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Intellectual Property
University of Mississippi School of Law
Myers, Gary

Intellectual Property Outline
Myers – Fall 2009
1.    Introduction
a.     Historical Notes
                             i.      Thomas Jefferson’s 4 insights:
1.      Ideas and information are relatively inexhaustible
2.      Information is not readily appropriable; once created, info is hard to prevent others from making us of it
3.      IP rights are provided to stimulate and reward creation of IP
4.      Society should provide these rights
                           ii.      Intellectual Property Clause: US Constitution, Art. I, Sec. 8, Cl. 8
1.      “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”
a.       It is beyond Congress’ power to grant unlimited protection
                         iii.      Lanham Act of 1946: Codified trademark rights; based its authority on the Commerce Clause
                         iv.      Why are we granted these rights?
1.      Incentive Theory: encourage people to create new works by giving them an incentive or reward in the form of protection
a.       Balances the interest of society with the interest of the creator through limited time protection
2.      Natural Right Theory: Fruit of their labor; their work product; people are entitled to the rights of their creation
b.     Types of IP
                             i.      Brands
1.      Trademark Law – protected by federal and state laws
                           ii.      Inventions (useful things)
1.      Federal – protected by patents
2.      State – trade secret law
                         iii.      Creative Works
1.      Movies, songs, books, architectural designs, etc.
2.      Federal – copyright laws
3.      State – copyright laws, but very rare and limited
c.      Also:
                             i.      Right of Publicity: celebrity endorsements, etc.
1.      State law form of protection
                           ii.      Idea Protection: litigation over the use of ideas by people
1.      usually state law
d.     Types of IP Protection:
                             i.      Copyrights: protects creative works as soon as they are embodied in some tangible form or medium
                           ii.      Patents: protects useful inventions, as well as providing protection for rights to ornamental designs and new plant varieties
                         iii.      Trademarks: protects marketing information, such as brand names, logos, slogans, and other indicators of the source of a good or service
e.      State Law Counterparts to Federal IP Protection:
                             i.      Copyrights: Preempted by Federal Copyright Act of 1976
                           ii.      Patents: Law of Trade Secrets; protects confidential business information
                         iii.      Trademarks: Law of Unfair Competition, Law of Publicity
f.       Economic Perspective
                             i.      IP is a “public good” because it’s”
1.      Not appropriable
2.      Not exhaustible
                           ii.      IP protection encourages creativity and invention; however, the IP Clause mandates that protection cannot be perpetual, so expired IP falls into the public domain
g.     Public Domain
                             i.      After expiration of protection, IP can be used freely by anyone
2.    IP Policy
a.     Wherecanauthority be found for IP protection?
                             i.      U.S. Constitution, Article I, section 8, clause 8: “Patent and Copyright Clause”
1.      “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive rights to their respective works”
2.      It is beyond Congress’ scope of power to grant a perpetual copyright or patent
                           ii.      Commerce Clause of Constitution
1.      Congress can regulate business in interstate commerce
2.      Trademark Law: Lanham Act of 1946 – current statutory protection for trademarks
b.     Why do we have IP protection?
                             i.      Constitution grants these rights to Congress and Congress uses them
                           ii.      Incentive Theory/ Utilitarian Justification – in order to encourage people to create works, they must have an incentive or reward. The protection is the incentive
1.      Balancing interest to society: limited time protection; allows competitors to come in eventually, but gives authors and inventors exclusive rights for a limited time
                         iii.      Natural Right Theory – given to the author or creator because it is the fruit of their labor; they created it, they should own it
                         iv.      Incentive at Stake in Trademark Law – Protection creates:
1.       good will for companies (prevents others from benefiting from their good will)
2.      denies unjust enrichment of copies by using the superior brand’s achievement in marketing to sell your own brand
3.      stops consumer confusion as to the source or origin of goods
3.    Trademark Rights
a.     Introduction
                             i.      Involves the protection of good will from improper usurpation by competitors or others. 
                           ii.      “Trademark”:
1.      A symbol
2.      Used as a mark
3.      To identify and distinguish the seller’s goods from goods made or sold by others
                         iii.      A trademark can include:
1.      “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown”
                         iv.      Protected under state and federal law
1.      State laws are based on unfair competition claims
a.       Unfair competition state law claims are usually asserted with a federal trademark claim
                           v.      Trademark protection has three principle objectives:
1.      Protecting the good will and reputation of sellers
2.      Preventing consumer confusion or deception about who produced the goods or services they have purchased
3.      Promoting competition in the market
                         vi.      Origins of trademark law can be traced back to the state law claim of unfair competition:
1.      Restatement 3rd of Unfair Competition section 4 states:
a.       “one is subject to liability to another… if, in connection with the marketing of goods or services, the actor makes a representation likely to deceive or mislead prospective purchaser 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 for services that the actor markets are produced, sponsored, or approved by the other.”
                       vii.      The essence of trademark ownership is use of that mark in commerce
1.      Owners can assert harm to their own commercial interests, but they have a more compelling case when they can show that consumers have been defrauded or deceived in some way
                     viii.      Trademark vs. Patent protection:
1.      Patents provide an exclusive right to sell the product itself; trademarks focus on deceptive marketing but does not provide exclusive rights to a product – just to the marketing aspects of it. 
2.      It does not offer exclusivity with regard to the product itself; it just protects the brand or trademark
b.     The Lanham Act of 1946
                             i.      Two general purposes of the Lanham Act
1.      To protect the public so it may be confident that, in purchasing a product bearing a particular trademark which it favorably knows, it will get the product which it asks for and wants to get
2.      To protect the owner of a trademark in his investment from the misappropriation of his goods by pirates and cheats
                           ii.      The legislative history identifies three principle goals for trademark law:
1.      Prevention of consumer confusion and deception
2.      Protection of good will against free-riding
3.      Providing a nationwide system of rights for all marks
                         iii.      “Dilution” – The use of a mark that has become well-known, and the use of which “dilutes” the distinctive nature of the mark; these claims do not re

e.       Consumer surveys
3.      Disclaimers: Usually found insufficient as a remedy because usually the actual disclaimer is insufficient to differentiate between the superior and inferior trademark
a.       Why?
                                                                             i.      Fine print is often ignored by consumers
                                                                           ii.      Tags are removed after purchasing and disclaimers will never be seen
f.       Surnames
                             i.      Considered to be a DESCRIPTIVE term
                           ii.      Protected only if a secondary meaning can be shown
                         iii.      To be considered a personal name, it must be understood as a personal name by ordinary consumers… a name can still become a protectable mark despite the absence of secondary meaning or acquired distinctiveness if the name is unlikely to be understood as a personal name by the relevant consumer market
                         iv.      Using your own family name is not considered a “Sacred Right”; you can be stopped from using your own name if the use of it is detrimental to another established business that has acquired distinctiveness with the use of that name
1.      You must avoid consumer confusion
2.      Oftentimes it comes down to who was in business first/ who is more established
3.      If you have the same name as a famous person, you are sometimes allowed to use an initial or something similar to differentiate the names (think “Ed Sullivan vs. Edward J. Sullivan”)
                           v.      If a company is obtained/bought that uses a surname as its title or mark, the best way for the purchaser to protect his new investment is to obtain a covenant not to compete. 
                         vi.      “Right of Publicity”: Section 2(c) of the Lanham Act prohibits the registration of, among others, the name, picture, or signature of a living person as a trademark without that person’s consent. It prevents the appropriation of someone’s right to publicity in a registered trademark without their consent
g.     Colors, Sounds, Scents, etc.
                             i.      The Supreme Court unanimously decided that color, sounds, scents, etc. were not precluded from registration, as long as they satisfy the requisites of trademark law:
1.      “Trademarks include any word, name, symbol, or device, or any combination thereof”; therefore almost anything can be used as a “symbol” or “device” as long as it’s capable of carrying meaning. Reading the language literally, it is not restrictive.”
a.       Basically, trademarks can be anything that qualify as an indicator of the source of the goods
b.      Examples: pink insulation or the NBC chimes
2.      Colors, sounds, scents, etc. must still establish a secondary meaning, in effect treating these marks as other descriptive marks; as long as it’s capable of distinguishing a source, has inherent or acquired distinctiveness, is not already used or registered by others, and is not functional
a.       Note: For a color to be registered as a trademark, it must not serve any functional purpose on a device, but rather only distinguish its brand
3.      To assess whether a color or other feature is protectable, look at:
a.       Functionality
b.      Distinctiveness
c.       Potential for consumer confusion