Bullying and Opportunism in Trademark and Right-of-Publicity Law
32 Pages Posted: 2 Nov 2016 Last revised: 10 Nov 2016
Date Written: May 1, 2016
Lawyers, scholars, and even Congress have lately expressed concern about so-called “trademark bullies” — trademark holders that assert tenuous legal claims against vulnerable defendants, who often capitulate rather than incurring the expense and uncertainty of litigation. At the same time, we’ve witnessed right-of-publicity claims for acts that never would have raised an eyebrow a few decades ago. Complaints about bullying and overreaching are largely anecdotal rather than empirical, so it’s hard to gauge the extent of the behavior and to measure its costs. But the fact that it has attracted so much attention suggests a perception, at least, that some rights-holders are asserting unreasonable claims and chilling legitimate conduct.
This paper contends that certain structural and doctrinal features of trademark and right-of-publicity law enable and, in some cases, reward aggressive claiming. Although the two areas of law have different roots and distinct doctrinal formulations, they share some common features that may fuel grabby behavior by rights-holders. Given these structural and doctrinal features, it’s no wonder that rights-holders test the limits of their trademark and publicity rights in lawsuits, PTO practice, and cease-and-desist campaigns. Contrary to the oft-stated trope of trademark holders, they do not have to take aggressive positions against borderline conduct to avoid loss of their trademark rights. But they can obtain benefits from taking forceful positions, both in the immediate dispute and more generally. Whether we view them as bullies, opportunists, or rational profit-maximizers, rights-holders are responding to incentives and opportunities created by judges making substantive law.
This is not to condone or excuse those who assert untenable claims. The reality, however, is that few of the claims that critics cite as trademark bullying are untenable, under today’s permissive standards for infringement and dilution. And the same goes for right-of-publicity claims, even in the context of expressive works. While we might hope for voluntary restraint by rights-holders, the only way to ensure such restraint is to clarify boundaries and alter incentives. Commentators have suggested a variety of tools for shifting these incentives, and this Essay brainstorms about some more.
Keywords: trademark, trademark bullies, right of publicity, notice failure
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