Law Commons^™

Brexit And Ip: The Great Unraveling?, Graeme B. Dinwoodie, Rochelle C. Dreyfuss

Graeme B. Dinwoodie

Lewis & Clark Law School Ninth Distinguished Ip Lecture: Developing Defenses In Trademark Law, Graeme B. Dinwoodie

Graeme B. Dinwoodie

Trademark law contains important limits that place a range of third party conduct beyond the control of the trademark owner. However, I suggest that trademark law would be better served if several of its limits were explicitly conceptualized as defenses to an action for infringement, that is, as rules permitting unauthorized uses of marks even where such uses implicate the affirmative concerns of trademark law and thus support a prima facie cause of action by the trademark owner. To explore why this distinction between limits and defenses matters, I discuss the different nature of the proscription imposed by copyright and …

Copyright And Free Expression: Engine Or Obstacle, Graeme B. Dinwoodie

Graeme B. Dinwoodie

No abstract provided.

A Reverse Notice And Takedown Regime To Enable Fair Uses Of Technically Protected Copyrighted Works (With J. Reichman & P. Samuelson), Graeme B. Dinwoodie

Graeme B. Dinwoodie

The WIPO Copyright Treaty (WCT) recognized the need to maintain a balance between the rights of authors and the larger public interest in updating copyright law in light of advances in information and communications technologies. But the translation of this balance into the domestic laws of the United States and European Union has not been fully successful. In the DMCA, Congress achieved a reasonable balance of competing interests in its creation of safe harbors for internet service providers. However, contrary to its apparent intention, Congress failed to achieve a similar balance of interests when establishing new rules forbidding circumvention of …

Lessons From The Trademark Use Debate (With M. Janis), Graeme B. Dinwoodie

Graeme B. Dinwoodie

In their response to our article Confusion Over Use: Contextualism in Trademark Law, Professors Dogan and Lemley discard more all-encompassing versions of the trademark use requirement. Instead, they seek to delineate and defend a “more surgical form” of trademark use doctrine. In this reply, we demonstrate that the language of the Lanham Act does not impose a trademark use requirement even when that requirement is defined “surgically” and sections 32 and 43(a) are read “fluidly,” as Dogan and Lemley suggest. Moreover, their interpretation still renders section 33(b)(4) redundant and unduly limits appropriate common law development of trademark law. We also …

Foreign And International Influences On National Copyright Policy: A Surprisingly Rich Picture (F. Mcmillan, Ed.), Graeme B. Dinwoodie

Graeme B. Dinwoodie

National copyright policy, traditionally reflective of domestic cultural and economic priorities, is increasingly shaped by foreign and international influences. In this chapter, I sketch some of the changes in copyright lawmaking that have given rise to this phenomenon. Especially when viewed in historical context, foreign and international influence on the development of copyright law is now quite pervasive – albeit in ways, and effected through a number of institutions, that might appear surprising.

What Linguistics Can Do For Trademark Law, Graeme B. Dinwoodie

Graeme B. Dinwoodie

This contribution to an inter-disciplinary book on Trademarks and Brands responds to the work of Alan Durant, a linguist who (in his chapter of the book) provides legal scholars with both a rich understanding of how linguists view terms that are part of the basic argot of trademark law and a potentially vital explanation of the different social functions that word marks might serve. The Response explains why linguistics should matter to trademark law, but also why trademark law might on occasion ignore the precise reality of consumer understanding as might be provided by linguistics. I suggest that, while trademark …

The International Intellectual Property System: Treaties, Norms, National Courts And Private Ordering, Graeme B. Dinwoodie

Graeme B. Dinwoodie

Although part of the political impetus for international intellectual property law making has long come from the economic gains that particular countries could secure in the global market, the recent situation of intellectual property within the institutional apparatus of the trade regime has been an important factor in the transformation of the classical system of international intellectual property law. This chapter analyses various aspects of this transformation. It suggests that viewing intellectual property through the prism of trade alone offers an incomplete explanation of the changes that have occurred in international intellectual property law making. For example, a full account …

Confusion Over Use: Contextualism In Trademark Law (With M. Janis), Graeme B. Dinwoodie

Graeme B. Dinwoodie

This paper tackles an intellectual property theory that many scholars regard as fundamental to future policy debates over the scope of trademark protection: the trademark use theory. We argue that trademark use theory is flawed and should be rejected. The adoption of trademark use theory has immediate practical implications for disputes about the use of trademarks in online advertising, merchandising, and product design, and has long-term consequences for other trademark generally. We critique the theory both descriptively and prescriptively. We argue that trademark use theory over-extends the search costs rationale for the trademark system, and that it unhelpfully elevates formalism …

Copyright Lawmaking Authority: An (Inter)Nationalist Perspective On The Treaty Clause (Symposium), Graeme B. Dinwoodie

Graeme B. Dinwoodie

This contribution to a symposium on Copyright and The Constitution considers whether the Treaty Clause provides an alternative source of copyright lawmaking authority with respect to enactments impermissible under the Copyright Clause. Existing literature suggests three paradigmatic positions on the question. First, some scholars view the Treaty Clause as conferring a power whose content is wholly subservient to the limits of the Copyright Clause. A second group of scholars sees the Treaty Clause as offering an alternative lawmaking authority, but one that is substantially limited by the internal limits of the Treaty Clause. Finally, some commentators and litigants have read …

Diversifying Without Discriminating: Complying With The Mandates Of The Trips Agreement (With R. Dreyfuss), Graeme B. Dinwoodie

Graeme B. Dinwoodie

Although the technological community was once fairly united in its needs from the patent system, the recent debate over patent reform has made it clear that this is no longer the case. Rather, it has become increasingly difficult to believe that a one–size–fits–all approach to patent law can survive. In this brief contribution to a symposium tackling Diversity in Innovation Policy, we consider the ways in which intellectual property obligations, most notably the TRIPS Agreement, circumscribe the ability of national lawmakers to tailor patent protection to reflect the concerns of different industries. In particular, we propose that TRIPS art. 27, …

Ten Years Of Trademark Law: Lessons For The Future?, Graeme Dinwoodie

Graeme B. Dinwoodie

No abstract provided.

Dilution's (Still) Uncertain Future, Graeme Dinwoodie

Graeme B. Dinwoodie

No abstract provided.

Towards An International Framework For The Protection Of Traditional Knowledge, Graeme B. Dinwoodie

Graeme B. Dinwoodie

At a seminar organized by UNCTAD and the Government of India in 2002, participants considered how evolving national systems for the protection of traditional knowledge could be supported or augmented by international measures adopted at the regional or global level. The need for solutions on the international level has been discussed in a number of fora. Yet, the effective protection of the holders of traditional knowledge requires that these discussions move in some way toward implementation of working systems of protection.

This short paper, commissioned by UNCTAD for a conference in February 2004, and to be republished in a book …

The International Intellectual Property Law System: New Actors, New Institutions, New Sources, Graeme B. Dinwoodie

Graeme B. Dinwoodie

International intellectual property norms are now being developed by a wide range of institutions - some national, some international, and some that do not fit neatly into either category; by bodies designed to address intellectual property; by trade and other bodies; and by actors public, private, and indeterminate. This new wave of international norm creation not only augments a growing body of substantive norms but also raises difficult structural questions about the future development of the international intellectual property system. This essay, a lecture delivered to the Annual Meeting of the American Society of International Law in 2004, is being …

Patenting Science: Protecting The Domain Of Accessible Knowledge (With R. Dreyfuss), Graeme B. Dinwoodie

Graeme B. Dinwoodie

In this book chapter, we look at the effect of commodification on scientific and technological, as opposed to cultural, activity. After discussing the nature of the commodification debate and the constraints unique to scientific and technological production, we explore ways in which the domain of accessible knowledge could be reconstituted. In our discussion of these strategies, we draw on previous work in which we analyzed (1) various substantive methods for curbing perceived encroachments on the public domain to see how each would fare if challenged under the TRIPS Agreement, and (2) the relationship between the dynamics of domestic legislative procedures …

Concurrence And Convergence Of Rights: The Concerns Of The U.S. Supreme Court, Graeme Dinwoodie

Graeme B. Dinwoodie

No abstract provided.

Conflicts And International Copyright Litigation: The Role Of International Norms, Graeme B. Dinwoodie

Graeme B. Dinwoodie

No abstract provided.

The Story Of Kellogg Co. V. National Biscuit Co.: Breakfast With Brandeis, Graeme B. Dinwoodie

Graeme B. Dinwoodie

Kellogg Co. v. National Biscuit Co. may be the Supreme Court's most versatile and influential trademark decision. Justice Brandeis' opinion contained language that is now at the core of the statutory test for whether a term should be unprotected because consumers understand the term as the generic name for the product on which it is used. That same language guides courts seeking to determine whether a mark has acquired the degree of secondary meaning necessary to support trademark protection. Plaintiffs seeking to establish trademark rights in a product shape must demonstrate that the shape in question is not "functional" according …

Wto Dispute Resolution And The Preservation Of The Public Domain Of Science Under International Law (With R. Dreyfuss), Graeme B. Dinwoodie

Graeme B. Dinwoodie

The TRIPS Agreement can be read to reflect a static view of the structure of intellectual property law. In this paper, we address whether - and how - the TRIPS Agreement can be interpreted to give it more fluidity, and thus to allow adjustments in national intellectual property regimes designed to reflect the dynamic nature of information production. To focus that inquiry, we concentrate on efforts to ensure a broader public domain for "upstream" inventions by modifying various elements of US patent law. The paper considers three stylized examples and asks whether each approach could be adopted by the United …

The International Intellectual Property Law System: New Actors, New Institutions, New Sources, Graeme Dinwoodie

Graeme B. Dinwoodie

International intellectual property norms are now being developed by a wide range of institutions - some national, some international, and some that do not fit neatly into either category; by bodies designed to address intellectual property; by trade and other bodies; and by actors public, private, and indeterminate. This new wave of international norm creation not only augments a growing body of substantive norms but also raises difficult structural questions about the future development of the international intellectual property system. This essay, a lecture delivered to the Annual Meeting of the American Society of International Law in 2004, is being …

Trademarks And Territory: Detaching Trademark Law From The Nation-State, Graeme B. Dinwoodie

Graeme B. Dinwoodie

It is an axiomatic principle of domestic and international trademark law that trademarks and trademark law are territorial. This paper critiques the principle of territoriality in four ways. First, I suggest that statements about trademark territoriality mask a variety of related propositions. In disaggregating the "principle of territoriality" into its component parts, it becomes apparent that different rules of trademark law possess a territorial character for different reasons. For example, common law trademark rights are territorial because the intrinsic purpose of trademark law suggests extending (and limiting) rights to the geographic reach of goodwill. In contrast, registration systems designed to …

International Intellectual Property Law And The Public Domain Of Science (With R. Dreyfuss), Graeme B. Dinwoodie

Graeme B. Dinwoodie

The TRIPS Agreement can be read to reflect a static view of the structure of intellectual property law. In this paper, we address wither - and how - the TRIPS Agreement can, on the other hand, be read with more fluidity, and thus to allow adjustments in national intellectual property regimes designed to reflect the the dynamic nature of information production. To focus that inquiry, we concentrate on efforts to ensure a broader public domain for 'upstream' inventions by modifying various elements of US patent law. The paper considers three stylized examples and asks whether each approach could be adopted …

The Seventh Annual Honorable Helen Wilson Nies Memorial Lecture On Intellectual Property Law: The Trademark Jurisprudence Of The Rehnquist Court, Graeme B. Dinwoodie

Graeme B. Dinwoodie

No abstract provided.

Private Ordering And The Creation Of International Copyright Norms: The Role Of Public Structuring, Graeme B. Dinwoodie

Graeme B. Dinwoodie

International copyright law must be based on an assessment of what types and levels of protection best further the purposes of copyright law. But constructing the international copyright regime is difficult as the international system must wrestle with copyright dilemmas that exist at the national level as well as broader challenges facing international law. This paper delineates the connection between international copyright law and the generation and distribution of knowledge by discussing two recent examples of (possible) unconventional international copyright rulemaking, namely, norms generated by Internet Service Providers in responding to infringement claims, and norms arising out of digital rights …

Trips And The Dynamics Of Intellectual Property Lawmaking (With R. Dreyfuss), Graeme B. Dinwoodie

Graeme B. Dinwoodie

In prior work, we took up the question of the TRIPs Agreement's resilience to changes in domestic law. We argued that such resilience is necessary because information production is a dynamic enterprise. As new industries emerge and mature, nations must have the flexibility to modify their intellectual property rules to readjust the balance between public and private rights. In the course of that study, we examined approaches to TRIPs dispute resolution that could cabin the choices of legislation available to deal with emergent substantive problems, and which could distort the legal environment in which creative enterprises are conducted. In this …

Private Ordering And The Creation Of International Copyright Norms: The Role Of Public Structuring, Graeme B. Dinwoodie

Graeme B. Dinwoodie

International copyright law must be based on an assessment of what types and levels of protection best further the purposes of copyright law. But constructing the international copyright regime is difficult as the international system must wrestle with copyright dilemmas that exist at the national level as well as broader challenges facing international law. This paper delineates the connection between international copyright law and the generation and distribution of knowledge by discussing two recent examples of (possible) unconventional international copyright rulemaking, namely, norms generated by Internet Service Providers in responding to infringement claims, and norms arising out of digital rights …

Commitments To Territoriality In International Copyright Scholarship, Graeme B. Dinwoodie

Graeme B. Dinwoodie

No abstract provided.

The Architecture Of The International Intellectual Property System, Graeme Dinwoodie

Graeme B. Dinwoodie

No abstract provided.

Trademark And Copyright: Complements Or Competitors?, Graeme Dinwoodie

Graeme B. Dinwoodie

No abstract provided.