Seminar  |  10.05.2017 | 12:00  –  13:30

Brown Bag-Seminar: Behind the Steele Curtain: An Empirical Study of Trademark Conflicts Law, 1952-2016

Tim W. Dornis (Leuphana Universität Lüneburg)

Max-Planck-Institut für Innovation und Wettbewerb, München, Raum 313

US doctrine on international trademark disputes is founded on a precedent from 1952. Steele v. Bulova Watch Co. is the first and only Supreme Court decision on the question of how far US trademark law should be extended beyond the US’s national borders when an international infringement is at issue. Even though cases have drastically multiplied there has been no comprehensive account of the actual state of the law. Courts and commentators continue to rely on a small set of leading cases, Steele and a few appellate court decisions, neglecting the landscape of lower courts’ decision-making. An empirical study of the field’s complete case law from 1952 until 2016 helps to address this blind spot. The results show that much of the conventional wisdom is questionable, if not incorrect. The analysis not only provides new and unexpected insights into the actual extension of US trademark law but also explains which factors drive the outcome in practice, how these factors interact with one another, and how each factor has been micro-shaped over time. Based on these findings, several crucial corrections to existing doctrine can be suggested. Most succinctly put, one can say that, in the interest of aligning judicial practice with the realities of socioeconomic globalization, the current overextension of the Lanham Act must be curbed. The doctrine of trademark extraterritoriality that has evolved in the wake of Steele v. Bulova is an anticompetitive detriment rather than a right-owner panacea.

Ansprechpartner: Dr. Fabian Gaessler