Upcoming CLE Event at DePaul College of Law: Arts Law Colloquium: Art and Its Image: Perspective From Copyright, Trademark, and Cultural Property Law, October 9, 2024 @DePaulLaw

 Upcoming event: CLE - Arts Law Colloquium: Art and its Image: Perspectives from Copyright, Trademark, and Cultural Property Law, October 9, 2024, at Depaul College of Law:

Join CAMCHL and CIPLIT for “Arts Law Colloquium: Art and its Image: Perspectives from Copyright, Trademark, and Cultural Property Law” with Dr. Felicia Caponigri, Visiting Scholar, Chicago-Kent College of Law; Guest Scholar, IMT School for Advanced Studies Lucca. This event will be hybrid, both in person and online. Lunch will be provided for in-person guests. 1.0 hour CLE available for IL attendees.

More information available here.

Hsieh on "The Past Is Never Dead, It's Not Even a Trademark or Copyright": William Faulkner on the Elusive Boundary Between Intellectual Property Forms No One Ever Talks About @timhsiehiplaw @OCULAW

Timothy T. Hsieh, Oklahoma City University School of Law, has published "The Past Is Never Dead, It's Not Even a Trademark or Copyright": William Faulkner and The Elusive Boundary Between Intellectual Property Forms No One Talks About. Here is the abstract.

In the 2013 federal case of Faulkner Literary Rights, LLC v. Sony Pictures Classics Inc., et al., Case No. 3:12-cv-100-MPM-JMV (N.D. Miss. July 18, 2013), the Estate of William Faulkner sued Sony Pictures due to Woody Allen’s film Midnight in Paris having a character refer to the Faulkner quote “The past is never dead. It’s not even past” from Requiem for a Nun. In the suit, the Faulkner Estate alleged copyright infringement as well as trademark appropriation under The Lanham Act. A 2012 suit also occurred where The Faulkner Estate sued aerospace defense technology company Northrup Grumman for using the same quote in a 2011 advertisement placed in The Washington Post. See Faulkner Literary Rights LLC v Northrop Grumman. Corporation and the Washington Post Company, No 3:12-cv-732-HTW-LRA (S.D. Miss. Oct 26, 2012). Both cases not only dealt with trademark law, the copyright law doctrine of fair use and also de minimis usage of copyrighted material, but also the fascinating quandary of where one draws the line between a copyright and a trademark, e.g., when does a slogan or title become too long to trademark and proper to copyright and vice-versa, when does a copyrightable line of literary text become too short to copyright and proper to trademark? This boundary between a copyright and a trademark is one seldom analyzed by the legal literature out there, and almost overlooked or even dismissed as a simplistic concept not worth a deeper look. However, these cases involving the infamous Faulkner line compel the conclusion that the difference between a trademark and a copyright might be a much more complex determination to make. By analyzing these two cases, the history of cases differentiating a trademark and a copyright or the “trademark-copyright” boundary, and the potential usage of similar lines from Faulkner’s work, this paper will discuss how one of William Faulkner’s most enduring and timeless lines pushes the boundaries of a cutting-edge but little analyzed concept in intellectual property law.

Download the article from SSRN at the link.

Grynberg on What Trademark Law Can Learn From Comic Art @DePaulLaw

Michael Grynberg, DePaul University College of Law, has published Trademarks as Comics. Here is the abstract.

What can trademark law learn from comic art? This essay uses the comic book form to explore the question.

Download the abstract from SSRN at the link.

Roberts on A Poetics of Trademark Law @lexlanham @NUSL @BerkeleyTechLJ

Alexandra J. Roberts, Northeastern University School of Law, is publishing A Poetics of Trademark Law in volume 38 of the Berkeley Technology Law Journal (2023). Here is the abstract.

Poetry and trademarks have a lot in common. Both use language to persuade. Both aspire to say much with little. Both deal in ambiguity, though perhaps only poetry is content to reside in it permanently. While poetry is associated with education and erudition, trademarks are considered a lingua franca, readily understood by all. But reading a trademark remains, in the words of Laura Heymann, “at heart, an interpretive exercise.” Poetic devices like rhyme and alliteration play a role in what trademarks mean and how readers of trademarks can locate and articulate that meaning, but their use and interpretation have received little attention in doctrine or scholarship. While applicants and litigants sometimes allege that their marks incorporate poetic devices in support of a claim of distinctiveness, unitariness, or similarity (or the lack thereof), and factfinders sometimes grant credence to those arguments, both groups tend to use literary terms imprecisely. And that imprecision matters. This Article explores the poetics of trademarks. It calls upon several overlapping senses of the word “poetics”: a study of rhetorical devices; a strategy for interpretation; and a structuring principle undergirding trademark law itself. It defines a number of commonly used poetic devices, offers examples from both poetry and trademarks, and discusses federal court and USPTO decisions that consider their effects on protectability or infringement. Poetic devices have the potential to guide factfinders to deeper insight about word marks. The devices discussed offer ways to articulate what and how a mark means—its denotations, connotations, rhythm, music—specifically and precisely. By treating a trademark as a tiny poem, we make space to honor its complexity.

Download the article from SSRN at the link.

Roberts on A Poetics of Trademark Law @lexlanham @BerkeleyTechLJ @UNHLaw

Alexandra J. Roberts, University of New Hampshire School of Law, is publishing A Poetics of Trademark Law in volume 38 of the Berkeley Technology Law Journal (2023). Here is the abstract.

Poetry and trademarks have a lot in common. Both use language to persuade. Both aspire to say much with little. Both deal in ambiguity, though perhaps only poetry is content to reside in it permanently. While poetry is associated with education and erudition, trademarks are considered a lingua franca, readily understood by all. But reading a trademark remains, in the words of Laura Heymann, “at heart, an interpretive exercise.” Poetic devices like rhyme and alliteration play a role in what trademarks mean and how readers of trademarks can locate and articulate that meaning, but their use and interpretation have received little attention in doctrine or scholarship. While applicants and litigants sometimes allege that their marks incorporate poetic devices in support of a claim of distinctiveness, unitariness, or similarity (or the lack thereof), and factfinders sometimes grant credence to those arguments, both groups tend to use literary terms imprecisely. And that imprecision matters. This Article explores the poetics of trademarks. It calls upon several overlapping senses of the word “poetics”: a study of rhetorical devices; a strategy for interpretation; and a structuring principle undergirding trademark law itself. It defines a number of commonly used poetic devices, offers examples from both poetry and trademarks, and discusses federal court and USPTO decisions that consider their effects on protectability or infringement. Poetic devices have the potential to guide factfinders to deeper insight about word marks. The devices discussed offer ways to articulate what and how a mark means—its denotations, connotations, rhythm, music—specifically and precisely. By treating a trademark as a tiny poem, we make space to honor its complexity.

The full text is not available from SSRN.

Rosen on Early American Federal Trademark Law and the Law of Nations @zvisrosen @BrillPublishing

Zvi S. Rosen, Southern Illinois University School of Law, has published Early American Federal Trademark Law and the Law of Nations Unformatted draft of book chapter adapted for Intellectual Property and the Law of Nations, 1860–1920 (P. Sean Morris, Ed., Brill 2022). Here is the abstract.

From 1869 to 1879, many European nations rushed to conclude bilateral treaties for trademark protection with the United States, either with the expectation of a federal law or under the first federal trademark law passed in 1870. However, in 1879 the US Supreme Court held the 1870 Act unconstitutional, throwing that system into disarray. This piece will explore these early trademark treaties, situate them in the context of developments in the law and society during this period, and explore how the Supreme Court's 1879 decision in the Trade-Mark Cases affected the course of international trademark law. This piece adapts the author's earlier scholarship on this era of U.S. trademark law to greater engage the transatlantic development of trademark law.

Download the chapter from SSRN at the link.

Rosen on The 1881 Trademark Act and the Supreme Court @zvisrosen

Zvi S. Rosen, George Washington University Law School, is publishing In the Shadow of the Trade-Mark Cases: The 1881 Trademark Act and the Supreme Court in Forgotten Comparative Intellectual Property Law (Edward Elgar, 2020). Here is the abstract.

In 1879, the US Supreme Court famously struck away federal trademark law in the TradeMark Cases, leading Congress to leap into action and pass a new trademark statute within two years. Much less famously, though, the same thing happened again 24 years later in a largely forgotten case, Warner v. Searle & Hereth, leading to the passage of the 1905 trademark law within two years. This is the story of how a commercial dispute between two early pharmaceutical companies led to the first American trademark law of the 20th Century.

Download the essay from SSRN at the link.

Drink Up! Frye on a Legal History of the Bacardi Cocktail @brianlfrye

Brian L. Frye, University of Kentucky College of Law, has published 'It's Your Right…!': A Legal History of the Bacardi Cocktail. Here is the abstract.

In 1936, the Bacardi Company filed a trademark infringement action in New York state court against two New York bars for serving Bacardi cocktails made without Bacardi rum, and the court granted an injunction. For years afterward, the Bacardi Company used the ruling in its advertisement, proclaiming, "It's your right!" to expect Bacardi rum in your Bacardi cocktail. This article provides a legal history of the Bacardi cocktail and the Bacardi Company's trademark infringement action. An appendix provides a list of historical recipes for the Daiquiri and Bacardi cocktails.

Download the article at the link.

Gibson on Taming Uncivil Discourse: Does Reappropriating Group Insults Work? @WUSTL @SimonTheTam

James L. Gibson, Washington University in St. Louis, Department of Political Science, has published Taming Uncivil Discourse: Does Reappropriating Group Insults Work? Here is the abstract.

In an era of increasingly intense populist politics, a variety of issues of intergroup prejudice, discrimination, and conflict have moved center stage in American politics. Among these is “political correctness” and, in particular, what constitutes a legitimate discourse of political conflict and opposition. Yet the meaning of legitimate discourse is being turned on its head as some disparaged groups seek to reclaim, or reappropriate, the slurs directed against them. Using a Supreme Court decision about whether “The Slants” – a band named after a traditional slur against Asians – can trademark its name, we test several hypotheses about reappropriation processes, based on a nationally representative sample with an oversample of Asian-Americans and several survey experiments. In general, we find that contextual factors influence how people understand and evaluate potentially disparaging words, and we suggest that the political discourse of intergroup relations in the U.S. has become more complicated by processes of reappropriation.

Download the article from SSRN at the link.

Hoopes on Reclaiming the Primary Significance Test: Dictionaries, Corpus Linguistics, and Trademark Genericide

Neal Hoopes (Independent) has published Reclaiming the Primary Significance Test: Dictionaries, Corpus Linguistics, and Trademark Genericide. Here is the abstract.

Companies spend billions to promote their brand. But with increased trademark recognition comes the possibility of losing exclusive rights to use that trademark, a process called genericide. Courts have often turned to linguistic evidence, such as dictionaries and media usage, to determine whether a trademark has become generic. These courts merely suggest that linguistic tools reflect a trademark’s meaning. Yet these tools are not the objective indicators that courts have assumed. This Paper discusses why using dictionaries and media usage to prove genericide is a mistake and then turns to evaluating another tool, corpus linguistics. Corpus linguistics, unlike other linguistic tools, may prove beneficial for companies seeking to protect their trademarks. Ultimately, however, linguistic tools — including dictionaries, media usage, and corpus linguistics — cannot prove genericism because linguistic data may, at best, prove a term’s majority usage. But the Lanham Act requires a showing of primary significance. The Paper contends that courts should maintain majority usage and primary significance as distinct concepts and, in this way, should reclaim the primary significance test.

Download the article from SSRN at the link.

Indigenous Peoples and the Protection of Intellectual Property: The Case of the Zia

Stephanie B. Turner, Yale Law School, is publishing The Case of the Zia: Moving Beyond Intellectual Property Laws To Protect Cultural Rights, in the Chicago-Kent Journal of Intellectual Property. Here is the abstract.

This Article focuses on an ongoing dispute in trademark law: the case of the Zia. Located near Albuquerque, New Mexico, this Native American pueblo has been using its sacred sun symbol in religious ceremonies since 1200 C.E. The symbol now appears on the New Mexico State flag, letterhead, and license plate, and on commercial products ranging from chemical fertilizers to portable toilets. The tribe claims that the State appropriated the symbol without permission in 1925, and that the continued use of the symbol by various parties dilutes its sacred meaning and disparages the tribe in violation of Section 2(a) of the Trademark Act. This Article tells the Zia story, focusing on the harms the tribe faces when others appropriate its symbol and the possible solutions. It concludes by suggesting that indigenous groups like the Zia should move beyond intellectual property laws in the fight to protect their cultural rights.

Download the article from SSRN at the link.

An Art and Law Blog

Here's an interesting blog devoted to the intersection of art and the law: Art and Artifice. Some recent posts discuss art and politics, blasphemy in Poland, and the notorious Louboutin red heel trade mark infringement case.

Intellectual Property and the Meaning of Culture

Katya Assaf III has published "The Dilution of Culture and the Law of Trademarks" in volume 49 of IDEA: The Journal of Law and Technology (2008). Here is the abstract.

The cultural meaning of a trademark is built up by creating associative links between the mark and various positive cultural signs such as freedom, youth and happiness. This article argues that these links are reciprocal. That is, while the trademark begins to carry some of the meaning of the cultural signs it has been linked to, these cultural signs also absorb some of the meaning of the mark. This article develops a semiotic model, which helps to analyze the flow of meaning from non-commercial cultural signs into trademarks and from trademarks into other contexts. It argues that, by protecting the cultural meaning of trademarks, the legal system encourages the commercialization of culture and reinforces the dominance of consumer culture in our society.

Download the article from SSRN here.

Symbols and the Law

Caspar van Woensel, University of Leiden, Faculty of Law, and member of the Restitutiecommissie (Dutch Spoliation Advisory Panel), has published "Symbols and the Law", in BRAND, GOD, AND BAN: IMPROPER USE AND MONOPOLIZATION OF SIGNS WITH A HIGH SYMBOLIC VALUE, Amstelveen, Netherlands: deLex, 2007. Here is the abstract.

This paper contains a summary of the PhD study of Caspar van Woensel, which translates as Brand, God and Ban: Improper use and monopolization of signs with a high symbolic value (2007). This study is concerned with the Dutch as well as, in part, the European legal framework surrounding the improper use and monopolization of signs with a high symbolic value, or: symbols.

Central questions are: how does Dutch law look upon signs that many people regard as essential or 'sacred' in their personal lives or in society, and: does this law presently stand where it should? The book discerns between (i) national and international symbols, (ii) cultural and historical symbols, (iii) religious symbols.

The study deals with two main groups of issues that to a large extent make up the relationship between symbols and the law: (1) questions surrounding the rules for their use, including legal responses to their improper use, and (2) questions with regard to their monopolization as trade marks.

The book discusses civil law and self regulating authorities, criminal law, freedom of expression, and intellectual property law, mainly trade mark law, but also the law on designs and copyright law. A returning aspect in this discussion is a growing and maturing cultural diversity in the Netherlands and its implications for Dutch law, minority groups and society.

Download the essay from SSRN here.

Do Magicians Need IP Law, or Does IP Law Need Magic?

Jacob Loshin has published "Secrets Revealed: How Magicians Protect Intellectual Property Without Law." This paper in revised form will appear as an essay in the book Law and Magic: A Collection of Essays, edited by Christine Corcos and published by Carolina Academic Press (2008). Here is the abstract.

Intellectual property scholars have begun to explore the curious dynamics of IP's negative spaces, areas in which IP law offers scant protection for innovators, but where innovation nevertheless seems to thrive. Such negative spaces pose a puzzle for the traditional theory of IP, which holds that IP law is necessary to create incentives for innovation.

This paper presents a study of one such negative space which has so far garnered some curiosity but little sustained attention - the world of performing magicians. This paper argues that idiosyncratic dynamics among magicians make traditional copyright, patent, and trade secret law ill-suited to protecting magicians' most valuable intellectual property. Yet, the paper further argues that the magic community has developed its own set of unique IP norms which effectively operate in law's absence. The paper details the structure of these informal norms that protect the creation, dissemination, and performance of magic tricks. The paper also discusses broader implications for IP theory, suggesting that a norm-based approach may offer a promising explanation for the puzzling persistence of some of IP's negative spaces.

Download the paper from SSRN here.

Linguistics and Trademark Law

Graeme B. Dinwoodie, Chicago-Kent College of Law, has published "What Linguistics Can Do for Trademark Law," in INTERDISCIPLINARY PERSPECTIVES ON TRADE MARKS, J. Ginsburg, L. Bently, J. Davis, eds., Cambridge University Press, 2007. Here is the abstract.

This contribution to an inter-disciplinary book on Trademarks and Brands responds to the work of Alan Durant, a linguist who (in his chapter of the book) provides legal scholars with both a rich understanding of how linguists view terms that are part of the basic argot of trademark law and a potentially vital explanation of the different social functions that word marks might serve. The Response explains why linguistics should matter to trademark law, but also why trademark law might on occasion ignore the precise reality of consumer understanding as might be provided by linguistics. I suggest that, while trademark law should not become beholden to linguistics, the lessons of Durant's linguistic analysis are to some extent already accommodated in the practice of trademark law, and could be important guides in the further development of a number of legal principles. In particular, I explain how trademark law does in large part take into consideration Durant's observation that legal analysis would comport more with the reality of how words function if it focused on marks as they are used. The Chapter also argues that Durant's exploration of the concepts of “distinctiveness” and “descriptiveness”, as understood by lawyers and linguists, respectively, should reinforce important lessons for legal scholars about the complex policy prescriptions embodied in those concepts. Finally, I argue that particular insights developed by Durant from the field of linguistics may prove valuable in illuminating several points of contention in contemporary trademark law. In particular, Durant stresses that determining whether a defendant's use has evoked the source-identifying aspect of plaintiff's mark, as opposed to the descriptive properties of that term, can only be done by analyzing the “discourse 'setting' in which interpretations are constructed.” Thus, although the type of use should be relevant to assessing infringement, any analysis of use type must be highly contextualized. This insight should inform the choice of doctrinal vehicles by which trademark law establishes limits on the scope of protection.

Download the paper from SSRN here.

Burning Man Now a Burning Issue

John Law, who with two friends launched the "Burning Man" celebrations years ago is now suing them to place the "Burning Man" trademark in the public domain. He claims that Larry Harvey and Michael Mikel have violated an agreement the three signed ten years ago after Law left the Burning Man organization. Read more here. Read coverage on the Laughing Squid Blog here.