Forthcoming talks on Trade Mark History by Prof. Dev Gangjee on 22 November, and on Empirical Methods by Prof. Ian Ayres and Dr Xiyin Tang with commentator Prof. Paul Heald on 6 December
We are delighted to announce the forthcoming online events for The CREATe Trade Mark Seminar Series, Autumn 2023. Both talks are from 5.30pm to 6.30pm UK time. Full details, including abstracts and biographies, can be found below.
The CREATe Trade Mark Seminar Series comprises two on-line talks about trade mark law each term: one on trade mark history, and one on innovative methodologies in trade mark research.
The Series was launched in Spring 2022, with talks from Dr Jennifer Davis (University of Cambridge) on nineteenth century trade mark history, an interdisciplinary team from NYU – Prof. Barton Beebe, Dr Roy Germano, Prof. Christopher Jon Sprigman and Prof. Joel H. Steckel – on experimental methods. It has since also included presentations about trade marks and empirical methods by Prof. Florent Thouvenin (University of Zurich) and Daniel Gerber (University of Basel), and talks about trade mark history by Prof. Oren Bracha (University of Texas), Jose Bellido (University of Kent) and Prof. Kathy Bowrey (University of New South Wales), and Elena Cooper (CREATe) and Prof. David Higgins (Newcastle University Business School) with commentator Prof. Alison Firth (University of Surrey).
Zoom links for the seminars will be emailed a few days before the events to all on The CREATe Trade Mark Seminar Series mailing list. There is no need to RSVP. To join the mailing list, please contact Elena Cooper: elena.cooper@glasgow.ac.uk
SEMINAR 1: TRADE MARK HISTORY
Time and place: Wednesday 22 November 2023, 5.30pm-6.30pm, UK time, online.
Speaker: Prof. Dev Gangjee, University of Oxford.
Chair: Dr Elena Cooper, CREATe.
Title: A Distinctive Absence: Registrable Trade Marks in 1875.
Abstract: Distinctiveness is a foundational concept in contemporary trade mark law. This chapter reconstructs the origins of this concept, in the UK’s first trade mark registration system established in 1875. In so doing, it makes three contributions.
First, it retrieves a model of distinctiveness which was differential or relational. The extent to which a sign being claimed was different from others on the market improved its chances of registrability for a given product. By contrast, whether a sign worked factually to indicate origin was irrelevant. In other words, for new marks, source indicating ability was approached via differential distinctiveness. Second, this account explains the architectural choices and key features of this first register. Registration was layered over a judicially developed model based on prior and exclusive user of a sign on a vendible product. Use was at the heart of this model, not only for recognising rights to the sign but also for defining their scope. However, proving use was inconvenient and expensive. The proposed remedy was a formal means of readily evidencing title. Registration became a substitute for actual use, allowing marks to be claimed in the abstract and across the entirety of the British market. This chapter explores the implications of this radical move as well as the accompanying bureaucratic apparatus to achieve it, reconstructing the origins of the first goods classification system adopted by the registry. Third, it explains why the very restrictive “essential particulars” model was adopted in the 1875 Act, forcing registrable marks into tightly defined formats. With rights now being granted without use-based contextual limits, other checks and balances were required. Before 1875, courts had recognised a wide range of indicia as being protectable in specific contexts. By contrast, section 10 was designed as a bottleneck, such that the registry would accept only certain unobjectionable categories of new marks. Notably, words per se were excluded. However, this rapidly generated strains within the system, since words proved to be attractive marks and effective origin indicators in practice.
With the benefit of hindsight, an account of the origins of the first British trade mark registration system serves as a reminder that from its inception, the decision to register a mark has called for a blend of empirical and normative decision-making. Trade mark registries have always been in the business of allocating property rights to applicants. We have moved from the high barriers of the first regime to the low thresholds of contemporary registration. Perhaps the conclusion to draw from these two extremes is that refining the scope of marks after they are registered may be the best way forward.
Biography: Dev Gangjee is Professor of Intellectual Property Law at the University of Oxford. This paper on the history of distinctiveness in the 1875 Act forms part of a wider exploration of distinctiveness in contemporary trade mark law.
Dev’s research focuses on Intellectual Property (IP), with a special emphasis on Branding and Trade Marks, Geographical Indications and Copyright law. Thematic research interests include the history and political economy of IP, collective and open innovation, the significance of registration for intangibles and rights in data. He has acted in an advisory capacity for national governments, law firms, international organisations and the European Commission on IP issues. Besides IP, Dev has teaching interests across private law, including contract, land and tort law. He is a visiting professor at the Munich Intellectual Property Law Centre, having taught on their LLM programme since 2010. He has held visiting fellowships at the Institute of Intellectual Property in Tokyo (2005), the IP Research Institute of Australia at UNSW (2010) and Hong Kong University (2018). Dev is presently Director of the Oxford IP Research Centre (OIPRC). He serves on the Editorial Boards of the Modern Law Review, Queen Mary Journal of Intellectual Property and the open access journal Laws.
SEMINAR 2: INNOVATIVE METHODOLOGIES IN CURRENT TRADE MARK RESEARCH
Time and place: Wednesday 6 December 2023, 5.30pm to 6.30pm, UK time, online.
Speakers: Prof. Ian Ayres, Yale Law School, and Dr Xiyin Tang, UCLA School of Law.
Commentator: Prof. Paul Heald, University of Illinois School of Law.
Chair: Dr Xiaoren Wang, CREATe Fellow/University of Dundee.
Title: Consumer Expropriation of Aesthetically Functional Trade Dress: Results from an Aesthetically Randomised Experiment.
Abstract: Trade dress, as a subset of trademark law, can offer potentially perpetual protection to a product’s design or packaging features if they aid consumers in identifying a product’s source. Yet these protected design features might be valued by consumers not only because of their source identifying function, but also because consumers find the design or package features beautiful, independent of the goodwill generated by the producer. Thus, under the doctrine of aesthetic functionality, manufacturers who produce red-soled shoes or whiskey with a melted wax seal might gain what courts have called a “non-reputation-related” competitive advantage, ultimately warranting the expropriation of the protected product feature into the public domain.
We argue that courts, in assessing questions of aesthetic functionality, should give particular weight to surveys asking consumers whether they would be better off if competitors were allowed to use a protected trade dress feature in their own products. Just as, under the doctrine of genericide, consumers are able to expropriate word marks if consumers find it more beneficial to associate the language feature of the trademark with competitors’ products, consumers should also be able to expropriate trade dress rights of a particular manufacturer if they find it more beneficial to have these design and packaging features available to the manufacturer’s competitors. Creating a genericide analog for cancelation of trade dress can further trademark’s central goal of protecting consumer welfare.
Our Article reports “proof of concept” results of our proposed consumer surveys with regard to seven different forms of existing trade dress—including not only Louboutin’s red-soled shoes and Maker’s Mark’s red-drip wax seal, but also Gucci’s famous “diamond motif” and Emeco’s Navy chair. We implement our surveys as a between-subject randomized experiment that allows us to causally estimate the intensity of consumer preferences as well as the impact of “guiding” subjects on the likely consequences of forgoing trade dress protection. Our results, while at best suggestive, found that judicial assessments of functionality were often not predictive of consumer protection preferences. For example, a statistically significant majority indicated they would be better off if other manufacturers were allowed to produce Emeco’s Navy chair design, notwithstanding a contrary judicial holding. We also found that large consumer majorities chose to protect two iconic Veblen goods: the Louboutin shoe and the Gucci Diamond Motif, even when informed that such protection would likely lead to higher prices—indicating a desire to preserve trade dress’ power to sustain social distinction.
Biographies:
Ian Ayres is a lawyer and an economist. They are the Oscar M. Ruebhausen Professor & Deputy Dean at Yale Law School, and a Professor at Yale’s School of Management. Ian has published 12 books (including the New York Times best-seller, Super Crunchers) and over 100 articles on a wide range of topics. They are the author of several empirical studies: Does Affirmative Action Reduce the Number of Black Lawyers?, 57 Stanford Law Review 1807 (2005) (with Richard Brooks); To Insure Prejudice: Racial Disparities in Taxicab Tipping, 114 Yale Law Journal 1613 (2005) (with Fred Vars and Nasser Zakariya); A Separate Crime of Reckless Sex, 72 University of Chicago Law Review 599 (2005) (with Katharine Baker); Shooting Down the More Guns, Less Crime Hypothesis, 55 Stanford Law Review 1193 (2003) (with John J. Donohue III); Measuring the Positive Externalities from Unobservable Victim Precaution: An Empirical Analysis of Lojack, 113 Quarterly Journal of Economics 43 (1998) (with Steven D. Levitt); Pursuing Deficit Reduction Through Diversity: How Affirmative Action at the FCC Increased Auction Competition, 48 Stanford Law Review 761 (1996) (with Peter Cramton); A Market Test for Race Discrimination in Bail Setting, 46 Stanford Law Review 987 (1994) (with Joel Waldfogel); and Racial Equity in Renal Transplantation: The Disparate Impact of HLA-Based Allocation, 270 Journal of American Medical Association 1352 (1993) (with Robert Gaston, Laura Dooley and Arnold Diethelm). Their two most cited law review articles are Fair Driving: Gender and Race Discrimination in Retail Car Negotiations, 104 Harvard Law Review 817 (1991) and Filling Gaps in Incomplete Contracts: An Economic Theory of Default Rules, 99 Yale Law Journal 87 (1989) (with Robert Gertner).
Xiyin Tang is an Assistant Professor of Law at the University of California, Los Angeles, where she writes and teaches on copyright, trademark, and intellectual property law. Tang’s research focuses on the roles that technological evolution and new modes of dissemination play in the law of intellectual property. Her publications have appeared or are forthcoming in the Columbia Law Review, Michigan Law Review, Iowa Law Review, and Yale Law Journal, among others. She has previously served as a lead counsel for Facebook and an associate at Mayer Brown LLP and Skadden Arps Slate Meagher & Flom LLP, where she worked on a variety of transactional and litigation matters in the technology, media, and entertainment sectors.
Paul Heald, the Albert J. Harno and Edward W. Cleary Chair in Law, joined the University of Illinois College of Law faculty in 2011 after 22 years at the University of Georgia School of Law, where he was the youngest faculty member in the law school’s history to be named to a chaired position. He is also a fellow and associated researcher at CREATe, University of Glasgow. He spent much of 2018 as an Erskine Fellow in the Economics Department of the University of Canterbury, Christchurch, New Zealand, and as a Research Fellow at the Stellenbosch Institute for Advanced Study in South Africa. Recent publications have focused on economic aspects of the public domain, and theoretical papers on optimal patent remedies, the role transaction costs in patent law, and the problem of patent pricing as well as empirical studies on best-selling fiction and musical compositions and the behaviour of famous trademarks in product and service markets.