Pseudo-Certification Marks1
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Pseudo-Certification Marks1 Alexandra Mogyoros July 24, 2019 DRAFT I. INTRODUCTION ........................................................................................................... 2 II. MARKS OF RECTITUDE ............................................................................................ 5 III. CERTIFICATION MARKS ......................................................................................... 7 IV. PSEUDO-CERTIFICATION MARKS ...................................................................... 10 IV. ANALYSIS................................................................................................................. 15 V. CONCLUSION ............................................................................................................ 17 1 This is a work in progress. Please do not circulate. 1 I. INTRODUCTION The ecosystem of trademark law is composed of various different marks, such as individual trademarks, collective marks and certification marks. While all these marks function as marketplace signs, they are regulated differently to serve different purposes. There are some known, accepted, and even encouraged overlaps between different kinds of marks in this ecosystem. This paper, however, raises a previously undiscussed overlap, the use of what I term “pseudo-certification marks”. This is where a mark appears to be signalling a characteristic of a goods or service and functioning as a certification mark, but is in fact registered and protected as an individual trademark.2 The contribution of this paper is two-fold. First, I identify the practice I term ‘pseudo- certification marks,’ where marks are operating like certification marks but are registered, and thus regulated, as trademarks. This paper focuses on a specific category of pseudo- certification marks, namely those which are also marks of rectitude. Second, I explore the significance of this practice, especially in terms of what it may mean for how certification marks are used, regulated, and potentially reformed. The occurrence of pseudo-certification marks occurs at the intersection of two growing trends: the expanding uses of trademarks and a rising consumer interest in corporate social responsibility. First, the roles and recognized uses of trademarks are expanding.3 More than a mark that indicates source, or quality, today’s trademarks are dynamic marketplace signs. They have become an integral aspect of brands4 and play a critical role in the governance structure of certain businesses.5 They have merchandising value,6 are key to helping 2 In this paper I will use “product” as a collective term to denote goods and/or services. 3 One notable instance of this is the line of case law stemming from the seminal case of L’Oréal v. Bellure in which the ECJ (at the time) recognized the numerous functions of trademarks, apart from the source indicating function: L’Oréal v. Bellure, Case C-487/07 [2009] ECR I-5185 (ECJ, First Chamber). See also: Barton Beebe, ‘Search and Persuasion in Trademark Law’ (2005) 103 Michigan Law Review 2020; Stacey L Dogan and Mark A Lemley, ‘Grounding Trademark Law through Trademark Use’ [2006] Iowa Law Review 1669. 4 Jessica Litman, ‘Breakfast with Batman: The Public Interest in the Advertising Age’ (1998) 108 Yale LJ 1717; Deven R Desai, ‘From Trademarks to Brands’ (2012) 64 Florida Law Review 981; Dev Gangjee, ‘Property in Brands: The Commodification of Conversation’ in Helena R Howe and Jonathan Griffiths (eds), Concepts of property in intellectual property law (Cambridge University Press 2013); Lionel Bently, Jennifer Davis and Jane C Ginsburg, Trade Marks and Brands: An Interdisciplinary Critique (Cambridge University Press 2008). 5 Celia Lury, ‘Trade Mark Style as a Way of Fixing Things’ in Lionel Bently, Jennifer Davis and Jane C Ginsburg (eds), Trade Marks and Brand: An Interdisciplinary Critique (Cambridge University Press 2008); Margaret Chon, ‘Trademark Goodwill as a Public Good: Brands and Innovations in Corporate Social Responsibility’ (2017) 21 Lewis & Clark Law Review 277; Andrew Griffiths, ‘Brands, “Weightless” Firms and Global Value Chains: The Organisational Impact of Trade Mark Law.’ (2019) 39 Legal Studies 284; Naomi Klein, No Logo: Taking Aim at the Brand Bullies (Vintage Canada 2000). 6 Stacey L Dogan and Mark A Lemley, ‘The Merchandising Right: Fragile Theory or Fait Accompli?’ (2005) 54 Emory Law Journal 461. 2 consumers form brand communities and their identities,7 and are valuable assets in their own right.8 Second, consumers have become increasingly interested in democratizing their purchases and using their market behaviour to encourage socially responsible conduct. This requires, however, knowledge of how the companies they are considering purchasing from are behaving. No longer are consumers concerned with one aspect of corporate responsibility – their interests are wide ranging, and even contradictory.9 There is, accordingly, an increased consumer demand to be both aware of the supply chain and production standards of products they buy, as well as more information and “value identity” of the brands they are purchasing from.10 In response to this, brands themselves are becoming political and communicating their stated values.11 Companies are responding to this growing consumer demand in various ways. EVERLANE, for instance, is an American apparel company, who touts the slogan “Exceptional quality. Ethical factories. Radical transparency.”12 This predominately online retailer has incorporated videos, photos, and infographics into their shopping platform to share with consumers a wide range of information such as the cost of the raw materials for individual items of clothes, as well as videos of their factories.13 Similarly, ABSOLUT’s campaign for its vodka-- ABSOLUT PLANET—is another example of how companies are responding to this trend. THE ABSOLUT PLANET campaign is a three-prong campaign, setting out ABSOLUT’s commitment to the environment (“the planet),14 the LGBTQ community (“the people), and production of their vodka (“the product”). 7 Albert M Muniz and Thomas C O’Guinn, ‘Brand Community’ (2001) 27 Journal of Consumer Research 412. 8 Frank I Schechter, ‘The Rational Basis of Trademark Protection’ (1927) 40 Harvard Law Review 813.] 9 Fran Hawthorne, Ethical Chic: The Inside Story of the Companies We Think We Love (Beacon Press 2012). 10 Margaret Chon, ‘Marks of Rectitude’ (2009) 77 Fordham Law Review 101; Hawthorne (n 9); Margaret Chon, ‘Slow Logo: Brand Citizenship in Global Value Networks’ (2013) 47 University of California Davis Law Review 935. 11 ‘Grab Your Wallet: When Brands Go Political’, Under the Influence (24 August 2017). 12 https://www.everlane.com/about 13 See for instance: https://www.everlane.com/products/womens-luxe-cotton-jumpsuit-black. This webpage, which features a woman’s jumpsuit, informs consumers about a variety of information about the product. In addition to the standard fit and garment care instructions, the factory it was made in (Nobland Vietnam Co., Ltd in Ho Chi Minh City, Vietnam) linking consumers to a webpage outlining details about the factory as well as photos (https://www.everlane.com/factories/vietnam-knits), as well as the cost of materials ($16.11), hardware ($0.91), labor costs ($7.85), duties ($2.74), and transport costs ($0.41). Other suggestions to incorporate such information have been raised in the literature. See, for example: Margaret Chon, ‘Tracermarks: A Proposed Information Intervention’ (2015) 53 Houston Law Review 101. 14 This aspect of the campaign announces that ABSOLUT is “on a mission to expand how the world thinks about its people, our product, and the planet.” To this end, one aspect of this campaign is their website where ABSOLUT explains that “taking care of our home is the ABSOLUT priority” and sets out the ways 3 In a similar vein, another part of their campaign has a corresponding web page publicizing that “we only celebrate when everyone is invited” and that “ABSOLUT believes in a more open and inclusive world.” ABSOLUT aligns itself with the LGBTQ community by partnering with the non-profit organization GLAAD,15 and creating billboards that celebrate inclusivity and honouring LGBTQ activists. With all of its discussion of community outreach, initiatives and partners one might fairly think ABSOLUT is a human rights foundation, not a brand of vodka. ABSOLUT’s campaign is emblematic of what consumers are beginning to expect of brands.16 ABSOLUT is not only declaring it’s support of certain social justice issues; it is stating its beliefs about issues and positioning itself as an actor driving change. ABSOLUT is championing movements, inviting consumers to join them. This campaign makes it easy to list the values that ABSOLUT stands for and holds. In fact, there is no ambiguity about it. ABSOLUT’s branding and advertising makes its values explicit – it declares its values and beliefs. Thus, it is no surprise these two trends, brands embodying a set of values and the expansion of trademarks, have come to a head. Trademarks themselves begun to be used to communicate their political and social values, as Margaret Chon aptly describes in her paper, “Marks of Rectitude.” Trademarks, indeed, are now being used as marks of rectitude. This paper focuses on marks that communicate a broad spectrum of information related to corporate social responsibility to consumers while appearing to be certification marks. The term corporate social responsibility in and of itself includes a wide range of concepts and understandings,