Category: Intellectual Property


Princess Diana’s Nonexistent Right of Publicity

Today I attended a lecture by Mark Roesler, one of the leading right of publicity attorneys in the country and an alum of the law school where I teach. The lecture was quite interesting, and one thing I learned that I did not know is that Princess Diana no longer has a valid right of publicity.  (Since we are at the 20th anniversary of her death, I thought this was a good time to address this point.)

At the time of Diana’s death, the UK did not recognize a post-mortem right of publicity. An attempt by the charity set up by Diana’s estate to enforce a publicity right in the United States was rejected by the Ninth Circuit in 2002 and led to a settlement that cost the estate a considerable sum in attorney’s fees. The charity shut down in 2012, and at this point there is no active effort to revive her publicity claims. As a result, anyone can pretty much slap her face or name on merchandise, as a Google search shows.

Whether this is a good or bad outcome I leave to your considered judgment.


Additional Thoughts on Star Athletica

I mentioned last week that I did not think highly of the Supreme Court’s opinion in the “cheerleader uniform” copyright case. Let me explain why and then make some observations about how the case may be received by the lower courts.

My problem with the opinion is that it approaches the question in a formal (dare I say wooden) way. Aside from the comment in its first paragraph that the “line between art and industrial design, however, is difficult to draw,” the Court spends virtually no time considering the practical aspects of the case or the relationship between product design and intellectual property.  For instance, there is no discussion about how the fashion industry works, no discussion of the role that trademarks play in clothing, and no discussion about how design patents should relate to useful article copyrights other than the brief thought that they are not mutually exclusive. In other words, the difficulty that the Court identifies (and that everyone else knows about) is not actually addressed in the opinion. This does not breed confidence that the holding will stand the test of time.

One potential saving grace is that the Court expressed no opinion on the question of whether the cheerleader design was sufficiently original to merit copyright protection under Feist. Until now, Feist has pretty much been the only case that held something not copyrightable for its lack or originality. If courts start getting more design copyright claims invoking Star Athletica, they may take up Justice Breyer’s view in dissent that some of these clothing designs are obvious. I’m not sure that would be a great development, but the pressure in that direction could be hard to resist. (Along similar lines, I wonder if more of these designs might get classified as trade dress.)


No Cheers for Star Athletica

Yesterday the Supreme Court issued its decision in Star Athletica LLC v. Varsity Brands, Inc., which addressed the issue of conceptual separability in copyright for useful articles (in this case, cheerleading uniforms). I’ll post about the opinion in greater detail later today or tomorrow, but for now I want to say that this is a mess of an opinion that is bound to cause a lot of confusion.


11 Reasons Not To Enforce Your Trade Secret

Colonel_Sanders_Rapstar-1I’m strangely fascinated by the recent “revelation” about Colonel Sanders’ secret recipe for Kentucky Fried Chicken. His nephew showed a journalist a handwritten list that was left behind by Sanders’ second wife that listed 11 herbs and spices in specific proportions.  Yum Brands, which owns KFC, denies that this is the secret recipe.

This situation exposes a basic problem in trade secret law, which is that the available remedies are often pretty inadequate. Suppose this is the secret recipe.  Suing Sanders’ nephew will not get you much in damages–he’s not wealthy.  You can’t get an injunction–the information is out.  Maybe the only thing you can do is pretend that this is not the real recipe and not bring an enforcement action at all. (Granted, you can say that the real value of KFC is in its brand rather than its secret recipe, so a revelation like this actually causes little or no harm, but I’m not sure Yum thinks so.)

More broadly, trade secret law suffers from the problem that the owner of the information really needs an ex ante remedy akin to a prior restraint.  Once the secret information is out, there’s not much that can be done. Acting before that happens, though, is often impossible or requires keen anticipation skills. Perhaps this is why, as a practical matter, confidential information is protected more effectively through physical security measures, extra compensation, etc.


UCLA Law Review Vol. 63, Issue 1

Volume 63, Issue 1 (January 2016)

Navigating Paroline‘s Wake Isra Bhatty 2
Regional Federal Administration Dave Owen 58
Exhausting Patents Wentong Zheng 122



Post-Deportation Remedy and Windsor‘s Promise Kate Shoemaker 168
Forget Congress: Reforming Campaign Finance Through Mutually Assured Destruction Nick Warshaw 208

Copyright on a Useful Article

I want to discuss a major copyright case that the Court added to its docket for the Fall.  The question presented in Star Athletica, LLC v. Varsity Brands, Inc. is “What is the appropriate test to determine when a feature of a useful article is protectable under section 101 of the Copyright Act?” This is an issue that has long vexed the circuit courts and is exactly the type of case that the Court should be taking while it’s a man down.

Here is the problem.  Copyright law says that functional/useful items generally cannot get protection. This makes sense because they are only supposed to get patents given the costs that exclusive rights in those sorts of products impose. But what if something has both functional and aesthetic features? Take a belt buckle.  It is functional in the sense that it holds up your pants.  But a jeweled belt buckle might well be an adornment that is more properly considered artistic and thus copyrightable.  How do you know?

Courts have put forward several possible tests.  One says that the issue is whether the item is primarily aesthetic or functional.  Another looks to the intent of the designer.  A third simply considers the totality of the circumstances. A fourth suggests that the aesthetic aspect must be “conceptually separable” from the functional one and able to stand on its own as a work.  And so on.

Read More


Federal Trade Secret Law

I just wanted to note that Congress has passed a new federal trade secret remedy, which the President intends to sign into law.  Who says that nothing gets done in Washington.  (Though I doubt that this is a good move.)  The Act does not preempt state trade secret law, so it remains to be seen how much of a role the new federal remedy will have.


Federal Trade Secret Protection

Yesterday the Senate unanimously passed a statute creating a federal cause of action for the violation of trade secret.  I do not know what the prospects are for this legislation in the House, but I want to express my opposition to the bill.

In general, I take a dim view of federal statutes that seek to take over regulation traditionally handled by the state common law.  There are situations where that is warranted, but this is not one of them.  Trade secret protection is in place in every state, and there is no reason to think that this system is inadequate.

Naturally, companies often prefer one national standard to many state standards, but in my view that does not justify federal action.  An article from Reuters commenting on the bill stated that trade secret cases are currently “relegated to state courts,” which is not the way I would describe federalism but does accurately describe the attitude behind the statute from Republicans and Democrats.

I hope the House decides not to take up this legislation.



Patent Pending

Here’s a question that occurred to me when I was browsing the other day. What is the point of putting “patent pending” on an item for consumers? This gives notice that if a patent is granted then infringement liability may relate back to the use of the item in question, but that is irrelevant to the average consumer.  Is the point of “patent pending” to mislead some consumers into thinking this means “a patent will be granted?”  Does patent pending just sound better than not saying anything about that?  It seems like a fact that only investors would care about.


Who Owns Soccer?

I’m pleased to announce that Mike Madison, a terrific IP scholar at the University of Pittsburgh Law School, will be giving a talk at my school on Tuesday, March 29th on “Laws of the Game:  Who Owns Soccer?”  The details are here for those who would like to attend.