Introduction

The distinction between unprotectable ideas and copyrighted expression is one of the most fundamental principles of copyright law. It is a ubiquitous principle of national copyright law, and may even be the international ceiling on the subject matter capable of protection under national law. But no principle has been so frequently repeated and yet so badly understood. Indeed, commentators and courts have not been slow to comment on how difficult it is to grasp the distinction between idea and expression – or, perhaps more accurately, how difficult it is to articulate the distinction, or to draw it in practice.

Some of the most intractable problems in applying the distinction (and hence of making overall determinations of infringement) have arisen in the context of applying copyright law to new technologies. Protection of software, in particular, has generated difficult decisions for courts seeking to sustain and apply the distinction. This is in part because computer programs ‘hover more closely to the elusive boundary line between idea and expression’ and hence repeatedly test the resilience of the distinction. Likewise, musical copyright cases, even more so of late, have presented courts with similarly hard questions (possibly because of a felt lack of judicial expertise, and perhaps also with an eye to the ‘functional’ aspects of certain parts of the musical work). In both types of cases, courts as a result appear more comfortable with an expansive role for expert testimony to aid judicial resolution of the dispute.

Introduction

In his contribution to this volume, Alan Durant provides legal scholars with both a rich understanding of how linguists view terms that are part of the basic argot of trademark law and a potentially vital explanation of the different social functions that word marks might serve. Both aspects of his analysis introduce the complex variable of reality into trademark law. Trademark law must decide whether and when to take account of that complex reality, and what weight to afford such reality, no matter how enriched an account linguists offer about the actual meaning of signs. In this response, I suggest that, while trademark law should not become beholden to linguistics, the lessons of Durant's linguistic analysis are to some extent already accommodated in the practice of trademark law, and could be important guides in the further development of a number of legal principles.

Section 1 of this chapter explains why linguistics should matter to trademark law. Traditionally, and still most typically, words comprise the largest group of trademark subject matter. Trademark law is structured around protecting the meanings of those words, at least as understood by consumers, in order (classically) to prevent consumer confusion. I suggest some reasons why trademark law might ignore the precise reality of consumer understanding. However, the starting point (if not always the end point) of trademark law in many contexts is an understanding of how signs actually work in context, and linguistics is one way of establishing that starting point for words.

ABSTRACT

The TRIPS Agreement can be read to reflect a static view of the structure of intellectual property law. In this chapter, we address whether – and how – the TRIPS Agreement can be interpreted to give it more fluidity, and thus to allow adjustments in national intellectual property regimes designed to reflect the dynamic nature of information production. To focus that inquiry, we concentrate on efforts to ensure a broader public domain for “upstream” inventions by modifying various elements of U.S. patent law. The paper considers three stylized examples and asks whether each approach could be adopted by the United States without falling afoul of the TRIPS Agreement, as it is currently understood. Our purpose is to identify interpretive approaches that allow Members to keep their laws attuned to the developments and needs of science. In so doing, we also raise broader questions regarding the level of formalism generated by the WTO dispute settlement system, and the extent to which the TRIPS Agreement allocates power between supranational and national institutions, and between international and national laws.

Introduction

The size and content of a rich public domain are affected by a constellation of national intellectual property rules: provisions that define protectable subject matter, establish threshold requirements for protection, delineate the scope of the rights awarded, create defenses and exemptions from liability, and set remedies for infringement.