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					     Defenses

Intro IP – Prof Merges

       4.2.09
                  Agenda

• Genericide

• Functionality

• Abandonment

• Parody/Nominative Use
William L. Murphy, who was born in Columbia, California,
  near Stockton on January 1, 1876, moved to San Francisco
  at the turn of the century. He lived in a one-room
  apartment that had a standard bed taking up most of the
  floor space. Because he wanted to entertain, he began
  experimenting with a folding bed, and applied for his first
  patent around 1900.
The "Murphy Wall Bed Company" of California came into
  being that year.
The first of the folding beds were manufactured in San
  Francisco. In 1918, William Murphy invented the pivot
  bed that pivoted on a doorjamb of a dressing closet, and
  then lowered into a sleeping position - some of which are
  still in use today.
During the 1920's and 1930's, the popularity of
 the Murphy Bed was at its peak and in 1925
 the company moved its corporate
 headquarters to New York City and became the
 Murphy Door Bed Company, Inc. In the 50's
 and 60's, the beds were sold primarily as a
 specialty item for builders. William K. Murphy,
 son of the founder, took over as president. In
 the 70's this attitude changed dramatically…,
 focusing attention once more on the problem
 which William L. Murphy wrestled with in 1900
 - how to make the most of limited space.
          Genericide doctrine

• Marks “born generic” (e.g., Video Buyer’s
  Guide) vs. those that become generic
  (Thermos, cellophane)

• Difference in burden of proving genericness

  – Burden on defendant/accused TM infringer in
    cases of “genericide by common usage”
       Evidence of genericness

• PTO decisions

• Dictionary listings

• Examples of newspaper and magazine usage

  – Websites, blogs, etc. – the next frontier
           K twist to the case

• Defendant enjoined from using “Murphy
  Bed” because of contract that prohibited it

• Why is defendant situated differently than a
  third party?
     The Shredded Wheat case

• Genericide standard (“primary significance”
  test)

• Relationship to expired patent on machinery
  for making the product

  – Watch out for overstatements in the Brandeis
    opinion!
    Antimonopoly case/revision

• “Buyer motivation” standard

• Rejected by Congress, see Lanham Act sec.
  14, 15 USC 1064
               Policing Costs

• Why necessary? (To prevent genericide, if
  possible – see Xerox)

• Always wasted?

  – Maybe not; may create an “alternative standard”,
    e.g., “copier” instead of Xerox
Merges, “Locke for the Masses: Property Rights
 and the Products of Collective Creativity,” 36
 Hofstra L. Rev. 1179 (2008)
              Functionality

• What is the (asserted) TM?

• Why did district court deny injunction for TM
  holder?
                District court

• No TM protection (injunction) here because:

  – (1) No “secondary meaning” for dual spring
    design

  – (2) This design is “functional”
                 Circuit split

• Role of expired patent

  – Eliminates chance for TD protection (Vornado)

  – Does not (other cases)
WalMart v. Samara Bros.
                    Sup Ct

• “A prior patent … has vital significance in
  resolving the trade dress claim” – p. 799

• Strong evidence of functionality

• Heavy burden to show it is merely
  ornamental or arbitrary
           Functionality generally

• “essential to use or purpose of article”

• “affects cost or quality of article”

• P. 801

• Aesthetic functionality: “significant non-
  reputation related disadvantage”
Pagliero v Wallace China – p. 806
             Abandonment

• By nonuse: Major League Baseball

• By non-supervision: Dawn Donuts
          Abandonment facts

• No licensing by Dodgers until 1981

• 3 restaurants opened 1988
                2 year rule
• 15 USC 1127

• “Warehousing” – not okay

• Resumption of use – may revive the mark

• P. 812-13
 Supervision of licensees – Dawn
             Donut

• Definition of abandonment: 15 USC 1127

• Quality control rationale: p. 817

• Relate to merchandising industry . . .
                 Standard
• Likelihood of confusion – not here

• 1st Amendment issues: not reached

• Dilution: noncommercial use, p. 826
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