Law Commons^™

Fonts, Typefaces, And Ip Protection: Getting To Just Right, Emily N. Evans

Journal of Intellectual Property Law

No abstract provided.

Explicitly Explicit: The Rogers Test And The Ninth Circuit, Daniel Jacob Wright

Journal of Intellectual Property Law

No abstract provided.

Fighting Piracy With Censorship: The Operation In Our Sites Domain Seizures V. Free Speech, Michael Joseph Harrell

Journal of Intellectual Property Law

No abstract provided.

Fault Lines In Trademark Default Judgments, David S. Welkowitz

Journal of Intellectual Property Law

No abstract provided.

Where There's A Will, There's A Way: Reconciling Theories Of Willful Infringement And Disgorgement Damages In Trademark Law, Rachel Anne Zisek

Journal of Intellectual Property Law

No abstract provided.

Clear And Convincing Disparagement: An Argument For A Higher Evidentiary Standard For When The T.T.A.B. Considers Cancelling A Well-Known, Tenured Trademark, John C. Thomas Iii

Journal of Intellectual Property Law

No abstract provided.

The Right To Say, "I Didn't Write That": Creating A Cause Of Action To Combat False Attribution Of Authorship On The Internet, Kathleen Brennan Hicks

Journal of Intellectual Property Law

No abstract provided.

Set The Statutes Straight: Amending The Lanham Act To Dispel The Confusion Regarding Reverse Confusion, Inna Kaminer

Loyola of Los Angeles Entertainment Law Review

The typical case of alleged trademark infringement, i.e., “forward confusion,” involves a larger and more established “senior user” and a smaller and less powerful “junior user.” The secondary junior user wrongfully uses the first senior user’s mark as its own, and thus benefits from the senior user’s more established goodwill. In ruling on a senior user’s trademark infringement claim, the court will use a set of “likelihood of confusion” factors to determine if consumers are confusing the junior user’s goods for that of the senior. Each circuit’s factors vary, but they are harmonious. The issue that this Note explores is …

Gray Market Goods Produced By Foreign Affiliates Of The U.S. Trademark Owner: Should The Lanham Act Provide A Remedy?, Steven M. Auvil

Akron Law Review

I shall argue that, with limited exceptions, the problem posed by genuine gray market imports from an affiliated source is not a trademark problem per se, and as such federal relief must come from Congress in the form of sui generis legislation. First, I shall briefly examine the historical background of this problem and discuss the debate leading up to the K Mart decision. Second, I shall discuss the nature of the trademark right, provisions under the Lanham Act that safeguard that right and several illustrative gray market cases decided thereunder. Third, I shall discuss the relationship between the trademark …

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 …

Comment: The Tiger Woods Case - Has The Sixth Circuit Abandoned Trademark Law? Etw Corp. V. Jireh Publishing, Inc., Joseph R. Dreitler

Akron Law Review

For more than fifty years, the United States Court of Appeals for the Sixth Circuit vigilantly protected the intellectual property rights of trademark owners and persons seeking protection of their privacy and rights of publicity. Less than two years ago, that changed. In a turnaround remarkable for its suddenness and completeness, the court veered away from protecting intellectual property rights. Perhaps the reason for the departure lies in the stinging reversals of two of its decisions by the United States Supreme Court, or perhaps it lies in a string of admittedly questionable cases brought by overreaching plaintiffs. Regardless of the …

Initial Impressions: Trademark Protection For Abbreviations Of Generic Or Descriptive Terms, Mary Lafrance

Akron Law Review

This article compares the approaches which different federal courts have adopted to address the distinctiveness of abbreviations where the underlying expression or information conveyed by the abbreviation is unprotectable either because it is generic or because it is descriptive and lacks secondary meaning. While this study is not intended as a comprehensive survey, it is designed to highlight the inconsistencies in approaches. The article concludes with some observations about the patterns and trends emerging from the unsettled decisional law.

Victor Can Keep His Little Secret Unless Victoria's Secret Is Actually Harmed, Shafeek Seddiq

Touro Law Review

No abstract provided.

Andy Warhol’S Pantry, Brian L. Frye

Law Faculty Scholarly Articles

This Article examines Andy Warhol’s use of food and food products as a metaphor for commerce and consumption. It observes that Warhol’s use of images and marks was often inconsistent with copyright and trademark doctrine, and suggests that the fair use doctrine should in-corporate a “Warhol test.”

Licensing Of Intellectual Property Rights, Mark Joelson

Georgia Journal of International & Comparative Law

No abstract provided.

Hacking Trademark Law For Collaborative Communities, Yana Welinder, Stephen Laporte

Fordham Intellectual Property, Media and Entertainment Law Journal

Collaborative communities create popular work with widely recognized brands, such as Wikipedia, Linux, Android, and Firefox. Trademark law can provide protections to members of these communities and the users of their products so that they can rely on the brands to identify the original projects. This Article explores the conflict between collaborative communities and trademark law. While collaborative communities thrive on openness and decentralization, trademark law requires centralized quality control and various formalities. This Article introduces a descriptive taxonomy of “hacks” that collaborative communities have used to try to mitigate the tensions between their values and trademark law. These hacks …

Creative Copyright: Tailoring Intellectual Property Policies And Business Strategies For Creative Content Industries In The Digital Age, Bhamati Viswanathan

SJD Dissertations

My dissertation explores intellectual property rights in three fields: fashion, music and education. I examine the varying degrees of IP rights in those fields, and ask whether the differing levels of rights are appropriate to keep these industries creative, innovative and robust. I further examine the salient characteristics of those rights and ask whether such an understanding might help to determine optimal levels of IP protection in other creative industries.

Ip Basics: Avoiding Patent, Trademark And Copyright Problems, Thomas G. Field Jr.

Law Faculty Scholarship

Patents, copyrights and trademarks, as well as trade secrets and related rights, can be used to exclude free riders. These rights are collectively called "intellectual property" or IP.

Ip Basics: Advice On Ip Careers For Those With Technical Backgrounds, Thomas G. Field Jr.

Law Faculty Scholarship

[Excerpt] Full-time law school takes three years and culminates in the Juris Doctor. A J.D. from a school accredited by the American Bar Association qualifies a person to take the bar exam in any state. As mentioned above, college graduates need not pursue any particular line of study to be accepted into law school. At the University of New Hampshire School of Law, for example, over a third of our students have degrees in engineering or science, and many have had extensive experience or advanced degrees, including M.D.s and Ph.Ds. -- the last being particularly helpful for biotechnology patent careers.

Ip Basics: Trademarks And Business Goodwill, Thomas G. Field Jr.

Law Faculty Scholarship

This is information all business owners need if they wish to preserve their hard-won goodwill. It discusses, for example, the important differences between strong and weak marks for products and services, the value of state and federal registrations and the importance of searches (to avoid wasting money).

Trademark Extortion Revisited: A Response To Vogel And Schachter, Kenneth L. Port

Faculty Scholarship

Trademark bullying (a.k.a. trademark extortion) is a very controversial notion in trademark litigation in the United States. There, for sure, is a lot of illegitimate trademark infringement happening. Anecdotally, we also know that trademark holders often overstep in the assertion of their otherwise legitimate rights. For the first time, this article documents how large a problem trademark bullying is and how often it happens. Trademark bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of …

Whether Rejection Of A Trademark License Agreement Terminates The Licensee's Rights To Use The Trademark, Crystal Lawson

Bankruptcy Research Library

(Excerpt)

Section 365(a) of the Bankruptcy Code sets forth the basic power of a trustee in bankruptcy or a debtor in possession to assume or reject an executory contract. A debtor's ability to assume or reject an executory contract allows a debtor to keep favorable contracts and to discard burdensome contracts, subject to the bankruptcy court’s approval. The bankruptcy court will apply a two-part test to determine whether assumption or rejection should be allowed. First the court will determine whether the contract is executory. If the court determines that the contract is executory, the court will then determine whether assumption …

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 …

Identity Property: Protecting The New Ip In A Race-Relevant World, Philip Lee

Faculty Publications

(Excerpt)

This Article explores the relatively new idea in American legal thought that people of color are human beings whose dignity and selfhood are worthy of legal protection. While the value and protection of whiteness throughout American legal history is undeniable, non-whiteness has had a more turbulent history. For most of American history, the concept of non-whiteness was constructed by white society and reinforced by law—i.e., through a process of socio-legal construction—in a way that excluded its possessor from the fruits of citizenship. However, people of color have resisted this negative construction of selfhood. This resistance led to the development …

Recent Developments In Intellectual Property Law — A 2014 Retrospective, W. Keith Robinson

Faculty Journal Articles and Book Chapters

The year 2014 was an eventful one for intellectual property law. Every branch of government affected intellectual property law in one way or another. The Supreme Court ruled on several important intellectual property law cases; federal and state legislatures contemplated and enacted various new statutes that changed the intellectual property law landscape; and the U.S. Patent and Trademark Office continued to implement new procedures governing the issuance and reconsideration of intellectual property rights. These events captured the consciousness of the American public and garnered significant media attention, more so than any year in recent memory. As these events proved, technological …

Reading Intellectual Property Law Reform Through The Lens Of Constitutional Equality, Jessica Silbey

Faculty Scholarship

In reviewing three books, Robert Spoo's Without Copyright, Bill Herman's The Fight for Digital Rights, and Aram Sinnreich's The Piracy Crusade, for Tulsa Law Review's annual book review volume, this paper explores new themes and structures in Supreme Court cases about intellectual property. Studying the new histories and processes described in the books under review helps reveal constitutional equality frameworks in Supreme Court cases about intellectual property usually understood as cases about congressional deference and property rights. This article explains how many of these Supreme Court cases about IP reflect a range of equality modalities - e.g., …

Recent Developments In Intellectual Property Law — A 2014 Retrospective, David O. Taylor, W. Keith Robinson

Faculty Journal Articles and Book Chapters

The year 2014 was an eventful one for intellectual property law. Every branch of government affected intellectual property law in one way or another. The Supreme Court ruled on several important intellectual property law cases; federal and state legislatures contemplated and enacted various new statutes that changed the intellectual property law landscape; and the U.S. Patent and Trademark Office continued to implement new procedures governing the issuance and reconsideration of intellectual property rights. These events captured the consciousness of the American public and garnered significant media attention, more so than any year in recent memory. As these events proved, technological …

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 …

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 …