Irene Calboli has a new paper on SSRN entitled “A Critical Analysis of the Doctrine of Naked Licenses in Trademark Law.”  A trademark owner may license others to produce and sell goods bearing his or her mark, but  the owner must normally take steps to preserve control over the quality of the goods or the license may be regarded as “naked” and hence invalid.  Irene’s paper reviews and critiques the development of this doctrine.  She also proposes a new test for validity that focuses on the quality of the licensed goods instead of the degree of control exercised by the trademark owner.

The paper was published as a chapter in volume three of Intellectual Property and Information Wealth: Issues and Practices in the Digital Age, edited by Peter K. Yu.  The abstract appears after the jump. 

Look around your home and you are sure to find no shortage of cheap promotional items carrying the logo of one business or another.  In fact, I happen to have in front of me right now three pens emblazoned with the names of three different national hotel chains.  None of the hotel chains are especially trendy, so it is hard to imagine that anyone would actually pay a premium to use the pens because of the presence of the trademarks.  But some trademarks do have real cache — think Harley, Starbucks, or BMW — and there might be real money-making opportunities in selling pens, shirts, mugs, and so forth linked to those famous names.  So, you might wonder, would it be legal to start producing  and selling merchandise bearing famous names without first obtaining a license from the trademark owners?

As Irene Calboli explains in a new paper on SSRN, the answer has not been as clearly and satisfactorily worked out by the courts as you might think.