The Suppressed Misappropriation Origins of Trademark Antidilution Law: The Landgericht Elberfeld’sOdolOpinion and Frank Schechter’s "The Rational Basis of Trademark Protection"

The Suppressed Misappropriation Origins of Trademark Antidilution Law: The Landgericht Elberfeld’s Odol Opinion and Frank Schechter’s "The Rational Basis of Trademark Protection" , in Intellectual Property at the Edge: The Contested Contours of IP 59 (Rochelle Cooper Dreyfuss and Jane C. Ginsburg, eds., Cambridge University Press, 2014)

The Suppressed Misappropriation Origins of Trademark Antidilution Law: The Landgericht Elberfeld’s Odol Opinion and Frank Schechter’s "The Rational Basis of Trademark Protection", in *Intellectual Property at the Edge: The Contested Contours of IP* 59 (Rochelle Cooper Dreyfuss and Jane C. Ginsburg, eds., Cambridge University Press, 2014)

Barton Beebe, The Suppressed Misappropriation Origins of Trademark Antidilution Law: The Landgericht Elberfeld’s Odol Opinion and Frank Schechter’s "The Rational Basis of Trademark Protection, in Intellectual Property at the Edge: The Contested Contours of IP 59 (Rochelle Cooper Dreyfuss and Jane C. Ginsburg, eds., Cambridge University Press, 2014)

Transcript  Oral Argument, Moseley v. Secret Catalogue

To be sure, the parties, on account of the wholly different goods put out by them are not in actual competition. That, however, is beside the point. The complainant has created a demand for its goods, while employing thereon a word having drawing power, for only through the year[s]-long and extended activity of the complainant was its selling power acquired. 4 The court reasoned that the complainant thus had "the utmost interest in seeing that its mark is not diluted [verwässert]: it would lose in selling power if everyone used it as the designation of his goods." 5 And so, in the seminal Odol opinion, whose author remains unknown, the concept of trademark dilution was born. 6 The herald of a concept at the very edge of trademark law, the Odol decision soon made its way to America, and to the pages of the Harvard Law Review, and eventually, to the pages of the US Reports. The journey began with the December 1924 issue of the German intellectual property law journal Gewerblicher Rechtsschutz und Urheberrecht, which reported the Odol decision in full. 7 Four months later, in April 1925, the Bulletin of the United States Trade-Mark Association published a two-page discussion and partial translation of the Odol case by one Dr. Ludwig Wertheimer. 8 Then, in 1927, came the main event. In that year, the young Germanspeaking 9 American lawyer Frank Schechter published in the Harvard Law Review an article entitled "The Rational Basis of Trademark Protection" 10 which relied heavily, though cagily, on the Odol case, and which would eventually become the most cited law review article ever written on trademark law. The extraordinary influence of Schechter's article and, through it, of the Odol case was confirmed in 2003 in the US Supreme Court opinion Moseley v. V Secret Catalogue, Inc. 11 The Moseley court quoted the thesis of Schechter's article that "the preservation of the uniqueness of a trademark should constitute the only rational basis for its protection," 12 explained that Schechter "supported his conclusion by referring to a German case protecting the owner of the well-known trademark 'Odol,'" 13 and dutifully quoted in a footnote from Schechter's discussion of the Odol case: "The German court 'held that the use of the mark, "Odol" even on non-competing goods was "gegen die guten Sitten."'" 14 Remarkably, the Supreme Court offered no translation of the meaning of the German: "opposed to good morals." To be sure, the impact of "Rational Basis" has been profound, but it has also been scattered and confused. The article and the conception of trademark dilution that it set forth have generated an enormous amount of scholarly commentary both in the United States and abroad, 15 not to mention two federal antidilution statutes, 16 thirty-eight state antidilution statutes, 17 and numerous foreign antidilution laws. 18 Yet the "dauntingly elusive concept" 19 of dilution remains essentially an enigma. As a leading American commentator attests: No part of trademark law that I have encountered in my forty years of teaching and practicing IP law has created so much doctrinal puzzlement and judicial incomprehension as the concept of dilution . . . Few can successfully explain it 10 Frank I. Schechter, "The Rational Basis of Trademark Protection," 40 Harv. L. Rev. 813 (1927). 11 537 U.S. 418 (2003). 12 Ibid. at 429. 13 Ibid. 14 Ibid. at 429 n. 9. 15 See, e.g., Laura Bradford, "Emotion, Dilution, and the Trademark Consumer," 23 Berkeley Tech. L. J. without encountering stares of incomprehension or worse, nods of understanding which mask and conceal bewilderment and misinterpretation. 20 If dilution is an enigma, even more so is "Rational Basis." The article has produced a variety of conflicting interpretations of what its author thought dilution was, why he thought we should prevent it, and how he thought we should do so. 21 Indeed, one wonders if even Schechter himselfwho died only ten years after publishing "Rational Basis," too young at the age of forty-seven, before he could further develop and clarify his ideas 22ever fully understood what he intended when he used the term "dilution." 23 The result is that now nearly a century since the Odol case and "Rational Basis," we are still struggling to reach consensus on what exactly the Landgericht Elberfeld and Schechter meantand, more importantly, what exactly we meanby trademark dilution. While the concept of trademark dilution, even in its pure and perfect form, whatever that may be, is no doubt quite subtle, dilution's theoretical elusiveness cannot fully explain why the concept continues so thoroughly to befuddle trademark courts and commentators. This brief essay offers an additional explanation for the mystery surrounding the concept, an explanation grounded not in theory, but in history. It argues that Schechter deliberately sought in "Rational Basis" to obscure the true 20 J. involving the same mark on such far removed articles as mouth-wash and steel ties, the court found that it was the 'dilution' of a mark and the impairment of its selling-power or drawing-power that must be enjoined." See Frank I. Schechter, "Trade Morals and Regulation: The American Scene," 6 Fordham L. Rev. 190, 204 n. 42 (1937). nature of the Odol case and of antidilution protection, and that even a century later, his effort at obfuscation remains more or less a success, at least in the United States. What Schechter sought to obscure in "Rational Basis" is that the Odol case was not, strictly speaking, a trademark case. Rather, it was a misappropriation case that happened to involve a trademark. Schechter sought to suppress this basic truththat the concept of trademark dilution is essentially a misappropriation conceptin order to sell his proposed doctrinal reforms to an American audience altogether suspicious of misappropriation doctrine and increasingly under the sway of American Legal Realism. A highly sophisticated trademark scholar and New York lawyer, a recent graduate of Columbia Law School, and the son of the great rabbi Solomon Schechter, Frank Schechter very likely understood in 1927 that his thinkingand the Odol decisionwas in sync with the commercial realities of his time but strangely out of sync with its legal thought. Only nine years earlier, the Supreme Court had handed down its controversial majority opinion in the misappropriation case of International News Service v. Associated Press. 24 In separate dissents, which would eventually become part of the canon of American Legal Realism, Justice Holmes and Justice Brandeis both criticized Justice Pitney's majority opinion for the empty formalism and circularity of its finding that the petitioner was "endeavoring to reap where it has not sown." 25 Justice Brandeis in particular expressed concern that courts were ill-equipped to limit the reach of a broad misappropriation rule by which the respondent might "prevent appropriation of the fruits of its labor by another." 26 Schechter needed to disassociate the Odol case from the International News majority; he needed somehow to clothe his essentially formalist misappropriation doctrine in the guise of legal realism. To do so required a great deal of finesse, or to put it more bluntly, of dissembling, and "Rational Basis" is full of it. As we will see, Schechter went so far as to delete from his lengthy quotation of Dr. Wertheimer's translation of the Odol opinion the opinion's central holding, that the respondent sought "to appropriate thus the fruits of another's labor." Due both to its frequent misdirection and ambiguity and to its emphatic suppression of any suggestion that trademark dilution is a form of misappropriation, "Rational Basis" has remained an altogether open text. It has managed over the years to mean many different things to many different people, all seeking some theoretical means to fill the void left in the absence of misappropriation. As new generations try to decipher what the prophet meant to tell us in "Rational Basis," each reader fastens upon a different passage and takes away a different meaning, and the exegetical debate only intensifies. The result is that "Rational Basis" still remains essentially inscrutable, as does Schechter's concept of dilution, and this very inscrutability has been the source of the article's enduring influence and the concept's enduring fascination. Even now, in the face of ever more scholarly and judicial commentary recognizing that dilution is essentially a form of "free-riding," 27 and likely one that typically inflicts no substantial harm on the misappropriated mark, the obfuscatory nature of Schechter's text enables the concept of dilution to survive behind a fog of indeterminacy. In what follows, I first discuss the Odol case itself. I then turn to "Rational Basis," its expurgation of the Odol case, and its many artful formulations and reformulations of the concept of trademark dilution. The Odol case presented the Landgericht Elberfeld with an especially difficult set of facts: The respondent had registered at the German Patent Office a trademark identical to the complainant's widely recognized trademark, but had done so for use on goods unrelated to the complainant's goods. While the complainant used "Odol" in connection with mouthwash, the respondent succeeded in registering "Odol" for steel products such as nail clippers. The difficulty was that the German Trademark Act of 1894 28 would grant relief only if the complainant could show that the respondent's mark was likely to cause consumer confusion as to the true source of the respondent's goods. But because the complainant's and respondent's goods in the Odol case were so different and no reasonable connection could be imagined between them, consumers were not likely to be confused as to source. Instead, consumers would likely believe that another company was now also using the "Odol" mark as a designation of source of its own goods. In 1905, the German Supreme Court at Hamburg had considered a similar set of facts in which the complainant had long been using the well-known mark "Kodak" on cameras and the respondent had more recently registered the same mark for use on, among other things, toilets and bath tubs. 29 Because these facts could not support a likelihood of consumer confusion as to source, the Hamburg court refused to order the cancellation of the respondent's registration. 30 But importantly, the Odol court did not analyze the facts before it under trademark law. Instead, it based its decision on two other provisions in German law, neither of which required a showing of consumer confusion. The first was § 826 of the German Civil Code of 1900 (the "BGB"): 31 "Who, in a manner contrary to good morals [gegen die guten Sitten], intentionally inflicts damage on another is liable to compensate the other for the damage." 32 The second was § 1 of the Law against Unfair Competition of 1909 (the "UWG"): 33 "Who, in the course of trade, takes actions that impede against good morals [gegen die guten Sitten] can be sued for injunctive relief and compensation." 34 In theory and in practice, these two provisions were largely redundant of each other, 35 but § 826 BGB required a showing of intent ("intentionally inflicts damage") 36 while § 1 UWG was understood to require a showing of competition between the parties ("in the course of trade"). 37 The broad provisions of § 826 BGB and § 1 UWG did not formally require anything like a showing by a trademark complainant that its mark was famous, but like a present-day trademark court considering a dilution cause of action, the Odol court turned first to the issue of the fame or 29 the "so-called Kodak doctrine that justifies an extensive scope of protection against confusion of well-known marks"). 31 Bürgerliches Gesetzbuch (1900). 32 The German is: "Wer in einer gegen die guten Sitten verstoßenden Weise einem anderen vorsätzlich Schaden zufügt, ist dem anderen zum Ersatz des Schadens verpflichtet." 33 Gesetz gegen den unlauteren Wettbewerb (1909). 34 The German is "Wer im geschäftlichen Verkehre zu Zwecken des Wettbewerbes Handlungen vornimmt, die gegen die guten Sitten verstoßen, kann auf Unterlassung und Schadensersatz in Anspruch genommen werden." 35 See Rudolf Callmann, Der unlautere Wettbewerb, 92-93 (Bensheimer, Mannheim, 1929). 36 See Sattler, supra note 6, at 308. 37 See ibid. at 311-14. notoriety of the complainant's mark. Apparently, the court believed that this was a threshold issue and that only famous marks could qualify for the special form of protection the court would eventually set forth. As translated by Dr. Wertheimer, the court found: [T]he word "Odol" has become a catchworda nickname as distinguishing the goods of the complainant, and has attained a good-will superior to that of its former meaning as a trade-mark, so that everyone when he hears or reads the word "Odol," thinks of the complainant's mouth wash. These facts are of the greatest significance to the complainant; its goods have a good reputation, and an article designated with the name "Odol" leads the public to assume that it is of good quality. 38 Here, in its reference to the strong tendency of the public to link "Odol" with mouthwash and with quality, the Odol court anticipated the two specific forms of dilution that US trademark law would eventually recognize: the "blurring" of the link between the plaintiff's mark and the plaintiff's goods and the "tarnishment" of the plaintiff's reputation. 39 Having established the fame of the "Odol" mark, the court turned to the issues of damage, intent, and moral violation under § 826 BGB and competition between the parties under § 1 UWG. As to damage, the Odol court offered a remarkably incisive explanation of what trademark dilution entails: a mark "would lose in selling power if everyone used it as the designation of his goods." This initial appeal to the extreme case, in which manyor allcompanies use the same mark and thereby dilute the mark's distinctiveness of any one of those companies, remains a very effective rhetorical strategy in describing to the uninitiated what dilution is. 40 But not "everyone" was using the "Odol" mark, so the court 38 Wertheimer, supra note 2, at 76. The Odol court's description of the fame of the "Odol" mark is similar to, and was perhaps influenced by, the opinion of Landgericht Chemnitz in an April 1923 case involving the trademark "4711," used by the complainant for perfume and subsequently by the respondent for luxury goods. retreated in the next paragraph of its opinion to "anyone" and to what we would now recognize as the gradual, continuous "death by a thousand cuts" 41 description of dilution: "The respondent must also admit that when anyone calls his goods 'Odol,' the word 'Odol' loses value for the complainant." 42 The Odol court wisely made no effort further to quantify this loss in value, thus avoiding one of the most difficult questions in contemporary dilution doctrine: Short of "everyone" using a particular famous mark, how do even multiple unauthorized commercial uses of that mark actually damage the famous mark or its proprietor? As to intent, the court attributed to the respondent knowledge that its conduct could cause dilution of the "Odol" mark. Here again, the Odol court's discussion of what motivated the respondent to use a mark identical to the complainant's is strikingly astute. Dr. Wertheimer translated the court's discussion as follows: The respondent has registered the mark for its steel goods for the obvious purpose of deriving from its selling power [Schlagkraft] some advantage in marketing its own products. There are of course numerous euphonious words that the respondent could have used as the symbol of its goods; it chose the word "Odol," it was clear, because this mark had acquired an especially favorable prestige [einen besonders guten Klang] through the efforts of the complainant. It must further be said, that there is at least a possibility that the complainant may be damaged through its action. In this knowledge the respondent has registered its mark, thus acting at least with far-sighted cunning. 43 To satisfy § 1 UWG's requirement that there be competition between the parties, the court engaged in a bit of sleight of hand typical of trademark courts of that era both in Germany and the United States. 44 The Odol court found competition in a more general sense: 41 42 Odol, supra note 1, at 205. The English translation is from Wertheimer, supra note 2, at 77. Compare the language of the Landgericht Chemnitz in its earlier 4711 opinion: "As more firms sell their goods to this consumer population under the '4711' mark, so must the mark lose power." ("Je mehr Firmen ihre Waren unter dem Zeichen '4711' in diesen Verbraucherkreis bringen, um so mehr muβ es an Kraft verlieren."). 4711, supra note 38, at 722. The 4711 court had earlier spoken of the mark's "distinctiveness and advertising appeal" ("Kennzeichnungskraft und Werbekraft"). Ibid. The court analyzed the facts before it only under § 826 BGB, which the court held could support an action for the "impairment of the uniqueness and distinctiveness of another company" ("eine Beeinträchtigung der Eigenart und Unterscheidungskraft des fremden Betriebes"). Ibid. at 722. It was apparently left to the Odol court, however, to refine the concept of and coin the term "dilution." 43 Ibid. The complaint may also be based on Section 1 of the law against unfair competition, since this legal provision does not impose the condition that the one who offends against good morals in business shall be in competition with the one claiming an injunction and damages, it being sufficient that the defendant encroaches on the business of two competitors. Here, however, complainant's ability to compete with other manufacturers of mouth wash will be impaired if the significance of its mark is lessened. 45 Thus the court resolved the paradox created, on the one hand, by § 1 UWG's requirement that the parties be in competition, and on the other, by the nature of dilutive conduct, in which a defendant uses the plaintiff's mark in a manner that does not cause consumer confusion as to source, typically because the defendant is not in direct competition with the plaintiff, but rather dilutes more generally the distinctiveness of the mark. 46 In comparison to its treatment of damage, intent, and competition between the parties, the Odol court devoted relatively little attention to the main issue at the core of the Odol case: whether the respondent had actually done anything wrong, anything "gegen die guten Sitten." After all, many intentional competitive acts may damage a competitor, such as selling similar goods at a lower price or placing one's store across the street from a competitor's, but not all of them, in fact, very few, are contra bonos mores. The moral violation is all the more difficult to establish when the conduct of one company (for example, a manufacturer of digital cameras) damages another company (a manufacturer of photographic film) with whom it is not in direct competition. More to the point, if one company copies the same innovative marketing strategy as another company (for example, an emphasis on minimalist product design), the uniqueness of that marketing strategy will be damaged, as will the company that innovated it, but we do not consider such conduct to be "opposed to good morals." Similarly, the territoriality principle in trademark law permits one company intentionally to copy another company's trademark and use it on goods identical to those of the copied company in any country in which the copied company does not sell its goods, has not registered its mark, and is not well-known. 47 Here again, though such conduct may damage the copied company (for example, by 45 Odol, supra note 1, at 205. The English translation is from Wertheimer, supra note 2, at 77. 46 preventing that company from expanding its business), we do not find a violation of good morals. How then was the respondent's conduct in the Odol case different? The Odol court offered no answer. It simply declared, as quoted above, that "it is opposed to good morals to appropriate thus the fruits of another's labor in the consciousness that that other will or may thereby be damaged." This was the totality of the court's reasoning, never mind that most commercial conduct in a market economy consists, in the abstract, of exactly what the Odol respondent was accused of having done. 48 The Odol case thus had all the characteristicsand limitationsof a straightforward misappropriation case, albeit one that involved the misappropriation of a trademark's "selling power." German courts and commentary generally understood the Odol case and contemporary cases like it in these terms. To be sure, in 1905, in the Kodak case, the German Supreme Court at Hamburg had denied protection on the ground that the complainant had failed to show competition between the parties, likelihood of confusion, or intent by the respondent to inflict damage, even if the respondent's exploitation of the "fruits of another's labor" was "reprehensible from a moral standpoint." 49 But as Rudolf Callmann's 1929 treatise Der unlautere Wettbewerb suggests, sentiment quickly changed. Callmann pointed to the 1918 case Bona -Tengelmanns Bona 50 in which, in finding infringement the court never explicitly mentioned a likelihood of consumer confusion, but rather spoke exclusively of, as Callmann put it, "the contrariety to good morals [Sittenwidrigkeit] of the deliberate exploitation of the 'drawing power' of the catchphrase 'Bona'." 51 Alfred Rosenthal, another prominent treatise writer of the time, commented on a 1926 case involving the well-known mark "4711" for Eau de Cologne: "What is important is not whether the public will be misled, but whether the work of another is subject to unfair exploitation [illoyalen Ausnutzung] through the copying of one of the most well-known marks in the entire German marketplace." 52 Just as German courts and commentators understood the Odol case as a misappropriation case, so American courts and commentators should have as well, particularly in light of its commonalities with the 1918 when in fact it appears to have inspired his entire concept of trademark dilution, much of his terminology, such as "selling power" (Werbekraft) and dilution (Verwässerung), and many of his arguments. For example, Schechter followed the Odol court's lead in belittling the traditional requirement that for relief to be granted under trademark law, the parties must be in competition, or in US terminology, the goods of both parties must be "related" in some way. 58 He also emphasized that antidilution protection was most appropriate for marks that were, like "Odol," linked to a particular product and level of quality, marks that, in Schechter's words, "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." 59 And while the Odol court emphasized that there were "numerous euphonious words that the respondent could have used as a symbol of its goods," Schechter defended antidilution protection against the "historical fear of monopoly which has possessed the courts" 60 with a quote from an American trademark case that "[a]ll the rest of infinity is open to defendant." 61 But for all of his reliance on the Odol case and his extensive quotation from Dr. Wertheimer's translation, 62 Schechter omitted one sentence in particular. The penultimate page of "Rational Basis" provides a lengthy block quotation from the Wertheimer translation, but from the middle of that block quotation Schechter excised and replaced with an ellipsis the following sentence, now familiar to us, from the Odol opinion: "It is opposed to good morals to appropriate thus the fruits of another's labor in the consciousness that that other will or may thereby be damaged." 63 Why would Schechter feel compelled to suppress the Odol court's core finding, the very foundation of its ruling? 64 Schechter's expurgation of this sentence is consistent with another peculiarity of "Rational Basis." While the Odol court did not hesitate to explain why the respondent used the "Odol" mark ("for the obvious purpose of deriving from its selling power some advantage in marketing its own products"), Schechter scrupulously 58 See Schechter, supra note 10, at 819-24. 59 Ibid. at 829. 60 Ibid. at 833. 61 Ibid. 62 It is not clear if Schechter ever consulted the original German-language Odol opinion. 63 See Schechter, supra note 10, at 832. 64 Admittedly, a page earlier, Schechter stated that the Odol court "held that the use of the mark 'Odol' even on non-competing goods was 'gegen die guten Sitten,' pointing out that, when the public hears or reads the word 'Odol,' it thinks of the complainant's mouth wash, and that an article designated with the name 'Odol' leads the public to assume that it is of good quality." Ibid. at 831. But note that Schechter is careful to omit from this quotation the Odol court's statement that the respondent "appropriat[ed] thus the fruits of another's labor." avoided speculating in "Rational Basis" on what motivated defendants to adopt famous marks. 65 Instead, he addressed only the damage such conduct inflicted on those marks. 66 Indeed, he repeatedly sought to focus attention on the mysterious nature of this damage. Schechter's purpose here was the same that motivated his deletion of the Odol court's reference to "appropriat [ing] thus the fruits of another's labor": he sought to suppress any link between trademark dilution and misappropriation. Schechter did so, I suggest, in an attempt to cloak his concept of dilution in the emerging fashion of legal realism. In a recent groundbreaking article (without which this chapter would not have been possible), Robert Bone calls attention to the realist context in which Schechter published "Rational Basis," 67 but Bone misses, I believe, the essentially duplicitous nature of "Rational Basis." Bone argues that "Schechter was a legal realist" 68 who "proposed dilution in the spirit of legal realism." 69 "Rational Basis" was, says Bone: a quintessential legal realist project. Schechter's analysis follows a typical realist format: start by explaining how judges are straining formalistic doctrines to implement underlying policies in a modern setting; then expose the policies beneath the formalisms; and conclude by calling for the elimination of formalisms and for decisions based directly on the policies. 70 This is certainly a fair description of the surface of "Rational Basis" (including the article's title), and its author may well have been sympathetic with the basic insights of legal realism. As Bone emphasizes, the article repeatedly invoked the "true functions" 71 of the trademark, criticized the failure of courts and commentators "to keep pace with the necessities of trade and the functional development of trademarks," 72 and lamented that "the proper expansion of trademark law has been hampered by obsolete 65 66 See, e.g., Schechter, supra note 10, at 825 (describing dilution as "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."); ibid. at 827 (describing dilution as the "vitiation of the identity of a mark"); ibid. at 831 (describing dilution as occurring when a mark's "uniqueness or singularity is vitiated or impaired by its use upon either related or nonrelated goods"). 67 See Bone, supra note 65. 68 Ibid. at 483. See also ibid. ("In brief, Schechter was a legal realista moderate legal realist, to be sure, but a realist nonetheless."). 69 Ibid. at 471. 70 Ibid. at 489. 71 See Bone, supra note 65, at 485 (quoting Schechter, supra note 10, at 818). 72 Schechter, supra note 10, at 824. conceptions both as to the function of a trademark and as to the need for its protection." 73 As Bone also notes, Schechter assailed the "cardinal principle that 'there is no property in a trade-mark apart from the business or trade in connection with which it is employed.'" 74 In a characteristically realist line of attack, he criticized the principle as inconsistent with the underlying "consideration of public policy" that motivated it. 75 Yet for all of Schechter's efforts to speak the new language of the realists, at least one realist reader of "Rational Basis" was not convinced, and for good reason. Buried in a footnote of Schechter's nowforgotten 1936 article "Fog and Fiction in Trademark Law" is his admission that not all had gone as planned with "Rational Basis." Schechter acknowledged that "Rational Basis" had been "fairly roughly handled from the general standpoint of ethics and social utility" 76 by a 1935 article that would go on to become more influential even than "Rational Basis": Felix Cohen's "Transcendental Nonsense and the Functional Approach." 77 "[F]airly roughly handled" was an understatement. One of the leading texts of American legal realism, "Transcendental Nonsense" seemed to reserve special scorn for trademark law, "this homestead law for the English language," 78 and much of this scorn seemed to be pointed directly at Schechter and his proposal that the use of certain marks be "restricted to a single firm." 79 It is often 73 Among the article's many references to the "true functions" of a trademark, 74 Schechter, supra note 10, at 822. 75 Ibid. 76 "Fog and Fiction," supra note 23, at 66 n. 14. 77 Felix Cohen, "Transcendental Nonsense and the Functional Approach," 35 Colum. L. Rev. 809 (1935). 78 Ibid. at 817. 79 Ibid. at 815. forgotten that Cohen's famous exposure of the "if value, then right" circularity 80 took the form of an attack on Schechter's proposal for antidilution protection: The current legal argument runs: One who by the ingenuity of his advertising or the quality of his product has induced consumer responsiveness to a particular name, symbol, form of packaging, etc., has thereby created a thing of value; a thing of value is property; the creator of property is entitled to protection against third parties who seek to deprive him of his property . . . The vicious circle inherent in this reasoning is plain. It purports to base legal protection upon economic value, when, as a matter of actual fact, the economic value of a sales device depends upon the extent to which it will be legally protected. 81 "According to the recognized authorities on the law of unfair competition," explained Cohen, "courts are not creating property, but are merely recognizing a pre-existent Something." 82 For Cohen, this was "economic prejudice masquerading in the cloak of legal logic." 83 (In his footnote, Schechter responded: "to this article I shall have occasion to refer later in Part II of this paper." 84 But there would be no part II. Schechter died the next year.) Cohen correctly identified the fundamental problem with "Rational Basis," the problem that Schechter tried to hide from his realist readers by focusing to such an extent on the damage to the plaintiff's famous mark rather than on the motives of the defendanton the harm rather than on the misappropriation. The problem is that, as a species of misappropriation, dilution suffers from the same circularity that besets the more general concept of misappropriation. In their dissents in International News, both Justice Holmes and Justice Brandeis attacked this circularity in Justice Pitney's majority opinion. Holmes protested that "[p]roperty, a creation of law, does not arise from value." 85 Justice Brandeis focused on the labor theory underlying misappropriation doctrine: "[T]he fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property." 86 "Transcendental Nonsense" simply brought the spirit of Holmes's and Brandeis's dissents to bear on "Rational Basis." More revealingly, another of Schechter's contemporary readers, the intellectual property specialist and Heidelberg-and Columbia-educated comparativist John Wolff, explicitly criticized "Rational Basis" as taking International News too far, at least for an American audience. In a 1937 article in Columbia Law Review comparing American and German trademark law, Wolff expressed his sympathy with Schechter's efforts to protect famous trademarks from dilution, 87 and correctly identified the essentially formalist spirit of Schechter's proposed test for dilutionwhich would simply ask (1) does the plaintiff's mark qualify for antidilution protection by virtue of its inherent distinctiveness and fame, and (2) is the defendant's mark identical or closely similar to the plaintiff's mark? 88 Wolff recognized Schechter's attempt thus to insulate famous marks from the messy empirical inquiry that attended a likelihood of confusion analysis, but concluded that Schechter's proposal was too radical for American courts: What [Schechter], in effect, proposes is to divorce the law from the uncertainties inherent in estimating the state of the public mind and entirely to eliminate the issue of confusion. Yet the American law of unfair competition and trademarks rests firmly on passing off. The very incongruousness of Schechter's theory with the tradition and the fundamental principles of the common law forms the chief obstacle to its general acceptance in this country. 89 In a footnote, Wolff went to the heart of the matterand of the Odol case. He compared American and German approaches to misappropriation: In International News Service v. Associated Press, it is true, the copying of news was held unfair competition even in the absence of passing off. But the courts have shown little inclination to apply the principle of this case to other types of 87 John Wolff, "Non-Competing Goods in Trademark Law," 37 Colum. L. Rev. 582, 602 (1937). 88 See Ringling Bros.-Barnum & Bailey Circus Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 457 (4th Cir. 1999) (discussing and collecting cases that take this approach). 89 Wolff, supra note 87, at 602. With respect to the "state of the public mind," Wolff was likely thinking of the following passage from Schechter's book-length history of trademark law: "Any theory of trade-mark protection which . . . does not focus the protective function of the court upon the good-will of the owner of the trade-mark, inevitably renders such owner dependent for protection, not so much upon the normal agencies for the creation of good-will, such as the excellence of his product and the appeal of his advertising, as upon the judicial estimate of the state of the public mind. This psychological element is in any event at best an uncertain factor, and 'the so-called ordinary purchaser changes his mental qualities with every judge.'" See Schechter, supra note 73, at 166. For further elaboration of Wolff's view, see Callmann, supra note 40, at 1336. copying . . . There is a far cry from the International News case to a general rule making it unlawful for one man to reap the fruits of another's efforts and expenditures. In Germany, on the other hand, § 1 of the Unfair Competition Statute . . . forbids competitive acts contra bonos mores. This provision is not limited to cases of passing off. All unethical conduct is embraced within the prohibition. Thus German courts have a much wider latitude than the American courts in enlarging the concept of Unfair Competition. This is why the Odol case doctrine, though entirely novel . . . has found easy entrance into German law. 90 Schechter could not have been unaware of this basic difference between American and German approaches to misappropriation. On the contrary, he was likely all too conscious of this difference, which helps to explain why he presented a bowdlerized version of the Odol case to his American readers and sought in the process to shift his concept of dilution out of the conceptual field of misappropriation and into trademark law. Despite the limitations of "Rational Basis" that Cohen and Wolff identified, it is clear that Schechter's concept of dilution survived the initial realist circumstances in which it was born. By 1955, Massachusetts, Illinois, New York, and Georgia had adopted statutory antidilution protection, and in 1965, the United States Trademark Association added an antidilution provision to its Model State Trademark Bill. 91 The European Union wrote antidilution protection into its Trade Marks Directive in 1988, 92 and in 1995, the United States established federal statutory antidilution protection, 93 which it revised in 2006. 94 What is notable about these various forms of statutory antidilution protection is that they define dilution in so many different ways. In many cases, these differences are slight, but in somefor example, in US federal antidilution protection as compared to EU antidilution protectionthe differences are quite substantial. To the extent that Schechter sought in "Rational Basis" to obscure the true nature of trademark dilution, it should not be surprising that so many varying approaches to antidilution protection have developed in the article's wake. Schechter seems deliberately to have defined dilution in a variety of subtly different ways. Sometimes he described dilutive conduct as consisting of the use of a famous mark on goods unrelated to those on which the mark was traditionally used. For example, "[dilution] is 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"; 95 or, dilution is the "destruction of the uniqueness of a mark by its use on other goods." 96 The harm here was the "dissociation" 97 of the famous mark from the goods with which it was traditionally associated. But then "Rational Basis" also defined dilution as occurring when a mark's "uniqueness or singularity is vitiated or impaired by its use upon either related or non-related goods." 98 The harm here, under the rubric of "vitiation," 99 was the general loss of a mark's uniqueness in the marketplace regardless of its connection to any particular good. Thus Schechter counseled in "Rational Basis" that "the possibility of vitiation of identity of a mark should in itself constitute the basis of relief." 100 On this definition, antidilution protection would promote the "preservation of the uniqueness or individuality of the trademark" 101 in itself. And sometimes it seems that Schechter was trying to split the difference between these two possibleand incommensurate 102forms of dilution, as when he spoke of the need to protect famous marks "against vitiation or dissociation from the particular product in connection with which it has been used." 103 "Rational Basis" could also be quite slippery as to whether dilution involved a blurring of the link between the mark and the good with which it was traditionally used or between the mark and the company that 95 Schechter, supra note 10, at 825. 96 Ibid. at 823. 97 Ibid. at 825. 98 Ibid. at 831 (emphasis added). 99 Ibid. at 825. 100 Ibid. at 825. 101 Ibid. at 822. 102 As between "dissociation" and "vitiation," dissociation is the more easily understood concept, but vitiation is the more fundamental and important concept that subsumes dissociation. This is likely why antidilution doctrine has generally tended towards deemphasizing whether the defendant's goods are related or unrelated to the plaintiff's. See Graeme B. Dinwoodie, Chapter 4 in this volume (discussing Davidoff v. Gofkid (C-292/00) [2003] E.T.M.R. 42). Dissociation in the unrelated goods scenario is simply one mode of the more general harm of vitiation, which can occur either in related or unrelated goods scenarios. "[V]itiation of identity of a mark" may occur in either scenario in the sense that consumers no longer believe that the mark originates from a single source and conveys a single meaning. 103 Schechter, supra note 10, at 825. produced the good. 104 For example, Schechter cited the 1926 case Duro Pump & Manufacturing Co. v. California Cedar Products Co. 105 as an example of a case where a court ruled in favor of the plaintiff on antidilution grounds. The plaintiff had long been using the mark "Duro" on "pneumatic pressure systems"; the defendant sought registration of the same mark on wall board. Schechter quoted the DC Circuit's opinion: "If the California Cedar Products Company were permitted to use this mark, which has come to represent the Duro Company and its product to the public, other companies likewise might use it, with resultant loss of identity of the Duro Company." 106 It may be that Schechter simply assumed that any given company sold only one product, so that it made little difference whether consumers, upon seeing the "Duro" mark, thought of the good (pneumatic pressure systems) or of the source (Duro Pump & Manufacturing Company). But this assumption left "Rational Basis" and the concept of dilution that it advocated unprepared for the emergence of brands, such as "Virgin," that would identify multiple, unrelated goods, and for the emergence of the licensing of such brands to multiple, unrelated sources. Such practices would eventually give rise both to the problem of "self-blurring" 107 and to the need for a theory of dilution that relies solely on the loss of uniqueness rather than on any kind of blurring of a semantic link between the mark and a good or between the mark and a source. Finally, Schechter was ultimately non-committal about what kinds of marks should qualify for antidilution protection. He implied in "Rational Basis" that only "arbitrary, coined or fanciful marks" 108 should qualify, and most of his readers have understood him to support this position. 109 And yet this is difficult to square with at least one example he gives in "Rational Basis" of a mark that should receive antidilution protection: the descriptive mark "Rolls-Royce," 110 which was based on the surnames of Charles Stewart Rolls and Sir Frederick Henry Royce. By the 1930s, it appears that Schechter had moderated his position, if he ever held it in the first place, that antidilution protection should extend only to inherently distinctive marks. In Congressional testimony, he pointed out that "I have limited that notion of mine to marks of an arbitrary or fanciful or original nature," but later stated that "particularly a unique and fanciful mark such as Odol or Kodak" 111 should receive antidilution protection. In "Fog and Fiction," he returned to this form of qualification when he asserted that dilution could occur "especially when the mark is coined or fanciful." 112 Schechter, it appears, would not have been troubled by the extension of antidilution protection to other non-inherently distinctive marks. Perhaps Schechter simply was not certain what he meant by trademark dilution, be it in the form of "vitiation" or "dissociation" or some combination of the two, which would explain why he offered such a mercurial formulation of the concept and of what should qualify for antidilution protection. Yet as his published work, and particularly his history of trademark law, attests, Schechter was a highly sophisticated lawyer and legal theorist. It seems more probable that just as he sought to disguise the true nature of the Odol case, so he sought to invest the concept of trademark dilution with an indeterminacy sufficiently protean to evade, as it has, nearly all attacks leveled against it. Schechter arguably never conceived of "blurring" or "tarnishment" as forms of trademark dilution, nor did he ever use these terms. 113 Yet these conceptualizations of dilution have come to dominate the US approach to antidilution protection. Congress has twice had the opportunity to include a European-style misappropriation cause of action in federal antidilution law and has twice declined to include this "third variant." 114 In the United States, blurring and tarnishment have rushed in to fill the 111 Hearings, supra note 73, at 10 (testimony of Frank I. Schechter) (emphasis supplied). 112 "Fog and Fiction," supra note 23, at 65 (emphasis added). 113 In 1925, the year that Columbia Law School conferred on Schechter its first doctorate in law, the Columbia Law Review published an anonymous case note, "Appropriation of Trade Symbols by Noncompetitors," 25 Colum. L. Rev. 199 (1925), parts of which read like an early draft of the thesis of "Rational Basis." The author addressed both the "disparagement" of a mark and the dilution of its uniqueness: "Leaving aside all consideration of the question of disparagement, in the instant case [Vogue Co. v. Thompson-Hudson Co., 300 Fed. 509 (6th Cir. 1924)], the value of the plaintiff's symbol depended in large part upon its uniqueness. Employed in the manner described, it was indicative in the public mind of the plaintiff's magazine. The direct tendency of the defendant's action was to destroy this association." void left by Schechter's suppression of the misappropriation basis of antidilution protection. It is a strange irony that the German-American treatise writer Rudolf Callmann is largely responsible for the Americans' embrace in the latecentury of blurring and tarnishment, 115 terms which Callmann initially took from an anonymous 1964 Harvard Law Review note. 116 The irony is that Callmann made no effort in his many publications on dilution to hide the misappropriation basis and rights-in-gross nature of antidilution protection. On the contrary, he openly advocated conceiving of trademark law as a species of property law rather than unfair competition lawfoot_7 and candidly stated his belief that when courts held in favor of antidilution plaintiffs, they did so on misappropriation grounds. 118 Yet Callmannand anti-blurring and anti-tarnishment lawnevertheless benefited from Schechter's initial suppression of the misappropriation origins of the concept of trademark dilution. American courts continue to rule in favor of antidilution plaintiffs, and very likely do so on unstated misappropriation grounds, but so malleable is the doctrine that Schechter left us that they can now do so on Callmann's less formalist, more "functional"and more "rational"bases of blurring and tarnishment. Odol, supra note 1, at 205 ("Freilich stehen die Parteien wegen der gänzlichen Verschiedenheit der von ihnen vertriebenen Waren nicht im Wettbewerb miteinander. Dies tut aber nichts zur Sache. Die Beklagte hat für ihre Ware Reklame gemacht, indem sie sich eines zugkräftigen Wortes bediente, das gerade durch die langjährige und ausgedehnte Tätigkeit der Klägerin allein seine Zugkraft erlangt hatte.") The English translation is from Wertheimer, supra note 2, at 77. Odol, supra note 1, at 204 ("Die Klägerin hat infolgedessen das größte Interesse daran, daß ihr Zeichen nicht verwässert wird; es würde an Werbekraft einbüßen, wenn jedermann es zur Bezeichnung seiner Waren verwenden würde."). The English translation is from Wertheimer, supra note 2, at 77. In this and subsequent quotations from Dr. Wertheimer's translation, I have occasionally added the underlying German in brackets, where appropriate. Ibid. at 264 (Brandeis J., dissenting). See International News Service v. Associated Press, 248 U.S. 215, 257 (1918) (Brandeis J., dissenting). In semiotic terms, Schechter did not specify whether dilution involved the blurring of the link between the signifier (the mark) and the referent (the good to which the mark is See, e.g., Rudolf Callmann, "Unfair Competition Without Competition?," 95 U. Pa. L. Rev. 443 (1947). See, e.g., 2 Rudolf Callmann, The Law of Unfair Competition and Trade-Marks 1338 (Callaghan, Chicago, 1945) (arguing that, in dilution cases, "courts are influenced, consciously or otherwise, by the fact that the defendant is attempting to appropriate values which are properly the plaintiff's."). 19 Ringling Bros.-Barnum & Bailey Circus Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 451 (4th Cir. 1999). Thomas McCarthy, "Dilution of a Trademark: European and United States Law Compared," 94 Trademark Rep. 1163, 1163 (2004). See also Stacey L. Dogan, "What Is Dilution Anyway?," 105 Mich. L. Rev. First Impressions 103 (2006); Christine Haight Farley, "Why We Are Confused About the Trademark Dilution Law," 16 Fordham Intell. Prop., Media & Ent. L. J. 1175 (2006). For a good example of the situation McCarthy describes, see the oral argument in Moseley, which consisted essentially of variations on the question of what, if anything, dilution is. Transcript of Oral Argument, Moseley v. V Secret Catalogue, 537 U.S. 418 (2003), 2002 WL 31643067. 21 See e.g., William G. Barber, "A 'Rational' Approach for Analyzing Dilution Claims: The Three Hallmarks of True Trademark Dilution," 33 AIPLA Q. J. 25 (2005); Gerard N. Magliocca, "From Ashes to Fire: Trademark and Copyright in Transition," 82 N. C. L. Rev. 1009 (2004); Sara Stadler Nelson, "The Wages of Ubiquity in Trademark Law," 88 Iowa L. Rev. 731 (2003); Jerre B. Swann, "Dilution Redefined for the Year 2002," 92 Trademark Rep. 585, 587 (2002). 22 See "Schutz gegen Verwendung eines Warenzeichens für ungleichartige Waren, LG. Chemnitz, Urt. v. 11. April 1923, 8 Hg 354/22," Juristische Wochenschrift 722 (1924) [hereinafter 4711]. allowed to sell the article as he wishes, a thousand may do so, and it would soon be forgotten which get-up is that of the trade-mark owner."). the Internet and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. 4 (2005) (statement of Rep. Howard L. Berman). See also Callmann, supra note 40, at 1338 (dilution "is analogous to the situation where the plaintiff's building is demolished because it is carried away stone by stone"). Dinwoodie, "Trademarks and Territory: Detaching Trademark Law from the Nation-State," 41 Hous. L. Rev. 885 (2004). Schechter singled out the prominent trademark commentator Edward Rogers for "not accurately stat[ing] the function of a trademark today." See ibid. at 818. This was a strong accusation in a high-profile journal and could not have endeared Schechter to Rogers, whom others routinely identified as the "Dean of the Trademark Bar." Julius R. Lunsford, Jr., "Foreword," 62 Trademark Rep. at iv, iv (1972). A HeinOnline search suggests that in Rogers' thirty-four articles on intellectual property law issues appearing from the years 1902 to, posthumously, 1972, Rogers cited Schechter exactly once, and briefly. See Edward S. Rogers, "New Directions in the Law of Unfair Competition," 74 N. Y. U. L. Rev. 317, 323 (1940) (citing Schechter's

Conclusion: Schechter's (and Callmann's) legacy

Ibid. at 264 (Brandeis J., dissenting).


" The Supreme Court Is a Historically Regressive and Presently Expendable Institution ," Slate , Oct. 11, 2018

"The Supreme Court Is a Historically Regressive and Presently Expendable Institution," *Slate*, Oct. 11, 2018

Christopher Jon Sprigman, The Supreme Court Is a Historically Regressive and Presently Expendable Institution, Slate (Oct. 11, 2018), https://slate.com/news-and-politics/2018/10/supreme-court-bad-history-reform.html

The following is part of a debate between Daniel Hemel and Christopher Sprigman over how progressives should react to the right-wing takeover of the judicial system as heralded by the seating of Supreme Court Justice Brett Kavanaugh. The Kavanaugh hearings were a disaster, for the individuals involved and for the country. Most people on the left focus on the fact that a man who may well have committed sexual assault is now set to spend the next 30 or more years on the Supreme Court. That’s undeniably bad. But the problem is deeper than that. What we saw in that hearing room is that our nation has splintered into two camps that increasingly despise one another. We see also that battles over who sits on the Supreme Court reflect—or perhaps have contributed to—this breakdown of American civic culture. In our national mythology, loyalty to our Constitution, and respect for the Supreme Court that is charged with interpreting it, is part of what unites us. But what if that isn’t true? What if the court and the Constitution are part of how the right fixes the game in its favor? There are two immediate ways in which right-wing judges and justices might help tilt the playing field in the GOP’s direction. The first is the prospect that Trump judges will move to protect the man who appointed them from criminal prosecution. That worry has only worsened with Brett Kavanaugh’s confirmation—in a 2009 law review article, Kavanaugh advocated for a “temporary deferral of civil suits and criminal prosecutions and investigations” for sitting presidents. To be clear, there is nothing in the Constitution that prohibits criminal prosecution of a sitting president. But the absence of an explicit constitutional bar may not stop partisan judges from discovering one. The second immediate problem has to do with voting rights. The GOP’s voting base is white, old, and shrinking. A new liberal coalition—younger, more diverse, more urban, more educated—is set to displace it. But not if a right-wing judiciary turns a blind eye to the GOP’s hydra-headed voter suppression strategy. Using aggressive gerrymandering, voter ID laws, restrictions on early voting, and moves as blunt as shuttering voting sites in neighborhoods dominated by minority voters, the GOP works tirelessly to delay—and potentially halt—the demographic reckoning that it knows it faces. The federal judiciary is already too indulgent of the GOP’s anti-voting programs. Back in June, the Supreme Court upheld, by a 5–4 vote, Ohio’s practice of purging its voter rolls. And although in 2017, the Supreme Court let stand a federal appellate court decision striking down a GOP-engineered North Carolina voter suppression law that, in the words of the appeals court, targeted black voters “with almost surgical precision,” North Carolina Republicans have already put a new set of restrictions in place, and with the Supreme Court’s conservative majority bolstered by the Kavanaugh confirmation, we may see them upheld this time around. The federal judiciary, in short, is unlikely to save our democracy. In fact, it’s more likely to join in the attack. The question for progressives and defenders of small l liberal values alike is this: How should they respond as highly partisan, anti-majoritarian rulings only increase by a firmly ensconced conservative majority for the coming decades (plural). The temptation, of course, the next time Democrats are in power will be to shrink the power of the courts to reverse democratic decisions. That is a double-edged sword—a reduced judiciary will no longer have the same power to curb a future Republican Congress or GOP-controlled state legislatures either. It could also lead to a never-ending tit-for-tat escalation, with the final blow perhaps coming from the next leader with the authoritarian instincts of Trump but a bit more cunning. That first trade-off would be worth it, but the latter is admittedly harder to grapple with. Still, progressives must now at the very least reckon with the fact that the Supreme Court never was the progressive champion that the left believed it to be and plot a path forward from that premise. The left’s previous embrace of the myth of the court as a force for social good tends to come from the general view of the Constitution and the Supreme Court largely as a force for progress. The reality is that on the major civil rights decisions of the past 60-plus years, the court has followed rather than led public opinion and has often been ineffectual in the championing of progressive ideas. This particular brand of the court as progressive institution myth focuses on a small subset of its decisions, and especially those of the Warren court era of the 1950s and ’60s, including Brown v. Board of Education, which declared segregated schools unlawful. The left also focuses on more recent decisions such as Lawrence v. Texas (2003), which overturned state laws banning sodomy (which, in practice, were enforced mainly against gay men). But those decisions, and others like them, make a weaker case for the courts, and for the Constitution, than many on the left believe. Think first about Brown: There, the court ordered that schools be desegregated “with all deliberate speed.” More than a half-century later, are America’s public schools actually desegregated? No, they are not. The progressive effect of Lawrence is similarly oversold. In its 1986 decision in Bowers v. Hardwick, a 5–4 majority of the Supreme Court upheld a Georgia statute banning oral and anal sex, holding that the Constitution did not confer “a fundamental right to engage in homosexual sodomy.” What changed between 1986 and 2003, when the court issued its opinion in Lawrence overruling Bowers? Prior to 1963, sodomy was a felony in every state. But by 2002, the year before the Supreme Court handed down its decision in Lawrence, sodomy laws had been repealed by the legislatures of 27 states and the District of Columbia, and overturned by state courts in another nine states—all with virtually zero public opposition. The 14 states that still had sodomy laws on the books almost never used them. The court wasn’t leading in Lawrence. It was following. It was tidying up after the democratic decisions of millions of Americans had already fundamentally improved the nation’s disposition toward gay people. If the left tends to overestimate the court as a force for progress, it perhaps even more seriously underestimates the court’s tendency toward regress. On balance and over the span of American history, the court has in fact done far more to retard progress than to advance it. Most horribly, the court upheld in its decision in Dred Scott the sanctity of slavers’ property interest in other humans. The court likewise approved in its Korematsu decision the World War II–era imprisonment of Japanese Americans based on nothing more than fear and paranoia. The court recently claimed to overturn Korematsu, but in the context of the Trump v. Hawaii decision in which the court upheld the constitutionality of Trump’s Muslim travel ban. In the Citizens United case, meanwhile, the court turned back legislative efforts to rein in the corruption of our politics that follows inevitably from our First Amendment–sponsored orgy of special interest contributions. These are just a few examples of a general tendency. The Supreme Court has, time and again in our past and our present, turned the Constitution against both democracy and decency. And then there’s Roe. The left views Roe as a victory that it must preserve, but Roe has actually been a slowly unfolding disaster for the left, and for the country. Unlike in Lawrence, where the court’s decision followed progressive democratic change, in Roe the court pre-empted it. Roe liberalized abortion law nationwide before the nation had achieved a democratic consensus favoring liberalization. As no less an advocate for reproductive rights as Justice Ruth Bader Ginsburg has argued, the results have been politically catastrophic. Roe birthed a militant pro-life movement that has been completely co-opted by the right. The net result has been a durable rightward tilt in American politics. The left has Roe (for now). But it secured that victory at a terrible price. Opposition to Roe is the glue that holds together America’s dominant right-wing political coalition. The price of Roe is all the progressive change we gave up when Roe helped push the center of American politics to the right. The reality is that the court has never been a progressive institution. And it’s not going to be one for the foreseeable future. In particular, the courts aren’t going to save us from the GOP’s voter suppression efforts—it is, in the end, voters who are going to have to protect the right to vote. And in states where voter suppression efforts go hand in hand with popular Republican legislative majorities (and sometimes unpopular but gerrymandered legislative majorities), voters will not be willing or able to turn the tide. The only way to address that will be for the Department of Justice to get back into the business of enforcing voting rights, and that will require new legislation and Democratic control of the executive branch. Again, the courts aren’t going to help. Nor are the courts up to the job of protecting us from a determined turn by the GOP—or, for that matter, by some future left-wing demagogue—toward authoritarianism. The surest protection against undemocratic politics is a vibrant culture of democratic politics. Ultimately, the left would be well-advised to get over its unrequited crush on courts and judicial review, as well as the delusion that our old, terse Constitution has much to say about modern problems. It does not, and in any event, too much constitutionalism, like too much democracy, can be dangerous to self-governance and can even destroy a society. The surest and most durable route to progressive change is through the ballot box, and not the courthouse doors. The question, then, becomes how to shrink the power of courts. There are many valid ways to accomplish that—even without amending the Constitution itself. Part 1: Should Progressives Wage War on the Supreme Court? Part 3: The Supreme Court Is a Bulwark of Democracy Part 4: Three Plans for Saving Voters From a Right-Wing Activist Supreme Court Part 5: Why Supreme Court Term Limits Won’t Work and What to Do Instead


" The Supreme Court radically altered the meaning of the First Amendment this year — in an unsigned opinion ," Raw Story , May 29, 2021

"The Supreme Court radically altered the meaning of the First Amendment this year — in an unsigned opinion," *Raw Story*, May 29, 2021

Christopher Jon Sprigman, The Supreme Court radically altered the meaning of the First Amendment this year — in an unsigned opinion, Raw Story (May 29, 2021), https://www.rawstory.com/the-supreme-court-radically-altered-the-meaning-of-the-first-amendment-this-year-in-an-unsigned-opinion/

The United States Supreme Court issued on April 9 a decision in Tandon v. Newsom that struck down California's covid pandemic-related rule that limited the size of all events held in private homes, including religious gatherings, to three people per household. In an unsigned, four-page opinion, the high court's right-wing majority radically altered the law governing the First Amendment's free-exercise clause claims for special religious exemptions from otherwise generally applicable laws. Since the Supreme Court's 1990 decision in Employment Division v. Smith, the free-exercise clause has been understood to require religious exemptions only to laws that discriminate against religion—that is, government cannot target religion for worse treatment. The California covid pandemic-related rule easily passed this test, for it limited the size of all gatherings in private homes, religious and secular alike. In Tandon, however, the court flipped that rule. Under its new "most favored nation" approach, the government must provide a religious exemption if a law contains any secular exemption for "comparable" activities. Because California allowed larger groups to shop in supermarkets, it had to let larger groups pray indoors. The only way out was if California met a "strict scrutiny" standard by showing the law's application to religion was absolutely necessary to meet a compelling government interest. In lower court proceedings, California public-health officials provided testimony that should have met that standard. "When people gather in social settings," they stated, "their interactions are likely to be longer than they would be in a commercial setting," with participants "more likely to be involved in prolonged conversations." They added that "private houses are typically smaller and less ventilated than commercial establishments," and that "social distancing and mask-wearing are less likely in private settings and enforcement is more difficult." But the Supreme Court's five conservatives, who have no apparent public health expertise, ignored this testimony. Tandon is an enormous expansion of the government's obligation to provide religious accommodations to countless statutes and regulations. It's also questionable public health policy. But the most serious problem with what the Supreme Court's conservatives did in Tandon can be summarized in four words: They made it up. That is, the Constitution does not mandate the "most favored nation" rule. The First Amendment prohibits government from either establishing religion, or prohibiting its "free exercise." But on what basis does the Supreme Court decide "free exercise" licenses such a searching judicial examination of public-health laws? The text doesn't say that. And neither history nor precedent command that approach. At bottom, what the Supreme Court did in Tandon isn't law. It's politics. Which may help explain why the Supreme Court created this sweeping new rule through its shadow docket—which is to say, those cases decided with minimal briefing and no oral argument outside the court's normal procedure. In doing so, the court broke its own rules that bar it from changing the law in a shadow docket opinion. None of this should surprise us. As I've written previously, Republicans have built their recent political strategy around stocking the federal bench with right-wing partisans. As a consequence, we are approaching a level of ideological conflict where politicians might start thinking about defying the court's rulings—especially rulings rooted in highly politicized readings of the Constitution, as Tandon was. Which led me, on the morning following the opinion's release to tweet out a question: The answer to this question, I think, is that Joe Biden, or any president, is free under the Constitution to decline to enforce any order of the Supreme Court that he or she believes to be unconstitutional. Why do I think this? There are three reasons. First, as Alexander Hamilton candidly admitted in The Federalist Papers, the Constitution does not even directly establish that courts have the power to make definitive declarations regarding the Constitution's meaning. "[T]here is," Hamilton wrote in Federalist 81, "not a syllable in the plan under consideration which DIRECTLY empowers the national courts to construe the laws according to the spirit of the Constitution, or which gives them any greater latitude in this respect than may be claimed by the courts of every State." Hamilton believed judicial review was implied even if not explicitly provided. But that doesn't mean judges are the only actors empowered to interpret the Constitution's meaning. A better view is actors in each branch of government—all of whom have taken the same oath to "support and defend" the Constitution—have a duty to interpret the meaning of the Constitution and to act, in discharging their duties, in accordance with that interpretation. Hamilton suggests as much in Federalist 81, where he wrote of the Supreme Court's "total incapacity to support its usurpations by force." Hamilton argued the court's utter dependence on the executive branch to enforce its judgments meant the court was no real threat to liberty. But for that argument to make sense it must also be true that, at least in cases where a court ruling provokes some disquiet, the president will make an independent assessment before enforcing it. If the President were required to enforce the court's every order, and without independent assessment of its fidelity to the Constitution, he would effectively be dragooned into enforcing even the court's "usurpations." That would make the court every bit as dangerous as Hamilton's Anti-Federalist antagonists feared it to be. Arch anti-Federalist Thomas Jefferson, for his part, derided the idea that judges were "ultimate arbiters of all constitutional questions." This was, to Jefferson, "a very dangerous doctrine, indeed, and one which would place us under the despotism of an oligarchy." The Constitution "has erected no such single tribunal," and the plan of government, Jefferson wrote, admitted no supremacy in judges: "My construction of the Constitution is … that each department is truly independent of the others and has an equal right to decide for itself what is the meaning of the Constitution in the cases submitted to its action; and especially where it is to act ultimately and without appeal." Enforcement of court judgments is an executive act, not a judicial one. And in carrying out his duties, the president, Jefferson argued, must decide for himself what the Constitution requires. Which means that a president may decline to enforce a court order that he or she independently concludes is unconstitutional. The second reason presidents are free under the Constitution to decline to enforce any order of the Supreme Court that he or she believes to be unconstitutional is history provides examples of presidents declining to enforce Supreme Court orders. In 1832, the Supreme Court in Worcester v. Georgia struck down a Georgia criminal statute prohibiting non-native Americans from residing on Native American lands without a license from the state. Only the federal government, the court held, had the power to regulate tribal lands. The court's ruling ordered the release of two missionaries imprisoned under the statute, but Georgia's courts refused to order the release, and President Andrew Jackson declined to enforce the Supreme Court's order on the recalcitrant state. Writing two decades later, journalist Horace Greeley quoted Jackson (probably apocryphally) giving the court's order the back of his hand: "[Chief Justice] John Marshall has made his decision; now let him enforce it." The order was never enforced. A year after the court's decision, Georgia repealed the law and the two men were pardoned by Georgia's governor and released from jail. Then there is President Lincoln's defiance of Chief Justice Taney's 1861 order in Ex Parte Merryman. That Civil War-era case involved a Maryland secessionist arrested in connection with attacks on federal troops in Baltimore and imprisoned in Fort McHenry. Shortly before Merryman's arrest, Lincoln had suspended the writ of habeas corpus between Washington, D.C., and Philadelphia in a bid to allow federal troops to quell secessionist rioting without judicial interference. Days after Merryman's arrest, Taney issued an order stating that Lincoln lacked the power to suspend the writ; the Constitution, Taney held, permitted suspension only by Congress. Lincoln ignored the order. In a message to the Congress he made clear his view that the president had his own responsibility to act according to the powers that he independently understood the Constitution to provide him: "The provision of the Constitution that 'the privilege of the writ of habeas corpus shall not be suspended unless when, in cases of rebellion or invasion, the public safety may require it' is equivalent to a provision—is a provision—that such privilege may be suspended when, in cases of rebellion or invasion, the public safety does require it. It was decided that we have a case of rebellion and that the public safety does require the qualified suspension of the privilege of the writ which was authorized to be made. Now it is insisted that Congress, and not the Executive, is vested with this power; but the Constitution itself is silent as to which or who is to exercise the power; and as the provision was plainly made for a dangerous emergency, it can not be believed the framers of the instrument intended that in every case the danger should run its course until Congress could be called together, the very assembling of which might be prevented, as was intended in this case, by the rebellion." Third, there is the matter of America's current reality. In normal politics, it makes sense for presidents (and for Congress) to cede to the court's final authority to interpret the Constitution's meaning. The ordinary expectation, whether a Democrat or a Republican, is that you'll win some at the court and you'll lose some—and that's OK because there is value in finality, especially if the court is seen as an institution that is doing something more principled than simply imposing its own political preference. But these are not normal times. This is not a normal Supreme Court. That was the point of my tweet: at some point, the perception that the court is doing politics and not law may lead to a political response. We see that already in proposals to limit judicial terms, to impose Supreme Court supermajority voting requirements, to strip courts' jurisdiction, and, most prominently, to pack the Supreme Court. But perhaps the simplest way for Biden to push back against a right-wing Supreme Court is to follow his own oath to uphold the Constitution and refuse to enforce Supreme Court orders that he concludes fail to do so. So imagine that California Governor Gavin Newsom decided to ignore the court's order and continued to enforce public health laws as written without religious exemption. What would happen? Would Biden send in federal troops to enforce the court's order? Or would he give California the same room to defy the court that Jackson gave Georgia in 1832? To me, it's at least imaginable that if California pushed back, Biden would have allowed California to enforce its law over the Court's order. The covid vaccine means the crisis passed quickly enough that the court's order soon lost its practical public-health significance. But that was happenstance. Which means we may soon see another opportunity for politicians to test the limits of judicial power.


" The Supreme Court’s Latest Ruling on Drug Liability and Its Implications for Future Failure-to-Warn Litigation ," 47 The Journal of Law, Medicine and Ethics 783 (2019) (with Aaron S. Kesselheim and Joseph S. Ross)

"The Supreme Court’s Latest Ruling on Drug Liability and Its Implications for Future Failure-to-Warn Litigation," 47 *The Journal of Law, Medicine and Ethics* 783 (2019) (with Aaron S. Kesselheim and Joseph S. Ross)

Christopher J. Morten et al., The Supreme Court’s Latest Ruling on Drug Liability and Its Implications for Future Failure-to-Warn Litigation, 47 J.L. Med. & Ethics 783 (2019)

Christopher J. Morten
Aaron S. Kesselheim
Joseph S. Ross

For many years, people injured by prescription medicines have been able to sue drug manufacturers to receive compensation for their injuries when those companies fail to provide adequate warnings of known risks of those medicines. This type of suit is known as "failure-to-warn" litigation. Failure-to-warn litigation serves a vital function not just by compensating those who have been harmed but also by encouraging drug manufacturers to warn of drug risks promptly and clearly and by publicizing otherwise non-public information on the risks and benefits of prescription drugs. In May 2019, the U.S. Supreme Court decided a case, Merck v. Albrecht, that ensures that failureto-warn litigation in this context will continue. 1 This article reviews the Merck decision and discusses some of its likely consequences. Reactions to the Merck decision by legal and policy experts have varied. Some commentators have described the Merck decision as a win for the pharmaceutical industry; 2 others as a loss. 3 As we describe below, we believe that, on the whole, Merck represents a victory for physicians, patients, and the public, not for industry. Merck clarified the law to make it more difficult for brand-name drug manufacturer to shield themselves from liability for failure to warn of drugs' known risks. We predict that, in the wake of Merck, drug manufacturers are likely to update drug labeling more quickly and more often, with more cautious warning language. We explain a crucial but often overlooked benefit of failure-to-warn litigation: otherwise unavailable information on the effectiveness and safety of drugs flows from such litigation to physicians, regulators, including the U.S. Food and Drug Administration (FDA), and the public at large. The Merck v. Albrecht case was brought by patients who took alendronate (Fosamax), a drug sold by Merck and FDA-approved in 1995 for treatment of osteoporosis in postmenopausal women. Alendronate is a bisphosphonate that treats osteoporosis by slowing bone resorption, the process by which bone tissue is broken down and recycled. The bisphosphonates were a transformational drug class in the treatment of osteoporosis, and alendronate became a blockbuster for Merck, reaching a peak of $2.5 billion annual sales. 4 But widespread experience with longterm use of alendronate uncovered a rare but potentially devastating side effect: atypical femur fracture, a fracture in which the thigh bone may fracture completely unrelated to use or injury. The plaintiffs in Merck are more than 500 patients who suffered such fractures between 1999 and Aaron S. Kesselheim 2010, some of whom took alendronate for many years. 5 These patients allege that when they took alendronate, Merck's labeling for the drug failed to provide an adequate warning of the risk of such fractures even though Merck knew of the risk. The patients further allege that, had they known the true risks of alendronate, they would not have taken the drug, or would not have taken it as long as they did. These patients sued, asking the court to hold Merck liable under their states' product liability statutes or common laws for its failure to warn of the true risks of alendronate and to order Merck to compensate them for their injuries. A key issue since the beginning of Merck case was the adequacy of warning language that Merck suggested to the FDA before the plaintiffs were injured. Merck gave the FDA data about risk of atypical femur fracture during the relevant time period and suggested revising alendronate's labeling to warn of the risk of "stress fractures." Merck proposed this labeling revision through the FDA's Prior Approval Supplement (PAS) pathway, which requires the FDA to approve the labeling revision before it is disseminated. The FDA rejected Merck's proposed revision, noting that the term "stress fractures" implies relatively minor risk and does not explicitly warn patients and physicians of the risk of much more serious "atypical femur fractures." While the FDA rejected Merck's specific proposed labeling change, it encouraged Merck to resubmit its application to address aspects of the warning deemed deficient. 6 Merck could have resubmitted an application with different warning language, but did not do so. Alternatively, Merck could have unilaterally added a warning about atypical femur fracture to its labeling through the FDA's Changes Being Effected (CBE) pathway. Under the CBE pathway, a drug company may initiate a labeling change to reflect newly acquired information, subject to later FDA review and validation. Merck chose not resubmit a PAS application or to revise its label under the CBE pathway. Merck's central legal argument throughout the litigation was that it could not be held liable for failing to warn of the risk of atypical femur fractures caused by alendronate because the FDA had rejected its proposed warning about stress fractures and would have rejected any subsequent effort to add a warning about atypical femur fractures to its labeling. In Merck's view, it could not possibly have complied with federal law (rejecting a warning) and state law (requiring a warning) at the same time. Merck's argument is based on a doctrine of constitutional law known as impossibility preemption, which holds that when state and federal law conflict in a way that makes it impossible for a private party to comply with both, federal law prevails. 7 In failure-to-warn litigation brought under state law, the litigation must be dismissed if preemption applies, and the drug manufacturer will not be found liable. Shortly after Merck v. Albrecht was filed in 2009, the US Supreme Court decided another key case, Wyeth v. Levine, which established binding precedent on the preemption doctrine in the context of drug labeling. 8 The Wyeth lawsuit was brought against Wyeth by a patient, Diana Levine, who was improperly injected with Wyeth's promethazine product (Phenergan) and subsequently experienced a severe adverse reaction, leading to gangrene and amputation of her forearm. 9 Levine alleged that Wyeth had failed to provide an adequate warning of the risk of gangrene and that that failure to warn constituted a violation of Vermont state law. Wyeth argued that Levine's state-law-based case should be dismissed under preemption doctrine since the drug's warnings were FDAapproved. The Supreme Court sided with Levine, explaining that "absent clear evidence that the FDA would not have approved a change" to the drug label, a court must "not conclude that it was impossible … to comply with both federal and state requirements" and holding that Wyeth had failed to prove that the FDA would have rejected an adequate warning in the labeling. 10 However, Wyeth left open some ambiguity as to what constitutes "clear evidence that the FDA would not have approved a change" to the labeling. The Supreme Court resolved any remaining ambiguity about preemption in the context of drug labeling in Merck v. Albrecht. The Court's opinion held that "showing that federal law prohibited the drug manufacturer from adding a warning that would satisfy state law requires the drug manufacturer to show that it fully informed the FDA of the justifications for the warning required by state law and that the FDA, in turn, informed the drug manufacturer that the FDA would not approve changing the drug's label to include that warning." 11 In other words, only evidence that FDA actually considered and then rejected the warning required under state law suffices to establish that the drug manufacturer was caught in an impossible conflict between state and federal law. A drug manufacturer must meet this demanding standard to show that a state law failure-to-warn claim is preempted by federal law. It is not enough for the drug manufacturer to show that the FDA probably or even almost certainly would have rejected an adequate warning. The court thus announced a legal standard that appears to favor plaintiffs and disfavor drug manufacturers. The Supreme Court did not decide the ultimate question of whether Merck is liable for the plaintiffs' injuries. Instead, the Court vacated the judgment of the lower court and remanded the case, asking the lower court to apply the Court's newlyannounced legal standard and requiring that a judge, not a jury, decide the question of whether the impossibility preemption applies. 12 However, the Court's decision suggests that Merck has not made out a convincing case under the newly articulated standard, because Merck has not shown that it would have been impossible to add to its labeling an adequate warning about the risk of "atypical femur fractures" rather than "stress fractures." Indeed, the Supreme Court observed that Merck could have used the CBE pathway to proactively add a warning about atypical femur fractures to its labeling, without waiting for the FDA, and the Court stated that because "the CBE regulation permits changes, [] a drug manufacturer will not ordinarily be able to show that there is an actual conflict between state and federal law such that it was impossible to comply with both." 13 Implications of Merck for Failureto-Warn Litigation Failure-to-warn litigation serves many socially useful functions beyond compensating people harmed by drugs. Failure-to-warn litigation uncovers and publicizes otherwise unknown drug hazards; incentivizes drug companies to disclose risks promptly; and ensures that drug manufacturers, which have the greatest access to information about their products, bear primary responsibility for warning the public of risks. The Merck decision is therefore important not just to lawyers but to physicians, the FDA and other regulators, and the public at large. There are two particularly relevant implications: 1. Failure-to-warn litigation will continue First, failure-to-warn litigation will continue after Merck. Many legal scholars and public interest groups had feared that the Supreme Court would accept Merck's invitation to rewrite the law to permit drug companies to immunize themselves more easily from failure-to-warn liability by raising the preemption defense. That fear did not come to pass. Because the standard announced in Merck requires a drug company to show that FDA actually considered and then rejected an adequate warning -a rare scenario -we expect that relatively few failure-to-warn lawsuits relating to FDA-approved drugs will be dismissed under the preemption doctrine set down in the Merck case. Merck thus ensures that most injured patients will continue to be able to rely on bringing these cases. 15 2. Drug manufacturers may update drug labeling more quickly and more often, with more cautious warning language A second consequence of Merck is a potential increase in use of the CBE pathway by drug manufacturers to revise their labels more quickly and more often, with more cautious warning language to ward off failureto-warn liability. As noted above, the CBE pathway permits drug manufacturers to change a drug's labeling without prior FDA approval if the change is designed to "add or strengthen a … warning" where there is "newly acquired information" about the "evidence of a causal association" between the drug and a risk of harm. 16 After a CBE labeling change, the FDA has 30 days to review and amend the labeling if it deems necessary -for example, in the event of an "overwarning," in which exaggerated warnings could discourage appropriate use of generally beneficial drugs. 17 To the extent that drug manufacturers make more frequent and more timely revisions to drug labels to reflect new safety information, patients and physicians will benefit from having the opportunity to be better informed. Patients and physicians will also benefit if manufacturers provide more detailed warnings in their drug labels, to reduce the risk of failure-to-warn liability. Of course, manufacturers will still have a substantial financial incentive to delay or de-emphasize safety warnings for their products, knowing that prominent new warnings in the labeling -and their associated publicity -may reduce use. 18 Damages emerging from failure-to-warn cases hardly ever outweigh the substantial revenues that manufacturers can earn from downplaying known risks of their prescription drugs. 19 The future of failure-to-warn litigation As long as failure-to-warn litigation endures, physicians, the FDA, and the public at large will continue to benefit from exposure of the otherwise unavailable information on the effectiveness and safety of drugs that flows from this litigation. For decades, the litigation discovery process, in which plaintiffs commonly receive access to millions of pages of internal drug company documents, has revealed important new information on the benefits and risks of many drug products. 20 In some instances, such information has prompted action by the FDA or the manufacturer. For example, previ-Failure-to-warn litigation serves many socially useful functions beyond compensating people harmed by drugs. Failure-to-warn litigation uncovers and publicizes otherwise unknown drug hazards; incentivizes drug companies to disclose risks promptly; and ensures that drug manufacturers, which have the greatest access to information about their products, bear primary responsibility for warning the public of risks. The Merck decision is therefore important not just to lawyers but to physicians, the FDA and other regulators, and the public at large. ously hidden information on the cardiovascular risks of Merck's rofecoxib (Vioxx) product uncovered in failureto-warn litigation (and subsequent public outcry) prompted Merck to withdraw the product from the market. 21 Information uncovered in failure-to-warn litigation can also reveal omissions, inaccuracies, and outright distortions in the medical literature, the correction of which can lead to changes in standards of care and prescribing habits. For example, a failure-to-warn suit against Glaxo -SmithKline concerning excess risk of suicide in adolescent patients taking paroxetine (Paxil) revealed that the manufacturer had inaccurately and misleadingly represented efficacy and safety in a published study relied on in marketing. 22 Information uncovered in failure-to-warn litigation is today perhaps more important than ever. While Merck contended in Merck v. Albrecht that it presented all relevant scientific data on the risks of alendronate to the FDA, in practice the FDA almost invariably lacks complete information on the benefits and risks of prescription drugs, particularly at the time of approval. The benefit/risk balance for any drug varies by indication and by patient, and is informed by the continued accumulation of experience with using the drug as long as it is available on the market, not just based on the information on drug safety submitted to the FDA during the pre-approval clinical trial process -which increasingly are approvals based on early-phase trials and effects on surrogate endpoints rather than clinical measures of patient outcome. 23 Post-approval safety actions taken by the FDA are common, as one-third of all novel therapeutics approved between 2001 and 2010 were followed by drug safety communications, new boxed warnings, or (in rare cases) withdrawals due to safety concerns. 24 At least one safety-related labeling update was made to the labels of over 70% of new molecular entity drug products approved between 2002 and 2014. 25 The FDA itself recently recognized that "the true picture of a product's safety actually evolves over the months and even years that make up a product's lifetime." 26 Failure-towarn litigation has served and will continue to serve as a critical safeguard, incentivizing drug companies to report risk information to the FDA promptly, thoroughly, and accurately and exposing instances where drug companies have failed to meet their obligations. Still, failure-to-warn litigation remains limited in important respects going forward. First, unlike brand-name drug manufacturers, generic drug manufacturers are generally not subject to liability for failure to warn of known risks of prescription drugs, due to interpretations of the law made by the Supreme Court in a series of other cases. 27 This gap is particularly striking given that approximately 90% of prescriptions in the US are now filled using generic drugs, 28 which means the many patients who take these drugs have little or no legal recourse if they are injured. State and federal courts have similarly insulated manufacturers of high-risk medical devices from such litigation in many cases. 29 Second, it is unclear that labeling is the most effective way to warn patients and physicians of the risks of prescription drugs, as few patients and physicians consistently or closely read drug labels. 30 Thus, while more frequent revisions to drug labeling to reflect newly discovered risks offers the opportunity for physicians and patients to be better informed, additional steps may be needed to ensure this risk information is taken into consideration during heath care decision making. Merck has important implications for patients who use prescription drugs as well, even beyond the expected availability of otherwise unavailable information on the effectiveness and safety of drugs that is derived from failure-to-warn litigation. The relatively small number of patients who bring failure-to-warn suits after being injured by brand-name prescription drugs may be in a stronger position against manufacturers, because Merck raises the burden on drug manufacturers to prove that preemption applies and thus makes it more difficult for drug manufacturers to dismiss these suits. Patients may win an increased proportion of failure-towarn litigation, and patients who settle with drug manufacturers rather than litigate to judgment may be able to negotiate more generous settlements. At the same time, Merck's holding that the question of preemption is to be decided by a judge, not a jury, may lead to more judges deciding the question of preemption early in litigation, well before trial, which may lead to quicker disposition of failure-to-warn suits and possibly to more settlements earlier in litigation. Settlements earlier in litigation could benefit patients who bring failure-towarn suits by reducing the cost, time, and stress associated with litigation. Of course, most patients who take prescription drugs are never seriously injured, and most patients who are injured never bring failure-towarn suits. Nonetheless, all patients will be affected by Merck insofar as their decisions as to when and how to consume prescription drugs are informed by the warnings that drug manufacturers choose to include in their labeling. If, as we predict, drug manufacturers begin to revise their labels more quickly and more often, with more cautious warning language to ward off failure-to-warn liability, there remains some risk of overwarning, potentially confusing patients' (and physicians') decision-making. The risk of overwarning underscores the need for the FDA to carefully review and, as needed, amend drug labeling when manufacturers make unilateral revisions through the CBE pathway. In conclusion, the May 2019 U.S. Supreme Court decision in Merck v. Albrecht ensures that failure-to-warn litigation will continue to serve a vital function, not just by compensating those who have been harmed by prescription drugs but also by encouraging drug manufacturers to warn of drug risks promptly and clearly and by publicizing otherwise non-public information on the risks and benefits of prescription drugs. https://doi.org/10.1177/1073110519897793 Published online by Cambridge University Press

Alendronate (Fosamax) and the Risk of Atypical Femur Fracture

Alendronate's Labeling and Merck's View That It Is Not Liable for Failing to Warn of Alendronate's Risks

The Supreme Court's Decision in Merck v. Albrecht