Introduction to Intellectual Property

 COVERAGE
o Basic intellectual property rules
 Trade secrets
 Patent law
 Copyright
 Trade-marks
 Plus quasi-IP
 NATURE OF IDEAS – LIKE A PUBLIC GOOD
o Non-excludable
o Non-rivalrous consumption
o Consequence?
 Under-provided. No incentive to create.
o Solution?
 Create a property right in ideas through IP.
 But the property right is not absolute –
o you must disclose in order to get patent protection
o the protection lasts only for a fixed term of years.
 THEORIES OF PROPERTY/IP
o Lockean – If I use it it’s mine.
o Personhood – there is something innate in my property that is part of myself. (Margaret Radin).
o Utilitarian – property regime should maximize social utility.
 STRUCTURE TO THE VARIOUS IP RIGHTS
o Requirements: How do you prove you own this IP?
o Rights: What rights do you get from owning this IP?
o Defenses: What defenses do I have against an infringement charge?
o Remedies: What remedies do I have in light of someone using my IP?
From casebook pp. 24-26

Trade Secret Patent Copyright Trademark/dress

 Freedom of contract; Limited monopoly to Limited (although Perpetual protection for distinctive
Underlying protection against encourage production relatively long-lived) nonfunctional names and dress in
theory unfair means of of utilitarian works in monopoly to encourage order to improve the quality of
competition exchange for the authorship of express information in the marketplace.
immediate disclosure works; developed initially
and ultimate as a means of promoting
enrichment of the publishing.
public domain
State statutes (e.g., Patent Act (federal) Copyright Act (federal); Lanham Act (federal); common
Source of Uniform Trade Secrets common law (limited) law (unfair competition)
law Act); common law.
Formula, pattern, Process, machine, Literary, musical, Trademarks; service markets;
Subject compilation, program, manufacture, or choreographic, dramatic, certification marks (e.g., Good
matter device, method, composition of and artistic works limited Housekeeping); collective marks
technique, or process matter; plants by idea/expression (e.g., Toy manufacturers of
(asexually dichotomy (no protection America); trade dress (§ 43(a)); no
reproducing); designs for ideas, systems, protection for functional features,
– excluding: laws of methods, procedures); no descriptive terms, geographic
nature, natural protection for names, misleading aspects, or
substances, business facts/research. “generic” names (e.g., Thermos).
methods, printed
matter (forms),
mental steps
Information not Novelty, non- Originality; authorship; Distinctiveness; secondary
Standard generally known or obviousness, and fixation in a tangible meaning (for descriptive and
for available; reasonable utility (distinctiveness medium. geographic marks); use in
Protection efforts to maintain for plant patents; commerce (minimal); famous
secrecy; commercial ornamentality for marks (for dilution cases).
value. design patents).
Protection against Exclusive rights to Rights of performance, Exclusive rights in US; likelihood
Scope of misappropriation – make, use, sell display, reproduction, of confusion; false designation of
Protection acquisition by innovation as limited derivative works. origin (§ 43(a)); dilution (for
improper means or by contribution to famous marks).
unauthorized arts; extends to
disclosure “equivalents”
Until becomes public 20 years from filing Life of author & 70 years; Perpetual, subject to abandonment.
Period of knowledge (utility); extensions “works for hire”;
Protection up to 5 years for minimum of 95 years after
drugs, medical publication or 120 years
devices, and after creation
additives.
Loss of protection Right to patent lost if © notice and publication ® notice optional; establishes
Disclosure (unless sub rosa) inventor delays too no longer required, but prima facie evidence of validity,
long after publishing confer certain benefits. constructive knowledge of
before filing registration, confers federal
application; full jurisdiction, becomes
disclosure is required inconstestable after 5 years of
as part of application; continuous use, authorizes treble
notice of patent damages and attorney fees, and
required for damages. right to bar imports bearing
infringing mark.
Independent Only if licensed; can Fair use; compulsory Truthful reflection of source of
Rights of
 discovery; reverse request reexamination licensing for musical product; fair and collateral use
Others engineering of patent by PTO compositions, cable TV, (e.g., comment)
et. al.; independent
creation
Security expenses; Filing, issue, and None (protection attaches Truthful reflection of source of
Costs of personnel maintenance fees; at fixation); publication product; fair and collateral use
Protection dissatisfaction; litigation costs. requires notice; suit (e.g., comment).
litigation costs requires registration;
litigation costs.
Discouraged by Encouraged by Assignor has termination No naked licenses (owner must
Licensing inherent nature of completeness of right between 36th and 41st monitor license); no sale of
and bargaining (seller property rights, years (of notice given). trademark “in gross”.
Assignment wants guarantee subject to antitrust
before disclosure; constraints
buyer wants to know
what is offered)
Civil suit for Injunctive relief plus Injunction against further Injunction; accounting for profits;
Remedies misappropriation; damages (potentially infringement; destruction damages (potentially treble);
conversion; unjust treble); attorney fees of infringing articles; attorney fees (in exceptional
enrichment; breach of (in exceptional cases) damages (actual or cases); seizure and destruction of
contract; damages profits); statutory ($200 - infringing goods; criminal
(potentially treble) and $100,000 damages within prosecution for trafficking in
injunctive relief; court’s discretion); counterfeit goods or services.
criminal prosecution attorney’s fees (without
for theft court’s discretion);
criminal prosecution
TRADE SECRETS
 Trade secrets vs. Patents
o Trade secrets
 protect ideas prior to the patent stage;
 protects ideas in development;
 no registration scheme;
 no fixed term;
 more fragile – more easily disclosed.
 Facilitates business commerce – can enter into contractual relationships b/c the information will remain
secret.
 Requirements:
o The statute is at cb pp. 34-35: Section 1, paragraph 4: Trade secrets are information (e.g., a formula, a process, a
compilation, a program, etc.) that has the following properties:
 Secrecy: Is not generally known or “readily ascertainable” (but not in California)
 If all one needs to do is to look it up in a standard source, it’s not a trade secret.
o Bartender example: A new 3-ingredient drink is not a trade secret if all 3 ingredients are
readily ascertainable by tasting the drink.
 NOTE: Combinations of things can be a secret, even if the elements themselves are not secret.
Metallurgical Industries v. Fourtek (furnace parts were generally known but the particular
combination was not; this was a trade secret; made limited disclosures to employee; court ruled this
was OK; trade secret was still protected)
 NOTE: If you disclose to the world, it is no longer protected. How might companies disclose?
o Through a patent application (which becomes public 18 mo after filing)
o Through selling the product and reverse engineering (which is legal).
 Bartender example – 3 ingredient drink. Once sold and reverse engineered, not
protected.
 POINT: trade secrets protect processes better than products.
 NOTE: If someone steals the secret and then publishes it to the world, the game is up and the secret
is gone – Religious Technology Cetner v. Lerma.
 Valuable: Is valuable
 Value from Secrecy: And gets its value because it is not generally known.
 Protection: I must take “reasonable efforts” to protect the secret to get trade secret protection. The statute
requires this.
 The old tort rule: 6 factor balancing test – 8 states still use this.
 Uniform Trade Secrets Act (40 states): Must take “reasonable efforts” – no reasonable efforts will
doom a trade secrets case.
o Examples of reasonable efforts: Proof of trying to keep the info secret; more control over
the info; spent money keeping the info secret.
o What qualifies for trade secret protection? It’s very broad.
 Classic example: scientific and technical ideas.
 Business plans. What am I going to do that is different from the rest of the world.
 Customer lists (but only to the extent that the list of customers is secret).
 Is negative information (that something doesn’t work) a trade secret? Yes, under the Uniform Trade Secrets
Act.
 The old restatement of torts required that the information had to be positively used. Under the
Uniform Trade Secrets Act, if it is valuable information, then it is a trade secret.
 NOTE: The information must be valuable — Information that is not valuable is not a trade secret.
 Misappropriation/Infringement: 2 basic categories – Improper Means and Breach in Confidential Relationship
o Improper Means – cannot violate “generally accepted standards of commercial morality”
  Dupont v. Christopher (overflight of methanol plant to figure out the process of making methanol; court
says that means can be improper even when they are not illegal when they violate “generally accepted
standards of commercial morality” – the D should have known morally that he was not entitled to do this).
 RULE: P must still take reasonable precautions but not unreasonable precautions (e.g., building a
dome).
o Breach in confidential relationship – most typical in the employee context
 The law provides that if you enter into a confidential relationship and do not keep information you get
secret, you are liable for misappropriation.
 Elements for misappropriation:
o 1) is there a secret?
o 2) did you enter a confidential relationship?
 Court says that you can imply a confidential relationship from circumstances.
 Smith v. Dravo (shipping container business; P showed technology to D
in the context of discussions to sell the business; D did not buy but
began making similar containers w/ same designs as P; Court rules that
a promise of trust was implied – that the information was disclosed for
purposes that were clear to all parties).
 When should we imply a confidential relationship? When there is an implied
limitation on the use of this information, or when there is fraud.
o 3) did you use this information in violation of the relationship?
 How to disavow a confidential relationship: (comes up in the context of venture capitalists)
 Refuse to sign a confidentiality agreement (everyone then knows that no relationship exists)
 Return item unopened.
 Return item with a form asking the sender to promise that they are just giving you this stuff.
Hollywood and scripts.
 Defenses to Misappropriation/Infringement:
o Reverse engineering: Courts have said that reverse engineering is a fundamental public policy good.
 But must obtain the product on the open market.
 If I get the product illegally through improper means, this may invalidate the right to reverse engineer.
 Issue: Can the seller of a product contract around the buyer’s reverse engineering right?
 No definitive legal opinion on the subject (problem 2-9; p. 83). Court of appeals said that sellers
can NOT contract out of the buyers reverse engineering right, but CA Supremes depublished the
opinion.
o Employee:
 Most courts find a confidential relationship in an employee/employer context. Can’t take secrets away with
you to a competitor – RULE: don’t take documents outside of the building with you.
 Other issues w/r/t employee:
 Customer lists: this is a trade secret (even if the list is memorized rather than written down).
 Existing relationships w/ customers and/or skills acquired w/ the employer:
o employees can take “general knowledge” – “the law does not require a frontal lobotomy”
o CA Courts have drawn w/r/t client solicitation: you can tell clients you are leaving; what
you are going to do, etc., but after that, it’s up to them to come to you. Cannot do ongoing
solicitation.
 Non-competition agreements.
o CA Rule: Non-compete agreements involving an employee are invalid, except in the sale
of a business (I can’t sell my bagel shop to you and then open a bagel business next door).
 But courts will grant injunction against misappropriation, so Ps have started to
use the doctrine of inevitable disclosure – If D goes to work for the competitor,
s/he will inevitably disclose our trade secrets, and the only way to prevent it is to
not allow the employer to work for the competitor.
  Pepsico v. Redmond (Pepisco employee leaves and works for Gatorade;
P claims that employee will “inevitably disclose” Pepisco’s marketing
plans as he works for Gatorade in marketing position; court enforced the
non-compete w/ an injunction)
 NOTE: California courts rejected the doctrine of inevitable disclosure in
Schlage Lock Co. v. Whyte (Cal App 9/12/2002) b/c the doctrine created
a “de factor covenant not to compete,” and this was contrary to public
policy favoring employee mobility.
 Elements for the doctrine of inevitable disclosure:
 Knowledge: A former employee knows the employers trade secrets;
 Similar job duties: The former employee’s new job duties are so similar
or related to his old duties that it would be impossible for him not to rely
upon or use the P’s trade secrets.
 Cannot rely upon former employee or new employer: The former
employee or his new employer cannot be relied upon (b/c of bad faith,
ignorance, carelessness) to avoid using the trade secret.
 Remedy: Injunction.
 Lemley: the doctrine of inevitable disclosure is harsher than non-
compete agreements b/c the injunction is not necessary time-limited
(although Redmond could go back to court and ask that the injunction be
dissolved once the information is no longer useful or relevant).
 NOTE: The doctrine of inevitable disclosure is controversial, and not always
adopted – some courts will grant an injunction allowing the person to take the
job, but enjoining use of trade secrets while working for competitor.
o Rule (in about 40 states): Non competition agreements are enforceable if they are
“reasonable”.
 What is “reasonable”? Look at employers interest, employees interest, and
public policy
 Employer’s interest: agreement must be narrowly tailored to serve
employers interest.
o Time limit: 5 years too long; 6 mo will be enforced.
o Scope: Can’t say “can’t work as a lawyer”; can say “can’t work
in this area of the law”
o Geographic scope: assumes a world where business is local.
 Employee’s interest:
o Is the non-compete agreement so broad as to deny the
employee a livelihood?
 Public policy:
o Anti-Trust issues; don’t want to drive doctors out of rural areas.
o NOTE: TX Supremes said that non-compete clauses fail b/c of lack of consideration if the
employment is at will.
 Employee inventions:
o Common law rule:
 If hired to invent, employer owns the invention.
 If came up w/ idea on your own time, but used employer’s time/resources to
develop the idea, company has a shop-right to the invention (i.e., employee owns
the invention, but the company has a non-exclusive right to use it).
 If invented on employee’s own time, employee owns the invention.
o Invention assignment clauses are enforceable.
 CA labor code §2870:
  If invention is done on employee’s own time and is not directly related
to employment, employers cannot require disclosure by contract.
 If invention is done on employee’s own time and it is in directly related
field, then it belongs to employer.
o People can’t/don’t compartmentalize in this way.
 If employer rejects the idea, employee still can’t develop it b/c employer
still technically owns the idea.
 If employee does nothing about the idea until leaving the company, the
employer cannot claim to own the idea.
o Some companies use trailer clauses – to extend the obligation of assignment for a set
period after employment.
 Subject to a reasonableness limitation b/c it makes it difficult for employees to
switch jobs.
 NOTE: If employment at will, there may be a consideration problem in enforcing
the trailer clause contract.
 Remedies and trade secrets law – what do you get? Continuum of remedies (from least severe to most severe): No remedy –
Remedies that enforce expectations – Actual losses to the P – D’s gain paid to P – injunctive relief – Punitive damages – jail.
In various combinations, trade secrets law offers all of these remedies.
o Contract Remedies: Can get some remedies that look like contract. E.g., “reasonable royalty” remedy: If the court
decides not to grant an injunction against continued misappropriation, the court might say that it will condition the
D’s continued use of the secret upon a payment of a reasonable royalty – what the parties might have negotiated for a
license to use this particular secret. Reasonable license fee.
o Tort Remedies: Baseline monetary remedies of either (i) actual loss to P or (ii) actual gain to D. The statute is set up
to get the larger of the two (but you don’t get double recovery).
 Goal is twofold:
 to make the P whole, and
 to not allow the D to “get away with something”.
o Property remedy (injunctions) – presumptive entitlement is to an injunction.
 2 different types of injunctions
 Most basic: “Don’t do this thing”
 Can do it as a declaratory injunction or as a preliminary remedy.
 Can also get a “head start” injunction – If I can show that there was misappropriation and that D was
advantaged (given a “head start”) by the misappropriation of the trade secret, I can get an injunction
delaying D selling/researching the product.
 Designed to put the parties in their rightful positions.
o Criminal Punishments remedy:
 Punitive damages awarded for up to 3x the loss in cases of willful misappropriation. If I can prove that you
stole my trade secret intentionally, then I can get 3x damages of my actual losses or D’s actual gains.
 Elements to get criminal punishment:
o State of mind requirement – i.e., knowledge that this is a trade secret – there is some
dispute over the mens rea requirement for civil trade secret misappropriation.
 If I take a trade secret but don’t know that it’s a secret, am I liable?
 Some courts say yes
 Some courts say no.
 Lemley: the standard should be akin to negligence – is the trade secret
status is something that I know or should have known?
 This is akin to punitive damages in a tort context – this is behavior that we want to stop – but it also
looks like criminal law, when fines are levied upon the wrongdoer. The point is to deter bad
conduct.
 Jail. States and Feds punish trade secrets misappropriation criminally.
 Advantages to criminal prosecution: The state pays litigation costs (rather than the P); if there is a
provision for restitution, then the victim gets the money; strong deterrent effect.
 Disadvantages: But you don’t get the money that you would have gotten in a civil case.
 Summary on trade secrets:
o Advantages:
 Relatively quick
 Covers information that doesn’t fit in other IP categories
 Well-designed for particular sorts of situations
 Business negotiations
 Departing employees.
o Disadvantages:
 Creates too much secrecy – secrets are protected for too long (potentially indefinitely).
 Some inventions are not amenable to trade secret protection: e.g., if the product embodies the trade secret.
 Trade secrets are a fragile form of protection – can disappear at any time.
 PATENTS
 Overview
o Essential elements –
 Covers devices
 Requires that they be registered w/ the PTO
 Must meet the requirements of (1) “new and ingenious” (2) “not previously made” and (3) non-obvious.
 Provides (1) A fixed term monopoly (2) A procedure for determining infringement and (3) a remedy.
o Requirements for patentability: The PTO will grant a patent when the inventor can show 5 things
 Patentable subject matter – fits into one of the general categories.
 Can’t get patent on products of nature; abstract ideas; things that fit better into copyright (songs,
books).
 Novelty: the device has not been preceded in identical form in public prior art
 Must show that the inventor was the first person to come up with the invention.
 Utility: the device is useful.
 I am not entitled to a patent on a device that is not useful (not a big restriction).
 Non-Obviousness: The device represents a non-trivial extension of what was known; and
 Cannot get a patent on a minor leap of what went on before – e.g., a purple pencil.
 Enablement/Description: the device is disclosed in such a way that others may make use of the invention.
 Allows others to use the patent; proves that the inventor really did come up w/ the patent.
o What does the patent application consist of?
 Specification: describes the invention
 Claim: states the precise legal definition of the invention.
o Rights Conferred by a patent
 Exclude others from making, using, selling , or offering for sale, or importing the claimed invention for a
specified period of years.
 Until 1995: 17 years from the date the patent was issued.
 After 1995: so years from the date the patent application was filed.
 This is a negative right – it doesn’t confer an affirmative right to do anything, and the patent itself may be
covered by another patent.
o Types of patents—
 “Pioneering” patent: may cover later-developed inventions, such as patented improvements.
 “Improvement” patent: a patent improving upon a pioneering patent.
 “Blocking” patents – patents that are both pioneering and improvement.
 Requirements for Patentability:
o Patentable Subject matter: What is patentable?
 §101 of the statute book: “whoever invents or discovers a new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof, can get a patent for it.
 Hard to think what would be excluded.
 Congressional Restrictions on patentability:
 Surgical Procedures: RULE: Can’t patent surgical procedures (Congress changed the law in
1996).
 Judicial restrictions on patentable subject matter:
 Products of Nature: RULE: Can’t patent a natural thing, even though it might be able to be
described as a composition of matter. Naturally occurring plants/animals cannot be patented.
o EXCEPTION (from the case law): Man-made, genetically modified organisms, cross-bred
species, and/or man-made extractions can be patented.
 Diamond v. Chakrabarty (Inventor invents and patents oil-eating bacterium; this
can be patented b/c it is genetically modified and does not occur in nature.)
Contrast with Funk Brothers.
  Funk Brothers v. Kalo Inoculant Co. (Inventor sought to patent combination of
two chemicals as an anti-fungicide; court says D cannot have a patent on the
resulting product, which a combination of the two chemicals – a “trail mix”
patent).
 How to distinguish:
 Chakrabarty: physical alternation  patentable.
 Funk Brothers: just a mixture of natural elements  not patentable.
 Parke-Davis v. Mulford (P sought to patent extracted adrenalin; Court said that
this was patentable b/c it is not something that appears in nature. It was isolated
from its surroundings in a way that made it more useful.). RULE: If I can isolate
a naturally occurring substance, I can get a patent definitely on the process and
probably on the substance itself.
 Same argument allows the patentability of gene sequences.
 Lemley: Parke-Davis is an anomalous case – not consistent.
 Other non-patentable subject matter:
 Abstract Ideas.
o Example: e=mc2. Mathematical algorithms are not patentable, but specific applications of
them are.
o RULE: To get a patent, there must be a specific or concrete application.
 Business Methods (pre-1998; in 1998, the court eliminated the business methods exception in State
Street Bank v. Signature Financial Group).
o Example: FedEx overnight delivery could conceivably be patented now (but still must
meet other requirements).
 Printed Matter: unclear whether this is patentable.
 NOTE: Computer programs themselves are not patentable (SC: Diamond v. Diehr(1981)), but processes
that have computer programs as part of the process are patentable.
 But In re Alappat (1994): The circuit court held that software was patentable because a new
program in effect renders the computer a different machine. Computer programs are patentable if
they are a specific application.
o RULE: a person w/ software used with standard hardware can get a patent.
o Utility (doesn’t have much meaning in the current patent bar – can patent thumb-wrestling machines): There must be
moral utility and social utility.
 Moral utility: you don’t get a patent on something that has no social utility whatsoever.
 Specific Utility: There must be a current, significant, beneficial use for the invention or the product of a
process.
 Brenner v. Manson (SC held that a process for making a chemical compound that has no current
known use, but which might be useful in future research, does not qualify for a patent).
o Lemley: Patents are a quid pro quo b/t society and the inventor. The inventor gets a
monopoly in return for giving society something of social utility. If there is no social
utility, the inventor does not get the monopoly.
o Lemley: Problem in this case is that the inventor didn’t show any utility – if inventor can
show a use, s/he gets the patent.
 Courts have backed away from Brenner: See In re Brenna – if you can show some evidence that
the drug will work, it gets a patent; you don’t need to show it actually works.
 “new use” patents – I have a patent on a chemical with a use, you come up with a different use, you
can get a patent. This is a blocking patent – neither of us can use the chemical for the new use w/o
the permission of the other.
o Novelty – must be first to get the patent (first-to-invent rule in US; first-to-file rule in rest of world).
 Novelty/Anticipation: §102(a). The patent must be denied if the invention was anticipated – i.e., “if the
invention was known or used by others in this country, or patented or described in a printed publication in
this or a foreign country, before the invention thereof by the applicant for patent.”
  In other words, I can get a patent unless some event occurred before my invention. 4 possibilities:
o The invention was known by others in this country – the knowledge has to be “not secret.”
 If it was “reduced to practice,” it was known.
 NOTE: Private or secret knowledge (e.g., a trade secret) will not invalidate a
patent.
o The invention was used by others in this country – the use has to be “not secret.”
 Rosaire v. National Lead Co. (oil prospecting patent. Issue was whether it had
been invalidated by prior use by another company; court rules that the patent was
invalid).
 NOTE: private or secret use will not invalidate a patent.
o The invention was patented anywhere in the world (“prior art” requirement).
o The invention was described in a printed publication anywhere in the world (“prior art”
requirement).
 In re Hall (Patent invalidated b/c it appeared in a PhD dissertation in Germany;
PhD dissertations are “printed”).
 RULE: No patent if
o (i) [publicly] known or used
 touchstone: is the invention nominally accessible to the public. (Rosaire:
invention and “field use” on oil co’s private land counts as “public”).
 Can someone get to it if they wanted to; and
 Is the invention not treated like a trade secret\
 Why have the public standard?
 Evidentiary purposes in an infringement proceeding;
 For insuring that the public is benefited.
o (ii) by others (not the inventor)
o (iii) in the United States
 Bias to the US.
o (iv) OR patented or published in this or a foreign country [i.e., anywhere in the world]
before the invention thereof by the applicant.
 Summary: An invention is not patentable if it was known/used by others in this country or
patented/described anywhere in the world.
o NOTE: I can get a US patent on something people in the rest of the world know about and
are using.
 Statutory bar designed to catch “delayers”: §102(b): the patent must be denied if “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 US.”
 RULE: No patent if
o (i) invention was patented or described in a printed publication in this or a foreign
country
o (ii) or in public use or on sale in this country (can be the inventor’s own acts or the acts
of an “other”)
 “use”:
 No bar if
o The use is kept secret (but it’s “public” if there is no agreement
re confidentiality) or
o Use was for testing /perfecting purposes (i.e., intent of use is
not public).
 City of Elizabeth v. Pavement Company (new pavement is tested on
street; court holds this does not bar patentability and this was an
experimental and not public use).
 o RULE: Experimental uses are OK. Frequently comes up in
drug contexts.
 Egbert v. Lippmann (wife’s wearing a corset for 11 years prior to filing
the patent was a public use and barred the patent).
o RULE: Public uses will bar patentability.
 “sale” is an actual selling or an offer for sale (even if the thing is rejected).
 Pfaff v. Wells Electronics (product was considered offered for sale even
though it hadn’t been built yet b/c it was enabled and “ready to patent”).
 NOTE: “on-sale” bars are very common b/c companies start their
commercial activities earlier than they get around to patenting (in
Europe, there is no 1-year grace period – to get the patent, must file
before commercial activity.
o (iii) more than one year prior to the date of the application for patent in the US.
 Summary: For valid patent, must file patent application within 1 year from first patent or
description/publication anywhere in the world or first public use or sale in this country.
 Purpose: to hasten the filing of patent applications – prevents “submarine” patents. Limits your
ability to take the industry by surprise.

Novelty and Statutory Bars -- §102(a) and §102(b)

Novelty §102(a) – Can’t get a patent if Statutory Bar §102(b) – Can’t get a patent if
 Known by others in the US (public knowledge) prior  Public use in US 1 year before filing.
to invention  On sale in US 1 year before filing.
 Used by others in the US (public use) prior to
invention.
Novelty §102(a) – Can’t get a patent if Statutory Bar §102(b) – Can’t get a patent if
 Patented anywhere before invention.  Patented anywhere 1 year before filing.
 Printed/described anywhere before invention.  Printed/described anywhere 1 year before filing.

§102(a) on Novelty vs. §102(b) on Statutory Bars

§102(a) is about events before you invent §102(b) is about events more than 1 year prior to filing (called
the bar date).
§102(a) can only be activities done by others §102(b) can be done by anyone, including the applicant

 Abandonment -- §102(c). No patent if the inventor abandoned the invention.

 Earlier inventor must bring the invention to the public.
 Theft/Misappropriation -- §102(f). No patent if the inventor did not invent the subject matter to be patented.
 Interference -- §102(g): When two people claim to have invented the same thing.
 In Europe: first to file rule.
 In US: first to invent rule.
o If there is a dispute about who is first to invent, there is an “interference proceeding”.
o “invention” is a 2-stage process:
 (1) Conception – When did I have the “aha” insight?
 (2) Reduction to practice – building the thing or describing it and filing the
description w/ the PTO.
o RULE: if you are 1st to conceive and 1st to reduce to practice, you win.
o What if A is first to conceive, but B is first to reduce to practice?
 RULE: If A can show A was first to conceive, but B was first to reduce to
practice, A must show Diligence to win. (If A wins, B gets nothing). If A
cannot show diligence, B gets the patent on the theory that B was the first to
invent.
 Diligence –
 o Corporate standard: Strict.
 Griffith v. Kanamaru (University inventor delayed
work on invention until funding obtained and grad
student matriculated; court ruled this was not diligent;
no patent).
o Individual standard: small inventor can delay b/c of day job,
vacation, etc.
o NOTE on foreign inventive activity in interference proceedings:
 prior to 1994/1999, the rule was that the inventive activity had to occur in the US
to count in an interference proceeding.
 After 1994/1999, RULE: a litigant can use evidence of foreign inventive
activity offensively or defensively.
 But §102(g)(2) still retains a US bias in that RULE: the defense of
prior invention by a 3rd party (I’m not infringing b/c your patent is
invalid due to 3rd party’s prior inventive activity) must be prior
inventive activity by a 3rd party in the US.
 NOTE: If the piece of prior art did not anticipate all aspects of your patent, then §102 is not triggered. Prior
art must be largely identical.
o Obviousness:
 Process (fact driven):
 1) identify the prior art;
o Applicant must disclose all prior art that s/he is aware of.
 2) identify differences w/ the prior art;
 3) identify the skill in the prior art – would the PHOSITA (person having ordinary skill in the art)
think this is obvious?
o Graham v. John Deere (improvement on plow design; court decides this is an obvious
extension and not patentable).
 Lemley: the court is using hindsight here in deciding the improvement was
obvious – this was a longstanding problem that was put up with until there was a
solution.
o Combination cases (E.g., Reeces Peanut-Butter invention – was it obvious to combine
chocolate and peanut butter?). There must be some suggestion of combination in the prior
art to invalidate the patent.
 Rule: To invalidate the patent, there must be some suggestion in the prior
art to combine A & B or there must be some motivation in the prior art to
make the combination possible.
 In re Vaeck (PTO rejected genetic engineering invention on the
obviousness grounds, that a researcher aware of all the prior art would
have thought of creating the invention. Court reverses, holding that prior
art must explicitly suggest to PHOSITA the invention.
 Secondary considerations/Objective evidence of obviousness (which work as “plus” factors):
 (1) Commercial success is evidence of non-obviousness. (Chain of inferences: If the product is
successful, people had an incentive to develop it, and anticipating that the invention will be
successful, they would have tried to make the invention, and they didn’t succeed, or you wouldn’t
have been the first to come up with this, and therefore they must have tried and failed.)
 (2) Long-felt need is evidence of non-obviousness. (similar chain of inferences).
 (3) Failure of others is evidence of non-obviousness.
 (4) Copying is evidence of non-obviousness. Copying means that the invention is less likely to
have been obvious b/c people actually wanted to try to do this thing, but didn’t succeed.
 (5) Unexpected Results is evidence of non-obviousness.
  (6) Acquiescence: Are you acknowledged as the inventor? If so, this is evidence that the relevant
people behave as though you have done something useful and non-obvious.
 (7) Simultaneous invention: Evidence of obviousness – flip side of above factors. If a lot of people
thought of the same thing at the same time, it’s within the skill of the art. (But the court questions
whether simultaneous invention should matter at all b/c there are other reasons for simultaneous
invention (changed circumstances, new market, etc.)).
 NOTE on biotech cases: “sweat of the brow” works to get over the obvious hurdle. E.g., you know that you
need certain amino acids on the human genome, but finding them is very labor intensive. But you know
what they are. Is this then obvious? In re Bell (cb pp. 213-214) – finding the required sequences was not
obvious, even if the prior art suggested exactly what (but not where) the sequences were.
o Enablement/Description: §112 Paragraph 1. 3 requirements—(1) enablement; (2) written description; (3) best mode.
 Enablement: Must disclose how to make/use the invention.
 RULE: You must disclose enough of your invention in sufficient detail such that PHOSITA
can make/use the invention.
 Reasons:
o Quid pro quo for monopoly patent protection is giving something to the public.
o Disclosure is valuable to the public
o Enables improvements
o Makes sure that patentee is really in possession of the invention and cannot claim beyond
the scope of what they have invented.
 General group/“genus” patents vs. specific/“species” patents:
o General group patent: If I have discovered a general principal or a class of things, I am
entitled to patent the general principal, covering not just the work I did, but other things in
the group.
 Why allow general group patents? If you didn’t, it would be easy to have a
minor variation to evade the patent.
o Incandescent Lamp Case (patented light bulb with particular kinds of filaments but not all
kinds of filaments; issue was whether this was a “genus”/general group patent [no] or a
“species” [yes] patent; it was a species patent b/c the inventors didn’t do testing of other
filaments).
 RULE: to get a general group patent, inventor must give sufficient
information to identify the general principal and do sufficient testing to
know how many variations in the group work [but see Atlas Powder for a
limit on this].
 Atlas Powder C. v. Du Pont (patent on dynamite made by combining 3
chemicals. Precise combinations were not disclosed, but applicant got a
genus patent anyway b/c PHOSITA could figure it out).
o RULE: Don’t need to test every possible combination; if
most work, but a few don’t, it’s OK and sufficient to get a
general group patent.
o What determines how broad a claim a patent gets?
 Well-known field: The more knowledge there is in an art, the more likely you
may be entitled to claim a general group patent based upon a very limited
disclosure.
 Uncertain field: Less likelihood to get broad claim.
 E.g., I can’t claim all mammalian gene sequences just b/c I disclosed
one mammalian gene sequence.
 Written Description: Must write down the invention and give it to the public.
 RULE: To get the patent, it must have been written down – can’t change the patent in
prosecution in response to what the competition is doing.
 o Gentry Gallery v. Berkline Corp. (Recliner consoles; Gentry sees competitor’s product
and then tries to amend claim to embrace an embodiment that is enabled but not described;
court says no).
 This is a typical fact pattern – invention is enabled but not described, thus no
patent protection.
 B/c Gentry was not in possession of what it is now claiming to own, its patent
claim is invalid.
o Biotech cases—
 RULE: You must give enough information so that PHOSITA knows that
you have it. E.g., must write down the genome to get patent on it.
 Best mode requirement. Must disclose “best mode”.
 RULE: If you have a mode of implementing the invention that is best, it must be disclosed.
o Purely subjective test.
Reason: to prevent inventor from holding out, keeping best stuff concealed.
NOTE: Best mode does not have to be updated – only need to disclose best mode at the time the
patent application is filed.
 INFRINGEMENT: 3 parts – (1) claim construction; (2) literal infringement; (3) doctrine of equivalents
 Definition of infringement: §271(a): A person who makes, uses, sells, or offers to sell the patented in the
invention in the US, or who imports the patented invention into the US during the patent term, w/o the
patentee’s authorization will be liable for direct infringement.
 NOTE: Direct infringement is a strict liability offense – there is no knowledge requirement (as
opposed to inducement, which is not a strict liability offense and does have a knowledge req.).
o Claims Construction: Figuring out what the patent claims mean – use intrinsic and extrinsic evidence
 Intrinsic evidence:
 Plain meaning of the terms:
o This is controlling; if plain meaning is ambiguous, look outside the claim to other
evidence.
 Other claims in the same patent:
o the “doctrine of claims differentiation” assumes that applicant would not make 2 claims
covering the same thing. Assume that each claim has different scope and meaning.
 Specifications/description in the patent application:
o Patentee can define terms in the application (Patentee can be his own lexographer).
 Prosecution History.
o Look to exchanges between applicant and PTO to derive claim and distinguish invention
from prior art.
 Extrinsic Evidence
 Dictionaries:
o Look in dictionaries to determine what words mean – can use technical dictionaries.
 Expert Testimony:
o Scientists in the field who say “this is what this word means to my field.” Can’t use
expert testimony to vary terms, only to understand them.
 NOTE: Claim construction is a question of law for the judge, not the jury, and is determined at a Markman
hearing (cb pp. 246-250). Infringement cases go to the jury; claims construction is a matter for the judge.
 RULE: Interpret patent claims when possible in order to preserve patent claim’s validity.
 RULE: If an absolute tie, choose the narrower patent claim on a theory of notice (reliance is on the
narrower interpretation b/c people were not put on notice as to the broader claim).
 Means-plus-function format (§112, paragraph 6) in a patent application:
 Example: I have a patent application for a new computer program – I haven’t invented the
computer, merely the software. In the patent, I could describe the computer, but this is
unnecessary, so I might use functional descriptions in the claim language – “means for processing
 data” – as an element of my invention. This does not mean, however, that my patent covers all
means for processing data.
 RULE: means-plus-function patent claims do not get read literally – the patent will only cover
the equivalents to what the patentee has created.
o Literal Infringement:
 §271 gives the patentee the exclusive right to make, use, sell, offer for sale, or import the invention
described in the claims of the patent. B/c 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.
 Length of right:
o Old rule: 17 years from the date of issue
o New rule: 20 years from the date of application.
 RULE: D’s process or product must have every element set forth in the claim
 Process to assess literal infringement.
o Compare the claims of the patent to the accused product;
o Simply b/c D’s matter contains some of the elements will not constitute infringement;
o If D’s matter has all the elements plus an additional one, D is liable for infringement (but
may be able to get an improvement patent).
 Laramee v. Amron (water gun case; water tank reservoirs were different; no infringement b/c the
elements of the allegedly infringing product were not identical to the patented product).
o NOTE: Comparison of infringing product is to claim of patented invention; do not
compare product to product b/c it doesn’t matter what the ultimate patented product looks
like.
o NOTE: Every word counts.
o Doctrine of Equivalents: [I missed the class lecture on this – these notes are from other outlines]
 If the allegedly infringing product does not literally fall within the language of the claims, it may still be
liable for direct infringement under this doctrine.
 Policy: to prevent the unscrupulous copyist from avoiding liability by making only colorable changes.
 Problem: goes around notice idea of patent law by expanding scope of patents and making it more difficult
for both patentees and infringers to know what their claims cover.
 Evaluating equivalency: This is an issue for the jury (Tension w/ Markman – after the judge decides what
the claims mean, we give it to the jury to decide whether these claims should be broadened under the
doctrine of equivalents).
 NOTE: if your invention is pioneering, you are likely to get broader Doctrine of Equivalents range than if
your patent is just an improvement in an already crowded field.
 TESTS – 2 of them: (1) function-way-result test; (2) reasonable interchangeability; How to do it? Element-
by-element. Different courts use different tests.
 FUNCTION-WAY-RESULT TEST: Does the accused product perform substantially the
same function in substantially the same way to reach substantially the same result as the
patented product?
o This works well for mechanical inventions, but less so for other products (e.g., gene
sequencing or chemical inventions).
o Graver Tank v. Linde Aire Products (patented welding device using one kind of chemical;
challenged product was same device using another kind of chemical. Court held that
RULE: a product that performs in a manner slightly different from a patented
product still infringes on that product).
 REASONABLE INTERCHANGEABILITY TEST: Would a PHOSITA know that the
products in question are reasonably interchangeable?
o This works better for mechanical devices and other products.
 o Timing: The test is at the time of infringement, not invention – ideas or components that
would not have been equivalent at the time the invention was made can become equivalent
over time.
 Example: someone patents the use of a beam of light to shine underground to
ensure that pipes are laid in a straight line. Someone invents a laser, which did
not exist at the time of the light-process patent, however people use the laser b/c
it works better. The laser infringes, even though the light-holder patent did not
know about a laser at the time.
 How to do it? ELEMENT-BY-ELEMENT/ALL ELEMENTS APPROACH: Go through all
elements one by one; if one element is missing, apply the doctrine of equivalents to that
element; if there is no equivalent, there is no infringement; if every element has a substantial
equivalent, this is infringement.
o NOTE: This test encourages design-arounds that leave out an element, but this is
innovation.
o Key inquiry: what is the element?
 Werner Jenkins v. Hilton Davis (P sues D for infringement on its patented ultra-
filtration process on Doctrine of Equivalents grounds. D defends arguing that P’s
patent was for pH levels between 6 and 9, and D’s process at a pH of 5 didn’t fall
within these limits. The pH limit was added to the patent application in the
process of patent prosecution b/c of prior art. Court sues element-by-element
test, rejecting other tests to find D is not infringing using a below-6 pH).
 pH of 5 is not the equivalent of pH of 6.
 Hughes-Aircraft (issue is patent infringement of satellite controlled by computer
onboard vs. controlled from computer on earth; court finds infringement under
Doctrine of Equivalents).
 Computer on the ground is the equivalent of one on the satellite.
 Lemley: This case has been criticized for reading the doctrine of
equivalents too broadly.
 Limitations to Doctrine of Equivalents.
 PRIOR ART LIMITATION:
o RULE (from Werner Jenkins) re prior art: Prior art limits the reach of the Doctrine of
Equivalents; the doctrine does not expand patent claims so far that they cover prior
art.
 PROSECUTION HISTORY ESTOPPEL – it’s a flexible bar (absolute w/ 3 exceptions).
o RULE (from Werner Jenkins) re Prosecution History Estoppel:
 If the amendment was for reasons of prior art, Doctrine of Equivalents is
unavailable. Absolute bar.
 If there is amendment w/o explanation, Doctrine of Equivalents is unavailable
(b/c the court assumes you did it for reasons of patentability), unless the change
the D made was unforeseeable.
 If an explanation unrelated to patentability is proffered (i.e., it’s an amendment
that broadens the claim), the Doctrine of Equivalents is available. No bar.
o Rule (from Festo v. Shoketsu (supp p. 4) – “foreseeability bar”): When you introduce a
limit to your claim via amendment in the context of patent prosecution, you are
barred from using the Doctrine of Equivalents, except for 3 exceptions (foreseeability;
tangential; other reasons – see p. 12 supplement).
 Foreseeability: If the reasonable patent drafter could not have foreseen that the
effect of making this change would be to foreclose an infringement against the
D’s product, then it isn’t fair to have an absolute bar. If D’s variation on the
patented product could not have been foreseen, it is not reasonable to impose an
absolute bar.
  Warner-Jenkinson looks like a situation where it was foreseeable – a pH
limit of 6 would not prevent infringers at a pH of 5.
 Wright-Brothers example: They get a patent on cloth wings; someone
invents nylon; are nylon wings covered? Yes, b/c they couldn’t have
reasonably anticipated the invention of nylon.
 Tangential: the rationale underlying the amendment may bear no more than a
tangential relation to the equivalent in question. I.e., the presumption of an
absolute bar can be rebutted when the amendment is tangential to what the D did.
 Example: I filed a broad claim patent, I then narrowed it to respond to
the prior art, but the change also narrowed the patent in a totally
different dimension accidentally. In these circumstances, I don’t get
barred b/c the narrowing was accidental.
 Other Reasons suggesting that the patentee could not reasonably be expected to
have described the insubstantial substitute in question.
o NOTE: Prosecution history estoppel applies not just to amending claims, but also to
representations made to the PTO.
 DEDICATON TO THE PUBLIC DOMAIN
o RULE: If you describe in your patent specification an invention or variance and you
do not claim to own it in the patent application, you have dedicated your information
to the public.
 Johnson & Johnson v. Re Service (supp p. 14; patented glued aluminum substrate
to copper foil – though you could use steel, and patent discloses steel, but steel
was not claimed. Alleged infringer was using steel instead of aluminum. Court
rules that there is no infringement under the doctrine of equivalents, b/c steel was
disclosed in the patent but not claimed).
 This decision is consistent w/ Festo (which is about foreseeability) b/c
Johnson & Johnson could have foreseen the use of steel, but didn’t.
o “Reverse” doctrine of equivalents: When a device literally falls w/in the literal language of the patent claim, but is so
far changed in principle from the patented article that it would be unfair to apply the old patent.
 Rarely successful – last resort defense against a charge of infringement.
 INDUCEMENT TO INFRINGE/CONTRIBUTORY INFRINGEMENT: people who don’t infringe, but rather facilitate
the infringement of others. 2 doctrines: (1) inducement; (2) contributory infringement.
o Inducement to Infringe:
 Elements (§271(b)): to be liable for inducement to infringe, D must have
 (1) actively, (2) intentionally, and (3) knowingly solicited or assisted a 3rd part in infringing a
patent, AND
o NOTE: It’s a “knew or had reason to know” standard. Akin to a negligence standard.
 the 3rd party must have engaged in direct infringement.
 Examples: instruction to a 3rd party to violate a patent.
o Contributory infringement: There is liability to someone who contributed in a substantial way to a 3rd party’s act of
direct infringement.
 Elements (§271(c)): to be liable for contributory infringement, D must have sold, offered to sell, or imported
a material component of the patented invention which has no other substantial use.
 Knowledge: must know that the buyer’s use of the component will likely infringe as well as that
the component has no other substantial use.
 Actions: that do contribute to direct infringement.
 NOTE: This is a hard standard to meet; all the D must do is demonstrate that s/he didn’t know there
was a patent out there and/or that s/he didn’t know the product could be encouraging to infringe.
 Example: Building components that are part of but are not all of the infringing system.
 RULE: If the component is a “staple item of commerce,” no liability. If the component has
no other use except to be combined with another component and infringe, there is liability.
 oCB Bard v. Advanced Cardiovascular (D marked a catheter for use in angioplasty; P had a method on patent; P
alleges D contributorily infringes on his patent by providing detailed instructions on how to use catheter in a way that
would infringe upon the patent. [the doctor who uses the catheter is the direct infringer] This is not enough to grant
SJ).
 NOTE: The doctor would not be liable today b/c medical processes are not patentable, but device
manufacturers can still be sued for contributory infringement.
 DEFENCES TO PATENT INFRINGEMENT
o NOTE: There is nothing comparable to a reverse engineering/independent invention defense in trade secret law.
o Experimental use (judicially created)
 RULE: Allows for the unlicensed construction and use of a patented invention for pure scientific
inquiry.
 Can’t have any commercial application, however. Can’t reconstruct in an effort to get around your
patent.
o Inequitable Conduct (routinely asserted)
 RULE: Inequitable conduct makes the patent unenforceable.
 What is inequitable conduct?
 Lying/withholding info from the PTO.
 Making affirmative misstatements to the PTO about prior art (but you are under no obligation to go
searching for prior art).
 Burying a relevant prior art reference among 100s of non-relevant prior art references.
 Standard for inequitable conduct:
o Materiality of patent reference – non-disclosed and false information AND
o Intent by applicant to deceive PTO.
 Kingsdown Medical Consultants v. Hollister (applicant kept patent pending for
6.5 years by complexity, renumbering, etc. the claims; trial court finds intent to
deceive and inequitable conduct; appeals court said this was gross negligence and
that there was no evidence of intent).
o NOTE: Gross negligence does not justify an inference to deceive.
o NOTE: Submarine patents – keeping a patent application pending – is not inequitable
conduct.
 Result: unenforceable patent as a whole; unenforceable patents if there were patents that sprang from the
original patent
 can possibly get patent back if (1) you can prove you are no longer acting badly and (2) the effects
of your previous conduct have dissipated.
 General principal: DON’T LIE TO THE PTO.
o Patent Misuse (judicially created)
 RULE: Patent misuse bars patentees from enforcing patents against infringers when patentees have
“misused” their patents.
 What is “misuse”?
 Tying arrangements; patent licensing agreements that extend beyond the patent’s expiration; other
violations of anti-trust laws (e.g., resale price maintenance), grant-back clauses, field use
restrictions, patent suppressions.
o Motion Picture Patents Company v. Universal Film Manufacturing Company et. al.
(patent misuse by illegally tying purchase of film to use of a patented film threading
machine; tying was misuse, and the remedy was to render the patent unenforceable).
 Expanding the scope of a patent through illegal tying is misuse and invalidates
the patent as a whole.
 Result: unenforceable patent as a whole; unenforceable patents if there were patents that sprang from the
original patent.
 REMEDIES for Patents.
o Strict liability offense – no culpability required for there to be liability for infringement – but no criminal law on
patent infringement (unlike trade secret infringement).
o Remedies –
 Injunctive relief – this is the more fundamental “property rule” remedy.
 NOTE: Sometimes this is rejected for health/safety reasons or gravity of public interest. In such
cases, courts grant Ds a compulsory license – e.g., AIDS drugs in Africa.
 Damages/lost profits – principal of lost profits, but in no instances should a patentee get less than a
reasonable royalty (w/ a 15 factor test for determining reasonable royalty that does NOT include unjust
enrichment or disgorgement of D’s profits when D’s gain exceeds P’s loss).
 To get lost profits, must show (1) demand for the good; (2) that there are non-infringing substitutes
for the good; (3) market share (what % of the market is controlled by the patented good); and (4)
components of profit (what the cost structure is, pricing strategy, etc.).
 Additionally, courts have taken into account in determining lost profits
o Price erosion (I couldn’t charge as high a price for my patented product b/c there was an
infringing product).
o Convoyed Sales (things I would ordinarily sell alongside the patented good)
o Profits past patent’s expiration (on a lead-time theory – that it would take the infringer
time to gear up to produce once the patent expired).
 RULE: Willful infringement yields 3x damages.
o What is willful? (1) aware of the patent; (2) have reason to believe the patent is valid; and
(3) have reason to believe you are infringing on it.
o Willfulness leads to gaming the system
 Patent holders put pontential Ds on notice that they are infringing.
 Ds want opinion letters saying that the patent is not valid or that the product Ds
are making does not infring.
 COPYRIGHT – protection against copying.
o Elements of a protectable copyright:
 Protectable subject matter: Spans the broad spectrum of artistic and literary expression – ideas are not
copyrightable, but the particular expression of an idea is.
 What is protectable from the statute?
o Literary works
 Includes the story (and it is not permitted to paraphrase)
 Characters – the less developed they are, the less protected they are.
o Musical works
 Protects both the author and the performer (lots of creativity in the performance
of a song).
 Subject to compulsory licensing under §115 once they have been released to the
public. Other artists can cover the song, if they pay the appropriate fee and
follow the procedure of §115.
o Dramatic works
o Pantomimes and choreographic works
o Pictorial, graphic, and sculptural works.
 USEFUL ARTICLE DOCTRINE: Must distinguish between aesthetic
elements (protectable) and utilitarian elements (not protectable); otherwise,
you are granting a near perpetual patent.
 STATUTE: §101 – the design of a useful article [shall only be
protectable] only if and to the extent that the pictorial, graphic, or
sculptural features can be identified separately from, and are capable of
existing independently of the utilitarian aspects.
 Brandir v. Pacific Cascade (Are bike rakes protectable? No. The
design is utilitarian, not aesthetic).
 How to do this? No clear rule.
o Separability: Hood ornament vs. car. (easy case).
o Market reaction: Is the bike rack bought as art? As a rack?
o Does the artistic element add value? If yes, protectable.
o Does the artistic element add utility? If yes, not protectable.
 Problem 4-9 (p. 397) – are mannequin torso’s protectable?
o RULE: The greater the extent to which the work departs from
its obvious, logical, or functional elements, the more
protectable it is.
 NOTE: only applies to pictorial, graphic, and sculptural works.
o Motion pictures and other AV works
o Sound recordings
o Architectural works.
 RULE: Building a house from a blueprint is a copy.
 RULE: Protection extends to the “expressive elements” – can’t rebuild the
Chrysler building.
 There is a utilitarian function exception – can’t copyright a roof.
 Photos/Pictorial representations of a work that has been constructed are permitted
(if the building is visible).
 Owners of a building with a copyright design may destroy it.
o Derivative works -- §103(a).
 RULE: The copyright extends only to the material contributed by the author of
such work, as distinguished from pre-existing material in the work.
  West Side Story is protectable, but only those elements that are not
Romeo & Juliet.
 Roth Greeting Cards v. United Card (copying of greeting cards; court
held that these were copied and that the test for infringement was
whether the work is recognized by an ordinary observer as having been
taken from the copyrighted source.).
 Definition: a derivative work must add separate creativity which is newly
copyrightable.
 Can’t copyright facts.
o Feist v. Rural Telephone Service (Phone directory is not copyrightable).
 Can’t copyright ideas
o Baker v. Selden (Double-entry bookkeeping invented; published blank forms; not
copyrightable b/c double entry bookkeeping is an idea and P can only copyright the
particular expression of the idea).
 NOTE: P should have gotten a patent on the system as a business method.
o There is a continuum between big ideas which are not copyrightable and sentence
structure which is.
o Doctrine of merger – when there are only a limited number of ways to express an idea,
the expression merges with the idea and becomes unprotectable.
 Morissey v. Proctor & Gamble (Highly constrained set of sweepstakes rules are
not protectable under copyright b/c there were only so many ways to express the
idea).
 Lemley: Might also apply to works of factual history.
 Can’t copyright Government works: §105.
o But only applies to federal government work (although states have not sought to
copyright).
 Private organizations writing laws may give rise to the possibility of copyrighting
statutes.
 Examples of non-copyrightable items:
o Things that are incident to the idea – e.g., a novel about Russia.
o Things that are trite – literary devices, artistic devices, standard elements of plot.
o Non-original expression – using other people’s work. West Side Story/Romeo and Juliet.
o Facts. Feist.
o Things that are functional.
 E.g., Architectural designs, if functionally driven, are not protected.
 Threshold for protection
 Originality: Modicum of Originality. §102(a). But not a high standard (can copyright Hamlet w/
a 1 page preface).
o What is not original?
 Facts are not original.
 Feist Publication v. Rural Telephone Service (P sues D for copying
phone directory; court rules that these are facts and hence not
copyrightable b/c there is no originality).
o NOTE: Compilations of facts, originally arranged, are
copyrightable.
o Copyright law rewards originality, not effort. “Sweat of the
brow” does not yield protection.
 NOTE: perhaps contract law can protect “sweat of the
brow” works through licensing arrangements –
ProCD v. Zeidenberg.
  Generalizations
 Fiction gets more protection than non-fiction.
 Databases are not copyrightable.
o Only original material is copyrighted
 Ex: in a casebook, only the commentary, not the cases, are copyrighted.
 Fixation: “fixed in a tangible medium of expression” §102(a).
o Fixed is defined as permanent or stable for a non-transitory period of time. Includes live
broadcasts.
 Ex: sending someone e-mail; copying into RAM on my computer.
 Formalities – traditionally, publication, notice, registration, and deposit.
 Publication: This requirement was gotten rid of in 1976.
 Notice (this is what © is all about): This requirement was gotten rid of in 1989 (but people still ©
to let others know something is copyrighted; plus gives benefits w/r/t damages in infringement.
 Registration: Rote process (send in $40 and get registration).
o Abolished in 1989 for works created outside the US; for works created in the US,
registration is required to initiate a lawsuit (but you cannot get damages for infringement
prior to registering).
 Deposit: Must give Library of Congress a copy (but if you don’t, you just pay a small fine;
copyright is not destroyed).
 Notice is required on copyright prior to 1989.
 Registration is required to bring a lawsuit.
 Authorship and Ownership
 The work must have been created/owned by the party bringing the suit.
 3 types of ownership (matters b/c the duration is influenced by what type of owner)
o Individual ownership: life of author plus 70 years.
 “Starving artist” provision: §203(a)(3) – If I have assigned my copyright to a
company, between 35-40 years after the work is created, I can give notice to the
owner that I am taking the copyright back.
 NOTE: this right is inalienable and cannot be contracted out of.
 NOTE: this right does not apply to works made for hire.
o Joint work: life of longest surviving author plus 70 years.
 Each author is treated as tenant in common (can do with the property as you
wish, but the right will be exercised w/ an accounting to co-owners).
 TEST: To get joint authorship, (1) each must contribute protectable expression,
and (2) intent – both authors must intend their work be merged (otherwise, it’s
derivative work).
o Work made for hire (employee or assignment of commissioned work).
 95 years after publication or 120 years after creation.
 Community for Creative Non-Violence v. Reid (artist hired to create work as
contractor; who has copyright? The artist does).
 RULE: w/r/t contractors: One hired to create work retains
copyright unless s/he was an employee.
 Tasini v. NY Times (supplement) (D was a free lance author for NYTimes who
sued when the paper put his work on the web. SC agrees that this is copyright
infringement).
 RULE w/r/t contributors in collective works (§201(c)): Author of
contribution has initial copyright; owner of copyright of collective
works can only reproduce and distribute as part of that collective
work, a revision of that work, and later collective work. (i.e., no
web version of the NYT in Tasini).
  Duration
 Current protection: Life of author plus 70 years; 95 years after publication in the case of entity
authors/works for hire (or 120 years from the year of creation).
cb 426
Date work created Protected from Term of protection
After 1/1/78 When the work is fixed in a tangible Life of author + 70 years (or if work of
medium of expression corporate author, anonymous author, etc,
95 years from publication or 120 years
from creation, whichever is less)
Published between 1963 and 1977 When published w/ notice 28 years from first term; automatic
extension of 67 years for 2nd term.
Published between 1923 and 1963 when published w/ notice 28 years for 1st term; could be renewed
for 67 years; if not so renewed, now in
public domain
Created before 1/1/78, but not yet 1/1/78, the effective date of the 1976 Life of author plus 70 years or at least
published Copyright Act which eliminated common until 2003 if the work remains
law copyright protection unpublished. If the work is published by
2003, term expires in 2048.
Sound recordings created prior to 2/15/72 Depends upon treatment under applicable state law. §301(c).

 Infringement (§106(a))
o RULE: If I copy, I am infringing (unless there is an exception or an authorization).
o TEST FOR INFRINGEMENT – 2 steps
 (1) must prove that an actual copy is being made.
 To prove copying, P can use
o direct evidence (did you take this?) or
o indirect evidence consisting of a sliding scale between
 proof of access to the work and
 probative similarity (similar enough to suggest copying).
 Arnstein v. Porter (Songwriting infringement; D claims no access to
songs; but substantial similarity can lessen the need for access).
o RULE: proof of access and degree of probative similarity
are inversely related. If you have lots of one, you need less
of the other.
o NOTE: There is a split in the courts. Some courts say that if
substantial similarity is high enough, no need to prove access;
other courts still require access to be shown.
 TEST: how to do substantial similarity. 2 approaches:
o Compare what is actually protectable w/ what D copied.
 E.g., factual history books would have little that is
protected, thus the works would have to be identical to
show substantial similarity.
o Holistically – total look and feel.
 (2) Must prove substantial appropriation of the protected expression (i.e., copying of more than a de
minimus amount).
 Steinberg v. Columbia Pictures (New Yorker cartoon stolen as movie poster. No evidence of direct
copying. Court finds circumstantial evidence – proof of access and probative similarity – sufficient
to find liability).
o The interlocking W is not substantial appropriation (but it is enough to prove copying).
 Need not be much, if it’s the signature elements – David Bowie/Vanilla Ice.
  NOTE: copying need not be conscious (Chiffons-He’s so Fine/George Harrison-My Sweet Lord: court
concludes subconscious copying b/c of substantial similarity).
 Rights of copyright owners. (§106) The copyright owner has the exclusive right to
o Reproduce the copyrighted work.
o Prepare derivative works based on the copyrighted work
 Can’t write in casebook.
o Distribute copies for sale, rent, lease, loan, etc.
 Note the first sale doctrine (§109(a)): that copyright holders are permitted to control only the 1st sale and not
subsequent sales.
 Quality King Distributors v. L’Anza Research (copyright infringement suit on shampoo labels for
the re-importation of the labels into the US; D defends on first sale doctrine - i.e., P cannot control
distribution beyond the 1st sale; court holds no infringement on first sale doctrine basis).
 Right of Distribution: gives the copyright holder two things
 Right to control first publication.
 Ability to sue intermediaries who engage in unauthorized distribution but are not making copies.
There is no right to sell an infringing copy.
o Perform [if it moves]/Display [if it stays still] the work publicly.
 Can play a CD that I own only in a private context, not a public context.
 What is public? Defined very broadly (§101, p. 165)
o Seeing a movie in a hotel room is public.
 NOTE: The musical composition composer has a right to protect against public performance, but
not the recording artist.
 Fairness in Music Licensing Act (1998):
 Can play radio in a small business (less than 2000 square feet), but not CDs, b/c the radio has
already paid for the right to perform, but the CD owner has not. §110(5).
 Bar owners playing CDs must pay into ASCAP.
 But you can display the thing where the thing is located. §109(c).
 Exceptions from the performance/display right
 Public interest (§110) – live educational performances; face-to-face performances for charity;
record stores;
 Compulsory licenses (§111) authorizes TV broadcast relays – e.g., an apartment w/ a single
antennae.
o Moral Rights –
 stronger in Europe (France) where authors have
 right of attribution – I can sell the copyright, but still be ID’ed as the author of the work.
 Right of integrity – I can sell the work, but still prevent its alteration/mutilation.
 Can extend right of copyright holder to some percentage of resale rights.
 In the US, the author’s moral rights are limited to
 Author’s claim to authorship of the work.
 Author’s right to prevent the use of her name on works she did not create or works that have been
modified or distorted.
 Authors also get limited rights to object to modification/destruction of their original works.
 Derivative Works (§106(2))
o Defined: A work based on one or more preexisting works (translation, musical arrangement, dramatization,
fictionalization, movie version, reproduction, abridgement, editorial revisions, etc.)
 Same work, different form.
o RULE: Copyright holders have the right to control derivative works. §106(2).
 Gives rights to creators to control downstream changes.
 Mirage v. Albuquerque ART (D cut up art books and pasted them on tile; P sues for copyright infringement
on a derivative work theory. Court says this infringes b/c it’s a derivative work).
  Lemley: This case is wrongly decided b/c the court should not have decided this was a derivative
work b/c there is no new original expression here.
o The first sale doctrine does not apply to derivative works.
o TEST: The analysis of infringement of a derivative work is the same as the analysis of infringement of a copy, w/ a
few exceptions.
 Exception:
 Fixation requirement: No fixation requirement w/r/t a derivative work.
o NOTE: Derivative works found to be infringing fall into the public domain.
o Examples:
 Writing notes in the casebook is a derivative work, and copyright law prevents you from reselling.
 Indirect Infringement: 2 forms (1) vicarious infringer; (2) contributory infringement.
o Vicarious infringer: I am really the person directing the infringement (e.g., telling my employees to infringe).
 3 Elements/Test:
 Direct infringement by someone else.
 Ability and right to control the act of infringement.
 Presence of a direct financial benefit to me.
o E.g., Students downloading music in their dorms does not make UC a vicarious infringer.
o Contributory Infringement:
 4 Elements/Test:
 Direct infringement by someone else.
 Knowledge/recklessness
 Substantial participation
 [applies only to device cases – e.g., VCRs or computers] Is the device capable of non-infringing
uses?
o If capable of non-infringing uses  no infringement. (E.g., VCRs and time-shifting.)
o If capable only of infringing uses  infringement.
o NOTE: If Napster is a “device,” this element applies; if it’s a “service” it does not.
 Sony v. Universal City Studios (Does a VCR infringe on a theory of contributory infringement? No b/c it is
capable of non-infringing uses).
 A&M Records v. Napster (Suit for contributory infringement. Issue is prong 1 of the 4 prong test above b/c
prongs 2-4 are not at issue: Are Napster’s users engaged in direct infringement? Yes.)
 RULE: As long as there are sufficient number of people engaged in direct infringement, and
Napster was aware of it, the D loses.
 Copyright Defenses
o FAIR USE (§107 sets out a 4 factor test regarding fair use.)
 Test for fair use
 Purpose and character of the use
o Is it commercial?
 In Sony, the court held that time-shifting was not commercial and was fair use.
 In Napster, the court held that the filing trading was commercial – I give you
something, you give me something.
o Public interest: Is it for a non-profit educational purpose?
o The D’s conduct should be at issue here (Harper): if the D did something inequitable, it
matters.
o Is it Transformative or Superceding?
 If transformative (photocopied so you can take the article to the library), this
favors fair use.
 If superceding (photocopied so you don’t have to buy another copy), this favors a
finding against fair use.
 o If there is a licensing mechanism, this weighs against a finding of fair use (b/c D could
have licensed the copy). (American Geophysical Union v. Texaco)
 Nature of the work:
o Fact/fiction – fiction gets more protection than factual works.
o Published vs. unpublished: unpublished gets more protection than published b/c of the
right to control first publication.
 Amount taken: A lot or a little? Qualitatively important?
 The market effect: (Lemley: This is the real issue)
o Covers direct substitution – people bought this from you rather than buying it from me.
o Covers market for derivative works – even if your good doesn’t compete directly w/ mine
(you made a rap version of my song), you deprived me of the opportunity to sell the song
to another rap performer and thereby make money from it.
o Harper & Row v. Nation (Gerald Ford memoirs get scooped by The Nation, resulting in
Time canceling its contract to publish excerpts. Court did a factor-by-factor examination
of the fair use defense).
 Lemley: Market effects drive the analysis, along with purpose/character of use.
Rarely do the other two factors matter.
o American Geophysical Union et. al. v. Texaco (D was saving money by photocopying
academic articles for internal use. Analysis rests on market effect – Texcco could have
gotten a license to photocopy, and they didn’t. Photocopying was not a fair use.)
 Lemley: Fair use is in some sense about market failure – is there a market here
that would work?
 NOTE: The preamble to §107 gives you indication that some things are presumptively fair use: teaching,
news reporting, criticism, scholarship, research.
o Parody as a defense
 Copyright owners are unlikely to voluntarily license a parody derivative work, so parodies must come under
the fair use defense
 RULE: Parodies are more likely to be excused as fair use defense if (1) the parody is at least in part
aimed at the copyrighted work, and (2) the D only copied to the extent necessary to “conjure up” the
copyrighted work in the audience’s mind, so that the audience would understand the parody.
 Campbell v. Acuff-Rose Music, Inc. (2 Live Crew did a commercial parody of Roy Orbinson’s “Pretty
Woman”. Court weighed the 4 factors: (1) purpose of use – there is a public interest in parody, and the fact
that it’s commercial is OK (undoes Sony); (2) nature – court acknowledges that this is expressive work
entitled to protection, but dismisses this factor; (3) amount taken – the court distinguishes parody (which
gets a high level of protection) from satire (which does not); and (4) market effect – there was none.
Holding – this was parody; the commercial use of the work was not determining).
 Parody vs. Satire
 Parody (greater protection) – makes fun of the protected work. E.g., 2 Live Crew making fun of
Roy Orbison.
 Satire (lesser protection) – uses protected work to make fun of something else. E.g., Using The
Cat in the Hat to say something about OJ Simpson.
st
o 1 amendment can be a defense (but rarely)
 Sun-Trust Bank v. Houghton Millflin Co (Gone with the Wind parody entitled The Wind Done Gone. P sues
for copyright infringement arguing that the book competes w/ the original; 11th circuit sees this as a 1st
Amendment issue).
 The Wind Done Gone’s author wanted not just to make fun of Margaret Mitchell, but also to make
a broader social point
 Thus this case blurs the line between satire and parody.
o Other Defenses
 Independent creation
 Consent/license
  Inequitable conduct
 E.g., the copyright owner’s own plagiarism of another work.
 Sheldon et al v. Metro-Goldwyn Pictures: “No plagiarist can excuse the wrong by showing how
much of his work he did not pirate.”
 Copyright misuse
 E.g., the P has misused its copyright in an anti-competitive manner.
 Immoral/Illegal/Obscene works
 Statute of Limitations.
 REMEDIES
o Injunction (§502) – copyright is basically a property law regime in which you get an injunction rather than damages.
 But there are compulsory licenses that limit the property law regime. The remedy is effectively a
compulsory license, and the creation of a liability rule (w/ damages) rather than a property rule.
 Example: the cover license, satellite broadcasting, performance of music in jukeboxes.
 NOTE: The SC has noted in footnotes that there is no automatic right to an injunction; especially when the
use is transformative (b/c this impedes new speech).
o Damages (§504): fairly strong, and look like trade secret remedies.
 P can get the greater of either (b/c we don’t want to allow double recovery)
o Ps’s losses (if I can show that I lost sales b/c of D’s actions) (§504(a)(1))or
o D’s gains (if I can show D made money on the work) (§504(b))
 PLUS attorney’s fees (§504) as a prevailing D or P.
 OR P can get statutory damages (§504(c)): I can at any time elect statutory damages in lieu of proof of
damages. So if you copy my work and it has no economic effect at all, I can still sue and get statutory
damages between $750 - $30k per infringed work “as the court considers just”
 or up to $150k if the infringement is willful – this is to deter infringement. (§504(c)(2))
 NOTE: Intentional infringement is a criminal offense (e.g., counterfeiting).
 NOTE: Copyright infringement is a strict liability statute – there is no requirement of mens rea.
 TRADEMARK –
o POINT OF TRADEMARK LAW – TO PREVENT CONSUMER CONFUSION
o RATIONALE FOR TRADEMARK LAW –
 Consumer protection against deception –
 Only if consumers are likely to be confused do we conclude that there has been infringement.
 Unfair competition –
 Legitimate businesses that invest in their brand and product are hurt by trademark infringement.
 Promote investments in brand quality –
 More like traditional IP rationale; investment should not be dissipated to others.
 Trademarkable subject matter (can’t trademark generic terms – “car” or “cola”)
o Brand names/trademarks: “MacIntosh” is the name of a computer sold by Apple.
o Service marks: Same as trade marks, except for a service company. E.g., FedEx.
o Trade names: Not entitled to protection unless the trade name is used in the sales of the company.
 Apple computer is protected; Beatrice (big conglomerate holding company) is not protected.
o Logos and symbols: Protected – serving the same function as the brandname. E.g., VW or Nike swoosh.
o Slogans: Associated with a particular brand. E.g., Nike “just do it.”
o Trade dress: Images I use w/r/t the product (e.g., packaging – as opposed to product configuration/design). E.g., the
red/white design of Coca-Cola, or the shape of the Coke bottle.
 Protects against misleading packaging.
 Can be registered under 43(a) of the Lanham Act.
 Two Pesos v. Taco Cabana (P sought trade dress protection for colorful Mexican restaurants – the court
holds this protectable trade dress b/c it is inherently distinctive).
 If trade dress is inherently distinctive, trade dress will be protected. E.g., Gateway computer boxes.
 If the trade dress is descriptive, must look for secondary meaning for protection.
o Certifications: registered under the Lanham Act to certify national or other origins, material, mode of manufacture,
etc.
 Example: Champagne.
o Collective marks: seals of approval. The collective organization issues and registers under the Lanham Act.
o Product configuration/design (as opposed to trade dress)
 Wal-Mart v. Samara Brothers (can product design – children’s clothes – be protected under trademark?
Only with secondary meaning, and not in this case.)
 RULE: Product configuration/design is only protected if there is secondary meaning (e.g., pink
fiberglass insulation); can’t protect functionality, attractiveness, a design that sits on shelf well, etc.
 What cannot be a registered trademark? §2(a) - §2(c). (NOTE: But these marks can still be protected via common law).
o Flags/insignia of governments.
o Images or names of living person or dead president while the widow is alive.
o Immoral or scandalous or disparaging marks.
 Harjo v. Pro-Football (Native American sues to take away Washington Redskins registration on a
disparaging theory. Court held that if a significant number of people found the term offensive or
disparaging, this was sufficient to withdraw registration.)
 Lemley: the goal of the disparaging statute is to withhold government recognition from something
scandalous.
o Marks that bring a name into disrepute.
o Marks that are close to other registered and in-use marks such that there will be confusion.
o Marks that are (provided they have no secondary meaning)
 Merely descriptive or deceptively misdescriptive.
 Geographically descriptive (except that indications of regional origin may be registerable).
 Geographically deceptively misdescriptive.
 Primarily merely a surname.
 Comprises any manner that, as a whole, is functional.
 Elements/Test for trademark protection: There are degrees of distinctiveness, the protection strongest at the top, and non-
existent at the bottom. This applies to marks and (to varying extents by different courts) to logos and trade dress.
o Fanciful – Something made up that didn’t exist before. E.g., Exxon.
 RULE: “inherently distinctive” – gets the highest protection.
o Arbitrary – Marks that have existence in the real world, but nothing to do with the product. E.g., Apple Computers.
 RULE: “inherently distinctive” – gets the highest protection.
o Suggestive – Marks that suggest something about the product. E.g., Coppertone sun tan lotion.
 RULE: “inherently distinctive” – gets the highest protection.
 TEST for descriptive mark (as opposed to suggestive mark) from Zatarain: A mark is suggestive if
and only if it requires some leap of imagination to get from the trademark term to the product.
o Descriptive – Marks that describe some attribute of the product. E.g., Joe’s Crab Shack.
 RULE: Descriptive terms may or may not be protectable.
 If there is “secondary meaning,” the mark is protectable. E.g., MacDonald’s is a restaurant
owned by someone named MacDonald, but it has acquired secondary meaning and is protectable.
 If there is no “secondary meaning,” no protection. Joe’s Crab Shack.
 TEST for descriptive mark (as opposed to suggestive mark) from Zatarain: A mark is suggestive if
and if it requires some leap of imagination to get from the trademark term to the product.
 How to prove secondary meaning?
 Surveys, plus indirect evidence (advertising, how long has the product been on the market, etc.).
 If there is secondary meaning above 10%, the mark probably is protected.
 Examples of different kinds of descriptive terms.
 Geographical marks (if accurate) are descriptive and therefore are protectable if there is secondary
meaning.
o Example: Manhattan bagels.
 If the bagels are from Manhattan, the mark is descriptive, and would be
protectable if there is secondary meaning.
 If the bagels have no connection to Manhattan, then the question is asked: would
consumers assume that these bagels come from Manhattan?
o RULE: If the product is geographically mis-perceptive, then there is never
trademark protection. But there must be a basis for believing that consumers would be
confused.
 Example: Alaska Salmon that doesn’t come from Alaska
 This is geographically descriptive and is likely to be believed, and
therefore is not trademarkable b/c it falsely represents the origin.
 Example: Patagonia clothing.
 No one thinks this is made in Patagonia, so it’s OK.
 In re Nantucket, Inc (shirt-makers want to register Nantucket as a mark; court
held the mark should be registered b/c no one confuses Nantucket w/ shirts).
 Personal names are descriptive and therefore are protectable if there is secondary meaning. E.g.,
MacDonald’s; Better Crocker.
o It’s a descriptive term, even if the name is made up. It gets protection if there is secondary
meaning. Therefore, someone named MacDonald cannot open a MacDonald’s restaurant.
o The statute says look at the surname and decide whether it is primarily a surname.
o Example: Gallo Wines can stop brother selling Gallo salami to the public b/c of the
significance to the purchasing public and the likelihood of confusion.
 Laudatory terms are descriptive and are protected if there is secondary meaning.
o Example: Best Buy.
 Foreign terms: translate them to see if they are descriptive.
 Color: Can’t be inherently distinctive, but can be descriptive and protectable if it has acquired
secondary meaning. E.g., pink fiberglass insulation.
 o Qualitex v. (dry-cleaning press pads w/ distinctive color; court held this was protectable,
but only upon showing of secondary meaning – color over time could “signify” the brand).
 The New York Rule says that if you have a descriptive term w/o yet proving secondary meaning, and
someone steals it, bad intent can be a substitute fore secondary meaning – the rationale is that no one would
try to steal the term unless it had secondary meaning.
 NOTE: There is “fair use” in trademark of a descriptive term w/o secondary meaning.
o Generic – Words that are just standard. E.g., Car or computer.
 Defenses:
o Fair Use
 RULE: A junior user of the term is not liable for infringement of an established mark if the mark is
being used in its descriptive sense.
 Zatarain’s v. Oak Grove Smokehouse (issue is whether the mark “Fish-Fri” is descriptive w/o secondary
meaning, and therefore can be used by a competitor on a fair use defense; court held that descriptive terms
w/o secondary meaning can be used under fair use. D can use “fish-fry” so long as there is no confusion
about the source of the goods).
 RULE: The fair use defense is available vis-à-vis descriptive trademarks w/o secondary
meaning as long as there is no consumer confusion.
 Priority Disputes:
o RULE: The trademark goes to the first person to use the trademark in commerce or the first to file an application to
register (which can now be done on a basis of intent to use in commerce).
 NOTE: Registration w/ intent to use can serve as a substitute for “use” in post-1989 trademark law.
o RULE for inherently distinctive mark:
 Who is first?
o Rule for descriptive Mark:
 Priority is decided upon the basis of which user acquired secondary meaning first.
 E.g., Porcelain coat problem (p. 639).
o Questions to ask in a priority dispute:
 Use – did I make use of the trademark in commerce (or register w/ an intent to use)?
 Where did I use the mark?
 If used the mark locally, I get local protection.
 RULE: Priority is measured w/r/t to a given geographic market.
o Where you advertise has an effect, as well as a “zone of expansion” – I.e., an SF firm
would get priority in the East Bay.
 The type of product also matters – airlines get national protection; video stores do not.
 RULE: If the mark is registered, you get nationwide protection except where people are
already using the mark (but to register, must have intent to sell)
 In what products and/or in what goods?
 Trademarks don’t extend to the universe of all goods, but rather too the goods you are going to sell.
 RULE: No confusion if the marks are in different categories.
o E.g., Apple – means fruit and computers – unlikely confusion. Hair dye and shampoo will
likely generate confusion.
o Zazu Hair Designs v. L’Oreal (L’Oreal was sued for using a mark for its hair products that
was already in use by a hair salon. L’Oreal won on the grounds that the mark was not in
extensive use [today w/ an intent to use standard, L’Oreal would have lost.)
 How similar are the marks?
 Victoria’s Secret vs. Victor’s Little Secret (currently before the SC).
 Is there inherent or acquired distinctiveness? I.e., if the mark is distinctive, it is protected. If the mark is
merely descriptive, must have secondary meaning for protection.
o Registration – gives nationwide protection except where people are already using the mark.
 What are the requirements for registration?
  Traditionally: Use in commerce – if I can show a few bona fide sales, this is sufficient.
 After 1989: Rules are relaxed.
o Can show use in commerce.
o Can show intent to use in commerce –
 With “intent to use”, registrant gets an inchoate right. Once the mark is used in
commerce, the registrant will get the registration and the priority date is the date
of registration.
 What are the benefits of registration?
 Protection
o If the mark is inherently distinctive, you get presumption of nationwide protection.
o If the mark is descriptive,
 If there is secondary meaning, you get presumption of protection where there is
secondary meaning.
 If no secondary meaning, no protection.
 Presumption that the mark is valid.
 Enhanced remedies w/ registration – can prevent counterfeiting, get enhanced damages for
counterfeiting, and prevent importation by invoking power of customs office.
 Puts people on notice that your registration is out there.
 Can petition to make the trademark incontestable (akin to the concept of quiet title)
o Incontestability: Once the mark is registered and there are no objections, the registrant
can petition to have the mark declared incontestable).
 But incontestable marks can be challenged on the basis of (1) disparaging; (2)
geographically deceptively misdescriptive; (3) functionality.
 RULE: all an incontestable status gives a trademark holder is the right to be
protected from challenges on the grounds that the mark lacks secondary
meaning.
 Park ‘n Fly
 What is the process of registration?
 File
 Prove that you intend to use the mark in commerce (once used, you get the registration).
 Trademark examiners engage in an analysis of whether you are entitled to trademark registration,
asking about inherent distinctiveness and if descriptive, secondary meaning.
 PTO publishes the mark for opposition –
 Opposition (§13(a)) – an opposer must show
 (1) that it is likely to be damaged by the mark’s approval (this is a standing requirement) and
 (2) that there are valid legal grounds why the applicant is not entitled to the mark (e.g., prior use
basis, generic, etc.).
 Cancellation: the Lanham Act allows one who believes s/he “is or has been” harmed by registration to
petition for cancellation. Same standing requirement as opposition.
 Concurrent Registration: This is provided for in §2(d). Requirement: Not likely to cause confusion.
 INFRINGEMENT
o Test: Is there going to be a likelihood of confusion? The goal of trademark law is to protect consumers against
confusion. Test comes from Lanham Act, §43(a) (p. 374 in supplement)
 NOTE: proof of harm is not required – just need to prove likelihood of consumer confusion.
o What is confusion? 5 types –
 Source confusion: confusion as to the source of the product
 E.g., hair care products w/ same mark on shampoo and hair dye. There are good policy reasons to
preclude source confusion even if the parties do not compete.
 Relatonship/Affiliation confusion: confusion about relationship of D to P’s goods.
 E.g., Olympic team logo on soup can – Olympics is sponsoring soup.
  Post-Sale Confusion: People making a negative association with the product after the sale.
 E.g., counterfeiting Rolexes – Veblin goods – goods that have cachet b/c of their exclusivity.
Rolex will suffer harm if people can afford look-alike products that are cheaper.
 Initial interest confusion:
 E.g., MacDonald’s sign on highway as lure to other burger places.
o Courts have said that this kind of initial interest confusion is actionable.
 Meta tags on web pages.
 Reverse confusion: sometimes, small trademark owners get infringed upon by big companies. This is
actionable if P can show that D adopted the same trademark in the same good.
o AMF Incorporated v. Sleekcraft Boats (infringement case between Sleekcraft and Slickcraft. Court issued 8 factor
test and concluded that, given that the markets overlap – both sell boats – there was likelihood of confusion even if
there was no evidence of actual confusion).
 8 factor test from Sleekcraft:
 (1) strength of mark;
o Where is the mark on the inherent distinctiveness scale? Is there secondary meaning?
 (2) similarity of mark;
o Total commercial impression, evaluated with sight, sound, and meaning.
 (3) type of goods;
o 3 possibilities:
 If the marks are identical and the goods are very similar, then there is
infringement.
 If the marks are identical and the goods are unrelated, there is no infringement.
 If it’s in the middle, must do other elements of the test.
o Lemley: This is too neat – if the goods are similar, there is likely to be confusion, but we
still need to look at other factors.
 (4) proximity of goods;
 (5) marketing channels used;
o How are these goods sold? Will the way they are sold make it more/less likely that
consumers will be confused.
 (6) D’s intent in selecting the mark;
o If there is an intent to deceive, this is a powerful factor in favor of finding infringement.
 (7) likelihood of expansion of product lines;
o How likely are these marks to come into conflict with one another in the future?
 (8) evidence of actual confusion.
o E.g., mistaken phone calls, surveys, etc.
 CONTRIBUTORY INFRINGEMENT – Contributory infringement of trademarks is illegal
o E.g., a landlord that knew a commercial tenant was engaged in trademark infringement, but did nothing to prevent
this could be guilty of contributory infringement.
 DILUTION -- two types: (1) blurring; (2) tarnishment; (3) (new type) cyber squatting.
o Dilution defined: the trademark owner is injured by the use of the mark in any commercial context, even if the mark
does not confuse consumers.
 Exemption: if you are not using the mark in a commercial context, there is no dilution.
o What is the right? The statute says the trademark owner can prevent non-confusing uses of their mark in other
product markets if those uses would allow blurring or tarnsishment.
 Non-actionable: fair use of the mark in comparative commercial advertising/promotion; noncommercial use
of the mark; news reporting.
o 3 types:
 Blurring: Loss of uniqueness or distinctiveness.
 E.g., Kodak bicycles. There is no risk that consumers will think Kodak has gone into making
bikes, but Kodak is still hurt. Before, Kodak had a unique mark; now they don’t.
 o NOTE: If there is confusion, traditional trademark law will suffice. Only in the absence of
traditional trade mark law do we need a rule on blurring.
 Nabisco v. PF Brands, Inc (another company wants to introduce goldfish crackers – P sues on a
dilution/tarnishment theory. Court holds that the product configuration is distinctive and that the
junior use will dilute).
 Tarnishment: Creating a negative association with a product. E.g., Kodak pornography.
 Cyber-squatting: If I grab your trademark as a domain name, this is dilution in circumstances where the
mark is famous.
 NOTE: the statute requires “commercial use in context” and if the web site is not used (but merely
reserved), cybersquatting should not come under dilution law.
o Elements of dilution:
 FAME: The mark must be famous to come under the dilution statute – marks that are significant in the
minds of consumers.
 There is an 8 factor test for fame – they are in the statute §43(c):
o Degree of inherent or acquired distinctiveness.
o The duration and extent of use of the mark in connection with the goods or services with
which the mark is used.
o Duration and extent of publicity and advertising of the mark.
o Geographical extent of the trading area in which the mark is used.
o The channels of trade for the goods or services with which the mark is used.
o The degree of recognition of the mark in the trading areas and channels of trade used by
the mark’s owner and the person against whom the injunction is sought.
o The nature and extent of use of the same or similar marks by 3rd parties.
 3rd circuit has introduced the concept of “niche fame” – fame in a particular market – as worthy for
protection against dilution.
 E.g., Lexis is famous among lawyers and protected among lawyers.
nd
 2 circuit says that only inherently distinctive marks are entitled to dilution protection. (I.e., MacDonald’s
would not be entitled to such protection.)
o What do you have to show to get dilution protection? The statute says that you can get an injunction against any use
that causes dilution of the mark.
 4th circuit: requires actual dilution.
 What evidence will show actual dilution? Must show that the distinctiveness of the mark was less
than it once was.
 2nd circuit: requires only the potential of dilution.
 This issue is before the SC in Victor’s Little Secret vs. Victoria’s Secret.
o Remedy for dilution: injunctive relief rather than damages.
 Licensing/Franchising/Merchandising of Trademarks.
o There is a boom underway w/ the licensing of trademarks – e.g., SF 49’ers; Cal; etc.
o Licensing creates problems for trademark’s traditional justification of consumer protection.
o The cases that have successfully enforced trademark in a licensing context have all been sports cases, with the
consumer confusion theory that shirts w/ a ‘49’ers logo have been authorized by the ‘49’ers.
o RULE: Trademark owners who have sued to protect the franchise of their trademark have tended to win, but
all the successful cases have been sports cases, and we should worry about expanding this right b/c it is contrary
to the traditional rationale of trademark law.
 Assignments in Gross
o Can only assign the trademark if the goodwill associated with the business has been sold. Outright assignments of
trademarks are invalid (§10), although this rule has been softened and arguably was abandoned in 1995 (cb p. 768).
 Example: if Coke decided to sell name, it would not be permitted to do that UNLESS it sold relevant
assets/goodwill along w/ the name; i.e. would have to sell secret formula
 in past, had to sell whole biz along with name
  courts more relaxed now would have to sell the formula (or customer list, etc) along w/ tm
 RULE: Assignment of TM alone w/out any underlying assets or goodwill is assignment in
gross, and these are invalid.
 Defenses to trademark infringement – (1) generics; (2) functionality; (3) abandonment; (4) non-trademark use; (5) parody.
o Both generics and functionality serve the same purpose: to prevent the trademark owner from getting a competitive
advantage over other manufacturers that is not rooted in their product.
 Generic-ness: implements w/ words and symbols.
 Functionality: implements for trade dress and product packaging.
o Genericness: For a term to serve the purpose of a trademark, it must point to a unique source –
 RULE: when a term refers to a general class of products, it is deemed “generic” and cannot serve as a
trademark.
 2 ways that trademarks become generic:
 they were born that way and refused registration b/c they are generic.
o E.g., “Fingers Walking” logo for the Yellow Pages.
 They become generic overtime through “genericide”
o Murphy Bed Co. v. Interior Sleep System (Is Murphy Bed a generic term b/c of its generic
use? Yes. The mark has entered the public domain).
 Other examples: Kleenex, Xerox (almost – replaced w/ photocopy), Jeep (almost
– replaced with SUV).
o This is a common problem with patented products (e.g., drugs) in which there is 20 years
in which only 1 product brand is on the market.
 RULE: The consumer rules; if the consumer is using the term generically, it’s a generic term.
o Functionality:
 RULE: Functional trade dress is not protectable under trademark law. If it has a function, it cannot
be trademarked.
 What is functional? Any attribute that is essential to the function of the product or that is
related to price or quality.
o NOTE: Functionality can change – e.g., pill shapes. They have no function when
introduced, but as they become familiar, their function is identifying what drug they are.
 Trafix Devices v. Marketing Displays (Is a wind-spring system for traffic signs a design that is protected by
trademark? No b/c it is functional).
 Stormy Clime v. ProGroup (raincoat design protectable under trademark? Only if the design is non-
functional).
o Abandonment: §45 of Lanham Act.
 Trademarks can be protected indefinitely and will last until they are abandoned (no longer used).
 RULE: Abandonment under the Lanham Act requires both non-use and intent not to resume use.
 Presumption of abandonment after 3 years.
 RULE: Can’t warehouse trademarks – “token use” will not be sufficient. Humble Oil case.
 Trademarks can be lost through “unsupervised licensing”/“naked” licensing – these can amount to
abandonment.
 Unsupervised/“naked” Licensing:
o RULE: If you license the trademark to someone else (i.e., franchising), you must
police their use of the mark to ensure that they are making products that retain
characteristics and quality the public has come to associate with the mark. Failure to
police may lead to public deception and the erosion of the mark’s public information
function. This, in turn, will constitute an abandonment b/c the mark has loss its
significance.
o Dawn Donut Co v. Hart’s Food Stores (Allegation of abandoned TM due to inadequate
quality control/supervision on part of licensee. This is grounds for abandonment when the
mark has lost significance. Abandoned defined in §45 of Lanham Act. The issue in
determining abandonment is whether there was sufficient policing).
 o Non-trademark use or “nominative” used: (suggests that there are limits to trademark law – free expression)
 RULE: Descriptive use of the trademark is OK. The nominative fair use defense applies when a D
uses a trademark to refer to the P’s product. If the use of the trademark is non-deceptive, it is
acceptable.
 New Kids on the Block v. News America Publishing (newspapers had a poll for $ for readers to vote
for best NKOTB; this was fair use, using the term to describe the product).
 Someone selling a photo of the Cleveland Rock-n-Roll Hall of Fame: not trademark infringement.
This is a non-trademark or nominative use.
o Parody: (suggests that there are limits to trademark law – free expression)
 RULE: Non-commercial parody use of a trademark is protected free speech. But if the parody does not
convey the message that it is a parody (thereby confusing consumers into thinking it’s the original), then it is
vulnerable under trademark law to a dilution attack.
 LL Bean v. Drake Publishers (2-page parody of LL Bean’s catalogue; protected under 1st
amendment).
 Michelob Oily Ad appearing in Mad magazine –
o Court found infringement on the basis of consumer confusion (6% of really stupid people
thought it was a new beer; 50% thought Michelob’s permission was required).
o Lemley: this should have been protected under the 1st amendment.
 Remedies
o Injunctive relief:
 RULE: you are entitled for the most part to injunctive relief, not damages. After all, the point of
trademark law is to prevent confusion.
o Damages: (limited to cases where D acted willfully – point is to deter the Defendant)
 RULE: Damages are limited to cases where D acted willfully – the point is to deter the D.
 Under the Lanham Act, P can recover (1) D’s profits; (2) any actual damage sustained by P; and (3)
the costs of the action.
 3x damages are available in counterfeiting cases.
 Big O Tire Dealers: The court orders 25% of the money spent on infringing advertising to be spent on
corrective advertising to correct the consumer confusion.
 STATE LAW
o Tort of misappropriation (unfair competition)
 Lemley: This tort seems to be about free-riding – taking information you didn’t pay for.
 International News Service v. Associated Press (P sued D for taking P’s news reporting and selling it as D’s
own; court found D guilty of tort of misappropriation). The court calls this “quasi-property” NOTE:
Copyright law cannot protect news b/c it is factual – therefore this tort of misappropriation can protect it.
 Elements to the tort of misappropriation which have been narrowed by subsequent courts (see NBA at
bottom of 808)
 P generates or gathers information at a cost
 The information is time sensitive.
 A D’s use of the information constitutes free riding on the P’s efforts.
 The D is in direct competition with a product or service offered by P.
 The ability of other parties to free ride on the efforts of P or others would so reduce the incentive to
produce the product that its existence or quality would be substantially threatened.
o Publicity Rights: (applicable when someone’s name or image is used in a commercial context w/o consent)
 RULE: An individual has the right to control his/her name/likeness in a commercial context. The
right is violated by unauthorized exploitation of likeness for commercial purposes.
 CA right of publicity statute, pp. 847-49.
 What is protected?
 Name, picture, voice (Midler v. Ford), context (Robotic Vanna White in White v. Samsung).
 Elements
 Commercial context
 Identity used via an identifiable likeness
 Limitations:
 First amendment concerns: OK to use in news reporting, etc., although some limits must be placed
if the news reporting interferes with ability to earn a living.
o Zacchini (human cannonball act at county fair shown on news; court holds that showing
the act on the news may interfere with P’s ability to earn a living).
 Do publicity rights last after death? Jurisdictions differ.
 Privacy rights terminate upon death.
 Economic interest rights do not, and courts have found this, but such rights do not last forever.
Courts analogize to copyright law – in CA, it’s life of celebrity plus 70 years.
Condensed/Summarized outline

TRADE SECRETS

Requirements: Trade Secrets to be protected must have the following properties:

 Secrecy: not generally known or “readily ascertainable”
 Valuable
 Value from Secrecy
 Protected: the holder must take “reasonable efforts” to protect the secret to get protection.
NOTE: The Unified Trade Secrets Act and the Restatement of Torts differ in their conception of what is entitled to
trade secret protection:
 Restatement is narrower (information used in one’s business).
 UTSA is broader (information that confers some economic advantage).

Misappropriation: 2 basic categories

 Improper means – Cannot violate “generally accepted standards of commercial morality.”
NOTE: The USTA and the Restatement differ in their treatment of taking information via improper means when the
information is not a secret.
 UTSA says that to be protected, the information must be secret.
 Courts following the Restatement of Torts split on this question and focus more on bad conduct.
 Breach in Confidential Relationship – Most typical in an employee context
o Elements for breach in confidential relationship: (1) Is there a secret? (2) did you enter into a confidential
relationship? (3) did you use this information in violation of the relationship.

Defenses:
 Reverse engineering  always permitted as long as the product is obtained legally.
 Employee issues/defenses:
o Non-compete agreements (invalid in CA, but not in about 40 other states) will be enforced if “reasonable” (look at
employer’s interest – time limit, scope, geographic scope; employee’s interests – denies livelihood? Public policy).
 Doctrine of inevitable disclosure (former employee cannot work for my competitor b/c she will inevitably
disclose my secrets) can be used to circumvent the ban on non-compete agreements, but not in CA (Schlage
Lock Co.).
 Elements for doctrine of inevitable disclosure: (1) knowledge of a trade secret; (2) similar job
duties; (3) cannot rely upon former employee or new employer.
 Remedy: an injunction.
o Employee inventions:
 Common law rule: If hired to invent, it’s the employer’s; if done on employee’s time using employer’s stuff,
company has a shop-right to the invention; if done completely by employee, employee owns the invention.
 Invention assignment clauses are enforceable.
 Some companies use trailer clauses – extending the obligation of assignment after employment
ends.

Remedies: a continuum of remedies are available:

 enforce expectations;
 damages  losses to the P or D’s gain (the statute allows the larger of the two);
 injunctive relief;
o Can get a “head start” injunction if P can show D was advantaged (given a “head start”) by the misappropriation.
 punitive damages; 3x the loss in cases of willful misappropriation.
o (Lemley: the standard for knowledge should be akin to negligence – did D know or should D have known?)
 jail: Both states and Feds punish trade secret misappropriation criminally.
PATENTS – protected 20 years from the date the patent was filed (pre-1995: 17 years from the date the patent was issued)

Requirements for patentability: (1) patentable subject matter; (2) utility; (3) novelty; (4) non-obviousness; (5) enablement
 Patentable subject matter – fits into one of the general categories from §101 (p. 81 of the statutory supplement).
o Can’t patent products of nature; abstract ideas; surgical procedures; things that fit better into copyright.
 Utility: the device is useful. No entitlement to a patent on a device that is not useful (not a big restriction).
o Another inventor can get a patent on a new use of your device – this is a blocking patent.
 Novelty: the device has not been preceded in identical form in public prior art. Must show inventor was the first.
o §102(a): Novelty bar: No patent if the device was (1) [publicly] known or used (2) by others (not the inventor) (3) in
the US or (4) patented or published in the US or in a foreign country before the applicant’s invention.
o §102(b): 1-year statutory bar rule (designed to catch “delayers”): no patent if the invention was patented/described in
a publication anywhere in the world (including by the inventor) or if the invention was in public use in the US
(including by the inventor) more than 1 year before the filing date.
o §102(g): Interference: US: First to conceive rule; rest-of-world: first to file rule.
 If A was the first to conceive, but B was the first to reduce to practice, A must show diligence to win.
o No patent if inventor abandoned invention (§102(c)) or stole/misappropriated invention (§102(f))
 Non-Obviousness: The device represents a non-trivial extension of what was known (e.g., a purple pencil); and
o Process: (1) ID the prior art; (2) ID differences w/ the prior art (3) would the PHOSITA think this is obvious?
 Enablement/Description: the device is disclosed in such a way that others may make use of the invention. 3 parts-
o Enablement: must disclose enough in sufficient detail such that PHOSITA can make the invention.
 General group patents: must disclose enough to identify the general principal.
o Written description: write it down.
o Best mode: can’t hold back (but best mode does not have to be updated).

Infringement: defined at §271(a) as a person who makes, uses, sells, offers to sell, or imports w/o patentee’s authorization.
 Claims Construction: What does the patent mean? Use intrinsic and extrinsic evidence.
 Literal infringement: Does the D’s infringing device violate every element set forth in the claim? Must be all elements.
o Reverse doctrine of equivalents as a defense: when a device is within the literal language of the claim but is so far
changed that it would be unfair to apply the old patent. Rarely successful.
 Doctrine of Equivalents: If not literally infringing, the D’s device may still be infringing if it is “equivalent”.
o 2 tests, done element by element:
 Function-Way-Result test: Does the accused product perform substantially the same function in substantially
the same way w/ substantially the same result?
 Reasonable Interchangeability test: Would a PHOSITA know that the products in question were reasonably
interchangeable?
o Limits to Doctrine of Equivalents:
 Prior art limitation: Can’t get doctrine of equivalents coverage to include prior art.
 Prosecution history estoppel:
 If patent application is amended for reasons of patentability (e.g., prior art), DoE bar
o Exception: if the subsequent development could not have been foreseen by you, can still
get Doctrine of Equivalents protection. Festo (p. 12 of the supplement).
 If patent application is silent on reasons for amendment: absolute bar to Doctrine of Equivalents.
 If patent application is amended for reasons unrelated to patentability, no DoE bar.

Inducement to Infringe/Contributory Infringement

 Inducement to infringe (§271(b)): inducing direct infringement by a 3rd party.
o Elements: The D (1) actively, (2) intentionally, and (3) knowingly [knew or had reason to know] solicited or assisted
a 3rd party in infringing a patent AND (4) the 3rd party directly infringed.
 Contributory infringement (§271(c)): contributing in a substantial way to a 3rd party’s direct infringement.
 o Elements: D must have sold, offered to sell, or imported a material component of the patented invention that has no
other substantial use.
 No liability for “staple” items of commerce.

Defenses to Patent Infringement

 Experimental use – allows for the unlicensed construction and use of a patented invention for pure scientific inquiry.
 Inequitable conduct – makes the patent unenforceable. E.g., Lying to the PTO; lying about prior art.
 Patent misuse – makes the patent unenforceable. E.g., tying arrangements, licensing extending beyond patent’s expiration.

Remedies: strict liability offense – no mens rea requirement.

 Injunctive relief
 Damages/lost profits. Willfulness yields 3x damages.
COPYRIGHT – protected for author’s life + 70 yrs; 95 yrs after pub’n for entity authors/works for hire (or 120 yrs after creation)

Requirements for Copyright: protected subject matter; originality; fixation; formalities; authorship/ownership.
 protected subject matter: literary; musical; dramatic; pantomime/choreography; pictorial/graphic/sculptural [but cannot be
utilitarian]; motion picture/AV; sound recordings; architectural; derivative works (§103(a)) only to the extent of new material.
o Not copyrightable: facts (phone books), ideas (double entry bookkeeping), government works (§105); functionality.
 originality: Modicum of originality. §102(a). Not a high standard, but fiction more than fact; databases are not copyrightable.
 fixation: “fixed in a tangible means of expression”. §102(a). Live broadcasts are copyrightable.
 formalities: traditionally publication, notice, registration, and deposit. Now, just registration is required if you want to
enforce copyright rights.
 authorship/ownership: the work must be created/owned by the party bringing the suit. 3 types of ownership: (1) individual:
life of author + 70y; (2) joint works: life of longest surviving author + 70y; (3) works for hire: 95 years after publication or
120 after creation.
o Rule for collected works: copyright retains in author; collective copyright holder can only reproduce/distribute the
collective work, a revision of the work, and later colletive work (i.e., no web copy of NYT). Tasini.

Rights of copyright owners: (§106)

 Reproduce
 Prepare derivative works. §106(2).
o The test for derivative works is the same as infringement of a copy, except that there is no fixation requirement.
 Example: writing margin notes in casebooks is a derivative work; whistling.
 Distribute copies for sale/rent/lease/loan
o First sale doctrine: (1) right to control first publication; (2) ability to sue intermediaries engaged in unauthorized
selling but who are not making copies themselves.
 Perform/display the work publicly
o Public  defined very broadly (§101, p. 165). But can display the work where it is located (§109(c)).
o Musical composition composer has right to protect against public performance, but not recording artist.
o NOTE: Fairness in Music Licensing Act (1998)  can play radio in small business.
o Exceptions: (1) public interest including education. §110; (2) compulsory licenses allow TV broadcast relays. §111.
 Moral rights (stronger in Europe) to (1) claim authorship; (2) prevent use of name on works not created; (3) right to object to
modification/destruction.

Infringement: focus on whether this is a copy being made.

 2 step analysis (NOTE: copying need not be conscious – George Harrison/Chiffons).
o Must prove an actual copy is being made. Can prove with either direct evidence or indirect evidence.
 Direct evidence: did you take this?
 Indirect evidence: sliding scale between proof of access and probative similarity (probative similarity:
holistic).
o Must prove substantial appropriation of protected expression (i.e., more than a de minimus amount). (e.g., the
interlocking W in Steinberg is not substantial appropriation but is enough to show probative similarity).

Indirect infringement – 2 forms: (1) vicarious infringer; (2) contributory infringer.

 Vicarious infringer: 3 element test: (i) direct infringement by someone else; (ii) ability and right to control the act of
infringement; and (iii) direct financial benefit to me (e.g., students downloading music do not make UC a vicarious infringer).
 Contributory infringement: 4 element test: (i) direct infringement by someone else; (ii) knowledge/recklessness; (iii)
substantial participation and (iv) [applicable only in device cases] is the device capital of non-infringing uses?

Defenses:
 Fair Use (§107). 4 factor test: (1) purpose and character of the use; (2) nature of the work; (3) amount taken; (4) The market
effect [Lemley: this is the real issue]. Presumptively fair use  teaching, news reporting, criticism, scholarship, research.
 Parody: same test as fair use, except that parodies are more likely to be considered fair use if (1) the parody is aimed at the
copyrighted work and (2) D only copied to the extent necessary to “conjure up” the copyrighted work in the audience’s mind.
o Parody gets more protection than satire b/c satire uses protected work to make fun of something else.
 1st Amendment: rarely successful. E.g., Gone with the Wind/The Wind Done Gone.
 Other defenses: Independent creation; consent/license; inequitable conduct on the part of the copyright holder; copyright
misuse; immoral/illegal/obscene works; statute of limitations.

Remedies:
 Injunction (§502). Stop the infringement; some cases, there is compulsory licensing; SC says no automatic right to an
injunction, especially when the use is transformative, b/c this impedes new speech.
 Damages (§504). P can get either (1) the greater of P’s losses (§504(a)(1)) or D’s gain (§504(b)) plus atty’s fees OR (2) P can
get statutory damages between $750-$30k/infringed work “as the court considers just” (§504(c)(2)) OR (3) up to $150k if the
infringement is willful – this is to deter infringement. §504(c)(2).
TRADEMARK – to protect against consumer confusion

Requirements:
 Trademarkable subject matter (can’t trademark generic terms): Brand names/trademarks; service marks; trade names; logos;
slogans; trade dress [must be inherently distinctive or have acquired 2ndary meaning]; certifications; collective marks; product
configuration/design [must have 2ndary meaning; can’t protect functionality, attractiveness, etc.].
o Can’t protect: flags/insignia; images/names of living persons or dead presidents while widow is alive; immoral/
scandalous/disparaging marks; marks that bring a name into disrepute; marks that are sufficiently close as to cause
confusion; Marks that have no secondary meaning and are merely descriptive, geographically descriptive
[geographically misdescriptive names are never protected], primarily a surname, or that is function.
 Elements/Test for Trademark protection: Marks that are fanciful, arbitrary, suggestive, or descriptive w/ secondary meaning
get protection; marks that are descriptive w/o secondary meaning or generic are never protected.
o Fanciful: Made up term. “inherently distinctive”. E.g., Exxon.
o Arbitrary: real term, but w/ nothing to do with product. “inherently distinctive”. E.g., Apple.
o Suggestive: marks that suggest something about the product. “inherently distinctive”. E.g., Coppertone.
 Test for descriptive vs. suggestive mark: A mark is suggestive if and only if it requires some leap of
imagination to get from the trademark term to the product. Zatarains.
o Descriptive. Protected if 2ndary meaning; not protected w/o 2ndary meaning. E.g., Joe’s Crab Shack. NOTE: NY rule
that says that if someone steals a descriptive term w/o 2ndary meaning, the theft can substitute for 2ndary meaning on
the rationale that no one would try to steal the term unless they thought it was valuable.
 Geographic marks (if accurate) and personal names are descriptive and protected if there is 2ndary meaning.
 Laudatory terms: protected if 2ndary meaning. E.g., Best Buy.
 Foreign terms: translate them to see if they are descriptive.
 Color: can be descriptive and protectable w/ secondary meaning. E.g., pink fiberglass insulation.
o Generic: Not protected.

Priority Disputes:
 The trademark goes to the 1st person to use in commerce or the 1st to file an application to register (which can be done on an
intent-to-register basis).
o W/ descriptive marks, the mark goes to the 1st to acquire 2ndary meaning (but the other user gets local use rights and a
“zone of expansion”).
 Questions in a priority dispute: Use? Where? In what products? Marks are how similar? Inherent/acquired distinctiveness?

Registration:
 Requirements for registration: Use in commerce or intent to use in commerce (good for 3 years).
 Benefits of registration: protection (if mark is inherently distinctive; if mark is descriptive, you get protection if 2 ndary
meaning); presumption that the mark is valid; enhanced remedies; notice; incontestable status.
o Incontestability – right to protect against challenge on the grounds that the mark lacks 2ndary meaning.
 Process: File; prove you’ve used/intend to use the mark; trademark examiners review; PTO publishes; Opposition [may
occur] which must show (1) that it is likely to be damaged by the mark (standing requirement) and (2) that there are valid legal
grounds why applicant is not entitled to the mark §13(a). 3 possible outcomes; (1) registration; (2) cancellation (if
opposition); or (3) concurrent registration (see §2(d)) – requirement is not likely to cause confusion.

Infringement: Test is whether there is going to be likelihood of confusion.

 5 types of confusion: source; relationship/affiliation; post-sale confusion; initial interest confusion; reverse confusion.
 8 factor test from Sleekcraft in determining infringement (but other courts use other tests): strength of mark; similarity of
mark; type of goods; proximity of goods; marketing channels used; D’s intent in selecting the mark; likelihood of expansion
of lines; evidence of actual confusion.
 Contributory infringement: illegal. E.g., a landlord that knew a commercial tenant was engaged in trademark infringement.

Dilution: 3 types. (1) blurring; (2) tarnishment; and (3) cyber-squatting. Remedy for dilution is injuctive relief, not damages.
 Dilution defined: trademark owner is injured by the use of the mark in a commercial context, even when there is no confusion.
o NOTE: If the mark is not used in a commercial context, there is no dilution.
 Types:
o Blurring: Loss of uniqueness/distinctiveness. E.g., Kodak Bicycles.
o Tarnishment: creates a negative association with the mark.
o Cyber-squatting: using the mark on the net in a commercial context (e.g., registering the domain name for something
else).
 Elements of dilution:
o The mark must be famous (w/ an 8 factor test in the statute at §43(c), p. 375). NOTE: “niche fame” in the 3rd circuit
(fame in a local area); 2nd circuit says that only inherently distinctive marks are entitled to dilution protection (e.g.,
MacDonald’s would not be entitled to such protection).
o Actual/potential dilution. 4th circuit requires actual; 2nd circuit requires potential. This issue is before the SC in
Victor’s Little Secret v. Victoria’s Secret.

Licensing/assigning of marks:
 Licensing: Trademark owners that have sued to protect the franchise of their mark have tended to win, but all the cases have
been sports marks, and we should worry about expanding this right b/c it is contrary to the traditional rationale for trademark
law.
 Assignment: not permitted (§10), unless there has been a sale of the business
o since 1995, rule has been relaxed  only requires sale of formula or product line or customer list, etc. along with the
trademark. But sale of mark w/o sale of underlying asset or goodwill is still assignment in gross and is still invalid.

Defenses:
 Generic-ness: mark refers to a general class of products. 2 types: (1) born that way – e.g., car; (2) “genericide” – e.g., Xerox.
 Functionality: Functional trade dress is not protected. E.g., pill shapes.
 Abandonment §45: Trademarks are protected until they are no longer used.
o 2 elements for abandonment: (1) non-use; (2) intent not to resume use (presumptive abandonment after 3 years).
o “Unsupervised”/“naked” licensing: franchising w/o policing can result in lost trademark b/c there is no quality
assurance re the characteristics that the public has come to associate w/ the mark. Dawn Donuts.
 Nominative/Fair use: using the mark to describe the product in comparative advertising, news, etc.
 Parody: Non-commercial parody use of a TM is protected free speech. 1st Amendment.
o But if the parody does not communicate the message that it is a parody (thereby confusing consumers into thinking it
is genuine and not parody, it is vulnerable under trademark law to a dilution attack.

Remedies:
 Injunctive relief: Basic remedy – the point of trademark law is to prevent confusion.
 Damages: available only when the D acted willfully – the point of damages is to deter the D.
o 3x damages available only w/ counterfeiting cases.
o Reverse confusion cases: damages spent on corrective advertising. Big O Tire Dealers.
STATE LAW
 Tort of Misappropriation (unfair competition)
o About free riding – taking information you didn’t pay for.
o Elements: (1) P generates the information at a cost; (2) the information is time sensitive; (3) A D’s use of the
information constitutes free riding on the P’s efforts; (4) the D is in direct competition w/ a product/service offered b
P; and (t) the free riding on P reduces the incentive to produce the product that its quality/existence is in doubt.
 Publicity Rights:
o An individual has the right to control his name/likeness in a commercial context. The right is violated by
unauthorized exploitation of the likeness for commercial purposes.
o What is protected? Name, picture, voice, context.
o Elements: (1) commercial context; (2) image/identity used in an identifiable way.
o Limitations: 1st amendment concerns.
o Termination of publicity rights upon death: CA rule  life of celebrity plus 70 years.