Intellectual Property Law Commons^™

Brief Of Amici Curiae Intellectual Property Law Professors In Support Of Appellees, Mark Mckenna

Court Briefs

The District Court correctly determined that Phoenix failed to state a trademark claim because Basket Case’s activities cannot have caused any relevant confusion.1 Phoenix’s fundamental complaint is about unauthorized use of its intangible content—karaoke tracks. Under Dastar v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), however, only confusion regarding the source of physical goods is actionable under the Lanham Act; confusion regarding the source of the karaoke tracks or their authorization is not actionable. Phoenix cannot avoid Dastar just because Basket Case creates digital copies of those tracks, as Basket Case does not sell digital files or …

Fault Lines In Trademark Default Judgments, David S. Welkowitz

Georgia Journal of Law & Technology

No abstract provided.

Where There's A Will, There's A Way: Reconciling Theories Of Willful Infringement And Disgorgement Damages In Trademark Law, Rachel Anne Zisek

Georgia Journal of Law & Technology

No abstract provided.

Clear And Convincing Disparagement: An Argument For A Higher Evidentiary Standard For When The T.T.A.B. Considers Cancelling A Well-Known, Tenured Trademark, John C. Thomas Iii

Georgia Journal of Law & Technology

No abstract provided.

The Right To Say, "I Didn't Write That": Creating A Cause Of Action To Combat False Attribution Of Authorship On The Internet, Kathleen Brennan Hicks

Georgia Journal of Law & Technology

No abstract provided.

Cutting Out The Middleman: Why "Look And Feel" Should Be Ignored In Trade Dress Law, Nicholas Dimarino

St. John's Law Review

(Excerpt)

Part I of this Note discusses the background and elements of general trade dress law. Part II discusses the narrower issue of "look and feel" in the context of websites and outlines how courts have currently addressed the "look and feel" issue. Part III proposes that courts ignore the artificial "look and feel" distinction and instead apply normal trade dress analyses and elements. This solution, which requires that courts adhere to a workable standard that serves the underlying purpose of trade dress law, allows recognition of the distinctive characteristics of website trade dress claims, while reducing the risk of …

The Cost Of Confusion: The Paradox Of Trademarked Pharmaceuticals, Hannah Brennan

Michigan Telecommunications & Technology Law Review

The United States spends nearly $1,000 per person annually on drugs—forty percent more than the next highest spender, Canada, and more than twice the amount France and Germany spend. Although myriad factors contribute to high drug spending in the United States, intellectual property law plays a crucial and well-documented role in inhibiting access to cheaper, generic medications. Yet, for the most part, the discussion of the relationship between intellectual property law and drug spending has centered on patent protection. Recently, however, a few researchers have turned their attention to a different avenue of exclusivity—trademark law. New studies suggest that pharmaceutical …

Disparaging Trademarks: Who Matters, Jasmine Abdel-Khalik

Michigan Journal of Race and Law

For more than a century, non-majority groups have protested the use of trademarks comprised of or containing terms referencing the group—albeit for various reasons. Under the 1946 Lanham Act, Congress added a prohibition against registering disparaging trademarks, which could offer protection to non-majority groups targeted by the use of trademarks offensive to members of the group. The prohibition remained relatively unclear, however, and rarely applied in that context until a group of Native Americans petitioned to cancel the Washington NFL team’s trademarks as either scandalous, offensive to the general population, or disparaging, offensive to the referenced group. In clarifying the …

Gray Market Goods Produced By Foreign Affiliates Of The U.S. Trademark Owner: Should The Lanham Act Provide A Remedy?, Steven M. Auvil

Akron Law Review

I shall argue that, with limited exceptions, the problem posed by genuine gray market imports from an affiliated source is not a trademark problem per se, and as such federal relief must come from Congress in the form of sui generis legislation. First, I shall briefly examine the historical background of this problem and discuss the debate leading up to the K Mart decision. Second, I shall discuss the nature of the trademark right, provisions under the Lanham Act that safeguard that right and several illustrative gray market cases decided thereunder. Third, I shall discuss the relationship between the trademark …

Victor Can Keep His Little Secret Unless Victoria's Secret Is Actually Harmed, Shafeek Seddiq

Touro Law Review

No abstract provided.

Licensing Of Intellectual Property Rights, Mark Joelson

Georgia Journal of International & Comparative Law

No abstract provided.

The Constitutional Limitation On Trademark Propertization, Peter J. Karol

Law Faculty Scholarship

The following article seeks to apply the retrenchment in constitutional Commerce Clause jurisprudence of the last few decades to the phenomenon of trademark propertization, the expansive and largely federal movement towards protecting trademarks as assets apart from any connection to referent goods and services. Trademark scholars have filled the trademarks literature with critiques of propertization that generally object, on policy and historical grounds, to the trend and offer constructions of the Lanham Act designed to check its progress. With the notable exception of an article published in 2000 by Professor Kenneth Port, however, the literature has largely avoided addressing the …

Registering Offense: The Prohibition Of Slurs As Trademarks, Christine Farley

Contributions to Books

Since 1967, Pro-Football has registered six marks that include the term “redskins,” a derogatory racial epithet that refers to Native Americans. The use of disparaging marks dates back to the 19th century when brands commercialized racial stereotypes, such as Aunt Jemima. Today, offensive marks, including those that ridicule race, ethnicity, gender and religion are proliferating prompting the question of what role trademark law plays in protecting the interests of diverse communities. Section 2(a) of the Lanham Act prohibits the registration of marks that consist of matter that may disparage or bring into contempt or disrepute any person, institution, or belief. …

Trademarks And Transducers: The First Circuit Court Of Appeals Decides On The Standard Of Proof Required To Show Willful Infringement In Lanham Act Cases, Peter Karalis

Catholic University Law Review

No abstract provided.

Trademark Owner's Strategy: Litigation Versus The Udrp, Jessica Sganga

Pepperdine Dispute Resolution Law Journal

The article offers information on the enactment, development, and significance of the Lanham Act, the Federal Trademark Diluting Act (FTDA), the Anticybersquatting Consumer Protection Act (ACPA), and the Uniform Domain-Name Dispute-Resolution Policy (UDRP) to address the challenges arising out of the domain name registration process in the U.S. It informs that these acts provides assistance in safeguarding the rights of trademark owners against the domain name registrants.

Intending To Confuse: Why Preponderance Is The Proper Burden Of Proof For Intentional Trademark Infringements Under The Lanham Act, Kelly Collins

Oklahoma Law Review

No abstract provided.

Stabilizing Morality In Trademark Law, Christine Haight Farley

Scholarly Articles in Law Reviews & Journals

Almost all of the commentary concerning the statutory prohibition on registering offensive trademarks lambasts it as a misguided attempt to enforce civility through trademark law. This Article carefully considers the challenges accompanying section 2(a) of the U.S. Trademark Act and defends it as good policy. There are, however, a few instances in which the jurisprudence under section 2(a) has created more problems than it has solved. To alleviate these problems, this Article proposes judging words per se and abandoning the traditional trademark notion of evaluating words in context. Judging words per se is warranted given the very different objectives underlying …

Lexmark Int'l, Inc. V. Static Control Components, Inc.: Brief Of Law Professors As Amici Curiae In Support Of Neither Side, Jessica Litman

Appellate Briefs

Amici are scholars at U.S. law schools whose research and teaching focus is trademark and advertising law. Amici seek consistent, manageable standards that effectuate Congress's intent to provide a remedy in Section 43(a)(1XB) of the Lanham Act for businesses against false and misleading statements in commercial advertising or promotion.

Supreme Court Amicus Brief Of Law Professors In Support Of Petitioner, Abraham V. Alpha Chi Omega, Christine Farley

Scholarly Articles in Law Reviews & Journals

The Federal Lanham Act provides that injunctive relief, the primary remedy in trademark cases, is to be granted in accordance with the principles of equity. Expressly included among such equitable principles are the defenses of acquiescence, laches, and estoppel. Naturally, these defenses have become commonplace in defending against claims of trademark infringement. In the absence of a statute of limitations courts rely on the doctrine of laches, for example, to determine when trademark infringement claims have become stale. Our informal study of the district in which this case arises shows that from 2005 to 2011, nearly two thirds of answers …

Reexamining Two Pesos, Qualitex, & Wal-Mart: A Different Approach…Or Perhaps Just Old Abercrombie Wine In A New Bottle?, Russ Versteeg

Fordham Intellectual Property, Media and Entertainment Law Journal

In Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), the United States Supreme Court held that, in order for a product design to be protectable under § 43(a) of the Lanham Act, the product design must first acquire a secondary meaning. Writing for the Court, Justice Scalia, reasoned that consumers, as a rule, do not expect a product’s design to serve as an indicator of source. The Court stated that product designs, like colors, do not ordinarily operate as source indicators, and that is why the Court established its rule that a product design must acquire a …

Goodwill U: School Name Change & Trademark Law, Alexandra J. Roberts

IP Theory

No abstract provided.

I Do Not Endorse This Message! Does A Political Campaign’S Unauthorized Use Of A Song Infringe On The Rights Of The Musical Performer?, Kimberlianne Podlas

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Guantanamo's Greatest Hits: The Semiotics Of Sound And The Protection Of Performer Rights Under The Lanham Act, John Tehranian

Vanderbilt Journal of Entertainment & Technology Law

As Bruce Springsteen and Ronald Reagan, Jackson Brown and John McCain, and Tom Morello and Paul Ryan can attest, the exploitation of creative works for political or commercial purposes that run contrary to artists' ideals can stir passions and trigger lawsuits. Yet for performers who are not authors of the exploited works, there is little meaningful legal relief provided by the federal Copyright Act. Instead, such performers--from featured singers and dancers to actors and other personalities known for their distinctive traits--have leaned on alternative theories for recovery, thereby raising the specter of liability outside of copyright law for such unwelcome …

"It's A Little Known Fact" That Copyright Law Is In Conflict With The Right Of Publicity, Madeline O'Connor

Touro Law Review

This Comment will analyze Section 102 of the Copyright Act,the right of publicity in common law and as codified in state statutes,and Section 43(a) of the Lanham Act, and the analyses and applicationof these laws by different circuits. Further, this Comment willsuggest alternative tests, modeled upon trademark law, that courtsmay use in the future in similar situations to reach more equitable determinations.

Buying A Lie: The Harms And Deceptions Of Ghostwriting, T. J. Fosko

University of Arkansas at Little Rock Law Review

Ghostwriters are hired by politicians, celebrities, professionals and even established authors to do the work of writing for significant monetary compensation. Although ghostwriters receive no professional credit for their authorship, publishers who employ ghostwriters enjoy the financial windfall of marketing a book by a well-known person. While the economic harm of purchasing a relatively inexpensive book from what the consumer thought was a best-selling author is relatively slight, the serious harm of ghostwriting is the message received by the consumer who thinks that the ideas and message of the book come from the purported author.

Despite the inherently deceptive nature …

Is There Ever A Reason To Know? A Comparison Of The Contributory Liability "Knowledge" Standard For Websites Hosting Infringed Trademarked Content Versus Infringed Copyrighted Content, Rachel N. Agress

The Journal of Business, Entrepreneurship & the Law

The doctrines of contributory copyright liability and contributory trademark liability are both based on the confluence of basic tort liability and the policy goal of encouraging innovation and commerce. Because the two concepts sometimes conflict, courts have struggled to create a comprehensive body of law to reach a reconciliation. The doctrine of contributory copyright liability evolved through a rich body of case law that was subsequently supplemented by the legislatively enacted Digital Millennium Copyright Act (DMCA). In contrast, the doctrine of contributory trademark liability is a purely common law doctrine and has not witnessed legislative intervention. This article posits that …

The Case Of The Zia: Looking Beyond Trademark Law To Protect Sacred Symbols, Stephanie B. Turner

Chicago-Kent Journal of Intellectual Property

This Article tells the story of a tribe’s fight, over the past two decades, to reclaim its sacred symbol. Members of the Zia tribe, a Native American group located near Albuquerque, New Mexico, have been using their sacred sun symbol in religious ceremonies since 1200 C.E. Today, the symbol appears on the New Mexico state flag, letterhead, and license plate, and on numerous commercial products, including motorcycles and portable toilets. The tribe claims that the state appropriated the symbol without permission in 1925, and that the continued use of the symbol by various parties dilutes its sacred meaning and disparages …

Counterfeits, Copying And Class, Ann Bartow

Law Faculty Scholarship

Consumers who want to express themselves by wearing contemporary clothing styles should not have to choose between expensive brands and counterfeit products. There should be a clear distinction in trademark law between illegal, counterfeit goods and perfectly legal (at least with respect to trademark law) "knockoffs," in which aesthetically functional design attributes have been copied but trademarks have not. Toward that end, as a normative matter, the aesthetic features of products should not be registrable or protectable as trademarks or trade dress, regardless of whether they have secondary meaning, just as functional attributes of a utilitarian nature are not eligible …

Stolen Valor & The First Amendment: Does Trademark Infringement Law Leave Congress An Opening?, Susan Richey, John M. Greabe

Law Faculty Scholarship

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.

Twenty-First Century Trademarks: How Quirky Quick Response Codes (Quircs) Will Challenge The Lanham Act And The Uspto, Matthew C. Kulseth

Cybaris®

No abstract provided.