• Craig Joyce, Introduction, 48 Hous. L. Rev. 701 (2012). (Westlaw)
• Ann Bartow, Counterfeits, Copying and Class, 48 Hous. L. Rev. 707 (2012). (Westlaw)(Abstract)
• Barton Beebe, Is the Trademark Office a Rubber Stamp?, 48 Hous. L. Rev. 751 (2012). (Westlaw)(Abstract)
• Greg Lastowka, Trademark’s Daemons, 48 Hous. L. Rev. 779 (2012). (Westlaw)(Abstract)
• Mark McKenna, (Dys)functionality, 48 Hous. L. Rev. 823 (2012). (Westlaw)(Abstract)
• Rebecca Tushnet, Looking at the Lanham Act: Images in Trademark and Advertising Law, 48 Hous. L. Rev. 861 (2012). (Westlaw)(Abstract)

Eighth Annual Baker Botts Lecture

• Paul Goldstein, Copyright on a Clean Slate, 48 Hous. L. Rev. 691 (2011). (Westlaw)(Abstract)

Comments

• Seth Jaffe, Manufacturing a System of Remanufacturing: How the Patent Office Can Facilitate Environmentally Conscious Product Design, 48 Hous. L. Rev. 919 (2012). (Westlaw)(Abstract)
• Blaine Larson, How Tangential Does It Have to Be? Making Sense of Festo’s Tangential Limitations Doctrine, 48 Hous. L. Rev. 959 (2012). (Westlaw)(Abstract)

• Blaine Larson, How Tangential Does It Have to Be? Making Sense of Festo’s Tangential Limitations Doctrine, 48 Hous. L. Rev. 959 (2012). (Westlaw)

Abstract

In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (Festo II), the Supreme Court addressed the role of prosecution history estoppel as a limitation on the doctrine of equivalents. The Court announced three specific situations where a narrowing amendment related to patentability does not trigger prosecution history estoppel. One such situation occurs when the rationale behind a patentee’s narrowing amendment bears “no more than a tangential relation to the equivalent in question.” Nine years after Festo II, there is still no consistent definition for when a narrowing amendment is tangential.

This Comment provides the necessary framework to discern whether a tangential limitation triggers prosecution history estoppel. A narrowing amendment contains a tangential limitation when two conditions are met: (1) the patentee argues during prosecution that it made the narrowing amendment solely to distinguish its invention from a feature found in prior art; and (2) the purpose behind the narrowing amendment was to clarify a feature different from the one the patentee is asserting has been infringed under the doctrine of equivalents. Additionally, this Comment argues a limitation found in a narrowing amendment is never tangential if it specifies a limited physical range, so the patentee cannot argue something falling outside that limited range infringes under the doctrine of equivalents.

• Seth Jaffe, Manufacturing a System of Remanufacturing: How the Patent Office Can Facilitate Environmentally Conscious Product Design, 48 Hous. L. Rev. 919 (2012). (Westlaw)

Abstract

Environmental concerns pose real problems for the manufacturing industry. Not only do producers face constrained access to natural resources, but they are also under pressure from environmental action groups to reform wasteful processes. To remain competitive, manufacturers can either fashion cheaper, more disposable products or they can design products to promote repair, remanufacturing, and repurposing. But the latter solution both increases manufacturing costs and diverts potential revenue to third party remanufacturing companies. Without means of recovering these costs, manufacturers will be dissuaded from employing environmentally conscious solutions.

The patent system allows inventors to internalize research and development costs without worrying about unencumbered competition in the market for the patented item. By doing so, the patent system provides incentives to invent, disclose, and innovate. It can also provide an incentive to design for remanufacturing. Implementation of an ancillary system for tracking claims of environmental improvement within the overall body of an existing patent allows the Patent Office to offer a simple means for recovering front-end investments in environmentally conscious manufacturing. Quantitative methods already exist to classify these environmental design improvements. Patent examiners would only need to verify the improvement level of a given design process against these methods in allowing the claims. In an issued patent, remanufacturing claims would offer a defense to the doctrine of exhaustion, allowing a company to retain limited use rights in the refurbishment of its product.

• Paul Goldstein, Copyright on a Clean Slate, 48 Hous. L. Rev. 691 (2011). (Westlaw)

Abstract

The Internet—both its bright and dark sides—poses challenges not previously faced by copyright law. Adding still more provisions to an already complex Copyright Act is not the best way to respond. Rather, Congress should simplify and reconstruct the Act around five principles: (1) Copyright law should promote copyright commerce; (2) Copyright law should extend exclusive rights into every corner where they have value, except where transaction costs of harm to fundamental values outweigh the value of market transfers; (3) Copyright law should promote, not discourage, innovation in reducing transaction costs; (4) Copyright should not extend exclusive rights where the resulting harm to fundamental values outweighs the value of market transfers; and (5) A copyright statute should promote fidelity to copyright law.

• Rebecca Tushnet, Looking at the Lanham Act: Images in Trademark and Advertising Law, 48 Hous. L. Rev. 861 (2012). (Westlaw)

Abstract

Words are the prototypical regulatory subjects for trademark and advertising law, despite our increasingly audiovisual economy. This word-focused baseline has continuing consequences for the Lanham Act, which often misconceives its object, resulting in confusion and incoherence.

The paper explores some of the ways courts have attempted to fit images into a word-centric model, while not fully recognizing the particular ways in which images make meaning.

• Mark McKenna, (Dys)functionality, 48 Hous. L. Rev. 823 (2012). (Westlaw)

Abstract

The functionality doctrine serves a unique role in trademark law. It is one of very few doctrines that can claim the mantle of a true defense: unlike virtually every other doctrine, a functionality finding can trump consumer understanding (or so it seems, at least in mechanical functionality cases). But despite the potential power of the doctrine, it is quite inconsistently applied. This is true of mechanical functionality cases because courts differ over the extent to which the doctrine is ultimately reducible to a determination of the effect of exclusive rights on competition. And it is even worse with respect to aesthetic functionality: courts often resist applying the doctrine where it seems called for, and some even reject the concept outright. I argue that the problems with functionality are largely intractable because they reflect a much bigger problem: trademark law lacks a sufficiently robust theory of competition against which particular actions can be judged “unfair.” Courts have long struggled, for example, to determine whether patent law sets the competitive baseline with respect to functional product features such that trademark law must stay clear, or whether, instead, courts should inquire into competitive need on a case-by-case basis. And they have long simply assumed that access to mechanically useful features is much more competitively important than access to aesthetic or ornamental features, even where the evidence points rather strongly to the opposite conclusion. This Essay suggests that the functionality doctrine remains muddled because it reflects these underlying tensions, and that none of the debates can be resolved simply by reference to economics. Each view reflects a normative judgment about the “natural” structure of a competitive market.

• Greg Lastowka, Trademark’s Daemons, 48 Hous. L. Rev. 779 (2012). (Westlaw)

Abstract

Trademark law’s goal seems, at first, wonderfully straightforward. It prevents the deception of consumers regarding the source of products and services. This, in turn, leads to an important associated benefit: investments in the quality of products and services designed to bolster trademark goodwill.

Yet when we explore contemporary trademark jurisprudence, a cast of entirely foreign commitments bedevilling this core logic confronts us. This Essay identifies four “daemons” of trademark jurisprudence, four alternative inner animi that motivate the actions of courts considering trademark cases. They are: the daemon of creativity, the daemon of identity, the daemon of
efficiency, and the daemon of fair use.

All of these daemons are well-intentioned creatures, yet none of them serve the foundational function of trademark law. Instead trademark’s daemons threaten the integrity of its mission. Accordingly, I propose that they be rooted out and exiled from the domain of trademark.

• Barton Beebe, Is the Trademark Office a Rubber Stamp?, 48 Hous. L. Rev. 751 (2012). (Westlaw)

Abstract

Surprisingly, we still lack basic information concerning trademark application “grant rates” (i.e., the percentage of trademark applications that result in registration) at the U.S. Patent and Trademark Office. We thus lack data that are crucial to assessing, among much else, overall “trademark quality” at the PTO (i.e., the reliability of trademark registration status at the PTO as an indication of actual trademark validity). Working from a previously unstudied dataset covering U.S. federal trademark applications since the late nineteenth century, this paper reports and analyzes U.S. federal trademark application grant rates along a variety of dimensions, including by year and basis of application, by type of mark, by country of applicant, and by industry category and goods and services classification. The paper focuses in particular on the 27-year period from 1981 to 2007, during which the PTO received some 4.2 million applications for trademark registration and with respect to which the dataset’s data appear to be especially reliable.

• Ann Bartow, Counterfeits, Copying and Class, 48 Hous. L. Rev. 707 (2012). (Westlaw)

Abstract

Consumers who want to express themselves by wearing contemporary clothing styles should not have to choose between expensive brands and counterfeit products. There should be a clear distinction in trademark law between illegal, counterfeit goods and perfectly legal (at least with respect to trademark law) “knockoffs,” in which design attributes have been copied but trademarks have not. Toward that end, as a normative matter the aesthetic features of products should not be registrable or protectable as trademarks or trade dress, regardless of whether they have secondary meaning, just as functional attributes of a utilitarian nature are not eligible for Lanham Act protection. With enough advertising, any product feature can acquire distinctiveness. Only the assertive deployment of functionality bars by courts can prevent the illegitimate and costly construction of trademark-based product monopolies.

The purported trademark related harms that stem from the production and distribution of noncounterfeit knockoffs are, in reality, the effects of legitimate competition based on attributes such as price, quality, consumer appeal, and availability, with which trademark law should not interfere. Repressing or illegalizing knockoffs illegitimately prevents lower income people from procuring and enjoying goods with aesthetic attributes that are not properly monopolized through trademark law, and probably perversely increases the demand for counterfeit items.

It is hard to find an academic who will admit having had any interest in the Casey Anthony case. Perhaps it was the Nancy Grace factor. I was not exactly glued to the set, but I was stunned by the opening statement for the defense, and the verdict. In my short (and I hope, amusing) article I raise some questions about things said in opening statements, and how they might just come back to bite, if not in the same trial, then later. The old saw that “opening statements are not evidence” is an overstatement, on a number of levels. If you are interested in the civil fallout from a criminal case, I think you will agree with me that this case is the gift that just keeps on giving.

• Monica E. White, Give Me a Break-up Fee: In Re Reliant Energy Channelview LP and the Third Circuit’s Improper Rejection of a Bankruptcy Bid Protection Provision, 48 Hous. L. Rev. 659 (2011). (Westlaw)

Abstract

When a debtor entity chooses to sell assets under Chapter 11 of the Bankruptcy Code, it may enter into an agreement with an initial “stalking horse” bidder to facilitate maximum payment of its debt. Fortunately for the stalking horse, break-up fees—mechanisms intended to reimburse an initial bidder for its expenditures leading up to an ultimately unexecuted transaction between itself and the debtor—protect stalking horses if they are outbid. However, many courts have become less willing to award break-up fees pursuant to non-bankruptcy standards of review, which are traditionally more deferential to the decisionmaking processes of the parties involved in the transaction.

A prime example of this trend is the decision of the Third Circuit Court of Appeals in In re Reliant Energy Channelview LP. In this case, the initial bidder was denied a break-up fee award because the debtor’s commitment to “seek” approval of the fee was deemed inadequate to demonstrate that the fee was necessary either to induce or maintain the initial bidder’s bid, or to preserve the value of the bankruptcy estate. Moreover, the mere presence of an alternative bidder who objected to the break-up fee provision but was not bound to submit a bid, was deemed adequate to protect the bankruptcy estate from the harm that would have arisen had it been left without a bid sufficient to cover its debts.

At first glance, the outcome in Reliant is hardly surprising given some courts’ increasing willingness to subject break-up fee provisions to greater scrutiny. However, this Note argues that the Reliant court not only lost sight of the reasons underlying bid protection mechanisms in bankruptcy asset sale agreements, but also unnecessarily subverted the reasonable business judgments of the parties in a decision that fundamentally undermines the reasoning behind bid protection mechanisms, especially in the context of solvent debtors.

• Joseph Guajardo, Deepwater Horizon: Rethinking OPA’s Liability Limitations in the Wake of Environmental Disaster, 48 Hous. L. Rev. 625 (2011). (Westlaw)

Abstract

After the explosion of Deepwater Horizon in the Gulf of Mexico in April 2010, Congress considered legislation aimed at increasing the liability limits placed on companies responsible for oil spills. Particularly at issue was a provision of the Oil Pollution Act of 1990 that places a $75 million legal limit on a company’s liability for economic damages as a result of an oil spill.

This Comment reviews the relevant provisions of the Oil Pollution Act of 1990 and discusses the legislative proposals considered by Congress. It argues that eliminating the cap on damages, even retroactively, would have little or no impact on the amount of recovery achieved by injured parties claiming relief from the disaster. Should Congress pursue such action, it could seriously jeopardize the current structure of the oil drilling and production industry by arbitrarily imposing additional costs on operators. It concludes by proposing that action by Congress be measured, reasoned, and deliberate, focusing on active and ongoing regulation, rather than knee-jerk legislation, as a response to short-term public outcry.

• Andrew L. Bethune, An Efficient “Say” On Executive Pay: Shareholder Opt-in as a Solution to the Managerial Power Problem, 48 Hous. L. Rev. 585 (2011). (Westlaw)

Abstract

There is widespread belief in the United States that executive compensation played a significant role in the collapse of credit markets in 2007 and the subsequent financial crisis of 2008–2009 as managers took excessive risks because they were compensated for achieving short-term results. Yet even before the financial crisis, the structure and level of executive pay at public companies has been a source of intense policy debate in the United States.

The “say-on-pay” provisions of the Dodd-Frank Act of 2010 require all public companies to hold a nonbinding shareholder vote on executive pay at least every three years, beginning in 2011. This Comment argues that Congress could have done better. The managerial power theory of executive compensation holds that executives unduly influence a company’s board of directors in order to extract excess pay. If Congress intended for the Dodd-Frank say-on-pay legislation to combat excessive managerial power as the root cause of excessive managerial pay, it should have provided for public company shareholders to decide (i) whether they want to have a say-on-pay in the first place; and (ii) whether they desire a say-on-pay vote to be binding on the board of directors. Legislation allowing shareholders to “opt-in” to a vote on executive pay is the most efficient response to the managerial power problem because it gives shareholders the ability to adopt say-on-pay only when they believe it will benefit the company.

• Lonny Hoffman, The Case Against the Lawsuit Abuse Reduction Act of 2011, 48 Hous. L. Rev. 545 (2011). (Westlaw)

Abstract

On March 10, 2011, Lamar Smith, Chairman of the House of Representatives’ Committee on the Judiciary, introduced H.R. 966, the Lawsuit Abuse Reduction Act (Sen. Charles Grassley, the ranking Republican member of the Senate Judiciary Committee, sponsored an identical measure). Animated by concern over rising costs and abuses in federal civil cases, the bills stiffen penalties against lawyers who file sanctionable papers in federal court by legislatively amending Rule 11 of the Federal Rules of Civil Procedure, the general certification and sanctions standard for federal civil cases. Aware that the political winds are pointing in LARA’s favor, my objective in this short paper is to articulate the strongest arguments against the proposed legislation. This paper expands significantly on prepared testimony I gave by invitation to a House committee regarding the legislation. My hope is that this work will make a valuable contribution to the public debate regarding this proposed, significant reform of federal practice. Briefly summarized, the paper proceeds as follows. Part I argues that the proposed legislation would not only fail to resolve the problems asserted to justify its passage but would actually increase costs and delays in federal court and foster greater litigation abuse. In Part II, I argue that there is no empirical support for the assertion that the 1993 amendments to Rule 11 can be blamed for whatever problems do exist today with federal civil litigation. Part III makes the case that LARA’s passage is not needed because there are many available alternatives for managing federal civil litigation costs and abuses. Finally, in Part IV, I demonstrate that the assertions made by LARA’s sponsors regarding the extent of costs and abuse in federal civil litigation are greatly exaggerated. Although this latter argument may have little traction in public debates over the legislation, it may be more effectively invoked in support of the institutional argument that this sort of procedural reform is best considered through the more deliberative Rules Enabling Act process. That is, reasonable legislators may be convinced that judicial rulemakers can be relied upon, as they have been for many years, to monitor the state of civil litigation and to consider reforms of the rules, as necessary, to control litigation costs and abuses.

• Wendy C. Gerzog, The New Super-Charged PAT (Power of Appointment Trust), 48 Hous. L. Rev. 507 (2011). (Westlaw)

Abstract

This article proposes to repeal the QTIP provisions in order to collect revenue now for transfers that are essentially transfers to third parties and not to the decedent’s spouse. Because there are advantages of increased flexibility attendant to a QTIP as opposed to a PAT, this article proposes to take those repealed QTIP benefits and attach them to the PAT, which would greatly enhance that marital deduction trust form. A super-charged PAT would thereby be able to preserve the decedent’s GST tax exemption (like a reverse QTIP), create a decedent’s by-pass trust by allowing a PAT (or a partial PAT) “election-out,” and create a decedent’s state-only PAT marital deduction. The super-charged PAT would provide for much desired post-mortem tax planning without the complex and strict requirements of a disclaimer. Moreover, the new PAT would eliminate conflicts of interest and fiduciary problems inherent in the QTIP form of the marital deduction. Lastly, by repealing the QTIP provisions and by super-charging the PAT, the marital deduction would truly be a marital deduction and not a third party beneficiary tax deferral device.

• Sarah Rudolph Cole, On Babies and Bath Water: The Arbitration Fairness Act and the Supreme Court’s Recent Arbitration Jurisprudence, 48 Hous. L. Rev. 457 (2011). (Westlaw)

Abstract

This article addresses an important but widely overlooked issue that has plagued arbitration for many years—the disconnect between the judicial embrace of arbitration agreements between consumers (or employees) and businesses and the negative public and legislative attitude toward such agreements. For many years, Democratic legislators attempted to pass a law banning the use of pre-dispute arbitration agreements in employment disputes. In 2009, the legislators renamed this legislation and expanded its reach. Under the proposed Arbitration Fairness Act, all pre-dispute arbitration agreements in employment, consumer and franchise agreements would be invalidated. At the same time, the Supreme Court repeatedly has enforced arbitration agreements of all types and in a variety of settings. While the Supreme Court’s rulings do much to reinforce the value and importance of arbitration as a dispute resolution mechanism, the rulings also ignore a growing problem in consumer arbitration—the inability of consumers to band together in either class arbitration or class actions in court, to vindicate low value claims. It is this problem, rather than the issue of the viability of consumer arbitration agreements in general, that deserves legislative attention.

Given that empirical research continues to show that consumer arbitration benefits both consumers and businesses, rather than render consumer arbitration impermissible entirely, Congress would do well to target more directly the problem of the consumer with a low value claim,. Consumers with these types of claims cannot afford to arbitrate unless they are able to band together in a class process. Over the last several years, courts disagreed about whether businesses could ban class arbitrations or class actions in court through the implementation of consumer arbitration agreements. A recent Supreme Court decision, Stolt-Nielsen S.A. v. AnimalFeeds Int’l Corp., 130 S. Ct. 1758 (2010), addressed this issue, ruling that an arbitral panel could not order class arbitration when the parties’ arbitration agreement did not expressly authorize the process. If extended to the consumer context (which it is likely to be), this ruling effectively precludes consumers with low value claims from vindicating their rights because businesses typically do not explicitly authorize class arbitration in the arbitration agreements they use with customers.

This article reviews the current state of the law, the Arbitration Fairness Act, and the empirical research on consumer arbitration to assess the problem raised in Stolt-Nielsen and other recent Court rulings. Based on that analysis, the article proposes legislation that would address the major problem in consumer arbitration—the inability of consumers to pursue class remedies.

• Sarah Rudolph Cole, On Babies and Bath Water: The Arbitration Fairness Act and the Supreme Court’s Recent Arbitration Jurisprudence, 48 Hous. L. Rev. 457 (2011). (Westlaw)(Abstract)
• Wendy C. Gerzog, The New Super-Charged PAT (Power of Appointment Trust), 48 Hous. L. Rev. 507 (2011). (Westlaw)(Abstract)
• Lonny Hoffman, The Case Against the Lawsuit Abuse Reduction Act of 2011, 48 Hous. L. Rev. 545 (2011). (Westlaw)(Abstract)

Comments

• Andrew L. Bethune, An Efficient “Say” On Executive Pay: Shareholder Opt-in as a Solution to the Managerial Power Problem, 48 Hous. L. Rev. 585 (2011). (Westlaw)(Abstract)
• Joseph Guajardo, Deepwater Horizon: Rethinking OPA’s Liability Limitations in the Wake of Environmental Disaster, 48 Hous. L. Rev. 625 (2011). (Westlaw)(Abstract)
• Monica E. White, Give Me a Break-up Fee: In Re Reliant Energy Channelview LP and the Third Circuit’s Improper Rejection of a Bankruptcy Bid Protection Provision, 48 Hous. L. Rev. 659 (2011). (Westlaw)(Abstract)

A complete masthead is available here

• Eileen Starbranch Pape, A Flawed Inspection System: Improvements to Current USDA Inspection Practices Needed to Ensure Safer Beef Products, 48 Hous. L. Rev. 421 (2011). (Westlaw)

Abstract

Foodborne illnesses have changed with the times. Improper food preparation used to be the number one cause of foodborne illnesses, now it is the food itself—contaminated from fast and sloppy slaughtering. Inspection methods must, like the pathogens, keep up with the times. Though the meatpacking industry is now conducting microbiological testing, there are flaws in the pathogens selected for testing, what is being tested, when the testing is conducted, and how positive test results are treated. This Comment examines current inspection practices, indicates areas that need improving, and discusses how changes could be made to the regulatory scheme and inspection practices to reduce the number of foodborne illnesses and deaths caused by E. coli.