Firth, Alison --- "Signs, surfaces, shapes and structures - the protection of product design under trade mark law" [2008] ELECD 182; in Dinwoodie, B. Graeme; Janis, D. Mark (eds), "Trademark Law and Theory" (Edward Elgar Publishing, 2008)

Book Title: Trademark Law and Theory

Editor(s): Dinwoodie, B. Graeme; Janis, D. Mark

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845426026

Section: Chapter 19

Section Title: Signs, surfaces, shapes and structures - the protection of product design under trade mark law

Author(s): Firth, Alison

Number of pages: 25

Extract:

18 Of mutant copyrights, mangled trademarks,
and Barbie's beneficence: the influence of
copyright on trademark law
Jane C. Ginsburg*



In Dastar Corp. v Twentieth Century Fox Film Corp.,1 Justice Scalia color-
fully warned against resort to trademarks law to achieve protections unattain-
able by copyright, lest these claims generate "a species of mutant copyright
law that limits the public's `federal right to "copy and to use,"' expired copy-
rights."2 The facts of that controversy, in which the claimant appeared to be
invoking time-unlimited trademark protection to end-run the exhausted (unre-
newed) copyright term in a motion picture, justified the apprehension that
unbridled trademark rights might stomp, Godzilla-like, over more docile copy-
right prerogatives. Unfortunately, in the Court's eagerness to forestall
Darwinian disaster in intellectual property regimes, it may have engaged in
some unnatural selection of its own, mangling trademark policies in the
process of conserving copyright. This chapter will first consider how the
(mis)application of copyright precepts has distorted trademarks law, then will
take up happier examples of beneficent copyright influence. The first inquiry
charts the near-demise of moral rights at the hands of copyright-(mis)informed
trademark analysis. The second lauds the growing acceptance of copyright-
inspired free speech limitations on trademark protection, exemplified by the
various "Barbie" cases,3 and culminating in the "fair use" exemptions of the
Trademark Dilution Revision Act of 2006.



* Morton L. Janklow Professor of Literary and Artistic Property Law,
Columbia University School of ...