Of Trolls, Orphans, and Abandoned Marks: What’s Wrong With Not Using Intellectual Property?

Abstract

The question whether intellectual property (“IP”) rights should require use is a pressing one today. Neither patent nor copyright law formally requires that the IP owner actually use the patented invention or copyrighted work. Yet use would seem necessary for a work to reap the social benefits that justify granting exclusive rights. Trademark law does require use, but it sometimes protects marks even when mark owners have ceased using them. This messy state of affairs has come under considerable pressure in recent years. Critics condemn patent assertion entities, commonly known as patent trolls, for asserting patents that they do not commercialize or use themselves, and some of these critics advocate a general use requirement to handle the problem. In copyright, the problem of orphan works has become particularly salient with the rise of digital technology and user-generated content, and the optimal solution involves tricky questions bearing on use. Trademark law also exhibits confusion about use and nonuse in the area of trademark abandonment. In particular, courts have been unable to develop a coherent approach to abandonment by nonuse when the abandoned mark retains substantial residual goodwill. This Article breaks new ground by focusing on use from the perspective of the utilitarian and nonutilitarian theories that justify IP rights and by using this perspective to develop a general framework for analyzing questions of use and nonuse across patent, copyright, and trademark law. When the issues are examined at the normative level, it becomes clear that a general rule conditioning IP rights on use across-the-board is not desirable. Any use requirement should be tailored to the nature of the specific problems that nonuse creates. In keeping with this insight, the Article examines the patent troll, orphan work, and residual goodwill problems and proposes sensible solutions tailored to each.