Abstract

http://ssrn.com/abstract=2398051
 


 



Overlapping Intellectual Property Doctrines: Election of Rights versus Selection of Remedies


Laura A. Heymann


College of William & Mary - Marshall-Wythe School of Law

2013

Stanford Technology Law Review, Vol. 17, 2013
William & Mary Law School Research Paper No. 09-270

Abstract:     
Overlaps exist across various doctrines in federal intellectual property law. Software can be protected under both copyright law and patent law; logos can be protected under both copyright law and trademark law. Design patents provide a particular opportunity to consider the issue of overlap, as an industrial design that qualifies for design patent protection might also, in particular circumstances, qualify for copyright protection as well as function as protectable trade dress.

When an overlap issue arises — that is, when an intellectual property rights holder asserts rights under more than one doctrine — the question then becomes how courts should respond. One response, of course, is that courts should do nothing, on the theory that the doctrines developed in a way that permit such overlapping rights, and so the courts should continue to enforce them. The opposing response is to argue that overlapping rights make it difficult for intellectual property users to determine the scope of another’s rights, particularly when those rights have different terms or limitations, and so the courts should require intellectual property owners to choose the right they want enforced at the outset.

Neither response is entirely satisfying. Without some signal from Congress that it intended to limit the scope of intellectual property rights when overlaps occur, the imposition of restrictions by the courts simply to achieve predictability for users seems problematic. At the same time, courts should not be blind to the difficulties that doctrinal overlap pose for potential defendants and the temptation it presents to intellectual property owners to push for even stronger protection.

This Article therefore proposes something of a middle ground. Courts should not require intellectual property owners to elect one form of protection at the outset. But they should be attentive to whether the right asserted in any litigation proceeding aligns with the harm claimed by the plaintiff and, relatedly, should try to devise remedies that address only those harms.

Number of Pages in PDF File: 38

Keywords: Copyright, Trademark, Intellectual Property, Overlap, Misuse, Omega, Dastar, Kellogg, Falwell

working papers series





Download This Paper

Date posted: February 19, 2014  

Suggested Citation

Heymann, Laura A., Overlapping Intellectual Property Doctrines: Election of Rights versus Selection of Remedies (2013). Stanford Technology Law Review, Vol. 17, 2013; William & Mary Law School Research Paper No. 09-270. Available at SSRN: http://ssrn.com/abstract=2398051 or http://dx.doi.org/10.2139/ssrn.2398051

Contact Information

Laura A. Heymann (Contact Author)
College of William & Mary - Marshall-Wythe School of Law ( email )
613 South Henry Street
P.O. Box 8795
Williamsburg, VA 23187-8795
United States
Feedback to SSRN


Paper statistics
Abstract Views: 393
Downloads: 80
Download Rank: 184,829
People who downloaded this paper also downloaded:
1. Intellectual Property Experimentalism by Way of Competition Law
By Tim Wu

Paper comments
No comments have been made on this paper

© 2014 Social Science Electronic Publishing, Inc. All Rights Reserved.  FAQ   Terms of Use   Privacy Policy   Copyright   Contact Us
This page was processed by apollo8 in 0.266 seconds