Trade Mark Protection for Digital Goods
RESEARCH HANDBOOK ON INTELLECTUAL PROPERTY AND DIGITAL TECHNOLOGIES, Tanya Aplin, ed. (Edward Elgar Research Handbook Series 2020)
22 Pages Posted: 20 Mar 2020
Date Written: March 12, 2020
A number of recent US cases involve attempts by authors or publishers of creative works to use trade mark or unfair competition law to control the reproduction or use of those works. For example, consider a movie the copyright protection for which has lapsed. Can the creator of the movie claim that copiers of the film commit trade mark infringement by including in their copies some content that appears in the original movie – perhaps the movie studio’s logo, or a famous scene? Or consider a website that allows artists to upload and offer for sale digital models of various goods where the models include recognisable designs and/or logos. Does the website operator commit trade mark infringement simply by distributing the digital files, from which someone might print a physical good that bears the trade mark?
These sorts of claims raise important questions about the boundaries of different forms of intellectual property, particularly the distinctions between trade mark, copyright, and design laws. In this chapter, we describe US courts’ approaches to these cases, particularly in light of the US Supreme Court decision in Dastar Corp. v. Twentieth Century Fox Film Corp . We then turn to the European experience, which is surprisingly thinner. We offer some hypotheses for the relative lack of these cases in Europe.
Keywords: trademark, copyright, design, unfair competition, digital, comparative
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