TIPLJ: Volume 32

Summer 2023

Arising Under: A Review of Notable Jurisdictional Disputes of the Federal Circuit

When Freedom of Speech Becomes Unfair Competition: Vidal v. Elster and the Need to Protect § 1052(c)

Citation: 32 Tex. Intell. Prop. L.J. 23 (2023)

Author: Kent A. Pederson

About: Juris Doctor, Liberty University School of Law (2023); Senior Staff, Liberty University Law Review, Volume 17; Bachelor of Arts, Honours, Political Science, Carleton University (2018).

Abstract: Before the case of In re Elster, everyone in the United States had the right to place offensive phrases on t-shirts regarding former President Trump and sell them if they chose to do so. After the Federal Circuit’s holding in Elster, no one in the nation may ever be able to put “TRUMP TOO SMALL” on clothing or else they might get sued for trademark infringement. Over the past few years, trademarks have become the subject of Supreme Court redlining: first through the elimination of the disparagement clause in § 1052(a) in Matal v. Tam and next through the immoral or scandalous clause of § 1052(a) in Iancu v. Brunetti. Denial of federal trademarks under the Lanham Act because of viewpoint has come under immense scrutiny and judicial review as a violation of the free speech clause of the First Amendment. However, this line of cases speaks to proper viewpoint discrimination jurisprudence, and the Federal Circuit’s opinion in Elster—overturning the denial of the proposed word mark “TRUMP TOO SMALL” on t-shirts as a violation of § 1052(c)—misapplies the law and stretches the policy of Matal and Brunetti incorrectly against content-based restrictions. Under the Federal Circuit’s logic, the proposed mark could not be denied by the USPTO because that would constitute impermissible content-based restrictions on speech that served no compelling governmental interest. Under the court’s logic, the First Amendment concerns about criticizing the government outweighed the government’s concerns in limiting the speech. However, the court missed a critical fact: no speech was ever silenced. The salient question in a trademark application is whether to confer federal monopoly rights to one person. In this case, the salient question is whether the entire country should have the right to put “TRUMP TOO SMALL” on t-shirts, or whether only one trademark holder should have that right. Before the Federal Circuit’s holding, Trump himself could have put that phrase on a t-shirt and placed it into the stream of commerce, along with everyone else. Now, both Trump and the rest of the country might be barred from using that phrase on t-shirts—else they will create a likelihood of confusion—even though Trump owns the rights to his name, image, and likeness, and the point of the Federal Circuit’s opinion was to encourage more speech, not silence the rest of the country.

A Detailed Study of Court Decisions on Admissibility of Intellectual Property Damages Experts

Citation: 32 Tex. Intell. Prop. L.J. 45 (2023)

Author: Deepa Sundararaman & Cleve B. Tyler

Abstract: Damages experts’ opinions in intellectual property litigation are routinely challenged for failing to reach standards set forth in the Supreme Court’s 1993 Daubert decision. Our study is the first of its kind, in performing a systematic and in-depth review of court decisions, including an analysis of the substantive reasons for challenge. We studied more than 400 Daubert orders covering nearly 1,300 decisions over a six-year period from 2015 through 2020.

Patent cases make up a significant majority of our dataset. Overall, we find an exclusion rate of 24%. While plaintiff experts are challenged more frequently than defendant experts, their exclusion rates are not significantly different. However, the type of analysis challenged appears to matter—in particular, lost profits analyses are excluded at lower rates than other types of analyses, and experts described as offering legal opinions are excluded at higher rates. Exclusion rates vary by district, with the Northern District of California (NDCA) having higher exclusion rates and the Eastern District of Texas (EDTX) having lower exclusion rates than the rest of the country. We study the impact of the Supreme Court’s Heartland decision on exclusion rates, which has reduced a plaintiff’s ability to engage in “venue shopping.” Overall, rates of exclusion in EDTX and Delaware declined following the decision, with a moderate increase in exclusion rates in NDCA.

Finally, we find substantial disparities in exclusion rates among judges. Among the top ten judges ranked by number of decisions, five have relatively “low” exclusion rates of less than 15% and four have relatively “high” exclusion rates greater than 30%. Variations such as these, along with differences by jurisdiction, raise questions about courts’ consistency in application of the Daubert standard—questions that are left for future researchers and policymakers to address.

January 2024

Why Pharmaceutical Patent Thickets Are Unique

Destruction, Proportionality, and Sustainability: A Law-and-Economics Analysis

Utility, Copyright, and Fair Use after Warhol

(Dis)trust in the Process: U.S. Foreign Policy as an Obstacle to an Efficient International Intellectual Property Regime