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University of Iowa News Release

Aug. 19, 2004

UI Law Professor Janis Writes Hip Casebook

Normally, hipness is not an important quality to be successful in law.

One exception, though, is trademark law.

"Trademark law is intimately connected with pop culture, so it resonates well with most law students," says UI law professor Mark Janis, who has co-written a new casebook on trademark law that includes references to such pop icons as Elvis Presley, the Coca-Cola bottle, the Ferrari Testarossa and the hip hop group OutKast, along with lesser-known entities like the Nuclear Marshmallows. The book, "Trademarks and Unfair Competition: Law and Policy," examines case law about the slogans, symbols and images that businesses, entertainers, sports stars and others use in connection with their products and services. Janis says that the field is rapidly expanding and always changing because of the popular obsession with image and the rise of electronic commerce.

"Firms invest millions of dollars to develop very carefully wrought images connected with their brands. But they acquire trademark rights only if consumers perceive the images as distinctive," said Janis. "Firms guard their brands jealously to protect their investment, but in the end, it's the perception of the ordinary consumer that usually controls."

One case in the book involves a suit by Elvis Presley Enterprises against a bar called "The Velvet Elvis" that used Elvis-themed decor, menus and advertisements. "Because students are already immersed in the subject matter of many of these lawsuits, we can spend most of our class time analyzing rules and policy," says Janis, an expert in trademark and patent law and H. Blair & Joan V. White Intellectual Property Law Scholar at the UI. "You don't have that same luxury in your more nerdy areas of law -- like, say, securities regulation."

Among other cases discussed in the book are disputes between Pizza Hut and Papa John's over pizza slogans, Mattel's case against the pop group Aqua over the song "Barbie Girl," a recent Supreme Court case between Victoria's Secret and the owner of a shop called Victor's Little Secret, and Playboy's suit against Netscape over adult-oriented banner advertisements keyed to appear when an Internet user enters trademarked terms like "Playboy" and "Playmate."

Janis considers himself both hip and "one really righteous dude," but also admits "it's just possible that I'm deluding myself." Fortunately, he said he regularly receives coolness advice from his wife, his three children, and his UI law colleague, securities regulation expert Professor Hillary Sale. And his co-author, Chicago-Kent law professor Graeme B. Dinwoodie, is both a leading trademark law scholar and "a living embodiment of hipness." 

The book is also significant because of its extensive treatment of trademark and unfair competition cases involving the Internet. Janis said that one common type of dispute involves the unauthorized use of trademarks in Internet domain names. For example, a pair of teenagers might reserve the domain name "britneyspears.com" and associate it with a fan web page, or a web page criticizing Britney Spears. Or, they might just hold the domain name, hoping later to sell it to Britney Spears, a practice known as "cybersquatting." Over the past few years, he said Congress, the courts, and the world intellectual property community have struggled to develop new rules of trademark and unfair competition law to deal with these types of disputes. One leading case involves Nuclear Marshmallows, a shadowy entity accused by a large Australian telecommunications firm of cybersquatting.

Janis and Dinwoodie wrote the book's analysis and commentary in a humorous, entertaining and often self-deprecating style, reflecting the style of pop culture trends that often inform trademark law.

"We put humor into our problems because that's the way we teach," says Janis, who claims to be perfecting his rendition of "Hound Dog" so that he can teach "The Velvet Elvis" case as Elvis.  "It's pedagogically interesting. Not to mention hip."

The book is published by Aspen Publishers.

STORY SOURCE: University of Iowa News Service, 300 Plaza Centre One, Iowa City, Iowa 52242-2500.

MEDIA CONTACT: Tom Snee, 319-384-0010, tom-snee@uiowa.edu.