My unprintable musings on the "tentative ruling" in AbbVie v. Kitson (a/k/a the "Vicodin jerseys" case)

Posted by Charles Colman

A reporter recently asked for my views on AbbVie v. Kitson (a/k/a the "Vicodin jerseys" case -- complaint available here, current docket available here), in which Judge Consuelo B. Marshall of the U.S. District Court for the Central District of California has issued a "tentative ruling" in favor of the plaintiff. You might recall that the pharmaceutical company AbbVie filed suit late last year to stop the sale of the shirt on the right:






My response to that reporter ended up being quite a bit longer and more theoretical than I had planned. Since there's no way the majority of that commentary will be printed, I've decided to post it here (in slightly modified form). Voilà:


This case isn't just about slapping someone else's trademark on a shirt; it actually goes to the heart of fairly complex issues in trademark law that the federal courts have not yet definitively resolved.


As I've written elsewhere, trademark law was initially intended primarily to prevent one party from passing off his goods as those of another, or vice versa. Yet the language addressing "confusion" in the U.S. Lanham Act is broad enough that parties have [twisted and] the contours of trademark "rights" far beyond their traditional parameters.


[Readers of this blog likely know that so-called "likelihood of confusion" multifactor test is the doctrinal heart of many -- or even most -- litigation over "trademark infringement."  However,] the jurisprudence in this area is a mess: in some federal circuits, the balancing of these factors is left up to juries with insufficient normative guidance, while in others the likelihood-of-confusion analysis is performed by judges in a manner that studies have proven to be decidedly outcome-driven. Thus, the law's current lack of clarity on "likelihood of confusion" simultaneously (1) makes unconventional trademark infringement claims like AbbVie's (at least superficially) plausible, and (2) provides precious little basis for reliably predicting how such claims are likely to come out. Hence the unwelcome profileration of cease-and-desist letters over conduct that no one could reasonably have thought actionable fifty years ago. I'll go out on a limb and say that Kitson's tongue-in-cheek "Vicodin" shirts probably fall into this category.


Equally problematic is AbbVie's allegation that the defendants should be held liable under a relatively new (c. 1995) portion of the federal Lanham Act that forbids trademark "dilution".  A few aspects of trademark dilution are well understood and widely recognized: for example, unlike some of its state-law analogues, federal trademark dilution can only occur via a third party's use of a "famous" mark. Equally clear is that, unlike trademark infringement, trademark dilution can occur even in the absence of a likelihood of confusion among consumers. Under what exactly circumstances can it occur?  Well, the federal courts haven't quite figured that out yet. But they know it when they see it. Possibly. Maybe.


Judges will confidently recite that federal trademark dilution can take two forms: dilution by "blurring" and/or dilution by "tarnishment." A trademark might be "tarnished" when it is used, for example, in connection with material of questionable quality or moral character. The circumstances under which a mark is diluted through blurring is much... blurrier. Various tests have been articulated for making this determination -- does the third party's use of the mark in question reduce "the capacity of a famous mark to identify and distinguish goods or services"? -- but it's safe to say that almost no one has an entirely coherent understanding of trademark dilution (probably because such an understanding is impossible in light of the doctrine's convoluted history.) Judges are well aware "dilution" is difficult to apply; perhaps for this reason, they often end up grounding their findings of liability in other doctrines, or excusing defendants from liability based on doctrines that avoid the question of "blurring" altogether.


One of those legal doctrines is the so-called Rogers test, created by the Second Circuit Court of Appeals in a 1989 decision to help resolve conflicts between trademark/trademark-like protection and the First Amendment. The test has since been adopted in many other jurisdictions, including the Ninth Circuit, which includes the Los Angeles federal district court where the AbbVie case was filed.


Under the Rogers rule, a party cannot be held liable under trademark law solely for using another's trademark in an "expressive" or "artistic" work, provided the trademark, as used, has at least some relevance to the expressive work in question.  The test certainly has its virtues, though it's not without its own problems: for one, it forces judges to make determinations about which works are "expressive" or "artistic," and which are not -- something they are reluctant to do unless absolutely necessary. However, as more trademark owners have brought increasingly aggressive claims, especially in the dilution arena, courts have had no choice but to wrestle with such issues. This has led to some convergence in trademark and conventional First Amendment jurisprudence. In one 2010 case, for example, the Ninth Circuit ruled that tattoos are "expressive" -- and thus deserve full First Amendment protection:


Tattoos are generally composed of words, realistic or abstract images, symbols, or a combination of these, all of which are forms of pure expression that are entitled to full First Amendment protection. Tattoos can express a countless variety of messages and serve a wide variety of functions, 'including: decorative; religious; magical; punitive; and as an indication of identity, status, occupation, or ownership.'


This 2010 non-trademark-related First Amendment decision was later invoked by the Ninth Circuit in a trademark(-plus) dispute over the use of a famous person's likeness in a video game. The Ninth Circuit ruled in 2013 that under Rogers, a celebrity-plaintiff could not use the Lanham Act to stop the defendant from portraying him in its video game, in part because such games are indeed "expressive" works. The court noted an "evolution in recent years toward greater First Amendment protection for non-traditional media" -- one that "has not been limited to video games." (True, the Ninth Circuit has talked out of both sides of its mouth on this issue; in another video game case, the appellate court ruled on the very same day that the right of publicity trumped the First Amendment interest held by makers of sports-depicting video games, even if federal trademark law did not.  The AbbVie case does not involve the portrayal of people, so we need not dwell on that point.)


If tattoos and video games are "expressive" for purposes of trademark/First Amendment law, at least some shirts -- the product at issue in the AbbVie v. Kitson case -- must likewise qualify. Indeed, some of the shirts sold by Kitson clearly convey a very specific message. With the shirt at issue in AbbVie, however, it's not immediately obvious what the product is trying to "express."  As AbbVie's complaint emphasizes, the shirt seems to glorify the use of Vicodin -- especially in light of the phrase that appears in related marketing materials: "just what the doctor ordered." But while this might be a message that AbbVie doesn't like (or at least claims it doesn't like), it's still a message -- and one that doesn't necessarily advocate illegal activity, either. All of this would seem to lead to the conclusion that the shirt in question is an "expressive" work, and since the "Vicodin" trademark is clearly "relevant" to the message that "Vicodin is awesome," the court could (and, in my view, should) rule that the Rogers test precludes liability for the defendants.  (It's true that, if taken too far, this line of reasoning could eviscerate many existing trademark "rights," but we'll have to save that discussion for another day -- perhaps when I have time to go into detail on my forthcoming paper, "Aesthetic Functionality and Genericism.")


The court's "tentative ruling" in favor of AbbVie, however, goes a different way: it simply "orders the Defendants, based upon the representations made today on the record, not to make the shirts available to the public" (at least for the time being.) Perhaps it should come as little surprise that a federal court appears unsympathetic to a designer and retailer making money from the apparent promotion of recreational uses of controlled substances -- after all, while the message conveyed by an "expressive" work should not affect the First Amendment-Rogers analysis, one imagines that it will inevitably factor into judges' perception of a case. (I should note that there is no indication in the publicly available documents whether the court even conducted a Rogers analysis, so this is really speculation piled onto speculation.)


To be clear, the case isn't over. As it proceeds, I hope that the court engages in a faithful application of the "likelihood of confusion" test, which -- in my view -- should lead to a finding of no infringement. It's simply not plausible that any significant number of the target consumers -- young people shopping at a store that carries various irreverent shirts -- would believe that AbbVie was the "source" of the shirts (or had "sponsored" or "endorsed" them.) But again, as legal scholarship has demonstrated, federal judges can, and do, manipulate massage the various factors making up the likelihood of confusion test to arrive at their desired outcome. Thus, the court could conceivably find the defendants liable even without delving into the questions of (1) whether the "Vicodin" mark is "famous"; and (2) if so, whether this use "dilutes" the mark. In my view, that outcome would be troubling from a free-speech perspective, but also unsurprising: neither the judiciary (Rogers test notwithstanding) nor the public has come to fully appreciate the chilling effect that trademark "protection" can have on expression.


That's it for now.  Oh, if you happen to be in the New York area, come hear me speak about a completely different fashion-related topic at the CUNY Graduate Center later this month.


[Like everything on LAW OF FASHION, this post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to Charles Colman; Charles Colman Law, PLLC; New York University; The Center for the Study of Fashion, Law, or Society; or any departments, subdivisions, agents, representatives, or clients thereof. Neither the writer of this post nor LAW OF FASHION (or any person or entity associated with either) can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]