TM roundtable, part 4

From last time: RT:
I was thinking as Silbey was talking that you’re convincing me that TM should be a particular kind of
anticopying regime (though, as w/patent, knowledge need not be required, at
least for double identity).  And that
would argue for a greater role for registration, which I think is a desirable
outcome: it would be good to channel people into registration by making it hard
for them to win when they haven’t registered; I wrote a whole article
about that
Discussants:  Robert Burrell: Using the
patent monopoly period to develop secondary meaning.  Concern over this led UK to have rules.  B/c British TM law at the time didn’t extend
to shapes, this concept was initially limited to words. Some Commonwealth countries
still have similar provisions: when product produced under patent, you can rely
on TM when you have secondary meaning; remain fully enforceable for up to 2 years
after patent expired, but then name becomes free to use.  Reflects understanding that markets can correct
and be corrected: you now have two years to rebrand your product. Australia
case: Main Indus. interpreted the current provision to apply to shapes as well.
A shape can describe a product.
Patents correct for
market failures. But when we take TM seriously, they have a more fundamental
effect in the establishment of a market. 
Hard to imagine a market economy if I were free to sell sugar pills as
Tylenol: more of a market-constituting effect than patents. If that’s right, it’s
not obvious why we’d prioritize patent logic over TM logic. Yet most of us
would immediately do that. B/c TM have become untethered from any rational
basis whatsoever. When we think about shape marks/trade dress, they’re almost
invariably limping TMs, with other things on the product we can use to ID
source. We don’t think that Pepsi has joined Coke when Pepsi uses a similar
bottle. Consumers can respond quite quickly when similar products emerge. Budweiser:
there are two sources, and consumers in the UK rely on other indicators of
source.  Traditional rules aren’t working
well. Distinctiveness test doesn’t work well applied to shapes, as McKenna
Rights stacking:
another way of thinking about problems from TM perspective is precisely that it’s
almost never the case that a 3D TM works on its own.  Beebe/Fromer on running out of marks;
Australian Productivity Comm’n
doubts whether you should have more than one TM per product
, which he
thinks is extreme.  Design patents over
every little part of an object: consider accretion of rights through one system
and not just questions of channeling.
Michael Grynberg: Courts
are concerned for reward; other schemes might ensure that those concerns aren’t
being unmet. Why are courts so appreciative of utility patent’s ability to do
that and not design patent?  Prominence
of design patent is increasing, and this may sensitize judges to the possible
force/power of design patent.
Disclaimer practice
as a means of keeping fences; if you do that then you can copy.
Dinwoodie: what the
courts in UK have said about limping marks would invalidate a lot of
marks.  The Austl. Productivity Comm’n:
the impetus for this idea is plain packaging, b/c one of the arguments that
they made before the WTO is that you don’t need the logos b/c you still have
the words. Might be driven not by TM concerns but by other concerns.
Lemley: Design
patent seems a close, logical parallel to ©: trying to encourage creation of
nonfunctional thing. We do have functionality in © in various doctrines; so why
not look at that kinship.
Grynberg: The
existence of design patent should give TM pause about protecting the same thing—it’s
not kinship.
Lemley: then shouldn’t
© also give the same pause?
Grynberg: Fewer
cases involve that tension.  [Logo
infringements?  I’m not sure how many
noncounterfeiting real logo copying cases there are, as opposed to things like
stylized initials that probably don’t cross the © threshold.  Of course, TM lawyers are now telling clients
to use © claims to protect marks.]
Lemley: There are
fewer cases where courts take seriously that © ought to have some preemptive
power, except where the © has expired.
Distinctiveness protection is different from exclusivity designed to encourage
creation; so what is wrong with leveraging exclusivity for secondary meaning?
That is looking only at the values that justified creating the rights in the
first place, but other values inherent in the system as a whole call for
limitations. The reason we provide protection is to incentivize for the
ultimate benefit of the public; can’t lose sight of that value.
Kur: wants to use TM
principles informed by principle of undistorted competition—the existence of a
patent doesn’t mean there can’t be a TM; though she wants TM rights to be
narrow. Patent shouldn’t have automatic effect in another regime; it tells a
story about competitive needs, but it’s not an absolute argument. 
McKenna: for me that
doesn’t answer important questions: which kinds of competition, under what
circumstances? Can’t be derived from TM first principles. Some people are
resistant to the idea that things in the patent universe have preemptive effect
but are ok w/ expired utility patents having that effect. 
Kur: I don’t want to
say that all the different types of IP are unrelated to each other.  The more there is a need for using the shape,
the smaller is the scope you can grant a TM right: these are TM principles.
They help you use utility patents to figure out what rights should be granted.
TM is based on the assumption that TM is separate from what’s actually
protected and doesn’t hinder competition & the sign is in infinite supply;
the further you get from that, the more careful you have to be.  [I wonder to what extent this is really about
harm done by the fact that we have an incredibly lax
distinctiveness/distinctive character requirement.]
Bone: If TM did what
it was supposed to be doing and patent did too, we wouldn’t have a problem. But
we worry not just about whether TM is performing its functions but also the
effect of the practicing bar using these theories.  A good TM law can be deployed in ways that
interfere w/ policies in other areas, so we can’t silo them. Not as optimistic
as Kur seems to be that getting it right in the silos will suffice.
Peter Karol: Note
about timing: you see these claims when the patent expires b/c that’s when
competitors enter the market!  Will also
make 2018, when ©s begin to expire, an interesting moment.
Dogan: design patent
surge as direct response to SCt scaling back trade dress protection at the end
of the last century.  When those design
patents begin to expire that will be another interesting moment: more cases of
cumulation of rights than we’ve seen historically b/c of the greater volume.
Empirical question: will they invest in developing secondary meaning in these
Coordination isn’t a matter of mere tidiness; need an independent reason to
police the boundary. Nothing wrong w/pursuing alternative legal theories of
recovery; it’s actually sometimes good. But the law does create boundary policing
mechanisms when a problem results from it, e.g., the economic loss doctrine.
Can’t end run around contracts by using tort when that undermines the actual
bargain.  Then there are exceptions to
the economic loss doctrine. Based not on borders for their own sake but for the
policy reasons we have those boxes/want people to stay within them.  If someone patented a real, Back to the
Future hoverboard, and they happen to shape it an arbitrary way, like a purple
hexagon, he’s comfortable w/saying “flying goes into the public domain, but not
shaping it like a purple hexagon.” Some of the commentary does not think
carefully enough about what an expired utility patent is evidence of.  [This point is very clear in Dinwoodie &
Janis’ TM casebook.]
McKenna: if you can’t
make an end run when you have an expired patent, it seems that you shouldn’t be
able to make an end run by declining to seek a patent either.
Silbey: patent as
evidence that it really did fit within that regime.
Lemley: we do feel
differently about McKenna’s point b/c of vestigial instinct that you got to
choose b/t regimes. 
Ornamentality might
justify further attention: if it’s not attractive, then it shouldn’t be part of
a design patent.
Silbey: if you shape
the utility patent to get around prior art to include the hexagon in the
hoverboard, it seems like you’re taking advantage of the patent system. But not
sure what expired design patent is evidence of that’s distinct from trade
dress. Does it have a quid pro quo the way we think of utility patents have?
Dinwoodie: not much
of a quid, because by selling the thing you’re disclosing its visual
Yen: Smells like
election of remedies.  You got an extra leg up in establishing
secondary meaning, that others don’t get.
Bone: but if the
system works, so what? If we think TM is double dipping, then sure, but if it’s
dealing w/harmful consumer confusion, we might say that developing secondary
meaning and communicating w/consumers is a good thing.  A question more of deployment than of
Yen: but to the
extent the thing we have a design patent for has some “useful” function, there
should be a potential limit on what TM would allow, here aesthetic, right?
Dogan: if I go to
market w/a chair, others can copy it before I have secondary meaning—but if I
have a design patent I can keep that from happening. Properly designed
aesthetic functionality test could figure out if people are demanding the chair
b/c of its aesthetic properties v. its popularity, but the test is not likely
to work well unless the expired design
patent is evidence of aesthetic functionality.
Dinwoodie: Children’s
chair case—the EU has started to develop a series of factors to figure out
whether something is iconic—taxicab case, J. Arnold discusses the role of
designs.  Dogan is asking for something
close to what they’re doing.
McKenna: meaningful
ornamentality requirement could allow us to say that presence of design patent
is evidence of non source related aesthetic value/function just as presence of
utility patent is evidence of non source related utilitarian functionality.

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