Wednesday, February 28, 2018 - 12:30pm to 2:00pm
Room 223, Flavelle Building, 78 Queen's Park



Mark McKenna
University of Notre Dame Law School

Claiming Design

Wednesday, February 28, 2018
12:30 - 2:00
Room 223, Flavelle Building
78 Queen's Park

Under American law, design can be protected under at least three different regimes: trademark, design patent, and copyright. These regimes are not exclusive, meaning that claimants can, and very frequently do, claim multiple forms of design protection simultaneously. But each of these regimes has different claiming rules, and these differences can be consequential for the scope of the rights in the design at issue, and in shaping legal and business incentives. In this paper, we evaluate several dimensions of the differences in claiming across areas of intellectual property that speak to design, focusing primarily on timing and the mode of depiction, in order to optimize the different design protection regimes. We also analyze various approaches to ameliorating the amplified costs of overlapping regimes for claiming design, including doctrines of election and channeling rules that direct designs to one regime or another. We also introduce the possibility of uniform claiming principles that carry across the different intellectual property regimes as a way to smooth out some inconsistencies across these regimes while also allowing protection under multiple regimes.

Mark P. McKenna teaches and writes in the area of intellectual property. Professor McKenna is widely recognized as a leading scholar in the trademark area, having published a number of articles in leading law journals on the topic of trademark law. He has also written about design patent, copyright, the right of publicity, and the intersection of intellectual property rights regimes. Some of his latest projects include an empirical study of Lanham Act false advertising decisions, a comparative analysis of innovation institutions and failures, and a study of the ways IP law understands product dimensions.  Professor McKenna joined the Notre Dame Law School faculty on a permanent basis in the Fall of 2008 after visiting for a semester in the Spring of 2008. Prior to joining the faculty, Professor McKenna was a member of the faculty at Saint Louis University School of Law and practiced law with an intellectual property firm in Chicago, where he primarily litigated trademark and copyright cases. He graduated from the University of Notre Dame in 1997 with a degree in Economics and earned his J.D. from the University of Virginia School of Law in 2000. 

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