The Suppressed Misappropriation Origins of Trademark Antidilution Law: The Landgericht Elberfeld's Odol Opinion and Frank Schechter's The Rational Basis of Trademark Protection
Frank Schechter’s 1927 article "The Rational Basis of Trademark Protection", which remains the most cited law review article ever written on trademark law, is generally recognized as the origin of the concept of trademark dilution. Yet as is less well recognized, Schechter’s discussion of trademark dilution in "Rational Basis" relied heavily, though cagily, on the true origin of the concept: the 1924 Odol opinion of the German Landgericht Elberfeld. "Rational Basis" quotes extensively from the Odol opinion and borrows much of the opinion’s argument and terminology. Yet Schechter suppressed and apparently deliberately deleted from his quotation of the opinion its central holding, that "[i]t is opposed to good morals to appropriate thus the fruits of another’s labor in the consciousness that that other will or may thereby be damaged." This brief essay, a chapter in the forthcoming "Intellectual Property at the Edge: The Contested Contours of IP" (Rochelle Cooper Dreyfuss and Jane C. Ginsburg eds. 2013), argues that Schechter deliberately sought in Rational Basis to obscure the true nature of the Odol case and of antidilution protection, and that even a century later, his effort at obfuscation remains more or less a success, at least in the United States. What Schechter sought to obscure in "Rational Basis" is that the Odol case was not, strictly speaking, a trademark case. Rather, it was a misappropriation case that happened to involve a trademark. Schechter sought to suppress this basic truth — that the concept of trademark dilution is essentially a misappropriation concept — in order to sell his proposed doctrinal reforms to an American audience altogether suspicious of misappropriation doctrine and increasingly under the sway of American Legal Realism. To do so required a great deal of finesse, or to but it more bluntly, of dissembling, and "Rational Basis" is full of it. Due both to its frequent misdirection and ambiguity and to its emphatic suppression of any suggestion that trademark dilution is a form of misappropriation, "Rational Basis" has remained an altogether open text. Concepts like "blurring" and "tarnishment" have rushed in to fill the void left in the absence of misappropriation. Even now, in the face of ever more scholarly and judicial commentary recognizing that dilution is essentially a form of "free-riding," and likely one that typically inflicts no substantial harm on the misappropriated mark, the obfuscatory nature of Schechter’s text enables the concept of dilution to survive — and thrive — behind a fog of indeterminacy.
NEW YORK UNIVERSITY SCHOOL OF LAW NYU Center for Law, Economics and Organization
Federal courts are currently split, even within particular districts, on the basic question of what a plaintiff must show to establish that a defendant’s conduct constitutes trademark dilution by blurring. Federal trademark law defines “dilution by blurring” as “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” In construing this statutory language, a majority of courts have held that to establish blurring, a plaintiff need only show that consumers associate the defendant’s mark with the plaintiff’s famous mark. These courts appear to assume that to the extent that there is consumer association, this association alone will “impair the distinctiveness” of the famous mark. A minority of courts have held that the plaintiff must show both consumer association and that this consumer association “impairs the distinctiveness” of the famous mark. In this article, we make two contributions to the current debate over what must be shown to establish dilution by blurring. First, we report the results of a set of experiments that reveal that the majority approach is fundamentally deficient. These experiments demonstrate that even when consumers associate a junior mark with a famous senior mark, this association does not necessarily result in any impairment of the ability of the senior mark to identify its source and associations. Second, we evaluate the current state of the art in trademark dilution survey methodology: response time surveys. These surveys purportedly show both consumer association and impairment. Through a set of experiments, we demonstrate that these surveys currently use the wrong control and are invalid. In light of our findings, we reflect more generally on the question of whether dilution by blurring ever occurs and on how the blurring cause of action may be reconfigured better to comport with courts’ intuitions about the true nature of the harm that the cause of action
Reforming the Russian legal system
Preface 1. Pre-revolutionary Russian law 2. The Bolshevik experience 3. The history of legal reform 4. Forging a new constitution 5. Citizens and the state: the debate over the Procuracy 6. In search of a just system: the courts and judicial reform 7. Law and the transition to a market economy 8. Legal reform in the republics 9. Legal reform and the transition to democracy in Russia Appendix Notes Index.