Introduction to Intellectual Property

Class of November 10 2003

Copyright Remedies

Trademarks: Protectable Marks, Distinctiveness

Purpose of Remedies

Purpose of Remedies

• Compensate

• Punish

• Prevent

• Which copyright remedies have these purposes? Are they “liability” remedies or “property” remedies?

Civil Copyright Remedies

• Injunctions (s. 502) (freely granted unless inequitable – see Stewart v. Abend)

• Seizure/impoundment (s. 503)

• Actual damages (loss + profits) (s. 504) (valuation problem – e.g., see Sheldon)

• Statutory damages (s. 504)

• Costs/attorney’s fees (s. 505)

Criminal Copyright Infringement

• Fines

• Imprisonment

Trademarks

• Compare sources of trademark law to patent copyright and trade secret law.

Sources of trademark law: A patchwork

• Federal law (Lanham Act) – ultimate constitutional source is the Commerce Clause Art. 1 s. 8 cl 3 – protects registered and unregistered marks

• State law – many states have registration of state trademarks

• Common law – e.g. unfair competition

Theoretical Basis of Trademark Law?

• What is the theoretical basis for trademark law? How does this differ from patent, copyright, and/or trade secret?

Theoretical Basis of Trademark Law?

• What is the theoretical basis for trademark law? How does this differ from patent, copyright, and/or trade secret?

• Protect consumers?

• Protect producers?

• Encourage creativity?

Trademark: A source identifier“includes any word, name, symbol or device . . .”1. used by a person, or2. which a person has a bona fide intention to use in

commerce …To identify and distinguish his or her goods . . . from those

manufactured or sold by others and to indicate the source of the goods, even if that source is unknown (15 U.S.C. § 1127)

We will consider today what subject matter can be protected by trademark law - to review, think about how this differs from copyright, patent, trade dress

Differences between

• Trademark and

• (1) Service Mark

• (2) Trade Dress

• (3) Certification Mark

• (4) Collective Mark

Example of a Trademark

• DORITOS (corn chips)

• CUA DEUS LUX MEA EST (Christmas tree ornaments, notebooks, pens)

Example of a Service Mark

• CUA (educational services)

Example of Trade Dress

• Fluted shape of coke bottle

Example of a Certification Mark

• Certifies that the goods on which the mark is applied are one hundred percent (100 %) greenhouse gas free prior to reaching market or in their use and that service providers which display the mark have committed to being one hundred percent (100 %) greenhouse gas free within a specified time period.

ClimateSafe certification mark -

Example of a Collective Mark

• REALTOR® -- A registered collective membership mark that identifies a real estate professional who is a member of the National Association of REALTORS® and subscribes to its strict Code of Ethics.

Can the following be trademarked?

• Phrases?

• Images?

• Sounds?

• Fragrance?

• Shape?

Trademark Protection for Color?

• See Qualitex Co. v. Jacobson (1995) (CB p. 538)

• According to the U.S. Supreme Court, can a color be trademarked?

Picture on left is of Qualitex SunGlow® presspad for dryCleaning press machinesSee http://www.qualitexco.com/http/pads.html

Trademark Protection for Color?

• See Qualitex Co. v. Jacobson (1995) (CB p. 538)

• According to the U.S. Supreme Court, can a color be trademarked?

• Yes, if the color has secondary meaning and has no other significant non-trademark function (fear of providing for perpetual patent protection)

Court dismisses 4 arguments

• 1. Problem of unresolvable court disputes about exactly what shade of color is protectable

• 2. Color depletion theory• 3. Weight of authority is against protecting

color• 4. Color can be protected under trade dress

protection

Other trademarked colors

• Pink color of Owens-Corning insulation

Distinctiveness (under Lanham Act)

• Trademarks must be able to identify a unique product source

• They can be inherently distinctive OR not inherently distinctive

Hierarchy of Trademarks

• Describe the hierarchy of trademarks (as set out in Zatarain’s Inc. v. Oak Grove, (5th Cir. 1983) CB p. 547

• For each type of mark in the hierarchy, state which is inherently distinctive

• Also state which can be protected under the Lanham Act?

Hierarchy of Trademarks

• Arbitrary (ID) can be protected - APPLE (computers) IVORY (soap)

• Fanciful (ID) can be protected unless generic- KODAK (cameras), KLEENEX (tissues)

• Suggestive (ID) can be protected- MICROSOFT (software) , TIDE (laundry detergent)

• Descriptive (NID) protectable with secondary meaning - TENDER VITTLES (pet food), DIGITAL (computers), MCDONALDS (fast food)

• Generic (NID) unprotectable - ASPIRIN, CELLOPHANE, E-MAIL, MODEM