Professor Jeanne Fromer delivers 4th EWBCLB Distinguished Visitor in Intellectual Property Lecture

On 9 January 2023, Walter J. Derenberg Professor Jeanne Fromer from NYU School of Law delivered the 4th EW Barker Centre for Law & Business (EWBCLB) Distinguished Visitor in Intellectual Property Lecture at Bukit Timah Campus. In the audience were Professor Paul Davies (Oxford), Professor Martin Senftleben (Amsterdam), Associate Professor Vicki Huang (Deakin), Mr Tony Yeo (Managing Director of Intellectual Property, Drew & Napier), Mr Lau Kok Keng (Head of Intellectual Property, Sports & Gaming, Rajah & Tann), Mr Tan Tee Jim (Head of Intellectual Property, Lee & Lee), Ms Sandy Widjaja and Mr Gavin Foo (Intellectual Property Office of Singapore). Professor David Tan, Head (Intellectual Property) of EWBCLB at NUS Law, facilitated a discussion after the lecture.

The lecture, titled “Trademark Ownfringement”, focused on how in recent years, trademark owners have increasingly been acting very similarly to those they accuse of infringement or dilution of their marks. Professor Fromer calls them “ownfringers”. For example, fashion companies Gucci and Balenciaga recently engaged in a collaboration of sorts—the “Hacker Project”—in which they each spliced the other’s marks and signature aspects into their fashion items. As a result, Gucci’s double-G logo appears all over Balenciaga’s Hourglass bag, while a logo with double-B’s (for Balenciaga) that otherwise looks like Gucci’s appears with the red-and-green Gucci stripe on tote bags. Were a third party to have done this, Gucci and Balenciaga would reasonably be shouting about consumer confusion and trademark infringement. Previously unheard-of collaborations between businesses in distinct spaces are also proliferating, such as between Adidas footwear with Lego brick details, fashion brand Dolce & Gabbana and Smeg appliances, and Ikea home goods and fashion company Off-White.

Yet at the same time, mark owners like Nike are pursuing legal action for infringement against aftermarket customisers of its goods, claiming it can control this aftermarket even when the third-party customisation strikes consumers as an unlikely “collaboration” with the mark owner. Moreover, businesses are increasingly self-parodying their own marks, but at the same time, mark owners continue to claim that third parties’ arguable parodies constitute trademark infringement.

Professor Fromer provides her perspectives on how trademark law should think about these new, prevalent behaviours by mark owners. She contends that mark owners are arguably blurring the distinctiveness of their own marks by engaging in these once-unusual collaborations and self-parody. In fact, they might be undermining the strength and the protectability of their own marks and engaging in self-dilution. Moreover, by purposefully increasing the likelihood of consumer confusion as to whether a mark’s use is legitimate—even if done ironically—mark owners are altering the calculus of trademark infringement analysis.

The lecture will be published in the Singapore Journal of Legal Studies.

ABOUT PROFESSOR JEANNE FROMER

Professor Jeanne Fromer is the Walter J. Derenberg Professor of Intellectual Property Law at the New York University School of Law, a chair that is named after the founder of the Copyright Society of the USA. She specialises in intellectual property, including copyright, patent, trademark, trade secret, and design protection laws.

Professor Fromer is presently a faculty co-director of the Engelberg Center on Innovation Law & Policy at NYU Law, and the Vice-Dean of Intellectual Life at the law school. She is also the co-author, with Chris Sprigman, of a free copyright textbook, Copyright Law: Cases and Materials, which is in use at over 60 law schools around the world.

Before coming to NYU, Professor Fromer served as a law clerk to Justice David Souter of the US Supreme Court. She received her JD magna cum laude from Harvard Law School and earned her BA summa cum laude in computer science from Columbia University. She also received her SM in electrical engineering and computer science from MIT for research work in AI and computational linguistics and had previously worked at AT&T (Bell) Laboratories in those same areas.