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31 Fordham Intell. Prop. Media & Ent. L.J. 391 (2021).
Article by James Boyle and Jennifer Jenkins*
n recent years, universities have been accused in news stories of becoming “trademark bullies,” entities that use their trademarks to harass and intimidate beyond what the law can reasonably be interpreted to allow. Universities have also intensified efforts to gain expansive new marks. The Ohio State University’s attempt to trademark the word “the” is probably the most notorious. There has also been criticism of universities’ attempts to use their trademarks to police clearly legal speech about their activities. But beyond provocative anecdotes, how can one assess whether a particular university is truly bullying, since there are entirely legitimate reasons for universities—like all trademark holders—to assert their rights? Online “rankings” of trademark bullies have obscure methodologies. We lack both an empirical account of major aspects of the landscape, and a rigorous case study giving individualized, almost ethnographic, information about what the accused academic trademark bullies think they are doing. What are their legal arguments and how would impartial experts assess those claims? What is their intellectual property worldview, their idea of the role that trademarks have in the university’s mission?
In this Article, we attempt to provide an answer to those questions. We conducted the first empirical study of a prominent university’s trademark assertion practice—both the legitimate exercise and defense of its brands and conduct that strays over the line into bullying. To do this, we took the university popularly identified as the number one collegiate trademark bully and conducted a comparative empirical ranking of its behavior as compared to other classes of universities—academically elite institutions, major sports programs and so on—to find out if any of these categories were predictors of aggressive trademark assertion. Second, we hand-coded every single trademark opposition filed by the alleged bully over a four-year period, assigning each one a numerical merit score. We also analyzed the arguments that the university provided, thus allowing us not merely to identify whether this was a true case of bullying, but what the alleged bully had to say for itself. Unfortunately, the accused bully is our own university, Duke. Is Duke an outlier or a bellwether? There are reasons to suspect the latter. After assessing a variety of possible explanations for anomalous aggressiveness in trademark assertion, ranging from legal change and licensing culture to behavioral economics, the Article concludes with suggestions for reform, both of the law and of university practices.
This Article is made available under a Creative Commons Attribution 3.0 Unported license, available at https://creativecommons.org/licenses/by/3.0/.
* James Boyle is the William Neal Reynolds Professor of Law at Duke Law School. Jennifer Jenkins is the Director of the Center for the Study of the Public Domain at Duke and a Clinical Professor of Law (Teaching). We wish to acknowledge the superb research assistance of Matt Gibbons, Michael Dale, Joe Bianco, and Anupam Dalvi. Without them this study would not have been possible. Barton Beebe showed great kindness in running some comparative statistics in his trademark database. His work was also an inspiration. We are grateful for his very helpful comments and those of Kerry Abrams, Joseph Blocher, Curt Bradley, Mitu Gulati, Kim Krawiec, and Neil Siegel, none of whom should be associated with the ideas expressed here. Errors are ours. The authors’ views are their own. They do not speak for Duke University. Corresponding author, James Boyle. firstname.lastname@example.org. .