Contracting Trademark Fame?

Contracts abound in today’s highly digitized society. Did you snap a pic and upload it to Instagram? You entered into a contract. Did you check your friends’ statuses on Facebook? Yep, you also entered into a contract. Did you know you entered into a contract or even if you were aware of this fact, did you know the terms to which you agreed? Probably not. But despite this, we are all obligated by these contracts, so long as we are somehow made aware that we could read the terms at some point if we had the inclination to do so. Online companies are rationally taking advantage of this, and are inserting clauses into the online agreements we enter into with them that place them in better legal positions. These clauses range from waiver of legal rights, choice of law and forum selection for disputes, and restrictions on intellectual property rights. Even though we are likely not aware of these clauses until well after we have agreed to them, courts typically uphold their binding nature based on an objective theory of contract law. Although scholars and commentators have raised numerous concerns related to the application of this theory to online contracting, I am concerned with an avenue that has not yet been explored: the possible extension of this theory to trademark law. The reason this concern exists lies in the doctrine of trademark fame and developments in the use of online agreements to have all of the website’s claimed trademarks recognized by its website users. Fame is the gold standard in trademark law, which enables a trademark holder to control almost anything that anyone else does with the famous mark. Yet, fame is extremely hard to prove and requires strong evidence of consumer recognition and commercial strength. Due to this, sometrademark holders may be turning to newer forms of evidence, such as website agreements to potentially bolster claims of fame. Given the large number of users of some of these websites (for example, Facebook has over one billion worldwide users), if the objective theory of contract law were imported (even subconsciously) into the trademark realm, it would seem to be an easy argument that “Face” and “Book” are separately famous trademarks. As such, some trademark holders would be given virtually limitless control over all terms incorporating these generic or merely descriptive words. I question whether the importation of this contract law theory into trademark law would be a normatively positive development and conclude that it should not be. Yet, because the utilization of online agreements are a tempting shortcut for difficult decisions regarding trademark fame, I offer some ideas to resolve the problems of using such contracts in trademark litigation, including adopting an interactive theory of trademark fame

Intellectual Property Law and the Right to Repair

This Article posits that intellectual property law should accommodate consumers’ right to repair their products. In recent years, there has been a growing push towards state legislation that would provide consumers with a “right to repair” their products. Currently, twenty states have pending legislation that would require product manufacturers to make available replacement parts and repair manuals. Unfortunately, though, this legislation has stalled in many of the states. Manufacturers have been lobbying the legislatures to stop the enactment of these repair laws based on different concerns, including how these laws may impinge on their intellectual property rights. Indeed, a right to repair may not be easily reconcilable with the United States’ far-reaching intellectual property rights regime. For example, requiring manufacturers to release repair manuals could implicate a whole host of intellectual property laws, including trade secrets. Similarly, employing measures that undercut a manufacturer’s control of the market for replacement parts might conflict with patent exclusivity. Nonetheless, this Article holds that intellectual property laws should not be used to prevent a right to repair from being fully implemented. In support of this claim, this Article develops a theoretical framework that justifies a right to repair in a manner that is consistent with intellectual property protection. Based on this theoretical foundation, this Article then explores, for the first time, the various intellectual property rules and doctrines that may be implicated in the context of the current repair movement. As part of this analysis, this Article identifies areas where intellectual property rights could prevent repair laws from being fully realized, even if some of the states pass the legislation, and recommends certain reforms that are necessary to accommodate the need for a right to repair and enable it to take hold

Policing the Cease-and-Desist Letter

Americans are renowned for being litigious. But only less than three percent of all disputes end up in court, and a paltry one percent of all filed lawsuits end with a decision on the merits. The reason for this paradox is that most disputes take place outside of the judicial system, and further, most disputes start and end with a cease-and-desist letter. This is particularly the case in the intellectual property area, where seasoned attorneys admit that much of their practice revolves around cease-and-desist letters. Although there is much to favor in the private resolution of disputes, there are economic and legal factors that serve to incentivize some rights holders to send abusive cease-and-desist letters. At the same time, abusive cease-and-desist letters are not effectively regulated where such letters are sent to vulnerable parties, such as small businesses and individuals. It is often these vulnerable targets who will immediately comply with abusive letters due to unique characteristics of this population, which when coupled with the abusive cease-and-desist letter, create a coercive settlement process. This is problematic because coercion is universally regarded as grounds for invalidating agreements. However, small businesses and individuals do not have the resources to bring the necessary lawsuits to invalidate such agreements, which create de facto enforced, coerced agreements. State legislators, state attorneys general and the United States Congress have all recognized the problems of abusive cease-and-desist letters, at least with respect to the practices of “patent trolls.” In the past year, state legislatures and Congress have enacted or initiated new legislation, and several state attorneys general have undertaken enforcement action. While these efforts are laudable, a focus on patent trolls is short-sighted and narrow, as similar problems are occurring in other legal areas, including in the copyright and trademark area. This Article argues that proposals to assist small businesses and individuals with abusive cease-and-desist letters should be broad-based and also include non-legislative means. In addition, attempts to assist this vulnerable population should also target the characteristics that make them vulnerable to coercion. To do so, this Article proposes both legislative and non-legislative action: first, a new cause of action for “abusive threats”; second, greater involvement by the American Bar Association, and state and local bar associations; and finally, more aggressive efforts by state attorneys general and/or the Federal Trade Commission

Charitable Trademarks

Charity is big business in the United States. In 2015, private individuals or entities donated over $350 billion, which accounted for approximately two percent of the gross domestic product in the United States. Even though this seems like big money, these donations were split among over 1.5 million organizations. And each year, the number of charitable organizations grows and therefore, the competition for public donations increases. In part to succeed in such competition, some charitable organizations have turned to branding and trademarks as a way to differentiate their entities and to encourage donations. Drawing from the for-profit branding and trademarking strategies, some charitable organizations have become valuable brands in their own right. Unfortunately, however, the similar phenomenon of trademark bullying has also seemed to have spilled over from the for-profit sector into the nonprofit one. This is arguably an even more nefarious problem than in the for-profit sector because nonprofits are supposedly on a mission to help society. If, in their goal to raise more money in performing their mission, these charitable organizations are actually harming society through the costs associated with enforcement and in reducing the number of charitable entities, then the work of these organizations seems to be counterproductive. Not only that, but in shrinking the market of charitable organizations, larger organizations are able to control which causes society should care about, leaving many other worthy causes underfunded or without funding. This Article posits that much of the blame for over-enforcement of trademark rights may, in large part, be placed on judicial interpretations of U.S. federal trademark law. Although federal courts are not united, the more restrained approaches to charitable trademarks courts have taken in the earlier part of the Twentieth Century appear to have shifted over the last few decades towards greater protection, particularly if the trademark holder is a well-established nonprofit. At the same time, case law appears to require an enhanced level of control over such charitable trademarks. Both strands in federal case law may be encouraging over-enforcement of trademark law, both formally and informally. In order to reduce bullying, this Article proposes a number of solutions, including a judicial heightening of certain pleading requirements and encouraging the responsible public shaming of charitable trademark bullies. In limiting the types of trademark infringement cases that could be brought and drawing to the public’s attention those cases that overstep the legal boundaries, charitable entities should hopefully feel freer to not worry about over-enforcing trademark rights and instead, focus on their missions to better our world

Plenary Session 2 - The Impact of “Impact” in IP Scholarship: Citations, Downloads and Why We (Should/Don’t) Care

By American University Washington College of Law, Texas A&M University School of Law, and University of Utah S.J. Quinney College of Law

Plenary Session 2 - The Impact of “Impact” in IP Scholarship: Citations, Downloads and Why We (Should/Don’t) Care

By American University Washington College of Law, Texas A&M University School of Law, and University of Utah S.J. Quinney College of Law

Putting the Bar Exam to the Test: An Examination of the Predictive Validity of Bar Exam Outcomes on Lawyering Effectiveness

How well does bar exam performance, on the whole, predict lawyering effectiveness? Is performance on some components of the bar exam more predictive? The current study, the first of its kind to measure the relationship between bar exam scores and a new lawyer’s effectiveness, evaluates these questions by combining three unique datasets—bar results from the State Bar of Nevada, a survey of recently admitted lawyers, and a survey of supervisors, peers, and judges who were asked to evaluate the effectiveness of recently-admitted lawyers. We find that performance on both the Multistate Bar Examination (MBE) and essay components of the Nevada Bar have little relationship with the assessed lawyering effectiveness of new lawyers, calling into question the usefulness of these tests