Copyright (c) 2008 All rights reserved. http://works.bepress.com/samuel_oddi Recent documents in Samuel Oddi en-us Mon, 17 Nov 2008 06:55:23 PST 3600 http://works.bepress.com/samuel_oddi/20 http://works.bepress.com/samuel_oddi/20 Mon, 04 Feb 2008 17:37:32 PST It may be presumptuous to enter into a debate between two distinguished members of the academic community and two distinguished members of the trademark bar (indeed, the editor and former editor of this fine journal). Nonetheless, if minimum standing be needed to enter the fray, in an article published in 1986, I sought to illustrate how consumer motivation related to various trademark and unfair competition doctrines and to identify legal presumptions made with respect to consumer behavior and competition. Although not a central focus of the article, the relationship of consumer motivation to the issue of genericness was addressed with particular reference to the Anti-Monopoly case.' Moreover, in the light of the 1984 amendments to the Lanham Act legislatively abrogating the consumer motivation test for genericness of Anti-Monopoly, I suggested a simple survey question for determining genericness' and concluded that a Thermos-type survey may have been eliminated by the amendments.'In any event, my observations were ignored in the debate,' which could lead one to conclude that perhaps these distinguished writers were merely following the admonition of Ralph Waldo Emerson: "Speak the affirmative; emphasize your choice by utter ignoring of all that you reject." " Presuming rejection in the Emersonian sense, I will, in this short comment, reexplore the rationale underlying my proposed survey question and my conclusion that a Thermos-type survey is no longer relevant to the issue of genericness. Before that, however, I would like to comment briefly on the respective positions of Professors Folsom and Teply and Messrs. Swann and Palladino and also to discuss how an important new study" by Professor Landes' and Judge Posner" may bear upon the question of genericness and the present debate." Samuel Oddi Trademark http://works.bepress.com/samuel_oddi/19 http://works.bepress.com/samuel_oddi/19 Mon, 04 Feb 2008 16:57:18 PST This article will examine the various definitions of "functionality" and its converse "nonfunctionality" which have been propounded and applied by the courts in cases involving trademark registration and trademark infringement. The doctrine of "functionality" will be critically analyzed to determine whether the standards by which it is applied to three-dimensional products adequately balance the policy objectives of free competition (as reflected in the right to copy) and fair competition (as reflected in trademark protection). Samuel Oddi Trademark http://works.bepress.com/samuel_oddi/18 http://works.bepress.com/samuel_oddi/18 Mon, 04 Feb 2008 16:50:17 PST In the vacuum following the shock wave of Sears, Roebuck & Co. v. Stffiel Co. I and Compco Corp. v. Day-Brite Lighting, Inc. a symposium was published under the provocative title, Product Simulation: A Right or a Wrong? The distinguished contributors to this symposium (Leeds, Handler, Derenberg, Brown, and Bender) differed-as might be expected-on the extent of damage that these decisions inflicted upon the state law of unfair competition. Samuel Oddi Trademark http://works.bepress.com/samuel_oddi/17 http://works.bepress.com/samuel_oddi/17 Mon, 04 Feb 2008 16:23:43 PST Justice Story and Judge Gee bemoan the difficulty of decision-making in patent law because of the nature of the subject matter. When the difficulty is compounded because of the mutual incompatibility of the doctrines which control the outcome of the decision, the decision-maker may find it necessary to go beyond logic, analogies and philosophies to reach the decision. As eloquently stated by Mr. Justice Cardozo: We go forward with our logic, with our analogies, with our philosophies, till we reach a certain point. At first, we have no trouble with the paths; they follow the same lines. Then they begin to diverge, and we must make a choice between them. History of custom or social utility or some compelling sentiment of justice or sometimes perhaps a semi-intuitive apprehension of the pervading spirit of our law must come to the rescue of the anxious judge, and tell him where to go. When compelled to make such a choice the decision-maker, it may be hoped, will clearly articulate not only the logic, analogies and philosophies involved in the decision but also any rationales beyond these that have been resorted to in the decision-making process. Otherwise obfuscation, uncertainty and confusion are the probable consequences, especially in dealing with admittedly abstruse subject matter. In areas such as intellectual property law, where the Supreme Court so infrequently directs its attention, there is yet hope for clarification. The Mercoid cases were decided in 1944; section 271 of the Patent Act was enacted in 1952; the section 271(c)/(d) interrelationship was construed twenty-eight years later in Dawson Chemical Co. v. Rohm & Haas Co. The doctrines of contributory infringement and patent misuse are said to 'rest on antithetical underpinnings.' As one doctrine expands the other correlatively must contract. If 'philosophical' labels had to be attached to these competing doctrines, contributory infringement could be labeled a 'pro-patent' doctrine-that is, expanding the scope of protection afforded under a patent. On the other hand, patent misuse would be labeled as 'pro-competition' or 'anti-patent' doctrine narrowing the scope of protection afforded under the patent. The turbulent history of the clash of these doctrines vividly illustrates their incompatibility. Samuel Oddi Patent Law http://works.bepress.com/samuel_oddi/16 http://works.bepress.com/samuel_oddi/16 Mon, 04 Feb 2008 16:12:15 PST This article will examine the various definitions of 'functionality' and its converse 'nonfunctionality' which have been propounded and applied by the courts in cases involving trademark registration and trademark infringement. The doctrine of 'functionality' will be critically analyzed to determine whether the standards by which it is applied to three-dimensional products adequately balance the policy objectives of free competition (as reflected in the right to copy) and fair competition (as reflected in trademark protection). Samuel Oddi Trademark http://works.bepress.com/samuel_oddi/15 http://works.bepress.com/samuel_oddi/15 Mon, 04 Feb 2008 15:59:50 PST This article will consider the relevance of consumer motivation to the trademark and unfair competition doctrines of functionality, secondary meaning, aesthetic functionality, and genericness. Its usage within these doctrines will be analyzed in an effort to ascertain any underlying presumptions concerning consumer behavior and competition. Concomitantly, this article will examine the value of consumer motivation, with reference to the psychological construct of consumer motivation, as a construct for resolving the legal issue of whether protection against copying a product or 'word, name, symbol or device' should be afforded. This will be attempted, in the light of preserving the 'right to copy' as a basic tenet of free competition theory, without seriously eroding established fair competition principles of trademark and unfair competition law. Samuel Oddi Trademark http://works.bepress.com/samuel_oddi/14 http://works.bepress.com/samuel_oddi/14 Fri, 01 Feb 2008 11:41:53 PST The right to die is being judicially recognized in an ever-increasing variety of circumstances where medical intervention could otherwise prolong or even save life. The right to die has been recognized not only with respect to persons faced with imminent death without life sustaining treatment and the terminally ill, but also to persons whose lives could be saved by appropriate medical treatment. Recent cases indicate the types of treatment that may be withdrawn or refused are expanding beyond 'extraordinary' treatments, such as respirators and other life support systems, to include surgical procedures, chemotherapy, dialysis, blood transfusions, and, most recently, artificial feeding. Of course, most right to die decisions are not made by courts. These difficult decisions are usually made by the affected persons or their representatives in consultation with the attending physician or physicians. Judicial intervention is normally sought when the medical facility or attending physician refuses to terminate treatment, or when a patient refuses consent for necessary treatment, particularly where the patient is a minor or otherwise incompetent and the guardian is unwilling to consent on the patient's behalf. The right to die is premised upon a number of theories: the common law 'right to bodily integrity,' the constitutional 'right to privacy,' the first amendment right of 'free exercise' of religion, and state 'natural death' statutes. Samuel Oddi Tort Law http://works.bepress.com/samuel_oddi/13 http://works.bepress.com/samuel_oddi/13 Fri, 01 Feb 2008 10:59:00 PST This article examines the impact on Third World countries of their membership in the international patent system. Professor Oddi begins by discussing the traditional rationale for the existence of a patent system. He concludes that although this rationale may have some validity for developed countries, the rationale is not applicable to developing countries. The institution of a patent system in a developing country may confer significant social costs on that country; membership in the international patent system may exacerbate those costs. For those countries that do belong to the international patent system, Professor Oddi suggests changes to ameliorate the costs they will bear. Samuel Oddi Patent Law http://works.bepress.com/samuel_oddi/12 http://works.bepress.com/samuel_oddi/12 Fri, 01 Feb 2008 10:43:07 PST By far the most controversial of the Supreme court's 'trilogy' of cases dealing with the tort of contributory infringement of intellectual property has been Sony Corp. of America v. Universal City Studios (Betamax case). The Court, by a five-to-four majority, held that it was not contributory infringement of the Studios' copyrights for Sony to sell its Betamax type of video cassette recorder (VCR) to consumers who used them to record copyrighted works off-the-air. The Court concluded that such recording by consumers was permissible 'fair use,' because the VCRs were 'widely used for legitimate, unobjectionable purposes,' namely, 'private, noncommercial time-shifting in the home,' and hence did not constitute direct infringement of the Studios' copyrights. Absent such direct infringement, there could be no contributory infringement by Sony. The Betamax decision may be characterized as a victory for the VCR industry and their users in eliminating the broad-based employment of contributory infringement. Nonetheless, Betamax, in the long run, may be viewed as a mere failure on the part of the copyright owners to prove substantial direct infringement. While there is no question that copy technology creates significant worries for copyright owners, there is no inherent tension between copyright and technology. More often than not technology is sympathetic and complementary rather than antagonistic and antithetical to copyright. Copyright owners, however, clearly understand that copy technology is technically indifferent to their copyrighted works; indeed, a significant part of such copy technology's value may reside in this indifference. Consequently tension is created between copyright owners whose works are easily copied and technology owners whose equipment permits such copying. The availability of a contributory infringement action may provide copyright owners with a potent weapon to enforce their copyrights against unauthorized copying by owners of copy equipment within their own homes or offices. Indiscriminately broad application of the doctrine, however, would exacerbate tensions between copyright and technology. A more productive approach would examine the underlying policies and tort principles supporting the doctrine. Proposed legislative solutions also miss the mark by creating conflict between the development of patentable and copyrightable subject matter. This article examines the tort of contributory copyright infringement along with its underlying tensions. Part I examines the general tort theory underlying contributory copyright infringement and its application to copyright law as evidenced by Betamax. Part II identifies various factors that bear upon the scope of contributory copyright infringement with reference to their relevance in the Betamax case. Part III examines the tensions between copyright owners and developers of copy technology. Additionally, Part III addresses the public interest in having access to both copyrighted works and copy technology. Finally, Part IV explores solutions to these tensions in light of the constitutional mandates ' t o promote the Progress of Science as embodied in copyrightable works and useful Arts as embodied in patentable inventions .' Samuel Oddi Copyright http://works.bepress.com/samuel_oddi/11 http://works.bepress.com/samuel_oddi/11 Fri, 01 Feb 2008 08:52:00 PST This Article explores the possibilities for restructuring the incentives provided under a patent system in an attempt to offset any misallocation of resources under the present system and to increase the yield of patent-induced inventions. Part I of this Article provides the traditional rationales for patent protection. Part II examines the present patent system, particularly the statutory conditions for patentability (novelty, utility, and nonobviousness), the statutory classes of inventions, and the time-period of exclusivity, and whether these conditions provide adequate incentives for invention. In light of this analysis, Part III sets forth a proposal for overcoming the perceived inadequacy of the present system and considers the domestic and international implications of any restructuring. This Article concludes that the utility patent, as presently known, may not provide for the optimal title of protection in the future. Samuel Oddi Patent Law