Creativity and the Law

An introduction is presented in which the author, a law professor, discusses various topics within the journal including creativity in technology, U.S. intellectual property law, and trademark infringement lawsuits

Creativity and the Law

An introduction is presented in which the author, a law professor, discusses various topics within the journal including creativity in technology, U.S. intellectual property law, and trademark infringement lawsuits

Introduction

Julie Cohen’s Between Truth and Power is, as Orly Lobel writes, a “dazzling tour de force” that “asks us to consider the new ways powerful actors extract valuable resources for gain and dominance.” As she has done so frequently, Cohen takes an incredibly complex story and weaves together a comprehensive narrative that changes the entire framing of legal questions. Agree or disagree with her diagnoses, no one who seriously engages this book will ever think about regulation in the information economy the same way. In January 2020 (seemingly a lifetime ago, given what 2020 would bring), we gathered leading thinkers about the governance of new technologies at Notre Dame Law School and spent a day reflecting on the book and considering its implications across a range of areas. This symposium edition includes three essays that derive from those conversations, each focusing on just one of the many threads from that day

Teaching Trademark Theory Through the Lens of Distinctiveness

This contribution to the annual teaching edition of the Saint Louis University Law Journal encourages teachers to begin trademark law courses using the concept of distinctiveness as a vehicle for articulating producer and consumer perspectives in trademark law. Viewing the law through these sometimes different perspectives helps in approaching a variety of doctrines in trademark law, and both perspectives are relatively easy to grasp in the context of distinctiveness

Criminal Trademark Enforcement and the Problem of Inevitable Creep

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

Property and Equity in Trademark Law

This lecture focuses on the relationship between trademark and unfair competition. Specifically, this lecture discusses the way trademark law has evolved over time with respect to property concepts. There has been a lot of discussion in the literature about the ways trademark law has come to treat trademarks as property. Many scholars who have written about this “propertization” have described it as a shift from consumer to producer protection. I have written a lot about this narrative over the course of my career—I think it is overly simplistic, and in some ways, wrong. Trademark law has al-ways protected marks as property and always significantly for the purpose of protecting producers.6 What has changed is that modern law conceives of the property interests much more broadly than it once did. So the important shift in trademark law was not one from a system focused exclusively on consumer interests to one focused on producers, or from no-property to property—it was a shift in terms of the nature of the property interest protected. But even that revised narrative misses some important things about trade-mark law’s evolution because it is insufficiently attentive to significant changes in the doctrinal structure of trademark law over the course of the last century—specifically with respect to the relationship between trademark law and the broader law of unfair competition. Changes in that relationship, I will argue, did work a meaningful change in the “propertization” of trademark law. Relatedly, and necessarily, these same changes deemphasized legal rules that focused on the defendant’s conduct (rather than the plaintiff’s ownership interest)