Introduction to Intellectual Property
Class of November 10 2003
Copyright Remedies
Trademarks: Protectable Marks, Distinctiveness
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)
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 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.
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
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