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Abstract. When is a design just a design, and when is it a trademark? Over the last several decades, courts have developed a clear framework for evaluating the distinctiveness of [...]

In design patent law, we have created a monster—a chimera, a hybrid that sometimes looks and acts like a patent regime and then, unexpectedly, doesn’t. Courts in design patent cases sometimes apply the rules as they would in utility patent cases, sometimes modify those rules for the design context, and sometimes ignore the utility patent rules altogether. The consequences of that incomplete adoption of utility patent rules are grossly underappreciated. Among other things, it has wreaked havoc on the law of novelty and nonobviouness—doctrines that are supposed to ensure that we grant design patent protection only to new and meaningfully different designs. And it has too often resulted in rules that ignore how designers actually work. In this Article, we suggest that the problem stems from trying to fit design into a framework that was intended for the very different context of inventions. There are good reasons not to use the utility patent infringement rules for design, even if we are skeptical of the particular design patent infringement rule the Federal Circuit has settled on. And there are good reasons not to allow a design patent to have a different scope when it comes to infringement than for validity; doing so allows patent owners (and infringers) to game the system in litigation. The Federal Circuit has recognized some—but not all—of these necessary differences. But if there are good reasons to depart from utility patent rules in some cases, why insist on symmetry with utility patent in other respects? We think design patent law’s strange hybridity is largely a historical accident. In 1842, when design patents were first created, the utility patent system looked fundamentally different than it does today—and a lot more like an ideal design patent system would. Most significant, it used central rather than peripheral claiming. But as utility patent law changed, design patent law tagged along to its detriment. Courts (and ultimately Congress) should recognize the fundamental divergence between utility and design patents. Perhaps we should get rid of design patents altogether and adopt a sui generis regime for design, as virtually every other country has done. But if we are stuck with design patents, courts should apply design patent law with sensitivity to the differences between design and invention. [ABSTRACT FROM AUTHOR]

BMW recently sued online virtual modeling company TurboSquid for selling digital models of BMW vehicles. (1) TurboSquid allows artists to upload to its web site and offer for sale a [...]

2. Patent As we will see in the next Part, utility patent law does more than its sister doctrines to evaluate the scope of a patent right in an integrated [...]

A. Recurring Conflicts 1. Product Features As noted above, it took a long time for courts to recognize features of a product's design as trademark subject matter. (99) This delay [...]

INTRODUCTION I. THIS IS NOT MY BEAUTIFUL MARK II. WELL, HOW DID WE GET HERE? III. MATERIAL AND IMMATERIAL CONFUSION A. Justifications for Expanding Confusion 1. Consumers, producers, and the [...]

ABSTRACT Intellectual property law has developed a variety of doctrines to police the boundaries between various forms of protection. Courts and scholars alike overwhelmingly conceive of these doctrines in terms [...]

The article focuses on federal law displaced common law trademark and unfair competition law because courts interpreted the Lanham Act to provide a federal cause of action for infringement of unregistered marks. It mentions significant concerns about the pre-Lanham Act state of affairs was the inability of traders considering adopting a new trademark. It also mentions disuniformity in decisional law following the Supreme Court's decision in Erie v. Tompkins.

The article offers information on panel discussion features several legal professionals which include Megan K. Bannigan; Theodore H. Davis and Mark McKenna on scope and strength of trademark law. Topics discussed include role of trademark registration and the strength of enforcement rights; complicated task in the context of the Lanham Act and persistent attachment to the use-based conception of trademark law.

New technologies disrupt existing industries. They always have, and they probably always will. Incumbents don't like their industries to be disrupted. And they often rely on intellectual property, unfair competition, or related legal doctrines as tools to prevent disruptive entry. What that means is that many of the cases in these areas are really about whether competition from new players can force incumbents to change their business models, generally to the advantage of particular players and the detriment of others. These cases are, in an important sense, all unfair competition cases; they are about the ways in which the law permits new entrants to compete with incumbents. Unfortunately, we lack any comprehensive way of thinking about market disruption in these settings. As a result, courts react quite differently to disruptive technology or business models in different cases. Our goal in this Article is to address the broader question of when competition by market disruption is "unfair." In our view, courts are often overly receptive to market disruption arguments. Courts should intervene to prevent market disruption only when they have very good reasons--reasons connected to the fundamental policy concerns of the legal systems called upon to prevent the disruption. To achieve that goal, we must know what the legitimate ends of the asserted law are. Sometimes the legal doctrine used to prevent market disruption is one--like unjust enrichment, interference with economic advantage, or unfair competition--that doesn't have a clear animating principle. We think those doctrines should be disfavored, and courts should employ them only when they are tied to some independent metric for deciding whether the defendant's conduct is unfair or unjust. Other doctrines, like antitrust and IP, have clearer purposes. There, we can evaluate legal challenges to market disruption by testing the fit between the goals of the statute and its use in a particular case. We suggest a test that helps separate legitimate cases of IP infringement from cases of pure market disruption. Drawn from the antitrust injury doctrine, our test would treat market disruption as relevant to an IP case only if the disruption is traceable to the act of infringement itself. If the plaintiff would suffer the same injury from a market intervention that is not infringing, that injury cannot be evidence of IP infringement. [ABSTRACT FROM AUTHOR]

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. One easy reductionist step is to focus on a particular dilemma--a particular market failure, for example, ignoring or assuming away others--and then compare institutions in terms of effectiveness in resolving the dilemma. We might, for example, want to use comparative institutional analysis to examine the problem of pharmaceutical development. If we focus on overcoming the potential undersupply of drugs (because they are expensive to develop but cheap to copy), and if we identify the FDA approval process (and specifically clinical trials) as the most important cost driver, then we might compare as potential responses patents and other institutions like prizes, grants, and government provided infrastructure for clinical trials. We might then conclude that government funding of clinical trials is best because it lowers the cost of bringing drugs to market and without the deadweight loss associated with patents. That analysis might be useful, as far as it goes, but it would ignore other market failures, such as the demand-side failure that leads to underprovisioning of drugs to smaller or nonexistent markets. This is, of course, not to say that there is anything wrong with comparing institutions as solutions to the clinical-trial cost problem. But it is to emphasize that we can only design institutions to address problems we recognize, and the risk of myopia is strong in comparative institutional analysis. Engaging in meaningful comparison seems to demand a reduction in the scope of problems to which the institutions might be addressed, lest the problem seem intractable. We suggest that comparative institutional analysis must be accompanied by comparative failure analysis, by which we mean rigorous and contextual comparative analysis of the ways different institutional responses fail. And we argue that several different types of failures are relevant to comparative analysis. Some failures originate at the system level--that is, market systems exhibit certain sets of failures, while political/government and community systems exhibit other sets. In terms of figuring out what society wants (i.e., from the demand side), the systems rely on different signals, information, processes, and so on. And in terms of satisfying societal demand, the systems rely on different actors, distribution methods, and relationships. Other types of failures are system independent--they are a function of the resources at issue or the nature of the problem to which the institution is addressed. Institutional design can, of course, exacerbate or ameliorate these failures, but it is useful to understand their fundamental causes. So as a starting place, we think comparative analysis should account for characteristics that vary at the system level and shape both failures and institutions--characteristics like demand signaling processes, time horizons/discount rates, evaluative criteria (for projects, investments, or innovation), and the basic capabilities operative within different settings or systems. Failures and institutions obviously don't correspond exactly, and we suspect that comparative analysis of these and other characteristics will provide guidance for continued comparative analysis. We strongly believe that solid comparative analysis will require both theoretical and empirical work, operating in tandem rather than in isolation from each other. Comparative analysis is necessarily contextual. [ABSTRACT FROM AUTHOR]

Grace Karskens's biographical essay 'Nah Doongh's Song' tells the story of an Aboriginal woman from Mooro Morack, Penrith. In 2019 the essay won the Australian Book Review's Calibre Prize, and in June that year Grace and historian Mark McKenna met at Sydney's Gleebooks for an 'In-conversation' evening to discuss Nah Doongh's story and the historical thinking, sources and methods that made writing her story possible, as well as the wider implications of writing biographies of Aboriginal people. This is an edited transcript of their conversation. [ABSTRACT FROM AUTHOR]

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, however, suggest that doctrinal creep is afoot. Not only has Congress twice broadened the statute and increased the associated penalties, but courts also have played an active role in expanding the range of conduct that is subject to liability under the TCA. These trends are consistent with a number of parallel developments in and around intellectual property law in which provisions created on the promise of narrow application to the most serious violations have in fact been applied far more broadly than originally claimed. Collectively these developments suggest a strong tendency for this form of regulation (particularly the use of extreme, but supposedly narrowly-tailored, sanctions) to fail along the scope dimension. Indeed, that evolution is so common that one might think it is inevitable. This should give lawmakers real pause when considering these types of legal responses. To put it simply, if these provisions are initially justifiable only to the extent they are limited to the truly egregious cases, then their costs are likely to exceed their benefits over time because narrow application will not hold. [ABSTRACT FROM AUTHOR]