Learned Hand's Trademark Jurisprudence: Legal Positivism and the Myth of the Prophet

Abstract

Learned Hand is considered by nearly all to be one of the most respected jurists in American legal history. The literature is replete with references to Hand, depicting him in superlative terms as one of the most accomplished and respected judges to sit on any United States court. Most recently, two of the people most qualified to make the determination have concluded that Hand was a great judge. Gerald Gunther in his biography on Hand (and in subsequent spin-off articles) relied on his personal affinity for Hand to conclude that Hand was a great judge. Also, Judge Richard Posner, based almost exclusively on a quantitative analysis of the number of times Hand's opinions have been cited in various courts, concluded that Hand was a great judge.

Even though Hand never was promoted to the Supreme Court, in his fifty-plus years as a judge (sitting first in the district court and then in the circuit court), very few other judges have been canonized as much as Hand. In fact, in 1959 the Second Circuit held a special session to praise Hand's fifty years of judicial service. These comments were placed on the record and are reported in the Federal Reporter. No other judge in American history had received such an honor.

A lawyer, judge or law student who formed his or her entire opinion of Learned Hand's opinions based on such canonization might expect each decision he wrote to be a masterpiece, each area of law he touched to be clarified, and each opinion to be consistent, true, and somehow objectively and normatively a correct statement of the law. Or, at least, these people might expect that his decisions were still good law today. As this article argues, however, as applied to Hand's substantive trademark jurisprudence, this is often not the case.

Whether a judge is worthy of the type of praise Hand has received should be evaluated, as Richard Posner claims, by analyzing the contribution that a particular judge's decisions have had on the formulation and development of the law on any given subject. I accept this standard as axiomatic in this determination. Based on this standard, it is difficult to see how anyone could claim that Learned Hand was a great trademark judge.

Learned Hand's trademark jurisprudence, taken as a distinct unit, exhibits a rather amazing conservativism. Hand's judicial philosophy in trademark cases was to give extreme deference to the common law as he learned it in the 1920s. He was extremely resistant to change. This is perhaps explained by what appears to be Hand's understanding of legal positivism - that law is a statement of the will of the sovereign and judges are not free to create law without a clear statement of authority from the State. This judicial philosophy by Hand actually had an extremely restrictive impact on the development of trademark law. Although Hand is given much credit for shaping the law in this area, substantially all of his discourse on the subject has a remarkably conservative tone. This conservativism seems to be informed by the legal positivists' notion of law and the role of lawyers.

Because trademark law was in such a formative stage of development while Hand was judging these cases, and because trademark law has historically been a right derived at common law, he actually had a negative impact on the expansion of rights granted to holders of trademarks. In fact, Hand spent thirty years attempting to discredit the one case for which he is most often cited and on which much of his trademark jurisprudence fame is based.

This article, then, is a systematic study of all twenty-five opinions (either majority or dissenting) regarding substantive trademark law that Learned Hand wrote while on the Second Circuit Court of Appeals. Part II introduces the law of trademarks. Part III introduces legal positivism, which I believe strongly influenced Hand's perspective on the role of a judge in our system of justice. Part IV describes Hand's peculiar interest and attraction to intellectual property opinions in general. Part V consists of a systematic analysis of Hand's trademark cases.

The article concludes that Hand was a rather rigid legal positivist and that this philosophical perspective strongly influenced the manner in which Hand viewed his role as a judge in trademark cases, thereby dictating and explaining the outcomes of his trademark cases. Furthermore, Hand's legal positivist perspective explains the difference between his opinions and various otherwise irreconcilable cases by other courts - including the Supreme Court - and resulted in greatly restricting the development of trademark law.

Finally, this article concludes that Hand's superlative reputation in the area of substantive trademark law is not only unearned, but is based on complete myth. Very few Learned Hand trademark decisions should be cited today as controlling law. This is not a great legacy for the greatest judge in the history of the federal courts of appeals. By analyzing Hand's trademark opinions and categorizing him as a legal positivist, it is hoped that more discussion and close scrutiny of Hand's opinions will be initiated. In this effort, it is important to note, the role of legal theory is to allow for such group structuring. Deliberate group structuring facilitates the understanding of specific bodies of information. Most importantly, my use of theory in this article is intended to be causal, not just descriptive. When theory is used causally as well as descriptively, one comes to understand and appreciate the constraints and the perspective under which specific jurists operated.