The Exclusive Right to Customize?

89 Pages Posted: 30 Jan 2022 Last revised: 17 Nov 2023

See all articles by Mark A. Lemley

Mark A. Lemley

Stanford Law School

Sari Mazzurco

Southern Methodist University - Dedman School of Law

Date Written: January 28, 2022

Abstract

Artists, political commentators, and even multinational corporations are increasingly taking existing branded products and modifying them – sometimes to comment on the underlying product, sometimes to make a political or artistic statement unrelated to that product, sometimes to make them look fancier than they are, and sometimes for their own advertising purposes. As ornamenting and customizing existing products has shifted from a personal hobby to a business model, trademark owners have begun to insist that they have the exclusive right to control the appearance of products associated with them or that prominently bear their logos. We call this assertion a claim that there should be an exclusive right to customize.

This is a new problem for trademark law. Trademark law doesn’t lack for doctrines designed to tackle related problems. Indeed, the problem may be that it has too many doctrines that could potentially be brought to bear. Many of these doctrines point in different directions or apply poorly to common forms of customization.

We lay out the approach courts should take to evaluate claims to an exclusive right to customize. We also recommend two modifications to trademark doctrine to broadly protect customization from trademark law without undermining trademark causes of actions against its pernicious forms.

Keywords: Trademarks, Trademark infringement, Trademark law, Customization, Aftermarket customization, First sale doctrine

Suggested Citation

Lemley, Mark A. and Mazzurco, Sari, The Exclusive Right to Customize? (January 28, 2022). 103 B.U. L. Rev. 385 (2023), SMU Dedman School of Law Legal Studies Research Paper No. 623, Available at SSRN: https://ssrn.com/abstract=4020549 or http://dx.doi.org/10.2139/ssrn.4020549

Mark A. Lemley (Contact Author)

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

Sari Mazzurco

Southern Methodist University - Dedman School of Law ( email )

P.O. Box 750116
Dallas, TX 75275
United States

HOME PAGE: http://smu.edu/Law/Faculty/Profiles/Mazzurco-Sari

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