Recommended Reading: Andrew Beckerman-Rodau, "The Problem With Intellectual Property Rights: Subject Matter Expansion"

The Yale Journal of Law and Technology has published a new article by Professor Andrew Beckerman-Rodau of Suffolk University Law School, entitled "The Problem With Intellectual Property Rights: Subject Matter Expansion," 13 YALE J.L. & TECH. 35 (2010-2011 Fall Issue). [pdf here]. Andy is professor of law and co-director of the Intellectual Property Law Concentration at Suffolk University Law School in Boston. The abstract is reproduced below.

This article examines the expansion of the subject matter that can be protected under intellectual property law. Intellectual property law has developed legal rules that carefully balance competing interests. The goal has long been to provide enough legal protection to maximize incentives to engage in creative and innovative activities while also providing rules and doctrines that minimize the effect on the commercial marketplace and minimize interference with the free flow of ideas generally. The expansive view of subject matter protectable via intellectual property law has erased the clear delineation between patent, copyright, and trademark law. This has led to overprotection of intellectual property in the form of overlaps which allow multiple bodies of intellectual property law to simultaneously protect the same subject matter. Such overlapping protection is problematic because it interferes with the carefully developed doctrines that have evolved over time to balance the private property rights in intellectual creations against public access to such creations. This article will examine the competing policies that underlie the various branches of intellectual property law. It will then discuss the expanding domain of subject matter protected by patent, copyright, and trademark law. Finally, it will examine the overlaps that exist under patent, copyright, and trademark law and the resulting problems with regard to software, clothing, computer icons, graphical computer interfaces, music, and useful commercial products.

I remain puzzled why the TTAB and the courts will deny trademark protection to a product shape on the ground of utilitarian functionality when the shape falls within the claims of a utility patent, but will not deny trademark protection to a shape that falls with the claim of a design patent. Wouldn't the rationale be the same -- an improper extension of the patent monopoly right? Others more cerebral than I have written on this question, and several TTABlog postings have focused on articles on this very topic: see here and here.

The Board and the courts will on occasion apply the doctrine of "aesthetic functionality" to deny trademark protection, but what that boils down to is that the design fails to function as a trademark: i.e., acquired distinctiveness has not been shown. But no case that I know of holds that trademark protection is barred because of the existence of a design patent.

Text Copyright John L. Welch.