Mark McKenna
Vice Dean of Faculty & Intellectual Life
Professor of Law
Faculty Co-Director, UCLA Institute for Technology, Law & Policy
- B.A. University of Notre Dame, 1997
- J.D. University of Virginia School of Law, 2000
Professor Mark P. McKenna is the Vice Dean of Faculty & Intellectual Life and teaches and writes in the areas of intellectual property and privacy law. Though his core area of expertise is trademark law, where he is widely recognized as a leading expert, Professor McKenna has written broadly on nearly every area of intellectual property, including utility patent, design patent, copyright, and the right of publicity. He has also written more generally on innovation and technology policy. Much of 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 is Faculty Co-Director of the UCLA Institute for Technology, Law & Policy, a partnership between the UCLA School of Law and UCLA Samueli School of Engineering that examines the benefits and risks presented by technologies such as artificial intelligence and machine learning, robotics, cybersecurity and digital media and communications. He was previously Faculty Co-Director of the Ziffren Institute for Entertainment, Media, Technology & Sports Law, with which he remains actively involved as an affiliated faculty member.
Prior to joining the UCLA faculty, Professor McKenna was the John P. Murphy Foundation Professor of Law at the Notre Dame Law School. He was the founding Director of the Notre Dame Technology Ethics Center, a university-wide, multi-disciplinary research center focused on the social and ethical implications of emerging technologies. Professor McKenna has also been a member of the faculty at Saint Louis University School of Law, and a visiting faculty member at Stanford Law School, the University of Toronto Faculty of Law, the Turin University-WIPO Master of Laws in Intellectual Property Program, and the Munich Intellectual Property Law Center at the Max Planck Institute.
Professor McKenna is a co-founder of and of counsel to Lex Lumina PLLC, a boutique intellectual property and technology law firm. Prior to entering academia, he practiced full time with an intellectual property firm in Chicago, where he primarily litigated trademark and copyright cases.
Bibliography
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Books
- The Law of Design: Design Patent, Trademark, & Copyright (with Edward Lee and David L. Schwartz). West (2017).
- The Law of Intellectual Property (with Craig Nard & Michael Madison). 5th ed. Aspen Law & Business (2017). Prior editions: 4th, 2013 (with Craig Nard and Michael Madison); and 3rd, 2011 (with Craig Nard, Michael Madison, and David Barnes).
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Articles And Chapters
- Design Patents Aren't Patents (And It's a Good Thing Too) (with Mark A. Lemley), 92 Geo. Wash. L. Rev 811 (2024). Full Text
- Competition and Congestion in Trademark Law (with Christopher Buccafusco and Jonathan S. Masur), 102 Tex. L. Rev. 437 (2024). Full Text
- Competition and Congestion in Trademark Law (with Christopher Buccafusco and Jonathan S. Masur), 102 Tex. L. Rev. 437 (2024). Full Text
- Trademark Spaces and Trademark Law's Secret Step Zero (with Mark A. Lemley), 75 Stan. L. Rev. 1 (2023). Full Text
- Externalizing Trademark’s Limits, in Charting Limitations on Trademark Rights, (edited by Barton Beebe and Haochen Sun, Oxford University Press, forthcoming).
- Registration and Federalization: 75 Years of the Lanham Act (with Brittany Von Rueden), 39 Cardozo Arts and Entertainment Law Journal 987 (2021). Full Text
- The Case against Product Configuration Trade Dress (Caitlin P. Canahai), in Research Handbook on Trademark Law Reform, (edited by Graeme Dinwoodie & Mark Janis, Edward Elgar Publishing, 2021). Full Text
- Separability as Channeling: A Cautionary Tale, in Transition and Coherence in Intellectual Property Law: Essays in Honour of Annette Kur, (edited by Niklas Bruun, Graeme B. Dinwoodie, Marianne Levin, and Ansgar Ohly, Cambridge University Press, 2021).
- Trademark Protection for Digital Goods (with Lucas Osborn), in Research Handbook on Intellectual Property and Digital Technologies, (edited by Tanya Aplin, Edward Elgar Publishing, 2020). Full Text
- Trademark Use Rides Again, 104 Iowa Law Review Online 105 (2020). Full Text
- Unfair Disruption (with Mark A. Lemley), 100 Boston University Law Review 71 (2020). Full Text
- Property and Equity in Trademark Law, 23 Marquette Intellectual Property Law Review 117 (2019). Full Text
- Comparative Analysis of Failures and Institutions in Context (with Brett Frischmann), 57 Houston Law Review 313 (2019). Full Text
- Remarks on the Right of Publicity: Theory and Scope, 42 Columbia Journal of Law & The Arts 337 (2019). Full Text
- Claiming Design (with Jeanne C. Fromer), 167 University of Pennsylvania Law Review 123 (2018). Full Text
- Remarks on the Problem of Scope in IP, 14 Washington Journal of Law, Technology & Arts 1 (2018). Full Text
- Criminal Trademark Law and the Problem of Inevitable Creep, 51 Akron Law Review 989 (2018). Full Text
- What’s In, and What’s Out: How IP’s Boundary Rules Shape Innovation (Christopher Jon Sprigman), 30 (491) Harvard Journal Of Law & Technology (2017). Full Text
- Knowing Separability When We See It, 166 University of Pennsylvania Law Review Online 127 (2017). Full Text
- Trademarks and Digital Goods (with Lucas Osborn), 92 Notre Dame Law Review 1425 (2017). Republished in the Intellectual Property Law Review (West 2018). Full Text
- 2016 Trademark Year in Review (with Shelby Niemann), 92 Notre Dame Law Review Online (2017). Full Text
- Scope (with Mark A. Lemley), 57 William & Mary Law Review 2019 (2016). Full Text
- What’s Wrong with Copying? Nothing, 29 (1) Intellectual Property Journal 27 (2016). Review of What’s Wrong with Copying?, by Abraham Drassinower.
- Systems of Human and Intellectual Capital (with Brett M. Frischmann), 93 Texas Law Review See Also 231 (2015). Full Text
- Progress and Competition in Design (with Katherine J. Strandburg), 17 Stanford Technology Law Review 1 (2014). Full Text
- Confusion Isn’t Everything (with William McGeveran), 89 Notre Dame Law Review 253 (2013). Full Text
- Fixing Copyright in Three Impossible Steps, 39 Journal of College & University Law 715 (2013). Review of How to Fix Copyright, by William Patry. Full Text
- Trademark Law’s Faux Federalism, in Intellectual Property and the Common Law, (edited by Shyamkrishna Balganesh, Shyamkrishna Balganesh, 2013). Full Text
- Is Pepsi Really a Substitute for Coke? Market Definition in Antitrust and IP (with Mark A. Lemley), 100 Georgetown Law Journal 2055 (2012). Invited contribution to: The Cambridge Handbook of Antitrust, Intellectual Property, and High Tech, edited by Roger D. Blair and D. Daniel Sokol, Cambridge University Press (2017). Full Text
- Dastar’s Next Stand, 19 Journal of Intellectual Property Law 357 (2012). Full Text
- (Dys)functionality, 48 Houston Law Review 823 (2012). Full Text
- A Consumer Decision-Making Theory of Trademark Law, 98 Virginia Law Review 67 (2012). Full Text
- Introduction: Creativity and the Law, 86 Notre Dame Law Review 1819 (2011). Full Text
- Probabilistic Knowledge of Third-Party Trademark Infringement, 2011 Stanford Technology Law Review 10. Full Text
- Intergenerational Progress (with Brett Frischmann), 2011 Wisconsin Law Review 123 (2011). Full Text
- Irrelevant Confusion (with Mark A. Lemley), 62 Stanford Law Review 413 (2010). Full Text
- Owning Mark(et)s (with Mark A. Lemley), 109 Michigan Law Review 13 (2010). Full Text
- Back to the Future: Rediscovering Equitable Discretion in Trademark Cases, 14 Lewis & Clark Law Review 537 (2010). Full Text
- Testing Modern Trademark Law’s Theory of Harm, 95 Iowa Law Review 63 (2009). Republished in the Intellectual Property Law Review (West 2010). Full Text
- Trademark Use and the Problem of Source, 2009 University of Illinois Law Review 773 (2009). Full Text
- An Alternate Approach to Channeling?, 51 William & Mary Law Review 873 (2009). Full Text
- Teaching Trademark Theory Through the Lens of Distinctiveness, 52 St. Louis University Law Journal 843 (2008). Full Text
- The Normative Foundations of Trademark Law, 82 Notre Dame Law Review 1839 (2007). Reprinted in 97 Trademark Reporter 1126 (2007) Full Text
- What’s the Frequency Kenneth? Channeling Doctrines in Trademark Law, in Intellectual Property and Information Wealth, (edited by Peter Yu, Praeger Press, 2007). Full Text
- Intellectual Property, Privatization and Democracy: A Response to Professor Rose, 50 St. Louis University Law Journal 829 (2006).
- The Rehnquist Court and the Groundwork for Greater First Amendment Scrutiny of Intellectual Property, 21 Washington University Journal of Law & Policy 11 (2006). Full Text
- The Right of Publicity and Autonomous Self-Definition, 67 University of Pittsburgh Law Review 225 (2005). Full Text
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Amicus Briefs
- Brief Of Amici Curiae Trademark Law Professors in Support Of Defendant-Appellee, LTTB LLC v. Redbubble, Inc. (9th Cir. 2020) (with Rebecca Tushnet).
- Brief Of Amici Curiae Trademark Law Professors In Opposition To Motion For Rehearing En Banc, VIP Products LLC v. Jack Daniel’s Properties, Inc. (9th Cir. 2020) (with Mark A. Lemley and Rebecca Tushnet).
- Brief Of Trademark Scholars As Amici Curiae In Support Of Neither Party, United States Patent and Trademark Office v. Booking.com (Supreme Court of the United States 2020) (with Rebecca Tushnet).
- Lead Author, Brief Of Amici Curiae Intellectual Property Law Professors In Support Of Defendants-Appellees, Dr. Seuss Enterprises, L.P. v. ComicMix LLC (9th Cir. 2019).
- Brief Amici Curiae of 32 Intellectual Property Law Professors In Support Of Appellees’ Petition For Panel Rehearing And Rehearing En Banc, Gordon v. Drape Creative, Inc. (9th Cir. 2018) (with Mark A. Lemley and Rebecca Tushnet).
- Brief Of Amici Curiae Intellectual Property Law Law Professors, Daniels v. FanDuel, Inc. (Indiana Supreme Court 2018) (with Rebecca Tushnet).
- 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)
- 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).
- Brief Of Amici Curiae Intellectual Property Law Professors, Star Athletica L.L.C. v. Varsity Brands, Inc. (Supreme Court of the United States 2016) (with Mark A. Lemley, Christopher Jon Sprigman, and Rebecca Tushnet).
• Cited at 137 S.Ct. 1002, 1032 (2017) (Breyer, J. dissenting) - Brief Of Amici Curiae Intellectual Property Law Professors, Tobinick v. Novella (11th Cir. 2016) (Rebecca Tushnet, Lead Author).
- Brief Amici Curiae Of 37 Intellectual Property Professors In Support Of Petition For Certiorari, Samsung Electronics Co., Ltd. v. Apple Inc. (Supreme Court of the United States 2016) (with Mark A. Lemley).
- Measuring Serendipity, JOTWELL (Jan. 20, 2015). Review of Bhaven N. Sampat, Serendipity. Full Text
- 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).
- Brief Of Amici Curiae Law Professors In Support Of Defendant-Appellee National Football League, Dryer v. National Football League (8th Cir. 2015) (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).
- 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 Cir. 2010).
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Other Professional Writing
- Erie and Unfair Competition’s Long and Winding Road, JOTWELL (Oct. 14, 2019). Review of Sharon K. Sandeen, The Erie/Sears/Compco Squeeze: Erie’s Effects on Unfair Competition and Trade Secret Law, 52 Akron Law Review 423 (2019). Full Text
- Designing Design Patent Subject Matter, JOTWELL (Mar. 22, 2018). Review of Sarah Burstein, The Article of Manufacture in 1877, 32 Berkeley Technology Law Review 1 (2017). Full Text
- Registration and its Discontents, JOTWELL (Nov. 16, 2016). Review of Rebecca Tushnet, Registering Disagreement: Registration in Modern American Trademark Law, 130 Harvard Law Review 867 (2017). Full Text
- Trademark Year in Review (2015).
- Designing Architectural Copyright, JOTWELL (Nov. 4, 2015). Review of Kevin E. Collins, Economically Defeasible Rights to Facilitate Information Disclosure: The Hidden Wisdom of Pre-AWCPA Copyright.
Full Text - The Limits of the Supreme Court’s Technological Analogies, Slate (June 26, 2014). Full Text
- The Implications of Blackhorse v. Pro-Football, Inc., PatentlyO Blog (June 19, 2014). Full Text
- Super-Sizing IP Values, Concurring Opinions blog (Sept. 12, 2012). Review of Madhavi Sunder, From Goods to a Good Life.
- Don’t Stop at SOPA. SOPA and PIPA are (almost) dead. Now can we talk about the law that already exists?, Slate (Jan. 20, 2012). Full Text