At 08:58 AM 3/2/99 +0000, you wrote:
>
>> Outside of the courtroom, that works for me, too. In the courtroom,
>> however, you can run into such issues as: if the Fed Gov takes it away
>> from me, do I get compensation? Due process? Uh, nope, as to the
>> former, and kind of wishy - washy as to the latter: you'd typically
>> get due process, but if you did not I'm not sure what you'd do about
>> it. The bottom line is that in litigation, the status of being
>> property or not makes a hurkin' big difference. So use it for
>> convenience, as you said, but don't get too married to the idea.
>
>It is an interesting concept that something which is created by Federal
>statute is not "property" subject to the restrictions imposed by the 5th
>and 14th amendments.
Trademark law was not created by statute. It goes back to Paul Revere,
back to England, and from there back to Italy. The Lanham Act merely
sets up the registration and processes for litigation. (What IS new, by
statute, is the dilution notion, and that, of course, has precedent
overseas in terms of famous marks.)
>
>I just did a quick scan and I do find indications that at the level of the
>Supreme Court that some rights created by statutes and common law are
>indeed considered "property" and protected. For example, trade secrets
>under Ruckelshaus v. Monsanto Co., 467 U.S. 986 (1984). (This is under
>the Takings clause and is thus not strictly on-point, but it is closely
>related.)
Trade secrets are a matter of state law. In doing an analysis of GATT some
years back, I was pleased to find that even under the TRIPS agreement,
the law of Ohio or whatever would prevail. (The new Federal trade secret
law -- the Economic Espionage Act of 1996 -- of course changes that a
bit.) Anyway, trade secrets have always been property, as have copyrights
and patents because of their constitutional foundation.
>
>My quick scan indicated that this is a very complex area with lots of
>factual analysis, and lots of cases going either way.
>
>Then I took a look at Door Systems v Pro-Line from which you quote your
>support about trademarks not being property. To my reading that is dicta
>and not at all part of the holding. If one removed that statement
>regarding property, the Court's logic would still follow the same path. In
>other words, the statement about trademarks and property is a logical
>no-op, contributing nothing for and nothing against the conclusion which
>is eventually reached.
Dictum, right. But unlike law school practices, other courts pay
attention to them. (The Supreme Court settled the matter in 1918,
I believe it was.) But ask yourself: can I sell my copyright, all by
itself? Can I sell my patent, all by itself? Can I sell my trade secret,
all by itself? Can I sell my trademark, all by itself? The answers are
Y,Y,Y,N. Trademarks have no existence except in connection with
the commercial practices that gave rise to them, so if you sell the
company trademark you also have to sell the company, so to speak,
or at least the so-called "good will" that the company built up.
American Motors was able to sell "Jeep" to Chrysler only because
Chrysler had taken it upon itself to follow the tradition and make and
sell Jeeps; without the sale of the Jeep business as well, there would
now be no Jeeps.
>
>But your warning is well taken, that trademarks, because they are
>statutory creations, can be eliminated by legislative actions.
As noted above, not what I said. Theoretically they could be eliminated,
since they have not the same Constitutional protection, but abrogating t
he common law is a pretty tough row to hoe!
>
>I'm not sure at all how we got down this pathway -- clearly any change
>that modifies the rights, either by expansion or contraction, of holders
>of marks would be something of significant import and probably would
>require positive action at the highest legislative and judicial levels.
Or we merely learn to apply the existing law better. The Beverly case
I noted earlier tonight shows just how wrong courts can be.
>
>Any not to forget the ying to the mark holder's yang, any change that
>reduced the freedom to use names which are not marks at all or to use
>names in areas not covered by the existing scope of a mark is an act of
>similar import and significance.
That aspect is indeed well established. Problem is, domain name holders
have not, as a rule, been able to mount the kind of attack needed, for
lack of funds to do so. (Carl Oppedahl will certainly echo that; he's said
it a number of times.) The unfortunate fact is that the courts rule on the
basis of the "case or controversy" in front of them, and what is put in
front of them is what the attorneys present, no more, no less. If no one
presents an issue, that issue is not up for decision by the court. Courts
cannot make rulings on hypotheticals, or give advisory opinions, because
they do not have the authority to do so. Thus the Beverly case: NSI did
a better lawyerin' job than did Mr. Beverly by himself. (Surprise, surprise!)_
Bill Lovell
>
