Technology blogging site TechDirt recently posted a short article about the difficulties faced by consumers when a product no longer incorporates a feature that the public has come to expect.  In this case, one of the consumer interest groups concerned was a group composed of crack cocaine manufacturers.  If that grabs your attention, go here (or just read on) to watch an entertaining video showing Wolfram’s Theodore Gray taking a blowtorch to a Pyrex container.  The article/video were thought-provoking and they elicited a gut reaction from me that lead to some critical thinking about the dynamics of trademark law vis-à-vis the goals of the law itself.  I will return to that discussion after a little introduction to Pyrex.

Pyrex glass was introduced in 1915 by Corning Glass Works (now Corning Incorporated) and it soon became embraced by scientists and sous chefs alike for its most appealing property: it consisted of borosilicate glass, which is characterized by very low thermal expansion.  That property rendered Pyrex particularly useful for laboratory glassware and for kitchen ware, which must be able to withstand rapid changes in temperature.  Pyrex was a great success and in short order, the mark PYREX came to be associated with quality glass products that could be rapidly heated and cooled without risk of fracture.  Corning marketed this beneficial property and the reputation of its product grew. Although all Pyrex glass at the time was manufactured from borosilicate, Corning’s original trademark registration for PYREX was simply for “glass.”

Despite its broad registration, even the  courts recognized that the PYREX mark had taken on meaning beyond its original goods and services description, as discussed in a 1940 opinion by the Court of Appeals for the Eighth Circuit.  In that case, a glass bottle manufacturer that had been producing prescription medicine bottles under its REX trademark since the late 1800’s was unhappy when one of Corning’s licensees began manufacturing baby bottles bearing the PYREX mark.  At the time of the suit, the prescription bottle manufacturer had expanded its own glassware products to include baby bottles and it felt that PYREX was too close to its REX mark, considering the similarity of the goods.  Notably, the REX bottles were manufactured from ordinary glass, while the Corning licensee’s bottles were made from borosilicate glass.  Subsequently, the REX bottle manufacturer sued the Corning licensee for trademark infringement and Corning itself joined the suit.

After a decision in the district court favoring the REX bottle manufacturer, the Court of Appeals reversed, finding in favor of Corning and noting that “the name ‘Pyrex’ has come to mean, and standard authorities have recognized it as meaning, glassware of a variety ‘resistant to heat, chemicals or electricity.'”   The Eighth Circuit felt that PYREX’s unique thermal properties placed Corning’s product in “an entirely distinct field,” and therefore, in the Court’s view, there was little likelihood of confusion among consumers.  Notably, the Court determined that the plaintiff’s assertion of its rights to a zone of natural market expansion also held no water (milk?).  REX had established itself as a prescription bottle manufacturer and prescription bottles were the sole goods identified in its trademark registration, so it had no right to exclude Corning or its licensees from making baby bottles bearing a similar mark.  The Court noted that it could not accept Plaintiff’s suggestion that the “trademark ‘Rex’ for prescription bottles preserved to it for all time a monopoly not only on prescription bottles made of ordinary glass but on all other bottles of whatever description or quality, and, in fact, upon all glassware.”

Over the next several decades, Corning’s PYREX grew exponentially in fame and it is instantly recognizable by most consumers today.  Or is it?In 1998, Corning spun off its consumer products division, including all of its kitchen ware.  Corning retained ownership of the PYREX trademark registration, but it ceased manufacturing Pyrex products and it licensed the PYREX mark to several other companies.  One of those companies, World Kitchen LLC, continues to manufacture products bearing the PYREX mark in its classic, recognizable form.  However, at some unknown time, Corning and its  licensees stopped making PYREX branded products out of Pyrex (borosilicate) glass, and instead began manufacturing them from less-expensive soda-lime glass, which lacks the low thermal expansion properties of the original product.  This change in product properties was a lesson reportedly learned the hard way by crack cocaine manufacturers, who produce crack by heating up cocaine to high temperatures until it begins to coalesce into little balls or “rocks,” at which point the cocaine must be cooled rapidly.  Rapidly heating and cooling glass which has poor thermal properties results in fracture of the vessel and is apparently very bad for crack business.  I envision astonished crack makers crying out to consumer watchdog agencies everywhere.

So do Corning and its licensees have a responsibility to use the PYREX mark  exclusively on goods made from Pyrex glass, such as it was for more than half a century?  Consumers  (and crack dealers) have come to expect that quality, and Corning for many years promoted that quality through advertisement.

The comment in the aforementioned TechDirt article that triggered my gut reaction appears near the end. It suggests that there has been little outcry about the quiet change in composition of PYREX-branded goods, because

Corning isn’t having a dispute with a competitor . . . Imagine if a counterfeiter were passing off soda lime glass as Pyrex.  The outcry would be huge. Government agencies would be busting down doors and arresting people and using it as a reason to pass ACTA.   But if Corning and their licensees do it under the Pyrex brand, all we can do is shrug.

Colorful characterization aside, the poster is pretty much on the money: if Corning was still producing PYREX-branded products made of borosilicate glass and a competitor was producing a cheaper soda-lime glass product bearing a mark even vaguely reminiscent of PYREX, you can bet that Corning’s first argument for trademark infringement/unfair competition/dilution would be that the cheaper goods would be likely to create consumer confusion and damage the association that consumers have come to make between the PYREX mark and quality glass products.  But since this is an issue that affects only consumers (and the corporations in question are all still profiting), the issue goes largely unnoticed.  Initially, that seems unfair, particularly if you take the consumer welfare view of the justifications for trademark law.  And indeed, consumer welfare is one accepted goal of trademark law: trademarks provide consistency to consumers, especially where quality is concerned.  As the U.S. Supreme Court noted, a trademark “assures a potential customer that this item — the item with this mark — is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.” Qualitex Co. v. Jacobson Prod’s. Co., 514 U.S. 159, 163–64 (1995).

For example, I know that when I walk into Target to buy a plastic storage bin, I will probably get a better quality product if I choose a Rubbermaid-branded container than I will if I choose the cheaper Sterilite brand.  And in defense of Sterilite, I may even choose the cheaper brand if the circumstances of the purchase are such that price matters more to me than quality.  The key for the consumer is being able to tie a mark to predictable product qualities, simplifying the act of purchasing.

However, most contemporary theorists cite a second justification for trademark law as well, namely that trademark law should protect the producers of goods and services from the misappropriation of the goodwill that they have worked diligently to create.  In other words, “the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.”  Id.

This trademark owner-centric view alters our discussion a bit.

The Lanham Act implies a requirement that trademark owners maintain a degree of control over the quality of products that are produced by licensees under their mark, an arrangement which, by the way, is extraordinarily common, especially where brand-extension licensing is concerned (Cheetos Lip Balm, anyone?).  This requirement is tied to the consumer welfare theory: consumers come to associate certain qualities with products manufactured under a particular mark, and in order for those associations to be reliable, quality must not vary from manufacturer to manufacturer.  However, as mark licensing has become increasingly common, the judicial system has gradually lowered the bar on the level of quality control or oversight required of the trademark owner.

Perhaps part of the reason for reducing that bar is the fact that the trademark system is at least partially self-correcting.  If, for example, Mercedes-Benz begins manufacturing inexpensive automobiles made with low quality parts, its reputation will likely soon decline and the association that many consumers make between quality automobiles and the MERCEDES-BENZ mark would be lost.  Consumers who desire high quality products will drift away (welfare theory) and businesses like Mercedes-Benz that have failed to continue to invest in the consistency of products branded with their marks will lose that goodwill (trademark owner-centric theory).  The only burp in the system is the reality that trademark owners who alter their marks and lose goodwill do not necessarily lose their marks.  Is that a bad thing? My initial gut instinct is yes, because I have a champion-of-the-consumer mentality, but after some consideration, it doesn’t bother me quite as much.  A company that changes the nature of its goods will eventually gain the attention of consumers and consumers will change their purchasing preferences accordingly.  A kind of mark evolution occurs: a mark that was once associated with a certain quality or characteristic becomes associated with something different.  In this simple version of product change, the risk to consumers is probably mostly short-term, as consumers soon become aware of the change in product quality through word of mouth:

But sometimes that recognition takes time, particularly when a very strong brand has developed a quality reputation through many years of consistent use on the same kind of products:

In the case of Pyrex glassware, the change may be very subtle and discovery may in fact  be dangerous to consumers (including, but not limited, to crack dealers).  I didn’t search Westlaw to determine if there have been any lawsuits lodged against Corning or its licensees for injuries sustained by consumers who used modern Pyrex kitchen ware, but I would not be surprised to find at least one

However, consumer safety is the province of another area of law: torts.  If consumer safety is put at risk because of reasonable (though incorrect) assumptions that consumers are likely to make about product characteristics, then it might be reasonable to simply require a broad (or broader) product safety warning on the product itself.  Certainly consumers are accustomed to such warnings, to the point of numbness from over-inclusion.

At least one issue remains, however, outside the scope of consumer welfare, which I touched upon earlier: competition.  If I own a trademark registration, that registration endows me with the right to exclude others from using a same or similar mark on products of a similar nature.  In the case of a famous trademark (PYREX likely qualifies), I can sometimes even exclude others from using the mark on dissimilar goods.  However, if I fail to use a word or symbol in the manner envisioned by the statute — that is, in a manner that creates a known, consistent association between my goods and the mark — I risk abandoning the mark and others may use the mark for their own products.  This is part of the quid pro quo of trademark law that is characteristic of all intellectual property law: the owner gets a limited monopoly in exchange by using its intellectual property in the manner envisioned by the statute.  If the owner fails to do so, other member of the public (and private sector) have the right to use the intellectual property as well.

In reality, cases in which a mark is treated as abandoned because the owner has made changes in the underlying product are exceedingly rare.  However, as McCarthy notes, gradual changes in product nature are common and consumers expect such changes.  Only “sudden and substantial change in the nature or quality of the goods sold under a mark may so change the nature of the thing symbolized that the mark becomes fraudulent and/or that the original rights are abandoned.”  3 McCarthy on Trademarks and Unfair Competition § 17:24 (4th ed.) (citing Independent Baking Powder Co. v. Boorman, 175 F. 448 (C.C.D. N.J. 1910) (Manufacturer of SOLAR alum baking powder assigned rights to another who substituted phosphate for alum. Trademark rights held forfeited).

Would Pyrex’s change from borosilicate glass to soda-lime glass qualify as “sudden and substantial?”  Perhaps.  However, until an unlicensed manufacturer begins to use a mark confusingly similar to PYREX on glass goods, we are not likely to see the theory of abandonment tested with respect to the PYREX mark.

SOPA and its senatorial sister bill PIPA are officially stalled in Congress, and now that some of the din surrounding these failed bills has quieted, I think it is worthwhile to take a  closer look at their place in the succession of Internet-targeted legislation.

Whether you agree or disagree with the proposed legislation, it is difficult to ignore the amount of media attention received by the bills.  Much of the hullabaloo surrounding these bills is largely the product of propaganda generated by competing interests: Internet service providers like Google, Facebook, and Wikipedia on one side, and content owners, including the entertainment industry, on the other.

Following a build-up fueled by heated Congressional debate over the bills and their eventual condemnation by the White House, the public’s attention was firmly captured when service providers like Wikipedia, Craigslist, and WordPress temporarily disabled all or parts of their websites in protest of the proposed bills.  Google even blacked out its logo and launched an anti-SOPA/anti-PIPA public petition, which accumulated more than 7 million signatures in a single day.

Free speech advocates asserted that the legislation constituted censorship without due process and Republican presidential candidates even took a stand against the bills during a national debate, injecting the issue into prime time.  At the same time, the entertainment industry generated its own buzz by purportedly paying lobbyists $94 million dollars in support of the proposed legislation, a fact that was widely publicized.  Make no mistake: companies with the most at stake fueled much of the hype surrounding the proposed legislation in an attempt to raise public awareness and persuade Congress to act in their best interests.

However, corporate heavy hitters have been vocal about proposed Internet-focused legislation since such legislation first began to emerge in the mid 1990’s, and while the public has been part of the discussion in the past, it may be argued that media penetration and public attention have never risen to the level that has surrounded the SOPA/PIPA debate.  The stakes are certainly higher than they once were, as the value of e-commerce, online advertising, and the like — both legitimate and illegitimate — can be measured in billions of dollars, a climate far different from ten or fifteen years ago.  The mid-1990’s don’t  seem oh-so-long ago, but bear in mind that this was a time when websites still looked something like this:

The value of Internet-related commerce is the product of the value that the public places on the Internet itself, and this is where the greatest change has occurred over the last decade and a half.   As a technology, the Internet is unmatched with respect to the rate at which its application is growing.  Not only has the Internet become a universal, borderless medium for communication, it has also become integrated into the fabric of our daily lives, and increasingly so.  Everything is becoming tied to the Internet — from retail brick and mortar shopping with near field technology to streaming television, to household appliances and vehicles.  From dental offices to DVD players to dating services, the Internet is increasingly ubiquitous.

Much of the attention surrounding SOPA and PIPA is likely attributable to the public’s increasing interest in legislation that affects the way users interact with the Internet.  Otherwise stated, the public is more sensitive to any threat to its Internet, and rightfully so.  Evidence that the SOPA/PIPA kerfuffle is at least partly tied to the public’s increasing reliance on the Internet might be found by stepping back a few years to look at the climate surrounding the enactment of earlier Internet-focused amendments to the U.S. Copyright Act, particularly the 1996 Communications Decency Act and the Digital Millennium Copyright Act.  The CDA and the DMCA were enacted in 1996 and 1998, respectively, during the Internet’s adolescent years.  The players were mostly the same, as Hollywood pushed for the DMCA, service providers (mainly ISP’s) resisted it, and free speech advocates offered their two cents.  Both bills, however, passed without much difficulty, despite a number of controversial provisions, not unlike the provisions found in SOPA/PIPA.  Among other things, the CDA and the DMCA have some legislative elements in common with the proposed SOPA/PIPA legislation in that they: (1) contain provisions that offer immunity to online service providers; and (2) provide judicial shortcuts and/or remedies to content owners, to enable them to seek swift and effective relief from online infringement.

The former element is critical to fostering the growth of the Internet, as the drafters of both the earlier and current legislation recognized: if service providers are held accountable for infringement in which they merely act as a conduit, they would be forced to police their networks beyond reasonable means, impeding the growth and innovation of the Internet.   The CDA contains a Good Samaritan provision in § 230 that insulates ISP’s from liability for torts committed by Internet users and from liability for restricting pornographic content.  Likewise, § 512 of the DMCA offers a series of safe harbor provisions that online service providers  from liability for copyright violations that occur via their services, providing that these providers meet several delineated obligations.  SOPA, too, contains such a provision, in proposed § 104, which provides immunity to service providers for taking action against websites owners, domain name owners, payment providers, and search engines providers that take action prior to the issuance of a court order issued to terminate a site dedicated to the theft of U.S. property.  PIPA’s immunity provisions are arguably less clear, but they are present, at least to the extent of providing service providers for with immunity for acting once a court order has issued.

Controversial judicial shortcuts and expanded remedies are also incorporated into the DMCA, CDA, SOPA, and PIPA.  For example, the DMCA includes takedown notice provisions that require service providers like YouTube and Facebook to remove content immediately in response to a notice of infringement, without first evaluating the claim with respect to fair use or accuracy.  If the provider fails to act as required by the notice, it cannot avail itself of the DMCA’s safe harbor provisions and it becomes subject to copyright liability.

SOPA contains similar notice provisions in proposed § 103, titled “Market-Based System to Protect U.S. Customers and Prevent U.S. Funding of Sites Dedicated to Theft of U.S. Property.” Section 103 is designed to separate the owners of infringing sites from their financial lifeblood by halting their use of payment systems like PayPal and Visa and  stopping the flow of any income from advertisers on those sites.  Under the provisions of this section, content owners who become aware of pirated content on a website would be able to serve notice upon any payment or advertising service provider that is associated with the infringing site.  In turn, the service provider would then terminate its business with the owner(s) of such sites.  Like the DMCA, there is a judicial shortcut here, because no court proceeding is required to validate the notice and the notice itself need contain only a minimum of information to comply with the law.

This seems like a substantial judicial shortcut, but §103 is a bit of a paper tiger, because absent an actual court order, SOPA does not place any threat upon payment or advertising service providers for failing to comply with the notice.  Their participation in the process is entirely voluntary, unless and until a court order is supplied.  Section 103 is not without impact, however; it serves to outline the process that service providers should follow to properly comply with the proposed law and avail themselves of its safe harbor provisions without fear of recourse.  However, with SOPA effectively dead in Congress, its effectiveness may never be tested.

Although the authority of the CDA was substantially abrogated by the Supreme Court in Reno v. ACLU in 1997, it and the DMCA persist, despite challenges.  And without question, the Internet has continued to  flourish despite such legislation. SOPA and PIPA are, in several ways, weaker pieces of legislation than those acts, yet public (and corporate) outcry over the proposed legislation has successfully prevented its enactment.

The demise of the arguably milder SOPA/PIPA legislation is puzzling.  Is it due to an increased public desire to preserve the Internet in its current form? Or is it instead the  product of a shift in power from corporate entities that own content (like the Motion Picture Industry) to corporate entities that serve content (like Google)? Very likely, the answer is both, as companies like Google encourage the integration of the Internet into technology and build new technology around the Internet.  Correspondingly, users come to rely on that integration and the public’s response to anything that might interrupt the status quo is increasingly vocal.

Have we passed beyond a golden era in which Congress can successfully enact Internet-focused legislation through compromise and careful lawmaking? Are SOPA and PIPA examples of the higher bar that legislators must overcome in order to enact such legislation — a bar raised by content hosts and the public itself? Time will tell.