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Articles 1 - 30 of 37
Full-Text Articles in Law
Non-Traditional Trademarks: The Error Costs Of Making An Exception The Rule, Glynn Lunney
Non-Traditional Trademarks: The Error Costs Of Making An Exception The Rule, Glynn Lunney
Faculty Scholarship
Over the last sixty years, courts and the USPTO have engaged in an ill-advised expansion of trademark subject matter. Where once only words or emblems attached to a product could serve as a trademark, today a product’s design or packaging itself may receive such protection. This expansion was and is a mistake. There may indeed be rare cases where a product’s design or packaging conveys brand-specific information and could receive protection without impairing competitor’s ability to offer substitutes. Such cases are the exception and not the rule, however. Extending the strong legal presumptions and property-like protection trademark law provides to …
Hands Off “My” Colors, Patterns, And Shapes! How Non-Traditional Trademarks Promote Standardization And May Negatively Impact Creativity And Innovation, Irene Calboli
Faculty Scholarship
This chapter criticizes the protection of non-traditional trademarks (NTTMs) by focusing on three specific examples from the fashion industry: Louboutin, Gucci, and Bottega Veneta. In particular, besides repeating that granting exclusive rights to NTTMs equates in foreclosing competitors and third parties from using any identical and similar product design and products feature, this chapter highlights an additional problem related to the protection of NTTMs. Notably, that, by recognizing and protecting as marks elements that are product design and aesthetic product features, protecting these marks supports a system of intellectual property protection that promotes standardization, rather than creativity and innovation, in …
Introduction To The Protection Of Non-Traditional Trademarks: Critical Perspectives, Irene Calboli
Introduction To The Protection Of Non-Traditional Trademarks: Critical Perspectives, Irene Calboli
Faculty Scholarship
During the past decades, the domain of trademark law and the scope of trademark protection have been expanded significantly. The flexible application of prerequisites for registration has paved the way for the recognition of a wide variety of signs as subject matter eligible for trademark protection. This includes single colors, shapes, sounds, smells, video clips, holograms, and even gestures. However, this expansion of the scope of trademark protection has been accompanied only by a partial expansion of the grounds for refusal relating to these registrations and the creation of defenses that permit unauthorized use in the interest of freedom of …
Two-Tiered Trademarks, Glynn Lunney
Two-Tiered Trademarks, Glynn Lunney
Faculty Scholarship
Today, we have a two-tiered trademark system. In the top tier, both parties can afford to litigate. In the lower tier, only one party can. This two-tiered system has arisen over the last century because courts refused to follow the law. Faced with trademark law that led to seemingly unjust outcomes in the case before them, courts rewrote trademark law. When those initial rewrites led to different sorts of seeming injustice as cases continued to arise, courts rewrote trademark law again and again. Moreover, judges rewrote trademark law not as part of any systemic and coherent plan for trademark law, …
Bounded Rationality, Paternalism, And Trademark Law, Stacey Dogan
Bounded Rationality, Paternalism, And Trademark Law, Stacey Dogan
Faculty Scholarship
We don’t need behavioral economics to understand that trade marks can shape consumer preferences in ways that have little to do with objectively measurable differences in product quality. Scholars, judges, economists, and policymakers have long recognized the tendency of strong marks to skew consumer decisions. The concern lies not only in price effects but with the allocative effects of encouraging investment in persuasive advertising, rather than product innovation or similar “productive” pursuits. While informative advertising can benefit consumers, advertising that creates artificial brand-based differences between otherwise identical products appears not only costly to consumers but also socially wasteful.
This Essay …
The Costs Of Trademarking Dolls, Jessica Silbey
The Costs Of Trademarking Dolls, Jessica Silbey
Faculty Scholarship
Professor Curtin’s article, Zombie Cinderella and the Undead Public Domain, takes a recent case from the Trademark Trial and Appeal Board (TTAB) as the basis for an argument that trademark doctrine needs stronger protection against the exclusive commercial appropriation of characters that are in the public domain. In that case, a doll manufacturer sought to register the term “Zombie Cinderella” for a doll that was zombie-ish and princess-like. The examiner refused registration because the term “Zombie Cinderella” for this kind of doll was confusingly similar to the mark for Walt Disney’s Cinderella doll. Although the TTAB overturned the examiner’s …
Letter To Council Members Regarding Council Draft 2, Jane C. Ginsburg, June M. Besek
Letter To Council Members Regarding Council Draft 2, Jane C. Ginsburg, June M. Besek
Faculty Scholarship
We understand that the ALI Council will consider Council Draft 2 (CD2) of the Restatement of the Law, Copyright (Copyright Restatement) project at its meeting on October 18-19, 2018. We have had – and continue to have – significant concerns about the project and the work to date. We note that numerous parties have expressed concerns about CD2, including the US Patent and Trademark Office, the American Bar Association’s Section of Intellectual Property Law, academics and other Advisers, and that the US Copyright Office and the New York City Bar Association’s Committee on Copyright and Literary Property have done so …
Copyright Lost, Glynn Lunney
Copyright Lost, Glynn Lunney
Faculty Scholarship
In this essay, I revisit my 2001 article, The Death of Copyright, for the Franklin Pierce Center for Intellectual Property’s Redux Conference. In The Death of Copyright, I worried that copyright, as a law that serves “to promote the Progress of Science,” had died. Instead, with the enactment of the Digital Millennium Copyright Act, I feared that copyright had returned to a system of guild privileges that served only to maximize the rents of copyright owners. At the time I wrote the article, file sharing had just begun. Yet, the content industries were already proclaiming that the sky was falling. …
Tpp, Rcep And The Future Of Copyright Norm-Setting In The Asian Pacific, Peter K. Yu
Tpp, Rcep And The Future Of Copyright Norm-Setting In The Asian Pacific, Peter K. Yu
Faculty Scholarship
The past decade has seen two mega-regional intellectual property norm-setting exercises focusing on countries in the Asian Pacific region: the Trans-Pacific Partnership (TPP) and the Regional Comprehensive Economic Partnership (RCEP). Taken together, these two mega-regional norm-setting exercises will have unlimited potential to shape future copyright norms in the Asian Pacific region.
For countries involved in either the TPP or RCEP negotiations, legal obligations concerning new protection and enforcement standards will have to be incorporated into domestic law once the applicable agreement enters into force. These standards can be quite burdensome, as they often exceed what is currently required by the …
Trademark's Judicial De-Evolution: Why Courts Get Trademark Cases Wrong Repeatedly, Glynn Lunney
Trademark's Judicial De-Evolution: Why Courts Get Trademark Cases Wrong Repeatedly, Glynn Lunney
Faculty Scholarship
Trademark law has de-evolved. It has transitioned from an efficient mechanism for ensuring competition into an inefficient regime for capturing economic rents. In this Article, I focus on the role that party self-interest has played in biasing the evolution of trademark law. This self-interest tends to lead parties to (1) challenge efficient legal rules and seek to replace them with inefficient, anticompetitive rules, and (2) accede to inefficient, anticompetitive rules once they are in place. Almost by definition, when a rule of trademark law promotes competition, it reduces the market surplus or rents that current producers capture. As a result, …
The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat
The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat
Faculty Scholarship
The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office encroachments …
When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat
When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat
Faculty Scholarship
The rise of administrative patent validity review since the America Invents Act has rested on an enormous expansion of Patent Office authority. A relatively little-known aspect of that authority is the agency's statutory ability to intervene in Federal Circuit appeals from adversarial proceedings in its own Patent Trial and Appeal Board. The Patent Office has exercised this intervenor authority frequently and with specific apparent policy objectives, including where one of the adverse parties did not participate in the appeal. Moreover, until recently, there has been no constitutional inquiry into the Article III standing that the Patent Office must establish in …
Cross-Subsidies: Government's Hidden Pocketbook, John Brooks, Brian Galle, Brendan S. Maher
Cross-Subsidies: Government's Hidden Pocketbook, John Brooks, Brian Galle, Brendan S. Maher
Faculty Scholarship
Governments can use regulation to pay for public goods out of the pockets of consumers, rather than taxpayers. For example, the Affordable Care Act underwrites care for women and the infirm through higher insurance premium payments by healthy men. Building on a classic article from Richard Posner, we show that these “cross-subsidies” between consumers are a common feature of modern law, ranging from telecommunications to intellectual property to employee benefits.
Critics of the ACA, and even some of its supporters, argue that taxes would be a better choice. Taxes are said to be more transparent, and to fit better with …
Trends In Private Patent Costs And Rents For Publicly-Traded United States Firms, James Bessen, Peter Neuhausler, John L. Turner, Jonathan Williams
Trends In Private Patent Costs And Rents For Publicly-Traded United States Firms, James Bessen, Peter Neuhausler, John L. Turner, Jonathan Williams
Faculty Scholarship
We use detailed data to estimate the private costs and private rents of United States patents for publicly-traded firms. In analyzing costs, we first introduce a novel theoretical model to interpret our estimates. We then combine lawsuit data from Derwent Litalert with non-practicing entity (NPE) lawsuits collected by Patent Freedom, and use an event-study approach to estimate losses suffered by alleged infringers during 1984-2009. To estimate rents, we combine patent data from the USPTO and EPO with financial data from COMPUSTAT, and use market-value regressions to estimate the value of patent rents for publicly-traded US firms during 1979-2002. We find …
A Half-Century Of Scholarship On The Chinese Intellectual Property System, Peter K. Yu
A Half-Century Of Scholarship On The Chinese Intellectual Property System, Peter K. Yu
Faculty Scholarship
The first modern Chinese intellectual property law was established in August 1982, offering protection to trademarks. Since then, China adopted the Patent Law in 1984, the Copyright Law in 1990 and the Anti-Unfair Competition Law in 1993. In December 2001, China became a member of the World Trade Organization, assuming obligations under the TRIPS Agreement. In the past decade, the country has also actively participated in the negotiation of bilateral, regional and plurilateral trade agreements, including most notably the Regional Comprehensive Economic Partnership.
Today, the Chinese intellectual property system has garnered considerable global policy and scholarly attention. To help develop …
Can A Court Change The Law By Saying Nothing?, Paul Gugliuzza, Mark A. Lemley
Can A Court Change The Law By Saying Nothing?, Paul Gugliuzza, Mark A. Lemley
Faculty Scholarship
Can an appellate court alter substantive law without writing an opinion? We attempt to answer that question by conducting a novel empirical investigation into how the Federal Circuit has implemented the Supreme Court’s 2014 ruling in Alice v. CLS Bank, the most recent in a series of Supreme Court decisions strengthening patent law’s patentable subject matter requirement. Our dataset includes each one of the Federal Circuit’s more than 100 decisions on patentable subject matter in the three years since Alice, including affirmances issued without an opinion under Federal Circuit Rule 36.
Including those no-opinion affirmances, the Federal Circuit has found …
All Your Works Are Belong To Us: New Frontiers For The Derivative Work Right In Video Games, J. Remy Green
All Your Works Are Belong To Us: New Frontiers For The Derivative Work Right In Video Games, J. Remy Green
Faculty Scholarship
In copyright law, the author of an original work has the exclusive right to prepare further works derivative of that original. Video game developers’ works are protected by the Copyright Act. As video games take advantage of more advanced technology, however, players are doing more creative, interesting, and original things when they play games. Certain things players do create independent economic value and are the kinds of acts of original authorship our copyright system is designed to encourage. However, since the author of the video game is entitled to the full panoply of rights under the laws of the American …
Quick Decisions In Patent Cases, Paul Gugliuzza
Quick Decisions In Patent Cases, Paul Gugliuzza
Faculty Scholarship
Patent litigation is notoriously expensive and time consuming. In the past decade, however, patent law has changed in many ways that expedite resolution of infringement disputes. This article identifies and evaluates this trend toward quick decisions in patent cases. Balancing the savings in litigation costs against the potential for error, the article defends many recent and controversial developments, including the Supreme Court’s invigoration of the patent eligible subject matter requirement, the new administrative proceedings created by the America Invents Act, and changes in the requirements for pleading patent infringement. These developments permit defendants to obtain rulings of invalidity or noninfringement …
Allocating Patent Litigation Risk Across The Supply Chain, Michael J. Meurer
Allocating Patent Litigation Risk Across The Supply Chain, Michael J. Meurer
Faculty Scholarship
The paradigmatic defendant in a patent lawsuit is a vertically integrated manufacturer. But much economic activity is conducted collaboratively by a supply chain of vertically disintegrated firms, and sometimes multiple firms are implicated in infringing activities, by making, selling, or using patented technology, or by contributing to or inducing another firm’s infringement. Often patent owners have the option of suing some or all of the members of a supply chain who contribute to the design, creation and marketing of a new technology.
Businesses increasingly contemplate the risk of patent infringement when they negotiate contractual relations to form a supply chain. …
Customizing Fair Use Transplants, Peter K. Yu
Customizing Fair Use Transplants, Peter K. Yu
Faculty Scholarship
In the past decade, policymakers and commentators across the world have called for the introduction of copyright reform based on the fair use model in the United States. Thus far, Israel, Liberia, Malaysia, the Philippines, Singapore, South Korea, Sri Lanka and Taiwan have adopted the fair use regime or its close variants. Other jurisdictions such as Australia, Hong Kong and Ireland have also advanced proposals to facilitate such adoption.
Written for a special issue on "Intellectual Property Law in the New Technological Age: Rising to the Challenge of Change?", this article examines the increasing efforts to transplant fair use into …
Editorial For Special Issue Of Queen Mary Journal Of Intellectual Property, Peter K. Yu
Editorial For Special Issue Of Queen Mary Journal Of Intellectual Property, Peter K. Yu
Faculty Scholarship
Editorial Extract:
On 24 October 2017, the 19th Chinese Communist Party Congress concluded in Beijing. Held every five years, this historical and highly anticipated event has not only ushered in leadership and policy changes, but has also sent a strong message to the outside world that China is eager to assume greater world leadership. Today, no country can attain leadership without strengthening its economic development and technological capacity. Although China was backward when it was re-opened to the outside world in the late 1970s, the past three decades have seen the country making breathtaking progress.
When The Chinese Intellectual Property System Hits 35, Peter K. Yu
When The Chinese Intellectual Property System Hits 35, Peter K. Yu
Faculty Scholarship
This article explores what it means for the Chinese intellectual property system to hit 35. It begins by briefly recapturing the system’s three phases of development. It discusses the system’s evolution from its birth all the way to the present. The article then explores three different meanings of a middle-aged Chinese intellectual property system – one for intellectual property reform, one for China, and one for the TRIPS Agreement and the global intellectual property community.
Chocolate, Fashion, Toys And Cabs: The Misunderstood Distinctiveness Of Non-Traditional Trademarks, Irene Calboli
Chocolate, Fashion, Toys And Cabs: The Misunderstood Distinctiveness Of Non-Traditional Trademarks, Irene Calboli
Faculty Scholarship
Editorial Excerpt:
What do Cadbury, Toblerone and Kit-Kat chocolates, the Rubik’s Cube and Lego mini-figurine toys, Louboutin shoes, Bottega Veneta bags and London Taxi Company cabs all have in common? These products have been, along with several others, protagonists of the rising trend of registering shapes and other non-traditional trademarks in a variety of countries, and then, in several cases, protagonist of ensuing litigation addressing the validity of these marks. To a large extent, the review panels and the courts involved in these cases have declared several of these marks invalid or have reduced their scope considerably. Hence, these cases …
Ownership Of University Intellectual Property, Jon Garon
Ownership Of University Intellectual Property, Jon Garon
Faculty Scholarship
No abstract provided.
Liability For Providing Hyperlinks To Copyright-Infringing Content: International And Comparative Law Perspectives, Jane C. Ginsburg, Luke Ali Budiardjo
Liability For Providing Hyperlinks To Copyright-Infringing Content: International And Comparative Law Perspectives, Jane C. Ginsburg, Luke Ali Budiardjo
Faculty Scholarship
Hyperlinking, at once an essential means of navigating the Internet, but also a frequent means to enable infringement of copyright, challenges courts to articulate the legal norms that underpin domestic and international copyright law, in order to ensure effective enforcement of exclusive rights on the one hand, while preserving open communication on the Internet on the other. Several recent cases, primarily in the European Union, demonstrate the difficulties of enforcing the right of communication to the public (or, in U.S. copyright parlance, the right of public performance by transmission) against those who provide hyperlinks that effectively deliver infringing content to …
Intellectual Property As Seen By Barbie And Mickey: The Reciprocal Relationship Of Copyright And Trademark Law, Jane C. Ginsburg
Intellectual Property As Seen By Barbie And Mickey: The Reciprocal Relationship Of Copyright And Trademark Law, Jane C. Ginsburg
Faculty Scholarship
Some years ago, caselaw on trademark parodies and similar unauthorized “speech” uses of trademarks could have led one to conclude that the law had no sense of humor. Over time, however, courts in the US and elsewhere began to leaven likelihood of confusion analyses with healthy skepticism regarding consumers’ alleged inability to perceive a joke. These decisions did not always expressly cite the copyright fair use defense, but the considerations underlying the copyright doctrine seemed to inform trademark analysis as well. The spillover effect may indeed have been inevitable, as several of the cases in which the fair use defense …
Foreign Authors' Enforcement Of U.S. Reversion Rights, Jane C. Ginsburg
Foreign Authors' Enforcement Of U.S. Reversion Rights, Jane C. Ginsburg
Faculty Scholarship
Thank you to all of the participants, and especially the first two panelists, for setting one part of the scene. I am going to talk about the United States’ termination right and some Berne and private international law consequences or implications of the termination right.
First, however, I’d like to advert to the two goals Rebecca Giblin referenced in her talk. One is remuneration, the other is dissemination. Author-protective laws in other countries also address dissemination. As Séverine Dusollier mentioned, a number of national laws include an obligation to exploit the work: if the publisher does not exploit the work, …
Standing With A Bundle Of Sticks: The All Substantial Rights Doctrine In Action, Christopher J. Morten
Standing With A Bundle Of Sticks: The All Substantial Rights Doctrine In Action, Christopher J. Morten
Faculty Scholarship
This Article provides an overview of the Federal Circuit’s all substantial rights doctrine. Surveying decades of case law, this Article seeks to clarify this confusing area of the law and set out the essential rules for those engaged in patent licensing, patent assignment, and patent litigation. This Article begins by explaining why effective ownership of a patent is critical to standing, and then describes the framework through which courts determine whether a party is, in fact, in possession of all substantial rights and is therefore the effective owner. While there are many factors that courts may consider, certain rights take …
Conceptual Separability As Conceivability: A Philosophical Analysis Of The Useful Articles Doctrine, Mala Chatterjee
Conceptual Separability As Conceivability: A Philosophical Analysis Of The Useful Articles Doctrine, Mala Chatterjee
Faculty Scholarship
In copyright law, the useful articles doctrine plays a significant role in defining the limits of copyright’s domain and the boundary between copyright and patent. But the implicated notion of “conceptual separability” has proved to be difficult to define, and the Supreme Court’s effort to define it in the recent case Star Athletica, L.L.C. v. Varsity Brands, Inc. is unsatisfying. In an effort to resolve this challenge, the present paper puts forth a novel test for conceptual separability, one that draws inspiration from the philosopher’s idea of conceivability. The test is the following question: “When you conceive of the relevant …
Copyright As Market Prospect, Shyamkrishna Balganesh
Copyright As Market Prospect, Shyamkrishna Balganesh
Faculty Scholarship
For many decades now, copyright jurisprudence and scholarship have looked to the common law of torts – principally trespass and negligence – in order to understand copyright’s structure of entitlement and liability. This focus on property – and harm-based torts – has altogether ignored an area of tort law with significant import for our understanding of copyright law: tortious interference with a prospective economic advantage. This Article develops an understanding of copyright law using tortious interference with a prospect as a homology. Tortious interference with a prospect allows a plaintiff to recover when a defendant’s volitional actions interfere with a …