An Alternate Approach to Channeling

ABSTRACT Intellectual property law has developed a variety of doctrines to police the boundaries between various forms of protection. Courts and scholars alike overwhelmingly conceive of these doctrines in terms of the nature of the objects of protection. The functionality doctrine in trademark law, for example, defines the boundary between trademark and patent law by identifying and refusing trademark protection to features that play a functional role in a product's performance. Likewise, the useful article doctrine works at the boundary of copyright and patent law to identify elements of an article's design that are dictated by function and to channel protection of those features to the patent system. These are important doctrinal tools, and they play valuable roles in the overall intellectual property system. These channeling doctrines, however, reflect an incomplete sense of the interplay between various modes of intellectual property protection. Because they focus on subject matter, the existing channeling doctrines only prevent parties from claiming multiple forms of protection for particular features. They therefore ignore firms' ability to use various intellectual property rights as alternative appropriation mechanisms even when those rights apply to different aspects of a product or service. This Article considers how, if at all, this use of intellectual property rights as alternative appropriation mechanisms ought to inform the boundaries of the various intellectual property regimes. In particular, it considers whether alternative channeling doctrines--ones that would force claimants to elect among types of protection even when those forms apply to different features--are appropriate. TABLE OF CONTENTS INTRODUCTION I. EXTANT BOUNDARY-POLICING DOCTRINES IN IP LAW II. IP RIGHTS AS COMPLEMENTARY OR SUBSTITUTE APPROPRIATION MECHANISMS III. ACCOUNTING FOR SUBSTITUTE APPROPRIATION MECHANISMS A. Are Overlapping Economic Benefits a Problem? B. Taking Interaction into Account 1. A New Doctrine of Election? 2. Cross-Boundary Accounting CONCLUSION INTRODUCTION Most discussions of the boundaries of intellectual property (IP) law deal with geographic boundaries--the extent to which IP rights in one country ought to reach activities in another-or subject matter boundaries--the nature and scope of particular IP rights, especially when multiple IP rights might be implicated. This Article focuses on the boundaries of particular forms of protection, but it does so in a somewhat different way. Rather than focusing on the forms of protection available for particular features or types of objects, it focuses on the ways firms can use different forms of IP protection as complementary or alternative appropriation mechanisms, even when the various types of protection apply to different features of a product. I argue that intellectual property theory and doctrine fail to account for the economic complementarity (and even redundancy) of IP rights, and that policymakers must take account of this type of overlap to a much greater extent in shaping the boundaries of intellectual property protection. I. EXTANT BOUNDARY-POLICING DOCTRINES IN IP LAW Several doctrines within intellectual property law attempt to reduce the incidence of overlapping rights. These doctrines define the boundaries of particular rights in terms of the subject matter eligible for protection, and they attempt to channel protection of particular subject matter into one regime or another. The boundaries these doctrines enforce, however, are defined exclusively in terms of the object of protection. The functionality doctrine in trademark law, for example, polices the boundary between trademark and patent law by identifying features of a product's design or packaging that trademark law will not reach because they are "essential to the use or purpose of the article . …