Intellectual Property Outline

Intellectual Property in the New Technological Age

Eric Strauss 4/25/2011

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

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

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

CHAPTER 4- COPYRIGHT LAW p. 411

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

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

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

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

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

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

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

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

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

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Congress has this power but only the extra 20 years was challenged which was so minute compared to the life of the author + 50 that was already in place Court didnt want to strike down the extra 20 years because then they would have to strike the 50 years based on the same logic Court was stupid The legislative history is flawed because it was passed through very quickly The idea of retroactive application doesnt make sense because it doesnt pursue the goal of getting people to create Lastly, the life +50 was required by the Berne Convention so it was rationale to get international protection but this additional 20 has no such logic o The Public Domain Enhancement Act would require U.S. authors to renew their copyrights for $1 after 50 years and again at 10 year intervals until the copyright expired 3. Division, Transfer, and Reclaiming of Copyrights p. 513 o A. Division and Transfer of Copyright Interests Under the 1909 Act A copyright owner could assign the entire copyright to another, but a transfer of any lesser interest as considered a license. o B. Division and Transfer of Copyright Interests Under the 1976 Act 1976 Act eliminated restrictions on the formal divisibility of copyright interests. 201(d) provides: (1) the ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession. (2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title. 101 defines transfer of copyright ownership to include an assignment or an exclusive license of any of the exclusive rights comprised in a copyright. An exclusive right owner can bring suit without having to join the copyright proprietor 204- execution of transfers- requires transfers of copyright ownership signed in writing 205 provides for the voluntary recordation of transfers with the Copyright Office. o C. Reclaiming Copyrights th An inalienable right to terminate transfers of copyright between the 35 and 40 year from the execution of the transfer of rights for works created after 1977 Allows someone that creates something that becomes valuable to reap benefits Cant waive this right Traditional Rights of Copyright Owners 17 USC 106. Exclusive Rights in Copyrighted Works p. 519 o (1) To reproduce the copyrighted work in copies or phonorecords; o (2) To prepare derivative works based upon the copyrighted work; o (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; o (4) In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; o (5) In the case of literary, musical, dramatic, and choreographic 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 o (6) In the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission. Copyright infringement may occur by two distinct sets of actors (1) those who directly infringe the rights of copyright holders; and (2) those who encourage or assist a third party to infringe 1. The Right to Make Copies o A. Copying Arnstein v. Porter (1946) p. 520 Plaintiff alleges that Defendant copied some of his songs. Evidence of copying may consist of defendants admission that he copies or circumstantial evidence where copying can be inferred. If there are no similarities no amount of evidence of access will suffice to prove copying. If the similarities are so similar as to preclude the

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

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Congress in 1974 established the National Commission on New Technological Uses of Copyrighted Works (CONTU) to study the implications of the new technologies and recommend revisions to federal intellectual property law CONTU concluded in 1978 that the intellectual work embodied in computer software should be protected under copyright law Congress adopted CONTUs recommendation in 1980 Computer Associations International v. Altai, Inc. (1992) p. 539 Facts: CA-SCHEDULER is a job scheduling program which specified when computers should run various tasks. A sub program ADAPTER also developed by CA is an integrated component of CA-SCHEDULER and has no capacity for independent use. ADAPTER is used to work with different operating systems. In 1982 Altai began marketing its own scheduling program called ZEKE. Arney went from CA to Altei and developed OSCAR 3.5 using the ADAPTER source code. Court builds on Hands Levels of Abstraction model o A. Copyright Protection for the Non-literal Elements of Computer Programs 1. Idea v. expression Dichotomy 2. Substantial Similarity Test for Computer Program Structure: Abstraction Filtration-Comparison Step One: Abstraction o Break down to basic parts Step Two: Filtration o (a) Elements dictated by Efficiency o (b) Elements Dictated by External Factors Compatibility with other programs Standard practices in industry Mechanical specs of the computer where the program has to run o (c) Elements Taken from the Public Domain Step Three: Comparison 3. Policy Considerations o B. The District Court Decision 2. Evidentiary Analysis The court used a system to break down the code and eliminate all aspects that were not copyrightable and then compare what was remaining. The court held what was remaining was not enough to find for copyright infringement Held: The only thing that is protectable is the code and at that level there was no substantial similarities. Comments and Questions o The Altai test was rapidly adopted by most courts o Gates Rubber v. Bando Chemical Indus. p. 552- expended on Altei test o Limitations on the Exclusive Right to Copy p. 555 Several statutory exceptions to this general rule forbidding copying Archival Copies for public libraries Ephemeral Copies by Broadcasters Cover License Non-Commercial Copies of Musical Compositions and Sound Recordings Running Computer Software Maintaining Computer Software Fair Use 2. The Right to Prepare Derivative Works p. 556 o Copyright law has expanded to afford the copyright protection in a wide range of derivative media o 101 The Act defines a derivative work as a work based on one or more preexisting works, such as translation, 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 adopted. It also includes a work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship. Derivative works are protected in 106(2) o Anderson v. Stallone (1989) p. 557

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

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Limitation on the exclusive right to distribute is the first sale doctrine. 109(a). This doctrine, also commonly referred to as the exhaustion principle provides that a copyright holder cannot restrict subsequent resale or distribution by a purchaser of a particular lawful copy. o Importation right- in order to preserve this ability to maintain price differential across national borders. 602 affords copyright owners a right to prohibit commercial importation into the US of copyrighted works acquired abroad o Comments and Questions In Softman Products Co. LLC v. Adobe Systems, Inc, the court determined that a single payment giving the buyer an unlimited period in which it has a right to possession is a sale. As such the court found that the first sale doctrine superseded the End User Licensing Agreement Things marked Promotional Use Only-Not for Sale does not supplant the first sale doctrine The right to import and the first sale doctrine conflict in situations in which companies legitimately acquire inexpensively priced copyrighted products in a region of the world with low prices and export them to the US for resale Several courts have held that the first sale doctrine does not nullify the 602 importation right in these circumstances 4. Public Performance and Display Rights 106(3) o As a rough approximation, if it moves its a performance and if it stays still its a display o No public display right exists in architectural works, and only a limited public performance right exists in sound recordings o 109(c) provides that the owner of a particular copy of a work is entitled to display it to viewers present at the place where the copy is located Exceptions to first sale limit: Cant rent records or software Cant import into US copies acquired outside US unless lawfully acquired outside US fit in personal baggage, and only for personal or educational use o Showing artwork in a gallery without authorization is not copyright infringement but showing a movie in a theater is infringement o To perform or display a work publicly definition p. 572 o 109(c) the owner of a lawfully owned copy can display a picture in a private display can even display in public if it is the single piece bought o 101 defines public- a place of open public or any place where a substantial amount of persons outside of a normal circle of a family and its social acquaintances is gathered or (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, 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 separate places and at the same time or at different times Number of people present doesnt matter o Public Performance of Sound Recordings p. 574 o Statutory Limits on Performing Display Rights Public Interest Exemption Most live educational performances and displays are exempt under 110(1), as are distance learning broadcasts made by accredited, nonprofit educational institutions, 110(2). Religious performances 110(3). Face to face performances of nondramatic literary or musical works for free or for chartiable purposes 110(4). Record stores may play records without charge to promote their sale under 110(7) Congress substantially broadened an exemption for home listening of transmitted performances to extend to small businesses, restaurants, and larger establishments conforming to limitations on the number of loudspeakers and television screen size 110(5) o WTO panel concluded that 110(5) operated on too large of a scale. A Congressional Research Service showed that a high percentage of establishments qualified for the exemption. US has agreed to pay $1.1 million in damages per year to bring its law into compliance. US has not changed law to comply with Berne Convention Compulsory Licenses Cable Retransmission Satellite Retransmission

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

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The fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. Factors to consider are: 1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes 2. The nature of the copyright work; Becomes the 4 factor 3. The amount and substantiality of the portion used in relation to the copyrighted work test as a whole; and 4. The effect the use upon the potential market for or value of the copyrighted work The fact that a work is unpublished shall not itself bar a finding of fair use Congress indicated that the list of factors in section 107 is illustrative rather than exhaustive o Time v. Geis- put definition of fair use on the board o Origins of Fair use Folsom v. Marsh - Factors developed by Justice Story seem to be the same factors that we use today but in a different order o Harper & Row, Publishers, Inc. v. Nation Enterprises (1985) p. 593 Facts: Harper Row owned the copyrights of an autobiography of Gerald Ford. A part of the book about Nixons pardon was going to be in Time Magazine. Time paid for the right to use the piece before the book came out. The Nation got a hold of the article and printed it ahead of Time. Time cancelled its piece and refused to pay the remaining $12,500 it didnt pay yet. Harper and Row sue Navarsky the editor of The Nation for copyright infringement. Navarsky argues that he was providing news for the public and only used 300 words 107, sanctions the unauthorized use of quotations from a public figures unpublished manuscript SC used the 4 factor test to determine whether the use was fair: 1. Court found Navarsky was trying to gain readers not provide news o Commercial o no clean hands o no real transformation- no independent analysis and no value added 2. Unpublished work has more rights than published o Its going to be published o Author gets right of first publication o Leans toward fair use 3. Excerpt was substantial enough o 1% of the 200,000 words but a high percentage of the value because they were the juiciest topics o Little summary has some value but no independent analysis 4. There was evidence of effect because Time cancelled their contract o Hurt sales of book Held in favor of Harper and Row Comments and Questions Fair use often found for non-profit and educational uses Los Angeles v. Reuters (liability found) o no transformation only passed along most compelling sequence o nature- documents a historical informational event and was already published- in favor of fair use o Took a lot of footage and the most compelling part- against fair use o They compete for customers no fair use o A. Videotaping Sony Corporation of America v. Universal City Studios, Inc. (1984) p. 606 Taking the case through 107 Fair Use factors o 1. Purpose- Time shifting which is fair They have clean hands o 2. Nature- against fair use o 3. Amount and substance of copyright work used (transformation) Copying exactly is less harm than if copying without commercials or key scenes Using the whole amount is fairer than editing it

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4. Effect on potential market value Evidence of harm was speculative and there were parties who want their work recorded Court said its possible that this is good for the industry because there is increase in viewers Held: Home time shifting is a fair use Comments and Questions o Relief that should have been sought- injunction from having a fast forward button on the remote o Should have gave more evidence that people were fast forwarding commercials

B. Photocopying American Geophysical Union v. Texaco Inc. (1994) p. 611 Facts: Employees at Texaco were encouraged to make copies of journal articles for the own personal use for future needs. Plaintiffs (83) publishers bought suit claiming unauthorized photocopying. Texaco claims a defense of fair use. The court looked at one scientists collection of 8 articles. The Appellate Court applied 107 four factor test o Is the purpose and character of the use commercial or non-commercial? Texaco argued that while they are a for-profit company, the scientists were copying the articles for science, and the profit motive was indirect. However, the Court found that was still a commercial use. (against fair use) o The nature of the copyrighted work. The Court found that the scientific articles were non-fiction, which gives them less protection than creative works. (favors fair use) o The amount of the original work used. Texaco argued that while it was true they were copying an entire article, if you look at the complete body of all the articles in all of the journals, they were weren't copying a large percentage. However, the Court found that each article has an independent copyright, so copying 100% of an article count's as using 100% of a copyrighted work. o The effect on the potential market. Texaco argued that the publishers didn't sell back issues of the journals, so making copies didn't hurt the publishers sales. However, the Court found that publishers could negotiate licensing rights (under the Copyright Clearance Center (CCC)) to get royalties for reprints. Therefore Texaco's unauthorized copying hurt the publishers potential for making money. (against fair use) Held: Texaco's copying was not protected by fair use. Comments and Questions o Basic Books v. Kinkos Graphics Corp (1991) p. 620 (Coursepacks)- the court rejected Kinkos fair use defense, largely on the grounds that the copy shop is a for-profit organization o Section 108 exempts libraries from liability for copies made on their premises as long as they post a warning notice as specified in 37 C.F.R. 201.14 C. Parodies Copyright law affords parodists a wide berth in drawing upon protected works Cant get licenses because no one is going to let you ridicule them For it to be a parody there has to be some indication of the target of the parody but there shouldnt be more (although there often is) Distinguishing between parody and satire and farce Parody makes fun of the work or the author itself Satire- uses copyright work to make fun of something else not the copyright work o Its much more realistic to be able to get a license if you are criticizing something else than if you are using it as a parody Farce is when there is no real target and you just use the defendants work for another purpose (Weaker candidate for fair use ) Campbell v. Acuff-Rose Music, Inc. (1994) p. 622

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

D. Remixes Bill Graham Archives v. Dorling Kindersley Ltd. (2006) p. 635

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Facts: DK published Grateful Dead: The Illustrated Trip in collaboration with Grateful Dead Productions. The book contains thousands of pictures in 480 pages. BGA claims to won the copyright to seven images in the book which DK reproduced without BGAs permission. The two parties negotiated but to no avail. 1. Purpose and character of use o DC said because the pictures were reduced in size and are used to describe historic events in a creative fashion the first factor is weighed in favor of DK Court agrees stating that courts have frequently afforded fair use protection to the use of copyrighted material in biographies, recognizing such works as forms of historic scholarship, criticism, and comment that require incorporation of original source material for optimum treatment of their subjects o The purpose was also separate because in the past the images were used to promote Grateful Dead but now they are used to show a timeline of events o The first fair use factor weights in favor of DK because DKs use of BGAs images is transformatively different from the images expressive purpose and DK does not seek to exploit the images expressive value for commercial gain (not used in advertising) Nature of the Copyrighted Work o Even though BGAs images are creative works, which are a core concern of copyright protection, the second factor has limited weight in the analysis because the purposes of DKs use was to emphasize the images historical rather than creative value Amount and Substantiality of the Portion Used o Even though the copyrighted images are copied in their entirety, the visual impact of their artistic expression is significantly limited because of their reduced size. o The images constitute less than 1/5 of 1% of the book o Does not weigh against fair use Effect of the Use upon the Market for or Value of the Original o Analysis requires a balancing of the benefit the public will derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied o Whether DKs unauthorized use usurps BGAs potential to develop a derivative market o Look at potential revenues for traditional, reasonable, or likely to be developed market o Since DKs use of BGAs images falls within a transformative market, BGA does not suffer Held: Balance of Factors- Fair use factors weigh in favor of DKs use o Summary of the case p. 641

G. Defenses Transformative use- uses that are productive and employ the protected material in a different manner or for a different purpose. Creative commons helps authors who want to reuse or remix another authors works using four categories of permission: (1) attribution requires users to attribute the original author, (2) modification the author can designate whether the work can be modified (3) share and share alike anyone using the work agrees to make the resulting work available on the same basis and (4) non-commercial use the work may be used for non-commercial purposes. Open source listings by software developers encourages a culture of free software Other Defenses Independent Creation Consent/License Inequitable Conduct Copyright Misuse First Amendment Immoral/Illegal/Obsene Works Statute of Limitations

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

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

CHAPTER 2- TRADE SECRET PROTECTION

A. Introduction

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

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

o o

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C.

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

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

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Trailer clause- a contract provision that requires employees to assign their rights not only in inventions (and other IP) made during the period of employment but also for a certain time thereafter. o Enforceable only to the extent they are reasonable

CHAPTER 3- PATENT LAW

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

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Board concluded that 101 was not intended to cover living things such as these laboratory created micro-organisms Issue: whether respondents micro-organism constitutes a manufacture or composition of matter within the meaning of the statute Held: Patentable subject matter because it is not discoverable in nature The laws of nature, physical phenomena, and abstract ideas have been held not patentable. The 1930 Plant Patent Act and 1970 Plant Variety Protection Act o Petitioner argues- cant patent a living thing or else Congress wouldnt have passed these Acts o This argument is rejected and the Acts were created because plants were thought not amenable to the written description requirement of the patent law. Because new plants may differ from old only in color of perfume, differentiation by written description was often impossible The petitioners second argument is that micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection o SC ruled on a narrow question- in general anything that is human made and not naturally occurring will fall into one of the four utility categories o Not covered are: physical phenomena, abstract ideas, and laws of nature Comments and Questions o Funk Brother Seed Co v. Kalo Inoculant Co.- it is no more than the discovery of some of the handiwork of nature and hence is not patentable In Funk Bros the court emphasizes that the bacteria, though combined in a novel way, still perform their same old natural function Parke Davis & Co. v. H.K. Mulford Co. (1911) p. 142 Inventor discovered how to isolate a purified substance of significant medical use from the suprarenal glands of animals The examiner would not allow these claims The inventor was the first to make it available for any use by removing it from the other gland-tissue in which it was found, and, while it is of course possible logically to call this purification of the principle, it became for every practical purpose a new thing commercially and therapeutically. The change here resulted in ample practical differences is fully proven Held: New use commercially and therapeutically makes a purified product patentable Comments and Questions o Latimer- the mere ascertaining of the character or quality of trees that grow in the forest and the construction of the woody fiber and tissue of which they are composed is not patentable invention o Patenting human DNA sequences though not humans themselves, of course is a booming industry. Under Parke- Davis these patents are considered valid, because they typically claim isolated and purified gene sequences

2. Utility o Utility is relatively rare issue in the Patent Office, or in an infringement suit o 101 Inventions Patentable-Whoever invents or discovers any new and useful process, machine, manufacture, composition, or improvement thereof o Brenner v. Manson (1966) p. 167 A Patent Office examiner denied Mansons application, and the denial was affirmed by the Board of Appeals within the Patent Office. The ground for rejection was the failure to disclose any utility for the chemical compound produced by the process Application showed that the adjacent homologue of the claimed steroid had been demonstrated to have tumor-inhibiting effects in mice. Application failed to disclose a sufficient likelihood that the claimed steroid would have similar tumor-inhibiting characteristics. Held: Statutory requirement of usefulness of a product cannot be presumed merely because it happens to be closely related to another compound which is known to be useful Unless and until an invention is refined and developed to this point where specific benefit exists in currently available form- there is insufficient justification for permitting an applicant to monopolize what may prove to be a broad field Quid pro quo- we give monopoly for your invention

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Not patentable Comments and Questions New use patent or process patent- each patent owner needs a license from the other for the new use Utility for pharmaceutical products can generally be established by animal testing o Note on Patent Office Utility Guidelines The Patent and Trademark Office (PTO) has promulgated guidelines for determining the specific utility of an invention The PTO guidelines require that an asserted utility be specific, credible, and substantial 2. (a)(1) a claimed invention must have a specific and substantial utility. This requirement excludes throw-away, insubstantial, or nonspecific utilities, such as the use of a complex invention as landfill as a way of satisfying the utility requirement of 35 USC 101 (b) if no assertion of specific and substantial utility for the claimed invention made by the applicant is credible, and the claimed invention does not have a readily apparent wellestablished utility, reject the claims under 101 on the grounds that the invention as claimed lacks utility Even if an invention is directed toward a certain function, it must actually perform that function. Otherwise it is not useful for achieving that function o Juicy Whip, Inc. v. Orange Bang, Inc. (1999) p. 178 Patent submitted for a juicer that had artificial juice in view and tank behind Held: The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement of utility. Much of the value of such products resides in the fact that they appear to be something they are not. Thus, in this case the claimed post-mix dispenser meets the statutory requirement of utility by embodying the features of a post-mix dispenser while imitating the visual appearance of pre-mix dispenser Benign perception counts as utility and is good enough to get a patent 3. Describing and Enabling the Invention o a. Procedures for obtaining a Patent p. 181 (paperwork for patent) The process of obtaining a patent from the Patent Office is known as Prosecution The average prosecution takes about 2.77 years The typical application receives only 18 total hours of attention Prosecution begins with the filing of a patent application. Although an inventor or his lawyer may file a temporary placeholder application called a provisional application, it must be converted into a standard, full-blown application within one year if it is ever to issue a patent. The basis of an application are: (1) the specification, including a summary of the invention and drawings in most cases; (2) one or more claims, at the end of the specification; (3) an oath, declaring the inventors actually invented what is described in the specification; and (4) applicable filing fees Applications are handled in the order they are received Preliminary amendments, which are changes made to the application before the examiners first response or office action The most common office action followed this initial review is a rejection Examiner has the burden to show why an application should not issue as a patent Standard amendments are usually permitted up to the time when an examiner issues a final rejection, which may be as early as the second office action Filing a continuation resets the examination process. A simple continuation application retains the benefit of the initial applications filing date. A continuation-in-part by contrast adds new matter to the specification. This new matter does not retain the benefit of the earlier filing date, though any information carried over from the original filing does Detailed continuation process 182 If applicant appeals examiners rejection it goes to the board and if theres a difference it is reviewed by the federal circuit court of appeals Federal circuit is subject to supreme court review United States International Trade Commission o Part of the executive branch that hears cases that involve foreign defendants whose exports into the US infringe patents Sources of law- Constitution, and US Code Title 35. o PTO is not a source of law but has persuasive authority

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U.S. Utility Patents o 2004- 351,431 patents filed only 169,396 granted o 1.2 million backlog o On average it will take 5 years to get a patent o Big surge in business method applications o Controversial categories Living organisms Computer software Business Methods B. Disclosure Doctrines: Enablement and Written Descriptions 112 of the Patent Act reads- The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention. Written description- type of cake Enablement- recipe/ ingredients Best mode- preferred oven temperature Morse case p. 185 th 8 claim- I do not propose to limit myself to the specific machinery, or parts of machinery, described in the foregoing specifications and claims the essence of my invention being the use of motive power of the electric of galvanic current, which I call electro-magnetism, however, developed, for making or printing intelligible characters, letters, or signs at any distance SC denies patent because it is too broad This claim is not enabled because the specification does not define a reasonable number of ways of sending messages except for one using the telegraph Arguably the claim is both too abstract and not enabled i. Enablement The Incandescent Lamp Patent (1895) p. 186 o Sawyer and Man had a patent for a light bulb with carbonized fibers material o They only disclose carbonized paper which would work for 20 minutes o Edison was the first to invent a light bulb to work for practical purposes o The only fibrous material that worked was a bamboo from Japan o With the exception of the third claim, for "the incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described," o This was a bill in equity, filed by the Consolidated Electric Light Company against the McKeesport Light Company, to recover damages for the infringement of letters patent No. 317,076, issued May 12, 1885, to the Electro-Dynamic Light Company, assignee of Sawyer and Man, for an electric light. The defendants justified under certain patents to Thomas A. Edison, particularly No. 223,898, issued January 27, 1880; denied the novelty and utility of the complainant's patent, and averred that the same had been fraudulently and illegally procured. The real defendant was the Edison Electric Light Company, and the case involved a contest between what are known as the Sawyer and Man and the Edison systems of electric lighting. o Held: a patent must state with specificity the composition of the materials to be mixed together to produce the result intended to be obtained and if they are not capable of such exact description, then the inventor is not entitled to a patent. The claims in the letters patent are too indefinite to be the subject of a valid monopoly. Test for enablement- whether a person of ordinary skill in the art would be required to engage in undue experimentation in order to make and use the invention o Illustrative factors- quantity of experimentation necessary o Presence of working examples o Amount of direction or guidance presented o Nature of the invention o State of prior art at the time of filing o Relative skill of those in the art

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

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

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

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A person shall be entitled to a patent unless (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. o Priority- subsection (1) covers interference proceedings formal priority contests between rival claimants to the same patentable subject matter. Subsection (2) covers the use of prior inventions as a course of prior art. o 104 allows proof of prior inventions in any country that is a signatory to the WTO. o g(2) only evidence of prior inventions made in the US may be introduced outside the inference context. In g(1) any WTO country may introduce evidence Priority generally goes to the first inventor to (1) reduce an invention to practice, without (2) abandoning the invention. o Exception is that priority may be retained, if the first conceiver was diligent in reducing to practice, with diligence being measured from a time just prior to the second conceivers conception date

5. Nonobviousness o 103- conditions for patentability; non-obvious subject matter A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negative by the manner in which the invention was made. o Screens out patents on trivial inventions o Graham v. John Deere Co. (1966) p. 235 Cert granted to determine if a clamp for vibrating shank plows was patentable. Facts: Graham obtained a patent to fix a problem with shanks on plows that would break when hitting rocks and other obstructions. Graham got a patent in 1950 (`811) modified it and filed for a new one in 1951 which was granted in 1953. The difference between the patents is that the hinge blade is moved above shank and below the upper plate which helped reduce damage to the spring rod and the upper plate. Held: Patent is invalid, a device that is an obvious extension of the state of the art for that type of device is not patentable Hotchkiss v. Greenword (1851) laid the framework for what constituted patentability. It set a condition that a patentable invention must be evidence of more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business. Was it obvious to move the hinge clamp from under the shank to above it? The Glencoe Spring Clamp was offered to show that Grahams second clamp was not patentable because it provided the same results as the second clamp which means the results werent new and unexpected. SC- The question of obviousness is one of law but rests on several basic factual inquiries including: Level of skill in the art o Accused infringer wants the level of skill in the art to be high and impressive Scope and content of the prior art Differences between the prior art and the claims Secondary considerations Comments and Questions Patentees not only want to have their patents upheld over the prior art, but they also want those patents to be interpreted broadly, to cover a wide range of potential infringement. These goals are in tension with each other. 103 requires an inventive leap of some degree over what has been done before

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

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

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

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

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disclosed those materials, but never claimed them, they must have meant to dedicate them to the public. o Therefore the Dedication Doctrine applies and Johnson & Johnson cannot assert the Doctrine of Equivalents against RES. Graver Tank v. Linde Claim referred to a welding flux containing alkaline earth metal silicate Defendants welding flux contains manganese silicate. Manganese is a transition metal o Specification- we have used calcium silicate and silicates of sodium, barium, iron, manganese, cobalt, magnesium, nickel and aluminum in various proportions Similarities- electric welding composition, chemists testified that magnesium and manganese react similarly Result- same kind and quality of weld employed using similar mechanical methods In conflict with Johnson & Johnston case o Can argue in that case was the claiming of aluminum was more specific and referred to in multiple claims and aluminum is clearly different than steel and other metals- deliberately and specifically said aluminum o Here an alkaline earth metal encompasses more and has similar characteristics to other metals- could have been an oversight o Most people arent happy with this and say these cases are in conflict Warner- Jenkinson v. Hilton Davis Chemical Applicant amended claim to add at a pH from approximately 6.0 to 9.0 Defendant was using a process with a pH of 5.0 Question of whether 6.0 is equivalent to 5.0 Question of why this limitation was added o Usually to get around prior art Jury held there was technological equivalence because the two pHs work approximately the same o D. After-Arising Technologies Pioneer invention which the SC has defined as a patent concerning a function never before performed, a wholly novel device, or one of such novelty and importance as to make a distinct step in the progress in the art is entitled to a broad range of equivalents Following Graver Tank courts inquire whether it performs the same function and achieves the same result as the invention in the claims, and whether it does so in the same way. A device performing the same function and achieving the same result in the same way as a patented invention can be found to infringe even if it uses technology developed after the patent was issued. On the other hand, in Texas Instruments Inc. v. US Intl Trade Commn, the Federal Circuit held that major improved devices noninfringing This case was an example of improvements in material o LCDS used an improvement that increases the efficiency of an individual component 6. Contributory Infringement o C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc. p. 334 Facts: ACS was marketing a perfusion catheter for use in coronary angioplasty. Bard sued ACS for alleging infringement of US Patent 017. The 017 patent relates to a method for using a catheter in coronary angioplasty. Plaintiff Bard alleges that the ACS catheter is especially adapted for use by a surgeon in the course of administering a coronary angioplasty in a manner that infringes claim 1 of the 017 patent, that therefore ACS is contributory infringer, and that ACS actively induces infringement For purposes of this case, the statute requires that ACS sell a catheter for use in practicing the 017 patent, that therefore ACS is a contributory infringer, and that ACS actively induces infringement Two step analysis. First is a determination of the scope of the claim at issue. Second is an examination of the evidence before the court to ascertain whether, under 271(c), use of the ACS catheter would infringe the claim as interpreted It remains true that on this record a reasonable jury could find that, pursuant to the procedure described in the fact patterns, there are substantial noninfringing uses for the ACS catheter A person induces infringement under 271(b) by actively and knowingly aiding and abetting anothers direct infringement

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

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D. Defenses 1. The Experimental Use Defense (didnt have to read) 2. Inequitable Conduct o Kingsdown Medical Consultants, Ltd. v. Hollister Inc. p. 347 Facts: The invention claimed in the 363 patent is a two-piece ostomy appliance for use by patients with openings in their abdominal walls for release of waste. Prosecution history lasted 6.5 years. While Kingsdowns appeal of other rejected claims was pending, Kingsdowns patent attorney saw a two-piece ostomy appliance manufactured by Hollister Inequitable conduct resides in failure to disclose material information, or submission of false material information, with an intent to deceive, two elements must be proved by clear and convincing evidence. Held: We are not convinced that deceitful intent was present in Kingsdowns negligent filing of its continuation application. Finding that particular conduct amounts to gross negligence does not of itself justify an inference of intent to deceive When a court has finally determined that inequitable conduct occurred in relation to one or more claims during prosecution of the patent application, the entire patent is rendered unenforceable. Comments and Questions Only prior art that was known by the inventor or the patent lawyer gives rise to a duty of disclosure This rule is embodied not only in the doctrine of inequitable conduct in the courts, but also in R. 56 of the rules of the patent practice, pertaining to the duty of patent applicants during prosecution Submarine patenting- deliberately keeping a secret patent application pending for years in the PTO, only to spring it on an unsuspecting industry In Symbol Technologies v. Lemelson the Federal Circuit adopted a theory of prosecution laches under which excessive delay in prosecuting a patent could preclude its enforcement against an unsuspecting industry o The Federal Circuit concluded that unreasonable and unexplained delay in prosecuting a patent could be grounds to bar enforcement of that patent o (cases have also ruled the other way) F. Remedies p. 377 The valuation problem is key to understanding why the injunction, and not damages, is the standard remedy in a patent case. Possible to get injunction and damages up to treble damages eBay, Inc. v. MercExchange, LLC (2006) p. 380 o Facts: MercExchange sought to license its patent to eBay and Half.com as it had previously done with other companies, but the parties failed to reach an agreement o The plaintiff must demonstrate: (for permanent injunction) 1. That it has suffered an irreparable injury Harm cant be undone it can only be compensated for 2. No adequate remedy at law to compensate for that injury 3. That, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and 4. That the public interest would not be disserved by a permanent injunction o Case remanded to district court to apply 4 factor test o Comments and Questions For preliminary injunction same 4 factors except 2 becomes likelihood of success on the merits Foster v. Am. Mach & Foundary Co. p. 384 The Court upheld what amounted to a compulsory license: a reasonable royalty damage award but no injunction Patentee doesnt manufacture and only given royalties no injunction 284 damages- upon filing for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. The court may increase the damages up to three times the amount found and assessed. (treble damages) 285 attorney fees- the court in exceptional cases may award reasonable attorney fees to the prevailing party Willful = reckless

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

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The availability of other designs means the design is probably ornamental rather than functional C. Claim Requirements and Procedures The drawings must contain a sufficient number of views to constitute a complete disclosure of the appearance of the article All that is required in writing is a very brief description of the drawings Only one claim can be included in a design application Pendency time for a design patent is approximately two or three years. It has been noted that the current system is unsuited to the fast moving but short lived product cycle characteristic D. Design Infringement Test- Whether an ordinary observer taking into account the prior art, would think the accused design as a whole is substantially the same as the patented design Very similar to the copyright standard Ordinary observer is one who has reasonable familiarity with the object in question and is capable of making a comparison to other objects which have preceded it This test permits strong similarities to be excused if the defendant can prove that she borrowed only commonplace or generic ideas, functional features, or other nonprotectable matter while adding sufficient variation to protectable elements of the design Getting a design patent doesnt really make sense for most inventions. Only make sense for really valuable ornamental designs where filing a patent is not as costly. Usually better to get copyright protection Patent has strict liability whereas copyright allows no liability if independently created Independent invention is not a defense in patent law No fair use defense for patent infringement Two bites of the apple if you have multiple forms of protection you might get a better outcome Weak social justification for having design patents. Seems to be a relic and was in effect prior to copyrights protecting broader subject matter

CHAPTER 5- TRADEMARK LAW p. 733

A. Introduction 1. Background o Trademarks go way back from when merchants would brand their products to show who made it o Trademarks were protected at common law in the US until 1870, when Congress enacted the first federal trademark statute o Today trademarks are protected by the Lanham Act which was enacted in 1946 2. Brief Overview of Trademark Theory o Trademark protection is awarded merely to those who were the first to use a distinctive mark in commerce. In trademark parlance, the senior (that is, first) user of a mark may prevent junior (subsequent) user from employing the same or a similar mark, where there is likelihood of confusion between the two marks o The fundamental principles of trademark law have essentially been ones of tort: unfair competition and the tort of deception of the consumer o Giving the originator of a mark the right to police counterfeiting also serves to protect three types of investment: (1) investment in the creation of the mark (2) investment in advertising and promoting the product in association with the mark; and (3) product-related investments such as high-quality raw materials, production equipment, and quality assurance techniques o Trademarks protect the integrity of the marketplace from false advertising and unfair competition. Trademarks indirectly promote inventions 3. The Basic Economics of Trademarks and Advertising Categories of descriptive Marks o 1. Marks that describe the intended purpose or use of the goods o 2. Laudatory marks that claim a superior quality, property, or function Include terms such as worlds greatest, mega, super, etc. o 3. Marks that are primarily a persons name o 4. Marks that simply describe a geographic feature of the goods o Descriptive marks have a nonrandom association with a product

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B.

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

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C.

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

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

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

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

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

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

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o o

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

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

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To prevail on a cybersquatting claim, Reverend Falwell must show that Lamparello (1) had a bad faih intent to profit from using the domain name and (2) the domain name www.fallwell.com is identical or confusingly similar to, or dilutive of, the distinctive and famous mark The practice of informing fellow consumers of ones experience with a particular service provider is protected Professor says PETA case could be distinguished on the ground of no commercial aspect Comments and Questions o Possible legitimate interests in domain name p. 869 The defendant has its own trademark that corresponds to the domain name. The defendant is a legal reseller of the plaintiffs product The defendant wants to criticize or make fun of the plaintiff o A variant on cybersquatting is typosquatting. Typosquatters register common misspellings or variants on trademarked terms, hoping to draw consumers who type the wrong domain name into the URL o Courts have generally treated typosquatters just as they have cybersquatters Courts have also refused to hold a defendant liable for capitalizing on confusion it did not create o Jurisdiction over cybersquatters 2 kinds. Any district where the cybersquatter has minimum contacts or If the infringer cant be found trademark owner can obtain in rem jurisdiction in the jurisdiction where the domain name resides by publishing legal notice of the suit and then filing suit against the domain name itself o Some courts have given protection to generic domain names on a theory of unfair competition

E.

Defenses 1. Genericness p. 890 o Genericide- become generic over time through a process o The Murphy Door Bed Co., Inc. v. Interior Sleep Systems, Inc. (1989) p. 890 Facts: Mr. Murphy incorporated in NY in 1925 as the Murphy Door Bed Company and used Murphy bed as its trademark for concealed beds. On March 23, 1981, and again on Nov. 16, 1982 PTO denied the Murphy Co.s application to register the Murphy bed trademark, claiming Murphey bed had become generic and that the phrase was merely descriptive of a characteristic of the goods. A term or phrase is generic when it is commonly used to depict a genus or type of product, rather than a particular product Burden is on plaintiff to prove that its mark is a valid trademark Proof burdens is a determination of whether the term at issue is claimed to be generic by reason of common usage or by reason of expropriation Held: DC was correct in placing the burden of proof of genericness upon defendants. We find, however that defendant did indeed establish the genericness of the term Murphy bed. Factors: PTO and TTAB is to be accorded great weight, Murphy bed is included in many dictionaries, newspapers and magazine use of the phrase Murphy bed to describe generally a type of bed. Comments and Questions Trademark lawyers also seek to prevent their clients terms from being used as nouns or verbs, fearing that this will lead to their use as generic term With later acquired secondary meaning genericide may be reversible The court cites Singer Mfg. v. June Mfg. Co., for the proposition that once a patent on a device expires, the name by which that device has been sold also enters the public domain o The patent expiration does not automatically end trademark protection Trade dress and product configuration can also be generic 2. Functionality o TrafFix Devices, Inc. v. Marketing Displays, Inc. (2001) p. 900 Facts: After the patents expired and a competitor, TrafFix Devices, Inc., sold sign stands with a visible spring mechanism that looked like MDIs. MDI and TrafFix products looked and were alike.

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TrafFix marked its sign stands under a name similar to MDIs. MDI used WindMaster while TrafFix used WindBuster. Person who assets trade dress protection has the burden of proving that the matter sought to be protected is not functional Issue: What is the effect of an expired patent on a claim of trade dress infringement? A functional feature is one the exclusive use of which would put competitors at a significant nonreputation related disadvantage Held: Functionality having been established, whether MDIs dual-spring design has acquired secondary meaning need not be considered Comments and Questions The court arguable articulates two different formulations: the essential to the use or purpose test and the affects the cost or quality of the article test Section 17 of the Restatement (Third) of Unfair Competition offers the following definition of functional designs. P. 905

3. Abandonment o Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd. (1993) p. 911 Facts: LA Dodgers and MLB Properties sued The Brooklyn Dodger, a restaurant in Brooklyn for trademark infringement. In selecting their logo, defendants initially sought to reproduce the Brooklyn Dodgers trademark. LA Dodgers sporadically use their former Brooklyn Dodgers mark in connection with historical retrospectives, but licensing hasnt occurred since 1981. Defendants claim the defense of abandonment and laches and plaintiffs failed to use Brooklyn Dodgers commercially for 25 years. Plaintiffs failed to prove a likelihood of confusion. Lanham Act abandoned- use has been discontinued with intent not to resume Burden of abandonment is on the party seeking cancellation of a registered mark and must be established by a preponderance of the evidence. Lanham Act- nonuse for 2 consecutive years is prima facie evidence of abandonment To maintain use in the mark e team would have had to continue to use Brooklyn Dodgers as the name of its baseball team. Warehoused- maintaining a word in conjunction with historical interest- not permitted to maintain trademark Resumption- LA Dodgers resumed using the mark after 23 years but cant prevent defendants from using the mark in a limited restaurant use Comments and Questions Abandon was amended to conform with GATT-TRIPs and prima facie evidence is now 3 years, prevents using a mark merely to reserve a right. P. 916-17 o b. The rule Against Assignments in Gross p. 923 10 A registered mark or a mark for which application to register has been filed shall be assignable with the goodwill of the business in which the mark is used. Assignments in gross- assignments of trademarks alone, without any underlying assets or good will. Presumptively invalid however courts are changing

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