Professors debate functionality
Annual Meeting attendees flocked to a bustling session about recent developments relating to the doctrine of trademark functionality yesterday
panel included Professors Mark Lemley of Stanford Law School, Dan Burke
of the University of California, Irvine School of Law and Eric Goldman
of Santa Clara University School of Law.
Moderator Susan Montgomery of
Northeastern University focused on two key cases—Rosetta Stone v.
Google and Fleischer Studios Inc. v. A.V.E.L.A—in which two separate
courts ruled in part that the trademarks at issue in each case were
functional, and therefore unprotectable.
Both cases are on appeal and
being closely watched by INTA (which has filed amicus briefs in each
case) and the trademark community. “Betty Boop is outrageous and will
spell the death knell for trademarks [if not reversed],” said one
The panel of professors disagreed and said that the
case law is not clear that trademark rights guarantee a merchandising
right, which generated lively commentary from the audience.