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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
Ain’t Misrepresentin’
Misrepresenting the good name of another may invite serious consequences – especially when that name is also famous, as in a person, trade name, or trademark. Adopting another’s identity to promote one’s own purposes, known as “palming off” or “passing off” is actionable, assuming causation of injury and damages. (As my father always said, “If there is no damage, nothing happened.”)
What happens with the converse situation? If one removes the name of the inventor, creator or owner from a good or work and replaces the trade name or mark with his own, does he invite liability? Take sugar, an entity as fungible as a dollar bill. If one purchases a famous brand of sugar and repackages it with his own label – let’s call it Pres. Fillmore Sugar – does that injure the famous maker? After all, the original purveyor made a sale of his product and was paid for it, as intended.
As you might expect, the damage in the converse situation, known in the law as “reverse palming off,” occurs when Pres. Fillmore cannot successfully associate his product with quality or competency. For example, there might exist an original equipment manufacturer, or OEM, who manufactures a critical part of a commercial printing press that is, by most designs, typically hidden from view unless in need of replacement or repair. If the Pres. Fillmore Co. were to mislabel this part, then the OEM may lose the sale on the replacement of the part. More extremely, the OEM would lose recognition in the industry over time as the manufacturer of that part – and all of its high quality mechanics would eventually be attributed to that charlatan, the Pres. Fillmore Co. That is to say, the reverse passing off is a means of literally stealing the reputation for quality earned by another.
Let’s look closely at a case against reverse passing off – again, the principle of removing another’s trade mark from his good and placing one’s own mark on the same – with the following hypothetical. The facts of reverse passing off may be actionable under trademark law, but are not always a simple trademark dispute.
Bob dotes on his infant granddaughter, Baby Madelyn. During an afternoon of babysitting, while rocking Madelyn to sleep, Bob was inspired with invention: a cradle that included a motorized swing, a music player that permitted variation of the tempo of the song it played, and a controller that automatically adjusted the motor speed so that the cradle rocked in time to the selected tempo. At first, Bob had implementation issues. He needed a specially-written song that could be enjoyed at different tempos, because Madelyn liked to rock fast in the afternoon and slow in the evenings. He also needed a means of adjusting the length of the crib’s pendulum swing so that the swing kept time with the music. He accomplished the variable swing by designing a hydraulic brake that stopped the swing and redirected it with a force appropriate to maintain the tempo recognized by the music-to-motor controller. Bob’s clever engineering friends advised him in the design process, and suggested where he might find the parts needed to construct the motorized cradle prototype.
Bob asked an acquaintance to write him a children’s song he could play fast or slowly, and also to design a reproducible stencil that might be used to decorate furniture. The friend eagerly complied with both, each representing a separate work of original authorship. Bob then fabricated a prototype controller that stored the song in a normalized digitized version and inserted or removed code as necessary to regulate the tempo. Of course, Bob had to arrange the original music in a run length code that could be accessed and rearranged to permit tempo changes while maintaining the audio integrity of the music. Bob liked the stencil, too, but removed the artist’s name before using in order that the source of the design could not be traced.
The hydraulic brake had to be controlled by a program written to drive the braking and motor mechanism at any one of the given tempos the cradle user might select. The task of writing the codes stored in the controller was time-consuming, but not much more difficult than writing the code for the music changes. The brake presented the added complication of a throttling problem, which Bob eventually addressed by obtaining a commercially available, trademarked product known for its patented throttle design, and retrofitting the part to his brake system. Bob took his re-engineered part to an offshore manufacturer. The trademark on the previously patented part isn’t exactly a household name, but is widely known and used by the makers of automatic swinging and sliding doors.
After manufacturing the first run of Bob’s “Incredible Cradle”™ (patent pending), the product was an overnight success. The decorative artwork was even nominated within the children’s products industry for an award.
Not long after, Bob gets his first complaint from the music and artwork creator. She claims Bob paid her for the music and for the stencil, but did not purchase any of her copyright interests in the exclusive rights of reproduction, modification, transfer, display or performance of either work.
On another front, Bob is threatened with legal action by the OEM of the signature throttle, who asserts that despite the reengineering, Bob is still making and selling the OEM’s patented and industry recognized signature design. Fortunately for Bob, his patent attorney friend advised him how to design around the patent claims, and, anyway, the patent had already expired.
Not to be deterred, however, the OEM eventually sued Bob claiming unfair competition by way of reverse passing off -- in particular, that Bob was manufacturing and selling the well known signature hydraulics by removing the originator’s name and offering them as his own invention. The OEM also alleged “trademark and trade dress infringement by virtue of market recognition and secondary meaning of the signature hydraulics.”
These legal matters are, indeed, weighty for Bob. First, the artist has been legally wronged by Bob, and the law will require him to pay her royalties. These royalties could be in the form of profit sharing. He will probably leave negotiations with the artist in the hands of his able patent and copyright attorney.
Second, Bob will have to answer the trademark misappropriation claim, although he should be able to legally absolve himself on this count. Bob’s reengineering of the signature hydraulics and special manufacture of the same by a contracted fabricator is not misappropriation at all, because it is no longer the OEM’s product that Bob is manufacturing and selling as his own. The patent had expired on the hydraulics, and so the signature design of the same is now in the public domain to be made use of as Bob did. In sum, trademark law protects the word, design, or symbol serving as the trademark, and not the goods sold under the trademark.
Third, Bob must respond to the trade dress infringement claim, which will require more sophisticated arguments. This claim asserts that the design of the hydraulics, while no longer protected by patent, has achieved secondary meaning by virtue of its recognition by consumers in the relevant market, and is therefore protected “trade dress.” That is to say, the hydraulics themselves are so distinct and well-recognized that they, like a logo, are only to be associated with a single maker. To permit otherwise would allow consumers to erroneously conclude, when they purchase Bob’s Incredible Cradle™ and see its hydraulic mechanism, that the OEM manufactured the part and thus the part offers the quality consumers have come to expect from the OEM’s name. As the argument goes, Bob would thereby be promoting sales of his good by reverse passing off the OEM’s reputation for quality.
Bob’s patent, trademark, and copyright attorney should respond to this particular set of facts by demonstrating that the alleged signature trade dress is functional -- an argument that brings death to all trademark and trade dress claims. This argument is known, unimaginatively, as the “functionality doctrine” and codified into the Lanham Act, 15 U.S.C. section 1125. In this case, an able lawyer might argue that the design in question appears the way it does because that configuration and assemblage is what accomplishes the performance of the function of a throttle. Functions are granted a limited (20 year) monopoly on production under the patent laws. The design may be distinctive, but should not be confused with non-functional “flourishes” a manufacturer adds to promote easy identification of his product, and which fall under the ambit of trademark law as protected logo.
The functionality doctrine is intended to encourage legitimate competition by maintaining the proper intents and purposes of, and the legal distinction between, the trademark law and patent laws. To review, trademark law protects a firm’s reputation (and thus, its competitiveness), but does not secure a firm the right to monopolize or similarly control the production of a product feature and thereby inhibit legitimate competition in the manufacture of that good. Patent protection does secure a firm a monopoly over new product designs or functions so that the firm may realize some profit on its innovation -- but only for a limited time that foresees, upon the patent’s expiration, entry of legitimate competition into that good’s market. Convoluting the legal protections available by extending trade dress protection to a functional design that should be protected only by patent, and not trademark, laws would extend patent protection into the infinite future. Such a move by courts would deal a severe blow to competition, the longstanding and laudable raison d’ệtre of both of these sets of regulations.
In the end, the facts of Bob’s case were dangerously resonant of liability under the reverse passing off doctrine. Bob’s discerning lawyer was happy to inform Bob that he has strong defenses against the claims of reverse passing off and trade dress misappropriation. Bob ultimately agreed that it is only fair that he acknowledge and compensate the artist for her stunning creativity -- especially since her work has factored much in the success of his motorized cradle. Mostly, Bob is well satisfied that both the trademark and patent laws exist to protect him and his ingenious invention from infringement by truly questionable characters like Pres. Fillmore (Co. named for a President who was never elected, who supported the use of federal officers for capturing fugitive (a euphemism for “escaped”), slaves, who later opposed President Lincoln and who today has is commemorated with a comic strip duck named “Mallard Fillmore.” I could go on but this is strictly an apolitical column.
Stay Tuned for Next Month's Article!
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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