Category Archives: IP

K mart Corp. v. Cartier, Inc.

486 U. S. 281

May 31, 1988

A few months after the jurisdiction battle, the Supreme Court was ready for the merits. Section 526 of a law said that foreign goods bearing US trademarks could not be imported without the trademark owner’s permission. Agency regulations provided exceptions to 526 when the same basic entity had common control of both the US trademark and the foreign manufacturer of the goods, and also when the trademark owner had authorized a foreign company to use its trademark. Several trademark owners charged that these regulatory exceptions violated the basic text of 526.

By two different 5-4 alignments, the Court ruled that the ‘common control’ exception was all right, but the ‘authorized use’ exception was not. Kennedy, who wrote the Court’s judgment, said the agency would be deferred to if the text of 526 was ambiguous (Rehnquist, White, Blackmun, O’Connor, and Scalia joined this). He found the text ambiguous with regard to the ‘common control’ issue (White joined this). But he felt that the ‘authorized use’ exception was plainly foreclosed by the statute’s plain language. As a final matter, the ‘authorized use’ exception was severable from the rest of the regulation (Rehnquist, Blackmun, O’Connor, and Scalia joined these two points).

Brennan, joined by Marshall and Stevens, provided the three final votes to maintain the ‘common control’ exception. Brennan provided a seemingly unending discourse into Congressional intent and the history of agency interpretation. Both of which, he contended, proved that ‘common control’ is appropriately understood as a valid exception from 526’s general rule. In a section joined by White, he argued that the possibility of ‘authorized use’ would have been so unthinkable to 526’s original drafters that it did no harm to the statute to recognize it as another exception, even if the plain text seemed to suggest differently.

Scalia, joined by Rehnquist, Blackmun, and O’Connor, found both regulatory exceptions inconsistent with the statute. Scalia charged that the textual statutory ambiguity with respect to the ‘common control’ exception really wasn’t there. Worse yet, he argued, the agency itself interpreted the exception far more narrowly than the Court majority did in their process of finding ambiguity. Scalia also responded to Brennan’s approval of the ‘authorized use’ exception. He found it not quite so unthinkable to the original drafters as Brennan did.

These cases are precisely the kind that cause me to abandon this project for months at a time: ones that are long, not easily distilled, highly technical, and incredibly boring. I really don’t give a rip about foreign products with US trademarks, and I feel sorry for the nine Justices that they were forced to care about the issue for several months in 1988.


San Francisco Arts & Athletics, Inc. v. United States Olympic Comm.

483 U. S. 522

June 25, 1987

The Amateur Sports Act gave the United States Olympic Committee (USOC) an ultra-strong tradmark in the word “Olympic.” Anyone wishing to use the word would have to get permission from the USOC first, even if the usage would not be confusing, as is usually required for a trademark violation. The Special Olympics was one organization which got proper permission from the USOC. But when a San Francisco group tried to get authorization to call an event the “Gay Olympic Games,” the USOC took exception. The San Francisco groups sued, citing First Amendment concerns.

The Court ruled 5-4 that the USOC was in the clear. Powell first answered the objection that the law did not dispense with the confusion requirement; a quick look at legislative history proved otherwise. Turning to the First Amendment, Powell said “Olympic” was not too generic to merit protection, since the modern Olympics were such a universally recognized and understood phenomenon. Since 1896, a clear and unique secondary meaning had developed. Powell further held that the special distinctiveness of the Olympic games could justify the super-strong nature of the trademark. All of this was a 7-2 decision – in the final 5-4 section, the Court held that the government had not discriminated, because the USOC made the calls, and it was a private organization.

Brennan and Marshall dissented from the entire ruling. Brennan disagreed that the USOC was not really a government entity. At the Olypmics, it effectively functioned as a representative agent of the government. Furthermore, the Amateur Sports Act had required the USOC to put a number of important provisions in its charter, and mandated that the USOC provide reports to Congress. Finally, the USOC received a massive amount of government funding. “It would certainly be “irony amounting to grave injustice” if, to finance the team that is to represent the virtues of our political system, the USOC were free to employ Government-created economic leverage to prohibit political speech.” O’Connor, in an opinion joined by Blackmun, said she largely agreed with these arguments, and would have required a remand.

Brennan went further, finding the entire act unconstitutional. It was overbroad, because it prohibited even non-commercial expressive speech without providing good reasons for this vast reach. Moreover, there was no other good word left to convey certain expressive messages. “[A] title such as “The Best and Most Accomplished Amateur Gay Athletes Competition” would not serve as an adequate translation.” The USOC’s rejection of the San Francisco group was indeed viewpoint discrimination. And finally, the government had offered no compelling reason for making this one particular trademark super strong.

This decision was an {censored}-sized blunder. You know the intellectual property law is messed up when it has me agreeing with every word in a Brennan opinion, and even quoting it twice! The hubris and selfishness shown by the USOC is large enough to win an {censored} gold medal. The greatest irony of all is that the USOC and the IOC acquired the word “Olympic” by blatant theft in the first place. The word properly belongs to the Greeks. I’m not one to indulge in oppression {censored}, but I’d say Greece has a pretty legitimate grievance.