A Tale of Two Theories of Well-Known Marks

The well-known marks doctrine presents a conundrum in international trademark law. Although protecting foreign well-known trademarks has been a treaty obligation since 1925, courts around the world, and in the United States and China in particular, do not uniformly apply the doctrine. This lack of uniform protection leads to the question of whether these countries are complying with their international obligations. While brand owners and some commentators would answer this question in the negative, this Article provides a different perspective. This Article offers an alternative approach to answering the compliance question: Before considering the question, one must examine the perspective from which compliance is being assessed. This analysis is important because the perception of compliance depends on the theoretical perspective from which these well-known marks cases are viewed. These theoretical perspectives have thus far been unrecognized, and this Article attempts to bring them to light. In so doing, this Article provides a more nuanced approach to analyze the compliance question, which can ultimately assist in providing better answers

Brief of Thirty-Four Law Professors as Amici Curiae in Support of Appellants in Altera Corp. v. Papst Licensing GMBH

Beginning with its 1998 decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360 (Fed. Cir. 1998), the Federal Circuit has embraced a rigid, bright-line rule for the exercise of personal jurisdiction in patent declaratory judgment actions. Specifically, the Federal Circuit has held, based on “policy considerations unique to the patent context,” Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1333 (Fed. Cir. 2008), that contacts created through unsuccessful attempts to license a patent can never be sufficient to create specific personal jurisdiction over a patent holder. In contrast to that rigid, patent-specific rule, the Supreme Court has repeatedly emphasized that the analysis of personal jurisdiction “is not susceptible of mechanical application,” Kulko v. Superior Court, 436 U.S. 84, 92 (1978), and has instead required a case-by-case inquiry into the defendant’s contacts with the forum state and considerations of “fair play and substantial justice,” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 485-86 (1985) (internal quotations omitted). Applying the analysis mandated by Supreme Court precedent, it is clear that personal jurisdiction exists in declaratory judgment actions, such as this one, where the patent holder purposefully targeted the forum state by sending demand letters into the state and engaging in in-person meetings in the state with the specific purpose of licensing the patent-in-suit. In addition, important public policy interests support allowing courts to exercise personal jurisdiction over patentees who engage in patent licensing activities targeted at the forum state. The Supreme Court and Congress have consistently emphasized a strong public policy in clearing invalid patents from the marketplace. The Declaratory Judgment Act furthers this policy by allowing accused infringers to obtain a decision on patent validity at a reasonable time and in a reasonable place. The rigid rule established by Red Wing Shoe, however, frustrates the goal of encouraging patent challenges by granting patent holders unilateral control over where a declaratory judgment suit may be filed. For these reasons, the Federal Circuit should sua sponte consider this case en banc to overturn the restrictive jurisdictional rule established by Red Wing Shoe.La