Owning Oneself in a World of Others: Towards a Paid-For First Amendment

Univ. of San Francisco Law Research Paper No. 2014-10

35 Pages Posted: 12 Apr 2014 Last revised: 28 May 2014

David J. Franklyn

Golden Gate University - School of Law

Adam Kuhn

University of San Francisco

Date Written: April 10, 2014


Can the right of publicity (a state law right) be reconciled (in a legitimate and non-arbitrary way) with the First Amendment's prohibition against state laws that “suppress” speech? Ever since the Supreme Court said that commercial speech deserves First Amendment protection, people sued for misappropriating celebrity fame for profit have claimed that they have a First Amendment right to do so. The defense has morphed in the case law to the point that the controlling issue seems to be whether the challenged use is “sufficiently transformative” to justify the taking. The use of a transformation construct to manage the conflict has been dubious at best, and misleading at worst. It has spawned an inconsistent and increasingly arbitrary body of law.

This Article argues that the courts' conceptualization of the conflict — as a property right against a speech right — is askew. We argue that the conflict is about allocating competing economic claims: the right of the plaintiff to prevent commercial use of her image versus the right of the defendant to make commercial use of her image. The use of the transformation test essentially turns the inquiry into an attempt, albeit not transparent, to allocate the economic value created or attributable to the celebrity plaintiff against the add-on value created by the person who took the celebrity image and allegedly transformed it into a new product with new economic value attributable to work or creativity of the unauthorized user.

This article concludes that in order to save both of these important rights, we must allow judges to honestly deal with the underlying economic issues. We can only accomplish this by transitioning to a compulsory licensing system with forced apportionment. In order to satisfy the First Amendment, censorship must be taken off the table as a plaintiff tool. But to satisfy the right of publicity, mandatory profit sharing mechanisms must be implemented.

Keywords: First Amendment, commercial speech, celebrity, fame, misappropriation, sufficiently transformative, compulsory license

Suggested Citation:

Franklyn, David J. and Kuhn, Adam, Owning Oneself in a World of Others: Towards a Paid-For First Amendment (April 10, 2014). Univ. of San Francisco Law Research Paper No. 2014-10. Available at SSRN: https://ssrn.com/abstract=2423655 or http://dx.doi.org/10.2139/ssrn.2423655

Trademark Surveys: An Undulating Path

Texas Law Review, Vol. 92, 2014

Northwestern Law & Econ Research Paper No. 14-12

45 Pages Posted: 9 Jul 2014  

Shari Seidman Diamond

Northwestern University, School of Law & American Bar Foundation

David J. Franklyn

Golden Gate University - School of Law

Date Written: July 8, 2014


When a plaintiff alleges trademark infringement or claims that false advertising is likely to confuse or deceive, the pivotal legal question is: how are consumers likely to perceive the mark or advertising? In the early days of trademark litigation, a parade of consumer witnesses, carefully selected by one of the parties to support a trademark claim, would testify about their reactions to a mark. That approach has given way to systematic survey evidence reflecting the responses of a substantial number of consumers selected according to an explicit sampling plan, asked the same questions, and unaware who sponsored the survey.

Some courts have described surveys as the most direct form of evidence that can be offered on the consumer perception questions at issue in trademark and deceptive advertising litigation, but several scholars, relying on reported cases, have questioned the role that surveys actually play in trademark cases. While surveys continue to be highly valued by courts and trademark attorneys, trademark scholars have argued that in practice they rarely influence the outcome of reported trademark cases.

To address this apparent conflict, we surveyed trademark attorneys in the United States and internationally, revealing the publicly invisible uses of surveys that often contribute to resolution without a formal court decision. We show that surveys play a substantial role in convincing parties not to pursue claims or to settle them. In addition, we identify the legal, strategic, and economic reasons why many reported cases do not contain survey evidence, even when they would be useful in evaluating a claim.

Keywords: intellectual property, trademarks, experts, litigation

JEL Classification: K10, K30, K41

Suggested Citation:

Diamond, Shari Seidman and Franklyn, David J., Trademark Surveys: An Undulating Path (July 8, 2014). Texas Law Review, Vol. 92, 2014; Northwestern Law & Econ Research Paper No. 14-12. Available at SSRN: https://ssrn.com/abstract=2463685

Owning Words in Cyberspace: The Accidental Trademark Regime

Wisconsin Law Review, Vol. 2001, 2001

40 Pages Posted: 5 Mar 2008  

David J. Franklyn

Golden Gate University - School of Law


The Internet is changing attitudes and feelings about the idea of owning language, which will affect American trademark law and regulations. This will eventually reshape American trademark's core conceptual boundaries. Specifically, the domain name system is a property system that competes with trademark law and encourages the commodification of words in ways that is contrary to current trademark law. For example, trademark law does not permit the sale of words, but an on-line auction house that is an internet corporation for assigned names and numbers may list thousands of words for sale on its website such as wine.com or business.com.

This Article argues that the Internet domain name system is nurturing a more pro-property view of word ownership than presently exists in trademark law, and this new attitude will not easily go away. As this novel form of word ownership and right of property expands, the domain name system becomes a rival trademark regime that coexists in an uneasy tension with traditional trademark law.

Keywords: cyberspace, trademark, Internet, domain name, ownership, property

Suggested Citation:

Franklyn, David J., Owning Words in Cyberspace: The Accidental Trademark Regime. Wisconsin Law Review, Vol. 2001, 2001. Available at SSRN: https://ssrn.com/abstract=1100043