ENTREPRENEURSHIP & LAW eJOURNAL
Sponsored by the Kauffman Foundation
"A Trademark Defense of the Disparagement Bar"
MICHAEL GRYNBERG, DePaul University - College of Law
The Lanham Act proscribes the registration of trademarks that consist of disparaging matter. In In re Tam, the Federal Circuit declared the disparagement bar to be unconstitutional viewpoint discrimination under the First Amendment. The fate of the disparagement bar is an urgent issue, for it is the basis of the effort to cancel trademark registrations belonging to the Washington football team.
This essay argues that the debate over the disparagement barâ€™s constitutionality is falsely cast as a conflict between principles of free expression and anti-discrimination to which trademark doctrine is an afterthought. This framing reinforces the perception that the disparagement bar is a form of viewpoint discrimination, for it treats the bar as disconnected from the traditional goals and mechanisms of trademark law.
In fact, the disparagement bar implicates more mundane issues of trademark policy that deserve fuller consideration than offered by In re Tam. Whatever the ability of the First Amendment to accommodate anti-discrimination policies external to trademark law, the disparagement bar also reflects principles internal to trademark law. More specifically, the disparagement bar manifests the traditional trademark policy that insists that would-be marks do a good job of performing the trademark function of source identification. Disparaging marks are just one of several categories of potential identifiers that fail this test. They may be excluded on that basis, without regard to the viewpoint embodied by any particular disparaging mark.
"Patent Licensing in the Presence of Trade Barriers"
The Japanese Economic Review, Vol. 67, Issue 3, pp. 329-347, 2016
KUANGâ€?CHENG ANDY WANG, Chang Gung University
CHINGâ€?CHIH TSENG, National Dong Hwa University
WENâ€?JUNG LIANG, National Dong Hwa University, National Taiwan University
We develop a twoâ€?country duopoly model to explore the optimal licensing contract for an outsider licensor in terms of fixedâ€?fee and royalty licensing by taking into account trade barriers when firms produce a homogeneous product and engage in Bertrand competition in each market. The present paper focuses on the interaction between licensing and trade barriers in two international markets. We show that both royalty and nonâ€?exclusive fixedâ€?fee licensing can be optimal. Furthermore, exclusive fixedâ€?fee licensing can be optimal, which is a result that is not discussed in the existing literature.
"Comment to the SEC in Support of the Enhanced Disclosure of Patent and Technology License Information"
COLLEEN V. CHIEN, Santa Clara University - School of Law
JORGE L. CONTRERAS, University of Utah - S.J. Quinney College of Law
CAROL A. CORRADO, The Conference Board, Georgetown University - Center for Business and Public Policy
STUART J.H. GRAHAM, Georgia Institute of Technology - Scheller College of Business
DEEPAK HEGDE, New York University (NYU) - Leonard N. Stern School of Business
ARTI K. RAI, Duke University School of Law, Duke Innovation & Entrepreneurship Initiative
SAURABH VISHNUBHAKAT, Texas A&M University School of Law, Duke University School of Law
Intangible assets like IP constitute a large share of the value of firms, and the US economy generally. Accurate information on the intellectual property (IP) holdings and transactions of publicly-traded firms facilitates price discovery in the market and reduces transaction costs. While public understanding of the innovation economy has been expanded by a large stream of empirical research using patent data, and more recently trademark information this research is only as good as the accuracy and completeness of the data it builds upon. In contrast with information about patents and trademarks, good information about IP licensing is much less publicly available. Although IP royalties provide large in-bound trade flows to the United States, remarkably little is known about the economic realities of IP transactions. But not only are licensing royalties economically impactful, but building a better understanding of how markets for technology operate in a modern, innovation economy is important for the transparency of markets, and to the public and policy-makers. Open data on innovation is currently siloed, fragmented, and unfederated across a number of repositories (some electronic and others physical) including the Administrative Office of the Courts, Secretary of State Offices, Copyright Office, IRS, USPTO, SEC, FDA, NSF, SBA and others, raising search and discovery costs and undermining the goals of open data. Data on â€ścomparablesâ€? tend to be thin in the industry, a situation that may offer a sub-optimal market environment for startup firms: these young entities often rely on selling intangibles, but have low bargaining power, and limited resources to invest in search and price discovery.
Disclosures of material licenses and intellectual property information to the SEC addresses a number of existing gaps, with the potential to play an expanded role. In fact, IP license information is not widely available to the public through any other federal agency, even in cases where the IP was federally funded. Thus the IP license information available through the SEC is an invaluable resource to the public. One major limitation with the existing SEC licensing information, however, is that it is often difficult to find and manipulate. An impediment arises since the data are not tagged or designed to be easily combined with other information sources. One of us, for example, has sought to determine which firms have SEC-registered patent licenses over a period of time for the purpose of establishing a public database of licenses obtained through FOIA requests. However, there is no straightforward way for the public to search for this information, in the SEC record or otherwise.
The overall thrust of our comments is to commend the SEC on the valuable disclosures its requirements encourage and to recommend preserving and augmenting, rather than diminishing them, in order to 1) produce more useful data and 2) reduce the costs of discovering and using existing data disclosed to the SEC. In many cases, an SEC requirement will not require reporting entities to create new information (e.g., when disclosing patents or licenses) but it will greatly reduce the costs to third parties of searching for this information.
"Profit, People, Planet, and Perversion: The Need for Attorney General Enforcement in Benefit Corporation Legislation"
MICHAEL HACKER, Boston College, Law School, Students
For-profit, social entrepreneurship is a growing movement. As a result, in recent years, legislation authorizing the incorporation of a new form of for-profit business corporation known as a â€śbenefit corporationâ€? has been signed into law in numerous states. In addition to generating profit for shareholders, benefit corporations must â€ścreateâ€? a â€śpublic benefit.â€? The requirement that a corporation support a humanitarian cause in addition to turning a profit is a significant departure from shareholder primacy â€” the idea that the sole purpose of a corporation is to make money. While this legislation is a progressive and needed evolution in U.S. corporate law, the current benefit corporation form includes only limited, toothless accountability and enforcement mechanisms. The current legislation does little to deter bad actors from taking advantage of socially conscious consumers willing to pay a premium for ethically sourced goods and services. This Note argues for the addition of attorney general oversight and enforcement in benefit corporation legislation in order to root out and deter the incorporation and marketing of sham benefit corporations.
About this eJournal
Sponsored by the Kauffman Foundation
This eJournal distributes working paper and accepted paper abstracts in subject matters that concern how the law, broadly conceived, impacts entrepreneurship, small business, growth companies, entrepreneurship within large companies, and innovation policy generally.
The eJournal welcomes research not only on topics of regulation and public policy, but also the law of contracts, contract design, and informal relationships and networks that affect entrepreneurs and may substitute for legal contracts. Topic areas include contract design, judicial interpretation and enforcement of contracts, corporate law, partnership law and choice of entity, family businesses, franchising and joint ventures, intellectual property and licensing, small business regulation, securities law, bankruptcy, and social responsibility and sustainability. The Journal welcomes submissions from scholars in finance, economics, sociology, and other disciplines as well as legal scholars.
Editor: Victor Fleischer, University of San Diego
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