Article
Living with the Merchandising Right (or How I Learned to Stop Worrying and Love Free-Riding Stories)
Yale Journal of Law & Technology
(2023)
Abstract
Trademark scholars love to hate the merchandising right (i.e., the use of trademark law to give trademark owners control over products in which the trademark is the good—e.g., a BOSTON RED SOX baseball cap). We think that trademark law should protect consumer interests. If no one thinks that sports teams manufacture their own merchandise, then there’s no possibility of source confusion. Rather than benefitting consumers, the merchandising right artificially increases consumers costs by giving trademark holders a monopoly on their logos.
Nobody cares. Whatever law professors may think, people—and importantly, judges—generally believe that trademark holders should control merchandising markets. Hard-wired moral intuitions suggest that the resulting profits are a just reward for creating popular brands and that others should not “free ride” off of these efforts. These intuitions are resistant to argumentation. We are therefore likely stuck with the merchandising right.
Nonetheless, the merchandising right is inconsistent with fundamental trademark doctrine. It therefore creates a host of inconsistencies that ripple throughout trademark law and reach cases that have nothing to do with merchandising logos. The problem is especially acute in those cases in which it is the trademark owner who is trying to capture an unearned benefit. These cases turn the intuitions behind the merchandising right on their head, but courts do not have a vocabulary for distinguishing them from “traditional” merchandising disputes. The result is a muddle that affects trademark law as a whole.
One solution is to take free riding seriously. If anti-free riding moral intuitions are to be part of trademark law, then they may be used both for and against trademark owners. While this means accommodating merchandising to trademark law—an unpalatable outcome to its critics—if the right is here to stay, we may as well contain its scope and craft a trademark doctrine that actually comports with the moral intuitions of the judges implementing it.
Disciplines
Publication Date
Spring May 8, 2023
DOI
http://dx.doi.org/10.2139/ssrn.4055689
Citation Information
Michael Grynberg. "Living with the Merchandising Right (or How I Learned to Stop Worrying and Love Free-Riding Stories)" Yale Journal of Law & Technology Vol. 25 (2023) p. 1 - 85 ISSN: 2766-2403 Available at: http://works.bepress.com/michael-grynberg/11/