Trademark and Unfair Competition Conflicts

This book will be of interest for all jurists doing research and working practically in intellectual property law and international economic law. It should be an element of the base stock for every law school library and specialized law firm. This title is available as Open Access

Behind the Steele Curtain: An Empirical Study of Trademark Conflicts Law, 1952-2016

The law on international trademark disputes is founded on precedent from 1952. Steele v. Bulova Watch Co. is the first and only Supreme Court decision addressing the question of how far the Lanham Act should be extended beyond the United States\u27 national borders when international infringement is at issue. The decision laid the foundation for a three-pronged test that focuses on the factors of defendant nationality, effects on US commerce, and conflicts with foreign law. Although international trademark conflicts have multiplied dramatically--particularly throughout the last decade--there has been no systematic and comprehensive account of the actual state of the law. Courts and commentators continue to rely only on a small set of leading cases--Steele and a handful of appellate court opinions--when testing the territorial scope of the Lanham Act, thus ignoring the landscape of lower courts\u27 decision-making. To address this blind spot, an empirical study of the field\u27s case law from its inception in 1952 until 2016 was undertaken. The results, presented in this Article, reveal that much of the conventional wisdom regarding the state of judge-made law in trademark conflicts cases is questionable, if not incorrect. This Article not only provides new and unexpected insights into the actual extension of US trademark law beyond national territory but also explains which factors drive the outcome of extraterritoriality testing in practice, how these factors interact with one another, and how each factor has been shaped overtime. Based on these findings, this Article suggests several corrections to existing doctrine. More succinctly put, in the interest of aligning judicial practice with the realities of socioeconomic globalization, the current overextension of the Lanham Act must be curbed. The doctrine of trademark extraterritoriality that has evolved in the wake of Steele is an anticompetitive detriment rather than a rights holder panacea

Trademark rights, comparative advertising, and "perfume comparison lists": An untold story of law and economics

Regarding trademarks, the EU and US regulate comparative advertising differently. One particular matter of significant difference is whether or not competitors are allowed to say they offer an imitation or replica of a trademarked product. In the US, competitors may claim equality of their product as long they clearly eliminate confusion and distinctly market their product as separate from the original. European firms, by contrast, face more obstacles concerning advertising statements conceived to establish their product as equal or identical to a competitor's trademarked product. If the economic functions of trademarks are clear, it is easier to answer a number of legal questions in the comparative advertising field. One facet rarely explored is the fact that trademarks are the “name” of a product and the legal bridge between consumers’ past and future experiences. Such experiences are referred to as attributes or qualities of a product. Attributes describe product characteristics driving individual consumer experiences. Because such experiences are difficult to objectively verify, statements of this kind must submit to particular scrutiny. In principle, the same is true regarding product qualities. Quite often, it is easy to measure quality experiences, but sometimes measuring is not possible depending on whether qualities are public or private. Like with attributes, the legality of referring to product qualities depends on verifiability. Uncertainty of an attribute’s verifiability or quality information creates a risk of undue exploitation, particularly consumer confusion. In such cases, strict regulation of comparative advertising is important. In other words, the legal system must prevent confusion in advertising because confusion increases consumer search costs. In addition to preventing confusion, the issue of trademark dilution is another aspect relevant in analyzing comparative advertising. According to European doctrine, using a competitor’s trademark in comparative advertising can be improper goodwill misappropriation. Displaying a competitor’s trademark may diminish its distinctiveness, tarnish its image and reputation, or constitute what the ECJ defines as freeriding or parasitic competition. The meandering standards of legal doctrine, however, hardly provide for consistent guidelines. Whether misappropriation is a justifiable term to use in defining comparative advertising requires a closer look at the field’s underlying economics. As we will show, in none of these constellations will the appropriation of the competitor’s investment be implemented through the market mechanism. It is not a pecuniary, but a technological externality. The metric for assessing admissibility of appropriation must thus be changed from the governing European doctrine of necessity or proportionality to a principle of economic efficiency taking into account both the trademark owner’s and the advertising competitor’s cost-benefit-ratio

„Künstliche Intelligenz“ und Recht : Neue Herausforderungen und Fragen aus juristischer Sicht

KI durchdringt unseren Alltag auf allen Ebenen. Vom Strafrecht über das Vertrags- und Haftungsrecht, das Bank- und Kapitalmarktrecht, das Immaterialgüterrecht, das Wettbewerbsrecht, das Recht des Staates und seiner Verwaltung, den Umgang mit personenbezogenen Daten oder das Medizinrecht und vielem mehr geht es um die Frage, wie mit KI künftig rechtlich umzugehen ist. Wissenschaftlerinnen und Wissenschaftler an der Juristischen Fakultät forschen und lehren intensiv zu diesen Fragen und geben einen Einblick in ausgewählte Bereiche