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.

You may also like...

4 Responses

  1. Vladimir says:

    Actually, Tylenol *capsules* were the things that were poisoned. That’s why the company invented the *caplet* — a coated pill shaped like a capsule, but which couldn’t be opened. Which goes to show that even smart origins-meisters forget origins. And Homer nodded.

  2. Gerard Magliocca says:

    Whoops! Good catch.

  3. Chuck says:

    The people in Jonestown actually drank poisoned Flavor-aid, not Kool-aid. It was probably conflated with Kool-aid due to the latter’s greater visiblity with the public from advertizing (Hey, kool-aid man!)and then further muddied because of the Ken Kesey novel “The Electric Kool-aid Acid Test”

  4. Deven says:

    I’m not so sure that the reputation angle is not accepted. The association language in the act points to that idea. Dilution is related to the reputation idea too. Now I think you are saying that dilution and expanding trademark claims are not a good thing.

    Nonetheless when you say:

    “consumer confusion” test of trademark infringement but reach well beyond that rationale to protect brands from other commercial uses

    you seem to go away from colloquial, non-commercial uses such as the Kool-Aid, Craigslist, and Tylenol example (by Tylenol could be an example of positive image control given the move to pull all the bottles and develop seals for them too).

    I think that there is a difference between offering control over non-commercial expressive uses and the sort of reputation, commercial harm that seems to be objectionable to you. My article with Sandra Rierson, Confronting the Genericism Conundrum, goes through that distinction and the problems with allowing mark holders to make over broad claims about harm to the mark.