Mark McKenna

John P. Murphy Foundation 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 areas of intellectual property and privacy law. Professor McKenna is widely recognized as a leading intellectual property scholar, having published in many of the most prestigious journals in his field. Though his core area of expertise is trademark law, he has written broadly on nearly every area of intellectual property, including utility patent, design patent, copyright, and the right of publicity. His most recent work has focused on the intersection of intellectual property rights regimes and the intersection of IP rights with adjacent rights.

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. He has also been a visiting professor at Stanford Law School, the University of Toronto Faculty of Law, the Munich Intellectual Property Law Center, and the Turin University-WIPO Master of Laws in Intellectual Property Program.

Prior to joining the Notre Dame 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 Information Privacy Law and the first-year Torts class, and has previously taught Civil Procedure.

Courses Taught

LAW60901, Torts
LAW70134, Intellectual Property Survey
LAW70128, Copyright Law
LAW70136, Design Law
LAW70137, Trademarks & Unfair Competition
LAW73132, Information Privacy Law

Scholarship

Books

THE LAW OF DESIGN: DESIGN PATENT, TRADEMARK, & COPYRIGHT (West 2017) (with Edward Lee and David L. Schwartz)

THE LAW OF INTELLECTUAL PROPERTY (Aspen Law & Business, Fifth Edition 2017) (with Craig Nard & Michael Madison)

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

Claiming Design, 167 University of Pennsylvania Law Review __ (forthcoming 2018) (with Jeanne Fromer)

What’s In, and What’s Out: How IP’s Boundary Rules Shape Innovation, 30
HARVARD JOURNAL OF LAW & TECHNOLOGY 491 (2017) (with Christopher Sprigman)

Scope, 57 WILLIAM & MARY LAW REVIEW 2197 (2016) (with Mark A. Lemley)

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

• Selected as one of the best law review articles on intellectual property law published in 2013; republished in the INTELLECTUAL PROPERTY LAW REVIEW (West 2014)

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 MICHIGAN LAW REVIEW 137 (2010) (with Mark A. Lemley).
Reviewed on Jotwell at http://ip.jotwell.com/marks-on-marks/

Irrelevant Confusion, 62 STANFORD LAW REVIEW 413 (2010) (with Mark A. Lemley).

Testing Modern Trademark Law'€™s Theory of Harm, 95 IOWA LAW REVIEW 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 UNIVERSARY OF ILLINOIS LAW REVIEW 773 (2009).
Reviewed on Jotwell at http://ip.jotwell.com/trademark-use-on-the-loose/

The Normative Foundations of Trademark Law, 82 NOTRE DAME LAW REVIEW 1839 (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 UNIVERSITY OF PITTSBURGH LAW REVIEW 225 (2005).

Book Chapters, Symposium Contributions, and Responses

The Case Against Product Configuration Trade Dress, in TRADEMARK LAW AND THEORY: REFORM OF TRADEMARK LAW, Graeme Dinwoodie & Mark Janis, eds. (forthcoming 2018)

Trademarks and Digital Goods: A Comparative Perspective, in RESEARCH HANDBOOK ON INTELLECTUAL PROPERTY AND DIGITAL TECHNOLOGIES, Tanya Aplin, ed. (forthcoming 2018) (with Lucas Osborn)

Criminal Trademark Law and the Problem of Inevitable Creep, 51 AKRON LAW REVIEW _ (forthcoming 2018) (Oldham Lecture)

Remarks on the Problem of Scope in IP, _ Washington Journal of Law, Technology & Arts _ (forthcoming 2018) (keynote talk, The Art & Science of the IP Deal, University of Washington School of Law)

Knowing Separability When We See It, 166 UNIVERSITY OF PENNSYLVANIA LAW REVIEW ONLINE 131 (2017) (invited contribution to symposium on Star Athletica v. Varsity Brands)

Trademarks and Digital Goods, 92 NOTRE DAME LAW REVIEW 1425 (2017) (with Lucas Osborn) (contribution to symposium on Negotiating IP’s Boundaries in an Evolving World)
* Selected as one of the best law review articles on intellectual property law published in 2017 and republished in the Intellectual Property Law Review (West, forthcoming 2018)

2016 Trademark Year in Review, 92 Notre Dame Law Review Online (2017) (with Shelby Niemann)

Is Pepsi Really a Substitute for Coke? Market Definition in Antitrust and IP, in THE CAMBRIDGE HANDBOOK OF ANTITRUST, INTELLECTUAL PROPERTY, AND HIGH TECH, Roger D. Blair and D. Daniel Sokol, eds. (Cambridge University Press 2017) (invited contribution)

What’s Wrong with Copying? Nothing: Review of Abraham Drassinower, What’s Wrong with Copying, 29.1 INTELLECTUAL PROPERTY JOURNAL 27 (2016)

Systems of Human and Intellectual Capital, 93 Tex. LAW REVIEW See Also 231 (2015) (with Brett M. Frischmann) (Response to Orly Lobel, The New Cognitive Property: Human Capital Law and the Reach of Intellectual Property, 93 TEX. L. REV. 789 (2015).

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 WISCONSIN LAW REVIEW 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 WILLIAM & MARY LAW REVIEW 873 (2009) (invited contribution to conference on The Boundaries of Intellectual Property);

Teaching Trademark Theory Through the Lens of Distinctiveness, 52 ST. LOUIS UNIVERSITY LAW JOURNAL 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 UNIVERSITY LAW JOURNAL 829 (2006) (invited contribution to Childress Lecture program)

The Rehnquist Court and the Groundwork for Greater First Amendment Scrutiny of Intellectual Property, WASHINGTON UNIVERSITY JOURNAL OF LAW & POLICY 11 (2006) (invited contribution to conference on The Rehnquist Court and the First Amendment)

The Rehnquist Court and the Groundwork for Greater First Amendment Scrutiny of Intellectual Property, 21 WASHINGTON UNIVERSITY JOURNAL OF LAW & POLICY 11 (2006) (invited contribution to conference on The Rehnquist Court and the First Amendment) (http://ssrn.com/abstract=957420)

Works-in-Progress

Toward a Theory of Inventorship in Patent Law (with Michael J. Burstein)

Investigating Design (with Jessica Silbey)

Mapping Confusion (with Rebecca Tushnet)

Unfair Disruption (with Mark A. Lemley)

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

Amicus Briefs

BRIEF OF AMICI CURIAE INTELLECTUAL PROPERTY LAW LAW PROFESSORS, Daniels v. FanDuel, Inc. (Indiana Sup. Ct. 2018) (with Rebecca Tushnet) https://tushnet.files.wordpress.com/2018/05/2018-05-21-brief-of-amici-curiae-file-stamped.pdf

BRIEF OF AMICI CURIAE ON BEHALF OF INTELLECTUAL PROPERTY PROFESSORS IN SUPPORT OF APPELLANT AND IN SUPPORT OF REVERSAL, American Society for Testing and Materials v. Public.Resource.Org, Inc. (D.C. Cir. 2017) (with Rebecca Tushnet) https://tushnet.files.wordpress.com/2017/09/astm-tm-as-filed.pdf

BRIEF OF AMICI CURIAE INTELLECTUAL PROPERTY LAW PROFESSORS IN FAVOR OF JUDGMENT AS A MATTER OF LAW, ZeniMax Media Inc. v. Oculus VR, LLC (Northern District of Texas 2017) (with Rebecca Tushnet) https://tushnet.files.wordpress.com/2016/07/15-866-tsac-intellectual-property-professors.pdf

BRIEF OF AMICI CURIAE INTELLECTUAL PROPERTY LAW PROFESSORS, Tobinick v. Novella (11th Cir. 2016) (https://tushnet.files.wordpress.com/2016/05/amicus-intobinick-v-novella-with-motion.pdf)
(Rebecca Tushnet, Lead Author)

Lead Author, BRIEF OF AMICI CURIAE INTELLECTUAL PROPERTY LAW PROFESSORS IN SUPPORT OF APPELLEES, Phoenix Entertainment Partners v. Dannette Rumsey and Basket Case Pub (7th Cir. 2015)
(https://tushnet.files.wordpress.com/2015/12/basket-case-amicus-brief-nov-30-final.pdf

Brief of Amici Curiae Law Professors in Support of Defendant-Appellee National Football League, Dryer v. National Football League (8th Cir. 2015)
(https://tushnet.files.wordpress.com/2015/03/dryer-post-proof-rt-march-17.pdf) (with Rebecca Tushnet)

Lead Author, BRIEF OF AMICI CURIAE INTELLECTUAL PROPERTY LAW PROFESSORS IN SUPPORT OF APPELLEES CANTON PHOENIX, INC. AND BING PAN ZHU, Slep-Tone Entertainment Corp. v. Canton Phoenix Inc. (9th Cir. 2015)
(https://tushnet.files.wordpress.com/2015/06/slep-tone-amicus-final-as-filed.pdf)

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)( http://www.newlifeart.com/images/amicusbrief2.pdf)

Other Professional Writings

Designing Design Patent Subject Matter, JOTWELL (March 22, 2018) (reviewing Sarah Burstein, The Article of Manufacture in 1877), 32 Berkeley Technology Law Review 1 (2017)

Registering Disagreement: Registration in Modern American Trademark
Law
, 130 Harv. L. Rev. 867 (2017)

Trademark Year in Review

Designing Architectural Copyright, JOTWELL (November 4, 2015) (reviewing Kevin
E. Collins, Economically Defeasible Rights to Facilitate Information Disclosure: The
Hidden Wisdom of Pre-AWCPA Copyright)
(http://ip.jotwell.com/designingarchitectural-copyright/)

Measuring Serendipity, JOTWELL (January 20, 2015) (reviewing Bhaven N.
Sampat, Serendipity) (http://ip.jotwell.com/measuring-serendipity/)

The Limits of the Supreme Court’s Technological Analogies, Slate (June 26, 2014)
(http://www.slate.com/articles/technology/future_tense/2014/06/abc_v_aereo_ruling_
the_supreme_court_s_terrible_technological_analogies.html)


The Implications of Blackhorse v. Pro-Football, Inc., Guest Post on PatentlyO Blog
(June 19, 2014) (http://patentlyo.com/patent/2014/06/implications-blackhorse-football.html

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
  • Design Patent
  • Intellectual Property Law
  • Torts
  • Trademarks