Intellectual Property
Laughrey
2011
Policy Interpretation Some possible policy justifications
Interpretive
Past
Historical justification
How IP law has been used in the past
Present
Conceptual justification
What IP law ‘actually’ means
Present
Functional justification
What ends are achieved by IP law
Prescriptive
Future
Hypothetical justification
If IP is to serve goal G, it ought to take the form F. Purpose shapes form.
Future
Categorical justification
If IP law takes form F, it will serve goal G. Form shapes purpose.
GENERALLY
Fairness
o Will going one way or another be more or less unfair to involved parties, 3rd parties, 4th parties, etc.?
§ Economic unfairness – someone’s going to pay with greater frequency/with more damages
§ Legal unfairness – someone is going to be liable/guilty with greater frequency/steeper penalty
§ Class unfairness – class of Π will be treated more or less favorably
§ Etc.
Institutional concerns
o Will going one way or another make it more or less difficult to administer the law?
Preventing future harm
o Will going one way or another prevent or allow harm and to whom?
For each hollow bullet below, use the above criteria!
Interpretive – What IP is/was
Historical justification:
o Does the new principle in question agree or disagree with history/precedent?
o Is the new principle ‘bad’ and should be rewritten by precedent?
o Or is the new principle ‘good’, replacing precedent due to its present inapplicability?
Conceptual justification:
o Is the new principle in question doctrinally consistent?
Functional justification:
o Does the new principle lead to better ‘ends’ or does it lead to worse ‘ends’?
PRESCRIPTIVE-WHAT IP SHOULD BE
Hypothetical justification:
o Is the new principle a better form to achieve purpose of IP law? If so, change the form. If not, don’t.
Categorical justification:
o Is the new principle a better purpose shape the form of IP law? If so, change the purpose. If not, don’t.
I. POLICY
Unique nature of IP
o Passing doesn’t diminish quality of original (Jefferson)
o Can’t dispossess once obtained (Jefferson)
o Unlimited number of users
o Simultaneous use
Protection
· Developments in technology = decrease in craftsmanship/manufacturing of real property
· Provide economic incentive for inventors
· rapid development of products
· lobbyists want to license ideas for longer-but can’t issue for perpetuity
· “Bargain”/contract theory: provide incentive to create; supported by Constitution, common sense.
o BUT bargain denies any absolute right of inventor to productivity. Inventor either accepts gov. bargain or gets no protection at all.
· “Natural Rights” theory: product of mental labor belongs to creator: no obligation to disclose, etc. b/c O has all title to invent. Obtain disclosure by assuring exclusive right to profit from labor.
o BUT if individual has all title, how can gov. declare patent public property after patent expires?
· Key advice to clients: FIRST CLEAR, THEN PROTECT
Need for protection
o Can’t protect rt in idea and still exploit for commercial gain (competitors will replicate)
o Incentive for creativity
Risks of protecting
o Protecting rts in ideas withholds free flow of ideas into the public domain
o Stifle progress
o Public harm (goods too expensive, unattainable, not enough, etc.)
Balancing of interests
o Interests of the public
§ Progress of ideas/inventions
§ Prevent monopolies
§ Exploitation of a good idea
§ Manifested in: short patent terms, finite © terms, disclosure requirements, fair use, ban on ©ing facts, right to “cover” songs
o Interest of inventor: Incentive to invent; Reward for innovation
§ Manifested in: exclusive rights, protection of expression/creativity
II. TRADEMARKS
A. Protectable Subject Matter
Any word, name, symbol, device, or combination thereof used (or intended to be used) in commerce to identify & distinguish goods…from those manufactured /sold by others & to indicate the goods’ source, even if source is unknown. See Lanham Act 45 15 USC §1127).
policy: Protect TMs to
· protect consumers from fraud & reducing consumer search costs
· encourage/protect investment in high quality products, tms, & advertising.
Rights Established by: Distinctive source identifier; Use in commerce; Registration (not req. for protection, but gives advantages).
Supplemental Register: broader definition for registration; provides protection in foreign countries.
CONCURRENT JURISDICTION
Federal Courts have exclusive jurisdiction over patents, copyrights, and plant materials. 28 U.S.C. § 1338
Supplemental jurisdiction: Permits federal court who has jurisdiction over one claim or party (e.g., federal question jurisdiction), but the parties want to bring a state claim in the same lawsuit, can be done if the state and federal claim arise out of the same core of operative facts. 28 U.S.C. § 1367
In absence of federal registration of trademark, state law controls infringement and unfair competition claims (concurrent). § 1121
Express purpose of LA is to protect both owner’s and public’s rights. §1127
TEST: To be protected as ™, must be
1) Distinctive source identifier
2) Used in commerce (priority) AND
3) Source indicating. §1127.
ADDITIONALLY
Protectable subject matter: (not scandalous, immoral, or deceptive)
· Words
· Names
· Logos/slogans
· Product or package design
· Shape, scent, color, etc.
· Number, drawing, shape, sound, fragrance, color, or combination, if capable of secondary meaning. Qualitex.
Exceptions
· Laudatory & common words/symbols: no protection
· Titles: not copyrightable or TMable BUT protected against TM passing off if: Distinctive/secondary meaning AND Likely to cause confusion.
· Surname §1052 (e) No protection UNLESS word has secondary meaning & is associated with product source (Sak’s 5th Ave).
o Primarily/Merely Surnames (e)(4): No protection. Many w/same name in similar market = confusion. 1st to use ™= priority. Ed Sullivan TV Repair Co.)
o CL: prevents the use of names in trademarks.
· Prohibited Marks §2(a)-(d)
o Immoral, deceptive, scandalous, disparaging, or contemptuous terms (Redskins offensive to Native Americans-Harjo): not registerable, but can prevent others from use. §1052(a). TEST: assessed in relation to those implicated by mark, not general public.
o Flag, coat of arms, or insignia of US, state, city, or foreign nation
o Name, portrait, or signature of living individual (w/o consent) OR deceased president while spouse is alive
· Challenge can be brought by person who would be damaged or offended by use of prohibited mark. §13.
1. Distinctiveness
§1052 TM is distinctive if it distinguishes goods of applicant from goods of others, based on inherent nature of mark or developed by O through marketing.
POLICY: allows 1st user to object to 2nd user on grounds that 2nduser’s too closely resembles 1st. Prevents domination of market through common or descriptive terms of marketplace. Prevents withdrawal & pre-emption of words from competitors who may need them.
TEST: To be protected as distinctive, must:
1) Be inherently distinctive.
Fanciful: can’t be anything other than source identifying (e.g., Xerox, Kodak)
Arbitrary: real word bearing no relationship to good or service (Apple computers)
Suggestive term: suggests characteristic, 2 tests below (Roach Motel)
2) Have secondary meaning: ordinary buyer associates mark with single (even if anonymous) source. 15 USC §1052(f).
Merely descriptive w/2nd meaning: describes characteristic; protectable with proof of secondary meani
istration of mark consisting of/comprising deceptive matter
Deceptive Marks
PTO refusal to register “Lovee Lamb” synthetic seat covers for deceptive matter under§1052(a). P advert fake=insufficient to prevent deceit b/c not all consumers see & disclaimer not always w/mark
In Re Budge Manufacturing
250
Confusing Sim. to Prior Marks
Refusal to register “Narkomed” for anesthesia machines b/c confusion w/ “Narko” med supplies. Look at consumer confusion/sophistication. Below.
In re N.A.D., Inc.
253
“Merely Descriptive or Deceptively Misdescriptive”
Can’t register “Custom-Blended” b/c merely descriptive w/ no 2nd meaning under 2(e)(1) & 2(f).
Sun Oil
256
Permissibility of registration of “Nantucket” for men’s shirts by NC co.
In Re Nantucket
California mark for bags, pouches, etc. Refused b/c consumers would expect it from CA & mark had no 2ndary meaning. See below.
In Re California Innov.
“Primarily Geo. Decept. Misdes”
Refusal to register “Durango” for chewing tobacco b/c reasonable purchaser would expect tobacco from Mexico. 2(e)(2).
In re Loew’s Theatres
259
Deceptive: Budge TEST: (ct. applying Simmons): mark not protected if:
1. Term is misdescriptive of character, quality, function, composition, use of goods,
2. Prospective purchasers are likely to believe misdescription actually describes goods, AND
3. Misdescription is likely material to affect consumer’s decision to purchase.
Deceptively Misdescriptive §1052(e) (ex. Glass Wax waxless glass cleaner).
TEST: Deception likely not material to purchasing decision-meets only first 2 elements of Budge test. Requires secondary meaning.
Misdescriptive marks (but not deceptive) §1052(e)(1): Meets Budge test for deceptiveness except for unfairly influencing purchase (#3).
· Usually protectable w/o 2nd meaning b/c arbitrary or suggestive (ex. Ivory soap).
Confusingly Similar Marks §1052(d): bars marks too similar to existing mark
TEST: N.A.D ct allowed use b/c:
1. no likelihood of confusing source merely by reason of similarity
2. parties agreed (competitor didn’t care), &
3. consumers were sophisticated.
Geographically deceptively misdescriptive §1052(e)(3) (Loew’s Theatres).
Primary Geographically deceptive or misdescriptive: must have secondary meaning.
TEST: primarily geographically descriptive or misdescriptive if:
1. conveys to meaningful segment of purchasing public primarily or immediately geographic connotation, AND
2. Purchasing public likely to think goods/svcs originate from that place. In Re California Innovation (lost b/c no 2nd meaning)
Exceptions: 2nd Meaning Req
Descriptive terms §1052(e)(1) (e.g., “Custom-Blended” for gasoline -Sun Oil): Name immediately indicates what the product is
Geographical Description §1052(e)(2): PTO burden to show fits under (e)(2) bar then applicant must show 2ndary meaning under (f) to prevail.
