Session 3: Registered and Unregistered Intellectual Property Rights

Description: In 2018, Professors Barton Beebe and Jeanne Fromer’s influential Harvard Law Review article titled ‘Are We Running out of Trademarks? An Empirical Study of Trademark Depletion and Congestion’ concluded that trade mark ‘depletion and congestion are becoming increasingly serious problems for the trademark system. […] The result is that the ecology of the trademark system is breaking down, with mounting barriers to entry, increasing consumer search costs, and an eroding public domain.’ The authors challenge the notion that potential trade marks are inexhaustible and draw parallels between the amount of available valuable letter combinations (such as memorable common words, neologisms and common surnames) to the exhaustion of the world’s natural resources. We will look at the issue of expanding trade mark law and the potential upshots of this study.

Furthermore, we will discuss what sense it makes to register IP rights in the first place. Many unregistered intellectual property rights exist; the most well-known of these is copyright. Could patents and trade marks be protected without being registered - a copyright-like system without the need for formality? What possibilities and risks would a trade mark and patent system without an official register hold? Unregistered rights in respect of company, product or service names (which serve as badges of origin or indicators of trade channels) can sometimes be enforced by the law of passing off or by unfair competition law. Could a registration-free trade mark or patent system ever be viable? Could social norms and negative space intellectual property rights (IP rights safeguarded in the absence of legal regulation, by eg an ‘honour codex’ within an industry; examples include magic tricks, haute cuisine or street art) provide adequate protection for creativity.

 

Reading:

Empirical Study of Trademark Depletion and Congestion (February 9, 2018). Harvard Law Review, Vol. 131, No. 4, p. 945, 2018; NYU School of Law, Public Law Research Paper No. 18-19; NYU Law and Economics Research Paper No. 18-09. Available at SSRN: https://ssrn.com/abstract=3121030

Rochelle Cooper Dreyfuss, ‘Does IP Need IP? Accommodating Intellectual Production Outside of the Intellectual Property Paradigm’ (2010) Cardozo Law Review, Vol 31, No 5; NYU School of Law, Public Law Research Paper No. 10-43; NYU Law and Economics Research Paper No. 10-34. Available at SSRN: https://ssrn.com/abstract=1639590 or http://dx.doi.org/10.2139/ssrn.1639590

Eric A von Hippel, ‘“Norms-Based” Intellectual Property Systems: The Case of French Chefs’ (2006) MIT Sloan Research Paper No 4576-06 <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=881781>

 

Additional Reading:

Katherine J Strandburg, ‘Intellectual Property at the Boundary’ (2015) Final version published as Chapter 12 of Revolutionizing Innovation: Users, Communities and Open Innovation (Dietmar Harhoff and Karim Lakhani, eds) (MIT Press 2016). Available at SSRN: https://ssrn.com/abstract=2323986

Richard Arnold, ‘English Unfair Competition Law’ (2013) IIC; international review of industrial property and copyright law 44 (1) 63-78. Available at:

https://link.springer.com/article/10.1007/s40319-012-0010-5

T Aplin and J Davis, Intellectual Property Law: Text, Cases and Materials 3rd ed (OUP, 2017); or L Bently and B Sherman, Intellectual Property Law 5th ed (OUP, 2018)