Trademarks, Trade Dress and Ownership

"[W]hat appear to be private disputes among hucksters almost invariably touch the public welfare. We shall therefore be concerned to ask, when courts protect trade symbols, whether their decisions further public as well as private goals. -- Ralph Brown Jr.

"The world has changed quite a bit since Ralph brown wrote his 1948 article. Trademark law and trademark economics have both made significant strides in the last fifty years, but unfortunately they don't seem to be marching in lockstep. Rather, the law has broken stride with economic thinking in dangerous ways. I don't think Brown would approve of the ways trademark law has changed in the last fifty years, but perhaps he would recognize them. He wrote:

"In an acquisitive society, the drive for monopoly advantage is a very powerful pressure. Unchecked, it would no doubt patent the wheel, copyright the alphabet, and register the sun and moon as trade-marks."

We seem to be moving down that road. Unless we are careful, we may end up in a world in which every thing, every idea, and every word is owned. And we will all be the poorer for it."

-- Mark. A. Lemley (William H. Neukom Professor of Law, Stanford Law School, Stanford University), The Modern Lanham Act and the Death of Common Sense, Yale Law Journal, Vol. 108, p. 1687, 1999

One of the most perverse, ill-based and -- in our opinion -- perhaps even unconstitutional laws in the field of law is the "trade dress" standard as found in the U.S. Federal Trademark Act of 1946, also known as the Lanham Act.

The Lanham Act by its very nature extends monopolistic product protection beyond the limitations otherwise provided by patent laws and the patent provision of the United States Constitution.

Section 43(a) of the Lanham Act provides as follows via text posted to the Wikipedia:

"Under section 43(a) of the Lanham Act, a product's trade dress can be protected without formal registration with the PTO.^[8] In relevant part, section 43(a) states the following:

"Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

(A) is likely to cause confusion, or to cause mistake, or to deceive [...] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act."^[9]

This statute allows the owner of a particular trade dress ("container for goods") to sue an infringer (a person or entity who illegally copies that trade dress) for violating section 43(a) without registering that trade dress with any formal agency or system (unlike the registration and application requirements for enforcing other forms of intellectual property, such as patents). It is commonly seen as providing “federal common law” protection for trade dress (and trademarks).^[10]"

Such an over-broad blanket provision appears to us to be unconstitutional on its face because it wrongly expands the limited protection given to products by the patent clause of the U.S. Constitution, without which provision there is no "original" basis (that statement is directed to the "originalists" on the U.S. Supreme Court) to grant this kind of special protection to commercial enterprises and their products, i.e. beyond what the Constitution provides.

Indeed, the basics of the Lanham Act provision can be traced back to ancient medieval guilds that were established to gain, maintain and expand the monopoly power of merchants with respect to their products.

Little has changed since then as "merchant" monopolies have gotten worse than ever, which can be seen via the resulting and egregious wealth and income inequality in the USA.

The Lanham Act is generally not used to protect companies or consumers from actually "confusing" brands and products, but rather to further monopolies and conveniently get rid of possible competition.

The Lanham Act wrongly gives protection -- without the requirement of any kind of lawful, controlled and checked registration whatsoever (!) -- to elements of product and packaging design and appearance that otherwise would not be entitled to patent protection since features such as size, color, combinations of color, shape, packaging in general, and even the selling "atmosphere" or "look and feel" of a product would be barred from such protection because they relate to natural physical viz. geometric features not invented or discovered by the seller. Moreover, natural features are foreseen by prior art and are obvious to boot.

The grant of protection to the simple use of natural features of our world thus works as a severely limiting roadblock to innovation and competition.

Just imagine a painter claiming a particular "color" as his "trade dress".
Just imagine hundreds of painters claiming their particular "color" as their proprietary "trade dress".
Just imagine thousand of painters claiming their particular "color" as their proprietary "trade dress".
It would not be long before no new painter could paint anymore because all of the colors had been taken.
It is a terrible scenario, but corresponds well to the modern tech world and to erroneous judicial decisionmaking in the past.

The ill-conceived provisions of the Lanham Act and the unwise judicial interpretations of that act are leading us into a "trademark Armageddon".

Representing the extreme of this "trademark" example we find a greedy monopolist such as the commercial Apple firm arguing in court via "trade dress" rationales that it ALONE should be the ONLY company permitted to sell black-colored rectangular tablets viz. mobile phones with rounded corners and having a frame (bezel) holding the framed electronic display.

You think we are joking? Not at all. 
Take a look at all the Apple claims in the Samsung trial via The Verge.

Apple calls its phone or tablet designs (or non-designs) "minimalist" art because they are essentially purely geometric in form and have few unique identifying man-made features. Rather there is more or less an ABSENCE of specific designs of any kind. One "steals" primarily God-made geometry.

The upshot of the ridiculousness of the Lanham Act provisions is that a detailed and uniquely well-identifiable design by its uniqueness marks off very little IP trademark viz. "trade dress" territory, whereby an alleged "minimalist" design, due to the very fact that it is hopelessly generic, is amply found in prior art and is usually patently obvious, tries to mark off great swaths of IP territory as proprietary to one company.

This shows that the Lanham Act "trade dress" provision is extremely bad legislation, accompanied, as it has been, by really terrible judicial opinions. See the cases in George D. Royster, Halloran & Sage LLP, Protecting Business Assets Under the Lanham Act. Cynthia Clarke Weber, Trade Dress Basics. Robert J. Yarbrough, Protection of Trade Dress.

Mark A. Lemley had it right in his title
in The Modern Lanham Act and the Death of Common Sense.
That is where the law currently finds itself.  Make sure you read that article.

European Countries Protect Private Property Better by Law than in the Americas

Living in Germany, one sometimes gets the impression that people in the Americas think that private property rights do not count for much in Europe.

Wrong.

Mark Wilke has the story at the Vancouver Sun in Europe beats Canada on private property rights.

Litigation by Patent Trolls Has Cost Half a Trillion Dollars in Lost Wealth in the Last 20 Years and Decreased Innovation Incentives in Software and Related Industries

Litigation by patent trolls, also called non-practicing entities (NPEs) because they produce or manufacture nothing but merely manage patent portfolios, have cost a half a trillion dollars in lost wealth in the period from 1990 to 2010 or $80 billion per year according to a study by James Bessen, Jennifer Ford and Michael J. Meurer in THE PRIVATE AND SOCIAL COSTS OF PATENT TROLLS, Boston University School of Law Working Paper No. 11-45 (September 19, 2011), Revision of November 9, 2011. The authors write in their Executive Summary:

"[A] self-described new crop of NPEs has emerged that asserts patents and litigates them on an unprecedented scale, involving thousands of defendants every year in hundreds of lawsuits. Do these litigating NPEs improve markets for technology and increase incentives for small inventors? Or are they “patent trolls” who exploit weaknesses in the patent system?

This paper makes several findings about this litigation.

First, by observing what happens to a defendant’s stock price around the filing of a patent lawsuit, we are able to assess the effect of the lawsuit on the firm’s wealth, after taking into account general market trends and random factors affecting the individual stock. We find that NPE lawsuits are associated with half a trillion dollars of lost wealth to defendants from 1990 through 2010. During the last four years the lost wealth has averaged over $80 billion per year. These defendants are mostly technology companies who invest heavily in R&D. To the extent that this litigation represents an unavoidable business cost to technology developers, it reduces the profits that these firms make on their technology investments. That is, these lawsuits substantially reduce their incentives to innovate.

Second, by exploring publicly listed NPEs, we find that very little of this loss of wealth represents a transfer to inventors. This suggests that the loss of incentives to the defendant firms is not matched by an increase in incentives to other inventors.

Third, the characteristics of this litigation are distinctive: it is focused on software and related technologies, it targets firms that have already developed technology, and most of these lawsuits involve multiple large companies as defendants. These characteristics suggest that this litigation exploits weaknesses in the patent system. In our book Patent Failure, we argue that patents on software and business methods are litigated much more frequently because they have“fuzzy boundaries.” The scope of these patents is not clear, they are often written in vague language, and technology companies cannot easily find them and understand what they claim. It appears that much of the NPE litigation takes advantages of these weaknesses.

We conclude that the loss of billions of dollars of wealth associated with these lawsuits harms society. While the lawsuits increase incentives to acquire vague, over-reaching patents, they decrease incentives for real innovation overall."

[emphasis added by LawPundit]

Read the whole thing here.

The paper has been referenced by the blawg
beSpacific

Federal Spending on Academic Research and the Impact of Bayh-Dole on Patents, Revenues and University Research: Giving Away the Company Store: Another Reason Why the Federal Government Has No Money

The role of the federal government and federal spending in contributing to American innovation is an especially interesting aspect of intellectual property law.

Christine M. Matthews in Federal Support for Academic Research, June 17, 2011, Congressional Research Service, writes:

"Historically, the federal government has been the primary source of funding for basic research at colleges and universities. In FY[fiscal year]2008, the federal government provided approximately 60% of an estimated $51.9 billion of R&D funds expended by academic institutions.[National Science Foundation, “Universities Report $55 Billion in Science and Engineering R&D Spending for FY2009: Redesigned Survey to Launch in 2010,” InfoBrief, NSF10-329, September 2010, p.1. ]"

Prior to 1980, university research was not commercialized and academic discoveries and inventions flowed into the public domain where they could be used by all, greatly boosting the American economy. Since Bayh-Dole, it has been a downhill slide.

On December 12, 1980, as written at AUTM.net, the Association of University Technology Managers:

"The Bayh-Dole Act (P.L. 96-517, Patent and Trademark Act Amendments of 1980) "created a uniform patent policy among the many federal agencies that fund research, enabling small businesses and non-profit organizations, including universities, to retain title to inventions made under federally-funded research programs."

Essentially, the federal government by Bayh-Dole gave up its intellectual property rights to research that the taxpayers were funding via federal dollars and gave those IP rights as a gift to academic institutions and private persons -- who then patented the inventions for their own profit against those same taxpayers.

The Bayh-Dole Act has been lauded in many quarters, but a critical assessment by impartial observers indicates that the positive impact of Bayh-Dole has been greatly overstated by its supporters.

As written by Annetete Lin, Sarah Sorscher, Neha Gupta, Ethan Guillen and Krista Cox in a UAEM White Paper on the Proposed Indian Bayh-Dole Analogue:

"While the Bayh-Dole Act of 1980 led to a dramatic increase in patenting and licensing of publicly funded research, there is little evidence that the legislation was necessary for or successful in accomplishing the goals which inspired its drafting. The practice of licensing at universities in the US has raised serious concerns regarding the application of similar legislation in India."

See also As India Mulls Bill Modeled on Bayh-Dole, Critics Claim It May Stifle Innovation.

A more detailed view of American innovation and Bayh-Dole is presented at So AD, Sampat BN, Rai AK, Cook-Deegan R, Reichman JH, et al. 2008 Is Bayh-Dole Good for Developing Countries? Lessons from the US Experience. PLoS Biol 6(10): e262. doi:10.1371/journal.pbio.0060262, found online at
PLoS Biology: Is Bayh-Dole Good for Developing Countries? Lessons from the US Experience
where it is written:

"Throughout the 20th century, American universities were the nation's most powerful vehicles for the diffusion of basic and applied research results [16], which were generally made available in the public domain, where industry and other public sector researchers could use them. These activities were central to the rise of American technological success broadly and to the growth of knowledge-based industries, such as biotechnology and information technology, in particular.

Public sector research institutions also relied on generous public funding for academic research—from a highly diverse group of federal funding agencies—which grew dramatically after the Second World War, and on the availability of venture capital to foster the development of early-stage ideas [6]. These and other unique features of the US research and development system explain much more about innovation in the US after BD [Bayh-Dole] than the rules about patenting that BD addressed.

In the pre-BD era, discoveries emanating from public research were often commercialized without patents, although academic institutions occasionally patented and licensed some of their publicly funded inventions well before BD, and these practices became increasingly common in the 1970s [17]. Since the passage of the Act in 1980, US academic patenting, licensing, and associated revenues have steadily increased. BD accelerated this growth by clarifying ownership rules, by making these activities bureaucratically easier to administer, and by changing norms toward patenting and licensing at universities [6]. As a result, researchers vested with key patents sometimes took advantage of exclusive licenses to start spin-off biotechnology companies. These trends, together with anecdotal accounts of “successful” commercialization, constitute the primary evidence used to support emulating BD in other countries. However, it is a mistake to interpret evidence that patents and licenses have increased as evidence that technology transfer or commercialization of university technology has increased because of BD.

Although universities can and do patent much more in the post-BD era than they did previously, neither overall trends in post-BD patenting and licensing nor individual case studies of commercialized technologies show that BD facilitated technology transfer and commercialization. Empirical research suggests that among the few academic patents and licenses that resulted in commercial products, a significant share (including some of the most prominent revenue generators) could have been effectively transferred by being placed in the public domain or licensed nonexclusively [6,18].

Another motivation for BD-type legislation is to generate licensing revenues for public sector research institutions. In the US, patents are indeed a source of revenues for some universities, but aggregate revenues are small. In 2006, US universities, hospitals, and research institutions derived US$1.85 billion from technology licensing compared to US$43.58 billion from federal, state, and industry funders that same year [19], which accounts for less than 5% of total academic research dollars. Moreover, revenues were highly concentrated at a few successful universities that patented “blockbuster” inventions [20]. [emphasis added by LawPundit]

A recent econometric analysis using data on academic licensing revenues from 1998 to 2002 suggests that, after subtracting the costs of patent management, net revenues earned by US universities from patent licensing were “on average, quite modest” nearly three decades after BD took effect. This study concludes that “universities should form a more realistic perspective of the possible economic returns from patenting and licensing activities” [21]. Similarly, the head of the technology licensing office at MIT (and former President of the Association of University Technology Managers) notes that “the direct economic impact of technology licensing on the universities themselves has been relatively small (a surprise to many who believed that royalties could compensate for declining federal support of research)… [M]ost university licensing offices barely break even” [22].

It is thus misleading to use data about the growth of academic patents, licenses, and licensing revenues as evidence that BD facilitated commercialization in the US. And it is little more than a leap of faith to conclude that similar legislation would automatically promote commercialization and technology transfer in other, very different, socioeconomic contexts.
...

[T]he present impetus for BD-type legislation in developing countries is fueled by overstated and misleading claims about the economic impact of the Act in the US, which may lead developing countries to expect far more than they are likely to receive. Moreover, political capital expended on rules of patent ownership may detract from more important policies to support science and technology, especially the need for public funding of research. Given the low level of public funding for research in many developing countries, for example, the focus on royalty returns at the expense of public goods may be misplaced [61]. "

Today, we are faced with a federal government in the United States that is essentially bankrupt because of the inequality of income and because of reduced taxation for the increasingly smaller percentage of the population who increasingly have more of that income and who increasingly are hoarding more of the nation's wealth, while paying fewer and fewer taxes.

Those same people in America who have the wealth are unwilling to pay the taxes to keep the country afloat.

When we add to that development the fact of legislation such as Bayh-Dole which has been giving away the company store to private persons who now are milking the public for every penny they have through the ill-conceived patent system of the USA, then it is small wonder that the federal government has no money.

You can not give away the "company" assets and hope to survive.

Worse, Bayh-Dole has corrupted universities and unimpeded inquiry by turning them into avenues for private commercialization of taxpayer-funded research directed at private profit objectives. Janet Rae-Dupree at the New York Times in When Academia Puts Profit Ahead of Wonder writes:

"In trying to power the innovation economy, we have turned America’s universities into cutthroat business competitors, zealously guarding the very innovations we so desperately want behind a hopelessly tangled web of patents and royalty licenses."

Crossposted from LawPundit.

Poverty and Income: What is the "Real" Poverty Rate? via Paul Mattessich at Wilder Moments

Paul Mattessich at Wilder Moments
via the Minnesota Twin Cities Daily Planet
discusses What is the "real" poverty rate?,
an important parameter that reflects employment, income, benefits and ownership in America.

Social Capitalism May Just Be the Doctrine of Tomorrow: Navigating the Socio-Economic Future with the Right Navigator

Is "social capitalism" or "sociocapitalism" the new doctrine of the future?

To understand the world, we have to know where we were, where we are, and where we are going.

Many people do not care for history, so they do not know where we were.

Many people are not happy with where we are, and are concerned more with where we should be.

Many people try not to figure out where we are going, because like travelers dependent on GPS, who needs a map when you have a navigator?

For many people, that navigator in their world is their own political, economic and religious belief system, which tells them what to do and where to go.

But what if their navigator is out of date?
What if they have not "downloaded" the most recent update?
What then?

Such in fact may be the case for many people following what are arguably outdated non-updated doctrines in the political, economic and religious sphere.

The modern world has changed and is continuing to change, and the doctrines -- or navigators -- that people follow, surely should be "updated" to match the times, so that people get to where they think they are going and want to be.

A good argument can be made that something called "social capitalism" or "sociocapitalism" is emerging as THE NEW DOCTRINE.

R. Jagannathan in Socio-capitalism set to become the new economic doctrine? writes as follows:

"Socio-capitalism is an idea whose time has come. It may not be easy to define what it embraces, but what it abandons is clear: market and ideological fundamentalism."

If that actually turns out to be true, and there is much evidence that it IS or WILL BE true, then the adherents of fundamentalism in political, economic and religious spheres are following doctrines that are on the wane.

Something else is actually coming, now and in the future.

Today's Young Generation: The Really Hip Socially Responsible Hipster Entrepreneurial Generation: "Generation Sell" and Small Business Enterprise as the Ideal Social Form

Back to the basics?

What is the "really hip" Entrepreneurial Generation?

William Deresiewicz at the New York Times Sunday Review
has a sparkling analysis at Generation Sell

in which he discusses today's young generation and its character
as being marked by "social entrepreneurship"
-- the preferred way to make money responsibly via small businesses.

update:

Capitalism and social conscience combined?
Social capitalism?
Sociocapitalism?

Mortgage Rates Lowest Ever

Diane Tuman at Zillow Blog on History of Mortgage Rates writes:

"We keep hearing that mortgage rates are the lowest in recorded history and it is true. Presently, the 30-year fixed rate on Zillow Mortgage Marketplace is 3.88 percent, the 15-year fixed is 3.35 percent and the 5/1 ARM is 2.81 percent."

Intellectual Property and Freedom of Expression at the Cynical Musician writing on "Jefferson, Copyright and Natural Law"

See an interesting analysis of intellectual property and freedom of expression at Jefferson, Copyright and Natural Law.

I will have to re-read this to see if there is anything that I disagree with, but based on my first reading, it makes a lot of sense.

Wealth Redistribution and the Creation of Income and Wealth Inequalities: The Example of American College Football BCS Commissioners and Large Research University Presidents

How is wealth "redistributed" and how do inequalities in income and wealth arise?

The inexcusable inequality of income and wealth in the United States is exemplified by the situation in American college athletics, where hundreds of thousands of young people as athletes compete for no direct compensation (many of course get scholarships), while a handful of ruling university and related elites pocket big money at the expense of these virtually uncompensated student-athletes.

That is the state of the economy in general. Many work for low wages or none at all while a few of the clever ones profit exorbitantly. It is a situation that must change if America is to achieve badly needed reconstruction and renewal, including a narrowing of the gigantic gap between rich and poor.

In last night's college football game between Rutgers and Louisville, the Cardinals' senior cornerback Anthony Conner unluckily broke his neck when he banged his head on an opponent's knee, but as written by Teresa M. Walker, AP Sports Writer at Yahoo! Rivals.com: "the senior is not paralyzed despite the severity of the injury". It is a freak injury to be sure, but it is the bodies of the young people that are on the line in college athletics - just for fun, mind you. (Joe Pa is an exception)

This is a good time to compare the status of college football players in an allegedly "amateur" sport with that of the salaries of BCS college football conference commissioners in that same "amateur" sport.

For some people, the alleged "amateur" sport of college football is really a very good business to say the least, and that applies particularly to BCS football conference commissioners.

Based on 2009 IRS returns, as written by the Associated Press (AP) at ESPN College Sports in Four BCS commissioners made $1M:

"Four of college football's six powerhouse conferences paid their top executives $1 million or more, an Associated Press analysis of tax records shows, far eclipsing the compensation of most university presidents."

In fact, of the 6 BCS conferences, only one conference commissioner made less than the average salary of the median compensation of university presidents at large research universities, a median compensation of ca. $760,000 in 2008. So dear parents of students and student-athletes, you know where some of those outlandishly high tuition payments are going -- straight into the pockets of the ruling elites.

In our view, no conference commissioner should be paid more than 10 times the annual salary of the lowest paid commission employee, earning a minimum wage. That would put a stop to exploitation by compensation quickly. The world is full of competent people who could be conference commissioners at much lower salaries than currently paid. EVERYONE can be replaced -- easily, and at much lower salaries.

Similarly, no university president should be paid more than 10 times the annual salary of a 40-hour a week janitor at that same institution, where a good argument can be made that the latter is equally important as the former. If lawyers went on strike in New York City it would take quite a long time for that to be felt anywhere. When I was in New York City in the 1970's, however, there was a garbage strike, and the impact was immediate, as the stench made the city unlivable in a short period of time. EVERYONE is important, and sometimes, those less-paid are more important than those who are paid more. It all depends on how WE organize societal rules.

I know of no university where the present president could not be removed and replaced immediately with someone equally or potentially equally competent earning 1/20th less than the salary currently paid. Just hire younger people.

Should you doubt that statement - name ONE university president who is irreplaceable. Indeed, name ONE university president who has done something other than fit himself or herself into an already previously existing university culture and its attendant compensation scheme. That takes talent?

In fact, name ONE university president other than the one at your alma mater. Difficult. It is difficult because these people can be replaced, and indeed, ultimately, ARE replaced. ALL of them. But we have nothing against university execs. WE ALL are fungible. That is the way of the world. Hence, there is no excuse to pay exorbitant salaries that are exploitative of institutions and deplete their resources unjustifiably.

Here is an ad one could place for a university president's position at a much lower salary than currently paid, indeed, at 1/10th the current average:

Job Opening: University President at $76,000 per year. We are looking for a well-educated, bottom-line-focused individual with good references to head our institution and move it dynamically forward. You will represent our interests to the outside world. Social skills are a necessity. Future compensation will be based on individual performance and upon achievement of comparable increases for our entire university staff. Fundraising skills and experience are an asset. Only serious applicants willing to work around the clock for the good of our institution need apply.

Would you get any applicants?
Would you get any competent applicants?

Is the mailbox big enough?

The problem is that people are not paid in these elite positions for their actual personal VALUE to the welfare of any given institution-- they are paid whatever "the position pays" to whomever gets the job. Those are two different things. Salaries by "position" rather than by individual "value" are by nature exploitative of the finances of the institution to the benefit of the recipient, in part because it is not the money of the people who select applicants and make the final contracts. It is not "their'" money, it is "only" university money.

The same holds true for the U.S. economy. Once a certain kind of exploitative compensation scheme becomes the status quo in commercial companies and firms, it tends to continue on in existence, and get even more exploitative as it progresses, whether it is needed or not, and whether it is sensible or not. The result is the inequality of income and wealth we see in the United States today. Again, college sports and especially college football are a prime example of this phenomenon.