Intellectual Property Law Commons^™

Ip Litigation In U.S. District Courts: 1994-2014, Matthew Sag

Faculty Articles

This Article undertakes a broad-based empirical review of intellectual property ("IP") litigation in U.S. federal district courts from 1994 to 2014. Unlike the prior literature, this study analyzes federal copyright, patent, and trademark litigation trends as a unified whole. It undertakes a systematic analysis of the records of more than 190,000 cases filed in federal courts and examines the subject matter, geographical, and temporal variation within federal IP litigation over the last two decades.

This Article analyzes changes in the distribution of IP litigation over time and their regional distribution. The key findings of this Article stem from an attempt …

Ip Litigation In United States District Courts: 1994 To 2014, Matthew Sag

Faculty Publications & Other Works

This Article undertakes a broad-based empirical review of intellectual property (“IP”) litigation in U.S. federal district courts from 1994 to 2014. Unlike the prior literature, this study analyzes federal copyright, patent, and trademark litigation trends as a unified whole. It undertakes a systematic analysis of the records of more than 190,000 cases filed in federal courts and examines the subject matter, geographical, and temporal variation within federal IP litigation over the last two decades.

This Article analyzes changes in the distribution of IP litigation over time and their regional distribution. The key findings of this Article stem from an attempt …

A Collision Course Between Trips Flexibilities And Investor-State Proceedings, Cynthia M. Ho

Faculty Publications & Other Works

This Article discusses an important, yet understudied threat to patent, as well as other intellectual property sovereignty under TRIPS: pending and potential challenges by companies under international agreements protecting investments. Although such agreements have existed for decades, Philip Morris and Eli Lilly are blazing a new path for companies to sue countries they claim interfere with their intellectual property rights through so-called investor-state arbitrations. These suits seek hundreds of millions in compensation and even injunctive relief for alleged violations of internationally agreed intellectual property norms. The suits fundamentally challenge TRIPS flexibilities at the very time the Declaration on Patent Protection …

Fairer Uses, Jessica Silbey

Faculty Scholarship

A response to Professor Joseph Liu’s paper on Fair Use, Notice Failure, and the Limits of Copyright as Property, this essay challenges Professor Liu to go even farther in his analysis and protection of the everyday audience of copyright works. In describing and analyzing what I term “fairer uses” on the basis of qualitative data from interviews of artists and authors who make and rely on copyrighted works for their own creativity and professional well-being, I support Professor Liu’s advocacy for maintaining “fuzzy boundaries” of fair use. Based on evidence from grounded practice of professional creators, their expansive application …

Fashion Forward: The Need For A Proactive Approach To The Counterfeit Epidemic, Casey Tripoli

Brooklyn Journal of International Law

In the last two decades, the overall activity of the counterfeit market has expanded and risen 10,000 percent. This dramatic shift corresponds to growth of the Internet, which has unified the fascination of obtaining cheap, illegitimate goods with the efficiency of a mouse click. With the expected continued inflation of the counterfeit market comes a host of new concerns, namely, how to determine who is responsible for the distribution of these knockoffs, and who should be ordained to limit them in the marketplace. In both the United States and the European Union, however, outdated laws produce a mélange of inadequate …

College Athlete Rights After O'Bannon: Where Do College Athlete Intellectual Property Rights Go From Here?, Victoria Roessler

Vanderbilt Journal of Entertainment & Technology Law

The recent O'Bannon v. NCAA decision, which gave student athletes a right in products that exploit their image and likeness, will have a profound impact on college athlete rights. This giant step forward will propel student athletes to fight for more intellectual property rights. Following the footsteps of professional athletes, these rights will likely include copyrighting sports moves, touchdown celebrations, and signature phrases as well as trademarking nicknames and touchdown dances. This Note encourages the adoption of a program giving student athletes these rights and allowing them to receive compensation, uncapped, that they would split evenly with his or her …

Fonts, Typefaces, And Ip Protection: Getting To Just Right, Emily N. Evans

Journal of Intellectual Property Law

No abstract provided.

Explicitly Explicit: The Rogers Test And The Ninth Circuit, Daniel Jacob Wright

Journal of Intellectual Property Law

No abstract provided.

Fighting Piracy With Censorship: The Operation In Our Sites Domain Seizures V. Free Speech, Michael Joseph Harrell

Journal of Intellectual Property Law

No abstract provided.

Fault Lines In Trademark Default Judgments, David S. Welkowitz

Journal of Intellectual Property Law

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

Journal of Intellectual Property Law

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

Journal of Intellectual Property Law

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

Journal of Intellectual Property Law

No abstract provided.

Set The Statutes Straight: Amending The Lanham Act To Dispel The Confusion Regarding Reverse Confusion, Inna Kaminer

Loyola of Los Angeles Entertainment Law Review

The typical case of alleged trademark infringement, i.e., “forward confusion,” involves a larger and more established “senior user” and a smaller and less powerful “junior user.” The secondary junior user wrongfully uses the first senior user’s mark as its own, and thus benefits from the senior user’s more established goodwill. In ruling on a senior user’s trademark infringement claim, the court will use a set of “likelihood of confusion” factors to determine if consumers are confusing the junior user’s goods for that of the senior. Each circuit’s factors vary, but they are harmonious. The issue that this Note explores is …

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 …

Comment: The Tiger Woods Case - Has The Sixth Circuit Abandoned Trademark Law? Etw Corp. V. Jireh Publishing, Inc., Joseph R. Dreitler

Akron Law Review

For more than fifty years, the United States Court of Appeals for the Sixth Circuit vigilantly protected the intellectual property rights of trademark owners and persons seeking protection of their privacy and rights of publicity. Less than two years ago, that changed. In a turnaround remarkable for its suddenness and completeness, the court veered away from protecting intellectual property rights. Perhaps the reason for the departure lies in the stinging reversals of two of its decisions by the United States Supreme Court, or perhaps it lies in a string of admittedly questionable cases brought by overreaching plaintiffs. Regardless of the …

Initial Impressions: Trademark Protection For Abbreviations Of Generic Or Descriptive Terms, Mary Lafrance

Akron Law Review

This article compares the approaches which different federal courts have adopted to address the distinctiveness of abbreviations where the underlying expression or information conveyed by the abbreviation is unprotectable either because it is generic or because it is descriptive and lacks secondary meaning. While this study is not intended as a comprehensive survey, it is designed to highlight the inconsistencies in approaches. The article concludes with some observations about the patterns and trends emerging from the unsettled decisional law.

Brief Of Amici Curiae Intellectual Property Law Professors In Support Of Appellees Canton Phoenix, Inc. And Bing Pan Zhu, Mark P. Mckenna, Joseph C. Gratz

Court Briefs

No. 14-36018
Slep-Tone Entertainment Corporation v. Canton Phoenix Incorporated

On Appeal from the United States District Court for the District of Oregon 3:14-cv-00764-PK Honorable J. Mosman

From the Summary of Argument

The District Court correctly determined that Slep-Tone’s trademark infringement and unfair competition claims are barred by Dastar v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003).

Slep-Tone’s fundamental complaint is about unauthorized use of its intangible content—karaoke tracks. Under Dastar, 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 …

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

Touro Law Review

No abstract provided.

Andy Warhol’S Pantry, Brian L. Frye

Law Faculty Scholarly Articles

This Article examines Andy Warhol’s use of food and food products as a metaphor for commerce and consumption. It observes that Warhol’s use of images and marks was often inconsistent with copyright and trademark doctrine, and suggests that the fair use doctrine should in-corporate a “Warhol test.”

Licensing Of Intellectual Property Rights, Mark Joelson

Georgia Journal of International & Comparative Law

No abstract provided.

Hacking Trademark Law For Collaborative Communities, Yana Welinder, Stephen Laporte

Fordham Intellectual Property, Media and Entertainment Law Journal

Collaborative communities create popular work with widely recognized brands, such as Wikipedia, Linux, Android, and Firefox. Trademark law can provide protections to members of these communities and the users of their products so that they can rely on the brands to identify the original projects. This Article explores the conflict between collaborative communities and trademark law. While collaborative communities thrive on openness and decentralization, trademark law requires centralized quality control and various formalities. This Article introduces a descriptive taxonomy of “hacks” that collaborative communities have used to try to mitigate the tensions between their values and trademark law. These hacks …

Ip Basics: Avoiding Patent, Trademark And Copyright Problems, Thomas G. Field Jr.

Law Faculty Scholarship

Patents, copyrights and trademarks, as well as trade secrets and related rights, can be used to exclude free riders. These rights are collectively called "intellectual property" or IP.

Ip Basics: Advice On Ip Careers For Those With Technical Backgrounds, Thomas G. Field Jr.

Law Faculty Scholarship

[Excerpt] Full-time law school takes three years and culminates in the Juris Doctor. A J.D. from a school accredited by the American Bar Association qualifies a person to take the bar exam in any state. As mentioned above, college graduates need not pursue any particular line of study to be accepted into law school. At the University of New Hampshire School of Law, for example, over a third of our students have degrees in engineering or science, and many have had extensive experience or advanced degrees, including M.D.s and Ph.Ds. -- the last being particularly helpful for biotechnology patent careers.

Ip Basics: Trademarks And Business Goodwill, Thomas G. Field Jr.

Law Faculty Scholarship

This is information all business owners need if they wish to preserve their hard-won goodwill. It discusses, for example, the important differences between strong and weak marks for products and services, the value of state and federal registrations and the importance of searches (to avoid wasting money).

Whether Rejection Of A Trademark License Agreement Terminates The Licensee's Rights To Use The Trademark, Crystal Lawson

Bankruptcy Research Library

(Excerpt)

Section 365(a) of the Bankruptcy Code sets forth the basic power of a trustee in bankruptcy or a debtor in possession to assume or reject an executory contract. A debtor's ability to assume or reject an executory contract allows a debtor to keep favorable contracts and to discard burdensome contracts, subject to the bankruptcy court’s approval. The bankruptcy court will apply a two-part test to determine whether assumption or rejection should be allowed. First the court will determine whether the contract is executory. If the court determines that the contract is executory, the court will then determine whether assumption …

Trademark Extortion Revisited: A Response To Vogel And Schachter, Kenneth L. Port

Faculty Scholarship

Trademark bullying (a.k.a. trademark extortion) is a very controversial notion in trademark litigation in the United States. There, for sure, is a lot of illegitimate trademark infringement happening. Anecdotally, we also know that trademark holders often overstep in the assertion of their otherwise legitimate rights. For the first time, this article documents how large a problem trademark bullying is and how often it happens. Trademark bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of …

Identity Property: Protecting The New Ip In A Race-Relevant World, Philip Lee

Faculty Publications

(Excerpt)

This Article explores the relatively new idea in American legal thought that people of color are human beings whose dignity and selfhood are worthy of legal protection. While the value and protection of whiteness throughout American legal history is undeniable, non-whiteness has had a more turbulent history. For most of American history, the concept of non-whiteness was constructed by white society and reinforced by law—i.e., through a process of socio-legal construction—in a way that excluded its possessor from the fruits of citizenship. However, people of color have resisted this negative construction of selfhood. This resistance led to the development …

Recent Developments In Intellectual Property Law — A 2014 Retrospective, David O. Taylor, W. Keith Robinson

Faculty Journal Articles and Book Chapters

The year 2014 was an eventful one for intellectual property law. Every branch of government affected intellectual property law in one way or another. The Supreme Court ruled on several important intellectual property law cases; federal and state legislatures contemplated and enacted various new statutes that changed the intellectual property law landscape; and the U.S. Patent and Trademark Office continued to implement new procedures governing the issuance and reconsideration of intellectual property rights. These events captured the consciousness of the American public and garnered significant media attention, more so than any year in recent memory. As these events proved, technological …

Reading Intellectual Property Law Reform Through The Lens Of Constitutional Equality, Jessica Silbey

Faculty Scholarship

In reviewing three books, Robert Spoo's Without Copyright, Bill Herman's The Fight for Digital Rights, and Aram Sinnreich's The Piracy Crusade, for Tulsa Law Review's annual book review volume, this paper explores new themes and structures in Supreme Court cases about intellectual property. Studying the new histories and processes described in the books under review helps reveal constitutional equality frameworks in Supreme Court cases about intellectual property usually understood as cases about congressional deference and property rights. This article explains how many of these Supreme Court cases about IP reflect a range of equality modalities - e.g., …