Sunday, 9 November 2003

McJam over McJob

James Grimmelmann reports on LawMeme that McDonald's is in a tiff over Merriam-Webster's (MW) inclusion of McJobs in the new edition of its Collegiate Dictionary. (Article: Tales of Trademark Abuse: McDonald's Goes After the Dictionary?) The Associated Press (via MSNBC) reports MW's definition: "low paying and dead-end work." (Article: McDonald’s balks at 'McJob' entry) AP writes, "In an open letter to Merriam-Webster, McDonald’s CEO Jim Cantalupo said the term is 'an inaccurate description of restaurant employment' and 'a slap in the face to the 12 million men and women' who work in the restaurant industry." The company's lawyers also noticed the similarity between McJob and McJobs — the trademarked name of McDonald's training program for mentally- and physically-challenged people. James comments, "McDonald's wants to censor the dictionary in order to protect their brand, and they'll use trademarks to do it." He is right, of course, but I am not sure it matters.

Federal trademark law is governed by the Lanham Act. What part of the law might MW have violated? Section 43 of the Act (codified in 15 U.S.C. 1125) is the chief provision establishing civil liability in the trademark context. While McDonald's arguments in this area may rise above the Rule 11 bar, they are probably not winners in court.

Section 43(a) prohibits one from using a word or other mark "in commerce" in a manner that constitutes a "false designation of origin…or [a] false or misleading representation of fact." This false or misleading usage must be "likely to cause confusion" as to the origin of a product or as to some connection to a third party. Using a mark in "commercial advertising" that misrepresents the nature or characteristics of a product can also trigger civil liability. This is known as the infringement section of the Lanham Act, and it is most often applied where Competitor 1 sells a product under a mark that is confusingly similar to Competitor 2's mark. See Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir. 1961). This tort is known as trademark infringement, and 43(a) provides both a cause of action and a right of action for the owner of the mark (Competitor 2, in my example) to bring an action in federal court.

Did MW commit trademark infringement? There has been no suggestion that MW used the word McJob in any advertisement, to designate the origin of its dictionary, or to make any representation about the dictionary's contents. Can any reasonable argument be made that MW's inclusion of McJob in the dictionary suggests any kind of association, sponsorship, or approval by McDonald's? If so, I would love to hear it. First, the word is only one of approximately ten thousand new words added in the new edition — in addition to the tens of thousands of words already there from prior editions. It might be different if MW had added only a handful of new terms or placed McJob on the dust jacket, as a pithy excerpt designed to market the book. Second, MW's dictionaries contain a host of words that match registered trademarks precisely, such as Xerox, Teflon, and Polaroid. All of these entries mention the relevant trademarks, then define these words in generic terms — the antithesis of what a trademark owner would want. Xerox Corp., for example, is famous for buying advertisements and sending letters by the bushel, urging people to use its famous mark only as a modifier for its brand, not as a generic word. Meanwhile, McDonald's is objecting to a word that is merely similar and not identical to its trademark. The owners of any of those other marks could make a stronger argument than McDonald's can.

However, none of the companies owning these marks are complaining about their inclusion in the dictionary. Trademark law recognizes that some types of speech and writing are socially useful — especially expression that is at the heart of the First Amendment, such as commentary and satire. Dictionaries fall in this category because they disseminate knowledge more than any other type of reference work, and they provide us with the means of communicating intelligibly. Without dictionaries, there would be no standardization in language, and the volume of core First-Amendment activity would be reduced. Such important uses of language are given a wide berth in trademark law.

The other major provision of 43 is subsection (c), entitled "Remedies for dilution of famous marks." The principal function of trademarks is to designate the origin of products in commerce, so marks become more valuable as they become more well-known. Additionally, the more "distinctive" a mark is, the more it does to distinguish the products to which it is attached from competing products. Therefore, it makes sense that the law would accord more protection to marks that are both famous and distinctive than to marks that are only one or neither. Section 43(c) therefore requires a trademark to be "famous" and that someone use the mark in a manner that "causes dilution of [the mark's] distinctive quality." When these conditions are satisified, the person using the mark without permission (Competitor 1, in my example above) would be liable for trademark dilution.

Few trademarks are more famous than McDonald's McX family of marks, where X can be replaced by many different words. The company has spent enormous sums on marketing over several decades to gain that recognition. The marks are so famous that appending "Mc" to nearly any word connotes the qualities that we generally attribute to McDonald's restaurants. The association between McX and the homogenization of culture and commerce is firmly embedded in the American zeitgeist. McHouses fill cookie-cutter subdivisions typified by Levittown. McMusic is the predictable tunes played by the "boy bands" of the late 1990s.

Thus, McDonald's can establish the "famous" element of a trademark dilution claim. Ironically, however, that fame works against the company because of the equally-famous association between McX and homogenization — notwithstanding that such usage is without McDonald's consent. The public has, over many years, infused McX with a meaning entirely unrelated to the offerings on a restaurant menu. Many acts of dilution by millions of people over many years have impaired McX's ability to differentiate McDonald's entrees from those of, say, Burger King. MW's inclusion of McJob in its new dictionary causes, if anything, only an infinitesimal amount of marginal dilution. As a lexicographer, MW merely reports dilution that has already occurred in American English.

As a side note, I should note that McDonald's might also make an argument about the "tarnishment" of its trademark. MW's definition of McJob is unflattering, and it suggests that McDonald's restaurants' employees are miserable. The law of large numbers suggests that this cannot be true for each of McDonald's 400,000+ employees. However, the tarnishment argument falls to the same rebuttal as the dilution argument. MW is a lexicographer and merely reports any tarnishment that may have occurred over time, as millions of people have spoken or written McJob with the reported definition. Furthermore, the definition is not libelous of McDonald's as a company, nor of any particular employee (because no particular employee is identifiable in the definition). Rather, the definition remains a form of reporting on a public controversy and therefore embodies several activities at the core of First-Amendment protection.

The definition "low paying and dead-end work" shows the commentary-laden meaning that the public has already attached to McX. Unfortunately for McDonald's, that meaning is wrapped up in the controversial economics and politics of globalization. The First Amendment protects political speech more zealously than any other type of speech, and strong trademarks must often yield to free-speech interests in the realm of public debate. As James Grimmelmann noted, McDonald's is trying to remove a word from the dictionary and is using trademark law as its tool. The company may have created a family of words, but that does not give it the right to control its development in perpetuity. The public must have the right to discuss political and social issues.

Posted at 11:18:04 AM | Permalink

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Topics: Civil Liberties, IP
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