Law Commons^™

Beyond Trademark Use, Stacey Dogan

Faculty Scholarship

For several years now, the question of “trademark use” has taken center stage in the debate over trademark liability of online intermediaries. Doctrinally, the debate addresses whether the Lanham Act places any limit on the types of “use” of trademarks that can subject one to a claim of infringement. The real conflict, however, has occurred at the normative level: whatever the Lanham Act says or does not say about trademark use, should trademark law limit the definition of infringement to situations in which the defendant has used the mark to brand its own products?

The Second Circuit appears to have …

Vol. Ix, Tab 46 - Ex. 37 - Expert Report Of Dr. Kent D. Van Liere, Kent Van Liere

Rosetta Stone v. Google (Joint Appendix)

Exhibits from the un-sealed joint appendix for Rosetta Stone Ltd., v. Google Inc., No. 10-2007, on appeal to the 4th Circuit. Issue presented: Under the Lanham Act, does the use of trademarked terms in keyword advertising result in infringement when there is evidence of actual confusion?

Rational Design Rights Ignorance, David Orozco

David Orozco

No abstract provided.

Copyright Or Trademark? Can One Boy Wizard Prevent Film Title Duplication?, Anna Phillips

San Diego International Law Journal

This Comment will examine the various approaches that India, the United Kingdom, and the United States take in dealing with film title disputes. Second, this Comment will discuss a case brought by Warner Brothers regrding a Harry Potter film title dispute in India and how the outcome of the case affects title infringement issues... Finally, this Comment will discuss a possible loophole in current trademark regulations regarding film titles that will support the argument that countries should use both copyright and trademark law to minimize the release of film titles that are similar or identical to those already on the …

Does It Really Suck?: The Impact Of Cutting-Edge Marketing Tactics On Internet Trademark Law And Gripe Site Domain Name Disputes, Mindy P. Fox

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Vol. Ix, Tab 41 - Ex. 18 - Email From Baris Gultekin And Trademark Report (Google Product Manager Director), Baris Gultekin

Rosetta Stone v. Google (Joint Appendix)

Exhibits from the un-sealed joint appendix for Rosetta Stone Ltd., v. Google Inc., No. 10-2007, on appeal to the 4th Circuit. Issue presented: Under the Lanham Act, does the use of trademarked terms in keyword advertising result in infringement when there is evidence of actual confusion?

Vol. Vi, Tab 38 - Ex. 28 - Email From Christopher Klipple, Christopher Klipple

Rosetta Stone v. Google (Joint Appendix)

Exhibits from the un-sealed joint appendix for Rosetta Stone Ltd., v. Google Inc., No. 10-2007, on appeal to the 4th Circuit. Issue presented: Under the Lanham Act, does the use of trademarked terms in keyword advertising result in infringement when there is evidence of actual confusion?

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 …

Trademark Fair Use: Braun® Versus The Bunny, Vanessa P. Rollins

Marquette Intellectual Property Law Review

Nominative fair use is a contentious issue in the field of trademark law. Manufacturers of original products who oppose the use of their actual products in advertisements for complementary goods often resort to the Lanham Act to prevent such practices. Courts have found the use of another's product in the advertising of complementary goods falls outside the nominative fair use defense. This article examines the nominative fair use defense and whether nominative fair use should encompass such uses.

Trademarks And Human Rights: Oil And Water? Or Chocolate And Peanut Butter?, Megan M. Carpenter

Law Faculty Scholarship

In recent years, there has been a growing discourse at the intersection of intellectual property and human rights, including whether or not individual intellectual property rights are, or can be, human rights. In 2007, this debate began to focus on the area of trademarks. That year, the European Court of Human Rights determined that it had jurisdiction over a trademark dispute, by virtue of the property rights provision found in Article 1 of Protocol 1 to the European Convention on Human Rights. This paper seeks to explore the connection between trademarks and human rights. The first part of the article …

New-School Trademark Dilution: Famous Among The Juvenile Consuming Public, Alexandra J. Roberts

Law Faculty Scholarship

The recently enacted Trademark Dilution Revision Act of 2006 recalibrated the degree of fame necessary to garner protection: the TDRA applies only to a mark "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner." By privileging those major players who succeed in turning their brands into household names, the TDRA strengthens incentives for mark-owners to ensure their logos and brand names are well-recognized not only among adult consumers, but also among children. This Article examines a set of marketing behaviors aimed at children that …

Allocating Intellectual Property Rights Between Parties, Ashlyn J. Lembree

Law Faculty Scholarship

No abstract provided.

Vol. Vi, Tab 38 - Ex. 25 - Email From Christopher Klipple, Christopher Klipple

Rosetta Stone v. Google (Joint Appendix)

Exhibits from the un-sealed joint appendix for Rosetta Stone Ltd., v. Google Inc., No. 10-2007, on appeal to the 4th Circuit. Issue presented: Under the Lanham Act, does the use of trademarked terms in keyword advertising result in infringement when there is evidence of actual confusion?

Vol. Ix, Tab 41 - Ex. 17 - Email From Baris Gultekin (Google Product Manager Director), Baris Gultekin

Rosetta Stone v. Google (Joint Appendix)

Exhibits from the un-sealed joint appendix for Rosetta Stone Ltd., v. Google Inc., No. 10-2007, on appeal to the 4th Circuit. Issue presented: Under the Lanham Act, does the use of trademarked terms in keyword advertising result in infringement when there is evidence of actual confusion?

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 …

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 …

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 …

The Graying Of The American Manufacturing Economy: Gray Markets, Parallel Importation, And A Tort Law Approach, Joseph Karl Grant

Journal Publications

This Article examines the history of the gray market in the United States through an analysis of both the domestic legislative framework and judicial treatment of gray market goods, primarily under trademark and copyright law. Part I of this Article provides a general introduction into the structural factors that cause parallel importation. Part II begins a discussion of trademarked goods by looking at the purposes of trademark law. Part III starts by discussing the relevant doctrines and provisions of the Copyright Act of 1976, which frame the gray market discussion. Part III concludes by examining the current debate and the …

Things Are Worse Than We Think: Trademark Defenses In A 'Formalist' Age, Michael Grynberg

College of Law Faculty

Numerous articles decry the reach of modern trademark law. This article assumes the premise that these critiques are valid and asks what courts can do in response. The answer may be, not much. The “common law” practices that extended trademark’s scope are not up to the task of creating adequate countervailing defenses. Congress acquiesced to the judicial expansion of trademark liability by amending the Lanham Act with conforming language. That pattern is unlikely to be repeated for trademark defenses. The Supreme Court’s recent trademark precedents resist assertions of trademark rights beyond the express confines of the Lanham Act. If these …

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.

Copyright, Trademark And Secondary Liability After Grokster, Mark Bartholomew

Journal Articles

Even though secondary infringement doctrine in both copyright and trademark stems from the same common law starting points, the doctrines have moved in very different directions, particularly in the last decade. As copyright litigants expanded their litigation strategy to include online intermediaries, secondary copyright liability was stretched to encompass a wider array of defendants with increasingly tangential relationships to the direct infringer. Meanwhile, even though similar online threats jeopardized the ability of trademark holders to safeguard their brands' goodwill, courts refused to implement a similar expansion for secondary trademark liability. Although courts are aware of this doctrinal double standard, they …

"Shelter Chic": Can The U.S. Government Make It Work?, Kristina R. Montanaro

Vanderbilt Journal of Transnational Law

This Note discusses government donations of seized counterfeit goods to charitable institutions and the implications of these practices. The Customs and Border Protection (CBP) contributions to the Red Cross for the Hurricane Katrina relief effort serve as a backdrop for important concepts. In making these contributions, the CBP relied on its emergency authority and a presidential proclamation to avoid basic statutory requirements that it (a) obtain consent from the right holders and (b) de-trademark counterfeit goods prior to donation. While the donations inarguably benefitted countless disaster victims and freed up valuable CBP warehouse space, they may have had a detrimental …

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

Marquette Intellectual Property Law Review

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 …

Brand Spillovers, Eric Goldman

Faculty Publications

This Article considers the spillover effects of trademarks - in particular, brand spillovers, which occur when consumer interest in a trademark increases the profits of third parties who do not own the trademark. Using techniques such as loss leaders and shelf space adjacency, retailers routinely create brand spillovers for their profit, and trademark law generally has not restricted these activities. Online intermediaries, such as search engines, also create and profit from brand spillovers by selling manufacturers' trademarks for advertising purposes (keyword triggering). However, in contrast to retailer practices, keyword triggering has sparked a heated and irresolute battle over its legitimacy …

The European Court’S Political Power Across Time And Space, Karen Alter

Faculty Working Papers

This article extracts from Alter's larger body of work insights on how the political and social context shapes the ECJ's political power and influence. Part I considers how the political context facilitated the constitutionalization of the European legal system. Part II considers how the political context helps determine where and when the current ECJ influences European politics. Part III draws lessons from the ECJ's experience, speculating on how the European context in specific allowed the ECJ to become such an exceptional international court. Part IV lays out a research agenda to investigate the larger question of how social support shapes …

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

Articles in Law Reviews & Other Academic Journals

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 …

Cops, Robbers, And Search Engines: The Questionable Role Of Criminal Law In Contributory Infringement Doctrine, Mark Bartholomew

Journal Articles

Online technologies have created a new litigation locus for intellectual property rights holders, one that targets intermediaries, not direct infringers. This unprecedented litigation strategy has put sudden pressure on the courts to evaluate the liability of indirect infringers. Without a developed body of precedent at their disposal, judges have resorted to analogies from the criminal law of accomplice liability to set the boundaries of contributory infringement. Does it make sense for intellectual property regulation to depend on the same principles that animate criminal law? This Article maintains that it would be a mistake to remake contributory infringement law in criminal …

Trademark Use And The Problem Of Source, Mark P. Mckenna

Journal Articles

This Article mediates a scholarly debate regarding the existence and desirability of a "trademark use" doctrine. It argues that trademark use is a predicate of liability under the Lanham Act, but those who advocate treating trademark use as a threshold question put much more weight on that concept than it can bear. Courts cannot consistently apply trademark use as a distinct element of the plaintiff's prima facie case because trademark use can be determined only from the perspective of consumers. Specifically, courts can determine whether a defendant has made trademark use of a plaintiff's mark only by asking whether consumers …