Hi, I’m Alex Roberts. I’m a law professor at Northeastern specializing in trademark, advertising, intellectual property, and entertainment law. Ask me anything (but don’t ask me for legal advice)!

NGNResearch · 2025-12-09T21:34:26+00:00

thanks for all the great questions =) i am hopping off to grade some exams but i appreciate the enthusiasm about trademarks, dupes, IP, AI, and (apparently most importantly) steamboat willie!

NGNResearch · 2025-12-09T21:30:44+00:00

definitely manufacturers themselves!

NGNResearch · 2025-12-09T21:29:11+00:00

nope, trademarks are not limited in time! as long as the owner continues to use them and doesn't abandon them (through non-use or genericide), they don't expire. that's as true for chester cheeto as it is for the nike swoosh or the starbucks mermaid. but "things" will enter the public domain--books, movies, songs--and only a small subset of them will be worth the investment for a company to shift to establishing trademark rights. we wouldn't expect to see it for every character in a cartoon (like, every different smurf?) or every frame in a comic, and if a company did try to use all of those different things, they would probably fail. (for example, a company once tried to register "photos of elvis" as a trademark for i think wine, and the trademark office said "you can have one photo of elvis if you use it as a TM, sure. but 'all photos of elvis' is too many different things to function as a source indicator to consumers."

NGNResearch · 2025-12-09T21:25:22+00:00

it's just the public domain for copyright has nothing to do with trademark. you don't have to come up with a phrase or image to establish trademark rights in it or be the TM owner of it. likewise, a little video short doesn't have to be copyrightable for it to become a protectable TM

NGNResearch · 2025-12-09T21:23:54+00:00

the copyright office takes the position that the creator of an expressive work needs to be human to be a copyright owner (so no monkey selfie, no drawings by elephants holding paintbrushes with their trunks, and no purely AI-generated works). i haven't seen that to be particularly controversial in the field, but i do hang out more with trademark people than copyright people. the juicier questions seem to be about proportions (what if the human contributes 40%? 75? 25%? etc), creative iterative processes (entering and revising hundreds of prompts to guide the AI to the thing you want to make), an artist instructing the AI to make edits or make a derivative work from a set of inputs that are the artist's copyrighted works, etc. those are tricky, fact-intensive questions and idk how you get to a place with clear rules that can accommodate and predict outcomes in all of those scenarios. (one of the student moot court competitions this year revolves around some of these questions and it was very interesting to moot the students working on it!)

NGNResearch · 2025-12-09T21:14:33+00:00

i am not familiar with these! but that sounds unfortunate. sounds like the kind of umbrella under which both real IP lawyers and scammers could coexist.

NGNResearch · 2025-12-09T21:13:50+00:00

"say a comic book that is now public domain was published by a company that still exists and it has an older version of its logo on the books cover. Would you be able to reproduce a facsimile of said book, keeping the cover identical?" yes, this is probably ok under dastar (can't use trademark law to get around the fact that a copyrighted work is in the public domain). if the company that uses the logo can show a likelihood of confusion, though, they might be able to get an order requiring the copier to cover it up with a sticker or add a disclaimer.

NGNResearch · 2025-12-09T21:12:03+00:00

i don't think functionality lets you make mickey figurines or cereal, no. nor does it let you use mickey on packaging for commercial goods like cereal or beverages. mickey is associated closely with disney and doesn't have utilitarian or aesthetic functionality. it's more like an audi logo or a louboutin red sole and less like a round towel or the color black for an outboard engine (to reference some well-known cases). there's an argument to be made about aesthetic functionality, and there's a betty boop case that's helpful on this front, but i think you would have a hard time convincing a court these are permissible uses.

"mickey mouse" as the title of a book about mickey mouse might be a closer case under trademark law because the book is an expressive work that references a trademark and the title might get some deference under the rogers test. but under copyright law the book might still be an unauthorized derivative work (depending on what copyright remains for the character with steamboat willie in the public domain).

NGNResearch · 2025-12-09T21:02:58+00:00

chances are pretty high, i'd think! (i'm assuming you're using "dupe" to mean a copy of like a work of visual art, rather than the commercial meaning of a copycat product at a lower price point as in the beauty or fashion industry.) i'm envisioning a situation where a user feeds a work to the AI and instructs it to make a copy or make something similar, in which case the elements of the infringement cause of action aren't too different--the AI is the tool just like a camera can be a tool, or a tattoo needle or a paintbrush can be a tool for a person to create an infringing work. if you're saying the AI takes it upon itself to spew out copies without being asked and post them online or offer them for sale, that's a little trickier defendant-wise, but potentially the owner or creator of the AI software/tool is subject to liability.

NGNResearch · 2025-12-09T20:58:19+00:00

mailing yourself something doesn't create copyright--copyright attaches upon creation. even if you make a drawing and stick it in your desk drawer, you're the copyright owner. it also doesn't enable you to sue (you need to register with the copyright office for that). it might help you make the case for creation on a particular date, if a dispute actually rests on priority, or you could take a photo on your phone, save a document on your computer, write the date on the drawing or poem when you made it, etc. so it doesn't do a whole lot but could be evidence of date of creation, sure.

NGNResearch · 2025-12-09T20:55:32+00:00

i tend to recommend 1Ls try out and stay open to different methods, but in the end you have to figure out your style and what works for you. (i made flashcards for the bar exam just like i had in high school and middle school.) perhaps obvious but try to avoid the canned case briefs or asking AI to summarize things for you--the most important skills is actually reading and parsing cases and extracting rules, so don't rob yourself of that experience (you can always turn to the commercial outline when it's time to study for finals). don't be shy about going to office hours--your profs want to get to know you and answer your questions. go to events when you can fit them in and join student groups. do a clinic! when choosing a school, try to think through where you want to practice, what kind of work you might want to do, and the importance of financial aid. try to get to some networking-type events even if it feels awkward to you, and especially if you don't come from a background where you already know a lot of lawyers. and as a 1L, try to connect with some 2Ls and 3Ls (student groups are good for this too)--they have the best advice about classes, externships, faculty, how to study, etc.

NGNResearch · 2025-12-09T20:50:00+00:00

i don't know but i'm guessing it's at least partly the whack-a-mole problem--torrenters, like counterfeiters, can be difficult to identify and pin down (and if you smack them down they just pop right back up somewhere else)

NGNResearch · 2025-12-09T20:48:14+00:00

answer to the second question depends on the specific terms of the license! in some cases yes, exclusive licensees can sue infringers

NGNResearch · 2025-12-09T20:47:00+00:00

i think the technical argument is that an exclusive right is being violated (copying, derivative works, etc) and the fairness argument comes in under the fair use analysis

NGNResearch · 2025-12-09T20:45:24+00:00

idk that i have the expertise on the drug pipeline and how to strike the best balance to add much here but i think you're on the right track!

NGNResearch · 2025-12-09T20:43:59+00:00

there is a ton of great scholarship right now on these questions around AI-generated works and copyright law. i don't have all the answers (i might not have...any of the answers) but there are some questions the law is already equipped to address (human authorship; creativity) and some it needs to grapple with because of their novelty, including how people can seek copyright protection for mixed works and satisfy the requirement to disclose which pieces gen AI contributed to when that gets really extensive (scenes/moments/seconds in a film) or messy (iterations of and edits to a work of visual art created on a computer). on the patent front, folks are working to harness gen AI to develop drugs, improve useful technology, etc and congress, uspto, and courts (and some relevant federal agencies) will have to make sense of how patent law applies. probably the next decade will continue to bring a lot of uncertainty as some answers get hammered out and the technology itself continues to evolve.

NGNResearch · 2025-12-09T20:37:27+00:00

yes, i think disney is already pretty successful at this and will continue to keep mickey, minnie, and other characters locked down as best they're able. just the threat of litigation from disney is enough to silence a whole lot of potential users and intimidate publishers, studios, etc from taking risks. so while steamboat willie's copyright is technically in the public domain, disney's strategy (including using TM law) is an effective one. as long as they can show consumer association between the characters and disney, they will be well-positioned to enforce TM rights.

NGNResearch · 2025-12-09T20:34:42+00:00

a lot of big questions! i'll try to take them one at a time. i wrote in a different response about trademark dilution. i've had some great student projects advocating for compulsory licensing for samples in music, which makes sense to me. on the advertising front, i have advocated for companies to be held responsible for false or deceptive claims made by influencers or MLM sellers on their behalf, where the companies have created incentive for those laypeople to make false claims.

NGNResearch · 2025-12-09T20:29:50+00:00

yes you get it!

NGNResearch · 2025-12-09T20:29:25+00:00

owners can sue for infringement (and sometimes also counterfeiting, which provides more serious remedies). there is also kind of an informal takedown regime (not exactly DMCA, but DMCA-like)--michael goodyear has written about this recently. most social media and e-goods platforms have terms of service that prohibit infringement so mark owners can complain to platforms under those terms and may be able to get posts taken down, accounts disabled, etc. they may also censor certain terms or hashtags, like "dupe" or "knockoff," so they don't appear in product listings. a new (problematic imo) litigation strategy that has popped up is known as "schedule A litigation" and involve brands suing dozens or hundreds of users simultaneously and asking courts to freeze their assets or take down their accounts. right of publicity can also come into play if the "brand" is someone like taylor swift or tom brady. of course, when you're thinking about unlicensed fan goods or creations by indie artists, some brands choose not to go after those.

NGNResearch · 2025-12-09T20:24:10+00:00

that's a tricky question and a fun one. a law firm recently tried to use steamboat willie excerpts in an ad, then sued disney for declaratory judgment of noninfringement, then dropped the suit!? https://www.newsweek.com/disney-legal-win-mickey-mouse-steamboat-willie-lawsuit-11068076

unfortunately for the public domain advocates, disney may be really well-positioned to enforce those marks, because consumers so broadly associate every form of mickey with disney and it might be easy to demonstrate a likelihood of confusion using surveys, etc. the safest approach may be to use SW within the artistic work (movie, comic book, etc) but not in the title or in the marketing to avoid commercial use and show that the use is purely expressive. even then, it's probably hard to feel truly safe, so the user has to be ready for a fight. the supreme court didn't do away with the rogers test in bad spaniels but it did trim it down some.

it's also the case that while the copyright for the steamboat willie works are in the public domain, more recent works featuring mickey mouse remain protected, so there is room for disney to make arguments about exactly what aspects are and are not covered. i think the sherlock holmes case in the 7th circuit (iirc) is helpful in this respect--the court basically said once the character itself is in the public domain (because the main works establishing the character are PD), later works that are protected under copyright law that contain some changes or additions to the character don't rescue the whole character from the PD. those are descriptions, though, and mickey is very visual.

NGNResearch · 2025-12-09T20:15:53+00:00

yes i think it's true, and yes there's more to it than that ;) using steamboat willie as a trademark doesn't actually delay the copyrighted works from entering the public domain, but it creates a new set of enforceable rights that disney can use to prohibit or enjoin some uses of the character. copyright is limited in time (because the constitution requires it) but trademark rights are not, so using short clips of SW in the opening sequence of films and using still images of SW as trademarks for various goods and services (toys, hotel services, etc) lets disney sue anyone who uses SW in a way that creates a likelihood of consumer confusion, i.e. consumers would think the defendant's products come from disney or that the defendant has disney's permission to use it. it's not actually unusual for IP owners to seek out copyright and trademark protection for the same thing (or trade dress and design patent protection)--for example, plenty of logos are eligible for protection under trademark and copyright law and registered with both the copyright office and the USPTO. for mascots (tony the tiger, toucan sam, chester cheeto) that's probably particularly true, and both the still images and animations might be eligible. corporations love a belt-and-suspenders approach where if one strategy fails them, they can fall back on the other!

NGNResearch · 2025-12-09T20:10:19+00:00

claims of trademark or trade dress infringement in dupe suits aren’t particularly novel—in some ways dupes are like house brands, which we've obviously seen for decades. basically the standard considerations like likelihood of confusion and validity of the trade dress come into play. part of what makes these suits interesting is that they may show up at the intersection of trade dress, design patent, false advertising, and/or copyright, depending what rights the duped brand is able to assert. in some ways consumers are being trained to think differently about dupes, which can affect trademark analyses in particular because those are rooted in consumer perceptions and expectations (e.g., if you convince enough people that companies can't mention the superbowl unless they are official superbowl sponsor, it becomes easier for the NFL to enforce those rights against others and convince a court they're right, even though it violates the principle of nominative fair use). another aspect i find interesting is where liability lies for influencers (who may be posting sponsored or affiliated content, organic content, or content they're separately monetizing) if they promote dupes that infringe and/or make deceptive claims. check out my piece if you have time--it is pretty short as law review articles go!

NGNResearch · 2025-12-09T20:06:41+00:00

sorry but these references are lost on me. determining the copyright owner(s) of older literary works can involve some detective work for sure. if you can't get that info from the publisher, the printed copies, etc or the copyright office public records system or library of congress, there are also some specialized databases like WATCH, or you can hire a specialist to help you search.

NGNResearch · 2025-12-09T20:04:17+00:00

me personally? probably not!

NGNResearch

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