Trademarks, Unfair Competition, and Business Torts

Trademarks, Unfair Competition, and Business Torts

Description

This casebook is the culmination of a substantial effort on the part of its coauthors to create a text that brings together a variety of related bodies of law, many of which until now were only rarely covered in much depth (it at all) in the typical law school curriculum. Our motivation in writing the book therefore was threefold: (1) to expose students to rich new theoretical, analytical, and empirical insights into the law of trademarks, unfair competition, and business torts; (2) to integrate the important (and often overlooked) bodies of state unfair competition law; and (3) to emphasized the growing challenges posed by the Internet and digital technology. Law professors can use this casebook to teach for a variety of two- or three-credit courses within the law school curriculum, including courses primarily devoted to trademark or advertising law; to unfair competition and business torts; or to any combination of these subjects. The casebook makes ample use of problems, many of them derived from real cases. In some instances, to highlight how related legal doctrines can sometimes impact the same set of facts, students are asked to reconsider a problem found in an earlier chapter in light of the material discussed in a later chapter. The following is a synopsis of the casebook contents: Chapter 1. Introduction. In this chapter, we briefly outline the different bodies of law discussed in later chapters. We also present reading and problems designed to introduce students to the various policy rationales for, and critiques of, each of these bodies of law. In particular, we hope that students come away from this chapter with a basic understanding (to be explored at greater depth throughout the course) of the difficulty of distinguishing “fair” from “unfair” competition, and of the tension that sometimes arise between some applications of these bodies of law and the First Amendment. Chapters 2-8. Trademarks. These chapters expand upon and update the coverage of trademark law found in Chapter 5 of Robert P. Merges, Peter S. Menell and Mark A. Lemley, Intellectual Property in the New Technological Age (5th ed. 2009). Chapter 2 briefly surveys the history of trademarks and trademark law and the theoretical bases for trademark protection. Chapters 3 and 4 consider what can qualify for trademark protection and how trademark rights are established. Chapter 4 in particular includes enhanced coverage of genericness, trade dress, and functionality doctrine and of the registration process of the U.S. Patent and Trademark Office. Chapter 5 addresses trademark infringement and provides thorough coverage of the multifactor text for the likelihood of consumer confusion, courts’ application of the new Trademark Dilution Revision Act, and secondary liability in trademark law. Chapter 6 reviews defenses to trademark infringement, such as abandonment and fair use. Chapter 7 briefly considers international aspects of trademark protection, while Chapter 8 covers remedies for trademark infringement. Chapter 9. False Advertising. This chapter provide thorough coverage of the law of false advertising and related doctrines under various common-law and statutory systems. It beings with an overview of the economics of advertising, and then contrasts the common law’s skeptical take on false advertising suits initiated by competitors to the Lanham Act’s (somewhat) more permissive approach. The chapter also includes substantial coverage of a parallel body of false advertising law developed and enforced by the Federal Trade Commission (FTC) and a brief discussion of analogous state laws (the so-called Baby FTC Acts). The chapter continues with a discussion of the related tort of commercial disparagement under the common law and the Lanham Act, and with materials on litigants’ attempts to use the Lanham Act to create a federal right of attribution. The chapter conclude with an extended discussion of possible First Amendment constraints on the law of false advertising and disparagement; a brief survey of international issues; and remedies for false advertising. Chapter 10. Right of Publicity. This chapter presents detailed coverage of state law rights of publicity and related claims for false endorsement. The chapter covers the historical development of the right and differences among the various state law approaches. The chapter also includes extensive discussion of the tension between the right of publicity and the First Amendment, and various courts’ and commentators’ efforts to reconcile the two. Chapter 11. Trade Secrets. Like chapters 2-8, this chapter expands upon coverage of a topic presented in Intellectual Property in the New Technological Age. The chapter provides a comprehensive overview of the law of trade secrets, including both its civil and criminal law aspects, as well as the related body of law on employee covenants not to compete. The chapter includes extensive problems designed to flesh out the meaning of the often ambiguous language of the relevant statutes, and like the two preceding chapters incorporates extensive discussion of related First Amendment issues. Chapter 12. Legal Protection for Facts, Uncopyrightable Factual Compilations, and Ideas. This chapter covers a variety of still-evolving bodies of law, including the once-dormant “hot news” doctrine that now appears, for better or worse, to be making a modest comeback in the Internet age; the enforceability of shrinkwrap and clickwrap agreements; and a top of interest to aspiring screenwriters everywhere, the enforceability of contracts allegedly relating to the confidential submission of ideas. Chapter 13. Cybertrespass. This chapter explores how courts in the digital age have looked o the antique law of personal property to fashion remedies for conduct such as unauthorized access to websites and transfers of domain names. Are these common-law analogies apt when applied to a very different setting from that in which they arose? Chapter 14. Tortious Interference and RICO. This chapter introduces students to two commonly pled business torts (which sometimes arise in connection with other bodies of law discussed elsewhere in the book, as well as independently of those bodies of law). The chapter begins with a discussion of the related torts of tortious interference with prospective business advantage. It concludes with a brief discussion of common-law fraud and of modern-day civil claims arising under the federal RICO statute. Chapter 15. Preemption. Preemption issues pervade many of the topics covered elsewhere in the book. Professors who wish to do so could teach portions of chapter 15 in connection with these other chapters, or they may leave the topic of preemption to separate class periods towards the end of the semester as a way of tying the various materials together. The chapter excerpts the leading U.S. Supreme Court cases on federal preemption of state intellectual property and unfair competition claims, as well as recent appellate court decisions addressing the preemption of hot news, shrinkwrap, and right of publicity claims. The chapter conclude by presenting contrasting views on the preemption of state law claims by other state law, namely the Uniform Trade Secrets Act.

Publication Date

2011

Edition

1

Trademarks, Unfair Competition, and Business Torts

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