COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 3 objectives under IP law:................................................................................................................5 Constitutional Origins of IP Law..........................................

...........................................................5 I. State/ Common Law Intellectual Property...................................................................................5 1) Rights in Undeveloped Ideas...................................................................................................5 Elements of Misappropriation..........................................................................................................5 Idea Submission (the 4 general scenarios........................................................................................5 2) Protection of Ideas.......................................................................................................................5 Theories of Recovery (levels of proof vary depending of theory of recovery.............................5 Contract Theories.........................................................................................................................6 Other Theories.............................................................................................................................6 Courts vary by j............................................................................................................................6 An Idea must be NOVEL and CONCRETE especially w/o an express K..................................6 RULE: K claim generally requires less novelty and originality than CL Misappropriation claim.............................................................................................................................................6 3) LIMITS ON PROTECTION...................................................................................................7 II. UNFAIR COMPETITION..........................................................................................................8 1) Passing off & Secondary Meaning..........................................................................................8 THE LEVEL OF PROOF CONTINUUM...................................................................................8 2) Zone of Expansion...................................................................................................................9 4) Misappropriation OF FACTS................................................................................................10 Hot News Exception..................................................................................................................10 5) Personal Names and the Rights afforded to them..................................................................11 6) TradeDress, Design, Functionality........................................................................................11 Economic Interests- Unfair Comp in the Competitive Plan......................................................12 Federal IP law Preempts State IP law............................................................................................12 PREEMPTION..........................................................................................................................12 STATE V. FED LAWS.............................................................................................................12 Trade Secrets..................................................................................................................................12 Elements of a T/S Claim?..........................................................................................................12 3rd party beneficiary of TS........................................................................................................13 Source of Law:...........................................................................................................................13 RESTATEMENT ß757, comment B.........................................................................................13 Reverse Engineering..................................................................................................................13 How do you protect a [trade] secret?.........................................................................................13 How do confidential relationship arise in TS?...........................................................................13 RULE: public has free access to trade secrets.........................................................................13 Why Patent v. TS?.....................................................................................................................13 Theory of Protection..................................................................................................................14 IV. Right of Publicity.....................................................................................................................17 ROP claim test:..........................................................................................................................18 Federal Law of Intellectual Property.............................................................................................20 Supplemental Jurisdiction..........................................................................................................20 Federal Jurisdiction....................................................................................................................20 CAFC (Court of Appeals for Federal Circuit)...........................................................................20 Trademark Law..............................................................................................................................20 First TM Statute.........................................................................................................................20

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COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Lanham Act (July 5, 1946)........................................................................................................20 SMs v. TMs................................................................................................................................20 3 levels of TM Protection (all exist congruently):....................................................................20 Legal steps to follow after choosing a mark..............................................................................21 A. Requirements for Protection.................................................................................................21 Use & Use in Commerce..........................................................................................................21 Intent to Use...............................................................................................................................21 DATE OF FILING.....................................................................................................................22 ) N/O/A- notice of allowance.....................................................................................................22 Applications that say \ìcancelled, abandoned, not in use\î........................................................23 Process for getting a TM:...........................................................................................................23 Lanham Act §1052/§2 (REASONS FOR REJECTION............................................................23 Selecting a TM/ (how strong it is too):......................................................................................23 Level of Distinctiveness.............................................................................................................23 Rejections: 2(e)..........................................................................................................................24 Concurrent Registration.............................................................................................................24 Ways to renew a TM..................................................................................................................24 Supplemental Register...............................................................................................................24 Process for Appealing a TM denial:..........................................................................................25 Defenses to infringement...........................................................................................................25 Licensing A Mark......................................................................................................................25 (a) Trademarks that distinguish from Goods of Another...........................................................25 (b) Deceptive Matter:.................................................................................................................25 Confusing Similarity to Prior Marks..........................................................................................26 Concurrent Registration.............................................................................................................26 Merely Descriptive.....................................................................................................................26 Primarily Geographically Descriptive.......................................................................................26 TYPES OF MARKS..................................................................................................................26 Service Mark..........................................................................................................................26 Certification Mark-................................................................................................................27 Collective Marks....................................................................................................................27 Licensee Estoppel..................................................................................................................27 Abandonment.............................................................................................................................27 Content of Marks......................................................................................................................27 Administrative Procedures - \ìgoing to the show\î ß283...........................................................28 . Rights & Remedies..................................................................................................................28 Geographic Boundaries..............................................................................................................28 Dilution......................................................................................................................................29 Limitations on Rights of TM owner..........................................................................................29 Fair Use..................................................................................................................................29 4 categories of Fair Use under TM........................................................................................29 DOMAIN NAMES........................................................................................................................30 ICANN.......................................................................................................................................30 Cybersquatting...........................................................................................................................30 Metatag......................................................................................................................................30 ICAN..........................................................................................................................................30

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COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 REMIEDIES - primarily an injunction in TM law....................................................................30 For Пs loss.................................................................................................................................30 REMEDIES................................................................................................................................31 SECONDARY LIABILITY......................................................................................................31 TM Infringement........................................................................................................................32 Trade Dress ñ 43(a) Action........................................................................................................32 43(a) Elements for unregistered marks......................................................................................33 Defenses for TM Infringement..................................................................................................33 Copyright.......................................................................................................................................34 Requirements for Protection......................................................................................................34 HISTORY..................................................................................................................................34 Pre 1976.....................................................................................................................................34 POST 1976.................................................................................................................................34 Berne Convention......................................................................................................................34 FORMALITIES REQUIRED FOR PROTECTION.................................................................34 Notice.....................................................................................................................................34 1909 Act (all works created before 1/1/78.................................................................................34 REQUIREMENTS TO ESTABLISH NOTICE........................................................................35 1976 Act.....................................................................................................................................35 The Dates in a NUTshell:..........................................................................................................36 NOTICE ISSUES.......................................................................................................................36 RENEWAL ISSUES..................................................................................................................36 Omission of copyright notice.....................................................................................................36 Publication.................................................................................................................................36 Registration & Deposit..............................................................................................................36 Statutory Subject Matter:...........................................................................................................37 17 USC ß102(a).........................................................................................................................37 (b)...............................................................................................................................................37 What is Copyrightable?..............................................................................................................37 What is not ©?...........................................................................................................................37 Forms:........................................................................................................................................37 How Long for Protection of Copyright?....................................................................................38 RECAPTURE versus TERMINATION OF GRANTS/LICENSES.........................................38 Exclusive Rights....................................................................................................................38 General Problem....................................................................................................................38 17 USC ß203 TERMINATION.................................................................................................38 SUMMARY under ß203:...........................................................................................................39 SUMMARY under ß304: RECAPTURE..................................................................................39 Summary of Terms and Concerns for Particular Types of Work..............................................40 RECAPTURE............................................................................................................................41 PUBLIC ACCESS PROVISIONS.............................................................................................41 3. Originality..............................................................................................................................42 B. Ownership.............................................................................................................................43 17 USC ß201..........................................................................................................................43 WMFH (Work Made For Hire)..................................................................................................43 Works for Hire...........................................................................................................................44

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...............................................................................................................................Time Shifting...............59 US government?..................59 Fair Use: Sega v........................................................................51 Computer programs/Software programs........62 Publication............................................. need all three:....................................................48 Public Access Provisions.................................................................................................................................................46 b...............................................................46 DERIVATIVE WORK....61 If get patent rights...............59 Can a state be an author?.............................................................................................61 Novelty....................................................................49 17 USC ß115.............................48 Phonorecords..... BMI.....................54 3...................................................................................................................62 Prior Art:...........................................59 What about state statutes?.................. (First Sale Doctrine)............................................................................48 Compulsory Licensing................................................51 The collecting Societies (reduce transaction costs).....47 Fair Use:.....................................................................................53 D.........................48 TYPES of Licenses & Rights:.............................................................................................................59 Patents..........57 DEFENSES:...........................................................................................................................................................................................................................................................................................................59 Things lawyers can copyright.................................................................................................................................................................................................................45 ß 109 F..............................................54 Literature................................................................................................ SESAC.............54 Duration of protection....................................................................................................................................................................................................................61 How long to monopolize patent?.....................................scenes a faire (general fair scenes)-............................................................................................................ Establishing Infringement see 17 USC ß501............................................................. Visual Arts..........................................................................................................................................64 Sometimes patent trials split in parts:.........45 Rights & Remedies..................................................................................................................................................................................................................56 Preemption of State Law:..................................................................48 ß107 (see above) Fair Use.......64 4 ....................................................................................................................................................................................................63 Test for non-obviousness.......47 C..............................................................................................................................................................................................................................60 Types of patents.........................................61 Process for getting a a Patent:..... Music...............................................................................49 Exclusive Rights & New Technologies...........................................................50 ASCAP.................51 To Prove Infringement...........................................................................................................................D............................ ß107 Fair Use.................................................................................................S.......................................COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Transfer & Term..64 2 types of patent infringement........................................................................................................................................ Secondary Liability..................................54 2....................................................................................................................................................................................................................................................... you control who can:.........................................................................................................59 Are blueprints copyrightable? YES.......................................60 In order to qualify for patents.....................................................49 ß110 Single Receiver Exception........................................................................................................................62 12 Month Use Bars Application............................................................................................................................................................ Accolade..........................................................................................................................................................................................................61 3 objectives of Patent Law:..............................................................................

. NY says need to be novel to recipient. Novel Idea-(the standard differs.... ∆ uses πs idea (the most common defense ∆ claim is that they did not use π idea) π has expectation of $$$ Note: CA has largest amount of misappropriation claims.. “Trademark Law”  “Congress shall have the power to regulate Commerce with Foreign Nations. Sellers’ theory wasn’t even specifically used. entertainment.... nor sufficiently concrete to give rise to a cause of action........ 4.. and detailed enough that someone would know how to act upon it. Elements of Misappropriation 1. 3. X thrusts upon Y a full disclosure of her idea before Y has the opportunity to block the submission 4... and among the several states”  Article I... πs theory was not novel. so there wasn’t any misappropriation of his idea............. “Copyright & Patent Law”  “Congress shall have the power to Promote the Progress of Science and useful Arts....... Sellers v ABC (1982) – (Geraldo Rivera/Elvis case) • Seller claimed misappropriation.. X makes no submission at all but charges that Y has copied her idea..... Furthermore.. idea must be generally novel. X submits her idea to Y upon Y’s express solicitation 2.. 3. 2) Protection of Ideas • Theories of Recovery (levels of proof vary depending of theory of recovery) 5 .. State/ Common Law Intellectual Property • 1) Rights in Undeveloped Ideas RULE: To successfully claim misappropriation. • HELD: Elements of misappropriation were NOT met......... There was a copyright agreement between them re: the idea. 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. by securing for limited Times to Authors and Inventors the exclusive Right to their Respective Writings and Discoveries I... stating that ABC and Rivera used his idea without compensation. Specifically. so there are idea submission programs Idea Submission (the 4 general scenarios) 1. and literature 1............ clause 8...COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Non-literal infringement. the idea becomes the value) Concrete Form  has to be written... clause 3.... creator will continue to create and the consumer will be enriched with whatever is produced... • place of consideration in the K. § 8....64 Copyright and Trademark Outline 3 objectives under IP law:  enrich society with products....... 3. Protect publisher/investor  person who is going to put the money up..... X informs Y that she would like to submit an idea of possible value to Y and Y does nothing to block the submission.... Constitutional Origins of IP Law  Article I. § 8...... b/c the creator most likely won’t have it... Enrich/protect the consumer  public • The Overall Goal  Investor will invest..... protect creator (author/inventor)  if we protect they will continue to create b/c they make money 2... because novelty takes the 2...

Under K law in NY. which meanwhile was sitting on ∆s desk. (Damages measured by level of unjust enrichment  actual profit from the use of idea). Letters back and forth. because was NOT in express agreement. • Ways to improve a Breach of Confidentiality claim 1. a misappropriation claim requires that idea be novel and original in absolute terms. Here. Note the HOLLYWOOD connection here in the easier method of enforcing an obligation. ∆ then puts out toy with similar qualities. In contrast.” Make it that so every correspondence includes mentions of confidentiality Repeat. such as drawings.disclosure agreement (NDA) 2. but he never sends them the requested drawings.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 1. Chevy’s new model incorporates some of π ideas Holding: Chevy is not liable for incorporating into its product generalized suggestions made regarding its product. but π did not provide idea in concrete form. Contract Theories  Express K in writing  limited level of novel necessary (Damages based on compensation mentioned in K)  Implied K  “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 based on presumed amount of payment of reasonable value of idea) Quasi K  highest level of novelty (pet rock is novel) and some proof of unjust enrichment on part of recipient. π wants to share idea with a company that manus toys. Luddecke v Chevrolet Motor (1934) – (Tilted Chevy case) A Chevy is sagging & П tells Chevy their heavy parts are all on the wrong side. because this is a property law theory which only protects that which is not free and available to all. and tells them what his solution would be. Chevy requested for more concrete form. but Courts don’t really do this much and it’s the hardest to recover under. and wants to submit his idea. He has an idea for a spinning toy that sings.  2. nor did he get his prototype back. and claims they did not use his idea based on lack of novelty claim and that they never got his toy. the novelty standard is “novelty to buyer. Repeat. 6 . Repeat. Soft Approach  shower with letters suggesting “I trust you will not make any use of this .  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. One of the highest novelty standards.   • • RULE: An Idea must be NOVEL and CONCRETE especially w/o an express K.” so while an idea may be unoriginal. especially if it is in writing. Expectation of payment is not enough. A common-sense idea relating to a product in a generalized way is not novel. Ideas must be novel and specific. b/c they are preferred over amateurs. Holding: Remanded. • RULE: K claim generally requires less novelty and originality than CL Misappropriation claim. Nadel v Play by Play (2000)  (spinning monkey case) π is a pro toy idea man. and they were supposed to send him some samples which π never got. 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. He sends a prototype. it may have particular value to the buyer and this is evident by willingness to enter into K. In a quasi contract – ideas must be very novel in order to force the user to pay for the idea. Some states require the idea submitter to be a professional inventor/submitter. Standard Approach  Non . π did NOT obtain proprietary interest in idea sufficient to form basis of implied K. Other Theories: Tort of Conversion  convert someone else’s property into your own. π’s suggestion was the logical solution of re-distributing weight is not novel.

To promote disclosure & stimulate further invention 3.5%. (See Nadel). setting up a process for submissions 2.5%. 3 Goals of Patent Law 1. Uniqueness  how different from ideas generally known? 4.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 The Nadel Test for Novelty 1. To assure that ideas in the public domain remain there for the free use of the public As a recipient of ideas. but after 14 yrs. awards Newark dude the reasonable value of the ideas he submitted. • • • 3) LIMITS ON PROTECTION RULE: Even if idea does not receive patent and become publicly available and marketed. ∆ had first-on-the market rights that was adequate consideration for the K. To foster and reward invention 2. Fed patent law does not expressly preempt state laws regarding K. ∆ wanted out of the agreement b/c anyone could make. WC Fields Case: Newark dude in the 1930’s submitted gag ideas to W. Agreement that if idea is patentable they will pay 5%. so in K they agreed to pay the 2. only want the obligation to pay if u use the idea (K) • 7 . but in the end the evidence shows otherwise. Fields. avoiding confidentiality 3. and if not 2. Commonality  how many people are aware of the idea? 3. Aronson v Quick Point Co (1979) (keychain idea) π had keychain idea. Patent was not granted.C. Fields asks for a few scripts gratis (due to nuisance suits) and then he might consider entering into a K. Holding: B/C it was express K and not in conflict with 3 goals of patent law. royalties payments will continue to be enforced since already profited from first rights. and sell the product. Generality v Specificity  is it a general concept or one of specific application? 2. use. commercial availability  how available is the idea to the industry Ink is still Wet ∆ companies claim idea was yrs old. you want to avoid litigation by: 1. Failure to obtain a patent by an inventor will not preclude enforcement of a K paying royalties on the invention to the inventor. Ct. if express K was created prior to.

(7) Price Fixing. (5) Misappropriation. (10) Right of Publicity.descriptive symbol that is solely for the identification of A  A can rely on  Presumption created in her favor that A. 8 . in choosing to use A’s was motivated by intent to deceive and was successful in doing so. A Name to be protected must be in ACTUAL USE.” (DEFENSES-generic or dilution) • The Calculus of Passing Off Unfair competition law seeks to protect BOTH producer & Consumer by protecting a. 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). 3. the more probable a finding of intent to deceive.act of falsely representing one’s own product as that of another in an attempt to deceive potential buyers. (6) K Interference (tortious interference w/ K or economic adv). THE LEVEL OF PROOF CONTINUUM 1. (8) Bribery. 1) Passing off & Secondary Meaning  Passing off.  Secondary Meaning. (9) Fraud -. non. (4) Disparagement. (3) False Advertising. Acts that fall w/in the realm Unfair Competition? (1) Passing Off. is likely to confuse consumers into believing that the first user is the source of the goods.Unfair/Deceptive trade Practices. (11) Pirating Unfair Competition Supplemented by BOTH State and Federal Law • • Common Law/State law  cause of action would lie. JUST similaritythe more similarity.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 II. UNFAIR COMPETITION Infringement which competes (incorporates continuum of deceptive conduct from passing off to ™ infringement. brand or other symbol in connection with the sales of goods or services against b. (2)Dilution of ™. • • Actual identifiable symbols is NOT needed in above. Federal Law/ Lanham Act  enacted in 1946 created a federal law of unfair competition that parallels state unfair competition law. UDTPA. if π could prove that ∆ used π product to deceive consumers into thinking π was the source of the goods. and holding onto it until u can sell it. (States now have own ™ statutes as well) §43(a) – general §43(c) – Dilution –using the same name §43(b) – Cyber-squatting buying domain names of famous mark. see consumer fraud act. A’s product  common but has secondary meaning  A must prove ONLY that  There is a likelihood that confusion that will result from B’s use of the symbol.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 name has become so identified w/ a particular biz that it exclusively signifies only that one particular biz. π must prove that “the primary significance of the term in the minds of the public is NOT the product BUT the producer. 2. another competitor whose subsequent use of the symbol c. at C/L. the first to use a name. can NOT SAVE FOR LATER. A’s product  distinctive. INTENT TO DECIEVE is still major factor. due to other alternative symbols. 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.

Ex: I make shoes and now I want to make pocketbooks ***General rule for determining zone -. (Related Goods Doctrine) – allows one to expand their service/product to a related good. 3) Dilution Claims-the act or instance of diminishing a mark’s strength or lessening its value. Holding: Party has the right to bar another’s use of a commercial name only if use is unfair. ∆ objected. have state zone. Tarnishment of the famous mark 6 Part Balancing Test for Dilution (Mead Concurrence) similarity of the marks 1. in spite of local character of ∆. Product  Expanding a product line to a related good (from clothing to accessories). bad faith inducement to PASS OFF product is NOT OK. (PRODUCT) EXCEPTION TO Jr. such as color brown liquid being result of chocolate. Sr. even if biz didn’t’ register for those goods . Two types of Zone of Expansion (Z. Unfairness exists when party seeking injunction has expended time and effort to familiarize public w/ its name and product & the offending party seeks to exploit that effort. the use of it by another is legit.T. identical product. 2) Zone of Expansion-A prior user can retain the right to use its name & symbols in territories that would probably be reached by the prior user in the natural expansion of his trade.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • • • RULE: PASSING OFF  although a product may not be “protectable” due to lack of patent and functional features. v. Porrath) R. When π wanted to open store in Niagara. (Bridge the Gap) . survey showed public associated π w/ Sample Inc. Here.O.I. Sample v Porrath – (Niagara case “Sample Shops”) π operated stores in NY State called “Sample”.if registered in state.Must show you have the economics to bridge the gap (TERRITORIAL & PRODUCT)  F.T. issue of functionality) (chocolate medicine case) Eli made Coco Quinine (chocolate on pill). they wanted to find a way so they could both exist concurrently.E) 1. if registered federally. When public has not in fact come to associate a certain product or service w/ a name.T  “First in Time Gets the TERRITORY”  Senior v. ∆ operated stores in Niagara called “Sample Shop”. R: Functionality kills a TM!! R: A name is not protectible when it becomes a noun!! William Warner v Eli Lilly (1924) (passing off. however. A party is entitled to make product identical to any other non-patented product (reverse engineering). No bad faith. • NOTE: Functional elements ARE NOT protectable. Warner told druggists to sub QC for CQ because QC is cheaper.S.T. 9 . Here. Junior rule  General rule of  • Trademark which mandates that the senior company will usually get first dibs on territory. Patent was not given so this is not a problem. Thus no injunction. have U.G. unless. not ∆. Warner then made Quin-Coco.G. Some courts limit ZOE to bad faith. Holding: A manufacturer may not pass off its product as the product of another. No dilution or deception.  B. No secondary Meaning given to those stores. Note: Court does not want to hurt biz that is in good faith. Here. Thus. But CANNOT tell public that product is same as original. bad faith such as inducement by manufacturer to pass off is very bad. junior is the company the public identifies with (See Sample v. a functional element will kill a ™ but Patent will protect functional elements.G. Survey showed majority of Niagara residents identified the stores operated by π. Territorial  should be able to expand and keep your mark 2. 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. Thus.D. Rule  A local biz can’t enjoin another biz from using the same name in its market if the local public is more familiar with the name of the non-local biz.

RULE: For dilution to occur. there may be a problem ( Mead is exception to rule) Non-Functional: 3rd Cir (if it’s not registered. 3. They are trying to take a free ride. The user gets a license from the Dow Jones. A fact is not protectable in its particular arrangement (S. • S. good faith and different reputations associated with each mark. 4. but here there was no license. where name is one of common usage or does not have a distinctive quality. Coordination of facts) is protected under HOT NEWS even if underlying facts are NOT. Wasn’t mentioned here b/c Lanham Act wasn’t around at this time. products are not similar.A. have to balance public need for info with protecting those who invest time and $$ into gathering info and so on. and the index is a fact. Unusual AND memorable. because sounds like LEXIS. Originator entitled some time protection for limited amt of time to protect economic interests. Also. & the senior mark is really only renowned in the legal community. 5. • Lanham § 43(c) When companies are NOT competitors.O. ∆ is in direct competition w/ product or service offered by π’s. A junior product manu doesn’t dilute the market of a Sr. 2 competing philosophies here(1) Sweat of the Brow Doctrine: an innovative party deserves the fruits of their labor v. Lexis = word. there’s the possibility of a §43 action. Likely to serve primarily as designator of origin (ex.A. not fiction. a common prefix. the mark or name in question must be distinctive. (2) allowing imitation pushes all parties to innovate further. manu if no L. others just can’t steal it and print it.C exists between the 2 products in the public mind. here. 2.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 2. consumers are sophisticated. 5. but being used): 1.C  Selection Arrangement Coordinatioon). so is the index protectable. 6. Board of Trade v Dow Jones (1983) Chicago wants to sell something. 3. 4. 2. “Twizzler” – u know instantly who makes it) 4) Misappropriation OF FACTS • Hot News Exception  when news is presented in timely manner. 10 . Conceptually separable from product 3. π generates or gathers info at a cost. 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. • Similarity of products Sophistication of Consumers Predatory Intent Renown of Senior Mark Renown of Junior Mark Apply the test and see where the cookies fall. • RADIO TEST  if mark sounds the same on the radio. HELD: No dilution. so they need an index for reference purposes and they want to include the DJ index. dilution cannot occur. while the junior is for the masses. consumers sophisticated. Arrangement. So what is the problem? DJ put time and effort into the index. product different. ∆’s use of the info constitutes “free-riding” on π’s efforts. seems to be no bad faith. info is time-sensitive. Mead Data v Toyota (1989) – (LEXIS/LEXUS case) Mead not happy that Toyota putting out a LEXUS. Facts are in the public domain. (Stock news 15 min) (INS v AP) • What constitutes Hot News? 1. Mead & Toyota put out 2 products similar in name were highly unlikely to be linked in public mind (Lexis-Nexis & Lexus). Ability of other parties to free-ride on the efforts of π or others would reduce incentive to produce product or service that its existence or quality would be threatened.C (Selection.

П need only show LOC ii. Grandfather dies. Functionality Trade Dress: Beauty (protectable) Non-functional Non-Essential v. If Пs name has 2nd meaning. Dow has expended much time. indicate so ***Secondary meaning – (1) it is no longer a noun AND (2) it is a source identifier. The court held he couldn’t highlight what he had done. giving Dow a monopoly on its 30 industrials will not stifle market. that consumers have actually been confused. Court relied on confusion. what are his rights? Mr. Wally. Wally then comes to NY on 57th. ***David was first  FITGTT!!! *** • LEVITTOWN  When a founder leaves a company bearing his name. If Пs name is distinctive.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 ***COMPETITORS-Some courts require other party to be competitor so as to economically affect the other party (i. Levitt of Levittown sells business and trademark. To register a surname. but here. No sacred right in name. (Think Roy Rogers) • RULE: A name is NOT sacred. you must: 1. Doing so may encourage innovation by forcing experimentation. Housing is either service mark (unique houses) or trademark (all the same). u must establish secondary meaning • Surnames – П whose name is common and has no secondary meaning must show: a. but the biz who bought him out is not happy about it. INS type cases). Most courts say a violation occurs only if the one taking the news is a competitor. Narrow Injunction appropriate as remedy (Wally either change name or move to another part of NYC). He sets up shop using Findley name next door. cts will presume consumer deception & grant relief even absent proof of LOC. any index can be used. David had invested a lot into the name in NY and they both sell the same type of art.LOC great. 6) TradeDress. and eventually each brother had branch. that ∆s use of the name is part of an active “passing off” scheme AND b. David Findley v Findley (1966) Two brothers' grandfather started this art galley business in Midwest.e. Prior to that. **Overriding concern is whether social utility is better served by allowing or prohibiting appropriation. iii. Whether they are competitors or not is consideration of several factors. energy. and 2nd meaning is strong. Person’s name may not be used to appropriate goodwill of another business by causing confusion in public. i. This SAC should be protected. his brother. Basically. tries to go into the biz again and uses his name. 5) Personal Names and the Rights afforded to them • For names to be protectable. Utility (not protectable) Functional Essential Non-Functional Elements: • Unusual • Memorable • Conceptually separable from the product 11 . An individual has property interest in own name. $$ to achieve highly respected status. Chicago should create their own. it might have been because he was so in the face about it. SAC. but limited. Design. David Findley goes to NY on 57th Street. and there is a huge LOC. so Catch-22. HELD: An individual may be enjoined from using his own name in a biz if such use would lead to confusion w/ another biz. father continued business. but they can’t because it has to be noted before they can use it. Chicago has to pay DJ. If deceased. had business in Chicago. Have a statement that the individual has licensed their name OR 2. & will not be protected if doing so will create LOC & especially if done in bad faith.Dow Jones took facts and arranged them in a certain way. In context of stock market futures. Both galleries were adjacent and sold same art. Several years later.

copies “nonfunctional” elements of Sr. FEDERAL IP LAW PREEMPTS STATE IP LAW: • There can be no state patent law. A product similar in style & function not give rise to UC claim if no LOC. No patent. Holding: a Jr. that makes it distinctive. A state can impose liability for palming off or require labeling to prevent confusion.Unfair Comp in the Competitive Plan MARKETING . III. diff packaging. • Holder of TS may communicate it to employee or to one in fiduciary relationship.ie. PREEMPTION . Thus. Stiffel’s design and mech patents were deemed invalid and also the TM. there would be difficulty getting info. product having no patent has no claim on a product’s style or function. A nat’l system of protection would otherwise be thwarted & useless if varies on state. state laws in general do not conflict w/ fed patent laws. Elements of a T/S Claim? (1) Any info of P that gives P competitive edge over others.good for ∆s b/c if nonfunctional. Trade Secrets . Stiffel – Stiffel sells high end lamps & then Sears makes a pole lamp selling it under Sears’ name for cheaper. product if no LOC as to w/c its purchasing.Sears Roebuck v. (*note. • NOTE: NON-FUNCTIONAL ITEMS ARE PROTECTED WEN 2 ND MEANING IS SHOWN. HYPO – Listerine Bottle: Design patents protect non-functional appearance (shape of the bottle). • BUT.A state may regulate the METHOD of selling. pattern.Compco v.) States can only regulate labeling and advertising. Trade Dress lasts as long as the shape is ID’d w/ the product. RULE: Fed laws protecting patent & © laws preempt state law.Crescent Tool v. Kilborn. not the non-manufacturing aspects of a trade. product may be marketed having same shape & function as Sr. • Must be secret but need not be absolute. • No state can prevent the manufacturing of something patentable. device or compilation of info used in one’s business w/c gives him a competitive advantage over others who don’t know the TS. A Sr.state law addresses conduct. Improper only when Jr. did not market wrench as a “Crescent”). but not non-functional (2) Economic Interests. No confusion and Kilborn’s marketing suggested no confusion (diff name. LOC necessary condition to enjoin Jr. STATE V. you can copy if not patented Can copy functional aspects. if no patent.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • • • • Likely to serve primarily as a designator of origin Beauty is more likely to be protected “F” Work – “Functionality” -. • lasts 14 years from the granting date. passing off. Patent law says what is not patentable is free to be copies.A state cannot use its UC laws to bar or give relief for copying a product w/c is unpatentable under the fed law and thus in the PD. but a state’s UC laws may not impose liability or bar the copying of a product that is not protected by the fed patent or © laws. etc.Any formula. HELD. Day Brite. FED LAWS . HELD . 12 . not technology.Compco (D) began manufacturing fluorescent lighting fixtures identical to those upon w/c Day-Brite had secured a design patent that turned out to be invalid in the Public Domain.Kilborn made wrenches possessing same basic shape & function as wrenches made by Crescent. but not for copying and selling unpatentable articles. substantial element of secrecy must exist so that except by use of improper means.

His disclosure or use constitutes a breach of confidence reposed in him by the other disclosing the secret.have duty to inquire into any info new employee brings. o Don’t have to obtain by unlawful means to infringe on trade secrets.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 (2) П takes reasonable steps to keep secret (non-disclosure to public) NOTE: Secret just has to be secret. DuPont v. if reverse engineered. 3rd party beneficiary of TS . He discovered secret by improper means OR 2. How do you protect a [trade] secret? • non-disclosure agreements • non-compete clauses • restrictive covenants.e.One who discloses or uses another’s TS w/out privilege to do so is liable to other if: 1. Christopher). BUT.. are not liable. • TS protects SUBJECT MATTER that couldn’t receive a patent. but by “commercially immoral” means (ex. joint venturers) • Implied K RULE: public has free access to trade secrets. (Notice) Source of Law: • Restatement 3rd – Unfair Competition • Case law • Uniform Trade Secret Act (supplement) § 1(4) **RESTATEMENT §757. o Those who obtain it through proper means (like published in a book). Coke formula).either when proprietor sells biz or in employment relationships • security • shredders • signs • diff’t ID cards for diff’t employees (access) How do confidential relationship arise in TS? • Express K • Parties in special relationships – confidential relationships (partners. whom the law seeks to punish. TS? • Patent disclosed after 18 mos of protection if denied a patent. 13 . “Reverse Engineering”. w/ no knowledge of unlawful means of obtaining it.can lawfully reverse engineer and discover a TS as long as original product is lawfully obtained. o Misappropriator is the wrong-doer. you get f-ed b/c now no $. • TS protected as long as kept secret (i. keep receipt so it can be proven origingal product was obtained through lawful means & П can’t make misappropriation claim (4) Cost involved in maintaining secret • MUST BE in continuous use. comment B . Why Patent v. does NOT have to be novel or inventive (3) Misappropriated thru wrongful means (uses or discloses) • reverse engineering ok! If reverse engineered.

∆s engaged in no fraud or illegal conduct.I. b/c of the “knowing: requ. Must ask that records get sealed. Never been rule that acquisition of secret must be thru illegal or fraudulent conduct. Fourtek – Metallurgical hired Therm-O-Vac to make M a furnace. • Under Court Seal – closes courtroom to public & seals records. it’s not protectible. THEORY OF PROTECTION (ELEMENTS OF TS APPLIED-WHAT IS A TS) Metallurgical v. but kept the TS conf.” √ Policy. M modified it extensively and went to another company to have them build a second one. but ltd disclosure made this still TS: ALL 4 ELEMENTS SATISFIED (1) a secret competitive advantage was provided to others. Remedies: 1) Lost Profits: Пs actual loss (D unjust enrichment x2 if willful) or reasonable royalty.The Christophers were aerial photographers taking pics for conf. pipes. A reasonable conf rel existed btwn both parties. which deals w/ technology. TOV’s salesperson w/ 4 others started Fourtek & sold the same furnace w/ the mods to a compeetitor. client of Пs refinery taking pics of the process. Fees (if bad faith or willful) • Protective Order – to protect your secret. • NOTE: on Royalties: Should always require 2 tier system  Think Listerine & Key Chain case: If u do a deal w/someone on an item that might be 14 . Christopher. HELD (1): One may be found to have improperly acquired another’s TS w/out having committed illegal or fraudulent conduct. П used reasonable protection. No confidentiality K but reasonable steps taken to keep secret. can look at the TS. Proper means = reverse engineering. HELD (2): Expense to protect industrial aerial espionage would have outweighed reason. Dupont v. not industrial espionage. Also enjoined from disclosing info. Thus. TS deals only w/ wrongful conduct! A. 2) Injunction 3) Esq. but they can estimate how long it should take for one to reasonably figure the TS or if bad faith could be forever. Not in conflict w/ fed patent law. a good faith purchase who becomes aware of the improper appropriation only after acquiring the info is protectd. Other requs are value to holder and cost of devising secret or process. had not yet put it to use so not liable for TS misappropriation. HELD . M claiming TS misapp. but it was limited & the disclosures were made to further economic interests. TS law does not conflict with “if it’s not patentable.Serves to protect standards of commercial morality & encourage invention & innovation while maintaining public interest in having free & open competition in manufacture and sale of unpatented goods. • • NOTE: for perm inj the court can do many things. whereas Patent is for protection of items in public domain. but you run the risk that it may be disclosed in court b/c records are typically open to the public. then perm inj.Furnace was TS which was disclosed to others. RULE: TS need not be discovered thru improper means. E. and though competitor failed to inquire as to process of furnace. & process. client will never see the secret. Remedies – Reasonable Royalties (what parties would have agreed to as fair price for licensing).COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • TS protects things NOT in public domain. Photogs will not disclose 3rd party. btwn M & the prospective company. TS determined by weighing all equitable considerations & turn on own facts. NOTE: 3rd Party LiabilityAccording to UTSA. • Attorney’s Eyes Only – only opp esq. П finds out & wants to stop the pics from being released and find out the name of the person. no universal requs though secrecy a must. & if unable to determine that. The TS here is the layout.

• NON-COMPETES must be reasonable. K not enforced.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 patentable. must put it in writing ahead of time or else employees could license to someone else. and are generally NOT FAVORED Public policy need to keep people employed. Federal Pre-emption: o TS law is not pre-empted. address outside envelope to recipient.Nondisclosure Agreements NC. Attached to it is cover letter explaining what’s inside the second envelope.Non-compete clauses (Cali doesn’t like this). Courts will carefully scrutinize a covenant for reasonableness in the light of the need of the employer for protection and the hardship of the restriction upon the employee. If the employer wants to own all rights. Limits of Protection: Provisions to write into K to protect your TS: NDA.C. but we’ll pay you half your current salary  might be reasonable. Wexler v. o HYPO: can’t work for 8 years  unsconscionable & probably invalidated by ct o HYPO: 8 years. which is a benefit.) if the patent is grantedhigher royalty b/c of exclusivity. which may be lower. (employees services must be unique & extraordinary and limitations must be reasonable to be upheld b/c interferes w/ ability to earn living). o Economic Espionage Act (1996) – federal law for protection of TS. 2.) if the patent is not granted you are still obligated to pay Y. 3) not harmful to gen public. State v. they can return it back to you. “Shop rights”. 2) necessary to protect employer’s legit interest. employee retains right to invention (owns it) but employer retains royalty fee license. but you have to pay b/c u have lead time. • RC will be upheld if: 1) reasonable in time & area. Here. o Employer can’t prevent an employee from leaving. but we don’t want secrets being disclosed. Greenberg Note Case (1960): chief chemist w/ access to formulas wants to leave company A. Second envelope is addressed back to you so that if they don’t agree to cover letter terms. o KEY FACTOR in determining reasonableness of non-compete clauses: Is there separate consideration given for the particular provision in the K> B. Must narrow down the type of companies not to work for – must be true competitors. R. 4) not unreasonably burdensome to employee. • • • 15 . BUT o Can prevent employee from working for competitor for a period of time. Restrictive Covenants.either when proprietor sells biz or in employment relationships. Approaches: Reasonable Steps • Mutual non-disclosure agreement – what we share w/ each other (companies) will be kept conf • Double envelope approach – any idea client wants protected. Stamped confidential front and back. and then inside is a second envelope. u have a 2 tier royalty obligation 1.if there is no written agreement btw employer and employee. as well as the individual’s right to seek employment freely.

NC (noncompete) unenforceable if employee’s services were not extraordinary or unique. ISSUE: Does federal patent policy pre-empt state TS law? NO. HELD. BUT there’s a difference between a customer following and a lawyer soliciting. RULE: Customer list is NOT a TS. o Small window of time that employee can’t work for competition (6 mos. A few years later. etc) to go to Quaker. Strauman (Tax Advisor Firm Case. TS covers what patent does NOT> State TS law reaches areas that federal patent law does not.П may prove a claim of TS misappropriation by demonstrating that ∆’s new employment will inevitably lead him to rely on П’s TS. distribution & was hella sneaky about leaving (lying. List of clients accessible to general public. State law doesn’t care if it’s patentable as long as it gives a competitive advantage. he would necessarily be making decisions about Gatorade & Snapple by relying on his knowledge of PCNA TS. RULE: Enjoining someone from moving onward in their employ will occur ONLY when that someone is special & HAS EXTRAORDINARY KNOWLEDGE that would be used no matter what. while upholding the following policies: 1) Incentive to invent is maintained under TS law. so it was free to be copied. ∆ argued it was not patented. Inj until current biz plan had passed. o Tailor covenants for each type of individual/ occupation. but rather the particular plans developed by PCNA and disclosed to him while employed that are unknown to others and that give employer advantage over his competitors. o 1. o Necessary to protect employer’s legitimate interest. it’s not pre-empted. Remedy: Enjoined for a period of 6 mos b/c dist plan will be obsolete shortly thereafter. etc) and not technology. worked for Bicron. marketing. BAD FAITH WAS A BIG ISSUE/FACTOR HERE!! *** REMEMBER: State Law-this varies from state to state Reed v. Thus a restrictive covenant will be held if: o Make it a small geographical area. 2) Doesn’t take knowledge away from the public domain. It is not the general skills & knowledge acquired during his tenure that Pepsi wants to protect. merely holds TS law is important & helps potential confict in patent v. o Not harmful to general public. Personal Interests. adv.TS in Competitive Plan Kewanee Oil v.). but unjust & unfair b/c of comp. TS law o As long as the state law focuses on conduct (improper conduct-someone stole. П seeked to enjoin ∆ from using it b/c it was a TS.Restraints on Post-Employment Competition PepsiCo v. 16 . 2. Bicron (1974): USSC П created 17” crystal that detects radiation (largest in the market). (ie Playbook & football). Economic Interests . just b/c it’s in the brain. Drafting a covenant for your employee: Employee’s services must be unique & extraordinary and limitations must be reasonable to be upheld b/c otherwise the covenant will interfere with individual’s ability to earn a living.∆ was former Pepsi employee who knew pricing.Reed sought to enforce covenant not to compete executed by Strauman despite fact that his services had not been extraordinary or unique. HELD. Not a TS. П’s employee. Redmond (Gatorade Case) . someone trespassed. ∆ created same crystal. ∆ left.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Doesn’t pre-empt state law. 3) Legitimate state purpose – prevent unfair conduct AND promote invention. Unless ∆ possessed uncanny ability to compartmentalize info. Fact that ∆ said he wouldn’t use the info meant nothing.

CA = life + 70 VA = Life + 40 • Always deal with ROP separately when you represent the client. earning over $500 mil from name. image.property right descendible (some states require lifetime exploitation) (CA/NJ). 17 . got injunction and $ damages. performance & symbolic representation. They are valuable and what you need to do to protect them. they had over 500 different types of merchandise bore their TM. • A.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Compare TS w/ Patent Sec.8 prong test to determine whether LOC: re: violation of sec. voice. so no claim under this. Cali C/L– extended protection to her. sneaky sir • The TS Risk: Company A has TS. Great Ex of using ROP to adv: New Kids on the Blockb/c they rode it as long as they could. Know about NCC’s (non-compete clauses) • IV. likeness. EXAM: WHAT TO KNOW ABOUT TS: Know what a TS is. 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) claim in “Here’s Johnny” case (1) strength of П’s 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) ∆’s intent in selecting mark (8) likelihood of expansion of product lines Bette Middler case: Ford used someone w/ voice similar to hers. RIGHT OF PUBLICITY What is it? Right of an individual (celebrity) to profit from & control his/ her name. then A has to litigate and prove prior invention. How long does ROP last? Depends on statute/ jurisdiction. Company B arrives in the market & invents the same thing. singing song she made famous. B didn’t know & gets patent. image. Celebrity has interest that may be protected from the unauthorized commercial exploitation of that identity. • Majority rule . Cali statute – refers to celebrity’s voice. Theory of Protection Likelihood of Confusion Frisch Test .privacy right -. 154 – Pre-emptive patent filing – allows you to donate your patent to public domain to prevent others from patentingsneaky. the value of ATs that are not preempted. signature. the sellers have appropriated what is not theirs and have committed a tort. likeness. biographical facts. RULE: when a distinctive voice of a recognized professional is deliberately imitated in order to sell a product.dies w/ individual (NY). • Minority rule .

B. Samsung. 9th Cir basically said the studios should have put it in the K. Majority rule applied.Company used his catch phrase (“Here’s Johnny!! The World’s Foremost Comodian”) HELD. ALSO alleged violation of Lanham Act sec 43(a). It’s not the individual elemtns.). White v. Limits of Protection ∆s to ROP: 1) Parody/ Satire . Court uses a balancing test b/t the First Amendment and the ROP based on whether the 18 . at airport bars. BUT doesn’t survive the LOC test. 2) 1st Amendment/ political use or arena (most widely asserted ∆). Playgirl: drawing of Muhammad Ali with caption “Mystery Man” invaded his ROP • RJ Reynolds: unauthorized use of distinctive car of well-known race car driver violated his ROP ROP claim test: 1) ∆’s use of П’s identity 2) Appropriation of П’s name or likeness to ∆’s advantage.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Carson v. Here’s Johnny Portapotties. HELD: Totality of facts here violate П’s ROP. Saderup-(3 Stooges Case) shirts w/3 Stooges pics. but rather all of them together. √ NOTE Part of the reason producers rotate actors (like Batman. ISSUE: Is there a LOC here? MAYBE.“Conjure Up Rule”. No unfair competition here. • Ali v. not the message!” (a parody ∆ will be more successful when its not to sell a product).allowed to use that amount necessary of celebrity to convey message to public and to identify celebrity). etc. S. the other celebs in the campaign (series of futuristic ads) were being paid.C. but there is still a ROP claim b/c we are in a state that follows the majority rule. RULE: If a phrase has become associated w/ celebrity. is so that none will claim a right to the character. using different names. no evidence ∆’s use of phrase damaged П. ***BUT ROP not limited to appropriation of name or likeness. commercially or otherwise 3) Lack of consent & 4) Resulting injury. Host Int’l (9th 1997): (Cheers case) : Norm and Cliff characters were sold by Cheers (© owner) and imitated using animated robots. even if neither his name nor likeness is used.All 3 Stooges are dead. All 4 prongs of ROP satisfied!! Parody ∆ unsuccessful: this was not just to be funny. ISSUE: Does ROP by state trump federal copyright law? YES HELD: Just b/c characters are fictional. Must be transformative and it’s better if NOT for profit. The robot + the clothes + Wheel of Fortune backdrop = violation of ROP. Johnson: using one’s nickname rather than the actual name doesn’t preclude a cause of action. Asserted 1st Amendment ∆ HELD. posed next to game board resembling Wheel of Fortune’s. James Bond. 3) Editorial/ news 4) License Comedy III Prods v. speaking to one another. ∆’s ad depicts robot in likeness of Vanna White. 2) “It’s the medium.Vanna White robot.A celebrity may enjoin use of a phrase associated w/ him (symbolic use). doesn’t mean actors lose their ROP. ⇒ Celebrity has a commercial interest that may be protected: • Hirsch v. he has property interest in that phrase. but they’re all satisfied for profit. White sued on ROP based on symbolic rep. Wendt v. Also. but to also sell VCRs. Difference btwn parody & knock-ff is the difference btwn fun & profit. The prongs are not only satisfied. ∆ didn’t intend to deceive pubic into believe P was assoc’d w/ product.

something of value that would not have otherwise been there to come under the exception. but for the most part it’s a federal clalim. so probably violates his ROP. Use of public images by news  don’t need permission. Ct distinguished b/w single art and reproduced art. but if it’s an article. ∆ SHOULD HAVE gotten a license or made it into a “transformative expression. or patent. Tiger isn’t happy about it. Medium. Ct looks to see if there is something new to society present in the art. Transformative TestDoes the marketability & economic value derive primarily from the celebrity. Since this was not a parody and was intended to represent the Three Stooges and got $$$. Getting into court: for Fed’l. Franklin Mint can argued it’s a news event (just like putting it in a magazine). then it qualifies as commentary. like lithographs (art law exception for single pieces of art). Beatles on Rolling Stones Cover If there is no article inside. significant creative elements (w/c exempts it under the 1st).COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 work adds significant creative elements so as to be something more than a mere celebrity likeness. Also. ⇒ HYPO: Baseball cards HELD: need permission from players. its medium not message: 1st Amendment allows one to say what they want. rather than just being a celebrity likeness. unlawful reproduction b/c it was NOT a parody and WAS ingtended to rep the 3 Stooges & ∆ profited. HELD: merchandising. Exclusive Jurisdiction – claims for which the remedy itself comes from a specific federal act. then u need permission. should have gotten a license or made it into a “transformative value” i. ⇒ HYPO: Franklin Mint put out commemorative Tiger Woods piece after he won the Masters. Cover ArtEx. o Patent o © – there are still some state claims that might exist. bring claim under Lanham Act. NOT the Message! ⇒ HYPO: Dennis Rodmantis doll Court looks at how item is being exploited.e. Public images w/out an article  permission needed.” rather than just being a celebrity likeness. Breach of K – not paying royalties  state court 19 . **If Noit’s okay to allow someone to sell the product **If YesForget it v. etc. but it becomes problematic when it’s put on merchandise. unlawful reproduction. HELD: it’s merchandize (medium prevailed over the message).

then one use is a SM and one use is a TM use. (3) the USDC has dismissed all claims over w/c it has orginal juris. USSC held entire act unconst in 1879 stating that it had no relation to Cong power over invention or discovery since TM is result of continual use as opposed to signal invention. can continue to hear the matter even if fed. (2) the claim substantially predominates over the claim(s) over w/c the USDC has original juris. ct. 1870.  First TM Statute  Act of July 8. 198  created few substantive rights providing instead for registration of marks protected under C/L. CAFC (Court of Appeals for Federal Circuit) – started in the 1980s. Trademark Law ™ TM HISTORY: Marks have been used to identify for centuries (started w/ jewelers to ID work/craftsmanship). Federal Jurisdiction (§1338) – Gives Fed. then you can go to USSC. • • A lot of patent cases are really breach of K claims. CT. law – although there are some state C/L claims that can be brought. not merely to ID subject of advertising. can decline if: (1) the claim raises a novel or complex issue of State law. there are other compelling reasons for declining juris. Cong amended the Act in 1876 to add criminal sanctions for infringing federally registered marks. hears appeals from USDCs. TMs: If you can buy the services/ goods independently from each other. Gives pendant juris over certain related state actions. If it’s an infringement claim. Court has discretion to hear the state claim. & systematic legal protection began to take shape in the early 19th century TM law began as an infringement branch of the Unfair Competition Passing Off Doctrine. plant variety protection. Fed. FEDERAL LAW OF INTELLECTUAL PROPERTY Supplemental Jurisdiction (§1367) – Fed Ct. Specifically. 1946)  1st major substantive step towards federal TM legislation.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 III. 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 SMs v. Cts. © & TM (USDCs share w/ state courts w/ respect to TM cases). (Service must be stuff separate from the subject of the advertising and mark must be used to ID advertising services. Gives supplemental juris over state claims. it’s in FED. but one can always write a K so that it becomes a patent infringement claim and can be brought in fed cts under fed law. header must say “in concert” or “performing tonight”) 3 levels of TM Protection (all exist congruently): **All 3 are based on use in some sort – where first to use gets it. HOWEVER.  Lanham Act (July 5. 16 Stat. original juris over “any civil action arising under any Act of Cong relating to patents. © claims almost always come under fed. The act has since been amended several times. claim is dismissed.** 20 . Example SM: For rock bands to use SM. (4) in exceptional circumstances. 1.

COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 1. If yes to #1. . Jr. Requirements for Protection Fed USC §§ 1051-1129 (or Lanham Act §§ 1-47) (1) Use & Use in Commerce Until 1988 revision. State Statute -. then may have to pay profits. • “Bona Fide Use”. no CL or State law) and applications only good for 6 mos intervals. ⇒ NO (SOL) for TM • Legal steps to follow after choosing a mark: 1. 8) advertising.e. 3. So until actually used.™ symbol used when registered in C/L.T. – First in time gets the trademark! (Sr. bona fide use.T.™ used when registered in the state. 21 . (1) Intent to Use – ITU (revisions effective 11/16/89) .T.I. . in order of importance: 1) quantity & continuity of sale (if need to ask what’s enough. Use (either “bona fide” or “in-commerce”. • ® can be used after federal registration is granted (can used on Supplemental Register as well) • ™ can be used when there is a state registration and in C/L use.G. State C/L -. need to est. • ITU v. Conduct a TM search to determine if the mark or a similar mark is already in use.i. have to renew every 6 mos. unless there is a C/L TM already. whoever uses it first can claim ownership but right is not absolute. TM ownership and registration in the US turned on the mark’s use in connection w/ goods or services in the market place. 2. 2. .after TM Act of 1989. 2) consumer purchases. 9) test market. . i. must do Thompson & Thompson search to see if it’s used already. 5) a distinguishing mark. it may be okay—this shows GOOD FAITH – if bad faith is proven. 4) quality control.e. П has constructive use throughout the entire country – so that П is probably the senior user everywhere. • (SM) is a service mark for someone who provides a service like a restaurant • ™ and SM are equal legally. Use was also a condition precedent to seeking registration • F.. interstate commerce) • To establish TM ownership. . If it’s a distinctive product.) . • Before use mark.TM law based on use. . 7) profit or loss. ability to register mark on an intent to use basis (only federal level. 6) intent. Once П gets federal registration. . Federal Statute  ® given to all marks federally registered under the Lanham Act (15 USCA § 1052) **Definitions found in §1127 of TM of 1946 (§45 of the Lanham Act). (“Consumer Eye Test”) 3) biz of mark owner. how is the mark being used. v. then not enough). A. No rights attached unless used in commerce (now ok if bona fide intent). also (sm) service marks for when dealing w/ a service and is afforded the same protection as ™ 3.

look to this to see when you have to renew application if not using yet. was still pending. This is important to determine ownership & exclusive righs. As long as an ITU applicant’s privilege has not expired..36 mos. and this is determined by consumer exposure. (2) N/O/A.“Time Out” mark over men’s line. with all the extensions. bona fide use in ordinary trade of biz. “CONSUMER EYE” test. but you plan to use it on an interstate basis. ITU’s are allowed to mature from date of filing. • Filing of [ITU] certificate of registration (sets priority date for Sr.. Pg. • 9 factors must be in play w/in 6 mos.can someone who used a TM before an ITU applicant for same TM enjoin ITU applicant from using TM? HELD . w/c sets up a seniority date.notice of allowance (starts 1st 6 mos. o File an ITU app. applicant must file a verified stmt that the mark is in use in commerce w/in 6 mos. & starts clock for protection) . then the court can enjoin a junior user. does not start clock of protection) this gives you senior status!!! • This is for the “idea” phase of your biz. NOT internal sales.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 DATE OF FILINGcritical date. Issue. Farrah shipped 1st order of Time Out clothes to customersFirst Users • • TOKEN USE: Prior to 6/1/88 revision adding INTENT TO USE. have up to 4 yrs to make use. show the office why you haven’t done so.” Extensions: (5 of ITU @ 6 mos. Facts: ∆ filed an ITU and П tried to enjoin it stating it was already in use (though app was pending and actually filed after ∆s ITU). BUT if actual use is pre ITU.after 36 MOS have to use it or lose it! HYPO: using mark only in NJ. when it hasn’t yet become concrete. (3) After N/O/A. Empire(ITU in place). If you can’t do this. contrived uses of a mark made for single purpose of obtaining registration. [But if actual use is SR to ITU applicant. • Federal/ State TM Issue: What does one do about the senior C/L user who wouldn’t come up in a search? What if they start expanding their biz from small time to big time? Will they have to go out of biz like Warner (see above)? NO. then USPTO issues N/O/A. ABOLISHED by 1988 Revision Act & requ. Jr. Key date is time when CUSTOMERS 1st see product w/ TM.“Real Wheels” for toy cars. o Retroactive back to whoever was the first to use. Issue. Blue Bell v. • 3 steps: 1) Comparison for conflicting marks (see USCA § 1052). was a timing issue in that conflicts check didn’t turn up the mark b/c it hadn’t been registered yet. and may get renewal based on “good cause.. then they send an action letter and П has 6 months to respond.] Here. the Patent & TM office offered a safety net by tolerating token usesspare. Farrah (1975-pre ITU case). given. • Then you work on 9 bona fide use factors. MAX. 214. ct will enjoin JR ITU applicant. 2) Internal use (ie shipping to salespeople) not dispositive.No injunction. ct can’t enjoin – obliterating the ITU (by enjoining use) would obliterate the whole purpose of ITU RULE: When an ITU app is still current. П can ultimately. 2) Publication for opposition 3) If no one opposes. instead. then it is available for publication in the official gazette once approved by examiner. it can not be enjoined.who used 1st & what constitutes use? HELD 1) FITGTT: Point of TM is to protect consumers in helping them distinguish marks. App goes to the examiner who declares the description of goods is too broad. the senior is 22 . v. and in the name of equity. Warner v. П claims § is not bona fide & why should П be restricted when someone based on intent when actual use already exists. If П responds and narrows the description down.

® (made official by the allowance). Clean. all TM law exists concurrently. not in use” – doesn’t mean it’s no longer it’s in use. REMEMBER. GAP Ex. П has seniority. Apple Computers. but your client doesn’t care b/c he doesn’t plan on being there. Coppertone 23 . deception. a surname or 5. actual bona fide use) 7. (In Re N. only functional • ALL OF THESE W/O 2ND MEANING  §2(f)a mark which may cause dilution under §43 Selecting a TM/ (how strong it is too): Level of Distinctiveness – 1.D. or mistake. Publish for opposition in official gazette 6. In TM & patent law. the USPTO will write u a letter saying ur app has been accepted or your appication is allowed/accepted. The only thing that’s abandoned is the application. the senior gets frozen to where they are. Coined/ fanciful – very strong 2. Filing 5. 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. Allowance (N/O/A – Notice of Allowance.)  §2(e) mark is also not okay if: (catch all) 1. merely descriptive or deceptively misdescriptive (Sunoco/Lovee Lamb) or 2. Biz Affairs point. but could be using the TM under C/L. Conflicts search (Thompson & Thompson) 3. primarily geographically descriptive or 3. Arbitrary – very strong 3. Example: There’s a senior C/L TM in Oregon. abandoned. Opinion letter 4. deceptive or Scandalous matter (NOTE: this determination is based not on the general public’s impression of the term. Applications that say “cancelled.1) File ITU & 2) don’t miss extension filings. you file an ITU. TM’s last for 20 years. If П files in Europe. as long as П has filed here w/in 6 months of foreign filing. BUT. once your ITU ripens to actual use. Lanham Act §1052/§2 (REASONS FOR REJECTION) No TM by which the goods of the applicant may be distinguished from 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  §2(a) Scandalousimmoral. primarily geographically deceptively misdescriptive 4. Mr. & then someone files here. Process for getting a TM: 1.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 frozen from expansion. Selection of TM 2.A. and can be renewed for another 10. then senior expands its business geographically. FOREIGN FILING 6 month limit. Suggestive – Strong Ex-Hagen daaz Ice Cream Ex. Solution: Senior C/L TM can expand during ITU phase.

COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008
-- suggests what product may be, but not descriptive of the product 4. Merely Descriptive w/ Secondary Meaning – protectible (but problematic area) 5. Descriptive – Not protectable w/o 2nd Meaning except on Supp. Register 6. Generic- No protection Keep it an adjective Rejections: 2(e) o Deceptive o Confusingly similar (King Seeley) o Merely descriptive w/out 2nd meaning – describes mark, but not sufficient 2nd meaning by public. o Deceptively misdescriptive w/out 2nd meaning – (In re Budge) o Geographically deceptive w/out 2nd meaning – (Durango case) o Primarily merely a surname (w/out 2nd meaning) – using one’s last name on a product. o Scandalous – can be ethnic/ country specific (etc. bimbo, cock) o Generic

• •

NOTE: Things can fall into the TM graveyard-don’t EVER want mark to be a NOUN NOTE: If П gets rejected, П can still use the mark, unless П is enjoined federally -- then they will give FFC to other courts -- more problematic w/ state court decisions as opposed to fed.

Concurrent Registration – often to avoid litigation; rare. (In re NAD). Firing Line – idea that those caught in the litigation should determine whether or not they want to engage in concurrent registration of a mark. (In re NAD). Ways to renew a TM: (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! 1. Must file §8 statement of continuous use every time you file a §9 renewal form every 10 years. 2. On top of that B.S., you must file an §8 every 6 years. 3. Also, must file §15 incontestability form in year 6. 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. Incontestibility re: 2nd meaning or Sr. v. Jr. but you can attack it on Functionality, fraud or abandonment. Supplemental Register (federal §§ 1091–96)Examiner may offer to register your client’s TM here •

• •

MUST pass 2(f) above, or mark can’t register. Different from ITU, but must have actual use w/o 2nd Meaning yet After 5 years of being on the Supp Reg, TM is deemed to have acquired secondary meaningPRIMARY REGISTER While in Supp Reg, Applicant DOES NOT GET o Published in official gazette for anyone to oppose it o To stop importation of goods from other countries (foreign import), AND o Constructive use throughout the country that you get with Primary. Can still use the ® though

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COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008

Process for Appealing a TM denial: 1. Have to be rejected by examiner. 2. Go to TTAB (Trademark Trial & Appeals Board or de novo to USDC- if lose go to regular cts). 3. Can appeal to CAFC (Court of Appeals for Fed Circ) 4. Appeal to USSC • TTABhears ex parte claims after examiner refused registration, such as In re cases Defenses to infringement1. Abandonment • Express (notice in paper) • Non-use (after 3 yrs presumption of abandonment/ intent not to resume;) • Lack of QC (quality control) - if mark is licensed out w/t QC provisions, this would be “naked” license w/c = abandonment. • Loss of distinctiveness = generic 2. Generic/loss of distinctiveness: • Distinctiveness- mark is distinctive & capable of protection if either (a) inherently distinctive or (b) has acquired distinctiveness thru 2nd Meaning. Licensing A Mark  QC: If you have a party that owns mark, and they license that mark to someone else, they must be aware of quality control (QC). The licensee must maintain QC over the product, or the license is deemed naked, w/c is the same as abandonment. Thus, you must periodically receive samples of the product to make sure the quality is OK. • F.O.M. – Family of Marks (a) Trademarks that distinguish from Goods of Another King-Seely Thermos: RULE: Once the public confuses a product brand w/ the product itself, it has begun to lose its distinctiveness & will slowly fade into the TM graveyard. HELD: Generic. Key question is what public understands when a word is used. If public understands it to mean a particular brand of product = valid TM. BUT IF PUBLICE TAKES THE MARK TO BE A WORD THAT DESCRIBES THE TYPE OF PRODUCT IT REPRESENTSGENERIC & UNENFORCEABLE. This is true no matter what kind of precautions company takes. Became noun!!! Remedy: ∆ can use the word “thermos,” subject to justifications. It must use a lower case “t”; thermos must be preceded by “Aladdin.” Thermos is still a registered TM, but has lost a lot of its distinctiveness. March Madness (1996): a high school team had been using the term since the 1940s. HELD: NCAA can do this; public identify the term w/ NCAA, not w/ high school team. • Doctrine of Laches: Acquiescence, and also the reson there is no SOL. If П acquiesces w/in generally 3 yrs, П is out of luck. Here, school waited too long & can’t sue under this doctrine. (b) Deceptive Matter: 3-part Budge test when trying to register TM (Shapely/Simmons Test): 1) Is the term misdescriptive of character, quality & function, composition or use of the goods? 2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

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COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008
3) If so, is the misdescription likely to materially affect the decision to purchase? **most imp.

If the mark only has the first 2 characteristicsit is ONLY deceptively misdescriptive (the diff btwn untruths that injure consumers by distorting their purchase & those that have no econ. cons.

In re Budge Manufacturing Co. (Lovee Lamb case)- Company wanted to register “Lovee Lamb” seat covers that are synthetic. Holding- Applied 3 part Shapely/Simmons test and found misleading & LOC. Don’t need INTENT to mislead, only LOC. (c) Confusing Similarity to Prior Marks In re: NAD, Inc.- NarkoMed and Narco for med products. (Concurrent Regis Issue) NARCO MEDICAL SERVICES is a regis mark & П wants to register NARKOMED. Got permission from NARCO, who’s actually a competitor. HELD-(1) The more sophisticated the consumer the less dissimilar products must be to be distinct- Sophistication of consumer.TM registration denied only if LOC in products occur. Docs are users here so no LOC. (2) “Firing Line” –let consumers in firing line decide whether there’s any confusion! Concurrent Registration Even if earlier filer (TM holder), 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 case turned out differently, the companies can come to an agreement not to sue. • NOTE: WATCH FOR THESE ISSUES: CDT (Color Depletion Theory, FOM (Family of Marks), BTG (Bridge the Gap), ZOE (Zone of Expansion). (d) Merely Descriptive Application of Sun Oil- Sunoco was the only one with customer blended gas & wanted to register “Custom Blended” mark. HELD- Merely descriptive word can’t be registered w/o successful showing of 2nd Meaning.-Sunoco didn’t meet this threshold even though used the mark exclusively for 12 yrs, extensively adv & studies showed public associated customer blend w/ Sunoco. (e) Primarily Geographically Descriptive In re: Loews - wanted to register “Durango” as name for tobacco, though not from Durango, MX. HELD- Registration denied if name gives false impression as to its place of origin. Peeps can use geographic names as long as not misleading. §2(e)(2) of Lanham Act re: geographically deceptive. (a) TYPES OF MARKS - TM & SM v. Certification Marks & Collective Marks:

Service Mark - SM diff from a TM, § 1127 definitions, a SM is used in connection w/ advertising to promote a product, only difference is that it distinguishes source or origin of services, NOT goods. The dispositive question is if you can buy the service w/out the product. If so, then it’s a service worthy of a SM--separate & good. o Quick 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. [ie for rock bands to use SM, header must read “In Concert” or “Performing 2nite”]. See In re: Advertising.

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not ok. However.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 SERVICEMARK In re: Advertising Marketing & Development . tag on hip pocket as opposed to being on waistband of trousers. Inc. claiming they are not maintaining QC. as long as it meets the standards. sounds and fragrances have previously been able to act as symbols. • Certification Mark. SAG. so rights to color should not be granted. Think of these as a membership button – it’s not necessarily speaking to standards but saying that something belongs to the org. HELD: UL’s licensing of Cert 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. • • Abandonment Midwest Plastic Fabricators v. Any user of a certification mark who is also the owner will have it cancelled (§1064). thus even in light of 2nd meaning.guarantees the quality of the goods. (b) Content of Marks Qualitex Co. HELD. BBB & Dairy Farm Org. Licensee Estoppel. Jacobsen. v. Can bring sanctions. – UL is a cert licensing org that licenses marks for quality of a hairdryer. Biz cards can be accepted as a proper speciment to receive a SM. However. Underwriters Labs. П wants to cancel using UL. Shapes. See Midwest Plastic. though. and functionality will curtail any problems that occur and prevent the anticompetitive consequences of TM for color • • FragranceIn Re ClarkП established that people had come to recognize her as source of the fragrant goods Location on Goodsnot ok. b/c there are infinite colors and some colors will only work for certain products. Since A&M was an advertising company and they were using the mark for their own promotional services. then you deplete the number of colors out there. (Certification and collective federal only). Collective Marks. AFL all collective to indicate one belongs to certain orgs.Licensee is estopped from bringing claims agst the licensor.TM or SM used by group to identify membership to a group or a group’s product or services. Owner of a mark cannot place mark on his/her goodsonly use allowed is oon 3rd party goods. that it meets certain standards (examples (U) (K) symbols for kosher). (not signifying any standards are met).Color can be registered as TM as long as 1) Non-functional & 2) has 2nd Meaning. that has acquired 2d Meaning as the Tab even if no other 27 . b/c there are only a limited number of colors. Thus in adv. Ironing board company wanted to use a Green-Gold board pad as opposed to the normal silver (b/c silver is F) COUNTERARG to Qualitex Rule: CDT. the UL license expired even though they continued to use the mark.A&M came up w/ slogan “Now Generation” and licensed mark to other service companies.Color Depreciation Theory . Once you use a license you cannot take steps to invalidate a license and you are obligated to honor and protect license and licensor.YES. Certification orgs make a lot of $ for providing the license to companies to put these CertMs on their products. Issue: can A&M register this as a SM? RULE: A SM must ID the service not merely the subject of the advertising. and the companies are really testing it. Have to allow licensees to pay and use the mark. (Cts think unlikely. the service must be sufficiently separate from the subject of the advertising. since the square piece of fabric on clothes is generally a label that bears a TM. RULE: Can’t claim abandonment of mark merely b/c you don’t want to pay someone for the license anymore.(this is only a theory!!): Grant someone rights to a color.

after 5 years. v. • NOTE: Sometimes. Blue Bell was held to have infringed the tab (Levi v. the mark is strong and springkling of related uses (think Kodak). Where product markets overlap.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 distinguishing features is OK since Levi had already obtained registration for color tabs. you could lose the claim. Hart Food stores began selling Dawn Donuts in 6 adjacent NY counties and Dawn sought injunction on use of name. out. frozen?????????????????) • Constructive Use (when file “ITU” applicaiton… can’t use ®). Administrative Procedures . you move from Supplemental register to principal register bc a presumption of acquired 2nd M exists. Later. b/c 2nd M could go on forever! • 5 years of use is generally enough for a slogan to become “in use”. C. user b/c they had Fed registration w/c gives them whole country. ok until ®. • §1091-96. Slogans after much resistance it was decided that certain combination of words can be TM. Blue Bell) Family TMsterm applied to a group of TMs owned by one company in which the same syllable or syllables recur. 28 . Here. Sr. out. • NOTE: The use by both of these parties was prio to Lanham Act. which meant there was nothing like constructive notice. then Sr. If both TM. But someone can dispute that. The court recog this and it was part of its reason for allowing the Jr. If expanded. to continue. 2 markets do not overlap so no injunction. Biggest hurdles for a slogan TM is getting past the claim that mark is descriptive.® (Jr. cannot stop import at customs (can stop import if on principal register) Priority • Constructive Notice . Jr and experts and LOC come into play. (Levi Strauss). there is no publication in OG (official gazette). the senior will not win b/c 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. • ® can be used on supplemental as well as principal. • When you use the ® on the supplemental (not when in principal). Rights & Remedies RIGHTS of the Public and LIMITS on TM owner 1.Registrant may enjoin only that concurrent use w/c created LOC in public perception as to origin of products in connection w/ use of products. Geographic Boundaries Dawn Donut (1959-Dawn dist donut mix to parts of NY. • Supplemental Register (minor league) . 15 USC 1114 . HELD. jr user’s use of mark may be enjoined. no constructive notice of use. No expansion likely. but when it happens. There is a reluctance to grant such TM. • • B. Sr.Holder of registered TM may not enjoin another’s use of same name in diff market.for marks lacking 2nd M or inherent distinctiveness really want to be on principal register (“the show”).Jr. Had there been constructive notice. the junior would have had “notice” and probably not been allowed. b/c if u don’t sue and time passes. Lanham Act. Sr may be able to enjoin Jr.“going to the show” §283 • TM has unlimited duration.

where actual not necessary. long before nat’l Burger King. • Criticism: If you need actual harm. most state courts apply the MEAD test. see below) • 3 part test to establish fair use: (established in NKOTB case) 1) there is no alternative but to use the mark 2) the % used is no more than needed. Fair Use .can use as long as accurate and not disparaging (for cts. Court essentially freezes the senior mark. Federal one argues it has right over senior. 2. since actual harm needs to have occurred first. but not sufficient). Furthermore.newspaper set up 900# for survey to do story. use blurring TM’s distinctive character or tarnishing it w/ unsavory association. 2) ∆ adopted its mark after P’s became famous.allowed for fun. 4) Collateral Uses (F. State court agreed w/ national that unless there’s evidence of ZOE (that state BK intends to go nat’l). D. 3) ∆’s mark diluted P’s by blurring it. Actual can only be shown with $$$ damages Utah used the phrase to come to their ski resorts. this test requires that the junior already be established before senior can attempt an injuction. • NOTE: Be sure to understand distinction btwn federal dilution claim and LOC claim. message conveyed is not dispositive. 29 .COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 HYPO: Burger King – there’s 1 in IL. HELD: No TM infringement. Holding .1st Sale Doctrine) • 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. must show: 1) П’s mark was famous (distinctiveness is necessary. not for profit.e. but must ID that they are repackaged) • Dealership/ replacement parts (can say “we fix” VW’s) New Kids on the Block. Furthermore. NKOTB is descriptive of their product & a registrant can’t monopolize use & prevent others from describing a characteristic of their goods. Senior.“Greatest Snow on Earth”. not likelihood. **Ringling Ct says must show ACTUAL INJURY.S. (i. message received is what is key) 2) Editorial/ News 3) Parody/ Satire (amuse not confuse) . Test below! Ringling Bros. Here. no dilution under fed law. • 4 categories of Fair Use under TM: 1) Comparative Advertising. . Ringling Bros brought dilution claim. RULE: A TM holder can’t monopolize the descriptive nature of a product. there might be too much damage by the time you have an actual claim. Fair use doctrine (news). Limitations on Rights of TM owner 1. fair use. It’s impossible to do NKOTB survey w/o using their name. under §43 of Lanham Act HOWEVER. it’s ok. especially when it’s in the “news” context.competitors are free to use descriptive elements of a TM in a non-tm sense.To claim dilution. See above for 3-part test to est. Court prescribes a 20-mile ZOE for fed’l BK. you can’t block federal BK from coming in. As long as newspaper isn’t capitalizing on TK’s name. state-registered BK isn’t happy about this. Dilution. Courts do NOT want to tell fans how to spend their $$$.impairment of TM’s strength caused by use of the mark on an unrelated product. normative fair use. 3) there is no suggestion of sponsorship or endorsement.D.

and this is where you get your domain name. however. § 1116 Injunction (full or partial) . by using hidden words. As unjust enrichment (does NOT require competition) (See Maltina) • BAD FAITH usually need be shown to get ∆ profits. ∆’s profit* (subject to apportionment).don’t have to est. The competitor would use competitor mark to redirect consumer in their favor. Not everyone agrees w/ this case b/c there is a §43(a) concern of false affiliation.primarily an injunction in TM law. Metatag: Competitor could use competitor marks to direct the search engine to their site. b/c otherwise is like blackmail. there should be competition shown) OR 2. • If in bad faith. Presumptively equivalent to profits lost by П and awarded on a compensatory basis (but the burden shifts here to ∆ to show and for it to work. §43(d) .for internet marks “cybersquatter” provision when someone who doesn’t own the rights to a name uses it on the intenet • If the name is adopted in good faith. REMIEDIES . Unclean hands 30 .§43(d) register a famous domain name – and then force the person who it applies to pay you for it. vehicle for challenging domain names and domain name disputes. Damages generally can be measure by: 1. П laches 5. could be subject to suit under this section. availability and adequacy of other remedies 3. role of ∆ effectuating the infringement 4. Cybersquatting -. just LOC (Polaroid test used to est LOC) Injunction should be given only to exstend necessary to prevent harm or unforeseen harm and subject to principles of equity – good faith/bad faith § 1117 (a) Monetary Relief For Пs loss Must show: actual confusion or intentional deception. *∆’s profits: Factors of culpability (bad faith/ intentional deception/ unjust enrichment): 1.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • DOMAIN NAMES ICANN . you can keep it or sell it to the company if they make anb offer. and where you dispute things. degree of certainty ∆ benefited from unlawful conduct 2. Loss of sales/profits caused by infringer use of mark OR 2. it is international. actual confusion. Consequent economic injury to TM owner reputation (dilution Profits earned by ∆ can be treated as: 1. ICANInternet naming committee.intl organization. This is NOT ok unless in good faith.

fraud 2.. Role of ∆ in effectuating infringement 4.Cancel/Restore Mark §1124 – Freeze ImportsOnly works for marks on the principal registry – doesn’t work for supplemental registry Criminal Remedies. П laches 5. ∆ then tried to register. Holder of copyrights has property interest in mark and unauthorized use violates that interest even if no sale diverted. willful/deliberate conduct by ∆ §1117 (c) Counterfeit MarksPenalty is more severe • Greater of 3X Пs damages or ∆’s profits PLUS Esq fees.must see if there was a level of control and monetary benefit for contributory infringement.. Degree of Certainty that ∆ benefited from unlawful use of Пs mark 2. Cawy.П claims ∆s are counterfeiting their mark and desgign on T-shirts which are sold at a flea market. but was told by USPTO there was too much of a LOC – so no TM. however.if truly innocent. malicious intent – by П or ∆ OR 3. Attorney’s Fees  only in exceptional cases – must show: 1. Availability and adequacy of other remedies 3. but couldn’t get enough money. then can get injunction against them but no $ damages. but ∆ went ahead & made product anyway. FACTS: П owned TM on a pruct in Cuba & US and was kicked out of Cuba for political shit & came to US and tried to use it and register it. 31 . HELD: ∆ could not get apportionment b/c it could not assoc its costs w/ the specific product.impt factors!!!!! Hard Rock. There must have been NO indication to ∆ that there was a TM.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Bar on Double RecoveryEither Lost Profits or ∆s Profits Actual Confusion RequiredSubject to notice ® under §1111 (innocent infringer defense . Case teaches us whether or not entitled to damages and what you can get such as lost sales & ∆ profits.destruction of infringing articles. whatever is greater. П had a right to an accting – discovery to get ∆s books & records to see what profits were. is about 2nd liability. SECONDARY LIABILITY. П unclean hands § 1118 -. CSI owned flea markets where shirts were sold. §1119 -.see 18 USC §2320 REMEDIES Maltina v. even if he did not divert sales from the mark holder. but injs must come first – then only if the injunction is insufficient to bring about equity – an accounting will come about to determine $ damages.one who infringes on another’s TM may be held to account for his profits. This case. • See also 18 USC §2320 o First offense for counterfeiting TMs = $2 mil o Repeat offender = ™5 mil + possible prison sentence • Also a statutory option under Lanham Act – as to damages When looking at whether to allow П recovering ∆s profits-Ct will look at other Factors 1. but constructive notice is enough to negate innocent infringer).

a similarly named product may infringe on a TM even if a visual comparison of the labels would tend to reveal no similarity. Polaroid factors for LOC (see Drizzle) 1. RULE: Trade Dress is protected under Lanham Act if inherently distinctive W/O 2d 32 . Here. Similarity of the marks—close similarity not dispositive of LOC. Bridging the Gap—unlikely that Drizzler will move into the upscale women’s coat market 5.whether trade dress of a restaurant may be protected under §43(a) of the Lanham Act. so no $$ dam. Only a factornot necessary. McGregorv. especially when they are shopping for high-end women’s clothing. Did radio test and sound alike. Chicago Pickle . E. how they are advertised. HELDRe: noncompeting products. market. class of customers. or more precisely. names of products are ultimate identifiers. Actual confusion—none demonstrated here. The greater the value of a product the more careful the typical consumer can be expected to be. While visual representations impt. Ct dismissed McG’s infringement action against Drizzle on basis that no LOC existed btwN their noncompeting products. its tendency to ID the goods sold under the mark as emanating from a particular. LOC judged singly. supra. TRADE DRESS – 43(A) ACTION: Federal Unfair Competition Law: Lanham Act sec 43(a): 2 Pesos v. price range) 4.inexpensive golf jacket. No LOC. have to look at other factors as well 3. TM will not occur if no LOC btwn products. TM Infringement. Drizzle.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Willful blindness = ∆ must have actual knowledge under Lanham Act (need to est knowledge for contributory liability). Drizzle. it is certainly proper for the trial judge to infer from the absence of actual confusion that there was also no LOC. (same stores i. not willfully blind. Product proximity/quality—Where products are sold. USDC only found CSI to be negligent. “While П need not prove actual confusion in order to prevail. ∆ 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). Key is whether public will be confused. Strength of mark—Distinctiveness of mark.fashionable women’s raincoat. source (proof of secondary meaning not necessary) 2. not side-by-side. To establish willful blindness: 1) ∆ must have suspected wrongdoing and 2) failed to investigate.Pikle-Rite brought infringement action against Chi-Pickle even though a visual comparison of labels tend to reveal no similarity.e. As shoppers can’t always do side-by-side comparisons. To est vicarious liability. etc.RULE: If no LOC and the products are NOT in competitionNO infringement.” 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 6. McG. Inj relief geographically limited & ct found no actual confusion. Taco Cabana. so no basis for liability. displayed. Ct applied Polaroid factors. although possibly anonymous. Sophistication of buyers—Buyers would know the difference. ∆ Good Faith—no indication of trying to take a free ride 7. To est 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. HELD. Quality of ∆ Product ∆ Product is good for П reputation 8.key question is whether public is likely to be confused btwn products. Pickle-Rite v.

Most courts seem to feel that to get protection you need 2d meaning. 3 year presumption = actual abandonment) • Parody / Satire • Not w/in ZOE/ not likely to BTG • Fair Use (newsworthy / editorial use) • Licensed • Sr. ⇒ Dilution claim – 43(c) ⇒ Cybersquatting . repair shop that repairs Hoover vacuums) • FSD—First Sale Doctrine (once sale is made. expressly abandoned. so the question is whether inherently distinctive w/o 2d meaning suits the threshold. false or misleading statements of fact re: D’s prods/ services or likelihood of/ or actual deception of consumer materiality of deception to purchaser’s decision interstate commerce likelihood of/ actual injury to П 8. • Many scholars and cir courts disagreed. The competitor must bring the claim.. 7. Jr. that of another 5.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 MEANING!!! Taco Cabana (π) operated fast food restaurants in Texas. but they don’t have to) • Unclean hands—misleading someone into believing that you have rights in something you don’t. Discussion of secondary meaning. Both sell same type of food. 6. • No LOC or LOD • Innocent infringer (no reference that this was a ™) • Merely descriptive w/o 2nd meaning • Fraud in registration (false use. claims that trade dress was copied by Δ in Houston w/similar motif. but mere use gives rights. v. generally misrepresentation or misleading someone to gain an advantage. P’s promise to grant D license and then it never actually realizes and D relies on grant to license to its detriment) 33 . etc) • TM misuse • Collateral Use (ex. you want surveys showing 2d meaning to the public.HELD: Not a federally registered trade dress. • Constructive QCCourt said there was QC that existed inherently in the relationship of the 2 parties – 2 bros even though they didn’t talk had same ideas of quality and service.43(d) Defenses for TM Infringement: • Functionality • Generic • Lack of distinctiveness (should never have gotten ®) • Abandonment (lack of QC (naked license). date. if someone wants to resell product. some state ™ law is around 3 years and may be applied by federal cts. can use mark) • Comparative Advertising • SOL—estoppel doctrine of laches and acquiescence (SOL for ™ doesn’t exist under Lanham Act. If you’re going to bring a case like this. using ® when not federally registered. 43(a) Elements for unregistered marks: 4. ⇒ A misled consumer can’t bring a 43(a) action – no standing..

on 10/28/98 sought to move © law w/ the advancements in technology. MOST WORKS ARE FIXED!! • 1909 Act (all works created before 1/1/78) 34 . Subject Matter of ©) UNFIXED WORK (what is it?): Anything live that has not been recorded before or on sheet music. 28 yrs later.as long as one didn’t copy from the other. 4) pantomimes and choreography. However. Notice • Original works of authorship fixed in any tangible medium of expression are protected and include 1) literary works 2) musical works. the Digital Millenium Act. a photograph. 1001-1010 HISTORYC/L © predominant © law until the first fed © law act which was modeled after the Statute of Anne. so after the above date. 5) pictorial. and under the constitution. Primarily Federal Law. & last comprehensive re ision was signed into lawon 10/19/1976. graphic and sculptural work. • • NOTE: Very date and fact sensitive No SR. speeches. like unrecorded speeches that aren’t written or recorded w/authority of speaker giving a speech. 1989largest effect of this being the elimination of the © notice requirement. Pre 1976The Interplay of Fed & C/L © Protectionbegins at moment of work’s creation ending only upon publication w/ the authority of © owner. The law protects original works of authorship. elements of C/L © remained. this was the exclusive protection for unpublished works. JR. 6) motion pics and other audiovisual. conversations. in 5/31/1790. music. b/c works to the province of the state. (Basically. while act was est in 1790. live broadcast & improvised musical compositions). However.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • • Violation of antitrust laws Good faith III. v. then work fell into public domain. © protection took over if proper © notice appeared on ALL publicly distributed copies. such as choreography (not filmed or notated. including accompanying words 3) dramatic works. up until the 1976 revision. After publication. if NO notice. Thus. it is all writing. FORMALITIES REQUIRED FOR PROTECTION: a. though still some state / CL © protection exists for unfixed works. POST 1976eliminated C/L © law for most purposes and made Fed Law attach at first fixation in tangible form. Copyright A. © was almost entirely the province of state C/L. choreography that has not been notated yet. notice is optional. can have two © on nearly identical works I. including any accompanying music. here . 7) sound recordings NOT protected until 1972) and 8) architectural works (see 17 USC §102. Requirements for Protection  17 USC §§101-803. improvised music) Berne Conventionjoined in March 1. fed.

• Proper notice req’d still for works either registered or published btwn 1/1/78 and 3/1/89. pseudonym. o If a work was published w/o proper notice. • Works protected originally under this Act are still subject to this Act. You can get fined if you don’t deposit. • Under this act you get initial protection of 28 years and for more protection. get statutory damages & atty fees Exception is publication and members of Berne Convention countries looking to sue in US) o Must register work w/in 90 days of date of publication or prior to infringement. can only get actual damages and registration is deemed effective upon receipt in © office. invest fed © . BUT should still have it b/c w/o it an infringer can use the innocent infringer defense.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Formalities: © notice. otherwise no option for atty fees or statutory damages. etc earlier of 95 yrs from publication or 120 from creation of work • §407 Mandatory Deposit reqm’t for any works published. o SO 28 + 28 + 19 + 20 is the max if published pre 1/1/78 REQUIREMENTS TO ESTABLISH NOTICE: You need. no state claim. 28 yr clock starts. so you can have u t o 20 different infringements as opposed to one. o If it’s a work that has not been published  register to get © to divest self of state & invest self w/ fed protection. • Registration is needed to sue. On 3/1/89 US joined Berne Convention so had to loosen up on formalities.. however now have ability to cure defective notice for pre 3/1/89 works (see Hasbro case) • 5 year window from publication for registration (after 5 years becomes prima facie evidence that you are the author of the work in claim). initial term of 28 years (needed to register to get extended term) • Publication w/proper notice or registration = divest state. 1976 Act: (Effective 1/1/78) • Notice OPTIONAL for post 3/1/89 for works on or after that date – Works after this date do not REQUIRE © notice.. o Can get an extension of 28 yrs o A © that was still valid as of 1/178 could get another 19 yrs o In 1998  law passed allowing for another 20 yrs. you have to be registered and file the renewal form. it entered public domain and lost © protection. but you won’t lose ur ©. There’s a box applicant can check on 35 .means once you have fed copyright claim. though anything fixed after effective date is automatically ©. As soon as either of these are done.. you are req’d to deposit a copy w/ Library of Congress. • DURATION: o Individual’s Life (last surviving author) + 50 + 20 o Anonymous. The word Copyright or © symbol and year of 1st publication © 2002 Name of author John Kettle All Rights Reserved All Rights reserved • NOTE: Need to have “all rts res” b/c of countries that don’t follow US © rules / Berne Convention) • NOTE: You want to register each song on a CD individually. Registration / Renewal. It doesn’t make sense not to deposit when you register. corp author.

BOTTOM LINE  You don’t have to register to get protection. b/c since yet to be published were swept under the new law and no longer required notice. Publication • Look to §101 of Copyright Act for definition o distribution of copies © and o phonorecords (p) (works where there are sound recordings only. w/ very little leeway. effective March 1. however. 1976 Act (effective 1/1/1978) eased formalities a bit more. by allowing for more generous excuses and errors. so still needed notice. not just accidental ones. Omission of copyright notice Hasbro v. so even if published with proper notice. requiring notice w/ some leniency Post 3/89  need notice in one form or another. Then the Berne Convention wiped notice requ out completely. b/c treated under 1909 Act Post 1978 & pre 3/891976 © Act governs. 36 . Sparkle (1985). Applies to ALL omissions. and would not require © notice. still need to file or will fall into public domain. RULE: Under §405(a)(2). was assigned © on Transformer toys made in Asia by Takara. this work was fixed b/f 3/1/89. Distribution = right to sue! b.. ∆ Sparkle (also US company) had copied toys made in Japan where © formalities are not required. ISSUE whether the designs fell into public domain or whether P could cure the defect of omitted notice in the US. Under 1976 Act. to cure a defect. b/c they would run out of space. (1) have to make reasonable effort to distribute notice in US after defect discovered (2) w/in 5 years of original publication of work and (3) must register it to cure defect. RENEWAL ISSUES Pre 1964 you had to file a FORM RE (renewal form). you could leave unpubloished. b/c need to be registered to sue. created.Omission of © notice may be cured. no visuals. You can pay an extra fee for long time storage but this is no longer a permanent archive. fixed. BUT you must register to sue!! • • The Dates in a NUTshell: 1909 Act pre this act.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 the form Congress oddly enough isn’t required to maintain this work in their archives. • NOTE: Need to cure issue is now mooted for the most part b/c of Berne (need to cure wouldn’t exist past 1994) but anything pre-89 still needs notice. only can get actual damages. The clock only pays attn if you registered and anything that had yet to be published pre 1978 and is published post automatically vests. work falls into public domain w/o notice. POST 1964you did not have to file FORM RE. otherwise no option for atty fees or statutory damages.π is American toy manufacturer. it fell into public domain. HELD . Registration & Deposit: • Registration needed in order to sue (exception is publication and members of Berne Convention countries looking to sue in US) and to get statutory damages (inc atty’s fees). П as copyright holder could cure omission.. but you still should. 1989 NOTICE ISSUES: Pre 1978something was put out w/o notice. have 90 days to register from date of publication. begins to relax requs post 1909 Act. are (p)) • Creation = protection. NOTE: pre-1978 works that were unpublished.

“motion pictures and audiovisual works”. What is not ©? (See §102(b)) • Names. “pictorial. Copies & phonorecords will comprise all of the material objects in w/c copyrightable works are capable of being fixed. graphic and sculptural works”. records. Lists some works that are protected by ©.for books. cannot ©.) • VA Visual Art – 3D. also for movies.if there is authorized embodiment in a copy or phonorecord & if that embodiment is sufficiently permanent or stable to permit work to be perceived. §101.§ 101 + architecture. Paintings. Forms: • PAPerforming Arts (for musical compositions. 17 USC §102(a) = © able works (b) = non-© works What is Copyrightable? (See §102(a)) . b/c this is an audio visual work. “dramatic works”. c in the circle.for audio cassettes. magazines 37 . systems or devices • Blank forms (Blank form Doctrine) • Works consisting entirely of info that is common property w/no orig authorship • Typeface as typeface • Obscene material • Works of authorship by US Government (but govt can be © owners) • If there is only one way. Statutory Subject Matter: To be copyrightable. pantomime and choreographic works).for newspapers. dramatic works. PURELY JUST FOR SOUND.original works of authorship. software codes.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • • Registration deemed effective upon receipt in © office. methods. see also #3 “Originality”) & (2) Fixed in a tangible medium of expression for more than a transitory period of time (ie. must be (1) Original work of authorship (no novelty. but not an individual recipe (that would be protected by ™) • §102(a) . arrangement. you are required to deposit a copy w/the Library of Congress. and “sound recordings”. AS SOON AS VISUAL IS ON SOMETHING. even if primarily a CD w/ an audio visual component—also video games. “musical works”. sculptures. • SAC . DVDs. titles. in addition to ones defined by § 101 (musical works. coordination” can © a recipe book. reproduced or otherwise communicated for a period of more than transitory duration. IT IS PA. slogans (these are protected by ™) • Ideas. mags. or a limited number of ways of expressing idea. pics & drawings) • SRSound Recording . plans. ingenuity or aesthetic merit needed. unless you are the sole owner of the sound and the musical composition—MUST BE SAME AUTHOR • RE Renewal Form • TXTextual Work . and “pantomime and choreographic works” are © as well. 2. etc. • State and county govts can be authors of © work. • §101 defines “literary works”.“selection. §407 deposit requirement—for any works published. cds. • SESeries registrations .

derivatives. Falls into PD (public domain). etc. ISSUE. 75 years protection before falls into PD. RULE: If still valid on/after 10/27/98.whether system is © as well as book (b/f inception of §102(b)). A licensee can maintain right to sell or exploit what has been lawfully made. General Problem§203 is based on the premise that the reversionary provisions of the present section on © renewal should be eliminated. Exclusive Rightsrequirement that transfer be signed and in writing. Anything that is deemed “F” or part of system is not © expression. Non-Exclusive Right need not be in writing. then you get the Sonny Bono bonus! • • • © 1909 to 12/31/21. must file in year 28 itself. then got automatic renewal). gets 56 yrs protection. To give © protection to forms or system would be to give patent protection w/o a showing of novelty. 1 renewal term of 28 years= 56 years of ©ability. HELD. Baker is reproducing a portion of the book’s forms related to the system. b/c it is hard to know a work’s worth until it is exploited.file form RE (except 1964 . but author gets back the right to give permission for future reproductions. 19 Bonus if © still valid on 1/1/78 when new Act effective 20 (Sonny Bono extension if © valid on 10/27/98 . © after 10/27/23 . © after 1/1/22 . & should be substituted w/ a provision safeguarding authors due to the unequal bargaining position of authors. 17 USC §203 TERMINATION (distinguishes btwn date termination is effective and date notice is served) 38 .this is b/f Sup Ct now) 95 years max RULE: Anything before 1/1/22.a © protects only the author’s unique explanation but does not bar others from using the system or forms incidental to such use. RECAPTURE versus TERMINATION OF GRANTS/LICENSES Any grant/license that gives a © can be terminated and you can get it back. RULE: Anything after 12/31/21 gets the bonus.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • GRPGroup Registration newspapers ***If sole author of song and sound recording.12/31/77 (56 years protection + 19 year bonus) and Sonny Bono 20 years = 95 year total.initial term of 28 years.10/26/23 (56 year protection gets you to 1/1/78) and then get 19 year bonus. © based on originality & protects explanation not system. This is even if you give an indefinite grant or a 100 year grant. can do SR form for both. Selden(1979) – П Selden © a book explaining and exhibiting a book-keeping system (T accts). BLANK FORM IS NOT ©able!!-->Blank Form Doctrine RULE: Forms are “F” and thus not protecible How Long for Protection of Copyright? 1909 Act: 28 Initial term 28 Renewal . Filing fee is $30 What is copyrightable? Baker v.12/8/77.

SUMMARY under §203: • Entered into on or after 1/1/78 WITH NO PUBLICATION RIGHTS o Window starts 35 yrs after the grant was given o 35 yrs after the grant the 5 yr window opens up and you can terminate – want to select a date at the earliest point possible in the window o Must give at least 2 yrs prior noticeo f the termination date o Cannot give notice more than 10 yrs prior to termination date o BUT it makes more sense to give the min 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 o Termination window opens the earlier of 35 yrs after publication OR 40 yrs after grant o Under §203 – the earliest this window will open up is 2013 o DERIVATIVE WORKS may continue after termination according to initial K but NO NEW derivative work may be prepared (see §203 (b) (1) SUMMARY under §304: RECAPTURE For all licenses & grants  based upon recapture date of when you have to extend © o The 19 yr & 20 yr extensions that were added to older ©s after the 1976 act – are recapture opps  19 yr bonus is for any © that was valid on 1/1/78  Any © made after 1922 and before 1/1/78 – can fit into this category o At the end of the first 56 year period. etc. a majority is required. any works from 1945still a window of opportunity  1945 + 56 years = 2001 – so the window opened in 2001 and closes in 2006 so as of 2004. AND 2) the notice should be served not less than 2 or more than 10 yrs before that date chosen as effective date AND 3) copy of notice shall be recorded in © office before the effective date of termination. • (4) Termination needs ADVANCE NOTICE in writing which should include 1) the effective date which should fall in 5 yr period. we can still give 2 yrs notice o For works created 1/1/78  Corporation: 75 years after publication 39 . • (3) Termination may be effected at any time during a 5 yr period beginning for 1) NO PUBLICATION RIGHTS at the end of 35 yrs from the date of execution of the grant. the window opens up again 19 yrs later – and then again 20 yrs after that – so the recapture window opens o So right now. or at the end of 40 yrs from the date of execution. • (2) Lists who has a right to terminate if author is dead.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 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. and you can recapture  BUT if you don’t do this. OR 2) PUBLICATION RIGHTS period begins at the end of 35 yrs from the date of publication of the work under the grant. 75 year period and 95 year period – the 5 year recapture window opens up  You must do the same things as above – 2 yrs notice. whichever happens first.

COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008  o   Individual: Life + 50 years after death The important date is when the license was entered into – For §203 – the license/grant date determines the dates For §304 – it is when the recapture window opens up – based on when the © was entered into.good faith ∆ to infringement. Summary of Terms and Concerns for Particular Types of Work 1. Works not under statutory © before 1978 (unpubl)enjoy same rights as if created after 1/1/78 and will not expire before 2002. rule does NOT apply.If author dies in 1st 28 years. so you look for the earlier of the two. This is a 5 year recapture window (starting at year at beginning of year 76 ending last day of year 80). • 1st time you can recapture is after 56th year. Works created before 1/1/78 1. • 2nd time you can recapture is after the 75th year. copyright automatically goes back to estate and no notice is req’d. o If renewal file before death. before renewal is filed. see §303 1909 28 + 28 (requ refilling appropriately) + 19 (automatic renewal of a valid © + 20 (another automatic renewal) 1976 LIFE + 50 + 20 (individuals) or 100 ) 20 (corps. pseudonyms. Must give notice of no less than 2 yrs & no more than 10 yrs from the day you want to recapture © work. presumption created that author has been dead for at least 70 yrs . More than 1 author  Where 2 or more authors prepare a joint work. (see § 302 (e)) 4.. Author unknown (any work including WMFH) or corpapproximate author’s life & add 70 years (so either 95 from first publication or 120 from yr of creationwhichever expires first (see §302(c)) 3. the © will last  life of last surviving + 70 (see §302(b)) 2. o What if author dies during first 28 yrs under the 56 year period under the 1909 law?  Any and all grants end automatically if person dies w/in 1st 28 yrs – and the license ends (Like Rear Window. may obtain report and if nothing on life or death in last 70 yrs. anonymous Berne? 40 . effectively creating a total of 95 yrs from publication (§304(a)) 2) for works already in their renewal term  automatic extension of 95 yrs from date © secured (§304(b)) 5. • ABEND RULE (Rear Window case) . so can buy rights from trustee if renewal did not occur)  It is automatic that the rights come back to the estate  This is only for ©s prior to 1/1/78 – under the 1909 Act – only for works that were registered or published under the old act. This is a 5 year recapture window (starting at beginning of year 57 ending last day of year 61).. how does one determine should report whether author dead or alive b/c prospective user. © in their first term on 1/1/78 retains previous 28 yr © term. o Applies ONLY when author dies w/in first 28 yrs OR prior to renewal file. in other words year 57 (after the 1st renewal). or year 76. after either 95 yrs from publication or 120 yrs from creation. & allows renewal but extends renewal period to 67 yrs. Must give notice of no less than 2 years and no more than 10 years from the day you want to recapture the © work. but if published will extend to 12/31/47.benefit intended by Congress for author / author’s family. ***Extensions held by corporations or publishers are subject to recapture by author or author’s estate.

1976 Act (effective 1/1/78): • If an individual.g. if you publish more than 25 years after work was created.gives uses for the public that are free of charge. 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. • 95 + 20 if a corporation. Unlawful Content: If the content of the writing/work is unlawful i. • PUBLIC ACCESS PROVISIONS: in © Act. always get the 95 from publication. it is protectable. kiddie porn) then it will not be ©able US Govt Works: anything authored by the US Govt (fed only) is not ©able. then you would get the 120. but on the characteristics of the characters themselves (e. • Corp / commissioned for work for hire / anonymous or pseudonym  75 + (20 SB) = 95 yrs from publication OR 100 + (20 SB) = 120 yrs from creation ****Both are first to arrive. you have 35 yrs to terminate the distribution grant. Starts 35 years after 1/1/78. RECAPTURE • 5-year window starts in the 51st year after the author’s death. DOCTRINES: • • • • • Blank Form Doctrine: “Fill-in-the-blank” forms are often not ©. for any grants entered after 1/1/78 (effective date of 1976 Act). • If granted publication rights. can terminate on the earlier of 35 years after publication or 40 years after the grant. Example: on 1/1/78 50 year grant given for rights to film. LOGOS on the forms might be. you get Life + 50 (+ 20 Sonny Bono 10/27/98). Characters: to what degree are characters ©able? To the degree that “the story is about them” such that they’ve stopped being stock characters. 5-year recapture window starts 35 years after the grant was given. BUT the govt can own copyrights – if they are authored by someone else and then sold to the govt. Not dependent on the actors. Example: Grant entered into 1980. James Bond) but it’s often hard to distinguish the actor from the actor.e. you get a 45-year bonus tacked on. RULE: If grant is only for reproduction rights..COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • SEE BELOW Unregistered & Unpublished Works • All unregistered and unpublished works created under the 1909 Act are guaranteed protection until the year 2003 as they are given life + 70 if a person. otherwise. If you publish before 2003. • Need 2-10 year notice. then 2015 is when clock starts ticking. essentially life + 70. Termination of Post 1/1/78 Grants of Copyright §106 Bundle of Rights • Need to have right of distribution in order to have publication rights.. • If no grant of publication rights. 41 .

Just b/c you have a © notice doesn’t mean its ©able Cases that follow Feist said not all directories are in the public domain.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 3. Coordination) Feist Publications v. Not precluded from © just b/c they served such a purpose b/c there was still expression that was capable of protection. SAC: Prior to Feist. ADS ARE COPYRIGHTABLE! • Practical Note: Always carry a separate © notice. someone can come along and take advantage of that effort. and no one can © facts. ISSUE.Ads were deemed to have a functional purpose. • • So. SOB: (Selection Arrangement Coordination of facts / material v. the © inside the cover will protect everything between the front and back cover. This was deemed to be enough mental thought. even if not creative energy.have to establish an original work of authorship and a modicum of creativity to get ©. you were protected under this doctrine.once the work is out there. • SAC .not enough to be creative/ original. SAC (Selection. RULE: Just b/c something is “F” DOES NOT mean there are not original and © components. Sweat Of the Brow) . but the person who spent all this time putting together the white pages does not have the same protectable right. if you have a publication. ***Could have © protection for a phone book or directory as long as there is some creativity in the SAC. Sometimes people will put in fake info to make sure that they will know if someone copies. SAC v.SOB no longer rule… need original work of authorship. Rural Territory . a newspaper could be © protected b/c of SAC. FEIST eliminated SOB Doctrine – New Rule focuses on SAC—Must show some creativity to get © protection. b/c many wanted to hang onto SOB concept. This is not an original work of authorship b/c there was no creativity here in the compilation of the facts. if an author put a lot of work into something. Also. HELD. b/c under the rule.whether an advertisement could be deemed an original work of authorship to get © protection. the mere gathering itself entitles no ©. Eliminated sweat of the brow.Feist asked all phone companies in area if they could use the listings in other phone books & entered into agreements w/all but Rural.SOB is no longer the rule.need to be original/ creative to be ©able. must be creatively compiled.Lithographs made to advertise a circus copied. Donaldson .. so the person who tried to copy was deemed an infringer. • 42 . SOB v. 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. but not the facts themselves. The case was directory of Chinese restaurant in NY & the list was only ones that the author deemed would still be in biz 5 yrs from date of publication.. Originality Original authorship is a work that is fixed in a tangible medium of expression for more than a transitory period of time. Arrangement. someone who scribbles for 2 secs is protected. • SOB (old rule) . if they’re facts.SAC). SAC: With research. and not just an alphabetical listing of facts.. Research v. Bleistein v..

it is sufficient even if signed after. but if its becoming part of collection. you are only the owner automatically if ALSO the author. principles of © law • that the source of the © ownership is the author of the work AND • in a case of joint work.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 B. Employer considered author and owner of copyright unless another agreement. • TEST for w/in scope of employment—if what you are paying the independent K’er for will become part of larger work. Ownership Authorship v. Ownership .first owner of a work can transfer ownership. • Creator/author has to get middle person to exploit the work and if you’re dealing w/ someone and they say they’re the owner.employees that create © works (1) w/in the scope of their employment. 43 . 17 USC §201 (a) basica and well est. individual photo not included. • Can commission another to do work for you. 4) as a supplementary work. then it is). unless intestate. 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 intial owner of the © unless otherwise agreed. as long as the agreement is signed by both parties and the intent was present at the start. then it will probably fit into one of the §101 categories (ex. 5) as a compilation 6) instructional text. 2) as part of a motion picture or other audiovisual work. It must be an express transfer in writing. • What happens when writing is signed after the work is started (is there intent)? Doesn’t matter. 3) as a transalation. 7) a test. u need to see documentation. 17 USC §101 Joint” defined”authors who collaborate w/ each other or prepare contribution w/ the knowledge and intention that it would be merged w/ the contributions of other authors as “inseparable or interdependent parts of a unitary whole” (to be distinguished from “collective works” in which the work is separate and independent) “Work Made for Hire”1) Work prepared by an employee w/in the scope of his or her employment or a 2) 1) work ordered or commissioned for use as a contribution to a collective work. ALL IF AGREED IN WRITING WMFH (Work Made For Hire) • Can get ownership thru WMFH. or a work specially ordered or commissioned for use (9 categories in §101 © Act) & (2) need INTENT that it was WMFH (has to be in writing and signed by both parties). and it can be transferred orally but only for nonexclusive licenses and can’t be on the phone. • WMFH definition . 8) answer material for a test or 9) an atlas.

Also. π contributed 98% of the work). so put it in writing) & o (2) each contribution must be separately © able (“Copyrightable Test”) .here there was not enough actual control to make R an employee under C/L agency theory. *If not clear as to intent. Assignment of © . when she was writing them. Also. П claims she is the sole author. w/c was not the case here (CCNV contributed the base . RULE: To be a WMFH. o Author is the first owner of a work. she had various interactions w/ the actors and she would get suggestions. R said no b/c he is the © owner and therefore can prevent them from taking it on tour. Not a WMFH b/c R was an independent K’er and since this sculpture doesn’t satisfy the requirements of §101(2). signed agreement stating WMFH AND must fit w/in 9 categories in §101. all rights of © are hereby transferred” Better position is to be the author. CCNV said that this was a work created by an employee w/in scope of his employment. must either be 1) Employee w/in scope of employement OR 2) independent K. (Sculpture not in one of 9 categories). • Co-Authorship Issues: • Majority rule— To be joint authors. w/ intent. courts will look to who contributed a majority of the work (here.“to the extent that the work doesn’t qualify as a WMFH. there can be an exclusive licensee.Erickson v. HOWEVER. The theater company was claiming that they were joint authors and you can’t infringe ur own work. it can be sold or donated. if contributor w/ majority of % says intent.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • • • • Can use a “catchall phrase” in an agreement . CCNV wanted to take sculpture on tour. R was given money for his supplies but his services were free. 1. but must have an express transfer (in writing). courts are more likely to agree b/c that’s the person who should be arguing against intent.Both parties contesting ownership of © of sculpture that CCNV asked Reid to create for them (no written agreement). not the owner. Court looks at 2 tests—de minimis standard & copyrightability test & adopts the ©ability test. so R owns the ©. Works for Hire (EXCEPTION to §201(a)) & Joint Works (Co-Authorship) Community for Creative Non-Violence v. Best way to establish intent is a written collaboration agreement ( none here).Owner of a work doesn’t have to be an author. Trinity – Woman started Theater Company and she claims she wrote 3 plays. He added add’l steel grate and pedestal to work. She’s seeking to enjoin theatre company from performing the 3 plays and using 2 videotapes to w/c she owned the ©. “Employee” means wherein one party performs labor for another under circumstances in w/c that other exerts substantial control over the work environment on the laborer.Ct held this to be “F”. Recapture ownership--Authors who sell ownership can get it back despite what is in the K at a certain point in time. NOTE: Parties reached agreement after case and ∆ was author w/ ltd rights to tour.statute requires that there be intent in order to have a joint work. 44 . HELD . CCNV tried to argue coauthorship but none here b/c no intent by R to be co-authors and each part must be independently © able. Joint Works & Majority Rule . must be o (1) Intent (btwn BOTH. HELD. not an original work of authorship). The 2 contributions weren’t ©able by themselves. as well as the manner of performance. this is not a WMFH. o POLICYreduces suits for co-authorship • Minority rule – intent & final work © able (“De Minimis” Standard) ***(Merely putting money behind a project is not enough to be a co-author) POLICYallows middle man/$ man to be deemed joint author so it’s argued society is more enriched by this arrangement.Goldstein’s test. Reid (1989).

Transfer & Term Transfer: § 201 / § 204 • If not an author. motion pic version.  Transformative Reinterpretation: taking an original work.“any form in w/c a work may be recast.§106 Bundle of Rights 1. transformed.§201(c) NYT Company v. the ind articles come up on database w/out context of original newspaper.Case concerns rights of freelance authors and a presumptive privilege of their publishers (§201(c)). the last to die is the measuring stick. §101. fictionalization. abridgement. Derivative (can control who makes works derived from original. o In a derivative work. but its better off in case the author attempts to make subsequent transfers Transfer . so someone’s life is critical now. or adapted. articles were put into databases w/o authors’ consent. NYT can only reproduce revision. Rights & Remedies 1. DISSENTNo reason collective works standing along can’t be viewed as revision and not be seen as © issue. and architectural o Performance is public when: 45 . 2. Reproductions (can control who makes copies) 2. not to sublease w/out permission. Thus the Times has right to print and distribute under 201(c). abridgement. Since the database is not “reproducing” as part of original or revision. motion picture version.) o A work based upon a preexisting work such as a translation. condensation. BUT if work is WMFH. so newspaper would have had to include this in a K in order to sell. new material added may be © protected. the underlying work is still protected and cannot be used. then it may be considered a separate work that is protectable. The authors’ works were not WMFH b/c the authors not employees but freelancers and no K or intent to be employees. Distribution 4. o If there is a significant amt of original work. dramatization. Statutory Rights. structural. BUT new act for individuals is LIFE + 70. the owner of a © has the exclusive rights to do and to authorize any of the following: a. Rights • Subject to the Limitations §§ 107-122 (Limitations on §106). the publisher’s ©’s do not supersede the authors’ ©’s—AUTHORS WIN. but w/publisher’s. graphic. Allegations of © infringement b/c articles were included in databases not w/in the privilege of reproduction and distribution under §201(c). can get ownership thru written transfer. it doesn’t deal with life. • Not required to record ownership. Even though Times sold all articles. or any other form in which a work may be recast. C. and changing it in a new way that no one else has done. not ind articles in their ind capacities. condensation.Separate © in Collective work/ SAC from the © of each individual article. fictionaliziation.. Authors ©ed their own articles and the Times ©ed the compilation. musical arrangement. To be encouraged 3.. Public performance o Excludes pictorial. HELD. Tasani . And in GROUP WORKS.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • Joint Works can help expand © Protection: The old term for © protection is 95 yrs. transformed or adapted”.

Need permission from the owner o Has the right to reproduce. DERIVATIVE WORK. HELD – Under POS.. b/c didn’t do anything and is comparable to reframing a pic.limitation on what © owner can do. RULE: Mounting pics on Tiles is NOT derivative according to 7th Cir. etc.This does not allow you to rent. Not an art reproduction.Lee’s note cards mounted on tiles in bathroom. works not recast. FSD allows vendee to resell w/out permission. This was not okay© infringement b/c 46 . • Music . also exhibited videos to public w/out authorization (in video booths).1988) . they must pay royalties to the record company. Alb commercially engaged in transferring prints from book onto ceramic tile. otherwise museums will be accused of unauthorized derivative works) VIDEO EXHIBITION. § 109 F. Art Company (7th Circ 1997).Lee v.the station has to get a license from a rights society to play music on air). comes from Internet) o Applies to sound recordings of record company for the eactual fixation of music to a tangible form o Given to the record owner for the actual fixation of the music in record form. HELD – Can’t transfer ©ed work onto other surfaces w/out authorization.Can make an archival copy for personal use. The right of sale now goes to the person who bought it from © owner. • Computer software ..D. Also. DERIVATIVE WORK. RULE: Derivative is defined broadly and FSD will not protect u from using bought work derivatively.Mirage © owners of prints.Columbia Pix v.S.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008   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.Mirage Editions v. adapted or transformed. to distribute to a certain extent. Redd Horne . Once sale of © is made. note cards are not works of visual art under §106A. HELD – 7th Cir found that these were NOT derivative works and disagreed w/ 9th Cir in Mirage (not original works of authorship). Problem is not the rental. but NOT public performance o EXCEPTION: If a web-site plays the music on the Internet. Became original works of authorship? They were protected derivative works. (§106). (used switch pix frame analogyif you can remount pics in framesit’s not a derivative work. but can’t rent or lease software (same as phonorecords) • Generally allows you to make a copy for private home use. cannot show individual images non-sequentially o Public is the same definition as under public performance 6. lease or loan phonorecords (music industry lobbied Congress for this regulation). but the public performance. a video rental outlet proprietor. (First Sale Doctrine) . but you can rent & loan movies.Redd. 5. Digital audio transmission of (p) phonorecords (new right. but here they were allowing someone to pick a movie and go into a private booth. no longer can the © owner control the sale of the item once is it initially sold. distribute. §101 defines derivative work broadly. Public display o In collective works. but still no right to public performance (Example of radio. not all of the §106 rights apply anymore. regardless of whether the public receives it at the same or different times and places. Albuquerque (9th Circ. FSD ∆ doesn’t work either. you can display what you are selling. RULE: Video exhibition on video store considered public perf which is NOT a right given under FSD.

Profit v. Facttaking of fact is generally ok 3. ∆ did have knowledge that the vendors were selling bootleg items. Nature of the π Work .(Does Δ work replace need for π work??? • Transformative Reinterpretation . motion picture version. but now movie industry co-owns for the most part & rental stores pay for more. RULE: you can be secondarily liable even w/o selling items yourself.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 the venue was deemed public. ie. • Landlords are deemed not to have knowledge of what goes on but if they benefit other than mere payment of rent. Copyright owner cant control this but has control over a derivative work. abridgment. unauthorized public exhibition. and that ∆ was benefiting from the rental of the space. so why could Acuff say no? B/c 2 Live Crew viewed it as derivative. Purpose / Character of Use . cover not considered derivatives. SESAC b.allows people to transform © works. likely deemed contributory infringer. taking an existing work and giving it an entirely new meaning for the benefit of society. §106 bars. (p).Must show (1) Control (2) Direct Financial ($) Benefit. QualitativeDid ∆ take the heart of the Пs work? 4. Amount Taken / Used . • Who Collects for Public Perf? Royalties for © NOT. Research. public exhibition rights. fictionalization. Need authorization to show publicly. Factors to determine FU: 1.© and ™ enforcement action against flea market operators (not actual sellers. Also. • Courts have deemed hotel rooms equivalent to the home.Fiction v. & (3) master/servant rel • Contributory .  SOL is 3 yrs—clock starts when infringement occurs. News Reporting. Scholarship. but owner of site who rent to vendors). Not derivative work b/c if meets FU prongs then transformative reinterpretation. Blockbuster doesn’t have special rights.Quantitative v. §107 Fair Use – Work must be used for Criticism. Effect on Potential or Actual Market Value of π Work . or give away what you bought. in case of motion pix & other audiovisual works. C. BMI.  Satireuses work to comment on something else in society  Parodymakes fun of original  © can not say NO if it’s a cover. but the vendors were doing so openly and ∆ refused to help w/ police investigation. Comment.a copyrightable creation that is based on pre-existing product such as a translation. Non-ProfitIs it transformative 2. w/exception of phone records & comp software. Discussion of the level of control ∆ had over the vendors’ actions. Teaching. • Under FSD. Secondary Liability • Vicarious . FSD defense not apply as all other §106 rights reserved. so there is no problem w/public performance when videos are shown in rooms. not when discovered (unless intentional concealment)-when it is known or should’ve been known.Must show (1) Knowledge AND (2) Provide Incentive Means (Labor Materials) Fonovisa v. original loses rights as to how a product is dist after it’s bought. so you can rent. 47 . Everyone was liable. sell. if the HOTEL transmits it to ur room. even though open to the public. collected by ACSAP. that’s another story. Cherry Auction . HOWEVER. musical arrangement. VERSUS • Derivative work . THEN look at the various factors from Harper & Row Publishers (affirmative defense).

would have automatic renewal b/c this is 1964. & all songs 64 & after don’t have to be renewed b/c automatic). RULE: Parody is ok under FU & may be considered social commentary..when it is known or should’ve been known • § 107 analysis—this is parody / satire. • SOL is 3 years . After this case..Harper had © to memoirs and licensed them to Time. “Oh Pretty Woman” is FU Roy Orbinson assigned rights to Acuff—Rose. • Parody is not listed in §107. not when you find out about it (unless intentional concealment).. and no effect on potential market. even if for profit and of commercial nature. & S.S. • 1st Serial Rights: exclusive right to license prepublication excerpts Public Access Provisions §107 Fair Use §109 FSD §110 P. • Ct said copying not excessive just b/c it’s aimed at the heart of the work no more lyrics taken than necessary. Re: effect of competition. (point of sale exemption and single receiver exemption) Compulsory Licensing §111 Secondary transmission (when a TV signal is sent further than it would normally go by a second transmission).O. HELD: Publication of portions of a work soon to be published is not a fair use. satire would be a type of social commentary. FU will not be one of economic competition w/ © holder. Congress said use of unpublished work may be FU. max duration of © under that act is 95 years (so this could be protected 1964 + 95 = 2059. Generally. so form RE doesn’t have to be filed). C/L FU – don’t have to get permission if in a situation where a reasonable © holder would in fact grant permission. Fair Use: Harper & Row Publishers v. it greatly lessens mkt value of ©ed work.clock starts when infringement occurs. *HOWEVER. Acuff Rose MusicREMANDED ISSUE—whether 2 Live Crew’s commercial parody of Roy Orbison’s song. ∆ used anyway and claimed FU ∆. so fits into comment or criticism • Most important factor—does this parody replace the need for the original?? Ct says no. • This would come under the 1909 Act. Prior publication of work awaiting publication not FU.. claiming parody b/c of commentary. 48 . Nation got a copy and scooped story and put it out first.. PARODY MUST BE CLEAR & REASONABLY PERCEIVED.#1 and #4 dispositive. 2 Live Crew sought perm to use the songs and was denied (song comes under 1909 since written in 1964. Used 4 factor test . and no evidence of harm to rap market either. as long as transformative.R. It is not reasonable to expect © holder to allow another to scoop it by publishing his material ahead of time. but this could be categorized as a form of social criticism. §§114 & 115 Phonorecords** §107 (see above) Fair Use Campbell v.E. Nation Enterprises . • SC: Held that parody’s commercial character is only 1 element to be weighed in FU test • Added to law as to applicability of FU—formerly it didn’t apply if someone was using something to make $.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 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.

how often music is played. Bars. SESAC does NOT cover it. Fair Use passes on the federal level to regulate how people go in these hotels. Sync Rights--Rights to sync visual images w/ sound. 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. monitor or projector no larger than 55 inch diagonal & no more than 1 per room. 1 from record company & 1 from music publisher. They felt extorted. §118 does the same for certain uses by public broadcasters. school. §119: subject cable & satellite retransmissions of ©ed programming to statutory license in prescribed circs. §110 Single Receiver Exception: Have to get a license to play music in a store unless u r playing back free radio or free TV. NEED 2 LICENSES. McGovern’s fee is approx $1000/yr.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • Transformative reinterpretation . where public performances of music are performed. Available once the © owner put out or let someone put out a phonorecord. 3. Certain amt of speakers allowed for free recorded and if exceed.e. if you are trying to demonstrate equipment or sell music.g. 17 USC §115 (Mechanical Royalties/ license fees) (The Rule for Cover Songs) 49 . pre-recorded music. 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 publicy perform their songs. Compulsory Licenses--Same as mechanical license. If bars/ restaurants feel the license fee is unreasonable. independent negotiate w/ every songwriter in th box b. §116: Juke Boxes—There’s a license you get for (p) in a jukebox. If the store has over 2000 square feet. i. • For Stores-Biz that play music need license. SESAC. 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. and accommodation of the room. 6 speakers max and 4 videos max. it can have a total of 6 speakers but no more than 4 in any one room. Such sync requires that owner of musical composition grant user sync license for w/c negotiated fee is paid. Live/pre-recorded fees diff/costs more. TV no more than max of 4 video devices e. 2. d. §122: Limits on §119 4. but amount of speakers permitted has recently been increased. BMI. • For Bars/Restaurants 3750 square feet up to 6 speakers no more than 4 monitors per room (fully operational sound + video). Grand Rights: when music is used in play & ASCAP. Store under 2000 square feet have a single receiver exemption like one found in one’s home. Expansion of SRE for bars & Restaurants • ASCAP.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 TYPES of Licenses & Rights: 1. §118 Public Broadcast c. If you are a store. (Society of European stage authors & composers) authorized by © Act to collect license fees from bars. • Clubs are granted licenses live v. Other way is POS. BMI. a.

Some © holders said that they didn’t mind that people were doing this. but who do u sue? Go after the source that provided the means for the infringement. • Digital Millennium © Act—Napster claimed they were not saved by AHRA b/c they were only for copying existing copies. 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.. so the fee is split btwn © owner & phonorecord. and only have to pay for unreturned copies • This is too much work. said contributory © infringement. 9th Cir. non-infringing uses of the product. Fair Use: protects productive uses. though library is not. Sup Ct reverses. HELD: Selling copying equipment is allowed as long as there are good non-infringing uses of the product.Ct says that Sony is not in a position to control use of Betamax by customers. Universal Studios . Napster is infringement. Found no precedent for imposing vicarious liability and no contributory liability.if the song is under 5 minutes. would have to round it up to 7 min) • Don’t need permission under §115 to do a cover of a © song (that first came out on a phonorecord) as long as you let the © owner know that you’re making the cover and you agree to pay the statutory royalties: • Requirement of a monthly accounting.65¢ per min 2006-2008 9. RULE: Unlicensed use is NOT infringement unless it conflicts w/ one of the exclusive rights and after this case.5¢ or 1. Statute requires monthly accounting based upon number of units and once a year CPA audit: GREATER OF: 2000-2002 7.Time Shifting Sony v. • NOTE: subscription TV does not fall under this rule. that selling copying equipment is OK as long as there are good.55¢ per min 2004-2006 8.. people just pay 75% annually ***If a song first came out in a movie or TV show (not CD or tape) NO COMPUSORY LICENSING.55¢ or 1.0¢ or 1. needs an annual CPA audit. will use the first number.45¢ per minute 2002-2004 8. but a royalty is imposed on equip manus and blank CDs.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). Ct came up w/concept of “time-shifting” . 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. but Universal Studios and Walt Disney objected...people were taping TV programs on Sony’s Betamax and watching them later. not consumptive uses d. Exclusive Rights & New Technologies. There’s a concern that the ISP will all be contributory infringers for the unlawful activity BUT there’s a 50 . will have to bargain w/ © holder & make a deal. Phonorecords may be purchased for personal private use.75¢ per min Quick test .1¢ or 1.usually. • AHRA. etc. as this case didn’t privilege those actions. taping for later viewing (timeshifting) is okay. I: whether the sale of Betamax to public violates §106 rights of Universal. Found that there was no evidence of decreased TV viewing b/c of Betamax use.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Once a song comes out in phono record form any other group can come along as a cover as long as they notify the © of the owner. PH: Dist ct said no relief. • Addressed the issue of what you were allowed to do in the case of recording music from CDs tapes.Audio Home Recording Act – allows copies of purchased CD’s for personal use.

R. like cd or video stores. then can have as many as you want) (up to 55’ diagonal) in bars or restaurants according to negotiated settlement about what fed law said about this.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008  Safe Harbor Provision for ISP under DMCAthey’re not deemed contributory infringers AS LONG AS they notify the © holder of who the infringer is. you don’t have to get license from ASCAP.if you have a stereo system of the type normally found in one’s home. and then they can play all the songs in the repertoire of whatever licensor you get.if you are playing CDs or tapes/ videos for the purpose of selling them. Computer programs/Software programs • ©able b/c there are ©able elements • Code is literary work under §102. – Single Receiver Exemption §110. • Need a separate license to rebroadcast cable TV. and you play free radio or TV for customers in a store. and that code is circumvented (overridden/worked around.E. To Prove Infringement – • ownership • SUBSTANTIAL SIMILARITY b/w ∆ and П’s work. you would need a license for this bc it’s a retransmission of the original radio program. 734. • If you put a radio station on a phone line when on hold. SESAC • © owner has to choose 1 of 3.. • Can have up to 6 speakers (no more than 4 per room) and can have no more than 1 tv per room (fully operational= sound + picture. BMI. • Source Code is preferred to be registered over Object Code. ∆ can argue it was independently created. They collect royalties and license out the public performances of songs. SESAC (but not if you play cds or tapes) only what is free to public. It’s being argued against b/c of book analogy on p. • Radio stations get blanket licenses for a year. (Best to get license from all 3) • Can get a single event license for concert from 1 of 3 and then can play any song in their rep. if no sound. • P.S. Also able to mandate disclosure of names. ASCAP. • What must be substantially similar is the protectable expression.(Point of Sale exemption) . you are allowed to do this w/o a license. but being argued for privacy concerns. • Access (can infer if STRIKING SIMILARITY exists) – otherwise. • Stores that have music playing get a blanket license for the whole year. WIPO – (World Intellectual Property Organization) an important force behind the DMCA. o Court can infer access based on similarity of both works.   Anti-circumvention Law—if someone encodes their signal to prevent others from being able to use it. part of public access. BMI. federal law is violated (even if the material is public domain). Literal Components: These are ©able expressions—use FORM TX to register o Source Code—programmer instructions to comp 51 .O. • S.

o ∆ does want AFC test. RULE: If 52 . Abstraction—start w/ program that’s being infringed and break it down into a flow chart and filter out non-protectable AND 2. and may assign ct costs to π Sega v Accolade (1992) ∆ makes cartridges. AFC analysis: Abstraction Filtration Component 3 part test: 1. HELD: 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. structure & org of program including screen outputs—“look and feel”—need to get beyond look and feel and use AFC analysis. Universal Studios v. On the © level. the less protectable it is. Maybe just $200 judgment. However. there were 4 args made by the ∆: Holding: allowed them to make copies but SEGA keeps © in the code. Component-Compare Computer Associates v. b/c what might be left may be just a di minimis taking.) The more abstract that part is. so whatever negative result comes from that is your fault. (to separate idea from expression and see how much expression was taken. they would not qualify for compulsory license. Corley Studios put in protective measures – to avoid copying of DVD’s. and they wanted to make for Sega. (you can have an implied license but not an implied exclusive license). Those are not multiple infringements. People should be able to pull out free stuff and thus you should allow for a disassembly of the mark. if that is the ONLY way to have the game be compatible. Altai ∆ created a code based off of π idea and tried to expunge all the similar material? Issue. Nonliteral components—can be closer to idea than ©able expression Sequence. They had no license. and 2) ™ claim. AFC is method of getting rid of “F” code (ideas and concepts) is there anything else that is protectable and ©able? ∆s program was not substantially similar to portions of π program and also that π TS misappropriation claim was preempted by fed © act. method of getting rid of functional code and seeing if there is anything left that is a literary work.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 o Object Code—code that runs hardware 0s/1s o Microcode—built in instructions for microprocessor If video games have soundtrack. What the court say about the popping up of SEGA  even if that is not a good thing. Filtration—boil it down to the heart of the program “golden nugget” AND 3. the word itself. need to get synch license. The court sent it back to find out if they took more. AFC Abstraction Filtration Component. Δ cracked the DVD code – and then published it on a website for everyone to see. and Sega said you have to only make games for us then. the SEGA ™ came up on screen or something like that. so instead ∆ reversed engineered to find “F” stuff that could be SEGA compatible.whether and to what extent the non-literal aspects of a computer program (those that are not written in code) are protected by ©? RULE: 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. The court was just saying that the mere disassembly is ok. protectable by © and then see if ∆ has taken this part. 1) © claim. Issue: is it fair use to disassemble the code and even if it is it unlawful to use the code now? The word SEGA is not ©able. π sues saying this is a © infringement. it is ™. Literal code least abstract and protectable.π would rather have judge or jury look at entire work because then look at protectable and not protectable. in the process. then SEGA is at fault for using the code. o П (© owner) doesn’t want AFC test if representing copyright owner π .

Willful up to $50K.dist court declined to award copyright infringement P compensatory damages bc they involved speculation. The collecting Societies (reduce transaction costs) 1. ordinary $750$30K. In est lost sales bc of infringement. §504 allows an award in an infringement action of the copyright owner’s actual damages. and royalties are distributed to the association members accordingly. willful up to $150 *** You must elect § 504(c) or § 504(b): §505 Esq fees §506 Criminal (see also 18 usc §2319. but it was not allowed here b/c he distributed it. usually measured by viewing ∆ sale as displacing П. 2. • Pre Berne 3/1/89min $100. HELD: Ct granted inj. ordinary $500. but if not in direct comp.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 company goes through extra efforts of putting in anti-circumvention measures – you are not allowed to break the code or avoid the measures. w/c amount to lost sales. ordinary $250-10K. He received a warning and lawyer told him not to do it.that damages in a copyright infringement action involve an element of speculation does not render them unawardable. the industry is putting things in formats that will not play on the computer and unable to create MP3s. Here. •DMCA (§§1201-04) has exception in an educational setting – circumvention is allowed – as long as it is to achieve interoperability of a program and evaluation purposes. Not good. night clubs and hotels) You get blanket license to perform its library. (biggest license purchases of ACSAP is TV and radio stations. a ct must speculate. Stevens Linen Associates v. SESAC  much smaller than the other two collecting societies 2.miscellaneous. as well as restaurants. Mastercraft . willful up to $100K AND • THEN under Clinton (in light of internet)min remains at $200. ASCAP  for non-dramatic small performance rights in member’s musical composition who wished to make a non-dramatic performance for profit. P introduced evidence of dipping sales after introduction of competing prods and evidence customers switched over. BMI  similar to ASCAP 3.513.$20K. P showed 2 substantial measures of lost sales: evidence of lost sales & customers switch. Anyone can go beyond the door to find the ideas and concepts now. 53 . or (c) Statutory-must have registered © to collect here & although you don’t have to est profit or loss. •In this country someone tried to wear the code on a t-shirt and give a lecture. Now. you MUST elect this measure before final judgment. then usually computed by using reasonable royalty (license fees) or FMV) (b) П loss. Remedies Possible remedies: §502 Injunction: can enjoin infringing activity §503 Impoundment/ Destruction §504 Damages (if in direct comp. • Post Berne 12/9/99 #s doubled min $200. Holding . ∆ Profits (subject to apportionment). §§507.

Universal Pix . ∆ WON • Even if you wrote lyrics to a © song.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Cream Records v. Nichols v.П ©ed play w/c depicted marriage btwn J-boy & Irish Catholic. as a practical matter. Holding . Literature. precluded.П sued Bee Gees for © infringement of song. Can’t get © ownership either b/c it was unauthorized derivative. Ct used 4-factor Infringement test. Schlitz . questioned Selle v. Ct said П didn’t prove access to the song whose © they alleged was infringed.D used “Shaft” in commercial w/out authorization. Need to prove access. For a character to be protectable. unless similarity is striking—even then. else a plagiarist could escape liability by immaterial variations.Stock characters & Plots are not protectable. this is a fair taking. D. & prior common source are. the availability of the ©ed song was virtually de minimis and the music expert did not state that the similarities could only be the result of copying. Ct also awarded $5000 for restitution. Problem is to draw the line btwn the idea & expression. SOL on © Infringement. Jos. Used only a few bars of song.3 years 1. but not enough for violation of ©able expression. you lose lyrical protectionGeorge Harrison claimed subconscious copying but S/L. Visual Arts 54 . owner is entitled to full value.© protection cannot be limited to the literal text. Here.) (4) Unlawful taking/ use of ©able expression (if §§107-122 do not serve as defense) was actual protectable expression. she must have a defined and well-fleshed out character.inference of access can be est circumstantially by proof of similarity so striking the possibilities of independent creation. © protects an author from infringement of his expression. Gibb . They range from most general statement of what the work is about to the very specific reproduction of the work. Must be overwhelming if no access—usually similarity alone is NOT enough) Test is whether such similarity exists is whether an average lay observer would recognize the alleged copy as having been appropriated from the ©ed work) (3) ∆ had access (or otherwise could have been created independently.copyright holder is entitled to full value of infringed copyright. Here. Where unauthorized use of a copyrighted work destroys full value of work. HELD . • 3. only similarity btwn 2 works is quarrel btwn J and Irish dad. Establishing Infringement see 17 USC §501 Strict Liability (knowledge immaterial)(NO INTENT NECESSARY KNOW what part of the bundle your client has but assume all and establish: (1) Ownership by П (2) Substantial similarity or striking similarity (Standard for determining whether a copying occurred is whether there is a substantial similarity btwn works. & several methods are used. Access can be established by striking similarity. b/c u are free to take that which is not protectable expression. Music RULE—Need both access & substantial similarity. This ct used the “abstractions” test  every work can be abstracted on several levels. even if only small portion used. but not from appropriation of his mere ideas.scenes a faire (general fair scenes). coincidence. Idea taken. 2. marriage & birth of kids. however protection cannot extend to the ideas of the © work. Ct only awarded 15% of total award value bc of small portion. Can infer if striking similarity. Scenes a Faire is not a FU ∆.

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. Standard for determining whether a copying occurred is whether there is a substantial similarity btw works. HELD:∆ infringed.Coumbia Pix used. 55 . Ct applied 4 factor test. in a clearly recognizable fashion.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 RULE: Expressions of ideas are protectable even if ideas are not. the map of NY was similar. Columbia Pix . A visual image that would be recognized by the average person as having been appropriated from a © work infringes on that ©. Steinberg v. Here. and even if not an exact copy. but expression. Not copyrighting idea. an illustration by Steinberg as a model for a film poster. Ct said П needed to prove copying.k infringement will be found if normal lay person would find similarities.

**Only thing that kills a VARA claim is WMFH claim 56 . mutilation.∆ published a photo of nude chick in a pose very similar to that of an earlier pix. the subsequent work is a copy and the artist is an infringer. HELD. √ Right can’t be assigned.had to add moral rights to © laws which include.Visual Artists Rights Act §106A (requirement for US to join Berne Convention.“right to follow”. BUT it can be waived (“author hereby waives rights under droit morale”) √ You don’t have to register your copyright to sue under VARA. be famous. gives the artist moral rights to prevent the work from being destroyed. Changed it by adding cherry stem in her mouth. Movie industry lobbed to have them removed b/c they’re not visual art Droit Moral . there were differences btwn the 2 photos BUT the identities were much greater than differences. although substantially similar. ABC) Duration of protection: If pre-June 1991  life of author + 70 years. or get some newsworthy attention • Major VARA case: Helmsley.not commercial art) • That have 200 or fewer copies and • Those copies have to be consecutively numbered and signed and • This right is for life of author plus 70 yrs and • The art has to be something that brought about public notice i. that © being owned by Gross. (see Gilliam v. Paternity/Attribution(author name added or removed in order to protect and this doesn’t apply to WMFH(right to have one’s name recognized—protect honor of author & 2.French version of the moral rights like VARA. 1. Here. photographed and ©ed by the same artist of same model. Rights Beyond ©: Moral Right VARA. Integrity: (right to prevent destruction. Droit de Suite . √ Have right to sue for statutory damages. After June 1991  rights end when author dies. not in fed © law but in some states like CA.artwork in lobby of hotel was under total control of hotel.Where original artist uses a work whose rights he has granted to another (here. VARA protects from mutilation & distortion and ONLY APPLIES to: • Visual art (fine art--photos. Right to withdraw or disavow 4. fine art.when a work is resold. Seligman(1914). Gross v. Also kid w/dorm room ceiling was renowned enough for VARA.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 RULE: You can infringe your own work if you assign away the rights. But compare §43(a)  applies to everything else that’s not visual. sculptures-.e. distortion) 3. Right of disclosure ⇒ Under VARA. This is not the case if the subsequent work. was independently created w/o reference to the prior work. not WMFH) to produce a subsequent but marginally different work. renowned. so it was a WMFH and thus not protected under VARA and hotel could redo lobby and take out this work. you are prohibited from ruining some forms of visual art. the artist gets a royalty for the life of the painting. • Film Preservation Act: for filmsoriginals can’t be touched since preserved—part of Cong requ when films were taken out of VARA. E.

Gilliam v. Eisenhower’s book > Doubleday publishes and copyrights it > Fox gets the TV rights based on US military footage > Time Warner produced the show . but Fox did not renew so the work entered the public domain for a time .get the right of attribution and integrity of work . §43(a) secures right agst distortion. Preemption of State Law: Need extra state law element on top of 4 factor infringement test to survive. Does state law grant any rights equivalent to §106? If so then preempted. 2. voice & singing style. Not Preempted • • • K rights/Breach of Kstate rights containing no “extra element”—state requires add’l element showing wrongdoing Right of publicity(state)unless expressive subj matter e. not informing the public about the ORIGIN OF GOODS by falsely affiliating this footage with themselves—under the Lanham act are you required to state the origin of goods but in this case this would be identifying the original idea of the good because who is the original owner of the idea itself? there was compilation of footage and so on. INTENT to copy.. Ex: 3 strikes youre out song—not equivalent provision §15. they gave SFM and New Line the right to distribute the video . but the art work that accompanies it is ©able .DD renewed their copyright.when Fox renewed it..unauthorized editing of a television program for broadcasting constitutes © infringement.Dastar took footage from Fox’s TV show and distributed a video series . .g.the licensing agreement between BBC and Monty Python said that MP had to approve the final version. and when BBC licensed it to ABC.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 RULE: 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. if pre June 1991 (life + 70) or after June 1991 (right ends when author dies) Dastar Shows connection between 43(a) and copyright laws. then preempted.falls under the Copyright Act of 1909 (in effect until Dec. contended that ABC’s broadcasted edited versions of their comedy routines “mutilated” their work and constituted © infringement. Monty Python. This deals w/ an extra element. Does state law require an extra element to be proven for that state law to be violated (like intent)? • Becomes a state AND federal action. such as showing defamation--© doesn’t deal w/ this 57 . You can use §43(a) of the Lanham Act to claim false affiliation or false representation and here this was changed so much that it did not represent Monty Python’s work and was a falsehood.right to prevent the distortion of the work (even if you assigned rights away) .you cant transfer away VARA.. . F. If so.reverse passing off: misrepresenting someone else’s goods as their own.(ie. 31.1 Right of privacythese rights aren’t part of © Act. they can claim breach of contract and copyright infringement HELD .. 3.) §301 Preemption (Interference w/ objectives purposes) 1. Sometimes an item may not be ©able. 1977) .can be up to 200 consecutively numbered and signed (or marked) .2.you don’t have to exercise copyright claim to enforce VARA. ABC A comedy troupe. they faced the same limitation. Does state law extend to works covered in §102.

Right of Follow – (European laws) author of work that is sold gets a percentage of all subsequent resales – not preempted.g. architectural etc. passing off even where subject matter involved comes w/in scope of © § not intended to be preempted since element of consumer confusion reps extra element that distinguishes from rights granted under §106 of ’76 Act. fraudulent misrepresentation.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • SOME anti-competition claims false labeling. Deceptive trade practices Misappropriation (state law) is preempted in §102(b) if it comes w/in the scope of ©-AV. • • Might as well bring it in Fed ct if have fed claim. hot news & un©able data compiled in comp databases (note: circ split here—5th circ—broader) Trade Secrets (where it includes elements such as invasion of personal rights or breach of trust or confidentiality that are different in kind from © infringement i. 58 . but no preemption of state law protection of facts e.

Licensee. S. POS: Point of Sale 23. and turned out it can’t be b/c it’s too necessary for the public (laws themselves).articles . Fair Use: Sega v. 4. This becomes a public record. Licensing or Consent 16. then can be a © owner. 2. Accolade: 59 . To build something.website - software that helps you write the brief W/c form do you use to register video games. Fraud in the Copyright Application 28. De Minimis Amount-only taken (This is questionable-b/c if it destroys the value De Minimis may be enough—Cream Records 6. Things lawyers can copyright: . Transformative Reinterpretation 9. Public Domain 26. only the SAC may be protected. 21.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 DEFENSES: 1. FSD-Limited Rights §109 1) Library exception §108 7. No Copyrightable expression 14. Scenes A Faire. Antitrust or misuse Are blueprints copyrightable? YES. Presumption of Death-§302 10. No Similarity 13. Estoppel/Laches/Acquiescence 17.May not claim authorship. Calendars-only artwork may be protected).enduring popularity (IDEA) 25. Blank Form Doctrine 3.R. Fair Use §107-See Below 8. and 5 Years for Criminal 27. phrasing. 22. Unclean Hands 18. slogans. Joint Authorship 12. but doesn’t mean someone can copy it. US government? NO. and can be © owner. Π’s copyright is invalid 15. Recipes are functional. Didn’t Cure Defective Notice On works created after 1/1/78 and before 3/1/89 w/in 5 years. (Didn’t Renew under the 1909 Act and is in the Public Domain 19. cant © it. SOL: 3 Years for Civil Suits. Innocent Infringer 11. Idea/ Expression Merger/ if Limited Ways to Express something. What about state statutes? Alaska was challenged. Names. Functional-(ex. and title-not copyrightable 5. Didn’t affix proper notice under the 1909 Act 20. you must file w/ county (local ordinances).E. Misuse 24. Can a state be an author? YES.FORM PA. but if a licensee of ©ed materials.

• Definitions §100 • First act 1790. This protects the little guy over the one who has the resources to obtain the patent 1st. but didn’t prevent Sega from having copyright in the code. In most countries. Patents . P had no licensing agreement with D. BUT it is trademarkable.Words. Does this mean nobody can reverse engineer? NO. First Amendment . H: allowed D to make copies. Second in 1836. Is there a constitutional right to make a copy? NO inherent right. • 1st to conceive of invention. NOT copyrightable. D reverse-engineered. § 117 Reformat – allows user to reformat to make program work on their system. 3) § 117 – Reformatting OK. but not here. phrases. so long as patent applicant uses due diligence from conception to application. Accolade’s arguments: 1) Based on § 106. You just can’t share the information/ code. the first to FILE gets the patent. not 1st to file is afforded protection.Universal City Studios v. ideas. “Sega” appearing when D’s game is inserted  § 102(b) . Industry threatened to stop manufacturing DVDs if it wasn’t dealt with by the courts.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Sega built into their code an automatic trigger that showed “Sega” on screen whenever games were inserted. 4) Disassembly is OK. Corley: Anti-circumvention/ DVD D teen cracked DVD code and posted it on a web site so anyone anywhere in the world had access to it. and if it’s mark is attached. need to apply for it. Current Act 1952 • US Patents only good for US not overseas • Patentable Subject Matter (new/ useful) Or new and useful improvement thereof: • Machine • Composition of matter (ie pharmaceuticals) • Manufacture (things made by humans) • Process Types of patents: • 60 . slogans. • About Sega’s TM popping up  Sega brought it upon themselves for using this code b/c people should be able to pull out the free parts of the code. they’re only intermediate copying. is it lawful for D to use the code? YES. Sega’s claims: 1) Trademark 2) copyright I: is it fair use for D to disassemble the code? If so.35 USC §§1-376 To get patent. then Sega is source of confusion. Some say this conflicts with the First Amendment free speech/ right to communicate. H: court granted injunction w/c prohibited D from posting the code. 2) Reverse engineering is OK. even though law may give you exceptions. and not illegal.

Promotes disclosure of inventions to stimulate further innovation and permit public to practice invention once patent expires and 3. Novel §102 • Useful §101 – o Manufacture – something made o Machine o Composition of matter – material (what you make something from).14 years from grant of patent. 4. Stringent reqts for patent protection seek to assure ideas in public domain remain there for free use of public. o Process 2. 3. you control who can: 1.so no one else gets a patent on it!) In order to qualify for patents. • Rights do not go into perpetuity b/c Constitution wont let congress give monopoly power to patent owner • Patent applications in the US will be published 18 mos after. Must conduct a search throughout the world to see if the invention is already in existence—if it is patented anywhere in the world. How long to monopolize patent? • For utility & plant patents before 6/8/95.get longer of 20 yrs of app or 17 yrs from granting of patent. human engineered) Design §171-simple and basic application process (Design of Listerine bottle) Statutory §157 (applicant donates patent to public domain. non-obvious and useful 2. subject matter must be novel. Use or 3. 61 . Is there a printed publication that teachers how to make this invention—must be written down • But if it is just used in another country and not written down or patented-ok • But if it is just used in US—then barredthese will bar the patent from issuing b/c these are priors 3 objectives of Patent Law: 1. Seeks to foster and reward invention 2. Post 6/8/95—20 yrs from app/filing (change was to prevent patents from surfacing yrs after app) • Design . need all three: 1. Sell • Different rules/laws governing drugs • BUT have to publicly disclose in the app how to make and use the app-the trade off • Must pay maintenance fees to keep patent Process for getting a a Patent: 1. Non-obvious §103 If get patent rights.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • • • • Utility §154-complex applications (any new/useful improvements) Plant §161 (asexually reproduced plants that grow in the ground. Make 2. Won’t grant a patent if the invention has been anticipated-by prior teaching/artincludes prior art anywhere in the world.

useful. compare to BFHH.CONCEPTION-----(e). they CAN’T get the patent-statutorily barred • This clock can start by someone else’s activity-if you are the senior inventor but a junior inventor makes public use of the same invention. no public sale. no earned income. etc. but can opt out if show patent office that not seeking foreign protection. a. *Due Diligence needed btwn Conception & RTP! Prior Art: Mere use doesn’t qualify. Must be application or an existing patent!! must conduct a search throughout the world to see: 1) is this invention already in existence.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • Patents Utility Plant Design *must be novel. • Must file app or provisional app w/in 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 TS sense— confidentiality is key to showing R&D Exception  true research and development stops the clock. (Refer to outline given in packet for statutory bar. (c) RTP (reduction to practice) (d). (g) §103 Statutory bar Loss of rights Application TIME --------------------------------------------.this is patentable.Processes (business method patent) Unpatentable: • Printed material • Products of nature* (must be naturally occurring. non-obvious Utility: Design: Plant: Machine Decorative Asexual reproduction Composition of matter Non-functional aspects Articles of manufacture *1952. OR 2) is there a printed publication available to public anywhere in the world. this will start the 12 month clock.But For Human Hands.ie Harvard Mouse) • Laws of nature/ natural phenomena • Math formulae • Fraud based inventions Novelty Prior art (must look Worldwide) §102 (a). more than 12 months from filing of patent application. product would not be here.Patent  §102 (b).) A) 12 Month Use Bars Application  If client has made public use of invention or offered it for sale. Does it teach? Any patent anywhere in the world that is considered prior art bars another patent.------. 62 . Show this with lab notes. (f) Can’t opt out of publication if seeking foreign patents.

“I Claim” section. background. cannot get a patent. 63 . clock starts (12 mos allowed) when use starts (mere use in another country doesn’t serve as a bar to getting a patent. unless only seeking US patent • Opt out provision – some may want to do this b/c if you’re application isn’t granted.§112 enabling disclosure-“Best Mode” duty of candor provision (if there are a few ways to make something. This was created by human hands.camera on a pole. HELD: patentable. and obvious. Abstract 2. but publishing in another country would).” • Novel (§ 102) AND non-obvious (§ 103). detailed description of invention. Brief description of drawings 6.must uniquely point out and claim the invention. It was useful.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 B) Publication – every patent application published w/in 18 months. RTP. brief description of drawings. Must do a patent search to see if prior art. may have broader scope of protection. C) Test – should this invention be granted even though there’s no prior art? Cong felt it was granting patents on things not considered “useful arts. no prior art.need to put invention to practice if you use an invention publicly for more than one year. novel. It should have been granted a patent. have to put in application best way to make it). • “But for human hands” TEST  made by humans. BUT a microorganism is life. you may want to keep it a trade secret. Specifications. drawings. • Typically comes up during litigation as ∆. summary of invention. Life itself is NOT patentable. Becomes body of prior art. if claim broadly. 2.must teach a person skilled in the art of w/c the invention pertains how to make/ use it.novelty & non-obvious req’d. claim section—this is where novel and non-obvious need to be Diamond v. so • Life CAN be patentable when it doesn’t occur in nature П creates microorganism that eats oil spills. Background 4. Chakrabarty (1980): I: whether a live micro-organism is patentable? Can life be patented? YES.when Property infringed (ie. Summary of invention 5. Application (§111) 1. Must have at least 1 remaining claim to keep a valid patent. • Abstract.property interest part that is infringed must be novel and non-obvious.. Drawings 3. Statutory Standards §111 Application §112 SPEC’s §113 Drawings §114 Models/ Specimens (if required) §115 Oath §114 Application 1. Claims. Detailed description of invention 7.

Level of ordinary skill in the art.” Test for non-obviousness (#1 ∆ raised by alleged patent) John Deere Test: examining 1. Secondary considerations of nonobviousness• commercial success (not from advertising) – how successful was it? If you sell many units. Bifurcation (1.what was level of skill. Did the commercial world think it was non-obvious? o Helps the patent owner • Commercial licensing – how many others wanted to replicate it? If others got a license.markman hearing) . .scope of claims (determined by judge. you want to use the J. 2.What’s the diff btwn the prior art and the new invention. 2.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 Cloning  Cong says it doesn’t meet statutory requirement of “usefulness. Trifurcation (1.was this a forward-looking invention? Would someone have eventually done it or created it? * This test is problematic b/c too subjective. so it is difficult to apply. But. people must like it.What existed already before this change took place? 3. was there an injury and then 2. P may want to use 2nd considerations depending on facts of case.does same thing in same manner producing same “results”. what are the damages?). Scope/ content of prior art.most patent trials are this. if so was it infringed. Differences b/w prior art & claims at issue. Non-literal infringement. State of the Art @ 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. • Doctrine of equivalents (DOE). Still can be infringement even if doesn’t read on. they must’ve thought it good. o Helps the patent owner. Deere test. Literal infringement (“Reads on”). • long felt need – Was there a need for this invention? In the industry? • invention by others at the same time – show that the need was filled? You can use either one of these tests above! If you are P trying to protect your patent when its challenged. 3. Deere. • expert acknowledgements – Have experts testify to its non-obviousness and an ordinary person wouldn’t invent it • failure of others to invent – adds to uniqueness. is there a valid patent. 2 types of patent infringement: 1.doesn’t read on. 64 . 4. D would want to use both or 2nd considerations bc of expert testimony.jury determines infringement Sometimes patent trials split in parts: 1.it describes same invention. how much in damages) *2. 2. Cts nowadays use 2nd in conjunction w/ J.so 2nd considerations developed to help judges. • commercial acquiescence – the fact that others did NOT attempt to make it b/c they thought it was a valid patent.

that was prior art.COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 *Repair v. Quick Test. knowledge that someone is infringing and 2.H.if cost of repair exceeds/equal to cost of new item.if more than 12 mos in the open. a point beyond mere repair.no markings on product • Best mode. Jr. not barred! 12 mos clock is statutory bar. non-obviousness • Need to pay maintenance fees 3 ½ years out.if just to replace or fix part of patented item.). But if cost of repair is fraction of cost of new item. Patent protection only goes up to “First Sale”. statutorily barred from getting patent. Novelty has to come from single source! • Offer for sale. or every so often or else lose patent. But protected from manufacture. estopped from raising that part of claim later. §286 6yr back rule on $ damages (6yr back from filing of lawsuit §287 innocent infringer (bc no notice.C. wasn’t marked.E.if conceived it first up to application and used due diligence.E.is someone infringing if they are “repairing” patented item? • Repair.I.nothing been anticipated.W.not expected to know). Reconstruction . • Reconstruction. if not. novelty. Remedies: §283 Inj §284 P damage up to 3x but not less than reasonable royalty §285 esq fees/ cost in exceptional cases to prevailing party.2 types: • direct • contributory.can resell. Thus. What need to do is convince the examiner there is nothing out there prior to this..12 month clock to get application in.doctrine of equivalence • No longer valid for failure to pay maintenance fees • Innocent infringer. • Reverse doctrine of equivalents.also in TM law) • F. Don’t publish it before file patent application.duty of candor. 65 . • Not novel • Obvious • Not useful • Laches (acquiescence) • Literal not present • Non literal D/O/E.if use it purely for research and development. Defenses: AKA. • Sr.P. *§271 Infringement. check the file. v. inducing infringement or providing means and labor to infringe.file wrapper estoppel (during course of negotiation w/ patent office and give up part of claim in order to narrow issue. significance. (prosecutorial history estoppel. barred! R&D.may do same thing in same manner but produces a diff result. then it’s a new item. then its just a repair.may get injunction but not $ damages or esq fees §289 D profits for design patent only (subject to apportionment) How can patents be invalidated other than expiration of protection? • Challenge continued usefulness.need 1.if replace many parts so that it may be deemed new product. if patent atty..

1st sale doctrine repair. 66 . To cure defects that are not intentional. not reconstruct misuse (anti-trust.that’s why §251 exists to re-issue and cure defects. should not have to be able to buy other products. anything that prevents you from buying other products is misuse) unclean hands (told someone you’d give them license but don’t and sue later for $) • • • • §251 re-issue (if w/i 2 years claims can be reused/ broader).only call their servicemen and tie-in other products. listing investors who are not inventors).COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008 • Fraud in the application (failure to list certain patent in report.