focusing on published appellate cases.13 Even the growing empirical
scholarship on IP focuses largely on published or, at least, filed
cases.14 As in every other area of civil justice, however, most IP
disputes do not result in litigation, and most litigation settles well
before trial.15 Certainly, published appellate decisions and even filed
cases represent only a small percentage of IP disputes. Thus, in order
to more fully understand whether IP rights affect competition, chill
free speech, diminish the public domain, or impede creativity, it is
necessary to explore how IP claims are made and resolved in private
negotiation rather than in litigation, which is the focus of this Article.
It presents findings from a qualitative empirical study of the
trademark and copyright disputing process outside of court, based on
original data derived from semi-structured interviews with
experienced IP attorneys who advise clients on how to enforce their
rights. This research is one of the first studies to examine how
trademark and copyright claims are actually enforced in practice.
A. From Bobbleheads to Bullies
One impetus for the present research was the outcome of a
widely reported IP case that presented important legal issues of first
impression, but which settled before those issues were adjudicated in
court.16 Although this case did not involve trademarks or copyrights,
its resolution highlighted how IP owners may be able to use the threat
of litigation to coerce advantageous settlements outside of court, even
in cases where the asserted IP rights are weak or where the courts
would likely limit those rights in litigation. The case and its lessons
thus merit brief discussion here.
In 2004, Oak Productions, Inc. (“Oak Productions”), the
licensing company for then-California Governor and Hollywood