WEST’S LAW SCHOOL ADVISORY BOARD _________ JESSE H. CHOPER Professor of Law, University of California, Berkeley DAVID P. CURRIE Professor of Law, University of Chicago YALE KAMISAR Professor of Law, University of Michigan Professor of Law, University of San Diego MARY KAY KANE Chancellor, Dean and Distinguished Professor of Law, University of California, Hastings College of the Law WAYNE R. LaFAVE Professor of Law, University of Illinois ARTHUR R. MILLER Professor of Law, Harvard University GRANT S. NELSON Professor of Law, University of California, Los Angeles JAMES J. WHITE Professor of Law, University of Michigan i INTELLECTUAL PROPERTY THE LAW OF COPYRIGHTS, PATENTS AND TRADEMARKS By Roger E. Schechter Professor of Law, George Washington University John R. Thomas Professor of Law, Georgetown University HORNBOOK SERIES® Mat #11575277 ii West Group has created this publication to provide you with accurate and authoritative information concerning the subject matter covered. However, this publication was not necessarily prepared by persons licensed to practice law in a particular jurisdiction. West Group is not engaged in rendering legal or other professional advice, and this publication is not a substitute for the advice of an attorney. If you require legal or other expert advice, you should seek the services of a competent attorney or other professional. Hornbook Series, WESTLAW and West Group are registered trademarks used herein under license. COPYRIGHT © 2003 By WEST GROUP 610 Opperman Drive P.O. Box 64526 St. Paul, MN 55164–0526 1–800–328–9352 All rights reserved Printed in the United States of America ISBN 0–314–06599–7 iii For Craig – R.E.S. For Sayuri – J.R.T. * v Acknowledgments _________ Only other authors of similar books really understand the large number of people who make a work like this possible. I am deeply grateful to several remarkable law students at George Washington University who helped in the research for this work, including Michael Alter, John Donboli, James Gallagher, Mark Glaze, John Moran, Douglas Rettew and Wayne Stacy. Thanks are also due to David Colletti and Paul M. Levine for meticulous help in proof-reading under great time pressure. Leonard Klein, a research librarian at the Jacob Burns Law Library was, as always, masterful, in finding just the right resource at just the right moment. My colleague Robert Brauneis offered many useful observations on several chapters, rescuing the reader from much ambiguity. There are many others whose contributions were one step removed from the preparation of this book, but who laid the foundation that made it possible. I am greatly indebted to Professor J. Thomas McCarthy of the University of San Francisco, not only for his extraordinary contribution to trademark law through his definitive treatise, but for his many thoughtful observations and kindnesses over the years. He is one of the true gentlemen and scholars in our business. I would not be in law teaching if not for the confidence and support of Professor Glen E. Weston, my emeritus colleague at George Washington, who illustrated for me what a teaching book should look like. I am grateful as well to Jerome A. Barron, the Dean who hired me, and to Michael K. Young, my current Dean, for doing so well the hardest thing a Dean can do—namely to leave a faculty member unmolested to pursue a large project. The forbearance, patience, and grace of several at West Group, notably Tom Berreman, Doug Powell, Pam Siege, Heidi Hellekson and Roxy Birkel, has been remarkable. This volume would have been simply impossible without the collaboration and encouragement of my co-author Jay Thomas, whose enthusiasm and amazing hard work kept me moving through many hard patches. Finally, there are no sufficient words of thanks for my students. So many teacher-authors have said it before that it may take on the trappings of a cliche, but the intellectual curiosity, probing questions, good humor, excitement and energy of two decades worth of G.W. law students have been, more than anything, what got me out of bed each morning and what made this book possible. ROGER E. SCHECHTER _________ My participation in this project would not have been possible without the efforts of many mentors and colleagues. The late Chief Judge Helen vi W. Nies gifted me with two unforgettable years of training in the work of the remarkable court on which she served. I miss her dearly. I shall always be grateful to Professors Martin Adelman and Rebecca Eisenberg for igniting my interest in intellectual property, Harold Wegner for first placing me in front of a law school classroom and Professor Hugh Hansen for proposing a full-time career in law teaching. I also acknowledge Professors Rochelle Dreyfuss, Jerome Reichman and Pamela Samuelson, distinguished senior colleagues who have inspired a new generation of intellectual property scholars. The thoughful commentary of Professor Douglas Lichtman improved the patent portions of this text and was of immeasurable help. My thanks also to Peter Corcoran, Jyotsna Gautam and Brian McMahon for their invaluable research assistance. I was pleased to attend Roger Schechter’s classes as a student and delighted to enter academia as his colleague; now I am honored to serve as his co-author. Roger’s insight and eloquence of expression is apparent from the pages of this text, but I also admire his collegiality and extraordinary commitment to his students. The original vision of this treatise was his, and I am grateful to have shared in the work of fulfilling it. JOHN R. THOMAS vii Preface _________ Writing a book about intellectual property at the dawn of the twenty-first century is like trying to hit a moving target while riding in the bow of a speedboat. Dizzying political, economic and technologic changes have prompted the Congress to undertake massive revisions to all three major branches of intellectual property law over and over again in the past few years. Those new enactments, along with problems not addressed by legislation, have led to a cascade of decisional law on a stunning range of highly complicated issues. That in turn leads to circuit splits, law review articles, more legislation, and still more cases. Anything that one endeavors to say on the subject runs the risk of being obsolete before the ink has dried or the toner has cooled on the page. We have done our best in this legal typhoon, to offer up a coherent survey of both basic principles and emerging issues. Our goal is to provide, in a single volume, a reasonably thorough introduction to the field that will be helpful to students, practitioners and judges alike. We have tried to summarize what is clear, identify what is unsettled, and sometimes to offer brief thoughts as to how some sticky issues might be resolved or why some existing rules seem poorly though through. We have attempted, above all, to make the text lively and readable and to leaven it with numerous examples and occasional humor. As always, our readers will determine if we have succeeded. While there are many common themes that pervade the different branches of intellectual property law, the law of copyrights, patents, and trademarks still remain fairly discrete fields. Each is governed by its own separate, and fairly elaborate federal statute, and the cases dealing with problems in one of the areas rarely cite cases from the others. Our organizational scheme reflects this segregation of topics. After an introductory chapter exploring some of the unifying themes in all intellectual property disputes, we have divided this work into three principal parts dealing respectively with the three branches of the law. We have tried, however, through cross-references in both text and notes, to alert the reader to overlap or even conflict between the various branches of intellectual property law. We have sought to steer a middle ground with the citation of authority. In order to keep the book to a manageable size, we did not attempt to follow the law review practice of supporting every statement with a citation, nor did we attempt to gather complete lists of authorities for various propositions. That such a task would have been impossible in a single volume is evidenced by the existence of huge multi-volume works in all three branches of intellectual property law. On the other hand, we have tried to provide at least some support for most major points, and sufficient viii information to allow the curious reader to get a head start on further research. Intellectual property issues are unusually engaging and stimulating. The excitement of this area of the law reflects the excitement of living in a technologically advanced, culturally diverse, economically robust time and place. As more and more authors develop more and more ways to express themselves and to disseminate their work; as more and more technologists conjure more and more ways to make our lives longer, healthier, easier and more fun; and as more and more merchants conjure more and more varieties of goods and services to cater to our needs and wants along with appealing symbols to identify them; the law has been in a mad scramble to keep up. The Internet and globalization have thrown down extraordinary challenges to the legal system. For the student of intellectual property, there is never a dull moment. Even more significantly, we believe that thoughtful legal rules in these areas can facilitate amazing progress and much good for the citizens of the United States and the world, while rules crafted to advance special interests hold the potential of doing great harm to large numbers of people. Our hope is that this book will help a wide variety of actors in the legal system to gain the kind of introduction to copyright, patent and trademark issues that will enable them both to distinguish between sound and unsound legal regimes and to become champions of the former. A teaching book can aspire to no more and should aspire to no less. ROGER E. SCHECHTER JOHN R. THOMAS Washington, D.C. March, 2003