Download This PaperTrafficking in Trademarks: Setting Boundaries for the Uneasy Relationship Between 'Property' Rights and Trademark and Publicity Rights
29 Pages Posted: 14 Apr 2008 Last revised: 31 Mar 2009
Abstract
The piece is concerned with the general problem of the relationship between property constructs on the one hand and trademark and right of publicity law on the other. More specifically, it deals with the need to establish workable boundaries for trademark law and related right of publicity claims. The issue is seen most clearly in connection with merchandising of the trademark or image itself.
The approach to merchandising rights with respect both to trademarks and celebrity images has been needlessly complex and demands simplification. The Supreme Court' recent series of trademark opinions, with their strong admonition to restore and recognize the balance among the different intellectual property constructs, have provided the broad framework within which such simplification can be realized. Recognizing that trademark rights are essentially appurtenant, conditional rights, rather than self-sustaining property rights leads to the conclusion that trademark law cannot be the vehicle for enforcing claims arising out of the merchandising of the mark itself. In the same vein, the right of publicity, if properly understood and bounded, similarly is an appurtenant right, rather than an absolute exclusionary right in a name or image; that recognition accordingly precludes a publicity claim based solely on exploitation of the image itself without association with the user of the image. A focus on the fundamental nature of the underlying legal constructs of trademark law and of the cognate right of publicity allows application of a conceptual occam's razor, a simplification that sets the proper boundaries and balance.
Keywords: Trademark, Merchandising Rights, Right of Publicity
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