VICTOR/VICTORIA: THE CHANGING FACE
OF TRADEMARK DILUTION
Rodrick J. Enns
Enns & Archer LLP
Selected Topics In International Intellectual Property Practice
NCBA Intellectual Property Section Annual Meeting
April 11, 2003
“You want me to be a woman pretending to be a man
pretending to be a woman?”
Julie Andrews, Victor/Victoria, 1982
ON MARCH 4, 2003, the U.S. Supreme Court handed down its first decision under the Federal Trademark Dilution Act of 1995 (the “FTDA”). In a case that will forever be known as the “Victoria’s Secret case,” Moseley v. V Secret Catalogue, Inc., 537 U.S. ___, 123 S.Ct. 1115 (2003), the Court considered whether the name “Victor’s Little Secret” for a lingerie and adult novelty store in Elizabethtown, Kentucky, dilutes the famous VICTORIA’S SECRET® mark for retail lingerie stores and catalogs.
The similarity in nomenclature between the 2003 Supreme Court case and the 1982 Blake Edwards movie is purely coincidental, of course, but the parallels between the hit gender-identity farce and the elusive and mercurial doctrine of trademark dilution are striking. Perhaps no other legal doctrine of our time has gone through so many costume changes, and been so fundamentally misunderstood in so many ways. And now, though the actual holding in V Secret is quite narrow, the relatively short unanimous opinion touches on a multitude of difficult issues presented by claims under the FTDA, most of them yet to be resolved definitively. In many ways, the case may portend dramatic new turns in the career of trademark dilution in the near future.
This paper will look at the conceptual roots of dilution doctrine and provide a brief summary of the current legal landscape. It will then examine the V Secret opinion in detail and consider its implications. Finally, we’ll turn to policy, and attempt to articulate a coherent vision of what dilution really is, or in any event what it really should be.
I. The Tangled History Of Trademark Dilution
Victoria: How long have you been a homosexual?
Toddy: How long have you been a soprano?
Victoria: Since I was 12.
Toddy: I was a late bloomer.
In the annals of trademark law, the dilution doctrine was a late bloomer indeed. Tracing its lineage to a seminal law review article first published in 1927, dilution had to wait twenty years before the first state could be persuaded to adopt a statutory remedy, and almost seventy years before a federal dilution statute took effect in 1996. In the seven short years since, dilution has become the darling of the trademark world, stealing the spotlight in prominent trademark cases and grabbing unprecedented amounts of ink in law reviews and at legal seminars.
The reviews have not all been raves, however, and today’s grand dame of trademark law is actually a very different creature in many ways from the starlet that first trod the boards back in the roaring twenties. To understand where we are, let’s first look at where we’ve been.
A. The Original Script: Schechter And Rationality
In 1927, the prominent trademark lawyer and scholar Frank I. Schechter published an article that is now universally cited as the original source of dilution theory, titled “The Rational Basis Of Trademark Protection,” 40 Harvard L. Rev. 813, 22 TM Bull. 139 (1927), reprinted at 60 TMR 334 (1970). In it, Schechter articulated what was in many ways a revolutionary vision of trademark protection, though like most revolutionary ideas it was actually a synthesis based on trends that had been building for some time.
Noting that trademarks had historically been thought of simply as a means of identifying the “origin and ownership” of the goods to which they are applied, 60 TMR at 334, Schechter observed that trademarks had long since surpassed that narrow function. The modern trademark, he asserted, has a “creative and not merely symbolic nature”:
The fact that through his trademark the manufacturer or importer may “reach over the shoulder of the retailer” and across the latter’s counter straight to the consumer cannot be overemphasized, for therein lies the key to any effective scheme of trademark protection. To describe a trademark merely as a symbol of good will, without recognizing in it an agency for the actual creation and perpetuation of good will, ignores the most potent aspect of the nature of a trademark and that phase most in need of protection.
Id. at 337 (footnote omitted). Based on these remarkably modern concepts of marketing and brand function, Schechter argued that trademark law must move beyond its traditional role of protecting against “diversion of custom” by deceit or passing off, which was the limit of the remedies offered under the then-current federal trademark law. See Act of Feb. 20, 1905, 33 Stat. 724, 15 U.S.C. §§ 81 et seq. Even where there was no likelihood of confusion or loss of immediate sales, Schechter argued that another’s use of a distinctive mark on unrelated goods would cause “real injury,” namely, “the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use on non-competing goods.” Id. at 342.
In terms of the characteristics of a mark that would warrant such protection, Schechter focused particularly on the “uniqueness and singularity” of a mark, the characteristics upon which the mark’s “selling power depends for its psychological hold upon the public.” Id. at 345. To Schechter, the marks most deserving of protection were “coined, arbitrary or fanciful words or phrases that have been added to rather than withdrawn from the human vocabulary by their owners.” Id. at 344. He cited as examples such marks as ROLLS-ROYCE, AUNT JEMIMA’S and KODAK, and saw the value of such marks deriving from the fact that they “have, from the very beginning, been associated in the public mind with a particular product, not with a variety of products, and have created in the public consciousness an impression or symbol of the excellence of the particular product in question.” Id. Given those premises, his conclusion has the force of inevitability: if other parties are allowed to use such a mark on unrelated goods, the mark will “gradually but surely lose its effectiveness and unique distinctiveness.” Id.
Three observations are worth noting about Schechter’s analysis. First, though he seems to presume that marks deserving of protection will have become known to the public (thus his reference to marks that have “created in the public consciousness an impression,” for example), Schechter does not explicitly mention fame as an essential element for protection. Rather, he posits that protection of a mark should depend “upon the extent to which, through the efforts or ingenuity of its owner, it is actually unique or different from other marks.” Id. at 345.
Second, while he acknowledges at one point that “[t]rademark pirates” rarely proceed “by direct and exact duplication of their victims’ wares and marks,” id. at 341, Schechter nonetheless focuses throughout the article solely on the use of identical marks. Much of the clarity and persuasive force of his argument derives from the fact that it entirely sidesteps the most difficult and vexing issue: should there be a remedy when the junior mark is not identical to the senior mark but is similar to it, and if so, how great must the similarity be to warrant relief?
Finally, Schechter did not advocate any new form of statutory “dilution” remedy separate and distinct from trademark infringement. Rather, he was arguing for an expansion of traditional trademark protection for unique, singular and distinctive marks, a trend that he already perceived in the cases and wanted to encourage and make more explicit.
B. In The Wings: The Expansion Of Infringement Remedies
While decades would pass before Schechter’s ideas became embodied in dilution legislation, the expansion of traditional trademark infringement remedies that he advocated proceeded apace, albeit in somewhat different form than he may have envisioned. In various ways, trademark law fairly quickly moved beyond the constraining requirements of proving diversion of sales or passing off, limitations that were already beginning to chafe in 1927. Founded in large part on the same modern marketing concepts about the “selling power” of trademarks that Schechter articulated, infringement remedies have come to be available whenever the reputations of the senior and junior users might reasonably be commingled by consumers.
Only a year after publication of Schechter’s article, for example, the great jurist Learned Hand wrote in almost Schechterian terms:
[I]t has of recent years been recognized that a merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a court. . . . If another uses [the merchant’s mark], he borrows the owner’s reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. And so it has come to be recognized that, unless the borrower’s use is so foreign to the owner’s as to insure against any identification of the two, it is unlawful.
Yale Electric Corp. v. Robertson, 26 F.2d 972, 974 (2d Cir. 1928). The most tangible embodiment of this expansion of infringement remedies was in the adoption of the Lanham Act 1946, which explicitly moved beyond the narrow “passing off” concepts of the 1905 Act, and adopted as the touchstone of infringement a much broader standard: whether a junior use was “likely to cause confusion, or to cause mistake, or to deceive.” Lanham Act § 32, 15 U.S.C. § 1114. This liberated the courts to find “confusion” in circumstances far beyond the narrow constraints of direct competition and diverted sales.
Judge Hand’s framing of the common law rule quickly became entrenched in Lanham Act jurisprudence: even if a junior user traded only in goods that were not directly competitive so that no loss of sales by the senior user would occur, the junior use would nonetheless infringe if the goods were sufficiently related that consumers might reasonably believe them to come from the same source. See, e.g., Esquire, Inc. v. Esquire Slipper Mfg. Co., 243 F.2d 540, 542-43 (1st Cir. 1957) (“clearly the parties are not directly competing with one another in the sale of similar goods. . . . But the fact that the parties are not trading in goods of the same descriptive properties, i.e. that one is selling a magazine and the other men’s slippers, does not prevent the plaintiff from asserting a cause of action for trade-mark infringement . . .”); Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 159 (9th Cir. 1963), cert. denied, 374 U.S. 830 (1963) (“When a newcomer takes the name Black & White and makes a use of it on a product which in the mind of the buyer is related to or associated with the product of the original trademark owner, we think it may be said that confusion as to the source of origin is likely to result. The use need not be the same as, nor one in competition with the original use. The question is, are the uses related so that they are likely to be connected in the mind of a prospective purchaser?”).
In more recent times, this concept of confusion of “source, sponsorship or affiliation” has been made even more explicit in the Lanham Act. See Lanham Act § 43(a)(1)(A), 15 USCA § 1125(a)(1)(A) (providing a remedy against any person’s use of a mark that is likely to cause confusion “as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities . . .”).
typically will find infringement whenever consumers might reasonably suspect a
connection between a junior use and a senior user or its mark or vice versa,
however oblique or ephemeral the link might be. For example, cases have recognized as actionable so-called
“reverse confusion,” where there is no confusion as to the source of the junior
user’s goods, but the public is likely to believe that the senior user’s goods
also come from the junior user. See,
e.g., Banff, Ltd. v. Federated Dept. Stores, Inc., 841 F.2d 486, 490-91
(2d Cir. 1988) (“The objectives of [the Lanham] Act – to protect an owner’s
interest in its trademark by keeping the public free from confusion as to the
source of goods and ensuring fair competition – are as important in a case of reverse
confusion as in typical trademark infringement.”) Similarly, it is by now well-established that “initial interest
confusion,” which “occurs when a consumer is lured to a product by its
similarity to a known mark, even though the consumer realizes the true identity
and origin of the product before consummating a purchase,” is sufficient to
establish actionable infringement. See,
e.g., Eli Lilly & Co. v. Natural
Answers, Inc., 233 F.3d 456, 464 (7th Cir. 2000). And even where the junior and senior users
do not market to the same consumers at all, courts have nonetheless found
infringement based on a likelihood of confusion among “the general public” that
“will adversely affect the plaintiff’s ability to control his reputation among
its laborers, lenders, investors, or other group with whom the plaintiff
interacts.” Perini Corp. v. Perini
Const., Inc., 915 F.2d 121, 128 (4th Cir. 1990); Communications
Satellite Corp. v. Comcet, Inc., 429 F.2d 1245, 1251 (4th Cir.
1970) (“The likelihood of confusion among investors is an adequate predicate
short, responding to many of the same considerations that Schechter himself
identified, mainstream trademark infringement law has expanded in the last
seven decades to fill much of the void that concerned Schechter in 1927. Much, but not all. One circumstance that infringement doctrine has not addressed,
and perhaps could not address without doing violence to the underlying concept
of infringement itself, is the situation posited by Schechter where a mark is
firmly tied in the public mind to a single product, and reasonable consumers
are not confused by use of even the exact same mark used on unrelated
goods. It is there that Schechter’s
notion of loss of uniqueness and distinctiveness – the “gradual whittling away
or dispersion of the identity and hold upon the public mind of the mark or name
by its use upon non-competing goods,” 60 TMR at 342 – has the most intuitive
force as a harm not reached by traditional infringement remedies. If such “non-confusing” uses posed a threat,
it would be up to the legislatures to provide new tools to deal with them.
C. The Opening Act: The Era Of State Legislation
In 1947, Massachusetts enacted the first true anti-dilution law. It was short and sweet, providing in its entirety as follows:
Likelihood of injury to business reputation or of dilution of the distinctive quality of a trade name or trade-mark shall be a ground for injunctive relief in cases of trade-mark infringement or unfair competition notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services.
Mass. Gen. L. ch. 110, § 7A (1947). The law, which is still on the books today in Massachusetts, creates by its terms a remedy for all marks, not merely famous ones, nor is it even limited by its terms to distinctive, singular or unique marks as Schechter likely would have done. Despite legislative history indicating that such a limitation was considered and expressly rejected by the drafters, see Derenberg, “The Problem of Trademark Dilution and the Anti-dilution Statutes,” 44 Cal. L. Rev. 439, 452 (1956) (reporting that an unsuccessful attempt was made in the Massachusetts legislature to confine the dilution rule only to a “coined or peculiar word” or a “unique symbol”), most courts have nonetheless engrafted such a limitation anyway, reasoning that only “a trade name or mark of distinctive quality” would be capable of being “diluted.” See, e.g., Tiffany & Co. v. Boston Club, Inc., 231 F.Supp. 836, 843 (D.C. Mass. 1964). This may be the earliest example of the judicial caution, one might say even suspicion, that has dogged dilution doctrine throughout its history.
Adoption in other states was slow, until what was then called the U.S. Trademark Association (now the International Trademark Association) promulgated a Model State Trademark Bill (“MSTB”) in 1964 that included an anti-dilution provision virtually identical to the Massachusetts law. In the following two decades, more than twenty states joined the party. The laws were on the whole met with a lack of enthusiasm by the judiciary, however, and, with the notable exception of the Second Circuit, see, e.g., Deere & Co. v. MTD Prods., 41 F.3d 39 (2d Cir. 1994), relatively few courts were willing to consider a remedy under state dilution laws that would not also have been available under the (more and more expansive) infringement remedy.
In 1988, as a result of the work of the Trademark Review Commission, the Trademark Law Revision Act was introduced in Congress. Among the reforms it proposed was a federal dilution statute. The dilution section was removed before final passage of the TLRA, primarily due to First Amendment concerns, but the draft provisions found their way into a revised Model State Trademark Bill adopted by INTA in 1992. In a departure, this version of the MSTB set out an explicit definition of dilution: “the lessening of the capacity of a mark to identify and distinguish goods or services, regardless of the presence or absence of (a) competition between the parties, or (b) likelihood of confusion, mistake or deception.”
Also for the first time, the concept of fame as a requirement for dilution protection was articulated. The revised MSTB limited relief to the “owner of a mark which is famous,” and then, rather than defining what famous means, it listed seven non-exclusive factors that a court “may consider” in deciding whether a mark is famous or not, including such factors as the degree of inherent or acquired distinctiveness of the mark, the duration and extent of use of the mark, the degree of recognition of the mark, and so on.
Finally, for reasons that remain obscure to this day, the references in the Massachusetts Act and the original MSTB to “likelihood” of injury, as well as references to “injury to business reputation,” were removed from the Trademark Review Commission’s draft language that eventually found its way into the revised MSTB. Instead, the remedy was to be available only against commercial use of a mark that “causes dilution of the distinctive quality of” a famous mark.
Today, some 36 states have a dilution statute on the books. Nineteen states still retain language based on the original MSTB, while 17 have adopted the revised MSTB version. In addition, Ohio has recognized a dilution remedy as a matter of common law. See National City Bank of Cleveland v. National City Window Cleaning Co., 174 Ohio St. 510, 514, 190 N.E.2d 437, 439 (1963) (“[U]se of the same or very similar names in entirely unrelated businesses may in and of itself prove injurious to the originator of the name. Such practice operates to whittle away and disperse in the mind of the public the identity of the name in relation to the one who invented it,” citing Schechter’s article).
D. Dilution’s Star Turn: The Federal Trademark Dilution Act
In 1995, the Federal Trademark Dilution Act finally took center stage after a long wait in the wings. According to the legislative history, the primary motivation for a federal law was the desire for a consistent nationwide remedy: “[F]amous marks ordinarily are used on a nationwide basis and dilution protection is currently only available on a patch-quilt system of protection ... Further, court decisions have been inconsistent and some courts are reluctant to grant nationwide injunctions for violation of state law where half of the states have no dilution law.” S. Rep. No. 104-374 (1995), 1996 U.S.C.C.A.N. 1029, 1032.
For this nationwide remedy, the FTDA followed closely the template that had been laid out by the Trademark Review Commission in 1988, with some added “safe harbors” to assuage the First Amendment concerns that had defeated passage the first time around. Here’s the full text, for easy reference:
Lanham Act § 45, 15 U.S.C. § 1127 (in part)
The term “dilution” means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of--
(1) competition between the owner of the famous mark and other parties, or
(2) likelihood of confusion, mistake, or deception.
Lanham Act § 43, 15 U.S.C. § 1125
(c) Remedies for dilution of famous marks
(1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to--
(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods or services with which the mark is used;
(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks by third parties; and
(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
(2) In an action brought under this subsection, the owner of the famous mark shall be entitled only to injunctive relief as set forth in section 1116 of this title unless the person against whom the injunction is sought willfully intended to trade on the owner's reputation or to cause dilution of the famous mark. If such willful intent is proven, the owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) and 1118 of this title, subject to the discretion of the court and the principles of equity.
(3) The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State and that seeks to prevent dilution of the distinctiveness of a mark, label, or form of advertisement.
(4) The following shall not be actionable under this section:
(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.
(B) Noncommercial use of a mark.
(C) All forms of news reporting and news commentary.
* * *
While dilution’s run on the national stage shows no signs of coming to an end, the critics have not been particularly kind to the FTDA. In large part, that may be because it relies on an extraordinarily non-intuitive and chameleon-like concept. Early on, commentators called the interests sought to be protected by dilution laws “bewilderingly intangible.” Note, Dilution: Trademark Infringement or Will-O-the-Wisp?, 77 Harv. L. Rev. 520, 528 (1964). Professor Milton Handler borrowed Winston Churchill’s famous description of Russia to convey his frustration with dilution, calling it “a mystery wrapped in an enigma.” M.W. Handler, Are The State Antidilution Laws Compatible With The National Protection Of Trademarks?, 75 TMR 269, 280 (1985). And the first federal appeals court to wrestle with the FTDA observed that dilution “has puzzled courts from the outset as to just exactly what legal interest it sought to protect, and legal harm to prevent,” and commented on “the unremitting difficulty of the interpretive problem for all who touch it.” Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Development, 170 F.3d 449, 456, 459 (4th Cir.), cert. denied, 528 U.S. 923 (1999).
The vagueness, even incoherency, of dilution jurisprudence has been accelerated by two factors. One, the FTDA, following the modern trend of legislating to avoid rather than to resolve controversy, fails to provide intelligible standards for either of the two core concepts upon which the remedy rests, fame and dilution. “Dilution” is defined in the statute solely in terms of its effects. Knowing that dilution is a “lessening of the capacity of a famous mark to identify and distinguish goods or services” tells us absolutely nothing about how to identify what sort of conduct might cause such a result, which is what a court needs to know in order to stop it. And the FTDA offers not even that much of a “definition” of “fame,” the essential predicate for a mark to qualify for dilution relief. Instead, it simply assumes that everyone knows what a “famous” mark is, and provides a list of evidentiary factors that courts “may consider” in deciding whether a particular mark is famous or not.
Two, because of this vacuum in meaningful modern guidance as to what dilution is or is supposed to be, courts and commentators are frequently reduced to harkening all the way back to Schechter’s 1927 analysis to find anything like concrete guideposts for what is going on. The problem is that Schechter, for all his prescience, was writing 75 years ago, and both the marketplace and the legal landscape have since changed beyond recognition. His primary goal of moving trademark law beyond the narrow turn-of-the-century constraints of “passing off” was achieved long ago, and techniques of modern branding have flowered far beyond the rather straightforward connection between a mark and a particular product known for its excellence that was Schechter’s main focus. Indeed, the significant innovations in dilution doctrine introduced by the Trademark Review Commission – focusing on fame as opposed to uniqueness and singularity, and interdicting any junior use that “lessens the capacity” of a famous mark to function as a mark – result from a desire to have dilution protect marks in ways markedly different from those that were the primary concern in Schechter’s time.
Little wonder, then, that such a potentially sweeping but conceptually opaque remedy has generated judicial reaction ranging from suspicion to bewilderment to outright hostility. It is no exaggeration to say that virtually every material element of dilution doctrine has been the subject of directly contrary pronouncements from the courts, to the point where one pundit described the state of dilution jurisprudence as “a circus among the circuits.” X.N. Nguyen, A Circus Among The Circuits: Would The Truly Famous and Diluted Performer Please Stand Up? The Federal Trademark Dilution Act and Its Challenges, 1 J. Intell. Prop. 158 (2000). While this paper is not intended to be a comprehensive survey of dilution case law, a sampling of the issues with which the lower courts have wrestled provides a useful backdrop for analyzing the Supreme Court’s work in Victoria’s Secret.
· One federal court found that WAWA, a mark used by a convenience store chain only in five mid-Atlantic states, was sufficiently famous to be protected under the FTDA, Wawa Dairy Farms v. Haaf, 40 U.S.P.Q.2d 1629 (E.D. Pa. 1996), aff’d, 116 F.3d 471 (3d Cir. 1997), while another federal court held that AVERY and DENNISON, brands owned by the nation’s leading maker of labels with annual sales of $3 billion and use dating back to the 1800s, were not famous as a matter of law. Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
When the Second Circuit held that “distinctiveness” of
the senior mark was a requirement for relief under the FTDA separate and apart
from fame, Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir.
1999), the Third Circuit wasted little time in announcing the opposite
conclusion. Times Mirror Magazines,
Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157 (3d Cir. 2000), cert.
denied, 531 U.S. 1071 (2001) (“[W]e are not persuaded that a mark be
subject to separate tests for fame and distinctiveness.”). Not to be outdone, the Second Circuit
rejoined that not only was distinctiveness a separate requirement, but the mark
had to be inherently distinctive; descriptive marks need not apply, no
matter how famous they may have become.
TCPIP Holding Co., Inc. v. Haar Communications, Inc., 244 F.3d 88
(2d Cir. 2001). In the Second Circuit,
such intrinsically descriptive marks as COCA-COLA and DUPONT presumably receive
no dilution protection.
· The legislative history indicated that the FTDA was “to be applied selectively” and was “intended to provide protection only to those marks which are both truly distinctive and famous,” S. Rep. No. 104-374, supra, leading the Second Circuit to conclude that it “seems most unlikely that Congress intended to confer” dilution protection on “marks that have enjoyed only brief fame in a small part of the country or among a small segment of the population.” TCPIP Holding Co., Inc., supra. Nonetheless, several courts have held that so-called “niche fame” is sufficient to qualify a mark for dilution protection, in markets as narrowly defined as wholesale and retail florists serving funeral homes, Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633 (7th Cir. 1999), and medical charities, Deborah Heart and Lung Center v. Children of the World Foundation, Ltd., 99 F. Supp. 2d 481 (D.N.J. 2000).
No sooner did the Fourth Circuit find that injunctive
relief under the FTDA required proof of “an actual lessening of the senior
mark’s selling power,” Ringling Bros., 170 F.3d at 458, than the Second
Circuit disagreed, holding that a showing of “likelihood of dilution” because
of the junior use was sufficient. Nabisco,
Inc. v. PF Brands, Inc., 191 F.3d 208, 224-225 (2d Cir. 1999). The Fifth Circuit then disagreed with the
Second, Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 55
U.S.P.Q.2d 1225 (5th Cir. 2000), and the Seventh followed by disagreeing with
the Fifth, Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456
(7th Cir. 2000). The Sixth Circuit came
down with the Second and Seventh, V Secret Catalogue, Inc. v. Moseley,
259 F.3d 464 (6th Cir. 2001), setting the stage for the Supreme
· Even such a seemingly crystalline issue as whether dilution relief requires a showing of likelihood of confusion has itself been the subject of confusion. No less a distinguished jurist than Judge Sweet of the Second Circuit had proposed a six factor test for when dilution is present under New York’s dilution law, Mead Data Cent., Inc. v. Toyota Motor Sales, Inc., 875 F.2d 1026 (2d Cir. 1989), but the factors were “the offspring of classical likelihood of confusion analysis and are not particularly relevant or helpful in resolving the issues of dilution by blurring.” J.T. McCarthy, Trademarks and Unfair Competition § 24:94.2 (4th ed. 2002). The Second Circuit tacitly acknowledged as much when it later adopted a ten factor test under the FTDA that omitted the more obvious confusion-related factors, Nabisco, Inc. v. PF Brands, Inc., supra, but the Third Circuit in the Times Mirror case, supra, thereafter approved the concurrent use of both tests under the FTDA!
A circus in the circuits indeed.
II. THE SUPREME COURT SPEAKS
Labisse: If you ever come back, I will have you thrown out!
Toddy: Don’t make it sound like such a threat. Being thrown out of a place like this is significantly better than being thrown out of a leper colony.
With the disarray in federal dilution law reaching the point where being thrown out of court on a dilution claim was, like being thrown out of a leper colony, almost a badge of honor, the Supreme Court decided it was time to weigh in. As its vehicle, it chose the Sixth Circuit’s decision that the “Victor’s Little Secret” lingerie and adult toy store diluted the well-known VICTORIA’S SECRET mark. See 259 F.3d 464 (6th Cir. 2001). For ease of reference in discussing the decision, the plaintiff-respondent V Secret Catalogues, Inc., proprietor of the VICTORIA’S SECRET mark, is referred to below as “Victoria,” and the defendants-petitioners Moseley et al., proprietors of “Victor’s Little Secret,” are referred to as “Victor.”
A. The Case
From the point of view of the Supreme Court, the case had a number of virtues as a star vehicle:
The Supreme Court therefore granted certiorari to decide “whether objective proof of actual injury to the economic value of a famous mark (as opposed to a presumption of harm arising from a subjective ‘likelihood of dilution’ standard) is a requisite for relief under the FTDA.” Slip Op. at 3. Particular note is taken of this question because, as we will see below, the Court did not answer it.
B. The Decision
Surprisingly in this field of ambiguity and judicial conflict, the Supreme Court produced a unanimous decision in Moseley, with only one justice writing a short separate concurrence. The Court was able to achieve this consensus by defining the issue so narrowly that the task amounted, in one sense, to little more than an exercise in reading the statutory text. Indeed, it could be argued that the entirety of the Court’s holding and the reasoning that supports it is set out in this brief passage:
[S]tate [antidilution] statutes, like several provisions in the federal Lanham Act, repeatedly refer to a “likelihood” of harm, rather than to a completed harm. The relevant text of the FTDA . . . provides that “the owner of a famous mark” is entitled to injunctive relief against another person’s commercial use of a mark or trade name if that use “causes dilution of the distinctive quality” of the famous mark. 15 U.S.C. § 1125(c)(1) (emphasis added). This text unambiguously requires a showing of actual dilution, rather than a likelihood of dilution.
Slip Op. at 14. Victoria’s proof of a “likelihood of dilution” was therefore insufficient by definition. Injunction reversed. Victoria exits stage left. Victor takes a bow. Cue the curtain.
But while the above may be all that is necessary to reach the result, there is of course much more to the opinion. The most interesting question is, did Victoria’s evidence really only show a “likelihood” of dilution, or was it sufficient to show “actual” dilution? In its brief and at oral argument, Victoria had conceded that the FTDA language could not be read to impose only a “likelihood” standard, at least in those terms, and attempted instead to focus the Court on what the statutory phrase “causes dilution” really means. See Brief For Respondents, filed August 23, 2002, 2002 WL 1987631 at *11-12. Victoria’s main argument was that its evidence that consumers associated “Victor’s Little Secret” with VICTORIA’S SECRET was sufficient to support a finding that the former “causes present dilution” of the latter, and that the district court so found. Id.
Though the Supreme Court certainly expresses disagreement with Victoria’s position, when all is said and done the point is never definitively resolved. After reiterating its unremarkable – and rather unhelpful – holding that “actual dilution must be established,” Slip Op. at 14, the Court proceeds to comment,
Of course, that does not mean that the consequences of dilution, such as an actual loss of sales or profits, must also be proved. To the extent that language in the Fourth Circuit’s opinion in the Ringling Bros. case suggests otherwise, . . . we disagree. We do agree, however, with that court’s conclusion that, at least where the marks at issue are not identical, the mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient to establish actual dilution.
Slip Op. at 14-15. The Court proceeds to explain that while the evidence in the case before it, like that in Ringling Bros., may have shown that consumers viewing the junior mark think of the famous mark, that doesn’t necessarily demonstrate dilution if consumers “did not therefore form any different impression of” the famous mark or its owner. Id. at 15.
The Court’s point is that the army officer’s testimony in Moseley gave no indication that upon viewing “Victor’s Little Secret,” he had “changed his conception of Victoria’s Secret.” Id. Similarly, the evidence in Ringling Bros. may have shown that Utah motorists will be “reminded of the circus when they see a license plate referring to the ‘greatest snow on earth,’” but it “by no means follows that they will associate ‘the greatest show on earth’ with skiing or snow sports, or associate it less strongly or exclusively with the circus.” Id. Absent such a “changed conception” of the senior mark, the Court suggests, we are left with the “mere fact” that consumers “mentally associate” the two marks, and that “will not necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution under the FTDA.” Id. Put another way, “‘Blurring’ is not a necessary consequence of mental association,” in the Court’s view. Id.
Unfortunately, any clarity that this formulation may have provided for those attempting to prove or defend dilution claims is snatched away when the Court discusses what evidence might be sufficient to prove such a “changed conception” of the famous mark. The Court appears to take it as a given that “consumer surveys” would provide “direct evidence of dilution,” id., but gives no indication of what form that survey evidence might assume. Further, the Court says that it “may well be” that direct evidence “will not be necessary if actual dilution can reliably be proven through circumstantial evidence—the obvious case is one where the junior and senior marks are identical.” Id. at 15-16. Without attempting to resolve these “difficulties of proof,” the Court concludes simply by observing that “they are not an acceptable reason for dispensing with proof of an essential element of a statutory violation,” as if anyone were contending otherwise. Id. at 16.
This outcome leaves entirely open the question of what “circumstantial evidence” might be sufficient to prove dilution as the Court has conceptualized it. It is not even entirely clear whether evidence of harm to the “economic value” of the famous mark is necessary or relevant, the precise question that certiorari was granted to address. In fact, Justice Kennedy’s concurrence suggests that the Court’s requirement of either direct or circumstantial proof of “actual dilution” could be satisfied by evidence of “the probable consequences [that] commercial use [of the junior mark] will have for the famous mark.” Kennedy, J., concurring, at 1. The word “capacity” in the statutory definition of dilution, Justice Kennedy suggests, “imports into the dilution inquiry both the present and the potential power of the famous mark to identify and distinguish goods, and in some cases the fact that this power will be diminished could suffice to show dilution.” Id. (emphasis added).
No other justices signed on to this concurrence, but neither was it expressly repudiated in the majority opinion. At a minimum, then, it is an indication that at least one Justice thinks that the Court’s decision does not foreclose proving a dilution case based solely on evidence of the potential for harm to the famous mark in the future. For that matter, the main opinion’s ready assumption that identical marks present an “obvious” case of sufficient “circumstantial evidence” of dilution seems to rest on precisely such reasoning: because the marks are identical, it can be inferred as a factual matter that when consumers are exposed to the junior one, dilution of the senior one will occur.
As a practical matter, then, we could be back to the same place we started, albeit with different nomenclature. Instead of there being a “likelihood of dilution” standard, it is now clear that the standard is “actual dilution,” but perhaps a court can find “actual dilution” as a factual matter by inferring it from evidence that the junior use is of such a character that when it is used, it is highly likely to dilute, or, using Justice Kennedy’s formulation, that the junior use impairs the capacity of the famous mark to identify and distinguish in the future.
C. Questions and Interesting Sidelights
· Why does the Supreme Court think that “mere” association does not prove blurring?
The Court plainly declared that “mere” association – I see “Victor’s Little Secret” and I think of VICTORIA’S SECRET – does not necessarily imply an adverse impact on the famous mark. That may or may not be intuitively plausible, but it is at least highly questionable as an empirical matter, and may well be flat wrong.
Cognitive psychology is by now a sufficiently well-developed science to measure brain behavior of the kind the Supreme Court is describing. As a matter of brain function, when a junior mark causes a consumer to think of a famous mark – the Court’s “mere association” scenario – the brain creates what psychologists call an “associational pathway” between the two concepts. See, e.g., A.F. Simonson, “How And When Do Trademarks Dilute: A Behavioral Framework To Judge ‘Likelihood’ Of Dilution,” 83 TMR 149, 154 (1993). Trademarks, like all information, consist of nodes that are hubs in a network of such associational pathways. J. Jacoby, “The Psychological Foundations Of Trademark Law: Secondary Meaning, Genercism, Fame, Confusion and Dilution,” 91 TMR 1013, 1025 (2001). Because these associational pathways are “cue dependent,” Simonson at 154 n. 27, activation of any node in the network has the potential to activate the other nodes. Id. at 160 (“[I]f someone were to evaluate a particular brand name that evokes another name in memory, the potential exists for evaluative associations to ensue with this other name.”).
The mere presence of such an “associational pathway” between a new mark and a famous mark has non-trivial consequences for the famous brand. “[C]ognitive research reflects that both the speed and accuracy with which the first network [the network of desired brand associations] is retrieved are impaired.” J. Swann, “Dilution Redefined For The Year 2002,” 92 TMR 585, 611 (2002), citing M. Morrin & J. Jacoby, “Trademark Dilution: Empirical Measures For An Elusive Concept,” 19 Journal of Public Policy & Marketing 265, 273 (2000). The specifics of the ways in which the presence of such an associational pathway can interfere with brand function for the famous mark – dissonance, response competition, and so on – are beyond the scope of this paper, but the result is clear. As a matter of human psychology, “when association begins, singularity begins to end.” Swann at 611.
The empirical foundation of the Court’s opinion, then, appears to be fallacious. “Mere” association does necessarily mean that the famous brand is being impacted, and specifically that its functioning as a brand – its “capacity to identify and distinguish” – is being “lessened,” because both the speed and the accuracy with which consumers are able to summon up the network of associations with the famous brand that its owners have so carefully nurtured and cultivated are impaired.
· Why do identical marks present an “obvious case” of actual dilution obviating the need for “direct evidence”?
The Court’s seemingly casual assumption that in a case where the junior and senior marks are identical, dilution is essentially a foregone conclusion, is perplexing. The primary significance of identity is that it makes it reasonable to assume without separate proof that consumers will associate the two uses. Given the Court’s insistence that “the mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient,” Slip Op. at 15, however, it is difficult to understand why identity should obviate the need for proof that more than “mere association” is going on.
The only way that one can infer that the public’s “conception” of the senior mark is “changed” merely from the fact that the junior and senior marks are identical is by accepting the proposition that creating additional associations with the famous mark inherently changes it, and inherently “lessens” its ability to distinguish. But if that is so (and it is), it is equally so whenever such additional associations are shown to be present, whether because the marks are identical or because there is evidence that consumers in fact associate a non-identical junior mark with the famous one.
· Wither Tarnishment?
Tarnishment occurs when a trademark “is ‘linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context,’ with the result that ‘the public will associate the lack of quality or lack of prestige in the defendant’s goods with the plaintiff's unrelated goods.’” Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 507 (2d Cir. 1996), quoting Deere & Co. v. MTD Products, Inc., 41 F.3d 39, 43 (2d Cir. 1994). Tarnishment has not only had a long history under the state dilution statutes, but has consistently been held by the lower federal courts to be actionable under the FTDA. See, e.g., Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q.2d 1479 (W.D. Wash. 1996) (“candyland.com” for adult website tarnished famous mark for children’s board game); America Online, Inc. v. IMS, 24 F. Supp. 2d 548 (E.D. Va. 1998) (finding “a strong likelihood of dilution by negative associations that AOL subscribers make between AOL and [defendant’s] junk e- mailing practices”). The legislative history of the FTDA unambiguously reflects an expectation that tarnishment would trigger its remedies. See Cong. Rec. S. 19310-19311 (Dec. 29, 1995) (FTDA is “designed to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it, even in the absence of a likelihood of confusion.”).
Even though Victor did not dispute that tarnishment was actionable under the FTDA, the Supreme Court went out of its way to call the doctrine into question:
Petitioners have not disputed the relevance of tarnishment, Tr. of Oral Arg. 5-7, presumably because that concept was prominent in litigation brought under state antidilution statutes and because it was mentioned in the legislative history. Whether it is actually embraced by the statutory text, however, is another matter. Indeed, the contrast between the state statutes, which expressly refer to both ‘injury to business reputation’ and to ‘dilution of the distinctive quality of a trade name or trademark,’ and the federal statute which refers only to the latter, arguably supports a narrower reading of the FTDA.
Slip Op. at 13. It would be premature to abandon tarnishment theories altogether, but in light of this language the prudent litigator will also couch all such claims in the “lessening the capacity to distinguish” rubric of the FTDA and the Moseley opinion.
· What Is Schechter Doing In Here?
The Court calls Schechter’s 1927 article “[t]he seminal discussion of dilution,” and discusses it in some detail, with particular attention to the importance of uniqueness and singularity of marks in the Schechter formulation. Slip Op. at 9-11 and n. 10. This is a curious emphasis given that Victor had conceded in the courts below that VICTORIA’S SECRET was famous and otherwise entitled to invoke the FTDA, so that questions about whether and how marks might qualify for dilution protection were not before the Court.
Elsewhere in the opinion, the Court somewhat gratuitously quotes the Second Circuit’s statement that “It is quite clear that the statute intends distinctiveness, in addition to fame, as an essential element.” Slip Op. at 6 n. 5, quoting Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 216 (2d Cir. 1999). Avid tea-leaf readers could divine from these comments a portent that the Supreme Court will adopt the Second Circuit position that distinctiveness, and perhaps even inherent distinctiveness, is a prerequisite for FTDA protection.
In fairness, however, it must be said that neither the Nabisco quotation nor the Schechter summary in Moseley explicitly conveyed approval or endorsement by the Court. Both were discussed by the Court in the context of procedural or jurisprudential history. Moreover, given the Court’s apparent willingness in the context of tarnishment to dismiss explicit legislative history in favor of a single-minded textual analysis, it would be surprising indeed if the Court were to allow its reading of the express language of the FTDA to be colored overmuch by any law review article, however seminal, let alone one preceding Congress’ action by seven decades.
III. WHAT DILUTION SHOULD BE
[Norma is smitten with Toddy, who’s gay.]
Norma: I think that the right woman could reform you.
Toddy: You know, I think that the right woman could reform you, too.
If there is one thing the preceding discussion should make clear, it is that Moseley does not make the FTDA clear. Even the Supreme Court cannot make chicken soup out of chicken feathers, however. The primary virtue of the Court’s valiant attempt to find rationality in the statute is that it places in stark relief the law’s core incoherence. In short, what we have here is not a failure of the courts, but a failure of Congress.
So what should be done? More than anything, the defects in the FTDA are a result of a flawed legislative approach. The idea that courts can be commissioned to determine on a case-by-case basis when a famous mark is being diluted is simply unrealistic. Even if dilution were coherently defined in a way that made sense in light of consumer cognition and marketing practices, expecting courts to be able to recognize it, diagnose it, and reliably distinguish cases in which it exists from those in which it does not, is a fool’s errand.
Herewith a proposed framework for a different approach:
A. Underlying Premises
· The FTDA needs to be amended. The FTDA has been and, without change, will continue to be applied inconsistently by the courts, both in granting relief where it is not warranted and in denying relief where it is. It will also continue to breed uncertainly among actors in the marketplace, who have no reliable guide for their conduct. Statutory revision is the best and, given the present language of the statute, perhaps the only effective means of addressing these problems.
· Amendments should, if possible, make the grounds for dilution relief more clear, precise and intuitive. Many courts, not excluding the Moseley Court, have struggled with the application of dilution doctrine, in part because dilution relies on concepts that are neither intuitive nor familiar to most judges, and in part because the FTDA is vague in many particulars. The statute should more clearly identify the characteristics of famous marks that (a) will be at risk without protection beyond traditional infringement remedies, and (b) deserve such enhanced protection. The statute should also define as concretely as possible the uses that unreasonably threaten those attributes and therefore should be enjoined.
The dilution remedy should be narrowed
substantially. The remedy as
defined by the FTDA is too broad, or at least is so perceived by many
courts. The result is judicial
skepticism of the statute, leading to efforts to narrow it in ways that are not
good policy (such as the Fourth Circuit’s “actual economic harm” requirement in
Ringling Bros., and the Second
Circuit’s inherent distinctiveness requirement in TCPIP Holdings). Appropriate and conceptually well-grounded
narrowing of the remedy is essential to securing broader judicial support for
B. Qualifying For Dilution Protection
· Dilution relief should be available only to marks that are immediately recognized, without of commercial context, by a substantial majority of the general public nationwide.
This proposition rests on several subsidiary points, as follows:
o Dilution remedies are very potent, allowing a plaintiff to enjoin junior uses in every sector of the economy. To the extent such relief is available, it has a material impact on the ability of all trademark owners to clear and use marks with confidence. The remedy should therefore be limited to marks that both need and deserve it.
o Marks that are truly famous, in the sense that they are universally known and recognized in the abstract without further cueing from commercial context, have a significant and qualitatively different value than other marks, both to their owners and to the consuming public. Such a mark provides a very efficient tool for consumers to identify any good or service to which the mark is applied, and allows consumers to understand instantly much about the promised benefits and characteristics of the good or service.
o This value of famous marks is uniquely fragile as well, in that such universal recognition depends on the singularity of the mark in the minds of the public. Use of such a mark by a third party on unrelated goods can destroy that singularity, even when the circumstances make source confusion unlikely.
o Marks that are recognized, even by everyone, but only when associated with a particular commercial context should not receive dilution protection. Such marks are neither as vulnerable to non-confusing uses – by definition, use of the mark on unrelated goods will not evoke the senior use in the minds of most consumers – nor so deserving of special protection, since they do not provide information to consumers outside of the context in which they are used.
o Marks that are universally known and recognized, but only within smaller geographic regions or in particular channels of trade, have neither the same value nor the same vulnerability, and therefore should not receive dilution protection. Moreover, the benefits of protecting such marks on a national scale are relatively minor, and are outweighed by the costs in terms of greater uncertainty in trademark clearance, potential liability that it may be difficult for adopters of new marks to identify and avoid, proliferation of litigation, and continued judicial resistance to a remedy made so widely available.
· Inherent distinctiveness should not be required as a separate element.
o There is no conceptual reason why inherently descriptive marks could not acquire the attributes described above, be equally vulnerable to dilution, and be equally deserving of protection. Many of our most famous marks in fact fall in that category.
o The concept of fame articulated above includes an element of uniqueness or singularity as well. A mark, no matter how well-known, will not be recognized without commercial context by a substantial majority of the general public nationwide unless it is singular in the minds of the public. UNITED, without further context, is likely to be recognized by almost everybody for something, but for some it will be UNITED AIRLINES, for others UNITED VAN LINES, and no doubt other UNITED marks for others. If, however, all other uses of UNITED were to melt away, and a substantial majority of the general public came to recognize UNITED as symbolizing United Airlines only, then by definition it would have the uniqueness necessary to merit dilution protection. If a mark achieves such status, the fact that it is inherently descriptive should not preclude protection.
C. Defining When A Mark Is Diluted
· Diluting uses should be defined by objective and easily-measured characteristics of the junior use, rather than requiring courts to determine empirically whether dilution is likely to occur or is occurring.
o The FTDA presently requires courts to make an empirical judgment in each case about whether a junior use causes a “lessening of the capacity of a famous mark to identify and distinguish goods or services.” This is not a workable standard, because it relies on concepts that are inherently vague and non-intuitive, because understanding and applying such concepts requires expertise in marketing and consumer psychology that most courts cannot be expected to have or acquire, and because assessing likely or actual impact on the senior mark depends on detecting subtle shifts in consumer perceptions and attitudes that are certainly difficult, and may be impossible, to measure reliably with the tools available in the litigation context.
o The better approach is to define what marks dilute by reference to the inherent characteristics of the junior use, essentially adopting a per se rule that a mark with a sufficient degree of similarity to a famous mark will be conclusively presumed to dilute by virtue of that test alone, without needing to attempt to measure diluting effects on the senior mark or prove their existence empirically.
Diluting marks should be defined as those that are
sufficiently similar to a famous mark that when the general consuming public is
exposed to the junior mark without commercial context, the famous mark will be
called to mind among a substantial majority of such consumers.
When a junior use is identical to a famous mark,
dilution occurs by definition whenever the junior mark is used. The same can be said when the junior use is
not strictly identical, but is so similar that most consumers will still
recognize it as being the senior mark.
Harm to a famous mark can also arise, however, from
junior uses that are recognizably different from, but still reminiscent of, the
famous mark. The cognitive research
cited earlier in this paper demonstrates that such harm is a necessary
concomitant whenever new associations are created between a junior mark and a
Concerns about the breadth of such a test are
reasonable, but are tempered by two factors:
relief will only be available to a relatively small class of nationally
famous marks, and it will only be triggered if not merely some, but a
substantial majority of, consumers will have thoughts of the famous mark
triggered by exposure to the junior mark.
· There should not be a separate standard for tarnishment cases. Many of the considerations warranting a narrower scope for dilution relief relate specifically to blurring cases, and either do not apply to or are less acute in the context of tarnishment cases. Nonetheless, creating a separate, broader standard for tarnishment dilution different from the standard for blurring dilution would not be wise. Among other things, it would invite First Amendment challenge as a content-based restraint on speech. In any event, the combination of traditional trademark infringement, dilution by blurring as conceptualized above, false or deceptive description liability under Lanham Act § 43(a), and state law unfair competition and trade libel remedies would create a net that very few tarnishing uses could slip through.
King Marchand: I don’t care if you are a man!
Victoria: I – I’m not a man.
King: I still don’t care.
Famous brand owners – and their lawyers – will always embrace dilution, whatever her guise or form. But unlike King Marchand’s unconditional affection for Victoria, we all have a great deal at stake in not only what dilution looks like, but who she really is. The statute we have now will continue to require significant investment of societal resources in attempting to divine the most esoteric mysteries of human cognitive behavior by adversarial debate in hundreds of courtrooms around the country. Even more significant a cost, however, is the inherent uncertainty and unpredictability that chills clearance and adoption of new marks and building of clear, compelling and effective brands in the marketplace.
We should strive for a new statute that stakes out clear, intuitive and enforceable limits, informed by the sciences of marketing and psychology but not requiring district judges or juries – or Supreme Court Justices – to master those disciplines. That would be a dilution law with which we all could fall in love with our eyes wide open.
 I gratefully acknowledge a sizeable debt to my colleagues on the INTA U.S. Legislation Subcommittee, whose insight and wisdom – not to mention patience – in deliberations over the past year and a half have been a significant influence in forming my thinking on this subject. Nonetheless, any goofiness in what follows is my responsibility alone.