Law Commons^™

Note: Artistic Relevance In Artificial Intelligence? “Roger” That!, Kelly Heilman

Notre Dame Journal on Emerging Technologies

In an era of technological revolution, artificial intelligence is shocking the legal field with its increasing popularity, power, and potential. The limits of property, personhood, and creativity are in question by both the public and the courts, leaving significant ambiguities in the law. Legal standards regarding the regulation of advanced technologies have raised unique and critical substantive questions for intellectual property rights, particularly that of trademarks, where the traditional purpose is source identification between consumers and goods.

Since the 1989 holding in Rogers v. Grimaldi, the use of trademarks for creative purposes, as a matter of First Amendment jurisprudence, …

Offensive Mark Owners Have An Enforcement Problem, Yvette Joy Liebesman

All Faculty Scholarship

In Iancu v. Brunetti, the Supreme Court held that the Lanham Act 2(a) bars for "immoral" or "scandalous" marks are facially unconstitutional viewpoint discrimination, and thus violate a trademark owner’s First Amendment rights. Brunetti, as well as its predecessor, Matal v. Tam, focused entirely on how the government might generate viewpoint discrimination at the point of trademark registration. The Court did not consider whether enforcement of trademarks—via courts of law, Customs and Border Protection, or the International Trade Commission—is government speech, and thus exempt from First Amendment free speech scrutiny. Yet the Court’s seminal holding of Shelley v. Kraemer illustrates …

Valuing The Freedom Of Speech And The Freedom To Compete In Defenses To Trademark And Related Claims In The United States, Jennifer E. Rothman

All Faculty Scholarship

This book chapter appears in the CAMBRIDGE HANDBOOK ON INTERNATIONAL AND COMPARATIVE TRADEMARK LAW, edited by Jane C. Ginsburg & Irene Calboli (Cambridge Univ. Press 2020). The Chapter provides an overview of the defenses to trademark infringement, dilution, and false endorsement claims that serve the goals of free expression and fair competition. In particular, the Chapter covers the defenses of genericism, functionality, descriptive and nominative fair use, the Rogers test, statutory exemptions to dilution claims, and the questions of whether and how an independent First Amendment defense applies in light of recent Supreme Court decisions.

In addition to providing a …

Pre-Game Strategy For Long-Term Win: Using Trademark Registration And Right Of Publicity To Protect Esports Gamers, John Bat

Catholic University Journal of Law and Technology

The soaring popularity of esports across the globe has turned ultra-talented gamers into a blend of athlete and entertainer. The youthful esports ecosystem is exploding in growth, and the world is taking notice. But are the gamers who are eyeing professional play taking basic legal steps to develop and shield their brands, as well as bolster their collective negotiating leverage with teams, leagues, and miscellaneous entities? This note explores what features of an up-and-coming esports gamer might be worth protecting through a trademark and/or personality-rights schema, which in turn, could assist competitive gamers who are interested in developing their careers …

University Trademarks And “Mixed Speech” On College Campuses: A Case Study Of Gerlich V. Leath And Student Free Speech Rights, Nathan Converse

Fordham Intellectual Property, Media and Entertainment Law Journal

Higher education has long been a fundamental building block upon which American democracy is based. The guarantee of free speech is itself a revered liberty in the American polity; it has, in turn, served as the catalyst for higher education. Recent events on college campuses continue to reexamine universities’ role in their students’ education and push the legal boundaries on student speech rights. In many instances, however, students’ speech and expressive viewpoint conflicts with that of other students. Other times, students’ speech conflicts with the expressive interests of their university. This Article examines the latter instance in the context of …

How Many Likes Did It Get? Using Social Media Metrics To Establish Trademark Rights, Caroline Mrohs

Catholic University Journal of Law and Technology

This comment asserts that there is a need for an update to the multifactor test considered by courts in determining the strength of a trademark. Traditional factors include the expenses an entity can afford to pay in advertising, but do not give any weight to the presence of the entity on social media to reach its target consumer group.

#Protected Hashtags, Trademarks, And The First Amendment, Delaram Yousefi

Touro Law Review

No abstract provided.

Beyond Trademarks And Offense: Tam And The Justices’ Evolution On Free Speech, Clay Calvert

UF Law Faculty Publications

In Matal v. Tam , the Supreme Court threw out the “disparagement clause” of the Lanham Act, the federal trademark law, because trademarks are private speech and thus regulating them based on government determinations of offensiveness violates the First Amendment. The solid outcome here contrasts with the narrow, incremental results in some other recent First Amendment cases that reached the Court.

Etw Corp. V. Jireb Publishing, Inc.: Turning An Athlete's Publicity Over To The Public, Michael J. Breslin

Journal of Intellectual Property Law

No abstract provided.

Transformation: The Bright Line Between Commercial Publicity Rights And The First Amendment, W. Mack Webner, Leigh Ann Lindquist

Akron Law Review

The Right of Publicity provides to each and every person the right to use his or her persona for his or her benefit and provides a cause of action to stop the unauthorized use of that persona for commercial purposes.

This right is one of the many provided by the laws of unfair competition. Infringement of this right has become a frequently pleaded count made by attorneys who are trying to protect their clients from the unauthorized use of the client’s persona for commercial purposes. While the genesis of the right has been commonly thought to be a splintering from …

Considering Trademark And Speech Rights Through The Lens Of Regulating Tobacco, Christine Haight Farley, Kavita Devaney

Articles in Law Reviews & Other Academic Journals

Many tobacco company trademarks, such as MARLBORO, are extremely valuable. But valuable trademarks are often vulnerable both to copyists and to parodists. Tobacco trademarks face the additional vulnerability of onerous public health regulations, which can limit their appearance and use. When tobacco companies challenge these health regulations they do so on the grounds that the regulations violate their First Amendment speech rights. The law that is applied in these challenges is well developed, clear and predictable. When tobacco companies challenge unauthorized third-party uses of their marks, the speech rights involved are dealt with in a distinctly different manner. Under trademark …

Considering Trademark And Speech Rights Through The Lens Of Regulating Tobacco, Christine Farley

Articles in Law Reviews & Other Academic Journals

Many tobacco company trademarks, such as MARLBORO, are extremely valuable. But valuable trademarks are often vulnerable both to copyists and to parodists. Tobacco trademarks face the additional vulnerability of onerous public health regulations, which can limit their appearance and use. When tobacco companies challenge these health regulations they do so on the grounds that the regulations violate their First Amendment speech rights. The law that is applied in these challenges is well developed, clear and predictable. When tobacco companies challenge unauthorized third-party uses of their marks, the speech rights involved are dealt with in a distinctly different manner. Under trademark …

Commercial Speech, Commercial Use, And The Intellectual Property Quagmire, Jennifer E. Rothman

All Faculty Scholarship

The commercial speech doctrine in First Amendment jurisprudence has frequently been criticized and is recognized as a highly contested, problematic and shifting landscape. Despite the compelling critique within constitutional law scholarship more broadly, Intellectual Property (“IP”) law has not only embraced the differential treatment of commercial speech, but has done so in ways that disfavor a much broader swath of speech than traditional commercial speech doctrine allows. One of the challenges for courts, litigants, and scholars alike is that the term “commercial” is used to mean multiple things, even within the same body of IP law. In this Article, I …

Sacred Cows, Holy Wars: Exploring The Limits Of Law In The Regulation Of Raw Milk And Kosher Meat, Kenneth Lasson

Kenneth Lasson

SACRED COWS, HOLY WARS Exploring the Limits of Law in the Regulation of Raw Milk and Kosher Meat By Kenneth Lasson Abstract In a free society law and religion seldom coincide comfortably, tending instead to reflect the inherent tension that often resides between the two. This is nowhere more apparent than in America, where the underlying principle upon which the first freedom enunciated by the Constitution’s Bill of Rights is based ‒ the separation of church and state – is conceptually at odds with the pragmatic compromises that may be reached. But our adherence to the primacy of individual rights …

An Intersystemic View Of Intellectual Property And Free Speech, Mark Bartholomew, John Tehranian

Journal Articles

Intellectual property regimes operate in the shadow of the First Amendment. By deeming a particular activity as infringing, the law of copyright, trademark, and the right of publicity all limit communication. As a result, judges and lawmakers must delicately balance intellectual property rights with expressive freedoms. Interestingly, each intellectual property regime strikes the balance between ownership rights and free speech in a dramatically different way. Despite a large volume of scholarship on intellectual property rights and free speech considerations, this Article represents the first systematic effort to detail, analyze, and explain the divergent evolution of expression-based defenses in copyright, trademark, …

Why Copyright Law Lacks Taste And Scents, Leon R. Calleja

Leon R Calleja

This paper explores the resistance in U.S. copyright law to extend copyright protection to scents and tastes, and advances the position that copyright law’s originality and expression requirements limit copyrightable subject matter to expressions that engage both author and audience in a way that requires reflection upon the work—or at least, the capacity for reflection—in a necessarily intersubjective and communicative fashion, what I call a “public dimension.” That the sensations of taste and smell are inescapably immediate and private suggest that they lack the kind of public dimension that visual and audio works exhibit. Indeed, this creates an ineffability characterized …

Stolen Valor And The First Amendment: Does Trademark Infringement Law Leave Congress An Opening?, Susan Richey, John M. Greabe

John M Greabe

This paper elaborates an argument the authors presented in an amicus brief filed in United States v. Alvarez, the "Stolen Valor" case. The paper contends that Congress could constitutionally protect the Congressional Medal of Honor as a collective membership mark by means of trademark infringement legislation.

Stolen Valor & The First Amendment: Does Trademark Infringement Law Leave Congress An Opening?, Susan Richey, John M. Greabe

Law Faculty Scholarship

This paper elaborates an argument the authors presented in an amicus brief filed in United States v. Alvarez, the "Stolen Valor" case. The paper contends that Congress could constitutionally protect the Congressional Medal of Honor as a collective membership mark by means of trademark infringement legislation.

Foreword: Advertising And The Law, Mark Bartholomew

Buffalo Law Review

This foreword to a special issue of the Buffalo Law Review provides an overview of seven articles addressing the intersection of advertising and law. The special issue stems from a November 2009 conference held at the University at Buffalo Law School. The foreword examines the particular difficulties in characterizing the relationship between advertisers, consumers, and the law. Advertisers promulgate certain symbolic meanings designed to induce consumption. Sometimes these meanings are contested through legal means yet consumers can only participate in advertising's regulatory apparatus indirectly. This results in a dynamic between advertiser and consumer that is difficult to define yet ubiquitous …

Advertising And Social Identity, Mark Bartholomew

Buffalo Law Review

This essay takes a stand in the brewing legal academic debate over the consequences of advertising. On one side are the semiotic democratists, scholars who bemoan the ability of advertisers to take control of the meanings that they create through trademark law and other pro-business legal rules. On the other side are those who are more sanguine about the ability of consumers to rework advertising messages and point to several safety valves for free expression existing in the current advertising regulation regime. My take on this debate is that the participants have failed to address the impact of advertising on …

Who Owns 'Hillary.Com'? Political Speech And The First Amendment In Cyberspace, Jacqueline D. Lipton

Articles

In the lead-up to the next presidential election, it will be important for candidates both to maintain an online presence and to exercise control over bad faith uses of domain names and web content related to their campaigns. What are the legal implications for the domain name system? Although, for example, Senator Hillary Clinton now owns "hillaryclinton.com", the more generic "hillary.com" is registered to a software firm, Hillary Software, Inc. What about "hillary2008.com"? It is registered to someone outside the Clinton campaign and is not currently in active use. This article examines the large gaps and inconsistencies in current domain …

Authorship, Audiences, And Anonymous Speech, Thomas F. Cotter, Lyrissa Lidsky

Faculty Publications

A series of United States Supreme Court decisions establishes that the First Amendment provides a qualified right to speak and publish anonymously, or under a pseudonym. But the Court has never clearly defined the scope of this right. As a result, lower courts have been left with little guidance when it comes to dealing both with the Internet-fueled growth of torts and crimes committed by anonymous speakers, and with the increasing number of lawsuits aimed at silencing legitimate anonymous speech. In this Article, we provide both positive and normative foundations for a comprehensive approach to anonymous speech. We first draw …

Dilution's (Still) Uncertain Future, Mark D. Janis, Graeme B. Dinwoodie

Articles by Maurer Faculty

No abstract provided.

The Constitutional Failing Of The Anticybersquatting Act, Ned Snow

Faculty Publications

Eminent domain and thought control are occurring in cyberspace. Through the Anticybersquatting Consumer Protection Act (ACPA), the government transfers domain names from domain-name owners to private parties based on the owners' bad-faith intent. The owners receive no just compensation. The private parties who are recipients of the domain names are trademark holders whose trademarks correspond with the domain names. Often the trademark holders have no property rights in those domain names: trademark law only allows mark holders to exclude others from making commercial use of their marks; it does not allow mark holders to reserve the marks for their own …