A Trademark Law Reaction to Yoshino

**Warning: Dry legalese to follow. Why don't you look at my thoughts on Ann Althouse's thoughts on hip hop instead** As promised, here are my slightly more thought-through reactions to Kenji Yoshino's piece in Slate drawing a parallel between argments against same-sex marriage and the rationales underlying the tarnishment aspects of trademark dilution law. Yoshino more or less captures the major reason why the comparison fails, even if his language seems a little sloppy from a trademark focused perspective.* In fact, he could go a lot farther with his point. A mark loses its entitlement to trademark protection when it becomes generic - meaning, basically, when it's used in association with multiple sources of goods or services that do not have control over the quality of each other's respective products. In a nation of serious religious and cultural plurality, marriage seems to be clearly a generic term - no normative community can claim control over it. The trademark metaphor, then, would suggest that it doesn't qualify for protection from dilution. In that sense, Kenji's metaphor is actually stronger and more illuminating than he gives himself credit for. His treatment of trademark law itself, though, is frustrating to say the least. First, he defines tarnishment in reference to Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972), the infamous case finding that a poster with an "Enjoy Cocaine" parody impermissably tarnished Coca-Cola's logo. This is certainly the most famous tarnishment case, but it's not a paradigmatic one - both because it's questionable if a poster really is a commercial use of the logo and because it seems likely that the parody exception was misapplied by the district court. Since this is a decades-old opinion with no precedential effect and questionable basis, it's really not an appropriate thing to trot out to explain tarnishment. Academics like the case because it makes tarnishment law seem unreasonable and oppressive, but there's a real danger to cotributing to continuing public misunderstanding of the potentially limited scope of IP rights (covered somewhat here). Update: This post has a "first" without a second. That's because I can't completely decide if I have any issues with his discussion of tarnishment and the requirement of an activity that is "uniformly deemed unsavory." I'm not sure I have much to add that's beyond nitpicking. The thrust of my more global issue with Yoshino's argument is very simple, though. Yoshino writes as if we give someone trademark protection because they created and built up goodwill for a mark. That's not true. Creation is immaterial. We give trademark protection because people built up goodwill first and - more importantly to his point - didn't just sit on their rights letting a bunch of other sellers generate their own goodwill while using the same mark. In that sense, trademark is that much better a metaphor. * For example, Yoshino says "First, intellectual property law seeks to protect intangible goods that belong to people because they have created and built up good will for them. No such claim can be made about state-sponsored marriage, because no individual invented marriage, and no individual owns it." The first sentence mixes IP regimes in a way that leads to some conclusions that aren't strictly true. For example, the work people put into creating a trademark has nothing to do with our rationale for protecting it. Similarly, goodwill has nothing to do with our rationales for protecting patents and very, very little to do with our rationales for protecting copyright. The sentence would be much more accurate if it replaced its "and" with an "or." The second sentence is similarly confusing in its reference to invention - which evokes a patent, not a trademark metaphor. This sort of careless lumping together of the terms, assumptions, and rationales of IP regimes is rightly denounced by Kenji's colleague Yochai Benkler, among others.