Sonia K. Katyal - UCLA Law Review

1612 57 UCLA LAW REVIEW 1601 (2010)
of intellectual property law, is largely dominated by an economic perspective.
Trademarks are owned properties, brand owners may argue, rather than simply
ideas. Yet while trademarks are commodities in one sense, they are also expressions
in another, to both the markholder that owns them and to the public
that perceives them, and the law inherits the responsibility of navigating a
trademark’s potential contradiction between its status as corporate property and
as cultural icon. The PTO is charged with the responsibility to cancel, or to
refuse to register, the mark if it determines that the mark “comprises immoral,
deceptive, or scandalous matter,” or if it may disparage certain persons, institutions,
beliefs, or national symbols. 29
Yet this position conflicts with the dominant
economic approach to trademarks, which tends to situate trademarks within a
private marketplace of goods, where symbols operate to sell, to inform, and to
persuade the consumer.
Both views—trademark as commodity and trademark as social symbol—
are deeply suffused with notions of culture and identity. But they focus on
managing two different types of externalities—one that is largely economic, and
another that is largely cultural or content-based. And yet the law seems unable
to satisfactorily reconcile both types of externalities at the same time. Since the
architecture of trademark law focuses only on how marks communicate information
about a certain product or corporation within the marketplace of goods,
it largely underestimates the more complex role that trademarks play within the
marketplace of ideas. 30
Conversely, by only taking into account a brand’s
expressive implications, the provisions governing scandalous and immoral matter
fail to address the source-identifying functions that these marks often serve. As
a result, the economic perspective, as a general body of principles and precepts,
seems wholly unable to account for the fluidity of language and the effects that
those marks have on society. And, on the expressive side, the constantly shifting
domain of language and meaning sits awkwardly beside the dominance of economic
theory—coexisting, but never quite intersecting, with each other.
This Part argues that, just as intersectionality theory argues against the
decoupling of identity-based categories like race and gender, trademark law, quite
similarly, suffers from a parallel problem of essentialism regarding its public and
private facets. While trademarks are owned properties, they are also suffused
with expressive implications. Contrary to the law that treats trademarks like
other types of private properties, this Part argues that trademarks often function
like other public goods, and the law’s failure to recognize this role accounts
for some of its inherent tension between economic and expressive value.
29. 15 U.S.C. § 1052(a) (2006).
30. See Rochelle Dreyfuss, Expressive Genericity, 65 NOTRE DAME L. REV. 397 (1990).