Copyright and Trademark Misuse

Copyright and trademark misuse are relatively new doctrines, which
find their roots in the doctrines of unclean hands and patent misuse.
Despite a shared origin, copyright and trademark misuse have evolved
separately. While courts addressing these legal theories have often looked
to the patent misuse doctrine for guidance, many courts have noted the
limited nature of such an analogy given that c opyrights and trademarks
differ from patents in several important ways. For example, the scope and
nature of copyright and trademark exclusivity, and the way those rights
are obtained, differ from their patent analogs. The doctrines also differ in
that patent misuse has been addressed in statute, whereas, copyright and
trademark misuse have developed in case law.
Section VI.A, the copyright misuse section of this chapter, describes
the history of the copyright misuse defense and examines the current
status of the doctrine. It then discusses the following related issues: (1)
standing requirements, (2) whether copyright misuse may be asserted as
a defense or an affirmative claim for relief, (3) antitrust and public policy
rationales for copyright misuse, (4) common types of copyright misuse,
and (5) purging misuse.
Section VI.B, the trademark misuse section of this chapter, compares
trademark misuse to patent and copyright misuse and sets forth the
historical background of trademark misuse’s foundation in the unclean
hands doctrine. It then reviews various types of trademark misuse.
A. Copyright Misuse
Copyright misuse, like patent misuse, is an equitable doctrine that
permits courts to “withhold their aid where the plaintiff is using the right
asserted contrary to the public interest.”1 The copyright misuse doctrine
evolved out of a long line of patent misuse cases.2 The type of conduct
1. Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 492 (1942), overruled
in part on other grounds, by Ill. Tool Works v. Independent Ink, 547 U.S.
28 (2006).
2. See id. at 494.
194 Intellectual Property Misuse
that might constitute copyright misuse has been described, in language
similar to that used to describe patent misuse, as attempting “to secure an
exclusive right or limited monopoly not granted by the [Copyright or
Patent] Office and which it is contrary to public policy to grant.”3
The doctrine of copyright misuse is evolving. The United States
Supreme Court has not yet recognized copyright misuse, and Circuit
Courts of Appeal are split between those that have expressly recognized
the doctrine and those that have not. However, no Circuit has expressly
rejected copyright misuse as a matter of law. Currently the Third, Fourth,
Fifth, Ninth, and Federal Circuits have affirmatively recognized copyright
misuse, and lower courts in nearly every other circuit have implicitly
recognized the doctrine. The scope and nature of a copyright misuse claim
are less settled.
1. The History of Copyright Misuse
The history of copyright misuse provides important context in
understanding the current status of the doctrine.
a. Pre-Lasercomb Case Law
Although it has never explicitly addressed copyright misuse, the
United States Supreme Court has addressed conduct involving tying of
copyrights in two separate antitrust cases: United States v. Paramount
Pictures4 and United States v. Loew’s, Inc.5 In Paramount Pictures, the
Court stated:
Block-booking [of feature films] prevents competitors from bidding for
single features on their individual merits. The District Court felt it illegal
for that reason and for the reason that it “adds to the monopoly of a
single copyrighted picture that of another copyrighted picture which
must be taken and exhibited in order to secure the first.” That
enlargement of the monopoly of the copyright was condemned below in
reliance on the principle which forbids the owner of a patent to condition
its use on the purchase or use of patented or unpatented materials. The
court enjoined defendants from performing or entering into any license
in which the right to exhibit one feature is conditioned upon the
3. Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 977 (4th Cir. 1990)
(quoting Morton Salt, 314 U.S. at 492).
4. 334 U.S. 131 (1948).
5. 371 U.S. 38, 50 (1962).
Copyright and Trademark Misuse 195
licensee’s taking one or more other features. We approve that
Subsequently, in Loew’s, the Supreme Court stated that “[t]he principles
underlying our Paramount Pictures decision have general application to
tying arrangements involving copyrighted products.”7 In Sony Corp. of
America v. Universal City Studios,8 the Supreme Court denied a copyright
contributory infringement claim upon the determination that the allegedly
infringing product was a product having substantial non-infringing use.
Its analysis was based on the patent contributory infringement statute, 35
U.S.C. § 271(c), which it applied by analogy because of the close
relationship between patents and copyrights.9 The court noted, however,
that applying patent principles to copyrights had to be done with caution
because of important substantive differences between the two forms of
intellectual property.10
Lower courts have interpreted Paramount Pictures and Loew’s in
conflicting ways. While the Federal Circuit stated that “the United States
Supreme Court has given at least tacit approval of the defense,11 a district
court noted tha t “the Court, however, did not us e the opportunit y [in
Loew’s] to create a copyright misuse doctrine.”12
The Supreme Court’s decision in Broadcast Music v. Columbia
Broadcasting System13 also provides context for understanding the
doctrine of copyright misuse. In that case, the plaintiff raised the
copyright misuse doctrine as an adjunct to a private antitrust action,
seeking a declaratory judgment that the defendants misused their
copyrights through blanket licensing practices.14 The Second Circuit
Court of Appeals, reversing a lower court decision, held that the
defendants’ blanket licensing practices constituted per se price fixing and
6. 334 U.S. at 156-58 (citations omitted).
7. 371 U.S. at 50.
8. 464 U.S. 417, 439-42 (1984).
9. The patent contributory infringement doctrine and its relationship to
misuse are described in Chapter I.
10. See Sony Corp., 464 U.S. at 439 n.19.
11. Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832, 846 (Fed. Cir.
1992) (citing Loew’s, 371 U.S. 38).
12. Broadcast Music v. Hearst/ABC Viacom Entm’t Servs., 746 F. Supp. 320,
328 (S.D.N.Y. 1990).
13. 441 U.S. 1 (1979).
14. See id. at 6 & n.7.

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