The Judicial Role in Trademark Law

IntroductionWhat is the judicial role in developing trademark law? One answer is that it is the same as any other body of law: the principles that guide a judge in administering, say, ERISA also apply to trademark law.But that's too facile. However seamless law's web,1 each str and has its nuances. Trademark's begin with being a branch of intellectual property ("IP") law. Trademark law vests private actors with quasiregulatory power by granting rights in intangible goods (albeit on a theory different from that at work in copyright and patent law).2 Judicial management of these powers must accommodate trademark's common law history and its substantial, but incomplete, codification by the Lanham Act.3 That statute, in turn, contains both delegating and non-delegating provisions. Some sections authorize courts to continue developing trademark law; others leave less room for judicial action. Trademark's factual inquiry, moreover, is complicated. To measure "li- kelihood of confusion," fact finders must put themselves in the shoes of relevant consumers while accommodating the effect of their own conceptions. Last, the Lanham Act's administration implicates external bodies of law (e.g., the First Amendment) that require harmonization in a manner sensitive to each doctrine's respective requirements.4 We therefore need more than a general attitude about the judicial role to have much to say about what is appropriate in trademark.Thinking about trademark-specific issues in conjunction with broader legal concerns is nonetheless worthwhile. Trademark's expansion has prompted criticism for threatening expressive and consumer interests.5 Reform efforts are less likely to succeed without an accurate survey of the scope of judicial authority. Consider the problem of trademark defenses. Even if responsibility for trademark's expansion falls in part on "activist" judging,6 the same judicial energy is not necessarily available to respond to trademark's growth. In a recent article, I argue that the Lanham Act's particular mix of delegating and nondelegating language gives judges less room than commonly thought to craft defenses to liability.7 Others disagree.8 The issue underscores the need for an accurate conception of what judges can and cannot do to develop trademark law. Policy prescriptions directed at judges mean little if they are crafted without regard to the boundaries of judicial discretion. Judges care about more than substantive policy. And if reformers want courts to take their prescriptions seriously, they should too.The limits of the judicial role in trademark law should also interest those outside trademark and its policy debates. Disputes over statutory interpretation and implementation are unending. Stepping back from these broad arguments to consider how our views play out in a particular area of law may be a useful test of intuitions. Trademark offers fer- tile ground for this kind of examination in part because judicial views on the subject, at least at the Supreme Court level, are relatively nonideological.9What then is the judicial role in trademark's future? It is true that judges always have been, and will continue to be, partners with Congress in shaping the contours of trademark doctrine.10 But granting the existence of a judicial role leaves the work of mapping its parameters. This article surveys the boundaries in light not only of what we want from trademark law, but from the law in general. Considering trademark law from a perspective outside trademark's substance provides an alternative basis for evaluating recent precedents.Developing this perspective requires asking whether there is much to say about the proper judicial role independent of one's substantive trademark views. Norms of judicial behavior are contested, but there may be some common ground that may provide guidance in cases where policy considerations are indeterminate. These conceptions may or may not trump the substantive considerations of any given case. …