As a law professor, engineer, and patent attorney, I am an advocate of strong intellectual property rights (IPR). However, the extent of what is currently protectable under U.S. IP law has become too expansive. Design patent law, copyright law, and trademark law have grown significantly over the past few decades. Design patent law was first enacted in the 1800s to cover the ornamental appearance of commercial products. This is often referred to as industrial design protection. According to legislative history it was needed to fill a gap in the existing law because neither utility patent law nor copyright law provided protection for such industrial design even though protection had long been available in Europe. Copyright law originally covered only the form of expression embodied in maps, charts, and books. Trademark law – a species of unfair competition law – protected the mental association between symbols, words and short phrases that identified products or services against third party commercial uses that would create consumer confusion.
Today, copyright law covers many things including software, building designs, three dimensional commercial products such as jewelry or a lamp, directories, compilations of facts, financial reports, music, movies, pantomimes, choreography, photographs, sound recordings, and the bar examination. Almost anything, including a specific characteristic of a product, can potentially be a trademark today if it signals to consumers that the product comes from a specific producer or seller. This has enabled trademark protection to be obtained for colors, sounds, shapes, smells, feel, music, trade dress, and even putting goats on the grass roof of a restaurant to attract customers (U.S. Service Mark Reg. No. 2,007,624). Likewise, design patent protection is no longer limited to the ornamental exterior appearance of an industrial or consumer product. It is routinely granted for graphical displays such as computer icons that appear on a computer monitor or functional products such as clothing or headgear.
It has long been permissible to protect different aspects of a product under different bodies of IP law. However, the modern expansion of what is covered via patent law, copyright law, and trademark law has inadvertently resulted in overlapping IPR. This is problematic because each body of IP law has a different term of protection. And, these terms are based on a balance of competing interests. Namely, providing adequate property protection to incentivize investment in innovation and creativity while not preventing such innovation and creativity from both benefitting the public and being freely available.
Obtaining simultaneous protection under multiple bodies of IP law can interfere with this balance. Under both design patent law and copyright law the property rights end when the term of protection runs out. At the end of the 14 year design patent term the subject matter should enter the public domain. However, copyright protection typically lasts for the author’s life plus 70 years so copyright protection would interfere with the subject matter entering the public domain because copyright rights will continue to exist for many decades after expiration of a design patent. Likewise, trademark rights could interfere with subject matter protected by patent law and by copyright law because trademark rights, which can potentially last forever, can continue to exist despite expiration of any patent or copyright rights.
Examples of Overlapping IPR
Google obtained U.S. Design Patent D599,372 for the following computer interface. It also claims copyright protection for this interface.
The following graphical work in the form of a computer icon is protected via U.S. Design Patent D295,764.
The following graphical work in the form of a computer icon is protected by registered U.S. Copyright Office Registration no. VA0001638936.
Product containers such as the well-know Coke bottle, shown below, have been protected by U.S. Design Patent D63,657 and have subsequently been registered as a trademark (U.S. Trademark Reg. No. 1,057,884).
Apple Computer has obtained trademark protection for both the two dimensional shape of its iPod (U.S. Trademark Reg. No. 3,341,214) and the three dimensional shape of its iPod (U.S. Trademark Reg. No. 3,365,816) as shown below. A trademark registration is pending for the two dimensional shape of its iPad (U.S. Trademark Reg. Serial No. 85,025,647 (filed April 28, 2010)) as shown below.
Music has long been primarily protected via copyright law. However, the song Sweet Georgia Brown has been registered as a trademark for the Harlem Globetrotters basketball team. (U.S. Trademark Reg. No. 1,700,895). Additionally, the Loonie Toons theme song has been registered as a trademark by Time Warner Inc. (U.S. Trademark Reg. No. 2,469,365).
Intellectual property law is premised on incentivizing innovative and creative activities by providing limited property rights for the fruits of such activities in order to increase the storehouse of creative and innovative knowledge for the betterment of society. Excessive overlapping protection undermines the careful balance individually developed under each body of intellectual property law. Expansion of the subject matter protected under either patent, copyright, or trademark law should only occur if it does not undermine the careful balances struck under each of the other bodies of intellectual property law. Being mindful of the balance between protection and public interest can prevent unintended over-protection of intellectual property that would work to skew the balance in favor of rights to creators and innovators at the expense of the public.
For an in depth examination of this topic see The Problem with Intellectual Property Rights: Subject Matter Expansion, 13 Yale Journal of Law & Technology 35 (2010).