary markets than it might have been for a jacket that did not have the imprimatur of sponsorship? In all of those cases, consumers suffer, and that is the policy of trademark law.

And that's why I see this as an easy case - and why the court should have treated it as such with a straightforward slapdown rather than a convoluted application of inapt rules.

Posted by Michael Risch on December 2, 2011 at 07:06 PM in Intellectual Property | Permalink

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Justice Stevens used this quip in his concurrence in Burnham: "Perhaps the adage that hard cases make bad law should be revised to cover easy cases."

Posted by: D.Schleicher | Dec 3, 2011 1:21:19 PM

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