IP Outline

 Source of Authority
o U.S. Constitution, Article 1, Section 8, Clause 8:
 The Congress shall have power… To promote the Progress of Science and
useful Arts, by securing for limited Times to Authors and Inventors the
Exclusive Right to their respective Writings and Discoveries…”
 Trade Secrets
o “Trade secret” means information, including a formula, pattern, compilation, prog
ram, device, method, technique, or process, that:
 Derives independent economic value, actual or potential, from not being
generally well known to, and not being readily ascertainable by proper
means by, other person who can obtain economic value from its disclosure
or use, and
 Is the subject of efforts that are reasonable under the circumstances to
maintain its secrecy.
o Three Elements of a Trade Secret:
 The Information is Secret
 The Information confers a Competitive Advantage
 The information is subject to reasonable efforts to keep it secret
 What is reasonable is determined by a cost-benefit analysis that
varies from case to case
o E.I. Dupont deNemours & Co. v. Christopher
o Metallurgical Industries v. Fourtek, Inc.
 Whether a trade secret exists is determined by weighing whether the
subject matter is actually secret, whether the subject matter was
discovered at some cost to the plaintiff, and whether the subject matter is
of some value to the plaintiff.
o Misappropriation
  Misappropriation occurs when another acquires a trade secret by improper
means or discloses or uses the trade secret without the consent of the
owner of the trade secret
 “Improper Means” includes theft, bribery, misrepresentation,
breach or inducement of a breach of a duty to maintain secrecy, or
espionage through electronic or other means.
o Smith v. Dravo Corp.
 The mark of a confidential relationship is a promise of trust, and that
promise can be implied from the relationship of the parties.
o Employer-Employees
 Absence of express Ks – employees still have a duty not to use or disclose
her employer’s T.S. w/o permission if the employee learned them w/in the
scope of her employment.
 Winston Research Corp.
o Pepsi-Co case
 Trade-secret misappropriation occurs when a former employee’s new
employment will inevitably result in the disclosure of trade secrets.
 The inevitable disclosure doctrine is a way for an employer to
prevent a former employee from working for a competitor under
the principle that the employee would inevitably disclose their
former employer's trade secrets.
o Remedies
 Injunction
 An injunction is appropriate for a misappropriation of a trade
secret for as long as it would take a third-party competitor to
develop a similar product after public disclosure of the secret
information
o Winston Research Corp.
 Damages
 Criminal Prosecution
 Patents
o Two Types of Patents
 Design
 Utility
o Requirements for Patentability (35 U.S.C. §101):
 Patentable Subject Matter
 Claimed invention must fit w/in one of the four statutory
categories:
o Process
o Machine
o Manufacture
o Composition of Matter, OR
 Improvement thereof.
 Utility
 Must be useful in at least two respects:
o Credible utility – it must work for its intended purpose; and
o Specific and substantial utility – it must serve a particular
practical purpose
 Must show that the claimed invention has a significant and
presently available benefit to the public.
 Novelty
 The invention has not been preceded in identical form in the public
prior art.
 Non-obviousness
 Whether an invention is a big enough technical advance over the
prior art to merit a patent.
 Disclosure
 Must convey to a person having ordinary skill in the art:
o Written description – the inventor gave a detailed account
of the invention, i.e., demonstrated “possession” as of the
time of filing the application, and
 o Enablement – that the specification enables a person
having ordinary skill in the art (“PHOSITA”) to make and
use the invention
 Cannot force others to conduct “undue
experimentation”  no enablement.
 Incandescent Lamp case
 Not enabled  “fibrous or textile material”
 Edison’s was enabled – “bamboo”
o Duration
 A patent confers the right to exclude other from making, using, selling,
offering for sale, or importing the claimed invention for 20 years from the
filing of the patent application.
o Diamond v. Chakrabarty
 Man-made organisms are patentable
 However, laws of nature, natural phenomena, and abstract ideas
are not patentable
o Alice Corp. v. CLS Bank International
 the court found that an abstract idea could not be patented just because
it is implemented on a computer.
 Two-Step Analysis:
 determine whether the patent claim under examination contains an
abstract idea
 determine whether the patent adds to the idea "something extra"
that embodies an "inventive concept.”
o 1952 Patent Act § 102 [Novelty/Statutory Bars]:
 A person shall be entitled to a patent unless —
 (a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent, or
  (b) the invention was patented or described in a printed publication
in this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application for
patent in the United States . . .
o AIA § 102 Novelty; Prior Art.—A person shall be entitled to a patent unless—
 the claimed invention was patented, described in a printed publication, or
in public use, on sale, or otherwise available to the public before the
effective filing date of the claimed invention . . . . . .
 Exceptions: Disclosures made 1 year or less before the effective filing date
of the claimed invention—A disclosure made 1 year or less before the
effective filing date of a claimed invention shall not be prior art to the
claimed invention under subsection (a)(1) if—
 (A) inventor, directly or indirectly, exposes it to the public; or
 (B) 3rd party, whose disclosure was given by inventor, exposes it to
the public.
o Prior Art Qualifications
 Prior art (use, publication, acts, things) must be non-secret • Even if
discontinued or not publicized
 Example: Rosaire (oil prospecting) • Prior Art: Another co. used
patented method before date of invention without attempting to
exclude public
 Publications must be accessible to public in order to qualify as prior art –
Cataloged/indexed so it may be found – Prior art as of date publicly
accessible
 Example: In re Hall
o Thesis indexed in German library more than one year
before filing date – 1952 Act § 102(b) prior art/statutory
bar – Could also be 1952 Act § 102(a) prior art if cataloged
before date of invention
o Egbert v. Lippmann (corset springs case)
  Sale or public use of an invention for a statutorily-specified time period
bars patenting of that invention.
 Distinguished from Wood Sidewalk case in that this was not a
good faith effort to test or experiment with the design.
Furthermore, Barnes “slept on his rights” for the eleven years
between 1855 and 1866, not applying for a patent until other
manufacturers had already incorporated aspects similar to Barnes’
design into their own products.
 Patent Act §102(b) provides that an otherwise patentable invention may be

disqualified for a patent if the inventor fails to file his application w/in a

year after the invention is revealed in a printed publication anywhere in

the world, or is on sale or in public use in the United States.

 Experimental Use Exception: To avoid public use/sale, invention must

be under inventor’s control during testing. (Wood Sidewalk case)
o KSR International
 To determine whether an invention is unpatentable under the obviousness
standard, a court reviews the differences between the prior art and the
claims at issue, the level of ordinary skill in the art at the time of
invention, and the presence of any secondary considerations such as
commercial success, long felt but unsolved needs, failure of others, etc.,
surrounding the origin of the subject matter sought to be patented.
 Obviousness Analysis
o Invention is not obvious merely by showing that each
element exists in prior art
 Must show that it is logical to combine them
o Combining/modifying known elements using known
methods is likely obvious if it yields only predictable
results
 If there is doubt in industry about this combination
– non-obvious
o Anticipation
 Anticipation = Lack of Novelty (i.e., invalid under §102) 2 Steps: 1.
Interpret the claim (claim construction) 2. Consider content of prior art •
 To anticipate a claim, a SINGLE piece of prior art must disclose
all elements as arranged in claim
o Canons of Claim Construction
 1. “Ordinary meaning” (to PHOSITA)  Common source: old
dictionaries
 2. Lexicographer Rule: Patent (re)defines term expressly or implicitly
E.g., “photocopy machine” is defined in specification as any combination
of devices that scans and reproduces an image
 Claim elements: A, B, C, D
o Prior art #1: A, B, C, D, E – obvious b/c A, B, C, and D
o Prior art #2: A, B, C – not obvious b/c missing D.
 Which one is prior art, precluding the claim
elements?
 Depends on language of claims – if
“comprising” (which is an open, transitional
term), of A, B, C, D, then it will not be
precluded.
 ‘consisting of’ = closed. This is very rarely
used. It would be precluded due to prior art.
o Literal Infringement
 All claim elements are present in a single device or practiced by a single
actor
 Mirror image of anticipation – all elements of a claim are present
in a single piece of prior art.
 Infringing Acts – 35 U.S.C. §271(a)
 Unauthorized making, using, selling, offering for sale, importing
 Even if extra elements – does not matter – accused product still infringes.
  So long as A, B, C are there.
 Larami “Supersoaker” case
 The absence of even one element of a patent’s claim from the
accused product means there can be no finding of literal
infringement.
o Patent Infringement: Common Defenses
 Noninfringement – Proof by preponderance of evidence
 Invalidity – An issued patent is presumed valid.
 35 U.S.C. §282: Accused Infringer has burden to prove otherwise
o Proof by clear and convincing evidence –
 Common Bases: Patentable Subject Matter, Utility,
Disclosure, Novelty, Nonobviousness
 License (express or implied) – Buy patented item  license to use and
repair, but not make
 Exhaustion / First Sale Doctrine – Sale of thing embodying patented
invention exhausts patentee’s rights in how buyer later disposes of that
thing
 Copyrights
o The law limits property rights to the author’s particular method of expressing an
idea or information
 Does not protect the idea being expressed
 Copyright Act §102(b) provides that copyright protection does not extend

to ideas, methods of operation, procedures, systems, or discoveries.

o Protection: Upon creation – Registration required to bring suit

o Duration: – Life of author + 70 yrs – Anonymous, pseudonymous, or works made
for hire: 95 yrs from first publication or 120 yrs from creation, whichever is
shorter
o §102: defines the subject matter of copyright
 Two requirements:
 Work of authorship must be original, and
  The work must be ‘fixed’ in a tangible medium
o Originality
 The author must have engaged in some intellectual endeavor of her own,
and not just have copied from a preexisting source.
 The work must exhibit a minimal amount of creativity.
 Minimal creativity standard is not hard to satisfy.
o Feist Publications, Inc. v. Rural Telephone
 SCOTUS found that telephone white pages did not
satisfy the originality requirement b/c they lacked
minimal creativity.
 Facts not copyrightable but compilations are
o An author’s original selection and
arrangement of facts may be
copyrightable, if original.
o Categories of protectable works of authorship:
 Literary works;
 Musical works;
 Dramatic works;
 Pantomimes and choreographic works;
 Pictorial, graphic, and sculptural works;
 Motion pictures;
 Sound recordings; and
 Architectural works.
o Boundaries:
 Fact-expression
 Facts – not copyrightable
 Expression – information used to describe what you have
uncovered - copyrightable
 Idea-Expression
 Lot of different ways of creatively expressing the same story
 o Romeo + Juliet, West Side Story (same idea, diff.
expression)
 Function-Expression
o Idea-Expression
 Baker v. Selden
 SCOTUS enunciated the rule that there can be no copyright
protection in ideas.
o The Court held that the plaintiff should not be permitted to
obtain a monopoly in his useful accounting method – a
form of system or method – without satisfying the stringent
requirements of patent law.
 Lotus v. Borland
 Held, Borland did not infringe, b/c menu command system did not
constitute copyrightable expression.
o Reasoned that the menu command hierarchy constituted a
method of operation, which cannot be copyrighted.
 Defined a “method of operation” as “the means by
which a person operates something.”
 Morrissey v. Procter & Gamble Co. (“Sweepstakes” case)
 Merger doctrine – when there is only one or a limited number of
ways to express an idea, the expression “merges” with the idea and
becomes unprotectable.
o Useful Article Doctrine
 a legal principle which gives copyright protection to pictorial, graphic, or
sculptural work that has an inherent use apart from its appearance, and
which is also an expressive work apart from its utility
 Copyright Act §101 provides that “the design of a useful article…
shall be considered a PGS work [and thus be copyrightable] only
if, and only to the extent that, such design incorporates PGS
features that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the article.”
  Star Athletica, LLC v. Varsity Brands, Inc.
 Established that the clothing designs, as aesthetic elements of the
useful article of clothing, could be copyrightable.
o Reasoned that you could separate the aesthetic elements of
the clothes from the clothes themselves.
 Some things are solely aesthetic and cannot be separated from the product.
 E.g., rounded corners of your iPhone = not copyrightable.
o Government Works
 Copyright Act §105 provides that copyright is not available for any work
of the U.S. Government.
 §101 defines a work of the US gov’t as “a work prepared by an
officer or employee of the US gov’t as part of that person’s official
duties.”
o For independent contractors, the work created may or may
not be copyrightable, depending on the circumstances
o Works Made for Hire
 (1) a work prepared by an employee within the scope of his or her
employment; OR
 (2) a work specially ordered or commissioned for use as a contribution to
a collective work, as a
 part of a motion picture or other audiovisual work,
 as a translation,
 as a supplementary work,
 as a compilation,
 as an instructional text,
 as a test,
 as answer material for a test, or
 as an atlas,
 o if the parties expressly agree in a written instrument signed
by them that the work shall be considered a work made for
hire.
 When a work is “made for hire,” the employer or commissioning party,
who pays for creation of the work, is deemed the author, rather than the
employee who created the work.
o Reid “Sculpture” case
o Held, Reid was an independent contractor. Reid supplied his own tools,
was without any extensive supervision and was free in the way he met his
deadlines. CCNV could not assign more projects to Reid and paid him in
the normal manner independent contractors are done.
o Since Reid was not an employee, and there was no signed agreement that
sculpture was a work made for hire  not a work made for hire  could
be joint authors
 Factors for determining whether Hired Party is Employee:
 the hiring party’s right to control the manner and means by
which the work is created,
 the skill required for the job,
 the source of the instruments and tools,
 where the work is done,
 the hired party’s ability to control when and how long to
work,
 the duration of the relationship between the parties,
 whether the hiring party has the right to assign additional
projects to the hired party,
 the method of payment,
 whether the work is part of the regular business of the
hiring party,
 whether the hiring party is in business,
 the hired party’s role in hiring and paying assistants,
  the provision of employee benefits, and
 the tax treatment of the hired party by the hiring party
o Joint Works
 Definition: 17 U.S.C § 101 A “joint work” is a work prepared by two or
more authors with the intention that their contributions be merged into
inseparable or interdependent parts of a unitary whole.
 What do you need to be co-author?
 Artistic control (in a move, director or producer)
o Muhammed’s contributions could be vetoed by Spike Lee
 Even Spike Lee wasn’t a co-author b/c he signed a
WMFH agreement
 Intent to co-author per objective indications (e.g., Simon and
Garfunkel)
 Audience appeal from contributions by all co-authors
o Co-authors have contributed something that generates
audience appeal. (inherent in #1 and 2)
 All three must be present, but 1 and 2 are most
important
o Collective Works
 A collective work is a collection of independent, separately copyrightable
works of authorship, such as a newspaper, magazine, or encyclopedia.
 In the absence of an express written assignment of copyright, the
author of each individual work in the collection retains copyright
in that work.
 By selecting and arranging them in a certain way, the work as a whole
may have copyright
o Scenes a faire:

 Authors may not use copyright to prevent others from using language that

is a cliché, or matter that constitutes scenes a faire.

  Scenes a faire are incidents, characters, settings, or other elements

that are indispensable, or at least standard, in the treatment of a

given topic.

o Infringement
 Elements: Ownership of valid copyright + copying of protected elements
 Arnstein v. Porter
 Set out two requirements for the act of copying of protected
elements:
o Copying (not independent creation) that
o Constitutes improper appropriation
 What kind of copying would not constitute
improper appropriation?
 Stock characters – scene a faire
 Western movies – typically have sheriffs –
not improper appropriation.
 Improper appropriation – protected expression taken (not copyright
exceptions, i.e., things that are functional, scene a faire, merger
doctrine, phrases, etc.)
o Test for Improper Appropriation: Substantial similarity
with P’s protected expression (per lay observer/listener)
 Verbatim Similarity  Paraphrasing could be ©
infringement  Taking a small portion can be ©
infringement or not (de minimis) depending on
context 
 Pattern Similarity  Nichols abstraction test
 Copying
 Proof of copying (sliding scale – often proved through
circumstantial evidence):
o D’s access to work (opportunity to copy – if uploaded to
Internet, more likely that D had access); and
 o Similarity probative of copying (D actually took
something).
 No evidence of access
o May or may not be dispositive
o Are similarities so striking that independent creation is
unlikely or is there another explanation?
 Improper Appropriation
 Nichols v. Universal Pictures
o Abstractions Test
o Scope of copyright not limited to literal text
 Otherwise, infringement avoided via immaterial
variations
o Plot = “series of abstractions” with “patterns of increasing
generality… as more and more of the incident is left out”
 Idea  Expression
o Idea: Forbidden love
 Forbidden love involving boy and girl and families
 “ “ w/ a religious difference
 “ “ w/ a religious difference being jewish and
catholic
 At what point do we pass the line from idea
to expression?
o Court says we’re not convinced that
this has gone past line to be
expression – thing that drives the
plot is different: one deals w/
slapstick comedy and other is
reversal of fortune story.
 The more detailed  more likely appropriation.
o Derivative Works
  The 1976 Act provides the copyright owner the exclusive right “to prepare
derivative works based upon the copyrighted work.”
 §101 defines a derivative work as “a work based upon one or more
preexisting works, such as a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound
recording, etc. in which a work may be recast, transformed, or
adapted.”
 An unauthorized derivative work is not entitled to copyright protection,
even for the non-infringing portions of the work.
 Anderson v. Stallone
 Even if you came up w/ completely original storyline but add in James
Bond, that would be an unauthorized derivative work of the James Bond
series.
 Non-literal infringement: using essentially the character but just
utilize trivial change (James Bond  James Born), unauthorized
derivative work.
o First Sale Doctrine
 Once a copy of copyrighted work has been lawfully sold, the owner of that
copy is free to dispose of it as they wish.
 Kirtsaeng v. John Wiley & Sons, Inc
 There is no geographical limit in determining which works fall
under the first-sale doctrine.
 Under 17 U.S.C. § 109(a), a copyright holder’s exclusive-
distribution right does not apply to individual copies once the
copies are legally sold
o Fair Use Defense
 17 U.S.C. §107: lists four factors that courts must consider in determining
whether a particular defendant’s use was a fair one:
 The purpose and character of the use, including whether the use
is of a commercial nature or is for nonprofit educational purposes;
  The nature of the copyrighted work (published vs. un-
published);
 The amount and substantiality of the portion used in relation to
the copyrighted work as a whole; and
 The effect of the use upon the potential market for or value of
the copyrighted work.
 §107 lists examples of uses that might be found fair in a given case:
 “For purposes such as criticism, comment, news reporting,
teaching, scholarship, or research.”
 Harper & Row Publishers, Inc. v. Nation Enterprises
 Held, Fair use is not a defense to the pre-publication, commercial
appropriation of work by a famous political figure simply because
of the public interest in learning of that political figure's account of
a historic event.
o Purpose and Character of Use: commercial exploitation
 Did D “transform” the original work such that there
is a new meaning, expression, or message?
 Here, no  not fair use.
o Nature of the Copyrighted Work: unpublished.
 Since unpublished, more likely not fair use.
o Amount and Substantiality: took the “heart” of the book
 Thus, not fair use.
o Effect of the Use Upon the Potential Market
 Evidence of either actual or potential harm to P’s
market will suffice to tilt the fair use defense away
from a finding for D
 Campbell v. Acuff-Rose Music, Inc.
 The commercial nature of a parody does not render it a
presumptively unfair use of copyrighted material. Rather, a
parody's commercial character is only one element that should be
weighed in a fair use inquiry.
 o The Supreme Court held that 2 Live Crew's commercial
parody may be a fair use within the meaning of § 107
 The more transformative the new work, the less
will be the significance of the other three factors.
 Here, parody song was quite transformative.
 American Geophysical Union v. Texaco, Inc.
 In this case, Texaco’s copying of the plaintiffs’ journals was not
fair use.
o (1) Texaco’s photocopying was not a transformative use of
the copyrighted journals. Texaco simply photocopied the
journals in their entirety in order to reproduce exact copies.
 In addition, the purpose of Texaco’s copying had a
slightly commercial purpose.
o (2) This factor favors Texaco because of the factual nature
of the copied journals, which affords the journals less
copyright protection than would a fictional work.
o (3) This factor favors the plaintiffs because Texaco copied
the journals in their entirety.
o (4) Texaco’s photocopying slightly decreases the market
for the plaintiffs’ journals.
 Trademarks
o Trademarks permit consumers to identify the source of goods or services
o Four types of Marks:
 Trademarks
 A trademark is a word, name, symbol, device, or any combination
thereof, that is used to distinguish the goods of one person from
goods manufactured or sold by others, and to indicate the source of
the goods, even if the source is unknown.
 Service marks
  Service marks are the same as trademarks except that they identify
and distinguish a business’s services rather than its products.
 Certification marks
 These are words, names, symbols, devices, or combinations
thereof, used by one person or organization to certify that the
goods or services of others have certain characteristics.
o E.g., Good Housekeeping “Seal of Approval”
 Collective marks
o There are four categories of trademark distinctiveness:
 Arbitrary/fanciful – highest level of trademark protection
 Suggestive
 Marks that indirectly describe the product or service they identify

o E.g., Coppertone for suntan oil.

 Descriptive
 Marks that appear to describe the product or service they identify
o E.g., Pizza Hut for pizzas.
 Not considered inherently distinctive - To acquire TM for

descriptive, need a Secondary Meaning –

o Secondary meaning arises when consumers have come to

identify a trademark with a certain product over time.

 (Descriptive) Fair Use?

o Zatarain’s case
 Fish-Fri (Zatarain’s)
 Fish fry (accused infringer)
 “Fish fry” is a pretty accurate description of
what the product does – not using it in the
TM sense, but just to describe their own
 product accurately – so, descriptive Fair
Use. Unlike, for example, Kodak.
 For Chick-Fri, court held that, despite it being a
descriptive mark like Fish-Fri, it was not known
popularly (often discovered through customer
surveys), so it does not have a secondary meaning,
and therefore no infringement b/c no TM, despite
fact that both were federally registered.
 Generic – lowest level of TM protection (none)
 A generic word or symbol is the common descriptive name of the
good or service it is used to identify or is otherwise viewed as
synonymous w/ the product or service.
 Elliott v. Google
o Is the term “google” generic?
 Colloquial usage is helpful, but it is not dispositive.
 “Primary Significance” test:
 Asks whether “the primary significance of
the term in the minds of the consuming
public is now the product and not the
producer.”
o 3 Requirements to be a Trademark:
 Distinctiveness: Identify goods/service as emanating from particular
source
 Non-functionality
 Use in commerce (or file “intent to use” application)
o Trade Dress [two types]
 Product packaging and product design
 Product packaging might be how it’s shipped (e.g., Apple iPhone – box
is really fancy with Apple logo and elaborate – the thing that envelopes
the product)
 Can be inherently distinctive.
  Product design might be how it’s designed (e.g., Apple iPhone – rounded
edges, sleek cover, etc.)
 Product design can never be inherently distinctive. Need 2nd
Meaning.
 Where would outer appearance of a building fall?
o Product packaging (Two Pesos) – using exterior to let
people know what product is about
o Walmart v. Samara
 The Court held that a product design, like color, could not be inherently
distinctive, i.e., arbitrary, fanciful, or suggestive, but that it could
become distinctive if it developed a secondary meaning, which
occurred when, in the minds of the public, the primary significance of the
mark was to identify the source of the product rather than the product
itself.
o TrafFix case
 MBI sued TrafFix for ripping off their trademark after the patent expired
for the sign stand
 Why can’t the stand be trademarked?
o Even if the stand were associated w/ a particular
manufacturer (so it’s got secondary meaning), it still cannot
be a trademark b/c the stand is functional.
 Functional features cannot be TM or TD
 Even if secondary meaning exists
 Functional = essential to use or purpose of article or affects
cost/quality of article.
 Utility patent on feature
 Strong evidence of functionality
 Aesthetic functionality:
 Functional b/c of aesthetic feature – e.g., heart-shaped candy box
for Valentine’s Day
  Aesthetic functionality provides grounds to deny trademark
protection to such design features because it affects the cost or
quality of the article.
o Laureyssens v. Idea Group
 No doctrine of “secondary meaning in the making”
o TM Office Proceedings
 “Incontestability” (Principal Register marks only) – Marks registered and
in continuous use for 5 years cannot be challenged for descriptiveness/lack
of secondary meaning –
 Can still be challenged for: Genericness, Functionality,
Abandonment, Fraud, grounds in 15 U.S.C. § 1052(a‐c)
 Grounds for Refusing Registration (on Principal Register) 15 U.S.C. §
1052
 a) Immoral, deceptive, disparaging, or scandalous matter
 b) Flag, coat of arms, or other governmental insignia
 c) Name, portrait, or signature of living person (or deceased U.S.
president) without consent
 d) Mark resembling another mark so as to cause confusion
Exception: Concurrent registration
 Immoral, Disparaging, Scandalous Marks
 Refusing registration of marks that are • disparaging (Matal v.
Tam); OR • immoral/scandalous (Iancu v. Brunetti) violates 1st
Amendment.
 Grounds for Refusing Registration (on Principal Register) 15 U.S.C. §
1052
 e) A mark which:
o (1) is merely descriptive* or deceptively misdescriptive**
o (2) is primarily geographically descriptive, except as
indications of regional origin*
 o (3) is primarily geographically deceptively
misdescriptive**
o (4) is primarily merely a surname*, or
o (5) comprises any matter that, as a whole, is functional**
 *Needs secondary meaning.
 **Never going to get registered.
o Geographic Marks
 Merely descriptive (TM reg. with secondary meaning) •
 Deceptively misdescriptive (TM reg. barred) •
 Geographically MISdescriptive (can be arbitrary/fanciful TM)
 In re Nantucket, Inc.
 Trademark registration of a mark can be refused on the ground that
the mark is primarily geographically deceptively misdescriptive
only if the purchasing public would expect the associated product
to have its origin in the geographic area referenced in the mark.
o Trademark Infringement: Likelihood of Confusion and Dilution
 Two types of TM infringement: likelihood of confusion and dilution.
 Two types of dilution: blurring and tarnishment
 Likelihood of Confusion
 People profiting off of the goodwill that I have created.
 Much of analysis revolves around average consumer of that
product.
 Sleekcraft factors (Balancing Test)
 The strength of the mark (Weaker mark  greater likelihood of
confusion; Stronger mark  lesser likelihood of confusion.)
o If arbitrary mark, wrongdoer was likely appropriating the
mark, b/c not sure why you would use an arbitrary/fanciful
mark except for stealing the original’s goodwill?
 The vicinity of the goods (If goods are more similar  greater
likelihood of confusion),
  The similarity of the marks (Similar in sound, sight, and meaning
 more likely infringement),
 Evidence of actual confusion (proven using surveys),
 The marketing channels used (if marketing done through same
channels  greater likelihood of confusion),
 The type of goods (More expensive  more likely that people
will pay greater attention to brand and features  likelihood of
confusion is lower),
 The defendant’s intent in selecting the mark (D would argue
that although names are similar, we had no idea that the
“Slickcraft” boat existed – and when we were informed by AMF,
we changed our logo to be distinctive – acted in good faith  less
likely infringement), and
 The likelihood of expansion of the product lines (boat company
may want to expand products into racing boats – same thing vice-
versa w/ other company  leans toward a finding of infringement)
o Dilution – can only be asserted by a “famous” mark.
 Blurring: Distinctiveness diminished/impaired if mark no longer brings to
mind TM owner alone (“Impairment of distinctiveness” – when I hear
Kodak, for example, will I think of both shoes and cameras?), or
 Tarnishment – using a mark that brings about disrepute to manufacturer
(e.g., Enjoy Cocaine instead of Enjoy Coca-Cola)
 Fair Use defense – if criticizing, then Fair Use.
 Regardless of confusion – still be dilution even if no likelihood of
confusion.
o Six-factor “dilution by blurring” analysis:
 (i) the degree of similarity between the marks (Facebook and Teachbook);
 (ii) the distinctiveness of the famous mark (strength of mark – arbitrary,
descriptive, etc. – more distinctive  greater likelihood of blurring),
 (iii) the degree of the plaintiff’s substantially exclusive use of the famous
mark,
  (iv) the degree of recognition of the famous mark (3 and 4 go to how
popular the mark is),
 (v) whether the defendant intended to create an association between the
marks, and
 (vi) the actual association between the marks.
o Louis Vuitton v. Haute Diggity Dog
 To state a trademark dilution claim, a plaintiff must show that it owns a
famous and distinctive mark, that the defendant has commenced using a
mark that is allegedly diluting the famous mark, that a similarity between
the marks gives rise to an association between the marks, and that the
association is likely to impair the distinctiveness or harm the reputation of
the famous mark.
 Under factor (i), it is clear that HDD’s marks are parodies of
LVM’s marks. They make light of LVM’s marks and are not so
similar that it could be construed that HDD is actually using
LVM’s marks themselves.
o Descriptive/Classic Fair Use
 X uses Y’s mark to describe X’s own products but not as a source‐
identifier e.g., “Micro Colors”/“microcolor” (KP Permanent) –
 Courts will consider the manner in which D used the mark,
whether D acted in good faith, and the extent to which D’s use is
likely to confuse consumers.
o Confusion does not necessarily disqualify fair use
o Nominative Fair Use –
 X uses Party Y’s mark to describe Y’s product e.g., PepsiCo’s ad: “PEPSI
tastes better than COKE” –
 Three Requirements:
 P’s product is not readily identifiable w/o use of TM,
 D has only used so much of the mark as is reasonably necessary to
identify P’s product, and
 Mark was not used to imply endorsement by TM holder
  Mattel v. MCA Records
 Held, Barbie Girl is protected as a parody under the trademark
doctrine of nominative fair use and under the First Amendment
 Likelihood of Confusion? • Dilution? Both song and title get
“noncommercial use” exemption—the parody is not purely
commercial speech
o Exhaustion/First Sale Doctrine
 Once TM owner/licensee sells trademarked good to buyer, the latter is free
to resell it - subject to quality control, repackaging, and repair limitations
to avoid consumer confusion and damage to TM owner’s goodwill.
o Exclusions to Dilution
 The following shall not be actionable as dilution by blurring or dilution by
tarnishment . . . :
 (A) Any fair use, including a nominative or descriptive fair use . . .
of a famous mark by another person other than as a designation of
source for the person’s own goods or services, including use in
connection with—
o (i) advertising or promotion that permits consumers to
compare goods or services; or
o (ii) identifying and parodying, criticizing, or commenting
upon the famous mark . . .
 (B) All forms of news reporting and news commentary.
 (C) Any noncommercial use of a mark.
 Right of Publicity
o Property interest in one’s name, likeness (visual), photograph, voice, signature, or
other personal characteristics in connection w/ commercial use.
 Defenses/exceptions: news, commentary, transformative use (similar to
Fair Use defense in copyright)
o Midler v. Ford Motor Co.
 Someone used a sound-alike of Bette Midler in their commercial
  Copyright claim?
 Let’s say it was duly licensed to Ford – no, no copyright claim.
o A voice is not copyrightable – has to be in a fixed medium.
 Unfair competition?
 Could this have diverted Midler’s audience away from her?
o No – this was a commercial for cars – she’s a performer
who does concerts – no competition b/w the two
 Right of Publicity under CA statute? Common law?
 Could not under statute b/c this was not her voice, it was another
person’s voice.
o None of enumerated categories fits this situation, which is
sound-alike
 So, go under common law – tort: her identity (voice) was appropriated in
selling product  customers misled into thinking she endorsed it.
 If a guy had sung the song in the commercial, it would have been a
different result, b/c it would not have been implying Midler’s
endorsement (appropriating her likeness)
o Saderup
 Artist who makes realistic depictions of celebrities on his t-shirts.
 Selling them and profiting
 Saderup lost on the issue of RoP – why?
 The art was not “transformative” enough to be held protected
under First Amendment.
o So, the use was not Fair Use, and so it was violating Marx
Bros.’s RoP
 When examining Fair Use in copyright, have to
weigh all four factors – but in RoP, whether
something is transformative carries a lot of
weight
  E.g., Warhol’s painting of Monroe was
“transformative” b/c not simply reproducing
Monroe, rather it was making a comment on
our fascination w/ celebrities – sufficiently
transformed it w/ respect to color scheme
and stuff, whereas Saderup’s work was
simply reproductive.
o Balancing Test: 1st Amendment vs. Right of Publicity
 Has product been “transformed” so it’s primarily D’s expression as
opposed to celebrity’s likeness?
 “transformative” concept from copyright fair use:
 New aesthetics, new insights, different purpose from original.
o Parody, caricature are two other ways of transforming a
work
 Does economic value of work flow primarily from celebrity’s fame?
 If people buy his work simply b/c they like the Three Stooges, the
RoP claim will overcome First Amendment defense
 However, if people buy his work b/c of his pattern, aesthetics, or
insights, then the First Amendment defense might overtake RoP
claim.
o Saderup’s work fails b/c it had no transformative elements.
 Largely a literal depiction of Stooges