On Saturday, October 19, I workshopped my forthcoming paper, Dividing Trademark Use, at the Trademark and Unfair Competition Scholarship Roundtable 2024 at Harvard Law School. The paper, which analyzes the implications for trademark law of the Supreme Court’s two recent decisions in Jack Daniel’s Properties, Inc. v. VIP Products LLC and Abitron Austria GmbH v. Hetronic International, Inc., is forthcoming in the Columbia Journal of Law and the Arts.
Professional News
New Paper Alert: “Dividing Trademark Use”
I’m happy to announce that my most recent new paper, “Dividing Trademark Use,” will be published in the Columbia Journal of Law and the Arts. The full paper is now available in draft on SSRN. Here’s the abstract:
The trademark law of the United States places special emphasis on whether and how a trademark is used in commerce. But over the long history of the Lanham Act—including some less-than-careful drafting by Congress and some aggressive acts of interpretation by the federal courts—the concept of “use” has become complicated and in many ways confused. Two recent Supreme Court cases—Jack Daniel’s Properties, Inc. v. VIP Products LLC and Abitron Austria GmbH v. Hetronic International, Inc.—reflect and in some ways exacerbate that confusion. But the opinions in these cases also expose an interesting property of “use” in trademark law that has not been deeply examined in the caselaw or the academic literature. That property is that the use of a trademark can be divided among multiple agents with respect to a single product or service. The potential for divided use raises issues of secondary responsibility that trademark law has never comprehensively addressed. This Article catalogues the various notions of “use” in trademark law, shows how Jack Daniel’s and Abitron destabilize these notions, and applies principles of secondary responsibility to attempt to reconcile those cases with other contentious areas of trademark doctrine under the framework of divided use.
Comments welcome.
The Lawprofs Mastodon Instance – A Call for Community Volunteers
Over the past month, as the user experience on Twitter changed under new management, millions of people have migrated to the decentralized social media platform Mastodon. About three weeks ago, in an effort to facilitate that transition for my own professional community, I set up a Mastodon “instance,” or server, specifically for legal academics: the Lawprofs Mastodon Instance. I’m not an experienced sysadmin, so there were a couple of bumps along the way, but the server is now running smoothly with over 300 user accounts and rising. The earliest rapid growth phase, during which I’ve acquired and configured the necessary back-end resources to host the instance and give it room to grow, is coming to a close, and I think it’s time to take a more mindful approach to the governance of this community. So I’m issuing a call for volunteers to help set up policies and governance structures to sustain the community for the long term.
This is not (yet) a request for financial support. The costs (in money) of running the Lawprofs instance are modest, and I am happy to continue bearing them until more permanent governance and funding institutions can be established. There may be a time when Lawprofs members are asked to contribute financially to the running of the instance, but now is not that time. Rather, I am calling on the expertise of our community members to help transition the instance from my own personal project into a self-sustaining, self-governing community. The expertise needed lies in several areas. If you have expertise in any of these areas and are willing to give a little of your time to help the Lawprofs community lay its foundations, please contact me:
- Entity Formation, Governance, and Funding: At present the Lawprofs instance is, in essence, a group of accounts in my name at various online service providers based on the East Coast of the United States. Apart from the possibility of personal liability that I would like to avoid, this arrangement gives me sole authority and responsibility for managing the instance, which is not a role I have any desire to maintain. So we need some help either standing up appropriate legal entities to take responsibility for managing and funding the instance (and ensuring general legal compliance), or else we need to find a hybrid solution (such as the Open Collective project used by the journa.host Mastodon instance, or an institutional home in the legal academy or one of its governing bodies) to manage those aspects of the community’s existence. We will also need people willing to take responsibility for contributing to the management of the instance going forward.
- Content Moderation: I set out a list of basic rules concerning content on the site when I founded the instance, and I defederated a number of notoriously abusive instances at the outset based on my own quick review of the #FediBlock list and the mastodon.social moderated server list. But as the community matures and forms connections with other instances we may want to revisit those choices, and we will need a more well-thought-through set of rules governing permissible and impermissible content on the site. We will also need volunteers to apply those rules when posts, users, or instances get flagged for moderation. (To give a sense of the scope of this task, we have had exactly two requests for moderation in the first three weeks of the instance’s existence; one involving a post by a member of our instance, and one involving an impersonation account on another instance). This aspect of community governance particularly requires evaluation from diverse perspectives, and I am hopeful that we will receive input from Lawprofs of various backgrounds on questions of content moderation.
- Privacy Policy: Our privacy policy is currently the off-the-rack policy that is distributed with the Mastodon server software. It’s a fine standard privacy policy, but there may be issues that it does not cover, or that our community might want to address differently. Because our servers are based in the United States but serve accounts all over the world, this is an issue where input from Lawprofs from different jurisdictions will be especially helpful.
- Intellectual Property (IP) Policy: One of the first steps I took upon founding the instance was to register as a DMCA agent and set up a Section 512 notice form to insulate myself from liability for copyright infringement by users who post on the instance (or whose posts on other instances are stored on our server). This is obviously primarily a US-oriented solution, and incomplete as a matter of IP policy (it does not, for example, establish in advance a policy governing repeat infringers). We must develop and implement more comprehensive IP policies to reduce the risk of liability for IP infringement in all the jurisdictions that might take an interest in activities by our users.
- Protection Against Child Exploitation: This is not an issue I expect to require much attention given the user base of our instance, but we should develop policies and procedures to deal with the possibility that material posted on our instance (or stored on our server after being posted on other instances) might violate laws against child exploitation or trigger reporting requirements under those laws.
- Other Terms of Service/Fair Trade Practices Issues: There may be other terms or disclosures that an online service provider such as Lawprofs would be well-advised to include in its governing policies. Lawprofs with expertise in online terms of service in various jurisdictions could be a big help in raising issues that aren’t already addressed elsewhere.
- Back-End Management/Technical Expertise: Anyone with experience running a web server or with expertise on data security and best practices for a social media site could be a big help in sharing admin responsibilities with me for the servers themselves.
- Membership Policies: I have developed a basic set of membership policies for the Lawprofs instance over time as people have asked to register accounts, both to maintain the thematic focus of the community and to manage costs and the strain on back-end resources. The community may wish to change these policies going forward. For present purposes, I have adopted four rules-of-thumb:
- Members should generally be full-time legal academics; an affiliation (though not necessarily a permanent affiliation) with a law faculty must be provided and verified as a precondition of registration.
- Adjunct faculty may register but are advised to first consider registering with other law-oriented instances that might be better suited to legal professionals who also happen to teach (such as legal.social, law.builders, and esq.social).
- Graduate students and recent graduates may not register unless they are already in a full-time post-degree program such as a teaching or research fellowship or Visiting Assistant Professorship.
- Non-faculty staff at law schools and faculties may not register accounts, but institutions themselves (schools, departments, centers, etc.) may do so, and institutional accounts may be managed by non-faculty staff.
Those are the issues where the Lawprofs community can use your help. Again, if you think you have relevant expertise on any of these issues, and are willing to give a little of your time to help set the community up for the long term, please contact me.
In the meantime, you can find me on Mastodon.
The Canada Trademarks Dataset
I’m happy to announce the publication (on open-access terms) of a new dataset I’ve been constructing over the past few months. The Canada Trademarks Dataset is now available for download on Zenodo, and a pre-publication draft of the paper describing it (forthcoming in the Journal of Empirical Legal Studies) is available on SSRN.
As I’m not the first to point out, doing any productive scholarly work during the pandemic has been hard, especially while caring for two young kids and teaching a combination of hastily-designed remote classes and in-person classes under disruptive public health restrictions. I have neglected other, more theoretical projects during the past year and a half because I simply could not find the sustained time for contemplation and working out of big, complex problems that such projects require. But building a dataset like this one is not a big complex problem so much as a thousand tiny puzzles, each of which can be worked out in a relatively short burst of effort. In other words, it was exactly the kind of project to take on when you could never be assured of having more than a 20 minute stretch of uninterrupted time to work. I’m very grateful to JELS for publishing the fruits of these fleeting windows of productivity.
More generally, the experience of having to prioritize certain research projects over others in the face of external constraints has made me grateful that I can count myself among the foxes rather than the hedgehogs of the legal academy. Methodological and ideological omnivorousness (or, perhaps, promiscuity) may not be the best way to make a big name for yourself as a scholar–to win followers and allies, to become the “go-to” person on a particular area of expertise, or to draw the attention of rivals and generate productive controversy. But it does help smooth out the peaks and troughs of professional life for those of us who just want to keep pushing our stone uphill using what skills we possess, hopeful that in the process we will leave behind knowledge from which others may benefit. That’s always been my preferred view of what I do for a living anyway: Il faut cultiver notre jardin.
Now In Print: Legal Sets
Published Version Available Here
Tenure has its privileges.
Three years ago, I posted on this site that I had spent the year prior working up a lengthy, dense draft of a deeply theoretical piece that had grown out of my noodling over a relatively small doctrinal question in trademark law. This draft was well outside of my usual wheelhouse: technical, philosophical, and abstract. It marked the beginning of what has now become a sharp pivot in my scholarly career, into more self-consciously philosophical investigations of the rules we impose on the creation and dissemination of knowledge.
Initially journals reacted coolly–which I can’t fault them for; the piece is long by law review standards and the framework is more technical and less accessible than standard law review fare. I took some time to get feedback from more accomplished legal theorists than myself, I revised the draft, and ultimately it found a home at the Cardozo Law Review, whose student editors worked hard to improve the piece and have now published Legal Sets in their June 2019 issue (which includes a number of other interesting pieces). All told, that means this project took four years to move from the question that first got me working on it to a final, published article. I am deeply cognizant of the tremendous privilege I enjoy in being able to earn a living by dedicating such a significant chunk of my life to this type of work, and I hope I’m making good on that privilege.
This is the kind of work–and the kind of departure from familiar subjects and methods–that I never would have attempted pre-tenure. The risk of failure was great; the opportunity costs were high, and the need to produce measurable outputs to get me through the next gate on my career path was too pressing. But you know, at the risk of tooting my own horn, I think this article is pretty good, and despite its theoretical cast I think it makes a real contribution to a sounder understanding of how law works in practice. So I come away from the experience of writing this piece with a renewed gratitude for the privilege of academic freedom and job security, and a renewed sense that the general absence of such freedom and security from our economy (outside of the shrinking rarefied precincts of the tenure-track academy) is almost surely holding our society back from its full potential.
Jefferson’s Taper at IPSC 2018 (Berkeley)
In researching my in-progress monograph on value pluralism in knowledge governance, I made a fascinating discovery about the history of ideas of American intellectual property law. That discovery is now the basis of an article-length project, which I am presenting today at the annual Intellectual Property Scholars Conference, hosted this year at UC Berkeley. The long title is “Jefferson’s Taper and Cicero’s Lumen: A Genealogy of Intellectual Property’s Distributive Ethos,” but I’ve taken to referring to it by the shorthand “Jefferson’s Taper.” Here’s the abstract:
This Article reports a new discovery concerning the intellectual genealogy of one of American intellectual property law’s most important texts. The text is Thomas Jefferson’s 1813 letter to Isaac McPherson regarding the absence of a natural right to property in inventions, metaphorically illustrated by a “taper” that spreads light from one person to another without diminishing the light at its source. I demonstrate that Thomas Jefferson directly copied this Parable of the Taper from a nearly identical parable in Cicero’s De Officiis, and I show how this borrowing situates Jefferson’s thoughts on intellectual property firmly within a natural law tradition that others have cited as inconsistent with Jefferson’s views. I further demonstrate how that natural law tradition rests on a classical, pre-Enlightenment notion of distributive justice in which distribution of resources is a matter of private beneficence guided by a principle of proportionality to the merit of the recipient. I then review the ways that notion differs from the modern, post-Enlightenment notion of distributive justice as a collective social obligation that proceeds from an initial assumption of human equality. Jefferson’s lifetime correlates with a historical pivot in the intellectual history of the West from the classical notion to the modern notion, and I argue that his invocation and interpretation of the Parable of the Taper reflect this mixing of traditions. Finally, I discuss the implications of both theories of distributive justice for the law and policy of knowledge governance—including but not limited to intellectual property law—and propose that the debate between classical and modern distributivists is more central to policy design than the familiar debate between utilitarians and Lockeans.
Valuing Progress: Forthcoming 2018 from Cambridge University Press
I’m very pleased to announce that the book project I have been plodding away at for over two years is now under contract with Cambridge University Press. Its working title is Valuing Progress: A Pluralist Approach to Knowledge Governance. Keep an eye out for it in late 2018, and tell your librarian to do likewise!
Bits and pieces of Valuing Progress have appeared on this blog and elsewhere as it has developed from a half-baked essay into a monograph-sized project:
- I presented my first musings about the relationship between normative commitments regarding distribution and the choice of a knowledge-governance regime as the opening plenary presentation at IPSC in Berkeley–these musings will now be more fully developed in Chapter 4 of the book: “Reciprocity.”
- My exploration of our obligations to future persons, and the implication of those obligations for our present-day knowledge-governance policies, used analogous arguments in environmental policy as an early springboard. Deeper consideration of our obligations to the future led me to Derek Parfit’s Non-Identity Problem, at first through the lens of public health policy. Because knowledge governance–like environmental stewardship and global health policy–is a cooperative social phenomenon spanning timescales greater than any single human lifetime, the problem of future persons is one any theory of knowledge governance must engage. I made my first effort to do so at the 2015 Works-In-Progress in Intellectual Property (WIPIP) Conference at the University of Washington, and presented a more recent take at NYU’s 2017 Tri-State IP Workshop. My fuller treatment of the issue will appear in Chapter 7 of Valuing Progress: “Future Persons.”
- Finally, the driving theoretical debate in IP lately has been the one between Mark Lemley, champion of consequentialism, and Rob Merges, who has lately turned from consequentialism to nonconsequentialist philosophers such as Locke and Rawls for theoretical foundations. My hot take on this debate was generative enough to justify organizing a symposium on the issue at the St. John’s Intellectual Property Law Center, where I serve as founding director. I was gratified that both Professors Lemley and Merges presented on a panel together, and that I was able to use the opportunity to more fully introduce my own thoughts on this debate. My introduction to the symposium issue of the St. John’s Law Review forms the kernel of Chapter 2 of Valuing Progress: “From Is to Ought.”
Other chapters will discuss the incommensurability of values at stake in knowledge governance, the relevance of luck and agency to our weighing of those values, the widening of our moral concern regarding the burdens and benefits of knowledge creation to encompass socially remote persons, and the role of value pluralism in shaping political institutions and ethical norms to reconcile these values when they inevitably conflict. The result, I hope, will introduce my colleagues in innovation and creativity law and policy to a wider literature in moral philosophy that bears directly on their work. In doing so, I hope to help frame the distinction between–and the appropriate domains of–empirical and normative argumentation, to point a way out of our increasingly unhelpful arguments about 18th-century philosophy, and to introduce a more nuanced set of normative concerns that engage with the messiness and imperfection of human progress.
I am extremely grateful to everyone who has helped me to bring Valuing Progress to this important stage of development, including Matt Gallaway at CUP, the organizers of conferences at which I’ve had the opportunity to present early pieces of the project (particularly Peter Menell, Pam Samuelson, Molly Shaffer Van Houweling, and Rob Merges at Berkeley; Jennifer Rothman at Loyola of Los Angeles; Jeanne Fromer and Barton Beebe at NYU; Zahr Said at the University of Washington; Irina Manta at Hofstra; and Paul Gugliuzza at Boston University). I am also grateful for the support of St. John’s Law School, my dean Mike Simons, and my colleagues who have served as associate dean for faculty scholarship as this project has been in development: Marc DeGirolami and Anita Krishnakumar. Many more friends and colleagues have offered helpful feedback on early drafts and conversation about points and arguments that will find their way into the manuscript; they can all expect warm thanks in the acknowledgments section of the finished book.
But first, I have to finish writing the thing. So, back to work.
Going to Tokyo: I’ve Been Appointed an “Invited Researcher” by Japan’s Institute of Intellectual Property
I’m very excited to announce that the Institute of Intellectual Property in Tokyo has invited me to participate in its Invited Overseas Researcher Program this coming summer. Under an agreement with the Japan Patent Office, each year IIP invites a small number of foreign researchers to come to Tokyo to study Japan’s industrial property system. (Past researchers can be found here.) I’ll be spending several weeks in Tokyo this summer doing empirical research into Japan’s trademark registration system (as a foundation for the kind of work discussed in this post). Many thanks to Kevin Collins (who did this program last year) for flagging this opportunity, and to Barton Beebe, Graeme Dinwoodie, and Jay Kesan (also a previous participant in the IIP program) for their support.
