92 Notre Dame L. Rev. 1425 (2017)
Technology increasingly allows for digital distribution of goods that once might once have been offered in physical form, radically separating the design and production processes. That separation has potentially destabilizing consequences for trademark law, which overwhelmingly has been oriented toward indications of the origin of physical goods. For one thing, digitization brings much more of trademark law into contact with the Supreme Court's Dastar decision, raising difficult questions about whether, and under what circumstances, digital files count as “goods” for Lanham Act purposes. More broadly, a world of increasing digitization implicates concerns about the boundaries of trademark law vis-à-vis other areas of IP law, and it raises profound questions about the meaning of source indication and the role of trademark law in the digital world.
We argue that the question of whether we should treat digital files as relevant goods is irreducibly one of policy, and it should not be reduced to mere formalism. Digital files should be treated as goods only when consumers’ interactions with the files sufficiently resemble their interactions with physical goods that they warrant the same treatment. In particular, we argue that digital files should be treated as goods only when the origin of the files as such (not the content of those files) is material to consumers. That, we argue, may turn out to be relatively rare. Indeed, we suggest that a world of greater digitization might well be a world in which trademark law has less relevance relative to design patent and copyright.
McKenna, Mark, "Trademarks and Digital Goods" (2017). Journal Articles. 1310.