"An oft-underappreciated aspect of intellectual property law is the presence of paradoxes. By ‘paradox’ we mean some aspect of a given intellectual property right that exhibits contradictory features. It is instructive to consider several such paradoxes and to speculate what we can learn from them.
A mark can become generic by two quite different routes. First the mark can be guilty of original generic sin. We do not allow the registration of the mark ‘Table’ for tables because to do so would be to grant the trade mark owner a monopoly over the common name of the product itself. As a result, we would allow the trade mark owner to gain an unfair competitive advantage. A generic mark in this sense is a legal non-starter.
There is, however, a second way that a mark can become generic, namely, to acquire genericness after initially having been a distinctive identifier of source. Examples are aspirin and linoleum. Each of these was once protected as a distinctive trade mark. However, the product identified by each of these marks became so successful that the mark no longer served to identify the source of the product, but became the name of the product itself. The paradox is that it is the very success of the product that sows the seeds of its ultimate legal downfall. It is possible that one can be too successful for trade mark purposes, when success leads to a result that contradicts a bedrock proposition of trade mark law, namely that a trade mark must function as an indicator of source.
Two decades ago, the courts in Israel, in a case popularly known as ‘The Dead Sea Scrolls Case’, were called upon to decide whether the textual reconstruction of certain ancient parchment fragments was protectable under copyright. The physical fragments themselves were first reassembled as best as possible, much as a jig-saw puzzle; however, there were still a number of lacunae in the text (similar to missing pieces in the puzzle). A scholar was called upon to complete the missing text but, before he could publish his finished scholarly work, a copy was published without permission by a popular biblical studies journal.
The court (upheld on appeal) ruled that the text as reconstructed was a protected copyright work. But in so doing, the court chose to ignore the paradox inherent in its decision. If one assumes that the scholar did his job properly, then there is only one possible (correct) text. But if that is true, then in effect there is a merger of the text with its underlying idea. Under the merger doctrine (which is recognized in various countries, such as the USA, but apparently not in Israel), when there is the merger of idea and expression, there is no copyright protection in the work.
That upshot is a paradox—only if the scholarly work is not an accurate reconstruction of the original text is it protected under copyright; the more accurate the work of reconstruction, the less likely copyright protection should apply. Another scholar who wishes to do his own independent reconstruction of the text will be more likely to infringe the original work the more that his reconstruction is accurate (unless there is an explicit exception to infringement under such circumstances that will save him). The paradoxical result—the better the scholarship, the more likely the infringement.
So what do these two examples of IP paradox teach us? The generic trade mark issue is an example of where doctrinal coherency prevails. If the mark no longer serves to identify the source of the goods, for whatever reason, the mark is no longer worthy of trade mark protection, no matter how ‘successful’ the product. This is so, even if the trade mark owner has taken all possible steps to blunt genericity. The Dead Sea Scrolls Case shows how a paradox that results from applying first principles of copyright law to the specific circumstances of academic research can simply be ignored by the court. Indeed, the presence of an explicit statutory exception would have made it easier for the court to recognize the paradox, safe in the knowledge that the paradox would be sanctioned as a matter of law".
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Paradoxes and intellectual property law
"Paradoxes and intellectual property law" is the title of the June 2013 Guest Editorial, penned by Dr Neil J. Wilkof -- a respected commentator on many areas of intellectual property law and one of the original members of the JIPLP editorial Board. Writes Neil:
June 2013 JIPLP: the contents
The June 2013 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available in full online. Subscribers may access the entire content; non-subscribers can purchase limited-duration access via the JIPLP website. The full contents of this issue are as follows:
- Neil Wilkof
Paradoxes and intellectual property lawJournal of Intellectual Property Law & Practice (2013) 8(6): 423 doi:10.1093/jiplp/jpt085
- Suleman Ali
Patents: Enantiomers are obvious even though they have unpredictable propertiesJournal of Intellectual Property Law & Practice (2013) 8(6): 1-5 doi:10.1093/jiplp/jpt049
- Stefano Barazza
Patents: Shopping cart patents held invalid, a key judgment for e-commerceJournal of Intellectual Property Law & Practice (2013) 8(6): 425-427 doi:10.1093/jiplp/jpt064
- Kate Manning
Trade marks: Three-dimensional trade marks: nooks and crannies of acquired distinctiveness and technical resultsJournal of Intellectual Property Law & Practice (2013) 8(6): 1-6 doi:10.1093/jiplp/jpt048
- Madeleine Chan
Trade marks: Use of a sub-brand as a badge of origin in conjunction with a parent brandJournal of Intellectual Property Law & Practice (2013) 8(6): 1-4 doi:10.1093/jiplp/jpt063
- Peter Petrov
Trade marks: Bulgarian Supreme Court of Cassation has accepted that damages occur upon import of counterfeit goodsJournal of Intellectual Property Law & Practice (2013) 8(6): 431-433 doi:10.1093/jiplp/jpt066
- Darren Meale
Trade marks: A hotel by any other name: the ‘own name’ defence in Hotel Cipriani, Part TwoJournal of Intellectual Property Law & Practice (2013) 8(6): 1-6 doi:10.1093/jiplp/jpt054
- Stefano Barazza
Designs: Dutch court examines the EU-wide effects of a Community Design Court decisionJournal of Intellectual Property Law & Practice (2013) 8(6): 427-429 doi:10.1093/jiplp/jpt065
- David Stone
Designs: Transparency over the use of dotted lines?Journal of Intellectual Property Law & Practice (2013) 8(6): 1-4 doi:10.1093/jiplp/jpt057
- Gert Würtenberger
Plant Variety Rights: The CPVO's Schnitzer GalaJournal of Intellectual Property Law & Practice (2013) 8(6): 1-7 doi:10.1093/jiplp/jpt053
- Pat Treacy
General: CJEU's bitter pill for AstraZenecaJournal of Intellectual Property Law & Practice (2013) 8(6): 1-5 doi:10.1093/jiplp/jpt051
- Althaf Marsoof
General: Google's AdWords stands victorious down underJournal of Intellectual Property Law & Practice (2013) 8(6): 0 doi:10.1093/jiplp/jpt061
- Simon Vander Putten
General: Copying an assortment of unprotected productsJournal of Intellectual Property Law & Practice (2013) 8(6): 0 doi:10.1093/jiplp/jpt050
- Darren Olivier and
- Katherine Harding
Trade Mark Registry decisions in South Africa: an analysisJournal of Intellectual Property Law & Practice (2013) 8(6): 448-459 doi:10.1093/jiplp/jpt060
- Robert Clark
Exhaustion, geographical licensing restrictions and transfer prohibitions: two surprising decisionsJournal of Intellectual Property Law & Practice (2013) 8(6): 460-469 doi:10.1093/jiplp/jpt062
- Alex B. Makulilo
Re-balancing artists' rights in cell phone ringtones? An analysis of Tanzanian copyrightJournal of Intellectual Property Law & Practice (2013) 8(6): 474-479 doi:10.1093/jiplp/jpt058
- Julian Cockbain
Petitions for review of EPO Appeal Board decisions by the EPO Enlarged Board of Appeal: part IIIJournal of Intellectual Property Law & Practice (2013) 8(6): 470-473 doi:10.1093/jiplp/jpt052
From GRUR Int.
- Jochen Pagenberg
Unitary patent and Unified Court — What lies ahead?Journal of Intellectual Property Law & Practice (2013) 8(6): 480-485 doi:10.1093/jiplp/jpt077
- Ilka Reimann and
- German Federal Court of Justice
Prerequisites for trade mark infringement in transit: Clinique HappyJournal of Intellectual Property Law & Practice (2013) 8(6): 486-490 doi:10.1093/jiplp/jpt069
IP in Review
- Joseph Savirimuthu
Who ambushed whom at London 2012? Lessons for the Rio 2016 organizing committee for the Olympic GamesJournal of Intellectual Property Law & Practice (2013) 8(6): 491-495 doi:10.1093/jiplp/jpt033
- Giles Parsons
A comprehensive text on European design lawJournal of Intellectual Property Law & Practice (2013) 8(6): 1-2 doi:10.1093/jiplp/jpt037
- Kim Barker
Access and benefit sharing: Actions speak louder than words?Journal of Intellectual Property Law & Practice (2013) 8(6): 1-3 doi:10.1093/jiplp/jpt055
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