Mark McKenna

Associate Dean for Faculty Research and Development
Professor of Law
Notre Dame Presidential Fellow

Office: 3120 Eck Hall of Law
Phone: 574.631.9258
Fax: 574.631.4197
Email: markmckenna@nd.edu
Staff Assistant: LuAnn Nate
CV: View
SSRN: View

Mark P. McKenna teaches and writes in the area of intellectual property. Professor McKenna is widely recognized as a leading scholar in the trademark area, having published a number of articles in leading law journals on the topic of trademark law. He has also written about design patent, copyright, the right of publicity, and the intersection of intellectual property rights regimes. Some of his latest projects include an empirical study of Lanham Act false advertising decisions, a comparative analysis of innovation institutions and failures, and a study of the ways IP law understands product dimensions.

Professor McKenna joined the Notre Dame Law School faculty on a permanent basis in the Fall of 2008 after visiting for a semester in the Spring of 2008. Prior to joining the faculty, Professor McKenna was a member of the faculty at Saint Louis University School of Law and practiced law with an intellectual property firm in Chicago, where he primarily litigated trademark and copyright cases. He graduated from the University of Notre Dame in 1997 with a degree in Economics and earned his J.D. from the University of Virginia School of Law in 2000.

In addition to various intellectual property courses, Professor McKenna teaches the first year Torts class and has previously taught Civil Procedure.

Courses Taught

LAW60901, Torts
LAW70134, Intellectual Property Survey
LAW70128, Copyright
LAW70137, Trademarks & Unfair Competition

Scholarship

Books

THE LAW OF INTELLECTUAL PROPERTY (Aspen Law & Business, Fourth Edition (2013) (with Craig Nard & Michael Madison)

THE LAW OF INTELLECTUAL PROPERTY (Aspen Law & Business, Third Edition 2011) (with Craig Nard, Michael Madison, and David Barnes)


Law Review Articles

Confusion Isn’t Everything, 89 Notre Dame L. Rev. 253 (2013) (with William McGeveran).

Is Pepsi Really a Substitute for Coke? Market Definition in Antitrust and IP, 100 GEORGETOWN LAW JOURNAL 2055 (2012) (with Mark A. Lemley) (100th Anniversary Volume).
Reviewed on Jotwell at http://ip.jotwell.com/marks-on-markets-and-competition/

A Consumer Decision-Making Model of Trademark Law, 97 VIRGINIA LAW REVIEW 67 (2012).

Owning Mark(et)s, 109 MICH. L. REV. 137 (2010) (with Mark A. Lemley).

Irrelevant Confusion, 62 STAN. L. REV. 413 (2010) (with Mark A. Lemley).

Testing Modern Trademark Law’s Theory of Harm, 95 IOWA L. REV. 63 (2009).
Selected as one of the best law review articles on intellectual property law published in 2009 and republished in the INTELLECTUAL PROPERTY LAW REVIEW (West 2010)

Trademark Use and the Problem of Source, 2009 U. ILL. L. REV. 773 (2009).
Reviewed on Jotwell at http://ip.jotwell.com/trademark-use-on-the-loose/

The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839 (2007); reprinted at 97 TRADEMARK REP. 1126 (2007).
Reprinted at 97 TRADEMARK REPORTER 1126 (2007)
Winner of 2007 Ladas Memorial Award for writing excellence on the subject of trademarks and related matters (International Trademark Association)

The Right of Publicity and Autonomous Self-Definition, 67 U. PITT. L. REV. 225 (2005).


Book Chapters and Symposium Contributions

Progress and Competition in Design, 17 STANFORD TECHNOLOGY LAW REVIEW _ (forthcoming 2014) (with Katherine J. Strandburg) (contribution to Stanford Law School symposium on Design Patents in the Modern World)

How to Fix Copyright in Three Impossible Steps: Review of WILLIAM PATRY, HOW TO FIX COPYRIGHT, 39 JOURNAL OF COLLEGE & UNIVERSITY LAW 715 (2013)

Trademark Law’s Faux Federalism, in INTELLECTUAL PROPERTY AND THE COMMON LAW, Shyamkrishna Balganesh, ed. (Cambridge University Press 2013) (invited contribution to University of Pennsylvania Law School symposium on Intellectual Property and the Common Law)

Dastar’s Next Stand, 19 JOURNAL OF INTELLECTUAL PROPERTY LAW _ (forthcoming 2012) (invited contribution to The Future of Intellectual Property Law symposium)

(Dys)functionality, 48 HOUSTON LAW REVIEW (forthcoming 2012) (invited contribution to University of Houston Law Center Institute for Intellectual Property & Information Law Santa Fe Conference, Trademark: Today and Tomorrow)

Introduction: Creativity and the Law, 86 NOTRE DAME LAW REVIEW 1819 (2011) (introduction for symposium on Creativity and the Law) (http://www.nd.edu/~ndlrev/archive_public/86ndlr5/McKenna.pdf)

Probabilistic Knowledge of Third-Party Trademark Infringement, 2011 STANFORD TECHNOLOGY LAW JOURNAL _ (forthcoming) (invited contribution to symposium on Secondary and Intermediary Liability on the Internet)

Intergenerational Progress, 2011 WISC. L. REV. 123 (with Brett Frischmann) (invited contribution to Wisconsin Law Review symposium on Intergenerational Equity and Intellectual Property)

Back to the Future: Rediscovering Equitable Discretion in Trademark Cases, 14 LEWIS & CLARK L. REV. 537 (2010) (invited contribution to Business Law Forum on Intellection Property Remedies)

An Alternate Approach to Channeling?, 51 WM. & MARY L. REV. 873 (2009) (invited contribution to conference on The Boundaries of Intellectual Property);

Teaching Trademark Theory Through the Lens of Distinctiveness, 52 ST. LOUIS U. L.J. 843 (2008) (contribution to annual teaching edition)

What'€™s the Frequency Kenneth? Channeling Doctrines in Trademark Law, in INTELLECTUAL PROPERTY AND INFORMATION WEALTH (Peter Yu, ed., Praeger Press 2007)

Intellectual Property, Privatization and Democracy: A Response to Professor Rose, 50 ST. LOUIS U. L.J. 829 (2006) (invited contribution to Childress Lecture program)

The Rehnquist Court and the Groundwork for Greater First Amendment Scrutiny of Intellectual Property, WASH. U. J.L. & POL’Y 11 (2006) (invited contribution to conference on The Rehnquist Court and the First Amendment)


Works-in-Progress

An Empirical Study of False Advertising Claims under the Lanham Act (work-in-progress) (with Deborah Gerhardt and Kevin McGuire)

Criminal Trademark Law and the Problem of Inevitable Creep (work-in-progress)

What’s Inside, and What’s Out: How IP Law (Mis)Understands What a Product Is (with Christopher Sprigman) (work-in-progress)

Comparative Analysis of Failures and Institutions in Context (with Brett Frischmann) (for the Yale Law School symposium on Innovation Law Beyond IP)

An Empirical Study of Trademark Functionality (work-in-progress)




Amicus Briefs

Lead Author, Brief of Amici Curiae Intellectual Property Law Professors in Support of Appellant Lubecore International, Inc. and Reversal, Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc. (6th Cir. 2012)

Lead Author, Brief of Amici Curiae Intellectual Property Law Professors in Support of Appellant, Board of Trustees of the University of Alabama v. New Life Art, et al. (11th Circuit 2010)




Other Writings

Super-Sizing IP Values, Reviewing MADHAVI SUNDER, FROM GOODS TO A GOOD LIFE, Concurring Opinions blog (September 12, 2012)

Don’t Stop at SOPA. SOPA and PIPA are (almost) dead. Now can we talk about the law that already exists? Slate (January 20, 2012)

Areas of Expertise

  • Copyright Law
  • Intellectual Property Law
  • Torts
  • Trademarks

In the News

http://www.crainsnewyork.com/article/20130710/TECHNOLOGY/130719993 - (Quotes: Mark McKenna), Crain's, July 10, 2013
Court: Reselling Books Bought Abroad Isn't A Copyright Violation - (Quotes: Mark McKenna), NPR’s Morning Edition March 20, 2013
Colin Kaepernick defends move to protect personal brand - USA Today - February 4, 2013
The Problem of Genericide in Trademarks (Quotes: Mark McKenna) Legalzoom, September 2012
Should Google Be Running Scared From Apple? (Quotes: Mark McKenna) Wired Aug 28, 2012
With Samsung win on Galaxy Tab, judge may reconsider U.S. ban (Quotes: Mark McKenna) Reuters Aug 27, 2012
Samsung shares fall after Apple verdict (Quotes: Mark McKenna) Washington Post Aug 27, 2012
Apple verdict could alter future of tablet, phone design (Quotes: Mark McKenna) Fox News.com and USA Today Aug 27, 2012
Apple jurors grappled with complex patent issues (Quotes: Mark McKenna) Associated Press, Aug 26, 2012
Apple-Samsung Jury Foreman Says Google E-Mail Persuasive (Quotes: Mark McKenna) Bloomberg/Businessweek, Aug 26, 2012
Apple vs. Samsung: Three possible outcomes(Quotes: Mark McKenna) CNN Money, Aug 24, 2012
Apple v Samsung: Five experts, five questions (Quotes: Mark McKenna) Computerworld, Aug 22, 2012
Who Owns Crimson and White? (Quotes: Mark McKenna) Wall Street Journal, March 22, 2012
Free Speech vs. Infringement in Suit on Alabama Artwork (Quotes: Mark McKenna) New York Times, January 30, 2012
Kohler Co. steamed over Arizona firm’s name Salon school makes change to avoid trademark suit (Quotes: Mark P. McKenna) Milwaukee Journal Sentinel, Jan. 24, 2012
Don’t Stop at SOPA (Opinion by: Mark P. McKenna) Slate.com, January 20, 2012
Featured on NDLS home page: Mark McKenna – January 26, 2009