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, or
2.
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
ClimateSafe 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.

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 dry
Cleaning press machines
See 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,
(5 th 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