Copyright and Trademark Outline
Three objectives under intellectual property law:  enrich society with products, entertainment, and literature
1. protect creator (author/inventor)  if we protect they will continue to create b/c they make money
2. Protect publisher/investor  person who is going to put the money up, b/c the creator most likely won’t have it.
3. Enrich/protect the consumer  public
The Overall Goal  Investor will invest, creator will continue to create and the consumer will be enriched with whatever is
produced.


Constitutional Origins of Intellectual Property Law
Article I, § 8, clause 3, “Trademark Law”  “Congress shall have the power to regulate Commerce with Foreign
Nations, and among the several states”
Article I, § 8, clause 8, “Copyright & Patent Law”  “Congress shall have 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
I. State/ Common Law Intellectual Property
1) Rights in Undeveloped Ideas
Sellers v ABC (1982) – p. 36 To successfully claim misappropriation, idea must be generally novel.
Seller claiming misappropriation, stating that ABC and Rivera used his idea without compensation. Specifically, Sellers
pitched a theory of Elvis’ death (conspiracy theory of murder) to ABC who ended up doing a feature on Elvis’ death but
did not mention Sellers theory. There was a copyright agreement between them re: the idea.
Issue: Was  correct in asserting that  misappropriated his theory of Elvis’ death
Holding: No, the elements of misappropriation were NOT met.  theory was not novel, nor sufficiently concrete to give
rise to a cause of action. But since the cortisone theory wasn’t specifically used, there wasn’t any misappropriation of his
idea.
There are two steps to IDEA protection:
1) Misappropriation
2) Recovery Theory
Elements of Misappropriation
1.
Idea has to be novel (the standard differs, NY says need to be novel to recipient, because novelty takes the place of
consideration in the K, the idea becomes the value)
2.
Concrete form  has to be written, and detailed enough that someone would know how to act upon it.
3.
 uses the  idea (the most common defense  claim is that they did not use  idea)
4.
 has expectation of $$$
2) Protection of Ideas
Theories of Recovery for IDEAS (levels of proof vary depending of theory of recovery)
1.
Contract Theory

Express K in writing  limited level of novel necessary (Damages will be based on compensation mentioned in K)

Implied  “the law will imply a promise” but to do so court will examine the Relationship between parties  Has the
submitter shown confidential relationship with the recipient (this inferentially implies contractual relationship because
confidentially implies that submitter did Not want to divest her rights and recipient aware means he understood not to
publish without consent or compensation) (Damages will go by presumed amount of payment of reasonable value of idea)

Quasi  this probably requires the highest level of novelty (pet rock is novel) and some proof of unjust enrichment on part
of recipient. (Damages measured by level of unjust enrichment  actual profit from the use of idea).
2.
Other Theories:

Tort of Conversion  convert someone else’s property into your own, but Courts don’t really do this much and it’s the
hardest to recover under.

Breach of Confidentiality (Fiduciary Duty)
Courts vary by j  the question often becomes who is it novel to? The person receiving the idea OR to society?


NY says if it is novel to the recipient then it is novel – the novelty becomes the consideration, especially if it is
in writing. In a quasi contract – ideas must be very novel in order to force the user to pay for the idea. One of
the highest novelty standards.
CA approaches it from a services rendered approach  When you submit an idea you are doing a service for
that company – so it is easier to collect. Some states require the idea submitter to be a professional
inventor/submitter, b/c they are preferred over amateurs. Note the HOLLYWOOD connection here in the
easier method of enforcing an obligation. Payment expectation.
A. Theories of Protection
Luddecke v Chevrolet Motor (1934) p. 43 An Idea must be NOVEL and CONCRETE especially w/o an
express K. A Chevy is sagging Chevy and  tells Chevy heavy parts are all on the wrong side, and wants to submit his
idea. Letters back and forth, and tells them what his solution would be. Chevy counters that he should provide drawings
and protect his idea. Chevy’s new model incorporates some of  ideas
Issue: Whether unlawful misappropriation occurred?
Holding: No, Chevy is not liable for incorporating into its product generalized suggestions made regarding its product.
Must be novel and specific. Here, Chevy requested for more concrete form, such as drawings, but  did not provide idea in
concrete form. A common-sense idea relating to a product in a generalized way is not novel. ’s suggestion was the logical
solution of re-distributing weight is not novel.  did NOT obtain proprietary interest in idea sufficient to form basis of
implied K. Expectation of payment is not enough, because it was NOT an express agreement.
Ways to improve a Breach of Confidentiality claim
1.
2.
Standard Approach  Non - disclosure agreement
Soft Approach  shower with letters suggesting “ I trust you may not may any use of this .” Make it that so every
correspondence includes mentions of confidentiality Repeat, Repeat, Repeat.
Note: CA has largest amount of misappropriation claims, so there are idea admission programs.
The general rule is for professional idea submitters, if industry depends on receipt of ideas, there is an implied obligation to pay.
(CA rule)
Idea Submission (the four general scenarios)
1. X submits her idea to Y upon Y’s express solicitation
2. X informs Y that she would like to submit an idea of possible value to Y and Y does nothing to block the
submission.
3. X thrusts upon Y a full disclosure of her idea before Y has the opportunity to block the submission
4. X makes no submission at all but charges that Y has copied her idea.
Nadel v Play by Play (2000)  the Tasmanian devil case p. 49 Distinguishes between K claim
and CL Misappropriation claim, the former generally requires less novelty and originality than the latter.
 has idea for a toy, spinning toy that sings.  wants to share idea with a company that manufacturers toys. He sends a
prototype, and they were supposed to send him some samples which  never got nor did he get his prototype back.  then
puts out toy with similar qualities, and claims they did not use his idea based on lack of novelty claim and that they never
got his toy, which meanwhile was sitting on  desk.
Holding: remand back down to revisit dismissal of  claim in consideration of the following. Under K law in NY 
standard is “novelty to buyer”, so while an idea may be unoriginal, it may have particular value the buyer and this is
2
evident by willingness to enter into K. In contrast, a misappropriation claim (property based) requires that idea be
novel and original in absolute terms, because this is a property law theory which only protects that which is not free and
available to all.
1.
2.
3.
4.
The Nadel Test for Novelty
Generality v Specificity  is it a general concept or one of specific application?
Commonality  how many people are aware of the idea?
Uniqueness  how different from ideas generally known?
commercial availability  how available is the idea to the industry
Ink is still Wet companies claim idea was years old, but in the end the evidence shows otherwise. (See Nadel).
WC Fields Case: Newark dude in the 1930’s submitted gag ideas to W.C. Fields. Fields asks for a few scripts gratis (due
to nuisance suits) and then he might consider entering into a K. Ct. awards Newark dude the reasonable value of the ideas
he submitted.
3) LIMITS ON PROTECTION

Even if idea does not receive patent and become publicly available and marketed, if express K was created prior
to, royalties payments will continue to be enforced since already profited from first rights.
Aronson v Quick Point Co (1979) p. 61  had keychain idea. Agreement that if idea is patentable they will
pay 5%, and if not 2.5%. Patent was not granted, so in K they agreed to pay the 2.5%, but then idea starts to take shape and
catch on. There was no conflict with state and federal law (patent) since the design was free to be copied even though
Quick Point had to pay royalties as they contracted.
Holding: Because it was express K and not in conflict with 3 goals of patent law,  had first-on-the market rights that was
adequate consideration for the contract. Failure to obtain a patent by an inventor will not preclude enforcement of a K
paying royalties on the invention to the inventor. Fed patent law does not expressly preempt state laws regarding K.
1.
2.
3.
Three Goals of Patent Law
patent law seeks to foster and reward invention
promotes disclosure of inventions to further innovation
stringent requirement for patent protection seek to assure that ideas in the public domain remain there for the free use of
the public
II. UNFAIR COMPETITION
Infringement which competes (incorporates continuum of deceptive conduct from passing off to ™ infringement, the injury being
that consumers get a product different than the one they thought they were getting and producers lose sales they otherwise would
have made).
What types of acts fall within the realm Unfair Competition? Passing Off, Dilution of ™, False Advertising, Disparagement,
Misappropriation, K/Economic Interference, Price Fixing, Bribery, Unfair/Deceptive trade Practices, Right of Publicity, Pirating
Unfair Competition Supplemented by BOTH State and Federal Law
Common Law/State law  cause of action would lie, at common law, if  could prove that  used  product to deceive
consumers into thinking  was the source of the goods. INTENT TO DECIEVE is still major factor.
Federal Law/ Lanham Act  enacted in 1946 created a federal law of unfair competition that parallels state unfair competition
law. (States now have own trademark statutes as well)
1) Passing off & Secondary Meaning

1.
2.
Passing off- act of falsely representing one’s own product as that of another in an attempt to deceive potential buyers.
Direct:
Indirect:
3

Secondary Meaning- the trade meaning which may attach to a particular mark because its user has expended time and
money in the promotion of the mark. A  must prove that “the primary significance of the term in the minds of the public
is NOT the product BUT the producer”.
The Calculus of Passing Off
a.
b.
c.
Unfair competition law seeks to protect BOTH producer and Consumer by protecting
the first to use a name, brand or other symbol in connection with the sales of goods or services against
another competitor whose subsequent use of the symbol
Competitor of is likely to confuse consumers into believing that the first user is the source of the goods.
THE LEVEL OF PROOF CONTINUM


1. A’s product  descriptive and has no secondary meaning  A must prove that
B palmed off goods and by words or deed deceived consumers as to source and
A must also show actual confusion by consumers.

2. A’s product  common but has secondary meaning  A must prove ONLY that
There is a likelihood that confusion will result from B’s use of the symbol.

3. A’s product  distinctive, non- descriptive symbol that is solely for the identification of A  A can rely on
Presumption created in her favor that A, due to other alternative symbols, in choosing to use A’s was motivated by
intent to deceive and was successful in doing so.
Actual identifiable symbols is NOT needed in above JUST similarity which the greater the more probable a finding of
intent to deceive.
A Name to be protected must be in ACTUAL USE, can NOT SAVE FOR LATER.
William Warner v Eli Lilly (1924) (passing off, issue of functionality) p. 69 PASSING OFF
 although a product may not be “protectable” due to lack of patent and functional features, bad faith inducement
to PASS OFF product is NOT OK.
Eli made Coco Quinine (chocolate on pill). Warner then made Quin-Coco, identical product. Patent was not given so this is
not a problem, however, Warner told druggists to sub QC for CQ because QC is cheaper. Thus, distributor would be
buying more QC with incentive being kick backs due to selling to consumer at higher price b/c passing off as other
product.
Issue: Passing off: Whether passing off cheaper brand for more expensive brand made by different manufacturer
constitutes passing off and thus is an unfair competitive act? (unfair comp)
Trademark:
Holding: A manufacturer may not pass off its product as product of another. A party is entitled to make product identical
to any other non-patented product (reverse engineering). But can’t tell public that product is same as original. Here, bad
faith such as inducement to by manufacturer to pass off is very bad.
Trademark: color was functional/descriptive
NOTE: Functional elements ARE NOT protectable, such as color brown liquid being result of chocolate. Thus, a functional
element will kill a ™ but Patent will protect functional elements.
Color depletion theory: courts are hesitant to grant rights in a single color due to depletion.
2) Zone of Expansion
Sample v Porrath – p. 76 EXCEPTION TO GENERAL RULE  A local business can’t enjoin another
business from using the same name in its market if the local public is more familiar with the name of the non-local
business.
 operated stores in NY State called “Sample”.  operated stores in Niagara called “Sample Shop”. When  wanted to
open store in Niagara,  objected. Survey showed majority of Niagara residents identified the stores operated by the ,
not .
Holding: Party has the right to bar another’s use of a commercial name only if use is unfair. Unfairness exists when party
4
seeking injunction has expended time and effort to familiarize public w/ its name and product and the offending party
seeks to exploit that effort. When public has not in fact come to associate a certain product or service w/ a name, the
use of it by another is legit, as in this case. Here, survey showed public associated  w/ Sample Inc. in spite of local
character of . No secondary Meaning given to those stores. No dilution or deception. No bad faith. Thus no injunction.
Note: Court does not want to hurt business that is in good faith (Sample Inc.). Here, they wanted to find a way so they
could both exist concurrently. It looked to see that no consumer confusion existed under the circumstances.
L/O/C same products, different companies
1.
2.
Two types of Zone of Expansion (Z.O.E)
Territory  should be able to expand and keep your mark
Product  I make shoes and now I want to make pocketbooks  Related Goods Doctrine (RGD)
should be able to expand the use of your mark to related goods even if you didn’t register for those goods it
is common practice to expand in your industry to a new product
General Rule:



Generally, if registered in state, have state zone, if registered federally have entire country
In regards to both types, the question becomes can you Bridge the Gap? (Means you need $$, business plan, etc).
F.I.T.G.T.T  “First in Time Gets the Territory”  Senior v. Junior rule  General rule of Trademark which mandates
that the senior company will usually get first dibs on territory, unless, junior is the company the public identifies with (See
Sample)
3) Dilution Claims


Tarnishment of the famous mark
Dilute value of the mark
Mead Data v Toyota (1989)
 Apply the test and see where the cookies fall, here, product different, consumers sophisticated, good faith and
different reputations associated with each mark.
Mead not happy that Toyota putting out a LEXUS, because it sounds like LEXIS. Mead felt it would dilute the value of the mark
and brought a dilution claim.
Holding: No dilution. The court found that the mark “Lexis” had almost no recognition among the general public. It had a
strong market presence among lawyers and accountants. A junior product manufacturer does not dilute the market of a Sr.
manufacturer if no likelihood of confusion exists between the 2 products in the public mind. For dilution to occur, the mark or
name in question must be distinctive. Where name is one of common usage or does not have a distinctive quality, dilution cannot
occur. Lexis = word, a common prefix. Also, products are not similar, consumers are sophisticated, seems to be no bad faith, and
the senior mark is really only renowned in the legal community, while the junior is for the masses.
Likelihood of Dilution (L/O/D)- different products, same or similar mark.
Use to evaluate dilution claims:
The Balancing Test for Dilution (Sweet Concurrence)
1. similarity of the marks
2. Similarity of products covered
3. Sophistication of Consumers
4. Predatory Intent
5. Renown of Senior Mark
6. Renown of Junior Mark
Lanham § 43(c) not mentioned b/c was not yet enacted, but may not preempt state dilution law. (need interstate commerce
to invoke Lanham Act)
The Radio Test  if mark sounds the same on the radio, there may be a problem ( Mead is exception to the rule)
5
4) Misappropriation
Board of Trade v Dow Jones (1983), SC of IL.
 S.A.C (arrangement of facts) is protected under HOT NEWS even if underlying facts are NOT, have to balance
public need for info with protecting those who invest time and $$ into gathering information and so on.
Chicago wants to sell commodity contracts. They need an index for reference purposes and they want to include the DJ index
because the CTFC required a well known index. So what is the problem? DJ would not grant a license, and CBOT used it
anyway. DJ put time and effort into the index, the index is protectable. Facts are in the public domain, and the index is a fact, not
fiction. A fact is not protectable, but in its particular arrangement (S.A.C  Selection Arrangement Coordination) it is. They
are trying to take a free ride.
Issue: Did Chicago misappropriate the property of DJ?
Holding: A party’s product or service may be misappropriated even if the appropriating party offers a product unlike any offered
by the other party. 2 competing philosophies here- (1) an innovative party deserves the fruits of their labor v. (2) allowing
imitation pushes all parties to innovate further. Overriding concern is whether social utility is better served by allowing or
prohibiting appropriation. Whether they are competitors or not is one consideration of several. Dow has expended much time,
energy, $$ to achieve highly respected status. In context of stock market futures, any index can be used; giving Dow a monopoly
on its 30 industrials will not stifle market. Doing so may encourage innovation by forcing experimentation. SAC- Dow Jones
took facts and arranged it certain way. This SAC should be protected. Basically, Chicago should create their own index, but they
can’t because it has to be well known before they can use it, so Catch-22, Chicago has to pay DJ. The court also held that you
don’t have to be in direct competition to have a misappropriation claim, this allows even more innovation.
Hot News Exception  when news is presented in timely manner, others just can’t steal it and print it. Originator entitled some
time protection for limited amount of time to protect economic interests. (Stock news 15 min) (INS v AP)
What constitutes Hot News? “Motorolla” Test (12 states including NY/NJ)
1.  generates or gathers info at a cost;
2. info is time-sensitive;
3. ’s use of the info constitutes “free-riding” on ’s efforts;
4.  is in direct competition w/ product or service offered by ’s;
5. Ability of other parties to free-ride on the efforts of  or others would reduce incentive to produce product or
service that its existence or quality would be threatened.
Practice Tip: A cease and desist letter may be used, but should be soft. If there is a threat of a lawsuit, the other party could
move for a declaratory judgement. If the mark rights are not very strong, you could loose. Also, if you threaten a suit and then
don’t follow through, they may raise the latches defense.
B. Limits on Protection
1) Personal Names and the Rights afforded to them
David Findley v Findley (1966)
 A name is NOT sacred, and will not be protected if doing so will create Likelihood of Confusion and especially if
done in bad faith.
Two brothers' grandfather started this art galley business in Midwest. Grandfather dies, father continued business, and eventually
each brother had branch. David Findley goes to NY on 57th Street. Prior to that, his brother, Wally, had business in Chicago.
Wally then comes to NY on 57th. He sets up shop using Findley name. David had invested a lot into the name in NY and they
both sell the same type of art, and there is a huge Likelihood of Confusion (LOC).
Issue: Can Wally use his legal name?
Holding: An individual may be enjoined from using his own name in a business if such use would lead to confusion w/ another
business. An individual has property interest in own name but limited. No sacred right in name. Person’s name may not be used
to appropriate goodwill of another business by causing confusion in public. Both galleries were adjacent and sold same art- LOC
great. Narrow Injunction appropriate. They told Wally he could stay but go to a different area or change name back to initials.
Law only allows some free rides.
What needs to be established for a name to be protectable?
1. Secondary meaning, it is no longer a noun AND
2. Be a source identifier. (Think Roy Rogers)
6
LEVITTOWN  When a founder leaves a company bearing his name, what are his rights?
Mr. Levitt of Levittown sells business and trademark. Housing is either service mark (unique houses) or trademark (all the
same). Several years later, tries to go into the business again and uses his name, but the business who bought him out is not
happy about it. The court held he couldn’t highlight what he had done, but here, it might have been because he was so in
the face about it. The court relied on confusion.
2. Economic Interests: The place of Unfair Competition in the Competitive Plan
6) TradeDress, Design, Functionality
Crescent Tool v Kilburn (1917), NY
 As long as the public is NOT confused, similarities can exist. Absent patent functionality is not protectable
ONLY the design is.
There is a wrench, Crescent wrench, which is an adjustable wrench. Somebody else makes a wrench, also adjustable and shape is
the same. Patents expire, and back then patent was for 17 years.
Issue: Is a wrench free to be copied, they can prevent, absent patent protection, prevent the other wrench from being copied. If
not, what about LOC?
Holding: a junior product may be marketed having same shape & function as senior product if no likelihood of confusion is
present as to which the consumer is purchasing. A product may be similar in style & function and not give rise to unfair
competition claim if no LOC. Here, there is no confusion and Kilborn’s marketing suggested no confusion (diff name, diff
packaging, did not market wrench as a “Crescent”). A Sr. product having no patent has no claim on a product’s style or function.
Improper only when Jr. copies “nonfunctional” elements of Sr. that makes it distinctive.
Remember  non-functional items are protected when secondary meaning can be shown.
The Trademark continuum of what is protectable
Beauty (protectable)
Non-functional
Non-Essential
Utility (not protectable)
Functional
Essential
At what point will state law regulate a federally protected product?
Sears v Stiffel (1964)  federal preemption in patent law, SC
 PREMPTION ISSUES  State Law addresses conduct, NOT technology. Thus, if no federal patent protection,
a state can not protect under Unfair Competition Law.
Two arguments: Stiffel patents and L/O/C Stiffel made high end lamps. Stiffel not happy, because Sears made a pole lamp
(selling it under Sears name). Court held that Stiffel had an ineffective patent and also trademark. Sears wasn’t using the Stiffel
name, but charging less. The DC used IL law to find unfair competition and hold for Stiffel.
Issue: If there is no federal protection either by patent or ©, can the state remedy through its unfair competition laws?
Holding: No, a state can only regulate labeling and advertising. Patent law says what is not patentable is free to be copied. State
can regulate method of selling but a state’s UC laws may not impose liability or bar the copying of a product that is not protected
by the federal patent or copyright laws. Federal laws protecting patent & copyright laws preempt state law. SC reversed.
Compco v Day-Brite (1964)
 began manufacturing fluorescent lighting fixtures identical to those upon which Day-Brite had secured a design patent that
turned out to be invalid thus is in public domain.
Issue: happens when something that is protectable by trade dress and patent goes into the public domain – the patent expires –
can a state prohibit the copy of this?
Holding- A state cannot use its Unfair competition laws to bar or give relief for copying a product which is unpatentable under
the Federal Law and thus in the public domain. A state can impose liability for palming off or require labeling to prevent
confusion, but not for copying and selling unpatentable articles. Thus, design could be protected only if it acquired secondary
meaning and was thus, non-functional.
7) Trade secrets (pg 971 Supplement)
Trade Secret Defined: Any formula, pattern, device or compilation of info used in one’s business which gives a chance to get
advantage over competitors who don’t know it. Must be secret but need not be absolute. (Holder of TS may communicate it to
employee or to one in fiduciary relationship) But, substantial element of secrecy must exist so that except by use of improper
means, there would be difficulty getting info.
7
Does TS law interfere with Federal Patent Law? No, because TS law protects things that are NOT in public domain, whereas
Patent is for protection of items in public domain. Thus, TS law does not conflict then with if it’s not patentable it’s not
protectable.
Metallurgical v Fourtek (1986)  what is a trade secret?
 Elements of TS applied.
Therm-O-Vac tried to use modifications it got from Metallurgical. This was a process of what to do and what not to do. There
was Beinfeldt who worked for former company who did the modifications then he started other company and made a furnace
with modifications for Smith. Metallurgical began suit when Smith was in process of purchase.
Issue: Is this a trade secret and if so is there a value to  keeping this a secret?
Holding: The zinc recovery furnace was still valuable to . This was a secret because  showed 1) secret 2) used in one’s
business 3) gives competitive advantage and 4) cost involved. Remedy should be exact royalty and if unable to determine then
permanent injunction. The directed verdict for Smith was upheld, because he did not use the furnace, but court suggests that he
should have taken reasonable means to see if was secret or not.
NOTE: for permanent injunction  court can do many things, they can estimate how long it should take one for
reasonably figure it out or if bad faith could be forever.
NOTE on 3rd Party Liability  According to Uniform Trade Secrets Act a good faith purchaser who becomes aware of
the improper appropriation only after acquiring is protected, because of the “knowing” requirement
Dupont v Christopher (1970)
 If too costly to take all protective measures of secret, court will still find REASONABLE protection taken. Also,
means of appropriating secret need not be illegal, JUST improper.
Aerial photographers take pictures for confidential client of  refinery taking pictures of the process. The photographers will not
disclose 3rd party.  finds out and wants to stop the pictures from being taken and find out the name of the person. The secret,
here, is the layout, pipes, process by looking at these things.
Issue: Were proper steps taken to protect this secret?
Holding: Here the expense to protect from industrial aerial espionage would have outweighed reason.  had all other reasonable
protection. Furthermore, even though the airspace was lawful and photos were “lawful” this does not bar liability, IMPROPER
IS ALL YOU NEED, it doesn’t have to be illegal, even if TS is not used.
Reverse engineering (Is it ok?)  Question is not whether one can reverse engineer but rather is it lawful? Basically, you can
only reverse engineer something you received through lawful means.
Elements of Trade Secret (also see Restatement §§ 40-43)
1.
2.
3.
4.
Any info of  that gives  competitive edge over others;
 takes reasonable steps to keep secret (non-disclosure to public) NOTE: Secret just has to be secret, does NOT have to
be novel.
Misappropriated through wrongful means (uses or discloses; reverse engineering ok! If reverse engineering, keep
receipt so  not make misappropriation claim)
Cost involved in maintaining secret.
Protecting a Trade Secret



Provisions to write into K to protect your TS:
NDA- Nondisclosure Agreements
NC- Non-compete clauses
R.C. restrictive covenants- either when proprietor sells business or in employment relationships.
Covenants Not To Compete Specifically
Employee’s services must be unique & extraordinary and limitations must be reasonable to be upheld because otherwise the
covenant will interfere with individual’s ability to earn living. Thus, a restrictive covenant will be upheld RC if:
1. reasonable in time and area;
2. necessary to protect employer’s legitimate interest;
3. not harmful to general public; and
4. not unreasonably burdensome to employee
8
Remedies allotted for TS misappropriation:
1.  Actual loss ( unjust enrichment x 2 if willful) or reasonable royalty.
2. Injunction
3. Esq. Fees (if bad faith or willful)
Trade Secret Practice Note:

Risk of litigation is disclosure

Can ask for protective orders, deemed confidential or
i. “atty’s eyes only” documents (higher standard)
Note on Royalties  Should always require two tier system  Think Listerine and Key Chain case: If you do a deal with
someone on an item that might be patentable, you have a two tier royalty obligation 1) if the patent is granted  higher
royalty b/c exclusivity; 2) if the patent is not granted  you are still obligated to pay Y, which may be lower, but you
have to pay b/c you have lead time, which is a benefit.
Wexler v Greenburg (1960)
 A non-compete clause MUST BE REASONABLE, and they are generally NOT favored.
Chief Chemist wants to move and go to someone else’s employ.
Issue: Can employer force someone to work in company A or prevent them from going to company B?
Holding: There is a tension here. There is the public policy need to keep people employed, as well as the individual’s right to
seek employment freely, but we don’t want secrets being disclosed. Generally, non-compete clauses are limited. Court will
carefully scrutinize the covenant for reasonableness in the light of the need of the employer for protection and the
hardship of the restriction upon the employee. Must narrow down the type of companies not to work for – must be true
competitors. Here, K not enforced.
A key factor is determining reasonableness of non-compete clauses  is there separate consideration given for the
particular provision in the K?
Is there Federal Trade Secret Law?
Within the Economic Espionage Act  there is protection of Trade Secrets, which was enacted in 1996, when Clinton was in
office. Should this then preempt state law? NO, it says it in the statute that it does not preempt state law in this area, which
goes to say that Trade Secret law is very important, and helps the potential conflict in patent v TS law  since federal law has it
then why would state having it be preempted.
State Ok if Focus in On Conduct & not Technology  as long as the state law focuses on conduct and not the technology,
meaning improper conduct, someone stole, someone trespassed, then it is ok. State law does not care if patentable as long as it
gives a competitive advantage.
Pepsi v Redmond (1995)
 Enjoining someone from moving onward in their employ will ONLY occur when that someone is special and
HAS EXTRODINARY KNOWLEDGE that would be used no matter what just because it’s in the brain
(inevitable disclosure).
Pepsi sought to enjoin one of its employees from going to Quaker, who was a big competitor in the drink industry. The fact that 
said he would not use the knowledge didn’t appease Pepsi, because he had the knowledge. Here, there is fear that the knowledge
could give competitive advantage. Trial court enjoined and Appellate court upheld it b/c they saw that there was no new evidence
that he had taken knowledge
Holding: Generally the law will say if you are seeking to enjoin someone, they have to have some special and extraordinary
knowledge. The court found that the injunction was too permanent and thus not reasonable, so said injunction until current
business plan had passed. Court found no way that the  could escape using the knowledge in his current employ. Note: bad
faith went into the decision as well, and this will make a big difference when it has to do with damages.
Remember this is state law and it does vary state to state.
Reed, Roberts v Straumann (1976)
 Less likely that non-compete will be upheld if TS is NOT involved. Customer List is NOT a TS.
Straumann worked for Reed Robert as a tax advisor for 11 years.  then wants to start new business and he was soliciting new
customers. There was a K not to do this, and it was enforceable to a limited extent. There is a difference between a customer
following and a lawyer soliciting. Trial court said there was no TS in the customer list, but it would be unjust and unfair because
of competitive advantage.
9
Holding: He did not act improperly, these were just customers and such information is not extraordinary. CNTC usually
against public policy, and if there is a TS it is much easier, but occasionally they will be enforced when a TS is not involved, but
you will have to convince the court why. Lots of times, money to not compete will help.
Kewanee Oil v Bicron (1974)
 Patent Law and TS law are consistent with one another NOT in opposition. TS covers what Patent does not.
 figured out how to create large crystal for some reason or another, and this was larger than ever before. Some employees left
and worked for  and then crystal was created as large.  then sought injunction, as well as damages for misappropriation. 
argues no patent, and if its not patentaable it's not protected. The SC determines the answer to a circuit split. Ohio, 6 th circuit,
says it preempted.
Issue: Does Patent Law preempt state TS law?
Holding: TS is not preempted, because it reaches area of law that patent law does not reach. TS law enhances progress for the
sciences; it gives people incentive to protect. Ok, so it doesn’t promote public knowledge, but it wasn’t in the public domain to
begin with.
THE TS RISK? Company A has TS, and company B comes and invents the same thing, and B didn’t know, and gets
patent, then A is screwed.
EXAM  What to know about TS: Know what a TS is, the value of TS that are not preempted. They are valuable and what
you need to do to protect them. Know about CNtC  you might need to have this in an agreement, but give additional
consideration.
8) RIGHT OF PUBLICITY
The right of an individual (celebrity) to profit from and control his/her name, image, likeness, biographical facts, symbolic
representation, voice, signature, performance
What law is this right based in and how does it affect things


Majority view  property right (descends and lifetime exploitation maybe required) (NJ)
Minority View  privacy right (dies with the individual) stems from Prosser’s fourth privacy tort, which is based in
common law and state statutory law (NY, due to lobbying effort of Ad industry).
Always deal with Right of Publicity separately when you represent the client.
Great example of using publicity to advantage? New Kids on The Block  because they rode it as long as they could,
they had over 500 different types of merchandise. Over $500 million in merchandise.
8 prong test to determine whether Likelihood of Confusion between marks
The test is used to determine whether violation of § 43(a) of Lanham Act.  Any person who shall use in connection w/ any goods or
services any false description shall be liable by any person who believes he is likely to be damaged by use of such false description.
(1) strength of  mark
(2) relatedness of goods
(3) similarity of marks
(4) evidence of actual confusion
(5) marketing channels used
(6) likely degree of purchaser care
(7) D’s intent in selecting mark
(8) likelihood of expansion of product lines
Carson v Here’s Johnny Portable Toilets (1983)
 This is SYMBOLIC *NOT ACTUAL* use and it's not ok due to  property interest in his name
Johnny Carson suing based on the “Here’s Johnny” phrase on the basis that it represents him. Symbolic representation, even
though was the voice of Ed McMahon. Here, there are port-a-potties. “The world’s foremost Comodian”!
Holding: A celebrity may enjoin use of a phrase associated w/ him, even if neither his name nor likeness is used. Majority rule
applied. If a phrase has become associated w/ celebrity, he has property interest in that phrase.
10
White v Samsung (1992)
Samsung started series of futuristic ads and used celebrities; they did a commercial with a robot with likeness to Vanna White.
VW sued on right of publicity based on symbolic representation.
Holding: This is not just to be funny but also to sell VCRS; it’s not the individual elements but all of them together. All four
prongs of the publicity test were satisfied and all for profit. Besides, other celebrities being used were being paid.
1)
2)
3)
4)
Right of Publicity claim test:
 use of  identity
Appropriation of  name or likeness to  advantage, commercially or otherwise
Lack of consent and
Resulting injury.
But, right of publicity not limited to appropriation of name or likeness.
Problem arises with rights of publicity that involve characters, not the actual actors: Think of Cheers: Norm and
Cliff as mechanical figures in airport bars  is this a violation of right of publicity? Norm and Cliff are characters in the
show, written by the writers. The copyrighters say we have a right to license derivatives and there is a right of copyright
owner to exploit their characters.
Does the right of publicity (State based) trump the federal right of copyright owner? 9th Circuit said there was a right to
individual publicity, and the SC denied cert., which allowed state law to trump fed law. The court basically said the
studios should have put it in the K.




Defenses to Violating Right of Publicity
First amendment  this is the big defense
Claiming Parody  the “difference between parody and knock-off is the difference between fun and profit. Must be
transformative and is better if NOT for profit.
License
Editorial/News

Medium not the Message  Message is protectable BUT you can say it all you want. It becomes problematic
when you put it on merchandise.
Comedy III Productions v Gary Sadedrup
Silk-screen shirts of 3 Stooges and  asserted 1st Amendment Defense.
Holding- All 3 Stooges are dead, but there is still a right of publicity claim because we are in a state that follows the majority
rule. Court uses a balancing test between the First Amendment and the right of publicity based on whether the work adds
significant creative elements so as to be something more than a mere celebrity likeness. Since this was not a parody and was
intended to represent the Three Stooges and got $$$, should have gotten a license or made it into a “transformative expression”,
rather than just being a celebrity likeness, unlawful reproduction. Also, its medium not message. Ct distinguished between
single art and reproduced art, like lithographs (art law exception for single pieces of art). Ct looks to see if there is something
new to society present in the art, something of value that would not have otherwise been there to come under the exception.
Transformative Test  Does the marketability and economic value derive primarily from the celebrity, if the answer is
no, then it should be ok to allow someone to sell it. (Think Andy Warhol  if something is deemed social commentary you
have 1A argument).
What about cover art? Think about Beatles on Rolling Stones Cover  if there is no article inside then you need
permission, but if article, then commentary.
11
III. Federal Law of Intellectual Property
28 USC § 1338 of the Judicial Code
a.
b.
Gives federal court original j over “ any civil action arising under any Act of Congress relating to patents, plant variety
protection, © and ™ (district courts share with state courts in respect to ™ cases).
Gives pendant j over certain related state actions.
28 USC § 1367 Supplemental J
a.
c.
Gives supplemental j over state claims.
The court can always decline supplemental j. 1) Claim raises novel and complex state issues, 2) claim substantially predominates
the DC claim, 3) all claims which DC had original j over have been dismissed, 4) other exceptional circumstances.

A lot of patent cases are really breach of K claims – but you can always write a K so that it becomes a patent infringement claim
and can be brought in federal courts under federal law.
Copyright claims almost always come under federal law – although there are some state common law claims that can be brought.
If it is an infringement claim it is in federal court.

TRADEMARK LAW ™
Trademark History
Marks have been used to identify forever, and systematic legal protection began to take shape in the early nineteenth century 
TM law began as an infringement branch of the Unfair Competition Passing Off Doctrine.


1.
First TM statute  Act of July 8, 1870, 16 Stat. 198  created few substantive rights providing instead for registration of
marks protected under CL. Congress amended the Act in 1876 to add criminal sanctions for infringing federally registered
marks. However, SC held entire act unconstitutional in 1879 stating that had no relation to congress power over invention or
discovery since TM is result of continual use as opposed to signal invention.
Lanham Act (July 5, 1946)  first major substantive step towards federal TM Legislation. The act has since been amended
several times. Specifically, the 1988 revisions materially altered the act in the following ways

Modified use requirement

Strengthened evidentiary effect of registration certificate

Reduces term of registration

Widens compass of federal unfair competition law.
Three different levels of trademark protection (all exist congruently)
federal statutory  ® given to all that is federally registered (also on supplemental register)
2.
state statute  ™ used when registered in the state, also (sm) service marks for when dealing with service and is
afforded the same protection as ™
3.
state common law  ™ used when registered in CL
They are all based on use in some sort – where first to use gets it
NO STATUTE OF LIMITATIONS FOR TM
Service Marks v Trademarks
If you can buy the services/goods independently from each other, then one use is a service mark and one use is a TM use.
Service must be sufficiently separate from the subject of the advertising and mark must be used to ID advertising services,
not merely to ID subject of advertising. (Example for rock bands to use SM, header must say “in concert” or “performing
tonight”).
When you choose a mark what should you do first? Conduct a trademark search – to determine if the mark or a similar
mark is already in use and if so, how is it being used – b/c if it is a distinctive product it might be ok – This shows good
faith – if it is bad faith you may have to pay profits. Once you get federal registration you have constructive use throughout
the entire country – so that you are probably the senior user everywhere – Unless there is a common law trademark already.
12
1) Use and Intent to Use
Until 1988 revision, TM ownership and registration in the US turned on the mark’s use in connection with goods or services in
the market place. No rights attached unless used in commerce (now ok if bona fide intent). Use was also a condition precedent to
seeking registration.
Lanham Act § 1051 /(1)  Two Types of Use
a.
IN COMMERCE  Application for Use of a Trademark  owner of a TM used in commerce may request
registration of its TM by paying prescribed fee and filing in the Patent and TM Office. Office will review application for
compliance with statutory formalities and determine if barred by § 2, and if not publication in the Official Gazette is
approved, and if no one opposes application, then it mark will be registered.
b.
BONA FIDE  Application for Bona Fide Intention to Use TM  A person who has a Bona Fide Intention and
shows good faith to use a TM in commerce may request registration as well. Same as above, and if no one challenges, the
will issue a “notice of allowance” and then will register mark if, within 6 months, the applicant files a “verified statement
that the mark is in use in commerce” (see § 1051(d) (1)). A second six-month period will be issued “upon showing of
good cause” (see § 1051(d)(2)). The time will be extended for UP TO 24 (up to five renewals) months (and when
combined with original 12 month allowance, gives up to 4 years for mark to be reserved under INTENT TO USE.

§ 1057 (c)  intent to use registers the mark for constructive use essentially giving the same rights it would have had if
the mark was actually in use throughout the US from the date of filing (sets up seniority date to date you back) , along
with the right to bar other later applicants. However, Does NOT protect against foreign applicants or anyone who
registered prior to current applicant.
Token Use  Prior to until the 6/1/88 revision adding INTENT TO USE, the Patent and TM office offered a safety net by
tolerating token uses  spare, contrived uses of a mark made for single purpose of obtaining registration. This was
abolished by the revision.
IMPORTANT DATE  while revised in 1988, the revisions, including the ITU revision are effective from 11/16/1989.
Date of filing is critical date, it goes to the examiner and he says the description of goods is too broad, they will send an
action letter and you have six months to respond to it. If you respond to it and narrow it down, then it is now available for
publication in the official gazette. You can ultimately, with all the extensions have up to 4 years to make use. This is
important to determine ownership and exclusive rights.

Consumer Eye Test  Pre ITU, senior mark is determined by the first manufacture to get product with TM to
consumer first.
Blue Bell v Farah (1975) ITU not in place
Two clothing manufacturers decided to use “Time Out” for line and each of their attorneys gave the ok because there was nothing
showing yet. This is a 1975 case, so this was pre-ITU, which came in 1989. Basically, they were both trying to get common law
protection through use.
Holding: Trademark law is to protect consumer, so the point of seniority is important, thus F.I.T.G.T.T is significant, and it will
be determined by consumer exposure, and NOT internal sales. An internal sale is not enough. Therefore, Farah was the first to
put the tag in front of the consumer’s eyes. Key date is time when customers 1st see product w/ trademark. Farrah shipped 1st
order of Time Out clothes to customers before Blue Bell thus they are 1 st users.
When is Bonafide use sufficient to establish TM ownership and Priority
1.
2.
3.
4.
5.
6.
7.
8.
9.
quantity & continuity of sale (if need to ask what’s enough, then not enough);
consumer purchases; (“Consumer Eye Test”)
business of mark owner;
quality control;
a distinguishing mark;
intent;
profit or loss;
advertising;
Test market.
13

When ITU application is still current, can not be enjoined, BUT if actual use is pre ITU date then the court an
enjoin junior user.
Warner Vision v Empire (1996) ITU was in place
Someone files intent to use and someone tries to enjoin it stating that its already in use. Basically, the  claims that the  is not
bona fide, and why should I be knocked out of the box if they only intent to use. Why should the intent to use is allowed to freeze
out someone who is ready to use.
Issue: Can someone who used a TM before an ITU applicant for same TM enjoin ITU applicant from using TM?
Holding: Can’t obliterate the ITU, because it would defeat the whole purpose. No injunction. As long as an ITU applicant’s
privilege has not expired, court can’t enjoin. ITU’s are allowed to mature from date of filing. [But if actual use is SR to ITU
applicant, court will enjoin JR ITU applicant.]
What do we do about the senior common law user who wouldn’t come up in a search? What if they start expanding
their business from small time to big time? Will they have to go out of business like in Warner? NO, instead, and in the
name of equity, the senior is frozen from expansion.
NOTE: just because something is abandoned in a research report or cancelled, there is no guarantee it isn’t still being used,
under Common Law. Remember, all the TM law exists concurrently.
1.
2.
3.
4.
5.
6.
7.




SUMMATION of Process for getting a TM:
Selection of TM
Search (Thompson & Thompson)
Opinion letter
Filing
Publish for opposition in official gazette
Allowance (N/O/A or ®- actual bona fide use)
Foreign Filing  only have 6 months. If you file in Europe, and then someone files here, as long as you file here
within 6 months of foreign filing, you will have seniority
Defenses to infringement- Abandonment
Express (notice in paper)
Non-use  after three years  presumed abandoned.
Lack of Quality Control (if mark is licensed out w/out QC provisions, this would be “naked” license which is
abandonment)
loss of distinctiveness
2) NAMING MARKS  picking the right TM






How to choose a Good mark  want distinctive mark
Coined/Fanciful – very strong
 Ex - Hagen daaz Ice Cream
Arbitrary – very strong
 Ex - Apple Computers
Suggestive – stronger
 Ex - Mr. Clean, Coppertone – suggests what it might be but not descriptive of the products
Merely Descriptive w/ Secondary meaning  these are protectable
Descriptive  Not protectable w/o secondary meaning
Generic
Remember things can fall into the trademark graveyard, you don’t want your mark to ever be a noun.
GAAT  effects spirits and wine, there is a grandfather that if you were calling sparkling water champagne you can still,
however, now, you have to be geographically accurate, so now unless its from that region it can not be called champagne.
Lanham Act § 1052 / § 2 (Reasons for rejection)
No TM by which the goods of the applicant may be distinguished form the goods of others shall be refused registration on the
principal register on account of its nature UNLESS IT consists of a mark that is
14

§2(a) Scandalous  immoral, deceptive or Scandalous matter (NOTE: this determination is based not on the general
public's impression of the term, but the effect the term has on those “identified or implicated in some recognizable manner by
the involved mark) (Redskins Case)
§2(d) confusingly similar  A mark which so resembles that already registered and would either cause confusion,
deception, or mistake. (In Re N.A.D)
§2(e) A mark is also not ok if:
1. merely descriptive or deceptively misdescriptive (Sunoco/ Lovee Lamb) or
2. primarily geographically descriptive or
3. geographically deceptive, (In Re Loews)
4. a surname or
5. only functional (all of these without secondary meaning)

§2(f) A mark which may cause dilution under § 43.


NOTE: if you get rejected you can still use your mark, unless you are enjoined federally and then they will give full faith
and credit to other courts, more problematic with state court decisions as opposed to federal.
Supplemental Register  when you do not yet have secondary meaning
This is different from ITU, but with actual use without secondary meaning yet and after five years of being there, you are
deemed to have acquired secondary meaning and you will moved up to the primary. If you are in supplemental you do NOT get
1) Constructive use 2) to stop foreign import, and 3) published for anyone to oppose it.

GENERICIDE  Once public confuses a product brand with the product itself, it has begun to lose is
distinctiveness and will slowly fade into the TM graveyard.
King Seeley v Aladdin (1963)
Thermos   said that it came into generic term b/c advertising was so great.  wanted to use it and the court came up with
equitable decision.
Holding: Key question is what public understands when a word is used. If public understands it to mean a particular
brand of product = valid trademark. But if take it word to describe type of product it represents, generic and
unenforceable. This is true no matter what kind of precautions the company takes. Here the word became a noun!!! The court
recognizes the fame thermos got from its years of ads and what not, so they see good faith. They also did not think Aladdin was
acting in bad faith. The court said can use “thermos” as long as lowercased and they also want the mark of the company, like
Aladdin thermos. Thermos is still a registered TM, but it has since lost a lot of its distinctiveness.
Laches  acquiescence, and also the reason there is no statute of limitations, if you acquiesce within generally three
years time you are out of luck. (See (March Madness note case; Ill. High School Assoc. v GTE Vantage)

DECEPTIVE MARKS  Beware of Marks which might inappropriately characterize the product to the point
of deception.
In Re Budge Manufacturing (1988)
Lovee Lamb, is synthetic lamb skin seat covers, and wants registration, but is battling the holding that it is deceptively
misdecriptive.
Holding Court applies three part test, The Shapley Test and finds that the synthetic lamb skin fails, and is thus deceptively
misdescriptive as a name/TM.
1.
2.
3.
The Budge Test (Deceptive Marks)
Whether the term is misdescriptive.
Whether anyone would believe misrepresentation.
Whether would materially affect decision to purchase. **most important
If the mark only has the first two characteristics  it is ONLY deceptively misdecriptive (the difference between
untruths that injure consumers by distorting their purchase and those that have no economic consequence)
15

SIMILAR MARKS  1) The more sophisticated a consumer the less distinct products have to be 2) sometimes
the people who are at firing line are better equipped to determine LOC than the examiner.
In Re N.A.D (1985)
 wants to register NARKOMED, but it is declined because there is another mark in the medical service that is called NARCO
MEDICAL SERVICES. Examiner is seeing confusion, but what about the owners of the marks, they are competitors and they
said that no one is going to confuse them.
Issue: Who judges whether there is confusion or not, the examiner or the people making and selling the product?
Holding: The firing line is a better place to look; they are a better judge than an examiner. The law allows for concurrent
registration of the same/similar mark. NOTE: that concurrent registration has to be approved, and the court here seemed to
allow it because of the “sophisticated consumer”.
Concurrent registration  even if earlier filer says ok, the board still has to 1) determine that confusion or deception is
NOT likely to result and 2) impose conditions of the concurrent user relating to mode or place of use of the marks to
prevent such confusion.
Note: even if the case turned out differently, the two companies can come to an agreement not to sue.
If you have an owner who licenses a mark, they have to maintain QC [Quality Control], which means that you would have
to receive samples of the product to make sure ok. You have to get shipment of product periodically.
 DESCRIPTIVE MARKS  If a term is too highly descriptive, it's unlikely that the board will approve its TM.
Application of Sun Oil Co (1970)
Sunoco was the only one that had custom blended gas. Sunoco wants to TM the term “custom blend”.
Holding: No, even though Sunoco tried to show secondary meaning, the board held the term was too highly descriptive and thus,
it could not work.
Dissent:  has used mark exclusively for 12 years, extensively advertised and studies have shown that the public associates
custom blend with Sunoco. Basically, while generally a descriptive term, there is enough factual support to show  has a right to
the term. You have to take facts by facts.
Practical Tip: Courts generally ask do competitors need these words to compete. Could other gas companies compete
without being able to use “custom blended”.
Note Various Issues to Watch: CDT (Color Depletion Theory), FOM (Family of Marks), BTG (Bridge the Gap), ZOE
(Zone of Expansion).

PRIMARILY GEOGRAPHICAL MARKS  Cannot lead to false impression of origin, so its only ok if name
NOT misleading
In re Loews Theaters (1985)
Company wanted to make cigars and call them DURANGO, even though not from Mexico.
Holding: No, the court said it was geographically descriptive because it did not come from place implied in name. The name
gives false impression as to its place of origin. Peeps can use geographic names as long as not misleading.
3) Types of Marks
THREE TYPES OF MARKS (See Lanham § 1127 definition)s
Service Mark  is different from Trademark, in that a service mark is used in connection with advertising to promote a product
and should be representative of the origin of services, NOT the goods. (•) The dispositive question  Can you buy the service
without the product? If so, then you got a service worthy of a service mark. SM 2-part Test: 1) Service must be sufficiently
separate from the subject of the advertising and 2) Mark must be used to identify advertising services, not merely to ID subject of
advertising.
Certification Mark  Guarantees quality and says that standards are ok (Kosher Marks). Owner of mark cannot place mark
on his/her own goods, it can only allow its use on third party goods. They go to organizations and get a license to put it on their
product. These certifications organizations make a lot of money.
Collective Mark  TM or SM used to identify membership to a group or a group’s product or service. Think of these as a
membership button, it is not necessarily speaking to standards but saying that something belongs to the organization. BBB and
Dairy Farm Organizations, SAG, AFL all collective to indicate belongs to certain organizations.
16

SERVICE MARKS  A service mark must identify the service NOT merely the subject of the subject. Thus is
Advertising, the service MUST be sufficiently separate from the subject of the advertising.
In re Advertising & Marketing Development (1987)
Advertising marketing firm developed a campaign NOW GENERATION. However, a NOW account already existed which
referred to accounts that did not collect interest.
Issue: Whether mark was representing service or product. If representing a service, does it ONLY represent its own service?
Holding: Court said that the mark was describing π services so the service mark was allowed. Service Mark’s proper use is in the
advertising, signage, brochure – of a business. Business cards can be accepted as a proper specimen to receive a service mark.

CERTIFICATION MARKS  you can not claim abandonment of mark if you do NOT want to pay someone
for the license anymore.
Midwest Plastic Fabricators v Underwriters Laboratories
UL is a certification licensing organization which licenses marks for quality of hairdryer.  wants to cancel using UL, because
they are not maintaining Quality Control, the companies were really testing it. However, the UL license had expired even though
they continued to use the mark.
Issue: whether you can charge certification mark with being a Naked license, if they are no longer exercising quality control.
Holding: You can not pay someone to use their mark and then try to get out of the K, this is License Estoppel. UL’s licensing of
certification mark to 3rd parties are not naked licenses and thus not abandonment of the mark and they retain QC over products to
w/c they grant licenses for.
Licensee Estoppel  licensee is estopped from bringing claims against the licensor. It's not fair to get a license to make
sale and then want to get out of paying for license.
4) What Can Be the Content of TM?

COLOR  can be TM as long as 1) non-functional, and 2) has secondary meaning such that it symbolizes. This
exists for scents, shapes, and sounds as well.
Qualitex v Jacobson (1995)
Silver was the common color for ironing board pad. However,  wanted to mix things up and use a Green-Gold board pad.
Issue: Whether one can TM a color?
Holding: Silver probably not, because it is not protected due to functionality, but Green-Gold, the court said color is protectable
as long as it is 1) not functional and 2) there is secondary meaning. The counter argument is Color Depletion Theory  you
grant someone rights to a color you deplete the number of colors out there, b/c there are only a limited number of colors – so you
should not grant rights to color. (Court thinks unlikely, because there are infinite colors and some colors will only work for
certain products, and functionality will curtail any problems that occur and prevent the anticompetitive consequences of
TM for color)
Fragrance  In Re Clark   established that people had come to recognize her as source of the fragrant goods
Location on Goods  not ok, since the square piece of fabric on clothes is generally a label that bears a word TM, thus
even in light of secondary meaning, not ok (Kotzin). However, tag on hip pocket as opposed to being on waistband of
trousers, that has acquired secondary meaning as the Tab even if has no other distinguishing features is OK since Levi had
already obtained registration for color tabs. (Levi Strauss). Later, Blue Bell was held to have infringed the tab (Levi v Blue
Bell)
Family Trademarks  term applied to a group of TMs owned by one company in which the same syllable or syllables
recur. There is a reluctance to grant such TM, but when it happens the mark is strong and sprinkling of related uses (think
Kodak)
Slogans  after much resistance it was decided that certain combination of words can be TM. Biggest hurdles for a slogan
TM is getting past the claim that mark is descriptive.
5) ADMINISTRATIVE CONCERNS (283)
Ways to renew a TM (286)
(10 yr renewal term is product of the TM law revision act of 1988; originally the Lanham Act gave 20 yrs of protection).
RULE- if filed on or after 11/16/89 the term for federal protection is 10 yrs w/ 10 yr renewal terms; if prior to 11/16/89 then 20
yr terms w/ 20 yr renewal dates!
17
1.
2.
3.
1.
2.
3.
4.
Must file §8 affidavit statement of continuous use every time you file a §9 renewal form every 10 years.
On top of that bullshit, you must file an §8 every 6 years.
Also, must file §15 incontestability and secondary meaning form in year 6th year. This is notice to TM office and the
world that your TM has 2nd meaning and is incontestable. Presumption that 2nd meaning if have TM for 5 years.
Incontestability re: 2nd meaning or Sr. v. Jr. but you can attack it on Functionality, fraud or abandonment.
Process for Appealing a TM denial:
Have to be rejected by examiner.
Go to TTAB (Trademark Trial and Appeals board or de novo to DC court- if lose go to regular cts).
Can appeal to CAFC (Court of Appeals for Fed Cir)
Appeal to US Supreme Court
TTAB (Trademark Trial and Appeal Board)  hears ex parte claims after examiner refused registration, such as In re cases.
6) RIGHTS of the Public and LIMITS on TM owner

GEOGRAPHIC BOUNDARIES if markets of Sr. and Jr. are different, then they can concurrently exists
UNTIL senior wants to expand, in which case Junior is SOL.
Dawn Donut v Hart Food Stores (1959)
Dawn Donut was a wholesale distributor of doughnuts and other baked goods and , is a retail seller of Dawn, a different donut.
Issue: Whether under Lanham, wholesale distributor of Dawn Donuts can enjoin  from using Dawn in connection with the sale
of donuts in six county area of NY State, specifically, when , although has a TM for retail sales has not exploited its mark in that
area at the retail level in over 30 years.
Holding: This is a case of Sr. v Jr. and the court says that because the Sr. is not really used mark in area of  mark, then they can
concurrently use, but if Sr. decides to expand, then Jr. is out of luck.
NOTE: the use by both of these parties was prior to Lanham Act, which meant there was nothing like constructive notice
and what not. The court recognized this and it was part of its reason for allowing the Jr. to continue. Had there been the
junior would have had “notice” and probably would not be allowed.
NOTE: Sometimes, note, the senior will not win out because the jr. is already national and the sr. will be frozen in its area.
NOTE Be careful when sending cease and desist letters in which you threaten to sue, because if you don’t sue and time
passes, you could lose the claim.
Federal Dilution
Dilution under Lanham  A Federal Claim
1)  mark was famous; (distinctiveness is necessary but NOT sufficient)
2)  adopted its mark after  became famous;
3)  mark diluted  by blurring it.
Ringling Court says must show ACTUAL injury, not likelihood, under §43 of Lanham Act but not necessary in state
courts. Many Federal Courts, however, apply the state claim test, the Mead Test.

STATE v FEDERAL DILUTION CLAIM  at Federal level, there MUST be actual confusion, NOT likelihood,
as with the STATE claim. This case has been criticized. ACTUAL can only be proven with $$$ harm.
Ringling Brothers v Utah Division of Travel Development (1999)
“Greatest Show on Earth” v “Greatest Snow on Earth”. Utah used the phrase to come to their ski resorts. Ringling Brothers are
not happy and brought a dilution claim.
Issue: Under Federal law, what needs to be established to show dilution of mark?
Holding: This is not a state claim, and you don’t need “likelihood of confusion” you need actual confusion, so you cannot win
because there is no economic harm. Court rejected the Mead factors test, because the elements were not relevant to the Federal
Claim. (Other courts however will use this).
18
Criticism: if you need actual harm, there might be too much damage by the time you have an actual claim. Furthermore,
this test requires that the junior already be established before senior can attempt an injunction, since actual harm needs to
have occurred first.
Make sure you understand distinction between federal dilution claim and likelihood of confusion claim.
Limits on TM owner
Fair Use- competitors are free to use descriptive elements of a TM in a non-trademark sense.
3 part test to establish fair use: (NKOTB case)
1) there is no alternative but to use the mark
2) the % used is no more than needed
3) there is no suggestion of sponsorship or endorsement
4 categories of Fair Use under TM always ask is it 
1.
2.
3.
4.



Comparative Advertising- can use as long as accurate and not disparaging (for cts, message conveyed is not dispositive;
message received is what is key)
Editorial/ News
Parody/ Satire (amuse not confuse) - allowed for fun, not for profit.
Collateral Uses (1st Sale Doctrine)  once you sell an item you lose certain rights, you can resell as long as not misleading
and do not need separate license (see e.g. Below)
Repaired/ used goods (can tell public you fix brand name though you are not a licensed repair shop by brand company)
Repackaged goods (when buy in bulk and sell in small units, but ID they are repackaged)
Dealership/ replacement parts (can say “we fix” VW’s)
New Kids on the Block v News America Publishing
 Can’t monopolize the descriptive nature of product especially when in “news” context. Furthermore, courts do
NOT want to tell fans how to spend their $$$.
New Kids sued two papers who used their name in a poll to see who was the most famous new kid. NK are not happy because to
participate you have to call a 900 number. NK argue that the money is not going to them, and the fans who are spending the
money on the polls are spending less on actual NK merchandise.
Issue: Is it ok to conduct a poll for money using celebrity fame without consent or license?
Holding: As long as not capitalizing on NK name its ok, nominative fair use. Furthermore, the court did not want to tell fans how
to spend money, and they basically upheld the newspaper use as ok because editorial. NKOTB is descriptive of their product & a
registrant can’t monopolize use & prevent others from describing a characteristic of their goods
Not every one agrees with this case, because there is a §43 (a) concern of false affiliation.
Domain Names
Cybersquatting – § 43(d)  register a famous domain name – and then force the person who it applies to pay you for it. This is
NOT ok unless in good faith, because otherwise like blackmail.
Metatag  competitor could use competitor marks to direct the search engine to their site, by using hidden words. The
competitor would use competitor mark to redirect consumer in their favor.
ICAN  internet naming committee; it is international, and this is where you get you domain name, and where you dispute
things.
7) REMEDIES
Lanham Act Remedies for Infringement
19
§ 1116 – Injunction (partial or full)
only need likelihood of confusion (see Polaroid). Injunction should be given only to extent necessary to prevent harm or
unforeseen harm and subject to principals of equity – good faith/bad faith.
S 1117(a) – Monetary Relief
 own injury


damages generally can be measured by
1.
Loss of sales/profits caused by infringer use of mark OR
2.
Consequent economic injury to TM owner reputation (dilution).
Profits earned by  can be treated as
1. presumptively equivalent to profits lost by  and awarded on a compensatory basis (but the burden
shifts here to  to show and for it to work there should be competition shown) or
2. As unjust enrichment (does NOT require competition) (see Maltina).
 However, BAD FAITH need be shown usually to get  profits
 Bar on Double Recovery  profits (1) will preclude damages (1) BUT not precluded damages (2)
 Actual Confusion Required  subject to § 1111 Innocent Infringer – no indication to D that there was a
trademark – but constructive notice is enough to negate innocent infringer

attorney’s fees  only in exceptional cases – must show:
1. fraud
2. malicious intent – by π or D
3. willful/deliberate conduct by the D
§ 1117 (c) counterfeit marks – penalty is more severe

π is awarded the greater of D gross profit or 3x π injury plus Attorney’s Fees

also see 18 USC § 2320
i. first offense for counterfeiting trademarks = $2M
ii. repeat offender = $5M plus possible prison sentence

also a statutory option under Lanham Act – as to damages



§ 1118 – Destruction of Articles
§ 1119 – Cancel/Restore Mark
§ 1124 – Freeze Imports  only works for marks on the principal registry – doesn’t work for supplemental registry
1.
2.
3.
4.
5.
When looking at whether to allow for  recovering D’s Profits – Court will look at other Factors:
Degree of Certainty that Δ benefited from unlawful use of π’s mark
Availability and adequacy of other remedies
Role of D in effectuating the infringement
π laches
π unclean hands
Maltina Corp. v. Cawy Bottling Co. (1980)
 PROPERTY RIGHT? Is a TM a property right, because if so then is consistent with the view that accounting is
proper EVEN IF  and  are NOT in direct competition.
π owned a trademark on a product – in Cuba and in America and was kicked out of Cuba b/c of political shit and came to
America and tried to use it and register it, but couldn’t get enough money. D then tried to register – but was told by USPTO that
there was too much of a LOC – so no trademark, but D went ahead and made product anyway. Infringement has been
determined.
Issue: what is the appropriate remedy; was π entitled to D’s profits –
Holding: Δ could not get an apportionment b/c it could not associate its costs w/ the specific product. Case teaches us whether or
not entitled to damages and what you can get such as lost sales and  profits. π had a right to an accounting – discovery to
20
get the ∆ books and records to see what profits were but injunctions must come first – then only if the injunction is
insufficient to bring about equity – an accounting will come about to determine money damages.
Secondary Liability
Hard Rock Cafe Corp. v. Concession Services, Inc (1992)
 Need to have Actual knowledge
 is saying that ∆’s are counterfeiting their mark and design on Tee-shirts which are sold at a flea market This case, however, is
about secondary liability. CSI owned flea markets where shirts were sold.
Issue: whether the owner of the flea market is secondarily liable – or just the individuals who sell? Was there a sufficient level of
control and monetary benefit for contributory infringement?
Holding: Flea market rents space – and says that no illegal merchandise can be sold – but does little monitoring. District court
only found CSI to be negligent, not willfully blind, so no basis for liability.
Levels of Secondary Liability
Willful blindness  MUST have actual knowledge under Lanham Act
1. must have suspected wrongdoing and
2. Failed to investigate.
Vicarious liability  is liable if it has:
1. Right and ability to supervise infringing abilities and
2. A direct and financial interest in such activities (they have control and they are benefiting).
Contributory liability:
1. if manufacturer or distributor intentionally induces another to infringe a TM or
2. if it continues to supply its product to one whom it knows or has reason to know is engaging in TM infringement.
Trademark Infringement
Pickle-Rite v. Chicago Pickles
 ONLY CONCERN IS LIKELIHOOD OF PUBLIC CONFUSION, and this is judged based NOT only on looks
and is not viewed side by side.
Polka pickles v. Pol-Pak pickles and they look nothing alike.
Issue: Is this Infringement – court looks to likelihood of confusion
Holding: Must consider: form, spelling, sound of marks. A similarly named product may infringe on a trademark even if a visual
comparison of the labels would tend to reveal no similarity. Key is whether public will be confused. While visual
representations important, names of products are ultimate identifiers. Did radio test and sound alike. As shoppers can’t
always do side-by-side comparisons, LOC judged singly, not side-by-side. Here, court does not find actual confusion, so no $$
damages, just injunctive relief which was geographically limited.
Polaroid Test – Likelihood of Confusion: multi-factor test
1.
2.
3.
4.
5.
6.
7.
8.
Strength of Marks  Distinctiveness of mark, or more precisely, its tendency to identify the goods sold under the mark
as emanating from a particular, although possibly anonymous, source
Degree of Similarity b/w marks
Proximity of products  Where products are sold, how they are advertised, displayed, class of customers
π likelihood to Bridge the Gap  likelihood that π will go from golf jackets to high end women’s coats
Actual Confusion  Only a factor – not necessary, “while a π need not prove actual confusion in order to prevail, it is
certainly proper for the trial judge to infer from the absence of actual confusion that there was also no likelihood of
confusion” BUT if there is a high level of actual confusion – this could trump the other factors – b/c it is such an important
factor – and is what we are trying to prevent.
∆ good faith
Quality of Δ Product  Δ product is of very high quality – any confusion would benefit the π – b/c good quality of ∆
product is good for π reputation
Sophistication of buyer  The greater the value of a product the more careful the typical consumer can be expected to
be
21
McGregor v. Drizzle
 If NO likelihood of confusion and the products are NOT in competition  then NOT INFRINGEMENT
π made golf jackets under the name Drizzler – π was senior user and π was in sports equipment. Then it was found out that ∆ was
making women’s coats – named Drizzle
Issue: Will infringement be found between non-competing products?
Holding: With non-competing products, trademark infringement will not occur if no LOC btw product. Court applied Polaroid
factors and found no LOC.
Federal Unfair Competition Law (needs to affect interstate commerce)





§ 43(a) Elements of Cause of Action
False or misleading statements of fact regarding ∆ product or another’s products or services
Likelihood of or actual deception or consumer
Materiality of deception to purchaser’s decision
Interstate commerce
Likelihood of or actual injury to π
This can be used for unregistered marks
Two Pesos v. Taco Cabana ( US SC 1992)
 TRADE DRESS is protected under Lanham IF inherently distinctive.
This is a case about trade dress – the look and feel of a restaurant.  says the color, tile floor, garage doors, heat lamps, etc. made
its design inherently distinctive and brother is infringing.
Issue: Whether or not the look and feel of a restaurant is capable of trademark protection?
Holding: This was not a federally registered trade dress, but mere use gives rights, so question becomes whether it is inherently
distinctive such that you do not need secondary meaning. Rule on distinctiveness: a mark is protectable and distinctive if either:
1) It is inherently distinctive, or 2) Has acquired distinctiveness through secondary meaning. Here court only looks at the first
factor and says trade dress can be inherently distinctive in this case.
But a lot of scholars and circuit courts disagreed. Most courts seem to feel that to get protection you need secondary
meaning. So if you are going to bring a case like this you are going to want to have surveys showing secondary meaning in
the public
Constructive quality control  Court said there was QC that existed inherently in the relationships of the parties – two
brothers even though they didn’t talk had same ideas of quality and service.
22
COPYRIGHT LAW ©
HISTORY  Common Law Copyright predominant copyright law until the first federal copyright law act which was modeled
after the Statute of Anne, in 5/31/1790, and the last comprehensive revision was signed into law 10/19/1976. Twenty years later
the Digital Millenium © act, in 10/28/98 sought to move copyright law with the advancements in technology. However, while
act was established in 1790, up until the 1976 revision, copyright was almost entirely the province of state common law.
PRE 1976  The Interplay of Federal & Common Law Copyright Protection begins at moment of work’s creation ending
only upon publication with the authority of © owner. Thus, this was the exclusive protection for unpublished works. After
publication, federal copyright protection took over if proper © notice appeared on ALL publicly distributed copies, if NO
notice, then work fell in to public domain
POST 1976  eliminated common law copyright for most purposes and made Federal Law ATTACH at first fixation in
tangible form. However, elements of CL copyright remained, b/c federal extends only to works that are fixed in a tangible
medium of expression, leaving unfixed works to the province of the state, such as choreography (not filmed or notated,
conversations, speeches, live broadcast and improvised musical compositions)
March 1, 1989  joined the BERNE CONVENTION  the largest effect of this being the elimination of the © notice
requirement, so after the above date, notice is optional.
1) FORMALITIES REQUIRED FOR PROTECTION

Original works of authorship fixed in any tangible medium of expression are protected and include 1) literary works,
2) musical works, including accompanying words 3) dramatic works, including an accompanying music, 4) pantomimes
and choreography, 5) pictorial, graphic and sculptural work,
6) Motion pictures and other audiovisual, 7) sound recordings (NOT protected until 1972) and 8) architectural works. (see
17 USC § 102, Subject Matter of ©)

What is an unfixed work? Anything live that has not been recorded before or on sheet music, choreography that has not been
notated yet. The law protects original works of authorship, a photograph, music, and under the constitution it is all writing.
MOST WORKS ARE FIXED.
1909 Act – all works created before 1/1/78

Notice
 under old act needed proper copyright notice to get federal protection
 if you published work w/ defective or no copyright notice  then it is in the public domain
 if it is a work that has not been published  you can register to get copyright  to divest self of state and invest self
w/ federal protection. As soon as you did either of those started first 28 year clock






Duration:
28 Years
can get extension of 28 years
if copyright was still valid as 1/1/78 could get another 19 years
in 1998 – passed law allowing for another 20 years
So 28 + 28 + 19 + 20 is the max if published pre 1/178.
1976 Act

Pre-3/1/89 
 defective notice  capable of cure  new law allowed this

notice required for post-3/1/89 works
 works after this date do not require copyright notice  but should still have it because without it an infringer can use
innocent infringer defense
 must register to sue (exception Berne convention Authors who first published in another Berne Country)
23


Statutory damages/Atty. Fees  must register work 1st 90 days of publication or prior to infringement)
Duration
 Individual’s Life (last surviving author) + 50 + 20
 When anonymous, corporate author, pseudonym, etc  it’s the earlier of 95 years from Publication, or 120 from
Creation of the work
NOTE: pre-1978 works that were unpublished, created, fixed, you could leave it unpublished, and would not require copyright
notice, because since yet to be published were swept under new law and no longer require notice. The clock only pays attention if
you registered and anything that had yet to be published pre 1978 and is published post automatically vests.
Mandatory deposit, see © Act § 407  you can get fined if you don’t deposit, but you wont lose your copyright. It doesn’t
make sense not to deposit when you register. You will see on the form a box you can check. Congress requires this deposit but
they are NOT required to maintain the work in their archives, you would think that they would, but they don’t b/c they have run
out of space. You can pay an extra fee for long time storage. So, this is no longer a permanent archive.
Notice
The Dates in a nutshell
1909 © Act  pre this act, work falls into public domain without notice begins to relax requirements post 1909 Act. 1976 Act
(effective 1/1/1978) eased formalities a bit more, by allowing for more generous excuses and errors. Then the Berne
Convention wiped notice requirement out completely, effective March 1, 1989.
Notice Issues



PRE 1978  something was put out without notice, it fell into the public domain, with very little leighway, because
treated under 1909 act.
POST 1978 & PRE 3/89  1976 © Act governs, requiring notice with some leniency.
POST 3/89  need notice in one form or another.
Renewal Issues


PRE 1964  you had to file a FORM RE (renewal form), so even if published with proper notice, still need to file or will
fall into public domain.
POST 1964  you did not have to file form RE, but you still should, because need to be registered to sue.
What is required to establish © notice





Copyright
©
Year
Name of author
“all rights reserved”  not required, but gives broadest global protection
Example:
Copyright © 2004
Gabrielle Marshall
All rights reserved
NOTE: you want to register each song on a CD individually, so you can have up to 20 different infringements as opposed to one.
Hasbro v Sparkle (1985)
 Even if pre 3/1/89, any notice defect post 1976 Act can be corrected, as LONG AS make 1) reasonable effort to
distribute notice after defect discovered and 2) is within 5 years of original publication.
π is American toy manufacturer, was assigned © on Transformer toys made in Asia by Takara. Δ Sparkle (also US company) had
copied toys made in Japan where © formalities are not required. Under 1976 Act, this work was fixed before 3/1/89, so still
needed notice.
Issue- whether the designs fell into public domain or whether  could cure the defect of omitted notice in the US.
24
Holding- Omission of copyright notice may be cured.  as copyright holder could cure omission. Under §405(a)(2), to cure a
defect, have to make reasonable effort to distribute notice in US after defect discovered w/in 5 years of original publication
of work and must register it to cure defect. This doesn’t only apply to accidental omission, but applies to all omissions.
The need to cure issue is mooted though for the most part, because of Berne, the need to cure would not exist past 1994.
But anything pre-89 you still need notice.
STATUTORY SUBJECT MATTER
Two types of works: copies © and phonorecords (p) (works where there are sound recordings only, no visuals)
To be copyrightable, must be:
(1) Original work of authorship (no novelty, ingenuity or esthetic merit needed)
(2) Fixed in a tangible medium of expression for more than a transitory period of time (ie- if there is authorized
embodiment in a copy or phonorecord & if that embodiment is sufficiently permanent or stable to permit work to be
perceived, reproduced or otherwise communicated for a period of more than transitory duration. Copies &
phonorecords will comprise all of the material objects in w/c copyrightable works are capable of being fixed.
What is Copyrightable? (See §102(a))




§101 defines “literary works”, “pictorial, graphic and sculptural works”, “motion pictures and audiovisual works”, and
“sound recordings”. §101, “musical works”, “dramatic works”, and “pantomime and choreographic works” are © as well.
SAC—“Selection, Arrangement, Coordination” can © a recipe book, but not an individual recipe (that would be protected
by ™)
§102(a)—lists some works that are protected by ©, in addition to ones defined by §101 (musical works, dramatic works,
pantomime and choreographic works).
State and county governments can be authors of © work.
What is not ©? (See §102(b))







Names, titles, slogans (these are protected by ™)
Ideas, plans, methods, systems or devices
Blank forms (Blank form doctrine)
Works consisting entirely of info that is common property w/no original authorship
Typeface as typeface
Obscene material
Works of authorship by US Government (but govt can be © owners)

If there is only one way, or a limited number of ways of expressing idea, cannot ©.
Popular forms of © protection:
PA  performing arts (this is what you use for musical compositions, c in the circle, also for movies and DVDs, because this is
an audio visual work, AS SOON AS VISUAL IS ON SOMETHING, IT IS PA, even if primarily a CD with a audio visual
component) also video games.
SR  sound recording (audio cassettes, cds, records, PURELY JUST FOR SOUND, unless you are the sole owner of the sound
and the musical composition, HAS TO BE THE SAME AUTHOR)
TX  textual works (books, magazines, software codes and what not)
VA  visual arts (this is only three dimensional, Paintings, sculptures and drawings)
RE  Renewal Form
GRP  Group registrations (newspaper maybe b/ c can do at once to save $$$)
SE  Series registrations
Baker v Selden (1979)
 Forms are functional and thus, NOT protectable. Copyright will protect unique explanation on how to use
forms, but not the forms that are incidental.
 wrote a book where he described bookkeeping/accounting, debit/credit system, writes about it, and illustrates the system. 
then comes along and takes the illustration and made use of the forms.
Issue: whether the actual forms accompanied in a “how to” book are protectable?
25
Holding: Copyright DOES NOT protect functionality, and the forms are deemed to be functional. The SC holds that the
explanation of the use is copyrightable, but not the forms themselves.
Blank form doctrine  fill in the blank forms are often not copyrightable, LOGOS on the forms might be.
Merger Doctrine – if the idea for something and the way that the idea is expressed is limited in the number of ways that it
can be expressed – then it is not protectable
Unlawful content – if the content of the writing/work is unlawful (i.e. kiddie porn) then it will not be copyrightable
US Government works – anything authored by the US Government (federal only) is not copyrightable  But the
government can own copyrights – if they are authored by someone else and then sold to the government it can be protected
Characters – to what degree are characters copyrightable? To the degree that “the story is about them” such that they’ve
stopped being stock characters. Not dependent on the actors, but on the characteristics of the characters themselves (e.g.,
James Bond) but it is often hard to distinguish the actor from the character.
ORIGINALITY
Bleisstein v Donaldson (1903)
 Just because something is functional DOES NOT mean that there are not original and copyrightable
components.
Lithograph used as advertisement for circus, is it copyrightable.
Issue- whether an advertisement could be deemed an original work of authorship to get © protection.
Holding- Ads were deemed to have a functional purpose. Not precluded from © just b/c they served such a purpose because
there was still expression that was capable of protection
Practical Note: Always carry a separate copyright notice, b/c under the rule, if you have a publication, the copyright inside
the cover will protect everything between the front and back cover.
S.O.B.(Sweat of Brow) prior to Feist, if you put a lot of work into something, even if not creative energy, you were protected
under this doctrine. Sometimes people will put in fake info to make sure that they will know if someone copies.
Feist Publication v Rural Telephone (1991)
 ELIMINATED SWEAT OF THE BROW  must show some creativity to get © protection.
Feist asked all phone companies in area if they could use the listings in other phone books & enters into agreements w/all but
Rural. F used R’s listings w/o R’s consent (b/c they wouldn’t be able to publish the book w/o these listing)
Holding- Sweat of brow is no longer the rule NOW one has to establish an original work of authorship and a modicum of
creativity to get ©. This is not an original work of authorship because there was no creativity here in the compilation of the facts,
and no one can © facts. Eliminated sweat of the brow.
So, someone who scribbles for two seconds is protected, but the person who spent all this time putting together the white
pages does not have the same protectable right.
Just because copyright notice does not mean its copyrightable.
Case that followed Feist said not all directories are in the public domain, b/c many wanted to hang onto sweat of brow
concept. The case was directory of Chinese restaurants in NY and the list was only ones that the author deemed would still
be in business 5 years from date of publication. This was deemed to be enough mental thought. So, person who tried to
copy was deemed an infringer.
2) Ownership v Authorship
Creator/author has to get middle person to exploit the work and if you are dealing with someone, and they say they are the owner,
you need to see documentation, you are only owner automatically if also the author.
17 USC § 201
(a) basic and well established principles of © law

that the source of the © ownership is the author if the work and

in a case of joint work, the co-authors are likewise co-owners of the ©.
(b) Basic principle of present law

In the case of works for hire  the employer is considered the author of the work and is regarded as the initial owner of
the © unless otherwise agreed.
26
17 USC § 101
“Joint” defined  authors who collaborate with each other or prepare contribution with the knowledge and intention that it
would be merged with the contributions of other authors as “ inseparable or interdependent parts of a unitary whole” (to be
distinguished from “collective works” in which the work are separate and independent)
“Work made for hire”  1) work prepared by an employee within the scope of his or her employment or a 2) 1) work ordered
or commissioned for use as a contribution to a collective work, 2)as part of a motion picture or other audiovisual work, 3) as a
translation, 4) as a supplementary work, 5 )as a compilation , 6) instructional text, 7 ) a test, 8) answer material for a test or 9) an
atlas. ALL IF AGREED IN WRITING.
Joint authorship
When you have two or more people who come together with different elements to form a unitary whole. The law is specific about
when this occurs

Majority (Goldstein)

Intent: have to have intent to be co-authors, so best to have in writing

Copyrightable expression  each contribution must be copyrightable

POLICY  reduces suits for co-authorship

Minority (Nimmer)

Intent

Final Work is copyrightable
 POLICY  this allow middle man/$ man to be deemed joint author  So it is argued society is more
enriched by this arrangement.
 % test  court will look at the highest contribution and base issue of intent on whether they had it or not.
Erickson v Trinity
Woman started Theater Company and she claims she wrote three plays, when she was writing them, she had various interactions
with the actors and she would get suggestions. The theater company was claiming that they were joint authors, and you can not
infringe your own work, thus a case ensued.
Holding: Determines that the contributions were not independently copyrightable. Women not claiming intent and theater
company is but there is nothing in writing, which is NOT required. The courts have looked at this, and if the one who said no
intent contributed 80%, and the one who said was intent, 20%, court will believe 80%, but when it is 50%  it is harder.
Joint Works can help expand © protection  Old term for copyright  95 years, BUT new act for individuals, is life
plus 70, someone’s life is critical now. But if work made for hire, doesn’t deal with life. And in group works, the last to die,
is the measuring stick. (John went into it with Julian)

To be a work made for hire, must either be 1) employee within scope of employment OR 2) independent K,
signed agreement stating WMFH and MUST fit w/in 9 categories in § 101.
Community for Creative Non-Violence v Reid (1989)
Nonprofit organization gets artist to make life size nativity of homeless in WA.  was being given money for supplies but his
services were free.  added steel grate and pedestal.
Issue: who owns work?
Holding: Ct says that  was not an employee, CCNV argued  was an employee under CL agency law, but here there was not
enough actual control to make  an employee. “Employee” means wherein one party performs labor for another under
circumstances in which that other exerts substantial control over the work environment on the laborer, as well as the manner of
performance. Thus, product is not a WMFH because  is an independent contractor and since this sculpture doesn’t satisfy the
requirements of §101(2), this is not a WMFH, so  owns the ©. Also, CCNV tried to argue co-authorship but none here because
no intent by  to be co-authors and each part must be independently © able, which was not the case here (CCNV contributed the
base—Ct held this to be functional, not an original work of authorship).
After this case, the parties reached an agreement, and  was author, with limited rights to tour.
Transfer & Term of Ownership
27
See § 201(d)  If not an author, can get ownership thru written transfer and Not required to record ownership, but its better off
in case the author attempts to make subsequent transfers
Copyright in each separate contribution to a periodical or other collective work is distinct from copyright in the collective
work as a whole, and vests initially with the author of the contribution. ‘ 201©
NY Times v Tasini (2001)
Case concerns rights of freelance authors and a presumptive privilege of their publishers. Here articles written by independent
authors for NY Times were put into databases without authors’ consent, ONLY with the publisher’s. Allegations of ©
infringement because articles were included in databases that were not with in the privilege of reproduction and distribution
under §201©.
Issue: Whether placing existing articles in a database with out author’s consent BUT with the publisher’s consent constitutes
infringement under 201©?
Holding: There is separate © in Collective work/ SAC from the © of each individual article. Since the database is not
“reproducing” as part of original or revision, the publisher’s ©’s do not supersede the authors’ ©’s, and the authors win. The
authors’ works were not WMFH because the authors are not employees but freelancers and there is no agreement or intent to be
employees. Authors copyrighted their own articles and the Times copyrighted the compilation. Thus the Times has right to print
and distribute under 201©, but not to sublease w/out permission. NYT can only reproduce revision, not individual articles in their
individual capacities. Even though times sold all articles and individually articles comes up on database w/out context of original
newspaper, so newspaper would have had to include this in a K in order to sell.
Dissent: No reason collective works standing alone can not be viewed as revision and not be seen as © issue.
RECAPTURE  Termination of Grants/Licenses
Any grant/license that is gives a © can be terminated and you can get it back. This is even if you give an indefinite grant or a 100
year grant. A licensee can maintain right to sell or exploit what has been lawfully made, but author gets back right to give
permission for future reproductions, derivatives, etc.
Exclusive Rights  requirement that transfer be signed and in writing.
Non-Exclusive Rights  need not be in writing
General Problem  § 203 is based on the premise that the reversionary provisions of the present section on © renewal should
be eliminated, and should be substituted with a provision safeguarding authors due to the unequal bargaining position of authors,
because it is hard to know a work’s worth until it is exploited.
17 USC § 203 TERMINATION
(distinguishes between date termination is effective and date notice is served)
(a) Conditions for Termination  applies to any work that is 1) not a WMFH and 2) was created on or after 1/1/78
 (1) Termination may be executed by the author and if dead (see clause 2) and if multiple authors, a majority is required.
 (2) Lists who has right to terminate if author is dead.
 (3) Termination may be effected at any time during a FIVE YEAR period beginning for 1) NO PUBLICTION
RIGHTS  at the end of THIRTY FIVE years from the date of execution of the grant, or 2) PUBLICATIO
RIGHST  period begins at the end of THIRTY FIVE YEARS from the date of publication of the work under the
grant, or at the end of FORTY YEARS from the date of execution, whichever happens first.
 (4) termination needs advance notice in writing which should include 1) the effective date which should fall in five
year period, AND 2) the notice should be served not less than TWO or more than TEN years before that date chosen as
effective date AND 3) copy of notice shall be recorded in Copyright Office before the effective date of termination.

Summary Under § 203
Entered into on or after 1/1/78 WITH NO PUBLICATION RIGHTS
 window starts 35 years after the grant was given
 35 years after the grant the 5 year window opens up and you can terminate – want to select a date at the earliest point
possible in the window
 must give at least 2 years prior notice of the termination date
 cannot give notice more than 10 years prior to termination date
28

 but makes more sense to give minimum notice – so that the license holder has a small window to use their rights
Entered into on or after 1/1/78 WITH PUBLICATION RIGHTS
 Termination window opens the earlier of 35 years after publication OR 40 years after the grant
 Under § 203 – the earliest this window will open up is 2013
DERIVATIVE WORKS MAY CONTINUE AFTER TERMINATION ACCORDING TO INITIAL K, but NO NEW
DERIVATIVE MAY BE PREPARED. (see § 203 (b) (1))
Summery Under § 304  RECAPTURE
For all licenses and grants – based upon recapture date of when you have to extend copyright

The 19 year and 20 year extensions that were added to older copyrights after the 1976 act – are recapture opportunities
 19 year bonus is for any copyright that was valid on 1/1/78
 any copyright made after 1922 and before 1/1/78 – can fit into this category

At the end of the first 56 year period. 75 year period and 95 year period – the 5 year recapture window opens up
 you must do the same things as above – 2 years notice, etc. and you can recapture
 But if you don’t do this – the window opens up again 19 years later – and then again – 20 years after that – so the
recapture window opens –

So right now – any works from 1945 – you still have a window of opportunity –
 1945 + 56 years = 2001 – so the window opened in 2001 and closes in 2006  so as of 2004 – we can still give 2
years notice

For works created 1/1/78
 corporation: 75 years after publication
 individual : Life + 50 years after death

the important date is when the license was entered into –
 for § 203 – license/grant date determines the dates
 but for § 304 – it is when the recapture window opens up – based on when the copyright was entered into, so you look
for the earlier of the two
Abend rule
Applies ONLY when author dies within first 28 years OR prior to renewal file. IF renewal file before death, rule
does NOT apply. What if author dies during first 28 under the 56 year period under the 1909 law?
 any and all grants end automatically if person dies w/in first 28 years – and the license ends (like Rear Window, so can
buy rights from trustee if renewal did not occur)
 this is automatic the rights come back to the estate
 this is only for copyrights prior to 1/1/78 – under the 1909 act – only for works that were registered or published
under the old act
Summary of Terms and Concerns for Particular Types of Work
1.
2.
3.
4.
5.
more than one author  where two or more authors prepare a joint work, the © will last  life of last surviving plus 70
(see § 302 (b))
author unknown (any work including WMFH) or corporation  approximate author’s life and add 70 years (so either
95 from first publication or 120 from year of creation  whichever expires first) (see § 302(c))
how does one determine  should report whether author dead or alive because prospective user, after either 95 years from
publication or 120 years from creation, may obtain report and if nothing on life or death in last 70 years, presumption
created that author has been dead for at least 70 years and this is a good faith defense to infringement. (see § 302(e))
Works created before 1/1/78  1) © in their first term on 1/1/78  retains previous 28 year © term, and allows renewal
but extends renewal period to 67 years, effectively creating a total of 95 years from publication (§304 (a)) 2) for works
already in their renewal term  automatic extension of 95 from date © originally secured. (See § 304 (b)).
works not under statutory © before 1978 (unpublished)  enjoy same rights as if created after 1/1/78 and will not expire
before 2002, but if published will extend to 12/31/47. (see § 303)
1909
28 + 28 (requires refilling
appropriately) + 19 (automatic
1976
Life + 50 + 20 (individuals)
or 100 + 20 (corps, pseudonyms,
29
Boerne?
renewal of a valid copyright) +
20 (another automatic renewal)
anonymous)
3) RIGHTS and REMEDIES
Subject to the Limitations of ' 107 - ' 122, (including '109 first sale doctrine) the owner of a copyright has the exclusive rights
to do and to authorize any of the following:
1.
2.
3.
4.
5.
6.
THE BUNDLE OF RIGHTS( § 106)
Reproduction
Derivative Works  a work based upon a preexisting work such as a translation, musical arrangement, dramatization,
fictionalization, motion picture version, abridgement, condensation, or any other form in which a work may be recast,
transformed, or adapted
 In a derivative work, new material added may be © protected; the underlying work is still protected and cannot be
used.
 If there is a significant amount of original work, then it may be considered a separate work that is protectable. 
Transformative Reinterpretation: taking an original work, and changing it in a new way that no one else has done. To
be encouraged
Distribution
Public Performance
 excludes pictoral, graphic, structural, and architectural
 performance is public when:

at a place open to the public at a place where a substantial number of people outside of the

normal family and social acquaintances are gathered

If it is transmitted to the public through any device, regardless of whether the public receives it at the same or
different times and places.
Public Display
 In collective works, cannot show individual images non-sequentially
 Public is the same definition as under public performance
Digital audio transmission of (p) applies to sound recordings of record company for the actual fixation of music to a
tangible form.
 Given to the record company for the actual fixation of the music in record form. Need permission from the 8 owner.
 Has the right to reproduce, distribute, etc. but NOT public performance.
30
Copyright & Trademark

Kettle
Exception: if a web-site plays the music on the internet, they must pay royalties to the record company.
17 USC § 109  F.S.D. (First Sale Doctrine)  deals with distribution NOT public performance
Limitation on what © owner can do; no longer can the © owner control the sale of the item once is it initially sold. The right of
sale now goes to the person who bought it from the copyright owner.



This does not allow you to rent, lease or loan phonorecords (music industry lobbied Congress for this regulation), but can
rent and loan movies.
Can make an archival copy of computer software, for personal use, but can’t rent or lease software (same as phonorecords)
Generally allows you to make a copy for private home use, to distribute to a certain extent, but still no right to public
performance. (Example of radio...the station has to get a license from a rights society to play music on air).
 Derivative is defined broadly and FSD will not protect you from using bought work derivatively.
Mirage Editions v Albuquerque A.R.T (1988)
Mirage is copyright owners of prints and A.R.T commercially engaged in transferring prints from book onto ceramic tile.
Holding- Can not transfer copyrighted work onto other surfaces w/out authorization. (§106). §101 defines derivative work
broadly. Did it became original works of authorship? No, they were protected derivative works. FSD not work either. FSD allows
vendee to resell w/out permission. But can only resell it; not allowed to use it in creation of derivative work.
But Then. . .

Mounting Pictures on Tiles is NOT derivative according to 9th circuit, because didn’t do anything and is
comparable to reframing a picture.
Lee v A.R.T (1986)
Lee’s note cards mounted on tiles in bathroom.
Holding-7th Circuit found that these were NOT derivative works and disagreed with 9th Circuit in Mirage (not original works of
authorship). Not an art reproduction, works not recast, adapted or transformed. Also, note cards are not works of visual art under
§106A. (used switch pix frame analogy  if you can remount pictures in frames  you can do this, otherwise museums will be
accused on unauthorized derivative works)
 Video Exhibition in video store considered Public performance which is NOT a right given under the FSD.
Columbia v Redd Horne (1984)
Video rental store and the problem is not the rental but the issue of public performance. Rental store allows videos to be streamed
into booths and sells popcorn etc, so kind of like seeing movie in theater with close friends. Theater owners sued because they
pay a lot of money to have the licenses to play movies, and also rental store advertising as film watching with free refreshments,
not as rental joint.
Holding: Under point of sale, you can display what you are selling, but here they were allowing someone to pick a movie and go
into a private booth and this was public display according to the court. Court held, this was not ok and this is copyright
infringement, because the venue was deemed public. Everyone was liable.
Courts have deemed hotel rooms equivalent to the home, even though open to the public, so there is no problem w/public
performance when videos are shown in rooms. However, if they transmit it to your room, its another story
Under first sale doctrine  original loses rights to how distributed after bought, blockbuster doesn’t have special rights,
but now movie industry co own for most part and the rental stores pay more, so you can rent, sell, or give away what you
bought, with the exception of phone records and computer software.
Who collects for Public Performance? Royalties for © NOT (p) are collected by ACSAP, BMI and SESAC
Secondary Liability Issues
 Vicarious
1. Must show Control AND
2. direct financial $ Benefit AND
3. master/servant relationship
 Contributory
1. Must show Knowledge AND
2. Material Contribution  Provide Incentive Means (Labor Materials)
31
Copyright & Trademark
Kettle
 You can be liable for infringement even if you do NOT sell items yourself.
Fonovisa v. Cherry Auction (1996)
© and ™ enforcement action against flea market operators (not actual sellers, but owner of site who rent to vendors). Discussion
of the level of control that Δ had over the vendors actions, and that the Δ were benefiting from the rental of the space.
Holding: Δ did have knowledge that the vendors were selling bootleg items and thus flea market is vicariously liable.
Landlords are deemed not to have knowledge of what goes on but if they benefit other than mere payment of rent, they will
be deemed contributory infringer.
17 USC § 115  the rule for cover songs
Once a song comes out in phono record form any other group can come along as a cover as long as they notify the copyright the
owner. The statute requires monthly accounting based upon number of units and once a year CPA audit. The §115
(Mechanical Royalties/ license fees) are as follows, choose the greater of:
2000-2002
7.55¢ per unit or 1.45¢ per minute
2002-2004
8.0¢ per unit or 1.55¢ per min
2004-2006
8.5¢ per unit or 1.65¢ per min
2006-2008
9.1¢ per unit or 1.75¢ per min
Quick test—if the song is under 5 minutes, will use the first number, and if greater then must multiply the number of minutes
(rounded UP always) by the per minute royalty rate (Even if a song is 6 min 5 sec, would have to round it up to 7 min)
TYPES OF LICENSES and RIGHTS
Mechanical Licenses  The license granted to a record company by the music publisher/ copyright holder w/c allows the record
company to manufacture and distribute recordings containing a musical composition or compositions controlled by the publisher.
Compulsory Licenses  Same as mechanical license. Available to anyone who wants to cover and release record containing a
music work whether or not the copyright holder wants to grant it or not. Available once the copyright owner put out or let
someone put out a phonorecord.
Synch Rights  Rights to synch visual images w/ sound. Such synch requires that owner of musical composition grant user
synch license for w/c negotiated synch fee is paid. NEED TWO LICENSES, one from record company and one from music
publisher.
§116: Juke Boxes—There’s a license you get for (p) in a juke box; independent negotiate w/every songwriter in the box
§118: Public Broadcast
§119: subj. cable & satellite retransmissions of ©ed programming to statutory license in prescribed circumstances. §118 does
same for certain uses by public broadcasters.
§122: Limits on §119
Grand Rights  when music is used in play and ACSCAP, BMI, SESAC does NOT cover it.
Single receiver exception (§ 110) have to get a license to play music in a store unless you are playing back free radio or free TV.
Certain amount of speakers allowed for free recorded and if exceed not ok, they have recently increased the amount of speaker. 6
speakers max and 4 videos max. The other way is point of sale, if you are trying to demonstrate equipment or sell music.

Expansion of SRE for bars & restaurants
ASCAP, BMI, SESAC, (Society of European stage authors & composers) authorized by © act to collect license fees from
bars, school, where public performances of music are performed. Live/pre-recorded fees diff/costs more. ASCAP—
licenses host of event/venue—It has to be deemed public performance to qualify under ASCAP (family of social
acquaintances doesn’t qualify)—Note: Singer/songwriter gives non-exclusive right to license people who publicly
perform their songs.
32
Copyright & Trademark



Kettle
For Stores – Businesses that play music need license. If you are a store, Fair Use passes on the federal level to regulate
how people go in these hotels, Bars. They felt extorted. Store under 2000 square feet have a single receive exemption
like one found in one’s home. If the store has over 2000 square feet, it can have a total of 6 speakers but no more than
four speakers in any one room.
For Bars/Restaurants 3750 square feet up to 6 speakers no more than 4 monitors per room (fully operational sound +
video) . TV no more than maximum of 4 video devices e.g. monitor or projector no larger than 55 inch diagonal & no
more than 1 per room.
Clubs are granted licenses live v. prerecorded music, how often music played, and accommodation of the room. If
bars/restaurants feel the licenses fee is unreasonable, i.e. at McGovern’s fee is approx 1000 a year.
4) FAIR USE
Fair Use ' 107
Work must be used for criticism, comment, news reporting, teaching, scholarship, research, then look at the various factors:
(from Harper & Row Publishers)
1.
2.
3.
4.
Purpose/Character of the Use (profit vs. non-profit) Is It Transformative?
Nature of the =s work (fiction vs. fact)  taking of fact generally ok
Amount used (qualitative vs. quantitative)  did take the Aheart@ of =s work?
Effect on potential market value of =s work  Does =s work replace the need for =s work?
Unpublished status does not completely bar fair use defense, but weighs heavily against it.
Transformative Reinterpretation—allows people to transform © works; taking an existing work and giving it an entirely new
meaning for the benefit of society. Copyright owner can’t control this but has control over a derivative work. Not derivative work
because if meets FU prongs then transformative reinterpretation.
Versus
Derivative work-a copyrightable creation that is based on pre-existing product such as a translation, musical arrangement,
fictionalization, motion picture version, abridgment, or any other recast or adapted form and that only the holder of the copyright
of the original can produce or give permission to another to produce.

Just because something is “fact” does NOT mean ok to take, and also, just because something is published does
NOT mean it is NOT ok to take. The factors require a balancing.
Harper Row v Nation Enterprisers
Ford memoirs taken by the Nation, and time cancels K because they were going to be first to publish, so Ford sues Nation.
Holding: Not fair use. The nation 1) profited, 2) took fact, but doesn’t matter, because it was unpublished fact, which worked
against them, 3) court saw the amount as being qualitatively the heart of the work, and 4) this had direct negative effect on Ford’s
market and at this time, this prong considered to be most important.
First Serial Rights: exclusive right to license prepublication excerpts

Parody ok under fair use and can be considered social commentary, even if for profit and of commercial nature,
as long as transformative. PARODY MUST BE CLEAR AND REASONABLY PERCIEVED.
Campbell v Acuff Rose (1994)
Roy Orbinson assigned rights to Acuff -Rose. 2 live crew sought permission to use the songs and was denied. (This song would
come in under 1909 since written in 1964, and all songs 64 and after don’t have to be renewed b/c renewed automatically)  went
ahead anyway, and are using the defense of fair use.  Claming parody because commentary.
Holding: Fair Use, because even though for profit, but court says profit is not more dispositive, could argue took too much from
it, but unlikely to effect the market. Court remanded so could look at presumptively unfair for profit again, saying that it should
not be presumptively unfair. Parody is not listed in §107, but this could be categorized as a form of social criticism; satire would
be a type of social commentary. Ct says that copying isn’t excessive just b/c it’s aimed at heart of the work, and that no more
lyrics were taken then necessary (remand as to amt of music taken) Most important factor—does this parody replace the need
for the original?? Ct says no, and no effect on potential market, and no evidence of harm to rap market either. Transformative
reinterpretation—Ct says you have to look to see if the 2nd version was changed enough and whether it has given the work an
entirely new meaning
33
Copyright & Trademark
Kettle
SOL is three years—clock starts when infringement occurs, not when you find out about it (unless intentional
concealment)...when it is known or should’ve been known
Satire  uses work to comment on something else in society
Parody  making fun of original
Copyright can not say No if it’s a cover, so why could Acuff say no, because 2 live crew viewed as derivative, cover are
not considered derivatives
New Technologies

Unlicensed use is NOT infringement unless it conflicts with one of the exclusive rights and after this case taping
for later viewing is ok, TIMESHIFTING ok, but library not ok.
Sony Corporation of America v Universal City Studios (1984)
People were taping TV programs on Sony’s Betamax and watching them later. Some © holders said that they didn’t mind that
people were doing this, but Universal Studios and Walt Disney objected. Dist ct said no relief, 9th Cir. said contributory ©
infringement, Sup Ct reverses.
Issue- whether the sale of Betamax to public violates bundle of rights of © owner?
Holding- Selling copying equipment is allowed as long as there are good non-infringing uses of the product. Evidence
showed that there was no evidence of decreased TV viewing b/c of Betamax use, said that © owners had the burden of proving
that users of Betamax had infringed on their © and that Sony should be held responsible for the infringement’s says that Sony is
not in a position to control use of Betamax by customers. Found no precedent for imposing vicarious liability and no contributory
liability. Said that selling copying equipment is okay as long as there are good, non-infringing uses of the product. Ct came up
w/concept of “time-shifting”—this case doesn’t give the right to record for personal home use, but gives the right to record a
program for later home viewing (and the Ct assumes that the program will be erased after viewing).
NOTE: subscription TV does not fall under this rule.
What about sound recordings? If this said you have a right of private taping in your own home. This case did NOT
privilege recording of music off cds, tapes, etc. So Congress passed the Audio Home Recording Act, and this addressed
the issue of what you were allowed to do. If you buy a phonorecord you can buy your own as long as for your personal
private use. However, with analog things got crappy after awhile, and then Digital so digital ok for personal, but they
imposed a royalty on the equipment manufacturers and blank CDs, the fee they have to pay is split between the copyright
owner and the phonorecord.
Napster came along and they were not saved by these acts, because they were only for copying existing copy’s. Napster is
infringement, but who do you sue. They go after the source that provided the means for the infringement. There is a
concern that the ISP will all be contributory infringers for the unlawful activity BUT under Digital Millennium Copyright
Act (p. 732)  SAFE HARBOR, until there is identification, as long as they notify who has been identified as the source
of that conduct. Internet has substantial non-infringing purposes.
ALSO, if someone encodes their signal and scrambles something, and you try to override that, it’s a federal law violation.
THIS IS THE ANTI-CIRCUMVENTION LAW (p. 734), this is being argued against, because of book analogy. Also
able to mandate disclosure of names, but being argued for privacy concerns.
Are Computer Program/ software copyrightable?
If has copyrightable elements, yes. Code is literary work under §102. Source code preferred to be registered over object code.
Literal Components: These are copyrightable expressions- use for TX to register.



Source code- programmer instructions to computer
Object code- code that runs hardware 0’s/ 1’s
Microcode- built in instructions for micro processor
If video games have soundtrack, would not qualify for compulsory license, need to get synch license.
Non-literal (can be closer to idea than copyrightable expression)
Sequence, structure & organization of program including screen outputs- “look & feel”- need to get beyond look and feel and use
AFC analysis. “Abstraction Filtration Component”.
Abstraction Filtration Component 3 part test:
1.
Abstraction start with program that’s being infringed and break it down into a flow chart and filter out non-protectable and
2.
Filtration boil it down to the golden nugget and
3.
Comparison compare
34
Copyright & Trademark
Kettle
Computer Associates v. Altai
 created a code based off of  idea and tried to expunge all the similar material?
Issue- whether and to what extent the non-literal aspects of a computer program (those that are not written in code) are protected
by copyright?
Holding- Adopts a 3 step analysis to see if non-literal elements of a computer (those that aren’t in written code) are protected by
copyright. AFC Abstraction Filtration Component. (to separate idea form expression and see how much expression was
taken; method of getting rid of functional code and seeing if there is anything left that is a literary work, protectable by
copyright and then see if  has taken this part.)More abstract it is, less protectable. Literal code least abstract and protectable;
AFC is method of getting rid of functional code (ideas and concepts) is there anything else that is protectable and copyrightable?
s program was not substantially similar to portions of  program and also that  trade secret misappropriation claim was
preempted by fed copyright act.
Do you want AFC if representing copyright owner  -  would rather have judge or jury look at entire work because then look at
protectable and not protectable.
As a  you want AFC, because what might be left may be just a di minimis taking. Maybe just $200 judgment, and may assign ct
costs to 
Sega v Accolade (1992)
 makes cartridges, and they wanted to make for Sega, and Sega said you have to only make games for us then, so instead 
reversed engineered to find functional stuff so that could be SEGA compatible. However, in the process, the SEGA ™ came up
on screen or something like that. They had no license. (you can have an implied but not an implied exclusive). 1) © claim, and 2)
™ claim.
Issue: is it fair use to disassemble the code and even it is it unlawful to use the code now?
The word SEGA is not copyrightable, it is ™, the word itself. On the © level, there were four arguments made by the :
Holding: allowed them to make copies but SEGA keeps © in the code. The court sent it back to find out if they took more. The
court was just saying that the mere disassembly is ok. Those are not multiple infringements. What the court say about the
popping up of SEGA  they said that even if that is not a good thing, if that is the ONLY way to have the game be
compatible, then SEGA is at fault for using the code. People should be able to pull out free stuff and thus you should allow for
a disassembly of the mark, so whatever negative result comes from that is your fault.
If company has gone through extra efforts of putting in anti-circumvention measures – you are not allowed to break the
code or avoid the measures
Universal Studios v. Corley
Studios put in protective measures – to avoid copying of DVD’s .Δ cracked the DVD code – and then published it on a website
for everyone to see. π sues saying this is a copyright infringement
Holding: court granted an injunction – can anyone – go beyond the door to find the ideas and concepts now – clearly it was not
allowed here – b/c he distributed it – but if someone does it on his own is this ok?
DMCA – has exception in an educational setting – circumvention is allowed – as long as it is to achieve interoperability of a the
program –
In this country someone tried to wear the code on a t-shirt and give a lecture. He received a warning and lawyer told him not to
do it.
Has the law carved exceptions b/c aren’t ideas supposed to be in free flow? There is an exception for schools and libraries as
long as the circumvention is for the interoperability and only for evaluation purposes.
Now, industry is putting things in formats that will not play on the computer and unable to create MP3s. Not good.
The collecting Societies (reduce transaction costs)
1.
2.
3.
ASCAP  for non-dramatic small performance rights in member’s musical composition who wished to make a nondramatic performance for profit. (biggest license purchases of ACSAP is tv and radio stations, as well as restaurants,
night clubs and hotels) You get blanket license to perform its library and royalties are distributed to the association
members accordingly.
BMI  similar to ASCAP
SESAC  much smaller than the other two collecting societies
35
Copyright & Trademark
Kettle
Infringement Remedies & Claims (Intent NOT required):
Statutory Remedies for infringement (p.737)
17 USC § 502  You can enjoin infringing activity
17 USC § 503  impoundment
17 USC § 504  Damages (if in direct competition, usually measured by viewing  sale as displacing , but if not in direct
competition, then usually computed by using reasonable royalty (license fees) or MV)

(b)   loss;  profit or

(c)  Statutory (must have registered © to collect here and although you don’t have to establish profit or loss, you MUST
elect before the final judgment.
 Pre Berne (3/1/89) ordinary infringements you would be eligible between $100 to $ 10,000 and up to $
50,000 if willful.
 After Berne  12/9/99  numbers were doubled, and
 Then under Clinton (in light if internet)  minimum remains at $200, ordinary  anything from $750 to
$30,000 and willful up to $150,000.
17 USC § 505  esquire fees (usually require bad faith
17 USC § 506 criminal sanctions

Don’t continue to do badness after an injunction, because with bad faith you will not only be liable for
apportionment or losses BUT you will have to give ALL Profits. Furthermore, speculation on the part of the
court is ok if needed to establish  loss.
Stevens Lines v Mastercraft (1981)
 had a fabric,  copied it and then sold to  competitors.  got the injunction, and  is seeking loss of sales and  profits. DC
only gave them injunction, because proffer of loss of profits was not enough, and  claimed that they lost money. Circuit court
however thought there was enough information to show some loss sales.
Holding: Damages with require a bit of speculation to determine does not mean they are not rewardable. §504 allow an award in
an infringement action of the copyright owner’s actual damages which amount to lost sales. In establishing lost sales because of
infringement, a court must speculate. Here,  showed 2 substantial measures of lost sales: evidence of lost sales & customers
switch. Furthermore, the  continued to sell after enjoined and they got caught and at the appeal there is evidence of violating the
injunction. This increased the damages, and now not only are you apportioning expenses, you need to now give 100% of gross
profits.

Don’t need to copy all of song to be an infringer. Indirect profits are also allowed especially when infringer has
no profits of its own.
Cream v Jos Schlitz Brewing (1985)
Shaft song used in Schlitz Beer Company. They used 15% of the song, and they had originally sought permission, and Cream
said $100,000. (Why didn’t they go to ASCAP/BMI  because they can only give small rights, this is actually using it in
connection with visuals, so you need sync rights). They didn’t pay $100,000 and went along with it anyway. No fair use claim
because not social commentary or what not, so they are an infringer.
Holding: It doesn’t’ matter whether you took 15% or 100% it is still infringement of the entire work. ---court awarded market
value of the work. In calculating’s loss could argue lost opportunity to license someone else although this is somewhat
speculative e.g. loss volume seller. Here,  loss the licensing of the music = synch licensing © and (p).
Establishing Infringement, (see 17 USCA § 501)
KNOW what part of the bundle your client has but assume all and establish:
1.
2.
3.
4.
ownership
substantial similarity between clients and defendants work (if no access must be overwhelming, usually similarity
alone is NOT enough) (standard gauged by what lay person would think).
that defendant had access (otherwise could have been independently created  if works are strikingly similar, may be
able to infer)
Unauthorized copying or use of copyright was actual protectable expression.
REMEMBER, intent is NOT required, thus INFRINGEMENT IS Strict Liability
36
Copyright & Trademark
Kettle
LITERATURE
 SCENES A FAIRE  stock characters and plots are NOT protectable.
Nichols v Universal Pictures Corp (1930)
There was a play, Abbies Irish Rose, (protected under PA) and then  produced a motion picture (PA), The Cohen’s and the
Kelly’s. Play people not happy. Ownership, similarity and access established.
Issue: Is the similarity between the two the result of general fair scenes?
Holding: Yes, so therefore, there was not infringement of the underlying work. Scenes a Faire is not fair use defense, this is a fair
taking, because you are free to take that which is not protectable expression. For a character to be protectable s/he must have
defined and well fleshed out character. The way you arrange the scenes. Character must be story being told to be copyrightable
(no mere chessman). Fair Science (things for the taking like war stories)
MUSIC

NEED BOTH ACCESS AND SUBSTANTIAL SIMILARITY, unless similarity is striking and even then, it
depends.
Selle v Gibb (1984)
 claims that , Bee Gees infringed “how deep is your love”.  brought in musicologist who claimed similarity.
Issue: whether infringement can be found when there is substantial similarity BUT no access
Holding: No, you need access and if you don’t have substantial similarity and access, you don’t get to the last prong,
unauthorized use of copying of expression. This is called a nuisance suit. Bee Gees were not found to have access. Need striking
similarity to even begin to infer access and similarity is gauged by lay person standard, although expert can be used to show
musical composition components.
EVEN IF YOU WROTE LYRICS to © song, you will lose lyrical protection  George Harrison claimed subconscious
copying BUT strict liability. My Sweet Lord was a derivative, but GH can’t get copyright ownership because it was an
unauthorized derivative.
VISUAL ARTS

Expressions of Idea are protectable even if idea is NOT, and even if not exact copy, infringement will be found if
normal lay person would find similarities.
Steinberg v Columbia Pictures Industries (1987)
The cover artist for a New Yorker issue claims that the makers of Moscow on the Hudson copied his cover.
Holding: A visual image that would be recognized by the average person as having been appropriated from a copyright work
infringes on that copyright. Ct said  need to prove copying. Ct applied 4 factor test. Standard for determining whether a copying
occurred is whether there is a substantial similarity between works. Test is whether such similarity exists is whether an average
lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. Here, the map of NY was
similar. Not copyrighting idea, but expression, because the vantage point of copied work was a fictionalized one .
 You can infringe your own work IF you assign the rights away.
Gross v Seligman (1914)
Guy assigns rights (so NOT work for hire) and is suing original artist for infringement because he created a new photo added a
cherry stem and a smile.
Holding: This was not enough to be a new work, it was considered a derivative and since author assigned rights, he no longer has
ability to make derivative and thus, can not duplicate original.
Moral Rights and VARA
Visual Art Right Act (106(a))
This was required for the Berne Convention since in other countries; there are moral rights which include:
1.
2.
Paternity/Attribution (author name added or removed)  right to have ones name recognized and
Integrity (right to prevent destruction)
37
Copyright & Trademark
Kettle
3.
4.
right to withdraw or disavow
right of disclosure
1.
2.
3.
4.
5.
And VARA, which protects from mutilation and distortion and ONLY applies to
Works of fine arts
that have fewer than 200 copies and
those copies have to be consecutively numbered and signed and
This right is for life of author plus 70 years and
The art has to be something that brought about public notice.
Movie industry lobbied not to have films that there could not be these provision which prohibited cutting up films ect,
stating that between VARA and 43(a) already gave these rights.
The major VARA case involved removing art from the walls of the Hemsley building. Lower court found for artist, but on
appeal, found out was work made for hire. Also kid with dorm room ceiling was renowned enough for VARA.
Film Preservation Act: for films  originals can’t be touched since preserved—part of Congress requirement when films
were taken out of VARA. Movie industry lobbied to have removed b/c not visual art.

THIS CASE shows that TM false affiliation claim encompasses some of the moral rights given under © and can
help works that are not considered fine art. 43 (a) secure right against distortion.
Gilliam v ABC (1976)
BBC licensed to ABC some of the Monty Python sketch comedies, and ABC edited them. Here, the authors in their license to
BBC retained rights so BBC gave away more than they had to give.  brought 43(a) as well, could not bring VARA.
Holding: unauthorized editing of a television program for broadcasting constitutes copyright infringement. You can use 43a of
the Lanham Act to claim false affiliation or false representation and here this was changed so much that it did not represent
Monty pythons work and was a falsehood.
Sometimes an item may not be copyrightable, but the art work that accompanies it is copyrightable
Droit Moral- French version of the moral rights like VARA, gives the artist moral rights to prevent the work from being
destroyed.
Droit de Suite- “right to follow”- when a work is resold, the artist gets a royalty for the life of the painting, not in fed
copyright law but in some states like CA.
PREMPTION OF STATE LAW (793-802)
§ 301 Preemption (Interfere w/objectives/purposes)
Extra State Law element? (Does it require an additional hurdle to survive challenge? May survive since adds an additional
element beyond what’s required by fed.
Fed. law preempts state law if: comes w/in subj. matter of ©, if right fixed in tangible medium of expression & right in ? is =to
any exclusive right w/in scope of ©§106.
Not Preempted
Right to Publicity (State)  (unless expressive subject matter e.g. voice & singing style ex: 3 strikes you’re out song (p. 801) Not
equivalent provision § 15.2.1
Privacy rights not a part of copyright act—due to extra element i.e. showing you’ve been defamed; © doesn’t deal w/this.
Contract rights are not preempted (State Rights containing no “extra element”)-state requires additional element showing
wrongdoing--SOME state law anti-competition claims are NOT preempted  Ex: cases involving false labeling, fraudulent
representation, & passing off even where subject matter involved comes w/in scope of © § not intended to be preempted since
element of consumer confusion represents extra element that distinguishes from rights granted under §106 of ’76 Act.
Misappropriation of ideas (state law) – IS preempted in §102(b) if comes w/in scope of©—AV; architectural etc. but no
preemption of state law protection of facts e.g. hot news & uncopyrightable data compiled in computer databases (p. 799) (note:
there’s a split in the circuits)—5th cir---broader---
38
Copyright & Trademark
Kettle
Trade Secrets are NOT preempted (where it includes elements such as invasion of personal rights or breach of trust or
confidentiality that are different in kind from © infringement

Right of Follow – (European laws) author of work that is sold gets a percentage of all subsequent resales- not
preempted
 States can permit bower rights and not are preempted
39
Copyright & Trademark
Kettle
PATENT LAW
Background – Over 6,000,000 patents issued by U.S. PTO; Have assembled over 30,000,000 documents related to those patents;
428 classes of technical art  broken down into 127,000 subclasses;
Requirements for getting a patent: invention has to be novel, (35 USC § 102) useful (35 USC § 101) and non-obvious (35
USC § 103)
Types of patents:
1.
2.
3.
Utility – § 154  complex applications (any new/useful improvement)
Plant (asexual plants that grow in the ground) – § 161
Design – § 171  simple and basic application process (design of Listerine bottle)
In most countries the first to file an application for an invention will be the one who gets the patent, BUT in the US – we
will grant the patent to the first to CONCEIVE of the patent – as long as they use due diligence from conception to application.
This protects the little guy – over the one who has the resources to obtain the patent first
Duration of Patents
Utility and Plant Patents:
 Prior to 6/8/1995 – Duration of patents were 17 years from the grant of the patent
 Post 6/8/1995 – it allows 20 years from Application/Filing
This change was to prevent patents from surfacing years after application – when the product was in full use: term of art:
submarine patents
Design Patents  14 years from the grant of the patent
Rights that come with a patent:
You can control who can:
 Make
 Use
 Sell
Can’t even gear up for the day the patent ends – make parts but not put it together
Different rules with drugs – different laws governing drugs
But you have to publicly disclose in the application how to make and use the invention – This is the trade off
Must pay maintenance fees – to keep patent
1.
2.
3.
4.
Process for getting a Patent
In order to get patent – subject matter must be novel, non-obvious and useful
We will not grant a patent if the invention has been anticipated – by prior teaching/art  This includes prior art anywhere
in the world
You have to conduct a search throughout the world to see if this invention is already in existence – if it is patented
anywhere in the world
Is there a printed publication that teaches how to make this invention – must be written down  But if it is just used in
another country and not written down or patented – then you are ok  But if it is just used in the US – then you are barred
 These will bar the patent from issuing – b/c these are priors
After you conceive an invention  there are a set of statutory bars – that you must get past
12 Month clock – if inventor has made public use of invention or offered it to sale – more than 12 months prior to filing of the
application – then cannot get the patent – they are statutorily barred.
 Must file application or provisional application w/in the first 12 months – or else statutorily barred
 BUT if use is purely for R&D it will not start the clock  kept private - must use it in a trade secret sense –
this is key to showing R&D – confidentiality is key here
 clock can start from someone else’s activity – if you are the senior inventor – but a junior inventor makes
public use of the same invention – this will start the 12 month clock
40
Copyright & Trademark
Kettle
Every application that is filed – will be made public in 18 months – unless you are only going to seek a US patent
Once patent is granted – it is published  but if not granted – can only remain a trade secret if you opt out of the application
being published
35 USC § 111 Application
1. specifications = must teach a person skilled in the art how to make/use it
2. claim = must uniquely point out and claim the invention
 abstract, drawings, background, summary of invention, brief description of drawings, detailed description
of invention, claim section – must show novelty and non-obvious here
Life is only patentable if it is human made – but for HUMAN HANDS TEST – but for human hands this would not exist
Diamond v. Chakrabarty (Supreme Court)
Goes to issue as to whether something that is living is patentable. This was a micro-organism that was created to eat up oil spills
Held: Court ruled that it was novel and non-obvious – and was different enough from anything found in nature
State Street Bank v. Signature Financial
Deals with software and use of algorithms –
Courts have allowed for business method patents.
Issue of obvious vs. non-obvious
Non-obviousness is the #1 defense raised by alleged patent
1.
2.
3.
4.
1.
2.
3.
4.
5.
6.
7.
John Deere Test:
State of the Art at time of Invention – would something be obvious to an ordinary person skilled in the art – trying to
invalidate a patent by saying that the invention was obvious – but this is a very subjective test, so it is difficult to apply
Scope and content of prior art  What already existed before this change took placed
Difference between prior act and claims  What is the difference between the prior things and what was newly invented
Level of ordinary skill in prior art  Would an ordinary person skilled in this have though of this
Due to difficulty court has developed some  Secondary considerations:
Commercial success (not from advertising)  How commercially successful is the new invention – if sold a lot of units
people must think it is a good invention
Commercial acquiescence  Did others not try to make it, b/c they thought it was a valid patent – did the commercial world
think of this as non-obvious
Commercial licensing  If others got a license for this – then they must have thought it was a good patent
Expert acknowledgements  Have experts testify to its non-obviousness
Failure of others to invent
Long felt need  Was it needed in the industry
Invention by others at same time
1.
2.
3.
4.
Infringement:
Literal – “read on”  If you were to compare the claims in the senior inventors application with the junior’s and they
read the same – then this can be an infringement – look at the “I claim” section of the applications
 Must look at scope of the claim
 Judge determines this
 Jury determines if there is infringement
Non-literal  Developed b/c people were word-smithing – so that if you compared the two applications – they
wouldn’t read on
D/O/E – Doctrine of Equivalents  Does same thing/same manner/same results  Doesn’t matter what type of words
you use – as long as these elements are met
§ 271 – Direct/Contributory Infringement  contributory requires
 knowledge
 provide means and support to infringe
Infringement cases are either bifurcated or trifurcated
o Bifurcate:
 Split out the infringement and
 the violation
41
Copyright & Trademark
Kettle
o Trifurcation in patent cases:
 Is there a valid patent
 Is there infringement
 What are the damages
Repair v. Reconstruction
If your repair of a patented invention goes too far – then it might be considered a reconstruction
Reconstruction is considered a violation of patent law –Reconstruction is deemed a make – and therefore a violation  Depends
on invention and how much you do to it
1.
2.
3.
4.
Remedies
§ 283 – injunction
§ 284 – damages π damages up to 3x actual π lost sales (but in no case, no less than reasonable royalty for Δ’s use)  if it
is a design patent – then you can get Δ’s profits – w/ apportionment
§ 285 – Atty’s fees  generally only awarded in exceptional cases  willful infringement; bad faith; violation of court
ordered injunction
§ 286 – 6 year back rule  when calculating damages – can only go back 6 years worth of profits lost. This serves as
statute of limitations – can only go back 6 years from date of filing of suit. This is to avoid problems of laches and
acquiescence and also requires due diligence on the part of a patent holder
PCT – patent cooperation treaty – if you want to seek foreign protection
42