Drinking the Kool-Aid
Trademark law addresses two different interests. First, it protects consumers from being misled and reduces search costs by allowing firms to distinguish their goods on a consistent basis. Second, the doctrine secures the considerable investment that firms make in their brands by protecting them from competitors. The consumer interest is widely accepted as a goal, but the reputation one is not. Indeed, many scholars (and I include myself in that group) have criticized a trend in recent years whereby courts mouth the “consumer confusion” test of trademark infringement but reach well beyond that rationale to protect brands from other commercial uses. The same criticism applies to trademark dilution, which is attacked for creating a property right in gross for marks that is inappropriate.
One possible justification for this expansion of trademark protection is this — it compensates for the fact that firms get no relief if a non-commercial use significantly harms their image. For example, Jim Jones and his followers committed suicide by drinking poisoned Kool-Aid. This was not exactly great for the brand’s reputation, and the phrase “drink the Kool-Aid” has now entered the lexicon as a derogatory phrase. (Granted, I find that my students know the phrase but have no idea where it comes from, so perhaps it’s no longer so harmful.) George Lucas was mad that people used “Star Wars” to describe Ronald Reagan’s SDI and sued some folks to get them to stop (he lost). Tylenol got hammered in the early 1980s when somebody poisoned some of their caplets. Now we have the alleged “Craigslist” killer, which is not the image that firm wants to have. These examples (and if you want to chime in with others, feel free) are situations where mark owners have no remedy because of free speech interests and because the use is not commercial even if the impact is. Does the presence of this random brand risk support expanding reputation protection for commercial uses that the law can reach? I don’t know, but it’s the best argument I can come up with for the gap between formal trademark law and the results in practice.