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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
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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
