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Title

Brief of Amici Curiae on Behalf of Intellectual Property Professors in Support of Appellant and in Support of Reversal

Authors

Mark McKenna, Notre Dame Law SchoolFollow
Rebecca Tushnet, Harvard Law SchoolFollow

Document Type

Brief

Publication Date

9-25-2017

Abstract

ASTM’s fundamental complaint is about unauthorized use of its intangible content—the standards for which it claims copyright ownership. Dastar unambiguously holds, however, that only confusion regarding the source of physical goods is actionable under the Lanham Act; confusion regarding the authorship of the standards or their authorization is not actionable. ASTM cannot avoid Dastar just because Public Resource creates digital copies of those standards. Consumers encounter the ASTM marks only as part of the standards, into which ATSM chose to embed the marks. As a result, any “confusion” could only be the result of the content itself. Dastar teaches that control over the creative work is the province of copyright law, not the Lanham Act. Accepting ASTM’s argument would create exactly the kind of “mutant copyright” rejected by the Supreme Court.

Along with Dastar, trademark law contains additional limiting doctrines to avoid this problem when it comes from allegedly implied endorsement based upon the content of a work. Under Rogers v. Grimaldi, where the allegedly infringing use comes from the content of a work—including its title—infringement liability is limited to cases of affirmative misrepresentations about authorization (or uses unrelated to the content, not argued here), and does not extend to any implication of authorization that might come from the mere presence of a mark as part of a work. Rogers ensures that Dastar’s mandate cannot be evaded by making arguments about the “quality” of the defendant’s copies, as ASTM did here. Together, Dastar and Rogers set out a clear rule that defines the boundaries of copyright and trademark law.

Comments

Table of Authorities include:

Mark P. McKenna & Lucas S. Osborn, Trademarks and Digital Goods, 92 Notre Dame L. Rev. 1425 (2017)

Recommended Citation

Brief of Amici Curiae on Behalf of Intellectual Property Professors in Support of Appellant and in Support of Reversal, American Society for Testing and Materials v. Public.Resource.Org, Inc, No. 17-7035 (D.C. Cir. Sep. 25, 2017)