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Intellectual Property
University of Mississippi School of Law
Myers, Gary

IP and The Constitution- Article I, § 8- The Intellectual Property Clause
I.                   Patents and Copyrights
a.       “To promote the progress of science and useful arts, by securing, for limited times to authors and inventors, the exclusive right to their respective writings and discoveries”
                                                              i.      Science refers to knowledge / authors and writings apply to science
                                                            ii.      Useful arts refers to technology / inventors and discoveries applies to discoveries
b.      Purpose- “to promote the progress of science and useful arts”- this creates some benefit and, hopefully, improvement of the public welfare
II.                What power does this give to Congress
a.       The power to give exclusive rights to people qualifying as authors and inventors
b.      Note- Trademarks are granted under the Commerce clause, not the IP clause
c.       State law can also govern copyright and patent
III.             So why do we protect/secure patents in our Constitution?
a.       Public good/economic justification (The Incentive View)- Inventors right to exclude to make a profit after recouping research losses, but we don’t want perpetual right to exclude…this is where “limited times” clause comes in.
                                                              i.      At the end of the “limited time”, generic products enter the market (think of prescription drugs) and drive prices down
                                                            ii.      This amply rewards inventors and authors, encouraging more development, while at the same time providing benefits of inventions and works of authorship to public (i.e. balance of interests)
b.      Natural Rights – John Locke’s theory that each person is entitled to the fruits of his labor. Think of the Ansel Adams photograph.
                                                              i.      Not much support from the Constitution, but does appear in some IP laws
                                                            ii.      Patent expiration doesn’t fit under this view of IP law
                                                          iii.      This theory believes in longer/stronger protection
                                                          iv.      There is an increasing trend in the U.S. because of the international influence of Natural Rights, so we are moving closer to this.
c.       Disclosure Theory- without any incentive, you might be tempted to hide your invention. This fits in with both of the aforementioned reasons for IP law.
IV.              General Information in IP
a.       Considerations in Every IP issue
                                                              i.      Type- what type of right is in question
                                                            ii.      Validity- is their an enforceable right? Does the item in question have the right characteristics under patent, copyright, or trademark to deserve protection?
                                                          iii.      Ownership- how many entities are making use of the trademark, and who gets the right. Whose ownership claim is superior?
                                                          iv.      Infringement- Was the right infringed upon?
                                                            v.      Defenses- determining whether an infringing actor has a valid defense to justify the infringement against a valid owner of IP.
                                                          vi.      Remedies- what relief is available to the plaintiff? (e.g. money, damages, injunctions)
b.      Balancing of interests- IP law must try to balance the reward/incentive of the crator with the public’s interest in gaining access to the information otherwise protected. The inventor gets a legal monopoly or exclusive right, but at some point the idea(s) fall into the public domain.
Trademark Law
I.                   Trademark Law
a.       Origins-Artisans and craftsmen formed guilds and applied symbols to their products to signify the identity of their makers. The common law provided protection for the trademarks through actions for deceit.
                                                              i.      “Palming off”- eventually, English/American common law slowly developed an offshoot of the tort of fraud and deceit called “passing off” or “palming off”. Simply stated, this occurs when one passes his goods off as the goods of another. Therefore, the law eventually began to recognize the “good will” developed by the artisan’s brand, allowing them to prevent another from unjustly enriching from his brand
                                                            ii.      Restatement definition of Palming Off- “one is subject to liability of another… if, in connection with the marketing of goods or services, the actor makes a representation likely to deceive or mislead prospective purchasers by causing the mistaken belief that the actor’s business is the business of the other, or that the actor is the agent , affiliate, or associate of the other, or that the goods or services that the actor markets are produced, sponsored, or approved by the other”
b.      Goals of trademarks and Reasons for protections:
                                                              i.      Protect the goodwill that the owner has developed by consistently producing a good product
                                                            ii.      To prevent the consumer from being confused or deceived about the origin of the goods
                                                          iii.      Unjust enrichment- tied closely to good will
§         Warner v. Eli Lilly (U.S. 1924)
o       Π Lilly made a product called Coco-Quinine for 50 years, and then Δ Warner came out with something called Quin-Coco, which was chemically the same product, which Δ sold for less.
o       Supreme Court does not go along with Π’s infringement charge because the names are generic descriptors essentially.
o       The concern is that druggists are filling orders of Π’s product, but they are instead using Δ’s cheaper, but basically identical product.
§         This clearly harms Π, and there is also a consumer confusion element.
o       The Court concludes that Π cannot enjoin Δ from making the product, but it can prevent the intentional defrauding of consumers by substitution of products.
o       Trademark Law is the solution…the truthful branding of the product.
§         State law Unfair Competition claim
§         Patent law gives no remedy because there is nothing being “invented”.
§         This is a “palming off” case – representing someone else’s products as one’s one. Common law tort action.
II.                4 Types of Trademarks
a.       Brand
b.      Service mark
c.       Certification mark
d.      Collective mark
Trademark Rights
I.                   Spectrum of Distinctiveness [Abercrombie & Fitch v. Hunting World (1976)]-
a.       Generic- a term that “refers, or has come to be understood as referring, to the genus of which the particular product is a species”
                                                              i.      In other words, the public associates the mark with all products of that kind, regardless of the name brand who produces it
                                                            ii.      NO protection under trademark law
                                                          iii.      So how do you protect from becoming generic?
1.      Have name for product separate from the brand name
2.      Try to develop good will in other markets (e.g. Nike)
3.      Enforce your right- sue infringers
4.      Require media to use the ®
o        King-Seely Thermos v. Aladdin Industries (2nd 1963)
§         Π King Sealy made thermos for years. Π wanted the court to enjoin Δ from marketing a product called thermos. Π wanted Δ to use the term “vacuum insulated bottle”, D argued that Π had developed and marketed the word to the point where the word has become generic.
§         The Court agreed that thermos has become a generic consumer term so Δ couldn’t be completely enjoined. However, the Δ had to put it’s name on their thermos to avoid confusion
§         Π was basically too success in its marketing.
·         Note 3: Aspirin and Tabasco are other examples of brands becoming the generic term for the product, no matter the producer.
§         Abercrombie & Fitch v. Hunting World (2nd Cir., 1976)
o        Case concerns use of the term “safari” to describe and identify articles of clothing. Π claimed Δ had infringed on its use of “safari” to describe clothing.
o        Court ruled “safari” was generic w

o David.
o        The Court says Wally can stay, if it uses a different name, or it can move further way and use the family name Findlay.
§         Sullivan v. Ed Sullivan Radio and TV Show
o        Court grants Ed’s injunction against Sullivan, who was operating a TV repair shop under the name Ed Sullivan Radio and TV shop. 
o        The Court determined that there was great potential for consumer confusion with that exact name. The Court said he could go with just “Sullivan” or “Edward Sullivan” and be okay, but “Ed Sullivan” violates the famous guy’s trademark.
o       If the famous Ed had not acted so quickly, he may have been estopped later if the infringement grew out of control as having acquiesced to the infringement.
IV.              Colors, Sounds, Scents, and Other Marks
a.       Color [Qualitex v. Jacobson]- the Supreme Ct. has held that color can be a valid trademark
                                                              i.      Doctrine of Functionality- if the feature (i.e. color) is functional, it cannot be trademarked. So in this case, if the color is not involved in the functionality of the product, then it is not per se excluded from potential trademarks.
1.      How do you determine if a feature is functional?
a.       “in general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use of purpose of the article or it affects the cost or quality of the article
b.      Think of the monopoly- would the exclusive use of the feature put competitors at a significant non-reputation related disadvantage
2.      Makes functional features identical to generic marks; both result from a desire to encourage fair competition
                                                            ii.      Aesthetic Functionality- serves some consumer preference for a color to be associated with a product (e.g. blue=water). With this, no producer gets an exclusive right to that color; anything that serves as a source indicator for a consumer would qualify. Even though it is not functional, can be a trademark (e.g. ABC’s three chimes, Mrs. Butterworth Bottle)
§         Qualitex v. Jacobson Products
o        Facts: Π registered the color green-gold as a trademark for its brand of dry cleaning press pads. Π sued Δ for violation of its color trademark.
o        U.S. Supreme Court held that color of a product can be a valid, protectable trademark.
o       Color of press pads doesn’t matter, so it’s not excluded; whereas, color of a chalk board probably couldn’t be trademarked because there is a very limited range of colors that work for a chalk board. Same thing for camo gear.
b.      Scent [In re Clark]- case on scented yarn.
                                                              i.      Uses the Functionality doctrine stated above; so if the scent is not functional, the owner can trademark it. 
                                                            ii.      So, in this case, the yarn owner could trademark the scent for her yarn; BUT, if she sold air freshener, she could not trademark b/c it would be functional
§         In re Clark
o       Facts: Owner of company wants a trademark on her floral scented sewing thread. She claims she is the only one in the business with scented thread, and her trademark request is for her particular floral scent, which is similar to “Plumeria”. The Trademark Appeals Board held that scent is like color, in that if the scent is not functionally related to the product, thus scents are not precluded from trademarks.