Intellectual Property Law Commons^™

Stopping The "Savage Indian" Myth: Dealing With The Doctrine Of Laches In Lanham Act Claims Of Disparagement, Steven R. Latterell

Indiana Law Journal

No abstract provided.

The Naked Licensing Doctrine Exposed: How Courts Interpret The Lanham Act To Require Licensors To Police Their Licensees & Why This Requirement Conflicts With Modern Licensing Realities & The Goals Of Trademark Law , Rudolph J. Kuss

Marquette Intellectual Property Law Review

This Comment discusses the naked licensing doctrine, under which trademark owners may lose their trademark protection through failing to exercise control over their licensees. Even though the Lanham Act holds that abandonment of trademark rights is only appropriate when a trademark has lost its significance, courts have held that a trademark owner may abandon its rights through naked licensing when it breaches its affirmative duty to police its licensees. In other words, these courts find abandonment even when there is no evidence that the quality of the goods and services sold under the trademark has declined. This Comment argues that …

Designer Discounter Infringes Trademark And Goes Unpunished: A Look At Gucci America, Inc. V. Daffy’S, Inc. And The Lanham Act, Sarah Cone

Richmond Journal of Law & Technology

Regardless of the quality, a knockoff handbag is still a knockoff. It was on this premise that Gucci America, Inc. filed suit against Daffy’s, Inc. for selling counterfeit Gucci handbags. Gucci alleged that Daffy’s violated its trademark protection under the Lanham Act. In the lawsuit, Gucci asserted that it was concerned about the possible confusion of consumers who purchased counterfeit “Jackie-O” handbags, believing them to be genuine Gucci products. Neither the district court nor the circuit court allowed Gucci relief against Daffy’s. This note examines how that decision fits within the Lanham Act.

The Supreme Court's Mixed Messages On The Public Domain: Cases Interpreting Section 43 Of The Lanham Act, William Scott Hunt

Kentucky Law Journal

No abstract provided.

When You Wish Upon Dastar: Creative Provenance And The Lanham Act, Mary Lafrance

Scholarly Works

This Article examines the application of section 43(a) of the Lanham Act to claims of reverse passing off through the lens of the Supreme Court's unpersuasive effort in Dastar Corp. v. Twentieth Century Fox Film Corp. to exclude a single class of reverse passing off-claims - those involving “expressive” works as opposed to physical commodities - from the scope of section 43(a). The Article critiques the Court's analysis of section 43(a) in light of case law and the pertinent legislative history, including, the Trademark Law Revision Act of 1988, the Berne Convention Implementation Act of 1988, and the Visual Artists …

The Author's Name As A Trademark: A Perverse Perspective On The Moral Right Of "Paternity"?, Jane C. Ginsburg

Faculty Scholarship

The US. Supreme Court in its 2003 decision in Dastar v. Twentieth Century Fox, construing the Lanham Federal Trademarks Act, deprived authors of their principal legal means to enforce attribution rights in the US. I have elsewhere criticized the Dastar Court's analysis, and have urged amending the Copyright Act to provide express recognition of the attribution right. This time, however, I propose to reconsider the foundation for the attribution right; I draw on literary and historical sources to supplement legal arguments concerning the meaning of the author's name. I will suggest that, contrary to the usual characterization of this …

2003 Trademark Law Decisions Of The Federal Circuit, Roberta Horton, Catherine Rowland

American University Law Review

No abstract provided.

Trademarks And Consumer Search Costs On The Internet, Stacey Dogan, Mark A. Lemley

Faculty Scholarship

In theory, trademarks serve as information tools, by conveying product information through convenient, identifiable symbols. In practice, however, trademarks have increasingly been used to obstruct the flow of information about competing products and services. In the online context, in particular, some courts have recently allowed trademark holders to block uses of their marks that would never have raised an eyebrow in a brick-and-mortar setting - uses that increase, rather than diminish, the flow of truthful, relevant information to consumers. These courts have stretched trademark doctrine on more than one dimension, both by expanding the concept of actionable "confusion" and by …

Intellectual Property Trademark Law—Victor/Victoria?—The United States Supreme Court Requires Trademark Dilution Plaintiffs To Show Actual Harm. Mosely V. Victoria's Secret Catalogue, Inc., 537 U.S. 418 (2003), Stephanie Egner

University of Arkansas at Little Rock Law Review

No abstract provided.

Thoughts On Dastar From A Copyright Perspective: A Welcome Step Toward Respite For The Public Domain, Lynn Mclain

All Faculty Scholarship

Though other questions remain unresolved and other leaks unstemmed, Dastar is a welcome step towards regaining the public domain, and towards establishing that the confines of the public domain, with regard to nondeceptive reproduction of public domain works, and preparation of derivative works based upon them, must be delimited by only the copyright and patent laws.

This article will provide a background discussion of the copyright and patent schemes and their delineation of the public domain. It then will discuss the role of trademark law in that balance, and some of the case law regarding both § 43 of the …

Measuring Fame: The Use Of Empirical Evidence In Dilution Actions , Adam Omar Shanti

Marquette Intellectual Property Law Review

Adam Omar Shanti explores the concepts of dilution and famousness under Trademark Law. Dilution is a protection afforded "famous" trademarks by the Lanham Act. In essence, it prevents the usage of marks on dissimilar items that resemble a famous mark to prevent the "gradual whittling away or dispersion of the identity and hold upon the public mind." Dilution can occur by 1) blurring, 2) tarnishment, or 3) alteration. To determine whether a mark is "famous", eight subjective criteria are evaluated, which often produces inconsistencies among the courts. Mr. Shanti argues that an empirically derived test for fame must be created …

Electronic Billboards Along The Information Superhighway: Liability Under The Lanham Act For Using Trademarks To Key Internet Banner Ads, Christine Galbraith Davik

Faculty Publications

With almost one billion web pages on the Internet today, a search engine is a necessity at times. But search engines are also for-profit ventures and the financial success of these sites hinges on advertising revenue. One of the ways in which these sites generate income is by selling “keywords” to advertisers. Although there has been only one judicial decision – Playboy Enterprises, Inc. v. Netscape Communications – involving banner ads keyed to trademarks, it will undoubtedly not be the last. This article argues that despite the invisible nature of this unauthorized trademark use, the common practice of keying a …

Trademarks And The Movies: An Af-'Fair Use To Remember, Lauren P. Smith

Cleveland State Law Review

The Federal Trademark Dilution Act poses a serious threat for filmmakers, much more so than found under the original Lanham Act. A filmmaker can be found guilt of dilution without a finding that consumers would likely be confused by the allegedly diluting use. The mere appearance of a mark in a film would not likely violate a trademark holders rights. According dilution's much less stringent standard, non-competing uses of a mark which would "blur" its strength would violate a holder's rights. Courts have used the FTDA in ways as broad as its language allows, and it poses a very serious …

The Development Of Arbitration In The Resolution Of Internet Domain Name Disputes, Christopher S. Lee

Richmond Journal of Law & Technology

Web surfers who use the AltaVista Internet search engine may not realize that in 1998, Compaq Computer Corporation paid $3.3 million for the rights to the domain name AltaVista.com. A year later, eCompanies paid $7.5 million for the domain name business.com. And in February of 2000, Bank of America paid $3 million for the domain name loans.com. These transactions demonstrate that the ownership, transfer, and control of Internet domain names is a multi-million dollar industry.

Metatags: Seeking To Evade User Detection And The Lanham Act, Terrell W. Mills

Richmond Journal of Law & Technology

You hop on the World Wide Web ready to do some Internet surfing. You decide to check the scores from last night's football game. You head to your favorite search engine and then pause . . . "where will the scores be" you ask yourself. You decide upon ESPN, because you know they have it all when it comes to sports. So, you type in ESPN and click on the "SEARCH" button. You eagerly await the return of the results to head out to the ESPN homepage to find out if your alma mater beat the in-state rival in the …

The Extraterritorial Reach Of United States Trademark Law: A Review Of Recent Decisions Under The Lanham Act, Erika M. Brown

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

What State Am I In?: Common Law Trademarks On The Internet , Brian L. Berlandi

Michigan Telecommunications & Technology Law Review

This essay explores the interaction between common law trademarks and the Internet--a relationship that has yet to be scrutinized by the intellectual property and Internet communities. More specifically, it strains to identify a common law mark's territorial zone of protection with respect to the Internet. This is an ambitious endeavor from the start, for there is no case law or published academic material available or directly on-point. As a result, this essay will not be a critique of judicial precedent or academic opinion. Instead, it offers a premonition of future case law and a foreshadowing of legal scenarios that might …

Trademark Harmonization: Norms, Names & Nonsense, Kenneth L. Port

Marquette Intellectual Property Law Review

Professor Port provides a comment on Marshall A. Leaffer's article that offers another viewpoint on the important issue of the globalization process and trademark law. Rather than seeking ideals of international trademark laws through harmonization, Professor Port suggests that a better objective is internationalization. Professor Port explains that harmonization of international trademark law will be impossible as long as world communities adhere to territorial justifications for sovereignty and jurisdiction. Because goods flow in the reality of an international market, Professor Port reasons that initiatives to avoid inefficiencies and uncertainties of global trademark laws should be directed toward internationalization.

Lanham Act And Deceptive Trade Practice Claims Arising Under State Professional Licensure Laws, John L. Reed

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Reverse Passing Off: Preventing Healthy Competition, Catherine Romero Wright

Seattle University Law Review

In order to protect creativity, the development of products, and access to the marketplace, the Ninth Circuit should readopt the strict bodily appropriations test when determining whether a plaintiff has a legitimate claim under the Lanham Act for reverse passing off. This test protects product originators from having their products mislabeled and it protects entrepreneurs like Chad, who can make valuable contributions to products. This Comment begins with a brief description of the origins of reverse passing off, followed by its evolution in the Ninth Circuit. The expansion of this cause of action in some other circuits is examined; and …

Copyright On The Www: Linking And Liability, Edward A. Cavazos, Coe F. Miles

Richmond Journal of Law & Technology

The World Wide Web (WWW) is so often used as a way of interacting with the Internet that many people mistakenly confuse the two, referring to the Internet as the "Web" and vice versa. Of course, the Internet and its native applications predate the development of the WWW protocols by decades. Still, given the overwhelming amount of available Internet bandwidth now devoted to the transmission of web pages, there is no doubt that the WWW is the interface of choice for most users of the world's most pervasive computer network. The WWW is not the Internet, but there can be …

Fifty Years Of The Lanham Act: A Retrospective Of Section 43(A), Ethan Horwitz, Benjamin Levi

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The Lanham Act: A Living Thing, Joseph D. Garon

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Foreword - Half A Century Of Federal Trademark Protection: The Lanham Act Turns Fifty, H. Peter Nesvold, Lisa M. Pollard

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Analysis And Suggestions Regarding Nsi Domain Name Trademark Dispute Policy, Carl Oppedahl

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The Trademark Office As A Government Corporation , Jeffrey M. Samuels, Linda B. Samuels

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The Dilution Doctrine:  Towards A Reconciliation With The Lanham Act, Elliot B. Staffin

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

It Had To Be Hue:  The Meaning Of Color “Pure And Simple”, Karin S. Schwartz

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Trade Dress:  Who Should Bear The Burden Of Proving Or Disproving Functionality In A Section 43(A) Infringement Claim?, Danielle Rubano

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Trademark Protection For Color: Basking In The Warmth Of "Sun Glow", Jennifer D. Silverman

Touro Law Review

No abstract provided.