Trademark Dilution: Theoretical and Empirical Inquiries

On October 5, 2007, The High Tech Law Institute hosted a one-day symposium bringing together legal scholars and social scientists to examine trademark dilution as a legal and social phenomenon. Through the cross-disciplinary conversation, this conference shed new light on the purported harms caused by trademark dilution and possible policy approaches to address those harms.

Several of the presentations are now available on iTunes U. Click here to view the presentations.

Speaker Bios
Articles and Presentations

Trademark Dilution Symposium Schedule

8:45am: Welcome

Dean Don Polden

Eric Goldman, Santa Clara School of Law

9:00am: Introductory Keynote

J. Thomas McCarthy, University of San Francisco School of Law
A Confession: How I Became Disillusioned with Trademark Dilution

9:30: Consumer Perceptions, Part 1

Ronald R. Butters, Duke University, Department of English (emeritus)
A Linguistic Look at Dilution

Jacob Jacoby, New York University Leonard N. Stern School of Business
The Who, What, When, Where and How of Measuring Dilution

Rebecca Tushnet, Georgetown University Law Center
Dilution & Cognitive Science

Colleen Chien, Santa Clara University School of Law

10:30am: Break

11:00am: Consumer Perceptions, Part 2

Laura R. Bradford, George Mason University School of Law
Trademarks and Emotion

Christine Haight Farley, American University Washington College of Law
Mental Associations and Evocations: the Slippery Slope of Dilution

Judy Zaichkowsky, Faculty of Business Administration,
Simon Fraser University

Explaining Dilution Through Balance Theory

Dorothy Glancy, Santa Clara University School of Law

12:00pm: Lunch

1:00pm: Dilution Regulation, Part 1 (A Look Back)

Barton Beebe, Cardozo School of Law
The TDRA Case Law So Far: An Empirical Study

Robert Bone, Boston University School of Law
Schechter’s Ideas in Historical Context and Dilution’s Rocky Road

Shari Seidman Diamond, Northwestern University School of Law
Expansion and Contraction with the Trademark Dilution Revision Act?

Shubha Ghosh, SMU Dedman School of Law
Competition Norms in the Law of Trademark Dilution: The Ascendancy of Misappropriation and the Descent of Competitive Entry?

Mark McKenna, Saint Louis University School of Law

2:20pm: Break

2:30pm: Dilution Regulation, Part 2 (Doctrinal Challenges)

Graeme B. Dinwoodie, Chicago-Kent College of Law
The Role of Theoretical Justification: Dilution and Unfair Competition Law

Mark Lemley, Stanford Law School
Trademark Use Requirement in Dilution

Xuan-Thao Nguyen, SMU Dedman School of Law
Searching for Fame: The Challenge of Proving Property in Trademark Dilution Law

Lisa P. Ramsey, University of San Diego School of Law
Increasing First Amendment Scrutiny of Trademark Law

Tyler Ochoa, Santa Clara University School of Law

3:50pm: Break

4:15pm: Comparative Analyses of Dilution

Mary LaFrance, William S. Boyd School of Law, University of Nevada, Las Vegas
Identical Cousins? Dilution by Blurring and the Right of Publicity

Kenneth L. Port, William Mitchell College of Law
Trademark Dilution in Japan

David Welkowitz, Whittier Law School
State Dilution Laws

Margreth Barrett, University of California Hastings College of the Law

5:15pm: Concluding Remarks

Eric Goldman, Santa Clara School of Law

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Trademark Dilution Symposium Speaker Bios

Margreth Barrett (Hastings)

Professor Barrett received B.A. and M.A. degrees in English Literature from the University of South Florida, along with the distinction “University Scholar.” After three years of employment with the Florida State University System, Professor Barrett attended Duke University School of Law, where she served as editor-in-chief of the Duke Law Journal and held the Hardt Cup Moot Court Championship. She received the Faculty Award for Greatest Contribution to Legal Scholarship, Class of 1980.

Before joining the Hastings faculty in 1984, Professor Barrett served as a law clerk to the Honorable Gerald Bard Tjoflat, United States Circuit Court of Appeals for the Fifth Circuit, and practiced law with the firm of Howard, Rice, Nemerovski, Canady, Robertson & Falk in San Francisco. Although she has taught in the fields of corporate law and real property, Professor Barrett’s primary focus is intellectual property. She presently teaches courses in Copyright and Trademarks and Unfair Competition Law, and is the author of a case book for the intellectual property survey course. She has published a number of articles and other works in the fields of Trademark Law, Copyright, and Patent Law.

Barton Beebe (Cardozo)

Barton Beebe is an Associate Professor of Law at Benjamin N. Cardozo School of Law, Yeshiva University, specializing in intellectual property law. B.A., University of Chicago; J.D., Yale University; Ph.D., Princeton University. His most recent published works include An Empirical Study of U.S. Fair Use Opinions, 1978-2005, 156 Penn. L. Rev. __ (forthcoming 2007); An Empirical Study of the Multifactor Tests for Trademark Infringement, 95 Cal. L. Rev. 1581 (2006), Search and Persuasion in Trademark Law, 103 Mich. L. Rev. 2020 (2005), and The Semiotic Analysis of Trademark Law, 51 UCLA L. Rev. 621 (2004). In 2007, he served as a Special Master in the trademark case Louis Vuitton Malletier v. Dooney & Bourke, Inc., No. 04 Civ. 2990 (SAS) (S.D.N.Y.). In June 2007, he received the Class of 2007 Award for Best Professor.

Robert Bone (Boston)

Robert Bone is Professor of Law and Richard L. Godfrey Faculty Research Scholar at Boston University School of Law. Professor Bone received his B.A. degree from Stanford University and his J.D. from Harvard Law School. He clerked and practiced law before joining the University of Southern California law faculty in 1983 and then the Boston University School of Law faculty in 1987. His areas of expertise include intellectual property, civil procedure, and complex litigation, and his intellectual property work focuses on trademark and trade secret law. He gave the 2000-2001 Boston University Lecture in honor of his scholarly achievements and has received Boston University’s highest teaching award, the Metcalf Award for Excellence in Teaching.

Laura Bradford (George Mason)

Laura Bradford is a Visiting Assistant Professor of Law at George Mason University.  She previously practiced intellectual property law and wrote about law and technology for Time Magazine.  She teaches courses in trademark, copyright and internet law.

Ronald Butters (Duke)

Ronald R. Butters recently retired as Professor of English and Cultural Anthropology and chair of the Linguistics Program at Duke University, where he has taught since. His linguistic interests include (1) statutes and contracts, (2) death-penalty appeals, and (3) semiotic and linguistic issues in trademark litigation.

Shari Seidman Diamond (Northwestern)

Shari Seidman Diamond is the Howard J. Trienens Professor of Law and Professor of Psychology at Northwestern University Law School. She is also a Senior Research Fellow at the American Bar Foundation. She holds a law degree from the University of Chicago and a PhD in social psychology from Northwestern University.

Graeme B. Dinwoodie (Chicago-Kent)

Graeme Dinwoodie is Professor of Law, Associate Dean, and Director of the Program in Intellectual Property Law, at Chicago-Kent College of Law. He also holds a Chair in Intellectual Property Law at Queen Mary College, University of London. Professor Dinwoodie is the author of numerous articles on trademark law, and is the co-author (with Mark Janis) of Trademarks and Unfair Competition: Law and Policy (2d ed. 2007).

Christine Haight Farley (American)

Professor Farley teaches courses in Intellectual Property Law, U.S. Trademark Law, International and Comparative Trademark Law, and Law and the Visual Arts. In addition, she serves as the Associate Dean for Faculty and Academic Affairs at the Washington College of Law and as Co-Director of the Program on Information Justice and Intellectual Property.

Before joining the law faculty at American, Professor Farley was an associate specializing in intellectual property litigation with Rabinowitz, Boudin, Standard, Krinsky & Lieberman in New York. She received her B.A. from Binghamton University, her J.D. from SUNY Buffalo School of Law, and her LL.M. and J.S.D. from Columbia Law School.

Professor Farley’s scholarly work is in the areas of on intellectual property, international law and art law. Her current projects study the intersection of art and IP; and the unstable basis of rights in the development of trademark law.

Shubha Ghosh (SMU Dedman)

Shubha Ghosh is Professor of Law at SMU Dedman School of Law in Dallas, Texas. He was Professor of Law at SUNY Buffalo Law School from 2000 to 2006 and has been a visiting lecturer at Oxford University, The University of Edinburgh, and the National Law School University of India in Bangalore. He writes in the areas of intellectual property theory, competition policy, copyright, patent, and trademark doctrine, and the intersection of economics and law. He is the author of Intellectual Property: Private Rights, The Public Interest, and The Regulation of Creative Activity (Thomson-West 2007) and Intellectual Property in Business Organizations (Lexis-Nexis 2006). He has published over thirty articles in the areas of intellectual property, antitrust, and legal theory.

Dorothy Glancy (Santa Clara)

A founding member of the Harvard Women’s Law Association, awarded a Stevens Traveling Fellowship that took her around the world to interview women political leaders; became counsel to the U.S. Senate Judiciary Subcommittee on Constitutional Rights. She subsequently returned to Harvard University as a fellow in Law and the Humanities. She is an elected member of the American Law Institute. She has served as a reporter for the Restatement, Third, of Property: Joint Ownership and as an adviser to the Restatement, Third, of Property: Servitudes.

A member of the American Bar Association, she has served on the Council of the ABA Section on Natural Resources, Energy and Environmental Law. She was also a member of the Executive Committee of the Environmental Law Section of the State Bar of California. She served on the Professional Development Committee of the Association of American Law Schools and chaired several sections, including those regarding Property Law, Environmental Law, and Defamation and Privacy. From 1993 to 1995, under a grant from the Federal Highway Administration of the U.S. Department of Transportation, she directed a legal research project regarding privacy and Intelligent Transportation Systems.

Eric Goldman (Santa Clara)

Prior to teaching at Marquette University School of Law, Professor Goldman practiced Internet and technology law in the Silicon Valley for eight years, first as an attorney at Cooley Godward LLP in Palo Alto, CA, and then as General Counsel of, an internet start-up company. Professor Goldman also taught cyberspace law at Santa Clara University School of Law as an adjunct instructor from 1997 to 2002. Professor Goldman received his undergraduate degree in economics and business from UCLA in 1988. Professor Goldman received his MBA with an emphasis in entrepreneurial finance from UCLA in 1994. He received his JD from UCLA School of Law in 1994. He was the editor of the UCLA Law Review. Professor Goldman joins the faculty to teach Cyberlaw, Intellectual Property and to direct the High Technology Law Institute. His scholarship is primarily focused on the legal and social implications of new communication technologies; recent articles have analyzed adware/spyware, search engines and spam.

Jacob (Jack) Jacoby

Prof. Jacoby is frequently cited across the social sciences and in McCarthy on Trademarks and Unfair Competition.   Honored for his research by eight national societies, he has testified in more than 150 cases heard in U.S. District Courts and was invited by the Federal Judicial Center to address judges on survey evidence.

Mary LaFrance (University of Nevada)

Professor LaFrance is a William S. Boyd Professor of Law at the William S. Boyd School of Law, University of Nevada, Las Vegas, where she has taught since 1999.  After clerking for the Honorable Harry T. Edwards of the D.C. Circuit and practicing with the firm of Fried, Frank, Harris, Shriver and Jacobson, from 1990-1999 she served on the faculty at the Florida State University College of Law and the Florida State University School of Motion Pictures, Television, and Recording Arts.  Her teaching and research interests include domestic and international intellectual property law, as well as the taxation of intellectual property.  Professor LaFrance has published numerous law review articles as well as two books, Intellectual Property Cases and Materials (West 3d ed. 2007) (with David Lange & Gary Myers) and Understanding Trademark Law (LexisNexis 2005).

Mark Lemley (Stanford)

Mark Lemley is the William H. Neukom Professor of Law at Stanford Law School, the Director of the Stanford Program in Law, Science and Technology, and the Director of Stanford’s LLM Program in Law, Science and Technology. He teaches intellectual property, computer and Internet law, patent law, and antitrust. He is of counsel to the law firm of Keker & Van Nest, where he litigates in the areas of antitrust, intellectual property and computer law. He is the author of six books (all in multiple editions) and 84 articles on these and related subjects, including the two-volume treatise IP and Antitrust. His works have been reprinted throughout the world, and translated into Chinese, Japanese, and Italian. He has taught intellectual property law to federal and state judges at numerous Federal Judicial Center and ABA programs, has testified five times before Congress and numerous times before the California legislature, the Federal Trade Commission and the Antitrust Modernization Commission on patent, trade secret, antitrust and constitutional law matters, and has filed numerous amicus briefs before the U.S. Supreme Court, the California Supreme Court, and the federal circuit courts of appeals. He has been named California Lawyer’s Attorney of the Year (2005), a Young Global Leader by the Davos World Economic Forum (2007), one of the top 50 litigators in the country under 45 by the American Lawyer (2007), one of the 100 most influential lawyers in the nation by the National Law Journal (2006), one of the top 25 intellectual property lawyers in California (2003) and one of the 100 most influential lawyers in California by the Daily Journal (2004, 2005 and 2006), and one of the 500 leading lawyers in the country by Lawdragon Magazine.

Professor Lemley received his J.D. from Boalt Hall School of Law at the University of California at Berkeley, and his A.B. from Stanford University. In 2002 he was chosen Boalt’s Young Alumnus of the Year. After graduating from law school, he clerked for Judge Dorothy Nelson on the United States Court of Appeals for the Ninth Circuit, and has practiced law in Silicon Valley with Brown & Bain and with Fish & Richardson. Until January 2000, he was the Marrs McLean Professor of Law at the University of Texas School of Law, and until June 2004 he was the Elizabeth Josslyn Boalt Chair in Law at the Boalt Hall School of Law, University of California at Berkeley.

J. Thomas McCarthy

J. Thomas McCarthy is a Senior Professor at the University of San Francisco School of Law, where he has been on the faculty for over forty years. He is the Founding Director of the McCarthy Institute of Intellectual Property and Technology Law. Professor McCarthy is the author of the seven-volume treatise “Trademarks and Unfair Competition,” published by Thomson-West. This book is in its Fourth Edition and has been in print for almost thirty five years. This treatise has been cited as authority in over 2500 judicial decisions. He is also the author of the two volume treatise, “The Rights of Publicity and Privacy,” and the reference book, “McCarthy’s Desk Encyclopedia of Intellectual Property.”

Mark McKenna (Saint Louis University)

Mark McKenna is an Assistant Professor at Saint Louis University School of Law and a graduate of the University of Notre Dame and the University of Virginia School of Law. He does research and writes on a variety of topics relating to intellectual property, particularly in the areas of trademark and the right of publicity. His most recent article, The Normative Foundations of Trademark Law, was published in volume 82 of the Notre Dame Law Review. Prior to joining the faculty at Saint Louis University, Professor McKenna worked at an intellectual property firm in Chicago, where he litigated trademark and copyright infringement cases and counseled clients on a wide range of intellectual property issues.

Xuan-Thao Nguyen (SMU Dedman)

Professor Xuan-Thao Nguyen is a professor of law at SMU Dedman School of Law in Dallas, Texas. Her trademark law articles have been cited by the courts in In re, 415 F.3d 1293 (Fed. Cir. 2005); Interstellar Starship Services, Ltd. V. Epix, Inc., 304 F.3d 936 (9th Cir. 2002); Times Mirror Magazines, Inc. v. Las Vegas Sports News, 212 F.3d 167 (3d Cir. 1999); Blue Nile, Inc. v., Inc., 478 F.Supp.2d 1240 (W.D.Wash. 2007); EMSL Analytical, Inc. v. Testamerica Analytical Testing Corp., 2006 WL 892718 (D.N.J. 2006); Pharmacia Corp. v. Alcon Lab., Inc., 201 F.Supp.2d 335 (D.N.J. 2002). Her book publications include IP, Software and Information Licensing (BNA 2007); Licensing Law: Theory and Practice (Aspen 2007-2008); IP Law and Taxation (BNA 2003); IP Taxation: Cases & Materials (Carolina Academic Press 2004).

Tyler Ochoa (Santa Clara)

A.B., Economics and Communication, with distinction, Phi Beta Kappa, Stanford University
J.D., with distinction, Order of the Coif, Stanford University

Professor, Whittier Law School
Visiting Associate Professor, Hastings College of Law
Associate, Brown & Bain, Palo Alto, California
Clerk to Hon. Cecil F. Poole, U.S. Court of Appeals for the Ninth Circuit

Kenneth L. Port (William Mitchell)

Kenneth L. Port is professor of law and director of Intellectual Property Law Studies at William Mitchell College of Law, St. Paul, Minnesota, where he focuses on U.S. and international trademark law. Fluent in Japanese, he conducts research and writing on a host of issues regarding law in Japan. He twice has been a Fulbright visiting scholar to Tokyo University and serves as a summer visiting professor at the University of Chuo Law School, Tokyo, and Aichi University, Nagoya, Japan, teaching Anglo-American law. Prior to joining the William Mitchell faculty, Professor Port was a professor of law at Marquette University, a visiting professor at Illinois Institute of Technology Chicago-Kent College of Law, and an associate at Masuda, Funai, Eifert & Mitchell, Chicago. He has won the Ladas Memorial Award and is a member of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP). Professor Port received his bachelor’s degree from Macalester College and his J.D. degree from the University of Wisconsin.

Lisa P. Ramsey (University of San Diego)

Lisa P. Ramsey is an Associate Professor of Law at the University of San Diego School of Law, where she teaches intellectual property and international intellectual property law. Her current scholarship focuses on how trademark law aids or harms competition and the free flow of commercial expression.

Rebecca Tushnet (Georgetown)

Rebecca Tushnet is an associate professor of law at Georgetown. She clerked for Associate Justice David H. Souter. Her work focuses on copyright, trademark, and false advertising law, with special attention to their First Amendment implications. She is also an expert on the law of engagement rings.

David Welkowitz (Whittier)

David Welkowitz, currently a Visiting Professor of Law at DePaul University Law School, is Professor of Law at Whittier Law School in Costa Mesa, California. He is the author of Trademark Dilution: Federal, State, and International Law, a treatise on dilution law, as well as numerous articles on trademark law, including dilution.

Dr. Judy Zaichkowsky (Simon Fraser)

Dr. Judy Zaichkowsky is a professor of marketing at the Faculty of Business Administration, Simon Fraser University. She received her Ph.D. from UCLA in 1984 in marketing. Her knowledge and expertise on the role of involvement in consumer research has had a major impact on the field of marketing. Her 1985 Journal of Consumer Research paper on the involvement construct has been recognized as one of the top ten cited articles in consumer behavior and one of the most influential articles in the field of advertising. Dr. Zaichkowsky’s research interests have evolved since then and currently include consumer behavior issues relating to brand imitation, trademark infringement, and counterfeiting.

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Articles by Conference Participants

Barton Beebe: A Defense of the New Federal Trademark Antidilution Law

Robert Bone: A Skeptical View of the TDRA

Graeme B. Dinwoodie & Mark D. Janis: Dilution’s (Still) Uncertain Future

Shubha Ghosh: Dilution and Competition Norms

Mark A. Lemley & Stacey L. Dogan: The Trademark Use Requirement in Dilution Cases (draft)

Kenneth L. Port: Trademark Dilution in Japan

Rebecca Tushnet: Gone in 60 Milliseconds

Presentations by Conference Participants

Barton Beebe: The TDRA Case After One Year

Laura Bradford: Trademarks and Emotion

Ronald Butters: A Linguistic Look at Trademark Dilution

Shari Seidman-Diamond: Expansion and Contraction with the TDRA

Shubha Ghosh: Dilution and Competition Norms

Jacob (Jack) Jacoby: Considering the Who, What, When, Where and How of Measuring Dilution

Xuan-Thao Nguyen: Searching for Fame

Kenneth L. Port: Trademark Dilution in Japan

Rebecca Tushnet: Trademark Dilution

David Welkowitz: The Future of State Dilution Laws

Dr. Judy Zaichkowsky: Explaining Dilution Through Balance Theory

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