As a law professor, engineer, and patent attorney, I am an advocate of strong intellectual property rights (IPR). However, the extent of what is currently protectable under U.S. IP law has become too expansive. Design patent law, copyright law, and trademark law have grown significantly over the past few decades. Design patent law was first enacted in the 1800s to cover the ornamental appearance of commercial products. This is often referred to as industrial design protection. According to legislative history it was needed to fill a gap in the existing law because neither utility patent law nor copyright law provided protection for such industrial design even though protection had long been available in Europe. Copyright law originally covered only the form of expression embodied in maps, charts, and books. Trademark law – a species of unfair competition law – protected the mental association between symbols, words and short phrases that identified products or services against third party commercial uses that would create consumer confusion.
Today, copyright law covers many things including software, building designs, three dimensional commercial products such as jewelry or a lamp, directories, compilations of facts, financial reports, music, movies, pantomimes, choreography, photographs, sound recordings, and the bar examination. Almost anything, including a specific characteristic of a product, can potentially be a trademark today if it signals to consumers that the product comes from a specific producer or seller. This has enabled trademark protection to be obtained for colors, sounds, shapes, smells, feel, music, trade dress, and even putting goats on the grass roof of a restaurant to attract customers (U.S. Service Mark Reg. No. 2,007,624). Likewise, design patent protection is no longer limited to the ornamental exterior appearance of an industrial or consumer product. It is routinely granted for graphical displays such as computer icons that appear on a computer monitor or functional products such as clothing or headgear.
It has long been permissible to protect different aspects of a product under different bodies of IP law. However, the modern expansion of what is covered via patent law, copyright law, and trademark law has inadvertently resulted in overlapping IPR. This is problematic because each body of IP law has a different term of protection. And, these terms are based on a balance of competing interests. Namely, providing adequate property protection to incentivize investment in innovation and creativity while not preventing such innovation and creativity from both benefitting the public and being freely available.
Obtaining simultaneous protection under multiple bodies of IP law can interfere with this balance. Under both design patent law and copyright law the property rights end when the term of protection runs out. At the end of the 14 year design patent term the subject matter should enter the public domain. However, copyright protection typically lasts for the author’s life plus 70 years so copyright protection would interfere with the subject matter entering the public domain because copyright rights will continue to exist for many decades after expiration of a design patent. Likewise, trademark rights could interfere with subject matter protected by patent law and by copyright law because trademark rights, which can potentially last forever, can continue to exist despite expiration of any patent or copyright rights.
Examples of Overlapping IPR
Google obtained U.S. Design Patent D599,372 for the following computer interface. It also claims copyright protection for this interface.
The following graphical work in the form of a computer icon is protected via U.S. Design Patent D295,764.
The following graphical work in the form of a computer icon is protected by registered U.S. Copyright Office Registration no. VA0001638936.
Product containers such as the well-know Coke bottle, shown below, have been protected by U.S. Design Patent D63,657 and have subsequently been registered as a trademark (U.S. Trademark Reg. No. 1,057,884).
Apple Computer has obtained trademark protection for both the two dimensional shape of its iPod (U.S. Trademark Reg. No. 3,341,214) and the three dimensional shape of its iPod (U.S. Trademark Reg. No. 3,365,816) as shown below. A trademark registration is pending for the two dimensional shape of its iPad (U.S. Trademark Reg. Serial No. 85,025,647 (filed April 28, 2010)) as shown below.
Music has long been primarily protected via copyright law. However, the song Sweet Georgia Brown has been registered as a trademark for the Harlem Globetrotters basketball team. (U.S. Trademark Reg. No. 1,700,895). Additionally, the Loonie Toons theme song has been registered as a trademark by Time Warner Inc. (U.S. Trademark Reg. No. 2,469,365).
Intellectual property law is premised on incentivizing innovative and creative activities by providing limited property rights for the fruits of such activities in order to increase the storehouse of creative and innovative knowledge for the betterment of society. Excessive overlapping protection undermines the careful balance individually developed under each body of intellectual property law. Expansion of the subject matter protected under either patent, copyright, or trademark law should only occur if it does not undermine the careful balances struck under each of the other bodies of intellectual property law. Being mindful of the balance between protection and public interest can prevent unintended over-protection of intellectual property that would work to skew the balance in favor of rights to creators and innovators at the expense of the public.
For an in depth examination of this topic see The Problem with Intellectual Property Rights: Subject Matter Expansion, 13 Yale Journal of Law & Technology 35 (2010).
Join the Discussion
9 comments so far.
Arizona Patent AttorneyMarch 21, 2011 03:19 pm
@MadHatter Yes, unfortunately.
The Mad HatterMarch 16, 2011 08:46 pm
Don’t play the game, play the rules in other words.
Arizona Patent AttorneyMarch 15, 2011 03:31 pm
I’ll play devil’s advocate a bit. IP protection is all about innovation, incentives, and public disclosure spawning further innovation. In that sense, it is driven heavily by capitalistic tendencies. If the government which has established the scope of the subject matter and its protection has done a poor job at writing laws that prevent the blurring of those boundaries, thus allowing a Venn-diagram-style of protection to arise, is it incumbent on IP owners to limit themselves to avoid expanding their protection and instead voluntarily limit themselves to only pursuing traditional protection? In a system based on innovation, inventiveness, and capitalism, perhaps the IP owner that can best exploit the structure of the law to achieve maximum protection should aspire to do so. In other words, if the law allows it, then why not?
Of course, I can envision a Wall Street worker making a similar argument about mortgage-backed securities five years ago.
The Mad HatterFebruary 24, 2011 09:54 pm
That’s what the Town of Parry Sound thought too, which is why they hadn’t bothered to trademark it themselves. It’s also upset a lot of the citizens of Parry Sound.
Anyway, the protest website has lots of links.
Gene QuinnFebruary 24, 2011 03:36 pm
Someone was able to trademark “Welcome to Parry Sound” ? That seems rather ridiculous to me. I suppose I could see a local business development or tourism group doing that, you know like a collective intending to encourage business/tourism, but even then that seems incredibly non-descriptive. In any context other than a non-profit business development group I can’t imagine how it would be anything other than non-descriptive.
The Mad HatterFebruary 23, 2011 04:21 pm
Paul, while this may be true currently, there was recently an attempt to change patent law to make over turning patents impossible under certain circumstances, and I would expect that attempt to be expanded.
Gene, there’s also issues where a ‘troll’ (using the term loosely) attempts to set itself up to gain a return for every use of something, like the guy who trademarked the term “Welcome to Parry Sound” and is trying to extort money from the town, which has been using the phrase since I was a child (over fifty years). The trademark of course shouldn’t have been issued, but it was (which points to problems in the Canadian system too).
Paul F. MorganFebruary 23, 2011 08:52 am
I should also add that the ex parte obtaining of mere registrations is not accurate evidence of legal validity.
Paul F. MorganFebruary 23, 2011 08:50 am
Quiry the alleged increase in overlapping IPL protection. Some of the overlapping was significantly reduced in the year 2000 Supreme Court “Wal-Mart” decision overruleing most of the prior case law on the subject of PRODUCT Configuration (as opposed to packaging) trade dress. It semed to leave only the possible exception of the overlapping trade dress protection provided in some states under state law, IF any of their courts would refuse to follow the lead of the Supreme Court on this subject. Plus the important 2001 Sup. Ct. decision in Traffix v. Marketing Displays reducing “trade dress” trademark protection, in which prior utility patents on the product were indicated to be strong evidence of trademark-unprotectable functionality.
Gene QuinnFebruary 22, 2011 03:23 pm
Interesting article. I too marvel at what seems like an ever increasing expansion of intellectual property rights. I don’t mean in terms of the particular exclusive right any one thing enjoys, but that there are so many aspects that can be protected. I suppose to some extent there has to be overlapping protection between trademarks and patents, for example, since largely they protect different things. It becomes harder to understand in the design patent area and, of course, with software.
The fact that software code can be copyrighted and the functionality patented also seems to lead at least some who are not immersed in IP to make bad decisions; bad at least if the desire is to obtain maximum protection for a business enterprise.
It seems ironic that as utility patent rights seem to be eroding design patent rights seem to be getting stronger. It seems like we might need to reevaluate protections available in a comprehensive way, but if patent reform is any lesson that suggest that nothing will get done because too many interest groups will want different things.
In the meantime, I guess I am happy with overlapping rights and increasing rights in some areas because it seems in other areas rights are being removed. I fear the removal is not keeping pace with the expansion, so I worry about that.