Christine Haight Farley

The Forgotten Pan-American Trademark Convention of 1929: A Bold Vision of Extraterritorial Meets Current Realities

Christine Haight Farley — Tue, 09 Apr 2013 09:50:48 PDT

This paper argues that the 1929 General Inter-American Convention for Trade Mark and Commercial Protection ("Pan-American Convention") should be remembered, and will explain why it has instead been forgotten. This paper recounts the history of the Convention and shows how that history fits into the development of a practice in the U.S. of requiring implementing legislation in order for treaty provisions to become directly operative. I will rely on foreign caselaw to show how the Convention has not been forgotten in member states (Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay and Peru) and therefore has played a very different role abroad. And finally, I will demonstrate how the Convention makes at least two important contributions to international trademark law. First, it provides a novel approach to the protection of well-known marks by limiting their availability in cases where the mark was known to have been previously used in the region. Second, the Convention goes well beyond the Paris to provide a detailed set of protections against unfair competition. Given these substantive provisions, the fact that the Convention is still in force in the U.S., and that is self-executing, it is a wonder that there are so few U.S. cases that invoke this Convention.

Trademark Dilution Law: A Remedy in Search of a Harm

Christine Haight Farley — Tue, 09 Apr 2013 06:45:24 PDT

For the last decade, the biggest question in trademark law has been how to prove dilution. This is a clear sign of something. Can no smart attorney, judge or social scientist figure out what dilution is and how to prove it? Dilution has proven to be a "dauntingly elusive concept," according to the Fourth Circuit. Even the Supreme Court does not "get" dilution. In oral arguments in Moseley v. V. Secret Catalog, nearly all of the questions from the Justices were seeking to simply understand what dilution is.

Other courts either do not get dilution, or else they just do not like it. Courts that have ruled in dilution cases have read additional restrictions into the act. What these courts are doing can be characterized as "judicial nullification." These courts seem to be uncomfortable with the apparent breadth of the new right and are seeking to reign it in with additional limitations. The Supreme Court in the V. Secret case also evidenced some distaste for dilution, but admirably tried to wrestle it down nonetheless. The Court ultimately failed to define dilution and acknowledged this by holding that whatever dilution is, at least you have to prove it.

Trademark owners desire a likelihood of dilution standard rather than an actual dilution standard because they cannot prove actual dilution. They cannot prove actual dilution because there is no such harm. The Supreme Court could not provide guidance because they could not articulate the harm that needed to be proved. The trademark bar takes it on faith that dilution exists and would like it to be presumed. The main problem with dilution law is that it provides a remedy without a supportable theorization of the harm.

It is not a strong sense of harm that is motivating the push for dilution protection. Instead, it a strong reaction to a perceived sense of the bad faith on the part of defendants. When defending dilution, proponents frequently state that defendants in dilution cases can only have bad faith intentions to use these famous marks. So dilution protection is desired not so much to protect famous trademark owners' property, but instead to protect against others' free rides.

If dilution is really about preventing the unfair advantage that results from the non-confusing use of a famous mark, then this really is unfair competition legislation. But an unfair competition right without strict boundaries could easily become a right in gross for the trademark owner.

Confronting Expectations: Women in the Legal Academy

Christine Haight Farley — Thu, 25 Oct 2012 11:05:27 PDT

A seemingly insurmountable barrier to women's success in legal academia is the way they are perceived. Numerous studies have shown that women are perceived as less competent than men and that the same work is evaluated more critically when it is thought to have been done by a woman than by a man. This problem exists in all aspects of life, but it is especially acute for women in professional roles, such as academics. Legal academia, however, seems to be particularly resistant to viewing women as equally competent. The article presents original empirical research that shows that student evaluations of women faculty tend to be more hostile than those of male faculty. Comments on their appearance, pieces of "advice," and vicious personal attacks are not uncommon. When women law professors do receive positive comments, they are much different in nature from the comments received by male professors. Whereas men are most often praised for their "mastery of the subject matter," women are usually praised for being enthusiastic and approachable. Furthermore, the same negative attributes in men and women may be interpreted differently by students. For example, what may pass as theoretical musings from men often is interpreted as confusion from women. Because women lack the presumption of competence, they are continuously being challenged, resulting in a hostile "prove it" atmosphere.

Why can't women law faculty overcome the lingering skepticism about women's competence? Is the problem merely that women cannot seem to shake stereotypes that are produced elsewhere? Attempts to simply deny these stereotypes, expecting that they will disappear as more women enter the academy, will be unsuccessful because they fail to recognize the crux of the problem. The presumption that women lack authority is not simply replicated in legal academia, but is actively produced there as well. That is, legal academia constructs a social reality rather than mirroring one constructed elsewhere. The question then is, how does legal education reinforce this patriarchal organization?

Clinical Legal Education and the Public Interest in Intellectual Property Law

Christine Haight Farley et al. — Thu, 25 Oct 2012 11:05:25 PDT

Clinical legal education provides a powerful methodology for students to learn about the relationships among intellectual property law theories, policies and practices; to encounter the experiences of persons who seek protection or who feel the legal regimes of intellectual property impinging on their ability to engage in educational, creative, innovative and culturally significant work; and to develop as lawyers. We describe in this article our motivations for forming an intellectual property law clinic at the American University Washington College of Law, the goals that we seek to achieve, and the tripartite pedagogical structure that we adopted - (1) a seminar built around a year-long simulation that addresses multiple lawyering skills and legal practice settings, (2) a wide variety of live-client student representations performed under close faculty supervision, and (3) weekly case rounds discussions focusing on public interest issues experienced directly by the students in their representations. We provide an example of a particular student representation that illustrates some of the benefits of our clinical model for teaching students about the public interest and intellectual property law doctrines within the framework of teaching about lawyering. We conclude with our reflections on student experiences and the ability of our clinical program to teach intellectual property law and lawyering in concrete factual and policy contexts, helping students better understand the interaction of theory, doctrine and practice in shaping the meaning and consequences of intellectual property regimes. Students came to understand law and lawyering and to see ways to shape their lives as lawyers, through analyzing and evaluating their responses to the interests of their clients, their actions in meeting the demands of a case, their understanding of the relationships among doctrinal areas, and the connection of their activities to the public interest.

Review of the 2006 Trademark Decisions of the Federal Circuit

Christine Haight Farley et al. — Thu, 25 Oct 2012 11:05:24 PDT

The United States Court of Appeals for the Federal Circuit delivered only seven precedential trademark opinions in 2006. The Court addressed a range of substantive issues including trade dress configuration, reverse passing off, and genericism. Notably, two of the seven precedential decisions involved plant names protected by the Plant Variety Protection Act. The Court decided only one case in 2006 where the primary issue was procedural, rather than substantive. In that case, the Court sided with the Trademark Trial and Appeal Board and affirmed its decision on the applicability of the res judicata doctrine. In 2006, as in previous years, appellants faced a difficult challenge in convincing the Federal Circuit to overturn the Trademark Trial and Appeal Board's findings and determinations. Only one of the eight Board decisions appealed to the Federal Circuit was overturned. The Federal Circuit also affirmed rulings by a federal district court and the International Trade Commission. The Court affirmed in every trademark decision it published, and designated four out of the total eleven of its trademark decisions as not citable precedent. All four non-precedential decisions dealt with the application of the In re E.I. DuPont de Nemours & Co. factors for likelihood of confusion.

Protecting Folklore of Indigenous Peoples: Is Intellectual Property the Answer?

Christine Haight Farley — Thu, 25 Oct 2012 11:05:23 PDT

What can the Navajos do to prevent non-Navajos from using Navajo rug patterns to produce rugs overseas using cheap material and labor, thereby undercutting the Navajos themselves in a market for their famous rugs? What can the Australian Aboriginal peoples do when their sacred and secret imagery is reporduced on carpets they did not make, and sold to non-Aboriginals, who will inevitably walk on them? Do these communities have any legal rights to these pieces of their culture? Does the law provide any means for them to take back their culture or to prevent further poaching?

Why We Are Confused about the Trademark Dilution Law

Christine Haight Farley — Thu, 25 Oct 2012 11:05:22 PDT

Protecting Folklore: Is Intellectual Property the Answer?

Christine Haight Farley — Thu, 25 Oct 2012 11:05:21 PDT

Judging Art

Christine Haight Farley — Thu, 25 Oct 2012 11:05:18 PDT

What is art? Surprisingly, this question is addressed in various places in the law. At these junctures, courts typically attempt to avoid making a judgment. Indeed, the law generally resists any definition of art. The reasons given for this are that these determinations are too subjective for the courts and that judges lack proper training and expertise. Thus, the doctrine of avoidance is the most stable and explicitly stated proposition to be found in these encounters. However, the question of whether an object is a work of art for treatment under the law is often unavoidable. This question gets resolved in two kinds of cases: (1) when there is an explicit issue of whether the object can be classified as a work of art and (2) when the question of the object's value as art operates below the surface. In both, because judges are admonished never to make aesthetic determinations, they are forced to find other ways of deciding cases. Consequently, these disguised aesthetic judgments play havoc with the doctrines of law. Moreover, this ruse masks unexamined aesthetic determinations and thus biases and predilections. It would be preferable for judges to be explicit and self-conscious about their philosophical bent in making these determinations. The law ought to acknowledge the field of aesthetics and the healthy debate about these questions this literature reveals. This lack of engagement in favor of exercised intuition reveals more about the nature of judging than it does the nature of art.

Transcript: Introductory Remarks to Panel 1

Christine Farley — Thu, 25 Oct 2012 11:05:17 PDT

Why We Are Confused About Trademark Dilution Law

Christine Haight Farley — Thu, 25 Oct 2012 11:05:16 PDT

Imagining the Law

Christine Haight Farley — Thu, 25 Oct 2012 11:05:15 PDT

Law’s relations to art--to its creation, its production, and dissemination, its restriction as well as to commercial and contractual agreements about art works—are as multiform and complex as the category of art itself. Acknowledging that there is no discrete body of law that governs art, the author defines art law as “the survey of legal issues raised by art, artist, and the art world” and surveys four central themes: the law as art, the law of art, the law of creativity, and the collision of art and law. Any legal dispute about art usually evokes a plea for special legal rules or approaches, as in the case of Nussenzweig v. diCorcia, 878 N.E.2d 589 (2006). The author points the way toward a study of law in its relationship to creative, cultural practices, particularly to the notion of aesthetic judgment in the domains of art and law. Law typically works to promote and protect, rather than impede, artistic creation on the logic that art is a social good. Questions about art’s role in the creation of culture and the rights of the artist frequently enter the legal domain for their answers. In cases of illegal trade of art treasures, for example, the courts have had to decide whether art constitutes a specific cultural heritage, a broader human achievement, or simply a commodity. Controversies in intellectual property, though they focus on the individual artist, are similarly bound up with creative and economic interests that reveal fundamental inconsistencies between law’s stated mission to encourage the production of art as a common good and law’s so-called creativity threshold, which works to restrict innovation. The author sees in these inconsistencies a collision between art (radically transformative) and law (resistant to change) based on their fundamentally differently cultural functions, and argues that judges apply private ideas about aesthetics instead of openly acknowledging that their judgments are not neutral and nonsubjective.

The Lingering Effects of Copyright's Response to the Invention of Photography

Christine Haight Farley — Thu, 25 Oct 2012 11:05:14 PDT

In 1884, the Supreme Court was presented with dichotomous views of photography. In one view, the photograph was an original, intellectual conception of the author-a fine art. In the other, it was the mere product of the soulless labor of the machine. Much was at stake in this dispute, including the booming market in photographs and the constitutional importance of the originality requirement in copyright law. This first confrontation between copyright law and technology provides invaluable insights into copyright law's ability to adapt and accommodate in the face of a challenge. An examination of these historical debates about photography across the domains of law, art, commerce and technology, the social sciences, and popular culture suggests that the particular contours of the author that continue to pose problems-particularly its predilection for creation over selection-can be located and attributed to this historical moment. The "author" took a particular shape in response to historically specific constraints, and the resulting doctrine has left a lasting impression on the way we read photography today.

Panel II: Trademark Dilution Revision Act Implications

William G. Barber et al. — Thu, 25 Oct 2012 11:05:13 PDT

Transcript: Comments on Panel 1

Christine Farley — Thu, 25 Oct 2012 11:05:11 PDT

Conflicts between U.S. Law and International Treaties Concerning Geographical Indications

Christine Haight Farley — Thu, 25 Oct 2012 11:05:10 PDT

It should not be surprising that the United States is not a major proponent of the protection of geographical indications. Countries that stand to benefit the most from this protection are those that have a long history of traditional industries, such as many European countries. These historical differences may help explain the stance that the United States has taken with regard to the protection of geographical indications, as compared to its stance towards other intellectual property rights negotiated in TRIPs Agreement. But the inability of the U.S. to benefit to the same extent as European countries, because of its apparent dearth of traditional industries, does not fully explain U.S. resistance to the protection of geographical indications. Instead, the discord is of a more fundamental nature having to do with the basic approach each continent takes to trademark law. Since the earliest days in Europe, geographical indications were used to protect certain industries. As local reputations grew for certain products, use of the place names became attractive. To some extent such markings served as a warranty for the quality of the goods. To ensure the locale's reputation, the local industry would agree to certain standards of production. The granting of a right to use a geographical term associated with particular goods exclusively to the producers within a certain region served to limit competition, especially from producers outside that region. This purpose is in contrast with the theory behind the prohibition of uses of false indications of origin in the United States. In the U.S., such use is prohibited not to protect an industry, but to protect the consumer against any resulting deception. In the U.S., generally speaking, there are no rights in a term or sign until that term or sign has become distinctive in the minds of the relevant consumer as an indicator of source. Thus, we are reluctant to view these types of terms as conveying any kind of property rights in and of themselves before they have been invested with meaning resulting from use in commerce.

Brief of Law Professors as Amici Curiae in Support of the Petitioners, Harjo v. Pro-Football Inc.

Victoria Phillips et al. — Wed, 14 Apr 2010 13:35:32 PDT

Amici are scholars at U.S. law schools whose research and teaching focus is intellectual property law, federal Indian law and constitutional law. Amici are concerned that the Court of Appeals decision below is inconsistent with the well settled law that laches does not apply to trademark cancellation claims, including those based on disparagement, because of the strong public interest in being free from the harms that disparagement causes.

These harms, which include damaging stereotyping and stigmatization, are serious and deserve protection no matter what private harm may be caused by delay to the trademark registrant. Further, precluding laches in these cases protects the government’s interest in assuring the integrity of the Trademark Register. Amici urge this Court to grant review of this matter to clarify that laches cannot apply to a disparagement cancellation claim. Such a ruling will increase certainty for trademark holders, individuals and groups claiming or subject to disparagement, and promote the larger public interest inherent in these claims.

Convergence and Incongruence: Trademark Law and ICANN’s Introduction of New Generic Top-Level Domains

Christine Haight Farley — Wed, 14 Apr 2010 13:35:29 PDT

This paper demonstrates how problematic convergences between Internet technology, the demands of a burgeoning e-market and trademark laws have created myriad issues in international governance of domain names. The Internet Corporation for Assigned Names and Numbers (ICANN), the body that governs internet's infrastructure, recently approved a new policy that would allow it to accept applications for additional generic top-level domains (gTLDs). What ICANN contemplates is a uniform system to approve generic top level domains that is expected to have profound implications. Under this new plan anyone can apply for a new gTLD at any time and it could be literally dot anything. However, the new gTLD policy imports certain concepts and doctrines from trademark law that will result in long-term problems both for domain name policy and for trademark law jurisprudence. A major problem with this policy is that it equates domain names with trademarks as legally protectable properties. But they are not equivalent. While ambitiously trying to resolve some of the most problematic information ownership issues in e-commerce, ICANN has not carefully considered the appropriateness of importing trademark law concepts into domain name policy.

The Feminine Mystique of the Brand in Trademark Law Today

Christine Haight Farley — Wed, 14 Apr 2010 13:35:27 PDT

Just as we have been witness to a steady expansion of trademark protection, we have also been witness to the gendering of the object of that protection. Today the brand is feminine in trademark law and that gendering is instrumental to our desire to increase protection for trademarks. This gendering of the brand tracks recent changes in trademark law and this is no coincidence. The expansion of trademark protection spans a range of doctrines , but perhaps the most dramatic expansion of trademark rights has been the creation of an antidilution right. The trademark bar claimed that without this right, their valuable brands were vulnerable. They asserted that these valuable brands attract the attentions of bad actors. Their brands become prey to their advances. And when these bad actors have used their brands, they are left damaged. Given this danger, it was argued that the law should run to their aid. Promotion of this moral imperative to increase protection is important because why else would we.

Dilution law radically shifts the balance in trademark law. For more than a hundred years, federal trademark law rights hinged on proof of consumer confusion. The confusion of consumers in the marketplace is a harm we can understand and are motivated to protect against. And what is the harm of dilution? According to the theory, dilution weakens the mark, which may diminish its value. How do we prove or measure impairment? We can't. Instead, trademark owners would like us to take it on faith that this harm will occur when someone else uses a famous mark. The interest being protected in trademark law has also shifted. Whereas the law's concern had been for the consumer, it is now for the brand. And the particular interest the law seeks to protect appears to be a reputational interest. Thus, the new dilution right more resembles defamation law than trademark law. But at least in defamation law, plaintiffs are required to prove an injury. Generally, under defamation law in order for the publication of a slander to be actionable some special damage must be proved to flow from it.

The presumption of injury to reputation in today's trademark dilution law recalls the 19th century tort of defamation of a woman's reputation. Under this exception to the general rules of defamation, impugning the chastity of a woman was slander per se, with no need to show damage. The arguments in favor of dilution protection for brands tracks Victorian attitudes towards women. Like trademarks today, women were thought of as property whose value was dependent on their purity. Negative associations and innuendo could alter that value. We can think of trademark distinctiveness-the quality that lends marks their special protections-as analogous to a woman's pedestaled status. Distinctive marks are set apart from others. Marketers admire their aesthetic appeal and play on their accessibility/inaccessability.

Like the Victorian woman whose injury must be presumed because she cannot prove a loss in economic status, so is the brand today. V Secret could not prove a loss of sales, licensing fees or diminution in valuation even after Victor Mosely used a similar mark on a shop that sold sex toys. Like the Victorian woman, the harm can not be proven because the harm is not a market harm.