Intellectual Property Law Commons^™

Intellectual Property's First Sale Doctrine And The Policy Against Restraints On Alienation, Lorie M. Graham, Stephen M. Mcjohn

Texas A&M Law Review

The first sale doctrine decouples intellectual property and physical property. Suppose, at an auction at Sotheby’s, someone bought a contemporary painting by Chuck Close. The buyer now owns the physical painting, but the copyright to the painting remains with the owner of the copyright—the painter Chuck Close or whomever Close may have transferred the copyright to. Absent the first sale doctrine, if the buyer either sold the painting or displayed it to the public, the buyer would potentially infringe the copyright in the painting. The copyright owner has the exclusive right to display copies (including the original, the first copy) …

It's Scandalous! -- Limiting Profane Trademark Registrations After "Tam" And "Brunetti", Gary Myers

Georgia Journal of Law & Technology

Over the course of the last two years, the Supreme Court has engaged in a long-overdue assessment of the constitutionality of federal trademark law prohibitions on the registration of offensive marks. In its unanimous 2017 decision in Matal v. Tam, the Court held that the disparagement clause is a content-based provision that violates the First Amendment. In 2019, the Court in Iancu v. Brunetti held that the refusal to register the mark “FUCT” on grounds that it was immoral or scandalous would also violate the First Amendment. These cases offered an opportunity for the Court to clarify the proper role …

Fighting The Faceless Foe Known As The Online Trademark Counterfeiter: Forum Shopping Tactics In The Digital Age, Chelsea R. Feagle

Georgia Journal of Law & Technology

This Note proceeds in two main parts. Part II provides a background for understanding trademark counterfeiting claims and remedies. It first examines the federal trademark protections alongside the state trademark protections and details the way in which they differ. Part II then breaks down the number of online trademark counterfeit cases filed in the United States and notes the percentage of those cases which are filed predominately in three federal district courts. Because it is difficult to comprehensively track this data, the principle import of the referenced statistical breakdown should be understood only as attempting to draw general conclusions from …

The Ip Of Ipas: A Look Into Trademark Infringement In The Craft Beer Industry, Shivani Patel

Georgia Journal of Law & Technology

Alcohol isn't just a mind-altering drink: It has been a prime mover of human culture from the beginning, fueling the development of arts, language, and religion."' Alcohol production and consumption can be traced to civilizations dating back thousands of years all around the world, and it has become so essential to our society that experts have gone on to joke that humans should be called "Homo imbibens." Within the current alcohol industry, two essential qualities that are becoming more common are creativity and variety.

Alcohol has become a defining aspect of human culture and our sense of society. It has …

Pre-Game Strategy For Long-Term Win: Using Trademark Registration And Right Of Publicity To Protect Esports Gamers, John Bat

Catholic University Journal of Law and Technology

The soaring popularity of esports across the globe has turned ultra-talented gamers into a blend of athlete and entertainer. The youthful esports ecosystem is exploding in growth, and the world is taking notice. But are the gamers who are eyeing professional play taking basic legal steps to develop and shield their brands, as well as bolster their collective negotiating leverage with teams, leagues, and miscellaneous entities? This note explores what features of an up-and-coming esports gamer might be worth protecting through a trademark and/or personality-rights schema, which in turn, could assist competitive gamers who are interested in developing their careers …

Response To Oliar And Stern: On Duration, The Idea/Expression Dichotomy, And Time, Wendy J. Gordon

Faculty Scholarship

Courts often use possession to determine who should own unclaimed resources. Yet, as Oliar and Stern demonstrate, the concept of possession is little more than a metaphor, capable of being applied to a broad range of phenomena. The authors helpfully deploy “time” as a metric to sort through the rules determining what should count as possession, and they survey the likely costs and benefits attached to choosing earlier versus later events as triggers for acquiring title.

With those tools in hand, Oliar and Stern employ “time” and the analogy of physical possession to address problems in copyright, patent, and trademark …

Double Standards: An Empirical Study Of Patent And Trademark Discipline, Jon J. Lee

Faculty Articles

Our legal system is built on the foundation that lawyers have a number of coexisting and sometimes conflicting duties — to their clients, to others who might be affected by their practice, and to the effective and equitable administration of justice. While most lawyers fulfill these duties ethically, invariably some fail to live up to these expectations. For this reason, all states have created disciplinary authorities to regulate and sanction lawyer misconduct. The United States Patent and Trademark Office (“USPTO”) is one of the few agencies to have developed its own disciplinary system for policing the conduct of trademark attorneys …

Copyright And Attention Scarcity, Jake Linford

Scholarly Publications

No abstract provided.

Against Progress: Interventions About Equality In Supreme Court Cases About Copyright Law, Jessica Silbey

Faculty Scholarship

This symposium essay is adapted from my forthcoming book Against Progress: Intellectual Property and Fundamental Values in the Internet Age (Stanford University Press 2021 forthcoming). The book’s primary argument is that, with the rise of digital technology and the ubiquity of the internet, intellectual property law is becoming a mainstream part of law and culture. This mainstreaming of IP has particular effects, one of which is the surfacing of on-going debates about “progress of science and the useful arts,” which is the constitutional purpose of intellectual property rights.

In brief, Against Progress describes how in the 20th century intellectual property …

Trademark Vigilance In The Twenty-First Century: An Update, Peter S. Sloane

Fordham Intellectual Property, Media and Entertainment Law Journal

The trademark laws impose a duty upon brand owners to be vigilant in policing their marks, lest they be subject to the defense of laches, a reduced scope of protection, or even death by genericide. Before the millennium, it was relatively manageable for brand owners to police the retail marketplace for infringements and counterfeits. The Internet changed everything.

In ways unforeseen, the Internet has unleashed a tremendously damaging cataclysm upon brands—online counterfeiting. It has created a virtual pipeline directly from factories in China to the American consumer shopping from home or work. The very online platforms that make Internet shopping …

Misappropriation-Based Trademark Liability In Comparative Perspective, Jeremy N. Sheff

Faculty Publications

(Excerpt)

The anti-misappropriation principle, at its core, is that it is wrongful and therefore actionable for a competitor to gain a commercial advantage from the efforts of another, even if that advantage does not directly harm the person whose efforts have been misappropriated. This principle appears to be a deep theoretical commitment of modern intellectual property law. And nowhere in intellectual property law is the anti-misappropriation impulse more directly implicated than in the context of conspicuous consumption.

As I have written about elsewhere, modern consumers engage in conspicuous consumption of branded goods to signal social affiliation and identity, and to …

The Flourishing Race: How The Success Of American Indian Artist-Entrepreneurs Underscores The Need For Enhanced Legal Protections For Native Intellectual Property, Jessica Roberts

American Indian Law Journal

No abstract provided.

Courts, Trademarks, And The Icann Gold Rush: No Free Speech In Top Level Domains, Jerome O'Callaghan, Paula O'Callaghan

Loyola of Los Angeles Entertainment Law Review

In recent years, the Internet Corporation for Assigned Names and Numbers (ICANN) expanded top-level domains, such as .com, .net, and .org, to include a very wide variety of new terms. One of the new options is .sucks. This Article examines the potential for conflict when trademark holders seek to protect their mark in the context of the .sucks domain. There is a temptation to see this issue in terms of consumers’ free speech rights pitted against corporate interests. However, the recent privatization of ICANN does not bode well for promoting consumers’ First Amendment rights in domain name battles.

Death Of Copyright, Paul Gugliuzza

Faculty Scholarship

The four primary bodies of intellectual property law—patent law, copyright law, trademark law, and the law of trade secrets—address the question of duration in different ways. Trade secrets have no fixed duration; the law protects against misappropriation as long as the relevant information remains secret. Trademark protection lasts as long as the mark retains its capacity to distinguish the goods or services it is attached to. In patent law—my primary area of scholarship—duration is fixed, finite, and generally straightforward to determine: you get twenty years from the date you file your patent application. Copyright duration, by contrast, varies depending on …

A Masterclass In Trademark's Descriptive Fair Use Defense, Deborah R. Gerhardt

Akron Law Review

When judges decide trademark cases, they often must balance trademark rights against interests in free expression. The defense known as “classic” or “descriptive” fair use embraces the foundational themes that make trademark conflicts so compelling. By design, the defense pits fair competition and free speech against a mark owner’s right to control its story, reputation, and values. The outcome of this tug of war may be hard to predict. It turns on consumer perception, and therefore, generally raises questions of fact. But in Mars, Inc. v. J.M. Smucker Co., this fact intensive question was decided as a matter of law. …

An Empirical Examination Of Consumer Survey Use In Trademark Litigation, Katie Brown Ph.D, Natasha T. Brison, Paul Batista

Loyola of Los Angeles Entertainment Law Review

This Article is a comprehensive examination of the use of consumer surveys in trademark litigation cases at the federal level. Previous research has shown consumer surveys can be critical to the outcome of trademark litigation, as they measure the idiosyncratic mental associations and reactions of prospective consumers. For this Article, this study examined 843 trademark infringement and dilution cases spanning 2007 to 2017. The findings reveal consumer surveys are not utilized in trademark litigation as often as research suggests they should be. While consumer surveys are not required in trademark litigation, nor necessarily easy or inexpensive to com- mission, this …

A Few Words And A Brief Recap Of The Jptrca’S Journey, David R. Irvin

Journal of the Patent and Trademark Resource Center Association

The Journal of the Patent and Trademark Resource Center has transitioned to TigerPrints at Clemson University. Here we offer some insight about why the Publications Committee recommended the move.

Fair Trade-Mark: Proposing An Affirmative Duty On Licensors To Enforce Their Corporate Social Responsibility Codes, Dorothy L. Newman

Fordham Intellectual Property, Media and Entertainment Law Journal

Modern consumers are increasingly interested in seeing the brands they love commit to corporate social responsibility (CSR), including fair labor practices and environmental sustainability throughout their supply chains. Many corporations capitalize on this demand through branding strategies that highlight their commitment to CSR. Branding of CSR can include publishing codes of conduct on corporate websites, incorporating a value of doing good while doing well in print and video advertisements, or even publicly partnering with nonprofit organizations. The Lanham Act, the primary federal trademark statute in the United States, articulates federal laws pertaining to branding and advertising, and is rooted in …

Intellectual Property Harms: A Paradigm For The Twenty-First Century, Jessica Silbey

Faculty Scholarship

This short essay is part of a larger book project that investigates how contemporary intellectual property debates, especially in the digital age, are taking place over less familiar terrain: fundamental rights and values. Its argument draws from the diverse, personal accounts of interviews from everyday creators and innovators and focuses on descriptions of harms and, as some say “abuses,” they suffer within their practicing communities. The harms are not described are the usual harms that intellectual property law is understood to prevent. Typically, intellectual property injuries are conceived in individual terms and as economic injuries. An infringer is a thief. …

Placebo Marks, Jake Linford

Scholarly Publications

Scholars often complain that sellers use trademarks to manipulate consumer perception. This manipulation ostensibly harms consumers by limiting their ability to make informed choices. For example, holding other things constant, consumers spend more money on goods with a high-performance reputation. Critics characterize that result as wasteful, if not anticompetitive. But recent marketing research shows that trademarks with a high-performance reputation may sometimes influence perception to the benefit of the consumer.

A trademark with a high-performance reputation can deliver a performance-enhancing placebo effect. Research subjects perform better at physical and mental tasks when they prepare or play with a product bearing …

The Anonymity Heuristic: How Surnames Stop Identifying People When They Become Trademarks, Russell W. Jacobs

Dickinson Law Review (2017-Present)

This Article explores the following question central to trademark law: if a homograph has both a surname and a trademark interpretation will consumers consider those interpretations as intrinsically overlapping or the surname and trademark as completely separate and unrelated words? While trademark jurisprudence typically has approached this question from a legal perspective or with assumptions about consumer behavior, this Article builds on the Law and Behavioral Science approach to legal scholarship by drawing from the fields of psychology, linguistics, economics, anthropology, sociology, and marketing.

The Article concludes that consumers will regard the two interpretations as separate and unrelated, processing surname …

Weed The People: Trademarking Rights In The Marijuana Industry, Ryan Christen

Cybaris®

No abstract provided.

Comparative Analysis Of Innovation Failures And Institutions In Context, Mark P. Mckenna

Journal Articles

Many different legal and non-legal institutions govern and therefore shape knowledge production. It is tempting, given the various types of knowledge, knowledge producers, and systems with and within which knowledge and knowledge producers and users interact, to look for reductionist shortcuts — in general but especially in the context of comparative institutional analysis. The temptation should be resisted for it leads to either what Harold Demsetz called the Nirvana Fallacy or what Elinor Ostrom critiqued as myopic allegories.

We suggest that comparative institutional analysis must be accompanied by comparative failure analysis, by which we mean rigorous and contextual comparative analysis …

Trends In Fashion Law: Striking The Proper Balance Between Protecting The Art Form And Sustaining A Thriving Online Market, Elisabeth Johnson

The Journal of Business, Entrepreneurship & the Law

No abstract provided.

Bounded Rationality, Paternalism, And Trademark Law, Stacey Dogan

Faculty Scholarship

We don’t need behavioral economics to understand that trade marks can shape consumer preferences in ways that have little to do with objectively measurable differences in product quality. Scholars, judges, economists, and policymakers have long recognized the tendency of strong marks to skew consumer decisions. The concern lies not only in price effects but with the allocative effects of encouraging investment in persuasive advertising, rather than product innovation or similar “productive” pursuits. While informative advertising can benefit consumers, advertising that creates artificial brand-based differences between otherwise identical products appears not only costly to consumers but also socially wasteful.

This Essay …

Two-Tiered Trademarks, Glynn Lunney

Faculty Scholarship

Today, we have a two-tiered trademark system. In the top tier, both parties can afford to litigate. In the lower tier, only one party can. This two-tiered system has arisen over the last century because courts refused to follow the law. Faced with trademark law that led to seemingly unjust outcomes in the case before them, courts rewrote trademark law. When those initial rewrites led to different sorts of seeming injustice as cases continued to arise, courts rewrote trademark law again and again. Moreover, judges rewrote trademark law not as part of any systemic and coherent plan for trademark law, …

The Costs Of Trademarking Dolls, Jessica Silbey

Faculty Scholarship

Professor Curtin’s article, Zombie Cinderella and the Undead Public Domain, takes a recent case from the Trademark Trial and Appeal Board (TTAB) as the basis for an argument that trademark doctrine needs stronger protection against the exclusive commercial appropriation of characters that are in the public domain. In that case, a doll manufacturer sought to register the term “Zombie Cinderella” for a doll that was zombie-ish and princess-like. The examiner refused registration because the term “Zombie Cinderella” for this kind of doll was confusingly similar to the mark for Walt Disney’s Cinderella doll. Although the TTAB overturned the examiner’s …

Playing To Their Passion: A Legal Research Course That Resonates With Law Students, Susan Drisko Zago

Law Faculty Scholarship

The first year of law school is chock-full of new experiences. Students can become overwhelmed in the face of so much change that they forget why they chose law school as a career path. They often lose sight of their end goal and need a touchstone to ground them back to their initial interests. Legal Research is the ideal first-year class to connect the acquisition of legal skills with interesting topics in a way that encourages students’ engagement in their present and future learning. By adding a student-selected subject context to their class, Legal Research instructors can incorporate contextualized learning …

Harmonizing Cultural Ip Across Borders: Fashionable Bags & Ghanaian Adinkra Symbols, J. Janewa Osei-Tutu

Akron Law Review

Global copyright and trademark laws protect symbols, names, and literary and artistic works. However, when their primary significance is cultural, because they are neither individual original works nor symbols that are used as commercial identifiers, intellectual property laws do not protect these symbols or artistic works. This is true, even if these goods are protected under national laws as part of that nation’s cultural heritage. Once these cultural goods cross borders, there is no international law that will enable the country from which these goods originate to assert its rights in other countries. This Article characterizes these cultural goods as …

Criminal Trademark Enforcement And The Problem Of Inevitable Creep, Mark P. Mckenna

Akron Law Review

This Article focuses on the federal Trademark Counterfeiting Act (TCA), the primary source of federal criminal trademark sanctions. That statute was intended to increase the penalties associated with the most egregious form of trademark infringement—use of an identical mark for goods identical to those for which the mark is registered and in a context in which the use is likely to deceive consumers about the actual source of the counterfeiter’s goods. The TCA was intended to ratchet up the penalties associated with counterfeiting, but only in cases involving particularly egregious conduct.

Several recent trends in the application of the TCA, …