INTELLECTUAL PROPERTY OUTLINE
FALL 2008
TRADEMARKS
I.
Trademark Basics
a. What is a Trademark?
i. Definition of a Trademark
1. Any word, name, symbol device, or any combination thereof, which is used to
distinguish the goods of one person from goods manufactured or sold by others,
and to indicate the source of the goods, even if the source is unknown
b. What are the Purposes of Trademark Law?
i. To protect the public
1. Notions of fair competition (see Qualitex case)
2. Protection of consumer
ii. To protect the goodwill in a mark
iii. There are always three parties: plaintiff, defendant, and public interest
c. Lanham Act of 1946
i. Section 2(f): Registration
1. 5 years of uninterrupted use is prima facie evidence of secondary meaning
ii. Section 2(d): Likelihood of confusion
iii. Section 2(e): Secondary meaning
d. Trademark Law Revision Act of 1989: NOTE CHANGES AFTER 1989
II.
What Can be Protected as a Trademark?
a. Qualitex Company v. Jacobson Company (1995)
i. Facts: Since 1950s, Qualitex used special green-gold pad for dry cleaning presses. In
1989, Jacobson began selling similar green-gold pads.
ii. Issue: Is COLOR protectable as a trademark?
iii. Holding: Color is not protectable until it develops a secondary meaning (acquires
distinctiveness)
b. See spectrum of distinctiveness discussion, below
c. Other Registered Trademarks
i. Fragrances (if distinctive enough)
ii. Sounds: ex: NBC chimes
iii. Location on Goods: Levi Strauss jeans registration denied
iv. Slogans: tricky
v. Titles: as a general rule, not copyrightable
vi. Packages and Product Design: could indicate a source
vii. Buildings: Have to overcome problems of distinctiveness and functionality
viii. Product depictions: 2D characters
III.
Trademark Use
a. Blue Bell v. Farah Mfg Co (1975): The Common Law Standard for FIRST USE (PRE 1989)
i. Facts: 2 parties both using TIME OUT mark.
ii. External Sales are necessary to establish use (pre-1989)
b. WarnerVision Entertainment v. Empire of Carolina (1996)
i. Facts: Empire filed ITU and Warnervision then made use of REAL WHEELS mark after.
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ii. Holding: Warner prevails on the grounds that they are making use and Empire is not.
1. Third parties can make use in the interim between intent-to-use filing of
application and registration
a. Can’t enjoin mark that has ITU pending
b. BUT, ITU applicant can’t prevent others from using it either, in case the
ITU applicant fails to follow through
2. “As long as an ITU applicant’s privilege has not expired, a court may not enjoin it
from making the use necessary for registration on the grounds that another party
has used the mark subsequent to the filing of the ITU application”
iii. Case is significant because it effectuated the use of Section 7(c): date of filing application
is prioritized when mark is registered
1. NOTE: Section 7(c): does not apply to prior user, prior filer, or foreign applicant
situations
2. NOTE: Today, user has to stop using mark once ITU gets registered
IV.
Trademark Registration
a. Kinds of Applications
i. Intent-to-use applications
ii. Use applications
iii. What Must be Provided
1. For both applications, must provide
a. What the MARK is
b. Goods and services
c. Applicant name
d. Date of First USE
e. Specimen: example of the mark as it is actually used
b. Pre and Post 1989: Applications
i. PRE 1989
1. Before 1989, there were only USE applications
2. “Token use” was sufficient to support an application
a. Problematic: companies would race to come out with a specimen
ii. POST 1989
1. Intent-to-use applications came out
a. Do not need to provide date of first use or specimen (can be provided
later)
b. Standard changed from TOKEN USE to BONIFIED INTENT TO USE
c. Trademark Registration Process
i. File an application
ii. Review by PTO examiner
1. If there is an issue examiner files an OFFICE ACTION
a. Have 6 months to respond to the office action to explain why the
opposition should be rejected
b. If examiner agrees, published for opposition (proceed to step 3)
2. If NOT goes to TTAB (Trademark Trial and Appeal Board) (all of this is in
paper, never have live witnesses)
a. If TTAB rules for you: published for opposition
b. If TTAB rules for examiner, options for appeal through:
i. Federal Circuit (more like an appeal) OR
ii. District Court: de novo action in federal court
iii. If there are no issues at all, it gets published for opposition
1. If use-based application, gets registration (assuming no opposition)
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2. If intent-to use application, get notice of allowance
a. If you file a statement of use, get a registration
i. Statement of use: when you file:
1. Date of first use
2. Specimen
iv. Anytime after a registration is issued, can file a petition to cancel through the TTAB
1. If you file an intent-to-use application and you make use of it before you get to
the registration, can file an “amendment to allege use”—this converts application
to use application
2. Amendment to allege use: converts intent-to-use application to use application
d. Trademark Renewal
i. How long does a trademark last for?
1. 10 YEARS
ii. How do you renew a trademark?
1. Section 9 allows you to renew a trademark
a. Registrations can be renewed forever
2. Between the 5th and 6th anniversary of trademark, have to file an affidavit of use:
Section 8
3. After the 5th anniversary, can also file an affidavit of incontestability: Section 15
a. Section 33(b): potential exceptions to incontestability
V.
Limits on Registration
a. Trademark Protection: Level of Distinctiveness
i. Higher levels of distinctiveness for a mark give it greater protection: thus, if a mark is
higher on the level of distinctiveness, it is easier to get protection for mark
ii. What are the levels of distinctiveness?
1. Coined/fanciful
a. Words that don’t have a dictionary meaning
i. Ex: Kodak, Xerox
b. Level said to have highest level of protection
2. Arbitrary
a. Mark is arbitrary if it has NO meaning whatsoever in relation to goods and
service
b. Ex: Word “Apple” is arbitrary as applied to computers (though generic to
fruit)
3. Suggestive
a. Requires some level of connection or imagination be made
b. Most easily contrasted with descriptive very hard line to describe
i. Ex: Case law that says “Ivory” for soap is descriptive for soap—
but there is an argument that it may be suggestive
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4. Descriptive
a. Merely describes the nature or characteristic of the goods and services
b. Need to show secondary meaning and acquired distinctiveness to get
protected
i. Can look to (See Sun Oil, below)
1. Consumer surveys
2. Advertising/PR expenditures
3. Time/History of using the mark (5 years typically = 2d
meaning)
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4. Almost any conceivable factor can be brought in (ex:
good/bad faith, relationship between the parties, etc.)
c. Most geographic terms and surnames are put here arbitrarily until evidence
of secondary meaning
d. Ex: Words that are laudatory are generally treated as descriptive
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5. Generic
a. Term is generic if it describes a category of goods and services
i. Ex: apple is generic for a fruit, car is generic for an automobile
b. Once a term is generic, then everyone is free to use it
i. To determine if something is generic, use TEFLON SURVEYS:
conduct a survey where surveyee is asked a series of words and
asked whether word is a trademark or generic
1. Need 51% to think term is GENERIC to lose protection
c. Can’t ever be protected
AUTOMATIC PROTECTION AFFORDED TO FANCIFUL, ARBITRARY, AND
SUGGESTIVE MARKS. FOR DESCRIPTIVE MARKS TO GET PROTECTION,
NEED SHOWING OF SECONDARY MEANING
Inherently Distinctive Marks
Coined/Fanciful
Arbitrary
Suggestive
Capable of Becoming Distinctive Upon Secondary Meaning
Descriptive
Never Distinctive
Generic
iii. Protection at the Generic and Descriptive Levels
1. IMPORTANT Lines to Be Drawn:
a. GENERIC: Cannot be protected
b. DESCRIPTIVE: in order to be protected, have to prove secondary
meaning or acquired distinctiveness
i. If a mark is descriptive and develops secondary meaning after 6
months, don’t have trademark rights until 6 months
c. COINED, ARBITRARY, or SUGGESTIVE: trademark rights from
Day 1
iv. The Purposes of the Spectrum of Distinctiveness
1. Allows marks to convey single sources (and allow consumers to form
expectations regarding source)
2. Denies generic marks protection in order to foster competition by allowing all
companies to use basic descriptors
3. More about producer (source) than the product!
b. King-Seely v. Aladdin (1963): The Test for Generic-ness
i. Facts: KS tried to stop Aladdin from using “thermos”
ii. Issue: whether the term “thermos” is generic
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iii. Holding: Aladdin could use “thermos” but not Thermos; and had to prefix it with Aladdin
c. In re Budge Manufacturing (1988): The Test for Deceptiveness
i. Facts: Budge appeals from the decision to refuse to register LOVEE LAMB for
automotive seat covers because it is deceptive since the goods are made from synthetic
fibers
ii. Holding: Rejects registration—the MARK alone must stand, not the goods and services
iii. Test used for deceptiveness
1. Is the term misdescriptive of the character, quality, function, composition, or use
of the goods?
a. COURT: LAMB is misdescriptive of the goods since the covers are not
made from lamb or sheep products
2. If so, are prospective purchasers likely to believe that the misdescription actually
describes the goods?
a. COURT: Budge makes goods from sheepskin—purchasers could believe
that the LAMB means that the covers are made from that
3. If so, is the misdescription likely to affect the decision to purchase?
a. COURT: Evidence shows that the natural fabric is more expensive than
the synthetic kind—thus, the mis-representation is likely to affect the
decision to purchase
iv. Holding: Registration rejected
d. In re N.A.D. (1985): The Test for Likelihood of Confusion
i. Facts: 2 prior registrations under another company NARCO, NARKOMED Company
tried to cancel them given consent of registrant.
ii. Issue: Is there likelihood of confusion?
iii. Holding: NO
1. A mere assumption that confusion is likely will rarely prevail against
uncontroverted evidence from those on the firing line that it is not
2. Only very sophisticated purchasers would buy with great care and unquestionably
know the source of the goods—there would be no likelihood of confusing source
merely by reason of the similarity of between NARCO and NARKOMED
e. Application of Sun Oil (1970): Proving Secondary Meaning
i. Facts: PTO refused to register CUSTOM-BLENDED for gasoline on the ground that the
mark is merely descriptive of the applicant’s goods within the meaning of section 2(e)(1)
and the evidence submitted has not clearly established a secondary meaning (denoting
distinctiveness)
ii. Issue: Is the mark descriptive or distinctive?
iii. Holding: Descriptive
1. There is no question that CUSTOM BLENDED has a merely descriptive
significance in that it will immediately indicate to patrons of applicant’s service
stations that the various grades of gasoline dispensed thereat are custom blended
to their needs and requirements
iv. Tests for Secondary Meaning
1. Consumer Surveys: Percentage of people that signify “custom blended” with
Sunoco
2. Advertising
a. General advertising: money spent on brand
b. Advertising directed toward the feature
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3. Sales: numbers on how much of the product has sold
4. Third Party Mentions: look to the media (ex: if the media is able to say “three
strips” and not explain that it references adidas, then secondary meaning is
established)
v. A Note on Secondary Meaning
1. Definition: arises when the relevant consuming public has been exposed to use of
the descriptive mark enough to recognize the mark not just in its primary,
descriptive sense, but also as an indication of the source of the product or service
2. Lanham Act § 1052: proof of substantially exclusive and continuous use of a
descriptive mark on goods or services for 5 years may serve as prima facie
evidence that the mark has attained secondary meaning
VI.
Abandonment
a. How long do you have to prove abandonment? Typically 3 years
b. SECTION 45: Non-Use and Loss of Distinctiveness Two Types of Abandonment
i. Non-Use
1. A mark shall be deemed to be abandoned when it use has been discontinued with
intent not to resume such use (inferred from circumstances)
2. Nonuse for 3 consecutive years shall be evidence of abandonment
ii. Loss of Distinctiveness
1. Any course of conduct of the owner, including acts of omission as well as
commission, causes the mark to become the generic name for the goods or
services on or in connection with which it is used or otherwise to lose its
significance as a mark
a. No one firm should be entitled to make the mark their own, since it is
incapable of indicating source
VII.
Trademark Infringement
a. McGregor v. Drizzler (1979): The Test for Likelihood of Confusion
i. Facts: McG began selling DRIZZLER mark on golf jackets in 1949, registered in 1965,
and Drizzle Inc. selling DRIZZLER on women’s jackets since 1969. Suit for
infringement.
ii. Holding: McG is denied relief due to lack of likelihood of confusion
1. Because the goods are concededly not competitive, McGregor’s sales of
DRIZZLER jackets cannot be expected to suffer (see factor test employed)
iii. The Test for Likelihood of Confusion
1. Strength of mark
a. Degree of inherent distinctiveness on the spectrum
i. Effectively, this means that arbitrary, distinctive, and highly
famous marks are granted a broader scope of protection than
weaker marks
b. Level of acquired distinctiveness (can mean secondary meaning): how
well known is it?
c. Either conceptual strength or commercial strength
2. Similarity of marks
a. Court tends to look at it in a way that is most helpful to the outcome:
marks in their entireties, or, one particular factor that might be
predominant
b. Analysis: sight, sound, meaning trilogy (whichever is most important in
the context)
i. Are they similar in appearance?
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3.
4.
5.
6.
7.
1. Ex: Two marks consisting of logos based on the human eye
and two marks involving a teardrop shaped cartoon
character were held confusingly similar even though they
were not identical
ii. Are they similar in pronunciation?
1. Ex: the mark COCA-COLA was held infringed by the mark
CUP-O-COLA
iii. Are they similar in meaning?
1. Ex: The mark TORNADO on wire fencing was held
confusingly similar to the famous CYCLONE mark for the
same product
Similarity of goods and services
a. The more similar they are conceptually, the more likely that people will
think they are related
b. With that relatedness, would people be more likely to believe that a jacket
is related to a more expensive coat?
c. With licensing/branding, that relatedness is broken down
i. “Bridging the gap” how similar are the goods and services and
is the plaintiff likely to expand?
ii. Today: are the goods and services related and is there some
affiliation of sponsorship
Similarity of channels/trade (advertising/marketing)
a. The more likely people are to experience them: determine whether the
channels of trade overlap
b. Often looked at with conjunction with sophistication of purchasers (ex:
NarcoMed where purchasers were doctors)
Sophistication of purchasers
a. Usually not a controlling factor—look at impulse purchasers on one end of
the spectrum to sophisticated purchasers (medical equipment, etc)
i. Ex: A court would be likely to hold the mark BAZOOKA for
bubble gum to be infringed by a mark like BAZOOM, considering
the relative unsophistication of the average bubble gum purchaser.
Intent
a. Not required
b. Evidence of intent to trade on goodwill can be significant evidence
creating a likelihood of confusion
Actual confusion (surveys)
a. Not required
b. Surveys are used in almost every piece of trademark litigation—play a
significant role in almost every case
c. Important issue: how much confusion do you have to prove?
i. 50% is considered a slam-dunk, even 20-30% is considered very
good
1. Plenty of courts will see 10-15% as sufficient
ii. Courts aren’t very sure that the factors do a great job of replicating
the marketplace why surveys have taken a predominance over
time
iii. Confusion as to what?
1. Source: Where did it come from? Who made it?
2. Potential customers: Who is in the market for a type of
product?
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3. Initial interest: Ds initial use of P’s mark gave D the
opportunity to make its pitch to customers seeking P’s
goods
4. Post-sale: Knock-off issues
5. Affiliation, connection, or sponsorship
6. Lingo
a. Proximity of products
b. “Bridge the gap”
c. Quality of D’s product
Harms from Likelihood of Confusion:
a) Diversion of sales
b) Limitation of expansion
c) Harm to reputation
b. Adidas v. Payless I (2001): The Test for Strength of Mark
i. Facts: Payless sold similar 3-stripe shoes. 1994 agreement—Payless agreed to stop
selling 3-striped double serrated shoes—began selling 4 and 2 stripe shoes. Adidas sued
for infringement.
ii. Holding: Adidas prevails on unique theory PROF. CASE
1. Adidas prevailed on the loss of perceived quality, associations, and loyalty
associated with the brand
a. CRUX OF ADIDAS ARGUMENT
i. Mark was strong: ads, etc.
ii. Similarity of the marks: surveys, etc.
iii. Similarity of the goods: shoes
iv. Similarity of channels of trade
1. While they were sold in different stores, wasn’t a factor in
post-sale context
2. Fair amount of material that in trying to go upscale, Payless
had begun to advertise in a variety of publications that
adidas also advertised in
a. President discussed that they were establishing a
“house of brands”
b. Want to build a stable of brands that would resonate
with consumers
v. Sophistication of purchasers: evidence of recognition, attention
people paid
vi. Level of consumer care relatively high—looked to Payless
research that showed there was low involvement purchase
vii. Issue of actual confusion: use of survey evidence
viii. Use of Experts (see below)
iii. Use of Experts
1. Awareness: How well do people know the brand?
a. Distribution considerations
b. Adidas argument: because Payless was making it appear that there were
more Superstars out there than there really were, was HARMING to the
brand (harm in making something seem more ubiquitous—ideas of
exclusivity)
2. Associations: How do people relate to the brand?
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a. Adidas: viewed as a Heritage brand, or a pioneer brand
i. People had good associations with it—certain message to it
ii. Associations that would be harmed if it was appearing in a context
that didn’t seem consistent with the brand
3. Loyalty: If the associations are harmed, then loyalty will go down
4. Perceived Quality: Do people believe in the virtue of the brand?
VIII.
Trade Dress and 43(a)
a. Trade Dress: What is It?
i. Definition: refers to characteristics of the visual appearance of a product or its
packaging (or even the facade of a building such as a restaurant) that may be registered
and protected from being used by competitors in the manner of a trademark.
1. These characteristics can include the three-dimensional shape, graphic design,
color, or even smell of a product and/or its packaging.
ii. The Two Categories of Trade Dress
1. Product packaging trade dress: includes combination of packing elements (such
as color, design, artwork, and graphics) and the overall appearance of the
product’s packaging; and
2. Product feature trade dress: includes one or more of a combination of features
of the product itself. A product’s producer may claim the overall configuration of
the product as its trade dress, or individual aspects of its appearance
3. Overall trade dress of a business: total image of the business, which may
include things as the shape and appearance of the building, the business’s interior
design and décor, signs, and the workers’ uniforms
iii. Distinguishing Product Design from Product Packaging
1. In most cases it should be quite easy to distinguish product design from product
packaging.
a. For instance, imagine chocolates shaped in the form of jungle animals and
sold in an octagonal green and gold box
b. The animal designs for the chocolates themselves are product designs, and
can only be protected if the merchant can prove secondary meaning
c. The BOX, however, is plainly packaging, and can be protected if it is
considered inherently distinctive, regardless of secondary meaning
2. Of course, not all categorizations will be easy
a. Wal-Mart indicates that “to the extent there are close cases, we believe
that courts should err on the side of caution and classify ambiguous trade
dress as product design, thereby requiring secondary meaning.”
b. Wal-Mart Court distinguished the earlier decision of Taco Cabana by
noting that “the décor of a restaurant, seems to us not to constitute product
design. It was either product packaging…or else some tertium quid that is
akin to product packaging.”
b. Two Pesos v. Taco Cabana (1992): What Rules Apply in a Trade Dress case?
i. Facts: Taco Cabana opened up first restaurant with “festive atmosphere, etc” in 1979 with
5 more restaurants in 1985. Two Pesos opened up in 1985—adopted a motif very similar
to Taco Cabana.
ii. Issue: Is there trade dress protection for a restaurant motif?
iii. Holding: YES
1. Inherently distinctive mark—do not need showing of secondary meaning for this
reason
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iv. Significance: The same rules that apply in a trademark infringement case apply in a trade
dress case
1. Note: Courts are split on whether only competitors have standing, or if consumers
have standing as well
c. Wal-Mart v. Samara Brothers (2000): The Distinction between Product Packaging and Design
i. Facts: Wal-Mart sold replicas of Samara designs for children’s clothing.
ii. Issue: Under what circumstances is product design distinctive?
iii. Holding: A product’s design is distinctive only upon a showing of SECONDARY
MEANING—Wal-Mart loses
1. Design, like color, is not inherently distinctive
2. Product Configuration v. Product Packaging
a. In cases that involve product configuration, as compared to packaging,
there is no such thing as product configuration as being inherently
distinctive have to prove secondary meaning (just like color from
Qualitex)
b. In cases that involve packaging, do not have to prove secondary meaning
c. NOTE COKE BOTTLE: A glass Coke bottle, for instance, may constitute
packaging for those who drink Coke and then discard the bottle, but may
constitute the product itself for those consumers who are bottle collectors
or because they are more stylish
PRODUCT Design
Requires secondary meaning
PRODUCT PACKAGING:
Only trade dress:
1. Trade dress
2. Non-functionality
3. Inherently distinctive
4. No secondary meaning
5. Likelihood of confusion
d. Traffix Devices v. Marketing Designs (2001): Functionality Concerns
i. Facts: MDI developed dual-spring design that Traffix began using
ii. Issue: Trade dress protection?
iii. Holding: NO because functional design
1. Established 2-part test (Inwood Laboratories)
a. Is the feature essential to the use or purpose of the article, or does it affect
the cost or quality of the article?
i. If yes, then functional and no trade dress protection
ii. If no, then Qualitex standard go to b
b. Would the exclusive use of the feature “put competitors at a significant
non-reputation-related disadvantage?”
i. If yes, then there is “aesthetic functionality” and the feature may
not be protected
ii. Need NO answers to BOTH tests!
iv. Significance: To get protection under trade dress, must show non-functionality
1. Courts have split on the test for functionality used under Traffix
e. In Re Morton-Norwich (1982): The Test for Functionality
i. Facts: Appeal from rejection trying to get spray-bottle design protected
ii. Holding: Remanded for finding of distinctiveness
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1. Competitors have no need to simulate the trade dress in order to enjoy all of the
functional aspects of a spray top container
a. Trade dress will only be deemed functional if competitors need to copy it
in order to compete effectively—need to copy if the trade dress design is
superior to the alternatives in function or economy of manufacture
2. Four part test for functionality
a. Is there an expired utility patent that discloses the utilitarian advantage of
the design?
b. Does the designer tout the design’s utilitarian advantages through
advertising?
c. Does the design result from a comparatively simple or cheap method of
manufacturing?
d. Are there alternative ways available to competitors to establish the same
function?
The Tests for Functionality
Traffix (SCOTUS)
Morton-Norwich (CCA for
Fifth Circuit
the Federal Circuit)
Applies Inwood Laboratories Applies a 4-part test:
Applies 2-part test similar to
test:
1-Is there an expired utility
Traffix:
1-Is the feature essential to the patent that discloses the
1-Does the product feature
use or purpose of the article,
utilitarian advantage of the
play a significant, useful role
or does it affect the cost or
design?
in the product other than
quality of the article?
2-Does the designer tout the
indicating source?
If YES, then functional
design’s utilitarian advantages
If YES, then functional
IF NO, then Qualitex: (2)
through advertising?
If NO, then: (2)
2-Would the exclusive use of
3-Does the design result from 2-Are the features a
the feature “put competitors at a comparatively simple or
competitive necessity?
a significant non-reputation
cheap method of
If YES, then functional
related disadvantage?”
manufacturing?
If NO, then protection
If YES, then functional
4-Are there alternative ways
If NO, then protection
available to competitors to
accomplish the same function?
Traffix test does not look at alternatives available to competitors, unlike Morton test
f. Ferrari v. Roberts (1991): Product Design and Trade Dress
i. Facts: Roberts tried to copy the Ferrari frame.
ii. Issue: Infringement?
iii. Holding: Ferrari is entitled to protection
1. Secondary meaning established: design immediately in user’s mind as Ferrari’s
design
a. Evidence of intentional copying creates a presumption of secondary
meaning
2. Likelihood of confusion: confusion at point of sale, confusion as to origin
3. Non-functionality of design: Aesthetic functionality will not preclude a finding
of non-functionality where the design also indicates source
a. Aesthetic functionality limited to jewelry and flatware
b. When a product is purchased primarily because of its aesthetic attributes, a
design that provides a product with an aesthetic advantage in the
marketplace, and which is one of only a few such designs available so that
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others cannot compete effectively without suing it, will be considered
aesthetically functional, and will not be protected as a trademark
To Determine Trade Dress Infringement, consider:
1) Is the trade dress part of the product design or part of the packaging?
2) If design/product secondary meaning is required
a. See Ferrari, Taco Cabana
b. Trade dress that P is trying to protect cannot be functional (See Norton, Traffix)
3) If packaging secondary meaning is not required
a. See Walmart
b. EXAM TIP: Argue both packaging and design (ex: it is probably packaging, but even if
there isn’t, here is evidence of secondary meaning)
IX.
Dilution
a. What is DILUTION?
i. Definition: lessening the capacity of a famous mark to identify and distinguish goods and
services, regardless of the process or absence of competition or infringement
1. Used to reach non-infringing uses that threaten the distinctiveness of a protected
mark
2. INJUNCTION the preferred remedy
b. What is a finding of dilution based on?
i. P’s mark must possess a distinctive quality capable of dilution
ii. P must show a likelihood of dilution (often equated with strength of mark or having
secondary meaning)
c. Mead Data Central v. Toyota Motor Sales (1989): Dilution under STATE Law
i. Facts: Mead Data sued Toyota over use of “Lexus” for cars—Mead already used “Lexis”
for computer program
ii. Holding: Lexis resonates with only 1% of population—no likelihood of confusion
1. Likelihood of confusion required under state law
To determine whether there has been dilution:
1) Is P’s mark distinctive and famous?
a. Distinctiveness: a lot like strength of the mark in likelihood of confusion look to the
broad market
b. Famous: dilution can only be done AFTER the mark has become famous
i. Factors under Lanham 43(c)
1. Degree of inherent or acquired distinctiveness of the mark
2. Duration and extent of use of the mark
3. Advertising/publicity
4. Geographic extent of trading area
5. Channels of trade
6. Federal registration
2) If yes, then determine dilution
a. Blurring: the D’s use whittles away or dilutes the strong, immediate association consumes
have between the mark and the plaintiff
b. Tarnishment: when the use of a similar mark casts the P’s distinctive mark in a bad light
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d. Moseley v. Victoria’s Secret (2003): Dilution under FEDERAL Law
i. Facts: VS sued mom-and-pop shop “Victor’s Little Secret” for infringement.
ii. Significance: Have to show ACTUAL confusion under federal law, not just a likelihood
of confusion
1. Just because someone makes a mental association will not necessarily reduce the
capacity of the famous mark to identify the goods of its owner—that is the
requirement under federal law
X.
Geographic Rights
Three Rules to Always KEEP IN MIND:
1) Common Law Rules: Parties establishing respective geographic rights in separate and remote
geographic areas in god faith (always look at TM rights based on use)
2) Issues revolving around constructive notice: Section 22 what happens after the registration date
and what impact does it have on the junior user?
3) Constructive Use and Section 7(c)
WHAT DO WE DO WHEN USE OR REGISTRATION OCCURRED PRIOR TO 1989?
No Registrations at Play
a. Common Law and Suggestive Marks: No Registrations at Play
i. United Drug Co. v. Theodore Rectanus (1918): Common Law
1. Facts: Senior user using REX mark before junior user. Senior user wanted to
expand into territory where junior user was.
a. Note: senior user: first person to use a mark in trade
2. Issue: Who gets priority in area where there is overlap?
3. Holding: Senior user cannot expand; junior user has rights because it opened in a
remote geographic area in good faith
4. Significance: A junior user who opens up in a REMOTE GEOGRAPHIC AREA
and in GOOD FAITH can establish trademark rights
a. Test for courts today:
i. What is a remote geographic area?
ii. What constitutes good faith?
5. What is a remote geographic area?
a. Customers: Where do the customers come from?
b. Advertising: Does the party’s reputation extend into a certain area?
c. Zone of natural and improbable expansion
6. What is GOOD FAITH?
a. Two ways of thinking about it:
i. Not thinking about it at all
ii. Not bad faith
ii. DESCRIPTIVE MARKS: A caveat
1. IF THE MARKS ARE DESCRIPTIVE—HAVE TO FURTHER ANALYZE
WHETHER AND WHEN THEY DEVELOP SECONDARY MEANING
2. Ex: Person makes use of descriptive mark and is the FIRST to use it. The Second
user comes along and uses the mark—if it is descriptive, have to figure out who
13
develops secondary meaning when and were. It is possible the second user could
have developed secondary meaning first, and it is possible both could have
developed secondary meaning at different times
3. If you do no not have secondary meaning, do not have a basis for priority!!
When the Senior User Registered the Mark BEFORE the Junior User Began Using it
b. Dawn Donut v. Hart Food Stores (1959): The Federal Registration Situation and Section 22
i. Facts: Dawn Donut of MI used “Dawn” on donut mixes since 1922; registered in 1927,
renewed in 1947. Hart Food began using “Donut” on mixes in 1954—operates in 6
counties in NY. D argues that P failed to use mark for 30 years in NY area.
ii. Holding: Cessation of use in a regional market is NOT abandonment under Lanham Act
if there is federal registration—however, cannot stop D use
1. Because no likelihood of public confusion arises from the concurrent use of the
mark in connection with retail sales of doughnuts and other baked goods in
separate trading areas, and because there is no present likelihood that the plaintiff
will expand its retail use of the mark in the market area, P will NOT get relief
under Lanham Act
2. No PERMANENT use: have to give constructive notice should P expand
activities into the 6 county area
a. Cannot stop D’s use of the mark
iii. The DAWN DONUT RULE: If you are a junior user in a remote geographic area who
started using the mark after the date of the senior user’s date of registration, you are
subject to being enjoined when the senior user INTENDS to move into the area
When the Junior User Begins Use before Registration BEFORE the Senior User
c. The LIMITED AREA Defense: Section 33(b)(5)
i. HYPO: Situation gets more complex if JUNIOR USER begins use before registration by
senior user
1. Attack: Go to Common Law Analysis
a. Did junior user open in a separate and remote geographic area in good
faith? If YES, then:
b. What impact would this federal registration have on the parties’ rights?
i. What if it is 6 years later?
1. Registration is incontestable and can no longer be
challenged that junior user had USE prior to registration
ii. Can the junior user keep using the mark?
1. Go to limited area defense
2. The Limited Area Defense and the Problem of Incontestibility: Section 33(b)(5)
a. Even though registration is incontestable, if the JUNIOR USER uses the
mark PRIOR to the date of registration, junior user can still use the mark
in a LIMITED AREA as of the date of registration
Senior User
X
Applicant
Junior User
X
Applicant
Registrant
Registrant
Outcome
Common Law rules
In either of these situations,
where either one is the
applicant, that reg is subject
to being canceled—now,
thrown into concept of
14
R (incontestable)
R (incontestable)
concurrent use proceeding
(Beatrice Foods/Weiner
case)
Limited use doctrine
Limited use doctrine
When BOTH PARTIES have Rights Based on USE
d. Concurrent Use Doctrine: Beatrice Foods and Weiner King
i. Concurrent Use Proceedings
1. When both parties have rights based on use: both parties make use before
registration issues
2. Questions: What is their territory individually? Who gets the territory that is not
accounted for?
a. NOTE: Concurrent use will play out the same pre and post 1989. 1989
just added the requirement for 7(c), but that doesn’t apply to prior users
and prior filers!
ii. Beatrice Foods:
1. The Situation: when 2 parties each have geographic rights—position that junior
user will get confined territory and senior user will get the rest of the United
States
2. Beatrice Foods concurrent use doctrine: general rule in concurrent use
proceedings between 2 applicants is that the senior user is entitled to a registration
covering the entire US, less the area in which the junior user has established
territorial rights
iii. Weiner King:
1. The Situation: Relatively static senior user and a dynamic junior user
2. The Doctrine: Equities favor allowing junior user get the rest of the country—
senior user may be confined
iv. Constructive Notice v. Constructive Use
1. The Process
a. Filing Date
b. Use
c. Registration
i. PRE 1989: Only way registrant had any rights was against
someone who used the mark after date of registration
ii. POST 1989: Constructive USE rights
1. If someone adopts the mark after the filing of application,
then when the registration is issued, constructive use can
stop
2. HYPO: Party A files an ITU that is pending registration.
Party B begins to use the mark. In the post-1989 world,
Party B will be cut off from using the mark by the filing.
2. Constructive Notice v. Constructive USE
a. Definitions
i. Constructive notice: prevents a junior user who begins her use
after the date of senior user’s registration from acquiring any right
to use the mark—confines the right of any senior, unregistered user
to the territory that the user occupied at the time of the registration
ii. Constructive use: prevents a junior user from acquiring any right
to use the mark after the application’s filing date, so long as a
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registration ultimately issues—it does not, however, freeze the
rights of any senior unregistered user
b. Dates
i. Important date for Constructive Notice: Date of registration under
Section 22
ii. Important date for Constructive Use: Date of filing under Section
7C
c. Caveat for Constructive Use and Section 7C
i. SECTION 7C DOES NOT APPLY AGAINST A PRIOR
USER OR PRIOR FILER
1. If someone has used the mark before the filing date or if
someone has filed their own application before the filing
date, then 7C does not apply
2. Have to go to default rules (Beatrice Food, Weiner King,
and CL rules)
e. Sample v. Porrath (1973): The Common Law Approach
i. Facts: Sample, Inc. was established in 1929 and opened first store in 1946 selling a
variety of clothing and other merchandise. Sample Dress Shop opened up in 1934.
Sample, Inc. wanted to open up store 1.5 miles from Sample Dress Shop
ii. Holding: Plaintiffs can open shop.
iii. NOTE: Case is a giant mess because it doesn’t go back to when things started
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GEOGRAPHIC RIGHTS
STEP ONE: Determine the TYPE of mark.
-If descriptive, look to secondary meaning: who established secondary meaning FIRST?
-Establish likelihood of confusion
STEP TWO: Are there any registrations for either party?
IF YES: go to FEDERAL REGISTRATION ISSUES
IF NO: Proceed to COMMON LAW RULES
Common Law Rules:
STEP ONE: Define the senior user’s territory
-Things to look at:
-Customers
-Reputation
-Advertising
-Zone of probable expansion
STEP TWO: Who expanded first?
-If in separate geographic areas, junior user has to show
-GOOD FAITH
-SEPARATE and REMOTE GEOGRAPHIC AREAS
-If junior user is expanding,
-Define senior user’s territory when junior user started to expand
-If senior user is expanding,
-Define senior user’s territory—did they establish territory before senior user?
Federal Registration Issues
STEP ONE: Is this PRE-1988 or POST-1988?
-If Pre-1988, go to Situations A, B, and C
-If Post-1988, go to Situation D, E, and C
STEP TWO: Who made use first?
PRE 1988
Situation A: Senior user registers before junior user, who then makes use. Who has priority?
-Constructive notice applies: junior user was on constructive notice when it adopted the mark
-Dawn Donut Rule: if you are a junior user in a remote, geographic area who started using the
mark AFTER the date of the senior user’s date of registration, you are subject to being enjoined
when senior user INTENDS to move into the area
Situation B: Senior user used the mark and then junior used the mark. Senior user then registered the mark.
Who has priority 6 years later?
-If more than 5 years later: incontestable (note few grounds you can argue)
-Limited area defense (33(b)(5): constructive notice will cut off right to expand
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Situation C: Senior user and junior user are using mark at the same time. One gets registration later and a few
years later questions of priority arise.
-Beatrice Foods v. Weiner King (Concurrent Use proceeding: BOTH MAKE USE BEFORE
REGISTRATION)
-Situation will play out the same whether we are pre/post 1989 because Section 7(c) doesn’t apply to
prior users or filers
-Beatrice Foods: senior user is entitled to a registration covering the entire US, less the area in
which the junior user has established territorial rights
-Weiner King: Relatively static senior user and a dynamic junior user
-Equities favor allowing junior user get the rest of the country—senior user may be
confined
POST 1988
Situation D: Senior user files application and registration issues 2 years later. In between, junior user makes
use. Who has priority?
-Constructive use under 7(c)
-Junior user cannot get rights even if they used mark before senior user: any use after the filing date is
cut off
Situation E: Senior user makes use first, then files app and gets registration. In between use and filing of
application, junior user makes use.
-Constructive use under 7(c) does NOT apply against prior user
-Go back to:
-If incontestable: limited area defense (Situation B)
-Concurrent use proceeding: Beatrice Foods v. Weiner King (Situation C)
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XI.
Defenses to Infringement
a. Abandonment (See discussion, above)
i. Non-use
1. Non-use for 3 years creates prima facie evidence
ii. Loss of distinctiveness
b. Genericness
c. Poor Trademark Management
i. Improper licensing, quality control, failure to police third parties
d. Fair Use Defense:
i. Is there no other descriptive substitute for the TM owners?
ii. New Kids v. News America Publishing (1992): The Three Criteria for Nominative Fair
Use
1. Facts: 2 newspapers used “New Kids” in 2 polls. Case of infringement?
2. Holding: No protection for New Kids
a. Where a D uses a trademark to DESCRIBE the P’s product, rather than its
own, hold that a commercial user is entitled to a nominative fair use
defense provided he meets the following 3 requirements:
i. Product or service in question must be one not readily
identifiable with the use of the trademark
1. Court: MET; Protection for TM does not extend to
rendering newspaper articles, conversations, polls, and
comparative advertising impossible
ii. Only so much of the mark or marks may be used as is
reasonably necessary to identify the product or the service
1. Court: MET; Both polls reference the name only to the
extent necessary to ID them as the subject of the polls—do
not use the distinctive logo or anything else that isn’t
needed to make the announcements intelligible to readers
iii. The user must do nothing that would suggest sponsorship or
endorsement by the trademark holder
1. COURT: MET: the use does not imply sponsorship or
endorsement
iii. Classic example of nominative fair use: an auto repair shop saying they specialize in
fixing “BMWs, Mercedes, etc”
1. Do not confuse nominative fair use from classic fair use:
a. Nominative fair use defense: arises when the D uses the Ps mark to
describe the Ps mark or service
b. Classic fair use defense: may excuse a D from infringement liability when
it has used the Ps mark in its general descriptive (non-trademark) capacity
only to describe the Ds own product
iv. NOTE: Fair Use and The First Amendment (First Amendment as a factor, not a
dispositive bar)
e. Parody and Artistic Expression
i. Definition: Satire; making fun of Ps trademark
ii. Protection:
1. Commercial speech—usually isn’t afforded as much protection as free speech
a. Typically need surveys to show likelihood of confusion
i. However, if you have likelihood of confusion, parody is not a
defense
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XII.
XIII.
b. Must be different enough to allow the public to realize it is a parody
(enough for a connection)
i. Look to the standard of a reasonable consumer
ii. EX: D produced a pornographic film entitled Debbie Does Dallas.
In the film, for at least some of the time, some of the performers
wore uniforms virtually identical to those of the NFL Dallas
Cowboys Cheerleading Squad. The Cowboys sued claiming
infringement of protected trade dress in the uniforms. The court
found a likelihood of confusion, remarking “it is hard to believe
that anyone who had seen Ds’ sexually depraved film could even
thereafter disassociate it from P’s cheerleaders. This association
results in confusion which has a ‘tendency to impugn P’s services
and injure P’s business reputation.”
2. If parody is to be a successful defense, consumers must be aware of the
differences in the marks so that they can appreciate the humor of the defendant’s
parody
f. Functionality
i. Does it create a non-reputation related disadvantage for competitors?
ii. Something that has merely a functional aspect is NOT protectable
iii. See discussion, above
1. To show functionality, must show:
a. Utility of the shape
b. Superior design
c. Cost-effectiveness
d. Need for competition
Remedies
a. Four Types of Remedies
i. Injunctive Relief
ii. Accounting for Profits: gross sales minus direct expenses
iii. Damages
iv. Attorney’s Fees (need a showing of willfulness typically)
b. Section 35
i. Damages: subject to the principles of equity
ii. Accounting for Profits
c. Maltina v. Cawy: The Test for Accounting for Profits
d. Adidas v. Payless II: “Subject to the Principles of Equity”
Cancellation of Registration
a. The Five Year Requirement
i. FIRST FIVE YEARS 15 USC § 1604: during the first five years of a mark’s
registration, a person who believes himself injured by the registration may file a petition
with the PTO to cancel the registration on any ground that would have precluded
registration in the first place
ii. AFTER FIVE YEARS If the mark has been registered for over 5 years, the Lanham
Act provides narrow grounds for cancellation
1. Challenges to the mark’s validity that remain available include:
a. The mark has become generic
b. The mark is functional
c. The mark has been abandoned
d. The registration was obtained through fraud
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e. The mark is deceptive, scandalous, or disparages a person, geographic
rights situation
2. Precluded grounds:
a. The mark is not inherently distinctive and lacks secondary meaning
b. The mark is confusingly similar to a mark or trade name that someone else
used prior to the registrant and continues to use
c. The mark is dilutive of the challenger’s mark
21
PATENTS
I.
Basic Principles of Patent Law
a. What is a Patent?
i. Definition
1. A patent for an invention is the grant of a property right to the inventor, issued
by the Patent and Trademark Office
ii. Rights Under a Patent
1. Constitutional Basis for Patent Law
a. Article I, Section 8, Clause 8: Congress has the power to “promote the
Progress of Science and useful Arts, by securing for limited
times…Inventors the exclusive Right to their…Discoveries.”
i. Congress may only grant an exclusive right to an inventor when
doing so will promote the useful arts
ii. This will only occur when the value of having the invention made
and disclosed to the public outweighs the negative impact of a
monopoly to the public
2. General Rights of a Patent
a. Have a right to exclude others from making the product or practicing the
process
b. Exclude others from using the product
c. Exclude others from selling the product
d. Exclude others from offering for sale
e. Exclude others from importing the product
i. Notes:
1. A patent does not confer a positive right (to sell, etc.)
2. A patent-holder is not required to practice/license the patent
3. Term of a Patent
a. Generally
i. All patents have a limited term of years (of exclusive use; right to
exclude others’ use)
ii. Each country has its own protection (i.e. filing a US patent only
gets you protection in the US)
1. Note: Professor equates strong industrial systems with
strong patent protection and vice versa (i.e. weaker
industrial countries often have registration processes
instead of fully reviewed applications)
b. Applications filed PRIOR to June 8, 1995 (gap date)
i. Patents had a lifetime of 17 years from date of issuance
ii. In an effort to harmonize patent law around the world (GAP
Treaties), this changed
c. Applications filed AFTER June 8, 1995
i. Patents have a lifetime of 20 years from filing date
d. PENDING patents on June 8, 1995: Interim Patents and Applications
i. For those patent applications that were PENDING on June 8, 1995
or those patents that were unexpired as of June 8, 1995 and are still
22
unexpired: the term of patent is 20 years from filing, 17 years from
issuance
ii. Whichever of those 2 dates is the LONGEST
1. Ex: A patent application was filed December 8, 1997. It
issued on December 21, 1999. It was unexpired as of the
GAP date. What is the life of this patent?
a. Option 1: 20 years to filing date = December 8,
2017
b. Option 2: 17 years to issuance = December 21,
2016
c. Term of patent = December 8, 2017
e. Patents are NOT renewable!
f. Patent Litigation
i. In a lawsuit for a patent infringement, exclusively filed in the
federal district court: no single district court for patent litigation
1. The appeals out of the district court go to 1 court of appeals
in Washington, D.C. (CAFC)
ii. For the infringement process, want the broadest possible claim
1. Measure the accused device to various claims
iii. When a patent is litigated, there are 2 defenses that will be raised:
1. “I didn’t do it”: For example, my sandwich doesn’t have
a crimped edge
2. Patent is invalid and shouldn’t have been issued
iii. Types of Patents
1. Utility Patent (“Normal” Patent): issued for the invention of a new and useful
process, machine, manufacture, or composition of matter, or a new and useful
improvement thereof
a. Process (Method)
b. Machine (Device)
c. Manufacture
d. Composition of Matter
2. Design Patent (appearance only): issued for a new, original, and ornamental
design for an article of manufacture
3. Plant Patent (for growing a new plant): issued for a new and distinct, invented
or discovered asexually reproduced plant included cultivated sports, mutants,
hybrids, and newly found seedlings
iv. Components of a Patent: § 112
1. Drawings (4-5 pages of drawings)
2. Specification: written description of the invention
a. Must include an enabling disclosure and the best mode
i. Enabling disclosure: sufficiently written description within the
patent to enable a person having ordinary skill in the art to make
and use the full breadth of the invention
ii. Best mode: best way to make or offer the invention
1. Code § 112(1): Must include the manner and making of the
claimed device and the best mode of making or offering it
23
a. Ex: Best mode for a chair consisting of 4 legs, a
back, and a seat might be molded plastic seat/back
and metal legs
iii. Only the WRITTEN description is used to prosecute a claim (i.e.
drawings are not used)
iv. Used to determine validity
3. Cover Sheet: summary of the information
4. Claim: Most important aspect of the patent
a. Measure and determine the scope of the patent
b. Each claim stated alone in the sense that it represents a definition of the
invention: each claim is in essence its own patent (because infringing a
patent means coming into conflict with only one claim)
i. To infringe this patent, an accused device must fall within the
scope of ONE CLAIM
c. Claims are presented in 2 different forms:
i. Independent claims: claims stand alone and don’t refer to any other
claims
ii. Dependent claims: refers to something else in the patent
d. NOTE: In amending patents, claims can be redrafted, while drawings and
the written description cannot
b. What is Patent Law?
i. Purposes of Patent Law
1. To promote the sciences and useful arts
2. Create a balance of incentives
a. Confer limited protection
i. Allows inventor to earn a return on invention
ii. Encourages commercialization
b. Provide for public disclosure
i. Increases public knowledge
ii. Allows others to build on knowledge (design around)
c. From Invention to Patent: The Steps
i. Conception: Starting with an IDEA
1. Idea needs to be original and start with you
2. The date that you conceive an invention will be the date of your invention
a. Look to the records to prove date of conception (ex: lab books)
ii. Reduction to Practice
1. Basics
a. Definition: Embodiment of the concept of an invention
b. If there is a dispute as to inventorship, can look to diligence from
conception to reduction to practice, must demonstrate diligence about
ownership
2. Two Types
a. Actual RTP: Physical construction of an invented object, or a physical
carrying out of an actual process in a method invention
i. Ex: If the idea is a new type of polyester fabric, you actually make
the fiber
b. Constructive RTP: Filing of a US Patent application
i. Can be just as effective as an actual RTP
iii. Complete Invention
24
1. Once you have RTP, you will have a complete invention
iv. Patentable v. Unpatenable
1. To be patentable, need NUN
a. New
b. Useful
c. Non-obvious
2. Code Sections
a. Code § 101: subject matter must be new and useful
b. Code § 102: Provides the details of what is required to be new
i. Defines what the prior art is: things that came before
1. Must always check the prior art FIRST
ii. Defines novelty
c. Code § 103: Requires the subject matter to be non-obvious
d. Code § 112: Requirements for an acceptable patent application
i. Enabling disclosure: how do you make and use invention?
ii. Must include claims that define the invention
3. Alternative: Trade Secret Protection
a. When something is found to be unpatentable, may still qualify for trade
secret protection
i. Standard: must not be “generally known”
ii. Information must be a secret
iii. No novelty requirement for trade secrets
v. Infringement and Enforcement
1. Law presumes the patent is valid
a. A defendant that wishes to defend on the basis of invalidity, has the
burden of proving that
2. Burden of proving infringement is preponderance; burden of proving validity on
defendant is clear and convincing
3. When suit for infringement is sought, there are 2 forms of relief:
a. Damages
b. Injunctive Relief
II.
Patentable Subject Matter: Code § 101
a. Code § 101
i. What is Patentability?
1. To qualify for a patent, the invention must be the result of human intervention—
you must DO SOMETHING in order to get a patented discovery/invention
ii. What Qualifies as Patentable?
1. Generally, anything is patentable, EXCEPT:
a. Laws of nature (akin to natural elements)
i. Mathematical formulas or algorithms are similar to natural
principles and hence are also not proper subject matter for patents
1. Natural principles are not “invented,” but have always
existed and are thus “discovered”
ii. Ex: E = mc2; Pythagorean theorem; area of a circle
b. Natural/Physical Phenomena
i. Ex: if you discover that if you freeze water, it expands—that is not
patentable
c. Abstract Ideas
25
i. Ex: produce a car that burns less gas—great idea; but how do you
protect that idea?
d. Business Methods
i. Until 1998, business methods were considered not patentable
ii. State Street Exception
1. An inventor can get a patent on the product produced by a
mathematical algorithm if the algorithm’s result is:
a. Useful
b. Concrete
c. Tangible
e. Printed Matter: abstract idea
i. Although arguably within the concept of “article of manufacture,”
printed matter, such as a business form, is not eligible for patent
protection.
1. This is because the underlying item on which the content is
printed, such as a piece of paper or cardboard (called a
substrate in patent jargon) is not itself novel, and the
printed material that appears on the item is considered
insufficient to distinguish it from what has come before.
2. As the Federal Circuit has explained, 'Where the printed
matter is not functionally related to the substrate, the
printed matter will not distinguish the invention from the
prior art in terms of patentability.' In Re Gulack.
3. There is an exception, however, if printed matter is
involved in an invention that derives its chief creative value
from its physical arrangement or structure rather than the
content of the printing."
ii. Ex: A novel arrangement for a book of tickets is patentable even
though it incorporates printed material (the tickets) because its
inventive elements flow from how the tickets are arranged rather
than from what is printed on the tickets.
iii. Something about the product: construction of paper; printing
process—something about it needs to be new as opposed to the
content of the printing
1. Lines on a piece of paper that might help organize
information are not patentable, although useful/helpful
f. The Possibility of Utility is not patentable
g. Scientific Curiosity
i. Note: Medical procedures patents for medical procedures have
not yet won widespread acceptance in the medical profession
2. Chakrabarty: genetically engineered organisms are patentable because “living” is
not the legal question, whether the organism is naturally-occurring is the
important fact
Diamond v. Chakrabarty (1980) - The Court explained that while natural laws, physical phenomena, abstract
ideas, or newly discovered minerals or plants are not patentable, a live artificially-engineered microorganism is.
The creation of a bacterium that is not found anywhere in nature, constitutes a patentable “manufacture” or
“composition of matter” under Section 101. Congress plainly contemplated that the patent laws would be given
wide scope to cover “products of human ingenuity.” Congress intended statutory subject matter to include
anything under the sun that is made by man.
iii. Code § 101: Provides for 2 classes of subject matter for patentable inventions
26
1. Processes
a. New method/new way of producing something that is new
b. New method/new way of producing something that is already known or
old
2. Products/Apparatus
a. Machine: usually contemplates moving parts; piece of equipment that
“does something”
b. Manufacture: something that is made; very often a product of a machine
may even be separately patentable
i. Compositions of Matter: Usually compounds
1. Ex: a new chemical compound; mixtures of chemical
compounds together
a. Naturally occurring substances/mixtures are not
patentable as compositions of matter
b. However, if you make 2 things react together, could
be patentable
2. Composition/compound needs to be the result of HUMAN
intervention
iv. Improvements and New Uses
1. Patentable inventions can concern improvements of products or processes: don’t
need to have a wholly new product
a. Code § 100(b): A process includes a “new use of a known process or
product”
i. Example: Monoxodyl was a useful product in treating high blood
pressure. As people used it, the company that developed it noticed
that people also grew hair. The company then modified the dosage
requirements and it became Rogaine.
2. What type of patent protection is available for the new use of a patented product?
a. Original product itself is not patentable (Monoxodyl is a known
compound)
b. Method of using old product can be patentable
b. Utility
i. Subject matter must be demonstrably useful in a practical, qualitative sense
1. Current, significant, or beneficial use for the invention, or in the case of a process,
the product of a process
a. Cannot be presumed or assumed!
b. It is NOT ENOUGH for the process to have worked and give you the
outcome that you wanted it must come out with a USEFUL PRODUCT
(Brenner)
i. Need demonstrable utility
ii. Code § 101: utility requirement
1. Requires that an invention/discovery has to be new and useful in order to be
patentable
2. Utility is a very practical requirement and measured in a practical sense
a. Must be “demonstrably useful in a practical, qualitative sense”
b. No particular quantum or amount is required
iii. NOTE: The Patent Office does not normally require proof of utility unless you file a
patent application for something a bit extraordinary (ex: perpetual motion machine)
27
III.
Novelty: Code § 102(a) and 102(b)
a. Code § 102(a) and 102(b)
§102. Conditions for patentability; novelty and loss of right to patent
A person shall be entitled to a patent unless-(a) the invention was known or used by others in this country, or patented or described in a
printed publication in this or a foreign country, before the invention thereof by the applicant for
patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or
in public use or on sale in this country, more than one year prior to the date of the application for
patent in the United States, or
i. Code § 102 Generally
1. § 102(a): determines what is an invention and how it is made
2. § 102(b): establishes statutory bars—how you can lose rights to that invention?
3. § 102(c): if the invention has been abandoned, then not entitled to a patent
4. § 102(g): abandonment by “another” inventor in a priority dispute
5. § 102(e): determines the effective filing date of a reference for a US Patent
ii. Novelty Basics
1. Generally, your invention is novel unless a single reference discloses all of the
claimed invention (“anticipation”)
a. This necessitates finding the prior art of an invention: Prior
activities/publications—anything that you can prove that is relevant to an
invention and you can anticipate the invention is obvious (can also use
“reference” or “disclosure”)
i. Should be something that can qualify as a reference that should be
cited—but case law shows that it is usually anything that can be
generally referenced in a patent application
1. Figuring out whether something qualifies as a reference for
prior art
b. From here, then you have to note if the differences between the subject
matter and the prior art are MORE than obvious to someone of ordinary
skill
i. Key Questions:
1. Does the prior art sufficiently enable another?
2. Was the prior art accessible to the public (i.e. printed,
etc.)?
3. Did the inventor do anything to kill the application
(publish, sell, etc.)?
iii. Functions of the Novelty Requirement: Code § 102
1. Code § 102 delineates the sources of prior art and discusses what prior art does to
an application
2. The novelty requirement ensures that inventions that have entered the public
domain prior to an applicant’s invention date are not patented, and ensure that in
most cases, the FIRST PERSON to make the invention (as opposed to the first
inventor to file an application) gets the patent
a. What it does:
i. Defines novelty places burden on the PTO to determine you are
not entitled to a patent
28
ii. Defines the prior art
3. Anticipation
i. When you refer to a piece of prior art as “anticipating an
invention” you say THAT reference, standing alone, discloses
ALL the features of the particular patent claim that you are looking
at
ii. Each claim individually is considered for patentability
1. If you take ONE reference and cite against ONE claim:
citing as anticipation either under § 102(a) or § 102(b)
2. If the subject matter of that reference would infringe the
claim (made after patent issued), then that subject matter, if
earlier, will anticipate
iii. NOTE: Subject matter doesn’t have to actually be reduced to
practice: must have an enabling disclosure (full written description
as to how to make or use the invention) in order for it to be cited
against a particular patent claim
4. Note: Foreign Countries
a. Most foreign countries require absolute novelty (i.e. no sales, disclosures,
etc. at ALL)
i. However, PTO countries allow 1 year grace period if filed in US
first (but this simply places overseas filing date back to the US
date; it still requires absolute novelty prior to the US filing date—
which is not required under US law)
iv. Code § 102(a) v. Code § 102(b): Bars to Application and Invention
1. Code § 102(a):
CODE § 102(a): A patent must be denied if “the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign country, before the invention thereof by the
applicant for patent…In such a case, applications will be deemed “anticipated” and thus lack the necessary
novelty to qualify for a patent
a. Anticipation code section DATE OF INVENTION
b. Applications will be barred if:
i. Inventions known of or used by others in the US before invention
1. In Re Borst (1965): 2 criteria to illuminate when an
invention is “known by others”:
a. The invention must have been fully disclosed (i.e.
reduced to practice)
i. In Borst, Court held that in addition to RTP,
need a writing that describes the invention in
sufficient detail to enable a person of
ordinary skill in the art to make it without
undue experimentation
b. The disclosed invention must have been accessible
to the US public
HYPO: A, the applicant, invented a new type of cash register on January 1, 1989. In January 1984, X had
invented the same cash register and had made a physical embodiment of it. During the same year, X installed
the cash register in his store and used it in selling goods to customers. He only used it for 4 months. However,
29
these facts should be sufficient to preclude A from obtaining a patented under subsection 102(a), because the
cash register was “used by others” in the United States prior to the date of A’s invention.
ii. Inventions described in print in this or another country before
invention
1. Requirements:
a. Publication must have been “printed”
b. There must have been a “publication” (i.e.
accessible to the public)
c. Alleged printed publication must have set forth
sufficient information about the invention to enable
a person with ordinary skill in the art to make it
without undue experimentation
i. NOTE: A printed publication anywhere in
the world may anticipate an applicant’s
invention under § 102(a) and thus render it
unpatentable for lack of novelty
d. What is a printed publication?
A handwritten manuscript in a public library is…
A single typewritten thesis in a college library…
A scientific paper delivered orally to an audience is…
A scientific paper submitted for referencing before publication…
An article in a Russian library is…
An instruction sheet distributed on one island in Japan…
A microfilm at the Library of Congress
A trade circular that is thrown away…
ALL DEPENDS ON PUBLIC ACCESSIBILITY
NOT
IS
NOT
IS
NOT
IS
IS or IS NOT
(depends on
indexing)
IS
2. Worldwide Events and Domestic Events: Prior Art
Considerations
a. Events with §102(a) divide into worldwide events
and domestic events
i. Worldwide: if you have a publication/patent
from anywhere in the world, that reference
is available as a piece of prior art
ii. Domestic: things that are known by others
(excludes inventor), things that are used by
others in the United States available as a
piece of prior art
iii. If used by others in
Europe/Canada/Mexico/etc., may not be a
prior art if there is no publication—if just
simply knowledge/use has to be
publication/patent
b. Note: an invention requires both conception and
reduction to practice
30
2. Code § 102(b): BARS TO INVENTION
CODE § 102(b): A patent must be denied if the invention was patented or described in a printed publication
in this or a foreign country or in public use or on sale in this country, more than 1 year prior to the date of
the application for patent in the United States.
a. Defines statutory bars DATE OF FILING OF APPLICATION
i. Can be viewed as a type of statute of limitations: regardless of
when the invention is made, once the invention becomes accessible
to the public through one of the means enumerated, the inventor
has 1 year to which to file her application for a patent. If she fails
to do so, she will LOSE any right to a patent she otherwise would
have had.
b. Three triggers that will invalidate a patent or lead to a rejection of a patent
application if they occur MORE than 1 year before the application filing
date:
i. Another patent, U.S. or foreign
ii. A printed publication, U.S. or foreign
iii. A public use in the US
1. Putting the invention on sale in the US
a. On sale = subject to a commercial offer and
ready for patenting (RTP or complete drawings)
(Pfaff)
i. Subject to a commercial offer to sell: must
satisfy the standards under the UCC,
allowing another party to create a binding K
for sale with a simple acceptance and
consideration
b. Ready for patenting (See Pfaff):
i. Has to be reduced to ACTUAL practice or
ii. If the inventor has prepared drawings or
other descriptions of the invention that are
sufficiently specific to enable a person
skilled in the art to practice the invention
c. THUS, if the publication is out for more than 1 year prior to the filing
date, then it is a violation of 102(b)
i. Encourages FILING OF PATENT APPLICATION
d. Obviousness as a trigger to the § 102(b) one-year period:
i. Application of Foster (1965): established that the § 102(b) oneyear SOL will begin to run once the information enters the public
domain that, while not anticipating the invention, renders it
obvious. It is not necessary that the information all be found in a
single embodiment, or reference, such as a new publication, patent,
or invention.
HYPO: X invents a new mousetrap on January 1, 1987. At the time of her invention, the mousetrap is novel
(within the meaning of §§ 102(a), (e), and (g)) and non-obvious (within the meaning of § 103) and thus
qualifies as a patent. However, on July 1, 1988, the Journal of Mousetrapology publishes an article which,
when combined with other information existing in the public domain renders her mousetrap obvious. X must
file her application for patent within 1-year after the article is published (by July 1, 1989) or else she will be
barred from obtaining a patent under § 102(b).
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e. Who is most likely to create a statutory bar?
i. Inventor: most likely
1. Inventor has an idea, publishes the idea, but doesn’t get
around to filing the patent application might be copied
already
2. Co-worker who is aware of the invention and is
unscrupulous
f. Experimental Use
i. Experimental use is OK inventors who make experimental use
of their invention will not be penalized under § 102(b) (can have
longer time to file application) as long as they have a bona fide
intent of testing and impose an obligation of secrecy on anyone
testing it
--To prove an experimental use:
1) There is some allegation/effort to maintain confidentiality
-Typically have a confidentiality agreement between person using invention
and the inventor
2) Person using the invention should be reporting back to the inventor
-In a true experimental use situation, will see reports of the results of the use
3) Show changes made to the invention as a result of that use
4) Inventor is not trying to make significant profit
-Sales, etc. tend to weigh against finding of experimental use
-May see efforts where there are efforts to recover normal use involved
--NOTE: If there is experimentation going on, but the use continues after the experimentation
finishes can see the experiment translate to a public use
ii. Ask:
1. Did the inventor/applicant act like he was conducting a
scientific test? Did he keep strict control over the 3rd
parties’ use of the invention, restricting and monitoring the
third parties’ actions, imposing confidentiality
requirements, systematically collecting the results of the
experimental use, taking back any of the invention that was
left after the use?
2. Was the third party use necessary to test the invention?
a. If the tests could have readily been conducted by
the inventor/applicant in a laboratory, the court may
find that the purpose of the use was commercial
rather than experimental
3. How far along was the invention in the developmental
process when the alleged experimental use was made?
a. The more fully developed, the less likely the use
was experimental than commercial
iii. FACTORS TO CONSIDER FOR EXPERIMENTAL USE
1. Length of the test period
2. Whether a payment is made
3. Whether a user agreed to use secretly
4. Whether records were kept
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5. Whether persons other than the inventor conducted the
experiment
6. How long was the testing period
7. How many tests were conducted
TP Laboratories, Inc. v. Professional Positioners (Fed Cir. 1984): Orthodonist case. The inventor bears a heavy
burden of showing that the public use was bona fide experimentation. Need to monitor use, keep accurate
records, and show that the use was a genuine experiment. Thus, delay in filing patent application was
unreasonable.
3. § 102(a) v. § 102(b)
a. The events under a § 102(a) analysis that disables an invention from being
patentable (prior knowledge, prior publications) occurs PRIOR to the date
of invention
i. Focus is on the actions of persons OTHER than the
inventor/applicant prior to the date the inventor/applicant made the
invention
1. Prior to that date, did those other persons cause the
invention to be known or used in the United States? Did
they cause it to be patented or did they make it the subject
of a printed publication anywhere in the world?
2. Want to prevent a second inventor from obtaining a patent
monopoly if a previous inventor has already placed the
invention in the public domain before the second inventor
invented
b. The events under a § 102(b) analysis deal with things that occur PRIOR to
the date of filing
i. Focus is on the actions BOTH of the inventor/applicant and
others more than one year before the application was filed
1. Want to encourage:
a. Early disclosure
b. Public reliance
c. Inventor’s interest in testing the market to see
chances of commercial success
d. Prevention of over-extended monopolies
4. Policy Considerations Behind § 102
a. In furtherance of achieving a limited period of exclusivity for a patent,
there are rewards that encourage the PROMPT filing of a patent
application
b. Policies behind novelty analysis and statutory bar:
i. §102(a): going to reward first to invent (date of invention)
ii. §102(b): rewards the prompt filing of a patent application
c. Combination of those 2 policies rewards the first to invent and to
encourage that person to promptly file a patent application—should result
in the “prompt” issuance of a US patent (usually takes about 2 years to get
a patent issued)
HYPO: On January 1, 2000, an inventor conceives of a better mousetrap, and on January 2, 2000, the inventor
reduces to practice by constructing a prototype in his workshop. January 2, 2000 is the date of the invention
and that date is corroborated by a laboratory notebook. On January 3, 2000, the inventor submits a complete
33
description of the mousetrap to Inventor’s Weekly, which publishes it on February 1, 2000. On February 2,
2001, the inventor files a patent application. The critical date of the application under § 102(b) is February 2,
2000. The publication in Inventor’s Weekly is not prior art under § 102(a) because it did not occur before
the applicant’s date of invention. However, the publication did occur before the critical date. Consequently,
if the publication included a complete and enabling description of the invention, the patent application would be
rejected under § 102(b).
-In essence, § 102(b) provides a 1-year grace period after the first patent, publication, public use, or
offer to sell that relates to the claimed invention. An inventor has THAT long to file a patent
application, or the right to patent is lost.
v. Critical and Effective Dates
1. Critical Date: this refers to the date of the initial placing on sale, publication, or
public or commercial use of an invention. At the end of the one-year period, a
U.S. patent application cannot be filed because the statute bars such filing.
a. §102(a) = date of invention if you can identify it
b. §102(b) = 1 year prior to the date of filing of application for patent
2. Effective Date: often the same as a critical date, but certain patent applications are
entitled to the filing dates of previously filed patent applications as their effective
filing dates = DATE WHEN MADE PUBLICLY AVAILABLE (EVEN IN
SECRET)
a. Effective date of a disclosure of a patent (§102(e)) = date that patent
application was FILED  date of information that must precede critical
date
i. Ex: If issued December 21, 1999, the effective date of this patent
as a reference is December 8, 1997 (filing date)
HYPO: Professor Dizzy has been trying to develop a new pill that will enable a person to stay awake for 7
consecutive days without getting tired or suffering any adverse health effects. He finalizes his research and
develops this pill in January 2007. Eager for the academic glory that will come his way when he reveals his
new path-breaking discovery, he quickly publishes the results of his research, including the chemical formula
for the pill in the February 2007 issue of the journal Better Living Through Chemistry. In late 2007, his
research assistant tells him that there might be a significant market for the pill among law students studying for
final exams, and urges him to patent it. He eventually files for a patent application on March 15, 2008.
Unfortunately for Professor Dizzy, the patent will be DENIED. The critical date for Dizzy is one-year before
the application, or March 15, 2007. His own article, having been published before that date, will defeat his
attempt to secure a patent.
vi. Code § 102(e): Pending Applications as Prior Art
1. A patent will be denied if:
a. At the time B invented, the same invention was described in a pending
application at the PTO
b. That application was granted or published
c. The information contained in the earlier pending application will be
deemed prior art as of the applicant’s filing date
i. Ex: A files an application in 1983. B invents the same thing in
1984. If A’s publication was granted or published, it will become
prior art as to B.
1. This situation does NOT fall under § 102(a): it is not
known or used AND no printed publication because US
34
doesn’t publish patent applications for 18 months or you
can ask for it to be published
a. NOTE: Doesn’t matter that the public doesn’t have
access to that application prior to its publication
(Hazeltine)
i. Hazeltine: information in the pending
application should be deemed to have
entered the public domain for purposes of
evaluating later inventions as of the pending
application’s filing date, even though the
public had no access to it at the time
2. How Does A Patent Qualify as a Reference?
a. Patents Issued AFTER (ex: 6 MONTHS) After the Filing Date of Your
Patent
i. Look to filing date of reference
1. If filed before filing date of patent application, then this
patent is potentially a reference, even though it was filed
after
2. The PTO accepts the date of the invention as the filing date
of reference
b. Patents Filed BEFORE the Filing Date of Your Patent
i. Under § 102(a), is the issuance of the filing of the prior patent
filing evidence of knowledge before the date of the invention for
your application?
ii. You can file an affidavit stating that the date of your invention was
prior to the filing date = SWEARING BEHIND A REFERENCE
1. Can only swear behind a reference for a year
a. Ex: Is something a reference to establish prior art?
i. Application filed by someone in August
1994 (in secret). You file your application
on January 1, 1995. The other patent issues
in July 1995. The patent examiner has
reached your application for consideration in
November of 1995, but you are not given
the patent. Why?
ii. You do not get the patent because the
effective date of the July 1995 patent goes
back to August 1994
iii. If the application was filed by someone in
December 1993 so that it is more than a year
prior to the filing date, the patent issued in
1995 has an effective date as a publication
of an effective date to the December 1993: §
102(b) => published more than 1 year prior
to the application
HYPO: Application A is filed in January of 1995. Unbeknownst to A, Application B is filed in August 1994.
In the normal course of events, Application B issues in July 1995. The examiner hasn’t reached Application A
yet, but it reaches the examiner in November 1995 to see if it is patentable. The examiner in search finds that
Application B issued in July 1995. The examiner cites Application B not because of the issue date of July 1995
35
(which is clearly after Application A’s filing date), but it cites Application B based on the filing date of
Application B that is PRIOR to the Application A filing date.
--The inventor in Application A has the opportunity to offer an affidavit saying that “I made my
invention for Application A PRIOR to the filing date of Application B”
-That affidavit = swearing behind a reference
-Has to do say before August 1994
-Have until January 1994 before it becomes a § 102(b) reference
--If filing date of B is December 1993 instead of August 1994, its effective date, even though issued in July
1995—effective date is December 1993
-Date that is more than one year prior to application A
-Can’t swear behind it because it is now a § 102(b) reference
HYPO: A describes a new type of widget in an application for patent that he files with the PTO on January 1,
1987. B invents the same widget on July 1, 1987. If A’s application ultimately is published or granted, B will
be precluded from obtaining a patent, even though A’s earlier widget may not have been “known or used in the
US” or the subject of a patent or printed publication prior to B’s invention, as provided under § 102(a). A’s
widget may not have been known, used, or disclosed in a printed publication within the meaning of § 102(a)
because, under US law, pending patent applications are maintained in secrecy until they are published (18
months after their filing date) or granted. Note that even A’s pending application is not in fact published or
granted until after B invents, the ultimate publication or grant makes A’s widget “prior art,” for purposes of
evaluating the novelty of B’s invention as of A’s filing date, January 1, 1987.
HYPO: Betty Blade is seeking a patent on her invention of jet-propelled in-line skates. She filed a patent
application for that invention on October 1, 2006. The patent examiner discovers that an application by Robby
Roller, first filed on September 1, 2006 and eventually published 18-months later on March 1, 2008, disclosed
(but did not claim) the exact same technology. The Roller application is prior art as of Roller’s filing date of
September 1, 2006, even though on that date neither Blade nor anyone else could have access to it. In order to
avoid the novelty-defeating consequences of the Roller application, Blade would have to prove that she either
reduced the invention to practice before her application date, or that she conceived it before that date and was
continuously diligent thereafter. Note that if the Roller application actually claimed the jet-propelled skates as
subject matter for a patent, the 2 parties would be in a straightforward priority contest for the patent, both
having filed claims that cover the exact same invention. In that case, the matter would be resolved in an
interference proceeding with the patent going to which ever party the PTO determined to have invented first.
vii. Other Statutory Provisions in Code § 102
1. 102(f): originality requirement; patent goes to inventor, not a copier
2. 102(c): if subject matter abandoned
a. Never heard of a patent being invalidated for violating 102(c)
b. Need a specific willingness to abandon
3. 102(b): worldwide events by anyone (prior patent/prior publication)
a. Domestic events by anyone (public use/subject matter is on-sale)
b. On-sale bar is referring to efforts to sell product of the invention (ex: new
mouse trap, new PBJ sandwich)—trying to sell product to consumer
c. That sale activity is not referring to licensing or assigning invention to
someone else—can go on for many years without creating a statutory bar
IV.
Non-obviousness: Code § 103(a)
CODE § 103: An invention is not patentable if it would have been obvious to a person having ordinary skill
in the pertinent art as it existed when the invention was made.
36
a. Basics
i. An invention is not patentable if it would have been obvious to the person having
ordinary skill in the pertinent art as it existed when the invention was made
b. The Four-Step Analysis to Determine if Something is NON-OBVIOUS
i. Scope and content of the prior art (under § 102)
1. In a pending patent application, prior art is developed in 2 ways:
a. First source: applicant is obligated with significant consequences for
failure to comply—can only disclose all of the prior art that he or she is
aware of
i. Failure to do so is called inequitable conduct, can cause the patent
to be unenforceable
1. Very significant responsibility but does not mean the
applicant must go search the prior art: applicant has no duty
to search the prior art
ii. Other source: patent examiner—very knowledgeable and will do
an independent search for prior art through patent office records
ii. Differences between claimed invention and the prior art
iii. The level of ordinary skill in the art
1. In a § 103 obviousness analysis, look to whether it was obvious to someone who
is ordinary skilled in the art AT THE TIME OF THE INVENTION (Application
of Foster, 1966)
iv. Secondary considerations (SCOTUS = May; Federal Circuit = Obligatory; KSR = May)
1. Commercial Success
a. If buyers choose one product over others, the reason may be that the seller
invented something that ordinary sellers would not have invented if the
new product is commercially successful and was obvious, would have
been done earlier!
2. Long-felt but unsolved needs
a. If the opportunity presented itself but was not taken, the inference is that
the solution was not obvious
3. Failure of others
a. If many have tried and failed, it is likely that the solution was not obvious
4. Copying
a. This is especially probative when others failed to solve the same problem
and finally resorted to copying
5. Skepticism of experts
a. Expressions of disbelief: indications by so-called experts that it might not
work (difficult to find)
b. When experts in the field did not see a solution, the solution likely was not
obvious
6. Unexpected results or properties of claimed invention
a. Art actually teaches a way for the invention: can show that others before
were going in a different direction
b. If the results were unexpected, the invention was likely not obvious
7. Licensing and acquiescence by others:
a. If competitors licensed the patent rather than attempting to solve the
problem themselves or denying the validity of the patent, it suggests that
the solution was not obvious to them
8. Adoption by the industry
37
a. If the industry as a whole adopted the invention as the industry standard,
maybe it was better than ours
9. NEXUS: Must be able to connect secondary consideration to the patented
invention (Stratoflex)
a. The concept is that if the invention was commercially successful because
of an advertising campaign (ex: celebrity advertiser who can generate
sales because of appeal)—will not be a NEXUS to invention
i. For commercial success arguments, have to argue that the product
has been bought because of the features of the patent, not because
of some ad scheme
ii. See Stratoflex
v. The governing test is whether the prior art would have suggested to someone of ordinary
skill in the prior art that this process should be carried out and would have a reasonable
likelihood of success, viewed in the prior art
1. Federal Courts used to use TEACHING, SUGGESTION, or MOTIVATION
(TSM) test: there must be some suggestion, teaching, or motivation to combine
the prior art references or to add elements not found in prior art
a. Very stringent test: Courts would reverse findings of obviousness if there
was not teaching, suggestion, or motivation to yield the subject matter
being patented
2. KSR moved away from this, not wanting a rigid application of this test
--Combination patent: combine elements from the prior art to produce a new combination—a combination
that did not exist before (but separate elements before)
-Ex: Anderson’s Black-Rock (patent found to be invalid)
-Concept that came out of the case that was thought of regrettable: concept of “synergy”
-Idea of getting more than the sum of the parts
--KSR goes back to the cautionary aspect of combination patents: SCOTUS indicates that in combination
patents need to be careful in granting patent protection to be sure that something new is being accomplished
38
i.
Graham v. John Deere Company (1966)
--Thought of at the time as a landmark decision
--Recent KSR decision has re-affirmed the idea that John Deere was a landmark decision
Facts:
--Graham sued the John Deere Company for patent infringement
-Invention in question was a combination of old mechanical elements: a device designed to absorb shock from the shanks of
chisel plows as they plow through rocky soil and thus to prevent damage to the plow
-Graham sought to solve this problem by attaching the plow shanks to spring clamps, to allow them to flex freely underneath
the frame of the plow
--Graham applied for a patent on this claim, and in 1950, he obtained a US Patent ‘811
--He then made some improvements to the clamp design by placing the hinge plate beneath the plow shank (rather than above it), in
order to minimize the outward motion of the shank away from the plate applied for a patent and got in 1953 (‘798 patent)
 2 features that resulted in the improvement: (note diagram on page 463)
-811 patent (prior art): hinge plate is under the shank
-Here, the shank, as it flexes upwardly, it touches the upper plate—causing wear at that point
-798 (improvement): reverses this relationship, and put in a bolt under the shank
-Shank moved below hinge plate, so when it flexes it doesn’t touch the upper plate
-Invention was reversing the hinge plate/shank to provide more flexing at the contact point
Issue: Is the 798 patent obvious?
Holding: YES--SC decided that moving the shank from one side of the other was OBVIOUS in view of the Graham patent
Reasoning: John Deere establishes a 3-step test for obviousness—the test we use today!
--Although patentability is a matter of law, the Court held that § 103 required a determination of the following questions of FACT to
resolve the issue of obviousness:
1-Scope and content of the prior art
-§ 102 will tell you what the prior art is
2-Differences between the claimed invention and the prior art and
-Professor: steps #1 and #2 are probably combined
3-The level of ordinary skill of the prior art
 These three observations will determine obviousness for a particular claim
--SCOTUS also said that you MAY also look at secondary considerations and these MAY have relevance (permissive)
-Secondary considerations:
(1) Commercial success
-Typically, most frequently presented evidence
-Thought: if this new product was commercially successful and it was obvious, would have been done
earlier
(2) Long felt but unsolved needs
-Part of commercial success: idea is that if the problem has existed for a long time and hasn’t been solved,
suggests that the solution is not obvious
(3) Failure of others
-Very valuable and valid consideration
-If others had tried to solve problem and could not, good indication that your solution is not obvious
-NOTE: Federal Circuit moved that test from permissive to obligatory
-In KSR, they have moved that back to permissive
After Deere:
--In the forty years following the Deere decision up to the KSR decision, there were some decisions out of the district court that said
you ONLY use secondary considerations in close cases
-If the subject matter was clearly obvious, no need to look at secondary considerations
--The Federal Circuit removed that distinction: in ALL cases have to look at secondary considerations
--Supreme Court has not spoken on that issue: a bit up in the air
-KSR clearly rejected a number of approaches
Stratoflex, Inc. v. Aeroquip Corp.
United States Court of Appeals, Federal Circuit (1983)
--Prior to KSR, considered to be a very significant decision
--Significance is in doubt today—wasn’t literally overruled, but some of the holdings are questioned
39
--Prior to Stratoflex, thought was that combination patents were suspect—we should be cautious in finding patentability in
“combination patents”
-Note: many things that are patented today are “combination patents”
-Combination patent: combine elements from the prior art to produce a new combination—a combination that did not exist
before (but separate elements before)
-Ex: Anderson’s Black-Rock (patent found to be invalid)
-Took a traditional paving machine and added a radiant heater
-Added because to get a good joint between layers of pavement, good idea to reheat asphalt at joint line
-Concept that came out of the case that was thought of regrettable: concept of “synergy”
-Idea of getting more than the sum of the parts
--KSR goes back to the cautionary aspect of combination patents: SCOTUS indicates that in combination patents need to be careful in
granting patent protection to be sure that something new is being accomplished
Facts:
--In 1959, Aeroquip assigned 2 engineers, Abbey and Upham, to determine the cause of leaks in engines—concluded conductivity
might help
--In 1960, Aeropquip approached Raybestor, a PTFE hose manufacturer, for a solution—assigned to Salde who then conceived of the
composite tube invention on Aug 5, 1960 and RTP by November of 1961—patent application on 5/22/62
--Slade made an invention comprising of a composite PTFE tubing: formed of an inner layer of electrically conductive PTFE having
particles such as carbon black uniformly distributed in it and an outer layer of essentially pure non-conductive PTFE
-- Tried to get interference by Titeflex (‘688 patent)—examiner gave restrict to Slade patent, Slade sued (‘087 patent)
-Titeflex tubing purchased by Stratoflex
--In 1978, Aeroquip charged that Stratoflex’s unauthorized manufacture of the tubing infringed its rights under the ‘087 patent
Issue: Is the composite tubing an obvious use?
Holding: YES
--Two types of tubing to prevent leaks considered obvious
Reasoning:
--No need to figure out what is the “heart” of the invention
--Synergism is not a test for patentability
--Big thing that they did in Stratoflex:
-Reversible error to not consider secondary considerations
-Other cases make this requirement not so rigid
--Requirement for a nexus: must be able to connect secondary consideration to the patented invention
-The concept is that if the invention was commercially successful because of an advertising campaign (ex: celebrity
advertiser who can generate sales because of appeal)—will not be a NEXUS to invention
-For commercial success arguments, have to argue that the product has been bought because of the features of the patent, not
because of some ad scheme
Now, after Stratoflex:
1-Prior art
2-Differences
3-Ordinary skill in the art
4-Secondary considerations
5-NEXUS
KSR International Company v. Teleflex Inc
SCOTUS (2007)
--In an obviousness analysis, a fear is that a judge will be affected by hindsight—significant issue for a judge
--As a result, the Federal Circuit had determined a test (referred to in KSR) as the TSM test (teaching, suggestion, or motivation) test
-Out of these decisions, came the concept that in order to combine references, there must be in those references either a
TEACHING, SUGGESTION, or SOME MOTIVATION to combine these references to yield the subject matter of the
invention being considered
-All of this done by federal circuit to ensure that hindsight was NOT being used
-This was a rigorous examination by the federal circuit
-They would reverse findings of obviousness based on a failure to demonstrate teaching, suggestion, or motivation
--KSR: hard facts can lead to bad law
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Facts:
--Teleflex sued KSR for patent infringement
-Patent: adjustable pedal assembly with electronic throttle control
-Entitled “Engelgau Patent”
-Teleflex holds the exclusive license to the patent
--Claim 4 of the patent describes a mechanism for combining an electronic sensor with an adjustable automobile pedal so the pedal’s
position can be transmitted to a computer that controls the throttle in the vehicle’s engine
-Professor: very simple invention
-KSR: only thing allegedly patentable was where the motion sensor was placed
--Teleflex accused KSR of infringing the Engelgau patent by adding an electronic sensor to one of KSR’s previously designed patents
--KSR argued that claim 4 was invalid under the Patent Act (103) because the subject matter was obvious
NOTE: Section 103 and the obvious requirement
Procedural History:
--District Court: summary judgment in KSR’s favor
-Found little difference between the prior art and Engelgau, Asano
-TSM test: KSR satisfied the test
-Obvious and thus not patentable
Court of Appeals: TSM test (teaching, suggestion, or motivation)—patent is only proved obvious if some motivation to combine prior
art teachings can be found
-Found for Teleflex, DC not strict enough in applying TSM test
-Found differences with Asano and Rixon pedals
-Not obvious for failure to satisfy TSM test
--SCOTUS: reverses
-Rejects rigid approach of the Court of Appeals
Issue: Is claim 4 of the Engelgau patent obvious?
Holding: YES
--A RIGID APPLICATION OF TSM TEST IS NOT IN COMPLIANCE WITH PREVIOUS DECISIONS (JOHN DEERE AND
ADAMS BATTERY, ANDERSONS BLACK ROCK)
--Something is obvious to try: another test to use
--Court sees little difference between the teachings of Asano and Smith and the adjustable electronic pedal disclosed in claim 4 of the
Engelgau patent
-A person having ordinary skill in the art court have combined Asano with a pedal position sensor in a fashion encompassed
by claim 4, and would have seen the benefits of doing so
Reasoning:
--Want an expansive and flexible approach—find the TSM approach used by the DC to be too rigid
--Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s
subject matter—question is not whether the combination was obvious to the patentee but whether the combination was obvious to a
person with ordinary skill in the art
--There already existed a marketplace that created a strong incentive to convert mechanical pedals to electronic pedals
-Court of Appeals considered the issue too narrowly by asking whether a pedal designer would have known—not correct
analysis
--KSR provided convincing evidence that mounting a modular sensor on a fixed pivot point of the Asano pedal was a design step well
within the grasp of a person of ordinary skill in the relevant art—claim 4 is obvious
Discussion:
“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield
predictable results”
--When the prior art teaches a way for combining certain known elements, discovery of a successful way of combining them is likely
to be non-obvious
-Teaching a way is a way to determine non-obviousness
--Court goes through Adams, Andersons-Black Rock, and Sakraida
--The language in this case that is being discussed a great deal: pg. 487
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-“Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress
and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility”
-Considered to be a very provocative comment
 One of the things that occurred here and in John Deere: pg. 489
-“The Court concluded the record and concluded that Teleflex had not raised this argument in the courts below, and that
the company’s expert declarations did not support the point”
--John Deere: idea of flexibility of shank was not a feature ever discussed with patent app or patent examiner, only came up in the
course of litigation
-Court commented that argument had not been made earlier
--There is significance to the fact that an argument ONLY raised during course of litigation will sometimes have significantly
diminished value with respect to obviousness
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V.
Priority of Invention: Code § 102(g)
A person shall be entitled to a patent unless --(g)(1) during the course of an interference conducted
under section 135 or section 291, another inventor involved therein establishes, to the extent permitted
in section 104, that before such person's invention thereof the invention was made by such other
inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof,
the invention was made in this country by another inventor who had not abandoned, suppressed, or
concealed it. In determining priority of invention under this subsection, there shall be considered not
only the respective dates of conception and reduction to practice of the invention, but also the
reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior
to conception by the other.
a. Basics
i. What is the problem?
1. § 102(g) prohibits B from obtaining a patent if A made the same invention in the
United States before B and A did not abandon, suppress, or cancel it prior to B’s
invention date.
a. Thus, an earlier invention by A may preclude B from obtaining a patent
even though the provisions of neither § 102(a) nor § 102(e) have been
satisfied
b. § 102(a), (e), and (g) demonstrate the general US policy of reserving a
patent for the FIRST PERSON TO INVENT in most cases, with
exceptions when necessary to ensure that inventions are made available to
the public
ii. Terminology
1. First to file a patent application in a priority dispute is the SENIOR PARTY
2. The second to file a patent application in a priority dispute is the JUNIOR
PARTY
3. The patent office presumes the senior party to be the senior inventor
4. Therefore, the BURDEN of persuasion is on the JUNIOR PARTY
a. That burden can be of great significance
b. Code § 102(g)
i. § 102(g)(1): interference when the patent office is trying to determine who should get the
patent (when there are 2 competing patents)
1. If two applicants each seek a patent on precisely the same invention, their dispute
will be resolved through INTERFERENCE proceeding by PTO
ii. § 102(g)(2): how to resolve the patent dispute
1. Interpreting § 102(g)(2)
a. OPTION 1: The senior inventor will have priority over junior user (who
reduces to practice FIRST) if the senior inventor uses reasonably
continuous diligence to a successful reduction to practice from a time prior
to the junior user’s conception—otherwise, the junior user has priority
OR
b. OPTION 2: If the junior inventor reduces to practice first, thereby creating
the priority dispute, and the senior inventor does not begin a diligent
pursuit of an ultimately successful reduction to practice before the date of
the conception of the junior invention, then the junior user has priority
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i. Junior inventor NEED NOT demonstrate diligence between
conception and RTP
ii. Senior user has to use diligence
The Priority Test Under § 102(g)
A. The SENIOR INVENTOR is the first to conceive
a. If the senior inventor is the first to reduce to practice, that is the end of the inquiry—the
senior inventor has priority so long as there is no abandonment, suppression, or
concealment
b. Diligence will not be a consideration
B. It is only when the senior inventor is NOT the first to reduce to practice (that is, the junior
inventor reduces to practice first); then the priority test of 102(g)(2) comes into play
a. Diligence is the significant factor when the junior inventor is the first to reduce to practice
C. The FIRST to FILE a patent application is the SENIOR PARTY
a. The PTO presumes the senior party to be the senior inventor
b. Burden of persuasion is therefore on the JUNIOR PARTY
D. The test can therefore be stated as follows
a. The senior inventor will have priority over the junior inventor who reduces to practice
FIRST, if the senior inventor uses reasonably continuous diligence to a successful
reduction to practice from a time prior to the junior inventor’s conception.
i. OTHERWISE, the junior inventor has priority
b. In other words: If the junior inventor reduces to practice first and the senior inventor does
not begin a diligent pursuit of an ultimately successful reduction to practice before the date
of conception by the junior inventor, then the junior inventor has priority
i. The junior inventor NEED NOT demonstrate diligence between conception and
reduction to practice
c. Resolving the Patent Dispute
i. Have to be talking about INDEPENDENT inventions—2 people working independently
(no stolen inventions, etc)
1. Not talking about a joined invention: where 2 people work together or collaborate
to generate 1 invention
ii. The first to invent is the first to conceive, so long as certain conditions are satisfied
1. First to invent will receive the patent
2. Note: in many foreign countries, “first to file” rule
iii. Require 3 events:
1. Have to prove conception: formation in the mind of the inventor of a definite and
permanent idea of the complete and operative invention
a. Conception is established when the invention is sufficiently clear that
those skilled in the art are enabled as to how to make and use the invention
b. Need to have documents from disinterested parties corroborating (ex: lab
notebooks, etc)
c. NOTE: The senior inventor is the first to conceive
i. If the senior inventor is the first to reduce to practice, that is the
end of the inquiry
ii. Senior inventor has priority so long as there is no abandonment
iii. Diligence is not a consideration
1. Only when senior inventor is NOT the first to reduce to
practice—junior inventor reduces to practice first—then
102(g)(2) comes into play!
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2. Diligence is the factor here when the junior inventor is the
FIRST to reduce to practice
2. Reduction to practice: invention works for its intended purpose in its intended
environment (requires corroboration)
a. Constructive or actual RTP satisfy the requirement
3. Diligence: reasonable degree of industriousness in an effort to reduce the
invention to practice
a. Does not require an absolute total 24-hour-a-day commitment
b. Must demonstrate a reasonably consistent effort of diligent activity
d. Date of Invention
i. When the first to conceive is also the first to reduce to practice, the date of invention is
the date of the first conception
ii. When the first to conceive is the second to reduce to practice, the date of the invention is
the date of first conception when reduction to practice by the first to conceive is the result
of reasonable and continuous diligence that begins BEFORE the date of conception by
the second to conceive
iii. When the second to conceive is the first to reduce to practice, the date of invention is the
date of the second conception when reasonable and continuous diligence toward
reduction to practice by the first to conceive begins after the date of conception by the
second to conceive
1. If there is priority dispute, and senior user prevails, date of invention is senior
user conception
2. If there is a priority dispute, and junior user prevails, date of invention is
second conception date
HYPOS:
1) A is the first to conceive of the invention and the first to reduce it to practice. A is the first to invent.
Diligence is irrelevant
2) A is the first to conceive of the invention but the second to reduce to practice. B conceived of the
invention after A but reduced it to practice before A. A will be deemed the first inventor only if she was
diligent in reducing the invention to practice from a date prior to B’s conception.
3) A was the second to conceive of the invention and the second to reduce it to practice. A is not the first
to invent.
4) A and B conceive of the invention simultaneously but A is the first to reduce it to practice. A is the first
to invent. Diligence is irrelevant.
Paulik v. Rizkalla (Fed. Cir. 1975): An inventor, after taking no action for years, can renew inventive activities
and recover from a charge of abandonment. A contrary result would discourage inventors “from working on
projects that had been ‘too long’ set aside, because of the impossibility of relying, in a priority contest, on either
their original work or their renewed work.”
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EXAMPLES: PRIORITY DISPUTES
Example #1:
Conception
Corroboration (evidence)
RTP
Patent Application and
Filing
Townsend
6-01-21 (testimony)
6-17-21
11-14-21
1-13-22
Smith
10-19-21
12-12-21
1-03-22
 Does this scenario present a priority dispute?
-This does NOT
-The first to conceive was Townsend
-The first to reduce to practice was Townsend (actual RTP)
-The first to file patent application was Smith
-Smith had constructive RTP (occurred before Smith)
-Smith junior inventor in the dispute
-Smith is the senior party: filed patent app first
-Townsend is the junior party: filed patent app second
--Townsend has the burden of proving the priority in the analysis since he is the junior user
Example #2
Conception
RTP
Abandonment
Renewal of RTP
Filing date of patent
application
Pavlik
11-70
11-70
YES
1-75
6-30-75
Rizkalla
3-10-75
3-10-75
NO
3-10-75
--No records for Rizkalla to support other than filing of application—conception, constructive reduction date as
well
--Issue: as a result of the abandonment, does Pavlik lose the right of the invention or just the priority right?
-New date of conception is date of renewal
-Determine if there is diligence because we have a priority dispute
-RTP by Rizkalla that is before that of Pavlik
-Case remanded for diligence analysis
--Conception in January of 1975 for Pavlik and conception in March 1975 by Rizkalla
Example #3: The Priority Paradox
Kelly
Williams
Piper
Conception
2-08-91
6-15-91
Diligence
01-02-92
1-10-92
1-5-92
RTP
2-01-93
08-92
3-92
 Between Kelly and Williams, who has priority?
-Senior inventor is the first to conceive = Kelly
-However, Kelly did not reduce to practice first go to 102(g)(2) analysis
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-Diligence is the significant factor when the junior user, Williams, is the first to reduce to
practice
-Kelly does not begin diligence before conception by Williams
ANSWER: WILLIAMS PREVAILS
 Between Williams and Piper, who has priority?
-Williams conceives first and reduces second, so go to 102(g)(2) analysis
-Williams did not begin diligence before conception by Piper
ANSWER: PIPER PREVAILS
 Between Piper and Kelly, who has priority?
-Piper conceived second to Kelly, but reduced first
-Kelly: first to conceive, therefore senior user
-Senior user began RTP before junior user
-Kelly does begin diligence before conception by Piper
ANSWER: KELLY PREVAILS
 Who wins the dispute?
-In all those 3 scenarios, find a situation where Kelly wins, Piper wins, and Williams wins
-Extraordinarily rare that we have priority disputes between 3 parties
-Think of this from a policy standpoint (conceptually):
-Most likely party is who was the first to conceive so long as there was no abandonment,
suppression, or concealment KELLY
-The second most likely party to prevail in this kind of scenario is the first to reduce to
practice PIPER
-§ 102(g)(2) does not provide an answer to disputes between 3 parties—better for 2
parties
Examples #4 and 5: §102(b) and § 102(g)
HYPO: Have an invention by X on January of 2000. Y invents on February 1, 2000, and publishes February 2,
2000. Y files a patent application on February 2, 2001. X files a patent application on February 3, 2001, more
than 1 year after publication by Y. Is X barred?
 YES; 102(b) bars X from getting a patent issued—patent application is filed more than 1 year after
publication by Y even though X is the first inventor
HYPO: If X prevails in the priority dispute, and X’s diligence starts before February 1, 2000 (invention by Y)—
X is still barred under § 102(b).
 If X conceives after February 1 (after Y’s conception), then X loses the priority analysis
Example 6: Abandonment, Suppression, or Concealment
A invents in 1986. He abandons, suppresses, or conceals the invention until July 1989. In July 1989 he returns
his attention to the invention, and applies for a patent. If B invented in 1987, B should win. Even though B was
the second inventor, A, the first inventor, abandoned, suppressed, or concealed, and did not resume his efforts to
bring the invention to the public until after B’s invention date. However, if B invented in October 1989, B
should lose. A should have the benefit of his July 1989 resumption date as his date of invention. Thus, even
with this new invention date, A would still be the “first inventor,” and he has not abandoned, suppressed, or
concealed since July 1989, a date prior to B’s invention.
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VI.
Abandonment: Code § 102(c)
a. § 102(c) denies a patent if the applicant abandoned his or her right to a patent. While the
subsection refers to abandonment of the invention, the case law clarifies that the focus is the
abandonment of the RIGHT TO PATENT
i. Policy behind this provision: want to encourage inventors to file an application for patent,
and thus make enabling disclosure to the public as quickly as possible
ii. Abandonment will be found when the inventor expressly or impliedly manifests an
intention to relinquish his right to a patent
b. Types of Abandonment
i. Express abandonment: the inventor may expressly abandon by openly disclaiming any
intent to obtain a patent, thus dedicating the invention to the public
ii. Implicit abandonment: the inventor may impliedly abandon his invention through
conduct that indicates an intent to forego a patent
1. Ex: refraining from applying for a patent for a long period of time
VII. Infringement: Code § 271
Statutes: § 271a, b, and c
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or
sells any patented invention, within the United States, or imports into the United States any patented
invention during the term of the patent therefor, infringes the patent.
-Basic code section for infringement
-Provides to the patent owner the right to exclude others from making, using, selling,
offering for sale, or importing the subject of at least ONE CLAIM
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States or imports into the United States a
component of a patented machine, manufacture, combination, or composition, or a material or
apparatus for use in practicing a patented process, constituting a material part of the invention,
knowing the same to be especially made or especially adapted for use in an infringement of such
patent, and not a staple article or commodity of commerce suitable for substantial non-infringing
use, shall be liable as a contributory infringer.
DIRECT INFRINGEMENT (§ 271(a))
INDUCEMENT OF INFRINGEMENT (§ 271(b))
CONTRIBUTORY INFRINGEMENT (§ 271(c))
a. Types of Infringement
i. Direct Infringement (§ 271(a))
1. Definition: directly copying patent
2. Basics
a. There is no requirement that the defendant has any knowledge or be
aware of the patent (in direct contrast to copyright infringement)
b. Allegation and proof of infringement is based solely on a comparison of
the accused device and 1 or more claims of the original device
c. Willfulness
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i. If you can prove willfulness, then you can have a possible damage
claim
ii. For a willfulness claim, WILL HAVE TO demonstrate that D was
aware of the patent and was reckless with respect to the conduct of
D regarding this patent
3. Combination Patents: patents for inventions whose novelty lies not in their
individual components, which are already known, but in their new combination of
known elements. The patentee obtains no monopoly rights in the individual
components themselves—the patentee must prove that the D actually combined
all the components in the manner described in the patent claims.
a. Deepsouth Packing (1972): D who manufactured the individual
components of a patented combination and shipped the subassembled
components to a foreign countries, along with instructions for assembly,
did not “make” the invention in the US and thus did not directly infringe
the patent. Merely making the components did not infringe, because the
combination patent did not give the patentee a monopoly in the individual
components.
b. Paper Converting (1984): Found a “making” in the case of a combination
patent when the D did the following acts in the US during the patent term:
(1) entered into a K to sell the patented invention; (2) manufactured all the
components; (3) subassembled the components; (4) tested the operation of
the various parts in subassembled form; and (5) delivered the
subassembled components to its customer, with instructions not tot make
the final assembly until after the patent expired.
i. “When significant unpatented assemblies of elements are tested
during the patent term, enabling the infringer to deliver the
patented combination in parts to the buyer, without testing the
entire combination together as was the infringer’s usual practice,
testing the assemblies can be held to be in essence testing the
patented combination, and hence infringement”
ii. SUMMARY: To directly infringe a combination patent, someone
must combine the elements into an operable assembly (which
constitutes a “making”) or use, sell, offer to sell, or import the
operable assembly. Merely making, using, or selling the individual
parts of the patented machine in the US will not constitute
infringement unless there is testing and direct infringement.
4. Repair v. Reconstruction
a. When the patentee sells or authorizes sale of a physical embodiment of the
patented invention, his rights in the particular embodiment are exhausted.
b. Unless the patentee has imposed enforceable K restrictions on the
purchaser, the purchaser may freely use, modify, and resell the
embodiment (doctrine of exhaustion)
c. The purchaser is also free to repair the embodiment to prolong its life.
However, if “repair” is so extensive that it constitutes reconstruction, it
will be deemed a making of the patented invention and thus DIRECT
INFRINGEMENT.
Aro Mfg. Co v. Convertible Top Replacement (1964): Replacement of the fabric in a convertible automobile top
constituted repair, rather than reconstruction, of the entire top assembly so that the unauthorized manufacture
and sale of replacement fabrics did not directly or contributorily infringe the combination patent covering the
top assembly. Replacement of any part of a combination, no matter how significant, can never be
reconstruction.
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ii. Inducement of Infringement (§ 271(b))
1. Definition: To be liable to inducement to infringe, the D must have actively,
intentionally, and knowingly solicited or assisted a 3rd party to infringe a patent. It
must be demonstrated that the 3rd party did indeed engage in direct infringement.
2. Basics
a. A typical claim: showing some particular structure being sold—the
structure alone does not constitute an infringement. With that structure,
instructions are provided that instruct the purchaser how to use the device
to create a patented arrangement
Example: X manufactures and sells a chemical solution which, when mixed with a certain solid chemical
compound, results in A’s patented invention. X sells the solution, along with a brochure telling the buyer how
to mix it with the compound in order to make A’s invention. X also advertises in the newspaper that he sells the
solution, and that it can be mixed with the compound to make the invention. Y, a consumer, reads X’s ads and
buys the solution from X. Y reads the brochure that accompanies the solution and then uses the solution to
make the patented invention. X will probably be liable for inducing Y’s direct infringement. X’s brochure,
advertising, and sale of a component of the invention, actively solicit, and assist Y’s infringement.
b. Requirements
i. The person accused of inducement must have knowledge of the
patent
ii. Must be inducing infringement by that individual company’s
conduct
iii. Must prove there was actual direct infringement
1. Will have to put on a case for direct infringement to show
that infringement has succeeded
2. Direct infringement done by the purchaser usually (though
there are other cases)
iii. Contributory Infringement (§ 271(c))
1. Definition: Any acts of infringement of a component that constitutes less than the
patent combination in essence where there is no substantial non-infringing use of
patent
2. Basics
a. Typical claim: Making something typically at the request of a purchaser
that wants to build the patented combination
i. Just making the unique part of your invention alone is not an act of
infringement—still need to show direct infringement of some sort
ii. Have to sell that component to someone else who combines it with
other components to infringe patent
1. Will have to prove that there has been direct
infringement—cannot sue the direct infringer
2. Don’t want to sue the thousands of bicycle shops—want to
sue the one company that is making the sprocket/gear
arrangement
a. The real party of interest is the party who has made
the standard component
Example: The P Company has a patent for a process of applying a specified chemical to growing rice crops to
kill weeds without harming the crops. The chemical itself is not patented, but it has no substantial use other
than in the patented process. X sells the chemical, knowing that it has no substantial non-infringing use and that
buyers will apply it in a way that directly infringes the P Company’s patented process. X will be liable for
contributory infringement.
b. Requirements
i. Component must be especially made or adapted for infringement
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1. Not enough alone
ii. Component must not be a staple article (ex: nut/bolt) or a
commodity of commerce
iii. Component can have no substantial, non-infringing use
1. Most important requirement
2. If you have this, can satisfy the other 2 requirements
iv. Of the three claims, direct infringement is the most frequent and contributory
infringement is next—infrequent is inducement (need to show knowledge)
b. Determining Infringement
i. Two-Step Process for Determining Infringement
1. Claim construction (Markman Process): question of law for the court
a. Interpret/construe what is claimed by P’s patent
b. Court looks at 2 types of evidence:
i. Intrinsic evidence:
1. Claim (language, what does it mean to someone of
ordinary skill in the art?)
2. Specifications
3. Prosecution history (discussions that constitute an
explanation of what the claim means or a disclaimer as to
what the claim means
a. Nystrom case case involved interpretation of the
word “board” in the construction context. Issue was
whether the board had to be made from wood or if it
could be made from synthetic materials. In
prosecution history, arguments made that board was
wooden.
ii. Extrinsic evidence (given very little weight because so selfserving)
1. Things like dictionaries, treatises
2. Testimony of inventor: what did the inventor mean when
he said “board” in the patent?
3. General subject matter: need to educate the court as to the
technology
a. Classic case for claim construction process
(provides roadmap): AWH v. Phillips (2nd Circuit)
2. Reading the properly construed claim on the accused device
a. First analysis: literal infringement if the defendant’s product or process
literally falls within the language of one of the claims, then there is literal
infringement
i. Read the claim and compare the literal language as properly
construed on the accused device to see infringement
ii. In order to literally infringe, a D’s process or product must have
every element (“limitation”) set forth in the claim. The fact that
the D’s product or process contains additional elements will not
necessarily avoid infringement liability.
1. Ex: the claim for A’s patented machine consists of 7
elements: A, B, C, D, E, F, and G. D’s machine has
elements A, B, D, E, F, and G. It does not infringe because
it lacks element C.
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2. Ex: the claim for A’s patented machine consists of 5
elements: A, B, C, D, and E. The D’s machine has
elements A, B, C, D, E, F, and G. D’s machine probably
infringes.
b. If one element part of the claim is not present in the accused device, in its
place is a substitute element: doctrine of equivalence (DOE): Look to see
if substitute element is equivalent to required element
i. The purpose of the doctrine of equivalence is to prohibit someone
reading a patent from making a slight modification of the claim but
still using all of the concepts and benefiting from the invention
1. Equitable doctrine: doesn’t seem fundamentally fair and
let someone avoid the literal scope of the claim by making
a slight modification but still appearing to be practicing the
invention
a. Ex: the patent claim sets forth 6 elements: A, B, C,
D, E, and F. The D’s product has elements A, B, C,
X, E, and F. D’s product may infringe the patent
only if element X is equivalent to D.
b. Ex: the patent claim sets forth 6 elements: A, B, C,
D, E, and F. The D’s product has elements A, B, C,
E, and F. D’s product does not infringe either
literally or under the DOE because it lacks element
D or any other equivalent element.
ii. In doing DOE analysis, look at 3 aspects of substitute element:
1. Does the substitute element perform substantially the same
function?
2. Does the substitute element perform that function in
substantially the same way?
3. Does the substitute element accomplish substantially the
same result?
a.  FUNCTION-WAY-RESULT
b. NOTE: DOE is used in an infringement analysis
and not used with respect to interpretation of prior
art
i. When you are looking at prior art and
comparing to the subject matter of the patent
application, you do not look at the prior art
and provide a range and determine the
equivalents to that range (then determining
obvious)
ii. In looking at the prior art and in deciding
was obvious in view of that prior art under §
103, it might be appropriate to consider
whether someone of ordinary skill in the art
might think of the equivalence of that prior
art as part of what is obvious The analysis
is what is OBVIOUS in view of the prior art,
not what is EQUIVALENT
52
iii. Courts will also refer to whether the difference between required
and substituted element have a substantial/insubstantial
difference very subjective
1. Another test that is used in part of the
substantial/insubstantial difference is whether within the
particular industry if the substituted element is interchanged for the required element
2. If frequently inter-changed, more often determined to be
equivalent
ALWAYS ARGUE DOE AND SUBSTANTIAL/INSUBSTANTIAL TEST
c. The doctrine of equivalence is limited by prosecution history estoppel
i. The doctrine of prosecution history estoppel requires that the scope
of the patent claims be interpreted in light of what happened in the
application process in the PTO. If the applicant took a position
with regard to the scope of coverage of the claims, he or she will
not be allowed in a later infringement action to take an inconsistent
position.
Example: The patentee’s application claims a process for filtering dyes through a specified type of membrane
at a specified pressure. The PTO examiner objects that the claim, as worded, will encompass an earlier patented
process, and thus is unpatentable under § 102. The applicant then amends his claim, limiting the process to
filtration “at a pH under 9.0” in order to patent. In later infringement action, the patentee CANNOT rely on the
DOE to prevail against a D who engages in the process at a pH over 9.0 even if he otherwise could demonstrate
that the D’s pH element was “equivalent to the “pH under 9.0” element set forth in the patent claim, for
purposes of the process.
ii. If P amends claims (during application process with PTO), or more
narrowly defines something, they will be held to that
1. With respect to DOE analysis, this concerns actions that
were taken during prosecution that have focused on why
the subject matter is patentable or changes that were made
to the claim in order to cause them to become patentable
(ex: claims narrowed)
iii. When reviewing prosecution history, for claim construction—just
looking for general history—however, for DOE, now looking to
see whether the claim started as a range of 1-10 parts (example) or
whether it was narrowed (patent narrowing amendment)
1. Any narrowing amendment will create a prosecution
history
2. Any voluntary amendments made to satisfy patentability
requirements will create a DOE issue
3. Any amendment made without explanation will typically
result in DOE issue
4. If there is PH with respect to a particular element that is
being considered, then there is no scope of equivalence
available as a result of that element
iv. To get a patent issued, you narrow your claim—you are estopped
from claiming something more broadly than the patent language
53
Example: Peter Potter filed a patent application for a method of making chip-resistant ceramic mugs. One
element of his claim as originally drafted called for the clay to be heated to a temperature of between 400 and
500 degrees Celsius for between 12 and 18 minutes. During examination, the patent examiner called Potter’s
attention to an article in the Scientific Ceramicist published before Potter’s invention date, which disclosed a
method of making durable pottery by heating the clay to a temperature of between 490 and 500 degrees for a
period of exactly 18 minutes. To avoid this reference, Potter amends his claim, to recite a temperature of 400 to
485 degrees, and time of between 12 and 16 minutes. The examiner accepts the amendment, and the patent
issues. Thereafter, Potter sues Thelma Thrower for infringement. Evidence reveals that she heats her clay to
490 degrees for 17 minutes. This is not literally within the scope of the amended patent, so Potter invokes the
DOE, arguing that the 5 degree and 1 minute differences between the D’s method and his patented method are
insubstantial. Because Potter relinquished claims to temperatures over 485 degrees and times over 16 minutes
during the prosecution of the patent, prosecution history estoppel precludes the use of the DOE. Potter will,
therefore, lose the infringement action.
c. Foreign Activity: § 271(f) and § 271(g)
i. CODE § 271(f): a person who supplies from the US all or substantial portion of the
components of a patented invention in a manner that actively induces combination of the
components abroad will be liable as an infringer SOMEONE SUPPLIES PARTS
FROM US FOR FULL ASSEMBLY ABROAD
1. Imposes liability on a person who supplies from the US a material component of a
US patented invention that has no substantial use aside for its use in the invention,
if:
a. The person knows that the component is especially adapted for use if the
patented invention and has no substantial non-infringing use and;
b. The person intends that the component will be combined with other
components abroad in a manner that would infringe the patent if such
combination occurred within the United States
Example: X Company has a patent on the invention that incorporates a size 3 widget. The size 3 widget is
custom-made for this invention. There is no other substantial use for widgets for that particular size. Y custommakes size 3 widgets and sells them to a Korean buyer, who combines them with other components in Korea to
make X Co’s patented invention. Y knows and intends that this will be done. Since this assembly takes place
abroad, there is no direct infringement by the Korean buyer under § 271(a), and Y cannot be held liable for
contributory infringement under § 271(c). However, under § 271(f), he will be liable for infringement to X
Company.
2. CODE § 271(g): PROCESS PATENTS: Prohibits § 271(g) from importing into
the United States, or selling, offering to sell, or using in the US, a product made
by the US patented process SOMEONE MAKES PATENTED PRODUCT
OUTSIDE US
a. Want to thwart businesses who avoided US process patents by using the
patented process abroad to manufacture products, then imported the
products into the US to sell or use in competition with the US patentee
i. NOTE: not limited to products manufactured abroad—when
products are made through unauthorized use of the patented
product domestically, the process patent will have the right (via
271(g)) to prohibit sale and use of the resulting products, even if
they are not themselves patented
b. The sale of the product in the US will constitute an infringement for the
patent even though the process was performed abroad
c. Difficult proof requirements because you have to go to the foreign country
to prove how the process is performed
54
Example: A has a US process patent for producing widgets. Widgets, however, have been around for a long
time and are unpatented. B uses A’s patented process in China to make widgets and sells some of its widgets to
C. C imports them into the US and resells them to D, who was unaware that the widgets were made through
A’s patented process. D then resells the widgets retail to non-commercial users. Under these facts, B will not
be liable to A because the acts took place outside of the US. C will be liable for importing and selling the
widgets in the US. Since § 271(g) prohibits a remedy against non-commercial users or retail sellers if here is an
adequate remedy against the importer or others, A probably will not have a cause of action against either D or
D’s retail purchasers.
d. Licenses
i. LICENSING ESTOPPEL: Situation occurs when A licenses B to use A’s patent, but
then B turns around and says they do not like the patent and believe the patent is invalid
1. For years, there was a concept called licensing estoppel if B took the patent and
enjoyed the privilege of exclusivity that comes with that patent, B was estopped
from challenging its validity
2. Akins case: SCOTUS decided on the grounds of public policy that it wanted to
remove invalid patents—no such thing as licensing estoppel—can challenge
validity today!
a. Typical scenario:
i. Patent holder sues for patent infringer
ii. Licensee argues that it is invalid
3. Metamune: licensee wanted to get patent invalidated even though they had a
license agreement
ii. Licensing Agreements
1. Terms of License Agreement
a. Ex: I have a patent, you own a license. I say that if you want a license,
you have to pay me royalties for 25 years. Licensee agrees. Case says
that it can only last the term of payment.
i. No matter what the license agreement says, the payment obligation
will cease once the patent term is up
e. Defenses
i. Can argue patent is not valid (validity is a question of law) BURDEN is on the
infringer (patent that issues is presumed valid)
1. Patent is not novel, non-obvious, patentable subject matter, useful (concentrate on
non-obviousness)
2. Patent holder has no enforcement rights between filing and issuance (patent
pending period)
3. Patent obtained by fraud (requires intent to deceive and material concealment of
prior art)
4. Were some decisions that testing will be a use
a. § 271(e)(1): If you are undertaking activity pursuant to the approval
process of a government agency, that will NOT be an act of patent
infringement
i. Do not want experimental use to be an infringement
ii. Can argue that there was no infringement
1. Neither literal or DOE test applies
2. D had permission (licensing, estoppel, etc)
VIII. Remedies
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a. Monetary Damages (35 USC § 284)
i. You are entitled to damages to compensate for the injury you received, but in no event,
not less than a reasonable royalty
1. Will see 2 arguments in damages litigation
a. Low end of damage recovery: reasonable royalty (default)
i. Reasonable royalty: amount a potential licensee seeking a license
to make, use, or import the patented invention would be willing to
pay and a reasonable patentee would be willing to accept in armslength negotiations at the time of infringer.
b. Upper end of damage recovery: lost profits (max recovery)
i. Requirements for Lost Profits:
1. BUT FOR standard: it is likely that but for the
infringement, the sales would have come to you
2. CAPACITY: Have to show that you have, as the patent
owner and manufacturer, the capacity to sell additional
units
ii. Incremental profit analysis: what is the incremental cost to build 1
other unit?
1. Material for that item
2. Labor required
ii. Notification Requirement: Must Notify the WORLD of Patent Claim (§ 287)
1. Until D has notice of your claim, damages do not start accruing
2. Can establish notice in 2 ways
a. Write a letter saying infringement
b. Far more popular: mark patented product with patented number
iii. NOTE: Treble damages and willful infringement
1. Need to show extraordinary conduct reckless, irresponsible, knew of the
conduct and didn’t care
2. Exceptional cases
a. Prevailing party can get legal fees
b. Injunctive Relief
i. If you argue for preliminary injunction, argue that the patent is valid, but this is why there
was infringement
1. LAW PRESUMES THE PATENT TO BE VALID
ii. Requirements for Injunctive Relief: Have to show all 4 of these in almost all JDs
1. Irreparable injury
a. Damages are not sufficient to satisfy your injury
2. Likelihood of success on the merits
a. Translates to a “substantial” likelihood of success on the merits
b. Preponderance standard
3. Balancing of the equities
a. In favor of the party seeking injunction
b. Measuring harm between the 2 parties
4. Public policy support of grant of injunction
a. Usually not an issue; public policy supports patent system
c. In EXCEPTIONAL cases, can get legal fees (§§ 284-285)
56
COPYRIGHT
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I.
SUMMARY:
Expression v. idea
Originality (Feist)
Creativity (Koosh)
Who judges originality/creativity (Bleistein)?
Useful articles (bicycle rack)
Characters (delineation)
Work-For-Hire (CCNV)
Joint Works (intent to merge)
Right of Publicity and Preemption (Section 301)
Infringement (access and substantial similarity)
Fair Use (Sony, Harper, Campbell, Arriba, Bill Graham)
Remedies
Basics of Copyright
a. What is a copyright?
i. Copyrights are the rights of an author or other owner to control within certain limits the
exploitation of his or her work.
ii. This specifically includes:
1. The right to make the work
2. The right to make copies
3. The right to sell and distribute copies
4. The right to make a “derivative work” (movie version of a book or a translation)
5. The right to perform the work publicly
6. The right to display the work publicly
b. What is the basis for copyright law?
i. Constitutional
1. Article I, Section 8: grants Congress the power to promote the progress of science
and useful arts, by securing for limited times to authors and inventors the
exclusive right to their respective writings and discoveries
a. Promotion of the arts and sciences is the primary purpose; reward to
authors/inventors is secondary
b. Statute is broadly construed
i. “Authors” very broadly construed to mean those who make many
kinds of creative work—does not refer only to writers
ii. Writings include any physical rendering of the fruits of creative
intellectual or aesthetic labor (Goldstein v. CA)
1. “Writings” broadly construed to encompass many types of
creative works, provided they are fixed in some tangible
medium of expression
ii. Statutory
1. Generally
a. The current copyright statute provides that copyright will subsist in
“original works of authorship fixed in any tangible medium of expression”
2. 1909 Copyright Act
a. State and federal system
57
i. Had state protection until publication; thereafter, could receive
federal protection if that included notice
b. Invocation of federal protection destroyed state protection
c. “Publication” was generally (but not always) required to obtain federal
protection
i. The failure to include a copyright notice on copies of a published
work lead to a forfeiture of all statutory rights
ii. NOTICE MANDATORY ON EVERY COPY OF A PUBLISHED
WORK
3. 1976 Copyright Act
a. Preemption of “equivalent” state common law copyright
b. Created omissions for copyright notice—exceptions to forfeiture:
i. Only few copies lacked notice: Notice omitted from a relatively
small number of copies distributed or
ii. Cure through registration and belated addition of notice:
Registration has been made before and was made within 5 years
after the publication without notice, and a reasonable offer is made
to add notice to all copies distributed after omission has been
discovered; or
iii. Omission due to publisher’s error: The notice has been omitted in
violation of an express requirement that as a condition of
distribution they bear prescribed notice
4. Berne Convention (effective March 1, 1989)
a. No forfeitures: the failure to include copyright notice will have no effect
on the validity of copyright in a work published after March 1, 1989
b. No liability for damages for infringements by an innocent infringer
committed before receiving actual notice if the person can prove he or she
was misled by the omission or notice
c. Today, copyright protection attaches when the work has been fixed in a
tangible medium of expression. Before 1978, federal copyright protection
attached to a work when the work was published with a COPYRIGHT
NOTICE on copies of the work (author had to publish work and have
notice). Now, the author need only write the novel for copyright to attach,
and remain attached.
5. Digital Millennium Copyright Act (DMCA): Encourages copyright owners to
engage in technological self-help (such as digital water-marking, password
systems, and encryption measures) to prevent unauthorized access and to control
use of their works on the Internet
a. Also prevents tampering with the copyright management information that
copyright owners place on their works
**NOTE: Works published between 1978 – 1989: If the work was published during this period, it will not be
protected unless copies either contained a proper copyright notice or the omission was excused under the
provisions under the 1976 Act.
c. What are the limitations of a copyright?
i. Copyright as a limited monopoly
ii. Limited as to:
1. Fixation: writings (fixed in a tangible medium of expression)
2. Subject matter: ideas are not protected by copyright
3. Originality
4. Duration
58
5. Promotion of the public welfare
d. How do you secure and protect a copyright?
i. Create an original work in a tangible medium (fixation) until the work is fixed, no
copyright protection
ii. Recommended but no required for post-Berne works: affix copyright notice where it can
be seen
iii. Register the copyright within 90 days of publication
1. Why?
a. Prerequisite for lawsuit
b. Prerequisite for recovering statutory damages and attorney’s fees
c. Prima facie evidence of copyright validity
d. Constructive notice of facts
2. How?
a. File application; date stamped and sealed
b. If registration is refused, can appeal to Copyright Office
i. Action of infringement is allowed provided you notify the Register
and serve a copy of the complaint on her
e. How do you obtain an international copyright?
i. Universal Copyright Convention
1. Enabled the US author to get international protection without abandoning the US
historic insistence on including copyright notices on works
ii. Berne Convention (effective March 1, 1989)
1. Copyright notice is no longer mandatory
2. Although registration is not required for works whose country of origin is not the
US, foreign authors should register to obtain the presumption of prima facie
validity and awards of statutory damages/attorney’s fees
3. Look to “national treatment” US author is granted the same rights in a signatory
country as a national of that country and vice versa (ex: American author has the
same rights in a court in Japan as a Japanese citizen)
f. How do you transfer a copyright?
1. Section 202: Ownership of Copyright as Distinct from Ownership of Material
Object
a. Transfer of the Object: Does not convey rights in the copyrighted work
imbedded in the object absent an agreement (need signed instrument)
i. Transfer of the physical object does not necessarily transfer rights
in the book (ex: think of a Grisham novel—you own the physical
book, but Grisham owns the rights in the book)
2. Section 201(d)(1):
a. Provides that ownership of a copyright “may be transferred in whole or in
part by any means of conveyance or by operation of law, and may be
bequeathed by will or passed as personal property by the applicable laws
of intestate succession”
b. EACH OWNER can transfer non-exclusive rights to convey their rights
3. Section 204(a):
a. Provides that a transfer of copyright ownership “other than be operation of
law (heirs)” is NOT VALID unless an instrument of conveyance, or a note
or memorandum of the transfer, is in writing and signed by the owner of
the rights conveyed or such owner’s duly authorized agent.”
i. STATUTE OF FRAUDS
4. Section 205: Recording of Transfers
a. A transfer of copyright may be recorded if:
59
i. The recordation document bears the “actual signature” of the
person who executed it; or
ii. It is accompanied by a “sworn or official certification that it is a
true copy of the original signed document”
b. Recordation is NOT mandatory—but it does provide constructive notice to
all persons of the facts stated in the document, but only if:
i. The recorded document specifically identifies the work to which is
pertains (so it can be indexed) AND
ii. Registration has been made for the work
BOTTOM LINE: IF YOU ARE ACQUIRING SOMETHING VALUABLE, PRORTECT YOURSELF BY
RECORDING
5. Priority between conflicting transfers
a. You have 30 day grace period to record a transfer executed in the US
b. You have 60 day grace period to record a transfer executed outside US
c. Otherwise, the later transfer prevails if it is recorded first (after 1 month/2
month safe harbor), but only if the recording complies with Section 205(d)
and the transfer is:
i. Taken in good faith, for valuable consideration, among other
requirements
g. What long does a copyright last?
i. Sections 301 – 305
ii. Generally
1. Copyright in a work created on or after January 1, 1978: lasts for the life of the
author plus 70 years
2. In the case of a joint work, the term is the life of the last surviving author plus 70
years after such author’s death
3. In the case of anonymous and pseudonymous works, and work-for-hire, the
terms is 95 years from the year of first publication, or 120 years from creation
(whichever expires first)
iii. The trap of Section 303
1. Duration of copyright for works created but not published or copyrighted before
January 1, 1978
a. Under the 1909 Act, copyrights existed for 28 years, and if renewed, for
an additional 28 years
i. Where the author assigns the renewal copyright in a work, that
assignment is ineffectual if the author dies before the
commencement of the renewal period
ii. If the author DIES BEFORE THE RENEWAL period, then the
assignee may continue to use the original ONLY IF the author’s
successor transfers the renewal rights to the assignee
iv. Section 304 and WORK FOR HIRE
1. In the case of any copyright subsisting in either its first or renewal term on
January 1, 1978, other than a copyright in a work made for hire, the exclusive or
non-exclusive grant of a transfer or license of the renewal copyright or any right
under it, executed before January 1, 1978, by any of the persons designated by
this section, otherwise than by will, is subject to termination under the following
conditions
a. WHY you want work-for-hire treatment if your client is a producer
b. There is no right to terminate because writer is not the author
v. Eldred v. Ashcroft (SCOTUS 2003): Congress has considerable latitude in shaping IP
law
60
1. The issue in Eldred was the constitutionality of the Copyright Term Extension Act
of 1998 which added 20 years to the term of existing copyrights: thus extending
the copyrights in works dating back to the 1920s
2. Eldred rejected the argument that Congress had exceeded the power to grant
copyrights for “limited times” in order to “promote the progress of science”
a. Plaintiffs argued that this clause implies that Congress’s authority is
limited by the incentive-to-create rationale
II.
Subject Matter of Copyright: Useful Articles and Protection for Characters
a. What is Copyrightable Subject Matter?
i. Writings
1. Broadly construed
2. Section 102:
a.
b.
c.
d.
e.
f.
g.
h.
Literary works
Music
Drama
Pantomimes/choreography
Pictorial, graphic, and sculptural works
Movies
Sound Recordings
Architecture
ii. Section 102(b): Cannot copyright an idea, procedure, process, system, method of
operation, concept, principle, or discovery need a real expression of the idea
iii. Compilations: a work formed by the collection and assembling of preexisting materials or
of data that are selected, coordinated, or arranged in such a way that the resulting work as
a whole constitutes an original work of authorship
iv. Derivative works: one based on another work—a work based upon one or more
preexisting works, such as a translation, musical arrangement, dramatization,
fictionalization, motion picture version, sound recording, etc (See Suntrust case)  can
have own copyright, provided it is sufficiently original
Section 102(a): Copyright protection subsists, in accordance with this title, in original works of authorship
fixed in any tangible medium of expression, now known or later developed, from which they can be
perceived, reproduced, or otherwise communicated, either directly worth or with the aid of a machine or
device.
THREE REQUIREMENTS:
ORIGINALITY—WORK OF AUTHORSHIP—FIXED IN A TANGIBLE MEDIUM
v. No copyright available for:
1. Ideas (only expression copyrightable)
a. Note: Merger Doctrine where there is a merger of the idea and
expression (ex: mosaic design)
i. Provides that when there is only one or a limited number of ways
to express an idea, the expression “mergers” with the idea and
becomes unprotectible
ii. For purposes of determining whether the merger doctrine should
apply, courts generally will consider how many effective ways
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there are to express the idea—far-fetched or impractical ideas will
not be considered
iii. MAJOR DEFENSE TO INFRINGEMENT
2. Information that is common property
a. Examples:
i. Standard calendars
ii. Height and weight charts
iii. Tape measures and rulers
iv. Schedules of sporting events
v. Lists/tables taken from public documents or other common sources
3. Procedures
4. US government works
5. Words and short phrases such as names, titles and slogans, familiar symbols or
designs, mere variations of typographic ornamentation, lettering/coloring, mere
listing of ingredients or contents
6. Typeface
7. Scenes a faire
a. No copyright for stock literary scenes (beer-drinking German, trench-coat
detective, unicorn and castles for little girls’ wallpaper borders)
b. Applies more to fictional works and withholds protection from character
attributes dictated by the work’s unprotectable ideas
c. The less developed a character, the less copyrightable—cartoons more
protectable
b. Works of Utility
i. Use of a work
1. Copyright does not prevent “use” of a work
a. You can still read a book and listen to a CD without infringing copyright
2. While a copyright owner through its right of “control” may withhold access to its
manuscript, once a bona fide copy of the book is purchased it may be re-read and
re-sold without royalty or other payment
ii. Baker v. Seldon (SCOTUS 1879): No copyright protection in ideas
1. Facts: Selden obtained copyright that described an improved system of
bookkeeping (contained examples of book-keeping forms, examples). D, Baker,
created a book using a very similar system (different arrangement of columbs and
different headings) that is illustrated in Selden’s books. Selden sued for
infringement. Does Selden have the exclusive right to the use of the system or
method of book-keeping that his books illustrate and explain?
2. Holding: NO There is no copyright protection in ideas
a. A book does not give someone the exclusive right to exclude others from
practicing what is described in the book
i. Distinction between patent and copyright
1. If he wanted to get the exclusive right to the “useful art”
described in the book, should have gotten a patent
2. Copyright only secures to him the exclusive right of
printing and publishing the book
b. Use versus explanation qualification
i. Where the use of the idea explained in a copyright work requires a
copying of the work itself, there is no infringement
ii. However, if copyright occurs not in using the idea but rather in
copying the author’s explanation of it, then such copying would
constitute an infringement (subject to fair use)
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1. Beck: plan or set of instructions for installation of an
industrial machine could b copyrighted
3. Criticisms of the Case:
a. Fact that a particular work is to be used in business rather than art should
not mean work is not copyrightable
b. “Blank forms” are not copyrightable there are several exceptions to this
4. Baker v. Selden today
a. Copyright act provides that protection does not extend to an idea,
procedures, process, system, method of operation, concept, principle, or
discovery
i. BUT, if a copyrightable expression of an idea or procedure has
been copied, then there may be an infringement even if the
defendant arguably does so in order to use the material and not to
explain the idea
b. Protection of legal forms: unclear
c. Mechanical devices and other non-writings not protectable because not
a writing
iii. Works of Applied Art (Pictorial, Graphic, or Sculptural Works)
1. NO PROTECTION FOR USEFUL OBJECTS
a. BUT, the copyright statute does permit copyright protection “to the extent
that such design incorporates pictorial, graphic, or sculptural features that
can be identified separately from, and are capable of existing
independently of the utilitarian aspects of the article.”
2. Physically separable aesthetic features: where a useful article has an artistic
attribute or embellishment that can be physically attached or separated, that
artistic component is protectable (ex: hood ornament on a Jaguar car)
3. Conceptually separable aesthetic features: whether artistic aspects of the article
can be “conceptualized as existing independently of their utilitarian function”
a. Brandir International v. Cascade Pacific Lumber (2nd Cir. 1987)
i. Facts: Owner of Brandir created wire sculptures and then adapted
design into bike rack. Brandir realized Cascade was selling a
similar product—attempted to register a copyright but was denied
because it did not contain any element that was “capable of
independent existence as a copyrightable pictorial, graphic, or
sculptural work apart from the shape of the useful article.”
1. Issue: Is the work of an industrial design not subject to
copyrightable protection or a work of applied art that is
subject to copyrightable protection?
ii. Holding: The work is of industrial design and thus not subject to
copyright protection
1. Form and function are inextricably intertwined in the rack,
its ultimate design begin as much as the result of utilitarian
pressures as aesthetic choices
2. Dissent: any reasonable observer would view the rack as an
ornamental sculpture (if put in park, aesthetic value clear)
a. Test should be how a final article is perceived and
not how it is developed how would an ordinary,
reasonable observe perceive an aesthetic concept to
the bike rack separable from its use?
iii. The Brandir Test: Conceptual Separability
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1. Looks to whether the design reflects the creator’s artistic
judgment independent of functional considerations
b. Example:
i. A mannequin of the human head used to train beauticians in
styling hair and applying make-up is arguably a useful object.
Moreover, the artistic or aesthetic features of the face of the
mannequin—the shape of its lips, nose and eyes, for instance—are
not physically separable from the mannequin. However, because
one could conceptualize a model of a human face and head
independently of the specific facial features of any given
mannequin, and because those facial features of are the product of
artistic judgment, a court may find them to be “conceptually
separable” elements subject to copyright.
ii. Thus, a party who exactly duplicates a competitor’s mannequin
may be held liable for infringement.
4. Aesthetic objects incorporated into useful objects: a purely aesthetic object does
not lose its eligibility for copyright protection just because it is used as a
component part of a useful item
a. Mazer v. Stein (SCOTUS 1954): P had obtained copyright protection for
statuettes for dancing figures, which it used as bases for table lamps.
SCOTUS upheld copyright in the statuette even though it was part of the
useful article—the protection extended to the form or shape of the
statuette, not the lamp itself.
i. Beck: should the fact that it is attractively shaped qualify it as a
work of art?
b. The Balance
i. The design of a useful article shall be considered a pictorial,
graphic, or sculptural work ONLY if and only to the extent that
such design incorporates pictorial, graphic, or sculptural features
that can be identified separately from, and are capable for existing
independently of, the utilitarian aspects of the article
iv. Architectural Works
1. Architectural works are the designs of buildings, embodied in any tangible form
including buildings, themselves as well as architectural plans and drawings.
2. Historically, US law protected architectural plans against direct copying by
treating tem as pictorial and graphic works—but, did not protect actual buildings
a. Under the former law, one could inspect a building and erect a duplicate
without fear of liability
3. Congress added copyright protection for buildings shortly after the US ratified
Berne Convention such works are ONLY PROTECTED if created after
December 1, 1990
v. The Question of Costumes: Is Copyright protection for a costume appropriate?
1. Originality
a. Masks are treated as pictorial or sculptural work and are registrable
b. The Copyright Office treats costumes as useful articles and registrable
only upon a showing of separability of the aesthetic from the useful
i. “Fanciful costumes will be treated as useful articles, and will be
registered only upon a finding of separately identifiable pictorial
and/or sculptural authorship”
ii. “Costumes, by their very nature, exist at the boundary between
works of imagination and works of utility”
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2. What about costumes that stand for a copyrightable character?
3. Useful?
a. It may be argued that theatrical costumes should not be treated as useful
articles at all expresses the author’s underlying literary expression
vi. Performances and Displays
1. The public performance of a work, or its public display, does not constitute a
publication, provided there was an express or implied condition on the public not
to copy the work
2. General publication: takes place when tangible copies of the work in question are
made available to the general public
3. Estate of Martin Luther King v. CBS (11th Cir. 1999):
a. In 1963, MLK gave his famous “I Have a Dream” speech to a throng of
200,000 people at the Lincoln Memorial during the March on Washington.
Copies of the speech were also distributed to members of the media in
attendance. Nonetheless, the courts have held that Dr. King retained the
common law copyright in the text of his speech. His oral delivery of it in
public was a performance, and thus no publication at all. His limited
distribution of written copies to the press was only a LIMITED
PUBLICATION for the purpose of enabling them to better cover the
event.
vii. Protection of Characters
1. Generally, characters are entitled to copyright protection—where specifically
delineated and where the expression is copied, not merely the character type
a. Characters created by words
i. In the case of characters created strictly by WORD (e.g., novel or
poem) character must be extremely well delineated, to the point
that he constitutes the story being told, rather than merely being a
vehicle for telling the story
1. Nichols MAJORITY VIEW: Learned Hand took a less
rigid view, suggesting that the character must be more than
just a “type” and must be drawn in considerable detail—D
to infringe, must copy the detail
2. Anderson v. Stallone
a. Group of characters from movie Rocky were found
to be so specifically delineated that they were
protected from bodily appropriation when taken as a
group and transposed into a sequel by another
author
b. Characters with visual aspect
i. In cases involving cartoon characters, or movie or TV characters,
where the character at issue has a visual aspect as well as
personality characteristics described by word and story line, courts
have been more willing to find copyright protection
ii. The visual image, combined with conceptual qualities, gives the
court something more concrete to work with, and more comfort
that the character constitutes expression and not idea
iii. Characters are most readily protectable where the mark consists of
cartoons or other graphic representations rather than word
descriptions
1. Disney Products v. Air Pirates
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a. Court held that Mickey Mouse and other Disney
characters were protectable apart from the stores
comic books characters are distinguishable from
literary characters
2. DC Comics v. Unlimited Monkey Business (1984)
a. Facts: Characters Superman and Wonder Woman,
were delineated by their mannerisms, critical
features and costumers which were themselves
work in order to delineate the character, not for
utilitarian reasons. The Super Stud script selects
and uses the most characteristic and memorable
portion of the Superman plots Super Stud walks
in with a business suit, decides he is too mild for
the job, and then comes out as Super Stud (uses
phrases like, it’s a nerd, it’s insane, it’s Super Stud!)
III.
The Requirement of Originality and Authorship
a. What is Originality?
i. To be original, a work must be an independent creation
1. Ex: Two poets ignorant of each other, composing identical poems—both are
original and hence copyrightable (Feist)
ii. How much originality is enough?
1. One of the most cumbersome questions of copyright law
2. Any “distinguishable” variation of a prior work will support copyright if the
variation was produced by the author’s independent and artistic efforts and is
more than merely trivial
b. Bleistein v. Donaldson Lithographic Company (SCOTUS 1903): Who judges creativity?
i. Facts: Case of infringement against Donaldson Lithographic Company by Bleistein, an
employee of lithographic company—B had been hired by owner of circus to design and
produce ads to promote the circus. B alleges Ds copied 3 of the posters and sued for
copyright infringement.
ii. Holding: Ps have rights entitled to protection of law—special adaptation of these pictures
to the advertisement does not prevent a copyright
1. “It would be a dangerous undertaking for persons trained only to the law…to
constitute themselves judges…outside of the narrowest and most obvious limits.”
a. Judges should not be judges of works of art, instead the marketplace ought
to judge
iii. Significance: Any work that qualifies as an original work of authorship is copyrightable,
irrespective of whether it is high art, popular art, commercial art, idiosyncratic doodling,
or any other form of expression
c. Alfred Bell v. Catalda Fine Arts (2nd Cir. 1951): An author can take other types of nonoriginal material, and by adding her own original expression, qualify for copyright.
i. Facts: A reproduction in the form of an engraving of another work—copyrightable?
ii. Holding: Held to be copyrightable because the work of the engraver upon a copper plate
required personal and individual conception, judgment, and execution as to the depth and
shape of the depression in the plate and the creation of trial prints which were altered to
make the final result
1. No two engravers could produce identical interpretations of the same public
domain oil painting
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2. Engraver transferred conception of painting onto another medium trying to
express in another medium what the original artist expressed in oils and canvas
iii. Significance
1. Even a reproduction from the public domain may pass the originality test if the
artist interprets:
a. The public domain originally and
b. Expresses her interpretation in an original manner (ex: why a rose on
a pillowcase may be subject of copyright even though the rose in nature is
not)
d. Hearn v. Meyer (SDNY 1987)
i. Facts: Plaintiff produced reproductions of public domain works. P tried to argue under
Alfred Bell by listing its difficult, time-consuming efforts to recreate the precise colors
from the original public domain work.
ii. Holding: Originality requirement cannot be satisfied simply by demonstrating physical
skill or special training
1. To separate the new work from the old, there must be something new added by
the artist
e. Koosh Ball Case(1989)
i. Facts: P sought copyright in a Koosh ball. Copyright denied registration because the
work was nothing more than a sphere and familiar shapes/symbols are not copyrightable.
ii. Holding: Court agreed that the ball was not registrable because there was insufficient
“creative authorship”
1. Case demonstrates that originality is NOT enough
2. There must be creative authorship: a requirement which refers to the nature of the
work itself (not just its origin)
f. Feist Publications v. Rural Telephone Company (SCOTUS 1991): What is originality?
i. Facts: Rural Telephone Company provides telephone service to several communities in
northwest Kansas—as a condition of monopoly, publishes telephone directory. Feist is a
publishing company that specializes in area-wide telephone directors, competes for
yellow-page ads. Rural refused to license its listings to Feist. Feist went ahead and used
some of the listings without Rural’s consent (took about 1309 of the 46,868 ads)—even 4
fictitious listings that Rural had inserted to detect copying.
1. Issue: Whether the copyright in Rural’s directory protects the names, towns, and
telephone numbers copied by Feist
ii. Holding: Names, towns, and telephone numbers copied by Feist were not original to
Rural and therefore were not protected by the copyright in Rural’s combined white and
yellow pages directory.
1. Facts are NOT original and NOT copyrightable
2. Factual compilations are eligible for copyright if it features an original
selection or arrangement of facts
a. “Selected, coordinated, or arranged” in such a way that the resulting work
as a whole constitutes an original work of authorship
3. Beck: Policy behind this:
a. Monopolization of facts would impede research and progress—possibly
violate the 1st Amendment
b. There is a distinction between creation (copyrightable) and discovery
you do not “create” a fact by “discovering it”
c. Selection, coordination and arrangement of pure facts in such a way that
the resulting work is original DOES qualify for protection
i. Can copy the facts, not their expression
iii. Significance:
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1. To establish infringement, 2 elements must be proven:
a. Ownership of valid copyright
b. Copying of constituent elements of the work that are original
i. Originality is a constitutional requirement
1. Congress has the power to grant exclusive rights to authors
in their writings—such words presuppose a degree of
originality
ii. Originality imports creativity
THUS, under FESIT: To be original means that a work is:
INDPENDENTLY CREATED BY THE AUTHOR (as opposed to copied from other works)
 POSSESSES MINIMAL DEGREE OF CREATIVITY
While individual elements of a work may be in the public domain, the selection and arrangement of them may
qualify the overall work for protection:
c. Audiovisual display of a video game
d. Rhomboid patterns on a sweater
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IV.
Summary of Originality
To be original, a work must be an independent creation
Judges should not be judges of works of art (Bleistein)
Reproductions from the public domain may be original if the artists interprets the public domain originally and
expresses her interpretation in an original manner (Alfred)
o To separate the new work from the old, there must be something new added by the artist
Originality requirement cannot be satisfied simply by demonstrating physical skill or special training (Hearn)
Originality is not enough—need creative authorship (Koosh)
Facts are NOT original and NOT copyrightable Factual compilations are eligible for copyright if it features
an original selection or arrangement of facts (Feist)
Ownership, Work-for-Hire Doctrine, Transfer & Term
a. Statutory Authority
i. Section 106: Exclusive rights
ii. Sections 201-205: Ownership and transfer of ownership
iii. Sections 302(A)-(C): Duration of copyright (individual/joint works/work-for-hire)
iv. Section 303: Works created but not published before the new Copyright Act
b. Ownership
i. Section 201(a): Copyright initially vests in the author or authors of the work
ii. Work-for-Hire Doctrine
1. Section 201(B): In the case of a “work-for-hire,” the employer or other person for
whom the work was prepared is considered the author (owner of copyright)
a. AUTHOR AS EMPLOYER: author owns the copyright
2. The Doctrine:
a. Work prepared by an employee within the scope of his or her
employment
b. Work specially ordered or commissioned for use as a: (independent
contractors + written agreement)
i. Contribution to a collective work
ii. Part of a motion picture or other audio-visual work
iii. Translation
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iv.
v.
vi.
vii.
viii.
ix.
Supplementary work
Compilation
Instructional text
Test
Answer material for a test OR
Atlas
1. If the parties expressly agree in a written instrument
signed by them that the work shall be considered “workfor-hire”
3. Community for Creative Non-Violence v. Reid (SCOTUS 1989)
a. Facts: P, CCNV, is a non-profit dedicated to eliminating homelessness.
CCNV hired Reid to sculpt a display that would dramatize the plight of
homelessness. Reid agreed to donate his services, paid $15,000 for
services. When sculpture finished, Reid refused to give it back and filed
copyright.
i. Issue: Does the work fall under the “work-for-hire doctrine” such
that the P can be deemed the author of the work for copyright
purposes?
b. Holding: NO Because Reid is an independent contractor (worked in his
own studio, etc) and CCNV has no copyright
i. Reid not an employee, but an independent contractor
ii. To determine if hired party is employee under agency law,
consider:
1. Hiring party’s right to control the manner and means by
which the product is accomplishment
2. Skill required
3. Source of the instrumentalities and tools
4. Location of the work
5. Duration of the relationship between the parties
6. Whether the hiring party has the right to assign additional
projects to the hired party…etc.
Summary of Work-For-Hire
Employer owns the copyright and work-for-hire applies:
(1) Work prepared by employee: when a work is prepared by a regular employee within the scope of his
or her employment, the work is a work made for hire (use doctrines of agency law—consider
employer’s right to control the manner and means by which the product is accomplished, supplying
tools, additional projects, etc.)
(2) Works prepared by an independent contractor under commission: A work prepared by one who is
NOT an employee can also qualify as a work made for hire but ONLY if it falls into one of the 9
itemized statutory categories and was prepared under a WRITTEN AGREEMENT expressly
indicating that the item would be a work for hire
a. Categories of work (Section 101):
i. Contribution to a collective work
ii. Part of a motion picture
iii. Translation
iv. Supplementary work (forward, illustration, etc)
v. Compilation
vi. Instructional text
vii. Test
viii. Answer material for a test
ix. Atlas
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iii. Joint Authorship
1. Section 101
a. Joint work is “any work prepared by two or more authors with the intent
that their contributions be merged into inter-dependent parts of a unitary
whole”
b. Thus, if two or more parties collaborate to create a work they are treated
as co-owners of the copyright in that work (ex: composer and lyricist)
2. Each joint author must contribute copyrightable expression, not just ideas
3. In addition, each joint author must intend at the time of creation that his or her
copyrightable contributions will merge with those of the authors into a unitary
whole must find the true intent of the parties
a. Ex: Rogers & Hammerstein: was there intent to collaborate?
b. Is there an intent to contribute to the unitary whole?
i. Note: contributions need not be equal
4. Childress v. Taylor (2nd Cir. 1991):
a. Facts: D, actress Taylor, persuaded playwright Childress to write a play
about the former “Moms Mabley.” Childress did all the writing and
Taylor made suggestions/did research. After the relationship deteriorated,
Taylor hired another writer and Childress sued for infringement.
b. Holding: Court found no joint authorship and the second play was
infringing of the first
i. Focused on the intent of the parties—intent lacking because of P’s
rejection of attempts to negotiate co-ownership status
ii. Each putative co-author must make a “copyrightable contribution”
5. Thomson v. Larson (2nd Cir. 1998):
a. Facts: Larson worked many years to create Broadway musical “Rent.”
The drama consultant worked with Larson and added 9% of the lines to
the script. Once the play was a hit, the drama consultant sought a
declaratory judgment that she was a joint author
b. Holding: 9% was plainly copyrightable—copyrightable contribution
i. However, the drama consultant was NOT a joint author because
there was no showing of an intent on the part of both parties to
merge the drama consultant’s contribution into a unitary whole
1. Larson received sole authorship credit, entered into a K
regarding the show which referred to him as the sole author
ii. There must be an intent to share in the “indicia of ownership and
authorship” such as:
1. Right to share in the proceeds
2. A right to control the work
3. A right to be recognized as the author
V.
The “Edge” of the Copyright Holder’s Rights: The Right of Publicity, Preemption, and Moral Rights
a. Idea Misappropriation
i. Ideas can be protected, but not by copyright: Idea Submission Agreement
ii. Are any ideas protectable or only concrete, novel ideas?
b. The Right of Publicity
i. Generally
1. Thought to be a branch of the right to privacy: right to be left alone
a. Right to control others’ commercial exploitation of one’s identity
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b. Gives the individual a form of property right in his name, likeness,
personality, and other aspects of identity
c. Public policy behind right of publicity
i. Need to protect individual privacy (especially in the case of noncelebrity plaintiffs who have been unwillingly thrust into the
public arena by the D’s use of their likeness to advertise products
or services)
ii. Need to protect against unjust enrichment and D’s reaping where
they have not sown by using the P’s hard-earned celebrity status
and good will to gain public acceptance of their products
iii. Need to protect against actions likely to lead to consumer
confusion about the source, endorsement, or sponsorship of goods
and services
iv. Need to provide an incentive to perform, by giving singers, actors,
athletes, and other performers property rights in their performances
2. Early cases: Rights in Name and Photograph
a. Christey Brinkley v. Casablanca: D was prohibited from publishing a
poster paragraph of the famous model without her permission. Even with
the permission of the copyright owner of the photograph which was used
on the poster, there could be no distribution of the poster without
Brinkley’s permission
b. Ann Margaret case: The magazine “High Society Celebrity Skin” was
allowed to use Ms. Margaret’s photo from the movie “Carnal Knowledge”
on the grounds that her willingness to appear partially undressed was a
matter of sufficient public interest to be protected under the First
Amendment thus, the purpose for the media in which the photograph
will be used affects the rights of publicity
ii. Expanding the Right of Publicity
1. Nancy Sinatra v. Goodyear Tire Company: Goodyear Tire Company secured
from the copyright owner the rights to use the music "These Boots Were Made
For Walking" but could not persuade Nancy Sinatra, the performer who made the
song famous, to appear on camera for the price offered. The defendants used
another vocalist who deliberately imitated Sinatra's performing style.
a. The court noted that there was no copyright or trademark infringement and
no use of Sinatra's name or likeness and therefore found no protectable
interest.
2. Estate of Elvis Presley v. Russen: Elvis Presley look-alike performed a live
theatrical concert not to parody Elvis Presley but to profit from his image and his
music. The court focused on whether such a performance ought to be protectable
under the First Amendment. The court said:
a. "The purpose of the portrayal in question must be examined to determine
if it predominately serves a social function valued by the protection of free
speech.
b. If the portrayal mainly serves the purpose of contributing information,
which is not false or defamatory, to the public debate of political or social
issues or of providing for free expression of creative talent which
contributes to society's cultural enrichment, then the portrayal generally
will be immune from liability.
c. If, however, the portrayal functions primarily as a means of commercial
exploitation, then such immunity will not be granted."
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i. BECK: How does your client know when it is providing
information to the public debate or providing for free expression of
creative talent which contributes to society's cultural enrichment
versus producing a performance which functions "primarily as a
means of commercial exploitation"?
3. Bette Midler v. Ford Motor Company: In Midler, the defendant used the song
"Do You Want To Dance" as background for the TV commercial. Midler refused
to participate and the defendant used a sound-alike backup singer for Midler. She
was told to sound as much like Midler as possible, but no name or picture was
used, and there was a license from the copyright holder.
a. The court tried to distinguish the Sinatra case on the grounds that her
complaint was for unfair competition claiming a "secondary meaning" in
the song and that to have allowed Sinatra to recover would have interfered
with copyright law (because the defendants in Sinatra had bought rights to
music).
b. By comparison, the court read Midler's complaint not as seeking damages
for use of "Do You Want To Dance" but for something "more personal
than any work of authorship."
i. On the other hand, the California right of publicity statute was of
no help to Midler because it only protected a person injured by
another's use of their name, voice, signature, photograph or
likeness, none of which were used.
c. Yet the court still granted relief on the grounds that Midler had a common
law cause of action for "an appropriation of the attributes of [her]
identity."
c. Moral Rights
i. United States: Visual Artists’ Rights Protection Act (VARA)
1. Generally
a. In 1990, Congress added special provisions to the copyright law to provide
additional protections for authors of works of “visual art”
b. Specifically, the statute confers a right to claim authorship of one’s own
work; to prevent the use of one’s name as an author of the work that has
been distorted or mutilated in a way prejudicial to the author’s reputation;
to prevent the distortion, or mutilation of a work in a way prejudicial to
the author’s reputation; and the prevent the destruction of a work of
recognized statute (Section 106A)
i. Author retains these rights even if he/she has parted with
ownership of the copyright interest in the work
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Author has rights to:
Claim authorship in the work
Prevent use of her name as the author of any work she did not create
Prevent the use of her name as the author of her work if the work has been distorted, mutilated, or
otherwise modified, so that the use would be prejudicial to her honor or reputation
Prevent any intentional distortion, mutilation, or other modification of her work which would be
prejudicial to her honor or reputation; and
Prevent any intentional or grossly negligent destruction of the work, if the work is of recognized
statute
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2. What is a work of visual art?
a. Defined as a painting, drawing, print, sculpture, or photograph existing in
a single copy or limited edition of no more than 200 copies
i. Protection extends to UNIQUE and NEAR UNIQUE objects of
FINE ART, rather than to objects of utility or mass production
b. Work for hire is not included
c. Other excluded works:
i. Posters, maps, globes, charts, technical drawings, diagrams,
models, applied art, motion pictures, or other audiovisual works,
books, magazines, newspapers, periodicals, databases, electronic
information services, electronic publications, or similar
publications
ii. Merchandising items and advertising, promotional, descriptive,
and packaging materials are also excluded
3. What constitutes the doctrine of moral rights?
a. Right of paternity/attribution: protects the author’s interest in receiving
recognition from the work (having name with the work)
b. Right of integrity: protects an author’s interest in preserving the work in
its original form (cannot distort/mutilate the work)
i. Both these rights are personal to the artist and cannot be assigned
ii. Even if a party purchases the artwork and the copyright therein,
under VARA the artist STILL RETAINS the right to prevent
modification or destruction of the work
4. Removal: Works of Visual Art that Are Incorporated into a BUILDING
a. IF the work can be removed safely by the building owner, then there is no
infringement provided the author is given NOTICE and opportunity to
remove the work if the author does not follow up, title conveyed to
artist
b. For works that may be harmed by their removal, VARA prohibits removal
without an explicit waiver signed by the artist
c. To be valid, the waiver must be in writing and specifically identify the
works
i. Waiver does not apply to works installed prior to June 1, 1991
ii. One joint author may waive the rights on behalf of all joint authors
d. Carter v. Helmsley-Spear (2nd Cir. 1995): LEAD CASE ON MORAL
RIGHTS
i. Facts: Landlord/property owner contracted for the creation of a
sculpture. The sculpture was made from tin cans, hub caps, and
assorted found objects and was viewed by the building owner as
garbage—some thought the sculpture reduced the rental value of
the building. When the building owner sought to remove the
“garbage,” the artist sued under VARA.
ii. Holding: Author lost in 2nd Circuit because that this was a workfor-hire (strained conclusion)
ii. Europe: much broader rights!
d. Preemption
i. Generally
1. Section 301
a. On or after January 1, 1978, “all legal or equitable rights that are
equivalent to any of the exclusive rights within the general scope of
copyright as specified by section 106 in works of authorship that are fixed
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in a tangible medium of expression and come within the subject matter of
copyright as specified in sections 102 and 103, whether created before or
after that date and whether published or unpublished, are governed
EXCLUSIVELY by this title.”
ii. Two Tests
1. State Law Rights equivalent to the rights in Section 106 (right to reproduce; to
prepare derivative works; to distribute copies, to perform publicly; to display
publicly; to perform publicly)
2. Is the work in question a work of authorship that is fixed in a tangible medium of
expression and comes within 102 and 103 (literary works, musical works,
dramatic works, pantomimes and choreographic works, pictorial graphic and
sculptural works, motion pictures, and other audiovisual works, sound recordings,
architectural works, or compilations of derivative works)?
iii. Preemption of Right of Publicity
1. Baltimore Orioles, Inc. v. Major League Baseball (7th Cir. 1986):
a. Because the baseball clubs’ owned copyright, they also owned the
performance embodied within the copyrighted videotape.
b. Court cited Section 101 which provides: “a work is fixed in a tangible
medium of expression when its embodiment in a copy…by or under the
authority of the author, is sufficiently permanent and stable to be permitted
to be perceived, reproduced, or otherwise communicated…”
i. Because the performances were embodied in a copy that could be
perceived, the court held that any property rights in a performance
were equivalent to other rights of copyright
ii. Because it fit within the subject matter of copyright, it could not be
protected under state law on the grounds that it was insufficiently
original to be protectable under federal law
2. Facenda v. NFL Films (3rd Cir. 2008)
a. Facts: The estate of Philadelphia broadcasting legend John Facenda sued
the NFL under the Lanham Act’s false endorsement provisions and PA’s
right of publicity statute for use of Facenda’s voice over work in a cable
TV production called “The Making of Madden NFL 06.”
b. Holding: Third Circuit granted estate summary judgment as to right of
publicity claim
i. Rejected NFL’s argument that copyright law preempted the
estate’s right of publicity claim
ii. No express preemption
1. State claim contained an element additional to the
requirements of copyright infringement and because a
voice is not copyrightable subject matter
2. No conflict preemption because
a. The production at issue was an advertisement
within the state’s regulatory authority rather than an
expressive work within the domain of copyright law
and
b. Facenda’s collaboration with NFL was to create
films documenting NFL games—he did not consent
to his sports commentary’s use as part of an ad for a
video game
e. First Amendment and Right of Publicity
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i. The right of publicity does not apply where names of likenesses are used in or in
connection with newspapers, TV shows
ii. This prevents assertion of the right whenever someone is photographed for news
purposes
iii. Zacchini v. Scripts Howard Broadcasting: A local broadcasting station broadcast the
key part of a human cannonball act, and the court found this to be an appropriation of the
plaintiff’s property and the First Amendment was no bar to protection
iv. Namath v. Sports Illustrated: Football player’s image was used to advertise
subscriptions to Sports Illustrated. The original photo had been used on the cover in
connection with coverage of Namath and NY Jets. Court declined to fight right of
publicity infringement (exception in states for news)
v. Recently:
1. Sale of posters that reproduced a photograph of Joe Montana and the Forty Niners
by a newspapers which had done a story about Namath and the Forty Niners did
not infringe the right of publicity—activity was protected by the First Amendment
because the posters were sold in connection with advertising for the newspaper
f. Rosa Parks v. Outkast (6th Cir. 2003)
i. Facts: Rosa Parks suing record company and OutKast for using her name as the title for
the song, Rosa Parks. Contends that the use of her name constitutes false advertising
under 43(a) of the Lanham Act (costumer confusion), infringes right of publicity,
defames her character, and interferes with an ongoing business relationship (has a gospel
CD out).
ii. Holding: Find for Parks—erred in granting SMJ
1. Parks’ prior commercial activities and international recognition as a symbol of the
civil rights movement endow her with a TM interest in her name the same as if
she were a famous actor or musician
2. Right of publicity: genuine issue of fact—reasonable finder of fact could find that
the title is a disguised commercial ad or adopted solely to get attention to the
work
3. Intentional interference with business relationship: Parks has not brought forth
evidence that the song makes the production/promotion of her other album more
expensive
VI.
The Scope of the Copyright Holder’s Rights: Infringement
a. Infringement Generally: Ways a Work Can Be Infringed
i. Making a copy
ii. Distributing an infringing copy
iii. Creation of a derivative work (unauthorized movie of a book)
iv. Unauthorized public display (ex: downloading photographs from a website)
v. Unauthorized public performance (ex: music played by band without a license)
vi. Contributory infringement: one, with knowledge of the infringing activity, induces,
causes or materially contributes to the infringing conduct of another)
1. Sony Corp. of America v. Universal City Studious (SCOTUS 1984)
a. Facts: Sony manufactures and sells home video tape records.
Universal/Disney owns the copyrights to some of the TV programs that
are broadcast on the public airwaves—some members of the public use the
VTRs sold by Sony to record some of these broadcasts (time-shifting).
Universal alleges that some were copying, thereby infringing—claim that
because Sony markets the VTRs, they are liable (supplying means to
accomplish infringing activity).
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b. Holding: Sony’s sale of equipment to general public does not constitute
contributory infringement
i. Sale of copying equipment, like the sale of other articles of
commerce, does NOT constitute contributory infringement if the
product is widely used for legitimate, unobjectionable purposes
ii. In an action for contributory infringement against the seller of
copying equipment, the copyright holder may NOT prevail unless
the relief he seeks affects only his programs, or unless she speaks
for virtually all copyright holders with an interest in the outcome—
not the case here (sports programs are OK with it)
iii. Universal failed to demonstrate that time-shifting would cause any
likelihood of harm to the potential market for their copyrighted
works
2. Metro Goldwin v. Grokster (SCOTUS 2005): Question of whether the
distribution of software that enables peer-to-peer filing sharing over the Internet
cam be considered contributory infringement. Distributors of such products
argued that their programs were capable of “substantial non-infringing uses”
because they can be used to exchange files that are not protected by copyright (not
liable under Sony). Copyright owners argued, however, that the vast majority of
those using the software do so to duplicate copyrighted music.
a. Court: Re-affirmed SONY doctrine, but held that it did not apply where a
D affirmatively encourages or induces infringement—beyond that, did not
specify what was necessary to prove inducement (remanded)
vii. Vicarious infringement: imposed where the D has the right or ability to supervise the
infringement and profits (ex: occurs where officers of a corporation have duty to
supervise, but ignore this obligation to make money)
1. BMI/ASCAP Case: D claimed his company did not perform any music—CDs
were selected and owned by dancers (not employees) paid the disc jockeys (not
employees) from their tips, and D had no personal knowledge of selection of
songs or copyright status. Court found he exercised control over the dancers
through his decision to hire/fire them infringement.
b. Proving Infringement:
i. There is no intent requirement for copyright infringement even inadvertent or even
subconscious copying is actionable
ii. A P must only prove 2 elements
1. Ownership of a valid copyright
a. Registration certificates are prima facie evidence of ownership
2. Copying by the defendant
a. Courts look to different ways of proving copying:
i. Direct evidence of copying: If an eyewitness saw the D copy, or
the D admits he copied, this will constitute direct evidence of
copying
ii. Access plus similarity: MOST common method is to show that the
D had access to the P’s copyrighted work and the parties’ works
are sufficiently similar to support an inference of copying
1. Access by D to the plaintiff’s work
2. D’s work is substantially similar to the plaintiff’s work
iii. Proving Access
1. Actual viewing and knowledge: Some courts have defined it as the actual viewing
and knowledge of the P’s work by the person who created the D’s work
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a. Ex: Superstud/Wonder Wench: wide dissemination of movies and books
proved access—inferred through virtually identical costumes used by
Superstud and Wonder Wench
2. Opportunity to access: Other courts find access can be inferred where it can be
shown that the D had the opportunity to view the P’s work
a. Ex: why movie studios and TV producers are reluctant to open unsolicited
mail—may be later argued that an employee of the studio had the
opportunity to view the unsolicited version allegedly infringed by the
studio’s actual release
iv. Substantial Similarity
1. Divided between comprehensive non-literal similarity and fragmented literal
similarity (Nimmer)
a. Comprehensive non-literal similarity
i. Generally
1. If the overall structure of the D’s work has been copied
from that of the P, the 2 works will be considered
substantially similar, even though the exact same words are
not used
2. Thus, paraphrasing a protected work will not save the
plagiarist from a finding of copyright infringement
3. NOTE: the copied structure must be sufficiently specific to
constitute the particular expression of the author, not
merely the general idea of the book (see Nichols)—this is a
subjective judgment
ii. Nichols v. Universal Pictures Corporation (2nd COA 1930)
1. Facts: P was the author of the play “Abie’s Irish Rose,”
while the D produced a movie called “The Cohens and the
Kellys.” Both plays featured a quarrel between a Jewish
and an Irish father, the marriage of their children, the birth
of grandchildren, and the reconciliation.
2. Holding: Theme too generalized—stories different enough
so no infringement
a. Jewish and Irish characters were “stockfigures and
“prototypes” that had existed for many decades
i. Insufficient originality to make the
characters protectable
b. ABSTRACTIONS TEST: When are works
infringed?
i. First, copyright cannot be limited literally to
the text—or else, a plagiarist would escape
by immaterial variations
ii. But when the plagiarist copies an abstract of
the whole—there is a point in the series of
abstractions where they are no longer
protected, since otherwise the playwright
could prevent the use of his idea, to which,
apart from their expression, his property is
NEVER EXTENDED
iii. Note: Romeo and Juliet v. Westside Story
b. Fragmented Literal Similarity
i. Generally
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1. If some of the actual words (or notes/images) of the
copyright of the owner’s work have been taken by the
alleged infringer, similarity is clear
2. The sole question in such a case is the substantiality of that
similarity
3. Substantiality is assessed by considering the importance of
the part taken of the P’s work as a whole, an obviously
subjective standard
ii. D.C. Comics v. Unlimited Monkey Business: “nerd, insane,
Superstud”
2. Extrinsic and Intrinsic Tests for Substantial Similarity
a. Extrinsic/intrinsic tests:
i. Extrinsic: prove copying in extrinsic test by bringing in experts
ii. Intrinsic: prove copying in intrinsic test by appropriation
1. BOTH are necessary to prevail
iii. Sid and Marty Krofft Television v. McDonald’s Corp. (9th Cir.
1977): Referred to 2-step analysis:
1. Extrinsic Test: which the P meets by showing at a
minimum enough similarity between ideas as to warrant an
inference that there must have been copying
2. Intrinsic Test: which asks whether an ordinary observer
would conclude that the D’s work has captured “the total
concept and feel” of the copyrighted work
3. The Copying and Unlawful Appropriation Test
a. Arnstein v. Porter (2nd Cir. 1946): The Copying and Unlawful
Appropriation Test
i. Facts: D, Cole Porter, infringed P’s right to reproduce the songs P
created
ii. Holding:
1. Court held that a P must prove copying and improper
appropriation—copying could be proved by access and
similarities identified by expert testimony. Once copying
was shown, P must still prove improper appropriation—a
question for the jury.
2. THE TEST
a. First, it must be shown that D copied from the
copyrighted work
b. Second, it must be shown that the copying
amounted to improper appropriation: gave rise to
“substantial similarity” of copyrighted expression
4. Abstraction Filtration Comparison Approach to Substantial Similarity
a. Computer Associates v. Altai (2nd Cir. 1992): Abstraction, Filtration,
Comparison Test
i. Facts: D asked one of the P’s employees to help develop a
competitive program. The employee used the source code of the P
(by now his former employer). Approximately 30% of the D’s
initial competitive work was copied directly from the P’s work.
The D/employer thereafter learned of the copying, secured the
stolen source code, and using employees who had not seen it, rewrote the copied portion and offered it as an upgrade to customers
who bought the infringing copy. Still sued for infringement.
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ii. Holding: Infringement as to the initial version; no infringement as
to the new copy
1. Similarities between the new versions in the plaintiff’s
work are attributable to external factors
2. Court adopts 3-step analysis for substantial similarity
between non-literal elements of computer programs:
Abstraction-Filtration-Comparison Test
a. Abstraction: First, break down the alleging
information program into parts, starting with the
lowest level of abstractions and moving towards the
most general level
i. Program must be conceptualized in everincreasing levels of generality
b. Filtration: Next, through a process of filtration,
separate protectable expression from nonprotectable ideas
c. Comparison: Finally, compare the alleged
infringing aspects with the copyrighted expression,
and consider the relative importance of the copied
portions of the overall program similarity
between elements determines if infringement exists
i. In this case, the similar, non-literal aspects
of the program were essential ideas dictated
by the nature of the programs and thus could
not be protected by copyright
ii. NOTE: Certain non-literal elements of the
program, such as its organizational structure,
may not be covered by copyright,
particularly if they are dictated by functional
or operational considerations
iii. NOTE: The key issue is whether there is
substantial similarity of protectable
expression, not merely similarity in the ideas
embedded in the two works
VII.
Fair Use Doctrine
a. T
h
Notwithstanding
the provisions of section 106 and 106A, the fair use of a copyrighted work, including such
use by ereproduction in copies or phonorecords or by any other means specified by that section, for purposes
such as criticism, comment, news reporting, teaching (including multiple copies for classroom use),
F
scholarship,
or research, is not an infringement of copyright. In determining whether the use made of a work
a
in any particular
case is a fair use the factors to be considered shall include:
i(1) The purpose and character of the use, including whether such use is of a commercial nature or
r is for non-profit educational purposes
(2) The nature of the copyrighted work
U
(3) The amount and substantiality of the portion used in relation to the copyrighted work as a
s whole; and
e(4) The effect of the use upon the potential market for or value of the copyrighted work
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon
D
consideration
of all of the above factors.
o
ctrine: What Is It?
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i. Definition
1. An affirmative defense that allows unauthorized uses of copyrighted works when
it is “fair” a term defined in a way that includes common sense, basic ethics,
reasonable expectations, and public policy
a. Immunizes certain conduct that would otherwise violate the copyright
laws, when allowing the conduct is deemed socially useful, consistent with
the First Amendment and unlikely to undermine the economic interests of
authors in their creations
b. Ex: review of a book, criticisms, etc.
2. “Flexibility” and “interrelatedness” best summarize the application of the Fair
Use Doctrine
a. Applied to permit greater copying and use of copyrighted works for
classroom purposes
b. Copying and use of a copyrighted work for news reporting is more favored
than other types of uses
ii. Statute 107 of the Copyright Act: FAIR USE
iii. Basic Interpretive Principles
1. A flexible doctrine: the statute lists “four factors” but judges may base their
decisions on additional principles founded in policy, equity, and common sense
2. “Everything is relative:” importance of each of the four factors will vary
depending upon the facts of the case
3. Application of a factor varies depending upon:
a. The nature of the copyrighted work greater copying with be permitted
of an informational work, such as a history text, than of a novel
b. Equitable considerations play a heavy role
i. Time v. Bernard Associations (SDNY 1968): Involving fair use
of the Zapruder home movie film of JFK’s assassination—Fair Use
doctrine is “entirely equitable and so flexible as to virtually defy
definition”
4. In general, unpublished works get less fair use—but not itself a bar
5. In general, the more creative a work, the more copyright protection it receives
a. Ex: copying a news broadcast may have a stronger claim to fair use than
copying a motion picture (Sony)
iv. The FOUR FACTOR TEST
1. Purpose and Character of USE
a. NON-COMMERCIAL: If the defendant’s use of the work is commercial
in nature, it is less likely to be classified as fair use
i. On the other hand, if the work is private and non-commercial, it is
much more likely to be considered fair use
1. Ex: SONY SCOTUS held home taping of copyrighted
TV programming for “time-shifting” purposes was fair use
in part because it was a private, non-commercial activity
b. SCHOLARSHIP: Use of work for purposes of scholarship or criticism
makes a finding of fair use more probable
c. TRANSFORMATIVE: Courts consider whether the use is
“transformative” in that it involves the addition of new creative effort to
the portions that were copied or merely “duplicative” transformative
much more likely to be found protected under fair use doctrine
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2. Nature of the Copyrighted Work
a. NON-FICTION: Certain types of works are building blocks in the
advancement of learning—thus, it is somewhat more acceptable to copy
material from works of scholarship, history, or biography than it would to
copy works from fiction
b. CUSTOM: When it is customary for the users of a given type of work to
copy portions of it as part of the process of using it, the copying involved
is likely to be classified as fair use
i. Ex: book of forms
c. OUT OF PRINT: If a work is difficult to obtain from an authorized source
(ex: out of print book), that might also make copying portions of the book
“fair Use”
d. UNPUBLISHED: If a work is unpublished and in manuscript form and the
author has publication plans that have not yet come to fruition, that would
suggest that unauthorized uses of the work should not be considered fair
(Harper & Row)
e. PARODY: (Campbell) SCOTUS notes the transformative and creative
nature of most parodies, parodies rarely substitute for original work
i. “When a lethal parody like a scathing theater review, kills the
demand for the original, it does not produce a harm cognizable
under the Copyright Act”
ii. Ex: tolerance of parodies Campbell, Suntrust Bank
3. Amount and Substantiality of Portion Used
a. The more of a protected work that is copied by an unauthorized user, the
LESS likely it is that the copying is fair use
b. If the most important part of the work has been taken, that also weighs
AGAINST a conclusion of fair use, even if the actual percentage involved
is small
4. Effect on Market for Copyrighted Work
a. In situations where defendant’s copy either substitutes for, or destroys the
value of, the plaintiff’s work, the copying usually does NOT constitute fair
use
i. Ex: copying the material from textbooks for distribution to
students is not fair use because the author’s intended market was
the very same students who now have no need to buy the book
ii. Usually the most important factor
v. Examples of Fair Use Doctrine
1. Harper & Row Publishers v. Nation Enterprises (SCOTUS 1985)
a. Facts: Former President Gerald R. Ford contracted Harper & Row to
publish his memoirs—going to contain Watergate information, gave
exclusive right to license excerpts and published. Harper negotiated deal
with Time to license excerpts. 2-3 weeks before first excerpt released,
stolen copy brought to Nation, published excerpts. As a result, Time
canceled deal with Harper and Harper sued Nation. Is this fair use?
b. Holding: NO FAIR USE--Nation’s use of the copyrighted manuscript,
even stripped to the verbatim quotes conceded by the Nation to be
copyrightable expression, was not a fair use within the meaning of the
Copyright Act
i. COA overlooked the unpublished nature of the work and the
resulting impact on the potential market
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ii. Nation went beyond simply reporting uncopyrightable
information—intended purpose of supplanting the copyright
holder’s commercial valuable right of first publication
iii. Do not have unfettered access to the unpublished copyrighted
expression of public figures
iv. Four factors: purpose and character of the use (to exploit); nature
of the copyrighted work (exceeds that necessary to disseminate
facts); the substantiality of the portion used in relation to the
copyrighted work as a whole (taking may not be excused merely
because it is insubstantial to the infringing work); the effect on the
potential market for a value of the copyrighted work (actual
damage)
2. Campbell v. Acuff-Rose (SCOTUS 1994):
a. Facts: Orbison wrote “Oh, Pretty Woman” song and assigned rights to
Acuff-Rose in 1964. 2 Live Crew recorded a song entitled “Pretty
Woman” that satirized the song in 1989. 2 Live Crew asked for
permission, but Acuff-Rose rejected—2 Live Crew went ahead and
released song. Acuff-Rose sued for copyright infringement. Is parody a
fair use?
b. Holding: NO--Because a parody’s commercial character is only one
element to be weighted in a fair use enquiry, and that insufficient
consideration was given to the nature of the parody in weighing the degree
of copyright—REVERSE and REMAND (no fair use)
i. Four factors:
1. Purpose and character of the use, depending on whether
such use is of a commercial nature or is for non-profit
educational purposes
a. 2 Live Crew’s song reasonably could be perceived
as commenting on the original or criticizing it, to
some degree
2. Nature of the copyrighted work
a. Orbison’s original creative expression for public
dissemination falls within the core of the
copyright’s protective purposes—not much help
here because parodies always copy publicly known
works
3. Amount and substantiality of the portion used in relation to
the copyrighted work as a whole
a. Don’t see who copying can be excessive in relation
to its parodic purpose, even if the portion taken is
the original’s heart—heart is where parody takes its
aim
4. Effect of the use upon the potential market for the value of
the copyrighted work
a. Parody and the original usually serve different
market functions—no evidence that a potential rap
market was harmed in any way by 2 Live Crew’s
parody, rap version
3. The Author’s Guild v. Google (Pending 2008):
a. Facts: Google had 2 ways of getting books for its online database—either
publishers would send books in under the Publisher’s Program, or they
82
would go to certain libraries and scan the books. There are 3 views to
view the books: (1) Full view: available in the public domain and
download; (2) Limited: Publisher Program (publishers send in and can
only see portion); (3) Snippet: few lines (if no permission granted).
Publishers and authors are suing in regards to the “snippet category.”
i. Defense: FAIR USE If you are going to have an electronic
database of every book in the world, it is impossible to ask
everyone!
4. Kelly v. Arriba Soft Corporation (9th COA 2003)
a. Facts: P: Leslie Kelly—professional photographer who has copyrighted
many of his images of the American West (only displays images on his
own website or with others who have license). D: Arriba Soft
Corporation—operates an internet search engine that displays its results in
the form of small pictures rather than the more usual form of text. D
obtained database of pictures by copying images from other web sites. By
clicking on “thumbnails,” the user can then view a larger version of that
same picture within the context of the Arriba web page. When Kelly
discovered that his photographs were part of Arriba’s search engine
database, he brought a claim against Arriba for copyright infringement
i. Issue: Was the creation and use of the thumbnails in the search
engine a fair use?
b. Holding: YES
i. Four Factors
1. Purpose and character of the use
a. Arriba use was more incidental and less exploitative
than traditional types of commercial use
b. Kelly’s images among thousands—commercial use
weighs very slightly
2. Nature of the copyrighted work
a. Weighs for neither party because even though
Arriba did not copy each of Kelly’s images as a
whole, it was reasonable to do so in light of
Arriba’s use of the images
3. Amount and substantiality of portion used
a. Although Arriba did copy each of Kelly’s images as
a whole, it was reasonable to do so in light of
Arriba’s use of the images
b. Necessary to allow users to recognize the images
and decide whether to pursue more information –
more difficult if just small image was used
4. Effect of the use upon the potential market for a value of
the copyrighted work
a. Arriba’s use of Kelly’s images does not harm
market—by showing on result pages, the users are
led to Kelly website
5. Bill Graham Archives v. Dorling (2nd COA 2006):
a. Facts: DK Publishing published a book on the cultural history of the
Grateful Dead in 2003 (contains images, text, and graphic art). BGA
claims to won the copyright to 7 images displayed in the book, which they
allege that DK reproduced without BGA’s permission. Originally, DK
asked for permission--BGA offered a deal in exchange for Grateful Dead
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giving permission for CDs/DVDs to be made of BGA’s archives. Tried to
license; that fell through. When DK refused to meet BGA’s postpublication license fee demands, BGA filed suit for copyright
infringement
i. Issue: Does fair use apply?
b. Holding: FAIR USE
i. Purpose and character of the work: weighs in favor of DK
1. DK’s actual use of each image is transformatively different
from the original expressive purpose
2. DK’s use of BGA’s images is different—only 7/480
images, different from original purpose, and did not seek to
exploit the images’ expressive value for commercial gain
ii. Nature of the work: weighs in favor of DK
1. DK’s use of images was for enhancing the biographical
info provided in the book
2. Even though the BGA’s images are creative works, the
purpose of DK’s use was to emphasize the images’
historical rather than creative value
iii. Amount and substantiality of the portion used
1. DK tailored its use—DK’s reduced size reproductions of
BGA’s images in their entirety displayed the minimal
image size and quality necessary to ensure the reader’s
recognition of the images as historical artifacts at Grateful
Dead concern events
iv. Effect of the Use upon the MARKET
1. DK’s use of BGA’s images falls within a transformative
market—BGA does not suffer market harm due to the loss
of license fees (both had agreed that it didn’t hurt BGA’s
primary market for the posters)
VIII.
Remedies
a. Two Types of Remedies
i. Injunction
ii. Damages: Section 504 Damages and Profits
b. INJUNCTION
i. Possibilities:
1. TRO
2. Preliminary injunction
3. Final, permanent injunction
ii. Standard to get injunction
1. Presumption of irreparable harm when a P establishes a prima facie case of
copyright infringement (proves ownership and copyright)
iii. Effect of an injunction
1. May apply to distributors and retailers; may block completion of work in progress
and distribution of finished inventory.
2. The court's power to enjoin arguably includes the power to enjoin further public
displays
3. Courts sometimes enjoin defendants from further infringements of the subject
work "or any other infringements of plaintiff's copyrighted materials."
iv. First Amendment vs. Copyright: SUN TRUST
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a. Suntrust Bank v. Houghton Miffilin Company (11th COA 2001)
i. Facts: Author, Alice Randall, published a book called “The Wind
Done Gone,” which is a critique of Margaret Mitchell’s book
“Gone with the Wind.” In the book, Randall critiques GWTW’s
depiction of slavery and the Civil-War era American South—
appropriated the characters, plot, and major scenes from GWTW
into the first half of her novel. SunTrust asked them to stop
publishing the book, but they refused—instigated suit
ii. Issue: extent a critic may use the protected elements of an original
work of authorship to communicate her criticism without
infringing the copyright in that work.
iii. Holding: TWDG is entitled to the fair use defense
1. Looks to the 4 factors
a. Purpose: Randall has fully employed those
conscripted elements from GWTW to make war
against it. Her work, TWDG, reflects transformative
value because it “can provide social benefit, by
shedding light on an earlier work, and, in the
process, creating a new one.”
b. Nature of the work: doesn’t weigh here—parody
c. Amount used: Court shouldn’t get into literary
analysis
d. Effect on market: in favor of TWDG—very limited
c. DAMAGES: Damages AND Profits
i. Section 504: Profits and Statutory Damages
1. Section 504(A)(1) provides that an infringer of copyrights is liable for the
copyright owner's actual damages and any additional profits of the infringer.
a. Defendant's "Profits" – that are “attributable” to the infringement.
i. Generally, the plaintiff can show the defendant's revenue and the
burden shifts to the defendant to challenge attribution and prove
cost of goods, overhead, etc. Allowance of these deductions
depends on the court's discretion where infringement has been
willful.
2. Section (504)(c)(1): Statutory Damages
a. P has the option to seek statutory damages instead of actual damages and
profits
i. Such damages will be an amount not less than $750 and not more
than $30,000 for each work that has been infringed, as the court
considers just
ii. Willful infringement: court may increase the award
iii. If the infringer can prove that he or she acted innocently, the
statutory damage award may be reduced to not less than $200
b. The court shall remit statutory damages where the infringer reasonably
believed that the use was a fair use if the infringer worked for a non-profit
such as a school or library or a public broadcasting station.
c. Statutory damages can be useful in view of the difficulty and expense of
proving actual damages/profits of the infringer
i. Performing rights society (BMI/ASCAP) cases - multiple
infringements of copyrighted works through public performance
without a license
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ii. Statutory damages as a tool for negotiating a settlement at the
"cease and desist" stage before suit is filed.
ii. When Are Profits/Statutory Damages NOT available?
1. Availability: Section 412
a. No award for statutory damages or of attorney’s fees FOR:
i. Any infringement of copyright in an unpublished work
commenced before the effective date of its registration; or
ii. Any infringement of copyright commenced after first publication
of the work and before the effective date of registration, unless the
registration is made within three months after the first publication
of the work.
d. Attorney's Fees: Section 505
i. Although discretionary with the court, fees often are awarded to the prevailing plaintiff or
defendant. Fantasy v. Fogarty
e. Impounding and Disposition: Section 503
i. The court may order impounding of infringing copies or phonorecords and of "plates,
molds, matrices, masters, tapes, film negatives or other articles by means of which such
copies or phonorecords may be reproduced."
ii. As part of a final judgment the court may order destruction or other disposition.
iii. In practice, application frequently is made ex parte
1. Ex parte orders are disfavored by the courts;
2. You will need affidavits, e.g. from ex-law enforcement officials - of the presence
of pirated copies, copying machines, etc. and some reason to believe that the
defendant will abscond or destroy the evidence if ex parte relief is not granted.
3. You need to make sure your client understands the restrictions regarding
publicity/press coverage
a. Paramount Picture/Star Trek case - N.D. Ga. enjoins N.J. infringement
using off-duty Hackensack cops to enforce the decree.
f. Criminal Penalties: Section 506 The willful infringement for purposes of commercial
advantage or private gain is criminal and are punishable pursuant to 18 U.S.C. 2319
i. Generally
1. If the infringement is willful and for the purposes of “commercial advantage or
private financial gain,” the infringer may be subject to criminal prosecution
2. Penalties fro criminal copyright infringement in 18 USC 2319 quite harsh, with
penalties ranging up to 10 years imprisonment for repeat offenses engaged in for
commercial advantage
ii. Forfeiture and destruction
1. Available where there is a criminal violation.
iii. Fraudulent Copyright Notice
1. Any person who, with fraudulent intent, places on any article a notice of
copyright or words to the same purport that such person knows to be false, or
who, with fraudulent intent, publicly distributes or imports for public distribution
any article bearing such notice or words that such person knows to be false, shall
be fined.
iv. Fraudulent Removal of Copyright Notice
1. Any person who, with fraudulent intent, removes or alters a notice on a copy of a
copyrighted work shall be fined.
v. False Representation
1. Any person who knowingly makes a false representation of a material fact in the
application for copyrighted registration or any written statement filed in
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connection with the application shall be fined. Advise your clients to be very
accurate in supplying you with information for applications to register.
vi. Rights of Attribution and Integrity under Section 106(a)
1. Criminal Penalties do not apply to Infringement of these rights.
g. Statutes of Limitation
i. Criminal
1. Must be commenced within three years after the cause of action arises
ii. Civil
1. Within three years after the claim accrues
2. CF Laches as a bar to injunction relief





STRATEGY
Is there a copyrightable work at issue (consider limitations)?
Is there a violation of one of the exclusive rights of copyright?
Is there a valid defense (scenes a faire, merger doctrine, moral rights, fair use, or public domain)?
Remember that judges are human and are affected by the inequities in the case and faith of parties
(i.e. stolen manuscript in Harper Row)
Infringement tests
Exam Questions:
1-How do you get around assignment?
2-How does substantial similarity work with the Internet?
3-When do you not get an award of statutory damages/attorney’s fees (Section 412)?
4-Can Congress protect unoriginal works? (No—A DB Protection Act may be unconstitutional)
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