Laura A. Heymann (College of William & Mary - Marshall-Wythe School of Law) has posted Overlapping Intellectual Property Doctrines: Election of Rights versus Selection of Remedies (Stanford Technology Law Review, Vol. 17, 2013) on SSRN. Here is the abstract:
Overlaps exist across various doctrines in federal intellectual property law. Software can be protected under both copyright law and patent law; logos can be protected under both copyright law and trademark law. Design patents provide a particular opportunity to consider the issue of overlap, as an industrial design that qualifies for design patent protection might also, in particular circumstances, qualify for copyright protection as well as function as protectable trade dress.
When an overlap issue arises — that is, when an intellectual property rights holder asserts rights under more than one doctrine — the question then becomes how courts should respond. One response, of course, is that courts should do nothing, on the theory that the doctrines developed in a way that permit such overlapping rights, and so the courts should continue to enforce them. The opposing response is to argue that overlapping rights make it difficult for intellectual property users to determine the scope of another’s rights, particularly when those rights have different terms or limitations, and so the courts should require intellectual property owners to choose the right they want enforced at the outset.
Neither response is entirely satisfying. Without some signal from Congress that it intended to limit the scope of intellectual property rights when overlaps occur, the imposition of restrictions by the courts simply to achieve predictability for users seems problematic. At the same time, courts should not be blind to the difficulties that doctrinal overlap pose for potential defendants and the temptation it presents to intellectual property owners to push for even stronger protection.
This Article therefore proposes something of a middle ground. Courts should not require intellectual property owners to elect one form of protection at the outset. But they should be attentive to whether the right asserted in any litigation proceeding aligns with the harm claimed by the plaintiff and, relatedly, should try to devise remedies that address only those harms.