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lr:LLLLc:LAL FFCFEFTAY
As I mentioned in class, you can expect questions involving gray areas of law,
the relationship between different regimes, and the challenge of creating new IP
rules. I place a premium on careful, lawyerly analysis and well-crafted writing.
CRlclre ArL FA:lcrALL lcR lF LAve.
1urisdictional:
Article 1, Section 8, Clause 8 of the Constitution authorizes Congress to enact patent and
copyright laws. 1he Commerce Clause (Article 1, Section 8, Clause 3) is the basis for
Congress's regulation of trademarks and unfair competition.
1he states retain concurrent jurisdiction to regulate IP under the 1
th
amendment to the
Constitution.
Rationales:
Most Intellectual property doctrines are craIted to balance two potentially conIlicting goals:
1. To provide a incentive to create by giving creators property rights in their creative interests,
and
2. To leave competitors and the public suIIicient access to products oI creativity to ensure a
continuing Ilow oI inventions and works oI authorship in the Iuture and too ensure a competitive
marketplace.
AKA IP, provides property rights to creators, but careIully limits those rights, tailoring the rights
so that they provide the necessary incentive to create, but do not interIere unduly with the public
domain, competition, and scientiIic and intellectual progress.
5 Regimes:
1. Trade secret (protects inIormation oI economic value)
Subject to: reasonable eIIorts under circumstances to maintain secrecy, state law
regimes
Issues: one disclosed the protection is lost, problems oI theIt or violation oI
secrecy

2. Trademark / Trade dress (protects any word, symbol, or device adopted to
identiIy/distinguish Irom others, protects marketplace so less conIusion)
Subject to: est. by Lanham Act, protection through use or registration w/
procedural and remedial advantages
Issues: product must live up to reputation Ior ppl to pay premium, Ireeriders

3. Copyright (exclusive rights to reproduce, distribute, perIorm, display, or license
work)
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Subject to: in tangible medium oI expression, Copyright Act oI 1976, protection
limited in time and Iair use exceptions

4. Patent (rights Ior any new/useIul process, machine, manuIacture or composition oI
nature)
Subject to: Patent Act requires Iiling description and application w/ P & TM
OIIice, must be w/in subject matter, utility/novelty/non-obviousness

5. Rights oI Publicity (grants exclusive control over commercial use oI identity,
name/likeness/perIorming style, protected under CL rights or state statutes)

Theories:
1. atural Rights (Locke) labor oI body mixed w/ nature his property, no common
right by others
Issues: some ppl don`t work hard
2. Personality/Personhood (Hegel) not all property is the same (ex: casebook v.
computer notes), diII. relationships with diII. kinds oI property, means and
Iorms oI expression requires protection oI identity
Issues: very little attachment to what is made, what kind oI generalizations can be
made?
3. Utilitarian/Economic Incentive (Bentham) promote innovation and creativity,
public good disseminated and want to encourage investment in production
oI new ideas/works, IP rights limited in scope, duration, and eIIect to
balance costs and beneIits.
Issues: ppl want to use things without having ownership over it, too much
dependence on ppl to create things, high licensing Iees

r|vate r|ghts] ub||c Goods
O 1ragedy of Lhe commons analogy (lLs ln all our beneflLs Lo exhausL Lhe common buL lf
were all self servlng Lhe common wlll evenLually be exLlngulshed )
O 1enslon beLween Lhe Lwo golng Lo spend a lncredlble amounL of Llme on Lhls Loplc
O omeLhlng dlsLlncLlve abouL l LhaL makes Lhls parLlcularly dlfflculL Lo do
O reerldlng boLh good and bad
O enclng cosLs we can halL new forms of knowledge by Loo hlgh fenclng cosLs
nd ended Class with this.

evlslL our Lhree Lhemes
1 ,ulLlpllclLy
l ub[ecL ,aLLer eglmes
1 ,a[or reglmes
a Landard reglme proLecLlons
b AlLered reglme proLecLlons
l narrow
1 vAA
2 harmaceuLlcles
ll 8road


1 1,
2 1rade dress
c Covered buL noL lncluded (lns v ap)
2 Cb[ecL speclflc reglmes (boaL hulls mlcroprocessors)
ll roLecLlon
1 roLecLlon
2 LxcepLlon
a alr use
l arody
ll CLher excepLlons
lll LvldenLlary Landards
1 vlcLorla secreL (poLenLlal harm probable harm eLc)
lv ulfferenL LlmlLaLlons
1 ub[ecL maLLer
a uncLlonallLy `
b ldea/expresslon dlchoLomy (C)
v 1lme
1 re publlcaLlon
2 osL publlcaLlon
vl ources of Law
1 1reaLles
2 Common law
LaLe law
4 ederal law
3 ConLracL laws
vll !urlsdlcLlons
1 ederal clrculL
2 LaLe courL
lnLernaLlonal courL
vlll reempLlon and Lypes of law cholces
lx ,ulLlple meLhods of ollclng

2 !usLlflcaLlons
l Labor (loch)
1 1rade secreLs
ll ersonallLy (Pegel)
1 ersonallLy
2 vAA
lghLs of ubllclLy
lll uLlllLarlan (8enLham)
1 aLenLs
lv WlLh every [usLlflcaLlon Lhere ls a reason Lo noL follow Pow can we make Lhe susLem flL Lhe [usLlflcaLlons beLLer
rlvaLe rlghLs v ubllc goods
l ueLermlne where Lhe llnes wlll be drawn
1 ee falr use
4 Lvery l quesLlon ls ulLlmaLely a pollcy quesLlon need Lo make a declslon abouL whaL ls proLecLed and whaL ls noL

FAIR U5E I5 A JUDICIALY CON5TRUCTED tnn!.
Evcn If It's In statuc, faIr usc Is a!ways a judIcIa! cnnstructcd mcchanIsm.
ln 1988 we slgned 8erne ConvenLlon maklng us recognlze lnLernaLlonal lnLellecLual properLy rlghLs

troductory Cases
- v A
lssue ls Lhere a properLy rlghL ln Lhe news? ls Lhls mlsapproprlaLlon unfalr compeLlLlon?
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roblems w/ news noL 1rade ecreL (publlc evenL noL prlvaLe) no C b/c can'L proLecL facLs can'L
reglsLer b/c news ls Llme senslLlve don'L wanL free rlders Lo geL away no lncenLlve Lo lnvesL ln news
don'L wanL Lo reward Lhe 1
sL
reporLer Lhe rlghL Lo spread news (monopoly)
unLll reglsLered proLecLed under CL buL once publlshed lose CL proLecLlon and no rlghLs under
C AcL of 1909
fllllng gap by creaLlng an l rule b/c news lsn'L lncluded ln mlsapproprlaLlon
Poldlng Cuasl properLy rlghL (noL a rlghL a/g world buL b/w 2 compeLlLors)
! lLney wanL Lo provlde quasl rlghL b/c labor [usLlflcaLlon (Locke)
! Polmes properLy rlghL ln repuLaLlon (personallLy) noL recelvlng credlL remedy should be
ln[uncLlon and aLLrlbuLlon
! 8randels no rlghL ln Lhe news b/c facLs and llLLle orlglnallLy leglslaLure's declslon noL Lo
provlde proLecLlon would wanL a poslLlve law u Look news from open markeL
avors moneLary damages all l should be uLlllLarlan need sLaLuLory lnLervenLlon


$ears/Compco
($tate unfair competition claims to prohibit defendants from copying unpatentable articles of
commerce were preempted.)
Congress attempted to balance two competing interests in enacting patent laws:
1. Provide a incentive to invent by giving property rights in inventions and designs and
2. Fostering free competition by allowing competitors to copy others inventions and ideas and build
on them.
This ensured that inventions and designs that did not meet the high standards of patentability went
to the public domain, WHERE OTHER$ M FREEL COP THEM.

The state by prohibiting the copying of the public domain type inventions and designs
interfered with Congress`s purpose thus must be preempted by $upremacy Clause.
Several ways to approach this design: Why would a patent be unavailable??
1.II someone sleeps on their rights is mechanism one.
2. Design is obvious. ot suIIiciently original. Does not meet threshold Ior protection.
3. May have Iell into the public domain, original patent or article expired, or design is already in public
realm.
In this case. there`s two types oI patents, utility patents (inventions) and design patents (protects
original designs).
II it`s Iunctional we don`t want to protect it with design patent, but iI not original enough we don`t apply
utility patent so things can potentially Iall between the cracks.
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The court says here that legislative body can only aIIord that sort oI protection. For court to make this, it
would undercut in some Iashion the Iederal patent act.
So the patent act has two Iunctions, one it tells you what is patentable, and secondly it tells your what
YOU CAOT protect because its already within the public domain. ThereIore it deIines the boundaries
oI the public domain as deIined by the patent act.
Black is using the utilitarian theory justiIication just like Brandies in the IS case.
We are all equal Iree riders once (the lamp) is out in the public domain says Black, and additionally the
Iree riders can provide expensive things Ior much cheaper. There is a economic good oI multiple people
making this design which is available in the public domain.
Preemption based on three prongs;
1. $tate law interferes with goals of federal law, federal law sets a
bar for patents that needs to be met, state laws undercut it does
their shot down when in court.
2. Federal Law establishes public domain.
3. Federal Law provides conformity and unanimity of the rules
which govern IP.
uncLlonlng/goal of federal sysLem (anyLhlng lefL should be ln publlc domaln)
lf canL geL lL paLenLable b/c doesn'L meeL Lhreshold shouldn'L be proLecLable noL come up
wlLh sLaLe law sysLem on unfalr compeLlLlon
*so whaL ls lefL can creaLe sysLem (long Lerm cohablLaLlon proLecL consumer lnsLead of producer
preempLed from exempLlon) overly expanslve of earsCompco wouldn'L allow 1u
onito oats v. Thunder
'the plug molding process Ior copying boats.
Whats troubling the court in this one, is the protection oI producers rather than consumers. Carves out
exception, Dicta rather than decision is more important. Follows sears/compco in decision but carves out
role Ior states to have in regulation oI IP policy.
State statue Iailed under balancing act put Iorth in Sears Compco.
ReaIIirmed three part test Irom Kewanne Oil as well.
In 1998, the Digital Millennium Copyright Act included the vessel hull protection act.
The V.H.P.A. protects original vessel hull designs, which are the results oI a artists creative endeavor and
diIIers Irom past designs in more than a trivial sense. Mildly distinguishable. Gets a 10 year patent, in
comparison to 14 years design, and 20 year utility patent. Trademark is liIetime but that`s pretty damn
hard.



rusLraLes C and aLenL's purpose of creaLlng naLlonal unlformlLy lf meeL requlremenLs (novelLy
usefulness nonobvlousness) rewarded w/ Lemporary monopoly all oLhers may be explolLed by publlc
L would granL monopoly Lo unpaLenLed deslgn
ueclslon prompLed Congress Lo creaLe vessell noll Act
1rles Lo llmlL eotscompco b/c lL ls Loo general/overreachlng
W/ dlfferenL sLaLe laws would creaLe forum shopplng
CreaLes excepLlon Lo preempLlon when Lhe purpose of Lhe sLaLe sLaLuLe ls Lo prevenL
confuslon raLher Lhan expand l proLecLlon sLaLe can creaLe mlsapproprlaLlon law and
federal law doesn'L desLroy ALL of sLaLes rlghLs (when sLaLes creaLe mlsapproprlaLlon law
Lhere ls no dlrecL proLecLlon under C/paLenL laws)

vessel Pull roLecLlon AcL (parL of u,CA)
Low Lhreshold [usL make lL falrly dlfferenL
lower 10 yr proLecLlon provldes excluslve rlghLs 's burden Lo prove orlglnallLy of deslgn
proLecLlon losL lf noL reglsLered w/ln 2 yrs lL ls publlc
noLlce requlremenL
LxcepLlon Lo lnfrlngemenL slmllar Lo falr use (Leachlng or analysls)
coo Jo tbls w/ otbet sobject mottets cteotes mlol ptopetty teqlme (ex fosbloo Jeslqo
ptotectloo oct)

FOR $TTE LW TO $&RVIVE PREMPTION PROLEM$. It may survive if:
-the protection is limited I nscope, so that the level oI interIerence with Congress`s purpose can be
characterized as slight
-ideas that are already in the public domain are not withdrawn: and
- the state law is intended to promote a legitimate state police power goal outside the sphere oI
Congress`s concern when it enacted the patent laws.








TRALL GLcRL: LAv.
8ackground uevelopmenL nolf ltopetty low ooJ 1ott low w/ some ctlmlool poolsbmeot
dlsclosure of a 1 was LradlLlonally a CL 1orL
adhere Lo l agreemenL ln uruguay CA11 Ceneral agreemenL on 1arlffs and 1rade and 1l 1rade
elaLed AspecLs of l lghLs
,odel LaLe sLaLuLe ls Lhe D|form 1rade ecret Act (D1A) enacLed by 40 sLaLes and uC
1 per soy /ist formula paLLern compllaLlon program devlce meLhod Lechnlque process of
lndependenL economlc value and reasonable efforLs Lo keep secreL
esLaLemenL of unfalr CompeLlLlon 9 valuable economlc advanLage over oLhers (le cusLomer llsLs)
dlff companles can have same lnformaLlon and each proLecL lL as a 1
esLaLemenL of 1orLs (199) facLors ln deLermlnlng wheLher lL's a 1
1 exLenL lnfo ls known ouLslde of buslness 2 exLenL known Lo employees or oLhers ln buslness
exLenL of securlLy measures 4 value of lnfo Lo buslness/compeLlLors 3 amounL of
efforL/money spenL ease or dlfflculLy Lhe lnfo can be acqulred by oLhers (tokeo by lmptopet
meoos)

*,u|t|p||c|ty of statutes Common Law sLaLuLe esLaLemenL of 1orLs 199 unlform 1rade ecreL AcL of
199 esLaLemenL of unfalr CompeLlLlon (199) ederal Lsplonage AcL of 199 (federal 1 acL)
dlffernece b/w u1A and of unfalr CompeLlLlon ls Lhe oJvootoqe of koowloq wbot oot to Jo
ls noL proLecLed under u1A buL under of unfalr C (dead end lnformaLlon)
*shorLcuLs may be efflclenL!
sp|oage Act federallzes crlme of mlsapproprlaLlon (10yrs ln prlslon 13 yrs lf forelgn enLlLy $3
mllllon flne) w/ broadesL deflnlLlon of 1 and mlsapproprlaLlon w/ harshesL penalLy (Lo make lL
easy Lo covlcL)
a Who does lL apply Lo? Lveryone
b CourL lnLervenLlon? Crlmlnal offense
c LxcepLlons? noL really all Lhe cases can apply 8u1 Congress only auLhorlzed
ALLorney Ceneral Lo allow a lawyer Lo use Lhls Lo sue by approval (worrlsome b/c
sub[ecL Lo admlnlsLraLlve declslon)

,u|t|p||cty of Doctr|es 1orL roperLy Crlmlnal Law ConLracL Law
8a|ac|g Act Commerclal eLhlcs v lnhlblLlng compeLlLlon eward for research v LlmlLed lnnovaLlon
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LlemenLs for 1rade ecreL Clalm
1 ub[ecL maLLer (Lype of lnformaLlon) musL be valuable (noL commonly known Lrade/lndusLry
lnfo)
2 Look reasonable precauLlons Lo prevenL dlsclosure
u/Lmployee acqulred lnfo wrongfully mlsapproprlaLlon (lmplled or expllclL duLy by k Lo proLecL
employer's lnLeresL)

Pow ls Lhls a secreL? Lvldence of a ecreL
1 ls lL generally known? 1o oLhers or ln an lndusLry? (experL wlLness can help)
2 Any securlLy measures? AfflrmaLlve acL LhaL lL ls a secreL? (hldden from publlc w/ measures
LhaL cosL money)
Pow much dlsclosure? (musL have a reason for llmlLed dlsclosure)
4 Legal ,echanlsms (covenanLs noL Lo compeLe confldenLlallLy agreemenLs bollerplaLe
agreemenLs)
3 esponse Lo ,lsapproprlaLlon (expenslve Lo sue)

Lvldence of value of ecreL
*necessary Lo show value b/c courLs wlll have many cases where ppl are [usL Lrylng Lo geL moneLary
remedles w/ meanlngless cases no emoLlonal ln[ury prove Lhrough physlcal ln[ury of loss of value
(unllke 1orLs)
1 LxperL LesLlmony
2 CosLs of research and Lo lnvenL producL
Llcenslng by oLhers (noL generally known deslrable for a value Lo oLhers)
4 roLecLlon cosLs
3 lmproper acqulslLlon lLself (LhefL shows lLs valuable)


2 1heorles (parLly complemenLary)
1 uLlllLarlan (encourages lnvesLmenL 1 ls a form of properLy)
2 1orL 1heory (deLerrence of wrongful acLs punlsh and prevenL llllclL behavlor hold Lo reasonable
sLandards of commerclal behavlor)
klnd of promoLes lnvesLmenL by LhreaLenlng breach of duLy

ulsclosure
1 owner publlshes secreL ln academlc [ournal/forum
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2 dlscloses secreL by selllng producL LhaL embodles secreL
lnspecLlon of commerclally avallable producL
4 when applylng for paLenL publlcaLlon of paLenL appllcaLlon ls a dlsclosure requlremenL even lf
re[ecLed (omeone can read and make your 1 and make lL paLenLable and sue you Lhough you
lnvenLed lL)
*ltst loveotot uefeose Act (1999) ptovlJes offltmotlve Jefeose fot someooe lotet soloq
yoo fot tbe loveotloo of tbe 1
3 publlcly dlsclosed by anoLher person (ex 2 owners no conLrol over oLher)
dlsclosed lnadverLenLly (ex lefL on Lraln ln publlc vlew)
CovL requlres dlsclosure of 1 Lo serve soclal purposes buL provldes compensaLlon

4 Ways Lo proLecL l
1 make lL dlfflculL Lo copy
2 vlgllanL securlLy
prlvaLe k
4 pre say rules (2/rds)

trade secret is information that (1) derives actual or potential economic
value from the fact that it is not known or readily ascertainable by others and
(2) is subject to reasonable efforts to maintain its secrecy.
Trade secret: May consist oI any Iormula, patter, device, or compilation oI inIormation which is
used in one`s business, and which gives him an opportunity to obtain an advantage over competitors who
do not know or use it. it may be a chemical compound, a process oI manuIacturing, treating or preserving
materials, a pattern Ior a machine or other device or a list oI customers
$ource of Law: State Statues (i.e. UniIorm Trade Secrets Act, and common law.
Trade $ecrets have three functions;
1. Pre-patent- how you protect something beIore acquiring a patent. It`s important because you
need something to protect until your patent either goes through or is applied Ior. Can also act as a
patent oI sorts, provide a conservative deIense against a patent claim. Cheaper, easier, protects a
mess oI things makes it easier then obtaining a multitude oI patents.
2. Fills the gaps in IP law. It`s the common law gap Iiller. Provides protection besides patent Ior
keeping ideas, concepts, property your own.
3. The envelope Ior trust. It`s the system oI trust in a company. Helps to Ioster trust between
employer and employee a la the dilemmas saw in Pepsi Co v. Redmond.
4. 1rade secreL ls creaLlng rlghLs agalnsL people who mlsapproprlaLe LhaL lnformaLlon
1he Lrade secreL ls proLecLlon agalnsL someone mlsapproprlaLlng (aka Lhe preproLecLlon ln ln
above
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Factors to consider in determining trade secret status:
- how widely the inIormation is known outside the claimants business
-who within the claimants company knows the inIormation
-whether the claimant has taken reasonable measures to ensure that the inIormation remains secret
-how diIIicult it would be Ior others properly to acquire or duplicate the inIormation
-whether the inIormation gives the claimants a commercial, competitive advantage over others who do
not know it: and
-how much eIIort or money the claimant expended in developing or acquiring the inIormation.
When acquisition, use, or disclosure of a trade secret constitutes an actionable
misappropriation (when situations are truly people fucking up):
-Disclosure or use oI a trade secret in breach oI conIidence
aka breaking attorney/client privilege, using or telling someone secret acquired through that privilege.
-Disclosure or use oI a trade secret learned Irom a third party with notice
II A reveals to B imposing a duty oI conIidentiality and B Iucks up and tells C, C has duty not to use or
disclose the secret. C will be deemed to have notice oI this iI a reasonable person under similar
circumstances would know it, or iI reasonable person would be led to make Iurther inquiry and a
reasonable inquiry would reveal it.
-Disclosure or use oI a trade secret learned by mistake
Same reasonable person standard Ior having notice.
-Continued disclosure or use a trade secret aIter receipt oI notice
-Disclosure or use a trade secret acquired through improper means
Improper means includes illegal conduct, or conduct that is below generally accepted standards oI
commercial morality.
-Acquisition, disclosure or use oI a trade seceret with notice that the provider acquired it through
improper means.
-The eIIect oI the deIendants modiIication oI the plaintiII`s trade seceret
A modiIication or improvement on [ trade secret beIore using or disclosing will not relieve Irom
liability as long as [ can demonstrate that inIo was 'substantially derived Irom [ trade secret.
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Cases:

etallurgical Industries Inc. v. Fourtek, Inc (198) (zinc furnace modifications)
Issues: Can a TS holder divulge inIo to a limited extent w/out destroying protection oI TS?
Litigate: diversity action Ior misappropriation oI TS
Problems: M. spent lots oI time/$/energy to modiIy Iurnaces and took security measures to conceal Iurnace w/
restricted authorization, signs oI restricted access, P couldn`t recoup security costs iI competitors already knew oI
inIormation
Holding: P`s modiIications are unknown to industry
Secrecy doesn`t have to be absolute, but TS is not protected by public revelation, limited disclosure
does not destroy rights
Distinctions: not public announcements and only 2 disclosures to Iurther economic interest (building
Iurnace, license aggreement)
Prevention: bad lawyering Ior not having Fourtek sign any conIidentiality agreement.

#ockwell Craphic v. DEJ (1991)
Issue: whether R`s eIIorts to keep piece part drawing secret were suIIicient to keep it a TS?
Litigate: violated conIidentiality agreement by stealing 100 piece part drawings, TS cases are like breach oI tort w/
assault w/ many punches b/c can litigate many at once, but CR law would try each case oI inIringement separately
Problems: R. manuIactures both printing presses and replacement parts (most proIitable) but had agreement not
strictly enIorced on return oI drawings b/c usually reorder parts
Holding: protection oI TS must be reasonably deIined by business models, b/c limited outsiders know TS this does
not IorIeit protection
DEV entitled to property iI lawIully obtained by another (unlike Metallurgical) OR iI P abandons
property
2 reasons Ior TS protection: deter unIair transIer oI wealth by proving wrongIul act (probability oI
getting drawings w/out wrongIul act is small, presumption) AD protecting Iruits oI labor
(nonproductive Ireeriding)
Balancing oI costs and beneIits varies and requires case-by-case analysis
II owners have to take great measures oI security, reduces incentives to invest in resources to create
more eIIiciency
Lack oI vigilance will shiIt TS to public domain (like Sears-Compco) disclosure by lax security

uuPont deNemours co v ko/fe christopher et o/ (1970) (oetlol plctotes)


lssue wheLher aerlal phoLos of planL's consLrucLlon ls lmproper means of obLalnlng 1?
LlLlgaLe mlsapproprlaLlon asked for damages Lemporary and permanenL ln[uncLlons on phoLos (losL
compeLlLlve advanLage)
roblems 1 noL flnlshed buL ln developmenL sLage unpaLenLed process for produclng meLhanol
Poldlng mlsapproprlaLlon doesn'L requlre Lrespass lllegal conducL or confldenLlal relaLlonshlp uses 1x
sLaLuLe and of 1orLs 3 cannoL be had by lmproper means
everse englneerlng ls ok buL lmproper means by noL spendlng Llme/$ Lo dlscover lL
lndependenLly (uuonL cannoL proLecL alr)
-o pr|v|ty]o ke|at|osh|p ln Lhls slLuaLlon (no nondlsclosure obllgaLlon of C and noL lllegal
conducL) buL sLlll clalmlng 8reach! (o duty but breach of commerclal morallLy)
1o hold a/g uuonL would requlre Loo greaL a burden
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Llke 1orLs welgh 8L deep|y cotextua|
esulL wlll creaLe sneakler sples wlll fly hlgher so he wonL geL caughL ouL of radar of punlshmenL
rd

parLy unLouchable b/c cannoL sue C Lo flnd ouL who Lhe
rd
parLy ls and lefL wlLh no one else Lo llLlgaLe
a/g

Lion Loborotories Ltd v vons (1984)
lssue Jbetbet ls tlqbt of cooflJeotlollty ls ootwelqbeJ by pobllc lotetest?
LlLlgaLe ln[uncLlon a/g newspaper for dlscloslng lnformaLlon and lnLerlocuLory ln[uncLlon a/g Lechnlclans
and damages for breach of confldenLlallLy
roblems confllcL of prlvaLe rlghL Lo proLecL confldenLlal lnformaLlon vs sLrong publlc's rlghL/lnLeresL Lo
lnformaLlon LhaL machlne ls unrellable former Lechnlclans Look confldenLlal lnformaLlon LhaL casL doubL
on accuracy of machlne and gave Lo newspaper
Poldlng CourL can excuse breach for [usL cause
ulfference b/w whaL ls lnLeresLlng Lo publlc and whaL ls publlc lnLeresL!
ubllc has rlghL Lo lnformaLlon even lf lLs confldenLlal and unlawfully obLalned (LhaL cerLlfled
machlnes were lmperfecLly callbraLed) punlshlng ppl for offenses Lhey dldn'L commlL
A/g publlc lnLeresL? 1o encourage loyalLy over angry employees who publlsh confldenLlal
lnformaLlon under defense of publlc lnLeresL? (repuLaLlonal damage)

Internutlonul 1ruJe Secret Protectlon
equlremenLs noL generally known lnfo reasonable sLeps of proLecLlon embodlmenL requlremenL of
Langlble flxaLlon of 1
uLlllLy ,odel by Lu member sLaLes requlre 1 reglsLraLlon and also proof of embodlmenL 2 novelLy
(hlgher Lhan generally known sLd) and a Lerm of 10 years (noL lndeflnlLe llke u law)
nC1L C, CLA
1he more precauLlons you have Lhe greaLer llkellhood of helghLened proLecLlon ,usL be LACnA8LL
easonable ls a preLLy key ldea easonable precauLlon ls whaL needs Lo be Laken Lo proLecL agalnsL
lmproper means
Lvery counLry can declde Lhelr own mechanlsm for Lhe proLecLlon of 1rade ecreLs
1he u we pollce our Lrade secreLs 8uL ln Lhe Luropean unlon Lhey reglsLer lLems as such CulLe a
dlfferenL approach Lo regulaLlon and malnLalnlng our Lrade secreLs

b. Employment Relation and Contract Considerations
1

In the absence of express agreement:
A employee owes a duty oI conIidentiality to his employer, which prohibits him Irom using or disclosing
trade secrets that the employer discloses to him within the scope oI his employment.
II employee was hired to create inIormation oI the type involved Ior the employer and the employer has
placed time and resources at employees disposal Ior that purpose thatn a implied agreement is gernally
Iound that secrets developed belong to employer.
-When the trade secret belongs to the employee
II employee was not hired to create inIormation oI the type involved but still creates a trade secret during
the course oI employment. But iI employee used employers work time, Iacilities, or supplies then
employer usually will have 'shop right in it. Aka a non exclusive licensee to use the employees TS.
In the case of an express agreement:
Employee/employer might expressly agree employee assigns all inventions in advance to employer. Also
might have to sign covenant not to compete, (CA), Ior a speciIied time in a speciIied geographical area
aIter leaving employer. BUT COURTS GEERALLY do not like CA`s.
Courts will only enIorce CA`s iI employer demonstrates employee has TS, and employer can prove
-its reasonably necessary to protect employer
-the agreement was reasonable as to the time and geographical area in which employee was restricted
Irom competing
-the restrictions are not harmIul to the general public
-the restrictions are not unreasonably burdensome to the employee.
The Doctrine of Inevitable disclosure: ev|tab|e D|sc|osure | o|y about 20 states
Only in some jurisdictions, court will enjoin [ Iormer employee (at least temporarily) Irom taking a new
position iI:
-the Iormer employee knows TS
-the Iormer emploee`s new job is similar or related to his Iormer position, and it would be diIIicult Ior
him not to rely on or use the [ TS in the new position, and
-there is evidence that the Iormer employee or his new employer cannot be relied on to avoid using the
TS.
WhaL deLermlnes reasonableness ln nCA's?
1 1lme
2 ,oneLary Concerns
a falrness accorded Lo employer
1errlLory
4 alrness Lo Lhe employee
3 ubllc lnLeresL
a maxlmlzlng use of human caplLal ome cases have more publlc lnLeresL Lhan oLhers Llke a
safeLy valve ln Lhese cases
14


Cases:
eps| Co v kedmod edmond worked for epsl managlng sporLs drlnks operaLlons (All porL) Cuaker
CaLs offered hlm managemenL poslLlon of CaLorade and Lhelr sporLs drlnks 8aslcally Cuaker hlrlng hlm
Lo ploL sLraLeglc plans Lo beaL epsl uo Lhe same [ob aL a dlrecLly compeLlng company o edmond
accepLs buL accepLs Lhe [ob secreLly
CuesLlon now of lnevlLable dlsclosure arlses Pow could he separaLe Lhese prlor knowledge's ln
performance of Lhls new [ob Pe has also prlor slgned nondlsclosure agreemenL (nuA) epsl wanLs
courL Lo Lurn Lhls nuA lnLo a non compeLe agreemenL (nCA) Where ls Lhe conslderaLlon for Lhe nuA?
ConLlnued employmenL? 1hen Lhe quesLlon becomes even more murky by whaL conslderaLlon can even
be found Lo Lurn Lhe nuA lnLo nCA
We are noL Lrylng Lo llmlL edmond's skllls We are lnsLead Lrylng Lo proLecL Lhe parLlcularlzed plans or
processes developed by epsl and dlsclosed Lo hlm ln hls Llme Lhere We know he cannoL help buL
dlsclose Lhese Lrade secreLs lf he ls golng Lo do hls new [ob adequaLely 1hus Lhe lnevlLable dlsclosure
Pow do we llmlL Lhe nCA so lL [usL applles Lo epsl's plans and noL hls acLual skllls? 1he courL puLs a Llme
on lL monLhs ls declded as Lhe approprlaLe Llme lL's deemed reasonable
need Lo LlmlL lnevlLable ulsclosure docLrlne
1 Lxpress documenL w/ covenanL noL Lo compeLe canL change lnLo anoLher agreemenL
2 Cnly hlgh level employees w/ areas of speclflc lnformaLlon
Could Lry Lo use LrusLworLhlness LesL (dlfflculL for courLs)
4 LlmlL Lo cases where employee/r appears Lo be wllllngly/knowlngly engage ln wrongful acLs
(LxcepLlons for rare surgeon who ls needed for publlc pollcy)
3 Cnly Lo eosoooble resLrlcLlve covenanLs (lengLh of Llme geographlcal area/radlus leglL
lnLeresL of employer exLenL of resLralnL on employee's opporLunlLy Lo pursue occupaLlon
noL unduly harsh exLenL of lnLerference w/ publlc lnLeresL)
lf unreasonable some sLaLes are 8loe leocll jotlsJlctloos severable provlslons all or
noLhlng sLaLes creaLe 5tep uown provisions) acL lnLenslve lnqulry
*wanL Lo provlde broad pub||c po||cy except|o so courLs can lnLerpreL over Llme more flexlble and
elasLlc drafLlng or llve ln Common Law [urlsdlcLlon
dwards v Arthur Aderso
upreme CourL of Call flnds ln favor of Ldwards noncompeLlLlon agreemenLs are lnvalld ln Callfornla
even lf narrowly drawn unless Lhey fall wlLhln Lhe appllcable sLaLuLory excepLlons
o whaL needs Lo happen aL exlL lnLervlew so Lhese lssues don'L arlse? A debrleflng a llsL of skllls Lhey
essenLlally have knowledge of Lhe pro[ecLs Lhelr worklng on securlLy proLocols Lo proLecL secreLs
,aybe have survelllance WanL Lo urge compllance ln a genLle way noL ln a LhreaLenlng manner
13

le example by Wllf ,aglc ,aglclans developed lnformal rules Lo govern Lhere Lrade secreLs ,usL
provlde credlL Lo someone else for lnvenLlng Lrlck CannoL lose someone elses Lrlck unless lLs wldely
dlssemlnaLed never allowed Lo dlvulge Lo non maglclans
Lxample of how you wanL Lo esLabllsh culLure wlLhln professlon Lo prevenL Lhese problems ln Lhe flrsL
place
worner Lombert v keyno/ds (1959) (teeJom of k oo leoqtb of tlme Joesot mottet)
lssue lf LlsLerlne ormula ls ln publlc domaln ls no longer obllgaLed Lo make paymenLs?
roblems wanLs Lo recover paymenLs made Lo u by agreemenLs Lo pay based on sales/manufacLure of
producL aymenL agreemenLs are vague b/c no seL lengLh of Llme
Poldlng as long as LamberL sells LlsLerlne musL obey agreemenL no lmposlLlon of a llmlLaLlon (ollow ppl
to keep 8oJ ks becoose fteeJom of k)
CannoL escape obllgaLlon bound Lo ln k b/c secreL ls dlscovered (no Cap ln k)
Acqulrlng a 1 has a rlsk of dlsclosure and easy Lo k ln a provlslon LhaL sLops paymenLs lf
dlsclosed Lo publlc
revenLlon lawyerlng seL speclflc Llme llmlL b/c could Lake LamberL ouL of buslness unless can
dlsLlngulsh and seL repuLaLlon by Lrade dress
*elotloosblp of k low to pet soy ll oles coo k otoooJ tbem
JA- CL CC v 8CkC- CCk 1 AL
1he courL upheld Lhe uC's granLlng of a permanenL ln[uncLlon agalnsL Lhe dlsclosure or use by
respondenLs of 20 of Lhe 40 clalmed Lrade secreLs unLll such Llme as Lhe Lrade secreLs had been released
Lo Lhe publlc CourL says Lhere are Lhree Lypes of slLuaLlons for Lrade secreLs
1 lLuaLlons where maLerlal ls nonpaLenLable
a keep Lhlngs under lock and key
2 uoubLful aLenLablllLy
a wlLhouL Lrade secreLs people would rush Lo paLenLablllLy Would Lake a loL of Llme and efforL
and would lnLerfere wlLh funcLlonlng of paLenL sysLem ?ou keep Lhlngs under lock and key unLll
you resolve Lhe doubLfulness of paLenablllLy?????
LxLends publlc domaln by allowlng llcenslng of Lrade secreLs
a lrsL sLep Lowards conLracLs Lrade secreL sLarLs as LorL problem Lhen becomes properLy
dllemmas and now we are headlng Lowards conLracLs As agreemenLs are made Lo use and
dlssemlnaLe Lrade secreLs

&sing Contract Law to get IP rights if protections under IP are insufficient
Procu nc v 2eidenberq (1996) (sbtlok wtop llceose eofotceoble ooless o/q k low)
1

lssue ,usL shrlnkwrap llcenses appear on ouLslde of box Lo be enforceable ks?
LlLlgaLe ln[uncLlon a/g furLher dlssemlnaLlon and Lo enforce rlghLs ln llcenses
roblems need prlce dlscrlmlnaLlon b/w dlff cusLomers so seller can conLrol submarkeLs and
dlssemlnaLlon of goods ls Lhere noLlce/Cffer/AccepLance? llcense appears on screen each Llme
sofLware ls used Lheory LhaL offer accepLed when pald (seller goes home and see llcense)
Poldlng no preempLlon shrlnk wrap llcense ls enforceable unless Lerms are a/g k law
lghL Lo reLurn sofLware lf unaccepLable Lerms slmllar Lo LlckeLs for concerL (conLexL of
sofLware lndusLry order onllne magazlne never see box)
Lvery cusLomer geLs sLd warranLy lmplled by uCC (k of sale of goods Lhrough uCC 2204(1)
by conducL 20 accepLance of goods b/c noL reLurned)
's acLlons would make all consumers worse off b/c lncrease ln prlces
ome courLs belleve lL ls a ConLracL of Adheslon (Lake lL or leave lL basls)

AkA 1hls case was noL abouL copyrlghL lLs more abouL llcensee servlng slmllar funcLlon Lo Lrade secreL ln
Lhls lnsLance elylng on ockwell and kewanne declslons quoLed above
1o Lhe exLenL llcenses faclllLaLe dlsLrlbuLlon of ob[ecL code whlle conceallng Lhe source code (Lhe polnL
of a clause forblddlng dlsassembly) Lhey serve Lhe same procompeLlLlve funcLlons as does Lhe law of
Lrade secreLs
kemed|es for 1 m|sappropr|at|o
ln[uncLlons
mosL are llmlLed Lo Lhe duraLlon of Lhe secrecy
uamages
,ay be measured by (1) Lhe proflLs losL as a resulL of mlsapproprlaLlon (2) reasonable royalLy for
Lhe use of 1 or () Lhe amounL of proflLs made as a resulL of mlsapproprlaLlon
Crlmlnal rosecuLlon
,any sLaLes have made LhefL of 1 a crlmlnal offense 1he economlc Lsplonage acL of 199 makes lL
federal crlme ln many slLuaLlons






1

TRALLVARK LAv.
Patents, copyrights, and trade secrets are designed to protect and/or reward something new
,inventive or creative, whether it be an idea, a physical creation, or an expression.
trademark, by contrast, does not depend upon novelty invention, discovery or any
works of the brain. Trademark is instead awarded merely to those who were the
first to use a distinctive mark in commerce. 'prevent the likelihood of confusion
between similar marks.`
uckgrounJ
uual sysLem of 1, proLecLlon
1 Common Law proLecLlon under LaLe law (based on unfalr compeLlLlon)
2 ederal Lanham AcL (194) provldes federal proLecLlon w/ reglsLraLlon sysLem and
federallzes much of CL prlnclples
roLecLs lovestmeot ln creaLlon of mark adverLlslng/promoLlng assoclaLlon of mark and producL
relaLed lnvesLmenLs llke hlghquallLy raw maLerlals/quallLy assurance
lnce 194 sLarLed Lo lnclude 1rade dress (producL shape and deslgn)
kequ|remets of 1,
1 lndlcla of source of orlgln (search characLerlsLlcs llke color shape prlce are someLhlng Lo verlfy when
buylng and complex experlence characLerlsLlcs llke LasLe and durablllLy musL be dlscovered Lhrough
use)
2 ,usL be aLLached Lo Lhe producL ln some way afflxaLlon requlremenL
,usL be used ln Commerce (flrsL Lo use)
lncludes proLecLlon of dlsLlncLlve Lrade dress
noL requlred/Allowed
novelLy lnvenLlon or laborlous LhoughL
words LhaL llLerally descrlbe Lhe producL
Trademark is defined to require the mark be either (1) used in commerce or (2)
registered with a bona fide intention to use it in commerce.
Trademark law developed as one oI a number oI related doctrines comprising the common law
oI unIair competition. Congress enacted the Lanham Act (1946), which draws on common-law
trademark and unIair competition doctrine and builds on it. Lanham Act 43(a) provides Iederal
relieI Ior inIringement oI unregistered marks and other indications oI origin. Lanham Act also
provides a means oI registering marks and thus enhancing rights the registrants would have
enjoyed under common law.
**ueqree of protection depends on strenqth of mork ond c/ossificotion {4bercrombie coteqories)
18

1 Cenerlc (no proLecLlon name of baslc naLure or class)
2 uescrlpLlve (ldenLlfles characLer/quallLy proLecLable w/ secondary meanlng)
uggesLlve (some use lmaglnaLlon suggesLs/subLle connoLaLlon buL doesn'L descrlbe a LralL
no secondary meanlng requlred)
4 ArblLrary/anclful (sLrongesL llke Lxxon or Apple compuLers no relaLlonshlp Lo
producL/servlce enrlches language)

Lx ?ellow pages (u) ClLlbank ( of loLs of ppl w/ money) Pollday lnn (u) CocaCola w/ slogan (u) neLscape ()
uncola up () Camel clgs (A) CopperLone () l8, (u) Cold card (Cenerlc dlff Lypes 1
sL
person was suggesLlve)
layboy (uggesLlve? uescrlpLlve?) ard to d|st|gu|sh b]w descr|pt|ve ad suggest|ve marks!
ow to estab||sh ecodary ,ea|g
1 exLenL of
rd
parLy use (no one else uses lL Lhen sLrengLhens)
2 adverLlslng/markeLlng polnLlng Lo markeL
1, legend (ex Lhls color green ls a 1, of lnLernaLlonal shoe")
4 romoLlonal lLems ln Lhose colors (glveaways shlrLs/pens llke drug companles)
3 ,onlLorlng compeLlLlon for poLenLlal color use
urvey Lvldence
,edla

Laham Act
a lf lmmedlaLely ldenLlfles source inherent/y distinctive
b lf noL lnherenLly dlsLlncLlve requlres proof of secondory meoninq (prlmary vlslon ln mlnds ls Lo
producer noL producL) Lo secure 1, rlghLs (w/ descrlpLlve marks geographlc marks and
personal name)
c Cwner's burden of proof?
d alr use uefense (oLhers can use mark w/ouL llablllLy b/c used falrly and ln good falLh Lo
descrlbe consumer goods/servlces or geographlcal orlgln) owner doesn'L have prlmary
excluslve rlghL Lo descrlpLlve meanlng
1ypes of alr use (owner musL demonsLraLe llkellhood of confuslon and lnfrlnger can use
afflrmaLlve defense of falr use)
1 afe harbor Lo poLenLlal lnfrlnger lf good falLh Lo descrlbe goods/servlces of parLy
(Lanham AcL )
2 nomlnaLlve use (no sLaLuLory provlslons b/c CourLs creaLed Lhls)
Lx) 1errl Wells who was playmaLe and sued for playboy assoclaLlon buL could
use nomlnaLlve name of 1, buL had Lo avold afflllaLlon (nolmes ln N5 v 4P)
Lxpresslve alr use lncludes pollLlcal parody saLlre (need Lo clLe someone)
provldes weak proLecLlon uslng expresslve falr use under 1, law (soclal good
lssues)
*compote to c olt use (sttooqet ptotectloo)
19

e candalous ,ark 2(a) of ederal 1rademark AcL


a. Distinctiveness and Types of Marks
Prlmury Slgnlflcunce 1ext ( prongx)
1 deLermlne class of goods
2 as l vlew lL whaL assoclaLlons do l make? (source or [usL Lype of good?)
*who does Lhe Lhlnklng? (speclflc seL of consumers?)
a who has Lhe burden of proof? (owner has burden under Lanham AcL v
nonreglsLered mark Lhe person challenglng mark as generlc can use lL as an
afflrmaLlve defense)

Types of Marks: ll require Bona Fide intention to use in commerce. Or actual
use.
A. Trademarks: Word, name, symbol, or device, or any combination thereoI,
that is used to distinguish the goods oI one person Irom goods manuIactured
or sold by others and to indicate the source oI the goods.
B. Service Marks: Same as TM`s except they identiIy services, rather than
products. Must be service that is suIIiciently separate Irom sale oI goods to
register under Lanham Act.
C. CertiIication Marks: words, names, symbols, or devices owned by one
person and used by others to certiIy that their goods or services have certain
characteristics. Think consumer reports.
D. Collective Marks: Either membership marks or collective TM`s or service
marks adopted by organization.
Distinctiveness:
Marks must be distinctive, aka indicate source, to get recognized and protected.
Inherently Distinctive Marks:
a. Arbitrary or FanciIul Marks: FanciIul- Words and symbols that are made up
and have no meaning other then their trademark meaning. Arbitrary- words
or symbols that have non-trademark meaning but the meaning bears no
relationship to the product or service they identiIy.
20

b. Suggestive Marks-indirectly describe the product or service they identiIy.
Two tests to determine: Degree oI imagination (more imagination consumer
must use to get a description oI product or service, more likely suggestive)
and Competitors are likely to need (iI competitors don`t need mark to
describe their own products then mark is likely to be deemed suggestive).
Protected upon acquiring secondary meaning:
Descriptive Marks: Includes marks that appear to describe the product or service
they identiIy, marks that appear to describe geographic location, marks that are
primarily a surname, and other marks commonly used in connection with relevant
type oI goods or services.
Secondary Meaning: acquired when relevant consuming public comes to view the
word or symbol not just in its primary, common, descriptive or surname sense but
also as an indication oI the source oI the claimants product or service. Lanham act
provides that proof of substantially exclusive and continuous use of a descriptive
mark for 5 years in connection with product or service can constitute Prima facie
evidence mark has obtained secondary meaning.

Four factors to show secondary meaning with name
1 1he lengLh of excluslve use
2 1he sales volume Lhe more sold Lhe beLLer
1he amounL of adverLlslng puL lnLo LhaL name
4 1he lack of good falLh copylng by second user
Incapable oI becoming distinctive:
Generic marks: iI comsumers associate word or symbol with all products oI a
particular type, shit done be generic.
Standard Ior determining is Primary SigniIicance to Consumers test.
$candalous or immoral marks: Under Lanham Act Section 2, marks that are scandalous
or immoral will not be registered or protected. Marks are scandalous or immoral iI they give
oIIense to the conscience or moral Ieelings or are shocking to the sense oI decency or propriety.
Cases:
1he monopoly/anti-monopoly case:
1hree tests cosumer mot|vat|o pr|mary s|g|f|cace ad effect o compet|t|o
21

Commo |aw ways of determ||g ||ke||hood o cofus|o

1heres no oLher word Lo descrlbe LhaL speclflc game excepL for Lhe one belng used Lo descrlbe LhaL
producL
A paLenL ls Lo crowd ouL all compeLlLors who used Lo exlsL ,onopoly cannoL pollce all Lhe prollferaLlon
Came ls creaLed ln 1980s LhaL ls opposlLe of ,onopoly game buL Lhey sue hlm over Lhe use of Lhelr
name ln Lhelr game
Cenus specles LesL 1 ls Lhe Lerm a caLegory of Lhe game or produced by a speclflc producer
2 Consumer moLlvaLlon LesL lf someone sold you monopoly sold noL by parker broLhers would you buy
lL? And obvlously you would so parker broLhers losL rlghLs Lo monopoly and Lhe name became generlc
lnLo Lhe publlc domaln so Lo speak

1hls ls sLrange Lhough properLy rlghLs for one parLy are [usL belng Lorn away 1he opposlLe of Lhe labor
Lheory baslcally arker broLhers bullL LhaL name up and dld Lhe work so Lhls ls fucked up o congress
reacLed ln 1984 wlLh Lhe 1rademark clarlflcaLlon acL roLecLlon ensured of reglsLered Lrademarks

1he acL kllls of consumer moLlvaLlon LesL and replaces lL wlLh LesL prlmary slgnlflcance LesL
rlmary slgnlflcance ls whaL Lhelr maklng speclflc Lo Lhem or general wlLh [usL a random name

Would monopoly be known Lo be assoclaLed wlLh parker broLhers or noL 1haL's Lhe quesLlon noL
wheLher you would buy one lf noL from parker broLhers mall buL key dlfference

Pow else could you declde anLl monopoly case so generlclde of monopoly dld noL occur
,aybe develop a Lhlrd Lype of LesL CompeLlLlve need LesL ls Lhere confuslon among compeLlLors?
o LhaL clarlflcaLlon ls necessary?

?ou musL also be pracLlcal Lry Lo geL Lrademark proLecLlon for your producL CeL your Lrademark
somewhere else Lhen relnvesL lL wlLh power Aka go Lo ulsney and geL Lhelr proLecLlon
1hls ls lmporLanL because even Lhough Lhey losL case Lhey were creaLlve and found ways around Lhelr
dllemma

ke//oqq compony v Notiono/ 8iscuit compony (19J8)
lssue does owner have excluslve rlghL Lo name and shape?
LlLlgaLe unfalr compeLlLlon for shredded wheaL" name and plllowshaped form"
roblems generlc Lerm LhaL descrlbes w/ falr accuracy and ls generally known Lo publlc ln plllow form
only b/c was Lhe only manufacLurer ppl assoclaLe Lhe producL w/ Lhe name oo ftee tlJets lo pobllc
Jomolo (stotteJ losloq 1M by poteotloq lt ooJ pottloq lt loto pobllc Jomolo)
*a/g ! lLney ln N5 v 4P b/c greaL lnvesLmenL of labor buL declded llke 8randels b/c paLenL had
elapsed
; why isnt there 1M protection 4l1k Potent expires? n pub/ic domoin
Poldlng doesn'L have excluslve rlghL b/c generlc Lerm or form (paLenLs have explred)
Already earned monopoly for a long Llme (1 mllllon)
22

orm ls assoclaLed wlLh producL raLher Lhan parLlcular producer (paLenLed machlnes mosL
economlc way Lo make besL meLhod Lo absorb mllk pleaslng shape shlpplng wlLhouL
breaklng) no 1rade dress proLecLlon
kellogg musL sLlll dlsLlngulsh hls producL b/c of falrness carLon's musL be dlsLlncLlve (1rade
dress) u doesn'L have an obllgaLlon Lo ensure every consumer knows Lhe dlfference only
teosoooble meoos to pteveot coofosloo
lcLure of 2 blsculLs floaLlng ln bowl of mllk ls noL dlsLlncLlve
&eoetlc mlqtotes oot ftom ptlvote to pobllc Jomolo ooJ cottles oot wltb lt tbe 1M
revenLlon rospecLlve Lawyerlng don'L use 1, alone ex nlke neakers !ohnson and !ohnson
8andald brand avold possesslves keep slngular and don'L use plural don'L use descrlpLlve name
ollowlng Case JloJows v lloJows (no amL of secondary meanlng saves mark from belng generlc
oowlse to soe lloJows b/c boJ o mooopoly ooJ ptoveJ lt wos qeoetlc) same resulL ln cteom of Jbeot v
cteomy Jbeot

1he urphy Door Bed Co. v. Interior Sleep Systems, Inc.
lssue Can a producL name become unproLecLable b/c generlc ln publlc domaln?
LlLlgaLe Common law 1, lnfrlngemenL asked for permanenL ln[uncLlon en[olnlng all us from uslng
,urphy" name
roblems sold by name of ,urphy bed" aLenL and 1, offlce denled appllcaLlon Lo reglsLer ,urphy
bed 1, b/c descrlpLlve of LralL used by publlc as generlc Lerm for wall bed
Poldlng
uefendanL's burden Lo prove Lerm ls generlc publlc exproprlaLed a Lerm esLabllshed by
developer (subsLanLlal ma[orlLy denlal by 1C and Appeal 8oard lncluded ln dlcLlonary
oLher newspapers/mags use phrase Lo descrlbe Lype of bed)
Lven lf efforLs Lo pollce mark are slgnlflcanL lL Lake Lhe Lerm ouL of publlc domaln po/icinq
doesnt stop qenericide
ollowlng Cases Monopo/y v 6enero/ Mi//s lun 6roup (courL used Motivotion 1est for game purchase
and found consumers boughL by game noL source) 1, ClarlflcaLlon AcL 14 (c) of Lanham AcL amended
ln 198 doesn'L allow moLlvaLlon LesL lnsLead use Primory 5iqnificonce 1est
atrains v. Oak Crove Smokehouse: 1983
Litigate: TM inIringement and unIair competition under Lanham Act
Problems: categorization oI 'Fish-Fri and 'Chicken-Fri as descriptive w/ no secondary
meaning, dictionary test, known only in ew Orleans
Holding: Descriptive terms may acquire secondary meaning in geographical areas but allow Ior
Iair use elsewhere
Failed dictionary test, imagination test, competitor`s need to use TM to describe
product, extent term is used by market/industry
Fair use deIense doesn`t prevail absolutely b/c secondary meaning established in ew
Orleans (Iair use everywhere except ew Orleans)
Circumstantial evidence oI amt oI advertising, volume oI sales, survey evidence only
23
Borderline generic w/ secondary meaning only in ew Orleans

2

Descriptive Mark Test:
1. dictionary test oI deIinition (Iair use deIense Ior descriptive marks, phonetic or Iaulty
spelling doesn`t matter)
2. imagination test (secondary meaning, in Lanham Act gives roadmap to Iind
secondary meaning through sales/use/survey evidence)
3. competitors need Ior term (Fair Use, Lanham ct 115(b)(4))
4. iI term is used by others anyways/already
*boundaries are important, like speciIic geographic area

We look at language within a market, and Fish Iry has secondary meaning within LA but not
anywhere else according to court.

Is there competitive need to use this term? Maybe, people in LA seem to use this term in
describing various things. You might lose certain market by not using the term. Fish Iry sounds a
hell oI a lot better than Fish Tempura to ew Orleans people. More words would increase
inIormation costs, the longer something is the more it costs to get those words marketed and
accepted.

The Iact the name has been used extensively by others is a sign that the term is needed. People
need this term to describe a certain thing. Thus why chicken Iry drops to generic having no
secondary meaning.
Car-Freshner v. SC 1ohnson & Sons (1995)
Issue: Can an alleged inIringer claim Iair use deIense iI mark is suggestive?
Litigate: TM inIringement, conIusion, Common law TM inIringement and UnIair competition,
TM dilution (under Y statute)
Problems: CarIreshner sells in TM pine tree shape and Johnson/Glade sold air Ireshener in
pinetree shape during Christmas season
Holding: o inIringement b/c Products are dissimilar and wouldn`t lead to conIusion
Cannot use Fair &se defense a/g a Non-descriptive Mark (b/c C`s mark is
suggestive, reject J`s claim Ior Iair use) b/c there is little conIusion
Protecting the right oI society to use words/images in their primary descriptive sense
(a/g TM owner`s exclusive claims)
TM/box clearly distinguishes Glad
In re Old Clory Condom: Scandalous arks (1993)
Old Glory Condom Corporation denied application Ior trademark because condom was going to
be Ilag colored and would be scandalous to most U.S. citizens thus not Ialling under the Lanham
act. Common law rule oI no protection Ior scandalous or immoral acts was tucked into Lanham
act, but how do we in Iact decide iI something is scandalous or immoral.
24

We look at dictionary as well past decisions and what they have delved out. What`s the shiIting
standard? Public reaction? Dictionary? Why should the public even matter? They can help delve
out commercial morality.
The court said Old Glory was not scandalous upon review, label on package was Ilag but
condom themselves were not Ilags and they talked it up as patriotic to prevent the spreading oI
STD`s. The ordinary or common meaning oI scandalous so shocking, but being as such we can
always explain away and prevent us Irom being shocked.
Example oI how we are not shocked, Bad Irog beer. Label has on it amphibian with a attitude
and its Irog Ilipping people oII. Court decided middle Iinger is scandalous by humans but not by
amphibians. Allows the label to persist.

Only the eIIected class has standing to determine whether a mark is scandalous or immoral.
Scandalous v. Generic
1. Originally Impaired (thermos was good in beginning, while redskins was impaired but people
didn`t realize it).
2. Change in understanding (Aspirin was known as trademark then become common term Ior all
Iorms)
3. Subjective standard

Limited from &sing Your Own Aame (arbitrary marks include imaginary/historical names but
descriptive includes personal surnames which require secondary meaning, like Trump)

1aylor Wine v. Bully Hill Jineyards1977:
Issue: Can a TM restrict someone Irom using own name?`
Litigate: Bully appeals preliminary injunction enjoining use and inIringement oI TMs owned by
Taylor Wine, cannot engage in unIair competition
Problems: Bully is the grandson oI Walter Taylor and started company under his own name
which happens to be the same, 'Walter S Taylor, T. wants to stop use oI 'Taylor or any
imitation oI labeling, wine is a product the consumer buys simply on Iaith, Bully is not a
newcomer to business and wants to use his true name
Holding:
ot like grandIather leIt him part oI business in inheritance AD not a case where
person is trying to save a place in a market he hasn`t entered yet
Bully cannot claim to be successor oI Original Taylor or Owner oI Taylor Family
Estate to conIuse public But can use his own name
Court reluctant to say you can`t use your own name
Breaking CL rule oI right to one`s own name (2 conIlicting property rights: name v.
property use oI TM)
Result: Created signing parties, 'cant have my name but cant get my goat Made adverse legal
decision into a successIul arrative.
23

Levitt Corp. v. Levitt 1979:
LevlLL and ons has rlsen Lo naLlonal promlnence ln Lhe houslng lndusLry buL Lhe orlglnal founder and
owner has rellnqulshed hls role 1he CourL was asked Lo deLermlne Lhe exLenL Lo whlch ,r LevlLL
havlng sold boLh hls company and Lhe goodwlll lL has accumulaLed over Lhe years may publlclze hls
name and record of experlence as he embarks on new venLures ln real esLaLe developmenL
CourL says LevlLL can conLlnue Lo bulld buL hls name ls gone 8aby boomers reLlre Lo lorlda so all Lhe
ones who became famlllar wlLh hls name ln Lhe norLheasL would have Lhe same goodwlll when Lhey
reLlre Lo Lhe souLh lf LevlLL was Lhere !usL because lorlda ls noL new ?ork does noL mean Lhe good wlll
cannoL Lransfer when Lhese people move
Ceographic arks: In re Nantucket, Inc. (1982)
LaLuLe Lanham AcL of 2(e)() Ceographlc ,arks efusal (2 prong LesL) when used on or ln
connecLlon wlLh Lhe goods of Lhe appllcanL ls prlmarlly geographlcally decepLlvely mlsdescrlpLlve of
Lhem"
1 prlmary slgnlflcance as generally known geographlc area
2 mlsdescrlpLlve (reasonable bellef ln geographlc source)
roblems Lrylng Lo reglsLer nanLuckeL" as 1, for men's shlrLs posslble confuslon w/ geographlc mark
and confused w/ belng produced Lhere arblLrary and nondescrlpLlve Lerm b/c no assoclaLlon w/ men's
shlrL ubllc assoclaLlon of goods/flrsL lmpresslon LesL
Poldlng no lndlcaLlon LhaL publlc would expecL shlrLs Lo be made ln nanLuckeL noL llkely Lo be
decelved reglsLraLlon can'L be denled
,usL have reasonable bellef consumers wlll be decelved 1C 8oard placed Loo much
welghL Lo decepLlve
WheLher producL comes from a place ls lrrelevanL Lo 1,
very consumer drlven lssue (ls Lhere an lncongrulLy b/w name and producL? could become
generlc)
Compare Lo 1l ArL 22/2 geographlc lndlcaLlons
(posslblllLy of candalous ,ark 2(a) under ederal 1rademark AcL))


b. $ubject Matter: &nusual Trademarks, Parody and Trade Dress
Timeline:
1992: Taco Cabana- no secondary meaning required (expansive)
1995: Qualitex (expansive)
1999: Burden oI prooI Ior non-Iunctionality Ior P narrowed
2000: Samara Brothers restricts

2

Trade Dress: Trade Dress may be protected as a mark iI it identiIies and distinguishes the claimants
product or service. Under modern view, color alone (Quallitex case) may be protected as mark iI
secondary meaning is demonstrated.
Trade dress usually Ialls into two catergories Product Packaging and product Ieature, and there`s a third
hybrid Iorm, overall image oI a business (two pesos decision). AKA TERTIUM QUID.
FOR TRADE DRESS TO BE PROTECTED it must be O-Iunctional and distinctive.
Functionality: IF CERTIN $PECT$ OF PROD&CT RE F&NCTIONL, aka IF IT I$
NECE$$R FOR COMPETITOR$ TO MRKET COMPETING PROD&CT$, THE $PECT
CNNOT E COPRIGHTED.
2 part test from Traffix case:
1. Is the claimed trade dress essential to the use or purpose of the product, or does it affect the cost
or quality of the product?
2. Would the exclusive use of the feature ~put competitors at a significant, non-reputation related
disadvantage? (Qualitex $tandard) (aka ethetic functionality)

Only if product feature is nonfunctional under OTH tests can it be protected as Trade Dress.
PlaintiII bears burden oI proving non-Iunctionality in a 43(a) suit.
uct|oa||ty |s a quest|o of fact that requ|res a ba|ac|g of the eeds of oe compay to |det|fy |ts
products ad the eeds of compet|tors | creat|g s|m||ar products |e Why are black moLorboaLs noL
proLecLable color of boaL englnes? 8ecause black has a funcLlonal use as reduclng Lhe appearance slze of
Lhe moLor 1hus why color ls noL proLecLable ln LhaL lnsLance
D-C1C-AL1 types
1 Dt|||ty (effect|ve cost over qua||ty)
2 Aesthet|c fuct|o (8aroque Des|gs)
3 Advert|sed Dt|||ty (8ose wave rad|oes)
4 Compet|t|ve Advatage (buyer wats that vers|o more) (1raff|x)

Why functionality doctrine is important:
1ulsLlngulshes Lrademark from paLenL We don'L wanL Lo granL a paLenL by some backdoor
means Lhrough a Lrademark And we don'L wanL lL Lo be funcLlonal ln lleu of a uLlllLy paLenL
,ake sure Lo keep Lrademarks and paLenLs separaLe reempLlon problem
2 1rademark ls source lndlcaLor ,usL be Lrue Lo lLs ldenLlLy as LhaL's whaL Lrademark ls
uncLlonallLy ls by deflnlLlon anLlcompeLlLlve uon'L wanL Lo dlscourage people from maklng
producLs whlch could lower cosL
LveryLhlng has a purpose and we cannoL separaLe Lhe packlng purposes from Lhe ldenLlLy
purposes menLally CannoL say LhaL parL of Lhe process ls funcLlonal buL oLher parL has aesLheLlc
purpose LlLhler all or noLhlng


2

Cases:
uo/itex v locobson (1995)
lssue wheLher Lanham AcL permlLs reglsLraLlon of color 1,?
LlLlgaLe 1, lnfrlngemenL for uslng same color (confuslon)
roblems can'L you run ouL of colors afLer Lhe flrsL plcks? posslble shade cofus|o (Lo proLecL Lhe
green gold musL proLecL a llLLle more green and a llLLle more gold b/c nelghborlng shades) co|or
dep|et|o ot |c|uded or w]| scope of CL def||t|o of 1, hard Lo explaln parLlcular color
Poldlng anyLhlng can serve as an lndlcaLor of ldenLlLy Lhough Congress dld noL expllclLly puL color ln
Lhere (1C recognlzes shape and scenL color ls ok)
uoesn'L negaLlvely affecL markeL/lndusLry b/c Consumers ldenLlfy w/ color (unllke bteJJeJ
Jbeot)
CourL places co|or | descr|pt|ve category wh|ch requ|res secodary mea|g (1lffanys)
need dlsLlncLlve/sLrlklng color Lo deal w/ shade confuslon [usL b/c color ls noL essenLlal Lo
producL docLrlne of funcLlonallLy doesn'L bar absoluLe use of color alone as 1,
uncLlonallLy docLrlne would forbld use lf unfalr advanLage/monopolles(Lo sLop color
depleLlon use dlsLlncLlve paLLern llke 8urberry! 8u1 candy companles cannoL sure sLrlped
dlsplay of classlc flavors)
or used for publlc pollcy reasons (safer when dlff color pllls)
esLaLemenL (
rd
) of unfalr CompeLlLlon 1
Lanham acL ls used now whlch adds onLo CL

rob|ems w|th co|or
1 CannoL [usL Lrademark every color because Lhere ls such Lhlng as color depleLlon noL unllmlLed
number of colors Lo choose from 1here ls almosL unllmlLed words buL colors aren'L so llmlLless
2 hape confuslon
1rade dress ls LoLal look and feel of producL Lhus color musL be bound Lo a cerLaln shape or sLrucLure
4 ls Lhe funcLlonallLy docLrlne quesLlon uon'L wanL confuslng colors LhaL would fuck wlLh funcLlonallLy
AnoLher way Lo deal wlLh color depleLlon ls Lhere ls a greaLer proLecLlon for paLLerns such as burberry
ulsLlncL paLLerns lf unlque are easler Lo galn proLecLlon 8uL lf Lhey can geL color proLecLlon lL's
lncredlbly beneflclal 80 percenL of vlsual recognlLlon sLudles are based on color
1here ls fragrance proLecLlon noL for perfumes as LhaL would be funcLlonal buL for (ln re Clark) a
Lhread LhaL smells llke blossoms was proLecLable
ound ls proLecLable ,lcrosofL and n8C's chlmes Warner 8ro's Llon before Lhelr movles
ln Lu Lhe sounds musL be graphlcally represenLed noL so ln Lhe u
new klnd of Lrademarks ls sensory LrademarkLouch Wlne boLLle LhaL feels llke velveL able Lo be
Lrademarked
Wallace Int`l $ilversmith v Godinger "1he desiqn is essentio/ for the use or description of
the item" 4esthetic lunctiono/ity!
Baroque designs are Iunctional.
28

Wallace may not exclude competitors Irom using those baroque design elements necessary to compete in
the market Ior baroque silverware. It is a Iirst principle oI trademark law that an owner may not use the
mark as a means oI excluding competitors Irom a substantial market. Wallace seeks trademark protection,
not Ior a precise expression oI a decorative style, but Ior basic elements oI a style that is part oI the public
domain. OI course, iI Wallace were able to show secondary meaning in a precise expression oI baroque
style, competitors might be excluded Irom using an identical or virtually identical design.
Although the Godinger design at issue here was Iound by Judge Haight to be "substantially similar," it is
not identical or virtually identical, and the similarity involves design elements necessary to compete in the
market Ior baroque silverware
1raffix (D) v. arketing Displays Inc (2001) (utility, expired patent no protection)
lssue wheLher Lhe explred paLenL can clalm a 1rade dress lnfrlngemenL?
roblems reverse englneered slgn and markeLed under slmllar name (wlndbusLer v wlndmasLer)
owner clalms paLenLed sprlng deslgns make Lhe slgns dlsLlngulshable uLlllLy paLenL compeLlLors
shouldn'L have Lo hlde sprlngs
Poldlng prlngs are funcLlonal Lo slgn
Copylng someLlmes helps compeLlLlve economy and markeL (ex 8oolto 8oots where reverse
englneerlng leads Lo advances ln Lechnology)
Wlll allow proLecLlon lf lnherenLly dlsLlncL
CourL consldered CompeLlLlve needs 1esL
1 wheLher devlce ls essenLlal Lo use/purpose of producL or affecLs cosLs/quallLy
2 wheLher lL has slgnlflcanL nonrepuLaLlonrelaLed dlsadvanLage (aesLheLlc
funcLlonallLy)
unllke ;oolltex color had no bearlng on use/purpose/cosL
8uL used CompeLlLlve AdvanLage 1esL lnsLead 3 acLor 1esL (4 ,orLonnorwlch +1)
1 uLlllLy
2 AdverLlsed uLlllLy
AvallablllLy Lo CompeLlLors of uncLlonally LqulvalenL ueslgn (aesLheLlc funcLlonal)
4 ueslgn resulLs ln less expenslve manufacLure
3 CompeLlLlve advanLage (Lells ppl Lhese sprlngs used by ,ul wonL Llp over)
*only need Lo say a compeLlLor ls uslng lL for a pracLlcal reason and burden falls on owner Lo
explaln why lL lsn'L funcLlonally necessary
,ul musL show Lhe explred uLlllLy paLenL ls noL needed by consumers or compeLlLlon
lmllar Lo bteJJeJ Jbeot b/c uLlllLy paLenL goes lnLo publlc domaln and drags 1u wlLh lL and lL
becomes compeLlLlve advanLage Lo own lL ollow 1M ptotectloo lo o poteot ooly lf lt ls sootce lJeotlfyloq
bot lf oot lt folls loto lobllc uomolo

Two Peso`s v. Taco Cabana
PROD&CT PCKGING TRDE DRE$$ CN E INHERENTL DI$TINCTIVE,
(Combination of elements as a whole is not descriptive of the product, commonplace for that type of
product, or a trivial variation on a combination that is commonplace. ka no need for secondary
meaning.
Reviled against throughout the country. ot many agree with the case. Read this as disIavored says WilI.
Can trade dress oI a restaurant be protected? Taco Cabana has an inherently distinctive trade dress, but
29

has no secondary meaning. US Supreme Court aIIirms lower courts ruling in Iavor oI Taco Cabana.

Two justiIications the court oIIers in support oI its ruling.Protecting distinctive trade dress will enable
companies to appropriate their own goodwill, and that small companies would have trouble protecting
their trade dress Irom larger companies iI they had to establish secondary meaning.

Also a trade secret claim here, what would be trade secret? Maybe kitchen design and not visible areas
duplication. So something that seems run oI the mill, the layout and design oI a place, is receiving
arbitrary and IanciIul protection under the law. And that`s why people hate the shit out oI it.
But whats important is we view the 1C1AL LCC A-D L The menus, the uniIorms, the colors,
the layout, the design, It`s a complete package we must view together and not taken apart piece by piece.
II taken apart it might not garner protection, but together maybe qualiIies.

Opposite attorney should have made more Iunctional arguments. Saying this package has a Iunctional
value so it should not have garnered protection. Aka the garage doors opening, and the layout design.
Should have argued utility in these things so they should be open Ior use to other business and not receive
trade dress protection.
But Iunctionality loses again in this case because design not Iound to inhibit Iunctionality. o danger oI
giving monopoly to something Iunctional in this instance. Or at least that`s what the court theorizes, WilI
questions it. His aesthetic Iunctionality thoughts start to arise. Maybe these types oI restaurants need to be
designed similar to Two Pesos to be successIul.

Why no need Ior secondary meaning?
1. Court is distinguishing this situation Irom Qualitex, this not just color where it`s a descriptive mark.
This is instead arbitrary and IanciIul under the Abercrombie standards, many variations on design not like
color where you worry about depletion.
2. And secondly, to not apply these trade mark standards across the board then trade dress will become a
separate regime oI law. Courts still want it to Iall under trademark.
3. Thirdly, there is a concern Ior the time it takes to build up secondary meaning, small companies would
have trouble protecting their trade dress Irom larger companies iI they had to establish secondary
meaning. The more creative design, the more incentive to copy. More creative design Iinds more Iree
riders.
4. Fourth, iI we require secondary meaning, Iailure oI company to do so would be due to lack oI
commercial success on their part.

Wal-art Stores v. Samara Brothers(2000) (product design is not inherently distinctive)


lssue ls a dlsLlncLlve producL deslgn proLecLable ln an acLlon for lnfrlngemenL of unreglsLered Lrade
dress under 43(a)(3) of Lanham AcL (llkely Lo confuse)?
LlLlgaLe cease and deslsL leLLers led Lo lnfrlngemenL under federal law consumer fraud unfalr
compeLlLlon under n? law lnfrlngemenL of unreglsLered 1u under 4(a)
0

roblems copled and made cheaper modlfled ouLflLs by easy reverse englneerlng does a producL
requlre more proLecLlon lf lL ls easy Lo reverse englneer?
Poldlng
ulsLlncLlveness ls a prerequlslLe for reglsLraLlon for 1, under 2 of Lanham AcL
2 ways Lo be dlsLlncLlve
1 lobeteotly Jlstloctlve lf lnLrlnslc naLure Lo ldenLlfy source only lncludes colors
(dlsLlngulshed from goods of oLhers")
2 acqulres dlsLlncLlveness even lf noL lnherenLly dlsLlncLlve developed oJoty
meooloq ln mlnds of publlc (noLhlng shall prevenL reglsLraLlon of mark used when lL
has become dlsLlncLlve")
othing in 2 however requires goods may be distinguished WITHOUT Secondary
meaning
Distinguishes Two Pesos as mutation oI product design and product packaging (3
rd

category) package design can be inherently distinctive while product design can never
be inherently distinctive
product design can only be protectable upon showing secondary meaning
roblems of appllcaLlon PooLer glrl ls a producL noL [usL funcLlonal ,enu ls llke a package or parL of
experlence or boLh WebslLe may seem llke a package buL can be a carefully deslgned producL

1he quest|o of what's the package ad what's the product


WhaL ls Lhe physlcal dlfference? Could be a blurry llne especlally ln resLauranL seLLlng ls Lhe menu
package or producL deslgn?
uo we have useful dlsLlncLlon emerge from Lhls case?
Well we have a Lhlrd caLegory whlch even more confuses Lhlngs Lhe %ertium quid 1he Lhlng
beLween packages and producLs arL anoLher explalns lL a llLLle beLLer
$o how do you determine if its package or a product?
Come back in 5 years. That`s WilI`s answer, because we do not right now.
Hooters v. Wing House
lssue over unlform PooLers one color buL Wlng Pouses sLlll very slmllar ln deslgn
Was Lhls producL or package? Were sklpplng Lhls lssue
8uL PooLers unlform was deLermlned Lo be funcLlonal Why ls lL funcLlonal?
PooLers glrl funcLlon ls Lo provlde vlcarlous sexual recreaLlon Lhus her unlform ls a funcLlon of LhaL and
Wlng Pouse ls allowed Lo use slmllar unlforms eems llke a sLreLch Lhough A welrd way of looklng aL
funcLlonal

c. Competing Marks: Incontestability, Good Faith &se, and problems
of Priority
1

Incontestability: (ark ad |y)
meanlng Lhe proLecLlon garnered Lo Lrademarks afLer 3 years of noL belng challenged provldes Lhem
wlLh addlLlonal defenses Lo challenges ralsed namely ln Lhls lnsLance Lhe accusaLlon LhaL Lhe Lrademark
ls merely a descrlpLlve mark
key Lhlng ls 3 years of conLlnuous use ln commerce rovldes proLecLlon under secLlon 14 of Lanham acL
8eneflLs of lnconLesLablllLy
1 rlma facla evldence of ownershlp and excluslvlLy of Lhe mark (could be rebuLLable)
2,akes you lmmune from aLLack on Lhe basls of prlor uses
lmmune from aLLacks on descrlpLlveness based on lack of secondary meanlng


lnconLesLablllLy ls noL [usL a Amerlcan uefense lL's also a quleL LlLle defense Lo Luropean Law as well
lnconLesLablllLy does noL proLecL agalnsL generlclde lnconLesLablllLy provldes a shleld
ome |cotestab|||ty except|os
raudulenL reglsLraLlon abandonmenL mlsrepresenLaLlon as Lo source of mark generlclde moral or
scandalous mark falr use

Good Faith &se: (Tea Rose)
Good Iaith
1. Absence oI knowledge.
2. o bad Faith.
3. o intent to Iree ride.
Quite hard to show issue 1, and 2.
IT is a showing oI one oI these that proves good Iaith. ot all, just one. o immediate showing oI bad
Iaith. Issue 3 is the one that`s going to arise all the time. o Intent to Iree ride. Tea Rose Doctrines still
good Ior common law trademarks.
Why do we still use it?
(TM next to mark means state registered trademark, R means FEDERALLY registered trademark).
Well Tea Rose Doctrine is used Ior wholly remote trademark issues. So iI mark is used in good Iaith and
in a wholly remote market, Tea Rose Doctrine protects it. And iI you have a period oI overlap oI two
marks, Tea Rose Doctrine limits the trademark suits to only your market.

Geographic oundaries: (Dawn Donut, Tea Rose)
t CL: Tea Rose Doctrine
aka First person to use a mark (or attain secondary meaning in mark that is not inherently
distinctive) is the owner of it. However, If a second person later uses (or acquires secondary
meaning in) a confusingly similar mark in good faith in a remote geographic area, the
SECOAD person will have superior rights in the mark in the remote area, by virtue of the
remote, good faith user defense
2

Remote: not just Iirst parties area where it sells good or services but also those areas where mark
has presence by virtue oI advertising or general reputation.
Zone oI natural expansion: Senior user (Iirst) may assert authority not just in market area, but
also in zone oI natural expansion. It`s the geographic area senior user logically and Ioreseeable
would eventually expand given the nature oI the senior users business and history oI prior
expansion.
&nder Lanham ct: Federal registration of mark on Principal Registry expands
geographic rights beyond those at common law by giving Constructive notice of its use of
the mark and/or constructive use.
Constructive notice: Eliminates good faith, basically gives first user rights throughout &.$.
&T.
Even iI mark owner has superior rights in a mark in a particular geographic area by virtue oI Lanham
registration, it WILL OT be entitled to enjoin anothers use in that area unless the A`s use is likely to
cause consumer conIusion about the source, aIIiliation or sponsorship oI the parties goods and services.
(which is really only demonstrated by concrete plans by PlaintiII to begin using the mark there in the near
Iuture. (A Iew courts have rejected this rule as outdated).

Priority and Registration:
Four principles of ona Fide &se: (Zazu case)
1. &se must be external. (Can`t just be in-company sales from one branch to another.)
2. Must be more than merely token
. Must be identified/affixed with product used (Gotta Label your shit)
4. Must not be used purely to preempt the use of another.
ln 1988 Lhe Lanham acL was modlfled from acLual use Lo lnLenL Lo use for Lrademark names lL's a way of
measurlng lnLenL LhaL lsn'L meanL Lo be freerldlng Pas Lo be good falLh lnLenL Lo use "8ono lide intent
to use under the circumstonces" CranLed a monLh leeway Lo use Lhe name ln commerce re 1988
Lhey had Lo use lL AC1uALL ? ln commerce now wlLh Lhls modlflcaLlon Lhey geL Lhe monLh leeway
perlod of a ln1Ln1 Lo use Lhe name ln commerce All Cood falLh of course Allows a company Lo lnvesL
ln a mark and puL sLock behlnd lL wlLhouL uslng lL for Lhe flrsL monLhs ln commerce ?ou can also
renew Lhls lnLenL Lo use for up Lo years before your force Lo acLual puL lL lnLo commerce

Registration, there are many reasons to register here are just a Iew.
You register it either on principle registry (arbitrary, suggestive, descriptive with secondary
meaning) or supplemental. You can move Irom supplemental to principle iI you acquire that
secondary meaning.
Advantages are.
1. You can pursue Ioreign registrations
2. Creates bar to registering competing mark on principle registry


3. Allows you to sue in Iederal court, and use sweet R symbol.
even good reasons Lo reglsLer
1ConsLrucLlve naLlonwlde noLlce of ownershlp (whaL happened ln uawn)
2 rlma acle evldence of valldlLy of mark (lL's sLlll a rebuLLable presumpLlon)
Allows you Lo reglsLer wlLh cusLoms offlce so ouLslde sources can'L lmporL slmllar shlL (Lops gray
markeL goods whlch are leglL llcensed buL noL allowed Lo be lmporLed lnLo u)
4 emedlal AdvanLages such as ecovery of roflLs damages cosLs Lreble damages (unlLlve damages)
and aLLorney fees
3 lghL Lo brlng sulL ln federal courL wlLhouL showlng dlverslLy (Cne federal acLlon can save you dough
from mulLlple sLaLe acLlons
rlorlLy rlghLs for forelgn flllng
ulfference beLween use based appllcaLlon and lnLenL based appllcaLlon

Cases:
nonover 5tor Mi//inq (1 D2) v Metco/f {u2) 4//en whee/er {P2)v nonover (1916)
LlLlgaLe ln equlLy Lo resLraln 1, lnfrlngemenL and unfalr compeLlLlon
roblems u1 sLrong lndlcaLlon of fraudulenL lnLenL buL owner flrsL used 1, Lea rose ln llmlLed LerrlLory
1 bullL 2 yrs of repuLaLlon of quallLy/adverLlslng/dlllgenL work and dlsLlncLlve marklng on wrapplng of
flour name prevlously used by anoLher company (AllenWheeler) and used conLlnuously Who came
flrsL? Who geLs rlghLs Lo 1,?
AbandonmenL of poLenLlal markeLs depends on lnLenL Lo abandon sLaLe
roblem of llmlLlng buslness/en[oymenL ln LerrlLory boundarles
Poldlng uepends on where Lhe goods have become known by Lhe mark esLrlcL by sLaLe boundarles
where markeLs already affecLed CL recognlzes properLy rlghLs as long as goodwlll/repuLaLlon flows from
lL
Cood falLh wlLhouL knowledge/noLlce LhaL name was prevlously used (AW v P) no evldence
of any compeLlLlon b/w 2 companles
rlorlLy doesn'L apply b/c lndependenLly adopLed 1, ln separaLe markeLs
none of Lhe parLles reglsLered Lhe mark declde by CL prlnclples (1, founded on prlorlLy of
approprlaLlon)
Panover can'L monopollze markeLs he never reached or where hls mark slgnlfles anoLher
source (1, proLecLlon exLends only Lo where goods have become known by mark)
AppllcaLlon 8ona flde 1) no knowledge of flrsL user 2) no lnLenL Lo freerlde ) noL ln bad falLh *sLaLe
reglsLraLlon ls noL pwrful
*1M /ow creotes o// these distinctions ond then undoes them o// {distinctive morks qeoqrophic morks
c/oss of qoodsJllotloo)
4


Dawn Donut v. Hart's Food Stores (1959) (abandonment into public domain)
Issue: Whether Dawn Donuts suIIiciently policed and inspected its licensees operations to
guarantee were not in public domain?
Litigate: Dawn Donuts Iiled TM inIringement, Hart`s counterclaimed to cancel registration b/c
oI abandonment Irom inadequate quality control and supervision oI licensees, DD Ior TM
inIringement under Y state law
Problems: DD`s contracts Iailed to provide system oI inspection or control
Holding: denied injunction to enjoin use oI Dawn on goods b/c no likelihood oI conIusion and
denial oI Hart`s counterclaim to cancel registration/limit territory (a/g L Act`s nationwide
protection)
o likelihood oI conIusion b/c DD would not expand into supermarkets but IF it does
expand, DD can enjoin H`s use oI mark
Hart used mark without knowledge/notice oI DD BeIore the Lanham Act, owner oI
a TM could not sustain an action Ior inIringement b/c no knowledge oI the
registration and used the mark in a diIIerent market and public conIusion was
unlikely. (anover)
Under L. Act, registration oI a TM is constructive notice oI ownership eliminates
good Iaith and lack oI knowledge deIense
1072 aIIords nationwide protection to registered marks, regardless oI the areas
in which the registrant actually uses the mark.
1127, which provides Ior abandonment applies only when the registrant Iails to
use his mark, within the meaning oI 1127, anywhere in the nation.
Absence oI express K right to inspect/supervise doesn`t mean P`s method oI licensing
Iailed to comply with L Act
Cannot determine by record whether DD had suIIicient inspection
Dissent: P not entitled to any relieI under Lanham Act b/c no likelihood that P would expand
retail use oI TM into D`s market area
-can retain TM iI licensor retains control over quality oI goods produced
-L. Act doesn`t protect aked licensing (no requirement oI control b/c products bearing
same TM might be oI diIIerent quality)
*protect public a/g misleading uses oI TM
Application: What happens iI aIter this decision one oI them decide to expand market to enjoin
use? (bad Iaith?)
*This case shows the diIIerence b/w CL and Lanham Act b/c L. Act puts ppl on constructive
notice thus, creating uniIied markets and not broken ones like Tea Rose
-Council should advise Hart to slowly change its mark away Irom DD or sell out and become a
part oI DD`s Iranchise

Common Law v. Lanham ct
efining Relationship of TM To Product AIIixation requirement affixation "in any Separability
manner on the goods or
the displays ( 1127) & creation
of trade dress
hoice of Mark defined by distinctiveness & CL standards + per se
secondary meaning limits: geographically

3

misdescriptive; scandalous
marks
When do Rights ttach? -43, fide use in commerce use or intent-to-use
eographic Scope? market + zone of expansion constructive notice
ffirmative efense bona fide :se ,s f,ir :se A ncontestability Limits A


Priority azu Designs v. L'Oreal, S.A.
Pre-1989 decision so it was beIore the 1989 modiIications to Iederal trademark law.
'The use requirement rewards those who act quickly in getting new products in the hands oI the
consumers.
Do ZHD's sale oI hair products under the ZAZU name beIore L'Oreal's registration give it
national trademark rights? Held Easterbrook: o. "Only active use allows consumers to associate
a mark with particular goods and notiIies other Iirms that the mark is so associated. . But use
suIIicient to register a mark that soon is widely distributed is not necessarily enough to acquire
rights in the absence oI registration. The Lanham Act allows only trademarks 'used in commerce'
to be registered. 15 U.S.C. 1051(a)." Here selling a Iew products to Iriends in other states was
not enough to provide national trademark protection absent registration.
Does L'Oreal's knowledge oI ZHD's intention to create hair products prevent it Irom using the
ZAZU name? Held o to hold otherwise would penalize entities Ior gathering knowledge and
"ignorance would be rewarded." Intent establishes no right to a mark only use does. "Because
the mark was not registered Ior use in conjunction with hair products, any knowledge L'Oreal
may have had oI ZHD's plans is irrelevant.

Prior to 1989, actual use in commerce, prior to application for a registration, was
a requirement to have registration granted. In 1989, the Trademark Law Revision
ct of 1989(TLR) changed this up to being Intent to Use.

Park :A Fly v. Dollar Park :A Fly (1985) (registration is incontestable evid. a/g cancellation)
lssue Can an lnconLesLable mark be canceled because of descrlpLlveness?
LlLlgaLe lnfrlngemenL and asked Lo be permanenLly en[olned from uslng words ark n ly" w/ buslness
uollar counLerclalmed for cancellaLlon of mark b/c generlc
roblems flllng lnconLesLable sLaLus of mark afLer 3 consecuLlve yrs
Poldlng eglsLraLlon ls r|ma fac|e ev|dece of 's exc|us|ve r|ght to use mark | commerce
of Lanham AcL reglsLraLlon shall be concluslve evldence of owner's excluslve rlghL Lo
use reglsLered mark" buL sub[ecL Lo defenses (14c lnconLesLable mark LhaL becomes
generlc may be canceled aL any Llme)
lnconLesLablllLy serves Lo glve quleL LlLle Lo mark and encourage culLlvaLlon of goodwlll
(excepLlons Lo lnconLesLablllLy prlor use generlc lmmoral mark)
no defense for merely descrlpLlve 1o reglsLer Lhe 1, musL have a secondary meanlng




d. Infringement, Dilution and Cybersquatting
Infringment:
Lanham Act Section 43(a) claims. Aka likelihood oI conIusion claims.
There are multiple types oI conIusion.
(1) basic product conIusion (are these products the same)
(2) sponsorship conIusion (who makes this product)
(3) subliminal conIusion (lingering doubt about the mark)
(4) reverse conIusion (small Iirst user oI mark, then big user steals mark (LAG)
To demonstrate infringement, the plaintiff mark owner must
demonstrate that the A (1) used a mark in commerce in connection
with the sale or distribution of goods or services, and (2) created a
likelihood that an appreciable number of consumers would be
confused about the source, sponsorship or affiliation of the parties
good or services.
Evidence of use in commerce:
(1) proflLs
(2) allowlng compeLlLors Lo use
() use ln markeLplace
(4) llkellhood of confuslon

Cases:
Likelihood of Consumer Confusion
AF Incorporated v. Sleekcraft, 1979:
Issue: whether to two boats are likely to conIuse the public?
Litigate: TM inIringement, injunctive relieI
Problems: SlickcraIt (original) v. SleekcraIt (without knowledge oI P`s name), D Iound out and
made logo distinctive and identiIying phrase, SleekcraIt claims boats aren`t related b/c high
perIormance Ior racing enthusiasts
Holding: Infringement if compete w/ sales of TM owners and iI marks are suIIiciently similar,
provide limited injunction
Goods are related: Same sizes, sporty, same prices, used Ior water skiing but Boats
are not competitive
Likelihood oI ConIusion Test: (9
th
Circuit)
1. Strength oI mark (suggestive when applied to boats, strengthened by
advertising)


2. Proximity oI goods (public might think association oI products more
conIusion, close in use/Iunction, similar Ieatures, non-competing but still
problematic)
3. Similarity in marks (Iailed sight, sound, meaning only diII. syllable, logo is
oIten absent)
4. Evidence oI actual conIusion (how many sales, extent oI advertising-small)
5. Marketing channels used (parallel marketing channels but same methods
employed, same prices, boat shows/ads/telephone directories, some overlap)
6. Type oI goods and degree oI care likely to be exercised by buyer (test oI typical
buyer exercising ordinary caution discriminating buyer b/c expensive item)
7. InIringer`s intent in selecting similar mark (bad Iaith v. no idea)
8. Likelihood oI expansion oI product lines (a strong possibility to compete iI
diversiIy model lines)

Lang v. #etirement Living Publishing (1991)
Issue: Likelihood oI conIusion with publishing company and magazine?
Litigate: Trade name inIringement under 43(a) oI Lanham Act, damages and anti-dilution
(under Y law)
Problems: 'ew Choices Press is small business w/ Iew ads and only produced 1 book and a
Iew tapes, doesnt plan on publishing a maga:ine, Retirement Living bought magazine and
changed name to 'ew Choices Ior the Best Years b/c search revealed Lang but small aparment
and no products/services called 'New hoices` fust name of publishing company, Lang received
phone calls for maga:ines
Holding:
Apply Polaroid Factors: (based on reasonably prudent purchasers)
1. Strength oI mark (weak, layout common place, business limited, not much
advertising, not in public`s mind but suggestive without evid. oI secondary meaning)
2. Similarity oI the marks (diII Iont, distinguishable styles)
3. Competitive Proximity oI the products (don`t compete w/ eachother, Iall in diII.
classes, charisma/selI help v. ppl over 50)
4. Evidence oI bridging the gap b/w products (o, Lang`s Iuture plans are speculative,
no evidence that prospective purchasers assume ew Choices press will make a older
adult magazine)
5. Actual conIusion (Lang received 400 calls/letters, BUT no evidence oI commercial
injury, no evidence oI reverse confusion)
6. Publisher acted in good Iaith (R. didn`t intend to capitalize on Lang`s
reputation/goodwill, name reIlects image he wants to convey)
7. Quality oI magazine (speciIic market, not Iree-riding)
8. Sophistication oI buyers (speciIic ppl buying magazine not general market)
Application: Iavors multi-national company b/c able to invest and advertise more, seems unIair
to Lang who doesn`t have those resources (IGNE$$ Really Matters)
-II Lang cant get into senior citizen market, is there harm?
-Possible loss/harm oI reputation in INS v. P (olmes) ppl will assume she is ripping oII
Reader`s Digest instead oI being the Iirst to come up with name (reverse confusion)
8

Aew Choices may be best maximized by #eader's Digest and can be used in a greater way to
help lang. (not so unfair now)

2 !usLlflcaLlons for rolllng over ,rs Lang
(1) allocaLlon of resources (wanL Lo glve phrase Lo people who wlll use lL more effecLlvely)
(2) ,aybe ln lnfrlngemenL cases we wanL Lo favor blg because Lhey have problems elsewhere (1hey
suffer from freerldlng Lhey wlll always be fendlng off Lrademark lnfrlngemenL)
1hese are [usL some LhoughLs from Wllf 8uL he says Lhls courL ls qulnLessenLlal 8Au Al1P on Lhe parL of
eaders ulgesL Lhey [usL sLeamrolled a bloLch
Rescuecom v. Corp v. Google, 2009: 2
nd
Circuit IN COMMERCE
AL lssue was Coogle's AdWords program whlch allows adverLlsers Lo purchase ads based on Lhe
appearance of anoLher (ofLen compeLlng) company's name ln search Lerms Lhus allowlng Lhe
purchaser's ads Lo appear ln Lhe search resulLs alongslde llnks Lo Lhe searchedfor company Also ln
dlspuLe was Coogle's keyword uggesLlon 1ool whlch recommends poLenLlal keywords Lo adverLlsers
for use ln Lhe AdWords program 1he key lssue was wheLher Coogle's use of escuecom's Lrademark ln
boLh programs consLlLuLes a use ln commerce" under 112 of Lanham AcL

WhaL does google do Lo counLeracL Lhe CourL of Appeals reversal of uC declslon?
Changes Lhelr search englnes operaLlng procedure LllmlnaLes llkellhood of confuslon by Lhrowlng ln
aLLrlbuLlon and selllng only generlc words raLher Lhan keywords such as escuecom CreaLe Lhe search
algorlLhms Lo creaLe a falr use defense eacL and respond Lo Lhe LlghLenlng of one seL of rlghLs by
creaLlng some oLhers o google changes Lhelr meLhod of operaLlon glves Lhemselves a afflrmaLlve
defense 1he courts today ow are sp||t betwee the 1800 cotacts dec|s|o (metatags ot |
commerce) ad the kescuecom dec|s|o sh|t ca come out e|ther way
o we have Lalked abouL Lhe reasonably prudenL consumer how do we classlfy a reasonably prudenL
consumer?
Well Lhere mlghL be expenslve goods where people exerclse more Lhan ordlnary care ln purchaslng
Lxpenslve goods have hlgher sLandards speclal buyer classes le luxury cars boaLs clgars booze 1he
more Lhe excluslve class Lhe hlgher sLandard or bar Lo esLabllsh llkellhood of confuslon peclal buyer
classes" Wllf says 1rafflx case should have been llLlgaLed wlLh Lhls speclal class because who Lhe fuck
buys wlndproof adverLlslng slgns uoesn'L always have Lo be hlghly sophlsLlcaLed class

Dilution: $ection 4(c) claims
eing that is just got revised, bring in copy of 4(c) when you take
exam.
ulluLlon ls proLecLlon agalnsL someone uslng your mark even lf lL's compleLely dlfferenL seL of
goods lL occurs ln nonmarkeL way and lL llmlLs use of words ulfferenL alms Lhen Lhe
conservaLlon of words preached by Lrademark lawyers Classlc example ls 1lffany 1lffany Lag on
9

shlL oLher Lhen [ewelry would dlluLe" whlLLle away Lhe value of LhaL mark uesplLe facL LhaL
Lhere ls no llkellhood of confuslon beLween 1lffany auLomoLlve and 1lffany Lhe real shlL
InIringement demands an actual demonstration oI a likelihood oI conIusion and is use oI a mark
which is close enough to be conIusing, and can apply to any marks within a given market.
Dilution is quite diIIerent there need not be competition or proximity oI the marks. There only
needs to be a lowering oI the value oI the original trademark owners mark. Section A is similar
to consumer Iraud, we want to prevent people Irom misrepresenting mark. Section 3 dilution
is the full shift to the property model, the idea that so much money has been
invested in a given mark that it will be damaged by someone elses use. Dilution
involves situations oI non-competition and situations where marks are Iamous
Pow do you know you have a famous mark? evlslon acL flgured Lhls ouL
Cave us facLors Lo deLermlne such a Lhlng
1 1he duraLlon exLenL Lhe geographlc reach of Lhe ad and publlclLy of Lhe mark
2 old everywhere or [usL ln a locallzed spoL
1he exLenL of Lhe acLual recognlLlon of Lhe mark
4 ls Lhe mark reglsLered
Two types of dilution: lurring and Tarnishment.
-Blurring is where you are using similar mark, so it makes the Iamous mark less distinctive as it
wears away at the distinctiveness oI it. Makes the original mark not stand out as it once did.
-Tarnishment is seen as blackening or damaging the reputation oI a given mark. You can allege
that both have occurred. Tarnishment is a situation based claim, must be looked at in context and
damages alleged.
Cases:

Louis Vutton v. Haute Diggity Dog: ("Haute Diggity") manuIactures inexpensive pet chew
toys and beds whose names parody high-end perIume, cars, shoes, wines and handbags. The
products are sold in pet stores and one or two department stores Ior less than $100.
The "Chewy Vuiton" dogs toys resemble miniature LVM handbags which, according to the 4th
Circuit "undisputedly evoke LVM handbags oI similar shape, design and color." evertheless,
with respect to trademark inIringement, the court concluded that Haute Diggity's marks, while
"undeniably similar" to LVM's marks, were successIul, eIIective parodies that obviated any
likelihood oI conIusion and thus, trademark inIringement. The court noted that Haute Diggity's
dog toys "irreverently present haute couture as an object Ior casual canine destruction" and
convey "'just enough oI the original design to allow the consumer to appreciate the point oI
parody,' but stop well short oI appropriating the entire marks that LVM claims." Through a
40

detailed analysis oI likelihood oI conIusion Iactors, the court emphasized diIIerences in the
parties' marks and marketing to support its aIIirmation oI the lower-court decision. The court
found that LJ failed to make a case of trademark dilution by blurring because
it had not met the "increased burden to demonstrate that the distinctiveness of its
famous marks is likely to be impaired by a successful parody." 1he court
dismissed a fair use defense, concluding that the Haute Diggity's imperfect
adaptation of LJ's designs was a satire not likely to be construed as actual use
of the famous LJ marks. Lastly, the court quickly disposed of LJ's claim for
dilution by tarnishment, which was merely supported by hypothetical arguments
its reputation would be harmed if a pet were to ever choke on a "Chewy Juiton"
squeak toy.

LVM establishes Iamousness oI mark by their sales Iigures and prooI oI being proIitable or some
shit like that. Fair Use and Parody are like booster seats in helping against a dilution claim.
Parodies create shortcut to showing that you have Iair use, it`s even easier under copyright but
works in this trademark case as well. Dilution is about protection Ior those who are most
vulnerable (who usually happen to be the biggest companies). We could say parody is important
to Iair use, because we need to make Iun oI the big. We protect Big companies Irom Ireeriders
but in turn we are allowed to make Iun oI them. o Iair use in this case because they say there is
no actual use. Instead just some parody.


What is Iair use actually? A aIIirmative deIense to inIringement. Allows rights only to that
individual being accused to use it. It`s a particular use deIense to inIringement.
What they are saying in this case is Iair use cannot be deIense because inIringement did not
occur. Parody in this instance protects Haute Diggity.
Court says parody by deIinition is not an actual use. A successIul one at least. Parody always
stands in opposition to the thing it is making fun of, thus keeping the distinctiveness alive.
o blurring because in nature its opposition. But why is there no tarnishment?
Does not blacken the image when placed in context. This decision is a curb on absolute power
being wielded by these owners oI subject marks.

osley v. Jictoria's Secret Catalog (2003) (mental associations do not dilute, classic case of
blurring, but overturned by Federal ilution ct of 2006)
Issue: whether objective prooI oI actual injury to economic value oI a Iamous mark is necessary
under Federal Trademark Dilution Act (versus presumption oI harm)?
Litigate: TM inIringement likely to cause conIusion, unIair competition b/c oI misrepresentation,
dilution violation oI Federal Trademark Dilution Act (likely to blur/erode distinctiveness and
41

tarnish reputation), and TM inIringement and unIair competition under CL oI Kentucky (4a
and 4c claims)
Problems: VS spent a lot oI money advertising, D has weekly publication also, M. changed name
to 'Victor`s Little Secret and sold only 5 lingerie, P claims difficult to get actual evidence of
lessening capacity of famous mark
Holding: only reversed judgment on Iederal dilution claim, b/c no evidence oI actual harm
Though consumers mentally associate user`s mark w/ a famous mark this is not
actionable dilution Mental associations don`t reduce capacity of famous mark
Court rules possibility oI dilution is not enough! must show some evidence oI actual
conIusion like Libman
Contrasting the State statute and Iederal law: state only requires likelihood oI harm,
Iederal statute allows injunctive relieI iI use oI TM causes dilution (actual harm
required)
But 2006 Revision overturns and returns to likelihood oI conIusion standard
Concurrence: could prove probable consequences oI dilution b/c role oI an injunction is to
prevent Iuture harm

-otrademark (or om|at|ve) use parody ad the f|rst amedmet
,atte| c v ,CA records (2002) pre1DkA be|g eacted
Mattel owns the Barbie trademark, MCA records represents Aqua. D.C. Iound that Barbie girl is
parody oI Barbie and a nominative Iair use thus unlikely to dilute the Barbie mark or conIuse
people as to the aIIiliation oI Mattel and Barbie.
Likelihood on conIusion test usually strikes balance between Trademark Owner`s property rights
and the public`s expressive interests. But in this case the test Iails to account Ior the weight oI the
public`s interest in Iree expression.
title describes the underlying work, it does not identify the producer.
The song does not rely on Barbie mark to poke Iun, but targets Barbie herselI. Court says in this
one that 2
nd
circuit prior has held Lanham act should be applied only to artistic works where
public interest in avoiding consumer conIusion outweighs public interest in Iree expression.
That comes Irom Rogers v. Grimalidi decision that 9
th
circuit decides to adopt in this context.
'Literary titles do not violate the Lanham act unless the title has no artistic relevance to
underlying work whatsoever.`
MCA`s use oI Barbie is not an inIringement use oI Barbie in title is relevant to underlying work.
$eparate Dilution Claim: Court says this is blurring injury, thus deIinitely dilutive but three
exemptions to dilutive doctrine exist Comparative advertising, news reporting, and
noncommercial use.
This one falls under noncommercial use. oncommercial use means Iully constitutionally
protected speech. Legislative history oI act shoes that parody, satire are not part oI commercial
transactions. II speech is not purely commercial, than it is entitled to First Amendment
Protection. TH&$ THE NONCOMMERCIL &$E EXEMPTION.
Notes in class: Trademarks history could be explained in three clauses. So clause 1 would be
Intellectual Property Clause until 1940 when Commerce Clause provides new protection and
42

then the third piece hops in which is the Iirst amendment. Any intellectually property regime
must protect expressive elements is what to take out oI that.
Fair Use comes Ior trademark comes Irom Section 43(c) (4) (b). but in this case the judge is
saying Iair use comes Irom 1
st
amendment. Fair use comes Irom natural inclination to protect
Iree speech. For dilution and inIringement Iair use needs to exist. Being that this case is pre the
revised act, the judge needs to carve out the standards Ior Iair use.
Two types oI speech, commercial and expressive, but there are also types oI speech which are a
combination oI the two.

KP Permanent Makeup v. Lasting Impression: INFRINGEMENT FIR &$E
Facts oI the Case:
Cosmetics company Lasting Impression trademarked the term "micro colors." Lasting
Impression sued K.P. Permanent Make-Up in Iederal district court Ior using the term. K.P. used
the "classic Iair use deIense" and argued it used the term only to describe K.P. products.
Question:
Did the classic Iair use deIense to trademark inIringement require the party asserting the deIense
to demonstrate an absence or likelihood oI conIusion?
Conclusion:
o. In a 9-0 opinion delivered by Justice David H. Souter, the Court held that a party raising
the classic defense of fair use did not need to negate any likelihood that the practice under
question would confuse consumers about the origin of the goods. The Court interpreted
federal trademark law as placing the burden of showing likelihood of confusion on the
party charging infringement. Moreover, Congress "said nothing about likelihood oI conIusion
in setting out the elements oI the Iair use deIense."
The $.C. is saying! That if it appears that the A`s used the descriptive,
geographically descriptive, or name, word, or symbol in GOOD FITH,
strictly for purpose of describing his own product his use may be deemed a
non-infringing fair use, EVEN though it may cause a likelihood of consumer
confusion.
The doctrine oI Iair use is an aIIirmative deIense to claim oI trademark inIringement. DEFESE
IS OT negated by demonstrating a likelihood oI consumer conIusion.

This is case is a shiIt Irom dilution back to inIringement. For commercial speech the question is
where there will be conIusion oI the marks (43a claim) and Ior the mixed speech the court is
saying they will allow a bit oI conIusion. In this case we are saying we Iavor the expressive use,
thus why ignoring some oI this conIusion. So in parallel worlds 43a and 43c are constructing the
ability oI Iair use to serve as a deIense.
The Fair &se Defense for Trademarks:
4

9
th
Circuits: Nominative Fair &se: Applies when a A has used plaintiII`s mark to
describe or reIer to plaintiII`s product, Applies in both inIringement and dilution cases.
In order Ior nominative Iair use to apply:
1. The plaintiII`s product must not be readily identiIiable without use oI the mark
2. The A may only use so much oI the mark as is reasonably necessary to identiIy the plaintiII`s
product and
3. The A must do nothing that would, in conjunction with use oI the mark suggest sponsorship or
endorsement oI its product by the plaintiII.
This test applied in lieu oI eight Iactor Polaroid test.
Third Circuits version of Nominative Fair &se:
I don`t think we talked about this but. only difference seems to be Plaintiff must first
show D`s use showed likelihood of confusion under modified multifactor test. Then same
three prongs from above applied.
Cybersquatting
Lanham Act Section 43 (d). ACPA
Section 43(d) creates a civil action Ior bad Iaith attempts to proIit Irom using a domain name
which is conIusingly similar to a trademark. ot just a question oI consumer conIusion, it`s also
a question oI good or bad Iaith.
So someone sue might me in violation oI ACPA (43d) absent infringement. It`s a new Iorm oI
protection to stop trademarks Irom being used as domain names.
ACPA 9 FACTOR TEST FOR GOOD FAITH
(1) Is there trademark or rights to the other name?
(2) Is there association with a real name?
(3) Is there prior use oI domain name in bona Iide commercial happenings?
(4) Is there a bona Iide noncommercial or Iair use use allowed? (cyber-gripers)
(5) Is there an attempt to divert customers (they trying to steal hits Irom Iamous company to their
site?)
(6) Is there Ialse or misleading contact inIormation
(7) Have they acquired multiple domain names (Ware-housers)
(8) How distinctive or Iamous is the mark? (How much would mark attract Iree-riders)
(9) Is it oIIered Ior sale or transIer to others? (This one is huge)

People for the Ethical 1reatment of Animals (PE1A) v. Doughney (2001)
Litigate: TM inIringement based oII oI ACPA
Problems: Doughney registered domain name peta.org to parody PETA and their goals and
depict them as 'people eating tasty animals, D. did not seek Iinancial proIit Irom use oI P`s
Mark
44

Holding: D cannot cause conIusion, liable Ior TM inIringement
D can be required to transIer registration to P and limit use oI domain names that use
P`s mark
Considered the 9 Iactors:
1. D has no IP rights to peta.org, 2. not his name or used to identiIy him, 3. no
prior use oI peta.org in connection to oIIering bona Iide services/goods, 4. used
mark in commercial manner, 5. intended to conIuse/mislead/divert internet users
into accessing his website which was harmIul to goodwill, 6. made statements on
website Ior settlement or to make him an oIIer, 7. made Ialse statements when
registering domain name, 8. registered other domain names similar to Iamous
marks oI ppl or organizations (previous pattern)
D cannot claim 1
st
Am. deIense and Iair use by saIe harbor provision

Defendant who acts partially in bad faith when registering a domain name is not entitled to
benefit from CP`s safe harbor provision.
Section 43(d) creates a civil action Ior bad Iaith attempts to proIit Irom using a domain name
which is conIusingly similar to a trademark. ot just a question oI consumer conIusion, its also a
question oI good or bad Iaith.

II you have Iederally registered trademark under Lanham act that would receive protection under
43(c) then 43(d) will hook you up.
You can bring the action where the registration is located. All you have to do is Iile suit where
the domain name has been registered. Eastern VA is where most registrations are located. AKA
(THE ROCKET DOCKET). Get a quick injunction because its where registrations take place.
You don`t have to show evidence oI actual harm, all you need to show is that domain name
and your trademark is similar and injunctive relief will fuck their shit up.
43(d) provides quite a bit oI protection, its main purpose is to prevent warehousing oI domain
names.
There is a problem with this though, sort oI contrary to Iair use. Runs in opposition to people
who want to parody or vent their Irustrations with the makers oI these Iamous marks. So we need
some solution to this dilemma. Good Faith choosers oI domains should be protected.

So iI someone has domain name similar to trademark, people send cease and desist letters say
they are in violation oI ACPA and threaten to sue. Keep sending letters, and hope the idiots oIIer
to sell their site. IT`S A GUARETTED LOSS. Offer to sell domain has to come
from trademark owner, not owner of domain name.
The Lanham act does many things, protects against a lot oI shit. It`s a multipurpose protection oI
commercial language. It expanded Irom tort to property the types oI protection provided to IP.


43

Trademark v. Publicity Right
What is Protected? good will personaas defined by
indicia of identity
Prior Exploitation? Yesuse in commerce Nono prior exploitation required
Test for Infringement? Likelihood of confusion Indicia used in endorsement &
merchandise
Transfer Must assign with good will May assign for use without and
quality control quality control


Flcl:e cl FLLLlcl:Y ArL McRAL Flcl:e.
1he rlghL of publlclLy ls Lhe rlghL of a person whose ldenLlLy has commetclol voloe usually a celebrlLy
Lo coottol tbe commetclol ose of LhaL ldenLlLy
lghLs of publlclLy ls llke a parallel world of Lrademark 1rademarks for eople We wanL Lo proLecL a
person and Lhelr physlcal ldenLlLy Look lgnaLure volce CesLures are all found by dlfferenL
[urlsdlcLlons Lo be lndlcaLors of ldenLlLy AbouL 1 [urlsdlcLlons have common law source abouL 1 have
sLaLuLory proLecLlon and some have lL wlLhln clvll rlghLs sLaLues
aLchwork ln progress across unlLed LaLes of consLrulng Lhese rlghLs of publlclLy laws"
Historical Development:
1890 Law review article by justice brandies and Charles warren established Right to Privacy.
Argues people should have right to protect TRUTHFUL but embarrassing disclosures. Breach oI
dignity in right to be leIt alone. In 1953, law review article by Melvin iver argues there should
be publicity right along with a privacy right.
Right oI publicity then Iound in 1953 case. Haelen Labs v. Topps Chewing Gum. :
The court held that the ballplayers 'would feel sorely deprived if they no longer received
money for authori:ing advertisements, populari:ing their countenances, displayed in
newspapers, maga:ines, busses, trains and subways.
The deIendant was enjoined Irom using the players` pictures because 'right of publicity would
usually yield them no money unless it could be made the subfect of an exclusive grant which
barred any other advertiser from using their pictures.
Common law tort of privacy the source for protection for Right of Publicity. It is
crystallized by Prosser.
4 prong test Ior right oI privacy
1. Intrusion on person`s right oI solitude. (trespass)
2. Public disclosure oI embarrassing private Iacts.
3. Publicity which puts plaintiII in Ialse light in public eye.
4. Appropriation Ior the deIendants advantage oI the plaintiIIs name or likeness.
Right to Privacy
4

Any individual
Personal right
Right to be leIt alone
Violation causes mental harm
IS DIFFERET THE
Right oI Publicity
Celebrity or well-known person
Property right
Right to proIit
Violation causes monetary loss
$ources of Protection:
Federal Law
Lanham Act 43(a)
Section 43(a) oI the Lanham Act prohibits false endorsements
Section 43(a) protects individuals against Outright theIt oI identity (such as using
a photograph oI a celebrity without permission), Unauthorized imitations
State Law
State statutes
Common law
Difference etween $tate and Federal Claims:
An individual claiming Ialse endorsement under the Lanham Act must prove that the use
oI the identity likely misled consumers into believing the individual endorsed the product
at issue
Although the standards Ior prevailing on a state right oI publicity claim may vary Irom
state to state, a plaintiII generally need not demonstrate a likelihood oI consumer
conIusion
II we have a root right (oI publicity), we must have a root justiIication.
The supreme court decided this in Zacchini. 'Right oI publicity
But then in cardtoons we started to rein these rights in, or at least making there boundaries.
Fair use is a necessary system Ior these regimes to work.

Cases:
artin Luther King, 1r. Center v. American Heritage Products (1982)
Issue: Does Right to privacy (diII. Irom right oI personal liberty and privacy) survive the death
oI the owner and is it inheritable? Must the owner have commercially exploited the right beIore
his death Ior the right to survive?
4

Litigate: Center sent cease and desist letters, money never accepted, Injunction to stop using
Center`s name in ads, restrain Irom any Iurther CR inIringement, end manuIacture and sale oI
busts (which violates MLKs right to publicity that passed to heirs)
Problems: Center/Coretta Scott King rejected participation in bust, claimed in ad to support
Center, provided booklet oI photos and Copyrighted speeches, like Elvis right to publicity is
assignable
Holding:
Right is descendible iI it is assignable like property
Recognizing right to publicity encourages eIIort and creativity
II right doesn`t survive death, economic value oI the right to publicity during liIe
would be diminished (untimely death would seriously lessen value oI right to
continue commercial use) creates commercial certainty and a/g unjust enrichment
Cannot protect only those who exploited during liIe, would create a premium on
exploitation
**MLK Jr avoided exploitation b/c it would hurt his ministry and Center just wants to
stop Am. H. b/c they consider it unIlattering/unIitting
Application:
Q: II AH had put a disclaimer on the ads, would that have helped (like Cardtoons)?
Q: Is this commercial or noncommercial? Giving some oI $ to charity? o bright line rule
Q: How Iar can a name extend? Crazy Horse beer and ancestor
*problems iI MLK, Jr had an illegitimate son that he had nothing to do with 'ery slippery
descendible right
otes: What iI this was trademark case? Well Dr. King would have needed to commercial
exploit his name. Intent or Actual USE I COMMERCE. He did not, so trademark claim would
have sucked.

Right to publicity if transferable, then it has to be devisable and if its devisable then its
alienable. IT`$ PROPERT RIGHT!
In CT we know right to publicity is descendible.
So how long are these rights oI publicity descendible. Varies Irom state to state. Virginia 20
years aIter death, Tennessee has Elvis rules where it can be inIinite. In CT we just don`t know.
ot deIined terms.
$o what do we know about term.
We can make three arguments
LiIe, Set term, or perpetuity. All arguments got pros and cons.
U.S. preIers set. But places like Tennessee exist were perpetuity can happen. And these terms
can change. Cali changed theirs.

MLK gives us, there is a right oI publicity and it can be extended aIter death.

acchini v. Scripps-Howard Broadcasting (1977) (cannon ball act, diff. b/w privacy)
Issue: Whether the 1
st
Amendment requires the right oI privacy to yield to public`s right to be
inIormed oI matters oI public interest?
48

Litigate: unlawIul appropriation oI Z`s right oI publicity, commercializing without his consent,
Request conversion and inIringement, seeks compensation Ior broadcast
Problems: news has privilege to report 'news oI public interest, didn`t intend to hurt Z,
alternatives as news (description without showing act on TV), did Z abandon his rights by
performing at fair so ppl can see?, unfust enrichment by theft of good will
Holding:
Z cannot stop his appearance Irom being reported as newsworthy, BUT Scripps-
Howard taped whole act and displayed it many ppl
Exclusive control over publicity oI perIormances is a important part oI talent/labor
(substantial threat to economic value oI perIormance)
ot Tort oI Privacy b/c not an action to protect reputation a/g deIamation but wants to
decide who can do the publishing
Dissent: only 15 seconds, will lead to editor censorship and decline newsworthy, watered down
verbal reporting only, press Iilling the Iunction so vital to community
Application:
P could have made them build a cover, but hristopher upont case don`t require burden oI
private Kual actions oI security, can rely on IP laws
-Must secure an incentive to make Z. want to jump out oI cannonball
Q: how much can the tv station take oI the perIormance? Beginning/end?
idler v. Ford otor Co (1988)
Issue: Protection oI Midler`s voice (likeness oI her voice)
Problems: yuppie campaign to bring back college memories, tried to get song w/ original singers
or sound alikes, bad Iaith, conIusion b/c ppl thought it was Bette Midler, got license Irom CR
holder to use song but not Midler`s voice.
-Precedent oI Motschenbacher v. RJ Reynolds Tobacco: used Iamous photo oI racing car
though number changed w/ spoiler and ppl could still identiIy the car and who would be
in it
Holding: 1
st
mendment protects reproduction of likeness and sounds
Immunity iI purpose oI using song/likeness was inIormative (but no Iunction but to
copy individual)
Midler is not seeking damages so not preempted by CR law b/c damages hurts CR
holder oI song (Voices aren`t protectable CR sounds b/c aren`t Iixed)
Distinctive voice will give commercial advantage But o UnIair Competition b/c
Midler doesn`t do commercials
CA will recognize an injury from appropriation of attributes of identity
Application: DiII. States have diIIerent indicia
-Y: protection oI name, photo, portrait CA: name, voice, signature, photo likeness Indiana: gestures,
images, mannerism
-Midler might be subject to CR preemption: doesn`t matter to choice oI song, and paid CR owner, more
about quality oI voice But voice is not Iixed in tangible medium oI expression and not subject to CR
protection
raise $ears Compco argument, not protected w/ CR and therefore preemption NO b/c onito
oats provides role for $tate to protect voice (state issue that could be protected independent of
CR)
bdul-1abbar v. General Motors Corp, (9th Cir. 1996)
49

GM used Jabbar`s birth name, Lew Alcindor, in a car advertisement without his
permission
When Jabbar brought an action Ior Ialse endorsement, GM contended that he
'abandoned his rights to his birth name once he adopted his Islamic name
The court held that a name is an integral part oI one`s identity, and it cannot be 'abandoned,
despite a Iailure to use it

Cardtoons v. ajor League Baseball Players Association (1996) (parody and fair use)
Issue: Does the 1
st
Amendment right to Iree expression outweigh Major L.B.P. Association`s
right oI publicity?
Litigate: declaratory judgment Ior parody trading cards did not inIringe publicity rights, tortuous
interIerence with contractual relationship oI publishing company, injunction to prevent legal
action a/g 3
rd
parties like Champs publishing.
Problems: easily identiIiable players w/ similar names, distinctive caricatures and team colors,
make Iun oI players in baseball card medium, limited production and numbered, placed Ads in
Collectors magazines, but MLBPA is the assignee oI rights oI publicity Ior all active players,
Champs wouldn`t print cards until Court decided the cards didn`t violate MLBPA`s rights
Holding:
43(a)(1) oI Lanham Act provides civil liability Ior use that likely to conIuse without
consent (requires prooI oI likelihood oI conIusion ) but successIul parodies
OK statute requires: 1) knowingly using player`s name/likeness, 2) on
products/goods, 3) without MLBPA`s consent
2 exceptions: ews and Incidental Use (not directly connected w/ sponsorship
or paid advertising)
Freedom oI speech that entertains is similar to inIorming public (enriching lang) --~
incentive Ior creativity
MUST BALACE Speech rights and Property rights (cannot risk suppressing ideas
b/c can use names/likeness, Lanham Act requires likelihood oI conIusion, so use until
it gets conIusing, punish bad parodies)
Celebrity`s commercially valuable identity is a PROD&CT of their
performance values (celebrities are already handsomely rewarded, part oI public
domain/knowledge/news v. securing Iruits oI labor)
RIGHT$ OF P&LICIT FIR &$E:
We need to construct Iair use standard to deal with these things. (SEEM TO BE STEALIG
FROM COPYRIGHT)
1. Purpose and Character of the &se
Court here Iinds it to be noncommercial, but it is obviously commercial. We could argue that
parody is essential, so commercial can happen. Endorsement is more likely to aIIect commercial
standard. Or at least that`s a theory. Were deIining commercial by the context in which the thing
in question resides. This is a parody not a competing card market.
2. mount of use
Substantial
30

. Effect on Market.
Is there eIIect on market?
In this case they are diIIerent markets.

Hoffman v. Capital Cities :(the tootsie photo altered)
Must look at totality oI use is the key thing that comes out oI this case.
1
st
amendment protection for non-commercial speech.
Shit is determined to be commercial speech by the totality of it. Something can be
commercial but be considered non-commercial in its totality as this decision is Ior various
reasons aka parody.

White v. Samsung Electronics I & II (1993) ('anna White Robot on Wheel of Fortune)
Litigate: violation oI state statute, CL right to publicity, Lanham Act
Problems: overprotecting IP is just as harmful as underprotecting it (b/c creativity is
impossible w.out rich domain), joke and no one believed it was her in 2012, right to identity or
likeness also?
Holding: Deny petition Ior rehearing b/c Samsung did not use name/likeness/voice but AIIirmed
in part/reversed in part
Dissent: now a tort Ior advertisers to remind public oI a celebrity (conjure up image) by implying
image (OVERPROTECTIO)
-Majority extends beyond name and likeness right to publicity continued even iI
oIIending use doesn`t incorporate person`s likeness
-Right to identity not just likeness, no consumer conIusion under Lanham Act
possible fair use b/c it`s a parody
Conflict: fixed std in CR across nation but no fixed rights of property b/c diff in every state
(Could borrow Irom CR)
Notes in class:
This would receive protection Ior Iair use in copyright, Iair use test is easier so it would be on
Iast track to protection.
But this is not copyright standard this is right to publicity.
What makes this case diIIerent because we KOW we are dealing with a parody yet White wins.
This is like the opposite oI Cardtoons case. Does not raise make easier to get Iair use as
protection, instead makes it harder.
Commercial speech is always less malleable to Iair use arguments.
Copyright has right to Iair use, and with this case turning out the way it does Kozinski says were
tearing away the right to publicity Iair use exemption.

preemption arguments:
1. Cannot overstep it Irom rights oI publicity to copyright (do not want to undercut the core
purpose oI copyright, want to allow the creative use and dissemination oI inIormation).
2. Copyright includes Iair use (Cant use right oI publicity which is thinner version oI Iair use
when stronger version oI Iair use COPYRIGHT is available.).
3. This is a very varied system Irom state to state, and that copyright is vested in the notion oI a
national system. (Rights oI publicity so various Irom place to place).
31


Rights of publicity in the next decade according to Wilf:
One oI the biggest problems we have seen is disparate laws oI rights oI publicity Irom state to
state. We need some sort oI national right oI publicity regime. Don`t want people Iorum
shopping, people using long arm statues to get results they want.
Another problem is race to top. The more robust regimes will push other states to up ante in
rights oI publicity.
Multiple Iorum, means you have to Iile multiple Iilings. PAI I THE ASS.
Fair use is unpredictable. 'bad man theory oI law have to make law right Ior bad people. You
want clear ex-ante rules but here we have no idea how Iair use will turn out till aIter the case
occurs. We won`t know how each state treats Iair use, because each states got their own test.
Everytime you have state regime, and you end up in Iederal court. Federal court will have to go
back to state courts to Iigure out how to litigate it. Real problem Ior docket management.
II you do have arbitrary things, you might be inclined to use preemption. But preemption is a
very blunt instrument. ot a scapel.
We need a right of publicity statue, with all these questions answered and
codified.
nd Wilf says throw it into Lanham act. Put it in section 4 as (e) or (f).
~Combine it as a piece of trademark law
WilIs opinion on rights oI publicity.
A Iederal statue could resolve all these issues, but also we would have hard decisions to make
such as term Ior these rights oI publicity.
Dastar v. 2
th
Century Fox (2003)
Issue: Is the origin oI original source included in underlying work that Dastar copied?
Litigate: inIringes CR on book and exclusive TV rights by sale oI video set, o proper credit
(reverse passing oII) and violates 43(a) oI Lanham Act, violation oI state`s unIair competition
law
Problems: Dastar copied TV series (which was based oII oI a book) and edited it, sold Ior less
than other video set, bodily appropriation oI Fox series passing oII, historical Iacts part oI
public domain
Holding: C# law doesn't limit public's right to copy and use expired C#
Consumer who busy product doesn`t automatically assume the company who came
up with the idea is the same company they are buying (buyers don't care, Lanham
Act can't extend to matters of no consequence)
D took creative work in public domain and modiIied it? ot exactly copying but Fox
did not renew CR or get CR Ior original Iootage
More like Misrepresentation under 4(a)(1)()

I|sua| Art|sts k|ghts Act of 1990
1hls ls Lhe segway beLween rlghLs of publlclLy and copyrlghL lLs folded lnLo Lhe copyrlghL acL as secLlon
10
1wo lghLs glven by lL
ALLrlbuLlon
32

CranLs Lhe arLlsL Lhe rlghL Lo be ldenLlfled as Lhe auLhor
revenLs aLLrlbuLlon Lo auLhor works he dld noL creaLe
lnLegrlLy
lghLs agalnsL any lnLenLlonal dlsLorLlon or muLllaLlon of an arLlsL's work le
Cnly Lhe arLlsL has rlghL Lo desLroy her palnLlng Lrange ?ou can purchase lL from
palnLer buL you cannoL desLroy lL 1hls ls dlfferenL Lhan a book 1hese rlghLs agalnsL
muLllaLlon exlsL CLvL 8uL Lhey can be walved 1hls walver ls whaL makes us seem Lo
some non compllanL wlLh Lhe lnLernaLlonal sLaLue from Lhe 8erne ConvenLlon

Cur vAA ls qulLe dlfferenL Lhan rance's 1hey have 3 rlghLs under Lhelr verslon of vAA
Adds such Lhlngs as rlghL Lo repenL (Lake back your arL)
CreaLes royalLles for each arL sold (u only has LhaL ln Call)

Why do we have Lhese seL of rlghLs for arLlsLs?
ersonallLy 1heory 1reaL desLroylng arL llke a LorL Causes damages Lo a person And Lhls only covers
lnLenLlonal desLrucLlon Also does noL apply Lo work made for hlre (shlL you dlrecL someone Lo make)
hlfLs common law rlghL of properLy Lo lnsLead Lhe person for Lhese works of arL

We are concerned wlLh Lhe LarnlshmenL of an arLlsLs represenLaLlon ln Lhese cases









clYRlcl: LAv.
3

The subject matter protectable by copyright spans the range oI literary and artistic expression.
including literature, song, dance, sculpture, graphics, painting, photography, sound, movies, and
computer programming.
Ideas themselves are not copyrightable, but the authors particular expression oI an idea is
protectable.
Key thing with copyright is originality and fixture in a tangible medium.
a. $ubject Matter Requirement
(Statute oI Anne 1790 Act 1909 Act 1976 Act and ReIorms)
Copyright Act oI 1976 ('Iixed in tangible medium oI expression, liIe oI author
plus 50 yrs or 75 yrs iI corporate authors, Iormal notice and registration
requirements, 1980 added protection Ior computer programs)
Copyright Act oI 1976, 102 (Subject Matter)
Digital PerIormance Right in Sound Recording Act oI 1995
Digital Millennium Copyright Act oI 1998 (DMCA)

$tatutory Definition:
Copyright act oI 1976 provides that subsists in 'original works oI authorship fixed in any
tangible medium of expression, now known or later developed, Irom which they can be
perceived, reproduced, or otherwise communicated, either directly or with the aid oI a machine
or device.
Originality requirement:
(1) author must have engaged in some intellectual endeavor, and not just copied Irom a
preexisting source,
(2) the work must contain a minimal amount oI creativity.
.this eliminates de minimis works Irom getting protection (de minimis meaning, words, short
phrases, and slogans). Also prevents Iacts Irom being because they are discovered rather then
created.
$cenes a faire: A author may not obtain in incidents, characters, settings, or other elements
that are indispensable, or at least standard, in the treatment oI a given topic.
Whats NOT covered by : (Idea-Expression Dichotomy)
Ideas, procedures , processes, systems, methods oI operation, concepts, principles, or
discoveries.

Merger Doctrine: when the idea and the expression merge, like in baker v. selden when the
idea and expression merge, both go into the public domain. Copyrightable material goes together
into the public domain because the idea creates a Ilaw voiding the copyrighted expression. So
selden has some copyright protection still, but the stuII mixed with idea does not get that
34

protection.
When does merger doctrine apply?
(1) When there there is an idea not a expression (gots to be written).
(2) Functionality (not ness. The term a copyright lawyer would use, but same concept basically)
(don`t want to crowd out whats needed). (want to promote progress oI society)
(3) When you cannot sever the idea Irom the expression.
In this baker case how do we know it`s a idea? Because it`s a process oI banging out ledgers.
Whats the Iunctionality? Ledger helps to keep data
But what about not being able to sever the idea and the expression?
The system requires the use oI these charts absolutely Ior this system to work.
Conceptual $eperability test: (randir and arnhart cases)
II design Ieatures were signiIicantly influenced by utilitarian considerations, then the Ieatures
are inextricably intertwined with the utilitarian Iunction and are not conceptual separable.
II the design Ieatures were not signiIicantly inIluenced by the utilitarian Iunction oI the article,
but reIlect purely aesthetic choices, then design Ieatures are conceptually separable.
Cases:
aker v. $elden: 1879 case.
Forms lacked the requisite modicum of originality to support .
Dispute over a book explaining how to do a certain type oI book-keeping. Court Iinds that the
explanations in the book may be secured by copyright, but use oI the inIormation within the
book can only be secured by patent. So Selden did OT have exclusive right to make and use
account books. He had copyright to make and sell HIS account book and that`s it. How could
you copyright blank Iorms is what the court is questioning as well. The idea and putting them in
a book was his copyright, but people can use these blank Iorms once he puts them out there.
Question oI distinguishing idea Irom expression. Where do you draw the line?
Too capacious to copyright ideas. We cannot let everyone just copyright their ideas. You need to
create copyright protection to include ideas, but not so much so as to cut oII people Irom having
ideas.
The second point one could make is that there is no obligation under the clause. We need to
have idea expression dichotomy.
The third possibility is that we want to delineate between patent and but it`s the weakest
argument. There is a uneasy relationship between the two but they are going to overlap and its
Iine.
ou have actual copy, close copies of a product, and then derivative works. $elden is asking
for protection even beyond those listed above
Morrissey v. Proctor and Gamble: 1967 case. Morrissey is copyright owner oI a set oI rules
Ior a sales promotional contest oI the sweepstakes type involving social security numbers oI
33

participants. When there`s only a limited Iorms oI expression to permit copyrighting would mean
that a party or parties by copyrighting a mere handIul oI Iorms could exhaust all possibilities oI
Iuture use oI the substance. 'We cannot recognize copyright as a game of chess in which the
public can be checkmated.
The rules Morrissey wanted to protect were pretty generic. i.e. Rule 1. Entrains should print
name, address etc. (seems pretty simple).
Copyright not Iound to extend to the subject matter because oI this limitation. Morrissey loses.
Merger Doctrine applies again, and idea and expression go into the public domain together.
urrow-Giles Lithographic v. $arony: 1884 (Phototography): Pre-statue.
The Supreme Court explained that the appropriate inquiry Ior copyright protection is "the
existence oI those Iacts oI originality, oI intellectual production, oI thought, and conception on
the part oI the author ...."
Photography is not merely the unoriginal manual operation oI a camera. Rather, originality
requisite Ior copyright protection is Iound in a photographer's selection oI any number oI artistic
choices including angle, lighting, and arrangement oI the subject.
Ultimately, the Supreme Court aIIirmed the Second Circuit's holding that Sarony's photo was an
"original work oI art" and "the product oI |Sarony's| intellectual invention.
Not all photos copyrightable, but ones where you can prove creativity you can.
randir International, Inc. v. Cascade Pacific Lumber Co. 1987: (conceptual separability
test).
Copyright in the design of &seful rticles
&seful article is: an article having a intrinsic function that is not merely to portray the appearance
of the article or to convey information.
Pictorial, graphic, or sculptural features of useful articles may be if they are physically or
conceptually separable from the utilitarian aspects of the useful article.
The 2
nd
Circuit Court oI Appeals applied the useIul article doctrine to the plaintiII`s bicycle rack, the
'RIBBO Rack, and held it uncopyrightable because it was designed to serve a purely utilitarian
Iunctionto hold bicycles in place. The Court oI Appeals held that the deIendant did not violate any
protectable expression by copying the RIBBO Rack, because the plaintiII designed the rack Ior purely
utilitarian purposes. In deciding this case, the court looked to determine whether the Iunction oI the
bicycle rack could be separated Irom its aesthetic value (conceptual separability test).
Conceptual separability does exist iI and when a designer exercises artistic judgment to include certain
artistic aspects that are unrelated to the Iunctional elements oI the work.
The artistic aspects oI the RIBBO Rack were not Iound to be conceptually separable Irom its utilitarian
aspects. The RIBBO Rack possessed no artistic elements that could be identiIied as separate and
'capable oI existing independently, oI, the utilitarian aspects oI the article, and accordingly, the court
denied plaintiII`s copyright inIringement claim.
Carol Barnhart v. Economy Cover (1985) (mannequins not Rable)
Issue: whether Iorms are artistically and aesthetically separable Irom the Iunction/useIulness?
Litigate: CR inIringement, engaged in unIair competition
Problems: customers oI Barnhart purchased Ior Iunction AD artistic sculpture Ieatures, bad
Iaith to copy, Barnhart got CR registration and sent out stickers w/ CR notice. Like sculpture
3

without clothes on, Barnhart claims form of human torso and a woman`s blouse separately
are CRable,
Holding: Mannequins are used to display articles oI clothing are utilitarian articles not containing
separable works oI art
P didn`t decide to CR until AFTER possible inIringement and tried to remedy
(Registration would provide prima Iacie evidence)
P`s artistic and utilitarian Iorms are inseparable
Congress has reused CR protection Ior works oI applied arts or industrial design that
have no identiIiable artistic Ieatures
102(a)(5) extends CR protection to pictorial, graphic, and sculptural (as long as it is
identiIied separately Irom utilitarian aspects oI product)
Dissent: Newman Test (primarily aesthetically pleasing and function is secondary, OR
conceptually separability exists when any substantial likelihood that if article had no utilitarian
use it would still be marketable as art)
102(a)(5) provides protection Ior sculpture and limiting provision Ior useIul articles under 101
Application: when you register, couldn`t part oI registration be to list possible legal obstacles? Q:
Why doesn`t she get a patent?
-ewman Test would recognize too many works oI art
-3 on-working standards: Physical Sep. (too mechanistic), Conceptual S. (too random),
Viewpoint test (don`t agree with eachother) larger sampling, may get 50
How do we know what Brandir is thinking?
-Evidentary standards: notebook/design/draIts

b. Exclusive Rights and Infringement
Trademark is indicia oI goodwill oI a business, while gives someone the ability to control
what is copy and distributed.


17 &.$.C. 106: Exclusive Rights in Copyrighted works
Owner oI copyright under this section has exclusive right to do or authorize any oI the
Iollowing.
1. Reproduce (the core right) (cannot have rights in copyright without being able to copy). (can
exclude someone else Irom copying).
2. Prepare derivatives (We want to bar others Irom doing this) (right oI adaption)
3. Distibute copies to the public or transIer ownership (right oI distribution, perIormance, and
display). (distribution and perIormance are just part oI your relationship to the market.)
4. For works oI art, they can perIorm them publicly.
5.For art, can display it publicly.
6. For sound recordings, can play recordings publicly.

There are also ways to limit these rights, such as the Iirst sale doctrine, as soon as copy is
3

purchased you have control over it. You buy a book, you can destroy it iI you like, its yours. o
copyright holder can complain because there rights have been exhausted. They have right to Iirst
market but not SUBSEQUET.
What exactly is a copyright? You have a right to the work and you can sue Ior inIringement Ior
something close to the work. Then you have a bundle oI rights which are associated with this, i.e.
a right to a market. But ultimately you could sue on all these Ior inIringement, and you can
threaten people even beyond this that you will sue.
TO DEMON$TRTE INFRINGMENT:
To demonstrate that a D inIringed any oI the exclusive economic rights, it must be appear that
(1) the D`s work was copied Irom the P`s and (2) the words are SUBSTATIALLY SIMILAR
in their EXPRESSIO, so that copying amounts to a unlawIul appropriation.
Copying: May be demonstrated by direct evidence (eye witness, D`s admission) or by
circumstantial evidence that.
-D has access to work and the D`s work is suIIiciently similar to P`s to inIer copying or
-The D`s work is strikingly similar to P`s work, and the circumstances permit a inIerence oI
copying Irom the similarity alone.
In determining similarity for this purpose, LL $IMILRTIEI$, both and not un in
the works may be considered.
&nlawful appropriation: Must be determined whether the D`s work is substantially similar to
the expression in the P`s work. This standpoint is usually made Irom the standpoint oI the
average member oI the intended audience Ior the work.
Arnstein audience test: Traditional test, makes the unlawIul appropriation evaluation a
SUBJECTIVE one, based on the OVERALL IMPRESSIO the average member oI the intended
audience would have, without the assistance oI expert witnesses or analytic dissection oI the
works.
Question is would that persons overall impression be that the works are substantially
similar?

Hand bstraction Test: aka Nichols Rule, used to decide if its derivative work or
Infringment.
Fictitious characters are entitled to separate protection, apart Irom the work in which they
appeared, iI the character have been very distinctly delineated in the authors work and thus can
be characterized as expression, as opposed to a general idea or type.
When the character has a visual aspect as well as personality characteristics described by word
and storyline, ourts have been more willing to find protection.

Cases:
38

-|cho|s v D|versa| |ctures Corporat|o ad Abstract|o 1est
Issue: Whether the portion taken was substantial and not fair use oI CRed work?
Litigate: ichols owner oI CR to bies Irish Rose play claims CR inIringement through
Universal`s motion picture oI ohens & Kellys, possible plagarism
Problems: similar to Romeo & Juliet Shakespeare play (which is not CRable), some similarities
and diIIerences b/c play (Iortune switches to other Iamily, one grandchildren have nothing to do
with reconciliation, religion is absent in 1 play)
Holding: Taking parts oI plot are not CRable, would hinder indirect derivations Ior public good
Universal borrowed a theme that was too general and ichols had a popular subject at
the time ovelty is not essential to CR
Took prototypes that were around Ior decades (Shakespeare- can`t CR an outline oI
R&J)
CR does not cover everything that can be drawn Irom play and some oI content was
Irom public domain copied distinct literal elements oI `s work and incorporated
into a independent larger work
Application:
Test for Improper ppropriation
1. Obfective Test (maniIestations oI creativity in P`s work to determine iI elements are
protectable under CR law)
2. Subfective Test (whether inIringer improperly appropriates protected expression)
106 in whole or substantial part duplication it exactly, imitation or simulation
Problems w/ L. Hand`s Abstraction test:
*can always take it to another higher level oI abstraction
Themes are protectable when they are speciIic enough but at high level oI abstraction you
have just the idea and not the expression (lowest level provides the most protection)
Circle diagram: Reproduction right (inIringement) Adaptation Substantial similarity IDEAS
available to use
What is not protected under L. Hand`s Test:
-Scenes a Iaire expect certain subject matter to have similar scenes, Korean manicurists in YC
(SeinIeld and small Iilm, Leifer)
-Stock characters (Romeo and Juliet, girl next door, CaliIornia girl, bimbo, angel, Iemme Iatal)
-Broad themes
-Historical Material (Hoeeling)
-Material Irom the public domain (Iactual material, Romeo and Juliet)


$heldon v. Metro-Goldwyn Pictures:
Both Sheldon and Metro Goldwyn made Iilms about a true story. Similarities between the two
existed including song choices, and character traits. The details are diIIerent in this one, but the
theme is damn similar. Copied the same sequence oI events, which is important according to
hand. What is critical about the theme being copied? The theme is the expression, it`s the spin
put on the historical story by the playwright. Narrow Thematic moves specific to the play
protectable. The broad themes receive the sparse protection.

39

Steinberg (P) v. Columbia Pictures Industries, Inc. (1987)
Issue: Is there substantial similarity b/w CR and alleged inIringing work?
Litigate: CR inIringement oI illustration S. drew Ior ew Yorker, Columbia claims aIIirmative
deIense oI use as parody, estoppel, and laches
Problems: idea Ior cover was the poster oI S`s illustration and used to get more recognizable Y
look, many similarities
Holding:
*B/c direct evidence oI copying is diIIicult, Court can use circumstantial evidence oI
access to the R work and the substantial similarities
-substantial similarity whether average lay observer would recognize copy as appropriated
Irom CR work
-reject J. LHand test oI ordinary observer test
Doesn`t have to copy every detail, as long as substantially similar to CR work
t first glance, a stylistic relationship b/w the posters (details, color, sky, Y blocks,
letters, whimsical sketch)
Reject Columbia`s claim that scenes a faire or settings/characters that are incidental
to a given topic are not protectable

Fair &se and Derivative Works
Lewis Caloob 1oys v. Aintendo (1993)
Issue: Is this Iair use or interIering with intendo`s right to create/sell derivative works?
Litigate: permanent injunction enjoining Galoob Irom marketing Game Genie
Problems: the games themselves are protected under 102(a)(6) as audiovisual works, change
codes to allow extra liIe, increase speed, allow characters to Iloat.
Holding:
Game Genie Ior Iamily use Ior private home enjoyment noncommercial and
private activity
Sony recognizes that a party who distributes a CR work cannot dictate how the work
is to be enjoyed (allows GG to enhance intendo experience)
intendo Iailed to show any harm to present mark oI the CR games and any
reasonable likelihood oI a potential submarket
Game Genie does not incorporate a portion oI the CR work, simply enhances it
useless without intendo, doesn`t have a liIe oI its own, not a work on its own
Application:
-what type oI CR subject matter: audiovisual work Irom illustrative 102 list
0

-what type oI 106 right is at issue? Reproduction v. adaptation
-other possible causes oI action Ireeriding onto intendo, cant modiIy code, likelihood oI
conIusion w/ 43(a), unIair competition claims
II intendo lawyer, what advice do you give Ior halting Game Genie switch to Contract model
or electronic lock box that can`t be broken (create Digital Millennium Act)

icrostar v. Formgen
-M. makes video game oI Duke ukem to kill aliens
-inIringing even though it required the underlying Duke ukem program to work 1. Iixation
since it is a permanent creation on CD, 2. it misappropriated the story and created a sequel
really about stories (uses images and characters, not pair of glasses)
*Problem w/ the sequels not the same uke Nukem, every sequel is a foreclosure of future
possibilities
*BUT GG Iollows same story line?
Arnstein v. Porter (1946) (similar unpopular R song)
Issue: Did Porter copy Arnstein`s CR work and does that copying constitute improper
appropriation?
Litigate: CR inIringement oI 2 musical compositions
Problems: no evidence that Porter heard or saw the music and not very popular
Holding: Arnstein`s claim is ridiculous but it is for jury to decide
II evidence is absent oI access, must consider how striking the similarities are and use
Reasonable Lay Person test
Dissent: repetitive use oI same note
Q: Which test should be used? Total Sound Effect or extended comparison oI
notes/bars/sequences, or dissection/technical analysis
Q: what kind oI ppl should determine likeness oI sound?
*letting Arnstein the doors oI the Court is problematic (test doesn`t help)

1

Louis Caste v. Kaiserman (1988) (importance of lyrics
Issue: is possible prooI oI access to a song enough to establish inIringement?
Litigate: CR inIringement a/g Feelings, permanent injunction a/g Iurther inIringement, damages
Problems: CR owner had obscure French Song written 17 yrs earlier, owner claimed Kaiserman
had access to unknown song connection b/w Gaste`s publishing company
Holding: Possible Ior jury to believe appropriated, lyrics cant take away Irom damages
Court considered: just
1) Valid CR
2) low threshold oI originality to get CR (unlike novelty requirement oI Patent)
3) circumstantial evidence oI prooI oI access and substantial similarity (b/c hard
to get red-handed evidence)
attenuated chain oI events over long time but still possible (jury will review the weak
access theory)
rejected K`s claim that other songs are also similar, But Gaste`s expert denied
possibility that others could independently create musical modulation
O set rule on lyrics, success could be attributable to lyrics b/c Caste's song had no
commercial success (burden of infringer to prove costs)
Hoehling v. &niversal City Studios (1980) (historical event)
Problems: Hoehling (P) published book oI analysis and research on destruction oI Hingenburg,
Mooney (D) published a literary book on same topic and sold motion picture rights to Universal
(D), who had Gidding write a screen play. H claims M &Universal copied plot oI his book
Holding: Interpretations are not C#able as a matter of law (interpretation of historical facts)
H. must prove 1) copied, 2) improperly appropriated expression diIIerent stories and
M. independently could research and come up with an interpretation oI Iacts
erely scenes a faire (cannot protect std incidents, characters, settings to topic) b/c
facts are in public domain
Application: how is this diIIerent Irom Seldon v. Metro-oldwyn Pictures or Nichols v.
Universal Pictures orp.
-protecting Spehl`s labor? no b/c CR is about originality, interpretation are not CRable as a
matter oI law were based on Iacts in the pubic domain
Anderson v. Stallone (1989) (sequel is a R derivative work)
Problems: Anderson wrote long treatment on sequel, Rocky IV and hoped it would be used by
Stallone, incorporated characters created by S., A. met with MGM and released MGM Irom any
liability Irom use oI treatment
2

A`s work is actually inIringing on CR protection oI Stallone`s work (cannot seek CR
inIringement Ior a work that inIringes on author)
Holding: Anderson precluded Irom bringing CR inIringement a/g the original author
o CR protect Ior A b/c used characters/settings within CR protection oI Stallone
(CR protection Ior visually depicted characters) STROG ACCESS
Rocky characters/relationships so delinated/detailed that protected a/g appropriation
when taken by another and made into a sequel
A`s work is an unauthorized derivative work (106(2) provides exclusive right to
prepare derivative works based on original work)

Don`t have to consider iI they are substantially similar b/c they are ROCKY
characters!
Cannot claim CR protection Ior non-inIringing portions 103(a) caselaw doesn`t
grant protection Ior any part oI inIringing derivate work
c. Means of Protection: Databases, New Technologies, 1oint Works,
and Work-Made for Hire.
A81kAC1C-]L1kA1C- 11 lLs very slmllar Lo Pand LesL
We Lhen remove whaL ls noL proLecLable (Lhe fllLraLlon) and Lhen we compare wlLh Lhe proLecLed
maLerlal (comparlslon) Lo see whaL has been Laken or noL
When Lhey go Lo Lhe clean room Lhey reverse englneer Lhe program

AbsLracLlon 1o AscerLaln ubsLanLlal lmllarlLy CourLs lrsL 8reak uown Lhe Allegedly lnfrlnglng
rogram lnLo lLs LrucLural arLs
llLraLlon nexL CourLs Lxamlne Lach arL for lncorporaLed ldeas (,erger) necessary Lxpresslon
(cenes a alre) and LlemenLs 1aken rom Lhe ubllc uomaln (ubllc uomaln)
Comparlson lnally AfLer lfLlng CuL All of Lhe nonroLecLlble ,aLerlal CourLs Compare Lhe
emalnlng nuggeLs of CreaLlve Lxpresslon for ubsLanLlal lmllarlLy
1he AC LesL polses a problem because Lhe argumenL wlll conLlnue over whaL level should we absLracL
Lawyers for once slde wlll say one Lhlng and lawyers for Lhe oLher slde wlll choose a separaLe one
uependlng on whlch slde prevalls wlll depend where case wlll fall on ldea/expresslon dlchoLomy
Cases:
1ension b/w logical and creation/invention
Feist Publications v. #ural 1elephone Service (1991)
LlLlgaLe C lnfrlngemenL
roblems elsL copled Lelephone dlrecLory bad falLh b/c ural refused Lo llcense llsLlngs and lacks
subscrlber lnformaLlon


Poldlng locts ore not ckob/e compi/otion of focts must be creotive to qet ck protection
ural doesn'L meeL even low level of requlred creaLlvlLy/orlglnallLy for C proLecLlon of
facLual compllaLlons (order/arrangemenL ls loglcal)
lf compllaLlon ls Cable doesn'L mean every elemenL of work ls proLecLed (C proLecLlon for
compllaLlon of facLs ls Lhln)
AppllcaLlon ls elsL a free rlder? (ls Laklng someone's work or bulldlng on lL?)
As adverLlsers apply only Lo ural lf you have a small markeL can apply Lo lf you markeL ls blggerwhy
boLher paylng a llcenslng fee [usL Lake lnformaLlon from ural (mlghL noL promoLe llcenslng) could
band LogeLher Lo creaLe larger alllance b/w all oLher 11 counLles
and 101 ls Lhe only one LhaL Wllf ls comforLable wlLh
CourL's ConsLlLuLlonal ,lnlmal Ld
slne qua non of C ls orlglnallLy
wlLh a compllaLlon you can creaLe someLhlng dld noL reach LhaL Lhreshold
hadow Cases
Jest v nypetlow (use Cu oms lnsLead of daLabases WesL clalm lnfrlngemenL of sLar paglnaLlon
sysLem elecLronlc noLlce of page breaks no Pead noLes or keynoLes) blue booklng ls noL C
headnoLes and oLher are noL creaLlve
Lxamples
Mlcbello olJe of testootoots ls Lhls enough auLhorshlp? aLlng resLauranLs and hoLels
oploloo ot focts? experLs? Crdlnary lay person resLauranL crlLlc?
3 sLar raLlng w/ pool and meeLlng room?
lf seL crlLerla ls Lhere anyLhlng orlglnal?
1 facL based analysls of how Lhe gulde ls puL LogeLher
2 Lhe more mechanlsLlc Lhe producLlon Lhe less proLecLable
lL wlll be someLhlng you could Lake a yellow hlghllghLer and flnd whaL ls C proLecLable vs
unproLecLable (llke prlces of food slmply gaLherlng)
*ln C unllke 1, we murder Lo dlssecL Lake aparL and flnd parLs LhaL are noL Cable
Lotus v. Borland (1996) (Method of operation)
Issue: whether Lotus` 123 menu structure is CRable subject matter?
Litigate: CR inIringement, permanent injunction, B claims aIIirmative deIense oI laches and estoppel
4

Problems: identical copy oI accounting Iunctions on computer w/ simple menu commands like
Copy/Print/Quit, when user creates macro (series oI commands to shorten time) can use it in B`s
program.
-B claims menu is not CRable b/c system/method/process/procedure under 102(b) w/
aIIirmative deIense
Holding: Method of operation is not Rable, B may build on method of operation L designed
Reject test like Matter oI First Impression, and ltai test (nonliteral copying is still
inIringement)
Macro is user`s own product and not owned by L123
Method provides means Ior user to operate/use the expression oI L123 is not protectable
under CR b/c the words are essential to operation (are part of method!)
Like buttons on VCR (not protectable under patent?) users already invested time to
learn menu, based on logic and ease of use
Application: Similar to enericide
-Stimulate creative expression w/out unduly limiting access
-Computers are diIIerent b/c mechanical utility
-D didn`t copy, but through reverse engineering
Grey area b/c Command and expression telling roommate to turn oII the lights, would this be an
expression?

Computer Associates v. Atlai (D) (1992) TS SE
lssue ls Lhere C proLecLlon for nonllLeral elemenLs of a compuLer program?
LlLlgaLe C lnfrlngemenL and 1rade secreL acLlon (woot to toke tbls os o c cose b/c 1 ollows tevetse
eoqloeetloq)
roblems CompuLer AssoclaLes had a program LhaL had a common sysLem lnLerface (allows users Lo
change/use mulLlple operaLlng sysLems whlle keeplng sofLware) ALlal wanLed Lo rewrlLe Lhelr producL
Lo use anoLher operaLlng sysLem recrulLed employee of CA who creaLed common sysLem lnLerface and
copled 0 of CA A Lrled Lo flx and excluded employee and creaLed lmproved program
Poldlng Meoo ls oot ptotectoble to closely teloteJ to lJeo boseJ oo loJostty stJs
LlLeral elemenLs llke codes ln compuLers are proLecLable buL A's new producL doesn'L have
any of CA's codes remalnlng buL nonllLeral elemenLs are subsLanLlally slmllar (flowcharLs
organlzaLlon parameLer llsLs macros)
LrucLure seems llke parL of program's ldea cannoL proLecL ldeas under C
ub[ecL Lo sobstootlolly slmllot test whlch ls Abstract|o||trat|o Compar|so for
compuLer programs (for nonllLeral elemenLs)
1 break down lnfrlnglng program lnLo sLrucLural parLs
2 examlne parLs for lncldenLal expresslon of ldea or Laken from publlc domaln (shlfL
ouL nonproLecLable parLs)
compare whaL ls lefL (CreaLlve expresslon) w/ Lhe sLrucLure of lnfrlnglng program
Levels of AbsLracLlon (low hlgh hlgher concepLlon)
llLraLlon (concreLe deflnes scope of C proLecLlon)
3

a LlemenLs dlcLaLed by efflclency (expresslon merged w/ ldea efflclency ls lndusLry goal)
b LlemenLs dlcLaLed by exLernal facLors (slmllar Lo noeblloq use of sLock characLers/scenes
lnfluenced by lndusLry sLandards)
c LlemenLs Laken from publlc domaln (closely relaLed Lo no proLecLlon of scenes o foire b/c
elemenLs of compuLer programs enLered lnLo publlc domaln)
AppllcaLlon
WhaL ls efflclency? requlres LxperL LesLlmony
problem of 2
nd
Clr Crdlnary observer (ArnsLeln) vs need for Lechnlcal guldance
CourL dlscreLlon of Lhe courL Lo declde Lo whaL exLenL experL LesLlmony ls needed
doesn'L lead Lo legal cerLalnLy
ollcy ConslderaLlons
publlc cannoL lnvesL more Llme Lo learn dlfferenL producLs promoLlng publlc avallablllLy of
llLeraLure/muslc/arLs

C Studios, Inc v. Crokster (2005)
lssue When can a producL LhaL ls capable of boLh lawful/unlawful use ls llable for acLs of C
lnfrlngemenL by
rd
parLles uslng Lhe producL?
LlLlgaLe C lnfrlngemenL (knowinq/y ond intentiono//y) allow users Lo reproduce/dlsLrlbuLe Ced works
damages and ln[uncLlon a/g CroksLer and LeamcasL
roblems peerLopeer neLworks vldeo/muslc flllng sharlng 90 of shared were Ced works some
arLlsLs wanL ftee sbotloq to qet oew ooJleoces ooJ popolotlty
Poldlng lf dlsLrlbuLes devlce w/ clear expresslon/afflrmaLlon Lo fosLer lnfrlngemenL llable for resulLlng
acLs of
rd
parLy lnfrlngemenL (a/g C )
dlsLrlbuLlng devlce w/ ob[ecL of promoLlng lLs use Lo lnfrlnge (|ducemet)
8oLh Lrled Lo geL napsLer users as napsLer was sued vlJeoce of exptess ptomotloo
motketloq ooJ loteot (dlff from mere knowledge v pulpable conducL)
no evldence LhaL elLher Lrled Lo fllLer and sLop sharlng of Ced works
Can lnfrlnge elLher by lnLenLlonally lnduclng/cotr|but|g d|rect |fr|gemet C |fr|ge
v|car|ous|y by proflLlng from dlrecL lnfrlngemenL (galn from Ads)
evetse 9
tb
clt wbeoevet posslble lowfol ose oot lloble
Concurrence
ooy LesL allows looklng Lo fuLure uses and expanded uses or Llme (capable of subsLanLlal nonlnfrlnglng
uses) 10 nonlnfrlnglng use ls sufflclenL Lo meeL ony sLd
AppllcaLlon
&eems to locteose pobllc Jomolo?


*un/ike 5ony where connot contro/ whot pp/ do w/ ck works {just become too biq o prob/em so hove
to /essen ho/dinq in 5ony) didnt intend to infrinqe orchivo/ timeshifinq
Commu|ty for creat|ve ov|o|ece v ke|d
!ames earl reld commlssloned Lo creaLe sculLpLure of homeless naLlvlLy wlLh speclflc wordlng ls Lhls a
work for hlre a [olnL work? Cr a work whose ls vesLed wlLh Lhe arLlsL?
Work made for hlre ls based on 101 of copyrlghL acL a work prepared by an employee wlLhln Lhe scope
of hls or her employmenL or a work speclflcally ordered or commlssloned for use as a conLrlbuLlon Lo a
collecLlve work as a parL of a moLlon plcLure or audlo vlsual work as a LranslaLlon as a supplemenLary
work eLc eLc
Case |ays out a mu|t| factor test for determ||g workforh|re
Lhe sklll requlred
Lhe source of Lhe lnsLrumenLallLles and Lools
Lhe locaLlon of Lhe work
Lhe duraLlon of Lhe relaLlonshlp beLween Lhe parLles
wheLher Lhe hlrlng parLy has Lhe rlghL Lo asslgn addlLlonal pro[ecLs Lo Lhe hlred parLy
Lhe exLenL of Lhe hlred parLys dlscreLlon over when and how long Lo work
Lhe meLhod of paymenL
Lhe hlred parLys role ln hlrlng and paylng asslsLanLs
wheLher Lhe work ls parL of Lhe regular buslness of Lhe hlrlng parLy
wheLher Lhe hlrlng parLy ls ln Lhe buslness
Lhe provlslon of Lhe employee beneflLs
and Lhe Lax LreaLmenL of Lhe hlred parLy

none of Lhe facLors are dlsposlLlve by Lhemselves buL vlewed LogeLher Lo palnL Lhe plcLure of wheLher
Lhe [ob was workforhlre

When works made for hlre ls found lL alLers duraLlon 93 years from publlcaLlon or 120 years from
creaLlon
no proLecLlon under vAA for muLllaLlon of rlghLs
Aa|muhammed v Lee (Io|t Jorks)
splke lee fllck Was Lhere express conLracL or lmplled conLracL
Io|t works
AuLhors of [olnL works may conLrlbuLe unevenly
8uL de mlnlmls conLrlbuLlon wlll creaLe presumpLlon agalnsL [olnL work
uoes noL maLLer who does flxaLlon
!olnL work ls concernlng expresslonnoL ldea
,ust share |tet|o to create [o|t work (a loL of cases Lurn on Lhls)
8uL Lhe lasL prong belng Lhe mosL lmporLanL
We have creaLed a LesL LhaL's golng Lo dlsadvanLage people from havlng CoCwnershlp


ln a [olnL work when you have more Lhan de mlnlmls conLrlbuLlon
Lhen you have all Lhe rlghLs of a coowner
When [olnL work ls found lL creaLes LenanLs ln common ln lnLeresL conLrolllng undlvlded
and equal fracLlonal lnLeresLs
Any [olnL owner may exerclse rlghLs and ownershlp and llcensee permlsslon of oLher [olnL
holder
neverLheless musL be careful abouL assurlng paymenL Lo oLher [olnL auLhors
Aew York 1imes v. 1asini (2001) (stop online database of articles)
lssue wheLher dlsLrlbuLlon of freelance auLhor's arLlcles falls wlLhln 201(c) of C AcL (allows publlshers
llmlLed prlvllege Lo publlsh any revlslon of collecLlve work wlLhouL auLhor's permlsslon)?
LlLlgaLe wanLed Lo sLop Lexls nexls from dlsLrlbuLlng Lhelr arLlcles onllne ln daLabases and Cuoms
tepoltes stotototy lotetptetotloo of 01(c)
Poldlng emovlng arLlcles from conLexL as parL of collecLlve work and placlng lL on daLabases as
separaLe flles goes beyond 201(c) prlvllege
PurLs lncenLlve Lo creaLe Lo enrlch publlc knowledge/domaln
newspaper clalmed safe harbor provlslon 201(c) as a revlslon of collecLlve work (b/c alLers
how lL wlll be seen)
C ln each separaLe conLrlbuLlon Lo a collecLlve work ls dlsLlncL from C of a collecLlve work
sLops belng a collecLlve work b/c selzed separaLely
whaL happens wlLh conLracLual rlghLs? lf owners don'L agree Lhen would lose valuable
lnformaLlon Lo publlc
owner of C ln a collecLlve work ls presumed Lo have acqulred only Lhe prlvllege of
reproduclng and dlsLrlbuLlng Lhe conLrlbuLlon as parL of LhaL collecLlve work
d. Fair &se, Copyright Extension ct, and the Public Domain
We know we have consLlLuLlonal wrlLe even lf falr use dld noL exlsL ConsLlLuLlon (arLlcle 1 secLlon 8)
vesLs ln congress Lhe power Lo promlse Lhe progress of sclence and useful arLs by securlng for llmlLed
Llmes Lo auLhors and lnvenLors Lhe excluslve rlghL Lo Lhe respecLlve wrlLlngs and producLlons

LlmlLaLlons on
er se sub[ecL maLLer llmlLaLlons such as requlrlng meeLlng of orlglnallLy sLandard
LlmlLaLlons on secLlon 10 excluslve rlghLs llmlLaLlons on parLlcular rlghL (AWA)
LvldenLlary sLandards shlfLlng bar on whaL ls requlred Lo prove lnfrlngemenL (1hlnk vlcLorles ecreL
case or samara broLhers)
Compulsory llcenslng (someone owns copyrlghLed maLerlal buL ls forced Lo do llcensee lL ouL
alr use
8

19 acL LlmlLaLlons on excluslve rlghLs alr use"
A afflrmaLlve defense relevanL only afLer Lhe plalnLlff has esLabllshed a prlma facle case
alr use may be called a prlvllege LhaL counLers a rlghL
LmbodlmenL of Lhe clause promoLe Lhe progress of sclence and Lhe useful arLs (from arLlcle 1)
hleld agalnsL Lhe clause securlng Lo auLhors Lhe excluslve rlghL Lo Lhelr wrlLlngs" (secLlon 10's
excluslve rlghLs) (always agalnsL Lhe excluslve rlghLs)
Aff|rmat|ve Defeses to |fr|gmet
alr use ls secLlon 10
LaLue of llmlLaLlons ls secLlon 30
Laches fallure Lo acL agalnsL lnfrlngemenL (no speclflc Llme llmlL)
LsLoppel you acqulescence Lo lnfrlngemenL
mlsuse
raud on Lhe offlce
LC1lCn 10 Al uL
or purposes such as crlLlclsm commenL news reporLlng Leachlng (lncludlng mulLlple coples for
classroom use) scholarshlp or research ls noL lnfrlngemenL of
ln deLermlnlng wheLher Lhe use made of a work ln any parLlcular case ls a falr use Lhe facLors Lo be
consldered shall lnclude
(1) Lhe purpose and characLer of Lhe use
(2) Lhe naLure of Lhe work
() Lhe amounL and subsLanLlallLy of Lhe porLlon used ln relaLlon Lo Lhe work as a whole
(4) Lhe effecL of Lhe use upon Lhe poLenLlal markeL
ules Lo employ secLlon 10 facLors no brlghL llne rules Lhere all facL lnLenslve all facLors are welghed
LogeLher no slngle facLor ls dlsposlLlve Welgh facLors ln llghL of consLlLuLlonal purpose

D,CA (dlglLlal mllllnlum copyrlghL acL) klnda fucks wlLh falr use cease and deslsL leLLers are noLlce Lo
sLop lnfrlnglng buL whose decldlng wheLher Lhe shlL Lhere Lelllng you Lo Lake down ls AC1uAL
lnfrlngemenL
ln a sense you can do all Lhls fancy work for u,CA buL Lheres a problem LhaL Lhls ls a ex posL declslon on
all Lhese falr use cases
Cases:
CopyrlghL AcL of 19 10 (alr use)
CopyrlghL AcL of 19 108 (LlmlLaLlons on Lxcluslve rlghLs)
CopyrlghL LxLenslon AcL of 199
9


5ony v universo/ city 5tudios {8etomox cose) (1984)
lssue WheLher Lhese acLlvlLles fall w/ln alr use excepLlon ls 8eLamax capable of commerclally
slgnlflcanL nonlnfrlnglng uses?
LlLlgaLe conLrlbuLory C lnfrlngemenL
roblems prlvaLe noncommerclal LlmeshlfLlng done aL home ln[uncLlon could deprlve publlc of
nonlnfrlnglng use some producers of 1v neLworks belleve LlmeshlfLlng lncreases value of C decrease
1v raLlngs and hurL shows
Poldlng uoootbotlzeJ tlmesblftloq ot bome ls leqltlmote folt ose
*Lo challenge a noncommerclal use lL musL be harmful or adversely affecL poLenLlal markeL
(llkellhood of harm noL acLual harm necessary)
1lme shlfLlng expands publlc access Lo freely broadcasLed 1v programs/movles
Allow use of recordlng devlce for siqnificont noninfrinqinq uses (for Lhe purposes of Llme
shlfLlng)
AppllcaLlon
LqulLable ule of eason
1) alrness ConslderaLlons
commerlcal use ls lmporL presumptive/y unfoir noncommerclal ls presumpLlvely falr
2) lncenLlve ConslderaLlons
presumpLlon of falrness burden of proof on Lo show harm
non cognlzable harm?
lssue of dlff b/w 1lme shlfLlng and CaLalogulng/Llbrary
ead 8eLamax ln llghL of CroksLer (! 8reyer sees 8eLamax)
8eLamax ls a pollcy msg for creaLlng ex anLe proLecLlon ag conLrlbuLory lnfrlngemenL sulLs
8 doesn'L ask whaL could you have done how can you geL around Lhls? 1echnologlcal soluLlon
8 supporLs developmenL of dual use Lechnology (non and lnfrlnglng)
8 ls forward uslng and noL sLaLlc snapshoL (provldes safe harbor for Lechnology capable of
nonlnfrlnglng use)
lde noLe
LeglslaLlve amlly and LnLerLalnmenL AcL (2003) Crlmllllzed Lhe copylng of fllm ln LheaLer or dlsLrlbuLlon
of prerelease fllm Legallzed creaLlon of machlne Lo sklp ob[ecLlonable conducL (LhaL Lhe crazy parL)
0

rom Lhls came Lhe Clearplay company (baslcally glves congress mandaLed falr use exempLlon Lo creaLe
derlvaLlve work)

10 alr use 1esL
1 Welgh ln commerclal or nonproflL characLer of acLlvlLy
2 LffecL of use on poLenLlal markeL or value of C work (10(4))

erfect 10 v Amazo
Coogle lmages Lhumbnall case
Were really asklng Lwo quesLlons for Lhe flrsL quesLlon of 10 facLors
o lnsLead of [usL asklng Lhe purpose and characLer of Lhe use Lhls case ls asklng
1 ls Lhe use LransformaLlve
2 ls lL commerclal
8ecause lLs found hlghly LransformaLlve ln Lhls one google and amazon geL Lo asserL falr use defense
shleld Lven Lhough lmage lLself ls noL Lransformed lmage [usL goes from blg Loo small
WlL Lhlnks Lhelrs noLhlng LransformaLlve abouL Lhe lmage buL everyLhlng and anyLhlng havlng Lo do
wlLh Lhe purpose ls And LhaL's whaL ls lmporLanL for Lhls case 8ecause Lhe plcLure ls belng used for
hlghly dlfferenLlaLed purpose namely for lndexlng and searchlng Lhe falr use defense proLecLs LhaL bad
boy

American Ceophysical &nion v. 1exaco (1994)
lssue ls commerclal research falr use musL Lhe company pay for every arLlcle and sLop
copylng/dlsLrlbuLlng magazlne?
LlLlgaLe C lnfrlngemenL of unauLhorlzed phoLocopylng of arLlcles from Lhelr [ournals
roblems one of Lhe exempLlons of C lnfrlngemenL ls research scholarly work buL lL ls lndlrecLly
relaLed Lo commerclal venLures
Poldlng showlng of subsLanLlal harm
alr use 1esL (10)
1 urposes and CharacLer of use (commerclal v nonproflL educaLlonal?) a]g 1
for personal convenlence bulky own llbrary/archlval
hurLs AC b/c only have Lo buy 1 [ournal and avold paymenL
nC1 1ransformaLlve commerclal use b/c 1 geLs proflL from research
*Commer|ca| sett|g for prof|t ature
2 naLure of Ced work (for 1)
1

facLual characLer of arLlcles law favors dlssemlnaLlng facLual works
AmounL and ubsLanLlallLy of orLlon used (a]g 1)
copled enLlrely
4 LffecL on oLenLlal ,arkeL or value (a]g 1)
posslble sales on addlLlonal [ournal subscrlpLlons back lssues back volumes (buL no markeL yeL)
llcenslng revenues and fees would lncrease greaLly
ulssenL CharacLer of us ls research and scholarly purposes (phoLocopylng ls ok under excepLlons) and
no 4
Lh
facLor of effecL on poLenLlal markeL (no markeL no value)
AppllcaLlon
C how ls 8etomox LransformaLlve?

Harper & #ow v. Aation (1985) ('scoop` of autobiography of famous person/event)
lssue does falr use allow unauLhorlzed use of quoLaLlons from a publlc flgure's unpubllshed manuscrlpL?
LlLlgaLe C lnfrlngemenL counLerclalm of falr use
roblems seems llke news/facLs naLlon clalms 1
sL
AmendmenL rlghL
Poldlng kiqht to contro/ 1
st
pub/icotion outweiqhs foir use {shodes of N5 decision omiqo)
,usL proLecL and geL falr reLurn for labor (labor Lheory) hurLs lncenLlve Lo creaLe/flnance
memolrs harmful effecL of denylng publlc lmporLanL source of hlsLorlcal lnformaLlon lf noL
publlshed
Levels/LxLenL of approprlaLlon verbaLlm all or porLlons facLs only expresslon also (lN v
Al)
4 acLors of alr use 1 purpose of use (news reporLlng forproflL publlcaLlon falr use
lncludes good falLh and falr deallng) 2 naLure of work (unpubllshed work narrows exLenL of
falr use lncluded sub[ecLlve descrlpLlons of ppl) amounL and subsLanLlallLy of book Laken
(took heart of book copled verbaLlm) 4 LffecL on poLenLlal markeL (mosL lmporLanL
elemenL musL affecLs markeL and markeL for derlvaLlve works)
AppllcaLlon C how does Lhls relaLe Lo rlghL of publlclLy and prlvacy?
osslble baLLle of whaL ls newsworLhy enough? uoesnt motter if newsworthy ck intended to qive
economic incentive to disseminote/creote ideos
C how do you make lL more LransformaLlve? (less quoLes less abouL book 8u1 Lhls would ruln arLlcle
and leads Lo bad [ournallsm)
erles of lghLs (fooLnoLe 20)
2

rlvacy lnLeresL (make publlc aL all)
LdlLorlal lnLeresL ensurlng flrsL presenL Lo publlc
Lconomlc lnLeresL capLurlng remuneraLlve poLenLlal of lnlLlal release
*even Lhough publlc lnLeresL Lo know musL balance b/w prlvaLe rlghL of ord
Apply allnger v andom Pouse Lo 4 facLor LesL
1hls case under 1909 acL Lwo Lhlngs happen dlvesLlve publlcaLlon or you can reglsLer your
Lhlng for copyrlghL ulvesLlve publlcaLlon ls llke saylng Lo Lhe world Lhey can use lL eglsLer says
everyone else canL 1he unpubllshed work was proLecLed Lhrough common law copyrlghL
pre19

When we adopLed 19 acL we also lefL preproLecLlon on unpubllshed works o whaLs Lhe pre
sysLem for proLecLlon ln copyrlghL as of Loday?

or oLher sysLems Lhe prereglsLraLlon proLecLlon
or paLenL you have Lrade secreLs
or copyrlghL you had common law for 1909 acL or Loday you have
or Lrademark you have lnLenL Lo use"
1hls ls all Lhe equlLable readlng of falr use

Campell v. Acuff-#ose usic (1994) (commercial fair use)
lssue wheLher 2 Llve Crew's commerclal parody of Crblson's song ls wlLhln meanlng of falr use of C
AcL?
roblems bad falLh b/c asked permlsslon and wllllng Lo pay fee Lo use lL buL denled parody of reLLy
Woman" wanL conLrol over derlvaLlve works or works LhaL make fun of orlglnal
Poldlng commetlcol ootote of folt ose ls oot ptesomptlvely oofolt (potoJy)
alr use lncludes crlLlclsm and commenL under 10 parody eeds to m|m|c or|g|a| whlle
saLlre can sLand on lLs own
noL every commerclal use ls presumed Lo be unfalr
under
rd
acLor of amounL and subsLanLlallLy Lake can'L allow a markeL subsLlLuLe or Lake
heart of song buL a parody musL con[ure up hearL of song Lo crlLlclze lL
arody doesn'L effecL 4
Lh
acLor (poLenLlal markeL effecL) b/c no one wlll wanL Lo make fun
of Lhemselves and serves dlfference markeL funcLlons
&oo ptlvocy coocetos b/c olteoJy pobllsbeJ bot ootbot moy floJ tbls offeoslve
Application:
now does 2Live crew offect eor/ier coses? {2Live crew is tronsformotive)


8etomox {reproduced oriqino/ sove for /oter use noncommercio/ use noninfrinqinq o/q
ku/e commercio/ use is presumptive/y unfoir)
1exoco {copied ortic/e chooses no /icense over co//ected compu/sory /icense con chorqe o few
extro to moke o fund)
Notion {copied verbotim porody con toke heort of work)
&Case by case bas|s o br|ght ||e ru|es
4//owed 2 Live crew even thouqh bod foith tokinq ond neqotiotions fe// throuqh {bod foith qives poss
for foir use b/c morket foi/ure)
Apply acLors Lo parody
1 Commerclal 1ransformaLlve (soclal culLural speech acL parody ls always hlghly
LransformaLlve)
2 Plghly CreaLlve naLure of orlglnal (lgnore lL llke CourLs do)
subsLanLlal Laklng of hearL of orlglnal (con[ure up LesL needed)
4 noL markeL supplanLlng b/c Crblson wlll noL creaLe rap and wouldn'L llcense anoLher person
Lo do so
*parody changes enLlre rules of Lhe game
arody ls llke Lhe fasL Lrack Lo alr use Cwners of copyrlghL cannoL be Lhe chlllers of mockery"
8uL whaL ls a parody? and how could we separaLe lL from saLlre
arody ls speclally dlrecLed Lowards Lhe copyrlghLed work A commenL on orlglnal work
aLlre generallzes and commenLs abouL a copyrlghLed work buL [usL uses LhaL as someLhlng as a plece ln
a larger hole
lotoJy ls ttoosfotmotlve sotlte ls oot lotoJy cteotes o Jetlvotlve wotk of sotts wblle sotlte cteotes o
wbole oew wotk
lotoJy woolJ be ctoweJ oot o sotlte ls oot A sotlte moy floJ oltetootlve veblcles fot exptessloo
lotoJy pteveots oeqotlotloq llceosloq oqteemeots sotlte Joes oot cteote bot A potoJlst coooot expect
bolJet to oeqotlote petmlttloq self mockety bot sotltlst coo expect socb oeqotlotloos

1hese Lhree deflnlLlons are supposedly wrong Lhough All Lhree can be dlspelled Aka
boLh saLlre and parody would noL be granLed llcenesslng agreemenLs (no one wanLs Lhere shlL made fun
of)


4

Leibovitz v. Paramount Pictures (demi moore pregnant picture seems like Parody from one obvious
source, what does it speak to?, commercial poster advertisement to see film, speaks to public debate
about cover being appropriate)
CourL slmllar Lo venus udlca pose flrsL used ln AphrodlLe of knldos
Apply 4 facLors
hands ln publlc domaln (falr use)
1 urpose CharacLer (Lype of movle maklng fun of publlc conLroversy needs Lo
mlmlc orlglnal buL noL Lhe same as orlglnal smlrklng v proud of pear shaped body
quallLy w/ only Lhlng on v rlng as cheap bauble)
LransformaLlve buL small changes sllghLly favors u
2 naLure of C Work
AmounL and ubsLanLlallLy of orLlon used (copled camera angle)
hearL of orlglnal lncludes camera angle or skln Lone
hearL of work noL nude noL hands buL llghLlng skln Lones all Laken by dlglLal
means
L would noL have llcensed
4 LffecL on use of poLenLlal markeL
no ln[ury slnce wouldn'L llcense
2
nd
Clr flnds parody and alr use

Suntrust Bank v. Houghton ifflin (2001) (riticism of one w/ the Wind)
LlLlgaLe C lnfrlngemenL vlolaLlon of Lanham AcL decepLlve Lrade pracLlces Lemporary resLrlcLlon
prellmlnary ln[uncLlon of sale/producLlon/adverLlslng
roblems b/c wellknown novel shouldn'L allow much Lo con[ure lL up should llmlL amL used free
r|d|g!
Poldlng f criticism of infrinqinq work is tronsformotive enouqh foir use
rlma facle evldence of C lnfrlngemenL by valld C and andall copled orlglnal elemenLs
(characLers seLLlngs ploL llke tollooe) buL qlves oew slqolflcooce
noL a markeL subsLlLuLe Lack of lrreparable harm
arody need Lo mlmlc orlglnal CommenL on slavery and Clvll War era ln ouLh
ulssenL
arody ls noL clear cuL dlsLlncLlon andall reshapes whaL she borrows ln 1he Wlnd Cone uown noL a
subsLlLuLe LsLaLe wlll always refuse derlvaLlve works
AppllcaLlon arody or equel? (commenL on flaws of orlglnal v conLlnuous sLory
3

FA:Lr: ArL lrLLe:RlAL LLelcr LAv.
aLenL ls sLrong proLecLlon (unllke ) LaLuLory ln naLure ueslgn paLenL has a shorLer Lerm of 14
years lL ls any new ornamenLal deslgn CannoL be funcLlonal musL be ornamenLal lf funcLlonal Lhen lL
ls a uLlllLy paLenL

A uLlllLy paLenL glves you Lhree baslc rlghLs
1 1o make
2 1o use
1o sell
1hese are equlvalenL of copyrlghL secLlon 10 rlghLs ,osL rlghLs are derlved from Lhe core rlghL Lo
noL be copled 1he Lhree parL paLenL sysLem ls more llke a rlghL Lo hold and use a monopoly noL a
derlved seL of rlghLs Lhey are really seen as core Lo holdlng a monopoly ulfferenL from because ls
only abouL copylng le lndependenL dlscovery ls ok ln buL noL ln aLenL We glve a monopoly
because of a quld pro quo Lo glve an lncenLlve Lo lnvenL and an lncenLlve Lo dlsclose roLecLlon for 20
years

lmporLanL Lo keep ln mlnd LhaL Lhe quld pro quo lsnL always Lhere harmaceuLlcles for example have
varlaLlons because of dlfferenL approvals whlch are needed and oLher Llme llmlLaLlons whlch may llmlL
lL Lo less Lhan Lhe 20 years

lnlLlal sysLem was llLerally 1homas !efferson decldlng lf he LhoughL someLhlng was paLenLable Lhen
moved Lo [udlclal branch flnally esLabllshed paLenL offlce ln 180s

1here ls a very robusL gaLekeeplng efforL 1here ls a federal clrculL Lo handle only paLenL cases 1here
was an overwhelmlng anLlpaLenL senslblllLy Lhrough Lhe federal clrculLs Lhrough Lhe 190s so creaLlng
Lhls paLenLonly federal clrculL has removed Lhls barrler 1hlrdly Lhls courL level wlll glve you an
exLenslon of Lhe admlnlsLraLlve apparaLus even Lhough lL ls an arLlcle courL

Why Lhls backlash agalnsL aLenLs?
O eople were abuslng
O aLenLs lmmunlze agalnsL anLlLrusL whlch does noL slL well wlLh many
O 1hls really varles Lhrough Llme lf you look around 1910 Lhere ls an amorous llklng of
poollng paLenLs for people Lo share Lhelr paLenLs now Lhere ls clalms LhaL poollng ls
good and we should do lL buL Lhere are anLlLrusL lssues Lhere

A. Sub|ect Matter of Utility Patents
Statutory Subject atter Limitations
aLenL AcL 101
lanL aLenL AcL (190) and lanL varleLy roLecLlon AcL (190)
Patent is related to a market There is no equivalent doctrine in patent law to 'time shiIting in
copyright



Diamond v. Chakrabarty (1980)
lssue wheLher a humanmade mlcroorganlsm ls paLenLable sub[ecL maLLer
LlLlgaLe appeal denlal of paLenL reglsLraLlon clalms
roblems good for envlronmenL b/c breaks down crude oll spllls clalmed meLhod of produclng bacLerla
and problem Lo clalm of Lhe bacLerla lLself
Poldlng paLenLable b/c noL found ln naLure buL human consLrucLlon
LaLuLory lnLerpreLaLlons of manufacLure" and composlLlon of maLLer"
101 has llmlLs and doesn'L embrace every dlscovery lf lows of ootote pbyslcol pbeoomeoo
ot obsttoct lJeos
should resorL Lo LeglslaLure on rlsks of geneLlc research (polluLlon/dlsease /loss of genelc
dlverslLy) lL fu|f|||s purpose of promot|g progress of sc|ece ad usefu| arts
ulssenL Congress speclflcally excluded bacLerla ln lanL AcLs proLecLlon only exLended Lo planLs
recedenL ook 8totbets eeJ comblnlng bacLerla was a dlscovery noL an lnvenLlon so lL was noL
paLenLable already occurred ln naLure [usL comblned Lhem (no new producL)
AppllcaLlon C should human lnLervenLlon be a LouchsLone for paLenLablllLy?
Who is the best actor: Congress or Court?

Aonobviousness
Craham v. 1ohn Deere (1966)
lssue WheLher obvlous exLenslons of sLaLe of arL are paLenLable? (no)
LlLlgaLe lnfrlngemenL sulL (ueere) Craham appealed denlal of paLenL for plow chlsel b/c deslgn was
mere exLenslon of a sLaLe of arL (Clamp for vlbraLlng shank plows)
roblems as a whole" obvlous lmprovemenL of exlsLlng Lechnology sprlng clamp so less wear/repalrs
a/g obsLrucLlons paLenL for prevlous producL
Poldlng ueny paLenL
10 of aLenL AcL (1932) doesn'L allow paLenLs for whaL ls obvlous Lo person ordlnary
person ln Lhe lndusLry ([udlclal requlremenL LhaL lL musL be Lhe resulL of someLhlng more
Lhan ordlnary sklll found ln fleld producL of lnvenLor noL sklllful mechanlc)
ltlot Att (only 2 small dlfferences lnverLed poslLlon of shank and bolLlng of shank Lo hlnge
plaLe)
Joesot mottet lf Jlffeteot effect tbooqb smoll cbooqes (obvloos cbooqes)
Aftettbooqbt lf so lmporLanL why dldn'L Lhey argue freeflexlblllLy Lo aLenL offlce re[ecL
b/c same maLerlal elemenLs same operaLlon
AppllcaLlon same maLerlal elemenLs Lhen musL Lhey add more? Pow much more?
C are lmprovemenLs paLenLable? known/old elemenLs buL new producL/process?


nonobvlousness ls llke hlgher sLd of novelLy
Exclusive #ights, Infringement and 1he Doctrine of Equivalents
lesto corp v 5hoketsu kintoku koqyo kobushiki co Ltd (00)
lssue wbetbet omeoJmeots to comply wltb tepoltemeots of poteot oppllcotloo sboolJ be estoppeJ llke
omeoJmeots to oottow sobject mottet (ot ovolJ ptlot ott)?AoJ Jbetbet some epolvoleots wlll stlll
loftloqe? ls tbe loveotot stlll botteJ ftom ossettloq loftloqemeot clolms?
LlLlgaLe esLo clalms ,C's producL ls Loo slmllar and lL lnfrlnges under docLrlne of equlvalenLs ,C
clalms esLopped from maklng argumenL b/c of prosecuLlon hlsLory of paLenLs
roblems by narrowlng clalm paLenLee surrenders all equlvalenLs of amended clalm
8y amendlng paLenLee dlsLlngulshes b/w musL be maLerlal and whaL lsn'L proLecLable
*CannoL regaln whaL was earller rellnqulshed
Amend Lo saLlsfy requlremenLs of aLenL AcL v Avold preempLlon by earller lnvenLlons
Poldlng
narrowed lLs clalms Lo geL paLenL now lL canL say Lhe feaLures are lmmaLerlal and LhaL
,C's devlce ls Lhe equlvalenLs of lLs own
CompleLe bar promoLes cerLalnLy ln lnfrlngemenL cases
CompleLe 8ar v lexlble 8ar of LsLoppel

esLo clalms LhaL by rewrlLlng/ad[usLlng Lhe clalm Lo clarlfy an amblguous Lerm no lnLenLlon of
surrenderlng sub[ecL maLLer and shouldn'L be esLopped
CourL responds lf Lruly cosmeLlc change of a 112 AmendmenL would noL narrow paLenL's scope
Patent question: whats the difference b/w design patent, process patent, patent for thing
itself, utility patent in Traffix, etc?
-patents allow protection for what is functional? Conflicts with TM b/c can`t protect what
is functional (similar to novelty requirement in X?)
can be functional b/c of useful requirement 1uicy Whip (not useful under design patent
b/c rigorous requirement)
Does TM allow revere engineering? Or protect a/g it?
For Infringement in each regime &nder what authority/law can you bring action with?
Trade dress infringement 4(a) of Lanham ct.