Law Commons^™

A Question Of Deference: Contrasting The Patent And Trademark Jurisdiction Of The Federal Circuit, Brian Dean Abramson

Brian Dean Abramson Esq.

This article details the various routes by which a patent or trademark matter may fall within the purview of the United States Court of Appeals for the Federal Circuit, and the divergent jurisdictional approach taken by the Federal Circuit to these different areas of law. This article was a top five finalist out of 125 submissions to the Federal Circuit Bar Association’s 2009 George Hutchinson Writing Competition.

Trafficking In Trademarks: Setting Boundaries For The Uneasy Relationship Between "Property" Rights And Trademark And Publicity Rights, Sheldon W. Halpern

Sheldon W Halpern

The piece is concerned with the general problem of the relationship between “property” constructs on the one hand and trademark and right of publicity law on the other. More specifically, it deals with the need to establish workable boundaries for trademark law and related right of publicity claims. The issue is seen most clearly in connection with “merchandising” of the trademark or image itself. The approach to merchandising rights with respect both to trademarks and celebrity images has been needlessly complex and demands simplification. The Supreme Court’ recent series of trademark opinions, with their strong admonition to restore and recognize …

Trafficking In Trademarks: Setting Boundaries For The Uneasy Relationship Between “Property” Rights And Trademark And Publicity Rights, Sheldon W. Halpern

Sheldon W Halpern

The piece is concerned with the general problem of the relationship between “property” constructs on the one hand and trademark and right of publicity law on the other. More specifically, it deals with the need to establish workable boundaries for trademark law and related right of publicity claims. The issue is seen most clearly in connection with “merchandising” of the trademark or image itself.

The approach to merchandising rights with respect both to trademarks and celebrity images has been needlessly complex and demands simplification. The Supreme Court’ recent series of trademark opinions, with their strong admonition to restore and recognize …

Pirates Among The Second Life Islands – Why You Should Monitor The Misuse Of Your Intellectual Property In Online Virtual Worlds, Ben Quarmby

Ben Quarmby

Virtual online worlds such as Second Life – a world in which users can live, work and purchase virtual goods, services and real estate – have enjoyed a well-documented explosion in popularity. Their success, however, has not come without some degree of turbulence. Relying on the example of Second Life, this article will address one of the primary sources of concern to arise in connection with these worlds: the dramatic escalation in trademark and copyright violations in virtual world and its impact on real-world individuals or business entities. Given that users have the ability to design and create virtual property …

Property, Persona, Permission, Deven R. Desai

Deven R. Desai

Information overload confronts us everyday. In such a situation, attention is scarce and the ability to focus attention has value. In short, the explosion of information means we live in an attention economy. As theorist Richard Lanham has posited, the key assets in the attention economy (e.g. writings, images) are part of the cultural conversation which leads to and elevates the importance of intellectual property because intellectual property is the way our society manages such assets. Put differently, authors now have two interests: the copyrighted work and the reputation that travels with that creation as it enhances the author’s ability …

Celebrity In Cyberspace: A Personality Rights Paradigm For Personal Domain Name Disputes, Jacqueline Lipton

Jacqueline D Lipton

When the Oscar™-winning actress Julia Roberts fought for control of the domain name, what was her aim? Did she want to reap economic benefits from the name? Probably not, as she has not used the name since it was transferred to her. Or did she want to prevent others from using it on either an unjust enrichment or a privacy basis? Was she, in fact, protecting a trademark interest in her name? Personal domain name disputes, particularly those in the space, implicate unique aspects of an individual’s persona in cyberspace. Nevertheless, most of the legal rules developed for these disputes …

Truth And Advertising: The Lanham Act And Commercial Speech Doctrine, Rebecca Tushnet

Rebecca Tushnet

The Lanham Act and its state counterparts in trademark and unfair competition law regulate speech in ways inconsistent with the current thrust of Supreme Court’s commercial speech doctrine. The lines between confusing and informative uses of trademarks and between true and false advertising claims are difficult to draw, in ways that in other contexts – particularly libel doctrine – have led courts to impose increasing burdens on plaintiffs and regulators. I will discuss the First Amendment implications of distinguishing truth from falsity in commercial speech, applied to trademark infringement and to other types of false advertising. In addition, on a …

Mythical Beginnings Of Intellectual Property, Jessica M. Silbey

Jessica Silbey

It has become commonplace to justify intellectual property protection with homage to utilitarianism (maximizing the incentive to create, invent or produce quality goods) or natural rights (people should own the product of their creative, inventive or commercial labor). Despite the on-going dominance of these theories, there remains a dissatisfying lack of a comprehensive explanation for the value of intellectual property protection. This is in part because the economic analysis of law tends to undervalue the humanistic element of intellectual property. This Article aims to fill that void. It offers a new explanation for intellectual property rooted in narrative theory. Whereas …

Trademark Extortion: The End Of Trademark Law, Kenneth L. Port

Kenneth L. Port

Trademark litigation in America today is undergoing a profound change. Based on a review of all trademark cases reported since the Lanham Act took effect, this article concludes that this profound change is due to 鍍rademark extortion,・the use of strike suits and the like to deter market entrants. All 7,500 reported trademark decisions between 1947 and 2005 were read. Of those, 2,659 were truly substantive cases that terminated a trademark law suit. The claimant of a trademark right prevailed only 51% of the time. They prevailed in getting an injunction in only 55% of those cases demanding one. Only 5.5% …

Property, Persona, And Publicity, Deven R. Desai

Deven R. Desai

This article focuses on a paradox latent within the nature of creative phenomenon: although one can find strong arguments for control over intangible creations during one’s life, these arguments falter if not fail after the creator dies. Two interconnected problems posed by the growth of online creation illustrate the problem. First, unlike analog creations, important digital creations such as emails are mediated and controlled by second parties. Thus although these creations are core intellectual property, they are not treated as such and service providers terminate or deny access to people’s property all the time. In addition, when one dies, some …

The Cultural Property Claim Within The Same Sex Marriage Controversy, Marc R. Poirier

Marc R. Poirier

The Cultural Property Claim within the Same Sex Marriage Controversy.

Marc R. Poirier, Seton Hall University School of Law

This article argues that traditionalist opposition to same sex marriage can be understood as a cultural property claim -- the sort of claim that is often made by Native American tribes and other subordinated cultural groups of a right to control the uses of sacred or culturally central rituals, places and objects. Ultimately, it disagrees with the traditionalist position, and argues that traditionalists should not be allowed to maintain a property-like right to exclude same sex couples from marriage. Nevertheless, the …

Trademark Law As Commercial Speech Regulation, Rebecca Tushnet

Rebecca Tushnet

False advertising law has largely escaped constitutional scrutiny because courts consider false or misleading commercial speech outside the protection of the First Amendment. Even moderate First Amendment protection for truthful commercial speech, however, requires some constitutional policing of the line between truth and falsity. Current enforcement of false advertising law, whether administrative, as with the FDA's regulation of drug-related speech, or judicial, as with Lanham Act suits brought by private parties, is ill-equipped to deal with First Amendment doctrine's very different concerns, rules, and presumptions. This essay explores some of the ways in which the First Amendment and trademark law—a …

Re-Evaluating Declaratory Judgment Jurisdiction In Intellectual Property Disputes, Lorelei Ritchie De Larena

Lorelei Ritchie de Larena

The Declaratory Judgment Act of 1934 was quickly tagged by the U.S. Supreme Court as a simple procedural measure. Whether simple or procedural, the addition of the declaratory judgment option has dramatically increased the rights of would-be defendants. This is of special interest in patent law, where without the ability to initiate legal action, an alleged infringer would typically have no recourse but to either drop a lucrative business and lose a massive investment, or to languish in legal limbo while potentially accruing liability for treble damages. The option of a mirror-image lawsuit removes the patentee’s ability to unilaterally decide …

Real World Toys And Currency Turn The Legal World Upside Down: A Cross-Sectional Update On Virtual World Legalities, Ian W. Gillies

Ian W. Gillies

With 40 million members on the leading virtual world and overall user growth at 22%, some experts are saying virtual worlds are to the new millennium what websites were to the 90s. Just as the technological and economic growth of the internet drove numerous moral and legal issues to the forefront of society, so also will virtual world growth expand the overlapping moral and legal boundaries between virtual and real world experience. This paper provides a technology and market overview of virtual worlds and explores the intersection of some social and legal issues arising from the financial opportunity and virtual …

The Lawfulness Of Criticizing Big Business: Comparing Approaches To The Balancing Of Societal Interests Behind Trademark Protection, Katja G. Weckstroem

Katja G Weckstroem

Today, third parties that have not traditionally been subject to trademark law increasingly find themselves as defendants in trademark infringement law suits. Whether the culprit or not, strong international trademark protection has unevenly influenced national trademark regulation and the lack of emphasis and clear reference to limits on the acquired right have left courts struggling with how to balance conflicting interests in the use of marks. This note goes back to the source, i.e. international trademark law, in an attempt to locate the limits of trademark law, expressed or implied, and ascertain whether there exists a common understanding of when …

Total Upgrade: Intellectual Property Law Reform In Russia, Sergey Budylin, Yulia Osipova

Sergey Budylin

Russia has undertaken a large-scale intellectual prop-erty (IP) law reform. The reform abolishes most of the ex-isting IP legislation and instead puts all IP issues into the new Fourth Part of the Civil Code. The new legislation was signed into force at the end of 2006, but it was made effective starting from January 1, 2008. While the new leg-islation largely restates, consolidates, and refines the exist-ing legislation, it also introduces some concepts not known to Russian law before (such as “unified technology”). Im-portantly, the new Russian IP legislation addresses issues currently being a matter of international concern (such as …

Making A Mark In The Internet Economy: A Trademark Analysis Of Search Engine Advertising, Mark Bartholomew

Mark Bartholomew

No abstract provided.

The Owned Public Domain: The Constitutional Right Not To Be Excluded – Or The Supreme Court Chose The Right Breakfast Cereal In Kellogg V. National Biscuit Co., Malla Pollack

Malla Pollack

Before the rise of law and economics, the Supreme Court decided several cases involving patent holders' attempts to use trademark doctrines to slow down competitors after the expiration of their utility patents; in each of these cases, the Court enforced a public right to use material in the public domain. To give one famous example, Kellogg Co. v. National Biscuit Co., the "shredded wheat case," came to the Court after the expiration of a product and process utility patent on that once-innovative breakfast cereal. The Court held that a competitor could freely copy the product's name and its well known …

Internet Infoglut And Invisible Ink: Spamdexing Search Engines With Meta Tags, Ira Nathenson

Ira Steven Nathenson

This Article addresses 'spamdexing,' namely, the practice of stuffing invisible keywords into webpages in order to try to get more favorable listings with search engines. For instance, some website owners will stuff the trademarks of competitors into a webpage’s code, particularly by using 'meta tags,' indexing keywords that can be hidden in a webpage’s source code. Although meta tags are not typically viewed by users, the code can be read by search engines, with the result that webpages may be improperly boosted in search engine rankings. Such practices can confuse the public and have also spurred trademark lawsuits. But the …

Showdown At The Domain Name Corral: Property Rights And Personal Jurisdiction Over Squatters, Poachers And Other Parasites, Ira Nathenson

Ira Steven Nathenson

This paper on domain names disputes has two main goals. The first is to analyze the principal points of litigation in domain name disputes, namely, personal jurisdiction and trademark liability. The second is to propose an analytic framework to better help resolve matters of jurisdiction and liability. Regarding personal jurisdiction, domain names are problematic because an internet site can be viewed almost anywhere, potentially subjecting the domain name owner to suit everywhere. For example, should a Florida domain name owner automatically be subject to suit in Alaska where the site can be viewed? If not, then where? Regarding liability, trademark …

Unconstitutional Incontestability?: The Intersection Of The Intellectual Property And Commerce Clauses Of The Constitution: Beyond A Critique Of Shakespeare Co. V. Silstar Corp., Malla Pollack

Malla Pollack

This article makes several assertions: (1) The Intellectual Property Clause of the Constitution, even read with the Commerce Clause, prevents Congress from giving authors or inventors exclusive rights unbounded by premeasured time limitations; (2) Because such limits exist, even incontestable trademarks must be subject to functionality challenges in order to prevent conflict with the Patent Clause; (3) The Intellectual Property Clause requires a similar challenge to prevent conflict with the Copyright Clause; (4) The states are also limited by either direct constitutional mandate or statutory preemption. Based on the first two assertions, this article argues that the Fourth Circuit's decision …

Guarding Your Company's Intellectual Property Rights: Patents, Trademarks, And Copyright Protection, Douglas J. Swanson Ed.D Apr

Douglas J. Swanson, Ed.D APR

No abstract provided.

Your Image Is My Image: When Advertising Dedicates Trademarks To The Public Domain--With An Example From The Trademark Counterfeiting Act Of 1984, Malla Pollack

Malla Pollack

Trademark laws protect the mental association between the source n4 of a product and the product itself. This protection allows consumers to locate merchandise of known quality, and motivates suppliers to produce better merchandise. The extent to which trademarks are property rights owned by the controller of the items they identify is controversial. These dual purposes of trademark protection are often phrased as if the objectives reinforce one another. Sometimes, however, the interests conflict. If the public's interests are not recognized they cannot be protected. This article suggests the existence of an ignored public ownership interest. Trademarks may become communicative …