BU Law Hosts First IP Law Conversation
Students and faculty engage in discussion about trademark law’s history and purpose.
On November 20, Boston University School of Law hosted Intellectual Property Conversations: Trademark Law’s Fundamental Purposes. The roundtable event brought faculty, practitioners, and students together to discuss the foundations and core objectives of trademark law. The event constitutes the first of a series of annual roundtables focused on intellectual property law to be hosted by BU Law.
Participants were required to read a common set of materials—including germinal trademark opinions from the twenty-first, twentieth, and nineteenth centuries, along with a list of relevant scholarship—before attending. These materials then became the foundation of the conversation. “It makes a real difference to any discussion when the participants have recently read or re-read identical primary and secondary materials,” says Wendy Gordon, William Fairfield Warren Distinguished Professor at BU Law. “When we’re all on the same page the discussion can quickly go deep. And having commonality in our reading materials enabled specialist scholars and students to communicate on a more level playing field.”
Attended by experts on trademark policy and history from across the country, as well as BU Law faculty and students, the roundtable discussion was organized by Stacey Dogan, professor of law and Law Alumni Scholar at BU, along with Professor Gordon. This first roundtable is part of an initiative by Professor Gordon to engage IP law students and scholars in regular, probing conversations about theoretical and policy issues in IP law.
The November conversation began with two perspectives on trademark history, presented by two of their most distinguished scholarly proponents, Mark McKenna, associate dean for faculty development and professor of law at Notre Dame Law School, and Robert Bone, a former BU Law professor who is now the G. Rolle White Teaching Excellence Chair in Law at the University of Texas at Austin’s School of Law. Professor McKenna began the discussion, drawing from his noted article, “The Normative Foundations of Trademark Law” (Notre Dame Law Review, 2007). He contended that early courts viewed trademark law as protecting businesses’ “rights” in their customer base, and was available only to plaintiffs who could prove diversion of their trade. Professor Bone, in partial contrast, perceived trademark law of the late 19th and early 20th centuries as promoting two complementary goals. Drawing on his well-known article, “Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law” (BU Law Review, 2006), Professor Bone argued that the early law of trademark and unfair competition both “protected sellers from harm to their reputations and loss of sales, and protected the purchasing public from fraud.”
Participants considered the implications of these two models for trademark law’s scope and limits, and explored the relationships between the law’s underlying purposes and how doctrine develops. Participants shared their diverse views on the extent to which trademark law divides its focus between consumer welfare and the welfare of business interests, and the group also distinguished between doctrines oriented toward preventing harm (whether harm to consumers or harm to businesses), as opposed to trademark doctrines which enable courts to prevent what a judge sees as undesirable free riding or unjust enrichment. Thus, for example, Professor Dogan noted that in the US, a trademark owner’s rights today often extend far beyond what would be necessary to protect consumers from confusion about the source of products. She argued that many modern courts seem to have a presumption that trademark holders have a right to prevent others from exploiting their marks in virtually any manner, except when the defendant’s use promotes some particular social value.
The conversation closed with reflections from Rebecca Tushnet, professor of law at Georgetown Law, and Professor Gordon. Each touched on aspects of trademark’s complex normative history, and drew connections between that history and current debates over trademark’s law’s scope.
The first “IP Conversation” highlighted the depth and breadth of BU Law’s IP faculty and student body. It enabled students to participate with both BU Law faculty and outside scholars in a rigorous discussion of theoretical and doctrinal questions in trademark law. Future “IP Conversations” aim to harness that intellectual engagement and to extend it to other areas of IP law.
Suggestions for next year’s topic are solicited, and should be sent to Professor Gordon at wgordon@bu.edu. So far the most likely candidate for next year’s topic is “Defining ‘Fairness’ in Patent, Copyright and Misappropriation Law.”
Reported by Johanna Gruber (CAS’17)