Patent Law, the Federal Circuit, and the Supreme Court, A Quiet Revolution

Over the last twenty years, a quiet revolution has taken place in patent law. Traditionally, patents were rarely valid, but if valid, broadly enforced. Since Congress created the Federal Circuit in 1982 and vested it with exclusive intermediate appellate jurisdiction over patent appeals, patents have become routinely valid, but narrowly enforced. This article evaluates the economic consequences of this revolution. Focusing on the reasons for, and the costs of, uniformity in patent protection, this article shows that the revolution will tend to limit the patent system\u27s ability to ensure the expected profitability, and hence the existence, of desirable, but high cost innovation

The Trade Dress Emperor\u27s New Clothes: Why Trade Dress Does Not Belong on the Principal Register

We take it largely for granted today that the Trademark Act of 1946 permits the registration of trade dress on the principal register, but it has not always been the rule. Until 1958, the Patent and Trademark Office, following Congress\u27s intent expressed in the Act\u27s plain language and legislative history, excluded trade dress from the principal register as a matter of law. In 1958, Assistant Commissioner Daphne Robert Leeds changed the rule and allowed the registration of a product package as a trademark on the principal register. Unable to find any legitimate basis for reading the Trademark Act to permit trade dress on the principal register, Leeds simply asserted her desired result as conclusion, willfully replacing Congress\u27s decision on the issue with her own. In this Article, Professor Lunney argues that time has largely erased our memories of trade dress\u27s dubious claim to the principal register. And courts, over the last twenty years, have crafted an extensive regime of federal trade dress protection out of Leeds\u27s erroneous interpretation. Yet, even today, a fair-minded review of the Trademark Act of 1946 and its legislative history reveals that there is no lawful basis for allowing trade dress on the principal register. As with the Emperor and his new clothes, the only real question is whether, following its revelation, courts and the Patent and Trademark Office are willing to recognize this naked truth

Patent Law, the Federal Circuit, and the Supreme Court, A Quiet Revolution

Over the last twenty years, a quiet revolution has taken place in patent law. Traditionally, patents were rarely valid, but if valid, broadly enforced. Since Congress created the Federal Circuit in 1982 and vested it with exclusive intermediate appellate jurisdiction over patent appeals, patents have become routinely valid, but narrowly enforced. This article evaluates the economic consequences of this revolution. Focusing on the reasons for, and the costs of, uniformity in patent protection, this article shows that the revolution will tend to limit the patent system\u27s ability to ensure the expected profitability, and hence the existence, of desirable, but high cost innovation

Trademark Monopolies

Since 1742, when Lord Hardwicke seemingly equated trademark protection with monopoly in one of the first trademark cases, until the mid-1950s, concerns that trademarks represented a form of illegitimate monopoly effectively constrained the growth of trademark protection. In the twentieth century, Edward Chamberlin became the leading proponent of the trademark as monopoly view with the publication of his work, The Theory of Monopolistic Competition, in 1933. In his work, Chamberlin argued that a trademark enabled its owner to differentiate her products and then to exclude others from using the differentiating feature. By doing so, trademark protection can effectively cede control over distinct product markets to individual producers and thereby generate for trademark owners the downward sloping demand curve of a monopolist, with its associated monopoly rents and deadweight losses. Although Chamberlin himself recognized the need for product differentiation and rejected the supposed ideal of the perfect competition model, his work became a common rallying point for the trademark as monopoly argument. During the legislative debates leading to the Trademark Act of 1946, his work served as a basis for the Justice Department\u27s opposition to broad trademark protection

A Tale of Two Copyrights

This essay explores two possible copyright regimes. The first uses costless and perfect price discrimination to enable copyright owners to capture the full market or exchange value of their work. The second also uses costless and perfect price discrimination, but allows copyright owners to capture only the persuasion cost for authoring and distributing a work. We can call the first regime, costless copyright maximalism, and the second, costless copyright minimalism. The choice between these two regimes is primarily distributional: Should we design copyright to allocate the surplus associated with copyrighted works to copyright owners or to copyright consumers? This essay explores why this distributional choice matters and explains why copyright minimalism is the choice we should make

Copyright Protection for ASIC Gate Configurations: PLDs, Custom and Semicustom Chips

Conventional wisdom holds that computer software and computer hardware require two different species of intellectual property protection. Software is thought best protected by copyright law, while hardware is thought best protected by patent law, trade secret law or the Semiconductor Chip Protection Act of 1984. Recent technological and legal developments blur software-hardware distinctions, as courts have extended copyright protection to object code, firmware and microcode, and patent protection to software. This note argues that the standard industry conceptions of hardware and software are inadequate to answer the legal question of what is copyrightable as a computer program. Furthermore, it considers whether application specific integrated circuits (ASICs), which are, typically, semi-custom hardware solutions to engineering design problems traditionally solved in software, should qualify as computer programs for purposes of copyright protection

Aereo and Copyright\u27s Private-Public Performance Line

On January 10, 2014, the Supreme Court granted certiorari in American Broadcasting Cos. v. Aereo, Inc. By doing so, the Court has seized an opportunity to bring some rationality to copyright\u27s line between public and private performances. In this pending case, the respondent, Aereo, uses thousands of tiny antennae to capture television broadcast signals, which then transmit the signals to its subscribers over the Internet. The question presented is whether Aereo publicly performs the copyrighted works carried in the television broadcast signals that are captured and retransmitted

A Critical Reexamination of the Takings Jurisprudence

The U.S. Constitution forbids both the federal and state governments from taking private property for public use in the absence of just compensation. In determining whether particular government actions require compensation, the members of the U.S. Supreme Court have agreed that the purpose of the constitutional compensation requirement is to bar Government from forcing some people alone to bear public burdens which, in all fairness and justice, should be borne by the public as a whole. The members of the Court have also agreed that whether justice and fairness require compensation will turn upon a two-step inquiry. First, government action that involves either a permanent physical occupation or a denial of all economically viable use establishes a per se taking and will always require compensation. Second, for government action that does not involve a per se taking, the Court will resolve the compensation issue by an ad hoc balancing of five or six specific factors. Despite agreement as to both the purpose of the compensation requirement and the correct approach to resolving the issue, the Court has had considerable trouble resolving the specific cases before it. To provide some insight into the nature of these disagreements, and to suggest a possible solution to the compensation issue, this article undertakes a critical reexamination of the takings jurisprudence. It focuses on the two bases which the modem Court has articulated as support for its resolution of the compensation issue: (1) the articulated purpose of using the just compensation requirement to bar Government from forcing some people alone to bear public burdens ; and (2) the early case law. Beginning with the Court\u27s first struggles with the compensation issue in the late nineteenth and early twentieth century, this article traces the historical path of the takings jurisprudence, reexamining the early cases and the policy reasons behind a constitutional requirement of compensation. This journey suggests that neither the early case law nor the articulated purpose of the Takings Clause will support the modern Court\u27s resolution of the compensation issue. First, a critical reexamination of the early case law reveals that the modem Court has not been faithful to the early Court\u27s approach to the compensation issue but has instead rewritten that early history. Second, a critical reexamination of the modem Court\u27s resolution of the compensation issue reveals that the Court has not interpreted the compensation requirement in a way that effectively bar[s] Government from forcing some people alone to bear public burdens

Compensation for Takings: How Much Is Just

Once a court has determined that the government has go[ne] too far in changing or restricting existing property rights, and that a taking has, therefore, occurred, the Fifth Amendment requires that the government provide just compensation to the individual whose property it has taken. In defining the measure of compensation mandated by the Constitution, the Supreme Court has consistently explained that an individual is entitled to a full and exact equivalent for the taken property, and to be put in as good [a] position pecuniarily as he would have been if his property had not been taken. Yet, behind the facade of these seemingly clear legal standards lurks an underlying division between those who would require the government to provide a more generous measure of compensation and those who would require the government to provide less.5 As has been the case with respect to the issue of whether a taking has occurred, the Court has tried to pretend that its decisions regarding the proper measure of compensation are consistent with one another--a suggestion that, despite the frequency with which it is made, is no more plausible here than it is when made with respect to the Court\u27s rulings on whether a taking has occurred. This continuing uncertainty on whether compensation should be required, and if so, how much compensation is due, can be traced to a continuing tension between two competing views of the constitutional compensation requirement. The first view sees the compensation requirement as a necessary and desirable check on the potential misuse by the legislature of its authority over property rights. Proponents of this view generally argue for a broader interpretation of whether a taking has occurred, and a more generous measure of compensation that seeks to ensure equitable treatment for the individual whose property the government has taken. The second view sees the compensation requirement as an unnecessary obstacle that, if enforced too often, would act to block or overturn desirable government action. Proponents of this view generally argue for a narrower interpretation of whether a taking has occurred, and a less generous measure of compensation that balances the individual\u27s constitutional compensation right against society\u27s desire to pay as little as possible to achieve its goals. Because these competing views of the compensation requirement suggest different answers to the questions of when compensation should be required, and if so, how much should be provided, courts have had trouble providing a consistent answer to either question. This Article focuses on how courts have and should answer the second question: if compensation is required, how much is just? Section I will begin the discussion by setting out the basic rules the Supreme Court has established for determining the appropriate amount of compensation. While the basic rules will appear relatively straight-forward, this appearance is deceptive, as some aspects of the issue have proven difficult for courts to resolve consistently. Section II will introduce and discuss two aspects of the calculation of compensation that have proven particularly troublesome: (1) how the interaction of government authority, property rights and value should affect the determination of just compensation; and (2) whether a property owner\u27s reasonable expectations, even if not recognized as formal property rights, should be considered in measuring compensation. On each of these issues, courts have reached somewhat inconsistent conclusions. These inconsistencies are not, however, simply the result of careless reasoning or inadequate advocacy. Instead, they reflect a fundamental dispute over the proper role for, and the true purpose behind, the constitutional compensation requirement. Identifying the appropriate answer in each case requires, therefore, a more thorough understanding of the purpose that is served by the compensation requirement-an examination undertaken in Section III. In view of the purpose behind the compensation requirement, Section IV identifies the appropriate standards by which just compensation should be measured and applies those standards to suggest the proper resolution of the two gray areas discussed in Section II