Intellectual Property Law Commons^™

Source & Solidarity, Sari Mazzurco

Michigan Law Review

Trademark law has become the new frontier of unionbusting. Companies like Trader Joe’s, Starbucks, and Medieval Times have brought unprecedented suits against their employee unions for trademark infringement in relation to their organizing activities. This sort of litigation puts courts in the difficult position of reconciling trademark protection with unionization rights. Their attempts to apply standard trademark doctrines in this context reveal a deeper problem: Current trademark law is incoherent when applied to labor unions.

This incoherence stems from a disconnect between current trademark law and the original purpose behind its application to labor unions. This Article recovers that basis …

Three Decades Of Supreme Court Copyright Decisions: A Peek Behind The Scenes, Jonathan Band

Joint PIJIP/TLS Research Paper Series

This article discusses the revelations in the case files of eight Supreme Court Justices concerning eighteen copyright-related decisions issued by the Court between 1973 and 2005. The papers show the Court as a profoundly human institution, with the Justices often struggling to craft opinions that could gain the support of a majority. The Justices clearly cared about the copyright merits, but they were also willing to compromise to achieve a certain result. In several cases, the final opinion was anything but inevitable. This was particularly so with Sony Corporation of America v. Universal City Studios, 464 U.S. 417 (1984), …

Intellectual Property Is A Drag [Queen], Brianna Pruitt

Barry Law Review

No abstract provided.

Upcycled And Rightful: Navigating Trademark Law And The Circular Economy, Irene Calboli, Gabrielle Armstrong

Texas A&M Journal of Property Law

This Article elaborates on the practice of upcycling and argues that upcycling should be considered a lawful practice under current trademark rules in the United States. Upcycling is the process of taking existing products lawfully sold on the market, in most instances, used products, and giving these products a second life by adding additional elements and decorations or by using the still viable product parts to create new products altogether. Because of its focus on reusing existing products or product parts, the practice of upcycling has become increasingly popular, also because it promotes circular and environmentally friendly production practices. However, …

Deepfakes In Domestic And International Perspective, Jane C. Ginsburg, Graeme W. Austin

Faculty Scholarship

Have you always (or ever) yearned to produce your own recording of Elvis Presley singing great baritone arias from Italian opera? Or to make a movie starring Nicole Kidman as Lady Macbeth? Or a videogame featuring the bully who tormented you in high school suffering repeated tortures worthy of the Christian martyrdoms recounted with gusto in The Golden Legend? You can fulfill all these wishes, and more, thanks to the AI technology enabling the creation of “deepfakes” — known in legal documents as “digital replicas” — capable of simulating the visual and vocal appearance of real people, living or …

Ai-Driven Branding: Trademark Law Implications Of Automated Creativity, David J. Looney

Touro Law Review

The rapid advancement of Artificial Intelligence (“AI”), particularly generative AI systems like OpenAI’s ChatGPT and DALL-E, has introduced novel challenges to trademark law, which have remained largely unchanged since the Lanham Act of 1946. While trademark law has evolved to address such issues as dilution, international registration, and cybersquatting, the emergence of AI-generated con[1]tent capable of producing words, phrases, logos, and symbols raises significant concerns about infringement and dilution of existing trademarks. This Note examines the intersection of AI and trademark law, exploring the historical and current frameworks of both fields, the legal dilemmas posed by AI’s ability to generate …

Trademark Fair Use Is No Joke, Christine Farley

Scholarly Articles in Law Reviews & Journals

This Article examines how the Supreme Court's 2023 decision in Jack Daniel's Properties v. VIP Products reveals the limitations of using parody as a framework for resolving tensions between trademark rights and free speech. While the Court's ruling narrowed trademark protection in certain instances and acknowledged the importance of protecting parodic speech, it ultimately avoided addressing fundamental questions about the relationship between trademark law and the First Amendment. The Article argues that courts' reliance on parody as a paradigmatic case of permissible trademark use has become a distraction that prevents necessary reform of trademark law to better accommodate First Amendment …

Protection In A Virtual Reality: The Dire Need For Trademark And Copyright Law Expansion To Encompass Digital Content Within The Metaverse, Amber N. Roibu

Touro Law Review

The Metaverse has gained much popularity in recent years, leaving some people with a feeling of uncertainty, but all the while intriguing many others. The multifaceted interactions and activities that take place within the Metaverse have made it a virtual world fertile for not only creative expression but also infringement of existing trademark and copyright protected works. Hand-in-hand with the development of the Metaverse has come the fast-growing interest in buying and selling virtual goods, properties, and non-fungible tokens. To preserve their reputation, avoid costly litigation, and ultimately uphold the exclusive rights allotted to them as intellectual property owners, trademark …

Obtaining Trademark Registration For Marks Containing Political Commentary: A Look Into Vidal V. Elster, Annick Runyon

University of Miami Law Review

For decades, courts have struggled with balancing trademark law with the First Amendment—specifically with cases challenging the denial of trademark registration of certain marks. Congress codified trademark registration through the Lanham Act, also known as the Trademark Act of 1946. This statute outlines the registration process and expands the rights of trademark owners. In recent years, a string of cases have ruled certain provisions of the Lanham Act that bar certain marks from registration unconstitutional.

Currently under review by the Supreme Court, the case Vidal v. Elster involves an applicant who was denied trademark registration for his mark “Trump Too …

The Angel Wears Prada, The Devil Buys It On The Realreal: Expanding Trademark Rights Beyond The First Sale Doctrine, Junajoy Vinoya Frianeza

Pepperdine Law Review

Luxury brands derive their goodwill from the high-class exclusivity and first-rate quality signified in their trademarks. The Trademark Act of 1946, commonly known as the Lanham Act, grants trademark holders the right to control use of their mark. However, under common law, the first sale doctrine restricts trademark protection after holders authorize the initial sale of their trademarked product. Such limitation particularly jeopardizes the luxury industry as trademark holders ultimately bear the loss of goodwill when counterfeit luxury goods enter the market due to the negligence of resellers. This Comment illustrates how blockchain authentication offers all luxury industry participants—the brands, …

Edward S. Rogers, The Lanham Act, And The Common Law, Jessica Litman

Book Chapters

This book chapter is a deep dive into the story of Edward Sidney Rogers's authorship of the legislation that became the Lanham Act. Because Rogers believed that Congress lacked the power to alter the substantive law of trademark and unfair competition, he crafted draft legislation that focused on registration and other procedural details rather than substantive rights and defenses. He sought to advance two incompatible goals: he hoped to preserve the robust common law of unfair competition while requiring, or at least encouraging, all trademark owners to register their marks. Both the supporters and the opponents of the bills that …

Trademarking Hate Speech: The Dangers Of Inconsistency In The Federal Trademark Registration Process, Michaela A. Giuggio

Lewis & Clark Law Review

In 2017, the United States Supreme Court decided in Matal v. Tam that the Lanham Act’s prohibitions on disparaging trademarks violated the First Amendment of the Constitution. Two years later, it decided in Iancu v. Brunetti that prohibitions on “immoral or scandalous” marks were similarly unconstitutional. In the wake of these decisions, and at a time when hate speech is surging in the United States, this Comment seeks to address the danger of the USPTO’s approach to federal trademark registration. Part I uses the example of the WHITE LIVES MATTER mark to introduce the problems that arise in this new, …

Protecting The Brand: Analyzing The Legal Landscape Of Negative Product Placements, Katie M. Brown, Sarah M. Brown, W. Eric Brown

Marquette Intellectual Property & Innovation Law Review

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The First Amendment And Trademark Law: A Conflict Of Rights, Maia Hentges

Marquette Intellectual Property & Innovation Law Review

None

Who Owns Your Name? The Trend And Economic Impact Of Personal Trademarks In The Ncaa Nil Aftermath, Daniel Foster

The Journal of Business, Entrepreneurship & the Law

To aid in understanding the prevalence of personal athlete logos and the trend of ownership and design, Section II will outline the history of this area of trademark law in the United States. It will provide background on the theory of trademark ownership and the development of this intellectual property discipline in the athletic and celebrity sphere. Section II will look at the two common and distinct processes, a company-designed logo versus an athlete-designed logo, and the modern trends in this area. Moving on from this historical discussion, Section III will examine the 2021 decision of NCAA v. Alston, the …

Albrecht Dürer’S Enforcement Actions: A Trademark Origin Story, Peter J. Karol

Vanderbilt Journal of Entertainment & Technology Law

This Article offers a trademark-framed reappraisal of a pair of extraordinary enforcement actions brought by the Northern Renaissance artist Albrecht Dürer (1471–1528) against copyists of his work. These cases have long been debated by art, cultural, and copyright historians insofar as they appear to reject Dürer’s demand for protocopyright protection. Commentators have also contested the historicity of one of the two narratives. But surprisingly little attention has been paid by trademark scholars to the companion holdings-—in the same texts-—that affirm Dürer’s right to prevent the use of his monogram on unauthorized reproductions.

This Article seeks to fill that gap by …

Raising The Threshold For Trademark Infringement To Protect Free Expression, Christine Haight Farley, Lisa P. Ramsey

Scholarly Articles in Law Reviews & Journals

The First Amendment right to free speech limits the scope of rights in trademark law. Congress and the courts have devised various defenses and common law doctrines to ensure that protected speech is exempted from trademark infringement liability. These defensive trademark doctrines, however, are narrow and often vary by jurisdiction. One current example is the speech-protective test first articulated by the Second Circuit in Rogers v. Grimaldi, expanded by the Ninth Circuit, and recently restricted by the Supreme Court in Jack Daniel’s Properties v. VIP Products to uses of another’s mark within an expressive work that do not designate the …

Jack Daniel's Properties, Inc. V. Vip Products Llc: Brief Of Amici Curiae 30 Trademark Law Professors In Support Of Respondent, Aaron Perzanowski

Appellate Briefs

Amici are 30 law professors who teach and write extensively about trademark law and other intellectual property law subjects. Amici have no personal interest in this case. Amici’s sole interest is in the orderly development of trademark law in a way that serves the public interest, in part by ensuring the proper balance between legitimate trademark interests and strong First Amendment speech interests.<\p>

Trademark law has expanded dramatically in recent decades, opening the door to claims against parties that are primarily selling speech. Those claims would have been inconceivable when the Lanham Act was passed.<\p>

Early courts facing these expanded …

The Exclusive Right To Customize?, Mark A. Lemley, Sari Mazzurco

Faculty Journal Articles and Book Chapters

Artists, political commentators, and even multinational corporations are increasingly taking existing branded products and modifying them – sometimes to comment on the underlying product, sometimes to make a political or artistic statement unrelated to that product, sometimes to make them look fancier than they are, and sometimes for their own advertising purposes. As ornamenting and customizing existing products has shifted from a personal hobby to a business model, trademark owners have begun to insist that they have the exclusive right to control the appearance of products associated with them or that prominently bear their logos. We call this assertion a …

Raising The Threshold For Trademark Infringement To Protect Free Expression, Christine Haight Farley, Lisa P. Ramsey

American University Law Review

The First Amendment right to free speech limits the scope of rights in trademark law. Congress and the courts have devised various defenses and common law doctrines to ensure that protected speech is exempted from trademark infringement liability. These defensive trademark doctrines, however, are narrow and often vary by jurisdiction. One current example is the speechprotective test first articulated by the Second Circuit in Rogers v. Grimaldi, expanded by the Ninth Circuit, and recently restricted by the Supreme Court in Jack Daniel’s Properties v. VIP Products to uses of another’s mark within an expressive work that do not designate the …

Racism And Trademark Abandonment, Jon J. Lee

Faculty Articles

As companies have come to terms with the fact that their brand names and imagery have connections to our country’s racist history, they have publicly announced their commitments to shed their ignominious trademarks. But unlike a physical monument, a trademark cannot be destroyed or removed. Under the prevailing doctrine, abandoned trademarks return to the public domain, free for another company to claim and use—even if it is to capitalize on the mark’s recognition as a symbol of oppression. This puts companies who wish to sever their ties with their racist trademarks in an intractable situation: either they make good on …

Unauthorized And Unwise: The Lawful Use Requirement In Trademark Law, Robert A. Mikos

Vanderbilt Law Review

For decades, the United States Patent and Trademark Office (“PTO”) has required trademark owners to comply with sundry nontrademark laws governing the sale of their trademarked goods and services. Pursuant to this “lawful use requirement,” the Agency has refused or even cancelled registration of thousands of marks used on everything from Schedule I controlled substances to mislabeled soap. This Article subjects the Agency’s lawful use requirement to long-overdue scrutiny. It suggests that in requiring compliance with other laws for registration, the PTO has lost sight of the one statute it is supposed to administer. In the process, the Agency has …

Unauthorized And Unwise: The Lawful Use Requirement In Trademark Law, Robert A. Mikos

Vanderbilt Law School Faculty Publications

For decades, the United States Patent and Trademark Office ("PTO") has required trademark owners to comply with sundry nontrademark laws governing the sale of their trademarked goods and services. Pursuant to this "lawful use requirement," the Agency has refused or even cancelled registration of thousands of marks used on everything from Schedule 1 controlled substances to mislabeled soap. This Article subjects the Agency's lawful use requirement to long-overdue scrutiny. It suggests that in requiring compliance with other laws for registration, the PTO has lost sight of the one statute it is supposed to administer. In the process, the Agency has …

Ruth Bader Ginsburg's Intellectual Property Jurisprudence, Ryan Vacca, Ann Bartow

Faculty Publications

On September 18, 2020, the world lost an irreplaceable leader. Justice Ruth Bader Ginsburg, after many years of battling cancer, had passed away. Although she will primarily be remembered for her work on gender equality—as both advocate and jurist—Justice Ginsburg signiicantly impacted other areas of the law. One such area is intellectual property. During her time on the U.S. Supreme Court, she authored 20 opinions in these areas—11 copyright, seven patent, and two trademark—and joined the opinions of her colleagues in many others.

Bully No More: Why Trademark Owners Engage In Trademark Overreach And How To Prevent It, Quynh La

Washington Law Review

At its core, trademark law exists as a tool for consumer protection. Thus, trademark owners use policing and enforcement to maintain a trademark’s goodwill, which in turn protects consumers from confusion. But policing and enforcement can lead to trademark overreach and bullying—which undermine the goal of trademark law. This Comment explains that trademark owners are incentivized to engage in aggressive enforcement tactics because courts weigh enforcement efforts in favor of trademark strength. And strong trademarks receive strong protection because such marks are more likely to succeed in trademark infringement litigation. To curb trademark bullying and realign trademark law with its …

What Is "Likely To Be Confusing": About Trademark Law: Reconsidering The Disparity Between Registration And Use, Lorelei D. Ritchie

American University Law Review

Federal trademark rights in the United States are widely considered to be use based. That is, the right derives from the use. Therefore, one might expect that federal trademark registrations would necessarily reflect the marketplace realities of the use of a mark. Based on Constitutional and statutory enablement, this is correct. It is not, however, how the trademark registration system has been implemented by the Court of Appeals for the Federal Circuit and by the U.S. Patent and Trademark Office.

In this regard, there is a perception among judges and practitioners alike that marketplace realities are not, and should not, …

An Af(Fur)Mative Defense: Using Intellectual Property As A Defense To Employment Discrimination In Mascot Hiring, Taylor Farr

Arkansas Law Review

"Until a character becomes a personality, it cannot be believed. Without personality, the character may do funny or interesting things, but unless people are able to identify themselves with the character, its actions seem unreal. And without personality, a story cannot ring true to the audience." Walt Disney

Mascots are different animals. They bring some of our favorite characters from screens, packages, and comic book pages to life. Moreover, mascots serve a particularly important role on university campuses, offering a point of communal continuity amid inevitable organizational changes. Although university buildings, athletes, faculty, and staff will eventually change, a mascot …

The Defend Trade Secrets Act And Foreign Theft: The Application Of The Act To Extraterritorial Misappropriation, John Dustin Hawkins

Georgia Journal of Law & Technology

This Note explores the evolution of federal trade secret law in the United States, particularly the enactment of the Defend Trade Secrets Act of 2016. Part II discusses the legislative history of the Act, as well as key provisions and definitions of the Act, which are critical when considering the DTSA's extraterritorial application. Additionally, this Note considers the tests used by courts to determine extraterritorial application in other areas of U.S. law. Part III explains why a uniformly-applied balancing test would best serve the courts in determining the extraterritorial application of the DTSA to reach foreign conduct.

The Lost Unfair Competition Law, Christine Farley

Scholarly Articles in Law Reviews & Journals

The accepted metaphor that trademark law is a species of the genus of unfair competition law distorts both the actual history and the relationship between the two. Tracing the development of the law reveals a related sequence of significant events, some of which have been forgotten. This back-story suggests that a particularly innovative treaty incorporated by reference into the Lanham Act was meant to be the vehicle for unfair competition protection. As a result of this lost law, unfair competition law remains an enigma today.

Overlapping Copyright And Trademark Protection In The United States: More Protection And More Fair Use?, Jane C. Ginsburg, Irene Caboli

Faculty Scholarship

This chapter addresses the phenomenon of overlapping rights under US law and complements Chapter 25 authored by Professors Derclay and Ng-Loy on the overlap of trademark, copyright, and design protection under several other Common Law and Civil Law jurisdictions. Because the United States does not provide sui generis protection for industrial design, but instead protects design through trademark law (notably by protecting trade dress) and design patents, this chapter focuses on the overlap between trademark and copyright protection. The Lalique bottles created for Nina Ricci perfumes, for example, may enjoy both trademark and copyright protection in the United States. Similarly, …