Introduction to Intellectual Property Class of November 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)

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 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.National Association of REALTORS

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/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, , MODEM