Policy for IP:
IP Rights: pertain to creations of the mind (4 reasons they’re special):
1.
2.
3.
4.
Nonrival/non-excludable: the contents are open to the public;
Intangible: the know-how; knowledge; ideas themselves;
Infinitely copiable: real property only needs fences—doesn’t work for intangible property.
Harder to define: the subject matter & what the legal rights of the SM are.
Policy Justifications for creating IP Laws:
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
Economic Efficiency; incentivize creation.
Consumer Protection; TM law mostly.
Commerce; promote commercial activity
Knowledge & Learning; accelerate innovation
Innovation; promotes things that will help society
Labor; reward hard work
Fairness; try to create a more fair system;
Morality; society should recognize creations/investments
General Welfare: make society better off
Social Justice: will this promote social equality and justice;
Speech: will it destroy 1st Amendment?
Balance:
Overprotection vs. Underprotection!
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Both are dangerous.
Patent:
Policy Justifications:
1.
2.
3.
4.
Promote Progress: economics—promote technological progress;
Public Disclosure: incentivize rapid disclosure of public ideas to build upon by society;
Time Limited Exclusive Right; and
R&D and Risk Capital: need patent to hedge investment into technology risks.
a. Free-rider and Clone (copycat) problems.
Disadvantages of Patent System:
1.
2.
3.
4.
Patent Race; second to file gets nothing despite hard work.
Duplicative Work/Research;
Monopolies/Excessive Prices; and
Lack of Access.
Sources of Law: US Const. Art. 1 §8; USC Title 35 (patent act); Fed. Reg. Title 37; SCOTUS, courts.
Types of Patents:
1. Utility: Useful things
2. Design: Non-functional industrial design – ornamental.
3. Plant: New & Distinct (obscure); can probably get utility on plant as well.
Who can Patent:
1. Pre-AIA: Inventor;
2. AIA: Inventor or Applicant (which can be a corporate entity).
What can be Patented:
What is Patentable:
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




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Permitted Subject Matter (Alice/101)
New/Novel (101, 102)
Not Obvious (103)
Disclosed Sufficiently to Enable (112)
Disclosed Sufficiently to Describe (112, incl. Best Mode)
Useful (101)
Distinctly Claimed (112)
Patentable Subject Matter:


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“any process, machine, manufacture, or composition of matter”
“anything under the sun that is made by man”
Except:
1. Laws of nature;
a. Theory of relativity
b. Did it naturally exist in nature or was it made by human hand?
2. Physical (Natural) phenomena, and
a. New animal species, water, lightning, DNA –it existed w/o human intervention.
3. Abstract ideas.
a. This is a train wreck; Alice had a horrible effect on US patent law.
4. Human life cannot be patented. (this one is new).
3
Laws of Nature:
Diamond v. Chakrabarty (1980) –bacteria non-naturally occurring challenged as patentable

A living organism that does not occur in nature can be patented. (101)
Association of Molecular Pathology v. Myriad (2012) – breast cancer genetic code in DNA figured out
 Genetic code in DNA cannot be patented b/c it is naturally occurring substance. However, synthetically-created DNA may be patented.
Mayo v. Prometheus (2012) – patent process to find dosage in autoimmune


This invention merely takes advantage of a naturally occurring ratio and cannot be patentable. Need inventive step!
Machine or Apparatus Test: (is the process tied to machine or apparatus||or does it transform an article into a different state or being?)
Abstract Ideas:
Bilski v. Kappos (2010)
 Machine or transformation test;
Alice: Computer Software: (Unworkable, crashed market, uncertainty…)
 If it can be done by hand, it cannot be patented b/c it is done on a computer
The Patenting Process:
No common law rights – require recognition of patent from federal agency through patent application.
Patent Lifecycle:
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




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Conception & reduction to practice;
Drafting and filing a patent application;
o Provisional application; not published until full application is published
 Can only claim back to the provisional date if it teaches the same thing as the full application; dies after 1 year, but 1 year does not count
towards 20 years
o PCT filings
Patent examiner review
Publication (18 months from filing)
Issuance
Licensing, enforcement, litigation
Post grant review
Expiration/invalidation
Claims determine scope: The best drafted claim is the narrowest possible claim that is still infringed.
Parts of a Claim: Must: point out and distinctly claim the subject matter…
4
Preamble;
-
Transition (“comprising”); and
o Consisting of is bad… b/c someone can add 1 new thing and it will be outside the scope of limitations.
Elements.
Dependent Claims
-
More narrow than independent claims b/c they add more limitations.
If independent claim is invalid, dependent claims can still be valid b/c added limitations.
Try to write claims based on where infringement will come from… That way you can find the sweet spot between broad and narrow.
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Never ever be without a continuation app pending.
Specification Requirements:
-
Must fully describe the inventions claimed; and
Must enable a PHOSITA to make and use the inventions claimed.
Gentry Gallery v. Berklin: couch recliner button position:
 Claims cannot be broader than disclosure. Can only get as specific as spec. (Enablement).
O’rielly v. Morse (patents for things not yet figured out…)
 The written description must ENABLE others to make and use invention w/o undue experimentation.
Specification Requirements:
1. Written Description: evidences you were in possession of the invention; and
2. Enablement: Must enable how to use and make invention; and
3. Best Mode: contemplated by inventor (cannot invalidate based on BM in litigation)
o Subjective; and (inventor’s belief at time of filing)
o Objective: actual disclosure in spec.
Highly skilled PHOSITA may find it easier to enable w/o undue experimentation.
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Wands factors for undue experimentation: In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
o
o
o
o
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(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
o
o
o
o
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(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Must enable full scope of patent.
Claims Requirements (112)
Must: point out and distinctly claim the subject matter…
Nautilis: reasonable certainty standard – meaningless legal principle
Words of degree will invalidate if not anchored to contextually limiting words
Can be allowed based on context: about, approximately, substantially
Never allowable: aesthetically pleasing.
Claim Construction:
Phillips (prison walls): scope of claims not limited by structural limitations disclosed in figures/drawings.
Claim Interpretation: Intrinsic evidence > extrinsic evidence
1. Intrinsic Evidence: inside the file wrapper only!!!
a. Words of the claim (ordinary and customary meaning to a PHOSITA)
i. At the time the application was filed.
b. Other claims (Claim differentiation)
i. Other claim language can be used to infer how other claim should be read or understood. separate claims are interpreted to have separate scope
c. Written description (drawings, specification)
d. Prosecution history (particularly Applicant statements)
2. Extrinsic Evidence:
a. Dictionaries, treatises, industry literature
i. Technical dictionary, etc. must be from the time the application was filed.
b. Expert testimony
c. Inventor testimony
Forms of Prior Art:
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US Patents and Published Applications
Foreign Patents and Publications
Non-Patent Literature
Duty of Candor (37 CFR 1.54) – b/c ex parte and not adversarial, have affirmative duty to disclose to examiner.
o Inequitable Conduct
o Related Prosecution
o
Information Disclosure Statement
102 Analysis/Questions: Steps
1. When was the priority application filed?
a. Pre-AIA or AIA?
i. When is the critical date? (1 year prior to the filing date.)
1. When was the disclosure? Date of reference being used against you.
a. Who disclosed? Could be inventor. Who have you shared this with?
i. How was it disclosed?
1. What was disclosed? Did you disclose enough information that could be the basis for a patent application that could
be an invention. If claim is more specific than disclosure, disclosure can be prior art but may not invalidate. Was it
under an NDA?
Novelty under 101 and 102
2 Sets of Rules (Pre-AIA and AIA: March 16, 2013)
o Invention date vs. filing date vs. critical date.
 In most cases, assume invention date and filing date are the same.
- Pre-AIA – first to invent (before the invention date which may be before filing date; swear back)
o Knowledge/use in USA or publication/patent/app anywhere before invention
o Statutory Bars (activity before critical date)
- Post-AIA – First to File (before the invention date)
o Available to the public (patent, used, published, on sale)
Exceptions:
-
Post-AIA exception
o By inventor w/in 1 year of filing
o Disclosure after inventor publication not prior art
o Inapplicable to foreign patenting!
- Best practice?
o File ASAP, publish ASAP
Derivation Proceeding:
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-
Mini-trial when competing patent applications regarding who true inventor is.
o Ex. A publishes article, B files app. A files app. B’s application is published. A institutes derivation proceeding alleging that B’s app. Is based off of A’s
publication. B argues he never saw patent. B will win.
Anticipation (aka Novelty) Requirements
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Element by element analysis using a single prior art reference;
o If element not disclosed exactly, w/in 102, now need to win 103 (obviousness)
“as arranged in the Claim”
o Prior art must disclose every limitation; and it must disclose the elements as arranged in the claim.
- Express vs. inherent disclosure
o If trying to invalidate under 102, you want to find express teaching (actually shows it); however, if you can’t find express teaching, look for inherent teaching.
 Missing disclosure is necessarily present.
 Ex. patent teaches bike, but not gears. Patent for bike with gears might be barred if inherent that all bikes have gear. They don’t, so probably not
inherent disclosure.
If patent about cell which does not disclose nucleus, inherent a nucleus is present. Therefore, patent w/ added language about nucleus is inherently taught.
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On Sale Bar:
Not sale of patent rights (physical sale of the invention).
Pfaff Test (pg. 662)
o Offered for Sale
 Sale or Commercial Offer (UCC)
 Embodiment of the Claimed Invention
o Ready for Patenting
 Reduced to practice; or
 Created physically in real life
 Constructively reduced to practice.
 Disclosed in such a way that someone would be able to create the invention.
Printed Publication:
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Public accessibility (case by case)
Indexed in database
Exhibition (In re Klopfenstein)
o Length of time;
o Expertise of audience;
o Reasonable expectations of no copying;
o Ease with which material could be copied;
Distributed, indexed, or exhibited (publicly)
Public Use:
- Actual knowledge not required
- Large # of the public not required
- Unrestricted use/control by another
- For its intended purpose
- Excludes experimental use
Rosaire v. Baroid – always kept mock-up in control; never let it out of his sight
Egbert v. Lippman – corset was in the public, even if not in view of the public
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Novelty Policy:
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Quid Pro Quo
o Nothing given, nothing received;
o When given for free, no need to incentive;
o Speed of dissemination of new ideas.
Removing property from the public domain
Extending the term of monopoly
Practical realities of securing counsel, preparing/filing application
Who does it favor?
o Probably larger entities w/ in-house counsel. Shorter the grace period, harder for the small guy.
Rosaire v. Baroid: (5th Cir. 1955) -failed experiment on oil field.
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Work was performed in the field under ordinary conditions with no instructions of secrecy or attempt to conceal the work. No effort to exclude the public.
Egbert v. Lippman (1881) – corset springs
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Just because something cannot be seen, does not mean it is not public use.
POLICY RATIONALE: This device was already in public domain. We do not want removal of information or devices from the public domain.
Moleculon v. CBS (Fed. Cir. 1986) – Rubik’s Cube. (Opposite of Rosaire)- commercial exploitation indicates public use
- Was the intention used in the ordinary course of activities without any instructions of secrecy? No. This is not public use.
Experimental Use: 5 Factors
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Number of prototypes and/or duration;
Record keeping;
Confidential agreements;
Compensation for the testing;
Control.
Lough v. Brunswick Corp.: (Fed. Cir. 1996) – letting friends use prototypes of boar gasket.; out of control is public use.
Public use policy reasons:
1.
2.
3.
4.
Discourage removal from public domain;
Favor prompt and widespread disclosure of inventions;
Allow inventor reasonable amount of time to determine potential economic value;
Prohibit inventor from commercially exploiting the invention for a period greater than the statutory time.
City of Elizabeth v. Am. Nicholson Pavement Co. (1877)- testing new road for 6 years; record keeping good.
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Claiming Priority:
Pre-AIA: First to Invent
AIA: First to File.
-
Maybe unfair sometimes, but encourages rapid disclosure of information.
AIA- First to File
After 3/16/2013
Exception:
- First filer’s application does not disclose or
make obvious the invention of the second
filer;
- Second to file made a prior public
disclosure and filed within one year
thereafter. (New grace period under
AIA rules).
- First filer derived the invention from the
second to file (Derivation Proceeding).
- First to file abandoned the application
prior to publication.
Pre-AIA
- Priority is given to the first inventor to
have Reduction to Practice (RTP)
- Constructive or actual. (constructive is
enablement).
- Decided in Interference Proceedings (these
benefited small businesses who RTP’d
quick and took long to file);
Exceptions:
- Can “antedate” the invention back to prior
conception;
- Cannot abandon, suppress, or conceal the
invention.
Analysis:
1. Which law applies:
a. AIA: First to file w/ Exceptions.
b. Pre-AIA: First to Reduce to Practice (RTP)
i. But;
1. Who conceived first? And
2. Were they diligent to RTP?
Terms/Vocabulary:
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Conception: formation in the inventor’s mind of a definite and permanent idea of the invention, including every feature of the subject matter sought to be patented;
Reduction to Practice: reducing the idea into a physical embodiment (that works).
Constructive Reduction to Practice: filing a patent application satisfying 35 USC 112 (enablement).
Diligence: reasonable efforts to reduce the invention to practice or to file the patent application.
Griffith v. Kanamaru (Fed. Cir. 1987) : Inventor needs to prove reasonable diligence to reduce invention to practice
Diligence to RTP:
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
Permissible Excuses:
o Illness;
o Required travel obligations;
o Daily job demands reducing time allocated to the invention;
o Time constraints of patent attorney working on many cases;
o War.
Impermissible Excuses:
o Commercialization efforts, organizing corporations;
o Waiting to hire graduate student, working on unrelated research;
o Waiting for funding.
Nonobviousness:
Section 103: (substance unchanged from AIA; only change was invention date to effective filing date)
You are not allowed to patent something if the differences between the claimed invention as a whole and the prior art would have been obvious before the effective filing date
(or pre-AIA invention date) of the claimed invention.
1. At what point in time is obviousness judged: AIA time of filing; Pre-AIA time of invention
2. Who is it obvious to: PHOSITA –not perspective of judge or expert or inventor
a. More highly skilled – more obvious;
b. Less skilled PHOSITA – less stuff is obvious.
i. So if your patent is challenged, ask for a low skilled PHOSITA.
Graham: (you must convert more than routine ideas)
Graham Factors:
1. Scope & Content of Prior Art;
a. If the entire invention is taught in one reference, that is 102 Anticipation NOT 103. This is lack of novelty.
b. If it takes multiple references to hit every element of a claim, it is an Obviousness analysis under 103.
i. If lacking 1 or 2 elements, can still be obvious – someone of skill in the art would know it is obvious to add last element.
ii. Therefore, a single prior art reference can be used for obviousness –if it can be proven that it would have been obvious to add missing
elements to a PHOSITA.
1. This can include inherency as it is inherent that the art is taught in the reference.
iii. Can teach directly or inherently. If it doesn’t teach either, there are probably differences… see next factor.
2. Differences between the Prior Art and the Claims;
3. Level of Ordinary Skill in the Art; and
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4. Secondary (Objective) Considerations w/ Nexus to the Claims (commercial success, long felt but unmet need, failure of others, copying).
In evaluating obviousness – determine whether a PHOSITA would have found it obvious to combine elements of previous prior art. No reason to use TSM test to prove it.
Step 1: find prior art that meets claims;
Step 2: Find explicit justification for combining references (TSM can work, but expand greatly); can be things like inferences in a certain field. Common
sense may be enough.
Problems:
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1. Hindsight Bias: all inventions are combinations of things. Court needs to be careful in making Everything Obvious as that may stifle innovation.
Utility (101 and Constitution) – almost never used.
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Specific and substantial; but to a Minimal degree;
o Cannot be generic – making society better not S&S. or paperweight that uses gravity to hold things down.
Operable;
o If it does not work, it is not a valid patent.
o Can invalidate time travel or perpetual motion devices… no evidence they work.
Social benefit not required.
Juicy Whip: Social Benefit not Required.
Infringement under Sec. 271(a) of Patent Act:
"whoever w/o authority makes, uses, offers to sell, or sells any patented invention, within the US or imports into the US any patented invention during the term of the patent
therfor, infringes the patent."
Section A – direct infringement;
- Can include agency argument for method if Co.1 doing abc, and Co.2 doing def. Hard argument to make, but can be made.
- If claim is written in such a way that it will need to be mad by multiple companies, poorly written claim.
Section B – Inducing someone to infringe; (indirect)
Section C – contributory infringement – selling infringing products. (contribution)
Selling infringing products:
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Every product sold to another company generally has an indemnity provision. So if Best Buy gets sued for Apple having infringing iPhone, Best Buy would file crosscomplaint alleging indemnity to Apple.
Damages Window:
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6 years. Only get damages for that period, cannot recover after that.
Direct Infringement:
1. Literal Infringement
- Every claim limitation is literally present in the infringing product/service.
Claim Chart
Claim Language
Infringing Product
Limitation 1
Level of detail present Re Limitation 1
Limitation 2
“
Etc.
“
If what you have on left does not match what’s on the right, you havne’t lost, but must fall back on Doctrine of Equivalents (uphill battle).
2. Doctrine of Equivalents
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Fall back positions if any claim limitations are not literally present;
“Triple Identity” (Function-Way-Result) & Insubstantial Differences
Element by Element Analysis
Different from Doctrine of Equivalence (means + function)
o More difficult to take advantage of.
Direct Infringement:
Larami Corp. V. Amron (1993) – The Super Soaker Case
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the absence of even one element of a patent’s claim for the accused product means there can be no finding of literal infringement.
Doctrine of Equivalents: (welding flux case)
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a product can be infringing if it performs substantially the same job, in substantially the same manner, to obtain a substantially similar result. Policy:
outright duplication is a very rare form of infringement.
Reverse Doctrine of Equivalents: never used by courts (theoretical exercise)
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If you make something that is technically contained in a patent, but your use is for a completely different function, it is not infringing.
Limiting Doctrine of Equivalents:
Disclosure Dedication Rule;
o If something is in the disclosure, but not patented, you cannot recapture them w/ DOE – it is free use for the public.
- Prosecution History Estoppel.
o Using patent prosecution history to refute an infringement argument under DOE.
Prosecution History Estoppel: using patent prosecution history to refute an infringement argument under doctrine of equivalents.
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Other Doctrines:
1. Exhaustion Doctrine (First Sale): an authorized sale to an authorized acquirer exhausts the patent owner’s right as to the product.
- Aka: after P/O sells invention once, cannot sue second party to buy the product for infringement by using the patented product.
2. Implied License: necessary to give effect to an earlier license grant.
If product already has some patents and more pending. And I license it to you. Then I’m granted further patents on the licensed product. It is implied that these other
patents apply.
- Can also include express language excluding certain patents.
o So when selling patent or licensing product, include express limitation contracting around implied license.
Indirect Infringement:
-
ALWAYS REQUIRES DIRECT INFRINGEMENT at some point.
Two Types of Indirect Infringement:
1. Inducement: (due to knowledge requirement, etc. winning inducement hard)
a. Acts of encouragement;
b. Knowledge (or willful blindness) that that the encouraged activity infringes a patent.
i. Mens rea requirement (culpability).
ii. If you have a good-faith belief that it does not infringe, you cannot be found guilty of inducement.
2. Contributory Infringement:
a. Selling or offering in the US;
b. A component or apparatus involved in a method
c. Constituting a material part of the invention (making part of product)
d. Knowing of its use to infringe a patent that is not a staple article of commerce that has substantial non-infringing use. (staple article – like copper as a
component cannot be the infringing use).
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Global-Tech Deep fryer case
Induced infringement requires knowledge that the induced acts constitute patent infringement. However, GT clearly acted under Willful Blindness by not telling
attorney it was cloned:
Willful blindness requires:
a. Defendant must subjectively believe that there is a high probability that a fact exists; and
b. the defendant must take deliberate actions to avoid learning the fact.
Defenses to Infringement:
a. Most common defenses: challenges to validity and infringement.
b. Less common: inequitable conduct, patent exhaustion, patent misuse, and laches.
1. Challenges to Validity:
a. Arguments that P failed to satisfy the requirements for obtaining patent protection w/ respect to the particular claim at issue.
2. Challenges to Infringement:
a. Arguments that the accused product or process does not infringe; doctrine of equivalents does not apply; and an element of indirect infringement is absent.
3. Inequitable Conduct:
a. Applies when patent applicant misrepresented or omitted information in his application that was material to obtaining the patent, w/ SI to mislead or deceive the
PTO
b. Renders the entire claim unenforceable, not just the claim at issue.
4. Patent Exhaustion
a. Applies where plaintiff is attempting to exercise rights over a particular item after an authorized sale of that item
5. Patent Misuse
a. Applies where patentee employs conditions in a license or other sale of the patented technology to expand the scope of the patent grant.
b. Most common when patentee conditions a license on purchasing an unpatented product.
6. Laches
a. Applies where the plaintiff knew (or should have known) of facts sufficient to bring a claim against the defendant yet delayed filing suit for an unreasonable time
without a valid excuse.
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Copyright
Justifications:
Copyright Justifications:
1. Economic Efficiency
2. Fairness & Justice –moral rights of authors
3. Legislative – pragmatic responses to particular issues or for particular constituents
4. “Creative Destruction of Copyright”
- copyright not in place to keep industries alive; i.e. – scribes use to be very beneficial. After printing press, scribes unnecessary (industry died). Same thing with Nabster and file
sharing.
Subject Matter:
-
-
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Works of Authorship;
o Original
o Minimally creative
Fixed in any tangible medium of expression;
o What would happen if we gave rights to thoughts? Unworkable.
 Easing problems of proof in creating and infringement.
o Need transitory duration.
 So, fireworks shows are not copyrightable, but if they right down the blueprint for the show, it is sufficiently fixed.
 Jam bands (Phish) upset when their jam is disseminated by people in audience who recorded it.
Includes at least the 8 categories (not exclusive); on final.
o Literary works;
o Musical works, including any accompanying words;
o Dramatic works, including any accompanying music;
o Pantomimes and choreographic works;
o Pictorial, graphic, and sculptural works;
o Motion pictures and other audiovisual works;
o Sound recordings; and
o Architectural works.
Exclusions of 102(b);
o Cannot copyright: any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described,
explained illustrated, or embodied in such work.
Overlap with other IP.
Bleistein v. Donaldson Lithographing (1903) –Lithographs
-
BLL: Under nondiscrimination principle – when determining copyright protection, judges should not discriminate based on a work’s aesthetic value.
Feist Publications v. Rural Telephone Services (1991) – copied a phonebook
17
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BLL: Can be copyrighted if –Original creation, arrangement or coordination.
Castle Rock v. Carol Pub. (2nd. Cir. 1998) – Seinfeld Fan book
-
BLL: Fictional facts are copyrightable. Compared to original facts which are not.
Meshworks: graphical design of car
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BLL: If you are doing something such that it is to be an exact replica, there is no originality and it cannot be copyrighted.
3 Requirements to obtain a requirement:
1. Original; (to you – not copied from another)
- does not need to be novel, 2 people could create an original poem and have rights;
2. Fixed & Tangible Medium;
3. Minimally Creative
- under SCOTUS additional language.
- very low bar – no factors (which is a big criticism) (Feist).
Merger Doctrine:
-
When an idea can only be expressed in one way, it may not copyrighted.
Ex. – menu commands on Excel?
o Merges and cannot be protectable.
Atari v. North American Phillips (1982; 7th) pacman
Under Idea-Expression Dichotomy – copyright protects only expression and not ideas.
- You can use someone else’s ideas, but not expressions.
How to tell what is the difference?
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Abstractions Test:
Willingness of courts to give protection past a specific physical expression of an idea. Where the line is drawn is largely arbitrary. If line was drawn on exact
expressions, authors would have virtually no rights (Harry Potter wouldn’t protect from Parry Hotter).
o Where can recurring patterns be abstracted into general themes?
- Scenes a Fair:
o Series of stock/basic ideas (cowboys and Indians; police chase scene; etc.)
o Incidents, characters, or settings which are as a practical matter, indispensable in the treatment of a given topic.
 Too abstract.
o Golf Video Game: everything is Scenes a Fair – game with golf courses, menus, etc. are trope ideas.
Spectrum of Idea Expression Dichotomy:
o
Character/plot/theme?
Expression
Ideas/Facts
Batman Case:
Idea/Expression Summary:
-
-
How far beyond literal expression? Can take ideas, but not expressions.
Merger Doctrine
o Where expression stolen but required to express idea.
 Words/slogans/short phrases rarely copyrightable (Just Do It)
 Virtually no other way to express in short succinct way.
Scenes a’ faire
Express Exclusions of 102
o Ideas, systems, processes … excluded.
Abstractions Test (Atari)
o Nichols – should plot be protected? If generic, no. Highly fleshed out plot, then it becomes and expression and we will not allow people to steal it within the
expression spectrum.
Characters, Plot, Theme
Copyrightability of Useful Articles
-
Applies only to PGS works; pectoral, graphical, and sculptural.
Applies only if the PGS work has a primary function that is NOT (1) to portray its own appearance or (2) to convey information;
Applies only if, and to the extent, that aesthetic features can: (1) be identified separately from, and (2) exist independently of the useful aspects of the article.
Kieselstein-Cord v. Accessories by Pearl, Inc. (2nd. Cir. 1980)
Belt buckles cast in precious metals-decorative in natures and used in jewelry.
Because the primary ornamental aspect of the buckles is conceptually separable from their subsidiary utilitarian function, they are copyrightable.
Carol Barnhart, Inc. v. Economy Cover Corp. (2nd. Cir. 1985) Mannequin
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Clearly an intrinsic utilitarian function.
o Unlike K-C, clearly, ornamental aspect not separate form utilitarian function.

Star Atletica Test:::::
Under section 201:
Copyright Ownership:
 Sole & Joint Authorship = ownership
 Works made for hire = owned by the hiring party
o Hiring party is both the author and the owner. (Exam question).
 Assignments & Licenses = Contract Law
o Contracts can determine ownership through assignment or license.
201(a) – Initial Ownership
-
Copyright in a work protected under this title vests initially in the author or authors of the work. The authors fo a joint work are coowners of copyright in the work.
101 – A Joint Work is a work prepared by 2 or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.
-
Necessary Elements:
o Multiple Authors and
o Intention by the authors that their contributions be merged; and
o The merger or contributions result in inseparable or interdependent parts as a whole.
Aalmuhammed v. Lee (9th Cir. 2000) – Denzel Movie
-
The person to whom the work owes its origin and who superintended the whole wwork, the master mind.
Co-Author Policy: Being a co-author is better than being a creator made for hire or employee contribution.
-
High burden for late comers
o Prevents fraud. We want to make it difficult for someone to claim ownership down the road.
Predictable Title (avoid a legal morass)
o Like editors, co-workers, family members who you asked for input on.
o Just because someone gives input, do not want to get co-authorship after work is valuable.
Ability to broadly receive creative input.
Thomson v. Larson: (2nd Cir. 1998) – Rent
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How to determine if there is co-authorship?
1.
2.
3.
4.
Independently Copyrightable Contributions
Mutual Intent
Control (Decision making Authority)
Contractual Support
Works Made for Hire: 2 Types:
1. Works prepared by employee w/in scope of employment
a. Must be an employee prepares the work;
b. Within the scope of an employment relationship.
i. Apply common law agency approach:
1. Hours, tools, … 13 factors.
If you are an employee, anything you do in the scope of your employment is owned by your employer.
- agreement that work is made for hire (written or otherwise) is not required
Cramer v. Crestar Financial Group: time and space?
3 prongs of Employee Scope:
-
Work hired to do;
Substantially in the space and bounds of employment; and
Actuated in part by a purpose to serve.
Works specially commissioned
- The hiring party and creator agree in a written instrument that it is a work made for hire;
- The work is specially ordered and/or commissioned for use; and
- The work falls within one of the 9 categories designated in the statute.
o As a contribution to a collective work,
o As part of a motion picture or other audiovisual work
o A translation,
o Supplementary work,
o As a compilation,
o An instructional test,
o A test,
o Answer material for a test, or
o As an atlas
- If not in the categories or written contract, CAN NEVER BE A WORK FOR HIRE.
CCNV v. Reid (1989): Homeless people sculpture.
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If specially commissioned and not on list, then cannot be WSC; and not in scope of work.
Assignments and Licenses:
Assignment: transfer of entire right, title, and interest.
- Must be written
License: grant of a subset of rights under the copyright
- Exclusive and nonexclusive;
- Can be limited in time, place, type of right, purpose, etc.
- Does not need to be written.
Termination of Right: applies to any license or assignment of any kind.
-
22
35-40 years after transfer has been made, assignment may be transferred;
Because of this, employers prefer to have copyright as work for hire, not assignment.
Must give notice of termination at least 2 years ahead of time.
Policy – can make more money down the road.
Exclusive Rights:
1.
2.
3.
4.
Reproduce the work;
Prepare derivative works;
Distribute copies to the public (or phonorecords);
Perform the work publicly
1. For sound recordings.
2. And for motion pictures and other audiovisual works.
5. Display the work publicly
Infringement by Copying:
1. Actual Copying (must have viewed/heard/accessed the work). How to prove?
a. Direct evidence,
b. Indirect/circumstantial evidence
i. Access, “striking similarity”
1. Assuming you had access, was it strikingly similar?
2. Substantial Similarity
a. Ordinary observer vs. special observer
b. Overall impression vs. dissection to protected elements only
1. Generally, the more creative or fictional work, overall impression test.
2. Dissection to protected elements usually applied to more factual works (like on jellyfish).
3. Creation of a Fixed Copy
a. If you don’t make a fixed copy, it’s not copyrightable.
b. If reading Harry Potter at park and charging money, not fixed so no infringing by copying; but this would be a separate problem – copyright infringement by
performing publicly.
c. Two Prongs: Access and actually copying, prong 2 is substantial similarity.
i. Prong 1 can be proven with similarity evidence.
Three Boys Music v. Bolton (9th Cir. 2000)
-
Independent creation gets you off the hook, but subconscious copying can happen.
o If you had access, there can be a gray area where you have subconscious recognition that what you created sounded good b/c you know it from
somewhere.
o Two Prongs: Access and actually copying, prong 2 is substantial similarity.
 Prong 1 can be proven with similarity evidence.
 So both prongs can be met by similarity.
 Analyze separately, need access.
Substantial Similarity: Extrinsic v. Intrinsic Tests
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Extrinsic: certain similarities
Intrinsic: Does it feel the same?
Spectrum
Broader protection/easier to prove infringement
thinner/harder to prove
|----------------------------------------------------------------------------------------------------------------------------|
Highly creative fanfic work
more factual works
Pub. Domain inspired, software, legal briefs, research
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Derivative Works
Section 101:
-
Based upon one or more preexisting works; such as
Translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or and other
form in which a work may be…
Recast, transformed, or adapted.
o Ex. remaking books as children books is recasting in another medium (children books).
Warner Bros. Entertainment, Inc. v. RDR Books (SDNY 2008) Harry Potter fan website/encyclopedia.
-
The newer something is (arranged creatively, etc.) the harder it is to prove a derivative is infringing.
o Long quotes were found to be infringing.
London-Sire Records: P2P file sharing
-
-
Does posting the files as available constitute a distribution?
o Do you need an actual distribution or just an offer?
 Offer to distribute is not a successful distribution.
 Publication and distribution are not identical. Cannot be liable for violating a distribution right unless a distribution occurred.
 P must show there is actual distribution.
Statute requires material objects – what about digital file? 106(3) – “copies and phonorecords” defined as fixed.
o Court – as policy, fixed should be any way of reproducing sound recording (stretching language).
Distribution: Different from reproduction (Garcia)
-
Not stealing or making copies – just distributing (Nabster; or guy in van who sells copies).Not guilty of reproducing, just distributing.
Digital/Internet Technology
o London-Sire Records (422)
o “Material Objects”?
o Statutory Interpretation/Congressional Action
First-Sale Doctrine: 109(a)
- Only applies to right to publicly distribute – does not apply to other 5 rights.
UMG Recordings v. Augusto (9th 2011)
Diff b/t sale and license:
25
-
If license and not a sale, first sale doctrine does not apply – there has not been a change of ownership.
So step 1 in analysis – determine whether something was a sale or license!
Today, first sale doctrine is basically dead.
-
Has been ended through clickwrap license agreements. Subsequent contracts have been enforced by courts making it so we own nothing.
So, you don’t own your copy of Microsoft Word – you just license it.
Transferal of Any Digital Medium Requires a copy – so even when there is a confirmed sale, for digital content the first sale doctrine is dead.
o The way technology is built, you have no choice but to make digital copies.
-
Importation Right – still under publicly distribute
Kirtsaeng: Indonesian guy importing books
Importation right of 602 is a subcategory of distribution right of 603 – therefore, first sale doctrine also applies to importation. No geographic restriction
on FSD.
- Because there has been a sale, the buyer has a right to sell as he sees fit. His activities were legitimate.
Authorized sales in foreign companies exhaust the owner’s rights for patents and copyrights.
-
- If authorized overseas, the first sale doctrine applies. This makes price discrimination harder as you can order stuff from other markets.
Publicly Display and Perform
Publicly:
1. Public Places Clause
a. A place open to the public; or
b. Where a substantial number of persons are gathered.
i. Not including persons in a normal circle of a family and its social acquaintances…
1. So at a church, yes; backyard wedding, probably not.
2. Transmission Clause
a. Publicly occurs through a transmission to either (a) or (b) in the public places clause.
Section 110 Limitations -- most common:
1. Face-to-face teaching in classroom;
2. Religious services;
3. Non-commercial performance of nondramatic literature or music;
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1. So no admission charge – school play, Shakespeare in the park…
4. Playing TV or radio signals (intended for the public) on a device of a kind commonly used in homes
5. Playing TV or radio signals (intended for the public) in a commercial establishment where the establishment is less than 2000 sq.' or where a limited number of speakers or
monitors are used.
Sound Recordings: 3 separate copyrighted elements:
1. Lyrics;
2. Music (i.e. melody); and
3. Sound Recording (literal recording of the lyrics and music being performed).
Artist could make all 3 of these, sometimes 3 different people – (bundle of sticks).
-
Sound Recordings do not receive public display/performance rights of 106(4) and (5), but instead receive the limited right of digital audio transmission of
106(6) as well as the other rights of 106(1-3).
Infringement:
501:
-
Rights which can be violated are in 106
Or 106-122 and 106A(a) or in violation of 602… subject to exclusions throughout.
Types of Infringement:
1. Direct:
 Some element of volition or causation required (but not intent).
2. Indirect: (Requires Direct Infringement by Someone) – court created – extension of statute
 Vicarious liability –
1. Right and ability to supervise or control
2. Direct financial benefit
Ex. Letting someone sell infringing CD’s in the back of record store and getting cut of profits.
 Contributory Infringement
1. Knowledge of infringement;
2. Inducement or material contribution
Exception: staple article of commerce (capable of substantial non-infringing use)
Ex. Selling specially made cassette tapes to illegally bootleg music.
 Inducement
1. Promoting to infringe copyright by clear affirmative steps to foster infringement.
Ex.
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DMCA:

Two main components:
o ISP Safe Harbor (Notice & Takedown)
 Problem b/c copyright owner can get crazy scope of rights when ISP instantly takes down videos without review.
 Safe Harbor provides ISPs safe harbor if they satisfy these conditions:
 Lack of knowledge (actual or constructive);
 Absence of a financial benefit directly attributable to the infringing activity; and
 An expeditious removal of the infringing content upon notification.
o Anticircumvention/Trafficking
 DeCSS – DVD Decryption
 If you supply software with sole goal to circumvent copyright protection (i.e. decryption) if is against the law.
 BMG v. Cox (4th Cir. 2018)
 $25M award to BMG for failure to terminate repeat offenders
 How long should they be cancelled?
Religious Tech v. Netcom Online Bulletin Board website (BSS) copied stuff from Scientology church
-
Volition conduct – not violation because there was not intentional or volitional conduct in the act. Created law.
o Copyright owners hate this. They want more policing.
Betamax – Staple of Commerce Doctrine:
-
The sale of copying equipment does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes
Copyright Defenses:
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Misuse;
o Usually tying – you can use copyright if you buy Y
abandonment;
o very difficult – current push to make requirements to use if you want protection.
Statute of Limitations (SoL)
o 3 years from when claim accrued; often ongoing infringement
 So fact you’ve done it for 5 years, and its ongoing (keep downloading music) means all w/in the past 3 years is subject to damages.
Fraud on Copyright Office;
First Amendment;
o May prohibit D being able to say what he wants to say.
No Copyright Exists;
o Existence of Rights (#1 Above) does not exist.
No Infringement Exists (Independent Creation)
o Lack of #2 from list above.
Fair Use:
Section 107 gives list of fair use (criticism, comment, news reporting, teaching, scholarship, and research); however, list is non-exhaustive AND just b/c in list,
doesn’t mean it is always fair use – i.e. news report CAN be outside bounds of fair use.
o Flexible application w/o bright line rules.
 Criticism that Fair Use is very vague and highly unpredictable w/ conflicting opinions.
Four Factors:
-
1. The purpose and character of the work;
1. Whether the work is transformative adds something new; e.g. parody, comment, criticism.
2. The nature of the copyrighted use;
3. The amount of substantiality of the portion used in relation to the copyrighted work;
4. The effect upon the potential market.
Campbell v. Acuff-Rose (1994) – Pretty Woman – Roy Orbison v. 2 Live Crew
-
Purpose and Character:
o Parody – to make fun of the work. Parody is transformative.
Harper Row v. Nation Enterprises (1985) – Gerald Ford autobiography. Should have never had the manuscript
-
Copyright law not meant to prevent purloining (stealing)
Authors Guild v. Google, Inc. (2d. Cir. 2015) Google Scholar
4 Factor Analysis: found to be transformative
Hard work that Google did (especially with hard work and out of print books) was very beneficial to society. Part of that is incentivizing creation of works and
providing access. That weighed heavily.
Copyright Remedies:
1. Injunctive Relief
a. Reasonable to prevent or restrain infringement of a copyright
b. May also impound or destroy at courts discretion.
2. Monetary Relief
a. Actual damages and profits of infringer; or statutory set amount of damages
b. Pre-judgment interest.
3. Court can award reasonable attorney's fees as well.
4. Registrations
a. Neither injunctive or monetary relief possible w/o registering work w/ copyright office
29
i.
Must register work prior to filing of lawsuit
b. To be eligible for statutory damages, registration must occur prior to the infringement
4. Statutory damages
a. 750-30k determined by finder of fact;
i.
If willful - increase to 150k
b. However, if innocent infringement - court can reduce to 200.
Engel v. Wild Oats Inc. (SDNY 1986) P photographer; D makes shirts.
Damages scheme is chosen by P
Damage to D extensive (diminishes her work) b/c 2500 shirts sold.
 Harms reputation for years to come.
30
Trademark Law
-
Patent rights are for useful inventions/technology.
Copyrights cover creative, original works of authorship.
Trademarks
o Mental association of a word, name, symbol, brand, etc.
o Legal rights to the wiring of our brains.
Brand Value – value of mental association with the brand.
-
Brand value of mental association of Apple is $170B.
Why do we give rights:
1. Traditional Justification
1. Protect the public from confusion and protect producers
2. Economic Justification
1. Efficient search and incentive for quality
3. “neither originality, invention, discovery, science, nor art is any way essential to the creation of TM rights.”
Defined:
-
A word, phrase, symbol, or design, or combination of these, that identifies and distinguishes the source of goods (or sevices) of one party from those of others.
Marks:
o Service marks, certification marks, collective marks, design marks, trade dress, other non-verbal marks (colors, sounds, scents) and trade names
Marks can either be registered or unregistered.
Fundamental TM Requirements:
1. Distinctiveness
1. Words, symbols and trade dress.
2. Non-functionality
1. Mechanical/ aesthetic functionality
3. Use in Commerce
1. Actual vs. constructive use;
2. Priority, abandonment, and failure to control.
Abercrombie & Fitch
Levels of TM distinctiveness:
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Inherently Distinctive:
o
-
Arbitrary/fanciful;
 Arbitrary – meaning not related to the good it identifies (Camel Cig.)
 Fanciful – mark created for its TM function (KODAK)
o Suggestive
 Requires imagination to think about how the mark relates to the goods – Tide
Not inherently distinctive
o Descriptive;
 Okay if it has an acquired distinctiveness – American Airlines
 Has a secondary meaning which has a meaning more prominent in the minds of the public than the original descriptive meaning.
 If you can use acquired distinctiveness or secondary meaning, you check the first box of valid TM.
o Generic
Secondary Meaning
-
Required for descriptive mark;
Connection in the consumer’s mind
o Question of fact;
Presumed after 5 years of use;
Evidence: testimony, surveys, advertising, expense, sales volume.
Registration prohibited for Generic Marks
Assessing Descriptiveness
-
Dictionary; the dictionary says x means …
Imagination; how much imagination is needed to make mental assoc.
Competitor’s Need: should competitors be allowed to use that word?
Third Party Use – have 3rd parties made mental distinction?
Genericide
DuPont Teflon
Teflon TM; court uses survey data again.
-
Everyone knows Teflon, but not that it was made by DuPont
Best Practices:
1. Use the mark together with the name of the thing.
1. Roller Blade inline skates
2. Label your mark with the word Brand.
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1. These are signals to teach the public that the word before is the brand, not the thing.
1. Google Brand internet search (clumsy but effective).
2. Band Aide brand adhesive gauze.
Non-Verbal Marks
Amazing Spaces (5 pointed star inside of a circle for self-storage.) Abercrombie Test not a good fit for non-verbal marks.
Alternative / Seabrook Test (USE THIS TEST FOR TRADE DRESS)
Whether the mark is:
-
33
A common, basic shape or design;
Unique or unusual in a particular field;
A mere refinement of a commonly adopted and well known form of ornamentation for a particular class of goods/services; or
Capable of creating a commercial impression distinct from accompanying words.
Trade Dress and Functionality
Trade Dress Distinctiveness:


The overall appearance of product
The total image of a product, including features such as shape, color, texture, graphics or ever particular sales technique.
o Ex. Corvette vs. Porsche car shape
o Chic Fil A - look and feel of the restaurant suggests a brand.
- Color Requires secondary meaning (Qualitex)
o Limited number of colors, if we just give them away, we might run out of colors for businesses to use.
o Shape and color determines what something is… we don’t automatically interpret that as the source or origin.
- Product Design requires secondary meaning (never inherently distinctive) (Samara)
o Product design separate from product packaging
 Interesting examples – coke bottle; sounds; scents.
 Shape of coke bottle package or design?
o Depends on buyer, if collecting bottles, then bottle is design, but if buying to drink, then bottle is packaging.
 Sound inherently distinctive?
 Maybe, tough call. NBC? Might require secondary meaning.
 Scent? If it pertains to function, then product design; if no relation to function, then maybe branding.
Taco Cabana Trade dress for taco restaurant – interior/exterior … specific design.
Do not need to show secondary meaning Trade dress can be inherently distinctive.
o This protects the little guy…
Qualitex – Color Protection
Test for color is Secondary Meaning
-
Surveys, etc.
Samara Bros – Walmart stole their clothing designs. Clothing design is Product Design.
Only trade dress protection for trade design when showing secondary meaning.
o Need secondary meaning of the brand when viewing the design.
 The more strict we are on secondary meaning, the more it hurts the little guy.
Functionality
34
Most relevant in trade dress cases
Involves the interface between patents and trademarks;
o Different time limits and subject matter;
Mechanical functionality (majority of cases)
o Mechanical advantages of the product’s design.
Aesthetic Functionality (minority of cases)
o Design that may not make a product more useful, but contributes significant value (e.g. heart-shaped chocolate box), needs to be available to competitors.
 Aesthetic functionality doctrine is not universally accepted. Different circuits do not believe in it while some endorse in a strong way.
Policy : Do not want something like the design of a bike to be Trademarked… would be bad for everyone.
-
Test Functionality:
Functionality Doctrine prevents trade dress for any part of a product that is functional: 3 factors
1. Whether the features is essential to the use or purpose of the article;
2. Whether the features affects the cost or quality of the article; and
3. Whether the exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.
Example – light bulb design that improves illumination; cannot be TM b/c functional by virtue of design.
Proving Functionality:
1.
2.
3.
4.
Existence of related utility patents;
Advertising touting utility;
Existence of alternatives;
Cost to manufacture.
Use in Commerce:
-
Use to gain rights
o Policy: legal monopoly vs. benefit to public
-
Abandonment
o Return (of words, symbols, dress) to the public
-
Infringing Use
o (Later Chapter)
What is Actual Use?
-
Goods:
o Bona Fide in Ordinary Course of Trade as a TM;
So always put TM on logo before registering to show it is used as a brand
o Placed on goods/packaging/tag/label; and
Must be associated w/ the good.
35
o Goods are sold or transported in commerce.
Advertising is not use in commerce!!!
-
Services:
o Displayed in the sale or advertising of services; and
o Services are rendered in commerce
Advertising is not use in commerce!!!
In re Cedar Point: Amusement park about to open water park – Oceana
Advertising is not proof of use in commerce! Don’t want people to sit in warehouse (token use)
Planetary Motion v. Techsplosion:
 You can have use in commerce when giving things away for free – as long as you have distribution.
ABANDONMENT:
-
DISCONTINUED Use and Intent not to resume
o Presumed after 3 years of Non-Use:
 Can be overcome…

-
Ex. fire engines are durable so might not sell frequently
Always consider this as a defense – if they abandon mark, they have no rights
o Requires 2 prongs: discontinued use; and
o Intent not to resume.
Notes:
-
Marks can come and go with the same or different owner
-
Abandonment can arise immediately (e.g. 24 hours after end of use) if the facts support it;
o So if you have press release saying you intend to stop using the brand, you have shown stopped use and intent not to resume.
-
Always consider it was a defense.
Silverman v. CBS – bare assertion of possible future use is not enough.
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Other types of abandonment:
1. Naked Licenses
1. Licensing and not overseeing work…
1. Results in abandonment b/c no quality source or origin
2. Assignment in Gross
1. Technical legal term for selling TM divorced from underlying goods and services.
1. If you want to sell TM, must always be accompanied w/ goods/services and goodwill of the mark.
2. You do not own the mark, you own the brand associated with it.
Registration of TM
Lets talk about registration
-
Use is fundamental
Constructive Use: applies only to federally registered marks (not registered = common law marks)
Either ITU or Actual Use:
Inapplicable to unregistered marks;
Requirements
o File and intent to use (ITU) application stating bona fide intention to use the mark in commerce;
o File evidence of actual use w/in 6 months of a notice of allowance (extendable up to 24 months)
o Assignment of ITU applications prohibited until after filing the verified statement of actual use.
Both ITU and Use applications require proof of Use!!!
-
Why is there an ITU statute?
-
To promote branding which benefits the public – opportunity to market while you are still building your business.
Priority of Use First in time is first in right!
Priority
-
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Decides winners and losers in many TM disputes
o Earlier PTO filing (actual or ITU) beats competing PTO filing;
o Claim to ITU date not permitted until application results in a registration;
o ITU priority date beats subsequent actual use.
 ITU 1/1; Actual Use 2/1… ITU wins.
o Earliest PTO filing may be trumped by earlier proven actual use.
WarnerVision v. Empire of Carolina, Inc. (2d 1996)
-
you cannot prevent an ITU from actual use; that defeats purpose of ITU
Trademark Registration
-
Using TESS, TEAS, TMID… etc.
Principal vs. Supplemental Register
PTO Registration & TTAB Proceedings
Incontestability
Geographic Limits
Primary vs. Secondary Marks
-
Principal register: all distinctive marks, marks w/ secondary meaning … prima facie evidence of validity
Supplemental register – right to sue in federal court; no presumption of validity
Unregistered mark, can sue in federal court if interstate and required amount in controversy.
Incontestibility: after 5 years of continuous use.
1. Incontestable:
1. Descriptiveness;
2. Confusingly similar to prior-use mark;
3. Ownership
4. Fact of registration;
5. Right to use.
2. Always Available:
1. Genericness;
2. Functionality; abandonment; fraud in procurement;
3. Misuse;
4. AT violations
5. Etc.
PEC v. ERA (Peaches) (1995) Senior didn’t register mark; Junior user did; both had rights (senior geo. Limited)
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Zone of natural expansion lets senior user grow naturally.
o Likely future expansion in a relevant time.
Zone of reputation Test?
o Captures users established reputation
Unregistered Marks:
Tea Rose Doctrine:
o Geographically remote uses of unregistered marks are permitted;
o Priority of adoption plays no role if uses are geographically remote;
o Right of injunction against a senior user from expanding;
o Good faith – awareness not enough
o Zone of Natural Expansion
o Partial Geographic Abandonment
Registered Marks
-
Creation/Establishment of Rights
-
1. Dawn Donut Rule
1. Registration confers nationwide priority as of the application filing date;
2. To enjoin a junio user, senior user must show likelihood of expanding into the disputed area;
2. Intermediate User Rule
1. Senior user’s
Then, what does it take to have infringement?
Then, what defenses can be used against infringement claims?
Infringement- 2 types
Registered; or unregistered marks (15 USC 1114)
o Registered:
 Use in commerce… reproduction, counterfeit., etc. …
 Any goods or services on or in connection with
 Which such use is likely to cause confusion, or to cause mistake, or to deceive.
 Shall be liable in a civil action by the registrant for the remedies…
o Unregistered (15 USC 1125)
 Very parallel
 Use in commerce … false designation or origin, misleading description of fact, or false or misleading representation of fact,
 Likely to cause confusion … etc.
 Shall be liable in a civil action …
Confusion:
-
-
Economic argument: efficient consumer search.
Want producers to invest to make better things if people can trade off their name…
Use in Commerce:
39
Sold, transported, imported, … applied to the item as a tag, etc.
Service – (statutory definition) for both
- Theoretically – same for infringement as establishment of rights;
1-800 Contacts v. WhenU.com (2nd 2005)
-
Pop up ad on contacts website would show competitors;
Argued having TM in database was infringement? No. Also; metadata is not commercial use.
Rescuecom v. Google (2nd Cir. 2009)
Specifically advertising mark to the customers – this is use in commerce.
- Literally selling the mark, not goods/services attached to it. Statute does not consider this.
Not product placement – just b/c you call something product placement does not mean it is legal. Can be done in an illegal way.
Cybersquatting:
-
Bad faith registrant of domain name can be taken out through statutes.
Likelihood of Confusion:
Polaroid Factors:
1. Strength of Mark;
1. Conceptual strength (Seabrook/Abercrombie Test)
2. Commercial Strength (kind of like secondary meaning)
2. Similarity of the Marks
3. Degree of Similarity;
1. Sound and
2. Sight
4. Proximity of the Products;
5. Likelihood of Bridging the Gap;
1. How likely will they overlap?
6. Consumer Sophistication/Care
7. Actual Confusion
8. Bad Faith/Product Quality
1. Intent? To trade off and steal name which is similar?
40
Virgin Enterprises v. Nawab (2d 2003)
P (Virgin), Cellnet started lease under brand name of virgin wireless. At time, Virgin did not operate in mobile phones.
Factors:
1. Strength of Mark: both in favor of Virgin Mobile (inherently distinctive – arbitrary or fanciful; famous)
2. Similarity of the Marks: marks not just similar – identical; color and font not enough of a difference
On radio or spoken TV will not be able to tell a difference.
3. Similarity of Products/Bridging Gap: Virgin already sells tech devices, has TM for portable technology (CD players) - similar and can be bridged to phones.
4. Actual Confusion: employees asked if affiliated w/ actual Virgin;
5. Sophistication of Consumers: retail consumers do not exercise care at level of professional buyers, but w/ cell phone and service plans, might give greater care. Found as
neutral.
6. Bad Faith: meh
-
Why is inherent distinctiveness important in infringement?
Types of Confusion:
1. Point of Sale: Typical situation – consumers likely to be confused when shopping…
2. Initial Interest Confusion: Using owner’s mark to lure consumers into exploring 3rd party’s goods. (e.g. website meta data; false neo sign on 7-11) – only confused to get you
in the door, who cares only a few seconds of confusion.
3. Post Sale Confusion: does not confuse the purchaser but confuses the public who observes the purchaser. (e.g. fake Rolex watch)
Buyer not confused at all, but rest of public is… hurts brand. Everyone else thinks the Rolex is real, but the buyer knows truth.
4. Reverse Confusion: Junior user is so large that its use suggests it is the mark owner.
Subway pizza in Iowa before Subway Subs. Subs gets huge, people get confused if you’re part of the big Subs. But no actual confusion and point of sale confusion. Will
protect rights of senior user when junior user becomes so large it gets protection.
Contributory Infringement of TM:
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Was there control over instrumentality to infringe;
Did contributor know the activity was infringing;
Dilution:
Did you have actual knowledge/should you have known it was infringing;
Did contributor continue to provide goods and services despite knowledge of infringement?
o Did contributor try to remedy infringement?
Certain marks cannot be used in different goods (famous) –
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Blurring –
Tarnisment
2 prongs of Contributory Infringement:
1. Intentionally Inducing another to infringe (hiring someone to make infringing products); or
2. Continuing to supply products to another knowing or having reason to know the other is engaged in trademark infringement;
a. No statutory basis; (patent/copyright is statutory)
Inwood v. Ives Mark for CYCLOSPASMOL, pharmaceutical drug.
Is there liability for the generic manufacturers?
o Maybe. There are liable if they induced pharmacists to infringe or continue to supply CYCLO once infringement was known. Full text pg. 189 (copy)
Hardrock TM contributory infringement is narrower than for copyright.
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Dilution (Not Confusion) – rights to famous marks
- Do not have to be confused to be dilution.
Famous Marks: widely recognized by the general consuming public as designated source/origin.
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E.g. Nike, Amazon, Mercedes: so famous marks get more protection.
Niche fame is not enough. Geographic reach, etc. (industry literature; groups list brands)
Blurring: use of a famous mark on unrelated goods thereby decreasing the strength of association fo the mark and the famous owner.
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E.g. Buick aspirin pills, Kodak pianos.
Decreasing mental association of the mark. Using Buick for aspirin not going to confuse, but might widdle away Buick brand
Tarnishment: uses of a famous mark on unwholesome or unsavory goods/services;
- E.g. Chrystler dog food; McNuggest Reefers.
Makes no real difference if you bring the case under blurring or Tarnishment. Can allege both.
Dilution Statutory Basis: 15 USC 1125(C)
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Factors:
Starbucks v. Wolfe’s Borough Coffee, Inc. (2d. 2009) STARCHUCKS
1.
2.
3.
4.
5.
6.
Similarity of Marks;
Distinctiveness of Marks;
Extent of Exclusive Use;
Degree of Recognition;
Intent to Create Association;
Actual Association.
Parody Exception:
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First amendment intersects w/ TM law:
o 1125(c)(3)(A): Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a
designation of source for the person’s own goods and services…
 So nominative, descriptive or fair use (parody) okay.
 But does not apply if it is used as a designation for the source of goods/services.
 Because Charbucks applying mark for source of own product it is not a valid defense.
Exam – How to answer question
1. Any Rights?
2. Any Infringement?
3. Defenses?
Defenses:
Validity
- Lack of distinctiveness;
- Functionality;
- Deceptiveness;
- Lack of use in commerce/abandonment.
Non-Infringement
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No likelihood of confusion;
No use in commerce;
o Hypo: custom shirt printing
 Want to wear shirt of favorite sports team. Make shirt for yourself – is this use in commerce? No. Did not sell, transport through commerce, etc.
(Oceana). Copyright infringement might be more appropriate.
Lack of fame/no dilution.
Affirmative Defenses:
Fair Use:
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Laches (unreasonable delay – No SoL for TM Infringement)
o Unreasonable delay and prejudice to infringing party. Typically only seen after 3 years of delay.
o Patent; damages window – 6 years. Copyright SoL 3 years.
Unclean Hands (misuse – rare)
Fraudulent Procurement
Descriptive fair use – words that Describe; (statutory)
Nominative Fair Use – Naming the Brand; (judge-made)
o Reason to name the brand intentionally – do you want to meet at Chic Fil A? Nominative and not in commerce.
Dilution Fair Use – parody, news, criticism, commenting, or comparison (not for own products) (statutory)
o Hard to assert – need your own clear separate label (cannot be attached to an article; cannot be assigned to goods and services) – look for news article,
comparison piece, etc. (compare to Perc Plus).
Descriptive Fair Use: 3 elements (policy – do not want to allow monopoly of words).
1. Not using the term as a Trademark;
a. Ex. Applying for it as a TM would be bad. You can use pain English words to not infringe; however you can only use them to describe, not brand.
i. Use descriptively, not to brand.
2. Used Fairly and in Good Faith; and
3. Used to Describe your own products/services.
a. Need not negate confusion.
Car-Freshener Corp. v. SC Johnson & Son, Inc. (2d. 1995) descriptive use test
Make-Up Case (pg. 220) – (SCOTUS 2004)
Is ”Microcolors” descriptive?
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Even if infringing use, can you use descriptive fair use?
Yes.
o Fair Use does not require overcoming confusion;
o Even if there is consumer confusion, P is the one that trademarked a highly descriptive mark – therefore they need to put up with the slightly
infringing use.
Nominative Fair Use: 3 Elements
1. Cannot readily identify good or service w/o use of the TM
2. Only so much of the mark is used as needed to identify the good or service; and
3. No suggestion of sponsorship or endorsement.
o Is there a suggestion of sponsorship or endorsement?
o Neo beer sign at restaurant? Naming brand, is there suggestion that your restaurant is sponsored or endorses? No. Just nominative – naming the
brand you sell there.
New Kids on the Block v. News America (9th 1992)
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Could not ID w/o use of TM; only used NKOTB minimally; did not suggest endorsement.
Example of Nominative Fair Use:
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Compare to Zyrtec brand allergy medicine.
Trademark Remedies:
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Injunction;
o Geographic limits/ market penetration;
 Show effect in region. (Read Charles Jacquin pg. 232).
Money
o Defendant’s profits;
o Treble Damages;
o Costs, Fees;
o Plus Interest.
State Law Claims:
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Passing Off;
o When you try to use your product and pass it off as someone else’s;
 Fake watch does not say Rolex, but try to pass it off as one.
 Order Coke, but restaurant gives you Pepsi – passing off; against law.
Reverse Passing Off;
o When producer misrepresents goods/services as his own.
o Peeling off labels and selling like you made them.
 Consumer Confusion –companies invest in reputation, want to preserve it as consumers . we want to shortcut the consumer search process.
 Ex. Famer’s Market: reselling Walmart Produce as fresh/organic
Right of Publicity:
o Not federal Law – not part of TM, Patent, or Copyright law – own convoluted doctrine.
o CA has strongest laws
o Arizona: name, likeness, image of a solder.
o Typical Issues:
 What degree of celebrity is required?
 Some states say required; others not.
 Scope? “likeness”
 Duration? “death”
 Is it over the moment you die?
 Fair Use?

False Advertising:
Trade Secrets:
Valuable business information (TS covers information)
Difficult to protect w/ other IP rights
o Public rights exchanged for public benefit/use/disclosure
o *maybe can patent information, process, etc. but hard
 Copyright bad fit, cannot copyright ideas.
 In general, TS are not public rights… we the public will give you protection for disclosing your ideas (quid pro quo); not part of TS law.
- Potentially perpetual protection
o So long as the information remains qualified (valuable and secret)
 Coca Cola for example.
 Reverse-engineering always a permissible defense.
2 requirements:
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Valuable; and
Secret.
Patents under attack – patents harder to get and easier to challenge;
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Companies have strategic choice to make: patent or TS…
o Patent better for society – people can build off it.
 Patents speed up progress of society.
Sources of Law:
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State Law:
UTSA (enacted in some form by 47 states)
DTSA of 2016 (based on UTSA)
Trade Secret Lifestyle:
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Generate info.
Implement protective measures;
Bad acts;
Last step which I couldn’t write quick enough
Subject Matter:
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All forms of information;
o Things like a customer or client list; (each client is public, but assembly/sub-selection is private information)
o Recipes; like coke
o Supplier information (like cardboard/plastics/etc. and know that those products are best for certain products).
Independent economic value due to it not generally known or ascertainable.
o See 6 factors (Forest Labs v. Pillsbury)
1. The extent to which the information is known outside of the claimant’s business;
2. The extent to which it is known by employees and others involved in his business;
3. The extent of measures taken by him to guard the secrecy of the information;
4. The value of the information to him and his competitors;
5. The amount of effort or money expended by him in developing the information; and
6. The ease or difficulty with which the information could be properly acquired or duplicated by others.
o Novelty and obviousness? (Buffets v. Klinke)
- Reasonable Affirmative Efforts to Preserve its Secrecy (Jack Danies v. Timex)
o Label;
o Restrict access;
o Obligations of confidentiality.
Buffet Case
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What must exist for an idea to be protected as a trade secret?
Information not generally known or ascertainable; and some efforts of secrecy.
o Label documents/folders confidential (email footer)
Jack Daniels Case
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Evidence of Secrecy must be direct towards Trade Secret:
Cannot be general business safety and security
o E.g. lock on door/security system not enough;
o Need to show some reasonable efforts directed at trade secret itself.
Timex Case
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Must take affirmative steps to keep designs secret!
Noncompete Agreements:
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In general: enforceable.
o For Doctors and Lawyers, NCAs likely less/non-enforceable
 Public policy in allowing certain types of clients to choose their service provider.
Confidentiality Agreements:
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Written;
Unwritten, e.g. oral.
Noncompete Agreements:
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Reasonabless (time, place, scope of activity);
Doctors or laweyrs.
2 types of Trade Secret Contracts:
1. Confidentiality Agreements
a. Written;
b. Unwritten, e.g. oral
2. Noncompete Agreements
a. Reasonableness (time, place, scope of activities)
b. Doctors and lawyers have special rights (largely immune…)
Thomas the Tank Case: (7th Cir. 2003)
- Clickity-clack track at issue.
Expectations for big companies is different than large companies.
Victoria’s Secret v. Foleys Case:
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Avoided enforcement of agreement b/c court found that Foleys was not in material competition with Foleys
Misappropriation: (breach of trade secret)… has many names.
2 major prongs:
1. Acquiring or using a trade secret:
a. Knowing or having reason to know the trade secret was acquired by improper means;
i. If someone hires employee who steals code, company could be guilty of misappropriation…
2. Disclosing a Trade Secret
a. Improper means;
i. Theft, bribery, misrepresentation, breach of inducement of a breach of a duty to maintain secrecy, espionage through electronic or other means.
b. Breaching a Duty/Relationship of Confidence
Examples of Misappropriation:
E.I DuPont v. Christopher (5th Cir. 1970) flying over competitor to take pictures; not illegal but bad
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this qualified as improper means includes unreasonable commercial immorality…
o Any means below generally accepted commercial morality or reasonable conduct (interpreted very broadly)