“Governmental marks” are words or phrases which involve the identity of a social group that is partly defined in terms of its citizenship in a government-institution. The power to name a social group (especially one from which exit is difficult) confers enormous power over the group’s members. Legally classifying such words as trademarks commodifies them, increasing the namer’s power: both by giving the word monetary value and by providing the mark-holder with the legal right to prevent others from manipulating the word’s meaning.

Destination marketing employing governmental marks has become ubiquitous. The municipal governments of both New York City and Las Vegas used the courts to prevent local businesses from selling unlicensed souvenirs decorated with trademarks referring to their respective cities. The courts treated these disputes as no different from litigation over shoe-brands; even if the courts had classified the disputed marks as governmental, they could have ruled for the plaintiffs by invoking the doctrine of government speech.

This article argues against allowing mark-rights in governmental marks. It weaves together marketing literature, examples of recent marketing campaigns by various public-appearing entities, concepts from trademark law, free speech literature, and critiques of government accountability to illuminate the conceptual slippages demonstrated by these cases and by current marketing practices. First, most governmental marks lack a basic requirement for trademark-status; such marks generally do not signify one unique source. Furthermore, even if commercial practice led a substantial percentage of the public to perceive a unique source, legal recognition of such a source is incompatible with liberal, representative government. Additionally, the current practices in which governmental marks are embedded are counter-productive because they decrease citizen-control of government.

The tort of reverse passing off should be abolished. This conclusion stems from a combination of economic analysis, recognition of the disparate foundations of trade identity law versus creativity law (such as copyright and patent), realistic appraisal of product distribution, and an updated survey of existing case law. Trademark holders which desire a legally enforceable right for their marks to remain affixed to their goods downstream should be required to contract ex ante. Any likelihood of consumer deception caused by using another’s goods in an advertisement for one’s own goods should be addressed through false advertising claims. Reverse passing off should be eliminated as a distinct cause of action.

The academy is now emphasizing inter-disciplinary scholarship and decision-making, especially the use of science to guide legal and political policy. This approach has many strengths, however, some caution is also appropriate. Using inter-disciplinary sources, this article discusses four inter-related problems with the scientific solution to social problems. First, and most central, science is about means, not ends. Second, expertise is often applied beyond its relevant field. Third, non-experts have difficulty judging competing experts. Fourth, experts’ predictions are often wrong. The United States is presented as a horrible example of over-valuing expertise, specifically economic theory. In conditions of uncertainty, decision-makers are advised to prioritize people. Throughout, actors are reminded to keep a sense of proportion, i.e. is to recognize the humor of their own pretensions – Angels Can Fly Because They Take Themselves Lightly.

This is an updated version of the book chapter published in Brazil earlier in 2008. See that entry for additional information.

Despite the high value of advanced economic theory and the enviable wealth of the United States of America, developing countries should be very leery of making decisions based primarily on either economic theory or the example of the United States -- including the decision not to provide positive rights. My argument, however, is limited to undercutting these two attacks on positive rights. The possible existence of better paths to utopia is beyond both this article and my expertise.

An updated version of this paper is forthcoming in English, 3 Charleston L. Rev. (2008).

Students can gain experience in practical skills in substantive courses if professors spend the time to create appropriate projects. This article demonstrates by providing reproducible projects involving non-competition agreements, trademarks/trade dress, copyright, and patent. The article also explains the how projects can be expanded and how they can be transposed between counseling and litigation settings.

This paper is part of a symposium entitled “Reflections on Legal Education: How We Teach, How They Learn".

Comment on Ecommerce submitted to FTC suggesting an opt-in government program for finding web sites using consumer-friendly business practices

Comment to FCC on media ownership rules, 2002

Comment Submitted Jan. 2007 in Media Ownership Rules Docket.

Brief argues against copyright in enacted statutes which are identical in wording to privately authored model codes. Decision at 293 F.3d 791 (5th Cir. 2002) (en banc).

Brief argues against allowing extension of utility patent through trade dress protection. Opinion at 523 U.S. 23 (2001).

Brief argues that Lanham Act requires actual dilution. Opinion at 123 S. Ct. 1115 (2003). Congress amended statute to change requirement to mere likelihood of dilution.

Brief argues for allowing fair use defense in trademark despite existence of likelihood of confusion. Opinion at 125 S. Ct. 542 (2004).

Brief arguing against copyright protection for parts numbers. Opinion 258 F.3d 148 (3rd Cir. 2001); see also appeal after remand, 390 F.3d 276 (3rd Cir. 2004) (en banc).

Brief argues against allowing utility patents on plants reproduced from seed without a clearer statement by Congress. Decision at 534 U.S. 124 (2002).

This brief makes three aguments against copyright liability for Grokster. First, Petitioners’ request to close down offending technology is not supported by clear statutory authority. While the Court has power to create common law, in an area, such as this, where Congress has enacted detailed statutes, the Court’s common law power is minimal. Title 17 U.S.C. § 1201(c)(2) does not delegate authority for the Court to promulgate new common law. Second, In the absence of congressional action, the Copyright Clause of the Constitution sets the default position as a public right of access to copyrightable and patentable subject matter. The Clause’s core goal is the distribution of knowledge and technology to the general public. Petitioners’ request is in extreme tension with these constitutional basics. Petitioners ask the Court to limit lawful public access to copyrightable works by outlawing a multi-purpose distribution technology on which Petitioners do not hold a patent. Third, Petitioners are requesting this Court to go beyond Congress into an area of high constitutional uncertainty by creating patent rights without the constitutionally required quid pro quo, a nonobvious invention. Opinion at 125 S. Ct. 2764 (2005).

Brief argues that statutes passed subject to the Progress Clause (also known as the Intellectual Property Clause and the Copyright and Patent Clause) should be subject to an elevated standard of review. Decision 537 U.S. 186 (2003).

Brief argues that Constitution and public policy support a presumption against graniting injunctive relief to a patent holder who is not working the infringed patent. Decision 126 S.Ct. 1837 (2006).