The Battle of New Orleans and the Future of IP
The War of 1812 was over long before the first shots of the Battle of New Orleans rang out. As in many wars of that era, it took months for the good news to reach the front lines. Likewise, the war to protect intellectual property from those who would trade on the hard work of others has ended, with a whisper, on September 13, 2012. Battles may yet rage but the war is already over.
On that day, a little noticed decision by the Indiana Supreme Court vastly expanded the ability of IP owners to protect their property. In effect, this ruling allows felony criminal sanctions to be imposed on any person or company in the world who sells or delivers merchandise to Indiana that bears any “object, marking or symbol of right, value, privilege or identification.”
Merchandise such as gun sights, that had previously been protected solely by patents, for a period of seventeen years, can now be protected by documenting the products contain one or more of these “objects, markings, or symbols”.
“Trade Dress”, which is simply the “look and feel” of a product, squarely falls within the Court’s ruling. What used to be a matter for lawyers to battle over, in civil courts, is now a felony, with penalties of up to eight years in state prison.
What gives real teeth to this new ruling is that the Court established the authority of Indiana Prosecutors to reach out to the uttermost parts of the earth and file criminal charges against those who violate Indiana law. Chinese and European counterfeiters will now have to consider the possibility they will face international arrest warrants whenever their merchandise is shipped into Indiana. Travel outside of China will be virtually impossible if US warrants await them. Their newfound wealth will suddenly be of limited value.
Can someone “steal” or “control” intellectual property when it hasn’t actually been taken away from it’s owner? The Court clearly held that it is possible to exercise unauthorized control by encumbering intangible intellectual property and went on to affirm that property is anything of value. The result is a powerful tool that will be brought to bear against anyone who dares to trade upon the “good will” of another.
Further, by defining “written instrument” as “any object, marking or symbol of right, value, privilege or identification”, both civil and criminal protection was extended to ANY indices that could embody good will or identity, even if they do not rise to the level of a trademark.
The bottom line is that owners of almost every product you can think of can protect virtually any significant marking, shape or symbol on a product, so long as it embodies some element of value, privilege, right or identification. Such indices constitute a written instrument, protected under this ruling.
Combine this with the ability to criminally charge any person on earth who directly or indirectly ships such written instruments into Indiana and you have a “super weapon” that can draw counterfeiters from any country on earth into the crosshairs of Indiana prosecutors.
This ruling adds a brand-new category of protection for intellectual property, avoiding many of the pitfalls and limits of patents, copyrights and trademarks. In Indiana, intellectual property is now considered real property, deserving protection under the law in exactly the same way as your car, watch or money.
Almost three dozen states have counterfeiting/forgery statutes that are virtually identical to Indiana’s. Like the first storm cloud that moves over the horizon, Indiana is the first of these states to extend such broad powers to state prosecutors. The others will soon follow.For some, this will be seen as a great victory. For others, it will appear as a significant expansion of the State’s authority to control international and domestic commerce. For all, however, La guerre est finie.