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Chapter 08 - Intellectual Property and Unfair Competition
CHAPTER 08
INTELLECTUAL PROPERTY AND UNFAIR COMPETITION
I. OBJECTIVES
This chapter is designed to acquaint students with the law of intellectual property, certain
"commercial" or "competitive" torts, and the law of unfair competition as represented by § 43(a)
of the Lanham Act. See the Learning Objectives that appear near the beginning of the chapter.
The material on competitive torts can be treated separately, along with the other intentional torts
discussed in Chapter 6. Competitive torts are addressed in this chapter because they reflect the
general theme of unfair competition, as do the other doctrines and rules discussed in the chapter.
II. ANSWERS TO INTRODUCTORY PROBLEM:
A. Trademark
B. Patent, but only if requirements of patentability are met.
C. Copyright, though trademarks may be used in the commercial.
D. Copyright, usually; patent available if requirements are met.
E. Trademark
F. Trade secret, if kept secret; possibly patent if requirements are met.
G. Trademark
H. Patent, if requirements are met.
I. Trade secret, if kept secret.
J. Copyright
K. Trademark (trade dress variety)
III. SUGGESTIONS FOR LECTURE PREPARATION

A. Introduction
Stress the two policy justifications that individually or together underlie most of the topics
discussed in the chapter:
1. The idea that free competition can be carried to such an extreme as to discourage the
creativity and innovation such competition induces; and
2. The idea that certain minimum standards of ethical competitive behavior should be
upheld, quite apart from their ability to encourage creativity and innovation.
The introductions to most of the major sections in the chapter should suggest which
policy predominates in the area to be studied. Note that a different rationale--preserving
consumers' ability to identify favored products and services--helps justify trademark law.
B. Patents
1. Describe the meaning of patent protection in general terms and state the policy rationale
underlying such protection.
a. With the enactment of America Invents Act (AIA), the U.S. made major changes in
certain aspects of patent law. The AIA took effect in March 2013. Chapter 8’s
discussion of patent law reflects the current provisions, now that the AIA has taken
effect.
b. Who is entitled to a patent? Is it the first to invent, or is it the first to file? Note that
historically, the U.S. adhered to a first-to-invent rule in determining who is entitled to
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a patent. This approach ran contrary to what many other nations do. They instead
have tended to go with a first-to-file approach. With the AIA (see the above
paragraph), the U.S. moved from a first-to-invent system to a first-to-file system in
March 2013. Note the implications and likely effects of this change.
2. Briefly note the types of patents that may be awarded (see p. 266), but emphasize that the
text focuses on utility patents. With regard to the "what is patentable?" question:
a. You might distinguish a process (a means devised for the production of a given
result) from a machine (a distinctive means--basically an apparatus--for
accomplishing a given result). Other examples of a composition of matter
(another category of potentially patentable subject matter) are a pharmaceutical
product, alloy, and a new food product. You might also note that an improvement
may be patentable even if it relates to already patented subject matter, so long as the
tests of novelty, utility, and nonobviousness are met. (Those tests are discussed
later.)
b. Stress that laws of nature and natural phenomena are not patentable, even if they
were previously unknown and were only recently discovered. The law-of-nature
disqualification from patentability has received considerable attention from the
Supreme Court in recent years. Note, for instance, the Mayo v. Prometheus Labs
decision (discussed at p. 266), in which the Court held that a certain drug-dosage
correlation test was not, under the circumstances, a patentable process but was
instead merely a law of nature. Although applications of laws of nature may
sometimes be patentable, the particular test at issue in the case did not qualify as
such an application. Note the effect when a patent has not been obtained or has
been invalidated: others are generally free to engage in copying. Continuing with
the law-of-nature prohibition on patentability, consider Association for
Molecular Pathology v. Myriad Genetics, Inc., the text case discussed immediately
below.
Association for Molecular Pathology v. Myriad Genetics, Inc. (p.267): The

Supreme Court holds the Patent & Trademark Office (PTO) should not have
granted patents arising from the discovery of the precise location and sequence of
human genes that would substantially increase a patient’s risk of breast or
ovarian cancer. The genes and propensity for increasing a patient’s cancer risk
constituted a law of nature and a naturally occurring phenomenon. Hence, patents
were not available to those who isolated the relevant genes and discovered their
health significance.
Points for Discussion: Walk the students through basic facts here, without
digging too deeply into the science (unless, of course, you have a fairly extensive
background regarding the latter). Ask why Association for Molecular Pathology
and other plaintiffs sued the patent owner (Myriad). (They wanted a declaratory
judgment to the effect that if they developed tests for the particular genes
supposedly covered by Myriad’s patents, they would not be infringers because
the patents shouldn’t have been granted in the first place.) Note that the plaintiffs are
arguing the same things they would have argued if they had developed such tests
and Myriad had sued them for infringement. They would then have made the
arguments that the patents were invalidly granted. By seeking a declaratory
judgment, the plaintiffs jumped the gun on Myriad and hoped to obtain what they
ultimately received: a ruling that wiped out Myriad’s patents. Ask the students
what the Court’s decision means for developers of tests regarding the genes
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isolated by Myriad. (They received what amounts to a green light to do so.)

Aren’t patents supposed to provide incentives to create and innovate? Didn’t
Myriad make a great discovery? (Yes, to both questions.) So why is there the
law of nature prohibition? (Do we really want those who discover previously
unknown facts to have dibs on what they discovered for 20 years? Would that be
good policy? Note, importantly, that particular applications of the law of nature
that Myriad discovered could be patent-eligible, whether the applications are
developed by Myriad or by someone else.
c. The Supreme Court has held that practical applications of mathematical
principles may merit patent protection. This ruling helped paved the way for an
eventual decision by the PTO that certain computer programs may be patentable.
Mere abstract ideas, however, are not patentable.
d. Regarding the patentability of certain business methods, note the controversy that
has resulted from a 1998 decision in which the U.S. Court of Appeals for the
Federal Circuit held that business methods could qualify for patent protection.
For example, Amazon obtained a patent on its “one-click” online shopping
method, though the validity of the patent was contested in litigation. Critics have
argued that the U.S. Patent Office has granted business method patents too
readily in recent years, and that patents are improperly being issued for business
methods amounting only to “dressed-up” (frequently “Internet-ized”) versions of
long-used methods. In Bilski v. Kappos (formerly a text case, but now Problem
#7), the Supreme Court focused on how to determine whether a business method
is patentable and disappointed some observers who hoped that the Court would
interpret the Patent Act as not permitting patents on business methods.
Discussion of Bilski appears below. It is followed by discussion of a text case,
Alice Corp. v. CLS Bank Int’l, in which the Supreme Court applied Bilski.
Bilski v. Kappos: The U.S. Supreme Court holds that the “machine or
transformation” test is not the exclusive test for whether a business method is
patentable, and that the particular method at issue in the case (a method for
hedging against risk in energy price fluctuations) was not patentable.
Points for Discussion: Begin by providing a sense of the history of patentability
of business methods and the controversy that has attended the issue since the late
1990s. (See the above background.) Note what the business method in the case
involved, and what was contemplated by the “machine or transformation” test
that the Federal Circuit held to be the exclusive test for patentability of business
methods. Why do the students think the Federal Circuit regarded that test as the
exclusive one? Was it a nod to critics of the conclusion that business methods
could be patented? Might it have been a way of limiting the number of patentable
business methods without admitting that the court had been wrong in the 1998
decision that said business methods could be patented? As for the Supreme
Court’s decision, some critics of the notion that business methods are patentable
hoped that the Court would go well beyond its actual holding in the case and rule
that business methods simply are unpatentable. Instead, the court issued a more
limited ruling, though one suggesting that business method patents shouldn’t be
routinely granted even though they may be granted. What does the Supreme
Court say about the “machine or transformation” test? (That it may be useful to
apply, but that neither the language of the Patent Act nor the objectives
underlying it suggest that the machine or transformation test is the exclusive one
to be used when the patentability of a process was to be determined.) Why,
according to the Court, was the business method at issue in the case
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unpatentable? (Because it was merely an abstract idea placed in the form of a

mathematical formula. It was thus an approach that should be fair game for all to
use.)
Alice Corp. v. CLS Bank Int’l (p. 269): The Supreme Court holds that a
computer-implemented scheme for implementing settlement risk by using a
third-party intermediary amounts to an abstract idea and is therefore ineligible for
a patent. The Court therefore ruled that the patents at issue in the case were
invalid.
Points for Discussion: The Court traced a number of cases in which laws of
nature, naturally occurring phenomena, and abstract ideas are not patentable, and
the reason why those prohibitions appear in the Patent Act. Bilski (see above)
was among the decisions the Court cited and discussed. The reasoning and result
in Bilski led logically to the Court’s conclusion that the Alice patents at issue also
amounted to abstract ideas and thus were unpatentable. Although the Court
stressed that applications of abstract ideas may sometimes be patentable, simply
taking an abstract idea and saying “apply it with a computer” does not pass
muster under the Patent Act. Is that what was called for by the patents at issue?
(Yes, according to the Court.) Did the decision in Alice go as far as critics of
business method patents might have liked the Court to go? (No, because the
Court did not issue a sweeping ruling stating that business methods are
unpatentable.) But did the Court indicate that business method patents are likely
to receive fairly careful scrutiny when the validity is questioned? (It would
appear so.) Note, too, that those who are concerned about so-called patent trolls
(see the text’s later discussion at p. 276) probably enjoyed the fact that Alice’s
patents were ruled invalid. Alice, after all, had not obtained the patents in the
first instance; rather, Alice was an assignee of others’ patents.
e. In explaining the novelty requirement, note its overarching focus on whether the
invention is truly new and different from what has gone before in the relevant field.
Note that the novelty inquiry includes the before-application test outlined at p. 271.
List the things that, if they occurred prior to the filing of the patent application, will
disqualify the applicant from obtaining a patent. See p. 271. But be sure to note the
one-year window exception explained at p. 271. Walk the students through this
exception and stress its most common application: to the situation in which the
inventor begins public sale of the invention before filing the patent application. The
public sale constitutes a public disclosure of the invention, but the inventor can still
obtain a patent if the patent application is filed within a year after the public sale
commenced.
f. Discuss the nonobviousness requirement and what it contemplates. KSR v. Teleflex
(a former text case that is now Problem #1) is an excellent vehicle for doing so.
KSR International Co. v. Teleflex, Inc.: The Supreme Court reversed the Federal
Circuit’s judgment that a claim in Teleflex’s patent over placement of an electronic
sensor mechanism in an automobile accelerator pedal was nonobvious. In reversing,
the Supreme Court held that even though the prior art had not specifically “taught,
suggested, or motivated” Teleflex’s inventor to put the sensor on a fixed pivot point,
the solution would nonetheless have been obvious to a person of ordinary skill in the
area. The Court therefore saw merit in the defendant’s contention that Teleflex’s
patent was invalid.
Points for Discussion: When does an invention become obvious--and therefore
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unpatentable--in light of the prior art? In rejecting the “teaching, suggestion,

motivation” test applied by the Federal Circuit, the Supreme Court seemed to want to
reorient the obviousness test in a more pragmatic direction. Fixating on the fact that
the prior art had not specifically “taught” Teleflex’s inventor where to place the
sensor distracted from the real point of an obviousness analysis: namely, whether
Teleflex’s solution to the problem would have been apparent to persons of ordinary skill
in the field. Has the Supreme Court’s decision in this case made the
nonobviousness requirement a more difficult hurdle for patent applicants to
clear? Probably so. One other thing to note regarding this decision is that an
effect of the America Invents Act is to change the time frame of the
nonobviousness inquiry. Until March 2013, obviousness or nonobviousness was
determined in regard to the time of creation of the invention (i.e., what was
obvious as of that time?). Under the AIA, the relevant time is the time of filing of
the patent application (i.e., what was obvious as of then?).
3. The rights held by a patent owner are sweeping in nature, as the discussion in the text
indicates. They are effectively monopoly rights, though for a limited time. Note the mid-
1990s change in the law regarding the duration of utility patents (changing from 17 years
from the grant of the patent to 20 years from the filing of the application). Design patents
have a different duration, however. See p. 272 of the text.
4. Explain patent law’s exhaustion doctrine (also called the first sale doctrine), which
provides that the sale of an item embodying a patented invention exhausts the patent
owner’s rights over that particular item. Bowman v. Monsanto Co., the text case
discussed immediately below, involved a farmer’s unsuccessful attempt to invoke the
exhaustion doctrine as a shield against patent infringement liability. Your students may
have heard of the case, because the media reported fairly extensively on it.
Bowman v. Monsanto Co. ( p.272): The Supreme Court holds that the exhaustion
doctrine did not protect Bowman, a farmer, against patent infringement liability to
Monsanto.
Points for Discussion: What did Bowman do? Have the students summarize the basic
facts. Be sure they understand why purchasing soybeans from a grain elevator seemed to
him an attractive way to go for purposes of growing his second crop of the season.
(Those soybeans almost certainly had been grown from patented Roundup-Ready seeds,
they almost certainly were still Roundup-Ready to a considerable extent, and they were
much cheaper than buying more Roundup-ready seeds from a Monsanto licensee.) Of
course, the second-crop-of-the-season part of Bowman’s plan is what is problematic. But
hadn’t the soybeans he purchased from the grain elevator already been the subject of a
sale. So why doesn’t the exhaustion doctrine (the first-sale doctrine) apply with regard to
those soybeans and protect Bowman against infringement liability? (Because the
exhaustion doctrine only ends a patent owner’s rights regarding the particular copies or
items at issue—here, the previously sold soybeans. It does not entitle a person in
Bowman’s position to reproduce the patented invention in additional copies or items.
The latter is what Bowman did.) What would happen to Monsanto’s patent rights if lots
of farmers began doing what Bowman did? No doubt the Supreme Court was thinking
along those lines. Ask the students what they think about the bug guy versus little guy
flavor of this case. That flavor probably helped generate much of the media attention
given to the case. The Supreme Court, however, appeared to regard this case as an easy
one to decide.
5. Note that the shop-right doctrine discussed in the text (see p. 274) refers only to the
employer's license to use the patent, not to patent ownership. The other two rules
discussed at this point deal with patent ownership.
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6. Note the doctrine of equivalents and its key role in many patent infringement cases of a
direct infringement nature. Emphasize the traditional formulation of the test used for
whether an allegedly infringing use by the defendant involves substantial equivalence to
the patented invention. Note also that there may be liability in appropriate cases for
inducing patent infringement or for contributory infringement.
7. Briefly note the remedies available to successful plaintiffs in patent infringement cases.
Mention that even though injunctions remain a standard and frequently imposed remedy
in such cases, they are not a mandatory remedy.
8. With regard to defenses, emphasize the two obvious ways to defend against a patent
infringement claim: arguing that the alleged infringement does not fall within the
subject-matter of the patent; and attacking the patent by arguing that it should not have been
granted.
9. A new section added for the 16th edition (see p. 266) summarizes other major changes
brought about by the America Invents Act. Note what that section says about actions
taken—and not taken—by Congress in the AIA.
C. Copyright
1. Regarding the original works of authorship protected by copyright law:
a. Note that originality is not the same thing as uniqueness or the novelty required for a
patent. Rather, to be original, the copyrighted matter must only be original to the author
(i.e., the author's own work). A good example is a hypothetical situation in which
Composer B writes a song that is quite similar to an earlier copyrighted song written by
Composer A, with Composer B's having neither heard nor otherwise had access to
Composer A's song. Composer B is entitled to copyright protection for his song, just as
Composer A is entitled to copyright protection for her song.
b. Another example of the distinction between ideas, etc. and the form in which they are
expressed is the difference between the theory of relativity and a book on that subject.
c. A photograph is an example of a copyrightable depiction of pure fact involving
originality and creativity. The photographer would have exercised judgment in making
decisions on such matters as where to stand when taking the picture, how to position the
persons or things shown in the picture, and what type of film (color or black and white) to
use.
d. Students may be surprised to learn that the copyright on a work does not protect the
work's title. (This point is not mentioned in the text.) This helps explain why there are
various songs, books, and other copyrighted works with the same or very similar titles.
Some--though clearly not all--work titles may be protected under trademark law or under
§ 43(a) of the Lanham Act.
2. Regarding copyright formalities, stress that registration is not needed for a copyright to
exist. Copyright protection exists once the original work of authorship has been created
and fixed in a tangible medium. Registration, however, is usually a prerequisite to filing
a suit for infringement. Although the Berne Convention Implementation Act of 1988
amended copyright law to make notice no longer mandatory, use of notice still affords
some advantages. For example, if proper notice is present, the defendant in an
infringement case usually cannot reduce the actual or statutory damages described later
by claiming that the infringement was innocent. In addition, use of notice may furnish
the practical benefit of "scaring off" would-be infringers.
3. In discussing copyright duration, be certain to note the effects of the 1998 Sonny Bono
Copyright Term Extension Act (CTEA). Any work under valid copyright as of the
October 1998 effective date of the CTEA received an extra 20 years of protection. Of
course, the longer duration contemplated by the CTEA also attaches to works created
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after October 1998. Concerning works created in 1978 or thereafter, contrast the basic
rule for determining copyright duration (life of the author plus 70 years, under the CTEA)
with the work-for-hire rule (under the CTEA, 95 years from first publication or 120 years
from creation, whichever comes first). Discuss the circumstances under which the basic
rule would apply, and those under which the work-for-hire rule would apply.
a. Note that if the basic rule governs the duration of the copyright when the work comes
into being, the basic rule still applies even if the author later transfers the copyright to a
legal entity such as a corporation. For instance, the composer of a song may later transfer
the copyright to a music publishing firm. The duration of the copyright is still measured
by the composer's life plus 70 years, even though a corporation now owns the copyright.
b. The basic rule and the work-for-hire rule apply only to works created in 1978 or
thereafter. Huge numbers of pre-1978 works are still governed, in terms of duration, by
the "old" copyright rules discussed in the text. The rules governing pre-1978 works
provided for a 28-year term plus a renewal term (if the proper procedures for renewal
were followed). The renewal term, originally 28 years and later extended to 47 by
Congress, is now 67 years with the enactment of the CTEA. The "old" rules concerning
duration will therefore be with us for many years to come. The renewal aspect of the old
rules sometimes proved to be a trap for the unwary, so Congress scrapped the idea of
renewal when it enacted the duration rules that apply to works created in 1978 or
thereafter.
c. Because of the CTEA, we are still in a 20-year period in which no copyright protection
will lapse and no copyrighted works will pass into the public domain. Not until the year
2018 ends will the flow of works into the public domain again commence. You may
wish to discuss the public policy implications of this state of affairs. Critics of the CTEA
have asserted that the very lengthy copyright durations it establishes are contrary to the
spirit of the "limited times" language in the copyright clause of the U.S. Constitution.
d. In 2003, the Supreme Court decided Eldred v. Ashcroft, 537 U.S. 186, the case referred to
on p. 277 of the text. In upholding the CTEA against constitutional attack, the Court held
that even though the copyright protection period had become quite lengthy, it was still a
“limited time” for purposes of the Constitution’s Copyright Clause. As for the incentive-
to-create argument, the Court refused to require that each and every copyright enactment
by Congress satisfy the incentive requirement. The focus, instead, is on whether
copyright provisions in general would tend to furnish an incentive to create. Under that
approach, the CTEA passed constitutional muster. Moreover, the Court noted, all
previous copyright duration extensions enacted by Congress had been applied to already
existing works. Although the Court upheld the CTEA, it made comments that raised
questions about the wisdom of the enactment. Justices Breyer and Stevens wrote
vigorous dissents.
4. Provide an overview of the rights possessed by the owner of a copyright and the ways
these rights can be licensed or transferred. Be sure that students understand the difference
between a copyright license and an outright transfer (or assignment) of a copyright. See
p. 278.
American Broadcasting Cos. v. Aereo, Inc. (p. 278): The Supreme Court holds that
Aereo’s method of streaming copyrighted TV programs to paying subscribers violated
copyright owners’ performance rights.
Points for Discussion: Note that most copyright infringement cases that focus on
performance rights (for instance, those involving copyrighted songs) tend to have less
complex facts than this one. Have the students trace the basic elements of Aereo’s plan,
without getting into too many technical details. Suffice it to say that Aereo devised what
it regarded as a way around having to pay the licensing fees that cable networks have to
pay in order to make programming available to their paying subscribers. Of course, then,
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Aereo could keep its prices low for its subscribers. Note, but probably only in a general
sense, the Court’s discussion of the Transmit Clause in the Copyright Act and of how a
violation of that clause serves as a violation of copyright owners’ performance right.
Does the Court’s decision have a substance-over-form feel to it? (I.e., Aereo’s form
differs from that of CATV providers (the forerunners of today’s cable networks), but its
substance is the same in terms of the access to copyrighted programs that consumers get).
Does the Court seem to be saying that Aereo’s method achieves the same results cable
companies achieve, that Congress clearly wanted CATV’s (and therefore cable
companies’) actions to be subject to the Copyright Act, and that Congress therefore
would have wanted an Aereo-like method to be subject to the Copyright Act as well?
5. Explain that the Copyright Act includes a provision setting forth the first-sale doctrine
(largely the same doctrine seen in patent law). Start this discussion with basic examples
similar to the textbook example noted at p. 281 of the text. For instance, one who buys a
novel owns that copy of it and can sell or give it to someone else without implicating the
rights of the copyright owner. But the owner of that copy of the novel cannot make
additional copies of it, because doing so would violate the copyright owner’s rights to
make and distribute copies. After such an introduction to the first sale doctrine, discuss
Kirtsaeng, a text case the students are likely to find interesting
Kirtsaeng v. John Wiley & Sons, Inc. (p. 282): The Supreme Court holds that the first
sale doctrine protects Kirtsaeng against copyright infringement liability to Wiley, the
owner of the copyrights on various books at issue in the case.
Points for Discussion: Ask the students to summarize Kirtsaeng’s profit-making plan.
(He had friends or family members in Thailand purchase copies of Wiley-copyrighted
textbooks that Wiley produced outside the U.S. and intended for distribution outside the
U.S.; the purchasers in Thailand would then ship the copies of the books to Kirtsaeng in
the U.S.; Kirtsaeng would then re-sell those copies in the U.S.; and Kirtsaeng, after
paying those who bought the copies for him in Thailand, would make a good profit.) Ask
why, as a practical matter, this worked for Kirtsaeng. (Because Wiley’s overseas editions
of the books were essentially the same as the U.S. versions but were sold at significantly
lower prices outside the U.S. than were charged in the U.S. for the U.S. versions. Thus,
Kirtsaeng could sell the overseas editions in the U.S. at lower prices than would be
charged for the functionally equivalent U.S. versions.) So, what was the possible hitch in
Kirtsaeng’s plan, which might otherwise seem to be a legally permissible way to take
advantage of the first sale doctrine? Ask students about the Copyright Act’s importation
provision, on which Wiley was relying. That provision states that importation of
coyrighted material into the U.S. without the authorization of the copyright owner
violates the distribution right held by the copyright owner and is therefore infringement.
So what is Wiley arguing? (That the importation provision should control, and that the
Court should harmonize the importation provision and the first-sale doctrine provision by
holding that the first-sale doctrine does not apply when the copies at issue were produced
outside the U.S.) Why did Wiley’s argument fail? (Because the importation provision
says that a violation of it is a violation of the copyright owner’s distribution right, as
outlined in the statutory section dealing with rights of copyright owners, and the statutory
section dealing with the first sale doctrine expressly states that copyright owners’ rights
are subject to the first-sale doctrine. Moreover, the section on the first sale doctrine does
not contain language amounting to a geographic limitation of the sort for which Wiley
was arguing. You may have to walk the students through some of this, but they will get
it.) Note the Court’s expressions of concern about the implications for possible future
cases if the Court were to read a geographic limitation into the section on the first sale
doctrine. Ask, finally, about how this ruling by the Court may affect the overseas
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production and sales practices of Wiley (practices that have been common in the
publishing industry).
6. In discussing infringement, explain the elements of access, copying (either deliberate or
subconscious), and substantial similarity. Note the extent to which the copying and
substantial similarity elements tend to overlap.
a. A famous case dealing with subconscious copying is the one in which former Beatle
George Harrison was held liable for infringing the copyright on the song "He's So
Fine." Portions of Harrison's song "My Sweet Lord" reflected substantial similarity
to, and apparent copying from, portions of "He's So Fine." The fact that any copying
by Harrison was not deliberate (i.e., that it was subconscious) did not protect him
against liability. Intent to copy or to infringe is not an element of a copyright
infringement claim.
b. You might also note a recent example that students probably heard about because it
received considerable attention from the media: the 2015 jury decision in favor of
the Estate of Marvin Gaye in the estate’s copyright infringement lawsuit against
Robin Thicke and Pharrell Williams. The defendant’s song, “Blurred Lines,”
contained musical expression that was too similar, in the Estate’s view, to Gaye’s
song “Got To Give It Up.” Thicke and Williams supposedly planned to appeal. No
further development had occurred in the case as of the time this manual was
produced.
c. Emphasize that even a quantitatively small amount of borrowing from the
copyrighted work's expression may be enough to constitute infringement--especially
if the borrowed portion was qualitatively significant (e.g., an important, particularly
memorable, or easily recognizable portion of the copyrighted work). Note, also, the
text's statement that a defendant's having paraphrased the original (as opposed to
having used the literal language) is not necessarily a defense. Neither is the
defendant's having cited the copyrighted work as the source. It is not infringement,
however, to "lift" facts, general ideas, themes, and the like from copyrighted works,
because the copyright protects only the expression contained in the work.
d. MGM v. Grokster, a former text case now serving as the basis of the Cyberlaw in
Action box on p. 285, deals with a variety of infringement issues. We include
discussion notes on Grokster in case you wish to devote meaningful class time to it.
MGM Studies, Inc. v. Grokster, Ltd.: The U.S. Supreme Court recognizes the
inducement theory of copyright infringement liability and remands for further
proceedings, while offering a very strong indication that Grokster and StreamCast
(collectively referred to below as "Grokster") should be held liable for inducing
infringing uses of their software that allowed peer-to-peer file-sharing.
Points for Discussion: This case should generate student interest because of its
relationship to the activity of file-sharing. Both Grokster and the Ninth Circuit's
2001 decision in Napster (cited in Grokster) dealt with attempts to impose
infringement liability on entities other than the direct users of the copyrighted works
at issue. In Napster, the Ninth Circuit Court of Appeals had placed contributory and
vicarious infringement liability on Napster. In Grokster, however, the Ninth Circuit
had said Grokster was not liable. Distinguishing Napster, the Ninth Circuit held that
Grokster's lack of a central server over which it had control prevented the
infringement theories that doomed Napster from being applied against Grokster. The
Ninth Circuit also regarded Grokster as protected by language in the Supreme Court's
Sony decision--language seeming to indicate that a technological advancement could
not be deemed an instrument of infringement if it could be put to substantial
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nonfringing uses as well as to infringing uses. The Supreme Court concluded that the
Ninth Circuit's decision in favor of Grokster was erroneous because the Ninth Circuit
failed to recognize that the inducement theory of liability would apply to Grokster.
Ask the students what underlying actions the contributory infringement, vicarious
infringement, and inducement theories all depend on. (Answer: direct infringement
by users of the Napster-like or Grokster-like service.) Note that the direct infringers
need not be named in the lawsuit, but proof of such infringing actions must be
demonstrated in order for contributory or vicarious infringement liability or
inducement liability to even potentially apply. Sometimes of course, direct users
themselves have been sued in recent years by owners of copyrights on songs,
recordings, and movies. Ask why it is that most uses of Napster or Grokster amount
to infringement. What are the elements of contributory infringement? (Knowledge
of infringing activity and material contribution to the occurrence of infringing
activity.) What are the elements of vicarious infringement? (Right and ability to
supervise users' actions and direct financial benefit.) The Supreme Court appears to
acknowledge that Grokster wouldn't be liable under either of these theories, but
strongly indicates that application of the inducement theory would lead to a different
outcome. Ask what area of the law the Supreme Court "borrows" from in
recognizing the inducement theory. (Patent law, where the inducement theory is
well-established.) Ask what must be shown, according to the Supreme Court, in
order for inducement liability to exist? (Intent to promote infringing uses, clear
expressions of that intent, and affirmative steps to promote infringing uses.) Why
would Grokster be subject to inducement liability? (Chiefly, its advertisements and
other promotional efforts--particularly those after Napster had been shut down by
court order--that effectively advocated the use of Grokster's software to engage in
uses of an infringing nature.) Note that the Supreme Court remands without actually
holding Grokster liable, but the message to the lower courts on remand is clear. The
Supreme Court regarded Grokster's unlawful objective as "unmistakable" and
considered the evidence potentially supporting inducement liability to be quite
strong.
Ask the class why the Supreme Court says that the Ninth Circuit erred in holding
that the Sony language about potential for noninfringing uses protected Grokster
against liability. (The Supreme Court says that the Sony language was never meant
to be applied in disregard of evidence clearly indicating the applicability of the
inducement theory. Unlike Grokster, the VCR makers in Sony hadn't engaged in
conduct amounting to inducement. In addition, the evidence in Grokster showed that
an overwhelmingly large percentage of the uses of Grokster's software were
infringing in nature, and that noninfringing uses were very few and very far
between.). Finally, ask about the Grokster-related ethical issues raised in the Ethics
in Action box at p. 293.
6. Note that when the plaintiff elects the statutory damages option alluded to at p. 286
(instead of choosing the basic remedy of actual damages plus infringer's attributable
profits), the court sets the amount of recovery within certain ranges set by Congress.
Proof of the existence or extent of harm to the copyright owner is not a prerequisite to the
recovery of statutory damages. Currently, statutory damages may range from a minimum
of $750 to a maximum of $30,000. However, if the evidence shows that the
infringement was willful in nature, the statutory damages ceiling is raised to $150,000.
7. Discuss the issues addressed in the Cyberlaw in Action box at p. 292 (the Digital
Millennium Copyright Act’s “safe harbor” provisions and its anticircumvention and
antitrafficking provisions. Note the court’s rejection of the fair use and First Amendment
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arguments made by the defendant in the Corley case.

8. Emphasize that many cases hinge on the fair use defense, which involves consideration
of factors whose application and weight vary from case to case. Explain the purposes and
effect of the fair use defense. Note the types of uses singled out by Congress as good
candidates for fair use protection. Introduce the factors courts must apply in deciding
whether a defendant’s use was fair use. Emphasize that fair use cases are highly fact-
specific. Bouchat (a text case discussed later) is a very good example. So is Perfect 10, a
former text case that is now Problem #10. Discussion notes on Perfect 10 are included
later. Campbell v. Acuff-Rose Music, Inc. (a former text case that is discussed and applied
in Bouchat and Perfect 10) remains a leading case and serves as an excellent discussion
vehicle. Although Campbell is no longer included in Chapter 8, we include extensive
comments on it immediately below. Those who plan to use Campbell may wish to
provide students a copy of the decision.
Campbell v. Acuff-Rose Music, Inc.: The U.S. Supreme Court holds that parody of a
copyrighted work is a candidate for the protection of the fair use defense, even when the
parody has a commercial character. The Court, however, stops short of a categorical rule
that parody is always to be considered fair use. (As mentioned earlier, you may want to
provide the class a copy of the Campbell opinion.)
Points for Discussion: Note that each side advanced an extreme position, neither of
which the Court was inclined to adopt. Acuff-Rose, the copyright owner, sought a ruling
that the commercial character of a defendant's use automatically prevents the defendant
from being able to rely on the fair use defense. The alleged infringer, 2 Live Crew,
sought a ruling that parody is fair use in all instances. Rejecting both of these extreme
positions, the Court steered a middle course by holding that parody may sometimes
constitute fair use, and that the commercial character of a use does not in and of itself
deprive the user of the fair use defense. The Court stressed that parody must work its
way through the four factors that are applied in any case in which fair use protection is
asserted as a defense. After application of the factors, the parody at issue may--or may
not--be classified as fair use. The inquiry is highly-fact-specific.
This case illustrates that whether a use amounts to fair use does not depend upon
whether the copyright owner thinks a license is necessary. Here, Acuff-Rose refused to
grant 2 Live Crew permission to record its parodic version of "Oh, Pretty Woman." 2
Live Crew recorded the parody anyway. Even though the group proceeded against the
copyright owner's wishes, the group may still be entitled to the protection of the fair use
defense.
Note the Court's discussion of the importance, to the fair use analysis, of
"transformative" uses (see the early portions of the decision). Ask the students how 2
Live Crew's version of "Oh, Pretty Woman" might be regarded as transformative in
nature. Also note the emphasis placed by the Court on the Copyright Act's language that
lists criticism or comment as examples of the types of uses that are candidates for fair use
treatment. Parody, of course, often employs humor as a way of conveying criticism or
commentary. The Court emphasized, however, that in order for a parody to have
potential entitlement to fair use protection, it must contain criticism of, or commentary
on, the substance or style of the copyrighted work--as opposed to reflecting nothing more
than borrowing from the copyrighted work as a means of gaining attention or "avoid[ing]
the drudgery in working up something fresh." Although the Court considered the call a
close one, it concluded that 2 Live Crew's parodic version of "Oh, Pretty Woman" did
contain comment on the original version's substance or style.
Ask the students about the Court's analysis of the fair use factors. Factor #1 is the
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purpose and character of the use, including whether it was for commercial purposes or
for nonprofit educational purposes. The Court stated that even though commercial
character tends to cut against fair use, the court of appeals erred when it made
commercial character a conclusive bar to fair use entitlement. A defendant's commercial
purpose will often cause factor #1 to be viewed in favor of the copyright owner, but the
other factors must still be examined. Depending on the relevant facts, a commercial use
may still obtain the protection of the fair use doctrine.
Note, also, the Court's comments that the significance of the commercial character of
the defendant's use will vary from case to case, and that the use of a parody to help sell
another product might not be viewed as favorably in the fair use analysis as the sale of
the parody itself (the situation in Campbell). Although the Court did not explain these
comments, it appeared to be signaling that the use of a parody in a TV commercial for a
product may not be as good a candidate for the fair use label as the use present in
Campbell, in which the parody itself--2 Live Crew's version of "Oh, Pretty Woman"--was
the thing being sold. The Court also made it clear that a defendant's parodic purpose is a
relevant consideration under factor #1. To the extent that the parody is designed to
constitute criticism of the copyrighted work, the parody would have a purpose consistent
with the objectives underlying the fair use defense.
Factor #2 is the nature of the copyrighted work. This factor plays a much more
important role when there has been a borrowing from an unpublished copyrighted work.
In that event, factor #2 tends to cut rather strongly against fair use. Where, as here, the
borrowing was from a published work, factor #2 tends not to have much significance
either way. Moreover, as the Court points out, familiar published works are logical,
typical targets of parodists. Factor #2 is effectively neutral in this case.
Factor #3 considers the amount and substantiality of the portion of the work used, in
relation to the work as a whole. The Court adopts a pro-parody approach to this factor,
stressing that in order make a parody effective, the parodist must be able to borrow
enough from the copyrighted original to be able to "conjure up" the original in the minds
of readers, viewers, or listeners. If the parody's audience cannot identify what is being
parodied, the humor and point of the parody are likely to be lost. The Court's approach to
factor #3 means that the parodist is likely to be able to get away with more borrowing
that is the nonparodist borrower. For example, parodists such as the members of 2 Live
Crew, if they succeed with the fair use defense, would not be liable even though they
deliberately borrowed from "Oh, Pretty Woman" what probably was more than what
nonparodist George Harrison subconsciously borrowed from "He's So Fine." (See the
earlier discussion of the infringement case in which Harrison was held liable.)
Factor #4 considers the effect of the use on the potential market for, or value of, the
copyrighted work. As a general rule, a parody is not likely to have an adverse effect on
the market for the original, because the parody will not be viewed by the public as a
substitute for the original. To take an example from an actual case, one who wants to
purchase the sheet music for the copyrighted song "When Sunny Gets Blue" is not likely
to be satisfied with a copy of the parodic version titled "When Sonny Sniffs Glue."
Parodists thus would generally seem to be in good shape under factor #4. Indeed, in
Campbell, an expert witness for Acuff-Rose conceded on cross-examination that 2 Live
Crew's version of "Oh, Pretty Woman" would not adversely affect sales of the
copyrighted original. The Supreme Court pointed out something else of importance,
however, about factor #4. Under that factor, courts must also consider the prospect of
harm to markets for derivative uses of the copyrighted work. In Campbell, a relevant
question was whether 2 Live Crew's parodic version of "Oh, Pretty Woman," done in the
group's rap style, would adversely affect potential markets for rap versions of the
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copyrighted original. Because the lower courts had not considered this question, the
Supreme Court remanded the case.
Bouchat v. Baltimore Ravens Limited Partnership (p. 287): The Fourth Circuit holds that
the fair use defense protects the NFL against infringement liability for producing videos
that contained game-action shots in which a version of Bouchat’s copyrighted logo was
visible. (The Baltimore Ravens for a time had used the logo.) The Fourth Circuit also
holds that the fair use doctrine protects the Ravens against infringement liability for
displaying images that showed their former logo (which resembled Bouchat’s logo) in the
context of historical exhibits at the team’s stadium. Adopters should be aware that this
case is a different Bouchat case from the one that appeared in the 15th edition. As noted
in the facts summary that appears in the text, the case included in the 16 th edition is the
latest in a lengthy series of cases brought by Bouchat against the Ravens and sometimes,
as here, against the NFL.
Points for Discussion: Ask a student to summarize the general history of Bouchat’s
ongoing disputes with the Ravens, as well as the basic facts. Note that as with many
copyright infringement cases, this case hinges on whether the defendants’ uses
constituted fair use. Note the nature of the fair use defense and the fact that there isn’t a
magic list of uses that are fair or, as the case may be, unfair. Rather, each case in which
fair use is argued must involve application, weighing, and balancing of the four fair use
factors. The cases therefore become highly fact-specific.
Separate out the two uses at issue in this case (the use in the NFL videos and the use
in the historical exhibits at the stadium.) Identify the four fair use factors and work
through each one in regard to each of the uses. Ask students what the court concluded
with regard to each factor. What were the major reasons why the court determined that
the use in the NFL videos was fair use? Do the students’ agree with the court’s
conclusions? What was the major reason why the court determined that the use in the
historical exhibits at the stadium was fair use? Do the students agree? Work in
discussion of Campbell and of how the Fourth Circuit applied Campbell’s emphasis on
whether a use is transformative (a matter relevant to the first fair use factor). On what
else does the Fourth Circuit place importance in applying the first and fourth fair use
factors to each of the uses at issue in the case? Do you suppose the court has become a
bit frustrated with Bouchat and his repeated lawsuits over uses of the logo? Might that
have been an unstated factor here?
Perfect 10, Inc, v. Amazon.com, Inc. (formerly a text case; now Problem #10): The 9th
Circuit vacated the lower court's preliminary injunction against Google's posting
thumbnailed images from Perfect10.com's "members only" section on Google Image
Search. The court held that Perfect 10 had made out a prima facie case that Google had
violated its display right by using the thumbnails, but that Google did not violate Perfect
10’s rights by linking to other sites where full-size images of Perfect 10’s photos could be
seen. The court also held that Google would have a valid fair use defense to Perfect 10’s
prima facie showing of a violation of Perfect 10’s display right.
Points for Discussion: The court characterizes Google’s use of the thumbnails as
“transformative” because the thumbnails on Google’s service serve a different “purpose”
than the ones on Perfect 10’s website—namely, to aid users in their Internet searches.
The purpose of Perfect 10’s images, of course, was “artistic expression.” Is that a helpful
distinction? The court also holds Google’s service has no market effect, even though it
no doubt directs millions of users to unauthorized full-size Perfect 10 images they could
never have found otherwise. Finally, though Google used the entire image, albeit scaled
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down, the court regarded the substantiality factor as a wash. It seems pretty likely the
court recognized the larger stakes, and just declined to slow down the Google
phenomenon. Was the court concerned about the implications for the public interest if
search engines such as Google were held liable in cases such as this one.
Further fair use examples: Problems #2, #3, and #13.
D. Trademarks
1. Discuss the reasons why the law protects trademarks. After noting the various kinds of
marks protected by the Lanham Act, mention that the chapter mainly concerns itself with
trademarks and service marks.
a. Also note that the chapter focuses on protection of marks under the federal
Lanham Act (the most desirable and most expansive trademark protection
available), though the common law and state statutes also provide legal
protection for trademarks.
2. Discuss the requirement that to merit protection, a mark must be distinctive. Discuss the
hierarchy of types of marks in terms of distinctiveness (or nondistinctiveness). Also
suggest why some kinds of marks merit more protection than others. Descriptive and
generic marks, for example, are not apt to remain in the consumer's mind and become
associated with a particular product. Also, how effectively can a competitor of the
trademark owner carry on business if such marks are protected? How, that is, can he
describe his products without risking liability? In this connection, be sure to discuss the
concept of secondary meaning and why it affords protection to descriptive marks,
deceptively misdescriptive marks, geographically descriptive marks, and marks that are
primarily a surname. Note that some terms are said to be so inherently generic that they
can never acquire secondary meaning. "Cereal" is an example.
3. Discuss the requirements for registration of a mark on the federal Principal Register.
Note that those requirements relate closely to the categories of distinctiveness just
discussed. Also note the situations when secondary meaning is and is not required as a
prerequisite to registration on the Principal Register.
a. Emphasize that registration is not required in order for one to use a trademark.
Neither is registration required in order for some legal rights over the trademark to be
triggered (e.g., rights under the common law). Only if registration on the Principal
Register is obtained, however, will the trademark owner have the more expansive
protection associated with a federally registered mark.
b. For consideration of whether color may quality for registration as a trademark, see
Problem #4.
4. Emphasize how and why the transfer of trademark rights is relatively difficult. Contrast
this with the transfer of copyrights and patents.
a. The Global Business Environment box at pp. 296-97 outlines some basic concepts
regarding the acquisition and protection of trademark, patent, trade secret, and
copyright rights in foreign nations. Walk the students through those basics. Note,
too, the piracy problem addressed in the Global Business Environment box at p. 294.
5. The registration duration rule mentioned in the text (10 years, plus successive 10-year
renewals) applies to marks first registered on November 16, 1989 or thereafter.
Registrations first granted prior to that date carried--and still carry--a 20-year duration,
with renewals of those registrations continuing to be for successive 20-year periods. As
was the case with the "old" rule governing copyright duration, we will be dealing with the
"old" rule on trademark duration for many years to come.
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6. Discuss the various ways that trademark protection may be lost before the duration of the
registration expires. Emphasize, in particular, the problem of a mark's becoming generic.
If a mark is held by the Patent & Trademark Office (PTO) or a court to be generic, the
mark's registered status and the mark owner's exclusive rights are lost. Other examples of
this (besides the ones in the text) include Shredded Wheat, Toll House (for cookies), and
Gold Card.
a. Ask your students for examples of current trademarks that could be in danger of a
ruling that they have become generic (if a proper proceeding were initiated in the
PTO or a court). Possible examples include Kleenex, Jell-O, Band-Aid, and Xerox.
Neither a court nor the PTO has been presented with a cancellation request regarding
Kleenex, Jell-O, Band-Aid, or Xerox, however.
b. Note, also, that a trademark registration can be cancelled in an appropriate legal
proceeding if it is determined to be disparaging to individuals or groups. The text
discusses a current example: the PTO’s cancellation of the registration for the
Redskins name (used for several decades by the Washington Redskins football team).
Note what this cancellation means and does not mean. See pp. 294-95.
7. When discussing trademark infringement, note that there are two required elements of
infringement: (1) sameness or substantial similarity; and (2) likelihood of confusion in
one or more of the senses mentioned in the text. The first element is fairly easy to satisfy
if the infringement claim is at all plausible. The second element is often much more
difficult to satisfy. In fact, the vast majority of trademark infringement cases hinge on
the likelihood of confusion question. For discussion of the factors courts take into
account in deciding whether there was likelihood of confusion, see Louis Vuitton (a
former text case) and Starbucks (a text case). Both cases present trademark infringement
issues and trademark dilution issues. Discussion of the two cases appears after the
discussion of dilution (see below). In addition, see Problem #5.
8. Trademark dilution is both a relatively new and an old doctrine in trademark law. It is
relatively new as a matter of federal law, by virtue of the Federal Trademark Dilution Act
of 1996 (FTDA) and the Trademark Dilution Revision Act of 2006 (TDRA), a set of
amendments to the FTDA. (The TDRA receives extensive discussion at pp. 295-96 of the
text.) Dilution is an old doctrine in the sense that for many years, states have had dilution
statutes (though they were seldom invoked by trademark owners until relatively recent
years). Roughly half of the states have such statutes. Until the enactment of the FTDA,
Congress had resisted trademark owners' pleas for federal recognition of the dilution
doctrine.
a. A dilution claim is attractive to trademark owners because it does not require proof of
likelihood of confusion. Note the alternative ways in which dilution may be
established under state statutes or the FTDA (as amended by the TDRA): (1) through
proof of a likely blurring of (or a "whittling away" at) the distinctiveness of the
plaintiff's trademark; or (2) through proof of likely tarnishment of the plaintiff’s
trademark. Under the FTDA and the TDRA amendments, the plaintiff's trademark
must be "famous" and the defendant's use must have been commercial in nature.
State statutes do not necessarily contain the requirements mentioned in the previous
sentence.
1. A good example of the “blurring” or "whittling away" type of dilution may be
found in a case that involved Polaroid and arose under the Illinois dilution
statute. The Polaroid trademark had long been used in connection with cameras
by the company of the same name. Another (and much smaller) firm began
using the name "Polaroid" for its heating and air conditioning business. The
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court agreed with Polaroid that if the heating and air conditioning firm continued
to use the Polaroid name for its business, consumers who had been exposed to
uses of Polaroid and Polaroid would then think, whenever they saw the Polaroid
mark, not only of the camera company but also of the heating and air
conditioning firm.
Even if consumers were not likely to think that Polaroid had gone into the
heating and air conditioning business (i.e., even if consumers were not likely to
be confused), there would be dilution of the distinctive quality of Polaroid's
trademark. This would be so because the mark that once conjured up thoughts of
one source (the camera company) would instead conjure up thoughts of two
different sources (the camera company and the heating and air conditioning
firm). The court therefore enjoined the heating and air conditioning firm's use of
Polaroid.
2. Dilution of the mark's distinctive quality should not be an automatic conclusion
every time two marks are quite similar, however. For example, after winning a
short-lived victory in the district court, Mead Data Central, which owned the
"Lexis" trademark and used it in connection with its computerized legal research
database, lost a dilution claim against Toyota, which had chosen the name
"Lexus" for its luxury car and luxury car division. The federal court of appeals
was not convinced that the distinctive quality of Lexis would be diluted. (The
case was decided under a state dilution statute.)
3. In explaining the alternative dilution theory of tarnishment, stress the
unwholesome context requirement courts generally impose. Absent illicit sexual
or drug-use connotations, an unwholesome context normally does not exist. In
other words, the context of the defendant's use is not rendered unwholesome by
the mere fact that the trademark owner does not like the defendant's use. You
may also wish to note that some courts allow tarnishment claims to be made out
through proof of the defendant's use of a substantially similar version of the
plaintiff's trademark in connection with goods that are less prestigious or of
lower quality than the goods as to which the trademark owner uses the mark.
b. As the text suggests, the FTDA and the TDRA amendments contain various
provisions whose meanings are less than clear. This has led to a considerable amount
of litigation in very recent years, as parties have disagreed over the meaning and
applicability of the statute's terms. A cynic might be inclined to assert that the FTDA
should have been subtitled "The Trademark Lawyers' Full Employment Act of 1996."
c. Louis Vuitton Malletier, SA v. Haute Diggity Dog, LLC (formerly a text case; now
Problem #8): Haute Diggity Dog manufactured dog chew toys designed to look
comically like Louis Vuitton bags. Louis Vuitton alleged the toys diluted and
infringed its trademarks and infringed its copyrights. The 4th Circuit affirmed a grant
of summary judgment for the defendant.
Points for Discussion: Note that the basis for the parody “defense”—namely, that
Haute Diggity literally throws Vuitton’s mark to the dogs—is exactly what inspires
Vuitton’s lawsuit. In other words, what made Vuitton mad enough to sue serves as a
big reason why Vuitton loses the case. Given the obvious parody, consumers simply
aren’t likely to be confused here. The court applies the likelihood of confusion
factors in a way that reflects the clear influence of the parody context on what
consumers probably would or would not think. Turning to the dilution claim, ask
students why neither dilution by blurring nor dilution by tarnishment is present here.
Note, too, that even though the court interprets the parodist-protection language
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added by the TDRA amendments as not strictly applicable to Haute Diggity’s

actions, the court effectively gives Haute Diggity’s parody the same degree of
indulgence contemplated by the supposedly inapplicable TDRA language.
d. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc. (p. 297): The Second Circuit affirms
the trial court’s decision in favor of the defendant (referred to here as Black Bear) on
Starbucks’ trademark infringement and dilution by tarnishment claims, but vacates
the decision in favor of Black Bear on Starbucks’ dilution by blurring claim. The
Second Circuit therefore remands for reconsideration of the dilution by blurring
claim.
Points for Discussion: This case provides a nice vehicle for examining the factors
courts take into account in determining whether there was likelihood of confusion
(the critical element in trademark infringement cases. After asking a student to
summarize the basic facts, work through the likelihood of confusion factors and ask
students how the court applied each factor. Which factors in the weighing and
balancing process seemed most significant to the court’s determination that Black
Bear did not commit infringement? Ask students why the Second Circuit vacated the
trial court’s ruling against Starbucks on the dilution by blurring claim. (The trial
court concluded that substantial similarity was required for such a claim, but the
Second Circuit said that similarity—regardless of whether it was substantial in
nature--was enough under the Trademark Dilution Revision Act. That error by the
trial court may have affected its application of other factors relevant to a dilution by
blurring claim, so reconsideration of that claim was necessary.) As for the dilution
by tarnishment claim, why was there neither tarnishment nor likelihood thereof?
10. Note the 1999 enactment of the Anticybersquatting Consumer Protection Act
(ACPA), in which Congress sought to pay special attention to a problem that simply
did not exist two decades ago. Stress the importance of the "bad faith intent to profit"
element discussed in the text. Some cases of cybersquatting may also raise
infringement or dilution issues. The ACPA, however, attempts to meet the
cybersquatting concern head-on and with appropriately targeted remedies. The
ACPA is discussed in the Cyberlaw in Action box that appears at p.302.
E. Trade Secrets
1. Emphasize what a trade secret is and discuss the purposes of trade secrets law.
2. Be sure to mention that trade secrets law sometimes provides an alternative to the other
means of protection (mainly patent law) available to those desirous of protecting valuable
inventions.
3. Note from the section’s introduction that the main justification for providing a remedy for
the misappropriation of trade secrets is to uphold certain standards of commercial ethics,
and not to stimulate innovation. The main reason is the apparent view that the innovation
stimulated by protecting trade secrets does not outweigh the disadvantages--mainly, the
harm to competition and the inability of others to further develop the secret--resulting
from secrecy.
4. Stress the text's statement that in order to receive protection, owners need not adopt
extreme measures to block every ingenious form of espionage.
5. Go through the three major forms of misappropriation discussed in the text. See the
Coleman case (discussed below) and Problem #6.
6. Cover the basics regarding noncompetition agreements (see p. 303), though it should be
noted that such agreements sometimes go beyond being attempts to protect trade secrets.
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Note the competing interests at stake in connection with noncompetition agreements.

Stress what courts tend to focus on when determining whether a noncompetition
agreement is enforceable or, instead, too broad to be enforceable.
7. Coleman v. Retina Consultants, P.C. (p. 303): The Georgia Supreme Court holds that a
noncompetition clause in a contract was unenforceable insofar as it went beyond the
former’s employer’s interest in protecting its trade secrets, where the noncompetition
provision contained no duration and purported to limit the former employee’s ability to
use even material that he had developed and that was not his former employer’s trade
secret.
Points for Discussion: Ask a student to summarize the basic facts. By virtue of its
decision here, is the court effectively granting Coleman permission to use his former
employer’s trade secrets? (No.) After this decision, what can Coleman lawfully do?
What can’t he lawfully do? Ask students questions that get at the problems with this
noncompetition agreement. What’s wrong with it, according to the court? Did the former
employer get anything out of this agreement over and above what it would have had
under the law even without this agreement? (No. Even without a noncompetition
agreement, Coleman would have had a common law duty not to use his former
employer’s trade secrets.)
F. Injurious Falsehood
1. A successful claim of injurious falsehood involves proof of the following: a) the
defendant's communication, to a third party, of a false statement, b) that disparages
another's business or property broadly conceived and thus causes harm to another's
economic interests, c) with this harm taking the form of "special damages" (some fairly
tangible and provable form of economic loss), and d) some kind of fault or culpability on
the part of the defendant (see below).
2. The most common types of harm to the economic interests of another are comprehended
by the traditional torts of trade libel and slander of title discussed in the text. Other harm-
causing statements that do not involve attacks on the plaintiff's property usually qualify
as well, however. Example: D falsely tells T that P has died, causing T to buy goods from
someone other than P. Or, suppose that D falsely tells T that P does not deal in certain
goods, thus deflecting a possible sale.
3. Note that the special damages discussed in the text are part of the cause of action for
injurious falsehood. For this reason, a plaintiff who cannot prove special damages also
cannot recover nominal damages, punitive damages, or injunctive relief.
4. It seems generally agreed among the states that some form of fault on the part of the
defendant is a necessary element of an injurious falsehood cause of action. In addition, it
seems generally agreed that negligence is not enough. Beyond these points, however,
there is variation from one state to another. The Restatement test stated in the text
(knowledge of falsity or recklessness in that regard) is probably your best alternative for
class use, because it appears to represent a trend among the states. (This is the actual
malice concept--borrowed from defamation law. See Chapter 6.) Some states, however,
require proof of common law malice (ill will, spite motives, etc.). Other states require
proof of specific intent to cause economic harm.
5. Note the possible--and partial--overlap with defamation discussed in the text.
6. Note that all or almost all of defamation law's absolute or conditional privileges apply in
injurious falsehood cases. On these privileges, see Chapter 6.
G. Interference with Contractual Relations
1. Probably the best way to break down the material in this section is to discuss: a) the
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"threshold requirements" for liability, and b) the variety of factors relevant to

determinations of impropriety or privilege.
2. With respect to these threshold requirements:
a. Note that some hindrance to an existing contractual relation is needed. Most often,
this means that the third party breaches his contract with the plaintiff. However, the
tort almost certainly applies to any kind of interference that reduces the value of the
third party's performance as well.
b. Note the wide variety of types of behavior that constitute interference. Refusals to
deal, however, are a problem area. (E.g., D says to T: "I won't deal with you so long
as you continue your dealings with P.") In view of the law's general tendency to
respect a party's freedom to deal, or not to deal, with whomever he chooses, courts
hesitate to make refusals to deal automatically unlawful. Such cases, however, fall
close to the line. Their outcomes depend upon the particular facts and circumstances
at issue. See Lewis-Gale, a text case discussed below.
c. Note the different types of existing contracts whose frustration will result in liability.
This probably includes oral contracts subject to the statute of frauds, contracts for
which a condition precedent has not been fulfilled, and unconscionable contracts.
Note also the types of "contracts" that can safely be interfered with. One example is a
"yellow dog" contract (which is forbidden by federal labor law). Finally, although
liability may result from interference with a terminable-at-will contract, liability is
less likely in such situations. See Lewis-Gale, a text case discussed below.
d. Finally, note that the interference with the contract must be intentional. There is no
liability for negligent interference with a contract.
3. The text's discussion of "privilege" situations probably provides enough examples for
classroom use. The Carey Station Village case (a former text case now serving as
Problem #9) deals with this subject.
Lewis-Gale Medical Center, LLC v. Alldredge (p. 307): The Supreme Court of Virginia
overturns a jury verdict in favor of the plaintiff (Dr. Alldredge) in an interference with
contractual relations case. The court holds that the defendant (Lewis-Gale Medical
Center) did not employ improper methods and, in any event, the employment contract
allegedly interfered with was terminable at will.
Points for Discussion: Have a student summarize the basic facts. Note the terminable-at-
will nature of the employment contract between Alldredge and SWEP (the contract with
which Lewis-Gale allegedly interfered). Didn’t Lewis-Gale use some harsh tactics here?
Wasn’t calling Alldredge an “organizational terrrorist” pretty extreme? Why wasn’t that
improper? (Court says it wasn’t independently tortious, which is probably true.) Would
such a statement give rise to a good defamation claim? (Probably not. Given the
opinion-oriented, hyperbolic nature of the statement, it probably wouldn’t be seen as a
false statement of supposed fact.) But what good is an interference with contractual
relations claim if the plaintiff effectively has to establish the defendant’s commission of
some other tort? How far should we let parties such as Lewis-Gale go in what the court
calls a “rough-and-tumble’ world? How big a factor in the court’s decision was the fact
that the contract between Alldredge and SWEP was terminable at will? (It was
significant. Although it did not expressly say so, the court suggested that less latitude
might have been extended to Lewis-Gale if the contract had not been terminable at will.)
One other consideration is worth noting here: the court’s indication that in using
aggressive tactics here, Lewis-Gale was looking out for its own legitimate interests.
H. Interference with Prospective Advantage
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1. Emphasize how this tort differs from interference with contractual relations. Here, we are
concerned with hoped-for or likely business relations, not existing contractual relations.
Possible examples of interference with prospective advantage include: interferences with
the prospect of hiring employees; interferences with the prospect of obtaining
employment; interferences with the prospect of buying or selling products, land, or
intangibles; and even interferences with a business relation that does not involve an
actual contract.
2. Also emphasize that most of the "privilege" factors discussed previously apply in this
context as well. The exception is that interferences undertaken by competitors are much
less likely to produce liability where prospective advantages are involved. Recall that
such conduct often results in liability for intentional interference with contractual
relations if the defendant disrupts an existing contract.
I. Lanham Act § 43(a)
1. Section 43(a) appears at 15 U.S.C. § 1125(a).
2. Go through the text's five applications of § 43(a)'s broad language. Example of a false
advertising claim that involves an omission and an ad that is not clearly false on its face:
a seller of artificial fur coats calls one of its brands "Normink" and does not disclose the
coat's true nature. Problem # 11 deals with the type of statement that may violate § 43(a).
Time Warner Cable v. DIRECTV, Inc. (p. 310):
On a false advertising claim, the Second Circuit upheld the lower court's preliminary
injunction against DIRECTV ads implying, falsely, that high-definition picture quality
could not be had on "basic cable." It vacated a preliminary injunction against Internet ads
that depicted unrealistically poor "other tv" picture quality; this was puffery.
Points for Discussion: Should there be a puffery defense? Why is a nonspecific
misrepresentation worse than a specific one? The idea is that a competent, media-literate
consumer won't fall for it. Is this an appropriate setting for another appearance by the
"reasonable person?" It is easy to see the sense in applying the reasonable person
standard to an allegedly negligent defendant. Such standards also serve to keep
"ultrasensitive" litigants from holding up the normal flow of adult society. But what
value is there in an ad that is designed to fool the gullible through puffery? Probably
none. But not all puffery is actually designed to fool somebody. In this case, it probably
would have been difficult to advertise the distinction between 720p and 1080i resolution
through anything less than puffery. The difference is subtle unless it is viewed on an
enormous screen. Ask the class how to market high-definition television effectively
without puffery. Is it even possible? How would you distinguish the name-brand paper
towel from the leading brand without puffery?
3. Note that when false advertising is present, it will be enjoined. A corrective advertising
order is also among the court's arsenal of remedies for false advertising. If the party
alleging false advertising wants money damages, however, that party must adduce proof
of resulting economic harm. A commonly awarded item of damages is the plaintiff's
increased costs in countering the defendant's false ads.
IV. RECOMMENDED REFERENCES

A. J.T. MCCARTHY, MCCARTHY'S DESK ENCYCLOPEDIA OF INTELLECTUAL PROPERTY.
B. A. MILLER & M. DAVIS, INTELLECTUAL PROPERTY: PATENTS, TRADEMARKS, AND
COPYRIGHTS IN A NUTSHELL.
C. M. EPSTEIN, EPSTEIN ON INTELLECTUAL PROPERTY.
D. R. BROWN & R. DENICOLA, COPYRIGHT.
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E. S. FISHMAN, THE COPYRIGHT HANDBOOK: HOW TO PROTECT AND USE WRITTEN WORKS.
F. S. KANE, TRADEMARK LAW.
G. K. MCGRATH & S. ELIAS, TRADEMARK: LEGAL CARE FOR YOUR BUSINESS & PRODUCT
NAME.
H. K. STUCKEY, INTERNET AND ONLINE LAW.
I. K. NORWICK AND J. CHASEN, THE RIGHTS OF AUTHORS, ARTISTS, AND OTHER CREATIVE
PEOPLE.
J. D. DOBBS, THE LAW OF TORTS.
K. Arlen W. Langvardt, Section 43(a), Commercial Falsehood, and the First Amendment: A
Proposed Framework, 78 MINNESOTA LAW REVIEW 309 (1993).
L. Arlen W. Langvardt and Kyle T. Langvardt, Unwise or Unconstitutional? The Copyright
Term Extension Act, the Eldred Decision, and the Freezing of the Public Domain for Private
Benefit, 5 MINNESOTA INTELLECTUAL PROPERTY REVIEW 193 (2004).
M. Arlen W. Langvardt and Tara E. Langvardt, Caught in the Copyright Rye: Freeing First
Amendment Interests from the Constraints of the Traditional View, 2 HARVARD JOURNAL OF
SPORTS & ENTERTAINMENT LAW 99 (2011).
V. ANSWERS TO PROBLEMS AND PROBLEM CASES

1. The defendant was correct. This invention was obvious, according to the Supreme Court.
Therefore, the invention failed the nonobviousness requirement—meaning that the patent was
invalid and that the defendant had a good defense. The Court reasoned that even though no
one appears to have thought or suggested that it would be good to use an electronic sensor in
the specific context in which the inventor used it, the widespread use of sensors with regard
to other motor-vehicle-related matters should have given someone the idea. Hence, the
invention was obvious. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
2. Koons succeeded on the fair use defense. The Second Circuit held that Koons’ critical and
artistic purpose rendered his painting “transformative.” The court found additional
justification in Koons’ assertion that the use of an existing image advanced his satirical
purposes. These considerations allowed the court to downplay the considerable profit Koons
made as a factor in the fair use analysis. As for the substantiality of the portion Koons used,
the court held that Koons had used the less “creative” portions of the original image. Finally,
the court saw no adverse market effect. Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006).
3. MasterCard sued for trademark infringement and dilution and for copyright infringement. In
the trademark aspects of his case, MasterCard was seeking to enforce its rights to stop, and
obtain monetary damages for, uses that allegedly amounted to infringement or dilution of the
"Priceless" trademark. In the copyright aspect of the case, MasterCard sought to enforce its
rights to make and distribute copies of its copyrighted works, its right to perform or display
those works, and its right to prepare derivative works. The copyrighted works at issue were
the TV commercials that made up the "Priceless" series of advertisements. Concerning the
trademark infringement claim, the defendants argued that their use of MasterCard's trademark
did not cause a likelihood of confusion among consumers as to source, origin, sponsorship,
endorsement, or affiliation. Concerning the trademark dilution claim, the defendants argued
that their use of MasterCard's trademark was not commercial in nature and did not whittle
away at the distinctiveness of the "Priceless" trademark. The defendants won. Neither
trademark infringement nor trademark dilution occurred. There was no copyright
infringement either, because the defendants were entitled to the protection of the fair use
defense. MasterCard International, Inc. v. Nader 2000 Primary Committee, Inc., 2004 U.S.
Dist. LEXIS 3644 (S.D.N.Y. 2004).
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4. The Court held that color is registrable if the applicant proves secondary meaning in regard to
it. In other words, the applicant must prove that it has used the mark (in this instance, the
color) long enough and extensively enough that the relevant public has come to associate the
mark with the applicant. The Court’s decision contains useful discussion of different types of
trademarks and their registrability. This case was a text case prior to this edition. Instructors
who may wish to use it for teaching purposes beyond the narrower color registrability issue
may want to provide students a copy of the edited version that appeared in the 11 th edition of
the text. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).
5. Yes. The “Surfvivor” mark was “suggestive,” and therefore worthy of some intermediate
level of protection. But the “Surfvivor” and Survivor marks are only aurally similar, not
visually so. The paucity of the evidence of actual confusion weighed in favor of Survivor
Productions, while the minor market overlap in sunscreen products slightly favored Deptula.
The Ninth Circuit concluded that in light of the evidence, it would not disturb the lower
court’s conclusion that a likelihood of confusion could not be established. Surfvivor Media,
Inc. v. Survivor Prods, 406 F.3d 625 (9th Cir. 2005).
6. Yes. The Second Circuit Court of Appeals affirmed the district court's issuance of a
preliminary injunction in favor of North Atlantic Instruments (NAI). The Second Circuit
concluded that the list of client contacts was indeed a trade secret belonging to NAI and that
Haber's use and disclosure of the client contact list after he left NAI involved a breach of the
confidential relationship between NAI and Haber. Although Haber's written employment
contract with NAI contained a clause obligating him not to use or disclose NAI's trade secrets
after he no longer worked there, he would have been liable to NAI in this case even if the
written employment contract had not contained such a provision. The reason? An ex-
employee's duty to preserve his former employer's trade secrets exists by operation of law,
regardless of whether it appears in a written contract. North Atlantic Instruments, Inc. v.
Haber, 188 F.3d 38 (2d Cir. 1999).
7. Although business methods can sometimes be patented, this particular one was not eligible
for a patent. It was merely an abstract idea. Mere abstract ideas cannot be patented. Bilski v.
Kappos, 130 S. Ct. 3218 (2010). Note: Bilski receives considerable discussion earlier in this
chapter of the manual. See that earlier discussion. In addition, the Supreme Court devoted
meaningful attention to Bilski in the Alice decision, a text case.
8. Vuitton lost its trademark infringement claim and its trademark dilution claim. The
infringement claim failed because there was no likelihood of confusion. Reasonable
consumers would not think, the court concluded, that Vuitton had anything to do with uses
that poked fun at Vuitton’s trademarks. As for the dilution claim, nothing the defendants did
in their parody versions would lessen the distinctiveness of the Vuitton trademark or tarnish
the reputation associated with it. Louis Vuitton Malletier, SA v. Haute Diggity Dog, LLC, 507
F.3d 252 (4th Cir. 2007).
9. No. Reversing the trial court’s decision, the Georgia Court of Appeals held that the
homeowners association was not liable to the developer for interference with the contracts
between the developer and the lot purchasers because the association was not a stranger to the
relationships between the developer and the purchasers and was privileged to act in protection
of its own legal interests. The key question was whether the association had a privilege to do
what it did. The association had a vested interest here, given the related series of dealings
involving the association, the developer, and the lot purchasers. The court concluded that the
association was merely protecting its own interests in regard to an ongoing and multi-faceted
relationship to which it was not an outsider. Should the association have been expected to
refrain from protecting its own interests if the effect of protecting them was to disadvantage
the developer? The court answered that question with a clear “no.” Carey Station Village
Homeowners Association, Inc. v. Carey Station Village, Inc., 602 S.E.2d 233 (Ga. App.
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2004).
10. Google successfully invoked the fair use defense. In applying the fair use factors, the court
placed heavy emphasis on the transformative purpose associated with Google’s use of the
thumbnail images in the context of reporting Internet search results. The court also seemed to
be influenced by public interest considerations and the implications for the public if search
engines were to be held liable in cases of this nature. Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007). Note: Both Google and Amazon were defendants in the case.
Discussion of the Perfect 10 case appears earlier in this chapter of the manual.
11. Puffery. “America’s Favorite Pasta” does not stand for a discrete or measurable fact.
“Favorite” essentially means “well-liked,” a subjective descriptor. “America” does not mean
that the pasta is distributed nationally, as it is entirely possible the best-liked pasta in America
could be available only in certain regions. American Italian Pasta Co. v. New World Pasta
Co., 371 F.3d 387 (8th Cir. 2004).
12. The defendants were liable for inducing patent infringement. The Supreme Court held that
inducement liability requires a showing that the defendants knew the induced acts would
constitute patent infringement. The Court went on to hold, however, that the doctrine of
willful blindness can be used as a way of satisfying the knowledge element. The Court
characterized the willful blindness doctrine as well-established in the criminal law, and saw it
as a useful device in the civil context of liability for inducing patent infringement. In light of
the record, the court concluded that the defendants had been willfully blind in taking steps to
avoid literal knowledge that the SEB fryer was patented. Hence, the knowledge requirement
of inducement liability was established sufficiently to support the conclusion that the
defendants were liable. Global Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011).
13. Colting argued that the fair use defense should protect him against liability. A federal district
court, however, issued a preliminary injunction in favor of Salinger and thereby barred
distribution of Colting’s novel in the United States. Although it later vacated the preliminary
injunction, the Second Circuit issued an opinion indicating, after relatively brief analysis, that
Colting would be unlikely to succeed with a fair use defense. Salinger v. Colting, 607 F.3d 68
(2d Cir. 2010). The parties later settled their dispute. For an analysis that uses Salinger v.
Colting as a jumping-off point for examination of First Amendment and fair use issues in
copyright infringement cases, see Arlen W. Langvardt and Tara E. Langvardt, Caught in the
Copyright Rye: Freeing First Amendment Interests from the Constraints of the Traditional
View, 2 HARV. J. SPORTS & ENT. L. 99 (2011).
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gifts, and have received in return these priceless treasures.” Then
they showed the glass beads, a specimen too often approaching the
value of the gifts received by the strong from the weak. Montezuma
sat mute, scarcely heeding the messages sent him by Grijalva,
concerned most of all that vassals should not witness his dismay.
Here again was his phantasy before him, like the shade of dead
Hector before Æneas, warning him against hopeless resistance to
the preordained fall of Troy.
Bidding the men retire and keep secret what they had seen,
Montezuma hastily summoned his privy council,[146] King Cacama of
Tezcuco, his brother Cuitlahuatzin, lord of Itzapalapan, and laid
before them the mystery. After sage consultations, attended by
divinings and comparisons of signs, prophecies, and traditions, not
unlike the means by which we of to-day likewise ascertain the
unknowable, it was concluded that this commander was none other
than the fair-hued god himself, who had returned to resume the
throne, as he had said. Therefore resistance would be in vain; and
the only proper course was to tender worthy reception and conciliate
with gifts. The chiefs were sent back with orders for the governors of
the coast districts[147] to report any arrival or strange occurrence.
Following them was an embassy of five persons bearing rich
presents, with instructions to bid the god welcome in the name of the
emperor and of his court; yet they were to watch him closely. But the
embassy was too late. Grijalva had gone.[148]
FOOTNOTES
[138] When Francisco Cortés entered the town, shortly after the fall of Mexico, he
was met by a body of Indians with their hair tonsured like priests, and with crosses
in their hands, headed by the chief in flowing white gown and scapulary. This, they
explained, had been the practice of the shipwrecked crew, who had held up the
cross as a recourse from all danger. Frejes, Hist. Conq., 63-4. This authority
places implicit reliance in the story, and regards the strangers as a missionary
party driven from the East Indies or China. Jalisco, Mem. Hist., 30-2.
[139] See Native Races, iii. and v., 25-6, for the myths relating to Quetzalcoatl,
and to their interpretation, in which occur the characters of the Messiah and the
apostle Saint Thomas, with whom some pious chroniclers have identified him. The
Saint Thomas idea is advocated in Florencia, Hist. Prov. Comp. de Jesus, 234.
[140] The natives of Española are said to have received an oracle shortly before
Columbus’ arrival, announcing the coming of bearded men, with sharp, bright
swords. Villagvtierre, Hist. Conq. Itza., 33. The Yucatec records abound in
predictions to the same effect, more or less clear. The most widely quoted is that
of Chilam Balam, high-priest of Mani, and reputed a great prophet, who foretold
that, ere many years, there would come from the direction of the rising sun a
bearded white people, bearing aloft the cross which he displayed to his listeners.
Their gods would flee before the new-comers, and leave them to rule the land; but
no harm would fall on the peaceful who admitted the only true God. The priest had
a cotton mantle woven, to be deposited in the temple at Mani, as a specimen of
the tribute required by the new rulers, and he it was who erected the stone
crosses found by the Spaniards, declaring them to be the true tree of the world.
Cogolludo, Hist. Yucathan, 99-101, gives the prophecy at length, which is not quite
so clear as the version which he afterward quotes from Herrera. The latter calls
the priest Chilam Cambal, and says: ‘Esta fue la causa que preguntauan a
Francisco Hernandez de Cordoua, y a los suyos, si yuan de donde nacia el Sol.’
Dec. ii. lib. iii. cap. i. Alaman enters into a profound argument on the above, and
interprets Chilam Cambal to be the Chinese for Saint Thomas. In seeking to give a
date he mistakes the meaning of a Yucatec age and places the prophecy back at
the beginning of the Christian era. The opening lines of the prophecy read, ‘at the
end of the thirteenth age,’ which should be interpreted ‘at the end of two hundred
and sixty years.’ The name is also given as Chilam Balan and Chilan Balam, the
latter part savoring of the Canaanite divinity. Remesal, Hist. Chyapa, 245-6;
Gonzalez Dávila, Teatro Ecles., i. 203-4. A priest of Itzalan, named Patzin Yaxun
Chan, is recorded as having urged his people to worship the true god, whose word
would soon come to them; and the high-priest of the same place, Na Hau Pech,
prophesied that within four ages—a Yucatec age equals twenty of our years—
news would be brought of the supreme God, by men who must be received as
guests and masters. Ah Ku Kil Chel, also a priest, spoke with sorrow of ills to
come upon the people from the north and from the east. In the age following the
date of his prediction no priest would be found to explain the will of their idols.
Another temple guardian announced that in the last age idolatry would cease, and
the world would be purified by fire. Happy he who repented! Cogolludo, Hist.
Yucathan, 97-101. Several prophecies therein quoted literally are reproduced in
Villagvtierre, Hist. Conq. Itza., 34-5, which also refers to Itzan predictions.
Among the Mexicans, says Mendieta, predictions were current some four
generations before the conquest of the coming of bearded men dressed in
raiments of different color, and with caskets on their heads. Then the idols would
perish, leaving but one supreme God; war would cease, roads would be opened,
intercourse established, and the husband would cherish but one wife. Hist. Ecles.,
180; Torquemada, i. 235-6. This smacks of an elaboration of the Quetzalcoatl
promise. Nezahualcoyotl, the wise Tezcucan monarch, who died in 1472, left
poems in which chroniclers have discovered vague allusions to a coming race.
The reader may, perhaps, be equally fortunate if he examine the specimens of his
poems given in Native Races, ii. 494-7. His son Nezahualpilli, equally celebrated
as a just king and a philosopher, versed in the occult arts, revealed to Montezuma
that, according to his astrologic investigations, their towns would within a few
years be destroyed and their vassals decimated. This, he added, would soon be
verified by celestial signs and other phenomena. Duran, Hist. Ind., MS., ii. 254-7.
The precursor of these harbingers of evil appears to have been the famine of
1505, which compelled many a parent to sell his children for the means to obtain
food, while others lined the road-side with their famished bodies. The cessation of
smoke from the volcano Popocatepetl, for twenty days, was a feature seized upon
by the diviners as a sign of relief; and true enough, in the following year, the
suffering people were cheered with an abundant harvest. Soon again their fears
were roused by an eclipse and an earthquake, in the very inaugural year of the
new cycle, 1507, and by the drowning of 1800 soldiers during the Miztec
campaign. Almost every succeeding year confirmed their apprehensions by one or
more signs or occurrences of an ominous nature. One of the most alarming was
the appearance, in broad day, of a comet with three heads, which darted across
the sky, eastward, with such speed that the tails seemed to scatter sparks.
‘Salieron cometas del cielo de tres en tres ... parecian ... echando de sí brasas de
fuego ... y llevaban grandes y largas colas.’ Mendieta, Hist. Ecles., 179. ‘Cayó una
cometa, parecian tres estrellas.’ Sahagun, Hist. Conq., i. 4; Native Races, v. 466.
After this, in 1507 or 1510, a pyramidal light, which scattered sparks on all sides,
rose at midnight from the eastern horizon till its apex reached the zenith, where it
faded at dawn. This continued for forty days, or for a year, according to some
accounts. ‘Diez años antes que viniesen los españoles ... duró por espacio de un
año cada noche.’ Sahagun, Hist. Conq., i. 3. ‘Ocho años antes de la venida de los
españoles, ... y esto se vió cuatro años.’ Id., Hist. Gen., ii. 271. It occurred in 1509,
and lasted over forty days. Codex Tell. Rem., in Kingsborough’s Mex. Antiq., v.
154; vi. 144. The interpreter of the Codex enters into a lengthy argument to prove
it a volcanic eruption, one of his points being that the original picture-writing places
the light as appearing behind, or from, the mountains east of the city. In 1510,
Ixtlilxochitl, Hist. Chich., 278, or year five, toxtli. Codex Chimalpopoca, MS.;
Camargo, Hist. Tlax., 139. Torquemada, who had no other authority for the
preceding comet than Herrera, considered that by the comet was meant this light,
i. 234. Humboldt suggests that the fiery pyramid may have been a zodiacal light.
Astrologers announced that it portended wars, famine, pestilence, mortality among
the lords, every imaginable ill, in fact, and causing one general cry of fear and
lament. Montezuma himself was so troubled that he applied for advice to
Nezahualpilli, although they had not been on speaking terms for some time. This
royal astrologer showed his apprehensions by ordering all campaigns then upon
his hands to be suspended, and announced to his confrère that the disasters in
store would be brought upon the empire by a strange race. Montezuma expressed
his disbelief, and proposed a game of tlachtli to decide the interpretation. As if
resigned to the fate predicted for himself, and desirous of showing how little he
appreciated wealth and power, Nezahualpilli is said to have staked on the result
his kingdom against three turkey-cocks. The wager was not so hazardous,
however, as it seemed, for the king of Tezcuco was a good player. After allowing
Montezuma to win the first two points, and raising high his hopes, he stopped his
exultation by scoring the rest for himself. Still doubtful, Montezuma called on an
astrologer famous for his many true announcements, only to receive confirmation
of Nezahualpilli’s utterance, whereupon the irate monarch caused the house to be
pulled down over the diviner, who perished in the ruins. Ixtlilxochitl, Hist. Chich.,
278-9; Veytia, Hist. Ant. Méj., iii. 345-7. Clavigero, who connects the game with a
comet, is quite earnest in asserting his belief in traditions and presages of the
coming of Spaniards, as attested by native paintings and by witnesses of high
standing. ‘Se il Demonio pronosticava le future calamità per ingannar que’
miserabili Popoli, il pietosissimo Dio le annunziava per disporre i loro spiriti al
Vangelo.’ Storia Mess., i. 288-9. According to Duran, the summoning of
Nezahualpilli was due to a comet with an enormous tail, which burst upon the view
of a temple-watcher as it rose in the east and settled above the city. Montezuma,
who had been roused to witness the phenomenon, called on his sorcerers for an
explanation, and on finding that they had seen nothing, had them punished for
their sloth. The wise Tezcucan then came and presaged dire calamities, which
would also afflict himself. He was resigned, and would retire to await death. This
was to be the last interview between the two kings. Hist. Ind., MS., ii. 274-85.
Torquemada compares the comet to that which, according to Josephus, lib. vii.
cap. xii., presaged the entry of Titus into Judea. When Nezahualpilli returned to his
palace, a hare ran into the halls, pursued by eager domestics, but he bade them to
leave it, saying that even so would a strange people enter into Anáhuac without
resistance. Torquemada, i. 211-12, 214. Bernal Diaz speaks of a round sign in the
eastern sky, of a reddish green, to which was attached a streak extending
eastward. The consequent predictions of war and pestilence he finds fulfilled in the
campaign of Cortés, and in the smallpox epidemic introduced by Narvaez. Hist.
Verdad. (Paris ed. 1837), iv. 460-1. Among the accounts of celestial signs which
may be based on the preceding is one by Camargo, describing a brightness
observed in the east by the Tlascaltecs, three hours before dawn, accompanied by
a whirlwind of dust from the summit of Mount Matlalcueje. Remesal refers
probably to the same whirlwind under the guise of a white cloud, like a pillar, which
often appeared in the east before sunrise, and afterward descended upon the
cross erected in Tlascala by the Spaniards. The natives accepted this as an
intimation that the new-comers were heaven’s chosen people, and received the
cross. Hist. Chyapa, 304; Camargo, Hist. Tlax., 140. Gomara appears to connect
this eastern light with a thick smoke and with the fiery pyramid, which were
followed by a battle in the sky between bodies of armed men, attended with great
slaughter. Some of the courtiers surrounding Montezuma while he observed this
phenomenon, pointed out that the arms and dress of the victorious faction
resembled those in the chest which had been washed up on the coast. He
declared his conviction, however, that they must be relics of his divine ancestors,
not of mortal beings who fell on a battle-field, as these forms appeared to do. He
proposed, as a test, that they should break the divine sword. This they tried, but in
vain, and remained mute with wonder at its flexibility and strength. Hist. Mex., 214;
Herrera, dec. iii. lib. ii. cap. ix. Mendieta places this sign in 1511. Hist. Ecles., 179.
The last celestial sign, as described by Mendieta, is a large, brilliant comet, which
appeared the very year of the Spaniards’ arrival, and remained immovable in the
air for several days. Hist. Ecles., 180. Before Nezahualpilli returned to his capital,
after interpreting the fiery signs, he was feasted by Montezuma, and the two
monarchs thereupon retired to the diviners’ chamber to search into the legends of
their forefathers for further light upon the omens. From this circumstance grew the
story that the twain had made a journey to the ancient home of their race.
Nezahualpilli, being a conjurer, took Montezuma through the air to the Seven
Caves, where they conversed with the brethren of their ancestors. On learning that
the first named was a descendant of the great Chichimecatl Xolotl, he was offered
the government of this region, but declined, promising, however, to return at a later
date. Torquemada, i. 212-13. Duran applies to the reign of Montezuma I. a similar
story, which is more appropriate to the present subject. Eager to acquaint his
ancestors with the glorious achievements of their progeny, and to learn something
of the old home, this monarch sent a force of sixty sorcerers on a mission to
Chicomoztoc, with numerous presents for Coatlicue, the mother of the divine
Huitzilopochtli. Transforming themselves into animals, they reached the sacred
region occupied by some Aztecs whom the god had left behind when he set out on
his career of conquest. These venerable settlers were not a little surprised to
behold in the effeminate and ephemeral specimens before them the descendants
of that doughty leader and of his companions. On reaching the abode of the divine
mother, the sorcerers found an old woman sorrowing over her lost son. The news
of his glorious fate roused her interest, and she was induced to reveal several
prophecies by her son, among them one concerning the coming of a strange
people to wrest the land from the Mexicans. The messengers were dismissed with
presents of food and clothing, and returned to their master with twenty of their
number missing. Hist. Ind., MS., i. 467-86. Additional facts may be found in Native
Races, v. 422-4, etc. Another visit to the spirit world is attributed to Papantzin,
sister of Montezuma II., who, shortly after his accession, had married the lord of
Tlatelulco. He soon died, and after ruling for a few years she, in 1509, followed
him to the grave. She was buried with great pomp in her garden, in a vault closed
by a flag-stone. The next morning she was discovered sitting on the steps of the
bath adjoining the vault. Her niece, a child of five or six years, was the first to
notice her. Too young to understand what would frighten older heads, she
fearlessly approached the resurrected woman, and was told to call Papantzin’s
mayordoma. This old dame, on receiving the summons, thought it a child’s prank,
and would not stir, but at last she yielded, and on seeing the form of her late
mistress, swooned with fear. Others proved more courageous, and carried her into
the house. Papantzin now enjoined silence, and wished to call Montezuma, but no
one daring to appear before the cruel and superstitious monarch, Nezahualpilli
was summoned, and he brought the brother with him to her dwelling, together with
several attendants. To them she related that, on being released from her earthly
bonds, she had entered a boundless plain, upon a road which soon divided into
several branches. On one side was a fiercely running stream, which she
attempted to cross, but was motioned back by a youth of fine stature, dressed in a
loose robe of dazzling whiteness. His face, bright as a star, was of fair complexion,
the eyes grey, and the forehead marked with a cross. Taking her by the hand, he
led her up the valley past heaps of dead men’s bones, from many of which rose
the sound of lament. She also observed a number of black persons, with horns
and deer legs, building a house. As the sun rose, large vessels could be seen
ascending the river, bearing white and bearded men in strange attire, with shining
head-gear, and standard borne aloft. They were children of the sun. The youth, in
pointing them out, said that God did not yet wish her to pass the river, which could
never be recrossed, but to wait and bear testimony to the faith coming with these
men, who were destined to wage great wars with her people and become their
masters. The lamenting bones were her forefathers—‘who had not received the
faith,’ is the uncharitable term used by Torquemada—suffering for their evil deeds,
and the house building was to hold the bones of those slain in battle by the fair-
faced crews. She must return to earth, await these men, and guide her people to
baptism. On being restored to her senses from the death or trance, whatever her
listeners chose to term it, she removed the stone from the vault and returned to
her chamber. Many of those present sneered at the story as originating in the
brain of a sick woman, but Montezuma was more deeply moved than he cared to
show. He never again saw his sister, who lived a retired life till the arrival of the
Spaniards. She then came forward, the first woman in Tlatelulco to receive
baptism, and under the name of María Papantzin rendered good aid in the
missionary cause. This account, says Torquemada, has been taken from old
native paintings, translated and sent to Spain, and was regarded as strictly true
among the natives, Papantzin being well known in the town. ‘Esta Señora era del
numero de los Predestinados,’ i. 238-9. Ixtlilxochitl, strangely enough, does not
refer to the resurrection. According to him, the mother of Ixtlilxochitl, king of
Tezcuco, was the first woman baptized, and this under compulsion from her
husband. She received the name of María. After her came Papantzin, now wife of
this king, who was named Beatriz. Cortés stood godfather to both. Sahagun refers
briefly to the resurrection of a woman of Tenochtitlan, who issued, four days after
her death, from the garden vault where she had been deposited. Appearing before
Montezuma, she announced that with him would cease the Mexican empire, for
other people were coming to rule and settle. This woman lived twenty-one years
after this, and bore another child. Hist. Gen., ii. 270-1. At this rate she must have
been alive when Sahagun arrived in the country; yet he fails to speak of her as a
princess. Boturini applies the story to a sister of King Caltzontzin, of Michoacan,
who died at the time the Spaniards were besieging Mexico, and rose within four
days to warn her brother not to listen to the Mexican overtures for an alliance
against the white invaders. The new-comers, she said, were destined by heaven
to rule the land, and a testimony hereof would appear on the principal feast-day in
the form of a youth, who, rising in the eastern sky, with a light in one hand and a
sword in the other, would glide over the city and disappear in the west. This sign
appearing, the king did as she bade him, rejected the Mexican advances, and
received the Spaniards in peace. Catálogo, 27-8. Clavigero censures Boturini’s
work, in this connection, as full of fables, and this after solemnly observing that the
Papantzin incident ‘fu pubblico, e strepitoso, acaduto in presenza di due Re, e
della Nobiltà Messicana. Trovossi altresi rappresentato in alcune dipinture di
quelle Nazioni, e se ne mandò alla Corte di Spagna un attestato giuridico.’ Storia
Mess., i. 289-92. He places the baptism of Papantzin in 1524. Veytia, Hist. Ant.
Méj., iii. 348-52; Vetancvrt, Teatro Mex., pt. iii. 125-6. Torquemada gives the story
of what occurred in the spirit land in her own words; so does Clavigero, though he
differs slightly. See also his English translation by Cullen. As if in confirmation of
her story, ominous signs became more numerous than ever. The big lake of
Mexico began to boil and foam without apparent cause, the water rising high
within the city and creating great damage. The date generally accepted for this
occurrence is 1509, but Mendieta, Hist. Ecles., 178, says 1499. The lake, like the
sky, was connected with more than one mysterious occurrence. A troop of
Huatuscan conjurers arrived shortly after this in the imperial city to exhibit tricks, in
one of which they cut off their hands and feet, disclosing bleeding stumps, and
then replaced the members. In order to test whether this was an illusion or not, the
emperor ordered the severed members to be thrown into boiling water before they
were returned to the performers. This unwarranted curiosity stirred the magicians
to the very core, and before retiring they predicted that the lake would be tinged
with blood, and that their avengers would soon appear in a strange people, the
conquerors of the empire. Not long after, Montezuma noticed streaks of blood in
the lake, mingled with a number of human heads and limbs. He called others to
witness the sight, but none save himself could see it. Sending to the injured
conjurers for an explanation, they replied that the vision denoted great and bloody
battles to be waged in the city by the strange people. Herrera, dec. iii. lib. ii. cap.
ix. About the same time some fishermen caught a grey bird, like a crane, with a
round comb or diadem, resembling a mirror. On being brought before Montezuma,
he was startled by seeing reflected in this mirror the heavenly bodies, although
none appeared in the sky, for it was yet daylight. The next moment the stars had
vanished, and in their place were seen beings, half man and half deer, who moved
about in battle array. Diviners were called to give their explanation, but when they
came the bird had disappeared. Torquemada appears to date this as early as
1505, i. 235. Camargo, Hist. Tlasc., 139-40. Another great bird is referred to, with
a human head, which soared above the lake uttering the prediction that speedily
would come the new rulers of the empire. Other monsters were found in the shape
of double-bodied and double-headed men, which dissolved in the air shortly after
being brought to the sorcerers’, or black hall, of Montezuma. A horrible animal was
caught near Tecualoia. Torquemada, i. 214. During all the years of these signs
could be heard, at frequent intervals, a female voice lamenting, ‘Oh, my children,
all is lost to us! My children, whither will you be taken?’ Id., 214, 233. A similar
voice was heard before the fall of Jerusalem. Josephus, lib. vii. cap. xii.; Mendieta,
Hist. Ecles., 180; Veytia, Hist. Ant. Méj., iii. 358; Sahagun, Hist. Gen., i. 5. In 1510
the imperial city was startled, one clear, quiet night, by a fire, which, bursting from
the heart of the timbers in the temple of Huitzilopochtli, burned all the fiercer under
the efforts made to quench it. A precursor of this had been the fall of a stone
column close to the temple, coming no one knew whence. ‘El chapitel de un Cú de
Vitzilopuchtli, que se llamaba Tlacoteca, se encendió.’ Sahagun, Hist. Conq., i. 3-
4. Shortly after, the temple of the fire god Xiuhtecutli, at Zocomolco, was stricken
by lightning and burned. This occurred without the usual accompaniment of
thunder, and with but a sprinkle of rain; many regarded it as done by a sunbeam,
and consequently as particularly ominous. ‘Los Indios decian ... el Sol ha
quemado este Templo; porque ni hemos visto Relampago, ni hemos oido Trueno.’
Torquemada, i. 214, 234. Believing, or pretending to believe, the city attacked by
enemies, the Tlatelulcans rushed to arms, for which excess of zeal they were
punished by a suspension of all their townsmen who held positions at court. Native
Races, v. 461-67.
[141] Torquemada assumes that the 12,210 victims comprised also those offered
at the consecration of two new temples, Tlamatzinco and Quauhxicalli. See Native
Races, v. 471. Tezozomoc relates that the laborers, after striving in vain to move
the stone from its original site, heard it utter, in a muffled voice, ‘Your efforts are in
vain; I enter not into Mexico.’ The incident finds a parallel in the vain effort of
Tarquin to remove certain statues of the gods, to make room for Jupiter’s temple,
and in the firm adherence of Apollo’s head to the ground, shortly before the death
of the Roman ruler. But recovering from their alarm, they tried again, and now the
stone moved almost of its own accord. Another halt is made, a second oracle
delivered, and finally the stone reaches the bridge, where it disappears into the
water. Amid the invocation of priests, divers descend in search, only to come back
with the report that no vestige of it is to be found; but there is a fathomless pit
extending toward Chalco. While diviners are cudgelling their brains for clues, in
comes a messenger to announce that the stone, like the Penates of Æneas, had
returned to its original site, arrayed in all the sacrificial ornaments. Observing in
this occurrence the divine will, Montezuma let the stone remain, and recognizing
at the same time a menace to himself, perhaps of speedy death, he ordered his
statue to be at once sculptured by the side of his predecessors, on the rocky face
of Chapultepec Hill. Tezozomoc describes the statue. Hist. Mex., ii. 204-7. Duran,
Hist. Ind., MS., ii. 313-27. Clavigero, Storia Mess., i. 292-3. Among the troubles
which after this fell upon the doomed people are mentioned: An earthquake in
1513. Codex Tell. Rem., in Kingsborough’s Mex. Antiq., v. 154. A locust plague.
‘Vieronse gran cantidad de mariposas, y langostas, que passauan de buelo hàzia
el Occidente.’ Herrera, dec. iii. lib. ii. cap. ix. A deluge in Tuzapan, and a fall of
snow which overwhelmed the army en route for Amatlan. While crossing the
mountains, rocks and trees came tumbling down upon them, killing a large
number, while others froze to death. Ixtlilxochitl places this in 1514. Others say
1510. During the Soconusco campaign, see Native Races, v. 472, the ground
opened near Mexico, and threw up water and fish. The Indians interpreted this to
signify a victory, but the lord of Culhuacan intimated, with a shake of the head, that
one force expelled another, whereat Montezuma’s delight somewhat abated.
‘Quando prendio Cortes a entrambos, se accordò (Montezuma) muy bien de
aquellas palabras.’ Herrera, ubi sup.
[142] Meanwhile it came to pass that an eagle swooped down upon a peasant at
work in a field not far from Mexico, and seizing him by the hair in full view of his
neighbors, bore him out of sight. Landed high upon a mountain, the man found
himself led by invisible hands through a dark cave into a hall of dazzling splendor,
where Montezuma lay as if asleep. Less favored than Ganymede, he was
permitted to see no other form, but voices around explained to him that this was a
representation of the emperor intoxicated with pride and blinded by vanity.
Tezozomoc writes that the eagle assumed the form of a lord and spoke; but a
superior being can hardly be supposed to have assumed the office of carrying a
low peasant. A lighted pipe with a rose was placed in his hand, with orders to burn
a mark upon the monarch’s leg, and then proceed to court and relate to him what
had occurred, pointing out the blister in testimony. The gods were annoyed at his
conduct and rule, which had evoked the ills soon to overthrow him. Let him amend
and use well the short term still allotted to him. The next moment the peasant
found himself borne through the air by the eagle, which enjoined upon him to obey
the command received. The man did so, and Montezuma, recalling a dream to the
same effect, looked and found a wound, which now began to burn painfully.
Throwing the man into prison as an evil sorcerer, he sought his doctors for relief.
‘Lo que vio el labrador, pudo ser que aconteciesse en vision imaginatiua porque ...
no es increyble que Dios por medio de vn Angel bueno ordenasse ... que aquel
auiso se diesse.’ Herrera, dec. iii. lib. ii. cap. ix. Montezuma now resolved to seek
a refuge where none of the threatened evils might reach him. The place selected
was Cicalco, ‘house of the rabbit,’ painted by the myths as an abode of delight,
abounding in every product, sown with flowers, and flowing with crystal waters, a
place where death never entered. As a preliminary step four human victims were
flayed and their spirits sent to Huemac, the ruler of that region, to prepare the way
for the living messengers. These consisted of sorcerers, accompanied by dwarfs
and hunchbacks to carry the flayed skins as presents. Two hunchbacks were sent
with the skins of ten flayed men, says Duran. Entering the cave leading to Cicalco,
they were guided by its guardian into the bowels of the earth, and presented
themselves before the Aztec Pluto. With humble reverence they proffered the
skins with the prayer of Montezuma for admission into that abode of delight and
into his service. Unwilling to make an exception to the rule for admission through
death’s portals, Huemac sent the messengers back with presents, giving the
evasive reply that their master should confide to him his sorrows and await relief.
On receiving this report Montezuma angrily ordered the men to be cast into prison,
and sent other messengers with fresh skins, repeating his request for admission,
yet conforming in so far as to ask for an explanation of the many signs abroad.
Huemac, again avoiding a direct answer, told them that Cicalco was quite a
different place from what they supposed it to be. He and his comrades stayed not
of their own accord, but were kept there by a superior power, steeped in abject toil
and misery. This unsatisfactory report entailed upon the messengers the same
punishment as before. Two Acolhuan chiefs were now entrusted with fresh skins
and the request that Huemac should at least explain the signs which threatened
the emperor, if he still refused him admission. Among these signs is mentioned a
white cloud rising at midnight toward the sky. Propitiated by the higher rank or
qualities of these messengers, or by the earnest perseverance of their master,
Huemac explained that the sufferings and menaces were the result of his pride
and cruelty. Let him amend, and as a preliminary task begin a fast of eighty days.
This accomplished, Huemac would meet him at Tlachtonco, on the summit of
Chapultepec. Montezuma was so delighted with this answer that he rewarded the
chiefs most liberally, and made the necessary arrangements for the government of
the empire during his seclusion. Going at the appointed time to Tlachtonco, a
brilliant stone ordered him to make certain preparations and return in four days,
when he would be conducted to Cicalco. This he did, after enjoining secrecy upon
all who had assisted in the matter. Arrayed in a human skin adorned with precious
stones, gold, and feathers, he seated himself upon a feathered throne, surrounded
by his richly dressed dwarf and hunchback pages, and in this guise awaited
Huemac. Soon a light in the distance, brilliant as the sun, announced the approach
of the mysterious being, and hope leaped high in Montezuma’s breast. It stopped,
however, and the emperor was devoured by anxiety. Suddenly a human voice
recalled him from his absorption. It was that of the guardian of Tzoncoztli temple,
who related that Huemac, interdicted by supreme command from approaching the
emperor, had commissioned him to recall his master to duty. His presence is
needed in Mexico to direct public affairs and to infuse respect among the hostile
nations, who would rise the moment his disappearance became known. What will
his subjects think? He must obey the divine command, and remember that he is
emperor of the world. Montezuma yielded reluctantly and reëntered his palace,
taking to his side the faithful Tzoncoztli guardian, and charging all to keep the
secret. Tezozomoc, Hist. Mex., ii. 213-27; and in Kingsborough’s Mex. Ant., v. 469,
et seq.; Duran, Hist. Ind., MS., ii. 328-45.
[143] Codex Chimalpopoca, in Brasseur de Bourbourg, Hist. Nat. Civ., iv. 35-6.
[144] ‘Besaron todos las proas de las naos en señal de adoracion, pensaron que
era el Dios Quetzalcoatl que volvia.’ Sahagun, Hist. Conq., i. 5.
[145] According to Tezozomoc, an Indian, with ears, thumbs, and big toes cut off,
arrived from Mictlancuauhtla with the report that he had seen a round mountain on
the sea moving to and fro without approaching the shore. The informant was
placed under guard, and a chief with an attendant sent to Pinotl to verify the
statement, and to chide him for neglect to report. They soon returned to say that
from a tree they had seen two such mountains or towers, from one of which a
canoe had set out on a fishing trip. The men on board had white faces and hands,
long, thick beard, long hair, raiments of varied and brilliant colors, and round head-
covering. The mutilated Indian being now called to answer further questions, his
prison cell was found vacant. Hist. Mex., ii. 232-4; Duran, Hist. Ind., MS., ii. 359-
77.
[146] Torquemada, i. 379, names ten members, while Veytia, Hist. Ant. Méj., iii.
378, says there were twelve.
[147] Particularly at Nauhtla, Toztla, Mictla, and Quauhtla. Torquemada, i. 379;

Sahagun, Hist. Conq., i. 6, calls the districts Cuextecatl, Naulitlantoztlan, and
Mictlanquactla. Brasseur de Bourbourg, Hist. Nat. Civ., iv. 49, writes more correctly
Nauthtlan, Tochtlan, and Mictlan-Quauhtla.
[148] Torquemada, i. 379-80, expresses his disapproval of Gomara and Herrera

for following only Spanish versions, and ignoring the Indian records acquired by
himself and others, including Sahagun. The latter assumes that Montezuma has
been apprised of Grijalva’s departure before the embassy leaves, and this body is
therefore not sent till Cortés arrives. Hist. Conq., i. 7. This is not unlikely, for
council had to be first held and the future course determined, and messengers
were always on the way between the subject provinces and the capital, ready to
convey news. But most writers, followed by the Native Races, take the view
presented in the text. Herrera, dec. ii. lib. iii. cap. ix., who is very brief on Grijalva’s
visit, says, when it was learned that the Spaniards wanted gold, the governors on
the coast were ordered to barter with it, and to find out what further object they
had in coming. Ixtlilxochitl states that merchants from the coast fair brought the
first news of Grijalva to Mexico. Veytia, Hist. Ant. Méj., iii. 377-8, is brief on the
subject. Tezozomoc describes the necklace, bracelet, and other jewelry prepared
as presents by four of the leading goldsmiths and lapidaries. With these the chief
who had been to the coast to observe the floating towers is ordered to seek the
white men. Pinotl must prepare food for them, and if they eat, they are surely
Quetzalcoatl and his suite. ‘But if they prefer human flesh,’ says Duran, in his
version, ‘and wish to eat you, let them do so; I promise to look to the future of your
children and relatives.’ Hist. Ind., MS., ii. 366-7. ‘If you are convinced that it is
Quetzalcoatl,’ continued Montezuma, ‘adorn his person with these jewels made for
the purpose, and say that I beg him humbly to come and take possession of the
throne which I hold for him.’ Tezozomoc, Hist. Mex., ii. 236-9. This author
confounds Grijalva and Cortés, but allows the jewels and message to reach the
latter. According to Duran, Montezuma tells the chief to ask the god for permission
to finish his rule; after his death he is welcome to the throne. ‘Que me dege morir,
y que despues de yo muerto venga muy de norabuena, y tome su Reyno pues es
suyo y lo dejó en guarda á mis antepasados,’ ut supra. Acosta, Hist. Ind., 508-14
refers briefly to this subject, and to the various omens and visions, some of which
he regards as dreams imparted by angels. Meanwhile fresh messengers arrive to
report that the white captain had spread the wings of his floating mountains and
faded away in the east. They bring later drawings and gifts, including beads,
shirts, a hat, some biscuits and wine. The monarch crunches the biscuits and
admits them to be good, but the wine, with its penetrating sweetness, lulling the
senses and calling up happy visions, this delights him, and specimens of both are
deposited upon the altar of Quetzalcoatl at Tula. Finally, on seeing the glass
necklace, he declares the giver to be indeed the Acatl Ynacuitl, the travelling god
of the reed; and deeming himself unworthy of so brilliant an adornment, he
consecrates it to the gods. The best painters are called to give a superior
representation of the strange visitors from the rude drawings brought by the
messengers, and from their description, while the old and wise men are asked for
recollections and ideas which may throw light upon the subject. After much search
a tradition is raked up, wherein a race is to come from the east mounted on
serpents or masted mountains, and with them a white, bearded people, astride of
big deers and eagles, who will land at Tzonapan, and obtain possession of all the
land. They are also described as a one-legged people, with the face in the middle
of the body, of white complexion and with long beard. In confirmation thereof is
produced an old painting, which agrees with those depicting the late arrivals.
Convinced of the identity, Montezuma orders the governors of the coast provinces
to maintain a close watch for the return of the strangers, so that he may receive
speedy notice. Tezozomoc, Hist. Mex., ii. 241-50; Duran, Hist. Ind., MS., ii. 359-
92.
This chapter presents but a faint picture of the state of affairs within the
Mexican empire at the time of the arrival of Cortés. As I said at the outset, all this I
have given in my Native Races, and can not of course repeat it here. Further
authorities on omens and on the state of the Aztec empire, most of them, however,
of no value, are Carbajal Espinosa, Hist. Mex., ii. 5-12; Beltrami, Mexique, ii. 137-9
and 142-3; Zamacois, Hist. Méj., iii. 130-2; Vetancvrt, Teatro Mex., pt. iii. 124-6;
Bos, Leben der See-Helden, 4-5; Hazart, Kirchen-Geschichte, ii. 505-8; Touron,
Hist. Gen. Am., iii. 127-34; Viagero Univ., xxvi. 192-237; Larenaudière, Mex. et
Guat., 73-5; Lafond, Voy., i. 105-7; Eggleston’s Montezuma, 11-17; Sammlung
aller Reisebesch., xiii. 289-91; Russell’s Hist. Am., i. 76-9; Laharpe, Abrégé, ix.
268-73; Du Perrier, Gen. Hist. Voy., 332-6; Burke’s Europ. Set., i. 71; Smollett’s
Voy., i. 214-19; Chevalier, Mexique, 7-22; Mexique Études, 9-10; Robertson’s Hist.
Am., ii. 17-18; Bussierre, L’Emp. Mex., 119-30; Manzi, Conq. di Mess. 14-19;
Roure, Conquête du Mex., 211-20.
CHAPTER VIII.
THE COMBATANTS SALUTE.
April-May, 1519.
The Embassy from the Shore—The New Interpreter—Marina—Her

Appearance and Quality—Her Romantic History—She Cleaves to the
Spaniards and to Cortés—And Becomes One of the most Important
Characters of the Conquest—The Spaniards Land and Form an
Encampment—The Governor Comes with Presents—The Spaniards
Astonish the Natives—Who Report all to Montezuma—Cortés Sends
the Monarch Presents—Council Called in Mexico—Montezuma
Determines not to Receive the Strangers—Reciprocates in Presents a
Hundredfold—Cortés Persists—Montezuma Declines more Firmly—
Olmedo Attempts Conversion—Teuhtlile, Offended, Withdraws his
People from the Camp of the Spaniards.
Under San Juan de Ulua the fleet of Cortés rests at anchor, lying
lazily there, its fiery purpose clothed in peaceful white, like a snow-
capped volcano basking in the sunlight. The ships had been watched
from afar by expectant eyes; and now from the wondering multitude
that lines the Chalchiuhcuecan[149] shore come two large canoes,
whose occupants step to the deck of the flag-ship and reverentially
ask for the Tlatoani. Their language is new to Aguilar; none of the
company can understand it. What is to be done? Modestly speaks
one of the female slaves, “These are Mexicans, sent by Cuitlalpitoc,
[150] cacique of the nearest town, to welcome the white chief and
offer their devotion. They would likewise know whence he comes,
and why.”
Instantly all eyes are on the speaker, who under their continued
gaze draws back, abashed at her own temerity, while the warm
blood mantles beneath its clear olive confine, and the breath comes
inconstant between parted lips. Cortés regards her as she stands
there unconscious of the important service she has rendered him; for
possessed she the power of Thetis, to assume any form she
pleased, the fair interpreter could not at this juncture have appeared
before the chief in any other aspect half so fascinating. Who is she?
The one baptized Marina, at Tabasco; and who, being the greatest
lady there, was given to Puertocarrero, the greatest gentleman
present. Why had she been given to Puertocarrero? Why had not the
chief chamberer himself taken her? Cortés had weightier matters on
his mind. He was playing for empire, and would not now stop to
divide the petty winnings with his men. By and by right royally will he
reward the unsanctified within him for its abstinence. As for this girl,
he seems now for the first time to see her.[151] Had Marina, the
slave, been born in other lands, under different auspices, to what
exalted sphere might not her personal loveliness and beauty of
character have entitled her!
They say she was fair for an Indian; very beautiful she certainly
is, and of that order of loveliness that captivates the understanding
no less than the passions. The old as well as the young are ravished
with her beauty, even as with Helen were the elders of Troy. She is
about eighteen, and in form and features perfect; her long hair falling
over smooth, round shoulders, and from large lustrous eyes radiating
a tender melancholy that overspreads the face and tones to harmony
whatever falls beneath its influence. Sweet and frank in her
disposition, she is nevertheless resolute enough upon occasion; yet
in her ordinary mood there is a rare grace and femininity, in which
she is as liquid and pellucid as a passage in Herodotus. There is no
shame in her blush, nothing bordering on conscious inferiority in her
bearing; nothing that these or any other beings may do unto her can
lessen her self-respect. She scarcely knows she is a slave, the
plaything of passion; she finds the world made so, men the stronger
and wickeder, and she has but to acquiesce.[152]
Cortés is deeply interested. As if from heaven some bright being
had been sent to his assistance, so comes to him Marina now. What
is her history? Strangely romantic. She is the daughter of a cacique,
born at Painala, eight leagues from Goazacoalco. While yet a child
her father died; and upon a son, the fruit of a second marriage, the
mother centred all her affections. To secure to him the succession
and inheritance which rightly belonged to the daughter, Marina was
given as a slave to some travelling merchants of Xicalanco, while a
slave girl who had just died was passed off for Marina and buried
with the usual stately ceremonies.[153] Arrived at Tabasco, Marina
was sold to the cacique, and by him transferred to the Spaniards.
With a mind elastic and quick to learn, to her native Mexican tongue
she added at Tabasco a knowledge of the Maya, becoming afterward
proficient in Spanish. And now no longer slave, save to the passion
love, she is to queen it for a while as consort of the conqueror,
becoming in the conquest second only in power and importance to
Cortés himself, whom with her whole soul she loves, and to whom
alone she clings after the departure presently of Puertocarrero for
Spain. Accompanying the invaders as interpreter and adviser, she
shares their hardships and rejoices in their successes. For is not the
daring commander lord of her heart and person? Moreover, what
claim upon her has a nation which drives her into solitude beyond its
border, and for no crime? Therefore, if her newly found friends
sicken, she nurses them; if they despair, she comforts them.
Nevertheless she cannot forget her people, but freely exerts her
influence in their behalf, saving many a life and many a town from
destruction. Toward the end both races vie in showing her their
admiration, gratitude, and respect; and although to the Indian the
invaders become more and more objects of execration, yet he never
mentions with aught but loving reverence the name Malintzin, or
Malinche, as in his tongue is called Marina.[154]
To the embassy of Cuitlalpitoc Cortés makes friendly answer. He
will explain his purposes to the cacique in person. Meanwhile the
messengers are regaled with food; presents are given them, and
gold is shown as something Spaniards delight in. Then they return to
the shore, which appears not very inviting, with its broad reach of
sand and sandy hillocks whirled up by the northers. Likewise
vegetation hereabout is stunted, larger trees appearing only in the
distance. The place had been recommended by Grijalva, however,
as possessing good anchorage, and the people as being rich and
hospitable.[155]
Early on Good Friday Cortés landed, planted guns upon the
hillock, and began the construction of a fortified camp, consisting of
houses, huts, and sheds, high in the centre of which was placed a
large cross. Informed of this, the cacique sent men to carry timber,
plaster the walls, and put up awnings. Food was also provided, and
feather-work and gold were presented Cortés, with the information
that the governor would visit him presently. Meanwhile the natives
flocked in to trade, so that on Saturday the place presented the
appearance of a fair, rather than the encampment of an invading
army.
On Easter Sunday, while preparations were made for mass,
Cuitlalpitoc arrived with his chief, Teuhtlile, governor of the province,
whose residence was at Cuetlachtlan, eight leagues away.[156]
Attending them was a large retinue of nobles, and slaves[157]
bearing presents. Cortés, with an escort, advanced to receive them,
and after interchange of courtesies led the way to the altar, draped in
native cotton fabrics, where Father Olmedo celebrated mass,[158]
aided by Father Juan Diaz, Aguilar, and a trained choir. The service
over, Cortés invited the chiefs to dinner, and there informed them
that he was a captain of the greatest monarch the sun smiled on,
Charles V. of Spain, who, hearing of Montezuma’s fame, had sent
him presents and a message, which must be delivered in person
immediately.[159] How easy the way to him who knows it! Had Cortés
but spoken the simple word, “I am Quetzalcoatl, come to resume my
rule,” he might possibly at one time have ridden midst hosannas to
the capital, and seated himself without resistance on Montezuma’s
throne.
But the minion of an earthly monarch is quite a different being
from the fair god in the eyes of the Aztec officers, who answer
somewhat haughtily, “Be it known to you that our master is the
inferior of none; and for the present let these gifts suffice.” Saying
which the signal is given; the slaves advance and deliver their
burdens, consisting in part of food, cotton fabrics more than ten
bales, brilliant feather-work, and a cacaxtli, or basket, filled with
wrought gold set with rare stones and pearls. Cortés expressed
thanks, and gave for Montezuma in return a carved and inlaid arm-
chair, some engraved marcasite laid in musk-scented cotton, a bright
red cap, a gold medal stamped with the figures of St George and the
dragon, twisted strings of beads, and other articles; and would the
emperor deign to wear the cap and occupy the chair when it became
his pleasure to receive him? To the chiefs were also given some
trifles. Teuhtlile promised to deliver to Montezuma the gifts and the
message. Then pointing to the gilt helmet of a soldier, which
resembled in form the head-dress of the idol Quetzalcoatl, he
expressed a desire to show it to Montezuma. “Take it,” said Cortés,
“and bring it back filled with gold-dust, that we may show our
emperor what kind of metal you have.”[160]
Observing the native painters transcribing to amatl-paper the
several novelties, and wishing to impress them further, Cortés
mounted a horse, and ordered the troops to fall into line and the
cannons to be charged. The infantry first passed in review to the
sound of music with arms and banners displayed. Then came the
cavalry with the best riders, led by Alvarado, dashing past in varied
and swift evolutions. The graceful movements of the great animals,
their rearing and prancing, and above all their speed; the flashing
swords, the glittering armor, all seemed to these simple people like a
scene from the supernatural. Their admiration was changed to terror,
however, when the guns belched flames and smoke, and sent midst
many thunderings the stone balls scudding along the beach or
crashing among the trees. All, even their own fears, were faithfully
depicted by the painters. On leaving, Teuhtlile gave orders to supply
the Spaniards with every necessary, for which purpose two thousand
of his people were detailed to attend them, particularly to bring wood,
water, and food. For their accommodation another cluster of huts
was erected, so that within these few days two towns arose on the
sands of Chalchiuhcuecan. Cuitlalpitoc, who remained for a time to
superintend the service, received from his guests the name of
Ovandillo.[161]
Montezuma was quickly in possession of all these facts; and
when he saw the gifts, and read the picture writings, and learned
how a woman, beautiful as the sun, talked to his people in their own
language; more particularly when he compared the helmet with that
worn by Huitzilopochtli, and was told that the terrible strangers
insisted on an interview, apprehension filled his soul.[162]
Cuitlahuatzin, his brother, and Cacama of Tezcuco, were summoned
to aid in telling him what to do. The council was divided. There was
the popular belief regarding Quetzalcoatl with its attendant
prognostics; on the other hand these strangers did not behave like
gods. They had human appetites, overthrew the idols, claimed
allegiance to another power, and had proved themselves vulnerable
at Potonchan. Yet could beings wholly terrestrial so live without
women, mount gigantic deer, and tame the lightning? Cacama
thought they should have a hearing. The national honor demanded
it; beside, refusal implied fear. Cuitlahuatzin saw in the visitation only
evil to the commonwealth, and urged expulsion. The gods should
decide; and very foolish gods they would have been to vote
admission to their destroyers. And now behold the fatal folly of
Montezuma! Instead of vigorous action toward the end determined
on, he adopted a middle course. He would decline the interview, yet
not rudely drive the strangers hence, lest, peradventure, they might
be gods and successfully oppose him. He would send them liberal
gifts, and beseech them to depart, thus exposing at once his
weakness and his wealth.[163]
A diplomate of the first nobility was accordingly despatched to
the sea-shore. With him went Teuhtlile, returning after only a week’s
absence.[164] Numerous natives were in attendance, among them
over a hundred slaves. Bowing low before Cortés, who had on this
occasion put on greater pomp than usual, the envoy touched the
earth with his hand, carrying it to his lips, and then he swung the
copal censer.[165] Together with Teuhtlile he thereupon seated
himself beside Cortés; and it was remarked how much alike they
looked, the Spanish commander and the Aztec envoy, who, perhaps,
had been selected for this reason, with the aid of the portraits made
by the native painters, and as a mark of honor to the white captain.
The soldiers not inappropriately called him the Mexican Cortés.[166]
The slaves were then directed to lay down the presents; among
which were thirty bales of cotton fabrics, from gauzy curtains to
heavy robes, white, colored, plain, and figured,[167] interwoven with
feathers or embroidered with gold and silver thread; feathers and
plumes of all colors, embroidered sandals, and marcasite mirrors. All
these, however, were trifles beside the gold, the beautiful glittering
gold which was now disclosed, and likewise the silver. First there

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II. ANSWERS TO INTRODUCTORY PROBLEM:

III. SUGGESTIONS FOR LECTURE PREPARATION

Association for Molecular Pathology v. Myriad Genetics, Inc. (p.267): The

isolated by Myriad. (They received what amounts to a green light to do so.)

unpatentable? (Because it was merely an abstract idea placed in the form of a

unpatentable--in light of the prior art? In rejecting the “teaching, suggestion,

arguments made by the defendant in the Corley case.

added by the TDRA amendments as not strictly applicable to Haute Diggity’s

Note the competing interests at stake in connection with noncompetition agreements.

"threshold requirements" for liability, and b) the variety of factors relevant to

IV. RECOMMENDED REFERENCES

V. ANSWERS TO PROBLEMS AND PROBLEM CASES

[147] Particularly at Nauhtla, Toztla, Mictla, and Quauhtla. Torquemada, i. 379;

[148] Torquemada, i. 379-80, expresses his disapproval of Gomara and Herrera

The Embassy from the Shore—The New Interpreter—Marina—Her

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