Intellectual Property Overlaps

Theory, Strategies, and Solutions

Robert Tomkowicz

• Publisher: Routledge
• Year: 2013
• ISBN:
  9781136637865
• Edition: 1
• Topic: Business
• Subtopic: Entrepreneurship
• Index: Business

Intellectual property rights and their overlaps are considered in light of rights purposes, relying on the concept of a balance of rights as the measuring rod for assessment of the consequences resulting from the exercise of overlapping rights. Identifying the complex interface between different types of intellectual property rights, this book discusses the use of these rights and their effect on a diverse group of stakeholders, from individual users of e-books to large corporations operating search engines on the internet.The book suggests solutions to potentially objectionable uses of overlapping rights in an attempt to provide judiciary and law practitioners with an analytical framework for resolving disputes of overlaps in the intellectual property system. In doing so, the author investigates how use of intellectual property rights associated with one segment of the system can affect the carefully crafted balance of rights held by various stakeholders in an overlapping segment. In particular, the book suggests that a properly construed doctrine of misuse of intellectual property rights would provide an adequate response to the challenge posed by improper use of overlapping intellectual property
rights.This book is of particular interest to law practitioners, managers in advanced technology and media industries, academics, and university students who work with or analyze intellectual property and new technologies.

1 Theory of overlaps

We must stop thinking of intellectual property as an absolute and start thinking of it as a function – as a process, which, if it is to be successful, must meet diverse aims: the assurance of a fair reward to creators and inventors and the encouragement of research and creativity, on the one hand: and on the other hand, the widest possible dissemination of the ideas and products of which the world, and all the individuals in it, have such great need.

(Madam Justice B. McLachlin, Supreme Court of Canada¹)

Before complex interfaces in the intellectual property system can be reviewed, the history of intellectual property rights, their development, and theoretical background in which they operate has to be presented. This chapter introduces some basic concepts, such as the intangible nature of the rights, their purposes, philosophical justifications, and balances of competing interests of different stakeholders – an understanding of these concepts is necessary for proper evaluation of intellectual property overlaps.

1.1 Structure of the intellectual property system

Intellectual property is a very broad term that refers to a wide variety of intangible products of human creativity, inventiveness, and entrepreneurship. For years it has been debated whether such intangible creations could be legally construed as a form of property, but today this designation is commonly accepted. While legal similarities and differences between intellectual property and classic, or tangible, property are numerous, one distinguishing characteristic is of particular importance: The existence of intellectual property is conceptually independent from the material form embedding the intangible aspect. Thus, for example, the sale of a book does not entail disposition of copyrights protecting text of the book. Similarly, the sale of a product packaged in a box marked with a protected trademark does not transfer to the purchaser rights in that mark.

Intellectual property can be viewed as a structured system consisting of several segments. International treaties divide these segments into two categories: one category consists of copyrights and industrial designs; the other is comprised of patents, trademarks, trade names, geographical indications, and confidential information.² This dichotomy reflects the historical development of international protection for intellectual property in international treaties and does not accurately reflect the whole picture of intellectual property rights at the national level. Thus, in individual British Commonwealth (Commonwealth) jurisdictions, both statutes and common law provide protection for a variety of lesser known intellectual property rights such as one’s personality, passing off, circuit topography, or plant breed variety.

Not all intellectual property rights are born equal. From an economic perspective, the most important segments of the intellectual property system are patent rights, trademark rights, and copyrights. They are most often the object of intellectual property litigation and attract the most attention of legal thinkers. Other segments, while less prominent, play an important role in complementing the three core sections. They are less litigated and often neglected in legal literature, but are nonetheless necessary elements of the intellectual property landscape. Each segment of the intellectual property system is organized within a separate statutory regime or judicially established tort. Some, like trademark law, may even combine statutory and common law rights, reflecting specific historical developments of this intellectual property segment. Different segments of the system are supposed to create different forms of limited monopolies over certain categories of intellectual creations preventing their unauthorized use or multiplication.

The system was never created as a uniform project. Instead, its segments developed independently at different times to achieve different objectives and perform different functions. For example, the roots of patents can be traced to ancient Greece where the oldest notion of rewarding inventors for the discovery of things useful to the state was described in Politics by Aristotle. In that book, Aristotle noted that such incentives ‘in the … arts and sciences have certainly been beneficial; medicine, for example, and gymnastic, and every other art and craft’.³ But these ideas did not find a fertile ground until 1474 when the Venetian Senate passed a statute establishing the first regulatory scheme for granting patents. It resembled the modern patent regimes by offering patent monopoly for a limited period of time on general rather than individual bases to any inventor of a new and useful invention.⁴ The Act stated:

BE IT ENACTED that, by the authority of this Council, every person who shall build any new and ingenious device in this City, not previously made in our Commonwealth, shall give notice of it to the office of our General Welfare Board when it has been reduced to perfection so that it can be used and operated. It being forbidden to every other person in any of our territories and towns to make any further device conforming with and similar to said one, without the consent and license of the author, for the term of 10 years.⁵

In this short provision, the legislator expressed the fundamental purpose of patent law: promotion of inventiveness leading to development of new and useful devices. The provision also established reward for advancing that purpose: temporary monopoly in the legislator’s jurisdictions. Both elements – the purpose and the reward – implemented in the law of fifteenth-century Venice are present in all modern patent regimes.

In contrast to patent rights’ statutory origins, trademark rights were introduced not by a legislator as a statutory regime, but by the judiciary as the tort of passing off.⁶ In Perry v. Truefitt,⁷ the first modern pronouncement of the tort of passing off, the English Court expressed the essential purpose of trademark rights:

A man is not to sell his own goods under the pretence that they are the goods of another man; he cannot be permitted to practice such a deception, nor to use the means which contribute to that end. He cannot therefore be allowed to use names, marks, letters, or other indicia, by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person.⁸

This pronouncement indicated the duality of purposes behind trademark rights: One is the protection of purchasers from deceptive inducement to enter into a transaction for sale of a product or provision of services, and the other is the protection of manufacturers and service providers, the proprietors of the trademarks, who would be adversely affected by such pretences. Both purposes remain at the center of the modern statutory and common law trademark law and are indicative of its function – ensuring that trademarks accurately indicate source of wares and services available on the market.

The history of copyright law is similar to that of patent law. Both segments of the intellectual property system developed as statutory regimes and both were born at approximately the same time. Although writing was invented thousands of years ago, the idea of proprietary interest in the written word, as opposed to property right in the object containing the writing, emerged in the beginning of the sixteenth century. Indeed, earlier copying of books and other written materials was a booming industry employing thousands of people who copied books by hand without any consideration for the authors’ work.⁹ At that time, the only proprietary right associated with a book was the right in the book itself. The first separation of intangible interest in a book from the classic property rights, marking the birth of copyright as a form of intellectual property, took place in the English Statute of Anne in 1710.¹⁰ The Act stated that:

[F]or the Encouragement of Learned Men to Compose and Write useful Books; May it please Your Majesty, that it may be En-acted, and be it Enacted by the Queens most Excellent Majesty, … that the Author of any Book or Books already Composed and not Printed and Published, or that shall hereafter be Composed, and his Assignee, or Assigns, shall have the sole Liberty of Printing and Reprinting such Book and Books for the Term of fourteen Years, to Commence from the Day of the First Publishing the same, and no longer.

This provision of the statute leaves no doubt as to its purpose: Copyright was to promote writing of new books by granting the authors exclusive rights to print and reprint their works for a limited period of time. Over the centuries, copyright law expanded greatly, bringing many new subject matters under its protective umbrella, but its purpose has not changed.

1.2 Overlaps – birthmark of the intellectual property system

In light of such fragmented development of the intellectual property system, it is not surprising that for many years legal analysis of intellectual property law focused on its separate segments and customarily ignored interplays between different paradigms. But as the scope of each segment expanded, their boundaries began to overlap, which resulted in consequences that had not been anticipated at the time of their inception and the issue of intellectual property rights overlaps surfaced.

The compartmentalization of the intellectual property system inevitably leads to conflicts between its segments. In theory, each category of intellectual creations should belong in only one segment of the system and only to the extent authorized by relevant statutory provisions or judicial doctrines. When the statutory monopoly expires, most intellectual property rights should vest in the general public. In practice, however, due to overlaps of the segments comprising intellectual property system, some of the creations or inventions have qualities that make them capable of being protected under more than one intellectual property monopoly. For example, a machine can be protected under patent law, but drawings of that machine could enjoy copyright protection.¹¹ Consequently, owners of intellectual creations might want to rely on more than one intellectual property segment to protect a single intellectual creation, concurrently or consecutively. In the example of the patented machine, once the patent monopoly expires, the patent holder might try to invoke copyrights to prevent production of the machine by competitors, thus, in effect, extending the duration of the patent monopoly beyond what can be granted under patent law. Or, using both patent rights and copyrights concurrently, a patentee could use his or her copyrights in drawings to prevent a person from constructing patented invention for private non-commercial use, which is legal under patent law.¹²

Overlaps of intellectual property rights have two dimensions. One is the overlap in fact and the other is overlap in law. The overlaps in fact represent natural tensions between classic property and intellectual property resulting from the fact that any commercialization of intellectual property inevitably involves the embedding of intangible components in a tangible object. For example, while copyright law protects a book in its intangible form, this protection is conditioned on the previous fixation of the book in a material form.¹³ Also, to be commercialized, the book needs to be fixed in a form that is accessible to readers. This is true even if the book is distributed digitally as its content can be accessed by readers only through a tangible medium. The bond between tangible and intangible property is equally strong in trademark law and patent law domains. Trademark rights depend on use of a mark in association with wares or services.¹⁴ Consequently, the mark is protected only when it is affixed to a tangible package or a display, or represented visually in some form.¹⁵ Similarly, patent law protects ideas of inventions only if they provide practical utility,¹⁶ which requires tangible form. It is common, and indeed inevitable, that on many occasions one tangible medium will embody several intangible creations protected by different intellectual property rights.

The overlaps in fact are less difficult to deal with and often, but not always, their adverse effects can be resolved easily. While many intellectual creations can materialize in one tangible object, they can be separated notionally and often physically, as each creation can perform its functions independently from the others, reflecting different aspects of the tangible object. For example, the iconic canned tomato soup epitomized in Andy Warhol’s paintings is not only a popular food, but also a knot of intellectual property rights. Its package may be a patented invention. Its name prominently displayed on the package is a trademark. A sample dinner recipe printed on the can’s wrapper is a copyrighted work. And the soup’s actual recipe can be protected by trade secrets. These intellectual creations are subject to intellectual property rights, but it is no...

Table of contents

• Cover
• Title
• Copyright
• Contents
• Table of cases
• Preface
• 1. Theory of overlaps
• 2. Patent law
• 3. Trademark law
• 4. Copyright law
• 5. Solutions
• Bibliography
• Index