ICANN Morality Standards and the New gtlds: A Comparative Analysis of Morality in International Trademark Law in the Internet Age Griffin M.

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1 Likelihood of Confusion in Trademark Law: A Practical Guide Based on the Case Law in Community Trade Mark Oppositions from 2002 to 2012 Paul Maeyaert and Jeroen Muyldermans Ten Truths of False Advertising Surveys E. Deborah Jay Antisocial Trademarks Teresa Scassa ICANN Morality Standards and the New gtlds: A Comparative Analysis of Morality in International Trademark Law in the Internet Age Griffin M. Barnett Who Owns the Open Source Project Name? Pamela S. Chestek Commentary: Persistent Infirmities in Trademark Priority: Toward a Cure Neal R. Platt Commentary: Aura as Quality A Sumptuary Law for Our Times? Glenn Mitchell Ferring Pharmaceuticals Inc. v. Watson Pharmaceuticals, Inc. Magasins Best Buy Ltée et al. v. Office Québécois de la Langue Française Lexmark International, Inc. v. Static Control Components, Inc Vol. 103 No. 5

2 1278 Vol. 103 TMR BOOK REVIEWS International Trademark Dilution. By Daniel R. Bereskin and International Contributors Pp $ Thomson West. International Trademark Dilution is a comprehensive and well-written treatise on trademark dilution, covering its history and the current state of the law in a number of jurisdictions. The book commences with an historical overview of international trademark dilution, which includes chapters dedicated to the roots of dilution law in Europe and the evolution of dilution law in the United States. With the foundation well established, it then proceeds to summarize the law in Argentina, Australia, Brazil, Canada, Chile, China, India, Israel, Japan, Mexico, New Zealand, the Russian Federation, Singapore, South Africa, Switzerland, and the United States, following the enactment of the Trademark Dilution Revision Act of The situation in the European Union is discussed in two chapters, one dedicated to trademark dilution in the EU, and the other dedicated to unfair advantage law in the EU. The book concludes with chapters devoted to survey evidence in U.S. dilution cases, dilution and freedom of expression in Europe, and the impact of freedom of expression on dilution enforcement in the United States. A perusal of the list of erudite authors for this book leads one to expect that it will be an insightful and scholarly collection. It does not disappoint: The depth and breadth of the authors knowledge is apparent in every chapter. An international treatise of this type can sometimes be laborious to digest, especially for anyone planning on reading it from start to finish, as opposed to just researching specific legal issues. However, in this case, the authors have managed to make this book a truly comprehensible and uncomplicated exposition of the law in plain English and with enlightened commentary scattered throughout. The relatively short discussions arranged by numerous headings and subheadings in every chapter and supplemented by numerous footnotes help to keep the reader s attention throughout. International Trademark Dilution is a practical and extensive guide to this area of the law and should be considered a must-read for anyone practicing in the trademark field. Jennifer McCay

3 Vol. 103 TMR 1279 Trade Dress: Evolution, Strategy and Practice. By Darius C. Gambino & William L. Bartow Pp $ Oxford University Press. Perhaps no area of IP law is more underappreciated than is trade dress. Trade Dress: Evolution, Strategy and Practice provides a thorough discussion of the evolving concept of trade dress protection in the United States, balancing the academic and practical elements of the law. For the most part, the book is organized chronologically, tracing the origins of trade dress protection back to the nineteenth century and the early iterations of the U.S. Trademark Act through cases in the present time. The authors note that trade dress protection began to take its current shape by virtue of the Supreme Court s 1992 decision in Two Pesos v. Taco Cabana, which recognized trade dress used in a Mexican restaurant. That case, and the Supreme Court cases that followed, put trade dress on the map as a real weapon for infringement litigation. The authors astutely recognize that the key point for trademark practitioners is alleging product packaging trade dress versus product configuration, as the former does not necessarily require a showing of secondary meaning if it is found to be inherently distinctive. With the uptick in high-profile cases that has increased the use of trade dress, the authors address the increased confusion over the proper standards for inherently distinctive packaging and functionality. In Wal-Mart v. Samara Brothers, the Court confirmed that product configurations unlike product packaging can never be inherently distinctive. Shortly thereafter, the Court issued its opinion in TrafFix Devices v. Marketing Displays, which clarified the role of functionality in trade dress analysis by authorizing an evidentiary presumption in favor of functionality where the trade dress was formerly encompassed by a utility patent. In TrafFix, the Court espoused its test for utilitarian functionality, namely if a product feature is essential to the use or purpose of the device or affects the cost or quality of the device (commonly referred to as the Inwood Labs test). The TrafFix decision proceeded to validate the concept of aesthetic functionality, stating that the Court s decision in Qualitex was centrally focused on this question. Qualitex had introduced the competitive need test for functionality, that is, whether the exclusive use of a feature would put competitors at a significant non reputation-related disadvantage. While TrafFix served to settle the issue of utilitarian functionality for the moment, the authors astutely recognize that it resurrected interest in aesthetic functionality. As a result of this series of cases, the use of trade dress claims increased significantly, culminating in the Apple v. Samsung case involving Samsung s allegedly infringing mobile device and tablet

4 1280 Vol. 103 TMR designs. The authors tout Apple s IP Trifecta strategy as one to emulate, asserting a combination of copyright, design patent, and trade dress rights to thoroughly protect one s investment as an alternative to costly patent litigation. Later, the authors shift gears into a detailed discussion of the rationales for registering trade dress rather than relying on common law rights, including the registration s presumptive evidence of nonfunctionality at trial. What follows is an overview of enforcement strategies, available remedies, and defenses to asserted infringement. Finally, the book closes with a glimpse into the future of trade dress. Given all of the uncertainty around the concept of aesthetic functionality, post-louboutin, in particular, the authors posit that circuit splits are ripe for Supreme Court review once again. In all, the authors have successfully increased awareness and understanding of the concepts of trade dress protection, while simultaneously providing practitioners with a blueprint for understanding how best to craft a trade dress protection and enforcement strategy. Jeremy Roe

5 Vol. 103 TMR 1281 Canadian Intellectual Property Law and Strategy. By John S. McKeown ed. Pp $239. Matthew Bender (LexisNexis). According to the Author s Note, the book was written to explain to practitioners outside Canada how the Canadian legal system works. The author a Toronto-based intellectual property attorney who has been practicing law since 1976 has accomplished this goal; the text would be a useful addition to the libraries of non-canadian trademark attorneys and in-house legal departments. The text is divided into 4 major sections: trademarks (176 pages); domain names (22 pages), copyright (239 pages), and industrial designs (20 pages). Despite the overarching title, there is no coverage of patents. The 20-page index adopts the same general organization as the 19-page table of contents and provides just a little more detail. The text canvasses all major issues with references to the leading case law; the table of cases comprises 32 pages. Because of the comprehensive nature of the subject matter covered in a single volume, it is not possible to thoroughly address all sub-issues in detail. The trademark section covers registration, assignment, cancellation, opposition, common law rights, and infringement (including some court procedure). Taking its cue from the Canadian Trade-marks Act, the prose is descriptive in nature, with limited commentary, analysis, and opinion. The organization of topics and liberal use of headings makes it easy to hone in on the specific information being sought. The domain name chapter includes an eight-page discussion of the Canadian Internet Registration Authority s Dispute Resolution Policy, with references to key arbitration decisions. Paul Tackaberry