Law Commons^™

The Economics Of Cultural Misrepresentation: How Should The Indian Arts And Crafts Act Of 1990 Be Marketed?, Jennie D. Woltz

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Vol. Ix, Tab 41 - Ex. J - Hagan Deposition From Cng (Google Managing Counsel - Trademarks), Rose Hagan

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. 21 - Email From Lena Huang (Rosetta Online Marketing), Lena Huang

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?

Article 17 And The Scope Of Trademark Protection Afforded Under The Trips Agreement, Katja G. Weckstroem

ExpressO

The protection of trademarks, when it raises a conflict with the protection of geographical indications is one of the most contested issues on the international trade and intellectual property arena. In European Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs a WTO panel was faced with this issue. The panel report gives some insight into what international trademark law mandates as well as some pointers on how conflicts between different IP rights should be solved. This article attempts a deeper analysis of the coexistence of rights in the framework of the TRIPS Agreement that will …

The (Boundedly) Rational Basis Of Trademark Liability: Reconciling The Federal Trademark Dilution Act And The Lanham Act, Jeremy Sheff

ExpressO

The confusion that has accompanied the effort to graft a dilution remedy onto federal trademark law has sown deep uncertainty about the remedy's proper scope and purpose. This confusion is an outgrowth of the peculiar history of dilution theory in the development of trademark law, and the resulting tension between uniqueness-based theories of dilution and theories based on free-riding concerns. This Article takes the position that the current conceptual framework for trademark liability is misguided. By focusing its analysis on consumer beliefs about the relationship between a mark and a manufacturer, current trademark doctrine is ignoring a far more persuasive …

A Battle Between Geography Indication And Trademark, Jia Xu

Cornell Law School J.D. Student Research Papers

In 2005, Administration for Quality, Supervision, Inspection and Quarantine (AQSIQ) issued “Administrative Regulation on Indications of Original Source and Regulation on Protection of Products from Original Sources,” but “Implementing Rules of the Trademark Law of the People's Republic of China” has included the protection of Geography Indication into the trademark law. The two separate tracks of protection of GI have caused much confusion to the intellectual property right holders regarding their property rights. This thesis introduces and compares the concept of trademark and geography indications, analyzes the current protection mode both in China and abroad and discusses how to eliminate …

Risk Aversion And Rights Accretion In Intellectual Property Law, James Gibson

ExpressO

Intellectual property’s road to hell is paved with good intentions. Because liability is difficult to predict, intellectual property users often seek licenses even when proceeding without one might be permissible. Yet because the existence (vel non) of licensing markets plays a key role in determining the breadth of rights, these seemingly sensible licensing decisions eventually feed back into doctrine; the licensing itself becomes proof that the entitlement covers the use. Over time, then, public privilege recedes and rights expand, moving intellectual property’s ubiquitous gray areas into what used to be virgin territory--where risk aversion again creates licensing markets, which cause …

Continuing Commercial Impression: Applications And Measurement , Gideon Mark, Jacob Jacoby

Marquette Intellectual Property Law Review

This Article examines applications and measurement of continuing commercial impression, which is the meaning or idea a trademark or trade dress conveys to consumers. The doctrine is relevant in a variety of contexts, including abandonment, tacking, claim preclusion, and the Morehouse defense. A number of courts considering the issue have concluded that continuing commercial impression is a pure question of law. This article argues that such a view is incorrect, and that the doctrine should present a mixed question of law and fact. In determining whether continuing commercial impression exists, the sole factor should not be the visual or aural …

The Effects Of The Corporate Diversification Trend On Trademarks, Katherine E. Halmen

Marquette Intellectual Property Law Review

In today's business world, companies are increasingly adopting diversification strategies through which they expand into diverse and unrelated business areas. Of additional importance with regard to trademarks and the future of trademark law is the fact that the trend toward corporate diversification is growing. To address the impact of the corporate diversification trend upon trademark law, courts have utilized various methodologies. Some courts have focused primarily upon the reasonably prudent consumer and how he or she is affected by corporate diversification. With regard to the use of trademarks on a variety of products, courts have often taken into account whether …

Conditioning Functionality: Untangling The Divergent Strands Of Argument Evidenced By Recent Case Law And Commentary , Justin Pats

Marquette Intellectual Property Law Review

The protection of trade dress has become increasingly clouded in recent years. A forcethe functionality doctrinehas been implemented to police this intersection between patent and trademark law. Unfortunately, courts have struggled to arrive at a common definition of functionality. This comment examines the functionality doctrine and proposes a four-factor decay test as a uniform approach to functionality. The test asks the following questions regarding a product feature: (1) Is it essential to the use or purpose of the article?; (2) Does it have any current market effect on the cost or quality of the article?; (3) Is there a significant …

Why We Are Confused About The Trademark Dilution Law, Christine Haight Farley

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

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

Mark Bartholomew

No abstract provided.

Panel Ii: Trademark Dilution Revision Act Implications, William G. Barber, Barton Beebe, Christine Haight Farley, Michael Heltzer

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The Trademark Dilution Revision Act - A Consumer Perspective, Paul Alan Levy

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

2005 Trademark Decisions Of The Federal Circuit, Stephen R. Baird

American University Law Review

No abstract provided.

Vol. Ix, Tab 46 - Ex. 8 - Email From Emily White, Emily White

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?

Has The Law Of Products Liability Spoiled The True Purpose Of Trademark Licensing? Analyzing The Responsibility Of A Trademark Licensor For Defective Products Bearing Its Mark, Jennifer Rudis Deschamp

Saint Louis University Public Law Review

No abstract provided.

Why We Are Confused About The Trademark Dilution Law, Christine Farley

Articles in Law Reviews & Other Academic Journals

In the decade following passage of a federal right of anti-dilution, the biggest question in trademark law was how to prove dilution. This is a clear sign of something. Can no smart attorney, judge, or social scientist figure out what dilution is in order to prove it? Dilution has proven to be a "dauntingly elusive concept" for the courts. Even in the Supreme Court, nearly all of the questions from the Justices In oral argument in Moseley v. V. Secret Catalog were seeking to simply understand what dilution is.Unless they simply know it when they see it, other courts either …

The Secret Life Of Legal Doctrine: The Divergent Evolution Of Secondary Liability In Trademark And Copyright Law, Mark Bartholomew, John Tehranian

Journal Articles

The recent explosion in intellectual property litigation has witnessed increasing recourse to secondary liability theories. The courts have responded favorably to plaintiffs by enunciating substantial reinterpretations of extant principles, thereby precipitating a veritable secondary liability revolution. Numerous commentators have bemoaned this trend, contending that judicial recasting of liability rules expands intellectual property rights beyond their intended scope, thereby resulting in an overprotective regime that stifles innovation. Yet one of the most striking aspects of the secondary liability revolution has been all but ignored in the literature: While the courts have broadened the scope of secondary liability principles with respect to …

Trademark Dilution In Japan, Kenneth L. Port

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

A New Economics Of Trademarks, David W. Barnes

Northwestern Journal of Technology and Intellectual Property

Conventional wisdom holds that trademarks are nothing like other intellectual property. Copyright and patent law are theoretically based in public goods theory and are designed to promote creation and disclosure of original expressions and novel, useful innovations. By contrast, trademarks are private goods and trademark law is designed to promote trade and encourage competition.

This article challenges conventional wisdom by demonstrating that trademarks are a type of public good that contributes to the public stock of useful ideas just as patented and copyrighted works do. This economic perspective suggests, again contrary to conventional trademark theory, that competitive markets fail to …

Dilution's (Still) Uncertain Future, Mark D. Janis, Graeme B. Dinwoodie

Articles by Maurer Faculty

No abstract provided.

Distinctly Delineated Fictional Characters That Constitute The Story Being Told: Who Are They And Do They Deserve Independent Copyright Protection?, Jasmina Zecevic

Vanderbilt Journal of Entertainment & Technology Law

Part I of this paper discusses the characteristics that make literary characters especially difficult to protect. Part II describes the historical treatment of literary characters and the two main tests used to determine whether they are entitled to independent copyright protection. Part III demonstrates that the two tests currently used are not adequate tools for determining when copyright law protects literary characters. Part IV explores the possibility of using trademark and unfair competition laws to offer partial protection to fictional characters. Part V presents an argument that literary characters do not need independent protection because they are already sufficiently protected …

What The Right Of Publicity Can Learn From Trademark Law, Stacey Dogan

Faculty Scholarship

The right of publicity gives people the right to control the use of their name and likeness for commercial purposes. For years, courts have struggled to make sense of two dimensions of this right - what it means to use a name or likeness commercially, and what aspect of a person's likeness are protected against appropriation. In the absence of any clear theoretical foundation for the right of publicity, the meanings of these terms have steadily swelled, to the point at which virtually any use that brings financial benefit to someone by referencing an individual qualifies as a violation of …

Coordination, Property & Intellectual Property: An Unconventional Approach To Anticompetitive Effects & Downstream Access, F. Scott Kieff

GW Law Faculty Publications & Other Works

Countless high profile cases like the recent patent litigation threatening to shut down the BlackBerry® service have long drawn sharp criticism; and in response, most of the intellectual property (IP) literature argues for the use of weaker, or liability rule, enforcement as a tool for solving the problems of anticompetitive effects and downstream access while still providing sufficient rewards to IP creators. This paper takes an unconventional approach under which rewards don't matter much, but coordination does matter a great deal. The paper shows how stronger, or property rule, enforcement facilitates the good type of coordination that increases competition and …

What Is Dilution, Anyway?, Stacey Dogan

Faculty Scholarship

Ever since the Supreme Court decided Moseley v. V Secret Catalogue, Inc. in 2003, an amendment to the Federal Trademark Dilution Act (“FTDA”) has appeared inevitable. Congress almost certainly meant to adopt a “likelihood of dilution” standard in the original statute, and the 2006 revisions correct its sloppy drafting. Substituting a “likelihood of dilution” standard for “actual dilution,” however, does not resolve a deeper philosophical question that has always lurked in the dilution debate: what is dilution, and how does one prove or disprove its probability? The statutory definition notwithstanding, this issue remains largely unanswered, leaving the courts with the …

Dilution, Clarisa Long

Faculty Scholarship

Ever since the creation of federal dilution law, legal commentators have expressed consternation about this variation of the trademark entitlement. Prior to the advent of this form of protection, the owner of a mark could recover for trademark infringement under the Lanham Act only if the commercial use of its mark by someone else caused consumer confusion. By contrast, dilution grants trademark holders an injunctive remedy for the use of their famous marks by another even when consumers are not confused. This Article explores how federal dilution law is actually being judicially enforced. To do so, it examines the enforcement …

Champagne, Feta, And Bourbon: The Spirited Debate About Geographical Indications, Justin Hughes

Articles

Geographical Indications (GIs) are terms for foodstuffs that are associated with certain geographical areas. The law of GIs is currently in a state of flux. Legal protection for GIs mandated in the TRIPS Agreement is implemented through appellations law in France and through certification mark systems in the United States and Canada. This Article first examines the state of GIs throughout the world. The author then turns to the continuing debate between the European Union and other industrialized economies over this unique form of intellectual property. The European Union claims that increasing GI protection would aid developing countries, but, in …