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Taxonomizing Various Mechanisms for Terminating Intellectual Property Rights

May 12, 2025 Pamela SamuelsonAdd a Comment

The literature on intellectual property (IP) rights has overwhelmingly focused on their birth, life, and enforcement. Rare indeed have been articles about how and why those rights cease to be enforceable.

In How IP Ends, Fagundes and Perzanowski have written the first comprehensive article about different ways that IP rights can cease to exist for the four most common IP regimes (e.g., patents, copyrights, trademarks, and trade secrets) through what they call “terminal mechanisms”: expiration, abandonment, forfeiture, and two types of invalidations (distinguished below).

The article’s first section provides a taxonomy of these terminal mechanisms to enable IP scholars to overcome the “impoverished vocabulary” we have historically had to discuss various ways that IP rights can end. The taxonomy aims to sharpen distinctions among the mechanisms, such as abandonment and forfeiture, which IP scholars and judges sometimes fail to appreciate.

Abandonment, the article observes, requires (or at least should require) a subjective intent to relinquish IP rights, coupled with an overt act manifesting that intent. Forfeiture, by contrast, is an unintentional relinquishment of rights (e.g., as when an author of a work forgets to file for a renewal of her copyright).

IP scholars and courts sometimes loosely refer to these two concepts as if they are the same thing. Fagundes and Perzanowski maintain that their emphasis on sharpening such distinctions is “more than terminological scolding.” It is instead a way to enrich our understanding of the mechanisms and their role in the IP system, and improve our vocabulary about them.

Another important distinction they make is between ex post invalidation and ab initio invalidation. The authors define ex post as a type of invalidation in which the IP right was at one time valid and enforceable, but ceases to be valid owing to changed circumstances (e.g., a once valid trademark becomes generic for a type of product). Ab initio invalidation, by contrast, is defined in terms of IP rights that were granted, but are subsequently determined to be invalid (e.g., a patent that gets struck down on obviousness grounds).

Although ab initio invalidations are about IP rights that should never have been recognized, those rights may have been plausibly claimed and the claimants may have asserted them against others or persuaded third parties to license. These claimed rights have a practical significance that deserves to be recognized. After all, IP laws do not require claimants of ab initio invalid IP rights to pay back, after invalidation, any royalties they may have collected when asserting those rights against some users.

A second section of How IP Ends discusses various policy rationales for IP right terminations. Most familiar is enrichment of the public domain after patents and copyrights expire. Another familiar rationale is the role that IP terminations play in screening out low value IP rights (e.g., when a patentee decides not to pay a maintenance fee because it regards the patent as no longer sufficiently valuable to justify paying the fee). A third familiar rationale is correcting errors (e.g., PTAB reviewing patent claims based on prior art patent examiners missed).

The most surprising category of the policy rationales described in the Article is that which promotes IP rights’ autonomy interests. If I as a creator have rights in a particular IP asset and I decide I want to relinquish those rights, then my personal autonomy interests give me power to do this. While I agree that there is something to be said about this, it seems an unlikely rationale for ending IP rights in the modern era.

The most stimulating and intellectually rich part of How IP Ends is its third section which presents a series of thought experiments about how IP rights could end differently. The authors pose the question: what about creating a termination mechanism for patents or copyrights (especially the latter) if the right holder fails to exercise those rights after a period of time? After all, trademark rights can cease to exist after long periods of nonuse, so why not other forms of IP?

Reinstating formalities in copyright law is another mechanism the authors consider. It used to be so easy to dedicate original works of authorship to the public domain (e.g., publishing copies of the works without copyright notices). Now there are too many copyrights and no certain way to dedicate them to the public domain. Bringing back formalities at least for U.S. works is possible, even if unlikely, but it is a good thought experiment topic.

And why shouldn’t trade secrets and trademarks expire like patents and copyrights do? These and other questions will tease the minds of all thoughtful IP scholars. This is an article that really needed to be written.

McFarlin on “Infringing Uses” After Warhol

Apr 14, 2025 Christopher J. SprigmanAdd a Comment

In Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith,¹ the Supreme Court considered whether the licensing of one of Andy Warhol’s Prince Series works for the purpose of illustrating a magazine story about the musician Prince, was a fair use of the Lynn Goldsmith photograph on which the Warhol work was based. In that opinion, the Court made two important interventions into the law of fair use.

First, the Court held that “[t]he fair-use provision, and the first statutory factor in particular, requires an analysis of the specific use of a copyrighted work that is alleged to be an infringement.”² “The same copying may be fair,” the Court said, “when used for one purpose but not another.”³ Accordingly, the Court focused on the challenged use—the license to Vanity Fair to illustrate a cover story about Prince’s life—and did not rule on whether the particular Warhol work licensed, Orange Prince, or any of the other Warhol Prince Series works, or any other conceivable use of Orange Prince, was or was not fair use.

As all copyright lawyers know, since the Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc.,⁴ the question of transformativeness has become a critical element of the fair use analysis, with works deemed transformative significantly more likely to be fair use. The Warhol Court’s second intervention was to make clear that a defendant’s use of a plaintiff’s work is not necessarily transformative just because that use contains a new meaning or message. Something more is required—the defendant’s use must have a different purpose than the plaintiff’s.⁵

That different purpose, the Court held, was lacking. Of particular significance to the majority, both Goldsmith’s photograph and Warhol’s Orange Prince artwork had been used to illustrate magazine stories about Prince. The particular challenged use—the Warhol Foundation’s licensing of Orange Prince to Vanity Fair—was the same as a principal use of the Goldsmith photograph. The use was therefore a potential substitute for the licensing of Goldsmith’s work.⁶

Tim McFarlin’s new piece in the South Carolina Law Review, titled Infringing Uses, Not Works, explores the consequences of the Warhol Court’s first intervention—i.e., its focus on the particular use made by the defendant of the plaintiff’s copyrighted work. In McFarlin’s telling, that intervention will re-shape how courts handle infringement lawsuits. In particular, McFarlin argues that Warhol’s use-focus is likely to transform how courts fashion injunctions in copyright infringement cases. The reason to expect this transformation, McFarlin explains, is rooted in the logic of the Warhol opinion itself, which strongly suggested that while the Warhol Foundation’s particular use might compete with the plaintiff’s work, and therefore fail to qualify as a fair use, other uses that we might ordinarily expect the Foundation to make of the Prince Series works would be unlikely to compete, and therefore much more likely to qualify as fair:

First, though Justice Sotomayor could have refrained (due to Goldsmith’s narrowing of her claim) from discussing other uses of Orange Prince, she did discuss them. And she did so in a way that highlighted their likely noninfringing nature: the Court’s own reproduction, public display, and distribution of both Orange Prince and Goldsmith’s photo within its opinions was covered by fair use, Sotomayor noted, just as that doctrine would likely cover using Orange Prince for the purpose of teaching.

Second, Justice Sotomayor also discussed the difference between an infringing and noninfringing use of Warhol’s iconic Campbell’s Soup Cans. Reproducing, publicly displaying, and distributing the “Campbell’s Soup” logo in a series of paintings for collectors and museums was likely noninfringing, Sotomayor posited, while licensing the work to a competing soup business to be reproduced, publicly displayed, and distributed in grocery stores likely would be infringing. (P. 112 (internal citations omitted).)

Warhol’s “use focus”, McFarlin argues, means that fair use is no longer a categorical analysis—in the ordinary case, a work is likely to be neither wholly inside or outside of the scope of fair use, but rather partly on both sides of the line, with different uses either qualifying or failing to qualify as fair. In a forthcoming article, I argue that the Warhol Court’s focus on the competitive consequences of defendant’s particular use is more likely, over time, to expand the scope of fair use than it is to contract it.⁷ McFarlin focuses on copyright infringement remedies to make a related point—Warhol’s use focus should, if it is heeded, reduce the scope of injunctive relief as well as impoundment and destruction orders in many copyright infringement cases.

To launch his argument, McFarlin refers to the injunction granted in a recent case, Tolkien Tr. v. Polychron.⁸ There, Judge Stephen V. Wilson of the Central District of California issued both (1) a worldwide injunction against the further publication of the Fellowship of the King, a work of fanfiction written without the Tolkien Estate’s consent, as well as (2) an Order that the writer, Demetrious Polychron, “[p]ermanently destroy all physical and electronic copies of the Infringing Work.” (P. 114 (internal citations omitted).) McFarlin says that an injunction that respects Warhol’s use focus would have been much narrower:

[F]irst, whether a derivative work, like the Fellowship of the King, infringes copyright must be judged use by use, per Warhol. The sharing of the Fellowship of the King for free and within a fanfiction community would present a strong case for a fair (and therefore noninfringing) use. The retention of a copy for Polychron’s own private, personal joy would pose yet a stronger case. So the injunction should have targeted only the commercial sale of Fellowship of the King, the sole use litigated in the case.

Second, it appears that the infringed works may now be out of copyright in New Zealand, where the Lord of the Rings copyrights apparently expired on January 1, 2024. So the injunction, issued by a U.S. court and applying only U.S. copyright law, should not have been worldwide in scope.

Third, even in the U.S., the infringed works’ copyrights will expire: likely in 2046 for the Fellowship of the Ring, 2049 for The Two Towers, and 2050 for the Return of the King. So the court should not have ordered the destruction of all copies of the work, given that at some point all uses—even commercially competitive ones—will be noninfringing. (P. 116-17.)

I’ll leave the remainder of McFarlin’s valuable article for your reading—including the parts where he argues how best to reconcile Warhol’s use focus with 17 U.S.C. § 103(a)’s seemingly categorical rule regarding the uncopyrightability of infringing derivative works, as well as his predictions regarding the impact of Warhol’s use focus on generative AI—but suffice now to say that McFarlin’s article is a valuable early entry in what will be a lengthy period in which the implications of the Warhol Court’s two big holdings are digested (or not) by the law.

Government Suppression of IP

Mar 14, 2025 Lisa Larrimore OuelletteAdd a Comment

Intellectual property laws are government policies to encourage the creation and dissemination of information. But there are also laws allowing the U.S. government to suppress IP-protected technical knowledge, and Doni Bloomfield’s insightful article argues that IP scholars should pay more attention to these forms of “intellectual antiproperty.” Just as intellectual property laws allow innovators to capture some positive externalities of their efforts, Bloomfield argues that intellectual antiproperty laws address some of the negative externalities—at least as they relate to national security. And with increasing global competition between the U.S. and Chinese governments, these laws are likely to grow in importance.

Bloomfield focuses on two legal channels of information suppression, which cover information protected under trade secret law and patent law. First, U.S. export-control laws allow the State and Commerce Departments to restrict transfers of thousands of categories of proprietary U.S. technologies. For example, these agencies can bar a U.S. firm from sharing covered information with non-U.S. employees within the United States. The U.S. government has even claimed authority over extraterritorial sales involving U.S. know-how, such as fining an Irish firm for selling disk drives to China. Second, the Invention Secrecy Act allows the U.S. Patent and Trademark Office to impose secrecy orders on patent applications that pose a national-security risk, including to restrict use to classified contexts or to bar disclosure altogether.

Government suppression of information isn’t new. Bloomfield engagingly documents the historical roots of these legal regimes, including the increasing use of industrial IP to define the limits of the government’s authority and to balance free-speech interests with national-security concerns. These regimes stem from WWI and WWII, when Congress passed laws allowing the government to restrict trade and to impose patent secrecy orders—and to more broadly censor other types of information. During the Cold War, the government dropped these broader speech controls and focused intellectual antiproperty laws on industrial IP. Enforcement varied over the following decades. A general liberalization of export controls during the Clinton, Bush, and Obama presidencies gave way to a spike in enforcement during the first Trump presidency due to rising concerns about China. President Biden’s administration tightened restrictions even further, and the second Trump administration seems likely to continue this course.

Bloomfield is right that these intellectual antiproperty laws deserve attention from IP scholars and teachers. For one thing, they are important limits on trade secrets and patents that are increasingly relevant for IP practice. As Bloomfield summarizes, these regimes “in effect added a new, enduring clause to the traditional IP bargain, requiring those seeking industrial IP rights to give the government the power to restrict knowledge about that invention.” They may help push innovators to use trade secrets rather than patents for inventions that implicate national security interests to avoid the broader scope of a patent-secrecy order. And they may have unintended consequences for IP boundaries; for example, the trend toward increasing use of confidentiality agreements (including to circumvent bans on noncompetes) may expand the government’s authority to restrict the covered information.

Bloomfield’s article also invites IP scholars to think more broadly about how and when the government should suppress IP. If there is a century-old tradition of government interference with IP rights to address national-security concerns, can this help justify government limits on IP to address other kinds of negative externalities? Could these export-control laws serve as a template for other limits—or is national security different? What are the best institutional designs for balancing the costs and benefits related to different externalities, and how well do U.S. institutions achieve that balance? Is restricting intellectual antiproperty to industrial IP sufficient to prevent First Amendment harms, or does this undervalue the speech interests that can arise in patent and trade secret cases?

As with most articles I like (lots), Bloomfield’s Intellectual Antiproperty raises as many questions as it answers, laying the foundation for an ambitious research agenda. It is recommended reading both for scholars focused on problems internal to IP, and for the growing number of scholars considering how IP laws intersect with other laws and policies for regulating information.

Patent Law: What, Like it’s Hard?

Feb 11, 2025 Sarah FackrellAdd a Comment

Imagine for a moment that you are a law student. You are interested in intellectual property law but you don’t qualify to sit for the patent bar. You know that means you can’t do patent prosecution work. You’re not too worried about that because you’re more interested in trademark or copyright work anyway. But still you wonder: How can you concisely convey your professional interests to your professors, peers, and potential employers? One common answer is to use the phrase “soft IP.”

As Amanda Levendowski points out, “soft IP” is frequently used to distinguish trademark and copyright law from patent law (despite longstanding criticism from Eric Goldman). But, she argues, this phrase “reflects implicit biases against copyright and trademark doctrine and practitioners.” (P. 102.) Levendowski demonstrates that the phrase “offers no conceptual, doctrinal, historical, operational, definitional, or practical clarity.” (P. 109.) So, she asks: “What’s so soft about ‘soft IP’?” (P. 102.) One answer, she suggests, is that the fields of copyright and trademark law tend to be associated with women:

Society has projected softness onto women for centuries. Softness can be powerful. It’s resilient. It’s flexible. It’s supportive. But I have never heard “soft IP” invoked to signify the strengths of softness, all of which happen to be indispensable to effective lawyering. Rather, fields and skills associated with women are routinely disregarded for being “soft” in ways that reflect a lack of respect for women and the rigor of their work. (P. 111.)

Thus the phrase “soft IP,” Levendowski writes, “suggest[s] that people who practice copyright and trademark law are, unlike patent practitioners, less up to a hard challenge.” (P. 111.) This, according to Levendowski, “is perhaps the most insidious aspect of ‘soft IP’: By implying that copyright and trademark work is not hard, the term erases that being a woman in any practice of law can be very hard.” (P. 112.)

And what’s so hard about “hard IP” anyway? As Levendowski notes, patent law isn’t intellectually “harder” than other forms of IP law or practice. For example, she notes that it’s not “harder” in the sense of being physically more tangible. And patent protection isn’t limited to inventions in the “hard sciences”—as Levendowski observes, utility patents can be used to protect a pool full of sprinkles and, also, design patents exist.

Indeed, the recent battle over the creation of the new design patent bar illustrates many of the points Levendowski makes in her article.

In 2022, the U.S. Patent & Trademark Office (USPTO) released a request for comments seeking input on, among other things, the question of “whether the creation of a separate design patent practitioner bar would be beneficial to the public and the Office.” In January 2024, it started allowing people who have certain art or design backgrounds (specifically, those whose backgrounds would qualify to be design patent examiners) to apply to join a new design patent bar.

No matter how many people end up applying to or joining this new design patent bar, this change constitutes an important recognition of the value that people with art and design backgrounds can bring to design patent law. It is also an important corrective to the completely illogical rule that existed before, where someone with an art degree was deemed competent to examine design patents but not to prosecute them. That made no sense.

Nonetheless, a number of patent attorneys filed public comments opposing any change to the existing gatekeeping system. Some of these comments reflected the kinds of biases Levendowski describes, suggesting that people who don’t have science and technical degrees aren’t as smart—and haven’t worked as hard—as people who qualify for the general patent bar. For example, one commentator who appears to be a patent attorney suggested that anyone without a science or technical degree would necessarily be a “second-rate practitioner.” One anonymous commenter, who claimed to be a patent attorney, argued that letting people without science or technical degree prosecute patents would constitute “lowering the bar” and even suggested that people with other degrees lacked “merit” and a “willingness to follow the rules.” The AIPLA suggested that attorneys without science or technical degrees are less ethical and more likely to fail to adequately advise and refer their clients. (For one response to this accusation, see my own public comments.)

In some ways, it’s astonishing to see attorneys express such open disdain for their fellow professionals and to publicly embrace these kinds of stereotypes. On the other hand, perhaps it’s not surprising in light of the culture and dynamics that Levendowski describes. If you have spent your career denigrating certain colleagues’ work as “soft” perhaps it’s not surprising that you see them as a “lower” level of practitioner. This may be especially true in a world where those colleagues have accepted—and perhaps even themselves adopted—the “soft IP” label.

Like Levendowski, I’ve used the term “soft IP” in the past. As a student and a young attorney, it seemed like a helpful shorthand to describe the kind of work I wanted to do. And yet, I was never fully comfortable with the phrase—especially when it was used by patent attorneys. Levendowski’s sharp, smart, and incisive essay helped crystalize, just in my own mind, the sources of and reasons for that discomfort. In the end, she makes a compelling case for abandoning the phrase “soft IP.” This essay is well worth your time—and that of your students.

A Stepwise Approach to Copyright and Generative Artificial Intelligence

Jan 14, 2025 Michael W. CarrollAdd a Comment

In order to understand whether generative AI may infringe copyrights, one must first have a sound grounding in the technical complexities of the “generative AI supply chain.” This Article not only explains the technology in terms accessible to a legal audience, but also explores the doctrinal complexities of how generative AI maps onto existing copyright law. The authors do an admirable job in accomplishing both goals.

I. Understanding Generative AI

This jot highlights four key technical points made in the article about generative AI that a copyright-interested legal reader needs to understand.

1. It is all math. Even though the outputs of generative AI models may be expressed in texts or images, the process by which the models are trained, and by which they operate, rely on converting the expressive inputs, including works of authorship, into structured numeric values in structured data sets that can be used in various mathematical operations to produce numeric outputs that are translated back into text and images. The math used in the operation of these models is fourth-grade math carried out by the machine-equivalent of an army of billions or trillions of fourth graders.⁹

2. Generative AI models are capable of discerning patterns in the entire corpus of works in the training data, not just in individual works on which the models were trained. Works of authorship used in training are treated as sources for pattern analysis of the constituent elements of textual or visual works, so “an item like a painting or a book is not itself data; rather it can be processed computationally to be converted into data to be used in machine-learning applications.” (P. 10.) If a generative AI model produces an output that look like a copy of a work in the training data, that is not because the training process retained any sense of those patterns as part of an individual work.

3. Generative AI technologies are prediction engines, not knowledge bases. A generative AI model or system is generally designed to predict outputs that a user would find to be responsive to a prompt. The article explains that some relatively recent technical advances in transformer architecture and diffusion techniques have improved these systems’ predictive power. Once granular patterns in the training data set are in place, the model or system is trained to generate an output at a similar level of granularity.

4. Scale matters. The amount of data required to train today’s most advanced generative AI models is unprecedented in scale. The greatly enlarged scale of training data is primarily responsible for the increasing utility of these technologies and their ability to produce results that surprise even those who built them.

II. Copyright and the Generative AI Supply Chain

The article breaks the stages of preparation and operation of a generative AI system into a “supply chain” comprised of component elements: from creation of expressive works to dataset collection and curation to model (pre-)training (creation of a base model) and then fine-tuning to system deployment for output generation which may be followed by model alignment. The value in this decomposition lies in showing that different actors can play different roles at different stages of the generative AI supply chain. This has implications for who might have copyright liability at what stages of that supply chain.

With respect to authorship/ownership, the article identifies a range of potential authors in the supply chain. In addition to copyrightable source works, compiling training datasets may sometimes exhibit sufficient originality to give rise to at least thin copyrights. In many cases, creating a base model may not be sufficiently original, but the article identifies some instances in which the model could be considered a work of authorship. Fine tuning a model raises similar issues, but the work of fine tuning lends itself to a potentially wider array of creative choices that underpin copyrightability claims. Are the generated outputs copyrightable? The article works through four possibilities: (1) authors of works in the training data, (2) some entity in the generative-AI supply chain (e.g., the model trainer, model fine-tuner, or application developer), (3) the user who prompted the system, or (4) no one.

The article discusses potential liability by organizing discussion around each exclusive right’s application to the each stage of the supply chain. The liability analysis covers reproductions in compiling and structuring the training datasets as well as in generating outputs.

After providing some interesting examples of “memorized” outputs (that is, outputs that are substantially similar to particular inputs) and techniques by which determined users can circumvent internal controls to prevent memorized outputs from being generated, the article usefully lays out the liability matrix for direct and indirect liability. The article also discusses why a provider of a deployed generate AI service may not be able to assert the Digital Millennium Copyright Act’s safe harbor protection.¹⁰

III. Concerns About the Fair Use Discussion

While the article generally does a good job of educating the reader about relevant copyright issues about which reasonable minds could disagree, it makes some assertions about fair use law that are reasonably contestable. Having previously acknowledged space for reasonable disagreement about whether models should be deemed to contain copies of individual works, this point should carry over to the fair use discussion. The article should remind the reader that fair use applies only if the elements of a prima facie case have first been met.

In the fair use discussion, I regard treating use of works in generative AI training to be transformative use as much stronger than the article suggests.

In addition, the article should distinguish between existing or emerging licensing markets for access and for uses. (See pp. 947-949 (elaborating on this point in the text and data mining context).) The market for access licensing, in my view, has no bearing on whether under the fourth fair use factor training on accessible works interferes with a market for use licenses.

IV. Conclusion

Despite these points of disagreement, this article makes a very valuable contribution to the literature. Its careful explanation of the technology and its readable application of relevant doctrine is impressive. As the law and technology continue to evolve, this article will stand out as a marker of where we were in the early days of copyright law’s application to generative artificial intelligence.

Fraud, Delays, and Nonsense (Marks) . . . Oh My!

Oct 29, 2024 Margo BagleyAdd a Comment

“Yes! that’s it! that’s it!” Those were my words when I first saw the title of Jeanne Fromer & Mark McKenna’s paper, Amazon’s Quiet Overhaul of the Trademark System. I was sure that they had identified the culprit behind the seismic shifts in trademark law that I had sensed were taking place over the past several years. I was thrilled that they were going to put together the pieces, some of which I had personally encountered, of a bizarre and important puzzle. They did not disappoint.

Trademarks ostensibly exist to reduce consumer search costs and protect the goodwill brand owners generate in their source-identifying marks (as associated with particular goods or services). They do this by being distinctive, with fanciful (made-up words like “Exxon”) and arbitrary marks (e.g., “apple” for computers) receiving the strongest protection, and, along with suggestive marks (e.g., “Coppertone” for sunscreen), being deemed inherently distinctive, while descriptive marks (e.g., “Honey-baked Ham” for ham with a sweet glaze) may acquire distinctiveness. Generic terms, the common name for a product (e.g., “apple” for apples) are not protectible as trademarks, because other product sellers need to be able to use the common names of goods for their own products. This last restriction reflects trademark law’s concern with the preservation of competition in the marketplace.

Trademark rights in the U.S. are acquired by use, which can be quite helpful for small business owners who may not be able to afford federal registration when launching. However, federal registration with the United States Patent and Trademark Office (PTO) does provide a number of helpful benefits, including nationwide constructive use even in unentered markets.

As compellingly described by Fromer and McKenna, Amazon, through its “Brand Registry Program”, has singlehandedly turned many of these long-held understandings and goals on their head, transforming trademark law in profoundly disturbing ways. The Brand Registry Program rewards owners of federally registered trademarks with a cheap and efficient dispute resolution process, which both allows them to object to uses of their mark on the website and also gain a higher priority in search results than if their mark was unregistered.

Fromer and McKenna identify at least ten impacts of Amazon’s program on the trademark system: Amazon 1) created a shadow trademark system that incentivized applicants to file for federal trademark registrations which 2) swamped, the PTO resulting in 3) significant delays for all applicants (plus a cluttered register) and opportunities for bad actors to 4) fraudulently register “in use” but unregistered marks and then 5) extort the legitimate owners (often small entities relying on traditional trademark priority rules) who would now risk losing the ability to sell goods on Amazon.

In addition, the authors detail how Amazon’s policies led to a change not just in the magnitude of registrations but also 6) in the kinds of marks being registered, nullifying the effect of historical limitations on the registration of 7) descriptive and generic terms (bad actors can register them with the USPTO as stylized marks/use disclaimers, but Amazon’s Registry only matches text so those legal limitations are ignored) while also giving rise to a wide variety of 8) “nonsense marks” (if you’ve shopped on Amazon, you’ve seen them), strings of unpronounceable letters that have no meaning to consumers but qualify for Amazon’s registry which then favors them in search results. As the authors explain, “when search and purchase are not necessarily done by people who need to remember a brand name, businesses just need something to make the algorithm prefer them. Nonsense will do.”

And if these externalities to Amazon’s Brand Registry Program were not bad enough, the company has simultaneously 9) elevated its own brands on its site so that one is more likely to see Amazon brands first in searches, even in searches specifically for other brands. This gives Amazon more power vs. third-party brands and 10) “decenters” branding by blunting the traditional source identification and search cost reduction benefits branding is designed to provide.

So, what to do? Because Amazon’s program (intentionally or not) is influencing the behavior of parties within the legal system, seemingly to the detriment of public policy goals for trademark law, the authors wisely propose actions for the PTO, Amazon, and the trademark system itself.

For the PTO, some self-reflection on its approach to dealing with these shifts in behavior is in order. This should include, inter alia, a reevaluation of its process of allowing registration of descriptive or generic terms with stylization or disclaimers, as well as the possibility of higher fees for such registrations in light of the higher costs imposed on the trademark system. Also advocated is a reconsideration of the registrability of nonsense marks which, as the authors note, are not like normal coined terms (as they are only able to be compared with other marks for sight, not sound nor meaning) and do not actually fit anywhere on the Abercrombie spectrum of distinctiveness.

For Amazon, while it has already begun cooperating with the PTO on identifying fraudulent filings, it can and should do more. Fromer and McKenna’s suggestions that Amazon curtail its acceptance into the Brand Registry of marks based on a pending application (which may never register and which arguably further incentivizes fraudulent filings that rely on the PTO backlog) and only allow a mark in the registry when it is registered in standard text, seem both sensible and eminently doable.

Finally, for the trademark system, the success of Amazon’s search algorithm as a replacement for much of the search-cost-reducing, information conveying function of trademarks suggests we may not need to accept the trademark baggage of artificial product differentiation and independent brand value generation (apart from product quality) to meet consumer search efficiency goals. This may call for a reevaluation of the role of trademarks in the competitive marketplace, but also an assessment of whether the dominance of Amazon’s search algorithm effectuates for its own branded products is consistent with the public good or should be addressed, if not within the trademark system, then within another legal framework. There is no single solution, but Fromer and McKenna’s completion of this trademark puzzle is a wonderfully valuable, albeit troubling, gift to us all.