Authority

Subject
Matter

How
Obtained

Patent
Constitution. The
constitution creates
incentives for people to
innovate and create it
is utilitarian in nature. 35
USC. *Exclusively
federal law*
Processes, machines,
manufactures, and
composition of matter
(these are the statutory
categories protected)
PTO and they give you a
patent, go through patent
examination process

INTELLECTUAL PROPERTY OUTLINE

Copyright
Trademark
(Utilitarian Theory)
Commerce Clause (consumer
17 USC (federal law) *mostly protection doctrine; the idea is so that
federal law* but there is some people know where their goods are
state law.
coming from it also encourages
companies to make quality products)
15 USC (Lanham Act); there is also
state law protection (unfair
competition TM related attributes)
Creative works, computer
Logos, slogans, something that
software, architectural works
indicates where the thing itself came
from; service marks; certification
marks (fair trade)

Just have an original work

fixed in a tangible medium of
expression; must register a
copyright to be able to sue on
it.

20 years from filing

Trademark your name? it must

represent something to the source;
trademarks do not have to be
registered. There are benefits to
registering TMs

Life +70 for works currently

Until its abandoned
created; minimum of 95 years
Duration
after publication or 120 years
after creation
Make, use, sell, offer to
Bundle of different rights:
Exclusive right to use the marks, to
sell, and import
copy, distribute, display,
prevent consumer confusion amongst
Rights
perform, derivative works (ex. marks that are similar
Harry Potter movies, Star
Wars collectibles)
Are there areas that exist where there is intellectual property but no law to regulate it?
I.
Magicians
II.
Culinary Work
III.
Comedians

I.

II.

Trade Secrets
Primarily state common
law (we will study
primarily the Uniform
Trade Secrets Act); R.2d
of Unfair Competition.
The most prominent
federal law is the EEA
(Economic Espionage Act)
Formula, pattern,
compilation, program,
device, method (any
information that is not
generally known that
provides some competitive
advantage)
Reasonable efforts to keep
something secret. Its not
an absolute secrecy
requirement. Can use
things like contract law,
employment law, etc. to
protect the secret.
Until it becomes public
knowledge (someone
discloses or someone else
develops it independently)
Protection against
misappropriation, theft

COMPARISON OF DIFFERENT TYPES OF INTELLECTUAL PROPERTY PROTECTION

Useful Article Doctrine
a. Useful Article: An article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to
convey information.
b. Patent v. Copyright
i. Brandir International v. Cascade Pacific
1. Dispute over whether the Ribbon Rack is copyrightable (to hold bicycles).
2. TEST: Denicola Test
a. If design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work
cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design
elements can be identified as reflecting the designers artistic judgment exercised independently of
functional influences, conceptual separability exists.
3. NOTE: There is no consensus in the Supreme Court about a test for what is conceptual.
4. The Ribbon Rack is not copyrightable.
ii. Physical Separability Test
1. An expressive element of a useful article is physically separable if it can stand alone from the article as a whole
and if such separation does not impair the utility of the article.
iii. Conceptual Separability/Temporal Displacement Test
1. The article stimulates in the mind of the beholder a concept that is separate from the concept evoked by its
utilitarian function.
2. Distinguished from other ways in which conceptual separability can be tested:
a. Whether the aesthetic aspects of the work can be said to be primary
b. Whether the article is marketable as art. (Winters Test)
Trademark: Functionality

a.

III.
a.
b.

I.
a.

II.
a.

b.

III.
a.
b.

IV.
a.

Traffix Devices, Inc v. Marking Displays, Inc.

i. What is the effect of an expired patent on a claim of trade dress infringement?
1. Trademark is about reputation mainly. So, there can be no trademark protection for something that is functional
because that would work as a detriment to competitors based on something other than reputation.
2. In general terms, a product feature cant be a trademark and be considered functional if it is essential to the use or
purpose of the article or if it affects the cost or quality of the article
a. functional feature = one the exclusive use of which would put competitors at a significant non-reputation
related disadvantage
3. Two Part Test:
a. Is the feature essential to the use or purpose of the article, or does it affect the cost of quality of the article?
Yes functional and cannot be subject to trade dress protection. No Next ?
b. Would the exclusive use of the feature put competitors at a significant, non-reputation-related
disadvantage? Yes aesthetic functionality and the feature may not be protected
i. Only if the product feature is nonfunctional under both tests can it be protected as
trade dress
ii. Note: The person who asserts trade dress protection has the burden of proving that the matter sought to be
protected is not functional.
Dastar Corp. v Twentieth Century Fox
Origins of Good
i. The tangible goods for sale, not the idea or communication involved.
The goods here are tangible, physical object in 43(a).
i. Dastar purchased the actual tapes and therefore they hold the origin of the goods.
TRADE SECRETS
Uniform Trade Secrets Act 1
Trade secret means information, including a formula, pattern, compilation, program, device, method, technique, or process,
that:
i. derives actual or potential independent economic value, from the fact that it is not known or readily ascertainable by
other persons who cannot obtain economic value from its disclosure or use, and
ii. is the subject of reasonable efforts, under the circumstances, to maintain its secrecy.
Defining Trade Secrets
Elements of a Trade Secret Claim
i. Subject matter involved must qualify for trade secret protection.
ii. The plaintiff took reasonable precautions under the circumstances to prevent its disclosure.
iii. Trade secret plaintiff also must prove that the defendant acquired the information wrongfully (misappropriation)
Metallurgical Industries, Inc. v. Fourtek
i. Upon receiving a machine, Metallurgical made modifications. Someone who knew about the modifications started a new
company and used the modifications themselves.
ii. Metallurgical shows (1) attempt at secrecy (2) the value of its modifications and (3) the cost of developing its secret
process.
iii. Factors Determining Trade Secret Status: Restatement of Torts (considering whether information is a trade secret):
1. The extent to which the information is known outside the claimants business
2. The extent to which it is known by employees and others involved in the business.
3. The extent of measures taken by the claimant to guard the secrecy of the information.
4. The value of the information to the business and its competitors.
5. The amount of effort or money expended by the business in developing the information.
6. The ease or difficulty with which the information could be properly acquired or duplicated by others.
iv. Limited disclosure generally will not destroy trade secrecy.
1. Here, the disclosures were not public announcements, and were made to further Metallurgicals economic interests.
Reasonable Efforts to Maintain Secrecy
Plaintiffs must show under the Uniform Act that they have taken reasonable measures to protect the secrecy of their
idea.
Rockwell Graphic Systems v. DEV
i. Many people in Rockwell had access to the piece part drawings, but Posner does a cost-benefit analysis and determines
that the efficiency the company gained from so many copies existing outweighed the number in existence.
ii. Posners explanations for TS protections:
1. Commercial morality (fair dealing/ fair play)
2. Creates incentive to innovate
iii. Note here that the number of people who have access does not dictate applicability of trade secrecy.
Disclosure of Trade Secrets
Data General Corp. v Digital Computer Controls
i. Public disclosure of a trade secret destroys the secret and therefore ends protection forever.
ii. Summary judgment is denied because the plaintiffs have not shown that they are entitled to a preliminary injunction.

b.

V.
a.
b.

c.

iii. The court ultimately denies summary judgment because you have to make a showing of likelihood of success on the
merits for a preliminary injunction and that only some injunctive relief in the form of how long it would take for the
defendant corporation to reverse-engineer is denied.
iv. You can only get an injunction for the period of time it wouldve taken for the competition to create their own
competing product without drawings, etc.
Disclosure of a once-protected trade secret can occur in a number of ways:
i. A trade secret owner may publish the secret, whether in an academic journal or any other forum.
ii. A trade secret owner may in some cases disclose the secret by selling a commercial product that embodies the secret.
iii. Trade secrets may be publicly disclosed by someone other than the trade secret owner.
iv. Trade secrets may be disclosed inadvertently.
1. However, it seems reasonable to argue that a truly accidental disclosure should not defeat trade secret protection if
reasonable precautions have been taken.
v. Limited disclosure does not = TS disclosure if
1. In holders economic interest and
2. Parties receiving info are aware they should keep it a secret
vi. Government agencies sometimes require the disclosure of trade secrets by private parties in order to serve some other
social purpose.
Misappropriation of Trade Secrets
Acquisition or use of a trade secret is illegal in only two basic situations:
i. Where it is done through improper means
ii. Where it involves a breach of confidence
Improper Means
i. EI DuPont de Nemours v. Christopher
1. Christopher was hired by a competitor of the plaintiff and took aerial photos of their process for producing
methanol.
2. The court said that aerial photography of plant construction is an improper means of obtaining anothers trade
secret despite the fact that the process was only discernible to someone who knew what they were looking at.
Confidential Relationship
i. Smith v. Dravo
1. Dravo wanted to purchase Smiths business, but ended up pretty much stealing his designs, amending them and
making them better, and putting Smith out of business.
2. The court said that Dravos actions constituted a misappropriation of trade secrets, Smiths information remains a
trade secret, and an implied duty of secrecy applied in this situation.
ii. The Restatement Third of Unfair Competition 41
1. A confidential relationship is established in the following circumstances:
a. The person made an express promise of confidentiality prior to the disclosure of the trade secret, or
b. The trade secret was disclosed to the person under circumstances in which the relationship between the
parties to the disclosure or the other facts surrounding the disclosure justified the conclusions that, at the
time of the disclosure,
i. The person knew or had reason to know that the disclosure was intended to be in confidence, and
ii. The other party to the disclosure was reasonable in inferring that the person consented to an
obligation of confidentiality.
iii. Unauthorized disclosure or use of a trade secret is actionable if it breaches a duty of confidence, which arises when the
parties are in a special relationship:
1. Agent/principal
2. Employee/employer
a. In absence of an express agreement, an employee owes a duty of confidentiality to his employer, which
prohibits him from using or disclosing trade secrets that the employer discloses to him w/in the scope of
his employment
b. When the trade secret belongs to the employee: if the employee used the employers work time, facilities,
or supplies to develop the trade secret, then the employer will have a shop right in it
i. Shop right nonexclusive, royalty-free license to use the employees trade secret
c. Express agreement:
i. non-disclosure agreement
ii. advance assignment agreement
iii. non-compete agreement:
1. against public policy
2. generally enforceable if the employer demonstrates that (1) it is reasonably
necessary to protect the employer. (2) it is reasonable as to the time and
geographical area in which the employee is restricted from competing, (3) the
restrictions are not harmful to the general public , and (4) the restrictions are

not unreasonably burdensome to the employee (Cali refuses to enforce noncompete covenants)

I.

3. Partnership
4. Fiduciary relationship (lawyer-client/ doctor-patient)
VI.
Reverse Engineering (this is a defense to misappropriation)
i. Proper means of obtaining a trade secret translate into defenses in trial.
1. Discovery by independent invention
2. Discovery by reverse engineering
a. This goes back to the larger goal of encouraging innovation.
b. There is an economic argument decreasing prices and enhancing consumer welfare.
3. Observation of the item in public use or on public display
4. Obtaining the trade secret from published literature
ii. Kadant, Inc. v. Seeley Machine, Inc.
1. Corlew worked for Kadant, and when they wiped his computer clean, he went to work for a competitor. They
reverse-engineered a line of products from Kadant.
2. The court held that if secrecy is lost when a product is placed on the market, there is no trade secret protection.
Kadant could not establish that Corlew used improper or dishonest means to obtain the trade secret.
3. Employees can use general knowledge, skill, and expertise that theyve learned on the job, but not specific
information.
iii. Proving misappropriation of a trade secret requires:
1. That the plaintiff prove it possessed a trade secret AND
2. That defendants are using that trade secret in breach of an agreement, confidence, or duty, or as a result of
discovery by improper means.
VII.
Remedies
a. Injunction
i. A may be enjoined from using or disclosing the
ii. S trade secret
iii. Jurisdix differ regarding the appropriate length of such injunctions
iv. Most limit the length of the injunction to the duration of the informations secrecy
v. Winston Research Co. v. 3M
vi. Couple different approaches:
1. In what amount of time do we think it will take for it to be reserve engineered? Grant for that amount of time
2. How long will it take for the knowledge to become generally known?
a. Want to avoid allowing people to unfairly use information they got because the product was distilled for
distribution avoid people getting a head start so put them in time out until they would have had access to
the product in the general public or reverse engineer
b. Damages
PATENT LAW
Requirements for Patentability
a. Fits one of the categories of patentable subject matter (PSM) Utility Patents(101)
i. Process
ii. Machine
iii. Manufacture
iv. Composition of matter
b. It has not been preceded in identical form in the public prior art
i. Novelty (102)
1. The test determines whether the claimed invention is unpatentable because it was made before, sold more than a
year before a patent application was filed, or otherwise disqualified by prior use or knowledge.
a. New Use of Old Products:
i. Inventors who discover a new use of a known material cannot claim the old product b/c only new
inventions are patentable
c. It is useful
i. Utility (101)
1. This is a rather low bar: a patent will only be denied here if the invention has absolutely no practical utility
d. It represents a nontrivial extension of what was known (103)
i. Non-Obviousness
1. This is the ultimate condition of patentability
2. The test determines whether an invention is a big enough technical advance over the prior act.
e. It is disclosed and described by the applicant in such a way as to enable others to make and use the invention.
i. Enablement/Sufficient Disclosure (112(a))
1. The test is concerned with the benefit the public obtains from the patent bargain.
ii. Rights Conferred By a Patent

II.

Rights Conferred By a Patent

Claims are at the heart of patent law
i. Claims define the boundaries of the property right that the patent confers.
ii. Note the difference between a dependent claim and a independent claim.
iii. Exclusionary Right
1. This functions more as a negative right because it doesnt automatically grant any right, and a patented invention
itself may be coveted by a preexisting patent.
The Elements of Patentability
a. Patentable Subject Matter (35 USC 101)
i. Compositions of Matter (which types of inventions will be considered for patent protection)
1. Diamond v. Chakrabarty
a. A live, human-made micro-organism is patentable subject matter because the defendant truly created
something rom the discovery: it was genetically modified and did not exist in nature.
b. The limit of things that do not fall in the scope of patentable subject matter seem to be discovers that
are laws of nature, physical phenomena, and abstract ideas.
c. Ex: Combining a bunch of nuts and calling it a new invention as opposed to genetically modifying one
nut that has all the flavors of five nuts.
d. SCOTUS said that:
i. Bacterium was not a product of nature b/c a human made it,
ii. No patent statute excluded living things and
iii. The plant patent acts were directed to other problems and did not represent a Congressional determination
not to allow patents on non-plant living things
2. Parke-Davis v. H.K. Mulford
a. The plaintiff patentee isolated adrenal glands in animals and made it in its purest form, Adrenalin. His patent
was rejected and he modified his patent application to include not only the substance, but the way he had
altered and modified it. It became for every practical purpose, a new thing commercially and therapeutically.
b. The patents are valid because it did not include a salt, and no one had ever isolated a substance which was
not in the form of a salt. A person can obtain a patent for isolation of a purified substance even if that is a
product that occurs naturally.
c. This was not actually naturally occurring
d. Note: You cannot extract something, purify it, and then patent it. It must be a wholly new thing
3. Mayo Collaborative Services v. Prometheus Laboratories
a. Directions for how to do something is not a patentable process, and thats what happened here. Natural laws
are not patentable, and the plaintiff did not transform the laws into a patent-eligible application of the laws.
i. If a law of nature is not patentable, then neither is a process reciting a law nature, unless that process has
additional features that provide practical assurance that the process is more than a drafting effort designed
to monopolize the law of nature itself.
ii. Process steps claimed along with an abstract idea or law of nature must add something significant to the
abstract
b. Machine or Transformation Test
i. Claim to a process qualifies to be considered for patenting if:
1. Is implemented with a particular machine that is specifically devised and adapted to carry out the
process in a why that is not concededly conventional and is not trivial; or else
2. Transforms an article from one thing of state to another
a. E.g., liquefied banana
ii. This is an important and useful clue to patentability, but we have neither said nor implied that the test
trumps the law of nature exclusion.
iii. It is possible to satisfy the MOT test and still be ineligible for patentability.
ii. Abstract Ideas
1. An idea of itself is not patentable, but a new device by which it may be made practically useful is.
2. 273(b): Limited Defense
a. If something is already common knowledge, there is no concern for patentability in the first place.
3. Bilski v. Kappos
a. Developed a mathematical method for hedging against a changing economy.
b. The court held that the claims were not patentable because they are attempts to patent abstract ideas.
c. A patentable process must be new and useful.
d. The Machine or Transformation Test is not the exclusive test.
i. Presence of a machine or a transformation is not necessary
4. Business Methods
a. Patentable subject matter (utility)
b. Many business method claims may constitute unpatenable abstract ideas
c. AIA creates a new administrative Transitional post-grant review proceeding
a.

III.

b.

c.

i. Prohibition on patents for tax strategies

Utility
i. Useful 101, 3 conditions
1. the claimed product or process must in fact be useful
2. a person must have discovered the inventions utility to achieve a reduction to practice for the purposes of invention
priority, and
3. the inventors patent specification must disclose how to use the claimed invention
ii. An invention can be denied a patent for lack of usefulness if it fails to operate as claimed in the application
iii. Brenner v. Manson
1. The patent applicants developed something that was related to something else already useful. They didnt know yet
whether what theyd developed was useful.
2. The application was denied because only patents that have specific utility may be patented, and Manson did not
allege that he ahd discovered a practical utility for the compound or that one was obvious.
3. RULE: Practical utility for a claimed chemical compound must be disclosed in a patent specification, or be
obvious in view of the specification disclosures to be a constructive reduction to practice and establish an
effective filing date
4. you cannot simply be given a hunting license.
5. This is the high water mark of utility.
iv. Applied liberally in the case of pharmaceutical patents
v. Often, utility is viewed as not having a lot of use outside of the chemical and biological field.
vi. In Re Fisher
1. Scientists developed an EST (a form of DNA).
2. The court held that the invention lacked specific utility, and that the uses were so general as to be rendered
meaningless.
3. A use must be specific, credible, and substantial.
Novelty and Statutory Bars: Old Law and New (35 USC 102)
i. Old Law vs. New Law (Either way, 102 is a strong common law tradition in patent law)
1. Old Law
a. Defines novelty from the date of first invention.
b. Something is new if it was invented before any piece of proven prior art.
c. All patents filed before March 16, 2013 are covered by this rule.
d. Embodies the principle that only truly new inventions deserve patents.
e. A person shall be entitled to a patent unless
i. 102(a) Novelty. The invention was known or used by others in this country, or patented or described in a
printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
ii. 102(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, more than one year prior to the date of the
application for patent in the United States
iii. 102(f) Derivation. He did not himself invent the subject matter sought to be patented, or
iv. 102(g)(1) during the course of an interference, another inventor involved therein establishes, to the
extent permitted in 104 that before such persons invention thereof the invention was made by such other
inventor and not abandoned, suppressed, or concealed, or (2) before such persons invention thereof,
the invention was made in this country by another inventor who had not abandoned, suppressed, or
concealed it. In determining priority of invention under this subsection, there shall be considered not only
the respective dates of conception and reduction to practice of the invention, but also the reasonable
diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception
by the other.
1. Known: invention must have been fully disclosed
a. Fully disclosed = reduced to practice by (1) actual reduction it exists or (2) constructive
reduction filed for patent application AND accessible to the public
2. Used:
a. Reduced to actual practice
b. Used in the manner for which it was intended by its inventor
c. Accessible to the public
3. Described in a Printed Publication:
a. Publication must have been printed or in a discernible, tangible form
b. There is a publication, meaning that an interested American, exercising reasonable diligence
could obtain the information
c. Enablement Requirement: must describe the invention sufficiently to enable a person with
ordinary skill in the art to make or practice the invention w/out undue experimentation
4. 102(g)

a.

b.

Identifying the first person to invent: invention entails (1) and inventive concept, and (2)
reduction of the inventive concept to actual or constructive practice
i. It is presumed that the first person to reduce the concept to
practice is the first to invent, but this presumption can be
rebutted (if 2nd person to reduce can prove that she was the first
to conceive of the invention and was diligent in reducing to
practice from a time prior to the others conception date, she
will be deemed the first inventor
Abandonment, suppression, and concealment (ACS): the first inventor will not have been
deemed to have ACS the invention as long as she was engaged in reasonable, diligent efforts
to bring the benefit of the invention to the public
i. Not necessary for the first inventor to file for a patent, she can
bring the benefit of the invention to the public by introducing it
to the market or by publishing a description of it

2.

ii.

iii.

iv.

v.

New Law (AIA)

a. Novelty is measured as of the date a patent for an invention is first filed, or applied for.
b. All patents filed on or after March 16, 2013 are subject to the new AIA 102.
c. Because the language was carried forward, the case law will be carried forward as well, so these cases are
relevant for the new AIA.
Novelty vs. Statutory Bar
1. Novelty
a. New compared to prior art.
b. To be patentable, an invention must somehow be different from all published articles, known techniques, and
marketed products.
2. Statutory Bar
a. A bar to patentability based on too long a delay of something the inventor does herself.
The Nature of Novelty
1. Rosaire v. National Lead Co.
a. This is a good example of why 102(b) was problematic under the old system.
b. Both of these patents were invalid because an invention is not patentable if it was known or used by others
in this country before the patentees invention thereof. Teplitz and the Gulf Oil Corp. had been using this oil
prospecting method in public, but they do not have a duty to show their process to the world. This method
was widely known and used and understood.
c. Anticipation
i. Proved by clear and convincing evidence.
ii. Anticipation is a grounds for invalidating or rejecting a patent because it means that the claimed
invention lacks novelty. Patent invalidity based on lack of novelty, or anticipation, requires that the
invention was known or used by others before it was invented by the patentee.
2. Inherency Doctrine
a. If somebody has already invented something and they dont know what it is, it has already been created, so
the person to discover it later might face prior art challenges.
Statutory Bars: Publications
1. An inventor can create a statutory bar by her own actions, whereas she cannot destroy the novelty of her own
inventions.
2. In Re Hall (applies to both 102(a) and 102(b))
a. The appellant wrote a thesis that was submitted to the Dept. of Chem. and Pharm. in September 1977. They
received and catalogued the thesis in December 1977. The effective filing date was February 27, 1979.
b. The appellants thesis was available well over a year before the filing date.
c. Note: It doesnt matter if something public has been actually accessed, it must simply be accessible to the
public.
Statutory Bars: Public Use
1. Egbert v. Lippman
a. Barnes developed corset steels that were good quality and did not break. He made the invention available to a
friend and his wife. His wife was wearing the corsets for 11 years before the patent was filed for.
b. To constitute the public use of an invention it is not necessary that more than one of the patented
articles should be publicly used.
i. Public use = fully disclosed
c. Whether the use of an invention is public of private does not necessarily depend upon the number of persons
to whom its use is known.
d. Some inventions are by their very character only capable of being used where they cannot be seen or
observed by the public eye.
e. An offer to sell, even a private offer, starts the clock under 102(b). Public use also starts it.

i. Note: Licensing agreements do not constitute a sale.

vi. Priority Rules and the First to Invent Under the 1952 Act
1. A person shall be entitled to a patent unless
a. (g)(1) during the course of an interference, another inventor involved therein establishes, to the extent
permitted in 104 that before such persons invention thereof the invention was made by such other inventor
and not abandoned, suppressed, or concealed, or (2) before such persons invention thereof, the invention was
made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining
priority of invention under this subsection, there shall be considered not only the respective dates of
conception and reduction to practice of the invention but also the reasonable diligence of one who has first to
conceive and last to reduce to practice, from a time prior to conception by the other.
2. Novelty and Loss of Right
a. 102(g)(1): covers interference proceedings
b. 102(g)(2): covers the use of prior inventions as a source of prior art
c. Generally, priority goes to the first inventor to (1) reduce the invention to practice without (2)
abandoning the invention
i. Exception: Reasonable diligence of the first to conceive and last to reduce to practice.
3. Griffith v. Kanamaru
a. This is a patent interference case where both Griffith and Kanamaru claim prior invention. Griffith relies on a
June 30, 1981 date of established conception; Kanamaru relies on a November 17, 1982 date of filing.
b. As a result of his seven month hiatus, Griffith failed to exercise reasonable diligence in moving forward with
his project. His excuses were not enough to overcome their commercial development nature
c. The reasonable diligence standard balances the interest in rewarding and encouraging invention with
the publics interest in the earliest possible disclosure of innovation.
vii. Non-obviousness (35 USC 103)
1. Whether 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 (PHOSITA) to which said subject matter pertains. Patentability shall not be negatived by the manner in
which the invention was made.
a. The way in which you invent something doesnt determine whether or not it is patentable. The amount of
time to invent something doesnt matter.
b. Note: the ordinary person has extraordinary knowledge and has knowledge of all pertinent prior art
i. Pertinent prior art = art in the same filed of the endeavor
ii. Lack of novelty can only be demonstrated through a single prior art reference that incudes every element
of the invention in the same arrangement
iii. Obviousness can be demonstrated by combining two or more prior art references
2. Graham v. John Deere Co. (one of the most famous cases in patent law)
a. The invention at issue here is a spring and clamping device designed to absorb shock from plow shakes as
they move through rocky soil. Graham claims that his new and improved device should receive a patent
because it is non-obvious.
b. The invention here is obvious because anyone looking at the issue would have seen the obvious change.
c. Patents that are granted must promote the progress of the useful art, and that requires that inventions must
constitute non-obvious differences.
d. TEST
i. Scope and content of the prior art
ii. Differences between the prior art and claims at issue
iii. Ordinary level of skill in the art ( education level, problems encountered, problems solved etc)
iv. Secondary considerations (objective evidence of non-obviousness)
1. Commercial success
2. Long-felt need and failure by others
3. Awards and praise
4. Skepticism, teaching away, and unexpected results
5. Licensing activity
6. Copying
7. Advances in collateral technology
8. Near simultaneous invention
9. These factors may work as plus factors, but their significance has been hotly debated.
e. Hotchkiss v. Greenwood TEST
i. Unless more ingenuity and skill were required than were possessed by an ordinary mechanic acquainted
with the business, there was an absence of that degree of skill and ingenuity, which constitute essential
elements of every invention. The improvement is the work of the skillful mechanic, not that of the
inventor.
3. Combining References:

a.

4.

5.

KSR International v. Teleflex

i. There is an electronic sensor on a foot pedal in a car to increase efficiency and save gas. They were
originally separate, and the patent at issue here simply combined them.
ii. The sensor was obvious to anyone with reasonable knowledge about the technology or the parts.
iii. The Supreme Court REJECTS the TSM Test (teaching, suggestion, or motivation) as too restrictive. It is a
guide, but not dispositive.
1. Under the TSM Test, a patent claim is only proved obvious if some motivation or suggestion to
combine the prior art teachings can be found in the prior art, the nature of the problem, or the
knowledge of a person having ordinary skill in the art.
2. Still helpful and should mention it
iv. This case is the most up-to-date case on obviousness.
b. If its obvious to try different components together, that can be enough.
i. Not necessary to show precise or explicit prior art teachings that are directed to the specific subject matter
of the claims
c. Principles of Guidance on Combining References:
i. If simply an arrangement of old elements w/ each performing the same function as before, and combo
yields no more than one would expect = obvious
ii. If technique has been used to improve a device, and PHOSITA would recognize that it would improve
similar devices in the same way = obvious, UNLESS actual application is beyond his or her skill
iii. If prior art teaches away from combining certain known elements, discovery of successful means of
combining them is more likely to be non-obvious and patentable
Enablement
a. A complete patent application has 4 parts:
i. Specification, including at least one claim
1. Specification:
a. A portion describing the invention and
b. The claims, which precisely define the scope of the exclusive rights a patent will confer.
ii. Drawings, if necessary to the understanding of the subject matter sought to be patented
iii. An inventors oath or declaration and
iv. Filing fee
1. To obtain a filing date, only need the first two up front. The second two can follow later w/in a
period of time
b. Enablement Requirement 112:
i. Specification and drawings must provide sufficient information about the invention so as to enable any
person skilled in the arty to which it pertains, or w/ which it is most nearly connected, to make and use the
same
Written Description Requirement
a. Specification must contain a written description of the invention
i. To assure that the applicant was in full possession of the claimed subject matter on the application filing
date and to allow other inventors to develop and obtain patent protection for later improvements and
subservient inventions that build on applicants teachings
ii. Distinct from enablement. Thus can sufficiently enable, but fail to describe the invention
b. Test:
i. Whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing date
1. No actual reduction to practice required

viii. Rights
1. Patent grants to the patentee, his heirs or assigns, the right to exclude others from making, using, offering for sale,
or selling the invention throughout the US or importing the invention in the US.
2. Duration:
a. Endures for 20 years from the date of filing
b. Using the date of filing rather than the date of issue, removes any incentive to prolong prosecution to delay
patent term commencement
c. Patent is effective only after it issues
i. Acts of making using, offering for sale, selling, or importing prior to issue do not automatically give rise
to liability
d. Patent owner has the right to collect a reasonable royalty form anyone who infringed b/w the time the patent
app was published and the time the patent issued, provided the infringer had:
i. actual notice of the published patent application AND
ii. the invention as claimed in the patent is substantially identical to the invention as claimed in the published
patent application

3.

Exclusive Rights:
a. Patents rights to exclude include making, using, offering for sale, selling and importing the patented
invention or products made by a patented process
i. Direct infringement is unauthorized performance of any one of these acts in the US during the patents
term
ii. Indirect infringement is the active inducement of infringement, or the unauthoriszied sale of a specially
designed component for use in a patented combo or process
ix. Infringement
1. Determination of Infringement:
a. Patent claim at issue must be construed to determine its scope and meaning
b. Determine whether the accused device or process infringes the properly construed claim, either literally, or
under the doctrine of equivalents
2. Claim Interpretation
a. This refers to a patentees claimed shelf space of their product.
b. Claim construction is a matter of law (Markman)
c. Claim construction has become the central issue is most patent adjudications.
d. What is the scope of the particular claim
3. Standards for Construing Claims; Sources of Construction
a. Phillips v. AWH Corporation
i. The issue is how baffles is defined and whether it is used restrictively.
ii. How to determine how widely a patent claim extends? Hierarchy:
1. Intrinsic Evidence (best source)
a. The words in the claim
b. Specification
c. Prosecution history evidence
2. Extrinsic Evidence
a. Dictionaries
b. Testimony from experts other than the inventor
c. The inventors testimony
iii. In general, when people apply for a patent, they want the language to indicate the most broad application
possible.
iv. Prosecution history estoppel: If you modify or make your claims more narrowly, you cant later claim the
original terms.
v. NOTE: lexicographer rule: ability to define words w/in the scope of your patent
1. Can also make a disclaimer of the subject matter, by disclaiming a definition of a word
2. Think about ordinary meaning v. contextual meaning
4. Literal Infringement
a. 35 USC 271
i. The patentee has an infringement cause of action against anyone who makes, uses, sells, offers for sale, or
imports the invention described in the claims of the patent.
1. This right runs the length of the patent term.
b. Larami Corp. v. Amron
i. Amron is accusing Larmi Corp of infringing their patent for the water pressure and housing chamber for
liquids. There are allegations of literal infringement and infringement by equivalents.
ii. Literal Infringement = when the s product or process literally falls within the description in a patent
claim, containing all the elements set forth in the claim in the same relationship
1. No literal infringement exists because it is an external tank as opposed to an internal tank.
2. Literal infringement follows the all elements rule.
iii. Infringement by Equivalents/Doctrine of Equivalents
1. Doctrine of Equivalents: prevents a defendant from avoiding liability through insubstantial
changes that take his device or process outside the literal language of the patent claims.
2. Substantial Equivalent Test = if the has made a change, so that this product or process does not
literally fall w/in the wording of any claim, he may still be liable for direct infringement under the
doctrine of equivalents
a. The patent owner must prove that the accused product has the substantial equivalent of
every limitation or element of a patent claim.
3. Function-Way-Result Test
a. Considers "on a limitation by limitation basis" whether "the accused product performs
substantially the same function in substantially the same way with substantially the same
result as each claim limitation of the patented product.

10

i. Would person reasonably skilled in the art have known that the
differing elements were interchangeable at the time of the
infringement?
5.

Indirect Infringement:
a. Active inducement [Patent Act 271(b)]: a person actively and knowingly encourages or aids another perons
infringement includes:
1. Selling a component w/ instructions on how to make a patented combo or carry out at patented
process
2. Designing an infringing product for construction by others
3. Providing a warranty or other services connected with a patented product
4. Repairing or servicing previously sold infringing systems
5. Licensing and controlling anothers manufacture of an infringing product
b. Contributory infringement:
i. Must have direct infringement by another
ii. The component is a material part of the invention or for sale in or imported into the US
iii. The component Is especially made or adapted for infringing use, and is not a staple article suitable for
noninfringing use, and
iv. The person selling it knows of the patent and of the purchasers intended use
1. NOTE: knowledge component here
2. Staple or suitable for noninfringing use = has some substantial noninfringing use
3. wilfull blindness suffices to support a finding of inducement
v. There is no substantial noninfringing use.
x. Remedies:
1. Preliminary injunction: granted upon a clear showing of
a. irreparable harm AND
b. a likelihood upon finding that the plaintiff is likely to succeed on the merits
c. There can be no presumption of irreparable harm upon finding that the is likely to succeed on the merits
2. Permanent Injunction against infringement:
a. Four-Factor Test
i. (1) the has suffered irreparable injury
ii. (2) The remedies at law inadequate to compensate for the injury
iii. (3) Given the balance of hardships b/w the parties, a remedy at equity is warranted
iv. (4) The public interest will be disserved by a permanent injunction
b. eBay, Inc. v. MercExhange LLC
i. eBay is the allegedly infringing party
ii. this patent is exactly what eBay is trying to do want to establish a central authority to promote trust
among participants
iii. SOR: abuse of discretion on appeal
1. This is a high amount of deference
iv. Roberts Concurrence: he agrees the four factor test is right, but he says that courts have often granted a
permanent injunction after a finding of infringement
3. Damages: 2 ways to calculate
a. Reasonable royalty: the amount that a willing licensor and a willing licensee would have agreed to had they
negotiated a license the day infringement began
i. Floor on patent damages you can get if you cant prove the lost pofits.
ii. Go back tot time of infringement
b. Loss Profits: 4 Factor Test Panduit
i. Demand for patented product
ii. Absence of acceptable noninfringing alternative
1. One that provides the same benefits of the patented material
2. Modified by the market share test:
a. If you have multiple parties (A and B) in a market, each have 50% of the market and B is
using a noninfringing process (A is patent holder), C comes in and infringes taking away
sales, you would put A back in the position they were in before there was infringement.
Calculate the market share based on the original ratio between the two original companies
3. Want to put a back in the position they would have been in but for the infringement
iii. Capacity : the ability to exploit the demand
iv. Amount of the actual profit (but for standard)
COPYRIGHT LAW (17 USC 101, 102)
I.

Subject Matter17 USC 102(a):

11

a.
II.
a.

III.

IV.
a.

b.

Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of
expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either
directly or with the aid of a machine or device.
Requirements for Protection:
Originality (2 requirements):
i. Author must have engaged in his own intellectual endeavor, rather than merely copying from a preexisting source
ii. Work must demonstrate a minimal amount of creativity
iii. Feist Publications v. Rural Telephone Services
1. Rural has a local monopoly and they put everyone in their directory as required by statute. Rural has white pages
and yellow pages. Feist puts together a directory to cover a much larger market. Rural was the only
neighborhood that refused to give Feist a license, so Feist copied a lot of the listings in Rurals directory. Both
directories were organized alphabetically.
2. Organizing alphabetically is not original and does not deserve copyright protection.
3. Note: Facts are not copyrightable, but a compilation of facts in a particular way might be copyrightable.
iv. NOTE: de minimis works such a words, short phrases, slogans, and the like are not protected
Fixation in a Tangible Medium
i. H.R. Rep. No. 94-1476
1. A work is considered 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.
2. The two essential elements of copyrightable matter are:
a. Original Work
b. Tangible Object
3. Both must merge through fixation to produce subject matter copyrightable under the statute.
ii. The fixation requirement arises in two separate portions of the Copyright Act.
1. It is a requirement for copyright protection.
2. Fixation plays a role in determining whether a defendant has infringed a copyright.
a. No infringement unless the work is fixed
3. Is dividing line b/w CL protection and statutory protection
Formalities
There are four formal procedural formalities for copyright:
i. Notice of copyright
1. The 1909 Act and the 1976 Act still apply to works publicly distributed without proper notice
2. 1976: Notice consists of (1) the symbol , word Copyright, or Copr. (2) the year of first publication, (3) the
name of the copyright owner
a. must be affixed in such manner and location as to give reasonable notice of the claim of copyright
ii. Publication of the work
1. Divestive Publication
a. Results in forfeiture of perpetual common law copyright protection
b. Still had the potential to invest in statutory (federal copyright), running for a limited time from the date of
publication
c. Distribution is substantil
2. Investive Publication
a. Results in forfeiture of federal copyright protection if notice is inadequate.
3. Limited Publication
a. A distribution of copies to a definitely selected group and for a limited purpose, and without the right of
diffusion, reproduction, distribution, or sale
4. General Publication
a. Copies of a work were made available to members of the general public regardless of who they are or
what they will do with it
b. Public performances are not publications
iii. Registration of the work with the Copyright Office
1. Successful registration constitutes prima facie evidence of the validity of the copyright.
2. A copyright holder must register the copyright before bringing an infringement action.
3. There is also a powerful incentive for early registration: a copyright holder can obtain statutory damages and
attorney fees only for infringements that occurred after registration.
iv. Deposit of a copy of the work with the Library of Congress.
1. Two copies of each work published in the United States must be deposited within three months after publication.
Eldred v. Ashcroft
i. The business were built on copyright works that had fallen into the public domain.
ii. Congress has the right to extend the period of time for which a copyright receives protection, and granting an
additional twenty years was not a violation of their powers.

12

iii. Note: Seaman disagrees as a policy matter with this outcome. What is the motivation for extending the copyright an
additional 20 years when during that time, most copyrights are no longer valuable anyway?
1. Why do you need an extra 20 years on this? Youre now extending the copyright
iv. Follow-up to Eldred
1. The Uruguay agreements did not supersede the copyright act decision that copyrights could not be retroactively
amended if they had already lapsed.
V.
Copyrightable Subject Matter
a. Idea/Expression Dichotomy
i. 35 USC 102 Subject Matter of Copyright: In General
1. (a) Copyright protection subsists, in accordance with this title, in original works of authorship
2. (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure,
process, system, method of operation, concept, principle, or discovery regardless of the form in which it is
described, explained, illustrated, or embodied in such work.
a. When use or expression of these things necessitates copying the plaintiffs expression, the expression will
not be protected
ii. Baker v. Selden
1. Selden sued Baker for alleged infringement. There is no dispute here about the similarity.
2. The book as a whole expressing how the system works is copyrightable, but the actual method is not
copyrightable. Explaining how to apply everything in the book is not copyrightable its more akin to a set of
instructions. So, the information at issue here is not copyrightable.
3. Note: Recipes are not copyrightable because they are a set of instructions.
iii. Lotus v. Borland
1. The sequencing of a computer menu command hierarchy is at issue here. There is a function associated with the
word; the remake is intended to emulate the previous software.
2. This is a method of operation, and therefore is not copyrightable under 102(b). This is a system of commands
that are intended to accomplish certain things.
a. If specific words are Essential to operating something, then they are a method of operation and not
copyrightable
iv. Morrissey v. Proctor & Gamble
1. Directions for how to answer a sweepstakes for both of these corporations were extremely similar.
2. Copyright does NOT extend to subject matter like this.
3. There may be multiple ways to express this idea, but there are a limited number of ways to explain what to do
when the process is ultimately the same.
4. Merger Doctrine
a. When there is only one or but a few ways of expressing an idea, then courts will find that the idea behind
the work merges with its expression and the work is not copyrightable.
i. This is an extension of the basic rationale from Baker v. Selden.
b. An important limiting principle on computer code is that merger applies so your particular expression is
not copyrightable.
b. The Domain and Scope of Copyright Protection
i. Works of Authorship Include the Following Categories:
1. Literary Works
2. Musical Works, including accompanying words
3. Dramatic Works, including accompanying music
4. Pantomimes and Choreographic Works
5. Pictorial, Graphic, and Sculptural Works
6. Motion Pictures and Other Audiovisual Works
7. Sound Recordings
8. Architectural Works
c. Traditional Rights of Copyright Owners
i. 17 USC 106: Exclusive Rights in Copyrighted Works
1. Subject to 107-118, the owner of copyright under this title has the exclusive rights to do and to authorize
any of the following:
a. (1) To reproduce the copyrighted work in copies or phonorecords;
b. (2) To prepare derivative works based on the copyrighted work; (Stallone)
c. (3) To distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of
ownership, or by rental, lease, or lending;
d. (4) In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures,
and motion pictures and other audiovisual works, to perform he copyright work publicly;
e. (5) In the case of literary musical, dramatic, and chorographic works, pantomimes, and pictorial, graphic,
or sculptural works, including the individual images of a motion picture or other audiovisual work, to
display the copyrighted work publicly; and

13

f.

(6) In the case of sound recordings, the perform the copyrighted work publicly by means of a digital audio
transmission.
ii. Copyright infringement may occur when:
1. An actor directly infringes the rights of copyright holders OR
2. The actor encourages or assists a third party to infringe.
iii. The Right to Make Copies
1. The right to reproduce is one of the most fundamental rights granted to the copyright owner.
a. Does not prohibit independent creation
2. Requirements
i. Copying of work
1. Direct evidence (testimony or admission) or
a. An admission of copying is not equivalent to admitting copyright infringement, because
the copier may still contend that he copied only ideas and not copyrightable expression,
or that the two works are not substantially similar
2. Circumstantial Evidence
a. Access and Similarity (sliding scale)
i. Note: These are both questions of fact that we give to the jury.
ii. Access = reasonable opportunity to view or hear s work, and must have had
access before s work was created.
ii. Sufficient Appropriation of Protected Material
1. Omit unprotected elements
b. Proving Copyright Infringement
i. Whether someone has actually copied the work of the author
ii. Whether the second comer appropriated sufficient protected material to violate a copyright owners
rights.
3. Copying
a. Arnstein v. Porter
i. Arnstein sued Porter for infringement of copyright in many of his musical compositions. There is no
direct proof, but these were generally popular songs and so the argument here is based on substantial
similarity.
ii. If evidence of access is absent, the similarities must be so striking as to preclude the possibility
that each independently arrived at the same result.
iii. De minimis rule
1. If you copy de minimis material, that would not be considered unlawful appropriation.
iv. You cannot present expert testimony under unlawful appropriation.
v. Note: Just because a story seems implausible does not take it out of the possibility for copyright
infringement.
b. What is not protectable under copyright?
i. Facts
ii. Ideas
1. Merger Doctrine
iii. Processes, procedures, methods of operation
iv. Unoriginal material
1. Slogans/short phrases
2. Stock characters
a. Damsel in distress or middle aged detective
3. Scenes a faire
a. Incidents, characters, or setting which are, as a practical matter standard in the
treatment of a given topic.
4. Improper Appropriation
i. Nichols v. Universal Pictures Corporation
1. Two plays had the same basic facts. There was no copyright infringement.
2. The stories themselves were actually very different, but the subject was no different than
Romeo and Juliet. A copyright does not cover every word that is written in a play. These
characters end up looking more like stock characters.
3. Note that here there are some similarities, but its not enough.
ii. TEST: 9th circuit test for improper appropriation
1. Objective: dissects the objective manifestations of creativity in the plaintiffs work in order to
determine the elements that are protectable under copyright law
2. Subjective: Trier of fact determines whether the s work appropriates the plaintiffs protected
expression
5. The Right to Prepare Derivative Works

14

VI.
a.

i. A derivative work is a work based on one or more preexisting works, such as a translation, musical
arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction,
abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted.
It also includes a work consisting of editorial revisions, annotations, elaborations, or other
modifications which, as a whole, represent an original work of authorship.
ii. Anderson v. Stallone
1. Timothy Anderson wrote a 31-page treatment entitled Rocky IV, which was ultimately taken and
turned into the shell for the actual Rocky IV script.
2. Stallone owned the copyright of Rocky and therefore owned the right to any derivative works as
well. Anderson never had a copyright to begin with.
a. Copyright owner has rights to derivative works!
3. Anderson definitely had access, we can assume he has seen the movies.
4. Note: This is a big issue in fan fiction.
b. Distribution Right (106(3))
c. (3) To distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of
ownership, or by rental, lease, or lending;
1. Both the copier who never does anything with his or her copies and the unknowing distributor
of unauthorized copies are liable for copyright infringement
ii. First Sale Doctrine:
1. Copyright holder cannot restrict subsequent resale or distribution by a purchaser or recipient of
a particular lawful copy, the person that buys the work has the right to use it without any duty to
account for profits, etc.
a. You cant create a derivative work, sell copies, etc., but you can sell that copy, give it
away, etc.
iii. Importation Right:
1. Manufacturers often sell goods in multiple national markets, sometimes pricing goods
differently depending on supply and demand.
2. 602 prohibits commercial importation into the United States of copyrighted works acquired
abroad that were created in the US
d. Public Performance and Display Rights
i. Copyright owners possess the exclusive right to perform or display their works publicly.
ii. If it moves, its a performance, if it stays still, its a display.
iii. 101
1. To perform or display a work publicly means
a. To perform or display it at a place open to the public or at any place where a substantial
number of persons outside a normal circle of a family and its social acquaintances is
gathered; or
b. To transmit or otherwise communicate a performance or display of the work to a place
specified by clause (1) or to the public, by means of any device or process, whether the
members of the public capable of receiving the performance or display receive it in the
same place or in different places and at the same time or at different times.
e. Being performed in public does not necessarily mean there must be a large crowd of people there.
i. E.g, like a taxi cab or phone booth
DEFENSES TO COPYRIGHT INFRINGEMENT
Fair Use (17 USC 107)
i. Factors to Consider
1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit
commercial purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. The effect of the use upon the potential market for or value of the copyrighted work **most important
a. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon
consideration of all the above factors. These factors are non-exhaustive.
ii. Harper & Row v. Nation Enterprises
1. The original work here is an autobiography of Ford. They had a deal that Time Magazine would publish the
story. The Nation Magazine got ahold of the manuscript and preempted Time by releasing an article that used a
bunch of the quotes from the book.
2. The fact that this is unpublished plays a role. If a work is unpublished, the owner of the copyright has a right to
control the first distribution of the work.
3. There is extra protection for unpublished works.
a. You have the right to release your copyrighted work when you want

15

4.

VII.
a.

b.
c.

Note: In matters of public opinion, the First Amendment could potentially override the right of first sale. The
law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy.
a. Response: Copyright is intended to encourage the First Amendments goals.
iii. Parodies
1. Parodies make fun of an original work by at once imitating and distorting the work. Must be
TRANSFORMATIVE
a. To be effective, the audience must recognize the connection between the parody and the original work
b. Necessarily has some deliberate copying of the original
i. The more you take, the closer you get to a derivative work, rather than a parody
ii. Even thought you could completely destroy the market for the parody, you have no cognizable action. A
lethal parody is ok
1. Its not stealing, its literally going against the original work
2. Copyright law affords parodists (but less so satirists) a wide berth in drawing upon protected works.
3. Campbell v. Acuff Rose
a. Campbell changes the words in Pretty Woman in a sort of derogatory way. They had asked for
permission, but they were denied.
b. By necessity, parody must borrow from the original, but it is transformative in some way as well. (NOTE:
Satire, to distinguish, can stand on its own.)
c. The court does discuss the possibility of a potential derivative if Orbison wanted to make a rap version
of his song, but Seaman says this is the weakest part of the courts argument.
iv. Remixes
1. Bill Graham Archives v. Dorling Kindersly
2. Because the book was transformative, they satisfied the
Anticircumvention Prohibitions
Digital Millennium Copyright Act
i. Title I: Anti-circumvention Provisions
1. Section 1201(a): Access controls
a. Prohibits acts to circumvent TPMs (technological protection measures)
b. Prohibits manufacture, trafficking, marketing & importation of devices to circumvent TPMs
2. Section 1201(b): Copying controls
a. Prohibits trafficking & marketing of devices only. Circumvention acts not prohibited (but difficult).
3. Section 1202
a. Prohibits falsification, removal or alteration of copyright management information.
b. Lower courts split whether copyright management information includes non-technological measures
ii. Title II: Safe Harbors for OSPs (Online Service Providers)
1. 512(a): Transitory Network Communications
2. 512(c): Online Storage
3. 512(d): Information Location Tools (search engines)
4. 512(e): Limitation on Liability of Nonprofit Educational Institutions
iii. General requirements for online service providers:
1. Adopt and enforce policy to terminate repeat offenders
2. Adopt standard technical measures to ID and protect copyrighted works
3. Designate agent to receive notice of alleged infringements.
iv. Specific Requirements for online storage under 512(c)
1. Lack the required knowledge/intent of the infringing activity
2. There was no financial benefit from infringement AND
3. There was timely compliance with a valid removal request.
a. upon notification of claimed infringement as described in paragraph (3), responds expeditiously to
remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing
activity.
v. Red- Flag Test:
1. Objective: OSP must have knowledge that the infringing material resides on its system
a. Answers whether the facts or circumstances constitute a red flag
2. Subjective: the infringing activity would have been apparent to a reasonable person
a. Answers whether the OSP was aware of a red flag
3. You lose immunity if you actively ignore infringing activity that you have actual knowledge of
Cant do anything that would get around copyright protections
i. Like you cant unlock an iPhone
512(c): Safe harbor protection is available only if the online Service Provider (OSP):
i. does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
ii. in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is
apparent; or

16

iii. upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to the material.
Viacom v. YouTube
i. YouTube had actual red flag knowledge that they were infringing because Viacom had told them to remove the content.
ii. Actual knowledge will disqualify a company from safe harbor protection
iii. Willful blindness doctrine may be applied, in appropriate circumstances, to demonstrate knowledge or awareness of
specific instances of infringement.
iv. Vicarious copyright infringement: when the right and ability to supervise coalesce with an obvious and direct financial
interest in the exploitation of copyright materials.
i. The 'right and ability to control' infringing activity requires something more than the ability to remove or block access to
materials posted on a service provider's website.
e. MGM v. Grokster (indirect copyright infringement)
i. Grokster and Streamcast were similar to Napster, except that there was no central drive, so they claimed that they didnt
know what was being shared. However, they advertised as a replacement for Napster.
ii. Note: The Sony case discussed here held that time shifting was fair use.
iii. One who distributes a device with the object of promoting its use to infringe copyright, as shown by clear
expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement
by third parties.
1. Mere knowledge of infringing potential or actual infringing uses would not be enough here to subject a
distributor to liability. Nor would ordinary acts incident to product distribution, such as offering customers
technical support or product updates, support liability in themselves.
2.
Contributory Infringement: One infringes contributorily by intentionally inducing or encouraging direct
infringement and infringes vicariously by profiting from direct infringement while declining to exercise a right
to stop or limit it.
3.
A showing that infringement was encouraged overcomes the law's reluctance to find liability when a defendant
merely sells a commercial product suitable for some lawful use.
iv. TAKE AWAY
1. Inducement of infringement can be proved by the Sony test (capable of commercially noninfringing uses) OR if
its goal is to have others infringe.
f. Remedies:
i. Injunctions:
1. Preliminary and permanent injunctions may be awarded against copyright infringement and violation of the
artists moral rights in works of visual art
2. Copyright Act also provides for the impounding and eventual destruction of infringing copies, phonorecords
and/or articles used to make them
a. Collected by the US government
3. Suntrust Preliminary Injunctions Factors
a. (1) Substantial likelihood of success of winning a permanent injunction on the merits
b. (2) Substantial threat of irreparable injury
c. (3) Balancing of the harms of the parties
d. (4) No disservice to the public interest
e. All looked at during the course of litigation
ii. Damages:
VIII. OWNERSHIP AND DURATION
IX.
Initial Ownership of Copyrights
a. Once a copyright is acquired, the entire bundle of rights may be assigned to others.
i. However, the copyright ownership vests initially in the author or authors of the work (17 USC 201(a)).
b. Copyrights have a limited duration.
c. Works Made for Hire (201(a))
i. Definition
1. A work prepared by an employee within the scope of his or her employment (no written contract needed)
a. It is within the kind he is employed to perform
b. It occurs substantially within the authorized time and space limits; and
c. It is actuated, at least in part, by a purpose to serve the master.
2. OR A work falling within one of nine enumerated categories (written contract needed):
a. A contribution to a collective work
b. A part of a motion picture or other audiovisual work
c. A translation
d. A supplementary work
e. A compilation
f. A test
g. Answer material for a test
h. An atlas
d.

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I.

ii. Community for Creative Non-Violence v. Reid

1. The plaintiff and defendant decide to enter into an oral agreement for the defendant to build a sculpture. The
dispute arises over moving the statue around the country for fundraisers and who owns the work.
2. This is not a work made for hire, but CCNV might be considered a joint author. Reid was an independent
contractor for CCNV.
3. Ways of determining whether a work is prepared by an employee within the scope of his or her
employment:
a. A work is prepared by an employee whenever the hiring party retains the right to control the product.
b. A work is prepared by an employee when the hiring party has actually wielded control with respect to the
creation of a particular work.
c. The term employee carries its common-law agency meaning.
i. Court decides that there was an agency relationship
ii. Factors to Consider (employee v. independent k-tor):
1. The skill required
2. The source of the instrumentalities and tools
3. The location of the work
4. The duration of the relationship between the parties
5. Whether the hiring party has the right to assign additional projects to the hired party
6. The extent of the hired partys discretion over when and how long to work
7. The method of payment
8. The hired partys role in hiring and paying assistants
9. Whether the work is part of the regular business of the hiring party
d. Employee only refers to formal, salaried employees.
iii. General Rule: An author is the party who actually creates the work, that is, the person who translates an idea into a fixed,
tangible expression entitled to copyright expression.
iv. Teacher Exception
1. Faculty members and other employees who create documents for scholarship are employees, but as a matter of
policy, most universities will not require assignment of copyright rights.
v. Parties are free to assign their rights
d. Joint Works
i. A joint work is a work prepared by two or more authors with the intention that their contributions will be
merged into inseparable or interdependent parts of a unitary whole.
ii. Factors to Consider
1. An author superintends the work by exercising control
2. Putative co-authors make objective manifestations of a shared intent to be co-authors.
iii. Aalmuhammed v. Lee
1. Aalmuhammed helped Denzel Washington in gathering information about Malcolm Xs life to make the movie
more authentic. He translated some scenes and assisted in making the movie more authentic. Now, he wants to
be considered a co-author with Spike Lee so that he will be awarded half of the profits of the movie.
2. Even Spike Lee didnt have rights as an author Warner Brothers did. It would be ridiculous for Aalmuhammed
to expect that he would have these rights having contributed so much less than Lee did. Being a joint author
requires more than the plaintiff put in here.
iv. When is someone an author?
1. Burrows-Giles
a. Authors = persons to whom the work owes its origins and who superintended the whole work, i.e. the
mastermind
2. Intent Requirement: The person claiming to be an author of a joint work must prove that both parties intended
each other to be joint authors
3. The Ninth Circuit requires that each joint author must make an independently copyrightable contribution to a
work.
4. Factors
a. Exercising creative control
b. Objective manifestations of shared intent to be co-authors
c. Share of each co-authors contribution to the product cannot be appraised
v. Examples of Collaboration
1. Musical Works
2. Academic Publications
3. Movie Scripts
4. Open Source Software
TRADEMARK
15 USC 1127 Trademark
a. Any word, name, symbol or device or any combination thereof

18

i. Used by a person, or
ii. Which a person has a bona fide intention to use in commerce and applies to register on the principal register established by
this act,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others
and to indicate the source of the foods, even if that source is unknown
iii. Cannot be functional
b. Types:
i. TM = common law symbol
1. Businesses get common law trademark rights by naming a brand name or logo in the normal course of commerce
2. R with circle is the registered trademark that you can only get by going PTO
ii. Benefits to registration:
1. You get the right to use the mark nationwide
2. Nationwide constructive notice to others
3. Can sue for infringement under the Lanham Act
4. Can get up to triple damages for willful infringements and attorneys fees
5. After PTO approves the trademark, the mark becomes uncontestable after 5 years
iii. Trademark opposition:
1. You will be harmed by the grant of someone elses attempt to get a trademark
2. Challenging when the application is pending
iv. Trademark Cancellation: same standard as above, only happens when the trademark
II.
Color, Fragrance, and Sounds
a. Qualitex v. Jacobson
i. Jacobson started using the same color as Qualitex for dry cleaning pads. Qualitex claimed that the color was too closely
associated with their brand.
ii. A color can effectively meet the requirements of a trademark. There is no rule barring a color from qualifying for
trademark protection. It can serve as a trademark if it is non-functional and acquires secondary meaning.
iii. Functionality Doctrine
1. Two Part Test:
a. Is the feature essential to the use or purpose of the article, or does it affect the cost of quality of the article?
Yes functional and cannot be subject to trade dress protection. No Next ?
b. Would the exclusive use of the feature put competitors at a significant, non-reputation-related disadvantage?
Yes aesthetic functionality and the feature may not be protected
i. Only if the product feature is nonfunctional under both tests can it be protected as trade dress
2. Prevents trademark law, which seeks to promote competition by protecting a firms reputation, from instead
inhibiting legitimate competition by allowing a producer to control a useful product feature.
3. The functionality doctrine keeps trademark law focused on promoting competition by protecting a companys
reputation instead of minimizing competition by allowing a producer to monopolize a functional product features,
which is not trademarkable.
a. Ex: Steel Wool wire design vs. the fact that theyre silver.
b. Functionality does not create an absolute bar to the use of color alone as a mark
III.
Establishment of Trademark Rights
a. Distinctiveness
i. Levels of Distinction (A.S.D.G. All Students Do Good)
1. Arbitrary/Fanciful
a. A beer labeled Angel Dust
b. No relationship to products/services
2. Suggestive
a. A beer named Amber Brew
b. Suggests, rather than describes, some particular characteristic of the good/service.
c. Requires the consumer to exercise the imagination.
d. Coppertone for tanning
The first two are inherently distinctive
3. Descriptive
a. = a word, pictures, or other symbol that directly describes something about the goods or services in connection
with which it is used as a mark
b. A beer named Light, hoppy, IPA
c. Identifies a characteristic or quality of an article or service
d. Descriptive must be with secondary meaning to be protectable
4. Generic
a. A beer labeled beer
b. Denotes basic nature of products/services provided.
c. Two categories of generic:

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i. Genericide
1. The term becomes so uniform that it becomes the name for the object
ii. The term is called what it is.
d. NEVER GETS TRADEMARK PROTECTION
5. Trademark is subject to cancellation if you let it become generic
ii. Zatarains v. Oak Grove Smokehouse
1. Zatarains sells FISH FRI and CHICK FRI and have trademarked the names. Oak Grove has a similar product with
the same name.
2. The alleged infringers had a fair use defense to any asserted infringement of the term FISH-FRI and that the
registration of the term CHICK-FRI should be cancelled.
3. Note: The threshold issue in any trademark case is whether the work or phrase is initially registerable or protectable.
4. FISH FRI is found to be descriptive because its what you actually use the product for.
a. Secondary meaning: The primary significance of term in the minds of the consuming public is not the
product but the producer.
i. Buyers only need to know that the product or service comes from a single source, not the identity of the
source
ii. Without secondary meaning, anyone can use it.
iii. Factors to Consider in whether there is secondary meaning:
1. Advertising dollars
2. Profit/ actual sales
3. Surveys
4. Usually, high 20-low 30% is enough to establish secondary meaning. The higher the better.
iv. Even though FISH-FRI has secondary meaning in New Orleans, Zatarains still lost its trademark
infringement claim because it failed to prevent the fair use of the term by others using fish fry as a
descriptor
v. burden is always on the plaintiff to show secondary meaning (HIGH BURDEN)
b. Fair Use Defense
i. The defense is available only in actions involving descriptive terms and only when the term is used in its
descriptive sense rather than its trademarking sense. The fair use defense prevents a trademark registrant
from appropriating a descriptive term for its own use to the exclusion of others who may be prevented
thereby from accurately describing their own goods.
1. Requires that the term be used fairly and in good faith only to describe to users the goods or
services of such party, or their geographic origin
IV.
Trademark Infringement
a. Lanham Act 15 USC 1127
b. Use as a trademark in commerce?
1. = Threshold Question
2. trademark rights may only be established only through bona fide use in connection with an actual offering of goods
or services, rather than a token use designed merely to reserve rights in the mark
ii. Rescuecom v. Google
1. Rescuecom claimed that Googles use of Adwords and Keyword Suggestion Tool was a use in commerce and
therefore by selling their company name for competitors use they had infringed on the trademark. Google
displayed, offered, and sold Rescuecoms mark to Googles advertising customers when selling its advertising
services.
2. This can qualify as a use in commerce. Google is selling particular advertising = trademark infringement
3. Distinguishing from 1-800 Contacts
a. The defendant made no use whatsoever of the plaintiffs trademark whereas here, the defendant is using and
selling the plaintiffs trademark.
b. The defendant did not use or display the trademark, much less sell, Google did.
c. Likelihood of Confusion
i. AMF v. Sleekcraft
1. One boat company uses the name Slickcraft and the other uses the name Sleekcraft. There are some
overlapping uses, but they target different audiences.
a. Only a highly skilled enthusiast would require the higher speeds the Sleekcraft promises
2. When things are equal, the purchasers degree of care seems to tip the scales here. A fairly limited injunction is
ultimately what is issued here.
3. Factors for Consideration in Likelihood of Confusion (weigh them all)
a. Strength of the Mark
i. A weak mark will be entitled to a restricted range of protection
1. Only if the marks are quite similar, and the goods closely related, will infringement be found
b. Proximity of the Goods

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V.
a.
b.

c.

VI.
a.
b.

i. Is the public more or less likely to mistakenly assume an association between the producer of the related
goods?
c. Similarity of the mark
i. Sight
1. In and out of the context of the logo
ii. Sound
iii. Meaning
d. Evidence of actual confusion
e. Marketing channels
i. Convergent marketing channels increase the likelihood of confusion
ii. Are their price ranges similar?
f. Type of goods/purchasers degree of care
g. Defendants intent in selecting mark
i. Good faith is less probative of the likelihood of confusion, but might be given considerable weight when
fashioning a remedy
h. Likelihood of new product lines
ii. Confusion as to source: Adidas/ Nike example
iii. Confusion as to sponsorship: Kodak making bikes
iv. Initial Interest Confusion: McDonalds sign on the highway. No confusion at the time of the sale. You think that its going
to be there but theres Wendys instead
v. Post-Sale Confusion: Consumer wont confuse the products but a third part will from a distance
vi. Reverse Confusion: large company adopts the mark of a smaller company, you associate it with the infringer (the large
company) because you know them better
Trade Dress and Product Configurations
Trade dress is the design and packaging of materials, and even the design and shape of the product itself, if the packaging or
the product configuration
Lanham Act 43: False Designations of Origin and False Descriptions Forbidden.
i. Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word,
term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which
1. is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such
person with another person or as to the origin, sponsorship, or approval of his or her goods, services, or commercial
activities by another person, or
2. in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of
his or her or another persons goods, services, or commercial activities, shall be liable in a civil action by any person
who believes that he or she is or is likely to be damaged by such act.
Distinctiveness of Trade Dress and Product Configuration
i. Two Pesos v. Taco Cabana
1. Taco Cabana is claiming that Two Pesos violated the trade dress of their restaurant the trade dress claimed was the
design of the outside of their restaurant.
2. Proof of secondary meaning is not required to prevail on a claim of 43(a) when the trade dress at issue is
inherently distinctive.
3. Inherently distinctive marks are still protectable under 43(a).
4. The court feels that there is a concern here about undermining start-ups if anyone can copy a trade dress of the
outside of restaurants.
5. Inherently distinctive marks do not need secondary meaning for protection: if the trade dress has a functional
attribute, then it is not protectable.
6. Secondary meaning is ALWAYS subjective.
Dilution (15 USC 1125)
Likelihood of confusion is the traditional benchmark of trademark infringement, but trademark infringement can occur even
where consumers are not likely to be confused as to the source.
Lanham Act 43(c) cause of action for Dilution
i. Enables the owner of a famous mark that is distinctive (either inherently or through acquisition of secondary meaning) to
enjoin a s use in commerce of a similar mark or trade name that is likely to cause dilution by blurring or tarnishment, if
the first used its diluting mark in commerce after the s mark became famous
ii. The Federal Trademark Dilution Act has been interpreted to prevent only actual dilution rather than a likelihood of
dilution.
iii. Famous Mark (43(c)(2)(A))
1. Widely recognized by the general consuming public as a designation of source of the goods or services.
2. Factors
a. Duration, extent, and geographic reach of Advertising
b. Amount, volume, and geographic extent of sales of goods or services offered under the mark

21

c.

d.

e.
VII.
a.

b.

c. Extent of actual recognition

d. Registration of the mark.
iv. Types of dilution
1. Dilution by blurring
a. Factors to consider:
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 of 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.
2. Dilution by tarnishment
a. An association arising form the similarity between a mark or trade name and a famous mark that harms the
reputation of the famous mark
i. Similar mark casts the s famous mark or trade name in a bad light and tarnishes the luster of the
plaintiffs commercial image or reputation
3. Defenses to Dilution
a. Any fair use, including
i. Advertising/promotion for purposes of comparison
ii. Parody, criticism, commenting upon the mark
b. News reporting and news commentary
c. Any non-commercial use
*Relief is limited to an injunction unless the can demonstrate that the defendant used its diluting mark in commerce after
the Trademark Dilution Revision Act of 2006 and that the s acts were willful
Louis Vuitton v. Haute Diggity Dog
i. Haute Diggity Dog is a corporation that was making animal toys that were parodies of famous brands like Louis Vuitton.
Louis Vuitton claimed dilution by blurring and dilution by tarnishment.
ii. Parody is relevant in determining whether the famous marks distinctiveness will be impaired.
iii. The argument for dilution by tarnishment was grounded in a flimsy argument about a dog someday choking on a Chewy
Vuiton toy.
iv. There was no risk of confusion by blurring here because the toys were clearly a parody.
Requirements for a Dilution Claim
i. 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
3. That a similarity between the defendants 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.
Trademark Pirates
i. Individuals who identify famous trademarks not yet used in their country and register those marks in anticipation of the
famous trademark owners expansion abroad.
TRADEMARK DEFENSES
Genericness and Genericide
i. The Murphy Door Bed Co. v. Interior Sleep
1. The Murphy Door Bed Co. had a deal with Interior Sleep to sell their beds. The Murphy company waited too long
to trademark their name, and it had already become generic by the time they tried.
2. A term or phrase is generic when it is commonly used to depict a genus or type of product, rather than a
particular product.
3. Factors to consider for determining whether a term or phrase is generic:
a. The dictionary definition
b. The PTO and TTAB decisions are given great weight because of their level of expertise
c. Popular use
d. Survey evidence
ii. Ways to Challenge A Mark Becoming Generic
1. Policing (Xerox Ad)
a. Note: If a mark is already generic, policing is irrelevant.
2. Litigation (cease and desist letters)
3. Competitor Products
iii. The burden of proof is on the plaintiff to prove that its mark is a valid trademark
Abandonment
i. Major League Baseball v. Sed Non Olet Denarius, Ltd.

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1.

After the Brooklyn Dodgers moved to LA, a restaurant in Brooklyn opened called The Brooklyn Dodger. LA
hadnt used the name in about 25 years, but had started using it for historical uniforms, t-shirts, etc. These industries
were not competing (though the restaurant could have begun making t-shirts).
2. There was no trademark infringement here because the LA Dodgers had not used the trademark in so long, but the
court permits the LA Dodgers to use the mark in limited form.
3. A two-year period of non-use is presumptively abandonment.
4. The burden will fall on the party seeking to cancel the mark (here, its the bar).
ii. Reviving Dead Brands
1. Theyre capitalizing on the fact that you, as someone who remembers the brand, will be more drawn to purchasing
it, even if the product has been reformulated.
2. Although the brand has been abandoned, is this deceitful?
3. Courts are reluctance to find abandonment if the owner had an excusable, valid reason for non-use
a. E.g., bankruptcy
iii. Unsupervised Licenses
1. If, for example, I have a brand that I want to franchise out to others or sell to other people, trademark law does not
permit this. If you do this, the mark may get cancelled.
VIII. REMEDIES
a. Injunction
i. Principal remedy is an injunction
ii. To get a permanent injunction must show that
1. (1) has suffered an irreparable injury
2. (2) the remedies available at law, such as damages are inadequate to compensate for that injury
3. (3) considering the balance of hardships b/w the and , a remedy in equity is warranted
4. (4) the public interest would not be disserved by a permanent injunction
5. Preliminary Injunctions may be available as well
iii. s in 43(c) dilution cases may only receive injunctive relief unless they are able to demonstrate:
1. (1) the first used its mark after the effective date of the Trademark Dilution Revision Act
2. (2) s acts were willful.
3. Willful infringement contains a connotation to deceive
4. Corrective advertisement: Big O only got a percentage of the amount of money they asked for because they were
not a national company (FTC rule25% advertisement cost?)
a. Since they couldnt prove lost profits, they asked for the advertising costs
b. Damages
OTHER FORMS OF IP PROTECTION
I.
Design Patents (35 USC 117)
a. Requirements
i. Novelty
ii. Originality
iii. Non-obviousness
1. For a claim that the design was obvious, there must be (1) a primary reference whose design characteristics are
basically the same as the claimed design; and (2) the prior art, market trends, or other factors must suggest modifying
the primary reference in order to product the claimed design
2. This is the primary factor for limiting design patents
iv. Ornamental
1. Primarily ornamental
2. Not dictated by functional considerations.
b. A design patent may be obtained for only part of an article.
c. A design is defined as the visual characteristics or aspects displayed by the object. It is the appearance presented by the object
which creates a visual impact upon the mind of the observer.
i. E.g., can sue for making a round keyboard, but only if you have a trademark on round keyboards. You cannot sue if someone
else makes a green round keyboard
d. NOTE: Design patents have a 14 year limit as opposed to utility patents, which have a 20 year limit.
e. Egyptian Goddess v. Swisa
i. Both companies had a nail buffer. The main difference is that one nail buffer has four pads, and the other has three.
ii. The two products will not be confused.
iii. TESTS
1. Ordinary Observer Test (use this one!)
a. Whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused
design was the same as the patented design.
b. Must consider the designs substantially identical in light of the prior art
2. Point of Novelty Test (the court decides that this is wrapped up in the Ordinary Observer Test)
a. Comparing the prior art to the design paten, and then the design patent to the accused product.

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II.

The Tort of Misappropriation

NBA v. Motorola
i. Motorola had a product that sent live updates of scores and statistics to its phone users if for some reason they couldnt watch
the basketball game.
ii. Motorola is not free-riding, they are only passing on facts, and they dont really compete because nobody would use this app
if they could watch the game themselves.
iii. Hot News Misappropriation Test
1. Key information at a cost
2. Time sensitive information
3. Defendant is free-riding
4. Direct competition
5. Reduces incentive to create the original product
iv. Extra Element Test
1. Extra elements that allow for hot news to survive are basically 2, 3, and 5.
b. The Right of Publicity
i. The right of publicity protects an individuals marketable image or persona.
ii. Today, 16 states recognize common law rights of publicity, and another 15 states have codified the right of publicity in
statute.
iii. Note: California plays a very large role. Your right to publicity is based on where you are domiciled.
1. Some states have much broader rights to publicity than others.
iv. Note: News, public affairs, sports broadcast, and political campaigns are all excluded from when consent is required because
of First Amendment Protections.
v. Midler v. Ford Motor Co.
1. Ford used a sound-alike to record Midlers song for their Yuppie campaign that was designed to sound like Midler
was the one singing.
2. This was considered a tort in California. When a distinctive voice of a professional singer is widely known and is
deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have
committed a tort.
3. A voice is not copyrightable. A voice is personal; it is as distinctive and personal as a face.
vi. White v. Samsung Electronics America (dissenting opinion)
1. Samsung released an ad campaign suggesting they would be around for a long time. In one of the ads, they had a
robot next to a Wheel of Fortune board dressed in Vanna Whites traditional clothing. White brought a
misappropriation of identity against Samsung.
2. Samsung has done nothing wrong. Nobody would confuse Vanna White with this robot. Her name voice, likeness,
signature etc., was not used.
c. Post-Mortem Rights of Publicity
i. Hebrew University v. General Motors
1. General Motors ran an advertisement using Einsteins face 55 years after he died. He had assigned all of his rights to
the Hebrew University before he died.
2. What is the duration of post-mortem rights to publicity?
a. Death plus 50 years is a reasonable length of time for post-mortem right of publicity.
3. The policy considerations for death + 70 years in copyright and death + 50 years here and determine that they are
different, so the numbers need not necessarily be similar.
a.

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