Law Commons^™

Some Key Things Entrepreneurs Need To Know About The Law And Lawyers, Lawrence J. Trautman, Anthony Luppino, Malika S. Simmons

Lawrence J. Trautman Sr.

New business formation is a powerful economic engine that creates jobs. Diverse legal issues are encountered as a start-up entity approaches formation, initial capitalization and fundraising, arrangements with employees and independent contractors, and relationships with other third parties. The endeavors of a typical start-up in the United States will likely implicate many of the following areas of law: intellectual property; business organizations; tax laws; employment and labor laws; securities regulation; contracts and licensing agreements; commercial sales; debtor-creditor relations; real estate law; health and safety laws/codes; permits and licenses; environmental protection; industry specific regulatory laws and approval processes; tort/personal injury, products …

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 …

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 …

Do Trademark Lawyers Matter?, Deborah R. Gerhardt

Deborah R Gerhardt

DO TRADEMARK LAWYERS MATTER? Deborah R. Gerhardt Jon P. McClanahan This Article empirically examines whether lawyers make a difference in prosecuting trademark applications, and if so, how much. Working from a wealth of data the USPTO released in 2012, we examine the twenty-five year period of 1985-2010 to determine how much legal counsel matters in various stages of the trademark application process. First, we show how trademark publication and registration rates changed. Against that background, we examine how these rates differ if the applicant had legal counsel. By illustrating these differences over time, we show whether the USPTO has become …

The Romantic Corporation: Trademark, Trust, And Tyranny, Malla Pollack

Malla Pollack

Humans in the United States, and many other market-centric nations, live in a world extensively populated by friendly, helpful, honest, charitable, patriotic beings worthy of our respect and support – none of whom exist. Yet these fellow-beings speak to us humans so often that they must be part of our ingrained perception of the world. Who are they? They are the marketing personas created by totally self-interested businesses. They harm humans not only by misdirection in specific instances, but by providing cover for our government’s improper prioritization of corporate interests over human interests. This systemic distortion of public perception is …

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.

Trademark Owner As Adverse Possessor, Jake Linford

Jake Linford

There is an ongoing debate over whether or not a trademark is “property,” and what type of rights a trademark properly secures. Some scholars assert that rules and justifications developed to handle rights in real property are generally a poor fit for intellectual property regimes, and for trademark protection in particular. Others respond that a unified theory of property should be able to account for both real and intellectual property. This article takes the middle course and approaches the issue by mining the analogy between the acquisition of trademark protection and the doctrine of adverse possession.

Courts and scholars have …

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 …

Harvesting Intellectual Property: "Inspired Beginnings" And "Work Makes Work," Two Stages In The Creative Processes Of Artists And Innovators, Jessica M. Silbey

Jessica Silbey

This Article is part of a larger empirical study based on face-to-face interviews with artists, scientists, engineers, their lawyers, agents, and business partners. The book-length project involves the collecting and analysis of stories from artists, scientists, and engineers about how and why they create and innovate. It also collects stories from their employers, business partners, managers, and lawyers about their role in facilitating the process of creating and innovating. The book’s aim is to make sense of the intersection between intellectual property law and creative and innovative activity, specifically to discern how intellectual property intervenes in the careers of the …

The Myth And Reality Of Dilution, Sandra L. Rierson

Sandra L Rierson

Statutory dilution claims are traditionally justified on the theory that even non-confusing uses of a famous trademark (or similar mark) can nonetheless minutely dilute the source-identifying power of the targeted trademark. The assumption of both the original federal dilution statute enacted in 1995 as well as its substantial enlargement in 2006 is that the source-identifying capacity of a trademark is akin to a glass of water: spill a drop here, spill a drop there and eventually your glass is empty. This Article advances three claims. First, statutory dilution erroneously assumes that the source-identifying function of a trademark is a rivalrous …

Ending Dilution Doublespeak: Reviving The Concept Of Economic Harm In The Dilution Action, Alexander Dworkowitz

Alexander Dworkowitz

No abstract provided.

Warranting Rightful Claims, Karen E. Sandrik

Karen E. Sandrik

Damage awards for patent infringement have sky-rocketed and sparked significant debate in recent years. A part of this patent damage debate focuses on non-practicing entities, or so-called “patent trolls.” A patent troll is a patent owner that demands a royalty based on patented technology, yet does not actually make use of the technology to provide an end product or service. Patent trolls are known for their aggressive and opportunistic behavior. Their strategy is simple: create nuisance and inflict fear. Often, patent trolls employ this strategy against the buyers of goods that use the patented technology. Increasingly, those buyers are availing …

Is It Time To Revisit Trademark Misuse?, Scott H. Brown

Scott H Brown

In the recent cases of Georgia-Pacific Consumer Products, L.P. v. Von Drehle Corporation and Georgia-Pacific Consumer Products, L.P. v. Myers Supply, Inc. , Georgia-Pacific tried to use its trademarks to establish a tying relationship between its paper towels and its paper towel dispensers. These cases will be reviewed by, first, posing a hypothetical situation, and then giving the reader a review of trademark basics, the doctrine of contributory trademark infringement, antitrust considerations, and IP misuse. The article then offers a revised trademark misuse test, and relooks at the Georgia-Pacific cases using this revised trademark misuse test.

Ambush Marketing: Dissecting The Discourse, Brian Pelanda

Brian Pelanda

This article discusses the problematic discourse in which scholars and corporate complainants such as the International Olympic Committee have discussed the issue of ambush marketing. It argues that those who persistently complain about ambush marketing have wielded the term far too liberally, and thus a great deal of confusion exists between the generally accepted definition of ambush marketing and the reality of the circumstances surrounding the numerous marketing strategies that the term is commonly used to describe. While much of the current literature on the subject concludes that the existing state of the law in the United States is not …

Warranting Rightful Claims, Karen E. Sandrik

Karen E. Sandrik

Damage awards for patent infringement have sky-rocketed and sparked significant debate in recent years. A part of this patent damages debate focuses on non-practicing entities, or so-called “patent trolls.” A patent troll is a patent owner that demands a royalty based on patented technology, yet does not actually make use of the technology to provide an end product or service. Patent trolls are known for their aggressive and opportunistic behavior. Their strategy is simple: create nuisance and inflict fear. Increasingly, buyers of goods using patented technology are availing themselves of the “warranty against infringement” (“WAI”) provided by the Uniform Commercial …

Heart Pills Are Red, Viagra Is Blue… When Does Pill Color Become Functional? An Analysis Of Utilitarian And Aesthetic Functionality And Their Unintended Side Effects In The Pharmaceutical Industry, Signe H. Naeve

Signe H. Naeve

Abstract: As consumers we often associate pill color and shape with particular medications. Should that trade dress be protected beyond the expiration of the patent? Legal scholars have recognized some of the tensions and inconsistencies in court opinions when it comes to trade dress protection for pill shape and color. This article focuses on the specific tensions between requiring secondary meaning and non-functionality, as well as the potential of “genericide” when generic pharmaceuticals enter the market. Ultimately this article makes some novel recommendations to assess functionality at the time of FDA approval for the pharmaceutical and to have the FDA …

Running The Gamut From A To B: Federal Trademark And False Advertising Law, Rebecca Tushnet

Rebecca Tushnet

The Lanham Act bars both trademark infringement and false advertising, in nearly identical and often overlapping language. In some circumstances, courts have interpreted the two provisions in the same way, but in other areas there has been significant doctrinal divergence, often to the detriment of the law. This Article argues that each branch of the Lanham Act has important lessons to offer the other. Courts should rationalize their treatment of implied claims, whether of sponsorship or of other facts; they should impose a materiality requirement, such that the only unlawful claims are those that actually matter to consumers, to trademark …

The Hacker's Aegis, Derek E. Bambauer, Oliver Day

Derek Bambauer

Intellectual property law stifles critical research on software security vulnerabilities, placing computer users at risk. Researchers who discover flaws often face IP-based legal threats if they reveal findings to anyone other than the software vendor. This Article argues that the interplay between law and vulnerability data challenges existing scholarship on how intellectual property should regulate information about improvements on protected works, and suggests weakening, not enhancing, IP protections where infringement is difficult to detect, lucrative, and creates significant negative externalities. It proposes a set of three reforms – “patches,” in software terms – to protect security research. Legal reform would …

Brands, Competition, And The Law, Deven R. Desai, Spencer Waller

Deven R. Desai

Brands matter. In modern times, brands and brand management have become a central feature of the modern economy and a staple of business theory and business practice. Coca-Cola, Nike, Google, Disney, Apple, Microsoft, BMW, Marlboro, IBM, Kellogg’s, Louis-Vuitton, and Virgin are all large companies, but they are also brands that present powerful, valuable tools for business. Business is fully aware of that power and value. Contrary to the law’s conception of trademarks, brands are used to indicate far more than source and/or quality. Indeed those functions are far down on the list of what most businesses want for their brands. …

Comparative Tales Of Origins And Access: Intellectual Property And The Rhetoric Of Social Change, Jessica M. Silbey

Jessica Silbey

This Article argues that the open-source and antiexpansionist rhetoric of current intellectual-property debates is a revolution of surface rhetoric but not of deep structure. What this Article terms “the Access Movements” are, by now, well-known communities devoted to providing more access to intellectual-property-protected goods, communities such as the Open Source Initiative and Access to Knowledge. This Article engages Movement actors in their critique of the balance struck by recent law (statutes and cases) and asks whether new laws that further restrict access to intellectual property “promote the progress of science and the useful arts.” Relying on cases, statutes and recent …

Abolishing The Missing-Claim Rule For Judicial Cancellations, Ryan G. Vacca

Ryan G. Vacca

This article questions why some courts that have already found a federally registered trademark invalid refuse to cancel the registration despite having the authority to do so under § 37 of the Lanham Act. Examination of cases involving judicial cancellations reveals that a failure to assert cancellation as a claim, as opposed to a variety of other methods of requesting cancellation, is the reason courts refuse to exercise their power under § 37 - referred to as the missing-claim rule. This article criticizes the missing-claim rule as illogical and frustrating trademark law's purpose and proposes the missing-claim rule be abolished, …

Acquiring A Flavor For Trademarks, Amanda E. Compton

Amanda E. Compton

This paper considers the viability of registering “flavor” as a trademark based on the decision in In re N.V. Organon. Nontraditional trademarks have long been accepted in the United States, and the possibility of being able to protect flavor as a trademark is on the horizon. In 2002, N.V. Organon, a global manufacturer of an array of prescription medicines, filed a trademark application to register “an orange flavor” for “pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills.” The Examining Attorney refused registration on two grounds: (1) the matter failed to function as a trademark; and (2) the …

Bad Faith In Cyberspace: Grounding Domain Name Theory In Trademark, Property, And Restitution, Jacqueline Lipton

Jacqueline D Lipton

The year 2009 marks the tenth anniversary of domain name regulation under the Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Dispute Resolution Policy (UDRP). Adopted to combat cybersquatting, these rules left a confused picture of domain name theory in their wake. Early cybersquatters registered Internet domain names corresponding with other’s trademarks to sell them for a profit. However, this practice was quickly and easily contained. New practices arose in domain name markets, not initially contemplated by the drafters of the ACPA and the UDRP. One example is clickfarming – using domain names to generate revenues from click-on …

An Empirical And Consumer Psychology Analysis Of Trademark Distinctiveness, Thomas R. Lee

Thomas R Lee

This article analyzes the taxonomy of trademark distinctiveness that has long been endorsed in the courts and scholarly commentary. This distinctiveness scale is routinely justified on the basis of an assumption about consumer psychology: that consumers perceive suggestive, arbitrary, or fanciful marks as source-indicating, but see descriptive marks as “merely descriptive.” Although this core premise of trademark law is a fundamental matter of consumer psychology, it has never been subjected to scrutiny under the light of consumer psychology theory and empirical analysis. We offer a consumer psychology model for questioning the law of distinctiveness (or “source indication”) and then test …

Consumer Investment In Trademarks, Deborah R. Gerhardt

Deborah R Gerhardt

Consumer Investment in Trademarks This article introduces the consumer investment model as means to identify and protect twenty first century consumer interests in trademarks. Section I demonstrates why this model is necessary. Protecting consumer interests is the theoretical rationale for regulating trademarks. Theory and practice meshed well when the rights of trademark owners aligned with consumers. For example, both trademark owners and consumers are harmed when marks are used on low quality counterfeit goods. In cyberspace, this neat alignment often breaks apart. Many unauthorized uses, such as keyword advertising, benefit consumers but threaten owner control over marks. In order to …

To © Or Not To ©? Copyright And Innovation In The Digital Typeface Industry, Jacqueline D. Lipton

Jacqueline D Lipton

Intellectual property rights are often justified by utilitarian theory. However, recent scholarship suggests that creativity thrives in some industries in the absence of intellectual property protection. These industries might be called IP’s negative spaces. One such industry that has received little scholarly attention is the typeface industry. This industry has recently digitized. Its adoption of digital processes has altered its market structure in ways that necessitate reconsideration of its IP negative status, with particular emphasis on copyright. This article considers the historical denial of copyright protection for typefaces in the United States, and examines arguments both for and against extending …