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

The Death of Copyright: Digital Technology, Private Copying, and the Digital Millennium Copyright Act

The advent of digital technology has increasingly stressed copyright\u27s ability to protect adequately creative works. By widely dispersing the ability to make near-perfect copies, digital technology renders copyright\u27s traditional approach of controlling unauthorized copying by direct legal action against the individual copier increasingly anachronistic. Fearing copyright\u27s inability to cope with the resulting risk of widespread private copying, copyright producers requested and Congress enacted the Digital Millennium Copyright Act ( DMCA ). The DMCA prohibits almost entirely the use and distribution of decryption technology that would defeat encryption-based controls placed on digital works, and thereby enables copyright producers to rely on encryption to protect their digital works. In doing so, Congress has re-created a protection scheme nearly identical to the one that the Stationers\u27 Company of London used to maintain its printing monopoly in England more than three hundred years ago. Both protection schemes rely on legal prohibitions that limit access to the technology necessary to reproduce protected works. Yet, given the threat digital technology poses, Congress may have had no choice. With anything less than almost complete prohibition, decryption technology would have inevitably slipped into the marketplace more generally and restored the potential for widespread private copying. Nevertheless, this article identifies two considerations that suggest that Congress has gone too far in enacting the DMCA. First, private copying is unlikely to reduce the revenue and incentives for creative works at the margins and is therefore not a threat to the progress of Science Congress is constitutionally constrained to serve. Second, private copying represents a critical form of democratic self-governance--civil disobedience--that allows consumers to determine the proper level of protection directly and thereby avoids the agency-cost flaws of determining copyright\u27s proper scope through our elected representatives. Given these two considerations, the DMCA\u27s prohibitions on the use and distribution of decryption technology may prove not merely unwise, but constitutionally infirm

Copyright, Private Copying, and Discrete Public Goods

Understanding if, and when, copyright should attempt to proscribe private copying deserves far more than the simplistic treatment it has so far received from a handful of courts. This Essay aims to begin that conversation. Part I begins by introducing simple models that compare the market and socially optimal production of continuous and discrete public goods models and discussing their implications for copyright. Part II will then focus on the limits of the market\u27s ability to produce efficiently discrete public goods in the absence of government intervention. Part III will then consider the implications of the discrete public goods model for copyright. Finally, in Part IV, I offer some concluding thoughts