I™: Avatars as trade marks

Virtual worlds may be the future of e-commerce. The game designers who created these thriving virtual worlds have discovered a much more attractive way to use the Internet: through an avatar. This avatar is your identity. It will be your trade mark. Trademarks, more than other species of intellectual property, are one step further from tangible property. Stephen Carter has called trademarks “owning what does not exist.” Every kind of intellectual property requires participants, users, to acquire value. What makes trademarks different is that they require participants to acquire meaning. This article deals with the complex problem of creating intangible property interests (i.e., trade marks) in what does not exist except in virtual reality. How do two parties with competing interests (game developers and the players) work to create trademarks within pre-trademarked worlds?

1. Introduction
Virtual worlds may be the future of e-commerce. The game designers who created these thriving virtual worlds have discovered a much more attractive way to use the Internet: through an avatar (Morningstar and Farmer, 1991).1 These avatars, unlike previous video game alter-egos, can be richly customized and are designed primarily for social interaction (Lastowka and Hunter, 2004). The typical user devotes hundreds of hours (and hundreds of dollars, in some cases) to develop the avatar. This avatar is your identity. It will be your trademark.

Trademarks, more than other species of intellectual property, are one step further from tangible property. Peculiar to trade marks, the communicative sign is a placeholder for a robust but intangible cultural relationship between producer and consumer. The very existence of this relationship begs the question of the consumer’s creative role. Stephen Carter has called trademarks “owning what doesn’t exist.” (Carter, 1990 2; Ackerman, 1992; Reich, 1964) This article deals with the complex problem of creating intangible property interests (i.e., trade marks) in what does not exist except in virtual reality. How do two parties with competing interests (game developers and the players) work to create trademarks within pre-trademarked worlds?

2. What is an avatar?
To enter a virtual world, the user is first connected to the server via the Internet. Once the connection is established, the user enters a program that allows them to choose an avatar for themselves. In all of the major virtual worlds, one can spend an extraordinarily long time at this first stage, choosing the appearance of the avatar as well as its abilities. Avatars, like their human counter-parts, express themselves through appearance and body language.3

Depending on the game universe, the player can freely, within the confines of the world’s ‘realities’, select sex, appearance, profession, and physical features (Damer, 1998). The initial choice of character occurs under a budget constraint of these attributes that ensures equality of opportunity in the world: your mace-wielding ogre will be dumb, and your brilliant wizard will have a glass jaw. At the same time, the budget constraint ensures equality among avatars along dimensions that most people think should not matter for social achievement. In particular, male and female avatars have the same initial budget of skills and attributes. Avatars whose physical characteristics (i.e., skin tone, size) are associated with any benefit in the game must accept some compensating disadvantage. Any inequality in the virtual world can only be due to one of two things: (a) a person’s choices when creating the avatar, or (b) their subsequent actions in the virtual world (Filiciak, 2003; Castronova, 2003).

Once the avatar is created, she needs a name. So the player must choose one. If they cannot think of one which matches the game’s universe, an automatic name generator can be used. This name will become your identifier; your identity, in fact. Your name will be on what you build your reputation. This will become your trade mark (Walsh, 2004; Marvel Enterprises, Inc. et al v. NCSoft Corporation, et al4).

As defined above, the avatar is the representation of the self in a given physical environment. This environment creates an idealized situation in which a player may freely shape her own “self”. She has full control over her own image. It is significant to note that people talking about their activities while in the game world use the pronoun “I”, each identifying his or her “self” with their avatar they have created (Filiciak, 2003).

As virtual worlds support rich social interaction, many of those who have chosen to visit virtual worlds remain residents of them. The average EverQuest player and Norrath avatar, for instance, spends about 20 h a week within the virtual world (Yee, 2005). Virtual world users design costumes, furniture, and houses for their avatars, and sell their creations to others (Dibbell, 2003; Damer, 1998 ). They buy and barter virtual chattels on eBay (eBay listings, Internet Games at http://listings.ebay.com/pool2/listings/list/all/category4596/index.html). They form clubs and organizations devoted to mutual aid and protection. Massive Multiplayer Online: Clans and Guilds, Open Directory Project at http://dmoz.org/Games/Video_Games/Roleplaying/Massive_Multiplayer_Online/Clans_and_Guilds/. See also, Allakhazam’s Magical Realm at http://links.allakhazam.com/Everquest/Guilds). Notwithstanding substantial investments of time and creativity, and in light of the emergence of new virtual social orders, the activities within virtual worlds are viewed still by some as games and diversions, not worthy of serious attention (Lastowka and Hunter, 2004).

3. Identity and reputation
In a universe that offers hundreds of virtual worlds, the virtual body becomes a vessel of choice, and the thinking part of humanity – the Self – will find it convenient to slip into and out of avatars as economic, social, and political circumstances dictate (Huhtamo, 1995). At first glance, this may seem to pose a distinct challenge for legal theory. Law is built on the idea that the self is a unitary, rational actor. Rational choice theories of social effects emphasize the importance of information for the maintenance of social norms. Norms can only be enforced if it is possible to impose some kind of punishment on the violators. In a virtual community, the real self behind the avatar is generally hidden. As a result, any punishments the community may dictate can only be imposed on the avatar, not the self, and the self is free to simply exit the avatar and escape unscathed (Mnookin, 1996; Lessig, 1999).

The combination of team production and level-based advancement seems sufficient to support very strong social norms in the game, and such norms do seem to be present. The broader implication is that the diversity of avatar attributes is useful not only as an end in itself, but also as a means to encourage agents to develop and maintain good reputations for their avatars. Specialized attributes allow systems of joint production, which can have the side effect of inducing conformity to social norms. Avatars tend to mimic their players as they develop personality, individuality, and an ability to act within the virtual world – as any person on their way to maturity (Rehak, 2003).

At the same time, no norm system in cyberspace can be truly oppressive. Anyone who wishes to live under a certain set of norms, or under no norms at all, is free to inhabit avatars in the appropriate worlds. It should be noted that the same systems that encourage norm formation will also tend to slow down the shifting of populations that leads to equality of opportunity. Equality of opportunity emerges because dissatisfied agents can develop capital in different kinds of avatars; it will emerge more quickly if the switch from one powerful avatar to another can be accomplished rapidly. Yet a system that encourages reputations will also require that it is not easy to develop capital rapidly in another avatar. If it were easy to do so, anyone could ruin their reputation with one avatar, destroy it, and then simply reappear with another avatar of similar powers. The credibility of social norm enforcement depends on the degree to which an agent has a vested interest in the fate of the avatar. If agents are deeply invested in their avatars, and are hesitant to start new ones, it will take more time for the levelling process of population shifting to occur. There is a trade-off between equal opportunity and social order; agents will choose worlds based on their relative tastes for both (Johnson and Post, 1996; Castronova, 2003).

Of course the natural laws of earth need not apply in a world that exists entirely as software, and much of what defines an avatar’s uniqueness is its ability to bend or break some of these laws and not others. Depending on the skills chosen, an avatar might be able to fly, see for miles, hypnotize, heal wounds, teleport themselves, or shoot great flaming fireballs at other avatar’s heads. However, a budget constraint applies: those who can heal or hypnotize often have difficulty summoning a fireball worthy of mention. As a result, avatars come to view themselves as specialized agents, much as workers in a developed economy do. The avatar’s skills will determine whether the avatar will be a demander or supplier of various goods and services in the virtual world (Damer, 1998). Each avatar develops a social role. This is an important consideration for trademarks.

4. Trademarks and authors
“The use of authorial marks in relation to the sale of creative works, like the use of business trade marks in relation to the sale of goods and services, creates social benefits that deserve legal protection. Authorial attribution acts as an incentive to authorial production, provides valuable information to consumers, and provides additional social benefits that go beyond issues of market efficiency. However, the use of authorial marks, like the use of trademarks, can also create social harm.” (Lastowka, 2005)

No other intellectual property regime poses so many legal tests that depend upon public consciousness yet provides so little corresponding recognition of the public’s contribution. By associating a symbol with an object, the public contributes to the authorship of trade marks. This associative power grants a word or icon meaning as the representation of a particular object (Wilf, 1999). Society as a whole benefits from the trade mark holder’s vested interest in maintaining quality across numerous transactions. Since the trade mark holder both invents and sustains the worth of the mark, it is his or her claims to private ownership that must be protected (Schechter, 1927; Beebe, 2004).

The issue of player entitlement is noteworthy for trademarks. Unlike copyright, there is no set limit to the time to which the privilege extends (Hughes, 1988).5 And, unlike copyright, trade mark lacks a broad doctrine of fair use. Copyright fair use has been eroded through the courts’ tendency to immunize creators from responding to even compelling public interests (Gordon, 1990; Fisher, 1988; Patterson, 1987; Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 1989).6 Therefore, a fair use doctrine extended to trade marks will not be suggested. Instead, the focus will be upon the player’s authorial role in associating a symbol with an object.

The Lockean model seeks to limit those rights and privileges of trade mark owners that intrude upon the public right to either a linguistic or cultural commons (Gordon, 1990; Carter, 1990). Private trade mark privileges are constrained in order to prevent harm to the commons. In virtual worlds, players want to be able to create their own marks out of the virtual cultural commons; while, on the other hand, the game developers want to limit players’ use of the company’s real world trade marks. The balancing test is not only between virtual private rights and virtual public good, but also between corporate private rights and players’ public good. Thus, a major concern is that both the personality theory and Lockean paradigms begin with the premise that through sole creation of the trade mark, its holder has established ownership. In the original position, according to these models, all property rights belong to the trade mark holder. It is only second-in-time concern with the making of individual selves or common good that legitimizes limiting those rights (Wilf, 1999).

The model posited here is an alternative in which private game developer trade mark rights are limited from the very beginning and players virtual marks are allowed to flourish. This model is founded upon both a personality theory and a labour theory for creating intellectual property. But there is a major point of departure. Even as these other paradigms limit certain private entitlements they remain highly individualistic: it is the individual identity at stake in the personality theory and the first-in-time individual acquisition in the Lockean labour theory. The player authorship model, however, addresses the question of collective identity. It is the collective personality of culture that participates in the authorship of trademarks and that act of collective labour establishes a stake to trade mark symbolism contemporaneous with any private claims (Ibid).

This is noteworthy for a number of reasons. First, it recognizes an overlooked role of the public, i.e., game player, in creating property rights. Proprietary rights of tangible goods such as manufactured objects are usually assigned to the person who controls the means of production. In intellectual property, the stakes are cultural and more personal; and it may make a more convincing argument about the costs of property alienation. Second, a public authorship model transfers the burden of claims. No longer is it on the public (game player), but rather, back on the private enterprise who is seeking trade mark protection. Under a personality theory of property, an individual must demonstrate the personal loss entailed as a result of deprivation of certain kinds of property. A Lockean labour model limits ownership only through demonstrable disadvantage to the commons. Here, however, the public does not have to prove harm. Instead, it is the trade mark holder’s proprietary claims that are limited from the start because of the public (game players’) contribution in creating the mark.

The third reason for a public authorship model is practical. The model carves out a public stake in all trademarks. Not simply those marks that are charged with status/personal meaning or those that might threaten the cultural or linguistic domain, but the over-all regulation of trade marks by the public is justified as a compelling public purpose. The creators of virtual trademarks must be able to have some control over their marks. Even according to classical trade mark doctrine, public regulation of trademarks varies with the distinctiveness of the mark. There is always a core public interest that cannot be lost. Nor should this core interest disappear in virtual worlds.

5. Is there an author for a trade mark?
The question of trade mark authorship has often gone unnoticed through cultural routine. Trademarks are bound to a commercial context, functional (identifying a product) rather than primarily creative, and practical rather than an expressive elaboration of ideas and sensibilities. Just as one imagines an author writing in a picturesque Edinburgh cafe rather than in the Mall of America, Nebraska, such authorship seems an unusual question for commercial language such as trademarks. Yet a trade mark is a creature of symbolic language. Like any other symbol or text, trademarks do not simply appear out of thin air. They are authored. But what does that mean for a mark rather than a book?

Authorship is not a simple concept for either trademarks or the literary realm of copyright. Take the debates currently raging in copyright scholarship. Authorship, they argue, is a cultural construction.7 What makes an author? Do not some “authors” (even Shakespeare) stitch together texts from pre-existing plots? Or even borrow characters and scenes whole cloth from other narratives? Why should certain kinds of expression, like literary production, be privileged above other types? (Jaszi, 1988).

These questions strike at the heart of assigning special legal privileges that restrict the use and distribution of written texts. If authorship is elusive in copyright, however, it is even more so in trade mark. While copyright has its classic image of the literary author and patent law its notion of an inventor, trade mark is established simply through commercial use.

However, one should compare the role of authorship in trade mark and copyright. Peter Jaszi, in his critique of the pervasive copyright doctrine that the author is central role to copyright, traced the rise of this privileged concept to the 18th-century origins of copyright doctrine (Jaszi, 1988). The Romantic Movement was noted for emphasizing the understanding that individual works are the expression of an individual self. It created the myth of the author as transformative genius (Woodmansee, 1992). Jaszi (1991) has argued that such a notion of the author is a stalking horse for economic interests that dominate intellectual production at the expense of the public (Rose, 1988).

Contrary to Jaszi’s article Toward a Theory of Copyright, this article looks ‘to re-spawn’ the idea of the author in trademark and to infuse a greater role for the public (game player) domain. The idea of authorship presented here differs considerably from the traditional Romantic understanding of the author as dominant creative force. Trade mark cannot be lumbered with mythic notions of authorship in the same way as a great work of literature or art. As Justice Holmes remarked, a trade mark cannot be compared to Milton’s Paradise Lost (Chadwick v. Covell, 23 N.E. 1068, 1069 (Mass. 1890)). Indeed, the public authorial role in trade mark is much closer to the Court’s definition of authorship as enumerated in Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884): “he to whom anything owes its origin …”(see also, Feist Publications v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991)) Trade mark originates from a linguistic partnership of consumer/interpreter as well as producer/writer.

5.1. Author as creator
Trade mark has become less a matter of invention or design of a sign than the association of a mark with a particular object. Association occurs in two stages. The first stage involves a producer connecting a sign with an object. It may be placed upon the object as a label or incorporated into its over-all design. The second stage occurs when that association is recognized and invested with meaning by the public as an interpretive community.8 Following association of the object with the sign there is a third stage where the object-sign association is contextualized within a broader cultural context. As will be examined below, the public power of association plays a pivotal role in a number of trade mark doctrines such as the establishing of secondary meaning.

Who makes a mark is not an idle question. Intellectual property rights are often founded upon a right to the product of one’s own labour that begins with an act of creation. The Lockean notion that creators should be rewarded with just desserts has been enshrined in natural rights arguments for the protection of intellectual property rights against free riders. In the words of Justice Brandeis, a person or corporation should not “reap where it has not sown.”(International News Service v. Associated Press, 248 U.S. 215, 239 (1918) (Brandeis, J., dissenting)) Ownership of intellectual property generally relies upon claims to creation or the transfer of those claims. Regardless of whether the writings remain locked away in a study drawer, like those of Kafka, or lack any economic utility whatsoever, intellectual property rights are linked to authorship (Becker, 1977; Waldron, 1988; Port, 1993; Landes and Posner, 1987; Denicola, 1984; (asserting that the collection of information warrants copyright because of a labour theory of just desserts Brennan, 1993; for an attempt to construct an economic fair use rationale, see Gordon, 1982.)

A redefinition of the public role in making trade marks is needed in order that interpretation will be incorporated into the act of creation. There are two approaches: (1) new understandings of the meaning of authorship found in reader-response theory, and (2) new understandings of the meaning of consumption and language drawn largely from the work of Bourdieu (1991). These approaches perceive cultural forms as constructed through interpretive interaction. Reader-response criticism emphasizes the convergent relationship between the beholder and the work. It views readers as actualizing a text and becoming co-producers of that text through interpretation. The idea of the text encompasses its reception as well as the language composed by the writer.
Here it will be argued that the public, both the virtual businesspeople and the virtual consumers, form an interpretive community whose reading of trade mark symbolism casts it in the role of creating authorial-like meanings about the mark itself. Bourdieu positions language within a social context. All language consists of words and a linguistic context which informs how those words are defined. For Bourdieu language is contextualized meaning. It is not static nor an idealized dictionary full of words, but a dynamic exchange of signs, interpretations with its meaning shifting from one context to another. (Id.)

5.2. Investing in a symbol
Authorship in trade mark can be redefined to include a public act of interpretive association precisely because it lacks the idea of individual authorial/inventive production that lies at the centre of other intellectual property regimes. The U.S. Constitution established federal regulation for patent and copyright “to promote the progress of science and useful arts by securing … authors and inventors the exclusive right to their respective writings and discoveries.” (U.S. Const. art. 1, cl. 8) While acknowledging the practical need to encourage investment in literary and scientific expression, this provocative use of the possessive pronoun implies that copyright and patent may protect intellectual creations for the sake of the creator himself (Wilf, 1999).
With a looser connection to authorship, trade mark is not mentioned with patent and copyright. Instead, the U.S. Supreme Court in the Trade-Mark Cases (100 U.S. 82 (1879)) ruled that federal power to regulate trade marks fell solely under the Commerce Clause: “The ordinary trade mark has no necessary relation to invention or discovery.” (Id. at 94) In its decision, the Court made a clear distinction between trade mark law and the author-driven doctrines of patent and copyright. It held that trademarks are established often as the result of accident, not of design; that trademarks take root over a considerable period, not as a result of sudden invention; and that they are not the “fruits of intellectual labour,” unlike copyrights or patents. (Id.)

This notable admission of the problem of authorship in trademarks has gone largely unnoticed. The dilemma comes from two customs. First, there is the identification of right to ownership with creativity. How much creativity is enough to warrant protection?9 Nobel Prizes and Oscars are not awarded for trademarks. Despite Madison Avenue’s self-promotion about creative advertising, no one speaks of a trade mark artist. Fabricating symbols seemed to the Supreme Court in the Trade-Mark Cases as requiring “no fancy or imagination or genius” (Trade-Mark Cases at 94) and as too simple a task to “legitimize an entire intellectual property regime.”(Id.)
The second rights argument justifying intellectual property is based upon labour. A large expenditure of intellectual labour is not required to design a label. Here, too, the Trade-Mark Cases Court seemed sceptical, stating that trade mark is “simply founded on priority of appropriation.” (Id.) How much “sweat of the brow” is needed to establish proprietary rights?10 Taking a natural rights approach, however, trade mark must be justified by some form of labour.
If not intellectual labour, then what kind of labour can serve as the foundation for proprietary privileges? How can the rights of the trade mark holder be predicated upon investing labour in symbolic production? The solution has been to shift the notion of labour investment from the actual sign to the good will embodied by that sign. Good will is defined as the willingness of a customer to continue doing business after the first transaction. It is a bit of a semiotic shell game: the consumer object is signified by good will which, in turn, is signified by a trade mark (McCarthy, 1984).

Is it possible to argue that trademarks are institutional publicity rights? (Denicola, 1984; Pollack, 1993) Just because individuals have the right to control the commercial use of their identity, should the identity of products be protected? The identity for trade mark reflects the product itself and the feelings it generates (i.e., good will). Is this an important distinction between publicity rights and trademarks? Publicity rights depend upon the identification of the persona. A celebrity expends considerable efforts to make his or her self distinct. Elton John wears peculiar glasses, Madonna can often be found in lingerie. No prior commercial exploitation of that self is necessary. Good will, however, depends upon the reputation of a product with consumers in a commercial setting. It requires consumer consciousness. This explains why there is a confusion rationale for trademarks but not for publicity. Good will is an identification created by the public.11

On the other hand, is good will authored in the same way as more tangible symbols? The classic understanding of good will is as reputation. While trade mark serves as the marker for how a potential consumer might identify a product, the good will itself is seen as emerging from care in maintaining quality and marketing.

6. The public role in trade mark doctrine
Trademark doctrine demonstrates a notable reliance upon public perception. The power invested in the public is largely associative: the power to identify a sign with an object to the exclusion of others. The following is divided in two sections. Section 6.1 discusses establishing meaning for trademarks and how that meaning might be lost. Section 6.2 explores how associative meaning changes in different linguistic markets.

6.1. Making and unmaking through association
6.1.1. Making trade marks
“Recognition and association are the cornerstones of secondary meaning.” (SmithKline Bachman Corp. v. Pemex Prods. Co., 605 F. Supp. 746, 750 (E.D.Pa. 1985) “Secondary meaning,” wrote one appellate judge “has been defined as association, nothing more.” (Carter-Wallace, Inc. v. Proctor & Gamble Co., 434 F.2d 794, 802 (9th Cir. 1970). See also The American Angus Ass’n v. Sysco Corp., 829 F. Supp. 807, 827 (E.D.N.C. 1993) (stating that “the prime element of secondary meaning is association between the alleged mark and a single source of the product”); Visser v. Macres, 29 Cal. Rptr. 367, 370 (1963) (holding that secondary meaning is acquired when the public “submerges the primary meaning of the name … in favor of its meaning as a word, identifying that business.”) McCarthy, 1984); In the United Kingdom a trader would have to show that the word has become ‘distinctive in fact’ or has taken on a ‘secondary meaning’ (Reddaway v. Banham [1896] AC 199; Wadlow, 1999). Almost no other element of trade mark doctrine so embodies the idea of establishing text through association and so underscores the public role in authorship. Unlike distinctive marks like “Kodak,” suggestive marks require secondary meaning to become descriptive marks. For example, a dish washing soap called “Pleasant-detergent” requires further association to transform the descriptive term “pleasant” into a particular product name. (See Clinton Detergent Co. v. Procter & Gamble Co., 302 F.2d 745 (C.C.P.A. 1962).) It may be defined as the association by the consuming public of a once independent word/symbol with a product that transforms the word/symbol into a distinctive mark. Producers must speak to the consumer through associative language of symbol/object. The consumers must see the disassociated symbol as invested with meaning, even where the object is not present (Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 820 (9th Cir. 1980); Edge & Sons v. Gallon & Sons [1900] RPC 557; Peter Waterman v. CBS [1993] EMLR 27). British examples of descriptive words that have acquired secondary meaning would include: “Flaked Oatmeal” (Parsons v. Gillespie [1898] AC 239 (PC)); “Malted Milk” (Horlick’s Malted Milk Co. v. Summerskill (1916) 33 RPC 108); and “Mothercare” (Mothercare v. Penguin Books [1988] RPC 113, 115) for clothing for expectant mothers and children.

Trademark creation is a two-step process. First, a producer affixes a symbol to the product. In the virtual world, it may be that Jedi Joe affixes two swooshing Js to the light sabres he produces. Second, the public associates the symbol with the product. All the superior Jedis want to acquire a light sabre with the swooshing Js because they are better made light sabres. They would then be called JJs. The producer affixing a symbol might be called primary meaning while secondary meaning embodies the idea of public association. This association takes place in the midst of a market where linguistic exchange parallels the transfer of goods (Coca-Cola Co. v. Seven-Up Co., 497 F.2d 1351 (C.C.P.A. 1974) (holding that “Uncola” lacks linguistic meaning until acquired in marketplace)). Both the producer and the consuming public are joint authors.

Although recognition in addition to first-in-time use by a manufacturer or marketer should be necessary to establish the suitability of a trade mark, secondary meaning does not address utilitarian rationales for trade mark doctrine including commercial regulation and potential injury coming from the use of the mark (Carter, 1993). Traditional fraud or passing off claims can be used to regulate commerce while misappropriation doctrine would grant relief for injury to the trade mark holder. An argument can be made that secondary meaning demonstrates a trade mark’s worth to the public and, therefore, justifies the cost of employing legal resources to protect it. But why, then, is it not a requirement for fanciful marks. There is no reason why a product called “Xystal” should not warrant the same protection as one labelled “Mr. Clean.”12
A return to natural rights theory is needed to explain the doctrine of secondary meaning. Secondary meaning recognizes that the public is granting a right through its creative association of the object with the mark. As Justice Stevens has stated, “language, even in a commercial context, properly belongs to the public ….”(Park’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 215 (1985) (Stevens, J., dissenting)) On the whole, the association must be in the mind of the general public, so that it is not normally legitimate ‘to slice the public into parts.’(Peter Waterman v. CBS [1993] EMLR 27) This solution assumes a substantial permanent alienation of part of the public’s linguistic-symbolic heritage. It would be difficult to later return and claim harm due to loss of that piece of common culture.

Secondary meaning might also be seen as the construction of a new word from a number of sources including a pre-existing English word, a product with its affixed label fabricated by a producer, and the interpretive associational power of the public (Wilf, 1999). According to Locke, if language is a symbolic representation of an idea, then descriptive trademarks do not take language but draw upon it for marketing. The “pleasant” of the dish detergent company simply looks like the common word “pleasant” in English. But pleasant may evoke very different images, from a Sunday dinner to a ride in the country. Prior to the introduction of this particular dish soap, no one would associate pleasant with washing dishes. But that is precisely the point. The mark is really a newly created symbol constituted by a tightly bound sign-product association (Antec International v. South Western Chicks (Warren) [1997] FSR 278; [1998] FSR 738, 734–4).

The two words, then, are “pleasant” (English term representing enjoyment) and “Pleasant-detergent” (commercial term for a particular kind of dish soap). The sign “Pleasant-Detergent” would be conjured up in advertising, attached to a product, or tossed about within market settings. This suggests the limits of public alienation of its creation. “Pleasant-Detergent” is not a Lockean res nullius, an un-owned piece of property. It was created by the public association of a pre-existing word and an already owned object. Unlike fanciful or arbitrary names like “Kodak” or “Exxon,” it was not the result of a sole party’s labour. Thus, under Lockean natural rights theory, public entitlement of this newly coined phrase should be retained for use outside of its single commercial association. On occasion, courts have employed arguments that resonate with Lockean logic. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317 (C.C.P.A. 1981) recognized the importance of “free use” of language. Whereas the court in Bada Co. v. Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir. 1970) held that one “competitor will not be permitted to impoverish the language of commerce by preventing his fellows from fairly describing their own goods”. Every kind of intellectual property requires participants, users, to acquire value. What makes trademarks different is that they require participants to acquire meaning.

Compare the linguistic association devised for descriptive marks with suggestive marks. Descriptive marks convey an immediate idea of the product. “Wheaties” consists of wheat, “Oatnut” is bread made of oats and nuts (In re Entenmann’s Inc., 15 U.S.P.Q.2d (BNA) 1750 (P.T.T.A.B. 1990)). “Oven Chips” is for potato chips to be cooked in the oven rather than fried (McCain International v. County Fair Foods [1981] RPC 69). “Pentomino” is a domino with five sides (Golomb v. Wadsworth, 592 F.2d 1184 (C.C.P.A. 1979)). Suggestive marks require “thought and perception to reach a conclusion as to the nature of the goods.” (Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir. 1976) (quoting Stix Prods., Inc. v. United Merchants & Mfgs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968))) The inquiry in relation to used marks is exclusively concerned with customer perception: the needs of other traders are irrelevant (Windsurfing Chiemsee Produktions v. Attenberger, C-108 and 109/97 [1999] ECR I-2779, I-2829 (para. 48)). “Chicken-of-the-Sea” is only suggestive because one might not necessarily conjure up an image of tuna without a leap of imagination. It might be expected that greater imagination would lead to a larger public role in the creation of suggestive marks.13 The imaginative leap then is really made by the producer, and the public simply follows suit. The producer is the one who calls suntan lotion “Coppertone,” creating a linguistic association that might enrich the cultural commons (Douglas Lab. v. Copper Tan, Inc., 210 F.2d 453 (2d Cir. 1954)). It follows according to Lockean natural rights to reward the suggestive mark with stronger initial protection against other commercial entities than a descriptive trade mark.

Association still needs to be recognized by the public, and the public should retain its entitlement for non-market uses. Descriptive marks borrow heavily from the linguistic commons and require public recognition through secondary meaning before warranting commercial protection. On the other hand, suggestive and arbitrary marks warrant early protection from commercial interference because they are based upon either linguistic (arbitrary marks) inventiveness (Nynex for New York Telephone) or imagistic inventiveness (associating the colour of tanned skin with the burnished colour of metal that is reminiscent of the Bronze Age). Arbitrary or suggestive marks take on additional cultural meanings through use. In no cases can the public fully alienate linguistic creation from the Lockean cultural commons once it has entered common usage.
Public entitlement for trade mark is based upon two principles. First, certain public traditions, like descriptive marks, take on commercial meaning through public association. Second, in arbitrary or suggestive marks, producers take upon themselves a larger role in their commercial creation. After being exchanged as commercial entities, these become part of the Lockean cultural commons. The fanciful mark “Oreo” was introduced into the commercial sphere as the name of a cookie. But African-Americans adopted it to refer to those who are black on the outside, white on the inside. In that form, the word is fully part of the cultural commons.

Finally, there are marks which cannot be made commercial because their cultural meaning is either collective or their use would be so offensive to the collective. Both the Lanham Act (15 U.S.C. §1052–72, 1091–96, 1111–27 (1994)) and the Trade Mark Act of 1994 s 3 prohibits registration of a number of types of trade marks on the basis of content. These prohibitions include purely descriptive marks (§1052(e) (1) (1994); TMA s 3(1) (b)), and marks that are primarily surnames (§1052(e) (4) (1994)). In the UK, traditionally surnames have been considered to be non-distinctive and thus unregisterable (Elvis Presley Trade Marks [1997] RPC 543, 558). The OHIM has not adopted the practice of objecting to surnames as being ‘devoid’. This is changing. Now when determining whether a surname is distinctive, the Registry and courts have taken into account how common the surname is (Fantastic Sam’s Service Mark [1990] RPC 531, 532). Sam which appeared only 13 times in London Telephone Directory was considered not a surname. (see also, Nichols Plc v. Registrar of Trade Marks (C-404/02) (Unreported, September 16, 2004) (ECJ)) and geographic names if the secondary meaning exception cannot be met (§1052(e) (3) (1994); TMA s 3(1) (c)). Moreover, both Acts exclude registration of “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” (§1052(a); see also TMA s. 3(3) (a); see also, the mark “Tiny Penis” was refused in Ghazilian’s Application (2001)) These limitations express the problem of associating a symbol/name with meaning if meaning already exists. For example, surnames are arbitrary designations for an individual. This person is called Abercrombie rather than Fitch. In a sense, then, Abercrombie is a trade mark for persons, shared within an exclusive semi-public domain by everyone named Abercrombie. The number of people with that name may increase (Abercrombies pass down the mark to their children or share with a spouse or Fitches may change their name to Abercrombie) but it is applied solely to this limited set of individuals. Different Abercrombies are distinguished in a variety of ways. There is Alexander Abercrombie, Bertram Abercrombie, the Abercrombie from New York, the Abercrombie from Glasgow, Abercrombie the professor, and Abercrombie the insurance salesman. Because human beings are singular and found within local settings there is little confusion (though occasionally one has to resort to middle names for someone with the common appellation of Smith) (Wilf, 1999).

The association is between person and name. By using it as the designation for a product requires taking it away from its sole connection to individual identity and attaching it to a physical object. Such a re-association is legitimate because the naming of the self is really one communicative channel and the association with a commercial product is another. In the case of celebrities, however, the name has become commercialized (Harrington, 2005). Self and the commons have intermingled. It therefore would be prohibited to name a perfume after Elizabeth Taylor while there would be no problem using a name already in currency for an ordinary individual. For ordinary persons, the name is arbitrary or fanciful (this individual is an “Abercrombie”) but for products it becomes a descriptive term (Abercrombie’s may be translated as the restaurant owned by Abercrombie). Consequently, secondary meaning is required to re-establish this new association.

A public role is also required because the extension of the Abercrombie name to a restaurant encroaches upon the entitlement of every other Abercrombie. Another member of the Abercrombie family would be barred from opening a restaurant with the same name in the city. For example, Joseph Gallo (brother of the Gallos who own Gallo Winery) was prohibited from using his surname on packaged cheeses) (See, E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280 (9th Cir. 1992)). Unlike surnames, there is no secondary meaning requirement for historical names. While Michelangelo will be unaffected by a paint store named in his honour, the entitlement of everyone bearing the Abercrombie name diminishes if it is called Abercrombie. A secondary meaning requirement means that public use of language (its perception and associational power) trumps limited group entitlements to names.14

6.1.2. Unmaking trade marks
Nothing underscores the authorial power of public association more than its ability to unmake trademarks. By becoming generic, aspirin, cellophane, thermos, linoleum and other trademarks have lost their distinctive meaning. (Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921); DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75 (2d Cir. 1936); Linoleum Manufacturing Company v. Nairn (1878) 7 Ch D 834, 836; Stern, 1983) Thermos, once a specific trade mark, was applied to other vacuum-sealed containers that keep liquids at a constant temperature (King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963). Public association of a mark with a broad variety of similar products means that a sign or symbol becomes part of a public domain. But it is not a sudden transfer of rights from a private holder of the trade mark to a linguistic commons. For example, the first holder of “Shredded Wheat” only had “de facto secondary meaning.” (Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119 (1938); Canadian Shredded Wheat Co. Ltd v. Kellogg Co. of Canada Ltd (1938) 55 RPC 125; Shredded Wheat Co. Ltd v. Kellogg of Great Britain (1940) 57 RPC 137) The Supreme Court held that the mark was generic (Kellogg at 117). This means that the public never associated the symbol with the object of a particular producer but merely with the general type of goods. At the time Shredded Wheat was produced by just one company, the name referred to that company alone. As other companies began to produce similar cereal biscuits, there was no particular or distinct association with the producer to prevent that association from spreading to all makers of the same sort of products. (Id. at 120; DuPont at 81 (holding that no matter how much money was spent in marketing to ensure that cellophane would not be deemed generic, “so far as it did not succeed in actually converting the world to its gospel, it can have no relief”).

6.2. Meaning in context
This article has argued that the authorial role of the public has created a public domain. Authorship legitimizes the public power to determine what will or will not be a protected trade mark. It is established through association. This section will contrast competing doctrines being developments in trade mark law. One development challenges the emphasis on public-derived meaning and the other seeks to deepen that meaning through contextualizing it within a linguistic market.

The creation of secondary meaning and the use of inherently distinctive trade dress have both come under attack. Sometimes secondary meaning cannot be proved because a product is in an early stage of marketing (Marcus Publishing v. Leisure News [1990] RPC 576, 584). Holders of trademarks have argued for secondary meaning in the making in order to claim injunctive relief. Secondary meaning in the making is defined as a presumption that meaning will develop in the future (Id.; National Lampoon, Inc. v. American Broadcasting Co., 376 F. Supp. 733 (S.D.N.Y. 1974); McLean, 1993; Bryant, 1989 ). There is no requirement to demonstrate how the mark is presently perceived by the public. Secondary meaning in the making is largely based upon the intent of the person who seeks exclusive use for a trade mark (Salvatore Ferragamo Italia SpA, R 254/1999-1 (14 Apr 2000)). Salvatore Ferragamo sought registration of a bow which it had used on its shoes for the previous twenty years. While there was plenty of evidence of use, and of advertising in elite magazines, it was by no means evident that the ordinary purchasers of shoes would have been familiar with the mark. (Id.)

As one judge has pointed out, secondary meaning in the making is “focused solely upon the intent and actions of the seller of the product to the exclusion of the consuming public.” (Black & Decker Mfg. Co. v. Ever-Ready Appliance Mfg. Co., 684 F.2d 546, 550 (8th Cir. 1982)) Secondary meaning in the making relies upon the intent of the producer. Are there plans to invest in advertising? Will the product be marketed soon? A large chasm stands between marketing and public cultural meaning.

The second doctrine I wish to discuss, inherently distinctive trade dress, relies upon a reading of the product itself. In the case of Two Pesos v. Taco Cabana Int’l Inc., 505 U.S. 763 (1992), the Supreme Court examined whether trade dress infringement could be found without a determination of consumer confusion. Two Mexican eating establishments shared a similar menu, floor plan, and interior decor. The restaurants were built around patios and were decorated with murals. Both used bright, festive colours. Finding that the decor of the first restaurant was “inherently distinctive,” the Court held that the first restaurant was unique enough that questions of secondary meaning were irrelevant. (Id.) Such analysis reduces secondary meaning into something of contingent importance. Chevron Chem. Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695 (5th Cir. 1981), required a demonstration of secondary meaning only when it was determined that the trade dress was not sufficiently distinctive. How distinctive is distinctive enough is hard to show as seen in Publications Int’l, Ltd. v. Landoll, Inc., No. 98-1490, 1998 U.S. App. LEXIS 31382 (7th Cir. 1998). “Courts have struggled to articulate a standard for when a trade dress is sufficiently distinctive to be entitled to the prima facie protection of the Lanham Act.” (Id.)

A similar but slightly different phenomenon has occurred in the United Kingdom, the problem of look-alikes. The British Producers and Brand Owners Group (destined to become known by the unattractive acronym, BPBOG)15 mounted a powerful lobby for the inclusion in the Trade Marks Bill of specific protection against look-alikes.16 The British Retail Consortium (BRC) joined forces with the National Consumer Council and the Consumers’ Association to mobilize the opposition.17 J. Sainsbury plc., the United Kingdom supermarket giant, seized the opportunity to launch its own “Classic Cola” in red and white cans retailing at a price a quarter less than “the real thing.” The mighty wrath of The Coca-Cola Company was incurred,18 but Sainsbury had succeeded in significantly increasing its market share of cola sales in-store.19 The Trade Marks Bill, originally described as “technical and not at all party political,”20 captivated the public interest on soap opera scale.

Despite the remarkable level of support commanded by the brand owners’ plight, especially in the House of Lords, the United Kingdom Government remained steadfast in its rejection of the desired look-alike amendment to the Trade Marks Bill. Instead, the increased scope for protection of trademarks under the new Act must be given a chance to work. The issue of look-alikes might have to be revisited at a subsequent time, but the government refused to be drawn on the questions of when and how.21

This decision places at risk the traditional public role in making trademarks. Both secondary meaning in the making and inherently distinctive arguments have been questioned by courts and scholars. They are seen as handing advantages to existing trade mark holders that crowd out new entrants (Carter, 1993; Black & Decker at 546). More importantly for the argument here, they strip away the public role in making trademarks. These doctrines see the trade mark holder as the sole author. Yet the idea of assuming public reaction based upon marketing is very troubling. Without the association of the trade dress with a symbol identifying the source, how can there be secondary meaning and, consequently, likelihood of confusion? (Laureyssens v. Idea Group, Inc., 768 F. Supp. 1036 (S.D.N.Y.), aff’d in part, vacated in part & rev’d in part, 964 F.2d 131 (2d Cir. 1992)).

In Two Pesos, Justice Thomas claimed that “the first user of an arbitrary package, like the first user of an arbitrary word, should be entitled to the presumption that his package represents him without having to show that it does so in fact.” (505 U.S. 787. Sainsbury averted litigation by changing the script on their cola cans.) Yet as has been shown above, trade mark common law has commonly held that representation of descriptive marks requires the acknowledgment of an outside viewer. As Locke suggested, a person can claim to invent a word but unless that linguistic change takes hold, it is meaningless. Justice Thomas confused claims and meaning.
Secondary meaning in the making and inherently distinctive arguments are non-contextual. These doctrines understand trademarks or trade dress as symbols outside of a context of communication between producer and consumer. Focusing upon intent of the producer (secondary meaning in the making) or distinctiveness of product (inherently distinctive) is tricky. Just because a producer intends or even takes action to market a product does not mean that this attempt will be successful. The doctrine of generic trademarks is an example of the thwarting of producer intent (TMA s 3(1) (d); Article 7(1) (d) CTMR).

The Court in Two Pesos did not examine the differences that might arise from trade dress for a service (where face-to-face contact takes place) as opposed to an object nor did it ask whether Mexican decor is not a logical direction for any Mexican restaurant to follow. Without reference to the public, the decision in Two Pesos only protects the holder of the mark, not the public, from commercial confusion. The intent examined should be that of the individuals seeking to follow the lead of the first holder. Is this a conscious attempt to copy a successful business venture? Is free-ridership intended? If this was the case, a bad faith action could be initiated (TMA s3(6); §1051(d) (1)). For questions of distinctiveness, the understanding of the public should determine whether products are distinctive enough, not an objective standard. The objective standard of Two Pesos concentrates on the “total image of the business.” (Two Pesos at 765).

Yet distinctiveness for an interpretive community might very well lie in the details. Perhaps the wearing of large Sombreros by waiters or even serving a dish as a specialty of the house is sufficient to set off one restaurant from another. There is no objective standard for the cultural distinctions found by consumers. (Compare id., with Haagen-Dazs, Inc. v. Frusen Gladje, Ltd., 493 F. Supp. 73 (S.D.N.Y. 1980). In Haagen-Dazs, the court stated that the plaintiff did not have an exclusive right to a unique marketing theme. These cases constitute inherently distinctive approaches to the copyright doctrine of substantial similarity.) Not only has this article tried to argue for a broader understanding of authorship (including the public as well as the producer who determines the packaging), but also for a more dynamic definition of a trade mark.

A trade mark is not simply a phrase or symbol or trade dress. It is not what might be thought of as a word of sorts. Instead, it is the product of an act of dynamic communication. Two types of association have been described above: (1) initial meaning, where the producer affixes a sign to a package, and (2) secondary meaning, where the public associates sign and product as connected. What will be proposed now is a third kind of association: tertiary meaning. The tertiary meaning is the placing of a sign-symbol in a context (Wilf, 1999).

A publisher could affix the phrase “red book” to a particular work. When a reader sees a reference to this red book, the reader only thinks about Chairman Mao. Yet much later that reader comes across a plum book. The Plum Book describes legal jobs available in the federal government. This book has little to do with Mao’s reference (he might even be horrified by any suggestion of similarity) other than perhaps playing on the idea of a coloured cover. The plum is a pun on plum jobs. In the context of tertiary meaning the Plum Book is completely distinct from Mao’s Red Book. (Id.)

Contexts come in a variety of forms. It is possible to divide the contextual use of language into three kinds: (1) to whom said? (2) about what said? (3) how said? (The question of multiple linguistic markets based upon differing sophistication and expertise has not been addressed here. Children, for example, are much more susceptible to confusion. Professional, well-educated consumers are less likely to blur distinctions. See Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 702 F. Supp. 1031 (S.D.N.Y. 1988)) When someone says “how are you” to a critically ill friend it has a very different meaning than when it is said to a stranger in passing. When speaking about a coffee as robust, it means something very different than talking about an Olympic athlete. Or, finally, when someone says “you need killing,” it means something very different if said in a context of humour or anger. The lion of Dreyfuss investment services is not the same as the cowardly lion of the Wizard of Oz. (Dreyfus Fund Inc. v. Royal Bank of Canada, 525 F. Supp. 1108, 1117 (S.D.N.Y. 1981); see also, General Motors Corporation v. Yplon, Case C-375/97 [1999] 3 CMLR 427, 443 (para. 22 & 23) (regarding the Chevy symbol)) All this seems obvious. But it has been difficult for courts to contextualize language in quite this way.
Some decisions have moved in this direction. The question in Nike v. “Just Did it” Enterprises, 6 F.3d 1225 (7th Cir. 1993), is “to whom said?” A mail-order entrepreneur parodied the Nike t-shirt reading “just do it” with an emblem saying “Mike.”(Id. at 1226. In Anheuser-Busch, Inc. v. Florists Ass’n of Greater Cleveland, 603 F. Supp. 35 (N.D. Ohio 1984), florists used the advertising phrase “this bud’s for you,” with strong references to a Budweiser Beer slogan. The court decided that the difference between flowers and beer markets argued against trade mark confusion.) Advertisements for the shirt were sent only to people with the first name of Mike. Even though the word Mike looked very much like Nike from a short distance, the court held there was no confusion. Writing only to a discrete population and only through the mail, trade mark as contextualized language was spoken only to certain people (Nike, 6 F.3d at 1230). The trade channels were substantially different. (Id.)
On the other hand, courts confuse the “to whom said?” For example, in Playboy Enterprises v. Chuckleberry Publishing, 486 F. Supp. 414 (S.D.N.Y. 1980), Playboy required an injunction against the publishing of a voyeuristic magazine entitled “Playman.“ (Id. at 418) Playboy had failed to act against other publishing ventures like Playgirl, an analogous erotic magazine directed towards women. (Id. at 421) The case could have been adjudged applying the crowded field doctrine wherein surrounded by numerous similar marks, a trade mark cannot be very distinctive. However, the court concluded that Playboy was aimed at a heterosexual market and would be recognized amongst competing signs meant for heterosexual men. (Id.) Here, unfortunately, context was drawn in a terribly narrow fashion.
Scottish Whisky Ass’n v. Watson, 958 F.2d 594 (4th Cir. 1992), tackled the question of “about what said?” Black Watch Scotch was produced in America but every attempt was made to associate it with Scotland. (Id. at 598) Its label bore the regimental badge of the Scottish Black Watch Regiment, thistles, and the word “Highlands.” (Id. at 595) It spelled “whisky” without an “e” as is the case for Scottish whiskeys, not with an “e” as is the usual usage for American produced liquors. It was alleged that the product caused deceptive confusion, and consumers would think that the liquor actually came from Scotland. (Id. at 596) Yet the context (and the tertiary meaning) was meant to be evocative of Scottish liquor, not Scotland itself. The court decided against confusion. (Id.)
A third case, Jordache v. Hogg Wylde, Ltd., 625 F. Supp. 48 (D.N.M. 1985), deals with the context of “how said?” The court concluded that humorous speech was different from serious speech even if both were commercial. (Id. at 50) Jordache designer jeans, intended for those with skinny figures, were parodied by a company manufacturing jeans for fat women. (Id.) These pants were called “Lardashe.” The delicate horse insignia of Jordache was replaced with a garish pig-pocket. Swine, in general, were the theme of this company’s marketing. (Id.) The court found that the use of humour established a completely different context. (Id. at 51) The humorous quality of parody created an associational rift between Jordache and Lardashe so that the use of a mocking trade mark was “not likely to create in the mind of consumers a particularly unwholesome, unsavoury, or disagreeable association.” (Id. at 57) It dismissed claims of misappropriation or dilution. The association of lardashe-to-humour was greater than that of lardashe-to-Jordache. (Toho Co. Ltd. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981) (allowing use of garbage bags called Bagzilla after the lizard character Godzilla); Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112 (2d Cir. 1984) (allowing the game Donkey Kong as a parody of King Kong); John W. Carson v. Here’s Johnny Portable Toilets, Inc. 698 F.2d 831 (6th Cir. 1983) (allowing the parody use of identifying phrase for toilets); Girl Scouts of the United States of America v. Personality Posters, Mfg. Co., 304 F. Supp. 1228 (S.D.N.Y. 1969) (allowing a poster of a pregnant Girl Scout with the Girl Scout phrase “Be Prepared”).
Association means authorship and context points to meaning. Within trade mark doctrine, the material to construct a public domain is possible. During the moment of associational creation, the public allows for certain kinds of trade mark privileges. The public never alienates symbols or words from the Lockean commons because to do so would be to lose touch with a collective self.
7. We have met the author and she is us
This article has set forth a characterization somewhat different than the usual depiction of trade marks. Trademarks viewed not as a word or symbol but as an association of an object with a sign. Trademarks authored not by the production/marketing of an object in its package but by a joint interpretive enterprise between author and public. Trademarks not interpreted alone but in a linguistic context. The purpose behind this reinterpretation is to carve out a public entitlement for trademarks.
This reinterpretation requires a rethinking of the very definition of intellectual property. The accent has been placed on the “intellectual,” rather than the “property”. The public should (and some would argue, must, as a political imperative) retain a robust role in shaping expression. If, as Jennifer Nedelsky suggests, legal notions of property have created the bounded self (Nedelsky, 1990), then intellectual property can serve as a model for an unbounded, collectivist self. This is an important position with regard to virtual worlds and the collectivist self found in them. Trademarks, as signs of a material culture embedded in everyday life, are clearly found in these virtual worlds; probably more so than in the real worlds. Its abstraction of symbol as representing a relationship, its reliance upon public readings, its ability to seep into the many corners of our lives makes trade mark, as paradigmatic of intellectual property as a whole, a means for connecting disparate selves (Wilf, 1999).
New Republican legal theorists have struggled with the problem of what constitutes a community, often seeking to locate community in discourse (Ackerman, 1984; Fiss, 1982). The argument has been made here for a linguistic or interpretive community. Virtual worlds are foremost linguistic and interpretive communities. These communities should have the collective rights over its cultural creation. The question, ultimately, is one of legal authority. “When I use a word,” said Humpty Dumpty in Through the Looking Glass, “it means just what I choose it to mean – neither more nor less. The question is which is to be the master – that’s all” (Carroll, 2000).
Becker, 1977 Lawrence Becker, Property rights: philosophical foundations, Routledge, Oxford (1977).
Bourdieu, 1991 Pierre Bourdieu, Language and symbolic power, John B. Thompson, Editor, Harvard University Press, Boston (1991) [Raymond Gino, Adamson Matthew, Trans.].
Carroll, 2000 Lewis Carroll, Through the looking-glass, Signet Classics, New York (2000), [reissue].
Damer, 1998 Bruce Damer, Avatars!, Peachpit Press, Berkeley, CA (1998).
De Saussure, 1915 Ferdinand De Saussure, Course in general linguistics, McGraw Hill Book Co., Maidenhead, Berkshire (1915), [Baskin W, Trans.] [reprinted 1974].
Filiciak, 2003 Miroslaw Filiciak, Hyperidentities – post-modern identity patterns in massively multiplayer online role-playing games, Mark J.P. Wolf, Bernard Perron, Editors , The video game theory reader, Routledge, London (2003).
Gaines, 1991 Jane M. Gaines, Contested culture: the image, the voice, and the law, University of North Carolina Press, Raleigh-Durham, NC (1991).
Huhtamo, 1995 Erkki Huhtamo, Encapsulated bodies in motion: simulators and the quest for total immersion, Simon Penny, Editor, Critical issues in electronic media, State University of New York Press, Albany, NY (1995).
Lessig, 1999 Lawrence Lessig, Code and other laws of cyberspace, Basic Books, New York (1999).
Morningstar and Farmer, 1991 Chip Morningstar and F. Randall Farmer, The lessons of Lucasfilm’s habitat, Michael Benedikt, Editor, Cyberspace: first steps (1991) Available from: .
Rehak, 2003 Bob Rehak, Playing at being: psychoanalysis and the avatar, Mark J.P. Wolf, Bernard Perron, Editors , The video game theory reader, Routledge, London (2003).
Rose, 1993 Mark Rose, Harvard University Press, Boston (1993).
Saunders et al., 1992 David Saunders, Authorship and copyright, Routledge, Oxford (1992).
Sherman and Strowel, 1994 Brad Sherman, Alain Strowel, Editors , Of authors and origins: essays on copyright law, Cambridge University Press, Cambridge (1994).
McCarthy, 1984 J. Thomas McCarthy, Trademarks and unfair competition, (2nd ed.), Lawyers Cooperative Publishing Company, Rochester, NY (1984).
Wadlow, 1999 C. Wadlow, The law of passing off, (3rd ed.), FT Law & Tax, London (1999).
Waldron, 1988 Jeremy Waldron, The right to private property, Clarendon Paperbacks, New York (1988).
Woodmansee and Jaszi, 1994 Martha Woodmansee, Peter Jaszi, Editors , The construction of authorship, textual appropriation in law and literature, Duke University Press, Raleigh-Durham, NC (1994).
Ackerman, 1992 Bruce Ackerman, Levels of generality in constitutional interpretation: liberating abstraction. Univ Chic Law Rev, 59 (1992), p. 317.
Beebe, 2004 Barton Beebe, Semiotic analysis of trade mark law. UCLA Law Rev., 51 (2004), p. 621.
Boyle, 1992 James Boyle, A theory of law and information: copyright, spleens, blackmail and insider trading. Calif Law Rev, 80 (1992), p. 1413.
Brennan, 1993 Timothy J. Brennan, Copyright, property, and the right to deny. Chi-Kent Law Rev, 68 (1993), p. 675.
Bryant, 1989 Timothy R.M. Bryant, Trade mark infringement: the irrelevance of evidence of copying to secondary meaning. Nw Univ Law Rev, 83 (1989).
Carter, 1990 Stephen L. Carter, Owning what doesn’t exist. Harv J Law Pub Pol’y, 13 (1990), p. 99.
Carter, 1993 Stephen L. Carter, Does it matter whether intellectual property is property?. Chi-Kent Law Rev, 68 (1993), p. 715.
Castronova, 2003 Castronova Edward. Theory of the avatar. CESifo working paper series no. 863; February 2003..
Denicola, 1984 Robert C. Denicola, Institutional publicity rights: an analysis of the merchandising of famous trade symbols. N.C. Law Rev, 62 (1984), p. 603.
Dibbell, 2003 Julian Dibbell, The unreal estate boom: 79th richest nation on earth doesn’t exist. Wired Mag, (January 2003).
Fisher, 1988 William W. Fisher, Reconstructing the fair use doctrine. Harv Law Rev, 101 (1988), p. 1661.
Fiss, 1982 Owen Fiss, Objectivity and interpretation. Stanford Law Rev, 34 (1982), p. 739.
Ginsburg, 1990 Jane C. Ginsburg, Creation and commercial value: copyright protection of information. Columbia Law Rev, 90 (1990), p. 1865.
Ginsburg, 1992 Jane C. Ginsburg, No “Sweat”? copyright and other protection of works of information after feist v. rural telephone. Columbia Law Rev, 92 (1992), p. 338.
Gordon, 1982 Wendy J. Gordon, Fair use as market failure: a structural and economic analysis of the Betamax case and its predecessors. Columbia Law Rev, 82 (1982), p. 1600.
Gordon, 1990 Wendy Gordon, Toward a jurisprudence of benefits: the norms of copyright and the problem of private censorship. Univ Chic Law Rev, 57 (1990), p. 1009.
Harrington, 2005 Dan Harrington, Registration of surnames as trade marks: UK registry changes practice following ECJ’s decision in Nichols. S.L.A. & P., 8 (2005).
Hesse, 1990 Hesse Carla, Enlightenment epistemology and the laws of authorship in revolutionary France, 1777–1793. 30 Representations. 1990;109..
Hughes, 1988 Justin Hughes, The philosophy of intellectual property. Ga Law J, 77 (1988), p. 287. | View Record in Scopus | | Full Text via CrossRef | Cited By in Scopus (10)
Jaszi, 1988 Peter Jaszi, Who cares who wrote “Shakespeare”?. Am. Univ Law Rev, 37 (1988), p. 617. | View Record in Scopus | | Cited By in Scopus (14)
Jaszi, 1991 Peter Jaszi, Toward a theory of copyright: the metamorphoses of authorship. Duke Law J, 41 (1991), p. 455. | View Record in Scopus | | Full Text via CrossRef | Cited By in Scopus (16)
Jaszi, 1992 Peter Jaszi, On the author effect: contemporary copyright and collective creativity. Cardozo Arts Ent Law J, 10 (1992), p. 293.
Johnson and Post, 1996 David Johnson and David Post, Law and borders – the rise of law in cyberspace. Stanford Law Rev, 48 (1996), p. 1367.
Landes and Posner, 1987 William M. Landes and Richard A. Posner, Trade mark law: an economic perspective. J Law Econ, 30 (1987), p. 265.
Lastowka and Hunter, 2004 F. Gregory Lastowka and Dan Hunter, The laws of the virtual world. Calif Law Rev, 92 (2004), p. 1.
Lastowka, 2005 Greg Lastowka, The trademark function of authorship. Boston Univ Law Rev, 85 (2005), p. 1171.
Madow, 1993 Michael Madow, Private ownership and public image: popular culture and publicity rights. Calif Law Rev, 81 (1993), p. 125.
McLean, 1993 Willajeanne F. McLean, The birth, death, & renaissance of the doctrine of secondary meaning in the making. Am Univ Law Rev, 42 (1993), p. 737.
Mnookin, 1996 Jennifer Mnookin, Virtual(ly) Law: The Emergence of Law in LambdaMOO, . J. Computer-Mediated Comm, 2 (1996) Available from: .
Nedelsky, 1990 Nedelsky Jennifer, Law, boundaries, and the bounded self. 30 Representations. 1990;162.. Full Text via CrossRef
Patterson, 1987 L. Patterson, Ray, free speech, copyright, and fair use. Va Law Rev, 40 (1987), p. 1. Full Text via CrossRef
Pollack, 1993 Malla Pollack, Your image is my image: when advertising dedicates trade marks to the public domain – with an example from the trade mark counterfeiting act of 1984. Cardozo Law Rev, 14 (1993), p. 1392. Full Text via CrossRef
Port, 1993 Kenneth L. Port, The illegitimacy of trade mark incontestability. Indiana Law Rev, 26 (1993), p. 516. Full Text via CrossRef
Post, 1986 Robert C. Post, The social foundations of defamation law: reputation and the constitution. Calif Law Rev, 74 (1986), p. 691. Full Text via CrossRef
Price and Pollack, 1992 Monroe E. Price and Malla Pollack, The author in copyright: notes for the literary critic. Cardozo Arts Ent Law J, 10 (1992), p. 703.
Reich, 1964 Charles Reich, The New Property. Yale Law J, 73 (1964), p. 733.
Rose, 1988 Rose Mark. The author as proprietor: Donaldson v. Becket and the genealogy of modern authorship. 1988;51 [23 Representations]..
Rotstein, 1993 Robert H. Rotstein, Beyond metaphor: copyright infringement and the fiction of the work. Chi-Kent Law Rev, 68 (1993), p. 725.
Schechter, 1927 Frank L. Schechter, Rational basis of trade mark protection, . Harv Law Rev, 40 (1927), p. 813 [reprinted in 60 Trade mark Rep. 334(1970)]. Full Text via CrossRef
VerSteeg, 1993 Russ VerSteeg, Rethinking originality. Wm Mary Law Rev, 34 (1993), p. 801.
Waldron, 1993 Jeremy Waldron, From authors to copiers: individual rights and social values in intellectual property. Chi-Kent Law Rev, 68 (1993), p. 841. | View Record in Scopus | | Full Text via CrossRef | Cited By in Scopus (84)
Walsh, 2004 Mark Walsh, I, Product. Wired Mag, (May 2004). Full Text via CrossRef
Wang, 1990 Elizabeth H. Wang, (Re)-productive rights: copyright and the post-modern artist. Colum-VLA J Law Arts, 14 (1990), p. 261. Full Text via CrossRef
Wilf, 1999 Steven Wilf, Who authors trade marks?. Cardoza Arts Ent Law J, 17 (1999), p. 1.
Woodmansee, 1984 Martha Woodmansee, The genius and the copyright: economic and legal conditions of the emergence of the “Author”. Eighteenth-Century Stud, 17 (1984), p. 425. | View Record in Scopus | | Full Text via CrossRef | Cited By in Scopus (23)
Woodmansee, 1992 Martha Woodmansee, On the author effect: recovering collectivity. Cardozo Arts Ent Law J, 10 (1992), p. 279.
Yee, 2005 Nick Yee, The Norrathian scrolls: real-life demographics, (2005), Available from: .
1This usage of the term was coined in 1985 by Chip Morningstar, a user of the first avatar environment created by LucasFilm called Habitat (Morningstar and Farmer, 1991). Habitat lacked many of the features we have in today’s games such as quests and puzzles. It was more similar to a social MUD in which the interactivity between avatars was the ultimate goal.According to Encarta: Avatar [Sanskrit]: (1) Incarnation of Hindu deity: an incarnation of a Hindu deity in human or animal form, especially one of the incarnations of Vishnu such as Rama and Krishna. (2) Embodiment of something: somebody who embodies, personifies, or is the manifestation of an idea or concept. (3) Image of person in virtual reality: a movable three-dimensional image that can be used to represent somebody in cyberspace, for example, an Internet user.
2Arguing that this non-tangible quality makes it hard to apply classic utilitarian analysis to trade marks. A number of scholars have seen intangible property rights in government licenses. Scholars have also recognized individual liberties to do as one wishes with one’s body. Here it will be suggested that the intangibility of trade marks, and the way they are summoned into existence, invests interpretive powers in the players that create these public property rights.
3“Ultima Online gives you the option to choose your character from a set of templates of traditional professions. You’re certainly not required to build your character from a template, but we highly recommend it for the first-time player. You may create multiple characters on each shard (except the Siege shards), so don’t worry about creating a character you may not like. Using a template for your first character is an excellent way to get a feel for Ultima Online.To create a character from a template, choose the ‘Samurai’, ‘Ninja’, ‘Paladin’, ‘Necromancer’, ‘Warrior’, ‘Mage’, or ‘Blacksmith’ option. The ‘Advanced’ option is for those comfortable enough with the UO skill system to build a character from scratch.Once you have chosen a starting profession, you’ll need to customize the ‘look’ of your character. The image you create will be visible to other players in the game whenever they double-click on you. This image is also known as your ‘paperdoll.’ You can specify gender, skin colour, hair style and colour, shirt colour, pants/skirt colour and, if you’ve chosen to play a male character, facial hair style and colour.Your first character will show up with defaults for all of these options, to change them, simply click on the corresponding part on your character. If you click on an item of clothing, you will then be able to select a colour by clicking anywhere in the palette box to the right of your character. If the selected item is a hair style, you will see a drop-down menu appear to the left of your character listing all of the style options. Clicking on one will apply it to your character.When you are satisfied with your appearance, click the small green arrow to continue.” http://www.uo.com/newplayer/newplay_0.html.
4Marvel Enterprises, Inc. and Marvel Characters, Inc. v. NCSoft Corporation, NC Interactive, Inc. and Cryptic Studios, Inc., Case No. CV 04-9253-RGK in US District Court for the Central District of California. Marvel claims that NCSoft’s computer game ‘City of Heroes’ infringes their trade marks with their character creation system which allows and encourages players to create heroes that are similar to, or identical in appearance to Marvel’s well-known comic book characters. In the U.K., the courts have found these types of characters ineligible for copyright protection, but have not been presented with the trade mark question (See e.g., King Features Syndicate Inc. v. O&M Kleeman Ltd., [1941] A.C. 417, [1941] 2 All E.R. 403 regarding the character of Popeye).
5Hughes (1988) argues that “the greatest difference between the bundles of intellectual property rights and the bundles of rights over other types of property is that intellectual property always has a self-defined expiration, a built-in sunset.” This statement is rather puzzling since trade mark doctrine lacks such a restriction. Yet, it is possible to apply this notion of sunset and non-sunset restrictions to differentiate trade mark from other intellectual property regimes.
6The Supreme Court asserted the need to recognize an intellectual property public domain. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 151 (1989) “Free exploitation of ideas will be the rule, to which the protection of a federal patent is the exception.” Nevertheless, the court’s emphasis upon the diffusion of ideas (rather than symbols) suggests that copyright and patent have more compelling claims for free exploitation. Id. at 157–60.
7 [Jaszi, 1991] , [Jaszi, 1992] , [Rotstein, 1993] and [Woodmansee, 1992] and Boyle (1992) (arguing that copyright protection is often predicated upon a distinction between public and private information informed by the stereotype of the Romantic author).See also, Sherman and Strowel (1994) and Woodmansee and Jaszi (1994). For a related philosophical inquiry, see Waldron (1993) (noting that cultural assumptions about authorship inform how we think about the legal issues of copying).Among the historical studies of authorship are [Woodmansee, 1984] , [55] and [Rose, 1993] and Hesse (1990) (tracing the alternative political meanings of authorship in Revolutionary France, from Ancien Regime individual creator to Revolutionary actor in a broader project of public enlightenment); Price and Pollack (1992) (discussing the plasticity of the notion of authorship in copyright). For a comparative perspective, see Saunders (1992).
8By the word “sign,” I mean a fundamental element of communication. A sign has various expressions in trade mark law. It may be either linguistic (words as found on a label) or non-linguistic (pictorial representation or trade dress). According to the widely accepted semiotician Ferdinand de Saussure, the sign has two intertwined characteristics: (1) signifier (the tangible expression of communication) and (2) signified (its conceptual meaning). See De Saussure (1915). I am suggesting an application of these two ideas to trade mark doctrine. The first stage is the creation of a signifier (the making of the tangible mark itself). The second stage is that of the signified (the investing of the mark with meaning). I will use these terms from semiotics, sign and signifier, throughout the article.
9Even with copyright, there is a concern that the act of creation be original and independent enough. See Jaszi (1988) (noting that Shakespeare’s dramas, written prior to the rise of authorial dominance, are a pastiche of material from other sources and demonstrate the difficulty of determining originality standards); VerSteeg (1993) (attempting to determine thresholds of creativity that might warrant protection); Wang (1990) (explaining that the multiplicity of modern art media often entails reproduction, making it difficult to determine originality in traditional ways).
10Courts have come to differentiate between creativity and hard work. See Ginsburg (1990) (recognizing the need to protect “high authorship,” such as literature, justified through creativity and “low authorship,” such as maps and computer databases, justified through labour arguments). Justice O’Connor recently stated that “copyright awards originality, not effort.” Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 364 (1991); see also, Ginsburg (1992) (arguing that the Feist decision fails to fulfil the Constitutional mandate promoting the creation of intellectual property).
11See McCarthy (1984) and Post (1986) (referring to reputation as property because it reflects exertion of labour or talent to create self).In Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562 (1977), an analogy is made to the goals of patent and copyright that protects creative labour. Interestingly, the Supreme Court does not make a comparison to trade marks where, as discussed above, it is more difficult to make an argument founded upon notions of creative labour. Yet, publicity rights are also very much a creature of legal making. See Gaines (1991) and Madow (1993) (illustrating how Melville Nimmer, who frequently represented Hollywood interests, worked to create a tort distinct from a privacy tort).
12It might further be argued that secondary meaning is necessary because if the mark had no meaning it would simply be Babel and, as such, unworthy of protection. However, we do protect Babel in copyright. It is possible to copyright utter nonsense, poorly crafted or even unintelligible expression. If trade mark is not Paradise Lost, not every copyrightable nonsense tale is The Walrus and the Carpenter.
13Two tests exist for distinguishing between descriptive and suggestive marks, the Competitors Needs Test and the Competitors Use Test. The Competitors Needs Test evaluates the amount of imagination required to interpret the trade mark. The more imagination required, the less likely the words or symbols will be needed by competitors. See Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir. 1976). The Competitors Use Test asks whether competitors employed these words or symbols when describing their product. See Shoe Corp. of Am. v. Juvenile Shoe Corp. Of Am., 266 F.2d 793 (C.C.P.A. 1959); Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. (BNA) 557 (1970); McCarthy (1984).
14The bar against using national or religious symbols and immoral marks, however, underscores the limits of mark making. It prohibits registration for trade marks which “falsely suggest a connection” with such public symbols as flags, religious images, or national emblems and seals (15 U.S.C. 1052(a); TMA s 3(3) (a)). The language of the Lanham Act is telling. All connections are false because it is problematic to associate national or religious symbols with private commercial ventures. While public association at times trumps limited group entitlements, the public is unwilling to make private its own linguistic and cultural commons.
15BPBOG re-launched itself as a new body under the name the British Brands Group (BBG) in mid-October 1995, Marketing Week, October 20, 1995.
16First, by extending the definitions of infringement (Hansard, HL/PBC, January 18, 1994, cols. 26–28); second, and in the alternative, by introducing an action for unfair competition based on Article 10bis of the Paris Convention (Hansard, HL Report, February 24, 1994, cols. 750–52). With hindsight, the proposed amendments were ill-timed and inappropriately drafted.
17It was argued that the introduction of specific protection against look-alikes would restrict product choice and increase prices for the United Kingdom consumer by an estimated £628 million a year (British Retail Consortium Press Release, July 5, 1994).
18Legal action was averted by Sainsbury agreeing to alter the style of lettering on their cans.
19According to The Scotsman, March 10, 1995, “Classic Cola” now accounts for 65% of Sainsbury cola sales and 11% of United Kingdom sales. Marketing Week, May 5, 1995, announced a Sainsbury deal to sell “Classic Cola” through 25 hospitals in the United Kingdom. See also, The Times, June 7, 1995.
20Lord Peston, Hansard, HL Second Reading, December 6, 1993, col. 755.
21Mr. Patrick McLoughlin, Parliamentary Under-Secretary of State for Technology, Hansard, HC Third Reading, June 20, 1994, col. 82.


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s