I.

WHAT IS A COPYRIGHT___________________________________________________
A. Definition - Protection to authors of “original works of authorship” which are fixed in a tangible medium of
expression.
B. Types of works - §102
1) Literary works
2) Musical works, including accompanying words
3) Dramatic works, including any accompanying music
4) Pantomimes and choreographic works
5) Pictorial, graphic, and sculptural works
6) Motion pictures and other audiovisual works
7) Sound recordings
8) Architectural works
C. What is not subject to protection - §102(b)
1) Ideas
2) Procedures
3) Process
4) System
5) Method of operation
6) Concept
7) Principle
8) Discovery
D. Qualifications for Copyright
1) Elements:
(a) Work must be original
(i) Original to the author
(ii) The author must have created it
(iii) Possess at least some minimal degree of creativity
(b) Work must be fixed in a tangible medium of expression
(i) Put into a copy or phonorecord
E. Special Doctrines for Special Circumstances
1) Facts
(a) Facts are not copyrightable as they are not original (Feist Publications v. Rural Telephones)
(b) While a book containing facts is copyrightable, the underlying facts are not
2) “Selection, Arrangement, and Coordination”
(a) While facts are not protectable—the selection and arrangement of them may be so long as it has a
“minimum degree of creativity” (Feist Publications v. Rural Telephones)
(b) But only the components of the work that are original to the author are copyrightable (Feist Publications
v. Rural Telephones)
3) “Sweat of the Brow”
(a) This doctrine does not permit the copyright of facts (Feist Publication v. Rural Telephones)
(b) Originality, not sweat, is the touchtone of copyright protection (Feist Publications v. Rural Telephones)
4) Commercial Works
(a) Copyright is not limited to protecting the fine arts (Bleistein v. Donaldson Lithographing)
(b) Works commercial in nature are just as eligible for protection (Bleistein v. Donaldson Lithographing)
5) Systems, Procedures, and Functionality
(a) A book on a given system or procedure may be copyrightable (Baker v. Seldon)
(b) But the underlying system or procedure is not (Baker v. Seldon)
F. Federal vs. State Preemption - §301
1) Elements:
(a) The state rights are not equivalent to the bundle of rights under §106; and
(b) The law does not deal with the subject matter of §102-103
2) Un-preempted claims
(a) Contract breach
(b) ROP
 (c) Invasion of privacy
(d) Defamation
(e) Violation of trust
(f) Misappropriation
(g) Trespass
(h) Conversion
(i) Deceptive trade practices
(j) Passing off/false representation

II. WHO OWNS THE COPYRIGHT_____________________________________________

A. Author - Under most circumstances, the author is the owner of the copyright
B. Joint Work
1) Elements - §101
(a) A work prepared by two or more authors;
(b) With the intention that their contributions be merged into one whole work; and
(c) The two parts must be independently copyrightable (majority rule)
2) Implications
(a) Joint authors are deemed co-owners unless an agreement to the contrary
(b) Absent an agreement, each joint author has the right to exercise his rights in the work as long as he
accounts to his co-authors for any profits
(c) The copyright duration in a joint work using the last surviving author as the measuring life
(d) You cannot represent joint-authors unless you have a signed waiver
C. Work Made For Hire
1) Elements - §101
(a) (1) A work prepared by an employee within the scope of his employment; or
(i) “Employment” defined by the common law of agency (CCNV v. Reid)
• The level of skill required to do the work
• The source of the tools and instrumentalities used to do the work
• The location of the work
• The duration of the relationship between the parties
• Whether the hiring party has the right to assign additional projects to the worker
• The extent of the worker’s discretion over when and how long to work
• The method of payment
• The worker’s role in hiring and paying assistants
• Whether the work is part of the regular business of the hiring party
• Whether the hiring party is a business
• The provision of employee benefits
• The tax treatment of the worker
(b) (2) If the author is not an employee, then:
(i) Made under an expressly signed written instrument; and
(ii) 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 an instructional text
• As a test or as answer material to a test
• As an atlas
D. Collective Work
1) Elements - §101
(a) A work such as a periodical issue, anthology, or encyclopedia;
 (b) Where a number of contributions, constituting separate and independent works are assembled into a
collective whole
2) Limitations on Rights - §201(c)
(a) For a collective work, copyright law recognizes separate copyrights in:
(i) The individual works
(ii) The collective work
(b) Without an express transfer, the owner of copyright in the collective work may only:
(i) Reproduce or distribute the contribution as part of that collective work (NY Times v. Tasini)
(ii) Revise that collective work and any other collective work in the same series (NY Times v. Tasini)
(c) The 1976 Act explicitly rejected the “Indivisibility Doctrine” in favor of a “bundle of rights”
E. Public Performance - §101
1) Perform or display at a:
(a) Place open to the public; or
(i) Fact that public spaces can be reserved for private parties does not make it non-public (Columbia
Pictures v. Redd Horne)
(b) Place where substantial number of persons outside the family/friends circle are gathered
2) Transmit to
(a) Place where substantial number of persons outside the family/friends circle are gathered
(b) To the public whether the performance is seen at the same place or at same times
F. Derivative Works - §107
1) A work based upon one or more preexisting works, such as a:
(a) Translation
(b) Musical arrangement
(c) Dramatization
(d) Fictionalization
(e) Motion picture version
(f) Sound recording
(g) Art reproduction
(h) Abridgment
(i) Condensation
(j) Or any other form in which a work may be recast, transformed, or adapted
2) A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole,
represent an original work of authorship

III. TRANSFER OF COPYRIGHTS___________________________________________

A. Transfer of Ownership - §201(d)
1) Any or all of the copyright owner’s exclusive rights or subdivisions may be transferred.
(a) Exclusive Rights - Transfer or license must be in writing signed by the owner of the specific rights
conveyed
(b) Non-Exclusive Rights - license does not require writing
2) May be bequeathed by will
3) Any of the exclusive §106 rights may be transferred separately and the owner would be entitled to all
privileges associated with that individual right—but not the others
B. Termination of Transfers - §203
1) No Waiver - Termination rights cannot be waived by contract
2) Post 1978 Works – notwithstanding the duration specified in the grant, a grant may be terminated
(a) When:
(i) If no publication rights  during the 5 years following the end of the 35th year of the grant
(ii) If publications rights  during the 5 years following the end of the earlier of:
• 35 years after publication; or
• 40 years after the grant
(b) By:
(i) Written notice provided between 2-10 years before the termination date specified.
 3) Pre 1978 Works – <ASK LATER>
(a) Similar right of termination for the newly added years that extended the former maximum term of the
copyright from 56-95 years and the Sonny Bono 20 year extension.

IV. WHAT RIGHTS?________________________________________________________

A. Bundle of Rights - §106
1) Reproduce the copyrighted work in copies and phonorecords
2) Prepare derivative works
3) Distribute copies or phonorecords to the public by sale, other transfer, rental, lease, or lending
4) Public performance of literary, musical, dramatic, choreographic, pantomimes, movies, or other audiovisual
works
5) Public display of literary, musical, dramatic, sculptural works (including individual images of movies or other
audiovisual works)
6) Public performance by digital audio transmission of sound recordings
B. Moral Rights
1) VARA Rights - §106A
(a) Elements - must be a visual work under §101
(i) Under 200 copies;
(ii) Consecutively numbered
(iii) Signed
(b) What Rights - §106A(a)
(i) To claim authorship of that work and prevent the use of author’s name on works of visual art he did
not create – (1)(A)
(ii) To prevent the use of author’s name of works of visual art in the event of distortion, mutilation, or
other modification of the work that would be prejudicial to author’s honor or reputation – (1)(B)
(iii) Subject to limitation, may prevent (a) intentional distortion, mutilation, or other modification
that would be prejudicial to author’s honor or reputation (3)(A)
(iv) Subject to limitation, to prevent any destruction (intentional or grossly negligent) of a work of
recognized stature (3)(B)
(c) Scope of Rights - §106A(b) – Whether or not the copyright holders, VARA extends to:
(i) Authors;
(ii) Joint-Authors
(d) Duration of Rights - §106A(d)
(i) After VARA – author’s (or last surviving joint’s) life - §106A(d)(1)
(ii) Before VARA – author’s life - §106A(d)(2)
(e) Transfer or Waiver - §106A(e)
(i) (1) – VARA rights may not be transferred, but may be waived so long as its:
• Author must expressly agree in a signed written instrument;
• Instrument must identify the work, the uses of that work, and will only apply to that work;
• If joint authors, a waiver made by one author is a waiver for all
(ii) (2) –Transfer of VARA does not transfer any other of the bundle of copyright rights
2) Lanham Act §43(a)
(a) §43(a) protects against false impressions of a product’s origin
(b) If a D were to present a “distorted version” of the Π’s work it would be protected (Gilliam v. ABC)
(c) But “origin” refers only to the essential proprietor—not the author (Dastar v. 20th Century Fox)

V. GETTING COPYRIGHT PROTECTION______________________________________

A. Under 1909 Act
1) Protection was secured by publishing the work with proper notice
(a) Proper Notice
(i) Need either “copyright” or “©” and year of original publication
(ii) If you omitted the notice you lost protection
2) Certain unpublished works could be protected by registering
 3) Renewal required for work pre-1964
4) If you do not publish, you might still have state copyright protection
B. Under 1976 Act
1) No need to publish or register the work
2) Works created after 1/1/78  get federal copyright protection when the work is fixed in a tangible medium
of expression for the first time
3) Proper Notice
(a) Still required for works pre 3/1/1989 (optional for works post 3/1/1989 after Byrne Convention)
(b) But failure to put notice gives rise to an innocent infringer defense
4) Required to make mandatory deposit for all published works - §407
C. Advantages to Registering under 1976 Act
1) Serves as a public record forestalling the innocent infringer defense
2) Prerequisite to filing an infringement suit in court (not required for VARA)
3) If made within 5 years of publication  prima facie evidence of:
(a) The validity of the copyright
(b) The facts stated in the certificate
4) If made within 3 months (90 days) of publication and prior to any infringement  Π can get
(a) Statutory damages and attorney’s fees become available
(b) Otherwise the owner could only get actual damages and defendant’s profits
(c) But if you don’t register within 90 days you can still sue
5) Can record the registration with the Customs office to prevent importation of infringing goods
D. Procedure for Registering
1) Properly completed application
2) Non-refundable filing fee for each application
3) Non-returnable deposit of a copy (or two) of each work to be registered
E. Forms
1) PA – for published and unpublished works of the performing arts (musical and dramatic works, pantomimes
and choreographic works, motion pictures, other audiovisual works)
2) SE – for serials, works issued or intended to be issued in successive parts bearing numerical or chronological
designations and intended to be continued indefinitely (periodicals, newspapers, magazines, newsletters,
annuals, journals, etc…)
3) SR – for published and unpublished sound recordings (also for sheet music if sole author of both)
4) TX – for published and unpublished non-dramatic literary works; computer software
5) RE – for claims to renew copyright in works copyrighted under the law in effect through 12/31/1977 (1909
Copyright Act) and registered during the initial 28 year copyright term.
F. Curing Defects - If you have a product made pre-1989 lacking proper notice the cure period has expired and the
copyright protection has vanished (Hasbro Bradley v. Sparkle Toys)
G. Blank Form Doctrine – If the form substantially conveys the information, then it may be copyrightable

VI. HOW LONG DOES PROTECTION LAST__________________________________

A. Published or registered before 1922  public domain
B. Published with notices from 1922-1963  28 years + 47 + 20 renewal (if requested)
C. Published with notice from 1964-1977  28 years + automatic 67 year extension
D. Created before 1/1/78 but not published  from 1/1/78 for life + 70 or 12/31/2002 whichever is greater
E. Created before 1/1/78 but published between 1/1/78 – 12/31/02  from 1/1/78 for life + 70 years or
12/31/2047, whichever is greater
F. Phonorecords  created before 2/15/72 were not taken out of state/common law protection
G. Created after 1/1/78
1) Individual  life + 70
2) Corporation  earlier of 95 years from publication or 120 years from creation

VII. INFRINGEMENT_______________________________________________________
A. Who is liable - §501
 1) Anyone who violates any of the exclusive rights of the copyright owner stated in §106 or §106A or imports
copies or phonorecords in violation of §602
2) Any one who copies or uses protectable expression from a copyrighted work without permission
B. Elements:
1) Ownership of the valid, registered, and particular copyright that is being infringed
(a) You must register your work to be able to sue
(b) You must have ownership over the particular right being infringed (i.e. right to make derivatives,
perform the work publicly, etc…)
2) Access to the copyrighted work
(a) General Situations
(i) Since actual evidence is rarely available, you may use circumstantial evidence
(ii) But there must be some evidence that the work was available to the infringer (Selle v. Gibb)
(iii) The possibility of the access must be a reasonable possibility—not a bare one (Selle v. Gibb)
(b) Striking Similarity
(i) “Striking similarity” may presume access
(ii) But only if the similarity is such that it precludes any explanation other than direct copying (Selle v.
Gibb)
3) Substantial similarity to the copyrighted work
(a) Whether an average lay observer would recognize the alleged copy as having been appropriated from the
copyrighted work. (Steinberg v. Columbia Pictures)
(b) Must be similarity of expression—not just the idea behind the expression (Steinberg v. Columbia
Pictures)
(c) But when an artist makes creates a mere likeness—later works that resemble that likeness are not
substantially similar (Gross v. Seligman)
4) Unauthorized copying or use of copyrightable expression
(a) General plots, scenes characters, and backgrounds are not copyrightable expression (Nichols v. Universal
Pictures)
(b) Scene a Faire
C. Contributory Infringement
1) Elements:
(a) Have knowledge of the infringing activity; AND
(b) Induce, cause, or materially contribute to the infringement
(i) Merely providing the site and facilities is enough (Fonovisa v. Cherry Auction)
2) Example – Owner of a swap meet, who make infringement possible by his meet, was a contributory infringer
when his vendors were selling counterfeit goods. (Fonovisa v. Cherry Auction)
D. Vicarious Infringement
1) Elements:
(a) Have the right and ability to supervise the infringing activity; AND
(b) Have a direct financial interest in the infringing activity
(i) A direct interest in the infringing transaction is not required. (Fonovisa v. Cherry Auction)
2) Example – Owner of a swap who profited from admission charges and could close any vendor had both an
interest and ability to supervise in the infringing activity. (Fonovisa v. Cherry Auction)
E. Software Infringement
1) Extract the non-protectable expression and retain what is protectable (Abstraction, Filtration, Comparison -
AFC)
2) Compare the extracted material with the suspect work to see if it is present
3) De minimis could be allowed
4) Side-by-side comparison is used

VIII. DEFENSES_____________________________________________________________
A. Fair Use - §107
1) Elements
(a) Fits a category of use
(i) Criticism
 (ii) Comment
(iii) News reporting
(iv) Teaching (including multiple copies for classroom use)
(v) Scholarship
(vi) Research
(b) Factors of Analysis
(i) Purpose and character of the use (such as commercial/non-profit)
• Use for commercial gain weighs against fair use, but it is not per se exclusive
• Mere headline grabbing does not make it news reporting (Harper & Row Publishers v. Nation
Enterprises)
(ii) Nature of the copyrighted work
• Some works are more worthy of copyright protection than others.
• Was the work factual or fantastical?
(iii) Amount and substantiality of the portion used
• Considers both the overall quantity taken and whether the copy took the “heart of the
copyrighted work” (Harper & Row Publishers v. Nation Enterprises)
• Did the copy take “no more than necessary” to conjure up the original work (Campbell v. Acuff-
Rose Music)
(iv) Effect upon the market of the copyrighted work (*most important)
• Any evidence of actual harm (Harper & Row Publishers v. Nation Enterprises)
• If the copy is a mere copy and thus a substitute—market harm more certain (Campbell v. Acuff-
Rose Music)
• If the copy is transformative—market harm less certain (Campbell v. Acuff-Rose Music)
• No protection for adverse effect on the market from biting criticism (Campbell v. Acuff-Rose
Music)
• When the copyright holder establishes reasonable probability of loss of revenue, the burden
shifts to the copier to show loss would have occurred anyway
B. Time Shifting - §109
1) When a person records a TV program for later more convenient viewing
(a) Only applies to free broadcast TV, not cable
2) The equipment must have substantial non-infringing uses (Sony v. Universal City Studios)
C. Innocent Infringer – no copyright notice so was not put on notice that the work was protected
D. Work in the public domain
E. Work is original to the defendant too – no copying
F. Statute of limitations - 3 years civil, 5 years criminal
G. First Sale Doctrine - §109
1) Purchaser of a copyrighted work can sell, give away, or otherwise dispose of the copy or phonorecord (note
limitations for software) without obtaining any further authorization.
2) Purchaser cannot, however:
(a) Reproduce (except for private use)
(b) Create a derivative work
(c) Publicly perform the work
H. Fraud in the Application
I. Point of Sale Exception - §110 – an exception to §106 public performance right which allows retailers of
playback equipment to play them publicly for purposes of selling the equipment
J. Single Receiver Exception – you can perform publicly works that appear on free broadcast

IX. REMEDIES_____________________________________________________________
A. Injunctions - §502
B. Impounding or Disposition - §503
C. Damages - §504
1) Actual Damages
 (a) You will not get lost future profits (Stevens Linen v. Mastercraft)
2) Defendant’s Profits - §504(b)
(a) Plaintiff required to prove Defendant’s gross sales
(b) Defendant required to prove deductible gross expenses and other causes for profit other than
infringement
(c) If clear that not all of Defendant’s profits were attributable to the infringement, court will not award
100% profits even if Defendant fails to show otherwise (Cream Records v. Schlitz Brewing)
3) Statutory Damages
(a) Plaintiff must have registered the work within:
(i) The first 90 days following publication; or
(ii) Prior to infringement
(b) Amounts
(i) Pre 3/1/1989
• $100 minimum
• $250-10,000 (ordinary)
• up to $50,000 (willful)
(ii) 3/1/1989 – 12/9/99
• $200 minimum
• $500-20,000 (ordinary)
• Up to $100,000 (willful)
(iii) Post 12/9/99
• $200 minimum
• $750-30,000 (ordinary)
• $150,000 (willful)
D. Costs and Attorney Fees - §505
1) Plaintiff must first be eligible for statutory damages
2) Awarded at the discretion of the court
E. Criminal Offense - §506
1) any person who willfully infringes for either commercial advantage; or
2) Reproducing phonorecords of copyrighted works which have a total retail value of over $1000.
I. WHAT IS A PATENT_______________________________________________________
A. Three Types of Patents
1) Utility Patents (§154)- May be granted to anyone who invents or discovers any new and useful process,
machine, article of manufacture, or compositions of matters, or any new useful improvement thereof
2) Design Patents (§174)– May be granted to anyone who invents a new, original, and ornamental design for
an article of manufacture
3) Plant Patents (§161)- May be granted to anyone who invents or discovers and asexually reproduces any
distinct and new variety of plants (Plant Variety Production Act protection sexually)

II. DURATION OF PATENT PROTECTION_____________________________________

A. Utility
1) Post 1995  20 years from the filing of the application
2) Pre 1995  17 year period from grant
B. Plant
1) Post 1995  20 years from the filing of the application
2) Pre 1995  17 year period from grant
C. Design  14 years from date of grant

III. RIGHTS OF PATENT HOLDERS__________________________________________

A. Right to Exclude - The right to exclude others from making, using, offering for sale, or selling the invention in
the US or importing the invention into the US.
B. Not a Right to Use - Not the right to make, use, offer for sale, sell or import, but the right to exclude others from
making, using, offering for sale, selling, or importing the invention

IV. TRANSFERABILITY
A. May be sold or mortgaged, bequeathed by will, and passed to heirs of deceased patentee.
B. May grant licenses to others
C. No one else may make, sell, etc…without patent holder’s permission
D. A license is purely a promise not to sue—any form works
E. Transfer or sale of patent, or application for a patent, must be in instrument in writing.
F. Assignment, grants, and similar instruments are recorded by USPTO and serve as public notice

V. REQUIREMENTS FOR PATENT PROTECTION______________________________

A. Objects Qualifying for Patents
1) Patentable objects - §101
(a) Machines – constructed things
(b) Processes – process, act, or method (primarily industrial or technical processes)
(c) Articles of manufacture – articles that are made (includes all manufactured articles)
(d) Compositions of matter – chemical compositions which may include mixtures of ingredients as well as
new chemical compounds
(e) New and useful improvements of the above – new combinations of old products and processes to
produce a new and useful result
(f) Business methods
2) Things not patentable
(a) Printed materials
(b) Products of nature (unimproved or unaltered by man)
(c) Laws of nature
(d) Mathematical formulas or methods of calculation (exception for business method patents)
(e) Fraud based inventions – things likely to injure the public or to promote fraud
3) Patenting Life – Diamond v. Chakrbarty
(a) Man made microorganisms are patented under a “but for human hands” test
(b) Distinction not between living and inanimate things, but between products of nature, and human made
inventions.
 (c) If a living thing would not exist but for human hands  patentable.
B. Elements of Patent
1) Must be Novel - §102(a)
(a) If the intention is not novel, it is deemed anticipated and not patentable.
(i) The invention may be anticipated by
• Prior public knowledge
• A prior patent on the same invention, or
• A prior description of the invention published in a printed publication that teaches the art (prior
art)
(ii) In re Borst – “known by others” means
• Invention must have been fully disclosed; and
• Disclosed invention must have been accessible to the U.S. public
• The prior knowledge must have been sufficient to allow a person of ordinary skill in the relevant
art to reduce the invention to practice
(b) First to Conceive Rule
(i) The requirement of novelty in §102 reflects the aim to protect the first person to invent something—
not the first to patent.
(ii) But §102(g) requires that the inventor use reasonable diligence to reduce his invention to practice to
maintain priority
(c) Twelve Month Clock - §102(b) no patent “if the invention was (1) patented or described in a printed
publication in this or a foreign country or (2) in public use or on sale in this country for more than one
year prior (12 months) to the date of the application for patent in the US.
(i) On Sale Bar – to be barred this must happen:
• The product is the subject of a commercial offer for sale; AND
• The invention must be ready for patenting, either by:
1. Proof of actual RTP (Reduction to Practice) – actually making the invention
2. Proof of constructive RTP – preparation of drawings that would enable a person of ordinary
skill in the art to make the invention
(ii) Public Use Bar – when an inventor allows his invention to be used by others, with or without
compensation, this is also a public use and starts the 12 month clock
• Experimental Use Exception – the use of an invention by an inventor or others under his control
for purposes of perfecting the invention will not bar the receipt of a patent under §102(b).
Factors relevant are:
1. Length of test period
2. Whether payment is made by others who use the product
3. Whether users agree to keep it secret
4. Whether records were kept of progress
5. Whether persons other than the inventor performed the experiments or tests
6. How many tests were performed
7. How long the testing period was in relation to tests of other similar inventions
• Accidental Use Exception – occurs when an inventor stumbles on the invention for the first time
but is not immediately able to duplicate it
• Foreign Use Exception – unpatented use without enabling disclosures in a foreign country is
not a public use bar
(iii) Provisional Application – If someone puts your patented product on the market, you can pause
the 12 month clock by filing a provisional application
2) Must be Non-Obvious - §103
(a) An invention is not patentable if:
(i) It would have been obvious to a person having ordinary skill in the pertinent art as it existed when
the invention was made.
(ii) Looks at the relevant prior art to determine whether an invention would have been obvious at the
time of invention, even if none of the prior art was identical.
 (b) John Deere Test – 3 factors need be considered
(i) The scope and content of the pertinent prior art - court will consider that prior art which is reasonably
pertinent to the particular problem solved by the invention
(ii) Differences between the pertinent prior art and the invention at issue
(iii) The ordinary level of skill in the pertinent art
(c) Secondary Considerations
(i) Commercial success of the patented application
(ii) Commercial acquiescence by the composition – people not making it because they thing you have a
valid patent
(iii) Commercial licensing – people coming to you for a license thinking you have a valid patent
(iv) Expert acknowledgments – what do experts say
(v) Failure of others to invent despite long felt demand – no one else came up with it
(vi) Long felt need – is there a need for this problem to be solved?
3) Must be Useful - §101
(a) “Useful” refers to the condition that the subject matter:
(i) Must have a useful purpose
(ii) That there is a current significant, beneficial use for the invention.
(b) Useful includes operativeness -- a machine which will not operate to perform the intended purpose would
not be called useful, and therefore no patent.
(c) Something that promotes illegal activity is not useful (cloning)

VI. PATENT APPLICATION_________________________________________________

A. Basic Components of the Application
1) Must be in writing - §111
2) Include Specification
(a) A “written description of the invention and the manner and process of making it and using it, in 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 - §112
(b) Must include a claim or claims “particularly pointing out and distinctly claiming the subject matter
which the applicant regards as his invention - §112.
3) A drawing if “necessary for the understanding of the subject matter sought to be patented - §113; or a model
or specimen - §114
4) Oath to the effect that “he believe himself to be the original and first inventor” of the invention and state
which is his country of citizenship - §115
5) Fee
B. Joint Creations
1) May be filed jointly and may be owned jointly.
2) Any joint owner, no matter how small the part interest, may:
(a) Make, use, offer for sale, and sell and import the invention for his own profit provided they do not
infringe another’s patent rights, without regard to the other owners,
(b) May sell the interest or any part, or grant licenses to others, without regard to the other joint owner,
unless the joint owners have made a contract governing their relation.
C. Examiner
1) Evaluates the application for its compliance
2) Searches through:
(a) US patents
(b) Publication of patent applications
(c) Foreign patent documents, and
(d) Available literature to see if the claimed invention is new, useful, and non-obvious and if the application
meets the requirements of the patent statute and rules of practice.
3) If application is rejected, which is often, the applicant must request reconsideration in writing with specific
reference to the Examiner’s grounds for rejection.
4) Applicant must clearly indicate why they believe their invention should receive a patent in view of the
objections.
 5) Often involves a series of correspondence between the USPTO and the application, which correspondence
may be used later to clarify the limits of the patent.
6) If rejected a second time—final.

VII. MAINTAINING THE PATENT____________________________________________

A. Maintenance fees paid every 3 ½, 7 ½, and 11 ½ years or else patent cancelled (subject to stat. lim.)

VIII. INFRINGEMENT_______________________________________________________
A. §271 – “whoever without authority makes, uses, offers to sell, or sells any patented invention, within US or
imports into US, during the term of the patent infringes.
B. Two types
1) Literal Infringement – where the infringing article is identical or “reads on” to the claims of the patented
article held by the Π.
2) Doctrine of Equivalents – occurs when the infringing article “performs substantially the same function in
substantially the same manger to obtain the same result.” A DOE claim is examined on an element by
element basis in light of the file wrapper to determine whether any of the claims are equivalent. Not applied
to the invention as a whole.
C. Other types
1) Inducement of Infringement - §271(b)
(a) Anyone who actively induces infringement is liable:
(i) Distribution of instruction on the uses of the patented process;
(ii) Encouragement of a licensee to breach his license
2) Contributory Infringement - §271(c)
(a) Liable  Those who sell components made or adapted especially for use in an infringement of a patent
(b) Not Liable  those who sell commodities which have a substantial non-infringing use
D. Who decides infringement?
1) Court
(a) The construction of a patent, including terms of art within its claim
(b) Markman hearings which are held for declaratory construction of claims.
2) Jury
(a) Decides the question of infringement
(b) Whether it actually infringes or not.

IX. DEFENSES_____________________________________________________________
A. Patent invalid – for being non-obvious, not novel, or not useful
B. Fraud in the patent office – holder of the patent made misrepresentations or withheld material information
during the patent process and did so intentionally
C. Misuse of the patent – equivalent to unclean hands. Patentee used his patent in such a way as to gain more
market power than the grant of the patent was intended to convey.
D. Lack of payment of maintenance fees
E. Invention abandoned - §102(c) refers to the intentional surrender of the invention to the public
F. Innocent infringer - §287 – notice must be given that the article is patented. If no notice given to the infringer,
either by such notice or by the filing of an action for infringement, the infringer is not liable for money damages.
G. Patent expired
H. Experimentation exception – person may make a patented article or process:
1) To ascertain whether the specifications are accurate; or
2) For experimentation which is not for profit for business purposes – philosophical experimentation
I. Equitable defenses
1) Laches
(a) Patentee unreasonably and inexcusably delayed bringing an infringement action and the delay caused
material prejudice to the defendant.
(b) If the Π delays sue for more than 6 years after the date he knows/should have known there is a
presumption of laches.
 2) Prosecution laches – unreasonable and unexplained delay in prosecuting the patent application which may
bar enforcement of the patent
3) Equitable estoppel – if the D can show the following then no suit:
(a) Patentee, by misleading conduct led the D into reasonably inferring that the patentee did not intend to
enforce his patent;
(b) The D relied on that conduct; and
(c) Due to his reliance the D will be materially prejudiced if the suit proceeds
4) File Wrapper Estoppel – patent owner estopped from later reclaiming subject matter which he gave up
during prosecution of the patent
5) Assignor estoppel – patent owner estopped from challenging the validly of a patent he earlier assigned

X. REMEDIES_______________________________________________________________
A. Injunction -§283
B. Damages - §284
C. Trebled - §284 (may be awarded for willful infringement)
D. Attorneys Fees and Costs - §285
E. Time Limitation - §286 – “Six Year Rule” – prohibits recovery of damages for any infringements that occurred
more than 6 years prior to filing suit
REQUIREMENTS FOR TRADEMARK PROTECTION_________________________
A. Mark must be used in commerce
1) Prior to 11/16/1989
(a) Mark had to be used in the marketplace in connection with the goods or services
(b) No ownership rights would attach until used in commerce
(c) A mark that had not been used could not be registered
2) Post 11/16/1989
(a) Requirement altered to allow for registration on intent to use
(b) But it cannot be a token use simply to gain registration
3) Affixation
(a) The mark must be properly “affixed” to the goods or service
(i) For trademarks – achieved by placing mark on goods, on tags, etc…
(ii) For service marks – achieved by using the mark in the course of selling or advertising services
B. Mark must be distinctive
1) Abercrombie Categories
(a) Inherently distinctive
(i) Arbitrary or Fanciful mark
• Arbitrary – has meaning but does not describe the product or its services
• Fanciful – has no other meaning but as the trademark
(ii) Suggestive marks
• Indirectly describe the product or service they identify
• The consumer must come to engage in a mental process of his own to connect the mark to the
product or service
• The amount of imagination they exercise to make the connection is considered in deeming a
mark as suggestive vs. merely descriptive
• Competitors do not need to use the mark to describe their own products
(iii) Marks appearing on the federal register ®
(b) Not inherently distinctive  Need secondary meaning - §1052(f)
(i) Descriptive marks - §1052(e)(1) (Application of Sun Oil)
(ii) Deceptively misdescriptive - §1052(e)(1)
(iii) Primarily geographically descriptive - §1052(e)(2)
(iv) Primarily geographically misdescriptive - §1052(e)(3) (In Re Loew’s Theaters; Arizona tea)
(v) Surnames - §1052(e)(4)
(vi) Merely functional - §1052(e)(5)
• Merely Functional  not protectable
1. Do competitors need it to compete effectively – functional
2. Does the feature give one producer a competitive advantage because it functions in a
superior manner or is more economical than alternatives – functional
3. Is the feature substantially related to the purpose of the product – functional
• Non-Functional
1. Trade Dress – Protectable if:
a. May be inherently distinctive (Two Pesos v. Taco Cabana)
b. Not inherently distinctive + Secondary meaning
2. Color – Protectable if:
a. It is non-functional (note some colors have become functional)(Qualitex v. Jacobsen
Products)
b. Has secondary meaning (Qualitex v. Jacobsen Products)
3. Product Design (Samarra Brothers v. Wal-Mart)
a. Cannot be inherently distinctive
b. Requires proof of secondary meaning
(c) Secondary Meaning – when the public recognizes the mark as an indication of the source of the product
or service.
 (i) Can be established through:
• Directly - Surveys
• Circumstantially
1. Long and extensive use of the mark in connection with a product
2. Created secondary meaning through extensive advertising
3. Proof of substantially exclusive use for 5 years (prima facie evidence) - §1052
(ii) Can be challenged by:
• Attacking validity of the survey
• Secondary meaning in one market does not give you secondary meaning in the whole market
(Durango® cigars and Durango tobacco in In Re Loew’s Theaters)
(d) Inherently non-distinctive  Generic marks
(i) A mark is deemed “generic” if its primary significance to the public is the identification of a type of
product or service (Kleenex, Boogie Boards) and not the source or origin.
2) An otherwise distinctive mark cannot be:
(a) Deceptive - §1052(a)
(i) Simmons/Shapely Test
• Is the term misdescriptive of the character, quality, function, composition, or use of the goods?
• If so, are prospective purchasers likely to believe that the misdescriptions actually describe the
goods?
• If so, is the misdescription likely to affect the decision to purchase?
1. If yes  mark is deceptive and barred from protection or registration (In Re Budge
Manufacturing)
2. If no  mark is merely deceptively misdescriptive and needs secondary meaning
(Application of Sun Oil)
(b) Confusingly similar - §1052(d)
(i) No registration if a mark so resembles an earlier mark as to be likely to cause confusion (In Re
NAD)
(ii) But the owner of a previously registered similar mark may consent to another’s use if they believe
there to be no likelihood of confusion (In Re NAD)
(iii) Can grant a concurrent registration if there are no competing territories (In Re NAD)
(c) Contain scandalous matter - §1052(a)
(i) Prohibits giving offense to the conscience or moral feelings; exciting reprobation, calling out
condemnation (Hurricane Katrina drinks)
(ii) Uses perceptions of the offended class (as opposed to general public) when determining what is
derogatory
(d) Disparagement or false connection - §1052(c)
(i) No registration if it may disparage or falsely suggest a connection with:
• Persons (living or dead) - §1052(c)
• Institutions
• Beliefs
• National symbols - §1052(b)
(e) Abandoned - §1127 [§45]
(i) Through Non-Use - §1127 [§45]
• Use has been discontinued with intent not to resume such use
• Intent not to resume may be inferred from circumstances
• Nonuse for 3 consecutive years is prima facie evidence of abandonment
• Use means “bona fide” use—not a mere “token” use
(ii) Through Loss of Quality Control
• If mark licensed for use by someone else, owner must exercise QC or its abandoned
• Occurs if the owner grants a “naked license”
(iii) Through Loss of Distinctiveness - §1127 [§45]
 • Any course of conduct of the owner, including omissions, that causes the mark to become the
generic name for the goods or services with which it is used (King-Seely Thermos v. Aladdin
Industries)
• Otherwise lost significance as a mark

II. PROCEDURE FOR REGISTRATION_________________________________________

A. Required Filings
1) Use in Commerce - §1051(a) [§1(a)]
(a) Requirements
(i) Bona fide use of a mark in the ordinary course of trade
• Not a mere “token use”
• Bona fide use factors:
1. Quantity and continuity of sale
2. Consumer purchases
3. Business or mark owner
4. Quality control
5. Distinguishing mark
6. Intent
7. Profit or loss
8. Advertising
9. Test market
(ii) Deemed in use when:
• Placed in any manner on goods or their containers (or on services when it is used in the sale of
advertising services); AND
• The goods are sold or transported in (interstate) commerce
• When the good first meets the consumer’s eyes
(b) Timeline
(i) File an application
(ii) Examination
(iii) Appearance in the Official Gazette – USPTO publishes that the mark has appeared
(iv) Open to Opposition to the mark – Protestors have 30 days to file opposition (may request extension)
(v) REGISTRATION  USPTO issues certificate of registration - §1057(b)
2) Intent to Use - §1051(b) [§1(b)]
(a) Requirements
(i) Must be a “bona fide” intent to use
(ii) Court cannot enjoin an applicant from “using” during the pendency of the intent to use application
(WarnerVision Entertainment v. Empire of Carolina)
(iii) First to file the ITU gets the trademark—not first to use
(b) Timeline
(i) Do a trademark search with Thompson & Thompson (failure to do so is willful infringement)
(ii) Receive an action letter with results
(iii) File an application – filing sets the priority date
(iv) 1st Examination
(v) Open to Opposition
(vi) Receive Notice of Allowance
(vii) Have 6 months to use the mark in commerce
(viii) Extensions
• 1st – automatic upon request  another 6 months
• 2nd, 3rd, 4th, 5th – must show good cause  another 6 months
(ix) Actual Use
(x) File a Statement of Use
(xi) 2nd Examination
(xii) REGISTRATION  USPTO issues certificate of registration - §1057(b)
B. Supplemental Filings – must be made or else registration is cancelled
 1) 6th Year
(a) Must file a §8 (Statement/Affidavit of Continuous Use)
(i) Actual specimen of the mark and affidavit setting forth:
• The goods on which the mark is used
• The goods on which it is not being used and the reasons why (not abandoned)
(b) Should also file a §15 (Statement of Incontestablility)
(i) If no adverse claim to the mark during the first five years, the registrants right to use the mark
become incontestable
2) Every ten years
(a) Must file a §8 (Statement/Affidavit of Continuous Use)
(b) Must file a §9 (Renewal)

III. ADVANTAGES TO REGISTERING_______________________________________

A. Principle Register
1) Constructive notice to the public of the registrant’s claim of ownership in the mark  eliminates the
innocent infringer defense
2) Prima facie evidence of the validity of the registration, ownership of the mark, and the exclusive right to use
the mark in commerce in connection with the goods and services specified in the certificate
3) Possibility of incontestability after 5 years giving limited grounds for others to attack the mark that is 5 years
or older – makes the mark immune from cancellation and subject to attack only for fraud, genericide, and
abandonment
4) Ability to bring an action concerning the mark in federal court
5) Recovery for profits, damages, and costs in federal court infringement action and the possibility of treble
damages and fees
6) Availability of criminal penalties for counterfeiting actions
7) Use of the US registration to get registration in foreign countries
8) The ability to file the US registration with Customs to prevent importation of foreign infringing goods
B. Supplemental Register - §1091
1) For marks in lawful use and capable of distinguishing goods or services but lack either inherent
distinctiveness or established secondary meaning
2) Does not provide the full advantage of Principle Register
3) After 5 years on the Supplemental, the registrant can seek to move the mark to the Principle

IV. OTHER TYPES OF MARKS______________________________________________

A. Service Marks
1) Definition - §1127 [§45]
(a) Any word, name, symbol, or device or combination;
(b) Used by a person or which a person has a bona fide intention to use in commerce and applies to register
on the principle register;
(c) To identify and distinguish the services of one person from the services of others or to indicate the source
of those services even if that source is unknown.
2) Registration for service marks identical to that of trademarks - §1053 [§3]
3) Advertising – To register a service mark for advertising:
(a) Mark must be used in the sale or advertising of services to identify and distinguish the services of one
person from the services of another and to indicate the source of that service;
(b) The services must be “sufficiently separate” from the subject of the advertising; (In Re Advertising &
Marketing Development) and
(c) The mark must be used to identify the advertising services themselves (In Re Advertising & Marketing
Development)
B. Certification Marks
1) May be registrable under the same terms as trademarks - §1054 [§4]
2) Cancellation of a certification mark can occur if:
 (a) The mark is not used exclusively as a certification mark (Midwest Plastic Fabricators v. Underwriters
Laboratories)
(b) If the mark registrant does not control or is unable to legitimately exercise control over the use of such
mark (Midwest Plastic Fabricators v. Underwriters Laboratories)
3) [Can you adopt a common law certification mark?]

V. TRANSFER OF TRADEMARKS_____________________________________________
A. Assignment
1) A registered mark or mark for which an application has been filed can be assigned
2) Assignment must be in writing and should be registered with USPTO
3) No actual form for assignment
B. Licenses
1) The duration for licenses (both exclusive and non-exclusive) are set by contract
2) Be wary to not grant “naked licenses” – owner must maintain quality checks

VI. INFRINGEMENT_______________________________________________________
A. Likelihood of confusion
1) Polaroid Factors: (Second Circuit) (McGregor v. Drizzle)
(a) Strength of Π’s mark – distinctiveness and tendency to identify the goods source
(b) Similarity of the marks, products, or services – in appearance, sound (radio test), meaning
(c) Product proximity in the marketing channels – sold at the same or same kind of stores
(d) Quality of the D’s goods – does it tarnish or conjure up the goodwill of Π’s product
(e) Bridging the Gap between the marks – how likely for Π to enter this market
(f) Actual confusion – persuasive evidence
(g) Good faith of the D – did D intentionally adopt this mark
(h) Sophistication of the buyers – careful and discriminating consumer
2) Other issues
(a) Reverse Confusion
(b) Disclaimers
(i) Simply putting a “we’re not affiliated with X” on your product does not disclaim liability
(ii) Would turn on how likely it is that consumers will see it (is it conspicuous?)
(c) Lingering Good Will
(i) Applies in instances of an abandoned mark
(ii) Even though producer no longer uses it, it has a lingering image to the consumers who may not
know better
(d) No Side-By-Side Comparison
(i) Court will not examine the conflicting marks next to each other (Pickle-Rite v. Chicago Pickle)
B. Likelihood of Dilution
1) Federal Trademark Dilution Act - §43(c)
(a) Π must show:
(i) D made use of a junior mark sufficiently similar to the famous mark to evoke a mental
association between the two;
• Degree of inherent or acquired distinctiveness
• Duration and extent of use of the mark
• Duration and extent of the advertising and publicity of the mark
• Geographical extent of the trading area where the mark is used
• Channels of trade for the goods or services on which the mark used
• Degree of recognition of the Π’s mark vs. the alleged diluter
• Nature and extent of use of same or similar marks by third parties
• Whether the mark registered
(ii) Such association has lessened the capacity (cause actual dilution) of a famous mark to identify
and distinguish goods or services (Mosely v. Victoria’s Secret)
 • Can show a demonstrated loss of revenue
• Evidence that people will stop shopping at your store as a result
2) State Anti-Dilution Statutes (not preempted by Federal law)
(a) Π must show:
(i) Π has a distinctive mark that is capable of dilution
(ii) Likelihood of dilution – Judge Sweet Test
• Similarity of the mark
• Similarity of the product covered by the marks
• Sophistication of the consumers
• Predatory intent
• Renown of the senior mark
• Renown of the junior mark
(b) Three potential scenarios:
(i) Dilution by Blurring
• Π has a strong mark closely associated with the public as a business or as a source of a particular
type of good or service; and
• D’s use whittles away or dilutes the strong association consumers have between that mark and
the Π
(ii) Dilution by Tarnishing
• D’s use of a similar mark casts the Π’s distinctive and well-known mark or trade name in a bad
light and thus “tarnishes” the luster of Π’s commercial image or reputation
• Such as use in an unwholesome context out of context with Π’s high quality image
(iii) Likelihood of Confusion – overlap
C. Vicarious Infringement
1) D must have: (Hard Rock Café v. Concession Services)
(a) Control over the activity of the direct infringer; AND
(b) Financial benefit
(i) By charging admission prices, D had financial benefit (Hard Rock Café v. Concession Services)
D. Contributory Infringement
1) D must have: (Hard Rock Café v. Concession Services)
(a) Knowledge that the infringement was taking place; AND
(i) Knowledge means “willful blindness” not mere negligence
(ii) Did D suspect wrongdoing?
(iii) If so, did the D deliberately fail to investigate
• D had policy, but never enforced it (Hard Rock Café v. Concession Services)
(b) Provided the means for infringement or assistance

VII. DEFENSES_____________________________________________________________
A. Fair Use
1) Must show: (NKOTB v. New American Publishing)
(a) The product/service must be readily identifiable without the use of the trademark
(b) Only so much of the trademark has been used as is reasonably necessary to identify the product or
service
(c) User must do nothing that would, in conjunction with use of the mark, suggest sponsorship or
endorsement by the trademark holder
B. Loss of Distinctiveness
1) Abandonment
2) Genericide
3) Naked License
C. No Infringement
1) No Likelihood of confusion
2) No Likelihood of dilution
 3) Defendant is Senior User
D. Not Valid Trademark
1) Fraud in the Registration
2) Functionality
E. Failure of holder to maintain Quality Control
F. Π’s Unclean Hands
G. Not a Valid Suit
1) Laches
2) State Statute of Limitations (there is no federal SOL)
H. Innocent Infringer
I. Violation of Anti-Trust
J. Trademark or Service mark misuse

VIII. REMEDIES_____________________________________________________________
A. Injunctions - §1116 (preferred remedy)
1) Only need to establish likelihood of confusion
2) May be narrowly tailored to remedy the offense (such as placing appropriate labels)
B. Monetary Damages - §1117 (available whether mark is registered or unregistered)
1) Actual Damages - §1117(a)
(a) Burden on the Π to show losses incurred due to loss of sales or injury to reputation/good will
(b) Typically need to show instances of actual confusion
2) Defendant’s Profits - §1117(a)
(a) Π usually must show bad faith or deception on the part of the Defendant to receive any profits
(i) Not doing a trademark search presumes bad faith
(b) Burden is on the Π to prove the amount of D’s gross sales attributable to the infringement
(c) Burden is on the D to prove non-attributable profits and attributable losses/expenses as an off set to the
gross revenue claimed by the Π
(d) Court will have leeway to adjust the monetary awards depending upon:
(i) Whether the D acted in good faith
(ii) Whether the Π has not been made whole (Maltina v. Cawy Bottling)
3) Costs
(a) Can award cost of suit
(b) Treble damages
(c) And reasonable attorney’s fees
C. Statutory Damages
1) For counterfeit marks - §1117(c)
(a) Not-Willful  $500 – 100,000 per counterfeit mark
(b) Willful  $1,000,000 per counterfeit mark
2) For Cyber Squatting - §1117(d)
(a) Π may receive no less than $1,000 nor more than $100,000 per domain name as court deems just
 IDEA MISAPPROPRIATION

I. BASICS___________________________________________________________________
A. Source of Law – Common and State law
B. Scope of Rights
1) Address a claimed right to compensation for the D’s unauthorized use of the Π’s idea
2) Duration is set by contract and may be indefinite

II. MISAPPROPRIATION_____________________________________________________
A. Elements – Π must show:
1) Idea must be novel
(a) Objective Novelty
(i) Idea must be original to Π (Sellers v. ABC, Lueddecke v. Chevrolet)
(ii) Idea must be innovative or original in nature (Sellers v. ABC, Lueddecke v. Chevrolet)
(b) Novelty to the Buyer (New York; Nadel v. Play-by-Play Toys)
(i) For a contract claim, an idea need only be novel to the buyer to serve as consideration
2) Idea must be in concrete form
(a) Idea must be capable of being reduced to writing or used within 24 hours
(b) Idea must be reduced to a tangible form – committed to writing or incorporated into a tangible product
(c) Is the idea fully developed and “flushed out” (Lueddecke v. Chevrolet)
3) Idea must be used by the D
4) Plaintiff must have an expectation of payment
(a) Express contract - Contract exists promising to pay for an idea
(i) Lower standard of novelty required
(b) Implied contract – Where idea is novel (higher standard) and concrete and:
(i) D has paid for such ideas in the past,
(ii) Π is customarily paid for such ideas, or
(iii) Industry has a custom of paying for such ideas (Nadel v. Play-by-Play Toys)
(iv) If the D expressly declared he will not pay, courts will not imply such a promise
(c) Quasi contract – Where there has been unjust enrichment for a novel and concrete idea, but court will
not award if
(i) Disclosure for the idea was unsolicited
(ii) The idea was not novel or concrete
(d) Breach of confidentiality
(i) No novelty required
(ii) Typically mandated to be waived before recipient will even consider a submission
(e) Tort of Conversion
(i) Idea that the recipient of the idea took property
(ii) Extreme and rarely used

III. DEFENSES
A. Idea was not novel
B. Independent Development - “We didn’t use Π’s idea…we used someone else’s” (Lueddecke v. Chevrolet)
C. Idea was not concrete - Not thoroughly flushed out

IV. PRACTICAL TIPS

A. For submitters  Double envelope
B. For recipients  waiver of confidential relationship
C. Few cases are successful
 RIGHT OF PUBLICITY

I. POLICY BEHIND THE ROP

A. Vindicates the economic interests of celebrities, enabling those whose achievements have imbued their identities
with pecuniary value to profit from their fame
B. Fosters the production of intellectual and creative works by providing the financial incentive for individuals to
expend the time and resources necessary to produce them
C. Serves both individual and societal interest by preventing what our legal tradition regards as wrongful conduct:
unjust enrichment and deceptive trade practices

II. SCOPE OF RIGHTS

A. Pecuniary Interest in the Commercial Exploitation
1) The right of a celebrity to control and profit from the commercial exploitation of his or her name, image,
likeness, performance, voice, biographical facts, and symbolic representation.
2) Celebrity refers to an individual who has reached a celebrated status, including entertainers, sports figures,
politicians, business people and other public figures. Also extends to non-celebrities to the extent they have
pecuniary value in their identity
B. Transfer of ROP
1) ROP is a right of property (Majority, California)
(a) Rights descend at death to successors in interest
(b) May be assigned or sold
2) ROP is a right of privacy – (Minority, New York)
(a) Ends with the death of the celebrity

III. SOURCE OF RIGHTS____________________________________________________

A. State law
B. Lanham Act §43(a)

IV. INFRINGEMENT_______________________________________________________
A. Elements – Π must prove
1) Commercial exploitation: might include
(a) Use in advertising products or services (White v. Samsung)
(b) Incorporating the likeness into a product
(i) Three Stooges on t-shirts (Comedy III v. Saderup)
(c) Commercial speech
2) Appropriation of identity
(a) Direct name or likeness
(b) Nickname (Crazylegs)
(c) Cartoon likeness (Ali)
(d) Use of phrases associated with the celebrity (Carson)
(e) Use of impersonators (Midler v. Ford)
(f) Combinations that conjure an identity (Race car driver)
3) Likelihood of confusion
(a) Frisch Test / Sleekcraft Factors
(i) Strength of the mark – level of celebrity
(ii) Relatedness of the goods – source of celebrity’s fame and the product
(iii) Similarity of the mark – similarity of image used to celebrity image
(iv) Evidence of actual confusion
(v) Marketing channels used by D
(vi) Likely degree of purchaser care – buyer sophistication
(vii) D’s intent and good will
(viii) Likelihood of expansion – would the celebrity one day wish to endorse a similar product
V. DEFENSES________________________________________________________________
A. First Amendment
1) News, Editorial, Political Use – may use celebrity image in non-commercial speech to comment on public
figures
2) Transformative – Does the work contain significant creative elements beyond mere imitation (Comedy III
v. Saderup)
3) Parody
(a) Poking fun is acceptable, but may only use as much as necessary to conjure up the celebrity
(b) Focus is on the “medium” not the “message” – if found to be used for commercial gain no defense
B. Fair Use – use for parody, satire, and criticism is generally not infringement of ROP
C. First Sale Doctrine
1) If celebrity authorizes X to produce products bearing celebrity’s likeness, subsequent purchasers of the
product have the right to resell them without any further authorization
D. Valid License

VI. PREEMPTION - §301

A. Majority View
1) ROR rarely preempted because while the celebrity’s persona may be fixed in the photos, videos, films, etc…
the subject matter of the ROP—the celebrity’s fame and identity—are not fixed
2) The requirements of identifiably and commercial purposes distinguish ROP from copyright claims
B. Minority View
1) ROP is preempted by federal law (Kozinski in White v. Samsung; Wendt v. Host International)

VII. REMEDIES_____________________________________________________________
A. Injunction – usually granted when unauthorized use is found on the grounds that ROP interests are unique and
such use may cause irreparable harm
B. Destruction or Impoundment – some states order
C. Forced Issuance of a Disclaimer
D. Damages
1) Fair market value or reasonable royalty of Defendant’s use of Π’s identity
2) Compensation for lowered demand for endorsements based on injury to celebrity’s reputation
3) Defendant’s profits – so long as it does not lead to double recovery (some states)
4) Treble Damages – Lanham Act §43(a) authorizes
5) Fees – some to prevailing party, others to only prevailing plaintiff
 TRADE SECRETS

I. WHAT IS A TRADE SECRET_______________________________________________

A. Uniform Trade Secrets Act definition
B. Restatement of Torts – Any formula, pattern, device, or compilation which is used in one’s business and which
gives him an opportunity to obtain an advantage over competitors who do not know or use it.
C. Kettle – Any information which would give a business an economic competitive advantage

II. REQUIREMENTS__________________________________________________________
A. Does not have to be novel
B. Must be in continuous use in the claimant’s business

III. DIFFERENCE FROM PATENTS__________________________________________

A. Trade secrets are an alternative to broadening the patent system
B. Patent gives protection for only a limited amount of time after which the formula become public domain
C. Trade secret is potentially unlimited in duration
D. Trade secret also protects subject matter which could not be patented – such as client lists or pricing information

IV. SOURCE OF RIGHTS____________________________________________________

A. Common law misappropriation
B. States that have adopted the Uniform Trade Secrets Act or Federal Economic Espionage Act
C. Other State law

V. SOURCE OF CONFIDENTIAL RELATIONSHIPS_____________________________

A. Confidential relationships – require that the party who gains knowledge of the trade secret refrain from
disclosing or using it without the trade secret owner’s permission
1) Parties to a special relationship
(a) Agent – principal relationship
(b) Employer – employee relationship
(c) Partners or joint venture
(d) Fiduciary relationships (Such as attorney – client)
2) Express contracts
3) Implied Contracts
(a) If D has notice that the information which is to be disclosed is to be kept in confidence and D agrees to
receive the information, or
(b) If D does not object prior to receipt

VI. PROTECTING TRADE SECRETS_________________________________________

A. Express Agreement – require employees to not disclose or use any trade secrets belonging to the employer
B. Assign – employer may ask employee to assign in advance all trade secrets he may develop during his
employment
C. Non-Compete Agreement – employee agrees not to compete with the employer for specific times in specific
areas (narrowly interpreted)
D. Agent – employees, as agents, owe a duty of confidentiality to employers (principal) even after termination

VII. DOCTRINES____________________________________________________________
A. Doctrine of Inevitable Disclosure
1) Applies – if a former employee takes or intends to take a job where use of a trade secret is inevitable
2) Doctrine Provides: (Pepsico v. Redmond)
(a) If a former employee knows the former employer’s trade secrets;
(b) It would be difficult for him not to rely on or use the trade secrets in his new position because the duties
in his new position are so related or similar to hose in his old position; and
 (c) The former employee or his employer cannot be counted on to avoid use of the secrets,
(d) The former employee can be enjoined from taking the new position—but only for a limited time—until
the threat to the trade secrets is dissipated
B. Misappropriation by Memory
1) Definition - Whether an employee can stop a former employee from using trade secrets retained in memory.
2) Scope - Governs where a former employee has already used a memorized trade secret.
3) Remedy - The remedy would be to obtain an injunction which would prevent further use
4) Difficulty – Distinguishing between a protectable trade secret and non-protectable knowledge and skills
acquired through his employment or experience

VIII. DETERMINING A TRADE SECRET_______________________________________

A. Kettle Elements: (EI duPont v. Christopher)
1) Does it give a competitive advantage
2) Did the holder take reasonable steps to keep it a secret
B. Other Factors:
1) Extent to which the information is known outside of Π’s business
2) Extent to which it is known by employees and others involved in the business
3) Extent of measures taken by Π to guard the secrecy of the information
4) Value of the information to him and his competitors
5) Amount of effort and money expended in developing the information
6) Ease or difficulty with which the information could be properly acquired or duplicated by another

IX. TRADE SECRET MISAPPROPRIATION___________________________________

A. Elements:
1) The disclosure and/or use was of an actual trade secret
2) D had notice that the information was a trade secret and was wrongfully acquired
3) Can either show:
(a) The acquisition of the trade secret was by wrongful or improper means; OR
(i) Illegal means such as theft, bribery, or wiretapping
(ii) But also applies to activity that is otherwise legal (EI DuPont v. Christopher)
(iii) Means which would fall below the generally accepted standards of commercial morality and
reasonable conduct
(b) Breach of confidence
(i) Existence of a trade secret
(ii) Communicated to the D
(iii) While D was in a position of trust and confidence
(iv) Used by the D to the injury of Π

X. DEFENSES________________________________________________________________
A. Reverse Engineering
1) Provided the competitor lawfully obtains the product, reverse engineering is allowed
2) But the fact that is was reverse engineered does not de facto mean it was lawful
B. Independent Development (Clean Room Development)
C. Not a Secret - Holder did not take reasonable steps to keep it secret
D. “Bona Fide Purchaser” Exception
1) One who receives another trade secret from a third person without knowing that it is a secret and the third
party’s disclosure was a breach of his duty to the other, or who learns the secret through a mistake without
notice of the secrecy and the mistake…is liable to the other for a disclosure or use of the secret after the
receipt of such notice (that it is a trade secret) unless prior thereto he has in good faith paid value for the
secret or has so changed his position that to subject him to liability would be inequitable.

XI. REMEDIES_____________________________________________________________
A. Injunctive Relief
 1) Modern Rule – appropriate only for the period of time that the subject matter of the trade secret would have
remained unavailable to the D but for the misappropriation
2) Others – “Reasonable Commercial Lead Time”
(a) Weigh evidence of the amount of time a person of ordinary skill would have required to reverse engineer
or independently discover to determine the “lead time”
3) Few – permanent injunctions issued as punitive measure
B. Damages
1) Amount equal to the loss suffered by the holder; or
2) Gain realized by the person who misappropriated