JIPEL NYU Journal of Intellectual Property & Entertainment Law VOLUME 9 NUMBER 2 NEW YORK UNIVERSITY JOURNAL OF INTELLECTUAL PROPERTY & ENTERTAINMENT LAW VOLUME 9 NUMBER 2 CONTENTS Preface ................................................................................................................................. v ESSAY EEEEEEEYOOOOOO!: Reflections on Protecting Pitbull’s Famous Grito ..................................... 179 Justin F. McNaughton, Esq., Ryan Kairalla, Esq., Leslie José Zigel, Esq., and Armando Christian Perez ARTICLE CopyrigHt in tHe Texts of tHe Law: Historical Perspectives ...................... 191 Charles Duan NOTES Towards a Trademark Rule of Reason ....................................................... 222 Daniel M. Lifton Of Mouse and Men: Will Mickey Mouse Live Forever? ........................... 249 Sarah Sue Landau Patent Term Extension and the Active Ingredient Problem ....................... 279 Nicholas G. Vincent, Ph.D. i Statement of Purpose Consistent with its unique development, The New York University Journal of Intellectual Property & Entertainment Law (JIPEL) is a nonpartisan periodical specializing in the analysis of timely and cutting-edge topics in the world of intellectual property and entertainment law. As NYU’s first online-only journal, JIPEL also provides an opportunity for discourse through comments from all of its readers. There are no subscriptions, or subscription fees; in keeping with the open-access and free discourse goals of the students responsible for JIPEL’s existence, the content is available for free to anyone interested in intellectual property and entertainment law. ii Cite as N.Y.U. J. INTELL. PROP. & ENT. L. The New York University Journal of Intellectual Property & Entertainment Law is published two times per year at the New York University School of Law, 139 MacDougal Street, New York, New York, 10012. In keeping with the Journal’s open access and free discourse goals subscriptions are free of charge and can be accessed via www.jipel.law.nyu.edu. Inquiries may be made via telephone (212-998- 6101) or electronic mail ([email protected]). The Journal invites authors to submit pieces for publication consideration. Footnotes and citations should follow the rules set forth in the latest edition of The Bluebook A Uniform System of Citation. All pieces submitted become the property of the Journal. We review submissions through ExpressO Bepress (http://law.bepress.com/ expresso/) and through electronic mail ([email protected]). All works copyright © 2020 by the author, except when otherwise expressly indicated. For permission to reprint a piece or any portion thereof, please contact the journal in writing. Except as otherwise provided, the author of each work in this issue has granted permission for copies of that article to be made for classroom use, provided that (1) copies are distributed to students free of cost, (2) the author and the Journal are identified on each copy, and (3) proper notice of copyright is affixed to each copy. A nonpartisan periodical, the Journal is committed to presenting diverse views on intellectual property and entertainment law. Accordingly, the opinions and affiliations of the authors presented herein do not necessarily reflect those of the Journal members. The Journal is also available on WESTLAW, LEXIS-NEXIS and HeinOnline. iii NEW YORK UNIVERSITY JOURNAL OF INTELLECTUAL PROPERTY & ENTERTAINMENT LAW VOL. 9 BOARD OF EDITORS – ACADEMIC YEAR 2019-2020 Editor-In-Chief NICHOLAS G. VINCENT Senior Articles Editor Managing Editors Executive Editor YANG LI GABRIEL B. FERRANTE LAURA ZHU KATHRYN LEICHT Senior Notes Editor Senior Web Editor KYUNG TAECK “ROBERT” MINN OREN STEVENS Senior Editors PAIGE GEIER JOSHUA PERKINS DAVID ZHIKUN JIANG MAGGIE A. REINFIELD DANIEL LIFTON CHRISTINE SONG ELINA MILSHTEIN JACKIE ZACHARIADIS Staff Editors ZACHARY J. BASS GARRETT C. HELLER ERIC M. PECCI ZACHARY M. BRONER LIA M. HIGGINS KEVIN QIAO CASSI CARLEY NICHOLAS J. ISAACSON JOE RABINOVITSJ LVXIAO CHEN JESSE KIRKLAND PATRICK A. REED NEIL CHITRAO ANASTASIYA KRYUKOVA KIANA M. ROBINSON MAGDALENA CHRISTOFOROU ZACHARY A. LANDOW MINYOUNG RYOO MARIO CISTARO DANIEL Y. LEE GABRIELA C. SCHNEIDER SEAN S. CUNNINGHAM GUS LONGER SIDDRA SHAH JOANNE DYNAK FRANCESCA MASELLA ASHLEY C. ULRICH KELSEY R. GEDIN RYAN B. MCLEOD JEFFREY P. WALDRON ALEXANDER GLOSSMAN NEHA MEHTA DAVID E. WRIGHT AMANDA GONZALEZ BURTON MARCELO MEIRELLES LEAO DE SIYU YAN CAITLIN HALL-SWAN BARROS JERRIT YANG Faculty Advisors AMY ADLER BARTON BEEBE iv PREFACE Our Spring 2020 issue, Volume 9, Issue 2, is comprised of five individual pieces that explore significant, current themes in intellectual property and entertainment law, ranging from providing guidance from practice and experience, to questioning the very underlying legal framework of trademark law. In fact, each piece in this issue is focused on one of the fundamental areas of intellectual property law—trademark, copyright, and patent—but each intersects vitally with other disciplines from both inside and outside the world of IP, ranging from the music and entertainment industries, to history, to antitrust, to regulatory law. In their essay, Justin F. McNaughton, Ryan Kairalla, Leslie José Zigel, and Armando Christian Perez (known professionally as Pitbull) illustrate their efforts in obtaining a sound trademark in Pitbull’s famed yell, also known as a grito, for use in live and recorded musical performances. This effort illustrates the first time the United States Patent and Trademark Office (USPTO) has issued a trademark in the principal register for musical sound recordings. McNaughton, Kairalla, Zigel, and Perez illustrate the important impacts that obtaining this trademark will likely have both on the music industry and the entertainment industry more broadly. Charles Duan provides an insightful and probing historical analysis of copyrights in the text of the law. In his article, Duan argues that States are incorrect in claiming a copyright interest in their official published codes of law. This article, and the argument contained therein, is particularly timely and important: in late April 2020, the United States Supreme Court ruled in Georgia v. Public.Resource.Org, Inc. that non-binding legal materials, such as annotations to state statutes, are not copyrightable. Duan models his article on an amicus brief he authored and submitted as part of the litigation, and it provides an in-depth, and often overlooked, historical analysis of practices in this area. Moving to the student notes in Volume 9, Issue 2, Daniel Lifton’s first analyzes the current state of trademark law, particularly with regards to the “Likelihood of Confusion” standard for trademark infringement liability. Lifton explains why this approach does not work across all types of confusion (such as post-sale confusion) and advocates the introduction of a “trademark rule of reason,” similar to that found in antitrust law, to cover infringement liability where appropriate. In doing this, Lifton highlights trademark law as a species v of competition policy and carefully and completely addresses why the introduction of a rule of reason standard would better advance the goals and aims, broadly speaking, of trademark law. Next, Sarah Sue Landau’s note explores the vital intersection between copyright law and trademark law, deftly analyzing the history of Mickey Mouse and the famous character’s impending expiring copyright. In particular, Landau looks at challenges surrounding overlapping protection—that is, when something receives both copyright and trademark protection—and works to provide a clear set of recommendations for ameliorating the current dilemma. Landau’s analysis illustrates the broad set of options that courts, legislatures, and copyright- and trademark-holders have in navigating this complex legal landscape. Finally, I present my own note, which discusses the intersection of patent term extension (PTE) and the FDA regulatory approval process for pharmaceutical products. PTE is a statutorily- granted extension in patent term meant to compensate for the time that it takes for a pharmaceutical product to go through the regulatory approval process. In particular, I look at the current challenges of applying patent term extension provisions to current, novel therapeutics. I aim to establish a new path forward, proposing a way for the law to catch up more quickly and efficiently with the rapid developments in the world of clinical therapeutics. I hope that you enjoy this issue. On behalf of the 2019–2020 JIPEL editorial board, I thank all of you for following our work through the past year and Volume, and I hope that you will continue to read Volume 10 and beyond. Sincerely, Nicholas G. Vincent, PhD Editor-in-Chief NYU Journal of Intellectual Property & Entertainment Law vi NEW YORK UNIVERSITY JOURNAL OF INTELLECTUAL PROPERTY AND ENTERTAINMENT LAW VOLUME 9 SPRING 2020 NUMBER 2 ESSAY EEEEEEEYOOOOOO!: REFLECTIONS ON PROTECTING PITBULL’S FAMOUS GRITO JUSTIN F. MCNAUGHTON, ESQ., RYAN KAIRALLA, ESQ., LESLIE JOSÉ ZIGEL, ESQ., AND ARMANDO CHRISTIAN PEREZ* “I’ve worked so hard on crafting my sound and my brand over the years, and I am so pleased that the United States Patent and Trademark Office has awarded me trademark registrations in my original “Eyo” chant for musical sound recordings and live performances. ¡Dale!” -Pitbull PROLOGUE ............................................................................................................. 180 I. BACKGROUND .............................................................................................