Intellectual Property: Trademark Law eJournal最新文献

{"title":"Antitrust and Competition Issues","authors":"J. Contreras","doi":"10.2139/ssrn.3695630","DOIUrl":"https://doi.org/10.2139/ssrn.3695630","url":null,"abstract":"This Chapter offers a broad overview of the impact of U.S. antitrust laws on IP licensing and transactions. A basic understanding of antitrust law is critical to the analysis of IP licensing arrangements, whether concerning patents, copyrights or trademarks. This chapter offers a summary of the antitrust doctrines that arise frequently in IP and technology-focused transactions — price fixing and market allocation, resale price maintenance, tying, monopolization, refusals to deal, standard setting and pay-for-delay settlements, with coverage of the major cases and enforcement agency guidance. Antitrust issues also play a role in the analysis of joint ventures, which are discussed in Chapter 26, and IP pools, which are discussed in Chapter 27 (a preview of this topic is presented in Part E below).","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"67 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2020-08-25","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"132563782","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}

{"title":"Doing Business with Wizards, Spider-Men, and Jedi Knights: Managing Intellectual Property and Fandom in the Experience Economy","authors":"M. Dy, Janani S. Iyer, Romil Mehta","doi":"10.2139/ssrn.3639092","DOIUrl":"https://doi.org/10.2139/ssrn.3639092","url":null,"abstract":"The experience economy has taken popular culture and has injected it into every aspect of our lives. We translate movies, TV shows, video games, and other forms of entertainment into our daily activities in the form of fan fiction, events, merchandise, and themed establishments. These activities involve vast amounts of creative content protected by copyright, trademarks, and designs. Rightsholders need to manage these intellectual properties strategically to increase profits while tolerating consumer experiences that do not cause damage to the business. This preserves long-term fan loyalty and immersive patronage.","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"18 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2020-06-30","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"122344867","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}

{"title":"Recalibrating the Disgorgement Remedy in Intellectual Property Cases","authors":"Pamela Samuelson, J. Golden, Mark P. Gergen","doi":"10.2139/ssrn.3529750","DOIUrl":"https://doi.org/10.2139/ssrn.3529750","url":null,"abstract":"The five major US intellectual property (IP) regimes — trademark, trade secrecy, copyright, design patent, and utility patent laws — have quite different rules about the availability of disgorgement of infringer profits as a remedy. Traditional principles of restitution and unjust enrichment support awards of disgorgement of profits insofar as they are (1) levied against conscious wrongdoers, (2) attributable to the wrongful conduct, and (3) subject to equitable discretion. Unlike awards of actual damages, which aim primarily to compensate plaintiffs for harms suffered because of a defendant’s wrongdoing, disgorgement awards primarily seek to deter wrongdoing by ensuring that wrongdoers do not profit thereby. This Article presents a formal model that supports our judgment that these principles are consistent with the goal of optimal deterrence of IP infringement. \u0000 \u0000Much of the Article presents a close study of the doctrinal structure of the five IP regimes’ approach to disgorgement. We find that trademark law is the most consistent of the five regimes with traditional restitutionary principles and the goal of optimal deterrence. Trade secrecy law, like trademark law, is substantially consistent. Design patent, copyright, and patent laws deviate in more significant ways. Disgorgement awards are always available to owners of copyrights or design patents, even against innocent infringers. Moreover, design patent law even deviates from traditional approaches to restricting awards to amounts attributable to infringement: instead, design patent law requires awards of total profits on the manufacture or sale of whatever “article of manufacture” to which an infringing design has been applied. Further, courts have thus far rarely recognized that disgorgement awards should be subject to equitable adjustments in copyright and design patent cases, although this may change after the Supreme Court’s characterization of disgorgement as an equitable remedy for copyright infringement. Patent law deviates from traditional restitutionary principles in a very different way: courts have ruled that Congress repealed disgorgement as a remedy for utility patent infringement in 1946, but patent law’s reasonable royalty awards can, in effect, effect a partial disgorgement of infringer profits. \u0000 \u0000The Article makes recommendations about how courts can, within the statutory bounds of each IP regime, render disgorgement awards that are more consistent with traditional restitutionary principles in a manner that will promote the overall goals of the IP laws.","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"12 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2020-01-31","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"129606318","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}

{"title":"The Value of Trademarks: A Study of the Trademark (Protection) Lifecycle in the U.S. Pharmaceutical Industry","authors":"S. Nasirov","doi":"10.2139/ssrn.3326972","DOIUrl":"https://doi.org/10.2139/ssrn.3326972","url":null,"abstract":"In this work, I study the determinants of (implicit) trademark value. My approach is based on the idea that more valuable marks are likely to remain under legal protection, as long as the benefits of this protection exceed its costs, than less valuable marks. In order to test this idea, I particularly focus on trademark characteristics that are related to the underlying brand as well as on legally stipulated characteristics. My theoretical predictions are verified by looking at trademark activities in the U.S. pharmaceutical industry, largely owing to its heavy reliance on product differentiation to compete in the market. The statistical analysis I conduct suggests that trademark characteristics are an important predictor of whether the mark is going to progress further along its lifecycle or not, thereby also conveying information about its value. However, assigning the value interpretation to each characteristic should also account for the stage of the trademark lifecycle (that is, registration, maintenance, or renewal) under consideration.","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"59 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2019-02-01","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"131442119","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}

{"title":"Preliminary Notes on the ‘Intangible Elements of Commercial Identity’","authors":"I. Lora","doi":"10.2139/ssrn.3305772","DOIUrl":"https://doi.org/10.2139/ssrn.3305772","url":null,"abstract":"As the current Law (at least Brazilian Law) considers that trademark, internet domain and businesses names have distinct legal objectives, the most logical solution from the point of view of commercial strategy is to seek the protection of each one separately. By grouping and concentrating these three elements mentioned in an activity or business system, we assume that is a facilitator to the joint protection of the commercial identity. Three characteristics are fundamental for the good positioning of the market regarding the identification by the consumer. ‘Who’ negotiates, signs agreements and contracts; a distinguishing sign that allows its identification; and a mean of communication that can spread businesses purpose efficiently. In other words: a business name, a trademark and a domain on the internet. These three aggregate elements and the conflicting relationships among them were the subject of the exploratory study titled: (English Title: LLC.COM(R) - An exploratory research about the conflicts between Trademark, Business Name and Internet Domain analyzed from Jurimetrics and Data mining) (Portuguese Title: LTDA.COM(R) Uma pesquisa exploratoria acerca dos conflitos entre Marca, Nome Empresarial e Dominio na Internet analisados a partir de Jurimetria e Data mining’). From the study, it was conceived that through the three aggregate registers, and, working the distinctive aspects in order to achieve a market identity by Trade Dress configurations, as being the most effective way to guarantee the protection of what we designate as: ‘Intangible Elements of Business Identity’. \u0000 \u0000Portuguese version (VERSAO EM PORTUGUES): https://ssrn.com/abstract=3294739.","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"72 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2018-12-23","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"125285345","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}

{"title":"Non-Traditional Trademarks and Inherently Valuable Expression","authors":"Lisa P. Ramsey","doi":"10.1093/oso/9780198826576.003.0018","DOIUrl":"https://doi.org/10.1093/oso/9780198826576.003.0018","url":null,"abstract":"Trademark laws currently allow companies to obtain trademark rights in product configurations, colors, scents, sounds, flavors, textures, and other “non-traditional” marks that identify and distinguish the source of goods or services. This chapter argues that non-traditional trademarks convey expression protected by the right to freedom of expression in constitutions, human rights treaties, and statutes. Not only do distinctive non-traditional marks communicate source-identifying information, but these product attributes may also intrinsically convey information, ideas, or other messages unrelated to the trademark owner. Therefore trademark laws regulating this expression must have a sufficient justification, and governments should repeal or revise laws protecting non-traditional marks when they do not directly further trademark law’s goals and harm free expression. Nations should refuse to register non-traditional marks that expressed inherently valuable messages unrelated to source-identification before they were adopted or used as marks, or only grant such marks narrow protection.","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"8 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2018-11-10","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"131016501","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}

{"title":"The Protection of (Three-Dimensional) Shape Trademarks and Its Implications for the Protection of Competition.","authors":"G. Ghidini","doi":"10.1093/OSO/9780198826576.003.0011","DOIUrl":"https://doi.org/10.1093/OSO/9780198826576.003.0011","url":null,"abstract":"The exclusive protection of shapes (three-dimensional in particular) as trademarks of products, raises serious concerns about its possible negative impact on competition. The analysis of the European legal framework focuses on the risk of systemic impasse and over-protectionist consequences resulting from the coexistence of trademark and registered design protection. An interpretative solution capable of overcoming such impasse in a pro-competitive perspective is presented. Such solution is then confronted with the alleged “investment function” of trademarks as asserted by the CJEU—an assertion criticized as both systemically improper and deeply anti-competitive. The solution is finally reconciled with the need to avoid weakening the distinctive character of the overall appearance (“trade dress”) of industrial products.","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"260 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2018-03-26","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"127208363","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}

{"title":"The Impact of Brexit on the Unitary Rights of the European Union","authors":"Yann Basire, Roda Jean-Christophe, Guylène Kiesel Le Cosquer, Amélie Favreau, Treppoz Edouard","doi":"10.2139/SSRN.3260487","DOIUrl":"https://doi.org/10.2139/SSRN.3260487","url":null,"abstract":"Besides the politic and the economic perspective, Brexit results in chaos regarding intellectual property rights, especially unitary rights. The future of these rights raises interrogations. Even more, it worries many economic operators. In particular, intellectual property rights holders are preoccupied with the fate of their European asset. \u0000Whereas the Regulations on the European Union trademark and in the Community design deal with the question of newly acceding States, there is no mention of the withdrawal of a Member State and of the future of a European Union trademark in it. Must we conclude that the proprietors of European Union trademarks will see their rights denied in the United Kingdom? This solution is hardly conceivable, both from a commercial point a view and a legal one. The complete disappearance of European Union trademark law for the British territory would constitute an infringement of the property of the proprietor, protected by article 1 of the First Protocol to the Convention for the Protection of Human Rights and Fundamental Freedoms. Therefore, it is necessary to consider the future of European Union Trade Marks and Community designs (A), and the strategies which can be advised with regard to the numerous issues (B).","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"1 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2017-09-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"132277659","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}

{"title":"‘Mice Ate My Licence Agreement’, Claims Applicant Before Federal Court of Canada","authors":"Dr. Emir Crowne","doi":"10.1093/JIPLP/JPX085","DOIUrl":"https://doi.org/10.1093/JIPLP/JPX085","url":null,"abstract":"In a recent decision (Yeung v Taste of BC Fine Foods Ltd, 2017 FC 299), the Federal Court of Canada upheld the refusal of the Trademarks Opposition Board to register ‘TASTE OF B.C.’ holding, in part, that the sale of goodwill did not necessarily include the trade mark.","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"7 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2017-06-02","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"124190910","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}

{"title":"The Fruit of the Poisonous Tree in IP Law","authors":"Mark A. Lemley","doi":"10.2139/SSRN.2867099","DOIUrl":"https://doi.org/10.2139/SSRN.2867099","url":null,"abstract":"If a police officer searches my home illegally and finds evidence of a crime there, the criminal law suppresses not only that evidence, but evidence derived from the search that was not itself found illegally. This doctrine is known as the “fruit of the poisonous tree.” The animating principle of the fruit of the poisonous tree doctrine is but-for causation: if you had not violated the law, you wouldn’t have found the evidence, and so you wouldn’t have followed whatever investigative path was triggered by the finding of that evidence. The newly discovered evidence – the fruit – is tainted by the poison of the illegal search.Civil law also concerns itself with chains of causation, both in determining liability and in ordering relief. But civil does not apply the logic of the fruit of the poisonous tree to chase down every consequence of a wrong. Tort law, for example, requires proof not only of but-for causation but also that the defendant was a sufficiently proximate cause of the injury. Plaintiffs can recover for some (but not all) unforeseeable consequences. And while remedies law generally tries to return plaintiffs to their rightful position, compensating them for injuries and giving them what they could have expected to receive absent the wrong, it also limits both who can obtain compensation and the sort of thing for which they can be compensated. Intellectual property (IP) regimes in particular struggle with causation issues in one important set of cases: defendants who infringe an in IP right in the course of making a product that does not itself infringe that right. Suppose, for instance, that I copy your song onto my laptop in order to make my own song that samples yours. Depending on how much I use, the final song I release may not infringe your copyright, but intermediate versions of my song might, as might the original copy. Or suppose I use a patented microscope without permission to make a scientific discovery that turns into a new drug. The drug doesn’t infringe the patent, which is, after all, on a microscope, not a chemical. But the act of research might infringe. Or I might steal your product to figure out how it works, not so that I can copy it but so I can make a one that works a different way. My final product doesn’t incorporate your secret, but I used my ill-gotten knowledge of your product to get there.IP law is all over the map in dealing with such cases. Some IP regimes, like trade secret law, apply the fruit of the poisonous tree logic, allowing the plaintiff to recover not only for the profits the defendant made from secrets she actually stole and used but also for the profits of any product that resulted from the use of those secrets. It will also grant a “head-start” injunction against even non-infringing products. Copyright law, by contrast, does not permit a plaintiff either to obtain an injunction or to recover damages against non-infringing final products. Patent law is somewhere in between, refusing to enjoin n","PeriodicalId":225075,"journal":{"name":"Intellectual Property: Trademark Law eJournal","volume":"30 1","pages":"0"},"PeriodicalIF":0.0,"publicationDate":"2016-11-09","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"126329143","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}