Trademark Morality

Article excerpt

C. Privileging Use of Personal Names

A trademark treatise writer in 1885 analogized participants in the American economy to knights in a medieval tournament. "Each man stands upon his own merits," he wrote, "just as a knight at a tourney has his own color to identify him with valor and high emprise." (179) In this tournament, it was important for each participant to identify himself to all other competitors. Only then would he be able to fully measure himself against others. Moreover, although a medieval knight was meant to live by a self-imposed code of chivalry, the commercial cavaliers of the late nineteenth century could not be trusted to police themselves. "Piracy must be restrained by the iron grasp of justice, that laudable industry may flourish," proclaimed the treatise writer. It was for the courts to help set the ethical boundaries of this tournament and "uphold a high mercantile morality." (180)

In keeping with the idea that the marketplace was a place for self-definition and that courts had a role in encouraging this process, late nineteenth-century trademark law chose to recognize an absolute right, even in the face of consumer confusion or competitive injury, for citizens to use their own name for the purposes of trade. Names are an obvious badge of identity, the personal marker we most commonly use for self-presentation. (181) The doctrinal privileges afforded competitive use of personal names can be explained by the moral argument that it was unfair to prevent certain citizens from having the opportunity to shape themselves in economic competitive struggle.

In 1875, the New York Court of Appeals instructed that "every man has the absolute right to use his own name in his own business, even though he may thereby interfere with or injure the business of another person bearing the same name." (182) In that case, the plaintiffs' mark, "Meneely," had been in use since 1826 and had "become a designation or trade mark of great celebrity and value to the plaintiffs." (183) Use of the same name in the same type of business in the same town by another person named Meneely, however, was not actionable under trademark law despite the consumer confusion produced by such use. (184)

Such a rule was not justified by prudential concerns. After all, some consumers would inevitably fail to realize that the junior user of the surname was unaffiliated with the senior user. In such circumstances, the senior user was likely to lose some potential sales and some purchasers were likely to buy from the defendant while under the impression that they were trading with the plaintiff. Rather, the privilege granted to use of personal names stemmed from an ethical argument about the accoutrements of personhood. Someone pursuing "the avocation of a lifetime in a corporation" under her own name should not be blocked by an infringement action. (185) As one leading treatise of the time explained, there was a shared belief in this country that the identity concerns bound up in the right to use one's own name in business should trump other concerns:

   The general impression is prevalent that a man's name, like his
   house, is particularly his own; and an Englishman or American
   is quick to resent any interference with such rights by the
   courts. The common law has taught them that every man's
   house is called his castle....And his name is more dear to him
   than his house. (186)

The Supreme Court agreed, describing the right to use one's name in a business in the strongest of terms:

   A man's name is his own property, and he has the same right to
   its use and enjoyment as he has to that of any other species of
   property. If such use be a reasonable, honest and fair exercise of
   such right, he is no more liable for the incidental damage he may
   do a rival in trade than he would be for injury to his neighbor's
   property by the smoke issuing from his chimney, or for the fall
   of his neighbor's house by reason of necessary excavations upon
   his own land. …