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Abstract

Trademark law aids consumers who use trademarks in the marketplace to identify swiftly and without problems a product they liked or disliked in the past, distinguishing among the different competing manufacturers of a product. No one is entitled to sell or deliver commodities under the appearance that the commodities derive from someone else. The importance of consumer protection cannot be over-emphasized and the average consumer standard should remain the central point of the inquiry, even under domain name litigation. Replacing the initial interest confusion doctrine is one decisive step, along with the introduction of a doctrine representing the fact that there should be no confusion at the point the sale, and this doctrine would intervene to allow for the capacity of the consumer to choose freely the products they want.

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This article analyzes the Americanization thesis in criminal procedure. According to the strong version of this thesis, the U.S. legal system has become the most influential system in the world and, as a consequence, a substantial number of legal systems may gradually come to resemble or mimic the American one and thus become Americanized. This article cautions against the strong version of the Americanization thesis through an examination of the introduction of American-style plea bargaining in four civil law countries - Argentina, France, Germany and Italy. It shows that even if each of these countries has introduced a form of plea bargaining, there are two main series of reasons that explain why these jurisdictions will probably not be Americanized. First, there are important features of civil law countries' inquisitorial system that may neutralize the Americanization effect of the imported practice. Second, these four civil law jurisdictions have introduced plea bargains that present differences - even substantial differences - not only from the American model but also among themselves. As a consequence of these differences between the Argentine, French, German and Italian plea bargains, the article shows that a paradoxical consequence of the American influence on civil law jurisdictions may be the production of fragmentation and divergence, rather than the Americanization of criminal procedures of the civil law tradition. In order to demonstrate these points, this article redesigns two conceptual frameworks. First, it reconceptualizes the adversarial and inquisitorial systems as theoretical categories. The article shows that these systems should be conceived not only as two different techniques to handle criminal cases, but also as two different procedural cultures and as two different ways to distribute powers and responsibilities between the main actors and institutions of the criminal justice system. Second, the article also challenges the framework of the legal transplant as a way to think of the circulation of legal ideas and institutions between legal systems. It shows that the metaphor of the legal transplant is too rigid to account for the transformations that legal ideas and institutions undergo when they are moved into new legal systems. Instead, the article proposes the metaphor of the legal translation as an alternative heuristic device when analyzing the transfer of legal ideas and institutions between legal systems. The adversarial and inquisitorial systems, understood as two different procedural cultures, can be understood as two different systems of productions of meaning. Thus, the transfer of legal institutions from one system to the other can be understood as translations from one system of meaning to the other.
Article
On October 21, 2004, a California court of appeals affirmed a jury award of $500 million (including $200 million in punitive damages) in a breach of contract suit between City of Hope National Medical Center, a leading research and treatment center, and Genentech, Inc., a leading biotechnology firm. The case involved a 1976 collaboration between City of Hope and Genentech to develop synthesized DNA for use in producing, among other products, insulin and human growth hormone. City of Hope assigned its patent and other intellectual property rights to Genentech in exchange for certain royalties. Ambiguities in the license language defining the royalties and how they were to be calculated led to litigation. Ultimately, a jury decided this question in favor of City of Hope. While the punitive damages portion of this case is pending review by the California Supreme Court, this license case demonstrates the importance of intellectual property law to biopharmaceutical businesses. Understanding intellectual property laws concerning patent, trademark, copyright, and trade secret issues is critical to the success of biopharmaceutical companies.
Article
The federal judiciary has struggled in recent years to extend principals of traditional trademark analysis onto the Internet. This tension is particularly apparent in cases involving a website operator's use of another company's trademarks to attract consumers to his own website. This note provides a critical evaluation of the various approaches the federal courts have taken on the issue of trademarks used in keyword metatags. It analyzes the courts' application of trademark doctrines such as fair use, initial interest confusion, and trademark dilution to this novel area of law. The note argues that the federal courts have, for the most part, failed to acknowledge the fair use defenses and have unnecessarily strayed from traditional trademark infringement analysis, relying unnecessarily (and incorrectly) on less traditional doctrines to find consumer confusion. The note concludes that instead of considering metatag use as stand-alone acts of infringement, the courts should require the plaintiff to produce actual evidence from the defendant's destination website to prove a likelihood of confusion. This return to more traditional trademark analysis may be the only proper way to resolve these controversies.
Article
This article critiques the development and application of initial interest confusion and argues for a doctrine based on consumer search costs rather than a trademark owner's goodwill. Part I traces the origin of initial interest confusion and presents a theory, based on minimizing search costs, of when the concept should be applied. It then examines the application of initial interest confusion in light of the courts' uncertainty as to the purpose of the doctrine. Part II describes the doctrinal difficulties caused by the uncritical adoption of initial interest confusion to cases involving the Internet. These problems can be resolved by focusing on search costs and the costs of correcting consumer confusion.
Article
Geographical indications of origin are important tools for consumer protection and product differentiation in the wine industry. The federal Bureau of Alcohol, Tobacco, and Firearms ("ATF") regulates their use on American wine labels. However, geographic terms also may appear on American wine labels in several other contexts, including as brand names, winery addresses, wine types, or even as grape variety names. These geographic terms often conflict with a wine's geographical indication of agricultural origin. This Comment examines the core purposes of ATF's wine-labeling regulatory scheme and compares these purposes to the similar purposes of trademark law. Applying consumer confusion and dilution analyses of trademark law to wine label content, this Comment argues that significant inconsistencies in ATF's regulation of geographic terms undermine its ability to serve its core regulatory purposes. These "nonconformities" in ATF's overall zoning scheme for the use of product descriptors on wine labels have produced a great deal of industry debate in recent years, as well as much political and legal maneuvering, yet the wine industry appears incapable of reaching consensus on a resolution to these issues. This Comment sets forth a comprehensive reform proposal that borrows the most promising aspects of existing reform proposals while incorporating a solution often applied in the zoning context: a phase-out of nonconforming uses over a reasonable amortization period. This comprehensive proposal would provide a meaningful and necessary resolution to the current conflict, while respecting both constitutional and commercial prerogatives.
Article
The law of trade symbols is of modern development, largely judge-made and only partly codified. Its impetus comes from the demands of modem advertising, a black art whose practitioners are part of the larger army which employs threats, cajolery, emotions, personality, persistence and facts in what is termed aggressive selling. Much aggressive selling involves direct personal relationships; advertising depends on the remote manipulation of symbols, most importantly of symbols directed at a mass audience through mass media, or imprinted on mass-produced goods. The essence of these symbols is distilled in the devices variously called trade-marks, trade names, brand names, or trade symbols. To the courts come frequent claims for protection, made by those who say they have fashioned a valuable symbol, and that no one else should use it. Very recently, for example, the vendors of Sun-Kist oranges lost a court battle to prevent an Illinois baker from selling Sun-Kist bread. The highest court, in its most recent encounter with a like case, upheld the power of a manufacturer of rubber footwear to prevent the use of a red circle mark by a seller of rubber heels, which the plaintiff did not manufacture.
Article
The trouble with the Federal law of trademarks is that it rests on unstated assumptions about how marks are selected and marketed, and, because of its assumptions, it might be granting too much in return for too little. In theory, legal protection of trademarks provides incentives for firms to make investments aimed at gaining consumer confidence in their marks. Successful marks are like packets of information. They lower consumer search costs, thus promoting the efficient functioning of the market. Too few ask the question, however, whether Federal trademark law is consistent with this theory. The common law of unfair competition, which predates Federal trademark protection and continues to exist side-by-side with it, enhances the function of marks by protecting a mark from imitation only to the extent that its use in the market actually identifies the goods or services of a particular firm. This is the reason that it is frequently said that rights to a mark flow from its use. But since the Lanham Act of 1946 created the first system of nationwide protection of marks, Federal trademark law has been moving stubbornly in another direction, toward granting protection for marks that have no significance at all. Matters are likely to worsen under the Trademark Law Revision Act of 1988 (TMRA), which took effect in November of 1989.
Article
This Comment focuses on whether the legal doctrine of "initial interest confusion" should be applied in metatag related trademark infringement cases. The Comment agues that because "initial interest confusion" does not improve or clarify the existing process of legal inquiry in a trademark infringement litigation, the doctrine is a superfluous legal tool and may even be harmful from a public policy perspective.
Article
In the spirit of Jurgen Habermas's project of linking sociological observation with legal philosophy, this Article analyses the Internet standards processes - complex nongovernmental international rulemaking discourses. It suggests that the Internet Engineering Task Force (IETF) standards discourse - a small, slightly formalized, set of cooperative procedures that make the other Internet discourses possible - is a concrete example of a rulemaking process that meets Habermas's notoriously demanding procedural conditions for a discourse capable of legitimating its outcomes. As evidence, the Article offers a social and institutional history of the IETF's Internet Standards process; and argues that participants in the IETF are engaged in a very high level of discourse, and are self-consciously documenting it. Identifying a practical discourse that meets Habermas's conditions removes the potentially crushing empirical objection that Habermas's theory of justice is too demanding for real-life application, although it does not prove its truth. Habermas's work provides a standpoint from which social institutions can be critiqued in the hopes of making them more legitimate and more just. Armed with evidence that Habermasian discourse is achievable, the Article surveys other Internet-based developments that may approach his ideal or, as in the case of the Internet Corporation for Assigned Names and Numbers (ICANN), that already claim a special form of legitimacy. This Article finds most of these other procedures wanting and argues that the existence of even one example of a functioning Habermasian discourse should inspire attempts to make other decisions in as legitimate and participatory a manner as possible. Habermas seeks not only to define when a rulemaking system can claim legitimacy for its outputs, but also to describe tendencies that affect a modern society's ability to realize his theory. Speaking more as a sociologist than a philosopher, Habermas has also suggested that the forces needed to push public decisionmaking in the directions advocated by his philosophy are likely to come from a re-energized, activist, engaged citizenry working together to create new small-scale communicative institutions that over time either merge into larger ones or at least join forces. Like Habermas's idea of a practical discourse, this may sound fine in theory but is difficult to put into practice. New technology may, however, increase the likelihood of achieving the Habermasian scenario of diverse citizens' groups engaging in practical discourses of their own. Technology may not compel outcomes, but it certainly can make difficult things easier. A number of new tools such as slash servers, blogs, wiki webs, community filtering tools and e-government initiatives show a potential for enabling not just discourse, but good discourse. While it is far too soon to claim that the widespread diffusion and use of these tools, or their successors, might actualize the best practical discourse in an ever-wider section of society, it is not too soon to hope - and perhaps to install some software.
Article
This comment first defines the concept of e-comrnerce, discussing its development in the international market. The comment next examines the legal questions raised in the use of the Internet to facilitate business. Legally speaking, in order to promote efficiency in the world market this comment recommends two things: 1) no taxation on international e-commerce income and 2) that the international buyer should be more responsible in their Internet business transactions. Additionally, this comment analyzes the political issue of the "digital divide" and how international nation states have addressed these issues. This comment advocates that increase competition in the global market will lead to increased market access and a narrowing of the digital divide. Finally, this comment describes the business models that have formulated due to the use of the Internet and then it focuses on one company, Yahoo!, to see how it has handled the legal and political ramifications of the Internet in its global business.
Article
In theory, trademarks serve as information tools, by conveying product information through convenient, identifiable symbols. In practice, however, trademarks have increasingly been used to obstruct the flow of information about competing products and services. In the online context, in particular, some courts have recently allowed trademark holders to block uses of their marks that would never have raised an eyebrow in a brick-and-mortar setting - uses that increase, rather than diminish, the flow of truthful, relevant information to consumers. These courts have stretched trademark doctrine on more than one dimension, both by expanding the concept of actionable "confusion" and by broadening the classes of people who can face legal responsibility for that confusion. And they have based their decisions not on the normative goals of trademark law, but on unexplored instincts and tenuous presumptions about consumer expectations and practices on the Internet. We argue that this expansionist trend in Internet trademark cases threatens to undermine a central goal of the Lanham Act - to promote fair and robust competition through reducing consumer search costs.
Article
The nature of cyberspace continues to be woven into the fabric of our daily existence. Not surprisingly, cyberspace and the expansion of e-commerce pose challenges to existing law, particularly the legal definition of cyberproperty domain names. The nature of cyberspace allows many e-companies to possess no traditional assets such as buildings and inventories. Some e-companies own few computers, often using service providers to maintain their web sites. In the virtual space that e-companies inhabit, the primary assets that e-companies own are intangibles such as domain names, customer information, and intellectual property that includes business method patents, copyrights, and trademarks. Domain names have become the valuable intangible real estate of cyberspace. For example, the domain name sex.com was valued at $250 million; business.com at $7.5 million; and loan.com at $3.0 million. The monetary value of some domain names suggests that it would be proper to classify domain names as property. Yet both courts and legislatures are far more ambivalent in their treatment of domain names, leaving the lingering question: Are domain names property? The inquiry into whether domain names are property leads to other related questions. Do domain names exist apart from the value or goodwill added by the user? Or, are all domain names merely products of service contracts between a registrar and a registrant, and thus not treated as property for garnishment proceedings? Are the interests in domain names similar to license rights? Should some domain names be bestowed with property interests while other domain names are treated as lacking such interests? To most courts, these questions are, or will be, of first impression. Recent judicial decisions relating to legal classification of domain names failed to adequately appraise the nature of cyberproperty in general, and domain names in particular, and their role in the marketplace of e-commerce. Worse, the precedent established threatens to render meaningless the valuation of domain names as part of a bankrupt cyber-estate. Further, as the Internet economy matures, the case law threatens to hamper the use of domain names and other cyberproperty in secured transactions, as well as commercial transactions in general. Part I examines the rising value in domain names on the open market. The spectacular rise in the monetary value of some domain names in the marketplace does not qualify them as property entitled to some form of legal protection. Part II focuses on the bundle of rights property theory and examines whether domain names fit within that definition. If domain names are property, are they similar to trademarks? Part III discusses trademark law and analyzes the types of domain names protected under trademark law. The analysis reveals that forcing domain names into the existing trademark law framework results in inadequacies. Part IV analyzes judicial dissonance in classifying domain names as service contract rights based on the formation of domain names through service contract agreements between a registrar and registrant, and as intangible property that does not merge with a document. Part V focuses on the recent legislation relating to domain name disputes and subsequent judicial interpretations of the statute. While the new legislation cures cybersquatting problems, it creates a different problem, as the law now treats some domain names, but not others, as property. Part VI discusses the implications of judicial dissonance in commercial transactions and bankruptcy proceedings involving domain names. The Article concludes that the maturing process of e-commerce requires a clear classification of domain names as intangible property and appropriate legislative protection for the type of domain names not protected under trademark law.
Article
With almost one billion web pages on the Internet today, a search engine is a necessity at times. But search engines are also for-profit ventures and the financial success of these sites hinges on advertising revenue. One of the ways in which these sites generate income is by selling “keywords” to advertisers. Although there has been only one judicial decision – Playboy Enterprises, Inc. v. Netscape Communications – involving banner ads keyed to trademarks, it will undoubtedly not be the last. This article argues that despite the invisible nature of this unauthorized trademark use, the common practice of keying a banner ad to another's trademark is a potential violation of the Lanham Act, giving rise to claims for trademark infringement, false designation of origin and trademark dilution.
Article
While Cyberspace is, by now, well-recognized as a social and commercial environment of great promise, there is considerable debate about the form of governance that will best meet the needs of this new medium. Much of the present discussion casts this debate in stark terms -- "top-down" hierarchical rules versus spontaneous "bottom-up" coordination -- with self-ordering based on contracts and private agreements rather than public laws appearing both preferable and more likely to evolve. Following up on arguments presented by Professors Fisher and Elkin-Koren in this symposium, Radin and Wagner point out that the dichotomy between top-down and bottom-up obscures that a self-ordering regime brought about by networks of contracts cannot stably exist without an established background of laws against which to enforce these agreements. They argue -- using examples of the dispute over the allocation of domain names and the advent of trusted systems -- that Cyberspace advocates should be debating the ingredients of good mixtures of private and public ordering rather than positing the choice between state control and anarcho-cyberlibertarianism. In considering these hybrid governance systems, Radin and Wagner note that the enforcement of rules in Cyberspace will depend largely upon the ultimate remedy of banishment. This remedy, they argue, will test the restraint of territorial sovereigns to whom any banishment might be appealed; unless there is considerable agreement about baseline rules among territorial sovereigns, any self-enforcement in Cyberspace may well be unstable. They therefore conclude that a necessary ingredient for self-ordering in Cyberspace is the development of global minimal background standards of due process and public policy limits on private agreements -- and that such harmony has a better chance of emerging if advocates do not forget that contractual self-ordering cannot exist without it.
Article
Search engines are the cartographers of the electronic frontier. In real space, a person wishing to travel to an unknown destination might consult a map or ask someone else for directions. In cyberspace, Web users consult search engines. Since novelty and unfamiliarity are often the most salient features of the Internet, leading search engines have become the central portals into cyberspace. Keyword meta tags are a way in which the locales of cyberspace (individual websites) communicate with the cartographers and portals of cyberspace (the search engines) and describe their pages to the search engines in an attempt to be found more easily. This meta tag communication involves transmitters and receivers operating at cross purposes. Website owners are motivated simply by a desire to be found: search engines direct the traffic of the Web, traffic translates into fame and/or revenue, and therefore sites inevitably wish to be displayed to as large a number of Web users as often and as prominently as is possible. This Note hopes to contribute to clarifying the doctrine regarding the legality of meta tag use when that use allegedly infringes on trademark rights. In Part II, I provide a brief introduction to trademark law and the Web. In Part III, I propose some new metaphors for keyword meta tags, search engine listings, and description meta tags, which I feel provide a closer fit to the realities of the Web. In Part IV, I divide legally problematic meta tag use into four categories: page jacking, spamdexing, editorial use, and competitor use. In Part V, I conclude by arguing that the application of traditional law works makes sense in the case of description meta tags, but is unwise in the case of keyword meta tags.
Article
This Article examines the complex world of Internet search. The Article seeks to ensure that trademark law does not interfere with the free flow of Internet content that consumers find relevant. The Article starts with three complementary looks at Internet search from the perspectives of searchers, publishers and search providers. From the searcher's perspective, the Article explains how searchers select keywords poorly and decontextualized keywords provide inadequate insight into the searcher's true objectives. From the publisher's perspective, the Article discusses how publishers try to anticipate search keywords and provide responsive content. From the search provider's perspective, the Article shows that search providers are not passive intermediaries manipulated by deceptive publishers. Instead, search providers actively mediate the relationship between searchers and publishers, often modifying searcher keywords and publisher content to facilitate a match. The Article also explains that all search providers use keywords to make those matches, and the emergence of keyword-driven searches has eliminated any meaningful distinctions between domain names, metatags and keyword-triggered ads. Based on this factual foundation, the Article looks at Internet trademark law. The Article particularly scrutinizes the initial interest confusion doctrine, showing its doctrinal deficiencies. The Article concludes with several proposals: 1) Trademark infringement analysis should be moved to later stages of a searcher's search process because harms at earlier stages are too speculative. 2) The traditional likelihood of consumer confusion test should be updated to include a factor that considers the relevancy of content presented to searchers. 3) Search providers should be given a safe harbor from liability to encourage them to do the best job possible at delivering relevant content to searchers.
Article
Consumers in the marketplace of ideas are well acquainted with one aspect of the Foucauldian concept of the author function: the way in which an author's name serves to organize both producer inputs - the various works the author wishes to have associated with his name - and consumer inputs -the readers' interpretive reactions to any particular body of work. Indeed, choosing to write under a pseudonym or under one's true name is the way in which an author exerts control over this function, by grouping certain works (for example, scholarly pieces) under one name and other works (for example, mystery novels) under a different authorial name, thus segregating readers' responses to each of these bodies of work. Readers, in turn, respond to this decision by mirroring the choices made by the author - continuing, for example, to refer to certain works as being authored by Mark Twain even when the author's true name of Samuel Clemens is known, or accepting that the Nancy Drew series was written by Carolyn Keene rather than by a series of different writers over time. Borrowing from postmodern literary theorists Roland Barthes and Michel Foucault, and given that statements of authorship often tell readers very little, if anything, about the identity of the individual who put pen to paper, this Article proposes a separation of statements of authorship - what this Article terms authornyms - from facts of authorship. This construct leads to the conclusion that all authornyms are essentially branding choices, even if the brand that is chosen is the author's true name, and therefore that the author function is really a trademark function. If this is the case, then - as in trademark law - we should seek to preserve the organizational system of the authornym function and to minimize the likelihood of reader confusion that occurs when a work is used unlawfully without attribution - in other words, when an author's choice of authornym is not preserved. The Supreme Court's 1995 decision in McIntyre v. Ohio Elections Commission, which granted First Amendment protection to pseudonymous speech, was an inherent acknowledgment of the trademark value that authornyms serve and the importance of controlling the author function by the choice of authornym. But in its decision in Dastar Corporation v. Twentieth Century Fox Film Corporation eight years later, the Supreme Court largely denied authors the ability to compel attribution of their works (thus preserving their authornymic choice) through the Lanham Act, and thus denied readers the accurate attribution required for organized and efficient literary interpretation. This Article contends that only by recognizing the essentially pseudonymity of all statements of authorship - in other words, by decoupling the copyright-focused concept of authorship from the trademark-focused statement of authorship (authornyms) - can we create room for the values that trademark law can promote in the marketplace of ideas.
Article
This book takes a fresh look at the most dynamic area of American law today, comprising the fields of copyright, patent, trademark, trade secrecy, publicity rights, and misappropriation. Topics range from copyright in private letters to defensive patenting of business methods, from moral rights in the visual arts to the banking of trademarks, from the impact of the court of patent appeals to the management of Mickey Mouse. The history and political science of intellectual property law, the challenge of digitization, the many statutes and judge-made doctrines, and the interplay with antitrust principles are all examined. The treatment is both positive (oriented toward understanding the law as it is) and normative (oriented to the reform of the law). Previous analyses have tended to overlook the paradox that expanding intellectual property rights can effectively reduce the amount of new intellectual property by raising the creators' input costs. Those analyses have also failed to integrate the fields of intellectual property law. They have failed as well to integrate intellectual property law with the law of physical property, overlooking the many economic and legal-doctrinal parallels. This book demonstrates the fundamental economic rationality of intellectual property law, but is sympathetic to critics who believe that in recent decades Congress and the courts have gone too far in the creation and protection of intellectual property rights. Table of Contents: Introduction 1. The Economic Theory of Property 2. How to Think about Copyright 3. A Formal Model of Copyright 4. Basic Copyright Doctrines 5. Copyright in Unpublished Works 6. Fair Use, Parody, and Burlesque 7. The Economics of Trademark Law 8. The Optimal Duration of Copyrights and Trademarks 9. The Legal Protection of Postmodern Art 10. Moral Rights and the Visual Artists Rights Act 11. The Economics of Patent Law 12. The Patent Court: A Statistical Evaluation 13. The Economics of Trade Secrecy Law 14. Antitrust and Intellectual Property 15. The Political Economy of Intellectual Property Law Conclusion Acknowledgments Index Reviews of this book: Chicago law professor William Landes and his polymath colleague Richard Posner have produced a fascinating new book...[ The Economic Structure of Intellectual Property Law ] is a broad-ranging analysis of how intellectual property should and does work...Shakespeare's copying from Plutarch, Microsoft's incentives to hide the source code for Windows, and Andy Warhol's right to copyright a Brillo pad box as art are all analyzed, as is the question of the status of the all-bran cereal called 'All-Bran.' --Nicholas Thompson, New York Sun Reviews of this book: Landes and Posner, each widely respected in the intersection of law and economics, investigate the right mix of protection and use of intellectual property (IP)...This volume provides a broad and coherent approach to the economics and law of IP. The economics is important, understandable, and valuable. --R. A. Miller, Choice Intellectual property is the most important public policy issue that most policymakers don't yet get. It is America's most important export, and affects an increasingly wide range of social and economic life. In this extraordinary work, two of America's leading scholars in the law and economics movement test the pretensions of intellectual property law against the rationality of economics. Their conclusions will surprise advocates from both sides of this increasingly contentious debate. Their analysis will help move the debate beyond the simplistic ideas that now tend to dominate. --Lawrence Lessig, Stanford Law School, author of The Future of Ideas: The Fate of the Commons in a Connected World An image from modern mythology depicts the day that Einstein, pondering a blackboard covered with sophisticated calculations, came to the life-defining discovery: Time = $$. Landes and Posner, in the role of that mythological Einstein, reveal at every turn how perceptions of economic efficiency pervade legal doctrine. This is a fascinating and resourceful book. Every page reveals fresh, provocative, and surprising insights into the forces that shape law. --Pierre N. Leval, Judge, U.S. Court of Appeals, Second Circuit The most important book ever written on intellectual property. --William Patry, former copyright counsel to the U.S. House of Representatives, Judiciary Committee Given the immense and growing importance of intellectual property to modern economies, this book should be welcomed, even devoured, by readers who want to understand how the legal system affects the development, protection, use, and profitability of this peculiar form of property. The book is the first to view the whole landscape of the law of intellectual property from a functionalist (economic) perspective. Its examination of the principles and doctrines of patent law, copyright law, trade secret law, and trademark law is unique in scope, highly accessible, and altogether greatly rewarding. --Steven Shavell, Harvard Law School, author of Foundations of Economic Analysis of Law
Consumers are therefore predisposed to regard those symbols as indication of the producer) (rejecting the plaintiff's contention that it was entitled to exclusive use of the generic term
  • Qualitex Co
16 Qualitex Co. v Jacobson Prods Co. 514 U.S. 159, 162–3 (1995), quoted in Wal-Mart Stores, Inc. v Samara Bros. 529 U.S. 205, 212–3 (2000): ''Consumers are therefore predisposed to regard those symbols as indication of the producer''. 17 Kellogg Co. v Nat'l Biscuit Co. 305 U.S. 111, 118 (1938) (rejecting the plaintiff's contention that it was entitled to exclusive use of the generic term ''shredded wheat'').
Waxed Prods. Co. 85 F.2d 75, 82 (2d Cir. 1936) (permitting use of the word ''cellophane'', by parties other than the trademark holder, but only when prefixed by the maker's name)
  • Dupont Cellophane
  • Co
Dupont Cellophane Co. v Waxed Prods. Co. 85 F.2d 75, 82 (2d Cir. 1936) (permitting use of the word ''cellophane'', by parties other than the trademark holder, but only when prefixed by the maker's name);
That Kraft in fact used the mark in 1980 does not mean that Kraft intended to use the mark in 1978''; Dan r 2006 The Author
  • Ambrit
  • Inc
  • Kraft
AmBrit, Inc. v Kraft, Inc. 812 F.2d 1531, 1551 (11th Cir. 1986): ''That Kraft in fact used the mark in 1980 does not mean that Kraft intended to use the mark in 1978''; Dan r 2006 The Author. Journal Compilation r 2006 Blackwell Publishing Ltd The Journal of World Intellectual Property (2006) Vol. 9, no. 5 Rectanus Co. 248 U.S. 90, 98 (1918);
248 U.S. at 97; Mishawaka Rubber & Woolen Mfg
  • Theodore Co
Theodore Rectanus Co. 248 U.S. at 97; Mishawaka Rubber & Woolen Mfg. Co. v S.S. Kresge Co. 316 U.S. 203, 205 (1942).
Ltd v Equitrac Corp. 300 F.3d 808 (7th Cir. 2003); Horphag Research Ltd v Pellegrini 337 F.3d 1036 (9th Cir. 2003); Playboy Enters
  • Promatek Indus
Promatek Indus., Ltd v Equitrac Corp. 300 F.3d 808 (7th Cir. 2003); Horphag Research Ltd v Pellegrini 337 F.3d 1036 (9th Cir. 2003); Playboy Enters. Inc. v Netscape Communications Corp. 354 F.3d 1020 (9th Cir. 2004);
P. v Penguin Books USA Inc. 109 F.3d 1394, 1396 (9th Cir. 1997) (defendant used allegedly an infringing mark as title of book and in advertising for book)
  • Dr L Seuss Enters
Dr Seuss Enters. L.P. v Penguin Books USA Inc. 109 F.3d 1394, 1396 (9th Cir. 1997) (defendant used allegedly an infringing mark as title of book and in advertising for book);
Independence Corn By-Prods Co. 992 F. Supp. 1070, 1072 (N.D. Iowa 1997) (defendant used plaintiff's trademark as domain name for defendant's web site)
  • Green Co
Green Prods Co. v Independence Corn By-Prods Co. 992 F. Supp. 1070, 1072 (N.D. Iowa 1997) (defendant used plaintiff's trademark as domain name for defendant's web site);
Rolls Royce'' is 117 Wal-Mart Stores
  • Moseley
Moseley v V Secret Catalogue, Inc. 537 U.S. 418, 429–30 n. 10 (2002) (noting that ''Rolls Royce'' is 117 Wal-Mart Stores, Inc. v Samara Bros. 529 U.S. 205, 209 (2000) (stating that a mark-holder may sue infringers under 15 U.S.C. ‰ 1114 once the mark is registered under 15 U.S.C. ‰ 1052);
Inc. v Victoria's Secret Stores, Inc. 237 F
  • Sportswear
& H Sportswear, Inc. v Victoria's Secret Stores, Inc. 237 F.3d 198, 210 (3d Cir. 2000):
2003) (citing the following language for Netscape I district court's interpretation of Brookfield: ''only realize she has been diverted upon arriving at a competitor's website. . .''; Netscape I 55 F. Supp. 2d at 1074)
  • Wells Fargo
  • D Coe
  • Mich
Wells Fargo & Co. v WhenU.com, Inc. 293 F. Supp. 2d 734, 764 (E.D. Mich. 2003) (citing the following language for Netscape I district court's interpretation of Brookfield: ''only realize she has been diverted upon arriving at a competitor's website...''; Netscape I 55 F. Supp. 2d at 1074); Bihari v Gross 119 F. Supp. 2d 309, 321 (S.D.N.Y. 2000) (referring to Brookfield in the following fashion: ''
Steinweg Nachf. 523 F.2d at 1342. 150 SK&F, Co. v Premo Pharm
  • Grotrian
  • Helfferich
  • Schultz
  • Th
Grotrian, Helfferich, Schultz, Th. Steinweg Nachf. 523 F.2d at 1342. 150 SK&F, Co. v Premo Pharm. Labs. 625 F.2d 1055 (3d Cir. 1980).
Judge Posner pointed out that ''the fundamental purpose of a trademark is to reduce customer search costs by providing a concise and unequivocal identifier of the particular source of particular goods
  • Ty
Ty, Inc. v Perryman 306 F.3d 509 (7th Cir. 2002). Judge Posner pointed out that ''the fundamental purpose of a trademark is to reduce customer search costs by providing a concise and unequivocal identifier of the particular source of particular goods''. 152 Brookfield Communications, Inc. v West Coast Entm't Corp. 174 F.3d 1036 (9th Cir. 1999) at 1062 (applying initial interest confusion to a case involving metatags and Internet advertising);
Jason Krause, Google Targeted in Trademark Disputes
  • E D Va
E.D. Va. 2004). Jason Krause, Google Targeted in Trademark Disputes, 3 ABA J. E-REP. 21 (28 May 2004);
v WhenU.com, Inc. 293 F. Supp
  • Wells Co
Wells Fargo & Co. v WhenU.com, Inc. 293 F. Supp. 2d 734 (E.D. Mich. 2003);
For suits against Netscape and Excite, see Playboy Enters
  • E D Va
U-Haul Int'l, Inc. v WhenU.com, Inc. 279 F. Supp. 2d 723 (E.D. Va. 2003). For suits against Netscape and Excite, see Playboy Enters., Inc. v Netscape Communications Corp. 354 F.3d 1020 (9th Cir. 2004). For suits against Gator.com, see, for example, Gator.com Corp. v L.L. Bean, Inc. 366 F.3d 789 (9th Cir. 2004);
Software Trademark & Copyright Litig. 259 F. Supp
  • Gator In
  • Corp
In re Gator Corp. Software Trademark & Copyright Litig. 259 F. Supp. 2d 1378 (J.P.M.L. 2003).
A trade-mark is a mark used by a trader for the purpose of distinguishing, or so as to distinguish, its wares or services from the wares or services of r 2006 The Author
  • According
  • Freedman
  • Deane
According to Freedman and Deane (2001): A trade-mark is a mark used by a trader for the purpose of distinguishing, or so as to distinguish, its wares or services from the wares or services of r 2006 The Author. Journal Compilation r 2006 Blackwell Publishing Ltd The Journal of World Intellectual Property (2006) Vol. 9, no. 5
LEXIS 49034; British Am. Bank Note Co. v Bank of Am. Nat'l Trust & Saving Ass'n
  • Fed
  • A C W S J Ct
Fed. Ct. 31 March 2000), available at 2000 A.C.W.S.J. LEXIS 49034; British Am. Bank Note Co. v Bank of Am. Nat'l Trust & Saving Ass'n [1983] 2 F.C. 778).
As an address, each domain name must be unique, and only one person can have a particular name for its Internet address
  • Gahtan
'As an address, each domain name must be unique, and only one person can have a particular name for its Internet address'' (Gahtan et al., 1998).
) (dealing with comparative advertising, generally)
  • Romano
Romano, 2005); ibid. ‰ 20(1) (dealing with comparative advertising, generally).
1331; Coca-Cola Ltd v Fisher Trading Co. No. T-789-88, 25 C
  • Thera Wedgwood
  • C P R Ltd
  • Lexis
Wedgwood v Thera Holding Ltd No. 519,229, 18 C.I.P.R. 209 (Off. of Reg. of T.M. 31 December 1987), available at 1987 C.P.R. LEXIS 1331; Coca-Cola Ltd v Fisher Trading Co. No. T-789-88, 25 C.P.R. (3d) 200 (Fed. Ct. 2 June 1988), 1988 C.P.R. LEXIS 1951;
Mattress Franchise Corn v Page 880 F
  • A- Dial
Dial-A-Mattress Franchise Corn v Page 880 F.2d 675 (2d Cir. 1989);
Trademarks and the Burdened Imagination
  • Goliger
  • Travel
  • Gilway Maritimes Ltd
  • Ltd
Goliger's Travel, Ltd v Gilway Maritimes, Ltd [1987] r 2006 The Author. Journal Compilation r 2006 Blackwell Publishing Ltd The Journal of World Intellectual Property (2006) Vol. 9, no. 5 References Austin, G.W. (2004) 'Trademarks and the Burdened Imagination', Brooklyn Law Review, 69, 827, 832–3, 904–20.