# We Are Symbols and Inhabit Symbols, So Should We Be Paying Rent? Deconstructing the Lanham Act and Rights of Publicity **Authors:** Rochelle C. Dreyfuss **Citation:** "We Are Symbols and Inhabit Symbols, So Should We Be Paying Rent? Deconstructing the Lanham Act and Rights of Publicity," 20 *Colum.-VLA J.L. & Arts* 123 (1996) **Source:** https://its.law.nyu.edu/faculty/profiles/representiveFiles/dreyfuss-wearesymbols_FA939919-1B21-6206-60FA6A80BE28DB20.pdf *p. 2* William Fox Conner, Call Me Ishmael, THE CHRISTIAN SCIENCE MONITOR, Oct. 2, 1990, at 16. *p. 2* William Ecenbarger, There's No Escaping Us; The Sun Never Sets on American's Pop-Culture Empire, CHI. TRIB., February 13, 1994, (Sunday Magazine), at 16. 4. BARBARA KINGSOLVER, PIGS IN HEAVEN 139 (1993). Cf Fuller v. Fuller Brush Co., 595 F. Supp. 1088 (E.D. Wis. 1984) (refusing to enjoin salesman from calling himself "Count Fuller"). *p. 2* See Mary Cantwell, The Mauve-ing of America, N.Y.TIMES, March 17, 1991, § 6, at 48: I awoke to find her sipping coffee, her eyes fixed on a sun-struck bowl of white roses. "I am having," she said, referring to the 19th-century flower painter, "a Fantin-Latour moment.".. . America's own Goddess of Housekeeping. The faith symbolized by Martha Stewart ... celebrates hens that lay blue eggs .... ## COLUMBlA-VLA JOURNAL OF LAW & THE ARTS *p. 3* chickens. But thingsimagespickup trucks, Elvis impersonators, Geraldo, Barbie, even Martha herselfe -do have substantial symbolic value. They are amusing. They set moods and communicate status. They represent how their utilizers see themselves (or wish to have themselves seen) politically and culturally. Trained semioticians read images professionally. ' The rest of us are affected by them less sentiently, but their unconscious effect may, in fact, be an important part of their potency. *p. 3* This piece addresses the issue of allocating rights: who should reap the benefits of images, those who introduce them into the popular culture or those in the culture who imbue them with enduring meaning? In an earlier article, Expressive Genericity: Trademarks as Language In the Pepsi Generation, 8 I commented on this problem in connection with words that enter public discourse as trademarks. In that article, I criticized the recent case law for paying insufficient attention to the expressive dimension of trademarks, to their powerful role in the vocabulary as metaphors and symbols. To my mind, courts are too quick to equate value with right; to leap from recognizing that consumers attach value to trademarks to concluding that trademark holders ought to have the right to capture that value for themselves. I argued that now that "Betty Crocker has replaced Hestia in the public consciousness," a distinction must be drawn between a trademark holder's need to engage in commercial communication with customers (that is, to send messages about the quality, source and value of goods) and his desire to extract all the consumer surplus that inheres in his mark. 9 In a footnote to that piece I noted that much of my skepticism regarding the direction that trademark law was taking applied equally to the "emerging" right of publicity.' ° Through state common law and statutory law, and through current interpretations of § 43(a) of the Lanham Act,' 1 the law giving individuals control over their images has The Lanham Act creates rights in trademarks, service marks, certification marks and collective marks, all of which function in conjunction with goods or services, 15 U.S.C. § § 1052-54, 1127 (1994), as amended by Pub. L. No. 104-98, 109 Stat. 985 (1996). As used here, the words "trademark" and "goods" should be interpreted to cover all of these categories. 9. Dreyfuss, supra note 8, at 424. 10. *p. 3* Section 43(a) of the Trademark Act of 1946 (the "Lanham Act"), 15 U.S.C. § 1125(a) (1994). *p. 3* [20:123 now fully emerged. 12 Indeed, § 43(a) has expanded in another direction as well. Abetted, in part, by the Supreme Court's decision in Two Pesos, Inc. v. Taco Cabana, Inc.," this provision has lately been construed to create fairly plenary control over the configuration and other trade dress of goods and services. 4 The time has come, therefore, to generalize on the earlier piece, to consider systematically how images are perceived and interpreted, and to decide when a proprietor's interest in capturing the value in what has been created ends and the public's interest in using that creation symbolically begins. *p. 4* Part I briefly summarizes how the rights in images have developed. Part II explores ways to consider cabining this trend in the name of protecting public access to important components of expression. ## A. PERSONS *p. 4* The contours of the right of publicity are well enough known to require little exposition here. It is sufficient to note that this cause of action is said to have originated in Samuel Warren's and Louis Brandeis's Harvard Law Review article, The Right to Privacy, 5 and has been transformed from the personal right to be let alone into a property right over one's persona." 8 The transition appear to have begun with a 1903 New York statute that prohibited the use of a living person's name, portrait or picture for "advertising purposes" or for "purposes of trade." 7 Other states followed this lead, either by statute or by common law.'1 When, in its 1977 decision in Zacchini v. Scripps-Howard Broadcasting Co.," 9 the Supreme Court upheld a right of publicity against a First Amendment challenge, the view that individuals should hold legal control over identifiable uses of their images received widespread acceptance in state law. 2 ## " *p. 5* To a certain extent, this position has now been federalized. Section 43(a) of the Lanham Act, 21 which governs the use of both registered and unregistered symbols and devices, as well as designations of origin and representations of fact, has lately been construed to protect personal images. 2 2 Under current judicial interpretations of this provision, individuals can enjoin use of their personae in a manner that is likely to confuse consumers into believing, falsely, that they are endorsing a product or are associated with its manufacturer. *p. 5* There is a large part of this legal regime that is easy to understand. For individuals like the "human cannonball" of Zacchini, who earn their living by selling performances, unauthorized use of their acts (in the case of Zacchini, broadcast of his entire circus feat) cuts into their primary 20. *p. 5* Compare, e.g., Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir. 1970) (holding that there is no cause of action for unfair competitition under California law for imitating a singer's voice in a commercial), cert. denied, 402 U.S. 906 (1971), with Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1100 (9th Cir. 1992) (reasoning that since Zacchini "endorsed a state right-of-publicity law as in harmony with federal patent and copyright law," a voice misappropriation claim is cognizable), cert. denied, 113 S. Ct. 1047 (1993) See also RESTATEMENT (THIRD) OF UNFAIR COMPETITION § § 46-49 (1995). *p. 5* For a sample of state statutes, see, e.g., CAL. ClV. CODE [20:123 markets and diminishes their income. Reducing economic benefits in this way dilutes the financial incentive to produce, with the arguable result that the public will, in the future, have fewer performances to enjoy. In such instances, the right of publicity serves as a useful adjunct to the Copyright Clause 2 3 and to the federal statutes enacted under its authority, for its promise of exclusivity stimulates creativity in spheres that patents and copyrights do not reach. *p. 6* In a way, the right of publicity can also be seen as an adjunct to the First Amendmentspecifically, to the dimension giving individuals the right not to speak. 24 Seen this way, the cause of action is valuable because it allows courts to avoid constitutional adjudication while protecting the ability of those who do not want to hawk products, or to be seen as associated with or endorsing a particular manufacturer or product, to prevent others from putting words into their mouths. Thus, it is interesting to note that many of the people who bring these cases are careful to make the point that they have never appeared in commercials. 2 5 It is, however, important to appreciate that not all of the publicity cases can be justified in these terms. In fact, the decisions in this area do not tend to include justifications for placing what is, after all, called a public image, within the plenary control of private individuals. Rather, the courts tend to assume that, if someone hones an image, that person generally has the right to capture the benefit of all of its uses. As far as many courts are concerned, the image is the individual; when others use the image, they "have appropriated what is not theirs," 2 " and committed a form of piracy. 27 Moreover, although the First Amendment could be 23. *p. 6* U.S. CONST. art. I, § 8, cl. 2, grants Congress the power to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Although this provision provides the authority for both patent and copyright legislation, I call it the "Copyright Clause" for convenience. *p. 6* See, e.g., Hurley v. Irish-American Gay, Lesbian and Bisexual Group of Boston, 115 S. Ct. 2338, 2347 (1995). *p. 6* 25. (1987), which involved the use of the term "Gay Olympics" for sporting events held every four years. The Court found the use of the term a violation of 36 U.S.C. § 380(a) (1988), which provides special protection for the words "Olympic," "Olympiad," "Citius Altius Fortius," and for the five interlocking Olympic rings, reasoning that "[olne reason for Congress to grant the USOC exclusive control of the word 'Olympic,' as with other trademarks, is to ensure that the USOC receives the benefit of its own interpreted as setting a baseline that public images are public, which would require courts to offer reasons for privatization, courts do not generally see the issue this way. Instead, those that perceive the free speech issue at all, treat the First Amendment as a side constraint: to such courts, individuals start with the right of control, but that control may occasionally be intruded upon in the name of free speech. 28 Wholehearted acceptance of the notion of private-control-as-baseline has led courts to expand the right of action to encompass ever more usages. For the state rights of action, the courts assume a high degree of consumer awareness, which allows them to perceive infringement of the right of publicity in even rather oblique references. For instance, courts have held that it is reasonable for jurors to believe that consumers can accurately identify an unnamed voice in an advertisement 2 9 and an unidentified voice in a song. 30 They can reasonably be thought able to associate a racing car with a particular driver, 3 ' identify a line drawing with a prize fighter 32 and recognize a conductor from his back end. 33 They could know that "crazylegs" is a particular football player 34 and think "Carson" when they see "Here's Johnny." 3 5 Paradoxically, as the level of sophistication used in the state law cases rises, it seems to sink in the context of Lanham Act claims. Thus, it has been argued that, because federal law requires proof of a likelihood of consumer confusion, it offers less protection than state law, which requires only that the plaintiff be identifiable. 3 ' The reality, however, is that control under federal law is also fairly plenary. The courts deal with the consumer confusion requirement by assuming a rather efforts." Id. at 537. Nowhere did the Court address the question of why the USOC should receive any more than the right to use its mark in its trademark sense as a means to communicate with its customers. *p. 7* Even cases that are decided on First Amendment grounds conceptualize the right as a side constraint. [20:123 unenlightened populace. The apogee is probably the Ninth Circuit's decision in White v. Samsung Electronics America, Inc. 37 That case involved an advertisement for a Samsung VCR that depicted a robot decked out in a blond wig, gown and jewelry posed next to a prop from the television game show, Wheel of Fortune. Although it was clear that the robot could not possibly be Vanna White, a human being, who appears on this game show, the majority nonetheless allowed the question whether consumers would believe that White was endorsing Samsung VCRs to go to the jury. The assumption of consumer naivete is, in fact, so strong that even accurate usages of a person's name and image, even when accompanied by labels that specify the person's involvement with the product, have been thought likely to give rise to confusion. 3 " Nor does the First Amendment offer much help in protecting the public's interest in access, for its application has not stretched to keep pace with the interpretations of state and federal laws. Indeed, its scope has, if anything, narrowed. Thus, some courts are satisfied so long as an alternative avenue for communication exists. 39 If the defendant is engaged in any commercial enterprise, the application of unfair competition law may be judged with the low level of scrutiny used in cases involving commercial speech. 4 *p. 8* The bottom line is that expressiveness is seriously endangered. Characters like James Dean, Judy Garland, John Wayne and Madonna do double duty. True, their core denotation lies in identifying particular individuals. But because their personae are also packed with a rich set of connotations that are understood widely, they play a crucial role in the ## 1996] *p. 9* genesis and transmission of culture. 4 As Michael Madow (crediting David Lange) has so nicely stated, "the law [is] mov[ing] more and more of our culture's basic semiotic and symbolic resources out of the public domain and into private hands." 42 ## B. PRODUCTS *p. 9* Legal control over the images of things has taken a somewhat more convoluted course, but has reached a fairly similar result. As with rights of publicity, there are good reasons to give the purveyor of a product image some control over how the image is used by others. After all, product images serve important functions in commerce. They give consumers handles with which to identify goods offered for sale. This reduces buyers' search costs and gives producers some assurance that consumers can easily make repeat purchases, buy on the advice of others and avoid products that have disappointed them. That assurance, in turn, provides producers the incentive to invest in goodwillto offer high quality goods and the services that go with them. 4 3 It is, therefore, not surprising that state law evolved to allow merchants to prevent competitors from "palming off' -that is, marketing their products in a manner that is likely to lead consumers to buy from the wrong vendor . " *p. 9* Over time, however, this right has also exploded. The cause of action initially required proof of subjective intent to defraud or imitation of a completely arbitrary ("technical") mark, but that quickly gave way to a right to prevent imitation of other symbols, including the packaging and configuration of products. At first, only those symbols that acquired the secondary meaning of association with particular producers could be 41. Michael Madow gives the example of John Wayne, who "epitomizes traditional America's mythic and idealized view of itself, its history, and its national character," but is simultaneously used in a greeting card that appeals to gays (with bright red lipstick above the caption, "It's such a bitch being butch") and by the Navy to mean "trying to foolishly hold out against brutal torture." Madow, supra note 20, at 144 [20:123 protected. 4 " The modern tendency, however, is to protect all inherently distinctive symbols and to require secondary meaning only of symbols that are descriptive of the products they represent. 46 Furthermore, as courts have increasingly handled the consumer confusion requirement with the assumption that consumers are very unsophisticated, confusion has come to serve as a rather minor impediment to according plenary control to purveyors of images. 47 Dissimilar featuresand even disclaimersare often discounted. 48 In some jurisdictions, if an intent to copy can be shown, the requirement for demonstrating consumer confusion is reduced, or even dispensed with entirely. 49 Indeed, infringement can occur even when the user of a product image is not in competition with the purveyor. First, some courts accept the argument that consumers are likely to transfer their disappointment with one product to the producer of another product that bears similar marks, even when the products in question are very different from one 45. See generally J. THOMAS MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION ## 1996] *p. 11* another. 5 " Second, many states have enacted antidilution statutes that do not require competition, or even proof that confusion is likely. Under these provisions, any unauthorized use of a symbol that could reduce or tarnish its cachet can be enjoined. 1 As was seen with rights of publicity, federal law has tracked this expansion of state law. Prior to the passage of the Lanham Act in 1946,2 federal involvement in trademark law was largely confined to maintaining a national registration system. 3 The substantive provisions of the Act originally created two rights of action. Section 32, which prohibits the use of federally registered marks in a manner that is likely to cause confusion, mistake or deception, basically tracks core state trademark law.1 4 As with state law, the reach of the provision is a function of the degree of consumer sophistication used to determine the possibility of confusion. Courts tend to assume a low level, with the result that even marks used in connection with noncompeting goods and goods carrying disclaimers can be found to be infringing. 55 Section 43(a) is the second right of action. 6 Because § 32 is confined to registered marks, and because trade dress and product configurations (although sometimes capable of registration) are often not registered, this provision, which applies to "any word, term, name, symbol or device," is the main source of protection for images. Since it expressly protects 50. [20:123 against false designations, descriptions, or representations that confuse as to "affiliation, connection, association, sponsorship, or approval," it can also be said to differ from § 32 in the breadth of its coverage. ## RESTATEMENT (THIRD) OF *p. 12* In recent years, this provision has come to cover a great deal of ground indeed. Courts deciding § 43(a) cases have shown a willingness to believe in an astonishingly stupid consumer. At the acme here is, perhaps, Ferrari S.p.A. Esercizio Fabriche Automobili E Corse v. Roberts," which involved the sale of fiberglass kits that replicate the exterior of two of Ferrari's limited edition sports cars, the Daytona Spyder and the Testarossa. Consumers who bought these kits could not possibly have been confused as to their origin, description, or representation. Nor could they possibly have believed them to be sponsored or associated with, or approved of by, Ferrari. The kits were available only by order from Roberts, not Ferrari. Roberts called them "Miami Spyders" and "Miami Coupes," not Daytona Spyders or Testarossas. Not only were the kits devoid of Ferrari insignias, they did not even have engines, wheels, or other motive means. In fact, what Roberts sold were shells that bolted onto the undercarriage of other cars." 8 But despite these weighty differences, the Sixth Circuit affirmed a finding of infringement under § 43(a). The exterior shapes of the Ferrari cars were highly distinctive and very well known. Accordingly, Roberts' choice of strikingly similar shapes was said to demonstrate the intent to derive a benefit from Ferrari's reputation. This raised an inference of confusing similarity. 59 In addition, the court thought the Lanham Act did "more than protect consumers at the point of sale." 6 " To the court, the Act's protection of image-makers extends to every point in the stream of commerce, including the impression a product makes on third parties who see it in use. *p. 12* Even though the upshot of Ferrari was a near-blanket prohibition against copying product images, the decision was limited in one important sense. The Sixth Circuit not only required that the product shape be distinctive, but also demanded proof that consumers associated the shape with Ferrari. 6 ' But even this requirement, which furnishes some reason to believe that the dress actually functions as a trademark that is, that people actually utilize the product's configuration when making purchasing decisionshas now been discarded. In Two Pesos, 57. *p. 12* 944 F.2d 1235 (6th Cir. 1991), cert. denied, 505 U.S. 1219 (1992). 58. *p. 12* It could also be noted that, unlike the Daytona Spyder, which went out of production more than a decade before the case was decided, new Miami Spyders were available; a Miami Coupe cost around $8,500far less than the $230,000 price of a Testarossa. *p. 12* Id. at 1239. See also MCCARTHY, supra note 45, at § 7.26 [5]. The Ferrari court also required proof that the shape was nonfunctional. ## COLUMBIA-VLA JOURNAL OF LAW & THE ARTS *p. 13* [20:123 Inc. v. Taco Cabana, Inc.,62 which was decided after Ferrari, the Supreme Court held that there is no need to show secondary meaning of trade dress that is inherently distinctive. A festive eating area decorated in bright colors, awnings and umbrellas was held distinctive enough trade dress for a Mexican restaurant to merit protection against copying irrespective of whether patrons actually used the decoration to make their choice as to where to eat. And although some lower courts had tried distinguishing between trade dress and product configuration cases in order to protect public access to actual products, 63 Two Pesos has been read as treating the two concepts alike." *p. 13* Interestingly, in distinction from publicity rights and notwithstanding its holding in Two Pesos, the Supreme Court has, from time to time, shown some concern about privatizing the image of goods. (1995), which concerned the use of the phrase "Michelob Oily" in a parody of Anheuser Busch's advertisements for "Michelob Dry." The court relied on a survey to find the use actionable under § 32 of the Lanham Act and Missouri's antidilution statute. The survey did not demonstrate that consumers believed that the defendant was selling the plaintiffs product -in fact only 6% thought the parody was an ad. Rather, the survey showed that more than 50% of the people surveyed thought Anheuser Busch's permission would be needed to use its trademark. *p. 13* With To allow a State by use of its law of unfair competition to prevent the copying of an article which represents too slight an advance to be patented would be to permit the State to block off from the public something which federal law has said belongs to the public. 69 But despite the Court's pronouncements, there is, apparently, an irresistable impulse to give the original purveyor of an image the right to control it. 7 " Sears and Compco both involved some degree of consumer confusion. 7 ' Accordingly, they could have been interpreted as holding that states cannot protect producers against confusion by prohibiting product imitations (even deliberate imitations); that states must instead vest their interest in preserving commercial communicative clarity in some other device, such as labels. 72 But to the extent that the cases were interpreted this way, they were greeted with strong disapproval. 7 3 In addition, many courts chose to ignore this interpretation entirely. Instead, they viewed the cases as holding that states can prohibit product imitations that are likely to confuse consumers; that the Sears and Compco plaintiffs had simply failed to demonstrate enough confusion to sustain the right to relief. 7 4 By construing the cases this way and continuing to give consumers very little credit for paying attention to what they buy, the lower courts managed to give the Supreme Court's 1964 cases an extremely narrow scope. *p. 14* State legislatures also ignored these cases, and for a time, so did the Supreme Court. Thus, in Goldstein v. California, 75 the Court allowed a state to prohibit the copying of uncopyrighted sound recordings, despite the absence of consumer confusion. In Kewanee Oil Co. v The net effect is that the move toward protecting product images is largely unabated. The wavering in Bonito Boats has led many courts and observers to believe that states are free to protect product configurations and packaging. 4 Furthermore, because Lanham Act claims are grounded in federal law, it has been assumed that they are immune from the reasoning in Sears, Compco and Bonito Boats. 85 Two Pesos, which failed to perceive any competitive problem in protecting the paradigm decor of Mexican restaurants, reinforces this argument. *p. 15* In the final analysis, merchandisers seem to have acquired as much control over all manifestations of their product images as individuals have acquired over their personal images. Conversely, the public domain has been divested of symbols that, by virtue of shared cultural understandings, serve valuable linguistic and symbolic functions. From [20:123 furniture, 6 to clothing, 7 to cars, a branch of the law intended to protect commercial communication has been transformed into one controlling the instruments of discourse. ## II. CABINING THE TREND *p. 16* This review of the case law suggests that preventing further loss of semiotic resources requires at least three developments. Courts must become convinced that images of people and products really do have significance apart from their role in facilitating commercial communication. Next, they must disaggregate the recognition of value from decisions about who should control that value. Finally, they need tools for properly allocating value between public and private utilizers of images. ## A. THE SIGNIFICANCE OF IMAGES *p. 16* The Pepsi Generation took a linguistic approach to demonstrating the rhetorical significance of trademarks. 88 There, I argued that human thinking has two characteristics that make trademarks vulnerable to incorporation into ordinary language. First, there is apparently a strong need to rapidly assign signifiers to new concepts. For example, despite France's adoption of formal safeguards to protect the integrity of the French language, French speakers have shown themselves quick to borrow from other languages when vocabulary slots are open. 89 As a result of this human tendency, the first to put a new concept into play has an unduplicatable opportunity to choose the symbol by which it will be known. This applies to the name of a novel product, which is the reason the trademarks of many patented items have later become generic. 9° It also applies to the crystallization of a new concept. Thus, [20:123 the wildly sexy-yet-intelligent, sensitive-but-troubled, soft-spoken blond is signified by the image of Marilyn Monroe because it was that actress who made this combination of qualities seem desirable. By the same token, the gorgeous-but-mute blond is signified by Vanna White. *p. 17* Second, humans seem to process densely packed information units more readily than less concentrated linguistic segments. 91 Communicative effectiveness of a symbol is, therefore, a function of more than its core denotation: a symbol's power depends, in part, on the number of connotations associated with it. This is the reason that metaphors, similes and metonyms are so prevalent in discourse. They force listeners to consider a variety of meanings and thereby induce fresh insights. Marilyn Monroe is, once again, a good example because the opentexturedness of her image makes it a powerful vehicle for expressing a complexity of ideas. The images of products can function similarly. Allwhite gardens, clothing and furniture, 9 2 chintz coverings, 9 3 art deco accessories 94 and sleek cars convey narratives about life style, aspirations and achievements. As such, they are significant means of expression. Indeed, the vehemence of the debate over banning flag burning is testament to the fact that people perceive the flag as more than a colored piece of cloth. 95 Recent scholarship by deconstructionists and other postmodern culturalists reinforces this view. 96 Although this literature is largely Linoleum Works, 235 F. 458, 459 (D.N.J. 1916) (noting that the name "linoleum" was "dedicated to the public" when the patents on the product expired). *p. 17* 91. Dreyfuss, supra note 8, at 415; R. JAKOBSON & M. HALLE, FUNDAMENTALS OF LANGUAGE 81-82 (2d rev. ed. 1971). Those familiar with the decompilation cases in copyright law can readily see that this is true. The issue in those cases was whether it was infringement of copyright to translate the Os and ls with which computers "think" into the more densely packed expressions that human programmers use. On the theory that translations of this sort are necessary for humans to learn from programs, they have been considered to fall within the fair use doctrine of 17 used to critique copyright law, it is also well suited to discussing trademarks and unfair competition in that it is partly directed at understanding how signifiers function. A central thesis is that once symbols are introduced into a culture, they tend to be recoded by those who see and hear them. Audiences fit what they see and hear into their own cognitive frameworks, responding to signals and giving them meaning according to their own experiences, agendas and needs. In this way, signals become multidimensional. They come to convey not only the meaning ascribed to them by their initial purveyors, but also the new interpretations given them by listeners. Ultimately, there is no single reality. An image cannot acquire an accurate and stable definition because new meanings do not supplant old ones. Instead, an image can convey one set of messages in one context and to one audience, and other messages to other audiences in other contexts. In fact, the meaning of a symbol for any one listener can change, depending on context. 97 As an example, Michael Madow has pointed out that John Wayne symbolizes one set of ideas in the domain of films, another in discourse among gays, and a third within the jargon of the Navy. 9 8 *p. 18* As Rosemary Coombe argues, the conditions of postmodern society render image making and image use ever more important. Through the use of computers and television, social environments such as workplaces and marketplaces are increasingly decentralized. 9 9 At the same time, the multiplicity of information-delivering technologies, such as cable television and the internet, stratifies audiences. There are fewer face-toface transactions than there were in earlier times andironicallyalso fewer cultural experiences that are widely shared. In such an environment, merchandising images become key dialogic resources. Widely disseminated, textured through the process of audience adaptation, these signifiers enable like-minded individuals to identify one another and coalesce into what public choice theorists would recognize as interest groups. They also provide the shared allusional sets that *p. 18* Rotstein, supra note 96, at 725-26, gives the example of the audience's reception to a song that was performed in the 1960's and again in the 1980's. At each performance, the members of the audience seemed to share a similar experience of the song, but the '80's response was quite different from the earlier one. *p. 18* 98. Madow, supra note 20. Wayne was pictured, wearing a cowboy hat and bright red lipstick, on a greeting card sold chiefly in gay bookstores. The U.S. Navy uses the term "John Wayning it" to mean trying foolishly to hold out against brutal torture. Id. at 145. There is no indication that these uses have ever been challenged. However, Catherine Deneuve, who played a bisexual vampire in "The Hunger," has recently announced plans to sue a lesbian magazine named Deneuve, claiming "my name is a commodity." See Richard Johnson, Deneuve: living myth, N.Y. POST, July 11, 1995, at 6. 99. Coombe, supra note 41. ## 1996] *p. 19* facilitate effective debate among subcultures. Private control over these resources -"commodification of the intertext"' 00 -can, therefore, do more than merely diminish expressive choices. Privatization can disturb the dynamics that are crucial to democracy. ## B. DISAGGREGATING RIGHT FROM VALUE *p. 19* Demonstrating the power of signifiers does not get us very far, for to those who equate value with right, the more important the symbol, the clearer is the case for private ownership." 2 As noted above, value can appear as attached to the symbolto be the individual in the case of publicity rightswhich makes unauthorized utilization of the symbol seem like piracy."' Moreover, because the introducer of a new image is usually perceived as its creator, the more potent the image, the more the purveyor appears to have accomplished and the larger the reward she may be thought to be owed.'" To compound the problem, if multiplicity of meaning is regarded as jeopardizing integrity, then unauthorized access would seem to dilute value, producing a net social loss. *p. 19* In many ways, postmodern scholars refute these arguments. By illuminating the ways in which images become encrusted with meaning, they uncouple the role of creator from the role of purveyor. Once it is recognized that the power of symbols is not put there solely by their purveyors, there is less of a sense that purveyors somehow deserve all of the benefits that their images confer on society. 05 Most helpfully, acknowledging the capacity of symbols to acquire multiple meanings makes it easy to see the fallacy in the dilution argument. If, in fact, there is no 100. Aoki, supra note 96, at 835. 101. Interestingly, popular culture may itself be suffering from the loss of widelyshared imagery. 105. To give one example: Madonna's image owes a great deal of its power to associations audiences make to Marilyn Monroe and the Virgin Mary. *p. 19* [20:123 way to impose an authoritative interpretation on an image, and if new meanings do not necessarily supplant old ones, social wealth is not lost by multiple and unauthorized use. *p. 20* Besides, it is simply wrong to think that the contest in these cases is between hard-working image makers and freeriding scavengers. Admittedly, the defendants in many of these cases are, in some sense, freeriding in that they utilize images they have not themselves vested with meaning. 10 6 But, from a formal economic perspective, the defendants in these cases stand in the shoes of the public. If no one has control over a particular use of an image, the economic value associated with that use becomes consumer, not producer, surplus: the freerider who charges "extra" 0 7 for using an image expressively will attract competitors. The price of goods utilizing the image will then fall to marginal cost and the "extra" value will wind up in the pockets of consumers.' 8 There is, in short, no real, long-term danger of piracy. As to dilution, it is worth noting that there are, in fact, many symbols that are not under anyone's legal control that nonetheless enjoy enduring value. Examples range from the Easter Bunny, Santa Claus and the tooth fairy to art deco styling, classical architecture and impressionist painting. *p. 20* In one way, however, the postmodernists have exacerbated the problem of convincing courts to disaggregate value and right, for it is possible to understand their position as making exactly the same mistake that the courts do. But instead of using the right/value equation in favor of allocating the value to purveyors, the new argument seems to be that, since the audience created the value, it should be the one to enjoy the reward (in the form of free access).' 9 This version of the equation is also error. *p. 20* To start, it is not entirely true that all of the value in images is created by the public. Even the most heavily recoded imagethe image that owes most of its strength to meaning provided by the audiencewould be unavailable to the public without some investment by its initial 106. They are not, however, all freeriders. For example, in the "Gay Olympics" case discussed supra note 27, the term "Olympic" was attractive to the gay activists who sought to use it because of the way they had recoded it. The same is true for those who put up the "Lesbians Fly Air Canada" sign in Toronto and the sellers of black Bart Simpson tee shirts, see Coombe, supra note 41, at 1865. 107. That is, more than a price reflecting the marginal cost of producing the object on which the image was used. *p. 20* 108. For a fuller analysis, see Dreyfuss, supra note 8, at 407. Cf. Michele Himmelberg, Little League Outfits Causing Quite a Stir, THE DENVER POST, April 23, 1994, at C5 (arguing that zealous enforcement of trademark rights by Major League Baseball Properties increases the cost of participating in organized sports for the children who are the professional players of the future). *p. 20* 109. Cf. Rotstein, supra note 96, at 801 (arguing that the fair use doctrine of copyright should be construed to preserve the audience's "rights to 'create' the text."); Madow, supra note 20, at 204. ## 1996] *p. 21* purveyor. Images need to be developed, advertised and vested with enough texture to be engaging. They must be brought to the public's attention. 11 0 Moreover, they have to be situated in a marketing niche that develops the core denotation around which audience adaptations can be made. Personae must be honed through role and lifestyle choices to create a message sufficiently clear and interesting to be recoded by other speakers. In the case of images that fill conceptual voids, the void itself must be identified. In other words, a purveyor's contribution may not be sufficient to create the vibrancy of an image and project it into public consciousness. But the purveyor's investment is certainly necessary to the effort and, as such, it cannot be ignored. At the least, the purveyor and the audience should be considered co-creators of the value. If rights are determined by the existence of value, then purveyors and audience should be treated as joint authors or co-inventors."' *p. 21* The more fundamental problem, however, is that there is no normative principle that equates value and private right. To the contrary, black letter law is that everyone is free to copy. 1 2 Now, it is true that there are laws that depart from this baseline, but the justification for them is not "if value, then right." Usually, it is not even a principle of just deserts or a theory of natural rights. Rather, departures occur for instrumental reasons, when the creation of private rights is seen to further important social goals. *p. 21* The Constitution is structured in exactly this way. The Copyright Clause, giving Congress the power "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries," negates the reward theory with its first phrase and, by reason of the limitedtimes provision, the natural rights idea as well. Indeed, the Clause articulates exactly what utilitarian goal exclusivity must further. As noted above, the First Amendment can also be understood as creating a free-speech baseline." 3 Furthermore, Sears, Compco and Bonito Boats all stand for the proposition that the competitive principles that lie at the constitutional core require, as a general matter, freedom to copy." ' Indeed, in the copyright context, the Supreme Court has often said that the ability to capture the economic value associated with works of creativity is secondary to the goal of building the domain of public knowledge."' In patent law, where a great deal of economic literature has been devoted to the question of justifications," 6 it has been posited that exclusivity is also useful for centralizing research and promoting efficient development of new scientific fields." 7 Of course, there is room to disagree that either profits or centralization is necessary to produce the optimum level of creativity." 8 However, those who disagree argue for more public access, not for a system of exclusivity based on the mere recognition of value. *p. 22* Similarly, functional goals lie at the core of trademark law. As noted above, control over merchandising symbols gives buyers the ability to make effective choices among similar products and, ultimately, encourages investments in goodwill." 9 And even in International News Service v. Associated Press ("INS"), 2 ° the Supreme Court's foray into creating a common law of unfair competition, the right to enjoin copying was based on something other than the naked recognition of value. The facts of the case, which involved one wire service copying the output of another, suggest that without protection against freeriders, the plaintiff 114. There are also certain dignitary interests protected by the First Amendment. Arguably, a dignitary justification has a role in copyright, patent and trademark law, as well as in the right of publicity. A full discussion of this interest is beyond the scope of this article, except to note that if such an interest exists, it too requires balancing against the interest in public access. The techniques for cabining it are likely very similar to the ones suggested here. *p. 23* would have not been able to stay in business, to the detriment of itself and also the defendant and the public. 1 2 ' No credible claim of this type has been made in the image cases. Admittedly, the Court has often indicated that exclusive rights can be recognized as a way to protect commercial morality. 122 The INS Court, for example, had the same distaste for pirates that is displayed by the courts that have expanded rights over images.' 23 But there is an element of circularity in relying on commercial morality as the basis for creating exclusivity. After all, where there is a right to copy, so-called piracy is not immoral. It is only after it is determined that the norm is exclusivity that copying will appear to be wrongful. ## C. ALLOCATING CONTROL OVER THE USE OF IMAGES *p. 23* Given this instrumental focus, one question to ask about the image cases is whether they satisfy utilitarian principles. As noted earlier, there are sets of cases whose results can be squared with this model. Zacchiniand INS-type cases, which protect the purveyor's primary market from freeriders, share with copyright and patent law the objectives of enabling creators to recapture their costs and encouraging innovation. In the genuine palming off cases, where the defendant chooses a name and designs a label that is close to the plaintiffs, trademark law creates the clear channel of communication that is needed to spur the investment in goodwill. 24 The cases that protect individuals who have demonstrated a desire not to speak find justification in their furtherance of First Amendment values.' 2 5 But, again, not all the cases are like these. 2 6 As a general matter, the right of publicity does not fit the utilitarian mold because the costs of creating a persona are recaptured through the activity with which the purveyor is primarily associated. The costs of creating the persona Vanna *p. 23* 1920) (Holmes, J.) (enjoining the defendant from using "Koke" for cola soda pop on the theory that it "was chosen for the purpose of reaping the benefit of the advertising done by the plaintiff"). *p. 23* 125. 126. Interestingly, even Thomas McCarthy, who has advocated a very strong right of publicity, understands that there are really two very different types of cases, which he calls "identification value" and "performance value" cases. McCarthy, supra note 12, at 133. But, while he admits that there are actually very few of the latter type, he never explains why both should be treated in the same way. *p. 23* [20:123 White were, for example, covered by fees paid by the producers of Wheel of Fortune. Furthermore, the marginal increase in incentives that this right provides is not likely to produce any significant increase in the amount of creative material produced.' 27 By the same token, the expansions on trademark rights cannot rely on communicative clarity for its justification because these rights do not require muchin some cases, anyproof that confusion is likely. *p. 24* In fact, overzealous protection can distort the incentive structure in which purveyors operate, stimulating them to devote their resources to exploiting their images instead of continuing in the work for which the images became known. Recent developments in professional sports furnish one example, for both teams and players now earn so much money through control over their logos, names and likenesses, which make it appear that there may be little need to actually engage in athletics very often. 12 Thus, until 1994, a World Series had been played in baseball every year since 1903.129 Until recently, the only interruption in the hockey season was the 1992 season's ten day strike.1 30 Yet, 1995 saw both sports suffering from debilitating work stoppages. The cities where the teams played were hurt, the merchants who depend on operating the franchises within the stadiums were hurt, and fans were devastated. But revenue from images apparently gave both the players and the teams the financial ability to hold out.' 31 Similarly, there are 127. The details of the publicity right are even more inapposite to this model. The descendibility of this right in some states, for example, serves no utilitarian purpose, as there is no point in providing incentives to purveyors who are dead. The dead are similarly not in need of protection from misleading claims of association or sponsorship: presumably, those who would be impressed by the connection between the person and the product would also be aware that the person was no longer in a sponsorship position. *p. 24* 128. See, e.g., Both Sides' Rhetoric Obscures Fiscal Reality, THE WASH. POST, Feb. 6, 1995, at Al ("Some baseball players make more on licensing fees from trading cards -$80,000 a year -than most Americans earn annually."); Kenneth Howe, Sharks Bite Off Biggest Profit, S.F. CHRONICLE, May 26, 1995, at B1; Marty Linehan, Baseball Licensing Does Big League Job, ST. PETERSBURG TIMES, July 23, 1989, at 12 (noting that licensing fees and trading-card royalties added $30 million to the players' strike fund). Interestingly, some of the most popular merchandise comes from new teams that are not doing very well a phenomenon attributed to the fact that established teams chose their logos long ago, whereas new teams choose logos with an eye toward merchandising. ## 1996] *p. 25* now movies created principally for their merchandising tie-ins. Studios have, for example, become keenly interested in comic strips because their characters -Batman, Casper, Dick Tracyhave "marketing prowess" in the form of licensing opportunities.' 3 2 As a result, the avenue of communication between producer and consumer is now so clogged with merchandising these images, the suspicion is that films with g6nuine artistic merit will not be able to attract public attention. 1 3 3 How then, can the trend be cabined? One possibility is suggested by an article that Ralph Brown wrote right after Sears and Compco were decided.' 3 4 He would take these cases at their word and limit rights in images to those arising under the authority of the Copyright Clause.' 35 On the question of creating unambiguous avenues of communication between sellers and buyers, Brown stopped just short of recommending a "label-only" approach whereby merchants could protect only distinct identifiers (labels, names and logos) and would rely on disclaimers to eliminate any residual sources of confusion. 13 6 Brown pointed out the advantages of this approach: it would free unpatented product configurations and trade dress for general use; moreover, it would dispense with the need for a functionality doctrine, which Brown regarded as "full of 132. For example, Jeffrey Montgomery, chief executive of the Harvey Entertainment Company, was quoted as saying "Ask me if I'd rather have a studio with 10,000 employees or a trademarked character, I'd take the character any day." Todd Krieger, Yes, the Movie's Opening, but His Mind's on T-Shirts, N.Y. TIMES, Dec. 18, 1994, § 3, at 10. See also Dunn, supra note 128 (noting the evolution of the Mighty Duck from movie, to team name, to licensed logo). *p. 25* 133. A Tale of Two Movies, Hypeor Lack of It -Can Make or Break a Film, ATLANTA CONSTITUTION, July 7, 1995, at 10. Interestingly, the world of sports and films are joining forces in their efforts to make the most of their merchandising value. See Tony Kontzer, Sharks Taking a Shot at the Silver Screen, Bus. J.-SAN JOSE, June 5, 1995, v.13, n7, § 1 (noting that Walt Disney, the movie company, now owns the Anaheim Mighty Ducks, a team in the National Hockey League, and that the San Jose Sharks, also a hockey team, is proposing to make a movie). *p. 25* 134. Comments of Ralph S. Brown Jr., Symposium, supra note 70, at 1216. 135. Two courts have recently experimented with a preemption approach. See Vornado Air Circulation Systems Inc. v. Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995) (refusing to recognize a § 43(a) claim relating to a feature that had been an element of an expired utility patent on the ground that enjoining copying would "impinge[] seriously upon the patent system's core goals"), cert. denied, 64 U.S.L.W. 3458, 3467 (U.S. January 8, 1996); Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654 (7th Cir. 1995) (holding that an unpatented element of a patented invention could not be protected by § 43(a) after patent expiration because "the original producer has reaped his reward of a 17-year monopoly and the public has already 'paid the congressionally mandated price for disclosure'" (citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 152 (1989), petition for cert. filed, 64 U.S.L.W. 29 (U.S. Jan. 22, 1996) (No. 95-1169). *p. 25* 136. Comments of Ralph S. Brown Jr., Symposium, supra note 70, at 1220-25. Interestingly, Japanese trademark law takes something of this approach. It protects product configurations through a species of patent law, and uses trademarks only for twodimensional marketing images. See generally TERUO Doi, THE INTELLECTUAL PROPERTY LAW OF JAPAN 118 (1980). *p. 25* [20:123 difficulties."' 3 7 In the context of personae, which Brown did not discuss, his approach would probably mean preempting all state rights of publicity. What would be left would be the Lanham Act. Presumably, however, the Act would be interpreted to protect images only against genuinely confusing usages. *p. 26* But despite its advantages, the Brown approach is likely to prove too radical to be widely accepted. Notwithstanding what the Supreme Court has said, it is difficult to see in the Copyright Clause or in federal intellectual property legislation any intent to set a cap on the creation of exclusive rights. As to the states, the Copyright Act expressly preempts only certain kinds of state law, 3 ' the Patent Act has several provisions that safeguard trade secrets protected under state law, 139 and the Lanham Act specifically contemplates the coexistence of federal and state trademark rights. 4 ° Although the legislative history of the Copyright Clause is meager, the Clause seems to have been premised more on the notion that states would not be able to offer sufficient protection to innovators than on the fear that the states would overprotect.'" The notion that federal law cannot constitutionally protect subcopyrightable and sub-patentable material is even more difficult to accept. Why, after all, would a Constitution premised on a capitalist 137. Comments of Ralph S. Brown Jr., Symposium, supra note 70, at 1220, 1221. The functionality doctrine is difficult to apply because courts do not have the expertise to decide when a feature represents the most efficient way to manufacture the product, see, e.g. *p. 27* COLUMBANLA JOURNAL OF LAW & THE ARTS system put categories of information products outside the reach of the market economy? 1 2 *p. 27* Or to make the positive case, there is considerable appeal to allowing for some leeway in this area. States are often in the best position to identify contributions of special importance to specific localities. 1 4 3 Furthermore, the public's interest in "works of low authorship," gadgets, and the like can be nicely fulfilled by encouraging the production of works that involve modest levels inventiveness through rulesbe they federal or statethat produce commensurately modest levels of profit.1 4 4 *p. 27* From this perspective, the problem with the current administration of the right of publicity and § 43(a) is that these causes of action do not produce a modest enough level of profit. They are not always limited in time in the way that copyrights and patents are, they do not necessarily include the compulsory license provisions of, say, copyright law, 1 4 1 or enjoy judicial limitations, such as the misuse defense of patent law. 4 1 Instead, their sole limiting feature is that they are triggered only when there is a defect in the way that audiences are thought to understand the use of an image (in the trademark cases, the audience must be in danger of being confused or devaluing the mark; in the publicity cases, the audience must consider the use to be identified with the persona). *p. 27* If defective perception is the only limitation, then the only way to limit the expansion of these rights is to refine courts' understanding of how images are perceived by audiences. To begin, the insights of the postmodernists should be brought to bear on the problem. As we saw, one of their ideas is that images are inevitably subject to recoding by their audiences. Since the accumulation of connotation may not, in fact, be destructive of an image's central denotation, the first lesson is that dilution and publicity legislation should be reconsidered. Only about half the states have enacted antidilution laws. 47 Some of those that have done so have nonetheless been discreet about giving them extraterritorial effect.' 48 And although Congress has recently enacted a dilution provision, the statute is fairly narrow. It applies only to famous marks that are put by another to "commercial use in commerce." Moreover, the statute contains defenses for fair use, noncommercial use and "all forms of news reporting and news commentary." 4 9 Accordingly, there is ample room for courts to consider carefully whether, in a given case, there is a need to protect images against the diminution that is said to be caused by unauthorized use. As to rights of publicity, they have been recognized in only twenty-five states, 5 ° and efforts to lobby Congress for a federal publicity right have been ineffectual to date."' To the extent that these claims are premised on the notion that unauthorized use diminishes stature, they too should be reevaluated. *p. 28* The other lessons of the postmodernists derive from the insight that recoding is a natural phenomenon. If, indeed, symbols are routinely assigned multiple meanings, the law ought to start from the premise that audiences have a great deal of experience with confusing signals and that, absent a specific reason to believe otherwise, the interpretive strategies that a listener ordinarily pursues will also be used in the marketplace. Since, in ordinary discourse, audiences understand that specific meaning depends on the context in which the signifier appears, confusion should be evaluated in a manner that reflects this contextsensitive dynamic of interpretation. *p. 28* With this approach, it is easy to see why the outcomes in so many cases are counterintuitive and inconsistent. Courts generally use some version of the so-called Polaroid factors to determine the likelihood of confusion.' 52 These include the strength of the image, the similarities between images, the proximity of usages, the likelihood the purveyor would do what the user is doing, actual confusion, the defendant's good faith, the quality of the respective goods and the sophistication of relevant buyers. It is certainly the case that these factors are relevant to the question of whether consumers will initially experience confusion; were that the determinative issue, Polaroid would be a fine test. Instead, however, the dispositive question is how consumers resolve the confusion that they experience. As to that, the factors say very little, for they do not consider the approaches to interpretation that audiences actually use. For example, courts rarely consider the impacts of dissimilar features (like the engine and wheels in the Ferrari case) and disclaimers, even though purchasers are likely to use both when determining what a signifier with multiple meanings is meant to convey in context. 53 To a large extent, there is nothing new in this suggestion, for in the most general sense, unfair competition law has always been applied in a context-sensitive manner. It is elementary trademark law that the right to a mark depends on its use in commerce, that is, in a communication between merchant and customer.' 4 Also a part of basic trademark law is the idea that marks are infringed only when the unauthorized use is also in commerce, and then only when the use is not one that "fairly and in good faith . . . describe[s] the goods" (the fair use defense). 1 5 5 Similarly, statutory rights of publicity often contain specific exemptions that depend on context. 15 6 There are, however, many of what The Pepsi 153. For an example of a court that did a good job in this respect, see Versa Products Co., Inc. v. Bifold Co., 33 U.S.P.Q.2d 1801 (3d Cir.), cert. denied, 116 S. Ct. 54 (1995). The court specifically criticized cases that lower the standard to "possibility of confusion" in trade dress cases, id. at 1808, arguing that where copying should be free, a higher standard is in order, id. at 1815. The court also instructed the lower court to pay attention to the degree of care consumers excercise, id. at 1812-13, and the features upon which they rely in making purchasing decisions, id. at 1817, including the information on labels, id. at 1812. *p. 29* Context counts in another way as well, for an audience takes into account not only the context in which it finds the image, but also the context in which it finds itself. Thus, an image that could be confusing to an audience in certain situations may not be confusing to an audience seeing it under other conditions. Conversely -and as was pointed out in The Pepsi Generationimages that are not key to expression in one context may be rhetorically significant in others. Generation called "hybrid" usesuses that are neither purely commercial nor purely expressivethat are currently thought likely to give rise to confusion. With a better understanding of expressive needs and interpretive strategies, it should be possible to construct a taxonomy of such uses, with the idea that some can be safely returned to the public domain. *p. 30* In fact, this task is already underway. One example is the Ninth Circuit's opinion in The New Kids on the Block v. News America Publishing, Inc.,"' where a newspaper used a singing group's name in an opinion poll. The case did not fall squarely within the traditional fair use exception because the defendant used the name to refer to the purveyor itself, and not to the defendant's own goods. Judge Kozinski nonetheless found for the defendant. He generalized on fair use to posit the existence of a "nominative use" category, saying that "nominative use of a markwhere the only word reasonably available to describe a particular thing is pressed into servicelies outside the strictures of trademark law." 15 8 If the Ninth Circuit is right, and consumers do understand certain uses to be nominative, then § 43(a) claims predicated on a likelihood of association or endorsement should be viewed rather skeptically. There is, for example, a set of cases in which a producer has the right to sell a product, such as a sound recording, but does not have specific permission to use the name or picture of someone who contributed to the work, such as one of the soloists. The packaging nonetheless identifies the contributor. On the theory that consumers could believe that the contributor authorized or endorsed the sale of the work, courts often hold that these identifications run afoul of the Lanham Act and publicity rights.1 9 Under this approach, these uses would not be considered actionable, especially when the context included clues (such as explanatory labels) that allowed the audience to decode the image accurately as a nomative use. *p. 30* Another category is suggested by generic-goods cases like Ross Cosmetics Distribution Centers Inc. v. United States. 6 ° Ross involved the importation of perfumes that mimicked the aroma of two perfumes with well-known trademarks, Georgio and L'Air du Temps. The defendant used the names "Gorgeous" and "Love Birds," along with trade dress that was rather similar to the plaintiffs. Although the court ultimately upheld the Customs Service's decision to seize the goods, it denominated as a category the "invitation to compare."" 1 The idea here is that images can send two messages simultaneously. One is the sourceidentifying message, "not-the-trademarked-version." The other message is one that all generic producers need to send: "this is an inexpensive substitute." 6 2 If it is true that humans are more efficient utilizers of information when it comes densely packed, and if it is true that consumers can deal with two meanings simultaneously, then unfair competition claims in "invitation to compare" cases should also be decided cautiously. The defendants in these cases are sending messages crucial to the operation of the marketplace; if there is enough other information available so that consumers can interpret these images properly, invitations to compare will lead to better-informed purchasing decisions. *p. 31* A third possible category is suggested by parody. In a recent case in the copyright area, Campbell v. Acuff-Rose Music, Inc.,163 the Supreme Court held that the unauthorized parody of the song "Oh, Pretty Woman" could be considered within copyright's fair use doctrine," despite the fact that the defendant's use was commercial and the entire song was utilized. 6 ' The Court's actual reasoning, which relied on the statutory directive of the Copyright Act and the transformative nature of parodic work, is not directly applicable to trademark law. However, its unstated premisethat audiences can understand what might be called an "invitation to contrast"is directly applicable to the § 43(a) and publicity cases. That is, when the context demonstrates that the unauthorized user is commenting on the purveyor, it is wrong to automatically conclude that audiences are identifying the work with the purveyor (for purposes of the right of publicity) or that they are likely to be confused into thinking that the purveyor is associated with or endorsing the user (for purposes of § 43(a)). *p. 31* Consider, for example, PAM Media, Inc. v. American Research Corp. " ' 66 The defendant used the title "After the Rush" for a liberal talk show hosted by Aaron Harber and marketed to radio stations as a followup to the arch-conservative Rush Limbaugh Show. Finding it possible that consumers would be confused into believing that Rush Limbaugh agreed, sponsored, or was associated with Harber's program, the court enjoined use of this title. It would, however, have permitted the defendant to call the program "Aaron Harber disagrees with Rush Limbaugh and wants to talk about it." *p. 32* This case would be analyzed quite differently under the approach suggested here. After noting the possible source of confusion, the court would have then had to ask whether there were contextual factors that would lead the audience to resolve the ambiguity correctly. Since Aaron Harber's perspective was in direct conflict with that of Rush Limbaugh, and since his program followed Limbaugh's in time, the court might well have concluded that the audience would have understood the reference to "Rush" as an invitation to contrast. As a result, the snappier title could have been used to attract listeners, and the program might have had the same galvanizing effect on liberals' participation in the political process that the Rush Limbaugh Show is said to have for conservatives. 1 67 Another setting where focus on context would be especially helpful is in the aesthetic functionality cases. These are difficult under the traditional approach because, while the aesthetics of most objects are inherently distinctive enough to merit protection under Two Pesos, granting trademark protection severely constrains competition in products whose aesthetics are particularly important to consumers.'6 The more nuanced approach would acknowledge that design can have two meaningsdecoration and identification. It would then ask what, in the purchasing context, consumers would take the design to mean. In 167. Snappiness is not, of course, always correlated with commercial success. Al Franken's book, RUSH LIMBAUGH IS A BIG FAT IDIOT (1996), is apparently selling quite well. See Frank Rich, The G.O.P.'s Bum Rush, N.Y. TIMES, Feb. 7, 1996, at A19. *p. 32* The "Gay Olympics" case, San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522 (1987), is another example of an invitation to contrast. The term "Olympic" was used by a gay rights group for athletic events it sponsored. The term was, apparently, attractive to the group because it carried implications of international cooperation, mutual acceptance and mainstream athletic prowess. The Supreme Court, however, held that the use infringed trademark and other rights owned by the United States Olympic Committee because the audience might be confused into thinking that the USOC had sponsored the gay event. If this case were analyzed as an invitation to contrast, the Court might have concluded that the audience would have used the context of the event to understand the metaphoric import of "Olympic." That is, the audience could have understood the invitation to contrast a sports event involving gays with a longstanding athletic competition. *p. 32* This analysis is different from the one suggested in the The Pepsi Generation, where the focus was on the rhetorical importance of the word "Olympic" to the speaker. These two approaches are not, however, contradictory: courts could usefully focus on both the audience and the speaker. *p. 32* 168. For an excellent discussion, see W.T. Rogers Co., Inc. v. Keene, 778 F.2d 334, 338 (7th Cir. 1985) (Posner, J.). *p. 33* COLUMBIA-VLA JOURNAL OF LAW & THE ARTS some situations, for instance, where consumers were seeking designs compatible to what they already own, 1 69 the likelihood is that the signifier would be perceived in its decorative sense. Those usesin the example, "compatability uses"would then be considered to fall outside the protection of trademark law. 7 ' In contrast, in aesthetic functionality cases that are premised on the naked assertion that consumers like the design, where there are no contextual clues favoring the nonidentifier meaning, it may be reasonable for a court to conclude that there is a likelihood of confusion. 171 The above is not meant to say that greater public access to images can be achieved without engendering a degree of confusion. But two points should be kept in mind. First, there are situations where the interests in free expression and competition require purveyors to endure a certain amount of confusion (the long-recognized doctrines of fair use, first sale and newsworthiness are examples).' 7 2 The foregoing analysis suggests that because consumers are actually habituated to ambiguity, the degree of confusion that consumers are actually likely to suffer is less than might otherwise be thought. Second, purveyors are not usually helpless: in most cases, they can themselves dispel the residual confusion that is caused by reducing the scope of trademark protection. After all, in most of these cases, the purveyor is using the image for advertising; all it needs to do is change its ads to alert consumers to the fact that potentially confusing uses are lurking. In addition, a purveyor can always make some changes in its own image to better distinguish it. 173. To put this another way, in every copying context, the issue is who bears the burden of preventing consumers from being confused by a similarity among images. When there is a right to an unambiguous avenue of communication, then the copier should bear that burden. In such situations, regarding intentional copying as wrongful makes sense. But when the baseline is free access, the risk should be borne by the image purveyor. In those circumstances, what is immoral is using copyable features to differentiate one's products and attempting to use one's image to exercise control over public discourse. *p. 33* In fact, generic marks and functional features are handled in exactly this way. Generic marksmarks that have come to be used as the name of the goods soldand functional featuresfeatures that are necessary to the proper functioning of all products within a categoryrepresent the one area where courts do comprehend the need for unfettered Admittedly, there will be situations where fighting a confusing image with more images will not be easy. For example, some of the plaintiffs in publicity cases are not public figures, and some of the ones who are brought suit precisely because they do not use their personae in advertising. However, a footnote in the Campbell opinion suggests a way to deal with this problem.' 74 There, the Court indicated that there may be "special circumstances" of unauthorized usage that fall outside fair use, but where monetary relief is a more appropriate remedy than an injunction. For publicity cases, the resulting compulsory license would be the payment said to be required in exchange for identifying with the purveyor, in much the same way that the Campbell court meant to provide compensation for use of the copyrighted work. In the confusion contexts, compensation would, of course, not be a suitable response. However, monetary relief could be understood as providing the purveyor with the financial ability to pay the costs of dispelling confusion. In addition, the knowledge that monetary relief may be ordered would have the advantage of giving users of images the incentive to stop and think about whether the usage is really necessary to further their expressive needs. " public access. See, e.g., In re Morton-Norwich Products, Inc., 671 F.2d 1332 (C.C.P.A. 1982); King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963); Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299 (2d Cir. 1917). In these cases, copying is not considered piracy. Rather, what strikes courts as immoral is the choice of a symbol needed to compete effectively. See, e.g., G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d 985 (7th Cir. 1989) (noting that "[i]nternal memoranda during this early planning phase reveal that Anheuser-Busch aspired to preempt the low alcohol beer market" by calling its beer L.A., the common name for low alcohol beer in Australia, where it originated). Thus, when confusion arises from multiple use of functional and generic symbols, it is the initial purveyor who must clear up the ambiguity by adopting a new marketing symbol. Significantly, disputes in the defamation/First Amendment area are handled in an analogous fashion. Public figuresplaintiffs who have access to the media are supposed to develop thick skins and to fight misleading speech with more speech. Other remedies are generally provided only in the case of malice and for plaintiffs who are private figures. See, e.g., New York Times v. Sullivan, 376 U.S. 254 (1964); see generally LAURENCE H. ELDREDGE, THE LAW OF DEFAMATION § § 48-55 (1978). *p. 34* 174. Campbell, 114 S. Ct. at 1171 n.10. 175. Admittedly, this is a nice way of saying that speech will be chilled. However, chill is better than the alternative of suppression. Besides, The Pepsi Generation had suggested that courts should determine when a mark is so rhetorically significant that use is required. The Campbell approach has the advantage of putting this determination in the hands of the speaker. *p. 35* COLUMBIA-VLA JOURNAL OF LAW & THE ARTS CONCLUSION I do not mean to be Chicken Little and claim that the sky is fallingthat language has been privatized to the point where effective discourse is not possible. 178 I do, however, believe that a warning is in order. If the laws of unfair competition and rights of publicity continue to grow unchecked, important rhetorical resources, including images that are uniquely suited to conversation among subcultures, will be taken out of the public domain. The idea that value should be wholly captured by purveyors or that anyone has the right to a marketplace purged of all sources of confusion, cannot be squared with intellectual property principles or with First Amendment values. It is, in short, difficult to see why the same thick skin that New York Times v. Sullivan 177 required of the Commissioner of Montgomery, Alabama, should not be demanded of the likes of Vanna White and Ferrari. ## Footnotes > § § 47-25-1101 to 1108 (1995); TEx. PROP. CODE ANN. § 26.001-.015 (West Supp. 1991); UTAH CODE ANN. § § 45-3-1 to 45-3-6 (1993); VA. CODE ANN. § 8.01-40 (Michie 1992); WiS. STAT. ANN. § 895.50 (West 1994). Many commentators have written on the right of publicity, including George M. Armstrong, Jr., 21. 15 U.S.C. § 1125(a) (1994). 22. See, e.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1106-10 (9th Cir. 1992) (tracing the development of § 43(a) as protection against false endorsement), cert. denied, 113 S. Ct. 1047 (1993). > Hirsch v. S.C. Johnson & Son, Inc., 280 N.W.2d 129 (Wis. 1979). 35. Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983). 36. RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 46 Reporter's Note, cmt. b (1995); see also McCarthy, supra note 12, at 135. > • . ."). See also Bauer Lamp Co. v. Shaffer, 941 F.2d 1165, 1172 (11th Cir. 1991). > UNFAIR COMPETITION § 21 cmt. b (1995); Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407 (2d Cir. 1917), cert. denied, 245 U.S. 672 (1918). 51. New York's antidilution statute is typical. It provides: Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services. N.Y. GEN. Bus. LAW § 368-d (McKinney 1984). See, e.g., Deere & Co. v. MTD Prods, Inc. 41 F.3d 39 (2d Cir. 1994); RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25 (1995). 52. 15 U.S.C. § § 1051-1127 (1994), as amended by Pub. L. No. 104-98, 109 Stat. 985 (1996). 53. See generally McCARTHY, supra note 45, at § 5.3. 54. 15 U.S.C. § 1114 (1994). 55. (finding disclaimers irrelevant when intentional copying occurred), cert. denied, 423 U.S. 868 (1975). 56. 15 U.S.C. § 1125(a) (1994). > Stuart Hall Co. v. Ampad Corp., 34 U.S.P.Q.2d 1428, 1433 (8th Cir. 1995). > Cir. 1961). 70. Or, as Ralph Brown has put it, "a recurrent yearning" and "a persistent urge" for a common law against copying. Comments of Ralph S. Brown Jr., Product Simulation: A Right or a Wrong, 64 COLUM. L. REV. 1178, 1216, 1217, 1227 (1964) [hereinafter Symposium]. 71. See Sears, 376 U.S. at 227; Compco, 376 U.S. at 236. 72. See Sears, 376 U.S. at 232; comments of Milton Handler, Symposium, supra note 70, at 1183, 1185. 73. See, e.g., comments of Walter J. Derenberg, Symposium, supra note 70, at 1192. 74. See, e.g., Tveter v. Ab Turn-O-Matic, 633 F.2d 831, 839 (9th Cir. 1980), cert. denied, 451 U.S. 911 (1981); Marcal Paper Mills v. Scott Paper Co., 290 F. Supp. 43, 48 (D.N.J. 1968). 75. 412 U.S. 546 (1973).1996]COLUMBIA-VLA JOURNAL OF LAW & > 85. See, e.g., Kohler, 12 F.3d 632; Ferrari S.p.A. Esercizio Fabriche Automobili E Corse v. Roberts, 944 F.2d 1235, 1241 (6th Cir. 1991), cert. denied, 505 U.S. 1219 (1992); Truck Equip. Serv. Co. v. Fruehauf Corp., 536 F.2d 1210, 1214 (8th Cir.), cert. denied, 429 U.S. 861 (1976). > See, e.g., Keith Aoki, Adrift in the Intertext: Authorship and Audience "Recoding" > See, e.g., Fogerty v. Fantasy, Inc., 114 S. Ct. 1023, 1029-30 (1994); 119. See, e.g., William M. Landes & Richard A. Posner, The Economics of Trademark Law, 78 TRADEMARK REP. 267 (1988); William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspective, 30 J.L. & ECON. 265 (1987). 120. 248 U.S. 215 (1918). > 122. See, e.g., Sears Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232 (1964). 123. INS, 248 U.S. at 239-40. 124. See, e.g., The Coca-Cola Co. v. The Koke Co., 254 U.S. 143, 145 > 131. See, e.g., Claire Smith, Plenty of Good Seats Available, Fans, N.Y. TIMES, May 28, 1995, § 8, at 1.