Vol. 90 Vol. 90 TMRTMR 489489

Vol. 90 TMR 489

STEALTH PATENTS: THE UNCONSTITUTIONALITY OF PROTECTING PRODUCT DESIGNS UNDER THE FEDERAL TRADEMARK DILUTION ACT*

By Hugh Latimer** and Karyn K. Ablin***

I. INTRODUCTION

It is not unusual, though perhaps not universally recognized, that the same industrial design, writing, or artistic creation may be the beneficiary of more than one type of intellectual property protection. For example, while the Disney characters are original creations deserving copyright protection, they also serve as source identifiers for goods and services, entitling them to trademark protection as well.1 Similarly, an original design of a manufactured article may be entitled to a design patent yet may also be protected as a trademark—even after the patent expires—if the design serves to identify the source of the product.2 At first glance, permitting overlapping trademark protection for patented or copyrighted subject matter may seem to conflict with the constitutional mandate that patents and copyrights may be granted only ``for limited Times'' and only for original ``Discoveries.''3 Trademarks, after all, may be renewed in perpetuity4 and need not be ``discoveries.''5 Nevertheless, courts uphold such dual protection on the ground that the purpose and effect of patent and copyright protection are fundamentally different from those of trademark infringement law. 6 Specifically, patents and copyrights grant exclusive rights to inventors and authors for original works to

* Copyright © 2000, Hugh Latimer and Karyn K. Ablin. Both authors serve as counsel for Kohler Co. in I.P. Lund Trading ApS v. Kohler Co., 11 F Supp2d 112 (D Mass 1998), vacated in part 163 F3d 27, 49 USPQ2d 1225 (CA 1 1998), a case that is discussed in this article. ** Partner at the Washington, D.C. law firm of Wiley, Rein & Fielding, Associate Member of the International Trademark Association.

*** Associate at the Washington, D.C. law firm of Wiley, Rein & Fielding, Associate Member of the International Trademark Association. 1. See Frederick Warne & Co. v. Book Sales, Inc., 481 F Supp 1191, 1196, 205 USPQ 444, 449 (SDNY 1979) (``Dual protection under copyright and trademark laws is particularly appropriate for graphic representations of characters.''); 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §6:18 at 6-34 to 6-35 (4th ed 1999) (``No one would seriously argue that copyright protection for Disney characters should be denied merely because they appear on a plethora of goods, such as DONALD DUCK brand orange juice.''). 2. See In re Mogen David Wine Corp., 372 F2d 539, 152 USPQ 593 (CCPA 1967); Kohler Co. v. Moen, Inc., 12 F3d 632, 29 USPQ2d 1241 (CA 7 1993). 3. US Const art I, §8, cl 8. 4. Qualitex Co. v. Jacobson Products Co., 514 US 159, 164-65, 34 USPQ2d 1161, 1163, 115 S Ct 1300, 1304, 131 L Ed2d 248, 254 (1995). 5. See In re Trade-Mark Cases, 100 US 82, 93-94, 25 L Ed 550, 552 (1879) (``The ordinary trademark has no necessary relation to invention or discovery.''). 6. See, eg, Kohler, supra note 2 at 640 fn 10, 29 USPQ2d at 1247-48. 490 Vol. 90 TMR encourage invention and discovery. 7 Trademarks, by contrast, grant no such exclusivity but rather confer upon the trademark owner the more limited right to preclude others from copying his or her mark only where customers are confused or deceived about the origin of the product that they are buying.8 As expressed by Justice Holmes: [A trademark] does not confer a right to prohibit the use of the word or words. It is not a copyright. . . . A trademark only gives the right to prohibit the use of it so far as to protect the owner's good will against the sale of another's product as his.9 In short, the key distinction that allows trademarks peacefully to coexist with patents and copyrights is that trademarks offer a fundamentally different—and more limited—type of protection than do patents and copyrights, which requires a demonstration of consumer confusion as to the source of products bearing the appropriated mark before the protection will attach.10 But what if Congress enacts legislation, under the guise of expanding trademark protection, that removes this ``consumer confusion'' requirement for not only word marks but product designs as well, thereby conferring perpetual, patent-like monopolies on product designs that are not necessarily original? The constitutional difficulties presented by such ``stealth'' patents would be self-evident.11 Yet Congress has enacted precisely such a statute, the Federal Trademark Dilution Act (``FTDA''),12 apparently without considering the constitutional consequences of applying the statute to product designs.13

7. US Const, supra note 3. 8. See Kohler, supra note 2 at 640 fn 10, 29 USPQ2d at 1247-48. It is for this reason that the Seventh Circuit observed that ``federal trademark protection does not transform the durationally limited monopoly of a design patent into a perpetual right.'' Ibid. 9. Prestonettes, Inc. v. Coty, 264 US 359, 368, 44 S Ct 350, 351, 68 L Ed 731, 742 (1924). 10. The same differentiation has been made with respect to state laws. State laws have been held to be preempted by federal patent law where they provided that a potentially patentable design may not be copied for an unlimited number of years. On the other hand, state laws that limit protection against copying to situations where consumer confusion is likely to result have been upheld. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 US 141, 158, 9 USPQ2d 1847, 1855, 109 S Ct 971, 981, 103 L Ed2d 118, 139 (1989). 11. The same constitutional problems would be presented by a congressional statute which conferred perpetual protection on unoriginal writings, which are within the subject matter of the copyright laws. See Feist Publications, Inc. v. Rural Telephone Service Co., 499 US 340, 18 USPQ2d 1275, 111 S Ct 1282, 113 L Ed2d 358 (1991); I.P. Lund Trading ApS v. Kohler Co., 163 F3d 27, 51, 49 USPQ2d 1225, 1242 (CA 1 1998), vacating in part 11 F Supp2d 112 (D Mass 1998). Those problems, however, would not be presented by trade dress, such as certain types of trade dress packaging, which is not within the subject matter of either the patent or the copyright laws. 12. Federal Trademark Dilution Act of 1995, Pub L No 104-98, 109 Stat 985 (1996) (codified at 15 USC §1125(c) (Supp III 1997)). 13. Both the FTDA itself and the legislative history are silent as to whether the Act applies to product designs. In contrast, where Congress has considered the constitutional ramifications of granting patent-like protection to product designs, it has ensured that the resulting legislation is consistent with the limitations imposed by the Patent Clause. Consider, for example, the 1998 Vessel Hull Design Protection Act, which expands the protection available for boat hull designs. Vessel Hull Design Protection Act, Pub L No 105-304, 112 Stat 2860, 2905 (1999) (codified at 17 USC §§1301 et seq (1999)). Consistent with the Patent Clause's originality requirement, the Act explicitly requires that the protected designs be ``original,'' which is defined as ``the result of the designer's creative endeavor that provides a distinguishable variation over prior work pertaining to similar articles which is more than merely trivial and has not been copied from another source.'' 17 USC §§1301, 1302. Moreover, the Act imposes a ten-year time limit on the duration of the protection, in keeping with the limited term provision of the Patent Clause. Id §1305. Vol. 90 TMR 491

This article examines those constitutional consequences. Part II discusses the historical background and context surrounding the adoption of the Patent Clause of the United States Constitution as well as the federal patent statutes that implement this constitutional scheme. Part III discusses traditional trademark protection— i.e., the trademark infringement regime—and analyzes in further detail why courts have allowed that system of intellectual property protection peacefully to coexist with the scheme of patent protection without danger of a constitutional conflict. Part IV discusses the advent of trademark dilution laws and explains why dilution more closely resembles the patent regime than the traditional trademark regime. Part V discusses the constitutional conflict with the Patent Clause that dilution poses when that form of intellectual property protection is superimposed on intellectual property that more naturally is the subject of the patent laws. The article concludes by calling upon Congress to amend the FTDA to remove product designs from its ambit in order to alleviate the constitutional conflict that otherwise results.

II. THE PATENT CLAUSE AND IMPLEMENTING FEDERAL STATUTES

Because the federal government is ``one of enumerated powers,'' Congress may enact legislation only pursuant to specific powers granted to it by Article I of the Constitution.14 Congress' ability to award monopolistic protection for manufactured goods is found in the Patent Clause of the United States Constitution. That clause provides that The Congress shall have Power * * * To promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.15 Because the Patent Clause outlines certain circumstances under which Congress may grant monopolies, it is, according to the Supreme Court, ``both a grant of power and a limitation.''16 In other words, although Congress may award limited monopolistic protection to inventors of original items, it may not grant perpetual monopolies in those items, nor may it impose monopolies on items that already have passed into the public domain: Congress may not create patent monopolies of unlimited duration, nor may it ``authorize the issuance of patents whose effects are to remove existent knowledge from the public domain. . . .''17 The Patent Clause's explicit limitations on Congress' ability to award monopolistic protection arose out of an historical context in which awarding exclusive rights was not a favored practice. The clause ``was written against the backdrop of the practices— eventually curtailed by the Statute of Monopolies—of the [British] Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public.''18 At the time of the founding, Americans ``had an instinctive aversion to monopolies,'' which is not surprising given that they had recently fought a revolution that had been ``sparked'' in Boston by a ``monopoly on tea.''19 Thomas Jefferson, the author of the 1793 Patent Act and the ``moving spirit'' behind the patent system, shared this widespread ``abhorrence of monopoly.''20 Initially, he was opposed to the grant of any monopoly,

14. See McCulloch v. Maryland, 17 US (4 Wheat) 316, 405, 4 L Ed 579, 601 (1819). 15. Supra note 3. 16. Graham v. John Deere Co., 383 US 1, 5, 148 USPQ 459, 462, 86 S Ct 684, 687, 15 L Ed2d 545, 550 (1966). 17. Bonito Boats, supra note 10 at 146, 9 USPQ2d at 1850, 109 S Ct at 975, 103 L Ed2d at 131 (quoting Graham, supra note 16 at 6, 148 USPQ at 462, 86 S Ct at 688, 15 L Ed2d at 550). 18. Graham, id at 5, 148 USPQ at 462, 86 S Ct at 687-88, 15 L Ed2d at 550. The Statute of Monopolies, enacted in 1623, outlawed the grant of any monopoly, with the sole exception of a fourteen-year, limited patent monopoly granted to the first inventor of a new item of manufacture. See Statute of Monopolies, 1623, 21 Jam I, ch 3 (Eng); Sears, Roebuck & Co. v. Stiffel Co., 376 US 225, 229 fn 6, 140 USPQ 524, 527, 84 S Ct 784, 788, 11 L Ed2d 661, 665 (1964). 19. Graham, id at 7, 148 USPQ at 463, 86 S Ct at 688, 15 L Ed2d at 551. 20. Ibid. 492 Vol. 90 TMR arguing that `` `the benefit of even limited monopolies is too doubtful to be opposed to that of their general suppression.' ''21 Eventually, however, Jefferson was persuaded that a limited exception to the strict ban against monopolies could be justified on the ground that it encouraged innovation by granting an inventor a limited monopoly on his or her discovery in exchange for the disclosure of the discovery and its ultimate dedication to the public at the end of the monopoly. 22 Even then, according to Jefferson, monopolies should only be awarded for those ``things which are worth to the public the embarrassment of an exclusive patent'' and should not be awarded merely for ``small details, obvious improvements, or frivolous devices.''23 In a line of cases spanning over a century, the United States Supreme Court has repeatedly reaffirmed this nation's strong aversion to monopolies, tempered only by the provisions of the Patent Clause, by recognizing the right of competitors to copy unpatented designs outright. For example, in its 1896 decision in Singer Manufacturing Co. v. June Manufacturing Co.,24 upholding the right of a competitor to copy the configuration of the Singer sewing machine after the patent had expired, the Court observed that: It is self-evident that on the expiration of a patent the monopoly created by it ceases to exist, and the right to make the thing formerly covered by the patent becomes public property. It is upon this condition that the patent is granted. It follows, as a matter of course, that on the termination of the patent there passes to the public the right to make the machine in the form in which it was constructed during the patent.25 In 1938, the Supreme Court reaffirmed in Kellogg Co. v. National Biscuit Co. that the general right to copy a patented design passes into the public domain upon the expiration of the patent.26 In a pair of concurrently issued decisions in 1964, the Supreme Court again endorsed this ``right to copy'' principle.27 In Sears, Roebuck & Co. v. Stiffel Co., the Court upheld a competitor's right to sell pole lamps that were modeled after the plaintiff's unpatentable design.28 Upon striking down an Illinois unfair competition law forbidding such copying, the Supreme Court held that it ``would be too great an encroachment on the federal patent system to be tolerated'' if ``States could allow perpetual protection to articles too lacking in novelty to merit any patent at all under federal constitutional standards.''29 Similarly, the Supreme Court in Compco Corp. v. Day-Brite Lighting, Inc.30 upheld a competitor's right to sell copies of the plaintiff's unpatentable fluorescent lighting fixtures and emphasized that this ``right to copy'' principle driving its decision is constitutionally grounded: To forbid copying would interfere with the federal policy, found in Art. I, s 8, cl. 8, of the Constitution and in the implementing federal statutes, of allowing free access to copy whatever the federal patent and copyright laws leave in the public domain.31

21. Id at 8, 148 USPQ at 463, 86 S Ct at 689, 15 L Ed2d at 551 (quoting V Writings of Thomas Jefferson, at 47 (Ford ed, 1895)). 22. See id at 9, 148 USPQ at 463, 86 S Ct at 689, 15 L Ed2d at 552. 23. Id at 9, 148 USPQ at 463-64, 86 S Ct at 689, 15 L Ed2d at 552 (quotations omitted). Indeed, product designs that were merely aesthetically pleasing rather than utilitarian were accorded no patent protection during the first fifty years of the patent system. 5 Charles L. Gholz et al., Patent Practice 23.3 (Irving Kayton and Kathryn S. Kayton eds, 6th ed 1997); Bonito Boats, supra note 10 at 148, 9 USPQ2d at 1851, 109 S Ct at 96, 103 L Ed2d at 132-33. 24. 163 US 169, 16 S Ct 1002, 41 L Ed 118 (1896). 25. Id at 185, 16 S Ct at 1008, 41 L Ed at 124. 26. 305 US 111, 120, 59 S Ct 109, 114, 83 L Ed 73, 79 (1938) (affirming Kellogg's right to copy ``pillow-shaped form'' of National Biscuit Co.'s shredded wheat upon expiration of patent). 27. Sears, supra note 18 at 232, 140 USPQ at 528, 84 S Ct at 789, 11 L Ed2d at 667; Compco Corp. v. Day-Brite Lighting, Inc., 376 US 234, 237, 140 USPQ 518, 530, 84 S Ct 779, 782, 11 L Ed2d 669, 672 (1964). 28. Sears, id at 231, 140 USPQ at 528, 84 S Ct at 788, 11 L Ed2d at 667. 29. Id at 232, 140 USPQ at 528, 84 S Ct at 789, 11 L Ed2d at 667. 30. Supra note 27. 31. Id at 237, 140 USPQ at 530, 84 S Ct at 782, 11 L Ed2d at 672. Vol. 90 TMR 493

More recently still, the Supreme Court again reaffirmed in Bonito Boats, Inc. v. Thunder Craft Boats, Inc.32 that a patented design passes into the public domain for all to copy upon the expiration of the patent.33 Called upon to scrutinize a Florida statute prohibiting the duplication of boat hull designs, the Court concluded that the statute allowed the petitioner to ``reassert a substantial property right'' in an unpatented boat hull design and thus impermissibly conflicted with the policy embodied in the federal patent laws that unpatented ideas are ``dedicated to the common good.''34 In sum, as the Supreme Court has stated, the purpose of the Patent Clause was to create a narrow ``exception to the general rule against monopolies and to the right to access to a free and open market'' in order to encourage innovation and the public disclosure of those innovations so that upon the expiration of the monopoly, the innovations would be dedicated to the public.35 It is this purpose that Congress must heed when creating patent-like monopolies. For nearly two hundred years, Congress has implemented this constitutionally limited authority to grant monopolies—and thus create a safe haven from competition for certain items of manufacture and other innovations for a limited time—through the patent laws. According to those laws, a manufacturer that has created an aesthetically pleasing design may apply for a design patent, which, if granted, will give it a fourteen- year monopoly over the design, including the right to exclude all others from making, using, or selling products embodying that design.36 Congress established a similar scheme for utilitarian inventions, which grants a monopoly that expires twenty years after the application date for the patent, if the application proves successful.37 In order for a patent applicant to obtain this substantial ``carrot,'' he or she must first comply with the strict standards of patentability and public disclosure requirements described in the patent laws and associated regulations. For example, an applicant for a design patent must demonstrate to the United States Patent and

32. Supra note 10. 33. Id at 159-60, 9 USPQ2d at 1855, 109 S Ct at 981-82, 103 L Ed2d at 140. 34. Ibid (quotations omitted). Although some have argued that these cases are Supremacy Clause cases that only address the permissible reach of state intellectual property laws, this characterization is incorrect. For example, both Sears and Compco expressly relied upon the Patent Clause in striking down the law at issue. Sears, supra note 18 at 232, 140 USPQ at 528, 84 S Ct at 789, 11 L Ed2d at 667 (condemning statute because it ``would allow perpetual protection to articles too lacking in novelty to merit any patent at all under federal constitutional standards''); Compco, supra note 27 at 237, 140 USPQ at 530, 84 S Ct at 782, 11 L Ed2d at 672 (condemning statute because it ``would interfere with the federal policy[] found in Art I, s 8, cl 8, of the Constitution''). Likewise, Bonito Boats specifically discussed the limitations that the Patent Clause places on Congress' ability to create patent-like monopolies. Bonito Boats, supra note 10 at 146, 9 USPQ2d at 1850, 109 S Ct at 975, 103 L Ed2d at 131. Thus, these cases are not limited to the preemption context; rather, as the Federal Circuit has noted, their ``pronouncements purport to be of far greater reach, for in each case the Court discussed and sought to balance, in the public interest, the domains of patent and other forms of protection of intellectual property.'' L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F2d 1117, 1131, 25 USPQ2d 1913, 1923 (CAFC 1993); see also Kohler, supra note 2 at 642, 29 USPQ2d at 1250 (``Indisputably, some of the concerns expressed in Sears, Compco, and Bonito Boats regarding state law conflicts with the patent laws are also valid with respect to federal legislation.''). 35. Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 US 806, 816, 65 USPQ 133, 138, 65 S Ct 993, 998, 89 L Ed 1381, 1387 (1945); Bonito Boats, supra note 10 at 146, 9 USPQ2d at 1850, 109 S Ct at 975, 103 L Ed2d at 131 (holding that Patent Clause ``reflects a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the `Progress of Science and useful Arts' ''). 36. See 35 USC §§171, 173 (1994). 37. See id §§101, 154. 494 Vol. 90 TMR

Trademark Office (``PTO'') that his or her design is ``new, original and ornamental.''38 Similarly, an applicant for a utility patent must show that his or her invention is new, useful, and nonobvious.39 The patent applicant must also disclose to the PTO the claimed invention or design in rigorous detail.40 This exchange of full public disclosure for the exclusive right to make, use, or sell the design or useful invention reflects the delicate balance— embodied in the Patent Clause itself—``between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy.''41 For this balance to work, any law purporting to grant a monopoly over a design or useful invention must, like the current patent laws, conform with the two express limitations imposed by the Patent Clause. First, the law may only grant a monopoly for a design or invention that is sufficiently novel and original to warrant the monopoly to ensure that such protection is not afforded to inventions already in the public domain.42 Second, the monopoly must be limited in time to ensure eventual dedication to the public of the design or utilitarian invention.43 Thus, the issue of whether a trademark statute purporting to protect a product design must comply with these requirements hinges on one crucial question: Does the statute effectively grant owners of qualifying designs monopolistic, patent-like protection in those designs? As will be demonstrated below, trademark infringement laws do not.44 By contrast, trademark dilution laws do grant such protection and therefore must conform with the requirements of the Patent Clause.45

III. TRADITIONAL TRADEMARK PROTECTION AND PATENT PROTECTION: PEACEFUL COEXISTENCE

The well-recognized and substantial differences between the aims and scope of the United States trademark and patent laws have enabled the two forms of intellectual property protection to coexist peacefully, without fear of a constitutional conflict. Until well into this century, trademark law consisted solely of traditional trademark infringement law, which is grounded in the law of unfair competition. Whereas federal patent law grants an inventor an absolute monopoly in his or her innovation in exchange for the invention's eventual dedication to the public,46 trademark infringement law imposes liability only where one competitor uses the trademark of another in such a manner that consumers are likely to believe mistakenly that the competitor's goods originated with the trademark owner.47 In other words, traditional trademark infringement law does not authorize ``monopolistic grants like patents and copyrights.''48 Rather, it stems from the ``tort of fraud and deceit'' and provides ``protection against swindling.''49

38. Id §171. 39. Id §§101, 103 (1994 and Supp III 1997). 40. Id §112 (1994); 37 CFR §§1.71-1.85, 1.152-1.154 (1998) (setting forth disclosure requirements for design and utility patents). 41. See Bonito Boats, supra note 10 at 146, 9 USPQ2d at 1850, 109 S Ct 975, 103 L Ed2d at 131. 42. Ibid. 43. See ibid; US Const, supra note 3. 44. See infra Part III. 45. See infra Part IV. 46. See Bonito Boats, supra note 10 at 150-51, 9 USPQ2d at 1852, 109 S Ct at 977-78, 103 L Ed2d at 134. 47. See Robert N. Klieger, Trademark Dilution: The Whittling Away of the Rational Basis for Trademark Protection, 58 University of Pittsburgh Law Review 789, 795 (1997) (``From the start, the touchstone of United States trademark law and the broader law of unfair competition has been consumer confusion.''). 48. S Rep No 79-1333 (1946), reprinted in 1946 USCCAN 1274, 1275. 49. Id at 1275; see also United Drug Co. v. Theodore Rectanus Co., 248 US 90, 97-98, 39 S Ct 48, 51, 63 L Ed 141, 146 (1918) (``The owner of a trade-mark may not, like the proprietor of a patented invention, make a negative and merely prohibitive use of it as a monopoly.''); Kohler, supra note 2 at 638 fn 8, 29 USPQ2d at 1246 (``A design patent gives the patentee a virtually absolute monopoly in the design, while a Vol. 90 TMR 495

The Supreme Court has consistently stated that while a blanket ban against copying unpatented designs is impermissible, it is entirely appropriate to offer those designs limited protection from copying that leads to consumer confusion as to the source of the design. As the Court observed in Bonito Boats, ``[t]he `protection' granted a particular design . . . is . . . limited to one context where consumer confusion is likely to result; the design `idea' itself may be freely exploited in all other contexts.''50 Similarly, in Singer Manufacturing Co. v. June Manufacturing Co.,51 the Court affirmed a competitor's right to copy an unpatented design, but condemned ``the unrestrained right to deceive and defraud the public by so using the name as to delude them into believing that the machine made by one person was made by another.''52 Other decisions reflect these same principles.53 The consumer confusion requirement is no less essential to federal trademark laws, as opposed to state laws, in order to avoid a conflict with the Patent Clause, as demonstrated by Kohler Co. v. Moen Inc.54 In that case, the court explicitly based its holding that product designs are protectible as trademarks on the fact that the consumer confusion requirement differentiates traditional trademark protection from patent protection, thereby averting a conflict with the Patent Clause.55 In sum, the unequivocal message in Supreme Court and other precedent is that, in the absence of a patent, the prevention of consumer confusion is the sole exception to the general rule of full and free competition for publicly disclosed product designs.56 It is the consumer confusion requirement that prevents the protection afforded under the traditional trademark regime from being ``patent-like''—and therefore conflicting with the Patent Clause—because traditional trademark protection only prohibits others from marketing confusingly similar competing designs.57 trademark allows competitive uses of a protected design so long as such uses do not create consumer confusion.''); Kenneth L. Port, The ``Unnatural'' Expansion of Trademark Rights: Is a Federal Dilution Statute Necessary?, 19 Seton Hall Legislative Journal 433, 466-67 (1994) (``The purpose [of trademark law] is to exclude others from confusing usages, not to grant a monopoly in the mark in gross.'') (footnote omitted). 50. Supra note 10 at 158, 9 USPQ2d at 1855, 109 S Ct at 981, 103 L Ed2d at 139. 51. Supra note 24. 52. Id at 185, 187, 16 S Ct at 1008, 1009, 41 L Ed at 125. 53. See, eg, Kellogg, supra note 26 at 120, 59 S Ct at 114, 83 L Ed at 79 (``Kellogg Company was free to use the pillow-shaped form, subject only to the obligation to identify its product lest it be mistaken for that of the plaintiff.''); Sears, supra note 18 at 232, 140 USPQ at 528, 84 S Ct at 789, 11 L Ed2d at 667 (``Doubtless a State may, in appropriate circumstances, require that goods, whether patented or unpatented, be labeled or that other precautionary steps be taken to prevent customers from being misled as to the source. . . .''). 54. Supra note 2. 55. See, eg, id at 643, 29 USPQ2d at 1250 (``[T]rademarks are not monopolies. Others can produce designs similar to the trademark so long as there is no likelihood of consumer confusion.''); id at 638 fn 8, 29 USPQ2d at 1246 (``A design patent gives the patentee a virtually absolute monopoly in the design, while a trademark allows competitive uses of a protected design so long as such uses do not create consumer confusion.''); id at 640 fn 10, 29 USPQ2d at 1248 (``[F]ederal trademark protection . . . does not create a monopoly in the use of the product's shape. . . . [Plaintiff] is free to copy [Defendant's] design so long as it insures that the public is not thereby deceived or confused into believing that its copy is [Defendant's] faucet.''). 56. See 1 McCarthy, supra note 1, §7:64 at 7-141 (``Trademark and trade dress law protection for products . . . can only be rationalized by a need to protect customers from confusion as to source or sponsorship.''). 57. Stephen K. Marsh, Patents Are Forever: Construing The Federal Trademark Dilution Act to Apply to Product Configurations in Sunbeam Products, Inc. v. The West Bend Co., 4 Journal of Intellectual Property Law 421, 433 (1997) (``Requiring plaintiffs to meet a likelihood of confusion standard is critical to maintaining the balance underlying the federal patent scheme.''). Some may argue that the functionality doctrine reconciles the constitutional tension between the dilution 496 Vol. 90 TMR

IV. THE ADVENT OF DILUTION

This finely tuned intellectual property balance—with the ``likelihood of confusion'' requirement serving as the line of demarcation between the patent and trademark regimes—was turned on its head by the advent of dilution law, which was first advanced in the United States in 1927 by Professor Frank Schechter in his article entitled ``The Rational Basis of Trademark Protection.''58 Professor Schechter argued that trademark owners should be protected from ``the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods.''59 In 1947, Massachusetts became the first state to enact an anti-dilution law. 60 Other states soon followed, and by 1995 approximately one-half of the states offered some form of dilution protection.61 In 1995, Congress enacted the FTDA in order to create a uniform, nationwide scheme of dilution protection for famous trademarks.62 According to the House Report accompanying the FTDA, the Act created a ``federal cause of action to protect famous marks from unauthorized users that attempt to trade upon the goodwill and established renown of such marks and, thereby, dilute their distinctive quality.''63 The Act defines dilution as ``the lessening of the capacity of a famous mark to identify and distinguish goods or services,'' regardless of whether there is competition between the two products at issue or a likelihood of confusion as to their source.64 Thus, if the owner of a famous mark can prove dilution of its mark by another, it may prevent the junior user from commercial uses of the diluting mark, even where there is no likelihood that consumers will be confused by the concurrent uses.65 The classic example of dilution by blurring occurs where ``the same or very similar marks are being used on vastly different products,'' thus creating `` `the risk of an erosion of the public's identification of [a] very strong mark' '' with the mark's owner and his or her product line alone.66 Thus, the sale of KODAK pianos, BUICK aspirin, and DUPONT shoes would give rise to a dilution by blurring claim, as noted in the House

and patent regimes in the product design context by precluding trademark protection for functional designs. While this doctrine may prevent a constitutional conflict with respect to functional designs, it does not prevent a conflict with respect to nonfunctional designs, because both the trademark laws and the design patent laws protect only nonfunctional designs. See, eg, KeyStone Retaining Wall Systems, Inc. v. Westrock, Inc., 997 F2d 1444, 1450, 27 USPQ2d 1297, 1302 (CAFC 1993) (``A design patent protects the non-functional aspects of an ornamental design as shown in a patent.''); 35 USC §171 (1994) (requiring that the design be ``ornamental'' in order to receive patent protection). Indeed, a design patent will be invalidated if the patented item is later found to be functional. L.A. Gear, supra note 34 at 1123, 25 USPQ2d at 1917. 58. 40 Harvard Law Review 813, 22 TM Bull 139 (1927), reprinted in 60 TMR 334 (1970). 59. Id at 825. 60. See Klieger, supra note 47 at 811. 61. See 4 McCarthy, supra note 1, §24:80 at 24-134; Klieger, supra note 47 at 811. 62. Supra note 12. 63. HR Rep No 104-374 at 3 (1995), reprinted in 1995 USCCAN 1029, 1030. 64. 15 USC §1127 (Supp III 1997). 65. Id §1125(c). 66. Jordache Enterprises v. Hogg Wyld, Ltd., 625 F Supp 48, 56, 227 USPQ 794, 800 (D NM 1985), affd 828 F2d 1482, 4 USPQ2d 1016 (CA 10 1987) (quoting Tiffany & Co. v. Boston Club, Inc., 231 F Supp 836, 844, 143 USPQ 2, 8 (D Mass 1964)). The FTDA also prohibits dilution by tarnishment, which ``occurs when a defendant's use of a mark similar to a plaintiff's presents a danger that consumers will form unfavorable associations with the mark.'' Avery Dennison Corp., v. Sumpton, 189 F3d 868, 881, 51 USPQ2d 1801, 1810 (CA 9 1999); HR Rep No 104-374, supra note 63 at 2 (``The purpose of H.R. 1295 is to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it. . . .''). This article, however, discusses only dilution by blurring. Vol. 90 TMR 497

Report accompanying the FTDA.67 The FTDA is not confined to these typical dilution scenarios, however.68 Rather, the Act ostensibly applies to all ``famous'' trademarks as defined by federal trademark law, apparently including product designs,69 and applies regardless of whether there is competition between the products at issue.70 As the legislative history to the FTDA states, ``[t]he protection of marks from dilution differs from the protection accorded marks from trademark infringement.''71 Unlike the traditional trademark regime, which aims to prevent consumer confusion as to the source of the goods bearing the mark, the express aim of dilution law is to recognize the ``substantial investment the owner has made in the mark'' and to protect ``the commercial value and aura of the mark itself.''72 As previously noted, the FTDA does not require that there be a ``likelihood of confusion'' in order to find dilution.73 Rather, there need only be a ``lessening of the capacity of a famous mark to identify and distinguish goods or services'' as a result of the use of a junior mark.74 The capacity of a famous mark to distinguish goods, however, will always be lessened by the use of an identical—or sufficiently similar—junior mark on other products because the famous mark will now be associated with more products than it had been prior to the use of the junior mark. Consequently, the owner of a famous trademark will always be able to demonstrate dilution upon a showing that the accused junior mark is sufficiently similar. In other words, the use of a junior mark that is identical or substantially similar to a famous mark, without more, constitutes dilution. The legislative history to the FTDA supports this conclusion. As the accompanying House Report explains, dilution exists whenever the ``unauthorized use of a famous mark reduces the public's perception that the mark signifies something unique, singular, or particular.''75 When the mark is used on a product other than the particular product with which the mark was originally associated, a famous mark's ability to signify ``some- thing unique, singular, or particular'' will not merely be reduced, it will disappear altogether. Thus, any unauthorized use of the mark on an additional product appears to constitute dilution under this Congressional criterion. As a result, the owner of the ``Kodak'' mark, for example, may invoke the FTDA to prohibit any and all unauthorized uses of the ``Kodak'' mark on pianos or any other products, further suggesting that merely using or copying a famous mark, without more, constitutes dilution under the FTDA. Court decisions involving federal and state dilution claims likewise establish that dilution of a famous or well-known mark virtually always will be found by the use of an identical or substantially similar junior mark.76

67. See HR Rep No 104-374, supra note 63 at 3. 68. Lund, supra note 11 at 45, 49 USPQ2d at 1238. 69. Federal trademark law, which now includes dilution, defines trademarks to include any ``word, name, symbol, or device, or any combination thereof'' used to identify and distinguish goods. 15 USC §1127. Federal trademark protection for product designs was first conferred in 1976, where the United States Court of Appeals for the Eighth Circuit characterized the product design at issue as a ``device'' for purposes of federal trademark law. Truck Equipment Service Co. v. Fruehauf Corp., 536 F2d 1210, 1215, 191 USPQ 79, 82 (CA 8 1976). 70. 15 USC §1127. 71. HR Rep No 104-374, supra note 63 at 3; accord Lund, supra note 11 at 35, 49 USPQ2d at 1229 (recognizing that distinctions between trademark infringement and dilution laws are ``particularly pertinent'' to whether ``dilution protection of trade dress of product design amounts to an unconstitutional perpetual monopoly under the Patent Clause of the Constitution''); Marsh, supra note 57 at 424 (``The dilution doctrine differs fundamentally from the doctrines of trademark and trade dress protection.''). 72. HR Rep No 104-374, supra note 63 at 3; accord 4 McCarthy, supra note 1, §24:90 at 24-144 (``While traditional trademark law rests primarily on a policy of protection of customers from mistake and deception, anti-dilution law more closely resembles an absolute property right in a trademark.''). 73. See text accompanying supra notes 62-65. 74. 15 USC §1127. 75. See HR Rep No 104-374, supra note 63 at 3. 76. See, eg, Tiffany, supra note 66 at 842-43, 143 USPQ at 8 (finding dilution by blurring under Massachusetts statute because Tiffany was a widely known name and defendant used ``Tiffany's'' as its 498 Vol. 90 TMR

The First Circuit in I.P. Lund Trading ApS v. Kohler Co.,77 for example, stated that where the mark at issue is the design of the product itself, dilution hinges upon ``whether target customers are likely to view the products [i.e., the marks] `as essentially the same.' ''78 Similarly, the United States District Court for the Southern District of New York has characterized dilution protection in the design context as protection ``against copying.''79 Conversely, even where the senior mark is famous or well-known, dilution will not be found if the junior mark is not identical or substantially similar to the senior mark.80 Thus, there is substantial judicial authority for the

restaurant name); Sunbeam Products, Inc. v. The West Bend Co., 39 USPQ2d 1545, 1552-53 (SD Miss 1996), affd on other grounds 123 F3d 246, 44 USPQ2d 1161 (CA 5 1997), cert denied 118 S Ct 1795, 140 L Ed2d 936 (1998) (granting preliminary injunction under FTDA for both infringement and dilution where plaintiff's blender design was famous and defendant's blender was ``almost identical in shape, size and appearance''); Clinique Laboratories, Inc. v. DEP Corp., 945 F Supp 547, 562-63 (SDNY 1996) (finding dilution by blurring under FTDA where Clinique's mark and trade dress were renowned and defendant's mark and trade dress were similar); Nikon, Inc. v. Ikon Corp., 987 F2d 91, 96, 25 USPQ2d 2021, 2026 (CA 2 1993) (finding dilution under New York statute where Nikon mark was well-known and defendant's mark was similar); Stern's Miracle-Gro Products, Inc. v. Shark Products, Inc., 823 F Supp 1077, 1090-92, 27 USPQ2d 1267, 1276-78 (SDNY 1993) (finding dilution by blurring under New York statute where plaintiff's mark was widely known and defendant's mark was ``virtually identical''); American Express Co. v. American Express Limousine Service, Ltd., 772 F Supp 729, 736, 21 USPQ2d 1009, 1014-15 (EDNY 1991) (finding dilution by blurring under New York statute where plaintiff's mark was strong and defendants incorporated ``American Express'' in their name); Eastman Kodak Co. v. Rakow, 739 F Supp 116, 118-20, 15 USPQ2d 1631, 1632-35 (WDNY 1989) (finding dilution by blurring under New York statute where ``Kodak'' mark was ``truly distinctive'' and defendant used the ``Kodak'' name); Ringling Bros.-Barnum & Bailey Combined Shows v. Celozzi-Ettelson Chevrolet, 855 F2d 480, 482-83, 8 USPQ2d 1072, 1074-75 (CA 7 1988) (finding dilution by blurring under Illinois statute where plaintiffs' ``Greatest Show On Earth'' slogan was famous and defendant's ``Greatest Used Car Show On Earth'' slogan in bold, red, circus-style lettering was similar). 77. Supra note 11. 78. Id at 50, 49 USPQ2d at 1242 (quoting 3 McCarthy, supra note 1, §24:90.1 (4th ed 1996)). 79. Escada AG v. The Limited, Inc., 810 F Supp 571, 574, 25 USPQ2d 1970, 1972 (SDNY 1993). 80. See, eg, Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F2d 1201, 1210, 220 USPQ 786, 793 (CA 1 1983) (finding no dilution by blurring under Massachusetts statute where plaintiff's mark was well-known in its field but marks were dissimilar); Black Dog Tavern v. Hall, 823 F Supp 48, 55-59, 28 USPQ2d 1173, 1177-81 (D Mass 1993) (finding no dilution by blurring under Massachusetts statute where plaintiff's Black Dog mark was strong and distinctive but defendant's mark was not similar); Ringling Bros.- Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp., 937 F Supp 204, 214, 40 USPQ2d 1010, 1018-19 (SDNY 1996) (finding no dilution by blurring under FTDA or New York statute where plaintiff's slogan was famous but ``The Greatest Bar On Earth'' was not sufficiently similar); Clinique Laboratories, supra note 76 at 563 (finding no dilution by blurring under FTDA where ``Clinique'' mark was famous but defendant's ``Basique simplified skin care'' marks, without the trade dress, were dissimilar); Mead Data Central, Inc. v. Toyota Motor Sales U.S.A., Inc., 875 F2d 1026, 1031, 10 USPQ2d 1961, 1965 (CA 2 1989) (finding no dilution under New York statute where ``Lexis'' was only well-known in narrow market of attorneys and accountants and ``Lexus'' and ``Lexis'' were not ``very'' or ``substantially'' similar); Universal City Studios, Inc. v. Nintendo Co., 746 F2d 112, 120, 223 USPQ 1000, 1006 (CA 2 1984) (finding no dilution under New York statute where ``King Kong'' mark was well-known but ``Donkey Kong'' was ``so different that no reasonable question of fact was raised on the issue of blurring''); Warner Bros., Inc. v. American Broadcasting Cos., 720 F2d 231, 246-48, 222 USPQ 101, 113-15 (CA 2 1983) (finding no Vol. 90 TMR 499 proposition that copying a famous mark (or using a junior mark that is substantially similar) constitutes dilution.81

V. THE CLASH OF DILUTION PROTECTION AND PATENT PROTECTION WHEN A PRODUCT DESIGN IS AT ISSUE

The patent laws give the owner of a design patent the exclusive and absolute right to sell the protected design until the expiration of the patent.82 When applied to a product design, the trademark dilution laws likewise enable the owner of a protected design to forbid others from selling identical or sufficiently similar designs.83 In other words, both the patent laws and the dilution laws give the design owner an absolute property right—or monopoly—in the protected design.84

dilution by blurring under New York statute where Superman character was well-known but defendants' accused superhero character was not substantially similar). 81. In Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development, 170 F3d 449, 461, 50 USPQ2d 1065, 1075 (CA 4 1999), cert denied 120 S Ct 286 (1999), the Fourth Circuit purported to follow the Lund v. Kohler test for dilution to a point, requiring that the junior mark be ``sufficiently similar'' to the famous mark so as to evoke a mental association between the two. The court, however, went on to rule that dilution under the FTDA also required proof that the similarity of the two marks had caused ``actual economic harm to the famous mark's economic value by lessening its former selling power as an advertising agent for its goods and services.'' Id at 461, 50 USPQ2d at 1075. The difficulties of proving such ``actual economic harm'' to a famous mark would appear to render the FTDA essentially unenforceable in most cases. In addition, the Fourth Circuit's test is at odds with Congress' intent to prohibit the use of an identical mark on a noncompeting product—i.e., KODAK pianos—under the FTDA. See HR Rep No 104- 374, supra note 63 at 3. Proof of economic harm to the sales of KODAK cameras due to sales of KODAK pianos would be virtually impossible to prove. The Second Circuit also has recently adopted a multi-factored test for determining dilution under the FTDA that, like the Lund v. Kohler test, considers the similarity of the marks, but also considers the following factors: (a) the degree of distinctiveness of the mark, (b) the proximity of the products and the likelihood of bridging the gap, (c) the interrelationship among the distinctiveness of the senior mark, the similarity of the junior mark, and the proximity of the products, (d) shared consumers and geographic limitations, (e) consumer sophistication, (f) actual confusion, (g) adjectival or referential quality of the junior use, (h) harm to the junior user and delay by the senior user, and (i) effect of the senior mark holder's prior laxity in protecting the mark. See Nabisco, Inc. v. PF Brands, Inc., 191 F3d 208, 217-22, 51 USPQ2d 1882, 1888-92 (CA 2 1999). Consideration of these additional factors as part of the dilution analysis, however, appears inappropriate because they either (1) already are separately considered under the fame inquiry of the FTDA (ie, factors (a) and (d)), (2) are holdover factors relevant to the likelihood of confusion determination (ie, factors (b), (e), and (f)), which is irrelevant to a dilution inquiry, see text accompanying supra notes 62-65, or (3) are more appropriately treated as affirmative defenses (ie, factors (g), (h), and (i)). 82. See text accompanying supra notes 36-43. 83. See text accompanying supra notes 73-81; accord Sears, supra note 18 at 232-33, 140 USPQ at 528, 84 S Ct at 789, 11 L Ed2d at 667-78 (holding that ban against copying an article constitutes the ``equivalent of a patent monopoly.''). 84. Compare Port, supra note 48 at 463 (``[T]o grant dilution rights to a trademark holder is the same as giving the trademark holder a monopoly on the mark as used in any context.''), Viacom, Inc. v. Ingram Enterprises, Inc., 141 F3d 886, 890, 892, 46 USPQ2d 1473, 1475, 1477 (CA 8 1998) (equating dilution 500 Vol. 90 TMR

Even the tests employed to establish a violation of the patent laws and the dilution laws are strikingly similar. As previously noted, the First Circuit has held that dilution is established upon a showing that ``target customers are likely to view the products [i.e., the marks] `as essentially the same.' ''85 Similarly, ``[d]esign patent infringement requires a showing that the accused design is substantially the same as the claimed design.''86 The striking similarity of the legal tests for determining dilution and design patent infringement further confirms that the protection offered by these respective regimes is virtually identical. Because the FTDA, like the patent laws, grants exclusive rights in certain designs, it must comport with the requirements of the Patent Clause,87 which governs the grant of ``exclusive rights.''88 This conclusion is supported by the only judicial precedent that has analyzed and decided whether dilution protection of product designs may coexist with the federal patent scheme, Escada AG v. The Limited, Inc.89 At issue in Escada was the protectibility of a perfume bottle design under the New York dilution statute, which did not require a finding of consumer confusion before protecting the design against dilution.90 Recognizing that the absence of a consumer confusion requirement in the state dilution statute effectively conferred the grant of an exclusive property right in the trademarked design, the Escada court invalidated the state dilution statute as creating an impermissible conflict with the federal patent scheme.91 Quoting extensively from Bonito Boats, the court concluded that the dilution statute ``must yield to the national interest in uniform patent law.''92 Under a contrary rule, the court said, ``a would-be inventor in New York would not have to meet the rigorous standards for obtaining a patent and his right to exclude copiers would not be confined to a design patent's 14 year limit.''93 As Professor McCarthy has noted in discussing this case: This is because while the likelihood of confusion requirement of classic trademark law avoids a conflict with federal design patent law, the Supreme Court in Bonito Boats indicated that a state law which does not require proof of likely confusion can grant ``patent-like'' protection which is in conflict with federal

protection under FTDA with a ``complete'' and ``nationwide monopoly''), and Hartz & Co. v. Italia, Inc., No 97 Civ 5657, 1998 WL 132787 at *1 fn 11 (SDNY March 24, 1998) (describing dilution protection under the FTDA as a ``monopoly right'' in the mark at issue) with 35 USC §154 (1994) (granting patentee ``the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States''), Sears, supra note 18 at 229, 140 USPQ at 527, 84 S Ct at 787, 11 L Ed2d at 665 (``The grant of a patent is the grant of a statutory monopoly. . . .''), and Kohler, supra note 2 at 637, 29 USPQ2d at 1245 (holding that ``a patent creates a type of monopoly pricing power by giving the patentee the exclusive right to make and sell the innovation''). 85. Lund, supra note 11 at 50, 49 USPQ2d at 1242 (quoting 3 McCarthy, supra note 1, §24:90.1 (4th ed 1996)); supra notes 73-81. 86. L.A. Gear, supra note 34 at 1124, 25 USPQ2d at 1918. 87. The constitutional dilemma arises because product designs are within the ``subject matter'' of the patent laws. See Bonito Boats, supra note 10 at 154, 159-60, 165, 9 USPQ2d at 1853, 1855, 1858, 109 S Ct at 979, 981-82, 985, 103 L Ed2d at 136-37, 140, 143-44. 88. The fact that there are particular requirements for obtaining dilution protection under the FTDA does not alter this result. The fame and distinctiveness requirements merely restrict the number of designs that would receive dilution protection; however, those requirements cannot reconcile the constitutional tension that exists by offering perpetual monopolistic protection to designs that are constitutionally entitled to receive only durationally limited protection or no protection at all depending upon their originality. See US Const, supra note 3. 89. Supra note 79. 90. Id at 573, 25 USPQ2d at 1971. 91. Id at 574, 25 USPQ2d at 1972. 92. Ibid. 93. Ibid. Vol. 90 TMR 501

policy. 94 The rationale of the Escada case applies equally to the FTDA to the extent that requirements found in the federal patent laws—i.e., the limited times and originality requirements—are constitutionally mandated. In particular, the Patent Clause requires that exclusive rights be granted only for limited time periods and only for sufficiently original designs. As discussed below, FTDA protection is potentially perpetual and contains no originality requirement. As a result, the FTDA is unconstitutional as applied to product designs for both of those reasons.

A. Clash of the FTDA with the ``Limited Times'' Provision of the Patent Clause

In contrast to design patent rights, which expire after a term of fourteen years without any possibility of renewal or extension, trademark rights may extend indefinitely. 95 Because the product design owner may claim protection under the FTDA for as long as the design is in use, the owner reaps the windfall of a possibly perpetual monopoly in the design.96 Such perpetual patent-like protection for designs contravenes the Patent Clause, which allows such protection for ``limited Times'' only. 97 An example from the analogous copyright context is instructive. In Classic Film Museum, Inc. v. Warner Bros., Inc.,98 the court refused to permit a copyright owner to extend perpetually a statutorily expired copyright monopoly by applying common law principles of copyright protection because this would ``swallow the rule of limited monopoly found in the constitution and copyright statutes'':99 [A]cceptance of [a contrary] position would lead to a result which conflicts with the limited monopoly policy of the Copyrights Act and the Copyrights Clause of the Constitution. We agree that it is a view that cannot be countenanced.100 Under the reasoning of Classic Film Museum, the perpetual patent monopoly that the FTDA would create if applied to product designs would likewise ``swallow the rule of limited monopoly found in the constitution'' and therefore ``cannot be countenanced'' from a constitutional standpoint.

B. Clash of the FTDA with the Originality Requirement of the Patent Clause

An additional constitutional dilemma created by the extension of the FTDA to product designs relates to the types of designs that the FTDA protects. In order for a design to receive protection under the patent scheme, the design owner must demonstrate that his or her design is ``new'' and ``original.''101 In other words, the design must constitute an ``invention'' that ``promote[s] the Progress of Science and the useful Arts.''102 This requirement is a constitutionally mandated prerequisite to obtaining patent protection.103

94. 4 McCarthy, supra note 1, §24:82 at 24-132 to 24-138 (footnote omitted). 95. Compare 35 USC §173 (1994) (limiting design patents to fourteen-year term) with, eg, W.T. Rogers Co. v. Keene, 778 F2d 334, 337, 228 USPQ 145, 145-46 (CA 7 1985) (``The trademark owner has an indefinite term of protection. . . .''), Qualitex, supra note 4 at 164-65, 34 USPQ2d at 1163, 115 S Ct at 1304, 131 L Ed2d at 254 (stating that ``trademarks may be renewed in perpetuity''), and Marsh, supra note 57 at 433 (stating that ``trade dress protection extends indefinitely''). 96. Qualitex, ibid. 97. US Const, supra note 3; see also Bonito Boats, supra note 10 at 146, 9 USPQ2d at 1850, 109 S Ct at 975, 103 L Ed2d at 131 (``Congress may not create patent monopolies of unlimited duration. . . .''). 98. 597 F2d 13, 202 USPQ 467 (CA 1 1979). 99. Id at 14, 202 USPQ at 468. 100. Id at 15, 202 USPQ at 468 (quotation omitted). 101. 35 USC §171 (1994). 102. US Const, supra note 3. 103. Ibid; see Cuno Engineering Corp. v. Automatic Devices Corp., 314 US 84, 91, 62 S Ct 37, 41, 86 L Ed 58, 63 (1941), mandate amended 314 US 587, 562 S Ct 476, 86 L Ed 474 (1942) (holding device 502 Vol. 90 TMR

The obvious corollary to this provision is that Congress cannot constitutionally grant exclusive rights in an unoriginal design. Like other trademark laws, the FTDA does not require a trademark to be original in order to benefit from its protection.104 Rather, the FTDA only requires that the design be famous and distinctive.105 Thus, application of the FTDA to product designs is constitutionally impermissible not only because it would grant perpetual protection, but also because it would grant patent-like protection to certain product designs that do not meet the constitutionally mandated requirement of originality.

C. Failure of the Commerce Clause to Legitimate the FTDA

The fact that Congress enacted the FTDA pursuant to the Commerce Clause rather than the Patent Clause provides no answer to this constitutional conundrum. Congress' power under the Commerce Clause, although broad, is constrained by the limitations contained in other specific constitutional provisions. In Railway Labor Executives' Association v. Gibbons,106 for example, the Supreme Court addressed Congress' power to enact a ``nonuniform'' bankruptcy law pursuant to the Commerce Clause, despite the command in the Bankruptcy Clause that all bankruptcy laws must be ``uniform.''107 In finding the challenged statute unconstitutional, the Supreme Court ruled that ``if we were to hold that Congress had the power to enact nonuniform bankruptcy laws pursuant to the Commerce Clause, we would eradicate from the Constitution a limitation on the power of Congress to enact bankruptcy laws.''108 Other cases also espouse this principle. For example, the Supreme Court has confirmed that the Commerce Clause is restrained by other constitutional provisions: Congress exercises its conferred powers subject to the limitations contained in the Constitution. Thus, for example, under the Commerce Clause Congress may regulate publishers engaged in interstate unpatentable because it had not ``reached the level of inventive genius which the Constitution, Art. I, s 8, authorizes Congress to reward''); Bonito Boats, supra note 10 at 146, 9 USPQ2d at 1850, 109 S Ct at 975, 103 L Ed2d at 131 (``Congress may not . . . `authorize the issuance of patents whose effects are to remove existent knowledge from the public domain. . . .' '' (quoting Graham, supra note 16 at 6, 148 USPQ at 462, 86 S Ct at 688, 15 L Ed2d at 550)); Kevin E. Mohr, At the Interface of Patent and Trademark Law: Should a Product Configuration Disclosed in a Utility Patent Ever Qualify for Trade Dress Protection?, 19 Hastings Communications and Entertainment Law Journal 339, 350 (Winter 1997) (``Consequently, the strict requirements that inventions must satisfy before a patent is issued are constitutionally mandated.''); cf Feist Publications, supra note 11 at 351, 18 USPQ2d at 1280, 111 S Ct at 1290, 113 L Ed2d at 372 (holding that ``originality is a constitutionally mandated prerequisite for copyright protection''). 104. See Trade-Mark Cases, supra note 5 at 93-94, 25 L Ed at 552 (``The ordinary trademark has no necessary relation to invention or discovery.''). 105. 15 USC §1125(c) (Supp III 1997). Some of the factors specified in the FTDA as relevant to the fame inquiry may also be relevant to whether a mark is original, such as ``the nature and extent of use of the same or similar marks by third parties'' and ``the degree of inherent or acquired distinctiveness of the mark.'' See 15 USC §1125(c)(1). Nevertheless, whether a mark is famous and whether it is original are two distinct inquiries, just as the fame and inherent distinctiveness of a mark are separate inquiries. Indeed, with respect to the latter two inquiries, Congress has expressly stated that ``a mark may be deemed `famous' even if not inherently distinctive, that is, even if the mark is not arbitrary, fanciful, or coined.'' HR Rep No 104-374, supra note 63 at 7. Similarly, a mark may be deemed famous, but not original, if little or no creative effort was put into devising the trademark but, over time, it has achieved a high degree of nationwide consumer recognition as a trademark. Thus, the factors listed in the FTDA as relevant to the fame inquiry fall far short of substituting for the constitutionally mandated originality requirement found in the copyright and patent laws. 106. 455 US 457, 102 S Ct 1169, 71 L Ed2d 335 (1981). 107. Id at 465, 102 S Ct at 1174, 71 L Ed2d at 344 (quoting US Const Art I, §8, cl 4). 108. Id at 468-69, 102 S Ct at 1176, 71 L Ed2d at 346. Vol. 90 TMR 503

commerce, but Congress is constrained in the exercise of that power by the First Amendment.109 Even the most expansive interpretations of the Commerce Clause do not give Congress carte blanche to ignore specific constitutional limitations on its power by purporting to enact a statute pursuant to the Commerce Clause. For example, in Gibbons v. Ogden, the Supreme Court, while espousing a very expansive view of the Commerce Clause, nevertheless acknowledged that Congress' Commerce Clause power is restricted by other limitations ``prescribed in the constitution.''110 Likewise, in EEOC v. Wyoming, concurring Justice Stevens, although agreeing with the Court's extension of the Age Discrimination in Employment Act to state and local governments under the Commerce Clause, cautioned that ``Congress may not, of course, transcend specific limitations on its exercise of the commerce power that are imposed by other provisions of the Constitution.''111 Thus, Supreme Court precedent demonstrates that Congress may not invoke the Commerce Clause in order to nullify other explicit Article I limitations on its power.112 Like the Bankruptcy Clause in Railway Labor, the Patent Clause in the FTDA context imposes a limitation on Congress' power that the Commerce Clause cannot override.113 Specifically, the Patent Clause restricts Congress' ability to grant monopolies for innovations by requiring that the monopolies be only for ``Discoveries'' and, for only ``limited Times.'' Thus, because the extension of the FTDA to product designs would create perpetual patent-like monopolies, even over unpatentable designs, such an exercise of power by Congress is unconstitutional, whether under the Commerce Clause or otherwise. Congress cannot circumvent an explicit limitation on its power found in one Article I Clause by purporting to act under a different Article I clause.114 Nor can it save the statute merely by labeling it a trademark law rather than a patent law. The mere

109. New York v. United States, 505 US 144, 156, 112 S Ct 2408, 2418, 120 L Ed2d 120, 137 (1992); accord INS v. Chadha, 462 US 919, 941, 103 S Ct 2764, 2768, 77 L Ed2d 317, 338 (1983) (quoting Buckley v. Valeo, 424 US 1, 132, 96 S Ct 612, 688, 46 L Ed2d 659, 752 (1976) (per curiam)) (`` `Congress has plenary authority in all cases in which it has substantive legislative jurisdiction so long as the exercise of that authority does not offend some other constitutional restriction.' '') (citation omitted); Moad v. Arkansas State Police Department, 111 F3d 585, 587 (CA 8 1997) (``Congress had no power to abrogate a state's Eleventh Amendment immunity under the Interstate Commerce Clause''). 110. 22 US 1 (9 Wheat), 196-97, 6 L Ed 23, 70 (1824). 111. 460 US 226, 244, 248, 103 S Ct 1054, 1064, 1066, 75 L Ed2d 18, 34, 37 (1983) (Stevens, J., concurring). 112. Cf United States v. Moghadam, 175 F3d 1269, 50 USPQ2d 1801 (CA 11 1999). In Moghadam, the court upheld under the Commerce Clause the constitutionality of the federal anti-bootlegging statute, which outlawed the unauthorized recording, transmission, and distribution of live musical performances. Id at 1271, 50 USPQ2d at 1801-02. The court declined to decide whether the ``fixation'' concept under the Copyright Clause could be expanded by Congress so as to encompass live performances. Instead, the court chose to uphold the statute on the grounds that extending protection to such performances under the Commerce Clause was in harmony with the existing scheme set up by Congress under the Copyright Clause and that ``fixation, as a constitutional concept, is something less than a rigid, inflexible barrier to Congressional power.'' Id at 1281, 50 USPQ2d at 1809. On the other hand, the court acknowledged that ``the Commerce Clause cannot be used to eradicate a limitation placed upon Congressional power in another grant of power.'' Id at 1279-80, 50 USPQ2d at 1808 (citing with approval Railway Labor). Significantly, the court declined to address whether the apparently perpetual protection created by the anti-bootlegging statute was impermissible under the ``limited Times'' requirement of the Copyright Clause because the defendant ``did not make this argument in the district court or in his brief on appeal.'' Id at 1281 fn 15, 50 USPQ2d at 1810. 113. See Graham, supra note 16 at 5, 148 USPQ at 462, 86 S Ct at 687, 15 L Ed2d at 550 (holding that Patent ``[C]lause is both a grant of power and a limitation''); Bonito Boats, supra note 10 at 146, 9 USPQ2d at 1850, 109 S Ct at 975, 103 L Ed2d at 131 (holding the same). 114. See, eg, Railway Labor, supra note 106 at 468-69, 102 S Ct at 1176, 71 L Ed2d at 346 (holding that Congress cannot justify a law that exceeds an explicit, limited grant of congressional authority under the 504 Vol. 90 TMR act of ``[g]iving patent-like protection a new name does not avoid constitutional limitations.''115

D. Lund v. Kohler: Constitutional Rumblings

The likely unconstitutionality of the FTDA's grant of perpetual dilution protection for product designs was a significant factor in the 1998 decision by the United States Court of Appeals for the First Circuit in I.P. Lund Trading ApS v. Kohler Co.116 In Lund, the First Circuit vacated a preliminary injunction that prohibited defendants Kohler Co. and Robern, Inc. from selling Kohler's ``Falling Water'' faucet, a contemporary, single- control, wall-mounted bathroom faucet.117 The district court had issued the injunction based upon claims by plaintiffs I.P. Lund Trading Co. and Kroin, Inc. that the design of the Falling Water faucet diluted Lund's competing VOLA faucet trade dress, consisting of the configuration of the faucet.118 The district court expressly found that consumers were not likely to be confused as to the source or sponsorship of the Falling Water faucet119 and that ``[k]nowledgeable customers'' may purchase the Falling Water faucet over Lund's competing VOLA faucet because the Falling Water is ``a product of similar quality'' and ``easier to find and less expensive to purchase.''120 Nevertheless, the district court enjoined Kohler and Robern from selling the Falling Water faucet on the ground that their sales of the competing faucet design diluted Lund's VOLA trade dress.121 On appeal, the United States Court of Appeals for the First Circuit did not directly decide the constitutional challenge to the FTDA raised by the defendants122 in keeping with the general judicial reluctance to reach constitutional issues except where absolutely necessary. 123 Instead, the First Circuit specifically based its vacatur of the injunction and remand to the district court upon a lack of the requisite ``fame'' of the VOLA faucet trade dress, the district court's application of an incorrect dilution test, and the plaintiffs' failure to establish dilution by blurring in light of the ``largely dissimilar'' Falling Water design.124 Nevertheless, the court's concerns with the constitutionality of the FTDA in the context of product designs were a significant factor contributing to its rejection of the plaintiffs' dilution claim. For example, in the introductory summary of the opinion, the court ``acknowledge[d] serious constitutional concerns about application of the FTDA to a dilution claim against a competing product which does not confuse consumers.''125 The court again alluded to these concerns in affirming its refusal to replace the demanding ``primary significance'' test for determining whether a mark has gained the necessary acquired distinctiveness—i.e., secondary meaning—to qualify for trademark protection. Specifically, the court observed that ``[w]here protection of the product design itself is at issue, there is every reason to hold to the usual stringent primary significance test in order to minimize constitutional concerns.''126

Bankruptcy Clause merely by enacting the law pursuant to the Commerce Clause). 115. Lund, supra note 11 at 53, 49 USPQ2d at 1244 (Boudin, J., concurring); see also Bonito Boats, supra note 10 at 146, 9 USPQ2d at 1850, 109 S Ct at 975, 103 L Ed2d at 131. 116. Supra note 11. 117. Id at 51, 49 USPQ2d at 1243. 118. I.P. Lund Trading ApS v. Kohler Co., 11 F Supp2d 112 (D Mass 1998), vacated in part 163 F3d 27, 49 USPQ2d 1225 (CA 1 1998). Lund and Kroin had also requested a preliminary injunction based on the Falling Water faucet's purported infringement of their trademark in the design of their competing VOLA faucet, but the district court rejected this claim and instead based the injunction solely on dilution. See id at 124, 127. 119. See id at 122-24. 120. See id at 126. 121. See ibid. 122. Lund, supra note 11 at 51, 49 USPQ2d at 1242. 123. See, eg, NLRB v. Catholic Bishop, 440 US 490, 507, 99 S Ct 1313, 1322, 59 L Ed2d 533, 545 (1979) (declining to construe federal statute ``in a manner that could in turn call upon the Court to resolve difficult and sensitive [constitutional] questions''). 124. Lund, supra note 11 at 47, 50, 49 USPQ2d at 1239-40, 1242. 125. Id at 33, 49 USPQ2d at 1227. 126. Id at 42, 49 USPQ2d at 1235. Vol. 90 TMR 505

Near the end of the opinion, the court expressed doubt that Congress had intended for the FTDA to apply to competing product designs such as the VOLA and Falling Water faucets and specifically noted that its ``doubts are heightened by the presence of constitutional constraints.''127 Further, in justifying its decision to endorse a strict dilution test, the court stated that ``a broad reading of dilution would bring us close to the constitutional edge, and we decline to attribute such brinkmanship to Congress, and so insist on rigorous review.''128 Judge Boudin echoed the court's constitutional concerns in his concurring opinion, observing that the case presented ``a difficult constitutional question.''129 Although the First Circuit avoided ruling on the constitutionality of the FTDA as applied to product designs in Lund, it is not at all clear that it would uphold the statute if forced to decide this issue in a subsequent case. Rather, in light of these substantial constitutional ``rumblings,'' the court would likely condemn the FTDA as unconstitutional insofar as it applies to product designs. In sum, protection for product designs against dilution under the FTDA has the same monopolistic attributes as the patent regime. Unlike the patent regime, however, the FTDA monopoly potentially is perpetual and is granted without regard to the originality of the design. The Patent Clause forbids Congress from granting such perpetual monopolies to inventors without regard to the originality of the protected design. Moreover, the origin of the FTDA in the Commerce Clause does not allay these constitutional concerns. Rather, as presaged in the Lund decision, a court squarely presented with the constitutionality of the FTDA as it applies to product designs may well find the statute to be unconstitutional.

VI. CONCLUSION

A fundamental tenet of the free enterprise system is that free copying and imitation of ideas and things in the public domain is the rule, while the grant of exclusive rights such as patents and copyrights is the exception.130 As one preeminent patent jurist observed, ``there exists a fundamental right to compete through imitation of a competitor's product, which right can only be temporarily denied by the patent or copyright laws.''131 The Patent Clause of the Constitution embodies and defines this limited exception. Another exception, that for trademarks, is that competition through imitation is impermissible where consumers are confused into believing that the trademark owner, rather than the competitor, is the source or sponsor of the imitative goods. In this instance, however, the impermissible conduct arises from the existence of a likelihood of consumer confusion, not the copying itself. The problem with dilution is that it fits within neither the Patent Clause nor the confusion-based trademark exceptions. As applied to a word or symbol that does not fall within the subject matter of the patent or copyright laws, permanent exclusivity by virtue of the FTDA does not pose constitutional concerns, and any foreclosure of competition in dilution's traditional context—i.e., the use of an identical mark on noncompeting goods—would be difficult to imagine. Bicycle manufacturers and shoe makers, for example, are not competitively disadvantaged by not having the famous KODAK or DUPONT trademarks available to them. This holds true even for manufacturers of competitive products who use diluting word marks—they are only foreclosed from copying the word mark, not the products themselves. Dilution protection for product designs is an entirely different matter, both constitutionally and competitively, especially where numerous product designs that function as trademarks face the prospect of being preempted permanently from the competitive market place to the detriment of consumers. Congress has broad power to enact legislation and, over the years, has successively expanded trademark protection. As indicated by the First Circuit in Lund, however, a broad reading of trademark dilution protection to cover product designs may bring intellectual property protection to the constitutional edge.132 If a judicial declaration of the unconstitutionality of the FTDA is to be avoided with respect to product designs, Congress should amend the statute to remove product designs from its ambit.

127. Id at 50, 49 USPQ2d at 1242. 128. Ibid. 129. Id at 53, 49 USPQ2d at 1244 (Boudin, J., concurring). 130. 1 McCarthy, supra note 1, §1:27 at 1-52 to 1-53. 131. In re Morton-Norwich Products, Inc., 671 F2d 1332, 1336, 213 USPQ 9, 12 (CCPA 1982) (Rich, J.) (emphasis removed). 132. See Lund, supra note 11 at 50, 49 USPQ2d at 1242 (``We doubt that Congress intended the reach of the dilution concept under the FTDA to extend this far [to apply to product designs]. . . .'').