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PATENTS
Federal Law
Give owner the right to exclude others from making, using, and selling the claimed invention.
Term of 20 years from date of filing
Patentability:
Is it PATENTABLE SUBJECT MATTER?
o Process (business method), Product (Machine or composition of matter), or Improvement
o No physical phenomena, laws of nature, abstract idea
UTILITY
o Operability Does it work?
o Substantiality Is it useful enough? Must be developed to the point where the public derives a benefit. No
reward for the search
NOVELTY Is it new and different from prior art?
o Is it already anticipated? Has somebody, known, disclosed, or claimed invention prior to filing (each limitation
must be contained in a SINGLE REFERENCE and show how theyre arranged)
STATUTORY BARS (subject to one year grace period prior to filing)
o Printed Publication Bar (Popular mechanics)
Printed publication
Publicly accessible by PHOSITA
o Length of time of display
o Expertise of target audience (in the art?)
o Expectation of non-copying (protective measures)
o Ease of copying
Purely ORAL presentation not enough
o Public Use Bar If you disclose to one person, must take steps to ensure confidentiality or could lose protection
(bra case). Is it public or experimental use?
Experimental
# of prototypes and duration (more is less experimental)
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Progress reports/records
Compensation
Secrecy (confidentiality)
Control over testing
DOES NOT INCLUDE MARKET TESTING!
o On-Sale Bar must be ready for patenting (Actually RTP or specifically enabled) and subject to a commercial
offer for sale (K)
o Otherwise available before filing date (dont know what this means so not on exam)
NON-OBVIOUS would PHOSITA recognize claimed invention as obvious from prior art at time of filing? Evidence of
prior art teaching away from new invention strong argument for non-obvious. TSM test (teaching, suggestion,
motivation) shows obvious if PHOSITA could combine multiple known references to achieve result. PHOSITA also has
ordinary creativity in the field, not an automatron
o Graham Test 3 factors (internal)
Scope and content of prior art
Difference between current claim and prior art
Level of skill in art
o External factors:
Commercial success if highly successful, probably not obvious
Long-felt need longer need, non-obvious
Failure of others where others fail, non-obvious
Widespread licensing many licenses, non-obvious
Unexpected results non-obvious
Professional approval non-obvious
ADEQUATELY DISCLOSED
o Are all claims sufficiently enabled?
o Does written description prove that applicant actually owned the invention at time of filing?

Patent Infringement:
DIRECT INFRINGEMENT
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o Literal infringing device possesses each and every limitation in a patent clalim
o DOE (doctrine of equivalents) infringing device possesses an equivalent of existing patent
An equivalent is a device that does substantially 1) the same work, 2) in the same way, 3) to achieve the
same result
Barred by Prosecution History Estoppel (PHE). Difference between original broad claim and amended
narrow claim not included in patent and not an equivalent.
PHE does not apply if
o equivalent was unforeseeable
o amendment only tangentially related to equivalent
o any other reason patent holder missed claiming equivalent
Barred by Public Dedication rule if included in specification but not specifically claimed, dedicated to
public and free to use.
INDIRECT INFRINGEMENT (also secondary infringement)
o Must first have an act of direct infringement
o Contributory Infringement selling a component of a patented invention
Knowledge requirement
Not liable if there is substantial non-infringing purpose?
o Active Inducement Directly facilitating infringement
Requires intent beyond mere knowledge
Actual infringement occurs

Defenses to Infringement:
NON-INFRINGEMENT
INVALIDITY
PATENT EXHAUSTION (First Sale)
o Repair/Reconstruction doctrine
You can repair a product to extend its life but cannot reconstruct an essentially new product (replacing
the spark plug in a car vs. replacing the entire car and keeping the old spark plug)
PATENT MISUSE
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o Field of use restrictions allowed if Kd at time of purchase (single-use soybean)
o Tying not allowed (to buy patented salt machine, must also buy unpatented salt tablets; also camera & strap).
Tying restriction will not be misuse if patentee lacks market power.
o Royalty payments beyond life of patent not allowed
o If misuse a patent, lose rights to exclude others! So if force customers to buy unpatented camera strap (misuse)
then lose patent for full camera
ANTITRUST
INEQUITABLE CONDUCT owe duty of candor to PTO when filing for patent. If lie, invalid

COPYRIGHTS:
Federal statutory law (Copyright Act of 1976)
Life of author + 70 years
Owners of a copyright enjoys several exclusive rights including:
o the right to make copies of the copyrighted work,
o to prepare derivative works,
o to distribute copies of the copyrighted work, and
o to perform and display the copyrighted work publicly.
Does not require filing. Originates as soon as pen leaves the paper
Copyrightability:
Must be original, and fixed in a tangible medium.
Facts and Ideas cannot be copyrighted, only the expression of ideas is copyrightable
Non-discrimination Principle
o Copyright protection does not depend on relative artistic value of a work
o Policy is do NOT want judges saying what is or isnt art.
ORIGINAL
o Independent creation authors own work
o Minimally creative low threshold. Only a modicum of creativity is required, cant be mechanical or routine.
Must have at least a minimal variation from original. 3D modeling not creative if exact copy
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o Compilations of facts can be copyrighted. Original if any of these apply
Facts selected in a creative way
Facts arranged in a creative way
Facts coordinated in a creative way
Top 10 lists okay
Feist alphabetical order in phonebook not enough
o Sweat of the Brow doctrine Argues that spending time and energy justifies copyright protection
REJECTED in Feist. Hard work DOES NOT equal original. Want to encourage progress, not
necessarily effort
FIXED
o Physical stability fixed in an unchanging medium (book)
o Temporal stability static over time. A movie plays the video and audio in the same sequence every time.
o Must be fixed in a concrete object that can be perceived (by the eye or by computer, i.e. for software
copyrights)
o Live concerts and stand-up comedy NOT fixed. Live broadcasts while simultaneously being recorded ARE
fixed (Superbowl).
o When work is fixed it becomes a copy
o Sound recordings when fixed become phonorecords
This distinction is important because music composers get a copyright in the copy (sheet music),
while the record producer gets the copyright in the phonorecord (sound recording)
IDEA/EXPRESSION DICHOTOMY
o Ideas and facts are not copyrightable, only the expression.
Facts are not creative and exist in nature
Expression is authors creative output and requires incentives to produce
o Words and short phrases not copyrightable. Lack minimum creativity
o Blank forms not copyrightable no protection for works designed to receive information rather than convey it.
PGS WORKS (Pictorial, Graphic, or Sculptural)
o Two Questions:
Is it a PGS work? (apply elements of copyrightability)
Is it a useful article?
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If yes, do separability analysis
If no, copyrightable
o Protectable as to aesthetic form, but not for utilitarian aspects. Useful article has an intrinsic utilitarian
function beyond its appearance
o Must be able to separate artistic element from useful element:
Physical separability
Conceptual separability
Look at design process
o In ribbon rack case, bumps were added to accommodate more bikes. Therefore,
artistic elements were intertwined with utilitarian elements and cannot be separated.
No copyright
o In Darth Vader pez dispenser: Vader head not required for dispensing pez.
Therefore, physically and conceptually separable and copyright in Vader
DERIVATIVE WORKS
o Work that is derived from an original copyrighted work (Is there sufficient nontrivial expressive variations?) ex.
Dorothy plate not distinguishable enough
o Scope of copyright in derivative defined by the expressive elements the author added to the original work
o Right to make derivatives included in original copyright
If subsequent author receives permission from original author to create derivative, does not need
permission to obtain copyright in derivative.
Unauthorized derivatives result in copyright black hole. Neither original or derivative author gets
ownership
o Derivative Copyrights v. Modification Patents
Must have authorization to make derivative of copyrighted work
Can independently obtain patent for modification on existing invention
FORMALITIES prior to 1976
o Notice copyright symbol, author, date
o Registration not required today for protection but necessary before filing suit. Also, provides increased
remedies if you do register before any infringement
o Deposit Within 3 months of publication, deposit 2 copies to copyright office
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o Publication If publish before register, lose protection (no longer rule). Ex. MLK speech ruled NOT
publication ([R]elease to the news media for contemporary coverage of a newsworthy event is only a limited
publication.)
JOINT WORKS
o Co-ownership. Authors must clearly intend to combine work into an inseparable whole.
o Superintendence of the work (creative authority) must satisfy to be considered author
o Both authors can exploit the work but must share profits
WORKS MADE FOR HIRE (duration of protection is different)
o Employer considered author and copyright owner of employees work within scope of employment (unless agree
otherwise in a signed, written agreement).
o Independent Contractor with commission for work (must be pursuant to express written agreement work made
for hire). Categories: 1) contribution to a collective work, 2) as a part of a motion picture or other audiovisual
work, 3) as a translation, 4) as a supplementary work, 5) as a compilation, 6) as an instructional text, 7) as a test,
8) as answer material for a test, 9) or as an atlas.
o Is creator an employee or IC? If no contract
Right to control
Actual control
Common law agency
Formal, salaried employee
Agency test (first two most important)
Right to control
Actual control over manner in which work is performed
Skill required lots of skill (IC)
Source of instrumentalities use own tools (IC)
Location on-site of employer (employee)
Duration of project longer (employee)
Assign addtl projects yes (employee)
Discretion over work hours yes (IC)
Payment salary (employee)
Hire assistants yes (IC)
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Regular business of hiring party yes (employee)
Benefits yes (employee) *Dispositive
Tax treatment tax deducted from pay (employee)
COLLECTIVE WORKS
o Component authors retain ownership of their contributions and collection author retains ownership of the whole.
Infringement:
DIRECT INFRINGEMENT did you 1) actually copy, and 2) was it improper?
o Copying-in-fact
Direct Copying show infringer actually copied
By Inference show both access and probative similarity (these can be balanced against each other, i.e.
substantial similarity tends to prove access, less similarity needed when widespread dissemination)
Access shown by
o Chain of events (Original author is former colleague)
o Widespread dissemination
Probative similarity objective, extrinsic criteria for determining proximity between original
and infringing work
o Improper Copying (Misappropriation)
Did copy too much?
Standard: Would an average, lay person recognize the copy as having been appropriated from the
original?
When both works contain significant public domain material, discerning observer test (same total
concept and feel from perspective of a sophisticated viewer)
Direct Infringement [Under the Ninth Circuit Approach]:
o Ownership of valid copyright, and
o Copying-in-Fact, and
Direct Copying, or
Indirect Copying
Access, and
Substantial similarity (probative similarity)
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o Misappropriation (substantial similarity)
Extrinsic Analysis (dissection)
Legal test that the court decides; its an objectivestandard from the viewpoint of a reasonable
person.
o As a matter of law, are these two things similar
o In a book, concerns: plot, characters, themes, setting, dialogue, sequence of events
o In a song, look at: tempo, key, duration, genre, lyrics, melody
Intrinsic Analysis (no dissection of the elements)
Overall concept and feel; this is a factual determination that goes to the jury. It is a
subjectivedetermination.
o With the overall feel, youre not allowed to dissect the overall parts.
Infringing through public display or performance
o Display - pictures nonsequentially
o Perform - play, dance, act, show movie in entirety
o PUBLIC two ways to define public
Geographic location
Number and relationship of viewers
INDIRECT INFRINGEMENT
o Contributory Infringement
Knowledge of others infringing activity
Either induce or materially contribute:
Induce - Actively induce, or create device to induce
o Device: Ask whether the device is capable of substantial non-infringing use
o Substantial Non-infringing Use:
Time Shifting: time shifting is, for example, recording a video to play later.
SCOTUS has said this is not infringement.
Space Shifting: What about space shifting, for example, iPods and loading
Mp3s onto them? SCOTUS has not deiced this yet, but everyone assumes
its ok.
Materially contribute to the infringing conduct.
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o Vicarious Infringement
The right and ability to supervise infringing activity
By Contract
Agency principles
Evidence of actual control
A financial interest in the infringement. (if infringing activity is a draw for customers)
Defenses to Infringement
Authorization from copyright owner
First Sale applies only to that specific copy (a CD); doesnt apply to digital music files
FAIR USE - for purposes such as criticism, comment, news reporting, teaching (including multiple copies for
classroom use), scholarship, or research
o Factors: (Supporting fair use (+), Against (-))
Purpose and character of copy
Commercial weighs against fair use (-)
Transformative *BIG FACTOR
o Design does it change the product (+)
o Purpose different use than original (+) ex. sculpture used as coat rack; PARODY
Nature of original
Highly Factual (+) or Creative (-)
Published (+), or Unpublished (-), or published long ago but no longer (market failure) (+)
*BIG FACTOR
Amount and Substantiality copied
Did copy a lot of the original? (-)
Did copy the heart of the original (-) or the boring stuff (+)
Effect on market for original (traditional, reasonable or likely to be developed markets, NOT
transformative markets)
Suppress demand (+) ex. criticism of a work
Usurp demand (-)
TRADEMARKS:
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any word, name, symbol, or device used by a party to indicate the source of its goods and to identify and distinguish
those goods from others.
State and Federal Statutory Law (Lanham Act)
For validity, must be used and capable of identifying the source
Distinctiveness ability to identify the source
o (weak) Generic, Descriptive, Suggestive, Arbitrary, Fanciful (strong)
o Last three are inherently distinctive, descriptive can become distinctive by acquiring secondary meaning, and
generic receives no protection
Generic Bread; type of good
Descriptive Hamburger Grill; describes a quality of the good, no protection unless secondary
meaning (Zatarains)
Suggestive Coppertone; requires some imagination, suggests lotion will help you tan and get a
copper tone of skin
Arbitrary Apple; unrelated to underlying good, computer and technology products
Fanciful Kodak, EXXON; made up word
o Descriptive or Suggestive
Dictionary test
Imagination test
Necessary to describe competitors goods?
o Proving secondary meaning
Direct evidence
Consumer testimony
Survey evidence
Circumstantial evidence most frequently used
Amount and manner of advertising,
Consumer studies,
Direct consumer testimony,
Sales success,
Unsolicited media coverage,
Established place in the market,
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Intentional copying, and
The length and exclusivity of use.
Trade Dress a products design
o Is it inherently distinctive?
Is design a common shape or design? (common is not distinctive)
Is design unusual or unique in the field? (unique is distinctive)
Is design a mere refinement of a common form or ornamentation for a particular class of goods? (if no,
not distinctive)
o If not inherently distinctive, can acquire through secondary meaning
o Functional designs are not protected
The existence of a utility patent disclosing the utilitarian advantages of the design (functional)
Advertising materials in which the originator of the design touts the designs utilitarian advantages
(functional)
Availability to competitors of functionally equivalent designs (more equivalents, less functional)
Design results in a comparatively simple or cheap method of manufacturing the product. (functional)
Senior User first to use a mark in a market
Junior User next to use a mark in the seniors market
Geographic Extent of Rights
o An unregistered users rights are limited to the geographic area within which it has used the mark and sometimes
a natural area for expansion of that use
o Unregistered users in different geographic area generally have their own rights in their own areas, regardless of
whose use came first.
o When unregistered users geographic areas overlap, senior user has exclusive rights
o In determining whether a first user achieved the necessary market penetration, courts apply the factors identified
in the often-cited Sweetarts cases:
The first user's dollar value of sales at the time the later user entered the market,
# of customers compared to the population of the state,
Relative and potential growth of sales, and
Length of time since significant sales. The market penetration need not be large to entitle the 1st user to
protection, it must be significant enough to pose a real likelihood of confusion among the consumers in
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that area. Where the first user's activities in a remote area are so small, sporadic, and inconsequential
that its market penetration is de minimis, the first user is not entitled to protection against a later user's
good faith adoption of the mark in that area.

Infringement:
Likelihood of Confusion
o When products are different but related, courts look at:
the strength of his mark,
Distinctiveness More distinctive, more likely confusing
Market strength/fame more famous, more confusing
the degree of similarity between the two marks,
Sight How they look?
Sound
Meaning
the proximity of the products,
More related, more confusing
Ex. camera and camera strap, bbq restaurant and bbq sauce
o These first 3 are most important and often outcome determinative.
o Other factors:
the likelihood that the prior owner will bridge the gap, (make those products)
actual confusion,
and the reciprocal of defendants good faith in adopting its own mark,
the quality of defendants product,
and the sophistication of the consumer
More sophisticated, less confusion
Product buyer at major construction company might know difference between barcroft and
briorcroft
If good is inexpensive and impulse buy (more likely confusion. Ex. Doritos vs. Dostitos
chips)