Hi Everyone,

I’ve posted a revised version of the casebook, V.1.1, mainly to correct the typos, but also to make a few minor substantive changes that are listed below and in the attached document. As you’ll see, the changes are minor, so if you’ve already prepared your syllabus for next semester keyed to V 1.0, then you should be fine sticking with that version.

Version 1.0 is still available on the website and will remain available for the lifetime of the casebook along with all other versions.

I’m also attaching to this post redlines of each Part of the casebook to show the specific changes made. (I’ll need to attach Parts 4 through 6 in a separate post. The forum only accepts four attachments).

I expect to revise the casebook once per year, typically in the midsummer. My assumption is that too frequent revisions will just be annoying. But having just taught the book and kept a record of the various typos, I thought I might as well release this version now.

Thanks, Barton

Substantive Changes from Version 1.0 to Version 1.1

Part I: Establishing Trademark Rights

• Part I.A.1.a.i: Slightly reworded the discussion of the Abercrombie classification of surnames
• Part I.B: Revised the introductory paragraphs to reflect the lack of consensus on whether a mark that is unregistrable under § 2 is also unprotectable under § 43(a)
• Part I.1.c.2: Added an additional image preceding Louboutin.
• Part I.C & Part I.D: Added a footnote to Part I.C and a paragraph to Part I.D to reflect the fact that a showing of use is not required for foreign applicants under § 44.
• Part E.3.1: Deleted Paris Convention discussion from Grupo Gigante to try to shorten the opinion excerpt

Part II: Trademark Infringement

• Part II.B.3: Deleted three paragraphs from Smith v. Wal-Mart Stores, Inc. to try to shorten the opinion excerpt.
• Part II.B.8: Added image for Dastar case
• Part II.C.1: Added additional Charbucks Blend image preceding Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.
• Part II.D.2.b: Added note on Trademark Clearinghouse
• Part II.D.2.b: Deleted “Note that the complainant must have a registered mark to avail itself of the URS. Otherwise, it must use the UDRP.”

Part III: Defenses and Related Limitations

• Part III.B.1: Deleted from Fernandez concurrence in Tabari his criticism of Judge Kozinski’s “gratuitous slap” at plaintiff’s counsel (on the theory that it’s extraneous and takes too long to describe this to the student)
• Part III.C.2: Added pre-opinion question on whether producers of racing video games must/should get authorization before using images of real-world automobiles and racing circuits
• Part III.C.3: Added excerpt from Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003)
• Part III.E: Deleted final paragraphs on injunctive relief from Champion Spark Plug

Part IV: False Advertising

No significant changes.

Part V: Right of Publicity

• Part V.B: Corrected footnote in Judge Goodwin’s majority opinion in White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992)
• Part V.B: Added note on settlement in In re NCAA Student–Athlete Name & Likeness Licensing Litigation and related cases
• Part V.B: Added notes on right of publicity and social media

Part VI: Remedies

• Part VI:A Deleted North American Medical Corp. v. Axiom Worldwide, Inc. and replaced it with Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 763 F.3d 1239 (9th Cir. 2013)