Law Commons^™

The Trade Dress Emperor's New Clothes: Why Trade Dress Does Not Belong On The Principal Register, Glynn S. Lunney Jr

Glynn Lunney

We take it largely for granted today that the Trademark Act of 1946 permits the registration of trade dress on the principal register, but that has not always been the rule. Until 1958, the Patent and Trademark Office, following Congress's intent expressed in the Act's 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 …

A Critical Reexamination Of The Takings Jurisprudence, Glynn S. Lunney Jr

Glynn Lunney

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 …

Copyright's Price Discrimination Panacea, Glynn S. Lunney Jr

Glynn Lunney

According to the conventional wisdom, price discrimination offers two advantages compared to uniform or linear pricing in the production of copyrighted works. First, it can reduce the deadweight losses otherwise associated with the higher prices that copyright makes possible. Second, it can increase the producer surplus or rents associated with the production of any given copyrighted work and thus ensure the expected profitability of a wider range of works. This increase in profitability should, in turn, lead to the production of more copyrighted works. If the conventional wisdom is right, then the proper response would be not merely to tolerate, …

Aereo And Copyright's Private-Public Performance Line, Glynn S. Lunney Jr

Glynn Lunney

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's 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.

Protecting Digital Works: Copyright Or Contract, Glynn Lunney

Glynn Lunney

Since at least 1586, proponents of copyright have pointed to the tremendous ease with which competitors can copy works of authorship as the central justification for copyright protection. Because such works can be easily copied, a competitor could, in the absence of copyright, copy a work, and thereby avoid a large part of the original author's expense. This copying would allow competitors to undercut the original author's price for the work, and would deprive the original author of a fair wage for the labor and creativity she invested in the work. Faced with the threat of such competition, many would-be …

Not So Obvious After All: Patent Law's Nonobviousness Requirement, Ksr, And The Fear Of Hindsight Bias, Glynn S. Lunney Jr, Christian T. Johnson

Glynn Lunney

Before the creation of the Federal Circuit in 1982, nonobviousness served as the primary gatekeeper for patents. When patent holders sued for infringement and lost, more than sixty percent of the time, they lost on the grounds that their patent was obvious. With the advent of the Federal Circuit, nonobviousness became a much less difficult hurdle to surmount. From 1982 until 2005, when patent holders sued for infringement and lost, obviousness was the reason in less than fifteen percent of the cases. While obviousness remained formally a requirement of patent protection, there can be little doubt that the Federal Circuit …

Responsibility, Causation, And The Harm-Benefit Line In Takings Jurisprudence, Glynn S. Lunney Jr

Glynn Lunney

As one of the guarantees provided in the Bill of Rights, the Fifth Amendment's Compensation Clause restricts government's otherwise largely plenary power over privately-held property rights. While the Compensation Clause does not directly limit government's ability to change, modify, or even eliminate existing privately-held property rights, in certain instances it circumscribes government's ability to force individual property owners to bear the cost of such government-imposed changes. Specifically, for those government-imposed property redistributions found to be "takings" within the meaning of the Compensation Clause, the Fifth Amendment requires federal and state governments to compensate the property holder for the taking, and …

Compensation For Takings: How Much Is Just, Glynn S. Lunney Jr

Glynn Lunney

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 …

Copyright, Private Copying, And Discrete Public Goods, Glynn S. Lunney Jr

Glynn Lunney

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's 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 …

Patents And Growth: Empirical Evidence From The States, Glynn S. Lunney Jr

Glynn Lunney

In the Uruguay Round, negotiators for the United States persuaded its trading partners to incorporate uniform minimum standards for the protection of intellectual property rights ("IPRs") directly into the General Agreement on Tariffs and Trade. Although individual countries may adopt higher standards for protection, the agreement on Trade Related Aspects of Intellectual Property Rights ("TRIPs") imposed on all countries the fairly high standards of protection then existing in only a relative handful of countries. Proponents of TRIPs argue that the agreement is trade-related and will prove to mutually enhance the welfare of countries that are net exporters of IPR goods, …

Takings, Efficiency, And Distributive Justice: A Response To Professor Dagan, Glynn S. Lunney Jr

Glynn Lunney

In a recent article, Professor Hanoch Dagan argues that courts should incorporate the principle of distributive justice into their decisions as to whether a particular property owner should receive compensation in response to a government-imposed redistribution of property. To that end, he proposes a concept called "progressive" compensation that he believes will better serve distributive justice than present doctrine while at the same time improving the efficiency of governmental decision-making. This Essay questions key aspects of Professor Dagan's analysis, proposes as an alternative a uniform few-many rule for resolving takings issues. If funded through progressive taxation, such a rule would …

Trademark Monopolies, Glynn S. Lunney Jr

Glynn Lunney

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 …

E-Obviousness, Glynn S. Lunney Jr.

Glynn Lunney

As patents expand into e-commerce and methods of doing business more generally, both the uncertainty and the risk of unjustified market power that the present approach generates suggest a need to rethink our approach to nonobviousness. If courts fail to enforce the nonobviousness requirement and allow an individual to obtain a patent for simply implementing existing methods of doing business through a computer, even where only trivial technical difficulties are presented, entire e-markets might be handed over to patent holders with no concomitant public benefit. If courts attempt to enforce the nonobviousness requirement, but leave undefined the extent of the …

Copyright Protection For Asic Gate Configurations: Plds, Custom And Semicustom Chips, Glynn S. Lunney Jr

Glynn Lunney

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 …

The Death Of Copyright: Digital Technology, Private Copying, And The Digital Millennium Copyright Act, Glynn S. Lunney Jr

Glynn Lunney

The advent of digital technology has increasingly stressed copyright's ability to protect adequately creative works. By widely dispersing the ability to make near-perfect copies, digital technology renders copyright's traditional approach of controlling unauthorized copying by direct legal action against the individual copier increasingly anachronistic. Fearing copyright's 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 …

Fair Use And Market Failure: Sony Revisited, Glynn S. Lunney Jr

Glynn Lunney

With the development and dissemination of digital technology, the importance of private copying and its legal status, whether fair or unfair under copyright law, has only increased. Yet, despite its status as the Court's first and only pronouncement on the issue, Sony has played surprisingly little role in this ongoing debate. Even in cases bearing seemingly close similarity to the home-taping at issue in Sony itself, such as the private, home copying of musical works, courts have refused to follow Sony's fair use outcome. Having been narrowly construed as an exceptional instance of market failure, Sony seldom appears to …

Patent Law, The Federal Circuit, And The Supreme Court, A Quiet Revolution, Glynn S. Lunney Jr

Glynn Lunney

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's ability to ensure the expected profitability, and hence the existence, of desirable, but high …

Reexamining Copyright's Incentives--Access Paradigm, Glynn S. Lunney Jr

Glynn Lunney

To suggest a more appropriate approach for determining the proper scope of copyright, this Article critically reexamines the economic justification for copyright and identifies allocative efficiency, rather than the incentives-access balance, as the appropriate guide. From an allocative-efficiency perspective, copyright provides the proper degree of protection when it ensures that individuals will produce works of authorship if, and only if, such production would represent the most highly valued use of their resources. In a world of finite resources, more works of authorship must mean less of something else. Unless the production of an additional work of authorship is inherently more …

Copyright, Derivative Works, And The Economics Of Complements, Glynn S. Lunney Jr

Glynn Lunney

From an economic perspective, copyright is irrational. In defining the scope of a copyright owner's exclusive rights, it treats situations that have similar economic consequences differently, as infringement in one case and not in the other, and situations that have radically different economic consequences similarly. This essay explores such area in which copyright exhibits economic irrationality: Copyright's treatment of complements. Where a lower price on a substitute reduces demand for the original, a lower price on a complement increases it. So defined, copyright addresses whether a copyright owner will control three different types of complements: (i) complementary products, such as …

On The Continuing Misuse Of Event Studies: The Example Of Bessen And Meurer, Glynn S. Lunney Jr

Glynn Lunney

In their book, Patent Failure: How Judges, Bureaucrats, and Lauyers Put Innovators at Risk, James Bessen and Michael Meurer present an empirical assessment of the costs and benefits of patent protection. Their conclusion is startling. For most industries, the availability of patents discourages innovation.

According to Bessen and Meurer, patents benefit innovators by providing exclusivity and thereby enabling an innovator to capture more rents or profits from their innovation than they could with lead-time or other market mechanisms alone. While innovators can obtain rents from their own Patents, they also face the threat of infringement litigation from Patents held by …

Lotus V. Borland: Copyright And Computer Programs, Glynn S. Lunney Jr

Glynn Lunney

Since Congress's express acknowledgment of copyright protection for computer programs in 1980, courts have faced the sometimes difficult task of deciding whether the admitted copying of some element from a copyright program constitutes infringement. In Lotus v. Borland, for example, the question was whether the admitted copying by Borland of the Lotus 1-2-3 menu structure constituted infringement. The district court held that it did; the First Circuit held that it did not; and the Supreme Court was unable to decide. This Essay suggests that the First Circuit's resolution is the correct one, but that the reasons the First Circuit …

Trademarks And The Internet: The United States' Experience, Glynn S. Lunney Jr

Glynn Lunney

This article is divided into three sections: (II) The past; (III) The Present; and (IV) The Future. Part II will focus on the early judicial decisions applying trademark law to the Internet. It will examine the Internet's frontier period, discuss some of the early cases and their fact patterns, and attempt to show how the courts re-wrote various doctrinal elements of trademark law so they could reach the bad actors before them. While this period is characterized more by the predominantly bad faith nature of the defendants than by a calendar, it runs for approximately five years, from the first …

Ftc V. Actavis: The Patent-Antitrust Intersection Revisited, Glynn S. Lunney Jr

Glynn Lunney

In FTC v. Actavis, the Supreme Court determined that courts should apply a rule of reason analysis to determine whether using a reverse payment settlement to resolve pharmaceutical patent litigation violates the antitrust laws. Essentially unique to pharmaceutical-patent litigation, a reverse payment settlement involves a payment from the patent-holder to generic challengers in return for the generics dropping their challenge to the patent(s) at issue and agreeing to remain out of the market. Such a settlement agreement enables the patent-holder to maintain exclusivity in the relevant market and to keep prices of the associated pharmaceutical higher than they would …

A Critical Reexamination Of The Takings Jurisprudence, Glynn S. Lunney Jr

Glynn Lunney

No abstract provided.

The Trade Dress Emperor's New Clothes: Why Trade Dress Does Not Belong On The Principal Register, Glynn S. Lunney Jr

Glynn Lunney

No abstract provided.

Copyright, Private Copying, And Discrete Public Goods, Glynn S. Lunney Jr

Glynn Lunney

No abstract provided.

Trademark Monopolies, Glynn S. Lunney Jr

Glynn Lunney

No abstract provided.

Trademarks And The Internet: The United States' Experience, Glynn S. Lunney Jr

Glynn Lunney

No abstract provided.

Ftc V. Actavis: The Patent-Antitrust Intersection Revisited, Glynn S. Lunney Jr

Glynn Lunney

No abstract provided.