Intellectual Property Outline

Intellectual Property in the New Technological Age
Eric Strauss 4/25/2011

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3-3.5 hours open book Time of the exam will reflect the syllabus i.e. 40% of exam patent if 40% of patent on syllabus Majority multiple choice about 50 questions- some will touch on familiarity on cases. o i.e. is this case precedent of this proposition. Some questions asking how would a court rule; liability or no liability Will tests knowledge of rules and policies and distinctions of different areas of IP 1 or 2 essays won’t be a long fact pattern (straightforward) o Won’t be pure policy o Will ask doctrinal question but students may bring in policy reasons to enhance an answer Don’t worry about the changing of the law go with what is generally accepted or recent Example multiple choice question o 1. The term thermos is:  A. Fanciful  B. Fanciful but became generic  C. Arbitrary but became generic  D. Suggestive but became generic  E. Descriptive, then acquired secondary meaning, then became generic o 2. In patent law, which one of the following is considered a question of law?  A. Infringement  B. Written description  C. Claim interpretation  D. Whether the patentee committed inequitable conduct  E. Whether the infringement was willful th o 3. Suppose that the QWERTY typewriter/keyboard layout had first been created in the mid 20 century and that the copyright on it has yet to expire. The copyright owner has started suing all manufacturers of keyboards and typewriters, all of whom make keyboards and typewriters with the QWERTY layout. Which one of the following cases most supports the manufacturers argument that the QWERTY layout cannot be protected under copyright?  A. Morrissey v. Proctor & Gamble  B. Lotus v. Borland  C. Brandir v. Cascade  D. Feist v. Rural Publications  E. Baker v. Selden


Intellectual property- analogous to tangible property; property that has rights attached to it  IP differs from tangible property because it is not physical and more than one person can possess it at the same time  Tangible property is naturally exclusive and rival  IP is not rival and is not used up  Implications of not being naturally excludable o Legal protection may be needed to incentivize creation of information o Once the information is produced there is a huge social benefit from sharing information  Innovation is cumulative and builds on what came before o If there were unlimited IP protection there would be less information created in the second generation; improvements are crucial but wouldn’t be made  One theme of the course is balance between property right and consumer protection and innovation

A. Philosophical Perspective  1. The Natural Rights Perspective (Lockean Theory) o John Locke, Two Treatises on Government – Third Edition 1698  “The labor of his body and the work of his hands are properly his”  Theory is based on the fact that you own your body and labor and you own what you mix your labor with  Theory is too vague because it asks what you are mixing your labor with (if fishing do you own the ocean?)  Lockean Proviso- Nor was this appropriation of any parcel of land, by improving it, any prejudice to any other man, since there was still enough and as good lest, and more than the yet unprovided for could use. So that, in effect, there was never the less left for others because of his enclosure to himself…  3. The Utilitarian/Economic Incentive Perspective (US system is based on Utilitarian) o a. Promoting Innovation and Creativity  The Constitution expressly conditions the grant of power in the patent and copyright clause on a particular end, namely- Congress shall have the power “to Promote the Progress of Science and useful Arts by securing for limited Times, to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries” (Article I §8 cl. 8)  Copyright laws is designed to give rewards and rights to authors and publishers without burdensome requirements to encourage production of literary works  Framers gave rights in order to promote invention and creations for public welfare  Without exclusive rights in one’s own work only marginal costs and not fixed costs will be able to be recovered (Ex: writing a book)  Cost of limiting diffusion  Ex: of company charging a lot for a drug they have a patent on and people are still paying for it because it saves lives but then have no money  Natural Rights vs. Utilitarian Framework  Differences: In the natural rights framework, the inventor or author is entitled to all the social benefits produced by his efforts. In the utilitarian framework, reward the inventor or author is a secondary consideration; the principal objective is to enrich the public at large o b. Ensuring Integrity of the Marketplace (trademarks) B. Overview of Intellectual Property  See table 1-1 starting on page 26 for complete breakdown of Trade Secrets, Patent, Copyright, Trademark/dress  Polices/Institutions to Promote Innovation o Government R & D Subsidies, Prizes (Nobel Prize, etc.)  Pro- Immediate free access for everyone  Con- Who decides what is worth investing in some bureaucrat speculating?  Not determined by the open market Federal State Protections Examination Duration Requires copying to infringe Copyright yes no expression no life + 70 yes Trademark yes Yes symbols yes unlimited no Patent yes no inventions yes 20 years(+/-) No Trade Secret no Yes ideas facts, expression no unlimited yes


A. Introduction  1. Brief History of Copyright Protection o Copyright Act of 1790 gave 14 years and 14 additional years for renewal  Eventually extended to new media  Modeled on the Statute of Anne  Limited to book charts and maps o Evolution of the Act  Statute of Anne/ Copyright Act of 1790  1909 Act  Included all writings which was construed liberally  Limited protection to works that were published  1976 Act and Related Reforms  Included recordings  Awarded protection as soon as fixed to a tangible medium  Provided for statutory damages  Dramatic increase in the number and types of works  Berne Convention Accession- set standards for international works  The Digital Age  2. An Overview of the Copyright Regime o Elements:  Copyright Subject Matter- includes literary and artistic expression  Threshold for Protection- needs a modicum of originality and fixed in a tangible medium  Formalities- notice of copyright is required prior to 1989. Deposit to obtain registration of copyright  Authorship and Ownership- the work must have been created by or transferred to the party bringing suit. In works for hire the employer is the creator  Duration of Copyright- life of the author plus 70 years, or 95 years for anonymous work, or 120 years from the year of creation o US Copyright Office registers work but does not search for prior work  Copyright is protectable at the moment the work is created o Rights associated with ownership  Reproduction- owner of work can sue for copying even if in a different form  Derivative works- owner has exclusive right to copy original in a different form  Distribution- owner controls the first sale and distribution of work  Performance and display- owner controls public performances and display of work; can’t prevent display of a work of art in a public place  Anticircumvention- Copyright Act prohibits circumvention designed to safeguard digitally encoded works  Moral rights- a right to prevent intentional distortion, mutilation or other modification o Fair use doctrine applies a balancing test to determine whether a use of copyrighted material should be permitted without the owner’s authorization. o Safe harbor- partially immunizes online service providers from monetary liability for infringing acts of their subscribers o Copyrights do not give their owners the exclusive right to prevent others from making, using, or selling their creations; only a right to prevent unauthorized copying o Copyrights are limited in duration to give future authors the ability to use ideas in previous works B. Requirements  1. Original Works of Authorship o 17 U.S.C. §102. Subject Matter of Copyright: In General p. 420  102(a)- Copyright protection subsists in original works of authorship fixed in any tangible medium of expression  Originality o (1) Independent creation of a work reflecting a (2) modicum of creativity  Author is the creator and could be the same as long as it is thought of separately o Comes from judicial interpretation of the term author in Art. 1 §8 cl. 8


 Not copied if there is something recognizable as “his own”  Courts do not judge the artistic merit of a work o Feist Publications v. Rural Telephone Service (1991) p. 422  Facts: Feist is a publishing company that specializes in telephone directories. It covers 11 different telephone service areas in 15 counties and contains 46k white pages. Rural is a certified public utility that is subject to Kansas law that it must produce a telephone directory and has about 7,700 listings. Both companies distribute for free and compete for yellow page advertising. Feist pays telephone companies to use their white pages listings for multiple regions. Only Rural out of the 11 companies denied Feist and Feist used their listings anyway  Two established propositions- facts are not copyrightable compilations of facts are copyrightable  To establish infringement, two elements must be proven: (1) ownership of a valid copyright and (2) copying of constituent element of the work that are original  Issue: Did Feist, by taking 1,309 names, towns and telephone numbers from Rural’s white pages, copy anything that was original to Rural?  Held: Rural did not use any creativity to make their listing original  Rationale: Originality is not a stringent standard.  Originality is made up of two parts = independent creation + modicum of creativity  Also, Rural had to make the listing by the state and therefore the selection of the listings was by law not by Rural  Concluded: The names, towns and telephone numbers copied by Feist were not original to Rural and therefore were not protected by the copyright in Rural’s combined white and yellow pages directory o Comments and Questions  Argument against Feist is that some facts are created by humans and should be copyrightable  Fictitious facts and copyright estoppel- equity and good morals will not permit one who asserts something as a fact and then later claims it to be fiction in order to maintain a copyright  Copyright law does not protect historical facts  Compilation or arrangements of facts may be protected  “The valuable distinction in copyright between facts and the expression of facts cannot be maintained if research is held to be copyrightable”  Database vendors protect by contract what they cannot protect by copyright  Used often to protect “sweatworks” or work that took a lot of research and energy to compile  More creativity the more likely it is be protected  Thin copyright protection- harder to sue for infringement. In order to infringe the defendants work has to be more similar to the plaintiffs  Broad copyright protection- opposite of thin  Copyright protection extends to maps under the definition of “pictorial, graphic, and sculptural works”  Could have developed because in the old days map makers weren’t as accurate and all maps would be different 2. Fixation to a Tangible Medium of Expression o H.R. Rep. No. 94-1476 (1976) p. 431  In 1908 in order to be infringing a copy must be in a form which can be read (Overruled)  An unfixed work or authorship can be protected under State common law or statute but not under the Federal statutory protection  If the program content (images and sounds) is transmitted live to the public while being recorded at the same time it is also protected  Definition of “fixed” in section 101- a work is fixed in a tangible medium of expression if there has been an authorized embodiment in a copy or phonorecord and if that embodiment is sufficiently permanent or stable to permit the work to be perceived, reproduced or otherwise communicated for a period of more than transitory duration  The two essential elements – original work and tangible object – must merge through fixation in order to produce subject matter copyrightable under the statute  Midway v. Artic (1983)  Case about copying arcade video games  Court says fix is in the form in which the work can achieve its result  Infringement because defendants game was in the same form


or otherwise communicated.S. reproduced. Publication  Any work that is fixed is covered by federal law whether or not it is published  Term of copyright is dated by the date of publication for entities or work made for hire  Term is 95 years from the date of publication  General publication triggers federal law  Limited publication is essentially not a publication o C. useful article doctrine.“the copy created in the RAM can be perceived. blank forms.idea/expression dichotomy. 17 U. LoopNet. Deposit  §407 of the Copyright Act requires deposit of two copies of each work published in the US for which copyright is claimed within three months after publication  Requirement still mandatory but author still has right to bring suit  The purpose behind registration depot under §408 is to enable the Copyright Office to know what it is registering. Scenes a faire (stock characters and incidents). Limitations on Copyrightability: Distinguishing Function and Expression o Limiting doctrines include. As a result. familiar symbols or designs. Skyy Spirits.C. Notice  Post-Ratification of the Berne Convention  Eliminated the notice requirement of US copyright law prospectively  Congress still encourages it o B. Formalities (only talked about publication) o Copyright formalities are procedural requirements imposed on authors by the government that are necessary to obtain copyright protection but do not relate to the substance of the copyright. Registration  Registration of copyrighted work with the Copyright Office has always been voluntary  Post. Comments and Questions  A defendant does not infringe the right to reproduce unless she has reproduced the copyrighted work in fixed form  Copyright Act. (b) publication of the work. §1101 (civil) and §2319A (criminal) o The court determined that §2319A merely authorizes the government to prosecute offenders and does not create rights. government works  Scenes a faire. If the background and other objects in the picture were exactly the same the picture might be protected  Skyy bottle picture has thin copyright protection  Random picture of people and what not has broad copyright protection (captures a moment in time)  5 .Ex: drunks and prostitutes are common in the south Bronx  The same case could include multiple limiting doctrines o Ets-Hokin v. and (d) deposit of the work with the Library of Congress. the loading of software into the RAM creates a copy under the Copyright Act  CoStar v.  Fixation helps in proving authorship  MAI v.C. merger of idea or fact with expression. and therefore is not a copyright law. §2319A was not enacted under the Intellectual Property Clause and therefore does not violate it. individual design elements in architecture.electronic instantiations of data while in transit through an Internet Service Provider’s routers were not fixed for more than transitory duration  3.  The §407 requirement to the Library of Congress promotes progress by making knowledge accessible Copyrightable Subject Matter  1. o Formalities are largely voluntary and failure to comply does not risk forfeiture o A. fact/expression dichotomy.Ratification of the Berne Convention  Congress retained the requirement of registration prior to suit for domestic works and works originating in non-Berne nations o D. o The United States has traditionally had four requirements: (a) notice of copyright.a picture of a bottle of sky bottle is not copyrightable because independent parties can take a picture of the bottle. single words and short phrases. Peak Computing. (c) registration of the work with the Copyright Office.

in accordance with this title. v. explained. The fundamental building blocks of expression  In his view courts engage in a rough balancing between overprotecting and under protecting when determining which side of the idea/expression line the work falls o Copyright office considers blank forms uncopyrightable include: time cards. concept. Animating concept behind the work  2. which are designed for recording information and do not in themselves convey information  Lotus Development Corp. Borland International p. diaries etc. Functional principles or solutions described in the work  3. Baker’s bookkeeping technique gets the same results as Selden’s but uses different columns and headings.” where he explains a peculiar system of bookkeeping. o Compared to medicine. graph paper. 448  Facts: Lotus allows users to perform accounting functions. lays no foundation for an exclusive claim to the art itself. Selden alleged Baker infringed these copyrights. though entitled to the benefit of copyright. Users of Borland could use menu commands designed by Borland or by Lotus.  Baker v.  Issue: whether the exclusive property in a system of bookkeeping can be claimed. Borland also allowed users to use the program exactly like they were in Lotus except with more options.Creativity is proxy for avoidability  Contra Feist. procedure. principle. It did not copy any of the computer code only the words and structure of the menu.’s copyright in Lotus 1-2-3 was infringed upon by Borland when Borland copied the Lotus menu command hierarchy into Quattro computer spreadsheet programs  District Court said Lotus was protectable because there were alternative uses of the word 6 . account books. or embodied in such work o 365 day grace period between time of publication and when application must be filed. in original works of authorship. Subject Matter of Copyright: In General  (a) copyright protection subsists.  For an exclusive right he must get a patent.o o o Professors theory: Expressive = won’t be independently created  Idea and expression have different meanings in copyright  Idea/Expression  idea boy meets girl (very common concept)  Expression: prairie dog meets seahorse (unlikely to appear independently by someone else) Professors theory.  (b) in no case does copyright protection for an original work of authorship extend to any idea. Selden answers claiming the matter is not a lawful subject of copyright. illustrated. In this case Selden can get a copyright that secures his right in printing and publishing his book only.can’t write the formula and publish it and expect protection from selling the medicine o The description in the art of a book. by means of a book in which that system is explained?  Held: A system explained is subject to the patent office not copyrightable. under the law of copyright. It has 469 commands arranged in 50 menus and submenus. Selden (1879) p. 442  Facts: Selden took the steps for obtaining the copyright of a book entitled “Selden’s Condensed Ledger.  Comments and Questions o Paul Goldstein suggests 3 categories of unprotectable ideas  1. system. He took the copyright to several other books making improvements on the system. process. The Idea-Expression Dichotomy  §102. Borland used the entire Lotus menu tree. or discovery regardless of the form in which it is described. method of operation. Borland used the Lotus menu because people wouldn’t switch because of the learning curve to switch  Issue: Whether Lotus Development Corp. or Book-keeping Simplified.the sine qua non (necessity) of copyright is originality … created by author and creates a minimum degree of creativity  Usually the more creative the more likely there is copying A.

460  Facts: Plaintiff Morrissey is the copyright owner of a set of rules for a sales promotional contest of the sweepstakes type and claims Proctor & Gamble infringed by copying almost precisely. or procedure foreclosed from protection  Different from Selden because Lotus does not claim to have a monopoly over the accounting system only over its menus. record. . procedure. The Useful Article Doctrine  17 USC §101. the design of a useful article . principle. method of operation. .” o Some courts have accepted the Lotus approach and others have rejected it o Courts have declined to find copyright protection in computer programs for (a) standard practices in the industry for which the software programs are designed.  §102(b) in no case does copyright protection … extend to any idea. or sculptural features that can be identified separately from. Rule 1. or embodied in such work  The court concluded that the menus command hierarchy is an uncopyrightable “method of operation” because it is necessary to operate and control the program o If specific words are essential to operating something. and applied art. then courts will find that the idea behind the work merges with its expression and the work is not copyrightable o Digital image of a car is unprotected because all digital renditions will be the same of a specific car B.when there is only a few ways of expressing an idea. . explained. and only to the extent that. as such. Procter & Gamble (1967) p. .R. and are capable of existing independently of.o On appeal Borland claimed it did copy Lotus’ unprotectable menu because it is a system. o The menus Lotus created are largely standard procedures that Lotus did not invent and are common words that Lotus cannot monopolize. such design incorporates pictorial. the expression would be uncopyrightable.Pictorial. (b) methods or practices that a large population has come to rely upon for daily activities and (c) the need to operate on common hardware or with common software o Professor believes 17 USC §102(b) is contradicted by 17 USC §101  101: A computer program is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result  Morrissey v. Compares to QWERTY keyboard. P&G denies that Rule 1 is copyrightable material  Held: The court established the principle that where a work was so simple and so straightforward as to leave available only a limited number of forms of expression of the substance of the subject matter. No. except. the utilitarian aspects of the article  H.  Comments and Questions o Supreme Court came to a 4-4 decision in the Lotus case o House Report accompanying that section is consistent with the holding and states “actual processes or methods embodied in the program are not within the scope of the copyright law. Rep. process. or discovery. Graphic. fast forward) but the menus aren’t the commands they are the buttons which are necessary  Anyone can build on the methods of operation created  Reverses District Court  Concurring o Focuses on policy stating that using the same menus allows people to learn and be more innovative and produce more for society. graphic. and sculptural works” include two-dimensional and threedimensional works of fine.  Applies what is to become known as the merger doctrine  Comments and Questions o Merger doctrine. regardless of the form in which it is described. then they are part of a method of operation and. play. 94-1476  7 . system. illustrated. graphic. shall be considered a copyrightable PGS work only if. process. are unprotectable  Compares the menus to a VCR (set. method of operation.

Can’t have a copyright in written opinions delivered by the Court  Also extended to statutes  §105 of the Copyright Act provides that copyright protection is not available for any work of the US Government. but the US Government is not precluded from receiving and holding copyrights transferred to it by assignments. or otherwise. conceptual separability exists  Facts: Levine created a design using wire he kept in his home which was the shape of a Ribbon rack.doesn’t believe that separability makes sense  Brandir International. He also made a wire sculpture in the shape of a bicycle.  Held: The rack is not copyrightable because there is no aesthetic element that can be separated from the utilitarian elements  “it is unnecessary to determine whether to the art world the Ribbon Rack properly would be considered an example of minimalist sculpture” o The result does not change  Comments and Questions o Physical separability test is straight forward if the expressive element can stand alone from the useful article o Conceptual Separability test.  §101 a work of the US Government is a work prepared by an officer or employee of the US Government as part of that person’s official duties  8 . Cascade Pacific Lumber Co. (1987) p. Copyright Office denied the copyright claiming there was no pictorial.Courts use binary choice meaning it either is or isn’t separable rather than a scale of significant artistic creativity o US copyright law does not extend to the design of clothing on the ground that clothing is a useful article  Fashion industry has lobbied Congress to enact a 3 year term of protection against piracy of non utilitarian features of registered works C. and sculptural works.has many meanings and is too hard to apply o Binary choice versus Sliding Scale. started making the same design racks and Levine submitted an application to the Copyright Office.Are the utilitarian aspects capable of existing independently from the aesthetic aspect  Are there other ways available to achieve the same practical result  If there are no other ways available then someone trying to achieve the outcome will probably come up with the same idea  Professor. graphic or sculpture apart from the useful article. He then had drawings fabricated with Bailey and sold the Brandir Ribbon rack.” applies to works of art in the traditional sense and applied art  Applied arts are works that are intended to be or have been embodied in useful articles regardless of factors  Industrial designs are excluded and not subject to copyright protection  Pictorial. Peters. Inc. graphic. the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements  Where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences. Government Works  Government works are not copyrightable  People already pay for it in taxes they shouldn’t have to pay for it again  Wheaton v. v. 464  Court adopts Professor Denicola’s test that there is no line but merely a spectrum of forms and shapes responsive in varying degrees to utilitarian concerns o Copyrightability should depend on the extent to which the work reflects artistic expression uninhibited by functional considerations  If design elements reflect a merger of aesthetic and functional considerations. graphic and sculptural works include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned o Must be identified separately from the utilitarian aspects of the article o Can’t copyright the design of a car because the design can’t be separated from the car  Professor suggests the test should be. Cascade Pacific Lumber Co.o “pictorial. bequest.

and Sculptural Works  §101 pictorial. expressed in words.  Also includes catalogs. or other verbal or numerical symbols or indicia. Musical Works and Sound Recordings  Copyright law accords owners of musical composition the full complement of rightsincludes the right to perform in public o Sound recordings do not receive a traditional performance right (although they now have a digital performance right)  Musical works can be written on paper. photographs. and organization. an organization that develops model building codes. Subject Matter of Copyright: In General p. titles. or drawings. models. No. or cards in which they are embodied. harmony. 478  H. or rhythm. 94-1476  §102 lists 8 broad categories which the concept of works authorship is said to include. maps. The Southern Building Code Congress International (SBCCI). A number of Texas municipalities had adopted the SBCCI model codes. reversed a district court ruling concerning the copyright of model building codes. 475 o The Fifth Circuit. This means the list is illustrative and not limitative  A. individually or in combination. The work must be original in its melody.  B. Veeck ordered the model code directly from SBCCI and posted it on his non-profit website identifying it as the building code of the various municipalities. however. Architectural Works  Congress passed the Architectural Works Copyright Protection Act of 1990 under §101. including architectural plans  Must be original and not fall under useful article doctrine.  Literary characters have thinner protection than graphic characters o Description would have to be very precise where most people would visualize the same other than audiovisual works. prints and art reproductions. sitting en banc. graphic. or instructional works and compilations of data. Pictorial. directories. and slogans are not subject to copyright  Scope extends to non-literal elements such as structure. the work is protectable without regard to physical or conceptual separability as long as the design is original  Limitations o Protection does not include the right to prevent pictorial representations of the work if the work is visible from a public place o Owners of the building can make changes without consent of the author of the copyright  D.  C.  Copyright Office. the model codes enter the public domain and are not subject to the copyright holder's exclusive prerogatives. The Domain and Scope of Copyright Protection o §102. regardless of the nature of the material objects. sued Veeck for copyright infringement. and technical drawings. recorded on audiotape. the court concluded that the organization's works retain their protected status. Southern Bldg. The court held that as law. Literary works  §101 literary works. periodicals. p.includes two dimensional and 3D works of fine graphic and applied art. tapes. disks. or otherwise fixed in a tangible medium of expression. Copyright Act does not expressly limit the protectability of works created by state government officers or employees. 2. including a building. the work includes the overall form as well as the arrangement and composition of spaces and elements in the design. pressed onto a phonorecord.  9 .  Comments and Questions  Veeck v. such as books. As model codes. Rep. rather than as a SBCCI model code. diagrams. films. and similar factual reference. manuscripts. Code Congress Int’l Inc.  If the design elements are not functionally required. numbers. but does not include individual design features. charges.R. and sculptural architectural work is the design of a building as embodied in any tangible medium of expression. phonorecords. Graphic. sequence. architectural plans.words and short phrases such as names. globes.

 Congress enacted a sui generis form of ip for mask works in 1984 to fill the gap between patent and copyright protection. It gives direction for performance or actually represents all or a substantial portion of the action as actually occurring rather than merely being narrated or described. Initial Ownership of Copyrights o §201(a). Semiconductor Chips Designs (Mask Works)  Issue that semiconductors could be duplicated within months for a fraction of the cost to make the originals.  G. Motion Pictures and Other Audiovisual Works  Copyright Act defines audiovisual works as works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devises such as projectors. elaborations.  The Semiconductor Chip Protection Act (SCPA) codified in the Copyright Act 17 USC §§901914  The SCPA extends the lead-time of chip developers by deterring outright piracy of chip designs  H. annotations. in which a number of contributions. condensation. composes. or encyclopedia. in which the works are embodied. individual who writes. motion picture version. The term compilation includes collective works D. o Works that are based on other copyrighted work  §101 A derivative work is work based on one or more preexisting works such as a translation.  Impromptu. or other modifications which. Vessel Hull Designs  1998 Congress passed the Vessel Hull Design Protection codified at 17 USC §§1301-32 to fill the gap. Works Made for Hire  10 . art reproduction. viewers. sound recording.Sound recordings are magnetically or electronically recorded versions of a musical composition or any aural performance o Excludes the sounds accompanying a motion picture or other audiovisual work. A work consisting of editorial revisions. represent an original work of authorship is a derivative work  §106 (exclusive rights in copyrighted works). or adopted. coordinated.the owner of a copyright under this title has the exclusive rights to do and to authorize derivative works  Infringement can be adapting (not exact copy) of the work  §101 a collective work is a work such as a periodical issue. regardless of the nature of the material objects. Derivative Works and Compilations p. together with accompanying sounds. unrecorded dancing is not a protectable work because it is not fixed in a tangible medium of expression  No protection for simple dance moves like there’s no protection for short phrases  F. as a whole. musical arrangement.  E. or paints an original work of authorship on his own acquires the copyright upon the work’s creation  Copyright vests initially in the author or authors of the work o A. dramatization. or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. such as films or tapes. transformed. 486  Copyright in derivative work or compilation extends only to the material contributed by the author of such work. Ownership and Duration  1. constituting separate and independent works in themselves are assembled into a collective whole  Ex: Each story is copyrighted and then the arrangement in the newspaper is also copyrighted  §101 compilation is a work formed by the collection and assembling of preexisting materials or of data that are selected. Pantomime. or electronic equipment. fictionalization. anthology.  Law runs parallel to SCPA and for similar reasons  I. or any other form in which a work may be recast. if any. and Choreographic Works  A dramatic work portrays a story by means of dialogue or acting. Dramatic.

489  Facts: An artist and the organization that hired him to produce a sculpture contest the ownership of the copyright in that work. 2. o Only part (1) of §101 above is in question in this case o 4 interpretations of works by an employee within scope (1) a work is prepared by an employee whenever the hiring party retains the right to control the product. retained for less than 2 months. as a compilation as a test as answer materials for a test or an atlas if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire  Community for Creative Non-Violence et al. decided when and how long to work. as a supplementary work. salaried employees  Court adopts the (3) view because there is nothing in the statute or legislation history that Congress intended to define work made for hire.000 for material and Reid would donate his service. CCNV could not assign additional products. 1978 are subject to the broad view of work made for hire. Reid (1989) p. CCNV requested for the sculpture back after the display and Reid refused and obtained a copyright for it.any works created within the scope of employment or by an independent contractor is vested in the employer  Under 1909 copyright in work made for hire by an employee or independent contractor vested with the employer  1976 Act  §101 . 512)  11 . no benefits and no payroll of social security taxes. After going back and forth about materials and cost they agreed that CCNV would pay $15. o Factors to determine employee under common law on p. paid in a similar fashion on a per job basis like independent contractors are. (2) a work is prepared by an employee under §101(1) when the hiring party has actually wielded control with respect to the creation of a particular work. at least in part. Duration of Copyrights 511-512 o Joint owners are like tenants in common  Each owner may exercise rights to the copyright work without permission o Life of author + 50 years on average becomes 120 years and is later extended to Life of the author + 70 years by the Sonny Bono copyright Extension Act  Good to base of life of the owner because there is a definite time and makes it easier to calculate o Anonymous works or works made for hire shorter of 95 years from publication or 120 years from creation o Sonny Bono Copyright Term Extension Act of 1998 (CTEA) was upheld when challenged (reasons p. no daily supervision. supplied his own tools. and (c) it is actuated.A work made for hire is (1) a work prepared by an employee within the scope of his or her employment or (2) a work specially ordered or commissioned for use as a contribution to a collective work. v.  Discussion o §201(b) the employer or other person for whom the work was prepared is considered the author and owns the copyright. (3) the term employee within §101(1) carries its common-law agency law meaning. CCNV was to construct the base and Reid the 3 figures.had the intention that their contributions be merged into inseparable or interdependent parts  Comments and Questions o An employee’s work is deemed within the scope of his employment if (a) it is within the kind he is employed to perform (b) it occurs substantially within the authorized time and space limits.  Remanded to determine if Reid and CCNV are co-owners. CCNV came up with an idea for a sculpture and hired Reid to build it. had discretion in hiring and paying assistants. unless there is a written agreement to the contrary. Snyder in his capacity as CCNV’s trustee also filed for a copyright registration. by a purpose to serve the master o There is an exception to the work made for hire doctrine that prevents universities from claiming to own professors’ works under the works made for hire doctrine. 493  Held: Reid was not an employee of CCNV but an independent contractor o Reid is a sculptor. (4) the term employee only refers to formal. as a part of a motion picture or other audiovisual work as a translation. Works created prior to January 1. in his own studio.

 Copyright infringement may occur by two distinct sets of actors (1) those who directly infringe the rights of copyright holders. may be transferred as provided by clause (1) and owned separately.S. Transfer. the life +50 was required by the Berne Convention so it was rationale to get international protection but this additional 20 has no such logic o The Public Domain Enhancement Act would require U. dramatic. o (2) To prepare derivative works based upon the copyrighted work. dramatic. and choreographic works. to the extent of that right. including any subdivision of any of the rights specified by section 106. and motion pictures and other audiovisual works. and choreographic works. and pictorial. If the similarities are so similar as to preclude the  12 . Reclaiming Copyrights th  An inalienable right to terminate transfers of copyright between the 35 and 40 year from the execution of the transfer of rights for works created after 1977  Allows someone that creates something that becomes valuable to reap benefits  Can’t waive this right Traditional Rights of Copyright Owners  17 USC §106. to all of the protection and remedies accorded to the copyright owner by this title. Division and Transfer of Copyright Interests Under the 1976 Act  1976 Act eliminated restrictions on the formal divisibility of copyright interests. pantomimes. Exclusive Rights in Copyrighted Works p. The owner of any particular exclusive right is entitled. to perform the copyrighted work publicly by means of a digital audio transmission. Porter (1946) p. §201(d) provides: (1) the ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law. or by rental. o C. and o (6) In the case of sound recordings. and Reclaiming of Copyrights p. o (5) In the case of literary.  An exclusive right owner can bring suit without having to join the copyright proprietor  §204. pantomimes.requires transfers of copyright ownership signed in writing  §205 provides for the voluntary recordation of transfers with the Copyright Office. lease. o B. musical. but a transfer of any lesser interest as considered a license. including the individual images of a motion picture or other audiovisual work. and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession. 520  Plaintiff alleges that Defendant copied some of his songs. o (3) To distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership. (2) Any of the exclusive rights comprised in a copyright. o (4) In the case of literary. Copying  Arnstein v. to perform the copyrighted work publicly. Congress has this power but only the extra 20 years was challenged which was so minute compared to the life of the author + 50 that was already in place  Court didn’t want to strike down the extra 20 years because then they would have to strike the 50 years based on the same logic  Court was stupid  The legislative history is flawed because it was passed through very quickly  The idea of retroactive application doesn’t make sense because it doesn’t pursue the goal of getting people to create  Lastly. 519 o (1) To reproduce the copyrighted work in copies or phonorecords. musical. Division.execution of transfers.  Evidence of copying may consist of defendants admission that he copies or circumstantial evidence where copying can be inferred. authors to renew their copyrights for $1 after 50 years and again at 10 year intervals until the copyright expired  3. Division and Transfer of Copyright Interests Under the 1909 Act  A copyright owner could assign the entire copyright to another. to display the copyrighted work publicly. If there are no similarities no amount of evidence of access will suffice to prove copying. or sculptural works. 513 o A. and (2) those who encourage or assist a third party to infringe  1.  §101 defines transfer of copyright ownership to include an assignment or an exclusive license of any of the exclusive rights comprised in a copyright. The Right to Make Copies o A. graphic. or lending.E.

unless he set out to detect the disparities. o Even if the similar material is quantitatively small. setting. with the plaintiff asserting copyright infringement based on the defendant's use of similar story elements. playwright Anne Nichols. v.” J. pace. "her copyright did not cover everything that might be drawn from her play. with hilarity ensuing. Courts differ in the application of the sliding scale o Probative similarity and access are the two points on the sliding scale.dissecting the plaintiff’s work into elements  evaluating the protectability of each element  filtering out the unprotected elements  “golden nuggets”  Look at the golden nuggets and see if there is substantial similarity  Probably doesn’t work as well for more artistic work but does work well for software B. mood. he said. a motion picture play about a young Jewish man who marries an Irish Catholic girl against the wishes of both of their fathers. was the author of Abie's Irish Rose. applying a purely subjective perspective."  Held: In this case. Improper Appropriation  Nichols v.  Ty Inc. A lawsuit ensued. as the ideas that are copied are really universal concepts and stock characters. sequence. dialogue. Hand 13 . Nothing copyrightable was taken  The less developed the characters. characters) in the plaintiff’s work in order to determine the elements that are protectable under copyright law.o possibility that plaintiff and defendant independently arrived at the same result the issue will go to the trier of fact. who comprise the audience for whom such popular music is composed. and regard their aesthetic appeal as the same. would be disposed to overlook them. 525  Striking similarity is enough no need for access  Protected material. that defendant wrongfully appropriated something which belongs to the plaintiff  This is a matter for the jury  Dissent o There are only so many combinations and permutations that can be made using the same notes  Comments and Questions  For infringement you need (a) copying and (b) improper appropriation o For improper copying need to show that it was copyrightable  Circumstantial evidence to prove copying requires a sliding scale. However. GMA p.  Discussion: The question then is whether the part taken was 'substantial'.  Question is whether defendant took from plaintiff’s work so much of what is pleasing to the ears of lay listeners. stating. with hilarity ensuing. 527  Facts: The plaintiff. Martin Weiner Corp  “It is infringement if the ordinary observer. a film based on a play about an Irish boy who marries a Jewish girl from feuding families. its content went to some extent into the public domain. The objective test analytically dissects the objective manifestations of creativity (plot.  Actual copying can be proven by direct evidence or circumstantial evidence. The defendant then produced The Cohens and Kellys (which the court referred to as "The Cohens and the Kellys"). if it is qualitatively important the tier of fact may properly find substantial similarity o Copyright recognizes the maxim de minimis non curat lex – the law does not concern itself with trifles o Peter Pan Fabrics v. theme. Universal Pictures Corporation (1930) p.  Issue: The question before the Court was whether the defendant's film infringed the plaintiff's copyright in the play by using similar elements.9 Circuit has bifurcated the analysis into an objective and subjective test. there was no infringement. it is impossible to set a firm boundary demarcating the line between work and ideas. the less they can be copyrighted  Comments and Questions th o Test for Improper Appropriation. determines whether the defendant’s work improperly appropriates the plaintiff’s protected expression. In the second stage of analysis the trier of fact.

expression Dichotomy  2. condensation. Inc. motion picture version. 539  Facts: CA-SCHEDULER is a job scheduling program which specified when computers should run various tasks. musical arrangement. 556 o Copyright law has expanded to afford the copyright protection in a wide range of derivative media o §101 The Act defines a derivative work as a work based on one or more preexisting works. such as translation. or other modifications which. Copyright Protection for the Non-literal Elements of Computer Programs  1. art reproduction.5 using the ADAPTER source code. dramatization. Evidentiary Analysis  The court used a system to break down the code and eliminate all aspects that were not copyrightable and then compare what was remaining. 552. p.  Court builds on Hands Levels of Abstraction model o A. It also includes a work consisting of editorial revisions. Bando Chemical Indus. 557 o 14 . In 1982 Altai began marketing its own scheduling program called ZEKE.  Comments and Questions o The Altai test was rapidly adopted by most courts o Gates Rubber v. abridgement. represent an original work of authorship.expended on Altei test o Limitations on the Exclusive Right to Copy p. as a whole. annotations. transformed. Arney went from CA to Altei and developed OSCAR 3. elaborations.  The court held what was remaining was not enough to find for copyright infringement  Held: The only thing that is protectable is the code and at that level there was no substantial similarities. (1992) p. fictionalization. Substantial Similarity Test for Computer Program Structure: Abstraction Filtration-Comparison  Step One: Abstraction o Break down to basic parts  Step Two: Filtration o (a) Elements dictated by Efficiency o (b) Elements Dictated by External Factors  Compatibility with other programs  Standard practices in industry  Mechanical specs of the computer where the program has to run o (c) Elements Taken from the Public Domain  Step Three: Comparison  3. Policy Considerations o B. or adopted. Altai. The District Court Decision  2. 555  Several statutory exceptions to this general rule forbidding copying  Archival Copies for public libraries  Ephemeral Copies by Broadcasters  Cover License  Non-Commercial Copies of Musical Compositions and Sound Recordings  Running Computer Software  Maintaining Computer Software  Fair Use 2. The Right to Prepare Derivative Works p. Derivative works are protected in §106(2) o Anderson v. ADAPTER is used to work with different operating systems. Congress in 1974 established the National Commission on New Technological Uses of Copyrighted Works (CONTU) to study the implications of the new technologies and recommend revisions to federal intellectual property law  CONTU concluded in 1978 that the intellectual work embodied in computer software should be protected under copyright law  Congress adopted CONTU’s recommendation in 1980  Computer Associations International v. or any other form in which a work may be recast. Idea v. sound recording. A sub program ADAPTER also developed by CA is an integrated component of CA-SCHEDULER and has no capacity for independent use. Stallone (1989) p.

The court said this was an unauthorized derivative th work.  103(a) the subject matter of copyright … includes compilations and derivative works. II. Facts: After creating Rocky I.There the court enjoined the publication of a Seinfeld trivia book called the Seinfeld Aptitude Test. The Distribution Right o Copying and selling a copyright owner’s work without authorization violates both the right to copy and the right to distribute  15 . Carol Publishing Group. but protection for a work employing preexisting materials in which copyright subsists does not extend to any part of the work in which such materials has been used unlawfully  Held: The characters and relationships in the Rocky series are delineated so extensively that they are protected from appropriation  Rationale: The court finds that Anderson’s treatment is not entitled to copyright protection (a) the Rocky characters developed in the first 3 constitute expression protected by copyright independent from the story in which they are contained (b) Anderson’s treatment appropriated these characters and created a derivative work based upon these characters without Stallone’s permission in violation of §106(2). th o 7 circuit says mounting a picture on a tile does not make a work a derivative work o A derivative work has to transform or adopt the original not just cut it out and paste it  Consequences could lead to framing something or putting a picture on the wall that would change the visual effect. the court concluded that these facts constituted copyrightable expression and the defendants could not prevail on a fair use defense  P.R. Alburqurque A. Anderson wrote a script for Rocky IV and gave it to Stallone and MGM. Person drew picture based on some stills and won the contest and refused to sign the contract the studio offered her. Company 1997) p.T. 3. 569 o Plaintiff relies on Mirage v. The court reasoned that the book infringed the copyright in the Seinfeld television series because it took numerous facts from the episodes created by the copyright owner. After Rocky IV was created Anderson sued for copyright infringement. 7 circuit rejects this case o That case is different because many pictures were used from one book. 562-563 Wizard of Oz had a contest to make collectable plates.R. Because Seinfeld was fictional. No part of the Treatment Can be Granted Copyright Protection o Anderson alleges that the House Report on §103(a) indicates that Congress intended protection for the non-infringing portions of derivative works such as his treatment o The case law interpreting §103(a) also supports the conclusion that generally no part of an infringing derivative work should be granted copyright protection  Comments and Questions  Castle Rock Entertainment v.defendant took pictures from a book and put them on titles. and III Stallone described general topics and themes of Rocky IV. Anderson’s Work is an Unauthorized Derivative Work o Work is derivative only if it would be considered an infringing work if the material which it had derived from a prior work had been taken without the consent of the copyright proprietor work o The characters were clearly lifted from the prior Rocky movies  4. Since Anderson’s Work is Unauthorized Derived Work. (c) no part of Anderson’s treatment is entitled to copyright protection as his work is pervaded by the characters of the first three Rocky movies that are afforded copyright protection  1. Visually depicted characters can be granted copyright protection o Copyright protection is granted to a character if it is developed with enough specificity so as to constitute protectable expression  3.T. A. . o Court said the picture was too close to the original stills and therefore wasn’t protectable  Lee v. The studio then hired someone else to paint the same picture and there was a question whether the picture was a derivative work.

LLC v. As such the court found that the first sale doctrine superseded the End User Licensing Agreement  Things marked “Promotional Use Only-Not for Sale” does not supplant the first sale doctrine  The right to import and the first sale doctrine conflict in situations in which companies legitimately acquire inexpensively priced copyrighted products in a region of the world with low prices and export them to the US for resale  Several courts have held that the first sale doctrine does not nullify the §602 importation right in these circumstances 4. Inc. Adobe order to preserve this ability to maintain price differential across national borders. as are distance learning broadcasts made by accredited. if it moves it’s a performance and if it stays still it’s a display o No public display right exists in architectural works. Record stores may play records without charge to promote their sale under §110(7)  Congress substantially broadened an exemption for home listening of transmitted performances to extend to small businesses. o Importation right. 572 o §109(c) the owner of a lawfully owned copy can display a picture in a private display can even display in public if it is the single piece bought o §101 defines public. also commonly referred to as the exhaustion principle provides that a copyright holder cannot restrict subsequent resale or distribution by a purchaser of a particular lawful copy. §110(2). the court determined that a single payment giving the buyer an unlimited period in which it has a right to possession is a sale. whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times  Number of people present doesn’t matter o Public Performance of Sound Recordings p. US has not changed law to comply with Berne Convention  Compulsory Licenses  Cable Retransmission  Satellite Retransmission o 16 . by means of any device or process. and larger establishments conforming to limitations on the number of loudspeakers and television screen size §110(5) o WTO panel concluded that §110(5) operated on too large of a scale.a place of open public or any place where a substantial amount of persons outside of a normal circle of a family and its social acquaintances is gathered or  (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public. A Congressional Research Service showed that a high percentage of establishments qualified for the exemption. §602 affords copyright owners a right to prohibit commercial importation into the US of copyrighted works acquired abroad o Comments and Questions  In Softman Products Co. and only for personal or educational use o Showing artwork in a gallery without authorization is not copyright infringement but showing a movie in a theater is infringement o To perform or display a work publicly definition p.1 million in damages per year to bring its law into compliance. US has agreed to pay $1. §109(a). Religious performances §110(3). 574 o Statutory Limits on Performing Display Rights  Public Interest Exemption  Most live educational performances and displays are exempt under §110(1). and only a limited public performance right exists in sound recordings o §109(c) provides that the owner of a particular copy of a work is entitled to display it to viewers present at the place where the copy is located  Exceptions to first sale limit:  Can’t rent records or software  Can’t import into US copies acquired outside US – unless lawfully acquired outside US fit in personal baggage. Limitation on the exclusive right to distribute is the first sale doctrine. Public Performance and Display Rights §106(3) o As a rough approximation. Face to face performances of nondramatic literary or musical works for free or for chartiable purposes §110(4). restaurants. This doctrine. nonprofit educational institutions.

a group of movie studios. Specific Intent to affirmatively cause infringement G. o Ability to control infringer and receives financial benefit from infringement  Contributory liability. or even against his order  Vicarious Liability. or other derogatory action in relation to the said work. 577-578 o Berne Convention requires that even after the transfer of copyrighted works. and to object to any distortion. Gem Elec. Jukeboxes  Public Broadcasting  Webcasting  5. Knowledge of infringement. the author shall have the right to claim authorship of the work. mutilation. does not constitute contributory infringement if the product is widely used for legitimate. induces. o 2. if the playing be for the profit of the proprietor of the dance hall. or materially contributes may be held liable as a contributory infringer o Aid and abetting someone else’s infringement o Ex: Elektra Records v. or mutilation or other modification of.courts extended liability to those who profit from infringing activity where an enterprise has the right and ability to prevent infringement o Ex: The owner of a dance hall at whose place copyrighted musical compositions are played in violation of the rights of the copyright holder is liable. unobjectionable purposes (time shifting) o The Betamax is therefore capable of substantial non-infringing uses  Time-shifting  Some content is not copyrightable  Permission from copyright owner o No vicarious liability because Sony has no contact and no control over the consumer o Notes  Indirect Infringement  Type A (Materially Contribute): o who with knowledge of the infringing provided a machine to make copies of tapes  Sony Corporation of America v. (1984) o Facts: The respondents.the master is civilly liable in damages for the wrongful act of his servant in the transaction of the business which he was employed to do. sued the makers of video cassette recorders (VCRs or VTR’s in the opinion) alleging that they were liable for contributory copyright infringement because consumers bought VCRs and used them to tape movies and other programming broadcast by television stations o To prevail. Supply component adopted for. and o 3. conservation efforts  Fair use and parody F. Sony didn’t encourage copying or enter any Ks other than at sale o The sale of copying equipment. which would be prejudicial to his honor or reputation o Visual Artists Rights Act of 1990 directly recognizes moral rights of visual artists o §106A rights of attribution and integrity o For one of a kind or limited edition works of creation categories of visual art o Protection afforded against  False attribution  Intentional distortion. causes. Distribs. o Legal uses of Betamax exist.C. Fair Use o 17 U. Universal City Studios Inc. although the particular act may have been done without express authority from the master. or other modification prejudicial to the author’s honor or reputation  Destruction of a work of recognized stature o Limits and Exceptions  Works made for hire  Modification due to passage of time. Indirect Liability  Respondeat Superior. Moral Rights p. Universal has the burden of proving that the users of Betamax have infringed their copyrights and that Sony should be held responsible for that infringement. like the sale of other articles of commerce.. No substantial non-infringing use  Type B (Induce) o 1. Defenses  1. Limitations on Exclusive Rights: Fair Use 17 . §107.

000 words but a high percentage of the value because they were the juiciest topics o Little summary has some value but no independent analysis  4. independent analysis and no value added  2.500 it didn’t pay yet. The nature of the copyright work. Reuters (liability found) o no transformation only passed along most compelling sequence o nature. A part of the book about Nixon’s pardon was going to be in Time Magazine. Factors to consider are:  1. Geis. Becomes the 4 factor  3.against fair use o favor of fair use o Took a lot of footage and the most compelling part. Excerpt was substantial enough o 1% of the 200. Amount and substance of copyright work used (transformation)  Copying exactly is less harm than if copying without commercials or key scenes  Using the whole amount is fairer than editing it  18 . Court found Navarsky was trying to gain readers not provide news o Commercial o no clean hands o no real transformation. Videotaping  Sony Corporation of America v. The Nation got a hold of the article and printed it ahead of Time.Time shifting which is fair  They have clean hands o 2. Inc. comment. The effect the use upon the potential market for or value of the copyrighted work  The fact that a work is unpublished shall not itself bar a finding of fair use  Congress indicated that the list of factors in section 107 is illustrative rather than exhaustive o Time v. 606  Taking the case through §107 Fair Use factors o 1. Navarsky argues that he was providing news for the public and only used 300 words  §107. Inc. is not an infringement of copyright. Unpublished work has more rights than published o It’s going to be published o Author gets right of first publication o Leans toward fair use  3.The fair use of a copyrighted work. v. 593  Facts: Harper Row owned the copyrights of an autobiography of Gerald Ford. including such use by reproduction in copies or phonorecords or by any other means specified by that section. Harper and Row sue Navarsky the editor of The Nation for copyright infringement. news reporting. Time paid for the right to use the piece before the book came out. (1984) p. Universal City Studios. including whether such use is of a commercial nature or is for nonprofit educational purposes  2.against fair use o They compete for customers – no fair use o A. sanctions the unauthorized use of quotations from a public figure’s unpublished manuscript  SC used the 4 factor test to determine whether the use was fair:  1. Publishers. There was evidence of effect because Time cancelled their contract o Hurt sales of book  Held in favor of Harper and Row  Comments and Questions  Fair use often found for non-profit and educational uses  Los Angeles v. Marsh . or research.Factors developed by Justice Story seem to be the same factors that we use today but in a different order o Harper & Row. Purpose. for purposes such as criticism. Time cancelled its piece and refused to pay the remaining $12. teaching (including multiple copies for classroom use).put definition of fair use on the board o Origins of Fair use  Folsom v. and  4.documents a historical informational event and was already published. scholarship. The purpose and character of the use. Nation Enterprises (1985) p. The amount and substantiality of the portion used in relation to the copyrighted work test as a whole.

and the profit motive was indirect.injunction from having a fast forward button on the remote o Should have gave more evidence that people were fast forwarding commercials o o o B.  4. Plaintiffs (83) publishers bought suit claiming unauthorized photocopying. Inc. (favors fair use) o The amount of the original work used. However. However.  The Court found that the scientific articles were non-fiction.  The Appellate Court applied §107 four factor test o Is the purpose and character of the use commercial or non-commercial?  Texaco argued that while they are a for-profit company. Acuff-Rose Music. The court looked at one scientist’s collection of 8 articles. which gives them less protection than creative works. so making copies didn't hurt the publisher’s sales. (against fair use)  Held: Texaco's copying was not protected by fair use. so copying 100% of an article count's as using 100% of a copyrighted work. 620 (Coursepacks).  Texaco argued that the publishers didn't sell back issues of the journals.  Texaco argued that while it was true they were copying an entire article. the Court found that was still a commercial use.14 C. 622 19 . Texaco claims a defense of fair use. Effect on potential market value  Evidence of harm was speculative and there were parties who want their work recorded  Court said it’s possible that this is good for the industry because there is increase in viewers Held: Home time shifting is a fair use Comments and Questions o Relief that should have been sought.the court rejected Kinko’s fair use defense.R. Parodies  Copyright law affords parodists a wide berth in drawing upon protected works  Can’t get licenses because no one is going to let you ridicule them  For it to be a parody there has to be some indication of the target of the parody but there shouldn’t be more (although there often is)  Distinguishing between parody and satire and farce  Parody makes fun of the work or the author itself  Satire. (1994) p. o The effect on the potential market. Photocopying  American Geophysical Union v. 611  Facts: Employees at Texaco were encouraged to make copies of journal articles for the own personal use for future needs. §201. largely on the grounds that the copy shop is a for-profit organization o Section 108 exempts libraries from liability for copies made on their premises as long as they post a warning notice as specified in 37 C.  Comments and Questions o Basic Books v. they were weren't copying a large percentage. the Court found that each article has an independent copyright. the Court found that publishers could negotiate licensing rights (under the Copyright Clearance Center (CCC)) to get royalties for reprints. (1994) p. However.F. Therefore Texaco's unauthorized copying hurt the publisher’s potential for making money. if you look at the complete body of all the articles in all of the journals. Kinko’s Graphics Corp (1991) p. (against fair use) o The nature of the copyrighted work.uses copyright work to make fun of something else not the copyright work o It’s much more realistic to be able to get a license if you are criticizing something else than if you are using it as a parody  Farce is when there is no real target and you just use the defendants work for another purpose (Weaker candidate for fair use )  Campbell v. Texaco Inc. the scientists were copying the articles for science.

Campbell argued that he was protected by the fair use provision (17 U. It is just one factor to be considered. Acuff-Rose argued that fair use was not applicable because Campbell appropriated the work for commercial use. Not a market substitute but might be mistakenly purchased. The Court used the four-factor test. Campbell asked Acuff-Rose for permission to make a parody version of the song that he claimed was intended to "through comical lyrics to satirize the original work. Since Campbell substituted mostly his own lyrics. then they might have a case. They said no.  The Court found that Campbell had used the 'heart' of the original work. it couldn't be said that he took more of the original work than was necessary.  The Court found that in general parodies do not harm the marketability of the original work because the two serve different market functions.  Expressive value is quite different and 2 live crew contributed a lot o The nature of the copyrighted work. but that copying the 'heart' is required in order to be a successful parody.If Acuff-Rose could show that they lost the chance to sell the rights to another parodist because of Campbell's version.  It can only be parody if you can recognize the original material.  They are both songs so it is against fair use o The amount of the original work used. depending on the specific circumstances.  Weakly favors fair use o The effect on the potential market. Campbell made the song anyway. Remixes  Bill Graham Archives v.  The Court found that this didn't really apply since the artistic value of parodies is often found in their ability to invariably copy popular works of the past. (derivative work argument). Purpose is different because they are consumed by different parties and there are different social benefits  2. Acuff-Rose sued for copyright infringement. which they sold to Acuff-Rose.      Orbison and Dees wrote a song called 'Pretty Woman'. whereas satire can stand on its own two feet and so requires justification for the very act of borrowing Comments and Questions o Professor. There is an association created that is to the disadvantage to the copyright owner  Distinguish Orbison case: more work is taken in the Seuss case and there is no confusion between the two songs o D. comments on the author’s works o Parody need to mimic an original to make its point. at least in part. Against fair use because Seuss would not have made this book  3. and so has some claim to use the creation of its victim’s imagination. (2006) p.C.  No one that has 2 live crew’s song would not buy roy Orbisnons song if they heard it Held: Remanded. The US Supreme Court noted that parodies in general might be covered by fair use or they might not. 635 20 . Dorling Kindersley Ltd. §107) because his song was a satire of the original. o Is the purpose and character of the use commercial or non-commercial?  The Court found that just because Campbell's use was commercial doesn't create a presumption that it is not fair use. The style was taken and even some of the characters were taken but not the text (goes against fair use)  4.S. If not then it is a fair use The court defined parody as the use of some elements of a prior author’s composition to create a new one that.There’s not really parody in 2 live crew’s song because it doesn’t take a shot at Roy Orbison or the copyright work o OJ book using the Cat in the Hat  No fair use and work is impermissible  1.

BGA does not suffer Held: Balance of Factors.  Creative commons helps authors who want to reuse or remix another authors works using four categories of permission: (1) attribution – requires users to attribute the original author. The two parties negotiated but to no avail. o The images constitute less than 1/5 of 1% of the book o Does not weigh against fair use Effect of the Use upon the Market for or Value of the Original o Analysis requires a balancing of the benefit the public will derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied o Whether DK’s unauthorized use usurps BGA’s potential to develop a derivative market o Look at potential revenues for traditional. recognizing such works as forms of historic scholarship.  Open source listings by software developers encourages a culture of free software  Other Defenses  Independent Creation  Consent/License  Inequitable Conduct  Copyright Misuse  First Amendment  Immoral/Illegal/Obsene Works  Statute of Limitations 21 . (2) modification – the author can designate whether the work can be modified (3) share and share alike – anyone using the work agrees to make the resulting work available on the same basis and (4) non-commercial use – the work may be used for non-commercial purposes.uses that are productive and employ the protected material in a different manner or for a different purpose. and comment that require incorporation of original source material for optimum treatment of their subjects o The purpose was also separate because in the past the images were used to promote Grateful Dead but now they are used to show a timeline of events o The first fair use factor weights in favor of DK because DK’s use of BGA’s images is transformatively different from the images’ expressive purpose and DK does not seek to exploit the images’ expressive value for commercial gain (not used in advertising) Nature of the Copyrighted Work o Even though BGA’s images are creative works. The book contains thousands of pictures in 480 pages.Fair use factors weigh in favor of DK’s use o Summary of the case p. which are a core concern of copyright protection. Defenses  Transformative use.      o Facts: DK published Grateful Dead: The Illustrated Trip in collaboration with Grateful Dead Productions. reasonable. the visual impact of their artistic expression is significantly limited because of their reduced size. BGA claims to won the copyright to seven images in the book which DK reproduced without BGA’s permission. or likely to be developed market o Since DK’s use of BGA’s images falls within a transformative market. Purpose and character of use o DC said because the pictures were reduced in size and are used to describe historic events in a creative fashion the first factor is weighed in favor of DK  Court agrees stating that courts have frequently afforded fair use protection to the use of copyrighted material in biographies. the second factor has limited weight in the analysis because the purposes of DK’s use was to emphasize the images’ historical rather than creative value Amount and Substantiality of the Portion Used o Even though the copyrighted images are copied in their entirety. 1. criticism. 641 G.

SteamCast made itself out to be the replacement of Napster. it may be impossible to enforce rights in the protected work effectively against all direct infringers. who distributes a device with the object of promoting its use to infringe copyright. 684 o Facts: Grokster and StreamCast were sued for providing Peer-to-Peer networks where users could download software and share copyrighted files across the network without the companies providing any sort of server. v. Anticircumvention Prohibitions  F. Both companies were given the opportunity to implement limiting tools but they denied the help to prevent infringement. alleging that the Rio violated the requirements for digital audio recording devices under the Audio Home Recording Act of 1992 because it did not employ a Serial Copyright Management System and Diamond Multimedia failed to pay royalties on sales of digital audio recording devices o The Ninth Circuit held that the Rio device did not implicate the AHRA and dismissed the action. Online Service Provider Safe Harbors  2. The two companies allege that the people sharing the files have a right in those files and that the software is used for non-infringing purposes o Discussion: When a widely shared service or product is used to commit infringement. o Law: One.  MGM Studios Inc. Through the two companies’ advertisements and schemes it was clear that they were set up in order to help users download copyrighted works. is liable for the resulting acts of infringement by third parties. 22 . the only practical alternative being to go against the distributor of the copying device for secondary liability on a theory of contributory or vicarious infringement. The court analogized this “space shifting” with the Sony “time shifting” saying it was paradigmatic noncommercial personal use  ReplayTV was sued for having a 30 second advance button on its remote to skip commercials. Webcasting  D. Digital Hardware devices  First MP3 player was the Rio 300  The RIAA brought suit to enjoin the manufacture (Diamond Multimedia) and distribution of the Rio. Digital Copyright Law p. Search Engine. Services. The district court required Napster to be 100% accurate ensuring that no infringing files were indexed on the system. (2005) p.o H. 666  1. Enforcement p. Digital Audio Tape Devices  C. Criminal Enforcement  E. Prohibition on commercial record and software renewal o The sound recording industry became concerned with recording technology so they got Congress to amend the first sale doctrine to prohibit the rental of sound recordings.  B. and Software  Peer-to-Peer Networks o The Ninth Circuit concluded that Napster’s direct knowledge of copyright infringement by users of its software and its ability to control such activities through the index of file names maintained on its central servers created a responsibility to remove links to infringing content and engage in efforts to police its network. Ltd. ReplayTV went bankrupt before the legality of its device could be evaluated o TiVo never had this problem because it didn’t have that button and worked with the providers  B. o Held: On remand MGM’s motion for summary judgment should be reconsidered o Concurrence: different form Sony because here there is no finding of any fair use and little beyond anecdotal evidence of noninfringing uses. Grokster. 682  Recording Industry of America (RIAA)  Motion Picture Association of America (MPAA)  A. Digital Copyright Legislation  A. Both companies make money through the use of advertising and make no money from the end users.

Fair Use in Cyperspace  Perfect 10. Perfect 10 argues that Google is like Napster but the court says Google does not own a collection of Perfect 10’s full-size images and does not communicate these images to the computers of people using Google’s search engine o Perfect 10 fails on the display right. distribution right o Fair use  A work is transformative when the new work does not merely supersede the object of the original creation but rather adds something new.  The nature only weighs slightly in favor of Perfect 10 because the pictures are already available on the internet.000 per work. Attorney Fees  §505 of the Copyright Act authorize the award of attorney fees in the discretion of the courts to prevailing parties.  RIAA shifted focus from end users toward enlisting ISPs to warn and notify customers engaging in large-scale file sharing  3.  Google’s use of thumbnails is highly transformative. (2007) p. reproduced. Google only provides a thumbnail of the image and a link to the full size image that is stored on someone else’s website. Statutory Damages  Where the plaintiff has not proved that the defendant intentionally infringed the court must award between $750 and $30. or otherwise communicated and thus cannot communicate a copy. Where willful infringement could be up to $150. and failed to take such steps o Remanded for the issue of contributory liability using this test J. librarians. The Google search says where and how to find the full size images but does not itself distribute copies. Perfect 10 claims that Google’s search engine program directly infringes two exclusive rights granted to copyright holders: its display rights and its distribution rights. The thumbnail does not serve the purpose of the artistic value of the picture it serves to show where to locate the picture. Inc. that their infringing conduct constituted fair use  3. and broadcasters from statutory damages if they believed. could take simple measures to prevent further damage to Perfect 10. o Held: Google’s use of the Perfect 10 thumbnails is a fair use and Perfect 10 fails on the display/distribution right o Perfect 10’s argument that users will use the thumbnail to use on their phone was not found at the district court and therefore remains as a hypothetical o Although there is a fair use Google can be held contributorily liable if it had knowledge that infringing Perfect 10 images were available using its search engine. 702 o Facts: Google’s image search brings up images from Perfect 10 that Perfect 10 has not authorized Google to use. End Users  Because of the nature of the internet and transferring files there is substantial evidence gathering challenges and jurisdiction challenges that must be overcome to catch end users who are infringing – especially without the help of the Internet Service Providers. Enforcement of Remedies p.  The copyright Act exempts teachers. Introduction 23 . with a further purpose or different character. o Discussion: Google does not have any material object in which a work is fixed…and from which the work can be perceived.000 per infringed work. altering the first with new expression meaning or message.  Amount and substantiality of the portion used does not weigh in favor of either party because the whole image must be copied for the user to be able to identify it and find out if they want more information regarding it  Effect on market. and has reasonable grounds for believing. v.TRADE SECRET PROTECTION A.Google’s use of thumbnails is not a substitute for the photographer’s full-size images. 730  B.  CHAPTER 2.o C. Amazon.

Overview of Trade Secret Protection o Uniform Trade Secrets Act (UTSA p. Fourtek. Bielefeldt and several other former Therm-O-Vac employees formed Fourtek and began producing carbide reclamation furnaces which utilized the modifications developed by Metallurgical.  Matters of general knowledge in an industry cannot be appropriated by one as his secret  Protection measures p. v.reverse engineering.make mistake and gets into public hands o Accident of dissemination may result in a protection o Disclosure via the product. by an implied duty. Heisley  Restatement of Torts: 6 factors to consider o The extent to which the information is known outside the claimant’s business  24 . it need not be absolute  We conclude that a holder may divulge his information to a limited extent without destroying its status as a trade secret  Metallurgical revealed its discoveries as part of business transactions with two companies in order to make a profit  No question exists that Metallurgical expended much time. Subject Matter  1. Inc. Defining Trade Secrets o Metallurgical Industries Inc. by contract. 39  Facts: After Metallurgical purchased a furnace for the reclamation of carbide from Therm-O-Vac they needed to make extensive modifications to it to make it function the way they wanted to. v. Inc. (1986) p. Bielefeldt. 36) has been enacted by 44 states and the DC o 3 elements of a trade secret claim  1.SI Handling Systems. was involved to a small degree as a consultant in these modifications.  3. and money to make the necessary changes  Because each case must turn on its own facts.2. 41  Smith argues that others knew and therefore there is no legal protection  Held: Although the law requires secrecy.  This duty can either arise by explicitly.  Protects any valuable information so long as the information is capable of adding economic value to the plaintiff  2. an employee of TOV. or it may be apparent o Independent discovery  Some courts have suggested that a trade secret may be no more than merely a mechanical improvement that a good mechanic can make. After TOV went out of business. Subject matter involved must qualify for trade secret protection – it must be the type of knowledge or information that trade secret law was meant to protect. Plaintiff must have taken reasonable precautions under the circumstances to prevent its disclosure. Metallurgical brought a claim against Fourtek for misappropriation of a trade secret in utilizing the modification process which Metallurgical had developed. and implicitly. no standard formula for weighing the factors can be devised  The definition of trade secret will therefore be determined by weighing all equitable considerations  Comments and questions  Can lose status through public disclosure or inadvertently. A trade secret plaintiff must prove that the defendant acquired the information wrongfully.  Elements of trade secret misappropriation: o There has to be a trade secret  Information not generally known  Information not readily ascertainable  Reasonable efforts to maintain secrecy  Commercial value o Misappropriation. effort.  That the defendant misappropriated the trade secret o In many cases a defendant’s use or disclosure is wrongful because of a preexisting obligation to the plaintiff not to disclose or appropriate the trade secret.obtaining information by:  Improper means or  Breach of confidence or  Known accident B.

 The extent to which it is known by employees and others involved in the business The extent of measures taken by the claimant to guard the secrecy of the information o The value of the information to the business and its competitors o The amount of effort or money expended by the business in developing the information o The ease or difficulty with which the information could be properly acquired or duplicated by others  Rohm & Haas Co. Vendors were also contractually required to return drawings once an order has been filled but this requirement was not enforced by Rockwell as some vendors may need to fulfill more orders for the same part in the future. etc. DEV Industries. and not being readily ascertainable by proper means by. in part because the defendants did not in fact obtain the information from those publications  Restatement (Third) of Unfair Competition. The employees had to sign out the drawings and return them when they were finished. does not invalidate the trade secret.  The greater the precautions taken the more likely it is that the defendant’s act is unlawful and taken through misappropriation o o 25 . from not being generally known to. The court nonetheless concluded that it was protectable trade secret. (1983) p. DEV could not come up with an explanation of how they came into possession of Rockwell's piece part drawings by legal means. of ECC’s motors are not trade secrets in as obvious a way as a secret formula might be. Reasonable Efforts to Maintain Secrecy o Rockwell Graphyic Systems. Rockwell kept piece part drawings in a vault.defines trade secret as information that is both not generally known and the subject of reasonable efforts to maintain secrecy o (i) derives independent economic value. (1991) p. ECC should have let its employees know in no uncertain terms that those features were secrets. DEV was found to be in possession of 100 piece part drawings of Rockwell's which Rockwell claims were a trade secret. other persons who can obtain economic value from its disclosure or use and o (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy o Differs from Restatement of unfair competition which includes how much effort or money was expended to develop the information  Electro-Craft Corp v. v. Inc. the building which housed the vault being accessible only to authorized employees with identification. one of whom after being fired for removing piece part drawings from Rockwell's plant. Controlled Motion Inc. 46 o Harvey did in fact memorize the plaintiff’s formula and took it to Adco. v. which was necessary to the efficient exploitation of the trade secret. (1982) p. The dimensions. they could make copies but those had to be destroyed once the work was done. actual or potential. 49  Facts: Fleck and Peloso both left Rockwell to work for DEV.  Precautions are evident that there is real value and that the plaintiff expected protection  Held: Rockwell did enough necessary to protect its secret. many different companies can possess the same information and each protect it as a secret 2. Adco Chemcial Co.A trade secret is any information that can be used in the operation of a business or other enterprise and that is sufficiently valuable and secret to afford an actual or potential economic advantage over others o Under the new restatement.  The amount of security in protecting the trade secret is a factor in determining if there is a trade secret  Have to take into consideration the costs of precautions and benefits of precautions  Comments and Questions  Misappropriation of trade secrets is largely redundant if it does not reach any further than other torts  UTSA §1(4). Rockwell’s sharing of the piece part drawings with vendors. 54 o ECC’s efforts were especially inadequate because of the non-intuitive nature of EFF’s claimed secrets here. Inc. Vendors who produced the parts were allowed to see piece part drawings but both vendors and employees had to sign confidentiality agreements.

The court also denied Data General Corporation a preliminary injunction. The court found that the adequacy of secrecy precautions was not a matter of law and must be determined at trial. 66  Facts: The Christopher’s were hired to take aerial photographs of DuPont’s facilities. DuPont de Nemours & Co.  3. Trade secrets may be publicly disclosed by someone who has independently developed or discovered the secret  Religious Technology Center v. These design drawings were annotated as confidential. v. Certain lists can’t be exposed. Trade secret is better than patent because there is a risk that the patent is not accepted because it is not different and then becomes public. impossible to retrieve. Lerma p. Before receiving the computer.  Held for Data General: even a relatively widespread disclosure to customers does not compromise the secrecy of the computer design  Comments and Questions  Disclosure of a once protected trade secret can occur in a number of ways: o 1. 58  Facts: In 1970 Data General Corporation released the Nova 1200. Trade secrets may be disclosed inadvertently.C. Rolfe Christopher et al (1970) p. the president of Digital Computer Controls purchased a secondhand Nova 1200 from a third party. A trade secret owner may in some cases disclose the secret by selling a commercial product that embodies the secret o 3. Misappropriation of Trade Secrets  1. whether in an academic journal or any other forum o 2. the duration of injunctive relief should only be as long as necessary to reverse engineer the minicomputer. Digital Computer (1971) p. the party who merely down loads internet information cannot be liable for misappropriation because there is no misconduct involved in interacting with the internet o 4. The Restatement (Third) of Unfair Competition takes the same position o 5. thus denying summary judgment. reasoning that even if Data General Corporation won at trial. Patents are bad at covering the type of information that can be commercially exploited and kept a secret. Data General Corporation would include with the computer design documentation intended to allow customers to maintain and repair their own computers. In March 1971. Digital Computer Controls consequently moved for summary judgment. The drawings explicitly stated that they could not be used to manufacture similar items without the written permission of Data General Corp.  Data General Corporation requested a preliminary injunction barring Digital Computer Controls from selling the D-116 based primarily on a claim of trade secret misappropriation. Disclosure of Trade Secrets o Data General Corp.  26 . a minicomputer twice as fast as previous models. which the court determined was "substantially identical in design" to the Nova 1200. claiming that Data General Corporation had not adequately protected the secrecy of its proprietary information.I. Government agencies sometimes require the disclosure of trade secrets by private parties in order to serve some other social purpose. 62  Once a trade secret is posted on the internet it is effectively part of the public domain. A patent runs out and then the information is exposed. v. Although the person who originally posted a trade secret on the Internet may be liable for trade secret misappropriation.truly accidental  Uniform Trade Secrets Act 1(2)(ii)(C) provides that it is misappropriation for someone to disclose a secret that they have reason to know has been acquired by accident or mistake. Digital Computer Controls then used the design drawings to create the D-116 minicomputer. Because the plant was not completed the photographs exposed the process. and customers received a contractual agreement of confidentiality with their purchase. A trade secret owner may publish the secret. DuPont contends that it had developed a highly secret but unpatented process for producing methanol which gave it a competitive advantage. Improper Means o E. Upon purchaser's request. Digital Computer Controls requested the accompanying design documentation from the seller and subsequently photocopied the drawings.

Employee trade secrets  Note on the Common Law Obligation to Assign Inventions  (1) employees “hired to invent” which results in employer ownership of the invention  (2) employees who invent on the employer’s time or using its resources. but enjoining employees from calling on customers with whom they have had long-standing relationships raises serious concerns about employee the employer the right to intellectual property created by the employee while she was employed o Noncompetiton agreements. 85 o Generally an employee can’t take a trade secret from one employer to the next o SI Handling Systems v. 85  Among the elements to be weighed in determining trade secret status are the value of the information to its owner and to competitors. Issue: whether aerial photography of plant construction is an improper means of obtaining another’s trade secret? Yes  Discussion: The SC of Texas recognized and enforced s higher standard of commercial morality in the business world. To require DuPont to put up a temporary roof during construction is an unnecessary expense. skill and experience – even if these were acquired during employment.  Some states look to the likelihood of the trade secret being exposed  Virginia. geographic scope. nonexclusive shop right on the part of the employer to practice the invention  (3) an employee’s independent invention in which case the employee owns the invention  In Wexler v. Heisley p.  Held: DuPont has a valid cause of action to prohibit the Christopher’s from improperly discovering its trade secret and to prohibit the undisclosed third party from using the improperly obtained information  There is no intentional tort but the court still finds that this is misappropriation  Comments and Questions o Breach of Confidence. In theory an employer generally may not inhibit the manner in which an employee uses his or her knowledge. Supreme Court went out of its way to conclude that a departing employee was entitled to take formulas he had himself developed at his prior employer to work for a competitor. To obtain knowledge of a process without spending the time and money to discover it independently is improper unless the holder voluntarily discloses it or fails to take reasonable precautions to ensure secrecy. the court concluded that he was not in fact hired to invent and therefore owned the inventions he made  Note on Contracts That Restrict the Use of Trade Secrets  Employment agreements generally fall into one or more of 3 categories: o Confidentiality agreements.a confidential relationship is established in either an express or an implied way 4.  The district court on remand should fashion an injunction that extends only so long as is essential to negate any unfair advantage that may have been gained by the appellants o A. and the ease or difficulty with which the information may be properly acquired or duplicated  When a case such as the present one involves the concept of “know-how” under Pennsylvania law an employee’s general knowledge. was the chief chemist at the plaintiff. which results in a limited. skill and experience are not trade secrets.  Statutes provide that any employee invention assignment agreement that purports to give employers greater rights than they have under the statue is against public policy and unenforceable  27 .recite that the employee will receive confidential information during employment and that he/she undertakes to keep it secret and not to use it for anyone other than the employer o Invention agreement. Despite the fact that the employee. Greenberg the Penn.limit the circumstances in which former employees can compete for customers with their former employers  Enforceable to the extent they are reasonable (don’t need a TS)  Time limitations. California (most against noncompetes)  Prevents unfair competition against labor mobility  Customer lists are generally protectable as trade secrets. New York. The Special Case of Departing Employees p. Greenberg.

28 . and the Board affirmed the examiner.if necessary  Claims.PATENT LAW A. each plasmid providing a separate hydrocarbon degradative pathway. This human-made. An Overview of the Patent Laws o A. human-made micro-organism is patentable subject matter under 35 USC §101  Facts: Chakrabarty. Rights conferred by a Patent  Claims are the heart of patent law. a patent will not be withheld even though the invention works only in an experimental setting and has no proven use in the field or factory o B. Composition of Matter  Diamond v. Trailer clause. Requirements for patentability  Patent and Trademark Office reviews each patent application to see if it meets the five requirements (B. Introduction  1.a contract provision that requires employees to assign their rights not only in inventions (and other IP) made during the period of employment but also for a certain time thereafter. The Elements of Patentability  1. the patent term was changed to extend for 20 years from the date the patent application was filed B. composition.comprising (open terminology) the claim can site four elements and if defendants product includes those 4 plus a fifth there is still infringement. manufacture. Patentable Subject Matter o §101 of the statute define the categories of patentable invention broadly: any process. Consisting of (closed) if there is a fifth element the accused product is not infringing. Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals.Precise legal definition of the invention. o Enforceable only to the extent they are reasonable CHAPTER 3.elements/restrictions o Claims are written like a statute because people will try and get around it to get the same functionality without liability  2.  Independent claims.introduction o Transition. o A. Historical Background o Patere. 1-5 below)  Today. machine. filed a patent application for a bacterium from a genus Pseudomonas containing therein a least two stable energy generating plasmids. they do not refer to any other claim or claims  A dependent claim incorporates all the limitations of the independent claim on which it depends  Adherence to GATT-TRIPS.description of the technical problem faced by the inventor and how the inventor solves the problem  Drawings. Claims define the boundaries of the property right that the patent confers  Claims. or improvement thereof. 134  Cert granted to determine whether a live. genetically engineered bacterium is capable of breaking down multiple components of crude oil. 8  Act in 1790 created a 14 year term  1982 Federal Courts Improvement Act hears patent appeals o Parts of a patent  Specification  Description. Chakrabarty (1980) p.single sentence rule defining the invention o Preamble. a be open o Florence City Council had the Open Letter of Privilege o Venice patent act of 1474 made patents available and the requirements are similar to today’s statute o England in 1624 which allows for 14 years o US Constitution gives Congress power in Article I §8 cl. o Body.

and the denial was affirmed by the Board of Appeals within the Patent Office. or in an infringement suit o §101 Inventions Patentable-Whoever invents or discovers any new and useful process.there is insufficient justification for permitting an applicant to monopolize what may prove to be a broad field  Quid pro quo. though combined in a novel way.we give monopoly for your invention 29 . Because new plants may differ from old only in color of perfume. (1911) p.the mere ascertaining of the character or quality of trees that grow in the forest and the construction of the woody fiber and tissue of which they are composed is not patentable invention o Patenting human DNA sequences though not humans themselves. H. v.Davis these patents are considered valid. manufacture. Utility o Utility is relatively rare issue in the Patent Office. of course – is a booming general anything that is human made and not naturally occurring will fall into one of the four utility categories o Not covered are: physical phenomena. The change here resulted in ample practical differences is fully proven  Held: New use commercially and therapeutically makes a purified product patentable  Comments and Questions o Latimer. Manson (1966) p.K.  Held: Statutory requirement of usefulness of a product cannot be presumed merely because it happens to be closely related to another compound which is known to be useful  Unless and until an invention is refined and developed to this point where specific benefit exists in currently available form. Mulford Co. Application failed to disclose a sufficient likelihood that the claimed steroid would have similar tumor-inhibiting characteristics. Board concluded that §101 was not intended to cover living things such as these laboratory created micro-organisms  Issue: whether respondent’s micro-organism constitutes a manufacture or composition of matter within the meaning of the statute  Held: Patentable subject matter because it is not discoverable in nature  The laws of nature. Under Parke. machine. it became for every practical purpose a new thing commercially and therapeutically. physical phenomena. composition. differentiation by written description was often impossible  The petitioner’s second argument is that micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection o SC ruled on a narrow question.can’t patent a living thing or else Congress wouldn’t have passed these Acts o This argument is rejected and the Acts were created because plants were thought not amenable to the written description requirement of the patent law. and abstract ideas have been held not patentable. 142  Inventor discovered how to isolate a purified substance of significant medical use from the suprarenal glands of animals  The examiner would not allow these claims  The inventor was the first to make it available for any use by removing it from the other gland-tissue in which it was found. because they typically claim isolated and purified gene sequences   2. or improvement thereof o Brenner v.. while it is of course possible logically to call this purification of the principle. The ground for rejection was the failure to disclose any utility for the chemical compound produced by the process  Application showed that the adjacent homologue of the claimed steroid had been demonstrated to have tumor-inhibiting effects in mice. and. Kalo Inoculant Co.  The 1930 Plant Patent Act and 1970 Plant Variety Protection Act o Petitioner argues. still perform their same old natural function Parke Davis & Co. and laws of nature  Comments and Questions o Funk Brother Seed Co v. 167  A Patent Office examiner denied Manson’s application. abstract is no more than the discovery of some of the handiwork of nature and hence is not patentable  In Funk Bros the court emphasizes that the bacteria.

Procedures for obtaining a Patent p. declaring the inventors actually invented what is described in the specification. including a summary of the invention and drawings in most cases. which may be as early as the second office action  Filing a continuation resets the examination process. it must actually perform that function. (1999) p. This requirement excludes throw-away. such as the use of a complex invention as landfill as a way of satisfying the utility requirement of 35 USC 101  (b) if no assertion of specific and substantial utility for the claimed invention made by the applicant is credible. 181 (paperwork for patent)  The process of obtaining a patent from the Patent Office is known as Prosecution  The average prosecution takes about 2. which are changes made to the application before the examiner’s first response or office action  The most common office action followed this initial review is a rejection  Examiner has the burden to show why an application should not issue as a patent  Standard amendments are usually permitted up to the time when an examiner issues a final rejection. Otherwise it is not useful for achieving that function o Juicy Whip. Orange Bang. it must be converted into a standard. full-blown application within one year if it is ever to issue a patent. v. and the claimed invention does not have a readily apparent wellestablished utility. (3) an oath. though any information carried over from the original filing does  Detailed continuation process 182  If applicant appeals examiners rejection it goes to the board and if there’s a difference it is reviewed by the federal circuit court of appeals  Federal circuit is subject to supreme court review  United States International Trade Commission o Part of the executive branch that hears cases that involve foreign defendants whose exports into the US infringe patents  Sources of law. The basis of an application are: (1) the specification. 178  Patent submitted for a juicer that had artificial juice in view and tank behind  Held: The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement of utility. o PTO is not a source of law but has persuasive authority   30 . Not patentable Comments and Questions  New use patent or process patent. Describing and Enabling the Invention o a.  Much of the value of such products resides in the fact that they appear to be something they are not.each patent owner needs a license from the other for the new use  Utility for pharmaceutical products can generally be established by animal testing o Note on Patent Office Utility Guidelines  The Patent and Trademark Office (PTO) has promulgated guidelines for determining the specific utility of an invention  The PTO guidelines require that an asserted utility be specific. or nonspecific utilities. and (4) applicable filing fees  Applications are handled in the order they are received  Preliminary amendments. Thus.77 years  The typical application receives only 18 total hours of attention  Prosecution begins with the filing of a patent application. credible. (a)(1) a claimed invention must have a specific and substantial utility. A continuation-in-part by contrast adds new matter to the specification. A simple continuation application retains the benefit of the initial application’s filing date. at the end of the specification. and substantial  2. (2) one or more claims. reject the claims under §101 on the grounds that the invention as claimed lacks utility  Even if an invention is directed toward a certain function. in this case the claimed post-mix dispenser meets the statutory requirement of utility by embodying the features of a post-mix dispenser while imitating the visual appearance of pre-mix dispenser  Benign perception counts as utility and is good enough to get a patent 3. Although an inventor or his lawyer may file a temporary placeholder application called a provisional application. insubstantial. Inc. and US Code Title 35. This new matter does not retain the benefit of the earlier filing date. Inc.Constitution.

 Test for enablement. The real defendant was the Edison Electric Light Company. which I call electro-magnetism." o This was a bill in equity.431 patents filed only 169. The claims in the letters patent are too indefinite to be the subject of a valid monopoly.preferred oven temperature  Morse case p. in such full. developed. described in the foregoing specifications and claims the essence of my invention being the use of motive power of the electric of galvanic current. issued January 27. 1885. and the case involved a contest between what are known as the Sawyer and Man and the Edison systems of electric lighting.076. or parts of machinery. clear. 223. 317. or signs at any distance  SC denies patent because it is too broad  This claim is not enabled because the specification does not define a reasonable number of ways of sending messages except for one – using the telegraph  Arguably the claim is both too abstract and not enabled  i.whether a person of ordinary skill in the art would be required to engage in undue experimentation in order to make and use the invention o Illustrative factors. Disclosure Doctrines: Enablement and Written Descriptions  §112 of the Patent Act reads.  Written description. o Held: a patent must state with specificity the composition of the materials to be mixed together to produce the result intended to be obtained and if they are not capable of such exact description. to the Electro-Dynamic Light Company.351. Enablement  The Incandescent Lamp Patent (1895) p. to recover damages for the infringement of letters patent No. Edison.396 granted o 1. for an electric light.type of cake  Enablement.S. assignee of Sawyer and Man. Utility Patents o 2004. 185 th  8 claim. denied the novelty and utility of the complainant's patent. particularly No.The specification shall contain a written description of the invention. substantially as described. The defendants justified under certain patents to Thomas A. and averred that the same had been fraudulently and illegally procured. for "the incandescing conductor for an electric lamp. filed by the Consolidated Electric Light Company against the McKeesport Light Company.o U. letters.quantity of experimentation necessary o Presence of working examples o Amount of direction or guidance presented o Nature of the invention o State of prior art at the time of filing o Relative skill of those in the art  31 . for making or printing intelligible characters.I do not propose to limit myself to the specific machinery.898. then the inventor is not entitled to a patent. 1880. concise and exact terms as to enable any person skilled in the art to which it pertains … to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.2 million backlog o On average it will take 5 years to get a patent o Big surge in business method applications o Controversial categories  Living organisms  Computer software  Business Methods B. 186 o Sawyer and Man had a patent for a light bulb with carbonized fibers material o They only disclose carbonized paper which would work for 20 minutes o Edison was the first to invent a light bulb to work for practical purposes o The only fibrous material that worked was a bamboo from Japan o With the exception of the third claim. formed of carbonized paper. and of the manner and process of making and using it. issued May 12.recipe/ ingredients  Best mode. however.

The original claim said that the controls were mounted directly on the console. When viewed in its entirety.must convey with reasonable clarity that the patentee was in possession of the subject matter of the claims at the time the patent was filed. Gentry filed suit against Berkline alleging that Berkline infringed the patent by manufacturing and selling sectional sofas having two recliners facing the same direction.  ii. This “best mode” requirement is designed to prevent a patentee from holding back knowledge form the public. the disclosure is limited to sofas in which the recliner control is located on the console o Held: Sprole’s and Gentry were not entitled to claims in which the recliner controls are not located on the console. o Gentry amended their claim saying the mounted controls don’t have to be on the console but are on the double reclining sofa seat section. 196 o Facts: Patent was for a sofa with reclining chairs that faced the same direction which wasn’t possible before because controls were on the outside but this patent put the controls in a separating console. v. (1998) p. The Best Mode Requirement  §112 mandates that the patent disclose the “best mode” of carrying out the invention contemplated by the inventor. iii. (2) Once it is established that the inventor had a best mode it turns to whether one skilled in the art could practice the best mode of the invention 32 . Objective test. o Sproule (the inventor named in the patent) admitted at trial that he did not consider placing the controls outside the console until he became aware that some of Gentry’s competitors were so locating the recliner controls. The written Description Requirement  Written description test. 204. (1) Whether at the time of filing the inventor had a best mode of practicing the claimed invention. Subjective test: did the inventor consider one mode better than others at the time application submitted? o 2. specification need not disclose things known to person skilled in the art o Enablement allows you to make the invention the written description tells you what the invention is  The Gentry Gallery.2 elements to the best mode requirement doctrine. at the time of the patent application. Nowhere in the specification does Gentry say the controls can be mounted somewhere other than on the console o Courts aren’t supposed to limit claims because the best mode is stated however the inventor admitted he didn’t think of locating the controls anywhere other than on the console  Note on Written Description and Biotechnology o Comments and Questions  One possible benefit of the written description requirement is to preclude patent owners from later claiming what they did not think of at the time they filed their applications. Schein Pharmaceuticals Inc. Inc. No infringement because Berkline’s doesn’t use a console o Claim is enabled but not adequately described  There is enough in the application to make the couch where the controls are mounted somewhere other than on the console. o Must unambiguously describe all limitations of the claim o Considered distinct from enablement  For enablement. The Berkline Corp. p.did the application provide an enabling disclosure of the best mode  The inventor may list several possible modes of practicing the invention and need not specify which is his or her preferred embodiment  The inventor need not reveal later discovered preferred modes during the application process  Bayer AG v. in effect maintaining part of the invention as a trade secret while protecting the whole under patent law  The specification must disclose what the inventor believes to be. the best mode for making and utilizing the invention o 1.

National Lead Co.2-. Without the source code it was basically a trade secret. Claimed invention was the steps of a computer program rather than the code  Courts have given broad leeway under the enablement doctrine to software patentees o Comments and Questions  The rule that actual program code need not be disclosed in a patent specification is now well accepted. another inventor involved therein establishes. p. . (1955) p. o Anticipation.occurs when a single prior art reference discloses all the claimed elements o Titanium Metals v. Previously-filed application] the invention was described in (1) [a published patent application] by another filed in the US before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the US before the invention thereof by the applicant for patent or  (f) [Derivation] he did not himself invent the subject matter sought to be patented or  (g)(1) during the course of an interference…. or patented or described in a printed publication in this or a foreign country. Appellee argues that work carried on by Teplitz for the Gulf Oil Corp.  33 . o A. The Nature of Novelty (public use)  Rosaire v.Conditions for Patentability. v. from a time prior to conception by other. Vega Servo-Control. more than one year prior to the date of the application for patent in the United States or  (e) [Secret Prior Art. to the extent permitted in §104 … that before such person’s invention thereof the invention was made by such other inventor and not abandoned.  Reason is that if there is a description of the algorithms or flow charts or specific descriptions someone skilled in software design would be able to write the code. 204  Description wasn’t too broad because anyone skilled in the art could create the claimed invention. o If no best mode at the time of filing there is no best mode violation Note on Enablement of Software Claims o White Consolidated Industries Inc. known techniques. Datapoint Corp. invalidated both patents by reason of the relevant provisions or the patent laws which state that an invention is not patentable if it was known or used by others in this country before the patentee’s invention.9% nickel.4% molybdenum up to . Banner (1985)  Claim says a genius of titanium alloys consisting of about . the invention was made in this country by another inventor who had not abandoned. or concealed or (2) before such person’s invention thereof. or the invention thereof by the applicant for patent or (used in this country or published anywhere)  (b) [Statutory Bars] the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country. p. to be patentable. Novelty and Loss of Right to Patent p. there shall be considered not only the respective dates of conception and reduction to practice of the invention.  US patents are only protected in the US so anyone in another country could copy the US patent and paste it to create duplicated software 4. and marketed products.2% included 0%  The claimed invention was in a previous publication o §102. an invention must be somehow different from all published articles. Inc. 209  A person shall be entitled to a patent unless  (a) [Novelty] the invention was known or used by others in this country. Inc. In determining priority of invention under this subsection. 205  Identification of translator was not sufficient to discharge the applicant’s duty under §112. o Northern Telecom. suppressed.6-. Novelty and Statutory Bars o Novelty means new compared to the prior art. v. suppressed. 210  Facts: Plaintiff claims that in 1936 he and Horvitz invented a new method of prospecting for oil and received 2 patents. or concealed it.2% iron  Court found that Banner’s metal that contained 0% iron infringed because up to . but also the reasonable diligence of one who was first to conceive and last to reduce to practice.

218) provide that actual publication must take place not mere submitting to an editor to be published E. 212 the court used a high standard of proving that there was prior use of an invention and would not accept oral testimony alone.  Note on the Inherency Doctrine  Confusion on the §102(a) language which states that an applicant is not entitled to a patent if her invention was “known or used by others” prior to the date of the applicant’s invention. o Cases (p. o A drug metabolite inherently anticipates claim to metabolite o Different from Tilghman  The patentee in Tilghman didn’t know about the new benefit or the new utility  In Schering there was no different benefit of the metabolite from the original drug B. Priority Rules and the First to Invent p. o There was no knowledge of the prior art it was the benefit already in the prior art o Owner of the original patent is unaware of a secondary product that is made from his invention o First invention does not bar from subsequent inventions because the first inventor doesn’t know it exists and is not what he is trying to invent  In Schering Corp. o Claim the manufacturing of fat acids from glycerine from fatty bodies by the action of water at a high temperature and pressure. p. Proctor (1880) p. an inventor cannot obtain a patent by taking a previous product and put it to a new use even if the new result had not been contemplated. 214 o Invention for manufacturing soap from fats and oils. v. Questions of what happens when an inventor accidentally creates an invention and then intentionally makes the product. The inventor could obtain a patent on the new process using the product  A claimed invention can be anticipated by prior use even if the prior users did not know they were using the invention  Tilghman v. 1979 was rejected because of §102(b) publication bar of one year  Published means that it is accessible by the public not that someone actually accessed it  Comments and Questions o This case could be barred by §102(a) or (b). 215 the court invalidated a patent that was discovered to be useful that was created by the human body when ingesting Claritin. p. 216  An inventor’s own work cannot be cited against her under §102(a) but it can under §102(b)  In re Hall (1986) p. Flowertree Nursery. Inc.o o Held: that the patent was not valid because Teplitz was openly using the invention before there was a patent filing  Patentee admitted someone used this in the past but the patent should be allowed because the public didn’t know about the prior use o only a public use would kill the patent  Difference between nonpublic use and secret use. o Courts have held that the accidental product does not bar a patent on the invention of the product as prior art  However. 230  §102 Novelty and Loss of Right  34 . Statutory Bars: Publications p. 1977  The dissertation was made available in the general stacks in the library beginning in Dec. Geneva Pharms. A use that is non-public or public will kill a patent  Comments and Questions o In Woodland Trust v. 1977 o The court recognized this probable date by routine business practice  The patent which was filed February 27. 216  Foldi submitted his dissertation to the Department of Chemistry and Pharmacy at Freiburg University in the Federal Republic of Germany in Sept. Inc.secret use means it was concealed and kept as a trade secret.

conditions for patentability. non-obvious subject matter  A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title. to cover a wide range of potential infringement. without (2) abandoning the invention. o Screens out patents on trivial inventions o Graham v. or concealed. Graham got a patent in 1950 (`811) modified it and filed for a new one in 1951 which was granted in 1953. to the extent permitted in §104… that before such person’s invention thereof the invention was made by such other inventor and not abandoned. if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Subsection (2) covers the use of prior inventions as a course of prior art. Nonobviousness o §103. but also the reasonable diligence of one who was first to conceive and last to reduce to practice.The question of obviousness is one of law but rests on several basic factual inquiries including:  Level of skill in the art o Accused infringer wants the level of skill in the art to be high and impressive  Scope and content of the prior art  Differences between the prior art and the claims  Secondary considerations  Comments and Questions  Patentees not only want to have their patents upheld over the prior art. It set a condition that a patentable invention must be evidence of more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business.  Was it obvious to move the hinge clamp from under the shank to above it?  The Glencoe Spring Clamp was offered to show that Graham’s second clamp was not patentable because it provided the same results as the second clamp which means the results weren’t new and unexpected. suppressed. or concealed it. there shall be considered not only the respective dates of conception and reduction to practice of the invention. or (2) before such person’s invention thereof. but they also want those patents to be interpreted broadly. Patentability shall not be negative by the manner in which the invention was made. another inventor involved therein establishes. o Priority. a device that is an obvious extension of the state of the art for that type of device is not patentable  Hotchkiss v.subsection (1) covers interference proceedings – formal priority contests between rival claimants to the same patentable subject matter. the invention was made in this country by another inventor who had not abandoned. o g(2) only evidence of prior inventions made in the US may be introduced outside the inference context. (1966) p. John Deere Co. Greenword (1851) laid the framework for what constituted patentability.  §103 requires an inventive leap of some degree over what has been done before 35 . In determining priority of invention under this subsection. suppressed. if the first conceiver was diligent in reducing to practice.  A person shall be entitled to a patent unless – (g)(1) during the course of an interference ….  SC. These goals are in tension with each other. In g(1) any WTO country may introduce evidence Priority generally goes to the first inventor to (1) reduce an invention to practice. o Exception is that priority may be retained.  Facts: Graham obtained a patent to fix a problem with shanks on plows that would break when hitting rocks and other obstructions. 235  Cert granted to determine if a clamp for vibrating shank plows was patentable. with diligence being measured from a time just prior to the second conceiver’s conception date  5. o §104 allows proof of prior inventions in any country that is a signatory to the WTO. from a time prior to conception by the other.  Held: Patent is invalid. The difference between the patents is that the hinge blade is moved above shank and below the upper plate which helped reduce damage to the spring rod and the upper plate.

the court ruled that claim construction is a matter of law. suggestion. whoever without authority makes.question of law performed by the judge  No interlocutory appeal for claim construction  Fed. within the US or imports into the US any patented invention during the term of the patent therefore. v. or motivation in any of the prior arts  SC rejects Federal Courts rigid TSM (teaching. or motivation) test. (5) teaching away. o Art of electronic sensors o Art of mechanical gas pedals o Combines the two prior arts (is this obvious)  Fed. Claim Interpretation o A broader claim is easier to invalidate.Infringement of patent o (a) Except as otherwise provided in this title. York (2004)  District Court. The Proper Role of Judge and Jury in Patent Cases and the Standard of Appellate Review p.  KSR International Co. (7) copying. (8) advances in collateral technology. Claim construction is reviewed de novo o High reversal rate for claim construction (1/3)  The Federal Circuit appears to be moving away from the view that claim construction is purely a question of law. “Secondary” Considerations  These are indicative of non-obviousness  Secondary considerations would include: (1) commercial success. (2007) p. suggestion. Increasing the standard allows less patents to be filed o B.  36 .C. o Don’t need something explicit o Held: If a technique is being widely used you don’t have to find anything explicit for a trend  Things have been trending from mechanical to electronic  This is happening in every industry not just cars o Person skilled in the art has common sense and ordinary creativity  Comments and Questions o More prior art is considered applicable so it is easier to shoot down patents as being obvious. o A. Under §103 a single reference need not disclose the entire invention to bar a patent. (3) awards and praise. is more likely to give a proper interpretation to such instruments than a jury  Claim construction. (2) long-felt need and failure by others. even though a low cost would not bar patentability Patent Infringement  Patents only confer the right to exclude others from using that invention but does not confer the right to sell  §271. infringes the patent  1. Combining References  Under §102 a single prior art reference must disclose every element of what the patentee claims as his invention.  Focuses on scope and content of the prior art. which could enhance the durability of district court determinations. (4) skepticism. uses. Not combinable because there is no teaching.  The judge.  Engelgau is the patentee and Teleflex holds the exclusive license to the patent  Case about electronic control breaking/acceleration. and unexpected results. offers to sell. and (9) near simultaneous invention  Secondary considerations may work as plus factors tipping the balance of obviousness one way or the other in a particular case  It would not be improper to consider a high cost of inventing to support Nonobviousness. Reverses: the district court’s use of an overall picture and common sense test of obviousness falls squarely into the hindsight trap. since it encompasses more potential art. o A. Westview Instruments. Cir. Federal Circuit came up with the test that would someone in the art have a reason to come up with the idea o Iron Grip v.the cases permit the court to look at the overall picture of what’s really going on the obviousness test calls upon the court to just simply exercise common sense  Fed. from his training and discipline. Teleflex Inc. 247  Teleflex sued KSR for patent infringement. Cir. (6) licensing activity. 268  In Markman v. or sells any patented invention. Cir.

A. Defendant was selling building modules where the baffles were 90 degrees. 286. AWH Corp. the inventor’s lexicography governs. Kopykake Enterprises Inc. patentees do not in fact attempt to practice lexicography  iv.  Nystrom v. Intrinsic evidence outweighs extrinsic evidence  Most important intrinsic evidence is the claim language and then prosecution history  Extrinsic evidence examples are expert testimony. Plaintiffs claim included baffles that were at different angles. the fact-finder determines whether the accused device falls within equivalents thereof as of the time of patent issuance. non-contextual meaning that would be assigned to those words  ii. element in a claim for a combination may be expressed as a means or a step for performing a specified function without the recital of structure. the broader the claim. 287 o The patents Claim 11 reads in part “A method of reproducing an image onto an edible web for decorating an iced baked good with an image comprising placing the image on a copy glass of a photocopy machine.infringement case about flooring for home decks o There was disagreement about the word board and whether it applied to only wood boards or boards made out of any material  iii.  No infringement  Can’t import limitation from the specification Kinetic Concepts v. contextual or particular meaning  In general the fewer the words. Cultor was a dispute over a patent on an improved process for making water-soluble polydextrose a substitute for flour and sugar in food products. material.  Jack Guttman. didn’t have to read  Claim is for building modules that fit together that block sound and work as security barriers and for use in securing records and persons. C.o o o o o o Judge issues the claims and the jury applies the claims to the accused device  Technical and common terms need to be construed  Ex: “a” includes the plural. v.E.p. how much leeway does the word “about” appliance for administering reduced pressure treatment to a wound  As interpreted. p. Staley Mfg. (3) at the infringement stage.e. appliance for administering a reduced pressure treatment to a skin wound  Federal circuit read the claim skin into the claim making valid prior art  If the court didn’t read skin into claim 1 there would be no valid patent Means-plus-function claim terms p. TREX Co. and such claim shall be construed to cover the corresponding structure. o The court disagreed with Kopykake who used a separate scanner and conventional inkjet printer because of the words used in the claim that said “cooperate to produce the effect of a plain paper photocopy machine” o Very confused about this case  In most cases.  The Federal Circuit has often stated its presumption that the meaning of words in a claim is the ordinary i. Contextual Meanings  Despite starting with the ordinary meaning. Cannons for Claim Interpretation  Claim construction is a matter of law  i.  Once it is determined that §112(6) applies then the court proceeds through three steps: (1) identifying the function of the term based upon claim term language. “up to” includes zero. Inc. Phillips v. ordinary v. The specification stated: As 37 . material. Blue Sky Medical  Claim 1. (2) identifying the corresponding structure. 285  §112(6). is a good example of the disclaimer doctrine at work. or act based on disclosed embodiments. and breadth is the goal of all claim drafters. or acts in support thereof. most claim interpretation cases turn on contextual meanings. Co. Lexicographer Rule  Our cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. dictionaries (tend to be very broad and there are many of them – not helpful). Disclaimer of Subject Matter  Cultor Corp v. or acts described in the specification and equivalents thereof. In such cases.

then there can be no literal infringement as a matter of law  Held: No literal infringement because the Super Soaker does not have storage of liquid in the housing.  When different words or phrases are used in separate claims. Amron (1993) p. it has a removable tank that sits on top. Basic Issues 38 . summary judgment is appropriate where the accused product does not literally infringe the patent and where the patent owner does not muster evidence that is sufficient to satisfy the legal standard for infringement under the doctrine of equivalents.C. when two interpretations are plausible. Mutual  v.statements in a patent specification that explicitly disclaim coverage of certain elements  Astrazeneca AB. 295  Larami’s motion for pretrial summary judgment of noninfringement (granted)  Super Soaker case  Claim interpretation is a question of law and is amenable to summary judgment  Claim says “chamber therein for liquid”  The word therein means inside the housing and ultimately leads to the outcome that there is no infringement because the Super Soaker does not have a chamber therein. The Doctrine of Equivalents o A.S.  used herein the expression water soluble polydextrose specifically refers to the water soluble polydextrose prepared by melting and heating dextrose preferably with about 515% by weight of sorbitol present. to preserve their validity  Since Markman. Super Soakers’ use of an external. choose the narrower interpretation. courts have shied away from applying this doctrine  viii. o The court found that this statement restricted the meaning of water soluble polydextrose to a process using citric acid. in the presence of a catalytic amount of citric acid. o Because a patent is defined in terms of its claims. uses. v.  A patent holder can seek to establish patent infringement in either of two ways: by demonstrating that every element of a claim (1) is literally infringed or (2) is infringed under the doctrine of equivalents  If even one element of patent’s claim is missing from the accused product.  vi. Literal Infringement o 35 U. 3. Narrow Construction Preferred  The final canon of construction may be expressed as a tie-breaker rule. a patent infringement lawsuit is resolved by comparing the claims of the patent to the accused product o Larami Corp.  Comments and Questions  No literal infringement if most of the claims are present – need all  Adding new features cannot help a defendant escape infringement. v. Purpose or Goal of the Invention  purpose or goal helps to interpret the meaning of a term  vii. Claim Differentiation: Contextual Meaning from Other Claims  The doctrine of claim differentiation is the patent law version of a general principle of legal interpretation: non-redundancy principle. however. sells. a difference in meaning is presumed. §271 gives the patentee an infringement cause of action against anyone who makes.  In patent cases. o Runs from the day the patent is issued to 20 years from the day the patent application is filed. (used sparingly only as a last means) 2.  2 reasons it is not a substantial equivalent  Patent holder claims three elements must be on the same axis but the court denies this  Second. Inc. and that the patent had disclaimed non-citric acid processes such as the defendant’s  Claim scope disavowal. Construing Claims to Preserve their Validity  A traditional maxim of claim construction was that claims should be constructed where possible. offers for sale. or imports the invention described in the claims of the patent. detachable water reservoir was found to be such a dramatic improvement over the traditional design benefiting both the manufacturer and user that it could not be held to be the substantial equivalent of the claim requirement of a tank in the barrel for liquid.

The invention adheres the fragile copper foil to a stiffer substrate sheet of aluminum.  Same thing but B is less likely to infringe  Court won’t see a difference between 3 and 4 but once it is stated as in B you can’t really ignore it  Corning Glass v. A fork comprising a cylindrical handle. Since Johnson & Johnston had  39 . 35 USC §251 o Johnston took advantage of the latter of the two opinions by filling two continuation applications that literally claim the relevant subject matter  Held: The Court looked at the wording of Johnson & Johnson specification. which explicitly said that steel and nickel could be used as a substrate. and a fourth tine attached to said handle. The RES products joined copper foil to a sheet of steel as the substrate instead of aluminum. The specification of the ‘050 patent.rotating handle at end of bar. or whether the substitute element plays a role substantially different from the claimed element. way. workers can handle the assembly without damaging the fragile copper foil. 318  Facts: The ‘050 patent claims an assembly that prevents most damage during manual handling. 318  Johnson & Johnston Associates Inc.if fishing line is used instead of wire court would probably say this is equivalent and infringes  A matter of framing o Which of your claims below is the competitor more likely to infringe under the DOE for a fork with 4 tines rather than the patented 3 tines  A.  Comments and questions  Ultimately the court in Hughes concluded that subsequent developments in the technology obfuscated the significance of the limitation. Subject Matter “Disclosed but not Claimed” p. (2002) p.p. Co. base with passageway. a patentee may file a reissue application and attempt to enlarge the scope of the original claims to include the disclosed but previously unclaimed subject matter. and result of the claimed element. Service Co. Inc. Sumitomo o Claim 1: optical fiber comprising (a) an out layer and (b) a core with an additive that raises refractive indect of core above refractive index of outer layer o Defendant made the same thing but made an outer layer that lowers the refractive index of outer layer below refractive index of core o Same effect but did it in a different way o Under doctrine of equivalents there was infringement C. Johnston’s ‘050 patent specifically limited the claims to a sheet of aluminum. a first tine attached to said handle. u-shaped bar o Non-literal infringement. R. 300  To temper unsparing logic and prevent an infringer from stealing the benefit of the invention a patentee may invoke this doctrine to proceed against the producer of a device if it performs substantially the same function in substantially the same way to obtain the same results  The test for equivalence is to be applied to the individual claim limitations: An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function. A fork comprising a cylindrical handle. and four tines attached to said handle  B. such as stainless steel or nickel alloys may be used  Within 2 years from the grant of the original patent. however reads: While aluminum is currently the preferred material for the substrate. other metals.. v. Linde Air Prods.E. a third tine attached to said handle. Inc.o Graver Tank & Mfg.  Cheese slicer case he keeps talking about o Claims. cutting wire attached to bar. v.Could not as a matter of law infringe under the doctrine of equivalents by using the disclosed but unclaimed shoe attachment system  Issue: This court must decide whether a patentee can apply the doctrine of equivalents to cover unclaimed subject matter disclosed in the specification  In this case.  In Maxwell. a second tine attached to said handle.. With the aluminum substrate for protection.

Second is an examination of the evidence before the court to ascertain whether. that therefore ACS is contributory infringer. and that ACS actively induces infringement  For purposes of this case. The ‘017 patent relates to a method for using a catheter in coronary angioplasty. Inc. that therefore ACS is a contributory infringer.R. disclosed those materials. v. pursuant to the procedure described in the fact patterns. After-Arising Technologies  Pioneer invention – which the SC has defined as a patent concerning a function never before performed. Plaintiff Bard alleges that the ACS catheter is especially adapted for use by a surgeon in the course of administering a coronary angioplasty in a manner that infringes claim 1 of the ‘017 patent. there are substantial noninfringing uses for the ACS catheter  A person induces infringement under §271(b) by actively and knowingly aiding and abetting another’s direct infringement 40 . Inc. barium. they must have meant to dedicate them to the public. under §271(c). 334  Facts: ACS was marketing a perfusion catheter for use in coronary angioplasty. the statute requires that ACS sell a catheter for use in practicing the ‘017 patent. First is a determination of the scope of the claim at issue.  Graver Tank v. cobalt. magnesium. Linde  Claim referred to a welding flux containing alkaline earth metal silicate  Defendant’s welding flux contains manganese silicate. iron.  A device performing the same function and achieving the same result in the same way as a patented invention can be found to infringe even if it uses technology developed after the patent was issued. the Federal Circuit held that major improved devices noninfringing  This case was an example of improvements in material o LCDS used an improvement that increases the efficiency of an individual component 6. p.could have been an oversight o Most people aren’t happy with this and say these cases are in conflict  Warner. Bard sued ACS for alleging infringement of US Patent ‘017. in Texas Instruments Inc.electric welding composition. US Int’l Trade Comm’n. use of the ACS catheter would infringe the claim as interpreted  It remains true that on this record a reasonable jury could find that.0  Question of whether 6.Jenkinson v. and that ACS actively induces infringement  Two step analysis. Hilton Davis Chemical  Applicant amended claim to add “at a pH from approximately 6. or one of such novelty and importance as to make a distinct step in the progress in the art – is entitled to a broad range of equivalents  Following Graver Tank courts inquire whether it performs the same function and achieves the same result as the invention in the claims. chemists testified that magnesium and manganese react similarly  Result.0 is equivalent to 5.same kind and quality of weld employed using similar mechanical methods  In conflict with Johnson & Johnston case o Can argue in that case was the claiming of aluminum was more specific and referred to in multiple claims and aluminum is clearly different than steel and other metals. Manganese is a transition metal o Specification. v. Bard. Advanced Cardiovascular Systems. but never claimed them.0 to 9.0  Defendant was using a process with a pH of 5. o Therefore the Dedication Doctrine applies and Johnson & Johnson cannot assert the Doctrine of Equivalents against RES.  On the other hand.0  Question of why this limitation was added o Usually to get around prior art  Jury held there was technological equivalence because the two pHs work approximately the same o D.deliberately and specifically said aluminum o Here an alkaline earth metal encompasses more and has similar characteristics to other metals. nickel and aluminum in various proportions  Similarities. and whether it does so in the same way.we have used calcium silicate and silicates of sodium. Contributory Infringement o C. manganese. a wholly novel device.

P. can’t grant summary judgment Comments and Questions  The real infringer in this case is the doctor  In 1996 Congress amended the patent laws to exempt doctors who perform medical process from liability for infringement. the method comprising the steps of:  Prompting the caller  Accessing a remote payment network  The accessed remote payment network determined 8. involves behavior that omits any making. use. or selling but that nevertheless amounts to an attempt to appropriate the value of an invention  The requisite intent to induce infringement may be inferred from all of the circumstances  The statute does not mention intent. 340  The use of a claimed system under §271(a) is the place at which the system as a whole is put into service  The location of the Relay in Canada did not. or sale of less than the entire patented device. it is also required that the accused infringer know that his or her activities will lead to infringement on the patent  Common contributory inducement cases come into play with replacement parts or instructions to employ a process o Types of Infringement  Direct 271(a)  Literal  Doctrine of equivalents  Indirect 271  Active inducement 271(b)  Contributory 271(c) o Supply material component of invention plus o Knowledge component specially adapted for infringing use plus o Component lacks substantial noninfringing use  If there is infringement under 271(c) it also infringes under 271(b)  Why have both? Because 271(d) says it’s a defense to charge patent misuse. in other words. Joint Infringement o BMC Resources. on the other hand. Infringement Invoking Foreign Activities o NTP. but due to common law the cases all require it  Part of the requisite intent. Ltd. Inc. 339 (divided infringement)  5 different parties involved in the claim  Claim 6: a method of paying bills using a telecommunications network line connectable to a least one remote payment card network via a payee’s agent’s system wherein a caller begins session using a telecommunications network line to initiate a spontaneous payment transaction to payee. However. Inc.  Because a genuine issue of material fact exists. Beyond this. rendering this problem moot. is the one accused of inducing infringement must know of the patent. Paymantech p. 7. v. v. Research In Motion. Congress apparently intended to leave device manufacturers liable for contributory infringement of such patents  The Federal Circuit held that section 271(c)requires a showing that the alleged contributory infringer knew that the combination for which her component was especially designed was both patented and infringing o Note on Inducement  Contributory infringement sweeps into the net of infringement the making. as a matter of law. using. produce infringement of the asserted system claims in this case  If court didn’t rule this way there would be a loophole allowing software and network companies to place servers in another country to get around patents  Court looked at the benefit of the use and where that was taking place  Method claim/process claim  All elements of the claim have to be in the US  System/non-method  If the site of control and the site of benefit are in the US then the claim is allowed to have exterritorial application   41 . Inducement.

Inequitable Conduct o Kingsdown Medical Consultants.5 years. That the public interest would not be disserved by a permanent injunction o Case remanded to district court to apply 4 factor test o Comments and Questions  For preliminary injunction same 4 factors except 2 becomes likelihood of success on the merits  Foster v. pertaining to the duty of patent applicants during prosecution  Submarine patenting. Ltd. Am. Lemelson the Federal Circuit adopted a theory of prosecution laches under which excessive delay in prosecuting a patent could preclude its enforcement against an unsuspecting industry o The Federal Circuit concluded that unreasonable and unexplained delay in prosecuting a patent could be grounds to bar enforcement of that patent o (cases have also ruled the other way) F. MercExchange.upon filing for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer. is the standard remedy in a patent case. That. While Kingsdown’s appeal of other rejected claims was pending. v. only to spring it on an unsuspecting industry  In Symbol Technologies v. LLC (2006) p.deliberately keeping a secret patent application pending for years in the PTO. No adequate remedy at law to compensate for that injury  3.  Comments and Questions  Only prior art that was known by the inventor or the patent lawyer gives rise to a duty of disclosure  This rule is embodied not only in the doctrine of inequitable conduct in the courts. with an intent to deceive. Prosecution history lasted 6. the entire patent is rendered unenforceable. and not damages. two elements must be proved by clear and convincing evidence. and  4. v.D. but the parties failed to reach an agreement o The plaintiff must demonstrate: (for permanent injunction)  1.  Held: We are not convinced that deceitful intent was present in Kingsdown’s negligent filing of its continuation application. 380 o Facts: MercExchange sought to license its patent to eBay and Half. 56 of the rules of the patent practice.  Possible to get injunction and damages up to treble damages  eBay. Kingsdown’s patent attorney saw a two-piece ostomy appliance manufactured by Hollister  Inequitable conduct resides in failure to disclose material information.the court in exceptional cases may award reasonable attorney fees to the prevailing party  Willful = reckless 42 . or submission of false material information. Remedies p. The “Experimental Use” Defense (didn’t have to read)  2. p. (treble damages)  §285 attorney fees. together with interest and costs as fixed by the court. 377  The valuation problem is key to understanding why the injunction. considering the balance of hardships between the plaintiff and defendant. as it had previously done with other companies. Defenses  1. a remedy in equity is warranted. That it has suffered an irreparable injury  Harm can’t be undone it can only be compensated for  2. but also in R.  Finding that particular conduct amounts to gross negligence does not of itself justify an inference of intent to deceive  When a court has finally determined that inequitable conduct occurred in relation to one or more claims during prosecution of the patent application. The court may increase the damages up to three times the amount found and assessed. Inc. 347  Facts: The invention claimed in the ‘363 patent is a two-piece ostomy appliance for use by patients with openings in their abdominal walls for release of waste. Mach & Foundary Co. Hollister Inc. 384  The Court upheld what amounted to a compulsory license: a reasonable royalty damage award but no injunction  Patentee doesn’t manufacture and only given royalties no injunction  §284 damages.

an already existing design  Patent Act of 1952 provides for a one-year novelty grace period. ornamental  Duration 14 years o B. Requirements for Design Patentability  i. 401 o Nonobviousness would be measured in terms of a designer of ordinary capability who designs articles of the type presented in the application. Introduction  §§171-173.Totality of Circumstances Test from Read Corp. and copyright for the same invention  All three are limited to when a design is not functional o A. when he knew of the other’s patent protection. non-obvious.Infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent o Made it less about knowledge and acting about recklessness. investigated the scope of the patent formed a good faith belief that it was invalid or that it was not infringed  The infringer’s behavior as a party to the litigation  Defendants size and financial condition  Closeness of the case  Duration of defendant’s misconduct  Remedial action by the defendant  Defendant motivation for harm  Whether defendant attempted to conceal its misconduct G. Ornamentality  To satisfy the requirement of ornamentality.  ii. Novelty  Novelty is established if no prior art shows exactly the same design. A design is novel if the ordinary observer viewing the new design as a whole.Whoever invents any new. If the functional aspect of a design may be achieved by other design techniques. would consider it to be different from. Functionality  if a design is primarily functional rather than ornamental or is dictated by functional considerations it is not patentable  The Federal Circuit has held that a design may have functional components as long as the design does not embody a function that is necessary to compete in the market. Portec. as it is an inherently subjective inquiry. strict requirements o The design patent system has been criticized as ineffective and in need of reform o Can have trade dress. v. and placed the burden on the challenger to come forward with clear and convincing proof of Nonobviousness  iii. allowing a patent for a design as long as the design has not been published anywhere or sold or displayed within the US more than one year before the application is filled with the PTO. o Willfulness. Design and Plant Patents  1. original. Good summary of what this case said on p. high application cost. as opposed to a utility patent. design patent. Inc. original and ornamental design for an article of manufacture may obtain a patent therefore. depending largely on personal taste  In 1981.  The Federal Circuit has emphasized the presumptive validity of a design patent.  Whether the infringer deliberately copied the ideas or design of another  Whether the infringer. rather than a modification of. the Court of Customs and Patent Appeals held that the Graham test could apply to design patents. Requirements: Novel. a design must be the product of aesthetic skill and artistic conception. is unpredictable. Design patents o The aesthetic appearance of a product rather than its functional features are protected by the design patent o A lengthy processing time. Nonobviousness  determining the Nonobviousness of a design patent. Not functional  A number of cases have denied patentability to designs which are concealed during the normal use of an object  iv. Prevents people from avoiding learning about patents. then it is not primarily functional o 43 . subject to the conditions and requirements of this title.

when Congress enacted the first federal trademark statute o Today trademarks are protected by the Lanham Act which was enacted in 1946  2. first) user of a mark may prevent junior (subsequent) user from employing the same or a similar mark. where there is likelihood of confusion between the two marks o The fundamental principles of trademark law have essentially been ones of tort: unfair competition and the tort of deception of the consumer o Giving the originator of a mark the right to police counterfeiting also serves to protect three types of investment: (1) investment in the creation of the mark (2) investment in advertising and promoting the product in association with the mark. or other nonprotectable matter while adding sufficient variation to protectable elements of the design  Getting a design patent doesn’t really make sense for most inventions. Marks that are primarily a person’s name o 4. Seems to be a relic and was in effect prior to copyrights protecting broader subject matter  CHAPTER 5. or function  Include terms such as world’s greatest. Marks that simply describe a geographic feature of the goods o Descriptive marks have a nonrandom association with a product 44 . The Basic Economics of Trademarks and Advertising  Categories of descriptive Marks o 1. 733 A. Introduction  1. and quality assurance techniques o Trademarks protect the integrity of the marketplace from false advertising and unfair competition.o o o The availability of other designs means the design is probably ornamental rather than functional C. o 3.  It has been noted that the current system is unsuited to the fast moving but short lived product cycle characteristic D. super. Marks that describe the intended purpose or use of the goods o 2. Laudatory marks that claim a superior quality. functional features. etc. Brief Overview of Trademark Theory o Trademark protection is awarded merely to those who were the first to use a distinctive mark in commerce. In trademark parlance.  Trademarks indirectly promote inventions  3.TRADEMARK LAW p. Only make sense for really valuable ornamental designs where filing a patent is not as costly. mega.Whether an “ordinary observer” taking into account the prior art. the senior (that is. Claim Requirements and Procedures  The drawings must contain a sufficient number of views to constitute a complete disclosure of the appearance of the article  All that is required in writing is a very brief description of the drawings  Only one claim can be included in a design application  Pendency time for a design patent is approximately two or three years. production equipment. property. and (3) product-related investments such as high-quality raw materials. Design Infringement  Test. would think the accused design as a whole is substantially the same as the patented design  Very similar to the copyright standard  Ordinary observer is one who has reasonable familiarity with the object in question and is capable of making a comparison to other objects which have preceded it  This test permits strong similarities to be excused if the defendant can prove that she borrowed only commonplace or generic ideas. Usually better to get copyright protection  Patent has strict liability whereas copyright allows no liability if independently created  Independent invention is not a defense in patent law  No fair use defense for patent infringement  Two bites of the apple if you have multiple forms of protection you might get a better outcome Weak social justification for having design patents. Background o Trademarks go way back from when merchants would brand their products to show who made it o Trademarks were protected at common law in the US until 1870.

rather than merely identifying a company. they must be open to anyone who meets the standard set forth for certification  Used by someone other than the owner of the mark to certify that it has certain characteristics o Collective marks means a trademark or service mark (1) used by the members of a cooperative. an association. including a unique product. rather than the natural association in people’s minds between a name and a product  Suggestive marks suggest a product in people’s minds  Descriptive marks describe the product or service offered  Generic marks are so associated with a particular product class that they have become the natural way to refer to that type of product  1.amount advertised What can be Protected as a Trademark?  Arbitrary and fanciful marks are the strongest.  Held: Sometimes a color will meet the ordinary legal trademark requirements  We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark. it identifies the press pads’ source. or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principle register established by this chapter. material. When descriptive mark is associated enough to get distinctive meaning so the public associates the product with the source  Most common form of direct evidence is survey  Circumstantial evidence. Inc. even if that source is unknown. or other organization  A mark adopted by a collective for use only by its members  Denotes membership  3.  The green-gold color acts as a symbol. And the green. or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization  Certification marks cannot be limited to a single producer. Trade Names. or device or any combination thereof (1) used by a person. symbol. accuracy. and includes marks indicating membership in a union. v. association. Certification and Collective Marks o Certification means any word. to certify regional or other origin. Fragrance. (1995) p. and Service Marks o §45 Trademark includes any word. or other collective group or organization. Jacobson Products Co.  Issue: whether the Lanham Trademark Act permits the registration of a trademark that consists purely and simply of a color. or (2) which such cooperative. mode of manufacture. or any combination thereof (1) used by a person other than its owner. Trade Dress and Product Configurations o The act also protects trade dress the design and packaging of materials if the packaging or the product configuration serve the same source-identifying function as trademarks  4. because any value they posses in terms of name recognition comes from the corporate use of the name. Trade names are generally registerable in state offices. from those manufactured or sold by others and to indicate the source of the goods. name. Jacobson used the same color and started to distribute. Trademarks. gold color serves no other function  45 . or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act. Having developed secondary meaning. 744  Facts: In 1991 Qualitex registered the special green-gold color on press pads with the Patent and Trademark Office as a trademark. and Sounds o Qualitex Co. and state and federal common law may provide protection against confusingly similar company names  2.  Don’t need to know the source just that the product comes from a source o Trade names identify the company itself. symbol. name. without serving any other significant function. or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter. Color. to identify and distinguish his goods. where that color has attained secondary meaning and therefore identifies and distinguishes a particular brand  It can act as a symbol that distinguishes a firm’s goods and identifies their source.B. an association. or device. quality. Trade names cannot be registered under the Lanham Act unless they actually function to identify the source of particular goods or services.

come to be known by the public as specifically designating the product o The burden of proof to establish secondary meaning rests at all times with the plaintiff  Fair use o When the allegedly infringing term is used fairly and in good faith only to describe to users the goods or services of a party of their geographic origin. the mark’s registration is subject to cancellation o Descriptive  Identifies a characteristic or quality of an article or service  Not protectable as trademarks alone but may acquire secondary meaning in the minds of the consuming public o Suggestive  Describes some particular characteristic of the goods or services to which it applies  Protected without the necessity for proof of secondary meaning o Arbitrary or fanciful terms  Bear no relationship to the products or services to which they are applied. Already have trade dress  Court didn’t buy any of these arguments p. 748  The functionality doctrine. 752  A potential trademark may be classified as (1) generic (2) descriptive (3) suggestive or (4) arbitrary or fanciful. Like suggestive terms they are protectable without proof of secondary meaning  Secondary meaning o The concept of secondary meaning recognizes that words with an ordinary and primary meaning of their own may after long use with a particular product.C. 2. o Generic  A generic term is the name of a particular genus or class of which an individual article or service is a member  Generic terms can never attain trademark protection  If at any time a trademark becomes generic as to a particular product or service. rights to the mark are determined solely by priority of use  Those deemed not inherently distinctive need secondary meaning  A descriptive mark is defined as a word.When a trademark is immediately capable of identifying a unique product source. The defense is available only in actions involving descriptive terms and only when the term is used in its descriptive sense rather than its trademark sense  Facts: Oak Grove and Visko assert that fish fry is a generic term identifying a class of foodstuffs used to fry fish. then the design is functional  Comments and Questions  Can trademark a sound p. Limited supply of colors. Distinctiveness o A. v. 750 Establishment of Trademark Rights p. 751  1. a defendant in a trademark infringement action may assert the fair use defense. Oak Grove Smokehouse. 4.requires imagination thought and perception to reach a conclusion as to the nature of goods  46 . Inc. Inc (1983) p. They argue it is merely a descriptive term and the court agrees  4 tests to determine if a mark is suggestive or descriptive o Dictionary definition o Imagination test. picture. Defenses asserts the functionality defense: 1. or other symbol that directly describes something about the goods or services in connection with which it is used as a mark  Other categories of marks require secondary meaning to acquire legal protection: most notably geographic marks and personal name marks  Zatarain’s. Classification of Marks and Requirements for Protection  Inherently distinctive. Color-confusion. forbids a trademark that puts the competitor at a significant disadvantage (doesn’t apply in this case)  If a designers aesthetic value lies in its ability to confer a significant benefit that cannot practically be duplicated by the use of alternative designs.

First a mark is inherently distinctive if its intrinsic nature serves to identify a particular source. Inc. Inc. Two Pesos started a similar concept after Taco Cabana. which occurs when. Taco Cabana sued Two Pesos for trade dress infringement  There is no persuasive reason to apply to trade dress a general requirement of secondary meaning which is at odds with the principles generally applicable to infringement suits under §43(a)  Issue: Whether proof of secondary meaning is essential to qualify an inherently distinctive trade dress for protection under §43(a)  Since §2 requires secondary meaning only as a condition to registering descriptive marks. v. a mark has acquired distinctiveness by secondary meaning. Samara Brothers.o Whether competitors would be likely to need the terms used in the trademark in describing their products o Extent to which a term actually has been used by others marketing a similar service or product  Existence of secondary meaning is a question for the trier of fact and burden is with the party seeking protection. even if the trade dress was inherently distinctive o if it is fanciful there are viable alternatives. 769  Facts: Wal-Mart send Judy-Philippine photographs of a number of garments from Samara’s line. (2000) p. with only minor modifications. Inc. symbols. 764  Facts: Taco Cabana started a fast-food Mexican food restaurant where it had traditional Mexican décor. v. so long as such use will not tend to confuse customers as to the source of goods. Inc. Taco Cabana. (1992) p. there are plainly marks that are registrateable without showing secondary meaning  Held: No basis for requiring secondary meaning for inherently distinctive trade dress protection under §43(a) but not for other distinctive words. 16 of Samara’s viable alternatives  Wal-Mart Stores. Second. o The term chick-fri lacked secondary meaning Distinctiveness of Trade Dress and Product Configuration  Two Pesos. can’t be inherently distinctive o Design has a functional aspect  Comments and questions o Décor of the restaurant is considered product packaging and that is why it is different from Wal-Mart which was product design. the primary significance of a mark is to identify the source of the product rather than the product itself. many of which contained copyrighted elements  Courts have held that a mark can be distinctive in one of two ways. Judy-Philippine duly copied. descriptive probably falls in between o functional trademark . o The mark must denote a single thing coming from a single source o For secondary meaning direct and circumstantial evidence may be used o Zatarain’s used the amount of fish fri sold to establish secondary meaning which the district court weighed in its favor o Zatarain also used a survey and the court affirmed that Fish Fri had secondary meaning in New Orleans  Held: The Court found that there is a fair use defense and that Oak Grove and Visko are still free to use the words fish fry in their don’t have to make a Mexican theme restaurant that looks like Taco Cabana  Comments and Questions o Two Pesos reverses the prior rule of a number of circuit courts. if it is generic there are no other alternatives.  For trade dress product design you need secondary meaning. which had held that secondary meaning was required element of a §43(a) action for trade dress infringement. or devices capable of identifying a producer’s product  The décor is very distinctive and not functional. in the minds of the public. descriptive sense. o Professor thinks you should just look to viable alternatives o 47 . Both restaurants expanded fast and Taco Cabana opened a restaurant in the same city as Two Pesos. on which Judy-Philippine’s garments were to be based.

S. Assuming an application based on an intention to use a mark is otherwise allowable. 1986 L’Oreal started sales and campaign.  National full use would be wasteful and cause companies to be premature to rollout nationally. L’Oreal.the court ruled (1) that Blue Bell’s secondary use of the new logo was in bad faith and therefore its July 5 shipment did not establish priority and (2) that Farah’s minimal shipment on July 3 also did not establish priority. This left Farah’s July 11 shipment as the first substantial use of new mark in commerce – So Farah won o Note on Geographic Limitations on Trademark Use  Common law trademarks are protected only in the areas where the marked products are sold or advertised  Two exceptions to the common law rule: o (1) A trademark owner is entitled to the exclusive use of her mark in any geographic area in which the mark’s reputation has been established. Farah Mfg. Inc. v. 785. under circumstances showing the good faith of such person. at which point it is entered on the Principal Register and the mark is registered retroactively to the date of the filing of the intent to use application  Blue Bell. After the notice of allowance is granted. like a naked registration. the trademark owner has six months to submit a verified statement that the trademark has in fact been used in commerce. June 12.ZHD was doing research and trial sales in 1985. 777  Facts: Zazu Hair Designs (ZHD) registered ZAZU with Illinois in 1980 as a trade name for its salon. establishes no rights at all  ZHD gets to use the mark in Hillsdale area  Marginal use plus federal registration would be enough. 2.  Comments and questions  Types of Applications o Use-Based Application §1(a) o Intent to use. Priority o §45(a) requires that the mark either be (1) used in commerce or (2) registered with a bona fide intention to use it in commerce o Zazu Designs v.  Overview: state registration. Co. Full sales for ZHD in Sept 1986. the Trademark Office will issue a notice of allowance to the trademark owner. Entities have allocated domain names on a first-come first served basis for a modest fee  Cybersquatters rushed in to register well-known trademarks held by others o Comments and Questions p. 791.  Can protect the mark in the zone of expected expansion o (2) a trademark owner is entitled to prevent anyone from intentionally trading on her goodwill. 792  Should trademark law protect the association between VW and Bug even though Bug originated with consumers themselves? 48 . (1992) p.A. the registrant will generally be entitled to the exclusive right to use the mark throughout the country  Limited area defense allows the non-registering party to claim priority in those geographic areas where he has made continuous use of the mark since before the registering party filed her application o Notes  Internet Corporation for Assigned Names and Numbers (ICANN) p.  Only marginal use to protect a small producer in starting local and expanding. to use a trademark in commerce may apply to register the trademark on the principal register. communication with L’Oreal. If one party registers her mark and the other does not.§1(b) provides that a person who has a bona fide intention. p. even outside her established geographic area  Conflict will be resolved in favor of the earliest user in that area. and sporadic use is not enough  Telling L’Oreal working on a product is not reliable  Was the sporadic sales activity enough to give ZHD protection?  Marginal use even combined with state registration is not enough to notify competitors that the mark will be used around the nation  Common law “use” meant sales to the public of a product with the mark attached  Intent to use a mark.

but it is available for the registration of trade dress. or deception is not likely to result from the continued use by more than one person. a mark may still enjoy common law rights o E. Opposition  §13(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register may. mistake. a policy that still has some life o C.  Cannot be likely to cause confusion for concurrent use  The court then recognized three exceptions to this general rule: (1) the PTO is not required to grant registration contrary to an agreement between the parties that leaves some territory open. and (2) that there are valid legal grounds why the applicant is not entitled to register its claimed marks  TTABUS district court Federal Circuit or Court of appeals Supreme Court o D. Trademark Office Procedures o A. Immoral or Scandalous Marks p. concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the application pending or of any registration issued under the Act. (2) where the junior user is the first to obtain federal registration. Concurrent Registration p. trademarks registered on the Principal Register enjoy a number of significant advantages. Cancellation  The Lanham Act allows one who believes that he is or will be damaged by registration to petition for cancellation of marks on either the Principal or Supplemental Register. which greatly enhances rights by eliminating a number of defenses (prima facie evidence of ownership)  The Supplemental Register was established to enable persons in this country to domestically register trademarks so that they might obtain registration under the laws of foreign countries  To be eligible for Supplemental Register a mark need only be capable of distinguishing goods or services. Marks which are Primarily Merely a Surname p. flag or other insignia of the US. disparages. file an opposition in the PTO. 809  If the Commissioners determines that confusion. the junior user obtains nationwide rights subject only to the territorial limitations of the senior user’s and (3) areas of mutual nonuse  49 .  The Supplemental Register is not available for clearly generic names. 798  While the Board relies on contemporary attitudes in Old Glory. Courts tend toward the view that consumer associations should be protected in this context o Note on Secondary Meaning in the Making  P. 805  General rule is that you can’t use a surname on the primary register  If name or mark has required secondary meaning it may be registered  The statutory hesitance to register surnames spring in part from an old common law policy in favor of the right to use one’s name. merely descriptive. upon payment of the prescribed fee. which cut off rights of other users of the same or similar marks and (2) the possibility of achieving incontestable status after five years. within 30 days after the publication of the mark sought to be registered  An opposer must plead and prove that (1) it is likely to be damaged by registration of the applicant’s mark (this is the standing requirement). falsely suggest a connection with a person. o B. in other cases it points to traditional disparaging meanings to find a term offensive  Who can challenge a mark as scandalous? The short answer appears to be virtually anyone  iii. we reject the doctrine of secondary meaning in the making under §43(a) of the Lanham Act  Courts have been virtually unanimous in rejecting the idea of protecting secondary meaning in the making as inconsistent with the idea that descriptive marks are not protected 3. 795. The primary advantages are: (1) nationwide constructive use and constructive notice. 796  Although registration is not a prerequisite to trademark protection.  Description marks on the supplemental register can become eligible for the principal register after 5 years. stating the grounds therefore. 797-798  Scandalous.for those reasons. supplemental register p. Grounds for refusing registration  Grounds for refusing registration on the Principal Register: p. Principal vs.  Even after cancellation of the registration. likely to cause confusion with a non-abandoned mark  i.

Infringement  Elements for trademark infringement o Valid trademark o Use of trademark by defendant o Use in commerce  In connection with sale. permits the nontrademark use of descriptive terms contained in an incontestable mark. offering for sale. distribution. Google Inc.  Even internal use can qualify as use in commerce  Product placement escapes liability because it is a benign practice which does not cause a likelihood of consumer confusion  Held: If the searcher sees a different brand name as the top entry in response to the search for Rescuecom the searcher is likely to believe mistakenly that the different name which appears is affiliated with the brand name sought in the search and will not suspect. 824  Facts: The mark Slickcraft was federally registered in 1969 (used since 1954). v. Inc. under certain circumstances. We consider at the 12(b)(6) stage only what is alleged in the complaint o Comments and Questions  Despite its rejecting in Rescuecom. v. Also. and had continuously been used since then. v. Sleecraft Boats (1979) p. the trademark use doctrine has been recognized and applied by a number of courts  2. Inc. and.810  Logo of an airplane and the words Park ‘N Fly  Incontestable status provides conclusive evidence of the registrant’s exclusive right to use the registered mark  Sought cancellation of petitioner’s mark on the grounds that it is a generic term and it is merely descriptive. Use as a Trademark o Rescuecom Corp. Likelihood of Consumer Confusion o AMF Inc. Whether Google’s actual practice is in fact benign or confusing is not for us to judge as this time. Dollar Park and Fly. goods.  Comments and Questions  Once incontestable status can still argue that the mark is generic and that the mark is functional  Incontestability is only applied to the validity of the trademark and not infringement D. 50 . (1985) p.may be maintained if the mark. and territories are such that this is the only way to avoid the likelihood of confusion  4. Google suggested the Rescuecom term. (2009) p.  Displaying mark to consumers of its ad space. Incontestability o Park ‘N Fly. that is not the most relevant response to the search. In 1968 Necher trademarked Sleekcraft.  Defense on the grounds that the mark is being used to violate federal antitrust laws  Held: We conclude that the holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the grounds that the mark is merely descriptive. 816  Sale of trademarks as keyword advertising triggers case  §32 and §43 of the Act impose liability for unpermitted use in commerce of another’s mark which is likely to cause confusion or to cause mistake or deceive  A mark shall be deemed to be in use in commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce (dismissed at DC because mark was not used in commerce)  Google uses and sells Rescuecom’s mark in the sale of Google’s advertising services rendered in commerce (overrules DC and says mark was used in commerce). used the expression Park and Fly since prior to the registration of petitioner’s mark and no likelihood of confusion  The Lanham Act allows a mark to be challenged at any time if it becomes generic. or advertising of goods or services o Likelihood of confusion  1. because the fact is not adequately signaled by Google’s presentation.

This type of confusion is actionable. Initial interest confusion (pre-sale)  Deliberate effort to confuse consumers. In copyright the whole product may look different but if there is a part that is the same the court may find infringement. Grotian-Steinweg o Steinweg used the reputation of Stewinway to gain customers. trademark law should not stand in the way  Trademark v. Upon remand the district court should consider the above interests in structuring appropriate relief  Comments and Questions  Courts generally allow the results of consumer surveys as evidence of actual confusion  Surveys may be useful but cases don’t seem to rely on them  Likelihood of confusion is regularly found if as few as 10 to 15 percent of the consumers surveyed were confused  Validity and infringement are separate inquiries and that incontestability applies only to the validity of the trademark  Courts generally look to similarity of the marks and defendant’s intent o Did defendant attempt to free-ride o Determine similarity based on sight. Copyright. had appropriated a trademark for use to describe another product or service. When the goods produced by the alleged infringer compete for sales with those of the trademark owner. sound. 836  Post-sale confusion constituted trademark infringement: The confusion the Act seeks to prevent in this context is that a consumer seeing the familiar stitching pattern will associate the jeans with Levi’s and that association will influence his buying decisions  4. Slickcraft is for family uses and Sleecraft are not  In determining whether confusion between related goods is likely the following factors are relevant: (1) strength of the mark (2) proximity of the goods (3) similarity of the marks (4) evidence of actual confusion [d] (5) marketing channels used [p] (6) type of goods and the degree of care likely to be exercised by the purchaser *d+ (7) defendant’s intent in selecting the mark. Confusion as to source or sponsorship. burger king bait and switch  Steinway & Son grand pianos v. dilute their distinctive quality  51 . Copyright prevents copying and Trademark prevents confusion 3. Post-sale  For third party confusion  Waters down prestige value  Knock-off or fake goods p. sound and meaning  Held: the marks are quite similar on all three levels  Held: A limited mandatory injunction is warranted. Reverse confusion  Large company adopts a mark of a small company (infringement)  Consumers believe that the trademark owners product come from a bigger company  Small company with a quality product  Even in situations in which consumers will not believe that the trademark owner is the one selling the product. they are extremely close in use and function  Similarity of the marks is tested on three levels: sight.Trademark differs from copyright because the court will look at the product as a whole in trademark and determine if there is confusion.classic confusion  2. thereby. infringement usually will be found if the marks are sufficiently similar that confusion can be expected. Dilution o The bill would create a federal cause of action to protect famous marks from unauthorized users that attempt to trade upon the goodwill and established renown of such marks and. and meaning o Intent shows that the marks are confusingly similar because it shows that the defendant wanted people to be confused o Note on Other Types of Confusion  1. and [d] (8) likelihood of expansion of the product lines [p]  Although these product lines are non-competing. be actionable? At least some courts have said yes  McDonalds. (no product competition) the use of a similar trademark may still confuse them by causing them to believe that the trademark owner is affiliated with or sponsors the infringer’s products.  Where the public. but not at the point of purchase. not the defendant.  3.

singular.-The mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient to establish actionable dilution such mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner Two types of Dilution  Blurring.  TDRA does provide that fair use is a complete defense and allows that a parody can be considered fair use.  Tarnish. it does not extend the fair use defense to parodies used as a trademark  That the defendant is using its mark as a parody is therefore relevant in the consideration of these statutory factors  Haute Diggity Dog mimicked the famous mark (satirizing it). (2007) p. Haute Diggity Dog.A. V Secret Catalogue. deception or mistake. LLC. 841  Trademark Dilution Revision Act  To state a dilution claim under the TDRA a plaintiff must show: (1) that the plaintiff owns a famous mark that is distinctive (2) that the defendant has commenced using a mark in commerce that allegedly is diluting the famous mark. criticizing. it did not come so close to it as to destroy the success of its parody and more importantly to diminish the LVM marks’ capacity to identify a single source  Held: LVM has failed to make out a case of trademark dilution by blurring by failing to establish that the distinctiveness of its mark was likely to be impaired by Haute Diggity Dog’s marketing and sale of its Chewy Vuiton products  Comments and Questions 52 . Factors:  (i) the degree of similarity between the mark or trade name and the famous mark  (ii) the degree of inherent or acquired distinctiveness of the famous mark  (iii) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark  (iv) the degree of recognition of the famous mark  (v) whether the user or the mark or trade name intended to create an association with the famous mark  (vi) any actual association between the mark or trade name and the famous mark  Parody is not automatically a complete defense to a claim of dilution by blurring.Impairs distinctiveness or harms the reputation of the famous mark  Cause of action only available for famous marks (widely recognized by consumers) Blurring is impairment of the distinctiveness of a mark caused by association. 839  (A) Any fair use (i) advertising or promotion that permits consumers to compare goods or services or (ii) identifying and parodying. likelihood of confusion. Inc. cocaine)  When there is tarnishment there is also blurring  Junior user uses the trademark to advertise unsavory products Defenses for certain type of dilution (not actionable as dilution 43(c)(3) p.confusing the product for something it is not  Use that is similar enough that you may think of another mark  Requires a mental association and impairment of distinctiveness due to the mental association. or particular Dilution. Rather. or commenting upon the famous mark owner or goods or services of the famous mark owner  (B) All forms of news reporting and news commentary  (C) Any noncommercial use of a mark Luis Vuitton Malletier S. The two elements of impairment and association are separate and distinct  Moseley v. it applies when the unauthorized use of a famous mark reduces the public’s perception that the mark signifies something unique.o o o o o o Dilution does not rely upon the standard test of infringement.devaluing the brand in a harmful way (Coca-Cola. that is. v. (3) that a similarity between the defendant’s mark and the famous mark gives rise to an association between the marks and (4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark  The issue for resolution is whether the association between Haute Diggity Dog’s marks and LVM’s marks is likely to impair the distinctiveness of LVM’s famous mark  To determine whether a junior mark is likely to dilute a famous mark.

Nor is it illegal to use the mark to display or refer to the plaintiff’s own product. even if confusion as to the source of the goods is dispelled by the time any sales are consummated o We have never adopted the initial interest confusion theory  For a parody to be successful it must convey two simultaneous and contradictory messages: that it is original. Information on the other hand everyone could have and take advantage of  Domain names are more like tangible goods  People for the Ethical Treatment of Animals v. Using a mark to criticize the mark’s owner is not tarnishment under the statute. No likelihood of for valuable consideration  53 . but also that it is not the original and is instead a parody  To determine whether a likelihood of confusion exists. Found bad faith and confusingly similar or dilutive. Domain Names and Cybersquatting p. the safe harbor provision can provide him no relief  Lamparello v. even if it is in a context the plaintiff might find repugnant  Nabisco v. Doughney (2001) where he set up a page entitled “People Eating Tasty Animals. PF Brands p. Falwell (2005) p.  Only one person could have it.”  The only confusion is the initial interest confusion (court probably wants to avoid this)  Not parody because communication is not simultaneous to the mark  Held: Court said the website was in commercial use because Doughney wanted to sell the website to PETA. 850. o Found bad faith because defendant had rounded up about 60 domain names  The district court did not award PETA damages but ordered Doughney to relinquish the domain name. a court should consider whether the use in its entirety creates a likelihood of confusion  Held: Use of another firms mark to capture the markholder’s customers and profit simply does not exist when the alleged infringer establishes a gripe site that criticizes the markholder. transfer its registration to PETA  ACPA contains a safe harbor provision stating that bad faith intent shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful  Doughney’s bad faith. the distinctive and famous PETA Mark. and (2) that the peta. 859 o A. making it clear in subsection (c)(1) that famous marks can be either inherently distinctive or have acquired distinctiveness  FTDA can protect trade dress as well as more traditional trademarks  GATT-TRIPs signatory countries must now provide some form of protection against dilution of a domain name is identical or confusingly similar to. 860  Facts: The defendant registered the Internet domain name peta. or dilutive of. 862  FactsL Reverened registered a website at to refute what the reverend said  The Lanham Act has been applied to defendants furnishing a wide variety of noncommercial public and civic benefits  Initial interest confusion doctrine forbids a competitor for luring potential customers away from a producer by initially passing off its goods as those of the producer’s.The 2006 revisions to the dilution statute reversed this decision. Anticybersquatting Consumer Protection Act  1999 Congress passed the Anticybersquatting Consumer Protection Act which makes it illegal to register or use a domain name that corresponds to a trademark where the domain name registrant has no legitimate interest in using the name and acts in bad faith to deprive the trademark owner of the use of the name  Critical parts of the statute are definitions of bad faith and legitimate interest  Domain names are truly rival goods which is different from intellectual property which is domain name.  Under the ACPA PETA was required to (1) prove that Doughney had a bad faith intent to profit from using the and Lamparello registered at fallwell. at least if it is famous 5. No bad faith intent to profit  No bad faith based on the fact that he neither registered multiple domain names nor attempted to transfer fallwell.

1981. rather than a particular product  Burden is on plaintiff to prove that its mark is a valid trademark  Proof burdens is a determination of whether the term at issue is claimed to be generic by reason of common usage or by reason of expropriation  Held: DC was correct in placing the burden of proof of genericness upon defendants. however that defendant did indeed establish the genericness of the term Murphy bed. TrafFix Devices. Defenses  1. We find. the distinctive and famous mark The practice of informing fellow consumers of one’s experience with a particular service provider is protected Professor says PETA case could be distinguished on the ground of no commercial aspect Comments and Questions o Possible legitimate interests in domain name p.  Any district where the cybersquatter has minimum contacts or  If the infringer can’t be found trademark owner can obtain in rem jurisdiction in the jurisdiction where the domain name resides by publishing legal notice of the suit and then filing suit against the domain name itself o Some courts have given protection to generic domain names on a theory of unfair competition E. 1982 PTO denied the Murphy Co.    To prevail on a cybersquatting claim.. Typosquatters register common misspellings or variants on trademarked terms. for the proposition that once a patent on a device expires.  Factors: PTO and TTAB is to be accorded great weight. MDI and TrafFix products looked and were alike.  A term or phrase is generic when it is commonly used to depict a genus or type of product.’s application to register the Murphy bed trademark. Murphy incorporated in NY in 1925 as the Murphy Door Bed Company and used “Murphy bed” as its trademark for concealed beds..  The defendant is a legal reseller of the plaintiff’s product  The defendant wants to criticize or make fun of the plaintiff o A variant on cybersquatting is typosquatting. Functionality o TrafFix Devices. Inc. v.fallwell. fearing that this will lead to their use as generic term  With later acquired secondary meaning genericide may be reversible  The court cites Singer Mfg. hoping to draw consumers who type the wrong domain name into the URL o Courts have generally treated typosquatters just as they have cybersquatters  Courts have also refused to hold a defendant liable for capitalizing on confusion it did not create o Jurisdiction over cybersquatters 2 kinds. June Mfg. sold sign stands with a visible spring mechanism that looked like MDI’s. v. or dilutive of. Inc. 890  Facts: Mr. Inc.. 54 .  Comments and Questions  Trademark lawyers also seek to prevent their clients’ terms from being used as nouns or verbs. newspapers and magazine use of the phrase Murphy bed to describe generally a type of bed. 869  The defendant has its own trademark that corresponds to the domain name. v. the name by which that device has been sold also enters the public domain o The patent expiration does not automatically end trademark protection  Trade dress and product configuration can also be generic  2. Genericness p. and again on Nov. claiming Murphey bed had become generic and that the phrase was merely descriptive of a characteristic of the goods. (1989) p. Interior Sleep Systems. Reverend Falwell must show that Lamparello (1) had a bad faih intent to profit from using the domain name and (2) the domain name www. 900  Facts: After the patents expired and a competitor.become generic over time through a process o The Murphy Door Bed Co. Inc. On March 23. 16. Marketing is identical or confusingly similar to. Co. (2001) p. Inc. Murphy bed is included in many dictionaries. 890 o Genericide.

923  §10 A registered mark or a mark for which application to register has been filed shall be assignable with the goodwill of the business in which the mark is used.  Lanham Act. (1993) p. whether MDI’s dual-spring design has acquired secondary meaning need not be considered Comments and Questions  The court arguable articulates two different formulations: the essential to the use or purpose test and the affects the cost or quality of the article test  Section 17 of the Restatement (Third) of Unfair Competition offers the following definition of functional designs.maintaining a word in conjunction with historical interest. a restaurant in Brooklyn for trademark infringement. The rule Against Assignments in Gross p. but licensing hasn’t occurred since 1981.“use has been discontinued with intent not to resume”  Burden of abandonment is on the party seeking cancellation of a registered mark and must be established by a preponderance of the evidence.  Plaintiff’s failed to prove a likelihood of confusion. 905  3.  Assignments in gross. defendants initially sought to reproduce the Brooklyn Dodgers’ trademark. without any underlying assets or good will. P. LA Dodgers sporadically use their former Brooklyn Dodgers mark in connection with historical retrospectives. MDI used WindMaster while TrafFix used WindBuster. v. Presumptively invalid however courts are changing 55 . Ltd.     TrafFix marked its sign stands under a name similar to MDI’s. 916-17 o b.  Lanham Act abandoned.not permitted to maintain trademark  Resumption.LA Dodgers resumed using the mark after 23 years but can’t prevent defendants from using the mark in a limited restaurant use  Comments and Questions  Abandon was amended to conform with GATT-TRIPs and prima facie evidence is now 3 years. Inc.nonuse for 2 consecutive years is prima facie evidence of abandonment  To maintain use in the mark e team would have had to continue to use “Brooklyn Dodgers” as the name of its baseball team. prevents using a mark merely to reserve a right. Sed Non Olet Denarius.assignments of trademarks alone. In selecting their logo. P.  Warehoused. 911  Facts: LA Dodgers and MLB Properties sued The Brooklyn Dodger. Person who assets trade dress protection has the burden of proving that the matter sought to be protected is not functional Issue: What is the effect of an expired patent on a claim of trade dress infringement? A functional feature is one the exclusive use of which would put competitors at a significant nonreputation related disadvantage Held: Functionality having been established. Abandonment o Major League Baseball Properties.  Defendants claim the defense of abandonment and laches and plaintiffs failed to use “Brooklyn Dodgers” commercially for 25 years.

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