Our Spring 2020 issue, Volume 9, Issue 2, is comprised of five individual pieces that explore significant, current themes in intellectual property and entertainment law, ranging from providing guidance from practice and experience, to questioning the very underlying legal framework of trademark law. In fact, each piece in this issue is focused on one of the fundamental areas of intellectual property law—trademark, copyright, and patent—but each intersects vitally with other disciplines from both inside and outside the world of IP, ranging from the music and entertainment industries, to history, to antitrust, to regulatory law.
In their essay, Justin F. McNaughton, Ryan Kairalla, Leslie José Zigel, and Armando Christian Perez (known professionally as Pitbull) illustrate their efforts in obtaining a sound trademark in Pitbull’s famed yell, also known as a grito, for use in live and recorded musical performances. This effort illustrates the first time the United States Patent and Trademark Office (USPTO) has issued a trademark in the principal register for musical sound recordings. McNaughton, Kairalla, Zigel, and Perez illustrate the important impacts that obtaining this trademark will likely have both on the music industry and the entertainment industry more broadly.
Charles Duan provides an insightful and probing historical analysis of copyrights in the text of the law. In his article, Duan argues that States are incorrect in claiming a copyright interest in their official published codes of law. This article, and the argument contained therein, is particularly timely and important: in late April 2020, the United States Supreme Court ruled in Georgia v. Public.Resource.Org, Inc. that non-binding legal materials, such as annotations to state statutes, are not copyrightable. Duan models his article on an amicus brief he authored and submitted as part of the litigation, and it provides an in-depth, and often overlooked, historical analysis of practices in this area.
Moving to the student notes in Volume 9, Issue 2, Daniel Lifton’s first analyzes the current state of trademark law, particularly with regards to the “Likelihood of Confusion” standard for trademark infringement liability. Lifton explains why this approach does not work across all types of confusion (such as post-sale confusion) and advocates the introduction of a “trademark rule of reason,” similar to that found in antitrust law, to cover infringement liability where appropriate. In doing this, Lifton highlights trademark law as a species of competition policy and carefully and completely addresses why the introduction of a rule of reason standard would better advance the goals and aims, broadly speaking, of trademark law.
Next, Sarah Sue Landau’s note explores the vital intersection between copyright law and trademark law, deftly analyzing the history of Mickey Mouse and the famous character’s impending expiring copyright. In particular, Landau looks at challenges surrounding overlapping protection—that is, when something receives both copyright and trademark protection—and works to provide a clear set of recommendations for ameliorating the current dilemma. Landau’s analysis illustrates the broad set of options that courts, legislatures, and copyright- and trademark-holders have in navigating this complex legal landscape.
Finally, I present my own note, which discusses the intersection of patent term extension (PTE) and the FDA regulatory approval process for pharmaceutical products. PTE is a statutorily-granted extension in patent term meant to compensate for the time that it takes for a pharmaceutical product to go through the regulatory approval process. In particular, I look at the current challenges of applying patent term extension provisions to current, novel therapeutics. I aim to establish a new path forward, proposing a way for the law to catch up more quickly and efficiently with the rapid developments in the world of clinical therapeutics.
You may view and download a PDF of the complete issue here.
I hope that you enjoy this issue. On behalf of the 2019–2020 JIPEL editorial board, I thank all of you for following our work through the past year and Volume, and I hope that you will continue to read Volume 10 and beyond.
Nicholas G. Vincent, PhD
NYU Journal of Intellectual Property & Entertainment Law