Fagundes & Perzanowski: A new framework for conceptualizing the end of IP rights

 Dave Fagundes and Aaron Perzanowski have just posted a very interesting and thought-provoking paper draft on SSRN called "How Intellectual Property Ends."  

The paper, which follows up on their prior work on copyright abandonment, closely examines how IP rights come to an end through doctrines like "expiration," "forfeiture," or "abandonment." The paper seeks to provide a “taxonomy” for thinking about how IP rights end. The authors argue that imprecise or inconsistent uses of terms like "abandonment" and "forfeiture” deprives these terms of meaning and “obscures the underlying logic” of the doctrines as originally developed at common law (5). They instead posit a single unified framework for consistently conceiving of termination that can work across the four IP regimes. 

Lemley & McKenna: Trademark Spaces

Where a trademark is located matters. Some physical spaces on products are more likely to contain trademarks. Some obvious examples are the left breast of a t-shirt, the side or tongue of a sneaker, or the label on the front of a food container.  Consumers are more likely to find trademarks located in those spaces, and they are probably more likely to perceive features as trademarks if they are in those locations.

In their fascinating new article, Trademark Spaces and Trademark Law’s Secret Step Zero, Mark Lemley and Mark McKenna draw out the relevance of physical space for trademark protection, and in particular for non-verbal marks like logos and trade dress.  The authors argue that where a trademark is located determines how the law currently treats it, but that this is currently done by judges and trademark examiners as a "secret step zero." They think this is not ideal. Consideration of trademark spaces should instead be both more explicit and better thought-out. 

The article is now published in the Stanford Law Review (and posted here on SSRN).

Gersen & Hemphill: What's in a Bottle?

What's in a bottle?  If the bottle in question is shown below, the answer is protected trade dress. The Coca-Cola Company presently maintains several active registrations for many of its bottle shapes. See, e.g., Trademark Reg. No.'s 696147, 4242307, 4200433.

These registrations serve as "prima facie evidence" of, among other things, The Coca-Cola Company's "exclusive right to use the registered [trade dress] in commerce on or in connection with the goods or services specified in the registration[,]" subject to defenses such as abandonment, descriptive fair use, and functionality. Other sellers that use a confusingly similar bottle shape without authorization from The Coca-Cola Company could be sued under the Lanham Act, § 32 or § 43, even if they don't use the well-known Coca-Cola names or color schemes. That is what trade dress protection can accomplish.

In their fascinating new essay, "The Coca-Cola Bottle: A Fragile Vessel for Building a Brand," which is forthcoming in Legal Applications of Marketing Theory (Gersen & Steckel, eds), Jacob Gersen and Scott Hemphill tell the history of how The Coca-Cola Company (hereafter "Coke") secured lock-tight trade dress protection in the distinctive shapes of its bottles. The authors also previously authored a book chapter on the Coke bottle for A History of Intellectual Property in 50 Objects, edited by Claudy Op den Kamp and Dan Hunter.  

Digging into historical documents — including settlement agreements resulting from litigation that Coke brought against other sellers — the authors argue that the company's trajectory towards trade dress protection for the famous Coca-Cola bottle was not as smooth as we might think. In the authors' words, it was "fragile and contingent." (2). They reveal many reasons things might have come out differently for Coke.  

I won't summarize the whole essay here, because it's short and very fun to read. But I want to draw out what I see as one of the authors' most important insights. They show that Coke secured common law trade dress protection by initially using design patent law. They argue that, under contemporary legal principles, courts might have rejected this strategy and not permitted Coke to use unfair competition law to protect its bottle shapes following the expiration of Coke's design patents. This is, after all, what the Supreme Court did in 1938 when it did not let Nabisco stop other sellers from using the "pillow shape" of Nabisco's shredded wheat cereal following expiration of Nabisco's patents.  Things did not come out that way. Coke's strategy was a winner. But the authors suggest things could have gone very differently. 

Jessica Litman: Who Cares What Edward Rogers Thought About Trademark Law?

Professor Jessica Litman has a fascinating forthcoming book chapter on the history of the Lanham Act and the influence of Edward S. Rogers, "Edward S. Rogers, the Lanham Act, and the Common Law. " Litman tells the history of the drafting of the Lanham Act of 1946 through the lens of Edward S. Rogers, detailing how his advocacy and drafting work influenced the final statutory text. 

Readers may be surprised to learn that Litman started research on the topic as a law student in the 1980s, while writing a student note on trade dress infringement. She went into the stacks of the Columbia Law Library and started reading bound copies of legislative history. She noticed it seemed like Rogers was everywhere, from 1932 all that way up to 1946, and that the chairs of the committees were deferring to him.  That was really interesting, she thought.  But after the note was done, she kind of forgot about it.

Now, forty years later, Litman is a professor at the very institution Rogers attended, the University of Michigan. She was surprised to find no one seemed to remember Rogers had been at Michigan, even though he "earned three law degrees and was a member of the adjunct faculty for 18 years" (3). In this book chapter, Litman is making up for that, returning to the topic of Rogers and his legacy. She's found her notes from 1981. She's read everything he wrote, and all his cases, starting in 1895 all the way until his death in 1949.

The result is a remarkably personal history of Rogers' involvement in the development of trademark law, full of contemporary details and selected quotes from Rogers' own writings. Litman's chapter, which engages extensively with the secondary literature as well as the primary sources, adds a tremendous amount to this history and to the many excellent recent articles touching on this subject, including The Lost Unfair Competition Law by Christine Haight Farley, The Erie/Sears/Compco Squeeze: Erie's Effects Upon Unfair Competition and Trade Secret Law by Sharon Sandeen, In the Shadow of the Trade-Mark Cases: The 1881 Trademark Act and the Supreme Court by Zvi Rosen, Mark McKenna's book chapter, Trademark Law's Faux Federalism, and many others.

My interview with Litman is transcribed in this post. The interview significantly deepened my knowledge of the subject and I am excited to share it with readers.

Irene Calboli: Trademarking COVID

Irene Calboli, professor of law at Texas A&M University School of Law, has written a new empirical article reporting that "the COVID-19 pandemic has led to a veritable tsunami of trademark applications" for COVID, QUARANTINE, SOCIAL DISTANCING, and other pandemic-related terms.  Indeed, Calboli concludes that trademarking of COVID-related terms is unusually rampant, even when compared to past tragedies and disasters such as 9/11, Hurricane Katrina, and Ebola. "Ultimately," Calboli writes, "probably only the HIV/AIDS pandemic can be compared with COVID-19 in terms public awareness, societal fears, and strong emotions," and even "the beginning of the HIV/AIDS pandemic did not see a similar rush to trademark filings" that we have seen with COVID. While several practitioners have also noted the large number of applications filed for these terms in the past month, Calboli's paper is the first to survey these applications comprehensively and in detail. 

The full article, Trademarks and the COVID-19 Pandemic: An Empirical Analysis of Trademark Applications Including the Terms “COVID,” “Coronavirus,” “Quarantine,” “Social Distancing”, “Six Feet Apart,” and “Shelter in Place, can be downloaded on SSRN.  The data are included as an appendix to the paper.  The article will be published in the Akron Law Review's IP Symposium Issue as part of the Annual Akron Law IP Scholars Conference. (The other scholars publishing in this year's IP issue are Margaret Chon, Robert Merges, Kristen Osenga, and Sharon Sandeen.) 

I interviewed Professor Calboli on her findings. The interview is transcribed in this post.  To follow along, here is one of the many beautiful tables and informational graphics in the article, included with Calboli's permission.

David Simon: Trademark Law and Consumer Safety

I was happy to read David Simon's new article, Trademark Law and Consumer Safety, forthcoming in the Florida Law Review. Simon argues trademark law should pay more attention to the physical harms that products pose for consumers, rather than just economic harms. The conventional view is that trademark law exists to prevent consumer confusion and lower consumers' search costs for finding the products they want. At the same time, trademark law protects sellers' investments in product quality and advertising.

Simon's article argues that trademark law does, or should do, a lot more than this: it should protect consumers from physical injury.

generic.com

Today, the Supreme Court ruled (8-1) that merely adding ".com" to a generic term may allow the combination to be protected as a non-generic trademark. In other words, adding ".com" can confer meaning to the consuming public, and thus is not the same as adding "company" or "inc," which does not confer meaning. That was really the linguistic question in the case. Case law has long held that "Booking, Inc." is really "Booking." So, is "Booking.com" also "Booking"? Or is it "Booking.com"?

As a reminder, a mark is generic when it describes what the product is, and not who makes the product. So, Booking.com would refer to a single company (who) that makes bookings, and not to just any booking company (what). A generic term might be lawyer - it refers to what (legal services) and not to who (there are many lawyers). As the Court puts it, Travelocity is a booking company, but is it a booking.com company?

I signed on to an amicus brief supporting Booking.com, and I'll tell a story why (and why I so keenly followed this case). Way back in the beginning of the commercial internet, my firm registered the domain computerlaw.com. This was a big deal - making it work for email required complicated email gateways, etc. I hadn't even gone to law school yet, and I was in charge of setting it up. Connectivity looked a lot different for a small firm in 1994 than it does now.

USPTO v. Booking.com – A Linguistic Justification for ‘Generic Trademarks’

Guest post by Jake Linford, Loula Fuller and Dan Myers Professor, Florida State University College of Law, whose trademark law scholarship I have highlighted on Jotwell

I want to thank Lisa Ouellette for inviting me to blog about United States Patent & Trademark Office v. Booking.com, a trademark case argued before the Supreme Court in May, with a decision expected soon. The Court selected that case for its first live telephonic oral argument. The night of the historic oral argument, Christine Farley of American University Washington College of Law hosted a discussion where I joined Rebecca Tushnet, Marty Schwimmer, and Cara Gagliano to recap the argument and discuss the case. Below, I summarize the oral argument in some detail (with page and line references to the transcript) and offer my prediction of what the forthcoming opinion might hold.

Trademarking the Seven Dirty Words

With the Supreme Court agreeing to hear the Brunetti case on the registration of scandalous trademarks, one might wonder whether allowing such scandalous marks will open the floodgates of registrations. My former colleague Vicenç Feliú (Nova Southeastern) wondered as well. So he looked at the trademark database to find out. One nice thing about trademarks is that all applications show up, whether granted or not, abandoned or not. He's posted a draft of his findings, called FUCT® – An Early Empirical Study of Trademark Registration of Scandalous and Immoral Marks Aftermath of the In re Brunetti Decision, on SSRN:

This article seeks to create an early empirical benchmark on registrations of marks that would have failed registration as “scandalous” or “immoral” under Lanham Act Section 2(a) before the Court of Appeals for the Federal Circuit’s In re Brunetti decision of December, 2017. The Brunetti decision followed closely behind the Supreme Court’s Matal v. Tam and put an end to examiners denying registration on the basis of Section 2(a). In Tam, the Supreme Court reasoned that Section 2(a) embodied restrictions on free speech, in the case of “disparaging” marks, which were clearly unconstitutional. The Federal circuit followed that same logic and labeled those same Section 2(a) restrictions as unconstitutional in the case of “scandalous” and “immoral” marks. Before the ink was dry in Brunetti, commentators wondered how lifting the Section 2(a) restrictions would affect the volume of registrations of marks previously made unregistrable by that same section. Predictions ran the gamut from “business as usual” to scenarios where those marks would proliferate to astronomical levels. Eleven months out from Brunetti, it is hard to say with certainty what could happen, but this study has gathered the number of registrations as of October 2018 and the early signs seem to indicate a future not much altered, despite early concerns to the contrary.

The study focuses not on the Supreme Court, but on the Federal Circuit, which already allowed Brunetti to register FUCT. Did this lead to a stampede of scandalous marks? It's hard to define such marks, so he started with a close proxy: George Carlin's Seven Dirty Words. This classic comedy bit (really, truly classic) nailed the dirty words so well that a radio station that played the bit was fined and the case wound up in the Supreme Court, which ruled that the FCC could, in fact, ban these seven words as indecent. So, this study's assumption is that the filings of these words as trademarks are the tip of the spear. That said, his findings about prior registrations of such words (with claimed dual meaning) are interesting, and show some of the problems that the court was trying to avoid in Matal v. Tam.

It turns out, not so much. No huge jump in filings or registrations after Brunetti. More interesting, I thought, was the choice of words. Turns out (thankfully, I think) that some dirty words are way more acceptable than others in terms of popularity in trademark filings. You'll have to read the paper to find out which.

Foreign Meaning Matters: Brauneis and Moerland on Trademark's Doctrine of Foreign Equivalents

I was enjoying some siggi's® yogurt, and noticed, just below the trademark name siggi's®, an interesting piece of trivia: "skyr, that's Icelandic for thick yogurt!" You learn something new every day.

Robert Brauneis and Anke Moerland's recent article argues that it would not be good policy to allow the company that distributes siggi's ® yogurt to trademark the name SKYR for yogurt in the United States, even though most people in the United States do not currently know what the word "skyr" means. In short, they argue that when reviewing trademarks for purposes of distinctiveness, the U.S. Patent & Trademark Office (USPTO) and the courts should translate foreign terms that are generic or merely descriptive in their home country, because allowing such marks would cause unexpected harms for competition.

This is a fascinating paper that warrants serious thinking, and perhaps re-thinking, of how trademark law currently treats foreign terms.

The Name's the Thing

Much to my chagrin, my kids like to waste their time not just playing video games, but also watching videos of others playing video games. This is a big business. Apparently the top Fortnite streamer made some $10 million last year. Whaaaaat? But these services aren't interchangeable. The person doing the streaming is important to the viewer.

But what if two streamers have the same name, say Fred, or Joan, or...Kardashian. Should we allow someone to lock others with the same name out? Under what circumstances? And what if the service is simply being famous-for endorsements, etc.

Bill McGeveran (Minnesota) has posted an article that discusses these issues called Selfmarks, now published in the Houston Law Review. It is on SSRN, and the abstract is here:

“Selfmarks” are branded personal identifiers that can be protected as trademarks. From Kim Kardashian West to Beyoncé’s daughter, attempts to propertize persona through trademark protection are on the rise. But should they be? The holder of a selfmark may use it to send a signal about products, just like the routine types of brand extension, cross-branding, and merchandising arrangements fully embraced under modern trademark law. Yet traditional trademark doctrine has adjusted to selfmarks slowly and unevenly. Instead, the law has evolved to protect selfmarks through mechanisms other than trademarks. In an age where brands have personalities and people nurture their individual brands, it is time to ask what principled reasons we have not to protect the individual persona as a trademark.

I liked this article a lot--especially its straightforward approach. It looks at these marks through the lens of trademark law (as it should), considering use (that is what goods and services) and distinctiveness. In doing so, it provides several useful hypotheticals that illustrate the problems of using names as trademarks. The paper also considers Lanham Act sections that specifically deal with names.

Finally, the paper discusses a couple of concerns. First is endorsement confusion. As the "service" of a celebrity becomes endorsement, then everything the celebrity does is potentially an endorsement, even though that may not be the intention. McGeveran discusses this concern. Second is the ever-present speech concern. If names are protected as marks, then it is harder to use that name in speech.

This article is a really good primer on names as marks. I think a good extension for the next one would be a topic that a student of mine wrote about last year: joint marks. That is, when multiple people have the same name - together even - then the mark can cease being distinctive of their individual goods. My student did a great case study of the Kardashian marks, showing that several of them may well be invalid, but I think this could be extended to a longer theoretical piece if it hasn't been done already.

All about IP & Price Discrimination

It's a grading/break week, so just a short post. A recent article that I enjoyed a lot, but that hasn't found much love on SSRN is Price Discrimination & Intellectual Property, by Ben Depoorter (Hastings) and Mike Meurer (Boston University). The paper has the following abstract:

This chapter reviews the law and economics literature on intellectual property law and price discrimination. We introduce legal scholars to the wide range of techniques used by intellectual property owners to practice price discrimination; in many cases the link between commercial practice and price discrimination may not be apparent to non-economists. We introduce economists to the many facets of intellectual property law that influence the profitability and practice of price discrimination. The law in this area has complex effects on customer sorting and arbitrage. Intellectual property law offers fertile ground for analysis of policies that facilitate or discourage price discrimination. We conjecture that new technologies are expanding the range of techniques used for price discrimination while inducing new wrinkles in intellectual property law regimes. We anticipate growing commentary on copyright and trademark liability of e-commerce platforms and how that connects to arbitrage and price discrimination. Further, we expect to see increasing discussion of the connection between intellectual property, privacy, and antitrust laws and the incentives to build and use databases and algorithms in support of price discrimination.

They call it a chapter, but they don't identify the book that the chapter will appear in. It's probably an interesting book.

In any event, the chapter is a really interesting, thorough look at price discrimination generally, in addition to price discrimination as it relates to IP. It discusses the pros and cons as well as the assumptions that underlie each. If you are interested in a better understanding of the economics of IP (and secondarily, the internet), this is a good read.

#IPSC18 Preview: Trademarks

The 18th Annual IP Scholars Conference is Aug. 9-10 at Berkeley Law. Monday I previewed the eighteen panels primarily related to patents and innovation, and yesterday I previewed the six panels related to copyright. There are only two trademark-focused panels, and I didn't see any trademark-focused papers on general IP panels.

Are We Running out of Trademarks? College Sports Edition

As I watched the Kansas State Wildcats play the Kentucky Wildcats in the Sweet Sixteen this year, it occurred to me that there are an awful lot of Wildcats in the tournament (five, to be exact, or nearly 7.5% of the teams).  This made me think of the interesting new paper by Jeanne Fromer and Barton Beebe, called Are We Running Out of Trademarks? An Empirical Study of Trademark Depletion and Congestion. The paper is on SSRN, and is notable because it is the rare a) IP and b) empirical paper published by the Harvard Law Review. The abstract of the paper is here:

American trademark law has long operated on the assumption that there exists an inexhaustible supply of unclaimed trademarks that are at least as competitively effective as those already claimed. This core empirical assumption underpins nearly every aspect of trademark law and policy. This Article presents empirical evidence showing that this conventional wisdom is wrong. The supply of competitively effective trademarks is, in fact, exhaustible and has already reached severe levels of what we term trademark depletion and trademark congestion. We systematically study all 6.7 million trademark applications filed at the U.S. Patent and Trademark Office (PTO) from 1985 through 2016 together with the 300,000 trademarks already registered at the PTO as of 1985. We analyze these data in light of the most frequently used words and syllables in American English, the most frequently occurring surnames in the United States, and an original dataset consisting of phonetic representations of each applied-for or registered word mark included in the PTO’s Trademark Case Files Dataset. We further incorporate data consisting of all 128 million domain names registered in the .com top-level domain and an original dataset of all 2.1 million trademark office actions issued by the PTO from 2003 through 2016. These data show that rates of word-mark depletion and congestion are increasing and have reached chronic levels, particularly in certain important economic sectors. The data further show that new trademark applicants are increasingly being forced to resort to second-best, less competitively effective marks. Yet registration refusal rates continue to rise. The result is that the ecology of the trademark system is breaking down, with mounting barriers to entry, increasing consumer search costs, and an eroding public domain. In light of our empirical findings, we propose a mix of reforms to trademark law that will help to preserve the proper functioning of the trademark system and further its core purposes of promoting competition and enhancing consumer welfare.

The paper is really well developed and interesting. They consider common law marks as well as domain names. Also worth a read is Written Description's own Lisa Larrimore Ouellette's response, called Does Running Out of (Some) Trademarks Matter?, also in Harvard Law Review and on SSRN.

Beebe & Hemphill: Superstrong Trademarks Should Receive Less Protection

I have taught the multifactor test for trademark infringement four times now (using the 9th Cir. Sleekcraft test), and each time, some student has questioned which way the "strength of the mark" factor should cut. As a matter of current doctrine, stronger marks receive a broader scope of protection. But smart Stanford Law students who are not yet indoctrinated with longstanding trademark practices ask: in practice, isn't there less likely to be confusion with a strong mark?

In their new article, The Scope of Strong Marks: Should Trademark Law Protect the Strong More than the Weak?, Barton Beebe and Scott Hemphill expand on this intuition: "We argue that as a mark achieves very high levels of strength, the relation between strength and confusion turns negative. The very strength of such a superstrong mark operates to ensure that consumers will not mistake other marks for it. Thus, the scope of protection for such marks ought to be narrower compared to merely strong marks."

The doctrinal relationship between trademark strength and protection was not always as clear as it is today. For example, Beebe and Hemphill point to a 1988 decision by Judge Rich of the Federal Circuit: "The fame of a mark cuts both ways with respect to likelihood of confusion. The better known it is, the more readily the public becomes aware of even a small difference." This more nuanced approach to consumer confusion also finds support in many foreign trademark cases.

To be sure, Beebe and Hemphill are really making an empirical claim about consumer perceptions, and the evidence base is quite limited (though they cite some related studies at notes 102-03). But as they note, the current doctrine relies "on a jumble of untested empirical assertions," and their argument makes a good deal of intuitive sense. At the very least, this article should spur trademark scholars, practitioners, and judges to reexamine their understanding of the relationship between strength and protection. And the next time one of my students asks about this, I'm glad I'll be able to send Beebe and Hemphill's work their way.

Saying Goodbye to Chief Wahoo?

A couple years ago, my youngest son was “drafted” onto the Indians Little League team. It was cringeworthy. The name was bad enough (and I’m thankful my alma mater had the good sense to abandon it nearly 50 years ago), but right there on the hat was Chief Wahoo. Needless to say, among the many baseball caps we have in our family, that one hasn’t seen the light of day since the season ended.

Yesterday, the Cleveland team and Major League Baseball announced that they are retiring the logo from uniforms in a year (they had already removed it from in and around the stadium apparently). It’s unclear why it cannot be done sooner, but I’ll give them the benefit of the doubt that manufacturing for next season is already underway and cannot be changed. Good riddance.

Buried in this news is an interesting IP theory and policy tidbit worth discussion. The team is not abandoning the logo altogether. To maintain trademark rights, it will continue to sell Chief Wahoo merchandise in the Cleveland area. That’s right, trademark law is forcing the team to keep selling merchandise with an offensive logo that it claims to no longer be using.

As I discuss below, this is an area where I expect folks will be torn.

How Do We Know What's Government Speech? Ask the Listeners (with Daniel Hemel)

Note: This post is co-authored with Daniel Hemel, an assistant professor of law at the University of Chicago Law School, and cross-posted at Whatever Source Derived. Follow him on Twitter: @DanielJHemel. This project may be of particular interest to the many Written Description readers who followed Matal v. Tam and its recent follow-up, In re Brunetti.

The distinction between private expression and government speech is fundamental to First Amendment jurisprudence. As the Supreme Court has held repeatedly, the government must be viewpoint-neutral when it regulates private expression, but not when it engages in speech of its own. For example, a public school cannot prohibit students from expressing anti-war views, but the government is free to propagate its own messages in support of a war effort without any need to simultaneously promote pacifism. Yet despite the doctrinal significance of the distinction between private expression and government speech, the line that separates these two categories is often quite fuzzy. A private billboard is clearly private expression, and the Lincoln Memorial is paradigmatic government speech, but what about a temporary privately donated exhibit in a state capitol? Privately produced visitors’ guides at a state highway rest area? A state university name and logo on a student group’s T-shirt? These are a few of the scenarios federal courts have wrestled with in recent cases.

To identify government speech in close cases, the Supreme Court has placed increasing emphasis on whether members of the public reasonably perceive the relevant expression to be private or government speech. As explained below, we think this turn toward public perception is a welcome development. But the Court has so far failed to develop a reliable method for determining how ordinary citizens distinguish between private and government messages.

The Court’s three most recent government speech decisions are illustrative. In the 2009 case Pleasant Grove City v. Summum, the Court said that there was “little chance” that observers would think that monuments in a public park were anything except government speech, even when those monuments were designed and donated by private organizations. Six years later, in Walker v. Texas Division, Sons of Confederate Veterans, the justices split 5–4 as to whether specialty license plate designs submitted by private organizations constituted government speech, with the majority asserting that members of the public perceive these designs to come from the government and the dissent insisting that members of the public hold the opposite view. And this past term, in Matal v. Tam, the Court confidently concluded that members of the public do not perceive federal trademark registration to be government speech. In none of these cases did the justices or the parties bring to bear any evidence as to how members of the public actually perceive the expression in question.

In an article forthcoming in the Supreme Court Review, we begin to fill that empirical void. We presented a variety of speech scenarios to a nationally representative sample of more than 1200 respondents and asked the respondents to assess whether the speech in question was the government’s. Some of the speculative claims made by the justices in recent government speech cases are borne out by our survey: for example, we find that members of the public do routinely interpret monuments on government land as conveying a message on the government’s behalf. In other respects, however, the justices’ speculation proves less accurate: for instance, while the Court in Tam says that it is “far-fetched” to suggest that “the federal registration of a trademark makes the mark government speech,” we find that nearly half of respondents hold this “far-fetched” view. (This does not imply that Tam was wrong—just that the question of whether members of the public perceive federal trademark registration to be government speech is much closer than the Court suggests.)

IP and the Soccer, er, Football

Just a short note this winter break week about a short essay that I enjoyed. Mike Madison (Pitt) has put The Football as Intellectual Property Object on SSRN. At first, I was really excited - looking forward to hearing about the pigskin's development from rugby. But, apparently, there's another kind of football around, but the essay was interesting just the same. Here's the abstract:

The histories of technology and culture are filled with innovations that emerged and took root by being shared widely, only to be succeeded by eras of growth framed by intellectual property. The Internet is a modern example. The football, also known as the pelota, ballon, bola, balón, and soccer ball, is another, older, and broader one. The football lies at the core of football. Intersections between the football and intellectual property law are relatively few in number, but the football supplies a focal object through which the great themes of intellectual property have shaped the game: origins; innovation and standardization; and relationships among law and rules, on the one hand, and the organization of society, culture, and the economy, on the other.

The essay details some of the history of soccer and the soccer ball from a variety of IP and innovation standpoints - sponsorships, standardization, unintended consequences of innovation, etc. The discussion provides a nice, brief survey of the untold life of an everyday object. The essay is part of a larger book that I look forward to reading: A History of Intellectual Property in 50 Objects.

IP and Climate Change

My colleague and friend Josh Sarnoff (DePaul) sent me a review copy of the book he edited: Intellectual Property and Climate Change, even though I told him I wouldn't have much time to look at it. Wouldn't you know, on a quick skim I found it pretty interesting, and thought I would talk about it a bit.

The book is part of the Elgar Research Handbook series. I wrote a chapter that I really like (who am I kidding, I just love that book chapter) in the Research Handbook on Trade Secret Law. But because it's in an expensive book, nobody seems to know about it (and my colleagues in trade secret law will attest that I remind them whenever I review one of their drafts that is remotely in the area of trade secrets and incentives).

So, I thought I would flag this book, so readers would know this is out there. IP will have a growing role in climate change, as this cool story from this week illustrates. The book is comprehensive - it has 26 chapters from a variety of different authors. Some of the topics:

• International law and TRIPS
• Enforcement
• Technology transfer
• Innovation funding and university research
• Antitrust, patents, copyrights, trade secrets, trademarks
• Rights in climate data
• Privacy (this one surprised me)
• Standards
• Energy, transportation, food, natural resources

There is something for everyone in this book. Though it is focused on climate change, much of the discussion can be generalized to other emerging areas of law. In that sense, it does present a little bit like the law of the horse, but given that this is a research handbook, I'm not so sure that's a bad thing.

Buccafusco, Heald & Bu: Do Pornographic Knock-offs Tarnish the Original Work?

Trademark law provides a remedy against "dilution by tarnishment of [a] famous mark" and the extension of copyright term was justified in part by concerns about tarnishment if Mickey Mouse fell into the public domain. But there has been little evidence of what harm (if any) trademark and copyright owners suffer due to unwholesome uses of their works. Chris Buccafusco, Paul Heald, and Wen Bu provide some new experimental evidence on this question in their new article, Testing Tarnishment in Trademark and Copyright Law: The Effect of Pornographic Versions of Protected Marks and Works. In short, they exposed over 1000 MTurk subjects to posters of pornographic versions of popular movies and measured perceptions of the targeted movie. They "find little evidence of tarnishment, except for among the most conservative subjects, and some significant evidence of enhanced consumer preferences for the 'tarnished' movies."

Before describing the experiments, their article begins with a thorough review of tarnishment theory and doctrine, as well as consumer psychology literature on the role of sex in advertising. For both experiments, subjects were shown numerous pairs of movie posters, and were asked questions like which movie a theater should show to maximize profits. In the first experiment, treatment subjects saw a poster for a pornographic version of one of the movies; e.g., before comparing Titanic vs. Good Will Hunting, treatment subjects had to compare the porn parody Bi-Tanic vs. another porn movie. Overall, control subjects chose the target movie (e.g., Titanic) 53% of the time, whereas treatment subjects who saw the porn poster (e.g., Bi-Tanic) chose the target movie 58% of the time, and this increase was statistically significant. Women were no less affected by the pornographic "tarnishment" than men, and familiarity with the target movie did not have any consistent effect.