Bridging the Gap Between Brand and Trademark Law
While trademark law is the focus of much of Associate Professor of Law Jessica Kiser’s research and scholarship, her most recent article is informed by her undergraduate training in advertising and cultural anthropology. The article, titled “Brandright,” recently received the 2018 Ladas Memorial Award from the International Trademark Association for the best paper on the topic of trademark law published by a professor or practicing attorney.
In the article, Kiser shines a light on the ways in which trademark law can encourage, and even force, trademark owners to silence consumers who want to create fan websites for groups devoted to a beloved trademark and brand. To address this disconnect between brand development and trademark law, Kiser proposes a new form of intellectual property right that she coined the brandright. She argues that this new right, granted to consumers rather than brand owners, will help formalize the rights of consumers to use trademark-related information for expressive purposes. This argument was further buoyed by the 2017 Supreme Court decision in Matal v. Tam, which expressly recognized that trademarks can be used in an expressive fashion that deserves First Amendment protection.
A brandright is a recognition of the public’s right to engage in expressive uses of trademarks as protected by the First Amendment. This new intellectual property right is not merely a defense. The brandright recognizes the value of the investment made by consumers in both the commercial and non-commercial dialogue about trademarks and brands. Therefore, consumers possess brandrights as affirmative rights that they may seek to enforce and defend against other consumers and even the brand owner. This is an important distinction necessitated by the unique nature of brands and the expressive quality of trademarks recognized in Matal.
Brands are categorically distinct; unlike trademarks, they cannot be sensibly understood simply as the development of a consistent identification of source. A trademark is a narrower concept than a brand. A brand is likely to include a trademark (or multiple trademarks) among the creative content that a company releases to the public to differentiate its product’s uniqueness and personality from that of another. To illustrate the difference between the role of a trademark and that of a brand, consider that a trademark can be said to answer the question, “Who made this product?” A brand answers the more existential questions of “Who is this product?” or “Who am I if I buy this product?” A trademark answers the first question by indicating the source of the good or service. To answer the brand-related questions requires more than a reference to a trademark or a source. Rather these questions invite discussion, creativity, and expression. In developing a strong brand, a company will invite consumers to participate, engage, and identify with the brand’s image or identity. It is this invitation for consumer engagement that makes the brandright necessary.
Consumers are invited to participate in the development of, and discourse about, a brand, but trademark law is not designed to protect or allow for such discourse and co-development. Trademark law was developed with a more limited view of trademarks in mind. Trademarks were created and used by the owner of the mark to indicate source so that consumers could distinguish between purveyors of goods and services at the time of purchase. The modern concept of branding includes substantial creative content produced by the trademark owner and its marketing professionals, but also content created by consumers in response to the company’s creative content. The proposed brandright is a right granted to those consumers (and the public at large) that join with a company to further its brand-development efforts. Essentially, a company invites consumers to collaboratively engage with it in marketing and other brand-related communications. This invitation necessitates that consumers be allowed to use the brand messages, materials, and even the product or company name and trademark for these responsive brand-related purposes. These purposes can include spreading information about the brand, or creating art, websites, and communities to celebrate or criticize the brand. A rather obvious example of a company inviting its consumers to participate and interact with the brand is a recent advertising campaign by Yum!Brands for its Kentucky Fried Chicken restaurants in Canada. The KFC Stories campaign includes official commercials that illustrate how the company’s fried chicken is woven into consumers’ lives. At the end of the advertisements, the company invites consumers to share their own KFC stories by posting them to twitter with the hashtag #KFCstories. Although this example directly invites consumer participation, this type of engagement is the goal of all brand development. Therefore, the brandright exists as a result of these invitations, and formal recognition can better align the interests of all parties.
Additionally, consumers are adding valuable content to a company’s brand message. Rather than attacking a company’s consumers under the purview of trademark law, it is time to recognize that consumers’ contributions to a brand justify the recognition of some rights in the brand. For this reason, the brandright does more than simply enlarge the public domain to include trademark-protected imagery and content. Surely the increasingly expressive nature of trademarks necessitates increasing public access to those forms of expression. However, the brandright is an affirmative right possessed by the consumer-creator to recognize that the time and creativity invested by that consumer have value. Brand owners currently invite consumer creativity and discourse, benefit from the brand-development activities of consumers, and deny those same consumers any rights to their creations. Without affirmative rights granted to consumers, brand development essentially becomes the intellectual property equivalent of an attractive nuisance. The brand owner distributes attractive, creative content to consumers that is intended to garner consumer response. However, when that consumer uses a trademark in their response, trademark law tells the brand owner to put a stop to it. This evokes concerns about unjust enrichment and free speech violations. Members of the public have some affirmative right to engage in expressive uses of trademarks and brand-related information. With that right should come the ability to profit from their creations, subject to the infringement-oriented limitations below, and the ability to seek damages from a trademark owner that unfairly interferes with the individual’s brandrights. Provided that the consumers do not cause source confusion and do not engage in competition with the relevant company, they should be allowed to respond to a brand’s siren songs. This is the freedom provided by this concept of brandright.
. Existential philosophy has begun to influence branding at a practical level. Randall Rozin, Existentialism and Brand Marketing, AdAge (Mar. 4, 2013) http://adage.com /article /btob /existentialism-brand-marketing/ 289307/ [https://perma. cc/7Q2P-KJ2K] (“As you create new brands, reposition others or integrate acquired brands into your portfolio, start by defining a brand’s reason for being. What purpose does it serve for your company and, more important, why does it exist for your customers? What promise is your brand making in the market? . . . If we think of existentialism as a movement that holds that the starting point of understanding must be the authentic experiences of the individual, then it’s a natural extension to move from individuals to groups of customers and apply existentialism to corporations and to brands. Good luck on your journey of discovery to find your brand’s reason for being.”).
. Rob Walker, Buying In: The Secret Dialogue Between What We Buy and Who We Are xii-xiii (2008) (describing this as a “secret dialogue” because many of the rules are not explicit, rather “[i]t’s complex, subtle, and sometimes misleading.”).
. Heymann, supra note 36, at 653-55. Heymann argued for more access to trademark meanings for consumers: “If trademark law recognized the active work that consumers do in engaging with trademarks, it would incorporate a theory of the consumer that sees him as capable of engaging with these trademark associations without the law’s interference.” Id. at 655.
. Although brand-related expression has immeasurable value to society generally, and to the individual creators on a personal and psychological level, there are clear examples of the monetary value attributable to some consumer-created brand developments. For example, in 2012, Coca-Cola became the first brand to pass 50 million “likes” on Facebook in connection with a Facebook page created and operated by fans Dusty Sorg and Michael Jedrzejewski without official Coca-Cola permission. Brad Ruffkess, How Coke and 50 Million Facebook Fans Share Happiness, Coca-Cola Company (Oct. 30, 2012), http:// www.coca-colacompany.com /coca-cola-unbottled /how- coke- and- 50-million-facebook-fans-share-happiness [https://perma.cc/TQM9-VCRG]; see also Fans First: Coca-Cola on Facebook, Shorty Awards, http://shortyawards.com/4th/fans-first-coca-cola-on-facebook [https://perma.cc/8Q4C-X4VJ]; Jules Cowan-Dewar, Social Media Brand Execution: Coca-Cola & Facebook, Catalyst (Mar. 28, 2011), http://catalyst.ca/blog/social-media-coca-cola-facebook/ [https://perma.cc/ED7G-9YZ3]. Marketing professionals have estimated that a single Facebook fan was worth $174 on average. The Value of a Facebook Fan 2013, Syncapse (Apr. 17, 2013), https://www.syncapse.com/value-of-a-facebook-fan—2013/#.WaDhFiiGPIU [https://perma.cc/GU3L-5N3J].