Law Commons^™

International Legal Protection Of Trademarks In China, Robert H. Hu

Robert Hu

In China, the concept of intellectual property is relatively new. Chinese officials began taking steps towards trademark regulations in the 1950s, but it was not until 1982 that the first Chinese Trademark Law was enacted. Today, because of the growing global economy, China has had the highest number of trademark requests in the world for the fifth year in a row. In response to domestic and international pressures, Chinese trademark law and courts have had to adapt to the ever-changing landscape. This article first examines the development of Chinese intellectual property law through the international trademark agreements where China is …

Overlapping Intellectual Property Doctrines: Election Of Rights Versus Selection Of Remedies, Laura A. Heymann

Laura A. Heymann

Overlaps exist across various doctrines in federal intellectual property law. Software can be protected under both copyright law and patent law; logos can be protected under both copyright law and trademark law. Design patents provide a particular opportunity to consider the issue of overlap, as an industrial design that qualifies for design patent protection might also, in particular circumstances, qualify for copyright protection as well as function as protectable trade dress.

When an overlap issue arises—that is, when an intellectual property rights holder asserts rights under more than one doctrine—the question then becomes how courts should respond. One response, of …

A Collision Course Between Trips Flexibilities And Investor-State Proceedings, Cynthia M. Ho

Cynthia M Ho

This Article discusses an important, yet understudied threat to patent, as well as other intellectual property sovereignty under TRIPS: pending and potential challenges by companies under international agreements protecting investments. Although such agreements have existed for decades, Philip Morris and Eli Lilly are blazing a new path for companies to sue countries they claim interfere with their intellectual property rights through so-called investor-state arbitrations. These suits seek hundreds of millions in compensation and even injunctive relief for alleged violations of internationally agreed intellectual property norms. The suits fundamentally challenge TRIPS flexibilities at the very time the Declaration on Patent Protection …

Trademark Morality, Mark Bartholomew

Mark Bartholomew

This Article challenges the modern rationale for trademark rights. According to both judges and legal scholars, what matters in adjudicating trademark cases are the economic consequences, particularly for consumers, of a defendant’s use of a mark, not the use’s morality. Nevertheless, under this utilitarian facade, there are also at work judicial assessments of highly charged questions of right and wrong. Recent findings in the field of moral psychology demonstrate the influence of particular moral triggers in all areas of human decisionmaking, often operating without conscious awareness. These triggers influence judges deciding trademark disputes. A desire to punish bad actors, particularly …

Intellectual Property’S Lessons For Information Privacy, Mark Bartholomew

Mark Bartholomew

There is an inherent tension between an individual’s desire to safeguard her personal information and the expressive rights of businesses seeking to communicate that information to others. This tension has multiplied as consumers generate and businesses collect more and more personal data online, forcing efforts to strike an appropriate balance between privacy and commercial speech. No consensus on this balance has been reached. Some privacy scholars bemoan what they see as a slanted playing field in favor of those wishing to profit from the private details of other people’s lives. Others contend that the right in free expression must always …

Panel Iii: Trademarks V. Free Speech In Cyberspace, Sonia Katyal, Robert Weisbein, William Mcgeveran, Brett Frischmann

Sonia Katyal

No abstract provided.

Trademark Intersectionality , Sonia K. Katyal

Sonia Katyal

Even though most scholars and judges treat intellectual property law as a predominantly content neutral phenomenon, trademark law contains a statutory provision, Section 2(a) that provides for the cancellation of marks that are “disparaging,” “immoral,” or “scandalous,” a provision that has raised intrinsically powerful constitutional concerns. The constitutional tensions surrounding Section 2(a), invariably, affect two central metaphors that are at war within trademark law: the marketplace of goods, which premises itself on the fixedness of intellectual properties, and the marketplace of ideas, which is premised on the very fluidity of language itself. Since the architecture of trademark law focuses only …

The Sunset Of "Quality Control" In Modern Trademark Licensing, Irene Calboli

Irene Calboli

Historically, based on the premise that trademark protection is about consumer welfare, trademark law has allowed trademark licensing only as long as licensors control the quality of the products bearing the licensed marks. Ever since its adoption, however, this rule has been difficult to enforce because it hinges on a concept that is ambiguous and difficult to frame in a legal context: quality control. Unsurprisingly, the consequence has been inconsistent case law and much uncertainty as to what represents valid licensing. In addition, in the past decades, courts have proven increasingly reticent to strictly apply this rule and have declared …

Trademark Exhaustion In The European Union: Community-Wide Or International? The Saga Continues, Irene Calboli

Irene Calboli

Dr. Calboli discusses trademark exhaustion in the European Union. She proposes an international exhaustion standard to replace the community-wide exhaustion standard. In an international system, a trademark owner would exhaust his rights in other national jurisdictions when trademarked goods are placed on the market in any national jurisdiction where the trademark owner enjoys protection. Accordingly, the trademark owner will not be free to prevent international importation of genuine products bearing his trademark. Dr. Calboli describes the development of the community-wide exhaustion standard and its interpretative problems as part of the Trademark Directive. She then proposes changing to an international exhaustion …

From Kafka To Kafta: Intellectual Property, And The Korea-Australia Free Trade Agreement, Matthew Rimmer

Matthew Rimmer

The Korea-Australia Free Trade Agreement 2014 (KAFTA) is a Kafkaesque agreement – with its secret texts, speculative claims, and shadowy tribunals. Australia and South Korea have signed a new free trade agreement - the Korea-Australia Free Trade Agreement2014 (KAFTA). Is it a fair trade fairytale? Or is it a dirty deal done dirt cheap? Or somewhere in between? It is hard to tell, given the initial secrecy of the negotiations, and the complexity of the texts of the agreement. There has been much debate in the Australian Parliament over the transparency of the trade agreement; the scope of market access …

Trademark Law And The Prickly Ambivalence Of Post-Parodies, Charles E. Colman

Charles E. Colman

This Essay examines what I call "post-parodies" in apparel. This emerging genre of do-it-yourself fashion is characterized by the appropriation and modification of third-party trademarks — not for the sake of dismissively mocking or zealously glorifying luxury fashion, but rather to engage in more complex forms of expression. I examine the cultural circumstances and psychological factors giving rise to post-parodic fashion, and conclude that the sensibility causing its proliferation is one grounded in ambivalence. Unfortunately, current doctrine governing trademark parodies cannot begin to make sense of post-parodic goods; among other shortcomings, that doctrine suffers from crude analytical tools and a …

Submission On The Ip Chapter Of The Korea-Australia Free Trade Agreement, Kimberlee G. Weatherall

Kimberlee G Weatherall

Friend Or Faux: The Trademark Counterfeiting Act's Inability To Stop The Sale Of Counterfeit Sporting Goods, Jennifer Riso

Jennifer Riso

The demand for counterfeit sporting goods, such as jerseys and other apparel, is on the rise as the prices of authentic goods continue to increase. The Trademark Counterfeiting Act of 1984 criminalizes the import and sale of counterfeit goods, but is ineffective at addressing the demand side of counterfeit goods. This paper analyzes the history behind the Act and recommends ways to ensure that the act will stay relevant as technology makes it easier to purchase counterfeit goods.

The Anti-Economy Of Fashion: An Openwork Approach To Intellectual Property Protection, Amy L. Landers

Amy L Landers

Fashion’s cultural connections provide the groundwork for a theory to resolve the critical questions of protection for works that draw strongly on exogenous inputs. This article proposes that narrow protection for fashion is both economically justified, theoretically sound, and beneficial to the field because it facilitates spillovers in a manner that allows others to create the endless variations that are the lifeblood of this vibrant industry. Such protection relies on a theory of openworks, which applies to designs that have a high level of input from outside of the creator’s realm of activity. In fashion, inspiration that derives from the …

Aesthetic Functionality And Genericism, Charles E. Colman

Charles E. Colman

This presentation, the basis for a working article, begins by positing that U.S. trademark law's denial of exclusive rights in "generic" words and phrases is, in essence, a proxy for what might be called "linguistic functionality." In other words, the doctrine of genericism is simply one iteration of trademark law's general principle that no one may claim exclusive rights where recognition of such rights would produce anticompetitive results. Unfortunately, when it comes to non-word marks -- and perhaps most notably, product-design "trade dress" -- courts have neglected to establish a uniform, coherent, and fully theorized test for evaluating "genericism." The …

The Anti-Economy Of Fashion: An Openwork Approach To Intellectual Property Protection, Amy L. Landers

Amy L. Landers

Fashion’s cultural connections provide the groundwork for a theory to resolve the critical questions of protection for works that draw strongly on exogenous inputs. This article proposes that narrow protection for fashion is both economically justified, theoretically sound, and beneficial to the field because it facilitates spillovers in a manner that allows others to create the endless variations that are the lifeblood of this vibrant industry. Such protection relies on a theory of openworks, which applies to designs that have a high level of input from outside of the creator’s realm of activity. In fashion, inspiration that derives from the …

Testing Modern Trademark Law's Theory Of Harm, Mark Mckenna

Mark P. McKenna

Modern scholarship takes a decidedly negative view of trademark law. Commentators rail against doctrinal innovations like dilution and initial interest confusion. They clamor for clearer and broader defenses. And they plead for greater First Amendment scrutiny of various applications of trademark law. But beneath all of this criticism lies overwhelming agreement that consumer confusion is harmful. This easy acceptance of the harmfulness of confusion is a problem because it operates at too high a level of generality, ignoring important differences between types of relationships about which consumers might be confused. Failure to differentiate between these different relationships has enabled trademark …

Teaching Trademark Theory Through The Lens Of Distinctiveness, Mark P. Mckenna

Mark P. McKenna

This contribution to the annual teaching edition of the Saint Louis University Law Journal encourages teachers to begin trademark law courses using the concept of distinctiveness as a vehicle for articulating producer and consumer perspectives in trademark law. Viewing the law through these sometimes different perspectives helps in approaching a variety of doctrines in trademark law, and both perspectives are relatively easy to grasp in the context of distinctiveness.

The Right Of Publicity And Autonomous Self-Definition, Mark P. Mckenna

Mark P. McKenna

Legal protection against unauthorized commercial uses of an individual's identity has grown significantly over the last fifty years as it has relentlessly pursued economic value. It was forced to focus on value because a false distinction between the harms suffered by private citizens and celebrities seemingly left celebrities without a privacy claim for commercial use of their identities. But the normative case for awarding individuals the economic value of their identity is weak, since celebrities do not need additional incentive to invest in either their native skill or in developing a persona. Still, while the prevailing justification is inadequate, as …

The Origins Of American Design Patent Protection, Jason John Du Mont, Mark D. Janis

Jason John Du Mont

Many firms invest heavily in the way their products look, and they rely on a handful of intellectual property regimes to stop rivals from producing look-alikes. Two of these regimes—copyright and trademark—have been closely scrutinized in intellectual property scholarship. A third, the design patent, remains little understood except among specialists. In particular, there has been virtually no analysis of the design patent system’s core assumption: that the rules governing patents for inventions should be incorporated en masse for designs. One reason why the design patent system has remained largely unexplored in the literature is that scholars have never explained how …

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 …

Pruning The European Intellectual Property Tree - In Search Of Common Principles And Roots, Severine Dusollier

Severine Dusollier

The European Union knows a multiplicity of IP rights, from classical ones (copyright, patent, trademark or design) to more marginal ones, in terms of economic sectors concerned (rights in database, in plant varieties, in semiconductors, in geographical indications). This paper aims at identifying and assessing the existing similarities or common principles in the intellectual property rights in the European Union. Despite their apparent diverging functions, subject matter and scope of protection, copyright, trademark, patent and the other intellectual property rights share at least the fact that they belong to a set of rules granting some exclusive rights in intangible assets, …

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.

From Infringement To Innovation: Counterfeiting And Enforcement In The Brics, J. Benjamin Bai, Keith D. Lindenbaum, Yi Qian, Cynthia Ho

Cynthia M Ho

No abstract provided.

The Existing Legal Infrastructure Of Brics: Where Have We Been And Where Are We Going?, Robert B. Ahdieh, Zhu (Julie) Lee, Srividhya Ragavan, Kevin Noonan, Clinton W. Francis

Srividhya Ragavan

No abstract provided.

Toward A Limited Right Of Publicity: An Argument For The Convergence Of The Right Of Publicity, Unfair Competition & Trademark Law, Andrew Beckerman Rodau

Andrew Beckerman Rodau

The right of publicity, the newest type of intellectual property, allows a person to control commercial use of his or her identity. The scope of the right has expanded significantly because many courts and commentators have misinterpreted it by viewing it as a pure property right justified by a labor or unjust enrichment theory. It should be evaluated in light of the utilitarian justification for intellectual property law. Rewarding people by allowing them to monetize their public persona is not the goal. The goal is to incentivize individuals to engage in creative endeavors for the benefit of the public. An …

Betty Boop Almost Lost Her “Bling-Bling”: Fleischer Studios V. A.V.E.L.A. I And The Re-Emergence Of Aesthetic Functionality In Trademark Merchandising Cases, Tracy Reilly

Tracy Reilly

The Problem With Intellectual Property Rights: Subject Matter Expansion, Andrew Beckerman Rodau

Andrew Beckerman Rodau

This article examines the expansion of the subject matter that can be protected under intellectual property law. Intellectual property law has developed legal rules that carefully balance competing interests. The goal has long been to provide enough legal protection to maximize incentives to engage in creative and innovative activities while also providing rules and doctrines that minimize the effect on the commercial marketplace and minimize interference with the free flow of ideas generally. The expansive view of subject matter protectable via intellectual property law has erased the clear delineation between patent, copyright, and trademark law. This has led to overprotection …

An Offensive Weapon?: An Empirical Analysis Of The 'Sword' Of State Sovereign Immunity In State-Owned Patents, Tejas N. Narechania

Tejas N. Narechania

Convergence And Incongruence: Trademark Law And Icann’S Introduction Of New Generic Top-Level Domains, Christine Haight Farley

Christine Haight Farley

This paper demonstrates how problematic convergences between Internet technology, the demands of a burgeoning e-market and trademark laws have created myriad issues in international governance of domain names. The Internet Corporation for Assigned Names and Numbers (ICANN), the body that governs internet's infrastructure, recently approved a new policy that would allow it to accept applications for additional generic top-level domains (gTLDs). What ICANN contemplates is a uniform system to approve generic top level domains that is expected to have profound implications. Under this new plan anyone can apply for a new gTLD at any time and it could be literally …