Trade Mark Protection for Digital Goods

RESEARCH HANDBOOK ON INTELLECTUAL PROPERTY AND DIGITAL TECHNOLOGIES, Tanya Aplin, ed. (Edward Elgar Research Handbook Series 2020)

Notre Dame Legal Studies Paper No. 200312

22 Pages Posted: 20 Mar 2020

See all articles by Mark P. McKenna

Mark P. McKenna

Notre Dame Law School

Lucas Osborn

Campbell University Law School

Date Written: March 12, 2020

Abstract

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

Suggested Citation

McKenna, Mark P. and Osborn, Lucas, Trade Mark Protection for Digital Goods (March 12, 2020). RESEARCH HANDBOOK ON INTELLECTUAL PROPERTY AND DIGITAL TECHNOLOGIES, Tanya Aplin, ed. (Edward Elgar Research Handbook Series 2020); Notre Dame Legal Studies Paper No. 200312. Available at SSRN: https://ssrn.com/abstract=3553529

Mark P. McKenna (Contact Author)

Notre Dame Law School ( email )

P.O. Box 780
Notre Dame, IN 46556-0780
United States
(574) 631-9258 (Phone)

Lucas Osborn

Campbell University Law School ( email )

27603
United States
919-865-4673 (Phone)

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