Copyright (c) 2009 All rights reserved. http://works.bepress.com/graeme_dinwoodie Recent documents in Graeme B. Dinwoodie en-us Sun, 31 May 2009 06:14:54 PDT 3600 http://works.bepress.com/graeme_dinwoodie/53 http://works.bepress.com/graeme_dinwoodie/53 Tue, 24 Mar 2009 09:28:51 PDT Trademark law contains important limits that place a range of third party conduct beyond the control of the trademark owner. However, I suggest that trademark law would be better served if several of its limits were explicitly conceptualized as defenses to an action for infringement, that is, as rules permitting unauthorized uses of marks even where such uses implicate the affirmative concerns of trademark law and thus support a prima facie cause of action by the trademark owner. To explore why this distinction between limits and defenses matters, I discuss the different nature of the proscription imposed by copyright and trademark law. And I draw lessons both from case law deriving limits from interpretation of the proscription of trademark law as well as from the development of statutory defenses to dilution. Conceiving of limits as defenses would help ensure that the (often unstated) values underlying socially desirable third party uses are not too readily disregarded if they happen to conflict with confusion-avoidance concerns that are historically powerful drivers of trademark protection. Such an approach would also ameliorate the uncertainties caused by the acceptance of extended (and increasingly amorphous) notions of actionable harm in trademark law. And it would facilitate a more transparent debate about the different forms that limits on trademark rights might take. Some defenses will operate as mechanisms by which to balance competing policy concerns on a case-by-case basis, while others (reflecting more fundamental normative commitments, or driven by more proceduralist concerns) might allow certain values categorically to trump the basic policy concerns supporting liability for trademark infringement. Full development of these defenses will involve courts adopting a conscious understanding of the different jurisprudential nature of defenses and will be made easier by acceptance of the Lanham Act as a delegating statute. Graeme B. Dinwoodie http://works.bepress.com/graeme_dinwoodie/52 http://works.bepress.com/graeme_dinwoodie/52 Wed, 04 Mar 2009 08:32:36 PST Graeme B. Dinwoodie http://works.bepress.com/graeme_dinwoodie/51 http://works.bepress.com/graeme_dinwoodie/51 Fri, 20 Feb 2009 13:49:36 PST Graeme B. Dinwoodie Intellectual Property Law http://works.bepress.com/graeme_dinwoodie/50 http://works.bepress.com/graeme_dinwoodie/50 Wed, 28 May 2008 08:55:47 PDT Graeme B. Dinwoodie Intellectual Property Law http://works.bepress.com/graeme_dinwoodie/49 http://works.bepress.com/graeme_dinwoodie/49 Wed, 28 May 2008 08:53:02 PDT Graeme B. Dinwoodie Intellectual Property Law http://works.bepress.com/graeme_dinwoodie/48 http://works.bepress.com/graeme_dinwoodie/48 Fri, 04 Jan 2008 13:08:29 PST Graeme B. Dinwoodie Intellectual Property Law http://works.bepress.com/graeme_dinwoodie/47 http://works.bepress.com/graeme_dinwoodie/47 Fri, 05 Oct 2007 11:11:56 PDT Graeme B. Dinwoodie http://works.bepress.com/graeme_dinwoodie/46 http://works.bepress.com/graeme_dinwoodie/46 Wed, 18 Jul 2007 09:30:32 PDT Graeme B. Dinwoodie http://works.bepress.com/graeme_dinwoodie/45 http://works.bepress.com/graeme_dinwoodie/45 Mon, 07 May 2007 14:49:36 PDT Although part of the political impetus for international intellectual property law making has long come from the economic gains that particular countries could secure in the global market, the recent situation of intellectual property within the institutional apparatus of the trade regime has been an important factor in the transformation of the classical system of international intellectual property law. This chapter analyses various aspects of this transformation. It suggests that viewing intellectual property through the prism of trade alone offers an incomplete explanation of the changes that have occurred in international intellectual property law making. For example, a full account of the contemporary system must reflect the role of both litigation in national courts and private ordering by commercial actors in establishing international intellectual property norms. This chapter stresses that these new contributors to the international system must be subject to no lesser scrutiny than traditional public international instruments such as treaties. The chapter also discusses the increasingly quick resort to international institutions in the field of intellectual property law. To ameliorate the costs associated with the speedy development of international rules, and perhaps to ensure that some international solution is adopted, policy makers have begun more overtly to support the adoption of soft law norms rather than hard law treaty obligations. In response, those skeptical of these trends in international intellectual property law making have sought to slow down the process or bring it to a complete halt. In order to achieve a political climate where public international law imposes fewer constraints on national law makers (particularly law makers in developing countries), skeptics have adopted a number of strategies, including the multiplication of international institutions in which intellectual property is considered, and the concomitant development of a range of rival norms that have massively complicated the political economy of public international intellectual property law. Using examples drawn primarily from copyright and trademark law, I illustrate the pressure to accelerate internationalization, the varying strength of adopted norms, and the changes to the political climate in which public international law making is occurring. To some extent, these changes reflect increased political and popular attention to trade and development. However, regardless of the catalyst, these systemic changes remain crucially important to trade and development because of the entanglement of intellectual property with trade and development policy. Graeme B. Dinwoodie Intellectual Property Law http://works.bepress.com/graeme_dinwoodie/44 http://works.bepress.com/graeme_dinwoodie/44 Mon, 07 May 2007 14:48:47 PDT This contribution to an inter-disciplinary book on Trademarks and Brands responds to the work of Alan Durant, a linguist who (in his chapter of the book) provides legal scholars with both a rich understanding of how linguists view terms that are part of the basic argot of trademark law and a potentially vital explanation of the different social functions that word marks might serve. The Response explains why linguistics should matter to trademark law, but also why trademark law might on occasion ignore the precise reality of consumer understanding as might be provided by linguistics. I suggest that, while trademark law should not become beholden to linguistics, the lessons of Durant's linguistic analysis are to some extent already accommodated in the practice of trademark law, and could be important guides in the further development of a number of legal principles. In particular, I explain how trademark law does in large part take into consideration Durant's observation that legal analysis would comport more with the reality of how words function if it focused on marks as they are used. The Chapter also argues that Durant's exploration of the concepts of "distinctiveness" and "descriptiveness", as understood by lawyers and linguists, respectively, should reinforce important lessons for legal scholars about the complex policy prescriptions embodied in those concepts. Finally, I argue that particular insights developed by Durant from the field of linguistics may prove valuable in illuminating several points of contention in contemporary trademark law. In particular, Durant stresses that determining whether a defendant's use has evoked the source-identifying aspect of plaintiff's mark, as opposed to the descriptive properties of that term, can only be done by analyzing the "discourse 'setting' in which interpretations are constructed." Thus, although the type of use should be relevant to assessing infringement, any analysis of use type must be highly contextualized. This insight should inform the choice of doctrinal vehicles by which trademark law establishes limits on the scope of protection. Graeme B. Dinwoodie Intellectual Property Law