Copyright Spring 08

7/29/2019 Copyright Spring 08

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COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008

3 objectives under IP law:................................................................................................................5Constitutional Origins of IP Law.....................................................................................................5I. State/ Common Law Intellectual Property...................................................................................5

1) Rights in Undeveloped Ideas...................................................................................................5Elements of Misappropriation..........................................................................................................5

Idea Submission (the 4 general scenarios........................................................................................52) Protection of Ideas.......................................................................................................................5Theories of Recovery (levels of proof vary depending of theory of recovery.............................5Contract Theories.........................................................................................................................6Other Theories.............................................................................................................................6Courts vary by j............................................................................................................................6An Idea must be NOVEL and CONCRETE especially w/o an express K..................................6RULE: K claim generally requires less novelty and originality than CL Misappropriationclaim.............................................................................................................................................63) LIMITS ON PROTECTION...................................................................................................7

II. UNFAIR COMPETITION..........................................................................................................8

1) Passing off & Secondary Meaning..........................................................................................8THE LEVEL OF PROOF CONTINUUM...................................................................................82) Zone of Expansion...................................................................................................................94) Misappropriation OF FACTS................................................................................................10Hot News Exception..................................................................................................................105) Personal Names and the Rights afforded to them..................................................................116) TradeDress, Design, Functionality........................................................................................11Economic Interests- Unfair Comp in the Competitive Plan......................................................12

Federal IP law Preempts State IP law............................................................................................12PREEMPTION..........................................................................................................................12STATE V. FED LAWS.............................................................................................................12

Trade Secrets..................................................................................................................................12Elements of a T/S Claim?..........................................................................................................123rd party beneficiary of TS........................................................................................................13Source of Law:...........................................................................................................................13RESTATEMENT 757, comment B.........................................................................................13Reverse Engineering..................................................................................................................13How do you protect a [trade] secret?.........................................................................................13How do confidential relationship arise in TS?...........................................................................13RULE: public has free access to trade secrets.........................................................................13Why Patent v. TS?.....................................................................................................................13Theory of Protection..................................................................................................................14

IV. Right of Publicity.....................................................................................................................17ROP claim test:..........................................................................................................................18

Federal Law of Intellectual Property.............................................................................................20Supplemental Jurisdiction..........................................................................................................20Federal Jurisdiction....................................................................................................................20CAFC (Court of Appeals for Federal Circuit)...........................................................................20

Trademark Law..............................................................................................................................20First TM Statute.........................................................................................................................20

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Lanham Act (July 5, 1946)........................................................................................................20SMs v. TMs................................................................................................................................203 levels of TM Protection (all exist congruently):....................................................................20Legal steps to follow after choosing a mark..............................................................................21A. Requirements for Protection.................................................................................................21

Use & Use in Commerce..........................................................................................................21Intent to Use...............................................................................................................................21DATE OF FILING.....................................................................................................................22) N/O/A- notice of allowance.....................................................................................................22Applications that say \cancelled, abandoned, not in use\........................................................23Process for getting a TM:...........................................................................................................23Lanham Act 1052/2 (REASONS FOR REJECTION............................................................23Selecting a TM/ (how strong it is too):......................................................................................23Level of Distinctiveness.............................................................................................................23Rejections: 2(e)..........................................................................................................................24Concurrent Registration.............................................................................................................24

Ways to renew a TM..................................................................................................................24Supplemental Register...............................................................................................................24Process for Appealing a TM denial:..........................................................................................25Defenses to infringement...........................................................................................................25Licensing A Mark......................................................................................................................25(a) Trademarks that distinguish from Goods of Another...........................................................25(b) Deceptive Matter:.................................................................................................................25Confusing Similarity to Prior Marks..........................................................................................26Concurrent Registration.............................................................................................................26Merely Descriptive.....................................................................................................................26Primarily Geographically Descriptive.......................................................................................26TYPES OF MARKS..................................................................................................................26

Service Mark..........................................................................................................................26Certification Mark-................................................................................................................27Collective Marks....................................................................................................................27Licensee Estoppel..................................................................................................................27

Abandonment.............................................................................................................................27Content of Marks......................................................................................................................27Administrative Procedures - \going to the show\ 283...........................................................28. Rights & Remedies..................................................................................................................28Geographic Boundaries..............................................................................................................28Dilution......................................................................................................................................29Limitations on Rights of TM owner..........................................................................................29

Fair Use..................................................................................................................................294 categories of Fair Use under TM........................................................................................29

DOMAIN NAMES........................................................................................................................30ICANN.......................................................................................................................................30Cybersquatting...........................................................................................................................30Metatag......................................................................................................................................30ICAN..........................................................................................................................................30

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REMIEDIES - primarily an injunction in TM law....................................................................30For s loss.................................................................................................................................30REMEDIES................................................................................................................................31SECONDARY LIABILITY......................................................................................................31TM Infringement........................................................................................................................32

Trade Dress 43(a) Action........................................................................................................3243(a) Elements for unregistered marks......................................................................................33Defenses for TM Infringement..................................................................................................33

Copyright.......................................................................................................................................34Requirements for Protection......................................................................................................34HISTORY..................................................................................................................................34Pre 1976.....................................................................................................................................34POST 1976.................................................................................................................................34Berne Convention......................................................................................................................34FORMALITIES REQUIRED FOR PROTECTION.................................................................34

Notice.....................................................................................................................................34

1909 Act (all works created before 1/1/78.................................................................................34REQUIREMENTS TO ESTABLISH NOTICE........................................................................351976 Act.....................................................................................................................................35The Dates in a NUTshell:..........................................................................................................36NOTICE ISSUES.......................................................................................................................36RENEWAL ISSUES..................................................................................................................36Omission of copyright notice.....................................................................................................36Publication.................................................................................................................................36Registration & Deposit..............................................................................................................36Statutory Subject Matter:...........................................................................................................3717 USC 102(a).........................................................................................................................37(b)...............................................................................................................................................37What is Copyrightable?..............................................................................................................37What is not ?...........................................................................................................................37Forms:........................................................................................................................................37How Long for Protection of Copyright?....................................................................................38RECAPTURE versus TERMINATION OF GRANTS/LICENSES.........................................38

Exclusive Rights....................................................................................................................38General Problem....................................................................................................................38

17 USC 203 TERMINATION.................................................................................................38SUMMARY under 203:...........................................................................................................39SUMMARY under 304: RECAPTURE..................................................................................39Summary of Terms and Concerns for Particular Types of Work..............................................40RECAPTURE............................................................................................................................41PUBLIC ACCESS PROVISIONS.............................................................................................413. Originality..............................................................................................................................42B. Ownership.............................................................................................................................43

17 USC 201..........................................................................................................................43WMFH (Work Made For Hire)..................................................................................................43Works for Hire...........................................................................................................................44

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Transfer & Term........................................................................................................................45Rights & Remedies....................................................................................................................45 109 F.S.D. (First Sale Doctrine).............................................................................................46DERIVATIVE WORK..............................................................................................................46b. Secondary Liability................................................................................................................47

C. 107 Fair Use........................................................................................................................47Fair Use:.....................................................................................................................................48Public Access Provisions...........................................................................................................48Compulsory Licensing...............................................................................................................48Phonorecords..............................................................................................................................48107 (see above) Fair Use..........................................................................................................48TYPES of Licenses & Rights:...................................................................................................49110 Single Receiver Exception................................................................................................4917 USC 115..............................................................................................................................49Exclusive Rights & New Technologies- Time Shifting............................................................50ASCAP, BMI, SESAC...............................................................................................................51

To Prove Infringement...............................................................................................................51Computer programs/Software programs....................................................................................51The collecting Societies (reduce transaction costs)...................................................................53D. Establishing Infringement see 17 USC 501.......................................................................54Literature- scenes a faire (general fair scenes)-.........................................................................542. Music......................................................................................................................................543. Visual Arts.............................................................................................................................54Duration of protection................................................................................................................56Preemption of State Law:...........................................................................................................57DEFENSES:...............................................................................................................................59Are blueprints copyrightable? YES...........................................................................................59What about state statutes?..........................................................................................................59Can a state be an author?...........................................................................................................59US government?.........................................................................................................................59Things lawyers can copyright....................................................................................................59Fair Use: Sega v. Accolade........................................................................................................59

Patents............................................................................................................................................60Types of patents.............................................................................................................................60

In order to qualify for patents, need all three:............................................................................61If get patent rights, you control who can:..................................................................................61Process for getting a a Patent:....................................................................................................613 objectives of Patent Law:........................................................................................................61How long to monopolize patent?...............................................................................................61Novelty.......................................................................................................................................62Prior Art:....................................................................................................................................6212 Month Use Bars Application................................................................................................62Publication.................................................................................................................................63Test for non-obviousness...........................................................................................................642 types of patent infringement...................................................................................................64Sometimes patent trials split in parts:........................................................................................64

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Non-literal infringement............................................................................................................64Copyright and Trademark Outline

3 objectives under IP law: enrich society with products, entertainment, and literature1. protect creator (author/inventor) if we protect they will continue to create b/c they make money2. Protect publisher/investor person who is going to put the money up, b/c the creator most likely wont

have it.

3. Enrich/protect the consumer public The Overall Goal Investor will invest, creator will continue to create and the consumer will be enriched

with whatever is produced.

Constitutional Origins of IP Law

Article I, 8, clause 3, Trademark Law Congress shall have the power to regulate Commerce withForeign Nations, and among the several states

Article I, 8, clause 8, Copyright & Patent Law Congress shall have the power to Promote theProgress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusiveRight to their Respective Writings and Discoveries

I. State/ Common Law Intellectual Property

1) Rights in Undeveloped Ideas

RULE: To successfully claim misappropriation, idea must be generally novel.Sellers v ABC (1982) (Geraldo Rivera/Elvis case)

Seller claimed misappropriation, stating that ABC and Rivera used his idea without compensation.Specifically, Sellers pitched a theory of Elvis death (conspiracy theory of murder) to ABC who ended updoing a feature on Elvis death but did not mention Sellers theory. There was a copyright agreement

between them re: the idea.

HELD: Elements of misappropriation were NOT met. s theory was not novel, nor sufficiently concrete togive rise to a cause of action. Furthermore, Sellers theory wasnt even specifically used, so there wasntany misappropriation of his idea.

Elements of Misappropriation1. NovelIdea-(the standard differs, NY says need to be novel to recipient, because novelty takes the

place of consideration in the K, the idea becomes the value)2. ConcreteForm has to be written, and detailed enough that someone would know how to act

upon it.3. usess idea (the most common defense claim is that they did not use idea)4. has expectation of $$$

Note: CA has largest amount of misappropriation claims, so there are idea submission programs

Idea Submission (the 4 general scenarios)1. X submits her idea to Y upon Ys express solicitation

2. X informs Y that she would like to submit an idea of possible value to Y and Y does nothing toblock the submission.

3. X thrusts upon Y a full disclosure of her idea before Y has the opportunity to block the submission4. X makes no submission at all but charges that Y has copied her idea.

2) Protection of Ideas

Theories of Recovery (levels of proof vary depending of theory of recovery )

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1. Contract Theories Express K in writing limited level of novel necessary (Damages based on compensation mentioned in K) Implied K the law will imply a promise but to do so court will examine the Relationship between parties

Has the submitter shown confidential relationship with the recipient (this inferentially impliescontractual relationship because confidentially implies that submitter did Not want to divest her rights andrecipient aware means he understood not to publish without consent or compensation) (Damages based on

presumed amount of payment of reasonable value of idea)

Quasi K highest level of novelty (pet rock is novel) and some proof of unjust enrichment on part ofrecipient. (Damages measured by level of unjust enrichment actual profit from the use of idea).

2. Other Theories : Tort of Conversion convert someone elses property into your own, but Courts dont really do this much

and its the hardest to recover under.

Breach of Confidentiality (Fiduciary Duty) Courts vary by j the question often becomes who is it novel to? The person receiving the idea OR to

society?

NY says if it is novel to the recipient then it is novel the novelty becomes the consideration,

especially if it is in writing. In a quasi contract ideas must be very novel in order to force the user to payfor the idea. One of the highest novelty standards.

CA approaches it from a services rendered approach When you submit an idea you are doing aservice for that company so it is easier to collect. Some states require the idea submitter to be a

professional inventor/submitter, b/c they are preferred over amateurs. Note the HOLLYWOOD connectionhere in the easier method of enforcing an obligation.

RULE: An Idea must be NOVEL and CONCRETE especially w/o an express K.Luddecke v Chevrolet Motor (1934) (Tilted Chevy case)A Chevy is sagging & tells Chevy their heavy parts are all on the wrong side, and wants to submit his idea.Letters back and forth, and tells them what his solution would be, but he never sends them the requested drawings.Chevys new model incorporates some of ideasHolding: Chevy is not liable for incorporating into its product generalized suggestions made regarding its product.Ideas must be novel and specific. Here, Chevy requested for more concrete form, such as drawings, but did not

provide idea in concrete form. A common-sense idea relating to a product in a generalized way is not novel. ssuggestion was the logical solution of re-distributing weight is not novel. did NOT obtain proprietary interest inidea sufficient to form basis of implied K. Expectation of payment is not enough, because was NOT in expressagreement.

Ways to improve a Breach of Confidentiality claim1. Standard Approach Non - disclosure agreement (NDA)2. Soft Approach shower with letters suggesting I trust you will not make any use of this . Make it that

so every correspondence includes mentions of confidentiality Repeat, Repeat, Repeat.

RULE: K claim generally requires less novelty and originality than CL Misappropriation claim.

Nadel v Play by Play (2000) (spinning monkey case) is a pro toy idea man. He has an idea for a spinning toy that sings. wants to share idea with a company thatmanus toys. He sends a prototype, and they were supposed to send him some samples which never got, nor did heget his prototype back. then puts out toy with similar qualities, and claims they did not use his idea based on lackof novelty claim and that they never got his toy, which meanwhile was sitting on s desk.Holding: Remanded. UnderK law in NY, the novelty standard is novelty to buyer, so while an idea may beunoriginal, it may have particular value to the buyer and this is evident by willingness to enter into K. In contrast, amisappropriation claim requires that idea be novel and original in absolute terms, because this is a property lawtheory which only protects that which is not free and available to all.

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The Nadel Test for Novelty1. Generality v Specificity is it a general concept or one of specific application?2. Commonality how many people are aware of the idea?3. Uniqueness how different from ideas generally known?4. commercial availability how available is the idea to the industry

Ink is still Wet

companies claim idea was yrs old, but in the end the evidence shows otherwise. (SeeNadel).

WC Fields Case: Newark dude in the 1930s submitted gag ideas to W.C. Fields. Fields asks for a few scriptsgratis (due to nuisance suits) and then he might consider entering into a K. Ct. awards Newark dude thereasonable value of the ideas he submitted.

3) LIMITS ON PROTECTION

RULE: Even if idea does not receive patent and become publicly available and marketed, if express K wascreated prior to, royalties payments will continue to be enforced since already profited from first rights.

Aronson v Quick Point Co (1979) (keychain idea) had keychain idea. Agreement that if idea is patentable they will pay 5%, and if not 2.5%. Patent was not granted,so in K they agreed to pay the 2.5%, but after 14 yrs, wanted out of the agreement b/c anyone could make, use,and sell the product.

Holding: B/C it was express K and not in conflict with 3 goals of patent law, had first-on-the market rights thatwas adequate consideration for the K. Failure to obtain a patent by an inventor will not preclude enforcement of a K

paying royalties on the invention to the inventor. Fed patent law does not expressly preempt state laws regarding K.

3 Goals of Patent Law1. To foster and reward invention2. To promote disclosure & stimulate further invention3. To assure that ideas in the public domain remain there for the free use of the public

As a recipient of ideas, you want to avoid litigation by:1. setting up a process for submissions2. avoiding confidentiality

3. only want the obligation to pay if u use the idea (K)

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II. UNFAIR COMPETITIONInfringement which competes (incorporates continuum of deceptive conduct from passing off to infringement,the injury being that consumers get a product different than the one they thought they were getting and producerslose sales they otherwise would have made).

Acts that fall w/in the realm Unfair Competition? (1) Passing Off, (2)Dilution of , (3) False Advertising, (4)

Disparagement, (5) Misappropriation, (6) K Interference (tortious interference w/ K or economic adv), (7) PriceFixing, (8) Bribery, (9) Fraud -- Unfair/Deceptive trade Practices, UDTPA, see consumer fraud act, (10) Right ofPublicity, (11) Pirating

Unfair Competition Supplemented by BOTH State and Federal Law

Common Law/State law cause of action would lie, at C/L, if could prove that used product to deceiveconsumers into thinking was the source of the goods. INTENT TO DECIEVE is still major factor.

Federal Law/ Lanham Act enacted in 1946 created a federal law of unfair competition that parallels stateunfair competition law. (States now have own statutes as well)

43(a) general43(c) Dilution using the same name

43(b) Cyber-squatting

buying domain names of famous mark, and holding onto it until ucan sell it.

1) Passing off & Secondary Meaning

Passing off- act of falsely representing ones own product as that of another in an attempt to deceive potentialbuyers.

Secondary Meaning- the trade meaning which may attach to a particular mark because its user has expendedtime and money in the promotion of the mark. A name has become so identified w/ a particular biz that itexclusively signifies only that one particular biz. must prove that the primary significance of the term inthe minds of the public is NOT the product BUT the producer. (DEFENSES-generic or dilution)

The Calculus of Passing OffUnfair competition law seeks to protect BOTH producer & Consumer by protecting

a. the first to use a name, brand or other symbol in connection with the sales of goods or services againstb. another competitor whose subsequent use of the symbolc. is likely to confuse consumers into believing that the first user is the source of the goods.

THE LEVEL OF PROOF CONTINUUM1. As product descriptive and has no secondary meaning A must prove that B palmed off goods and by words or deed deceived consumers as to source and

A must also show actualconfusion by consumers.2. As product common but has secondary meaning A must prove ONLY that There is a likelihood that confusion that will result from Bs use of the symbol.

3. As product distinctive, non- descriptive symbol that is solely for the identification of A A can relyon

Presumption created in her favor that A, due to other alternative symbols, in choosing to use As wasmotivated by intent to deceive and was successful in doing so.

Actual identifiable symbols is NOT needed in above, JUST similaritythe more similarity, the more probablea finding of intent to deceive.

A Name to be protected must be in ACTUAL USE, can NOT SAVE FOR LATER.

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RULE: PASSING OFF although a product may not be protectable due to lack of patent and functionalfeatures, bad faith inducement to PASS OFF product is NOT OK.

R: Functionality kills a TM!!

R: A name is not protectible when it becomes a noun!!William Warner v Eli Lilly (1924) (passing off, issue of functionality) (chocolate medicine case)Eli made Coco Quinine (chocolate on pill). Warner then made Quin-Coco, identical product. Patent was not given sothis is not a problem; however, Warner told druggists to sub QC for CQ because QC is cheaper. Thus, distributorwould be buying more QC with incentive being kick backs due to selling to consumer at higher price b/c passing offas other product.Holding: A manufacturer may not pass off its product as the product of another. A party is entitled to make productidentical to any other non-patented product (reverse engineering). But CANNOT tell public that product is same asoriginal. Here, bad faith such as inducement by manufacturer to pass off is very bad.

NOTE: Functional elements ARE NOT protectable, such as color brown liquid being result of chocolate.Thus, a functional element will kill a but Patent will protect functional elements.

2) Zone of Expansion-A prior user can retain the right to use its name & symbols in territories that wouldprobably be reached by the prior user in the natural expansion of his trade. Some courts limit ZOE to badfaith.

Two types of Zone of Expansion (Z.O.E)

1.Territorial should be able to expand and keep your mark2.Product Expanding a product line to a related good (from clothing to accessories). Ex: I make shoes and

now I want to make pocketbooks***General rule for determining zone -- if registered in state, have state zone, if registered federally, have U.S.

B.T.G. (Bridge the Gap) - Must show you have the economics to bridge the gap (TERRITORIAL &PRODUCT)

F.I.T.G.T.T First in Time Gets the TERRITORY Senior v. Junior rule General rule ofTrademark which mandates that the senior company will usually get first dibs on territory, unless, junior isthe company the public identifies with (See Sample v. Porrath)

R.G.D. (Related Goods Doctrine) allows one to expand their service/product to a relatedgood, even if bizdidnt register for those goods . (PRODUCT)

EXCEPTION TO Jr. v. Sr. Rule A local biz cant enjoin another biz from using the same name in itsmarket if the local public is more familiar with the name of the non-local biz.

Sample v Porrath (Niagara case Sample Shops) operated stores in NY State called Sample. operated stores in Niagara called Sample Shop. When wantedto open store in Niagara, objected. Survey showed majority of Niagara residents identified the stores operated by, not .Holding: Party has the right to bar anothers use of a commercial name only if use is unfair. Unfairness exists when

party seeking injunction has expended time and effort to familiarize public w/ its name and product & the offendingparty seeks to exploit that effort. When public has not in fact come to associate a certain product or service w/ aname, the use of it by another is legit. Here, survey showed public associated w/ Sample Inc. in spite of local

character of

. No secondary Meaning given to those stores. No dilution or deception. No bad faith. Thus noinjunction. Note: Court does not want to hurt biz that is in good faith. Here, they wanted to find a way so they couldboth exist concurrently.

3) Dilution Claims-the act or instance of diminishing a marks strength or lessening its value.Tarnishment of the famous mark

6 Part Balancing Test for Dilution (Mead Concurrence)

1. similarity of the marks

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2. Similarity of products3. Sophistication of Consumers4. Predatory Intent5. Renown of Senior Mark6. Renown of Junior Mark

Apply the test and see where the cookies fall, here, product different, consumers sophisticated, good faith anddifferent reputations associated with each mark.Mead Data v Toyota (1989) (LEXIS/LEXUS case)Mead not happy that Toyota putting out a LEXUS, because sounds like LEXIS. Mead & Toyota put out 2 productssimilar in name were highly unlikely to be linked in public mind (Lexis-Nexis & Lexus).HELD: No dilution. A junior product manu doesnt dilute the market of a Sr. manu if no L.O.C exists between the2 products in the public mind. RULE: For dilution to occur, the mark or name in question must be distinctive;where name is one of common usage or does not have a distinctive quality, dilution cannot occur. Lexis =word, a common prefix. Also, products are not similar, consumers are sophisticated, seems to be no bad faith, & thesenior mark is really only renowned in the legal community, while the junior is for the masses.

Lanham 43(c) When companies are NOT competitors, theres the possibility of a 43 action. Wasntmentioned here b/c Lanham Act wasnt around at this time.

RADIO TEST if mark sounds the same on the radio, there may be a problem ( Mead is exception to rule)

Non-Functional: 3rd Cir (if its not registered, but being used):1. Unusual AND memorable;2. Conceptually separable from product3. Likely to serve primarily as designator of origin (ex. Twizzler u know instantly who makes it)

4) Misappropriation OF FACTS

Hot News Exception when news is presented in timely manner, others just cant steal it and print it. Originatorentitled some time protection for limited amt of time to protect economic interests. (Stock news 15 min) (INS v AP)

What constitutes Hot News ?

1.

generates or gathers info at a cost;2. info is time-sensitive;3. s use of the info constitutes free-riding on s efforts;4. is in direct competition w/ product or service offered by s;5. Ability of other parties to free-ride on the efforts of or others would reduce incentive to produce

product or service that its existence or quality would be threatened.

S.A.C (Selection, Arrangement, Coordination of facts) is protected under HOT NEWS even if underlying factsare NOT; have to balance public need for info with protecting those who invest time and $$ into gatheringinfo and so on.

Board of Trade v Dow Jones (1983)Chicago wants to sell something, so they need an index for reference purposes and they want to include the DJindex. So what is the problem? DJ put time and effort into the index, so is the index protectable. Facts are in the

public domain, and the index is a fact, not fiction. A fact is not protectable in its particular arrangement (S.A.CSelection Arrangement Coordinatioon). The user gets a license from the Dow Jones, but here there was nolicense. They are trying to take a free ride.Holding: A partys product or service may be misappropriated even if the appropriating party offers a productunlike any offered by the other party.2 competing philosophies here-(1) Sweat of the Brow Doctrine: an innovative party deserves the fruits of their labor v.(2) allowing imitation pushes all parties to innovate further.

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***COMPETITORS-Some courts require other party to be competitor so as to economically affect the other party(i.e. INS type cases). Most courts say a violation occurs only if the one taking the news is a competitor.

**Overriding concern is whether social utility is better served by allowing or prohibiting appropriation. Whetherthey are competitors or not is consideration of several factors. Dow has expended much time, energy, $$ to achievehighly respected status. In context of stock market futures, any index can be used; giving Dow a monopoly on its 30

industrials will not stifle market. Doing so may encourage innovation by forcing experimentation. SAC- Dow Jonestook facts and arranged them in a certain way. This SAC should be protected. Basically, Chicago should create theirown, but they cant because it has to be noted before they can use it, so Catch-22, Chicago has to pay DJ.

5) Personal Names and the Rights afforded to them For names to be protectable, u must establish secondary meaning

Surnames whose name is common and has no secondary meaning must show:a. that s use of the name is part of an active passing off scheme AND

b. that consumers have actually been confused.i. If s name has 2nd meaning, need only show LOC

ii. If s name is distinctive, and 2nd meaning is strong, cts will presume consumer deception & grant reliefeven absent proof of LOC.

iii. To register a surname, you must:

1. Have a statement that the individual has licensed their name OR2. If deceased, indicate so

***Secondary meaning (1) it is no longer a noun AND (2) it is a source identifier. (Think Roy Rogers)

RULE : A name is NOT sacred, & will not be protected if doing so will create LOC & especially if done in badfaith.

David Findley v Findley (1966)Two brothers' grandfather started this art galley business in Midwest. Grandfather dies, father continued business,and eventually each brother had branch. David Findley goes to NY on 57th Street. Prior to that, his brother, Wally,had business in Chicago. Wally then comes to NY on 57th. He sets up shop using Findley name next door. David hadinvested a lot into the name in NY and they both sell the same type of art, and there is a huge LOC.HELD: An individual may be enjoined from using his own name in a biz if such use would lead to confusion w/

another biz. An individual has property interest in own name, but limited. No sacred right in name. Persons namemay not be used to appropriate goodwill of another business by causing confusion in public. Both galleries wereadjacent and sold same art- LOC great. Narrow Injunction appropriate as remedy (Wally either change name ormove to another part of NYC). ***David was first FITGTT!!!***

LEVITTOWN When a founder leaves a company bearing his name, what are his rights? Mr. Levittof Levittown sells business and trademark. Housing is either service mark (unique houses) or trademark (all thesame). Several years later, tries to go into the biz again and uses his name, but the biz who bought him out isnot happy about it. The court held he couldnt highlight what he had done, but here, it might have been becausehe was so in the face about it. Court relied on confusion.

6) TradeDress, Design, Functionality

Trade Dress:Beauty (protectable) v. Utility (not protectable)Non-functional FunctionalNon-Essential Essential

Non-Functional Elements: Unusual Memorable Conceptually separable from the product

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Likely to serve primarily as a designator of origin Beauty is more likely to be protected F Work Functionality -- good for s b/c if nonfunctional, you can copy if not patented Can copy functional aspects, if no patent, but not non-functional

(2) Economic Interests- Unfair Comp in the Competitive PlanMARKETING - Crescent Tool v. Kilborn- Kilborn made wrenches possessing same basic shape &function as wrenches made by Crescent. No patent. Holding: a Jr. product may be marketed havingsame shape & function as Sr. product if no LOC as to w/c its purchasing. LOC necessary condition toenjoin Jr. A product similar in style & function not give rise to UC claim if no LOC. No confusion andKilborns marketing suggested no confusion (diff name, diff packaging, did not market wrench as aCrescent). A Sr. product having no patent has no claimon a products style or function. Improperonly when Jr. copies nonfunctional elements of Sr. that makes it distinctive.

NOTE: NON-FUNCTIONALITEMSAREPROTECTEDWEN 2ND

MEANINGISSHOWN.

FEDERAL IP LAW PREEMPTS STATE IP LAW: There can be no state patent law. No state can prevent the manufacturing of something patentable.

PREEMPTION - Sears Roebuck v. Stiffel Stiffel sells high end lamps & then Sears makes a polelamp selling it under Sears name for cheaper. Stiffels design and mech patents were deemed invalidand also the TM. HELD- A state may regulate the METHOD of selling, but a states UC laws may notimpose liability or bar the copying of a product that is not protected by the fed patent or laws. Patentlaw says what is not patentable is free to be copies. RULE:Fed laws protecting patent & lawspreempt state law. A natl system of protection would otherwise be thwarted & useless if varies onstate. (*note- state law addresses conduct, not technology- ie. passing off, etc. Thus, state laws ingeneral do not conflict w/ fed patent laws.) States can only regulate labeling and advertising, not thenon-manufacturing aspects of a trade.

HYPO Listerine Bottle:

Design patents protect non-functional appearance (shape of the bottle). lasts 14 years from the granting date.

Trade Dress lasts as long as the shape is IDd w/ the product.

STATE V. FED LAWS - Compco v. Day Brite- Compco (D) began manufacturing fluorescentlighting fixtures identical to those upon w/c Day-Brite had secured a design patent that turned out to beinvalid in the Public Domain. HELD - A state cannot use its UC laws to bar or give relief forcopying a product w/c is unpatentable under the fed law and thus in the PD. A state can imposeliability for palming off or require labeling to prevent confusion, but not for copying and sellingunpatentable articles.

III. Trade Secrets - Any formula, pattern, device or compilation of info used in ones business w/c gives

him a competitive advantage over others who dont know the TS. Must be secret but need not be absolute. Holder of TS may communicate it to employee or to one in fiduciary relationship. BUT, substantial element of secrecy must exist so that except by use of improper means, there

would be difficulty getting info.

Elements of a T/S Claim?(1) Any info of P that gives P competitive edge over others;

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(2) takes reasonable steps to keep secret (non-disclosure to public) NOTE: Secret just has to besecret, does NOT have to be novel or inventive

(3) Misappropriated thru wrongful means (uses or discloses) reverse engineering ok! If reverse engineered, keep receipt so it can be proven origingal

product was obtained through lawful means & cant make misappropriation claim(4) Cost involved in maintaining secret MUST BE in continuous use. TS protects SUBJECT MATTER that couldnt receive a patent.

3rd party beneficiary of TS - have duty to inquire into any info new employee brings. (Notice)

Source of Law: Restatement 3rd Unfair Competition Case law Uniform Trade Secret Act (supplement) 1(4)

**RESTATEMENT 757, comment B - One who discloses or uses anothers TS w/out privilege to

do so is liable to other if:1. He discovered secret by improper means OR2. His disclosure or use constitutes a breach of confidence reposed in him by the other disclosing the

secret.

Reverse Engineering- can lawfully reverse engineer and discover a TS as long as original product islawfully obtained.

How do you protect a [trade] secret? non-disclosure agreements non-compete clauses restrictive covenants- either when proprietor sells biz or in employment relationships

security shredders signs difft ID cards for difft employees (access)

How do confidential relationship arise in TS? Express K Parties in special relationships confidential relationships (partners, joint venturers) Implied K

RULE: public has free access to trade secrets.o Those who obtain it through proper means (like published in a book), w/ no knowledge of

unlawful means of obtaining it, are not liable.o Dont have to obtain by unlawful means to infringe on trade secrets, but by commerciallyimmoral means (ex. DuPont v. Christopher).

o Misappropriator is the wrong-doer, whom the law seeks to punish.Why Patent v. TS?

Patent disclosed after 18 mos of protection if denied a patent. TS protected as long as kept secret (i.e., Coke formula). BUT, if reverse engineered, you get f-ed

b/c now no $.

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TS protects things NOT in public domain, whereas Patent is for protection of items in publicdomain. Thus, TS law does not conflict with if its not patentable, its not protectible.

Policy- Serves to protect standards of commercial morality & encourage invention & innovation whilemaintaining public interest in having free & open competition in manufacture and sale of unpatentedgoods. Not in conflict w/ fed patent law, which deals w/ technology. TS deals only w/ wrongful conduct!

A. THEORYOF PROTECTION (ELEMENTSOF TS APPLIED-WHATISA TS)Metallurgical v. Fourtek Metallurgical hired Therm-O-Vac to make M a furnace. M modified itextensively and went to another company to have them build a second one, but kept the TS conf. btwnM & the prospective company. TOVs salesperson w/ 4 others started Fourtek & sold the same furnacew/ the mods to a compeetitor. M claiming TS misapp. HELD - Furnace was TS which was disclosedto others, but ltd disclosure made this still TS: ALL 4 ELEMENTS SATISFIED (1) a secretcompetitive advantage was provided to others, but it was limited & the disclosures were made to furthereconomic interests. No confidentiality K but reasonable steps taken to keep secret. TS determined byweighing all equitable considerations & turn on own facts; no universal requs though secrecy a must.Other requs are value to holder and cost of devising secret or process. A reasonable conf rel existedbtwn both parties, and though competitor failed to inquire as to process of furnace, had not yet put it to

use so not liable for TS misappropriation. Remedies Reasonable Royalties (what parties would haveagreed to as fair price for licensing), & if unable to determine that, then perm inj. Also enjoined fromdisclosing info.

NOTE: for perm inj the court can do many things, but they can estimate how long itshould take for one to reasonably figure the TS or if bad faith could be forever.

NOTE: 3rd Party LiabilityAccording to UTSA, a good faith purchase who becomesaware of the improper appropriation only after acquiring the info is protectd, b/c of theknowing: requ.

E.I. Dupont v. Christopher-The Christophers were aerial photographers taking pics for conf. client of

s refinery taking pics of the process. Photogs will not disclose 3rd party. finds out & wants to stopthe pics from being released and find out the name of the person. The TS here is the layout, pipes, &process. s engaged in no fraud or illegal conduct. HELD (1): One may be found to have improperlyacquired anothers TS w/out having committed illegal or fraudulent conduct. Never been rule thatacquisition of secret must be thru illegal or fraudulent conduct. RULE: TS need not be discoveredthru improper means. Proper means = reverse engineering, not industrial espionage. HELD (2):Expense to protect industrial aerial espionage would have outweighed reason. used reasonableprotection.

Remedies:1) Lost Profits: s actual loss (D unjust enrichment x2 if willful) or reasonable royalty.2) Injunction

3) Esq. Fees (if bad faith or willful) Protective Order to protect your secret, but you run the risk that it may be disclosed in

court b/c records are typically open to the public. Must ask that records get sealed. Attorneys Eyes Only only opp esq. can look at the TS, client will never see the secret. Under Court Seal closes courtroom to public & seals records.

NOTE: on Royalties: Should always require 2 tier system ThinkListerine & Key Chain case: If u do a deal w/someone on an item that might be

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patentable, u have a 2 tier royalty obligation 1.) if the patent is grantedhigherroyalty b/c of exclusivity; 2.) if the patent is not granted you are still obligated topay Y, which may be lower, but you have to pay b/c u have lead time, which is abenefit.

Approaches: Reasonable Steps Mutual non-disclosure agreement what we share w/ each other (companies) will be kept conf Double envelope approach any idea client wants protected, address outside envelope to

recipient. Stamped confidential front and back, and then inside is a second envelope. Attached toit is cover letter explaining whats inside the second envelope. Second envelope is addressed backto you so that if they dont agree to cover letter terms, they can return it back to you.

NON-COMPETES must be reasonable, and are generally NOT FAVOREDPublic policy need to keep people employed, as well as the individuals right to seekemployment freely, but we dont want secrets being disclosed. Courts will carefullyscrutinize a covenant for reasonableness in the light of the need of the employer forprotection and the hardship of the restriction upon the employee. Must narrow down

the type of companies not to work for must be true competitors. Here, K not enforced.Wexler v. Greenberg Note Case (1960): chief chemist w/ access to formulas wants toleave company A.

o Employer cant prevent an employee from leaving, BUTo Can prevent employee from working for competitor for a period of time.

o HYPO: cant work for 8 years unsconscionable & probably invalidated by cto HYPO: 8 years, but well pay you half your current salary might be

reasonable.o KEY FACTORin determining reasonableness of non-compete clauses: Is there

separate consideration given for the particular provision in the K>

B. Limits of Protection:Provisions to write into K to protect your TS:NDA- Nondisclosure AgreementsNC- Non-compete clauses (Cali doesnt like this).R.C. Restrictive Covenants- either when proprietor sells biz or in employment relationships. (employeesservices must be unique & extraordinary and limitations must be reasonable to be upheld b/c interferes w/ability to earn living).

RC will be upheld if:1) reasonable in time & area;2) necessary to protect employers legit interest;3) not harmful to gen public;4) not unreasonably burdensome to employee.

Shop rights- if there is no written agreement btw employer and employee, employee retains right toinvention (owns it) but employer retains royalty fee license. If the employer wants to own all rights, mustput it in writing ahead of time or else employees could license to someone else.

State v. Federal Pre-emption:o TS law is not pre-empted.o Economic Espionage Act (1996) federal law for protection of TS.

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o Doesnt pre-empt state law, merely holds TS law is important & helps potential confict inpatent v. TS law

o As long as the state law focuses on conduct (improper conduct-someone stole, someonetrespassed, etc) and not technology, its not pre-empted. State law doesnt care if its patentableas long as it gives a competitive advantage.

1. Personal Interests- Restraints on Post-Employment CompetitionPepsiCo v. Redmond (Gatorade Case)- was former Pepsi employee who knew pricing, marketing,distribution & was hella sneaky about leaving (lying, etc) to go to Quaker. HELD- may prove aclaim of TS misappropriation by demonstrating that s new employment will inevitably lead him torely on s TS. RULE: Enjoining someone from moving onward in their employ will occur ONLYwhen that someone is special & HAS EXTRAORDINARY KNOWLEDGE that would be used nomatter what, just b/c its in the brain. Unless possessed uncanny ability to compartmentalize info, hewould necessarily be making decisions about Gatorade & Snapple by relying on his knowledge ofPCNA TS. It is not the general skills & knowledge acquired during his tenure that Pepsi wants toprotect, but rather the particular plans developed by PCNA and disclosed to him while employed thatare unknown to others and that give employer advantage over his competitors. (ie Playbook & football).Fact that said he wouldnt use the info meant nothing. Remedy: Enjoined for a period of 6 mos b/cdist plan will be obsolete shortly thereafter. Inj until current biz plan had passed. BAD FAITHWAS A BIG ISSUE/FACTOR HERE!!

*** REMEMBER: State Law-this varies from state to state

Reed v. Strauman (Tax Advisor Firm Case- Reed sought to enforce covenant not to compete executedby Strauman despite fact that his services had not been extraordinary or unique. HELD- NC (non-compete) unenforceable if employees services were not extraordinary or unique. List of clientsaccessible to general public. RULE: Customer list is NOT a TS, BUT theres a difference between acustomer following and a lawyer soliciting. Not a TS, but unjust & unfair b/c of comp. adv.

Drafting a covenant for your employee:Employees services must be unique & extraordinary and limitations must be reasonable to be upheld b/c

otherwise the covenant will interfere with individuals ability to earn a living. Thus a restrictive covenantwill be held if:o Make it a small geographical area.o Small window of time that employee cant work for competition (6 mos.).o Necessary to protect employers legitimate interest;o Tailor covenants for each type of individual/ occupation.o Not harmful to general public.

2. Economic Interests - TS in Competitive PlanKewanee Oil v. Bicron (1974): USSC created 17 crystal that detects radiation (largest in the market). s employee, left, worked forBicron. A few years later, created same crystal. seeked to enjoin from using it b/c it was a TS.

argued it was not patented, so it was free to be copied.ISSUE: Does federal patent policy pre-empt state TS law? NO. TS covers what patent does NOT>State TS law reaches areas that federal patent law does not, while upholding the following policies:

1) Incentive to invent is maintained under TS law.2) Doesnt take knowledge away from the public domain.3) Legitimate state purpose prevent unfair conduct AND promote invention.

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Compare TS w/ Patent Sec. 154 Pre-emptive patent filing allows you to donate your patent topublic domain to prevent others from patentingsneaky, sneaky sir

The TS Risk: Company A has TS, Company B arrives in the market & invents the samething. B didnt know & gets patent, then A has to litigate and prove prior invention.

EXAM: WHAT TO KNOW ABOUT TS: Know what a TS is, the value of ATs thatare not preempted. They are valuable and what you need to do to protect them. Knowabout NCCs (non-compete clauses)

IV. RIGHTOF PUBLICITYWhat is it?Right of an individual (celebrity) to profit from & control his/ her name, image, likeness, biographicalfacts, voice, signature, performance & symbolic representation. Celebrity has interest that may beprotected from the unauthorized commercial exploitation of that identity.

Majority rule - property right descendible (some states require lifetime exploitation) (CA/NJ). Minority rule - privacy right -- dies w/ individual (NY).

How long does ROP last?Depends on statute/ jurisdiction.CA = life + 70VA = Life + 40

Always deal with ROP separately when you represent the client. Great Ex of using ROP to adv: New Kids on the Blockb/c they rode it as long as they could,

they had over 500 different types of merchandise bore their TM, earning over $500 mil fromname, image, likeness.

A. Theory of Protection

Likelihood of Confusion Frisch Test - 8 prong test to determine whether LOC: re: violation ofsec. 43(a)of Lanham Act (any person who shall use in connection w/ any goods or services any false descriptionshall be liable by any person who believes he is likely to be damaged by use of such false description)claim in Heres Johnny case

(1) strength of s mark(2) relatedness of goods(3) similarity of marks(4) evidence of actual confusion(5) marketing channels used(6) likely degree of purchaser care(7) s intent in selecting mark(8) likelihood of expansion of product lines

Bette Middlercase: Ford used someone w/ voice similar to hers, singing song she made famous.Cali statute refers to celebritys voice, so no claim under this.Cali C/L extended protection to her, got injunction and $ damages.RULE: when a distinctive voice of a recognized professional is deliberately imitated in order to sell aproduct, the sellers have appropriated what is not theirs and have committed a tort.

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Carson v. Heres Johnny Portapotties- Company used his catch phrase (Heres Johnny!! TheWorlds Foremost Comodian) HELD- A celebrity may enjoin use of a phrase associated w/ him(symbolic use), even if neither his name nor likeness is used. Majority rule applied. RULE: If a phrasehas become associated w/ celebrity, he has property interest in that phrase. ALSO alleged violation ofLanham Act sec 43(a), BUT doesnt survive the LOC test. No unfair competition here; didnt intendto deceive pubic into believe P was assocd w/ product; no evidence s use of phrase damaged .

Celebrity has a commercial interest that may be protected: Hirsch v. S.C. Johnson: using ones nickname rather than the actual name doesnt preclude a

cause of action. Ali v. Playgirl: drawing of Muhammad Ali with caption Mystery Man invaded his ROP RJ Reynolds: unauthorized use of distinctive car of well-known race car driver violated his ROP

ROP claim test:1) s use of s identity2) Appropriation of s name or likeness to s advantage, commercially or otherwise3) Lack of consent &

4) Resulting injury.***BUT ROP not limited to appropriation of name or likeness.

White v. Samsung- Vanna White robot. s ad depicts robot in likeness of Vanna White, posed next togame board resembling Wheel of Fortunes. White sued on ROP based on symbolic rep. ISSUE: Isthere a LOC here? MAYBE. HELD: Totality of facts here violate s ROP. The robot + the clothes +Wheel of Fortune backdrop = violation of ROP. All 4 prongs of ROP satisfied!! Parody unsuccessful: this was not just to be funny, but to also sell VCRs. Its not the individual elemtns, butrather all of them together. The prongs are not only satisfied, but theyre all satisfied forprofit. Also,the other celebs in the campaign (series of futuristic ads) were being paid.

Wendt v. Host Intl (9th 1997): (Cheers case) : Norm and Cliff characters were sold by Cheers ( owner)and imitated using animated robots, using different names, speaking to one another, at airport bars.ISSUE: Does ROP by state trump federal copyright law? YES HELD: Just b/c characters are fictional,doesnt mean actors lose their ROP. 9th Cir basically said the studios should have put it in the K. NOTE Part of the reason producers rotate actors (like Batman, James Bond, etc.), is so that none willclaim a right to the character.

B. Limits of Protections to ROP:

1) Parody/ Satire - Conjure Up Rule- allowed to use that amount necessary of celebrity to conveymessage to public and to identify celebrity); 2) Its the medium, not the message! (a parody will be more successful when its not to sell a product). Difference btwn parody & knock-ff is the

difference btwn fun & profit. Must be transformative and its better if NOT for profit.2) 1st Amendment/ political use or arena (most widely asserted ).3) Editorial/ news4) License

Comedy III Prods v. Saderup-(3 Stooges Case) shirts w/3 Stooges pics. Asserted 1st Amendment HELD- All 3 Stooges are dead, but there is still a ROP claim b/c we are in a state that follows themajority rule. Court uses a balancing test b/t the First Amendment and the ROP based on whether the

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work adds significant creative elements so as to be something more than a mere celebrity likeness.Since this was not a parody and was intended to represent the Three Stooges and got $$$, should havegotten a license or made it into a transformative value i.e. significant creative elements (w/cexempts it under the 1st), rather than just being a celebrity likeness, unlawful reproduction. Also, itsmedium not message: 1st Amendment allows one to say what they want, but it becomes problematicwhen its put on merchandise. Ct distinguished b/w single art and reproduced art, like lithographs (art

law exception for single pieces of art). Ct looks to see if there is something new to society present inthe art, something of value that would not have otherwise been there to come under the exception. SHOULD HAVE gotten a license or made it into a transformative expression, rather than just beinga celebrity likeness, unlawful reproduction b/c it was NOT a parody and WAS ingtended to rep the 3Stooges & profited.

Medium, NOT the Message!HYPO: Dennis Rodmantis dollCourt looks at how item is being exploited, etc.HELD: merchandising, so probably violates his ROP.HYPO: Franklin Mint put out commemorative Tiger Woods piece after he won the Masters. Tigerisnt happy about it. Franklin Mint can argued its a news event (just like putting it in a magazine).HELD: its merchandize (medium prevailed over the message).HYPO: Baseball cardsHELD: need permission from players.

Use of public images by news dont need permission.Public images w/out an article permission needed.

Transformative TestDoes the marketability & economic value derive primarily from the celebrity,**If Noits okay to allow someone to sell the product**If YesForget it

v.

Cover ArtEx. Beatles on Rolling Stones Cover If there is no article inside, then u need permission,but if its an article, then it qualifies as commentary.

Getting into court: for Fedl, bring claim under Lanham Act, or patent.Exclusive Jurisdiction claims for which the remedy itself comes from a specific federal act.

o Patento there are still some state claims that might exist, but for the most part its a federal clalim.

Breach of K not paying royalties state court

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III. FEDERAL LAWOF INTELLECTUAL PROPERTY

Supplemental Jurisdiction (1367) Fed Ct. can continue to hear the matter even if fed. claim isdismissed; Court has discretion to hear the state claim. Gives supplemental juris over state claims.Fed. Cts. can decline if:

(1) the claim raises a novel or complex issue of State law;

(2) the claim substantially predominates over the claim(s) over w/c the USDC has original juris;(3) the USDC has dismissed all claims over w/c it has orginal juris;(4) in exceptional circumstances, there are other compelling reasons for declining juris;

Federal Jurisdiction (1338) Gives Fed. ct. original juris over any civil action arising under any Actof Cong relating to patents, plant variety protection, & TM (USDCs share w/ state courts w/ respect toTM cases). Gives pendant juris over certain related state actions.

CAFC (Court of Appeals for Federal Circuit) started in the 1980s; hears appeals from USDCs, thenyou can go to USSC.

A lot of patent cases are really breach of K claims, but one can always write a K so that itbecomes a patent infringement claim and can be brought in fed cts under fed law.

claims almost always come under fed. law although there are some state C/L claims that canbe brought. If its an infringement claim, its in FED. CT.

1. Trademark Law TM HISTORY:

Marks have been used to identify for centuries (started w/ jewelers to ID work/craftsmanship), &systematic legal protection began to take shape in the early 19th century TM law began as aninfringement branch of the Unfair Competition Passing Off Doctrine. First TM Statute Act of July 8, 1870, 16 Stat. 198 created few substantive rights providing

instead for registration of marks protected under C/L. Cong amended the Act in 1876 to add

criminal sanctions for infringing federally registered marks. HOWEVER, USSC held entire actunconst in 1879 stating that it had no relation to Cong power over invention or discovery since TMis result of continual use as opposed to signal invention.

Lanham Act (July 5, 1946) 1st major substantive step towards federal TM legislation. Theact has since been amended several times. Specifically, the 1988 revisions materially altered theact in the following ways: Modified use requirement Strengthened evidentiary effect of registration certificate Reduces term of registration Widens compass of federal unfair competition law

SMs v. TMs:

If you can buy the services/ goods independently from each other, then one use is a SM and one use is aTM use. (Service must be stuff separate from the subject of the advertising and mark must be used to IDadvertising services, not merely to ID subject of advertising. Example SM: For rock bands to use SM,header must say in concert or performing tonight)

3 levels of TM Protection (all exist congruently):**All 3 are based on use in some sort where first to use gets it.**

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1. Federal Statute given to all marks federally registered under the Lanham Act (15 USCA 1052) **Definitions found in 1127 of TM of 1946 (45 of the Lanham Act).

2. State Statute -- used when registered in the state, also (sm) service marks for when dealing w/a service and is afforded the same protection as

3. State C/L -- symbol used when registered in C/L.

. . . . . . .i.e. can be used after federal registration is granted (can used on Supplemental Register as well) can be used when there is a state registration and in C/L use. (SM) is a service mark for someone who provides a service like a restaurant and SM are equal legally.

NO (SOL) for TM

Legal steps to follow after choosing a mark:1. Conduct a TM search to determine if the mark or a similar mark is already in use.

2. If yes to #1, how is the mark being used. If its a distinctive product, it may be okaythisshows GOOD FAITH if bad faith is proven, then may have to pay profits.3. Once gets federal registration, has constructive use throughout the entire country so

that is probably the senior user everywhere, unless there is a C/L TM already.

A. Requirements for ProtectionFed USC 1051-1129 (or Lanham Act 1-47)

(1) Use & Use in CommerceUntil 1988 revision, TM ownership and registration in the US turned on the marks use in connection w/goods or services in the market place. No rights attached unless used in commerce (now ok if bona fideintent). Use was also a condition precedent to seeking registration

F.I.T.G.T.T. First in time gets the trademark! (Sr. v. Jr.) - TM law based on use; whoeveruses it first can claim ownership but right is not absolute.

Before use mark, must do Thompson & Thompson search to see if its used already. ITU v. Use (either bona fide or in-commerce, i.e., interstate commerce) To establish TM ownership, need to est. bona fide use. Bona Fide Use, in order of importance:

1) quantity & continuity of sale (if need to ask whats enough, then not enough);2) consumer purchases; (Consumer Eye Test)3) biz of mark owner;4) quality control;5) a distinguishing mark;

6) intent;7) profit or loss;8) advertising;9) test market.

(1) Intent to Use ITU (revisions effective 11/16/89) - after TM Act of 1989, ability to registermark on an intent to use basis (only federal level; no CL or State law) and applications only goodfor6 mos intervals. So until actually used, have to renew every 6 mos.

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DATE OF FILINGcritical date. App goes to the examiner who declares the description ofgoods is too broad, then they send an action letter and has 6 months to respond. If respondsand narrows the description down, then it is available for publication in the official gazette onceapproved by examiner. can ultimately, with all the extensions, have up to 4 yrs to make use.This is important to determine ownership & exclusive righs.

Filing of [ITU] certificate of registration (sets priority date for Sr. v. Jr.; does not start clock ofprotection)this gives you senior status!!!

This is for the idea phase of your biz, when it hasnt yet become concrete. Then you work on 9 bona fide use factors. 3 steps:

1) Comparison for conflicting marks (see USCA 1052).2) Publication for opposition3) If no one opposes, then USPTO issues N/O/A.

(2) N/O/A- notice of allowance (starts 1st 6 mos. & starts clock for protection) - look to this to see whenyou have to renew application if not using yet.(3) After N/O/A, given, applicant must file a verified stmt that the mark is in use in commerce w/in 6mos.

9 factors must be in play w/in 6 mos. If you cant do this, show the office why you havent doneso, and may get renewal based on good cause.Extensions: (5 of ITU @ 6 mos.- 36 mos. MAX- after 36 MOS have to use it or lose it!

HYPO: using mark only in NJ, but you plan to use it on an interstate basis.o File an ITU app., w/c sets up a seniority date.o Retroactive back to whoever was the first to use.

Blue Bell v. Farrah (1975-pre ITU case)- Time Out mark over mens line. Issue- who used 1st &what constitutes use? HELD 1) FITGTT: Point of TM is to protect consumers in helping themdistinguish marks, and this is determined by consumer exposure, NOT internal sales; 2) Internal use (ieshipping to salespeople) not dispositive. Key date is time when CUSTOMERS 1st see product w/ TM.

CONSUMER EYE test. Farrah shipped 1st order of Time Out clothes to customersFirst Users

TOKEN USE: Prior to 6/1/88 revision adding INTENT TO USE, the Patent & TM officeoffered a safety net by tolerating token usesspare, contrived uses of a mark made for singlepurpose of obtaining registration. ABOLISHEDby 1988 Revision Act & requ. bona fide use inordinary trade of biz. Pg. 214.

Warner v. Empire(ITU in place)- Real Wheels for toy cars. Issue- can someone who used a TMbefore an ITU applicant for same TM enjoin ITU applicant from using TM? HELD - No injunction. Aslong as an ITU applicants privilege has not expired, ct cant enjoin obliterating the ITU (by enjoininguse) would obliterate the whole purpose of ITU RULE: When an ITU app is still current, it can not beenjoined, BUT if actual use is pre ITU, then the court can enjoin a junior user. ITUs are allowed tomature from date of filing. [But if actual use is SR to ITU applicant, ct will enjoin JR ITU applicant.]Here, was a timing issue in that conflicts check didnt turn up the mark b/c it hadnt been registered yet,was still pending. Facts: filed an ITU and tried to enjoin it stating it was already in use (thoughapp was pending and actually filed after s ITU). claims is not bona fide & why should berestricted when someone based on intent when actual use already exists.

Federal/ State TM Issue: What does one do about the senior C/L user who wouldnt come up ina search? What if they start expanding their biz from small time to big time? Will they have togo out of biz like Warner (see above)? NO, instead, and in the name of equity, the senior is

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frozen from expansion. Example: Theres a senior C/L TM in Oregon, but your client doesntcare b/c he doesnt plan on being there, you file an ITU, then senior expands its businessgeographically. Solution: Senior C/L TM can expand during ITU phase, BUT, once your ITUripens to actual use, the senior gets frozen to where they are.

Biz Affairs point- 1) File ITU & 2) dont miss extension filings.

Applications that say cancelled, abandoned, not in use doesnt mean its no longer its in use.TMs last for 20 years, and can be renewed for another 10. The only thing thats abandoned is theapplication, but could be using the TM under C/L. REMEMBER, all TM law exists concurrently.

Process for getting a TM:1. Selection of TM2. Conflicts search (Thompson & Thompson)3. Opinion letter4. Filing

5. Publish for opposition in official gazette6. Allowance (N/O/A Notice of Allowance. In TM & patent law, the USPTO will write u a letter

saying ur app has been accepted or your appication is allowed/accepted; (made official bythe allowance); actual bona fide use)

7. FOREIGN FILING6 month limit. If files in Europe, & then someone files here, as long as has filed here w/in 6 months of foreign filing, has seniority.

Lanham Act 1052/2 (REASONS FOR REJECTION)No TM by which the goods of the applicant may be distinguished from the goods of others shall berefused registration on the principal register on account of its nature UNLESS it consists of a mark thatis

2(a) Scandalous

immoral, deceptive or Scandalous matter (NOTE: this determination isbased not on the general publics impression of the term, but the effect the term has on thoseidentified or implicated in some recognizable manner by the involved mark) (Redskins case)

2(d) confusingly similarA mark which so resembles that already registered and would eithercause confusion, deception, or mistake. (In Re N.A.D.)

2(e) mark is also not okay if: (catch all)1. merely descriptive or deceptively misdescriptive(Sunoco/Lovee Lamb) or2. primarily geographically descriptive or3. primarily geographically deceptively misdescriptive4. a surname or5. only functional

ALL OF THESE W/O 2ND MEANING 2(f)a mark which may cause dilution under43

Selecting a TM/ (how strong it is too):Level of Distinctiveness

1. Coined/ fanciful very strong Ex-Hagen daaz Ice Cream2. Arbitrary very strong Ex. Apple Computers, GAP3. Suggestive Strong Ex. Mr. Clean, Coppertone

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-- suggests what product may be, but not descriptive of the product4. Merely Descriptive w/ Secondary Meaning protectible (but problematic area)5. Descriptive Not protectable w/o 2nd Meaning except on Supp. Register6. Generic- No protection Keep it an adjective

Rejections: 2(e)o Deceptiveo Confusingly similar(King Seeley)o Merely descriptive w/out 2nd meaning describes mark, but not sufficient 2nd meaning by public.o Deceptively misdescriptive w/out 2ndmeaning (In re Budge)o Geographically deceptive w/out 2ndmeaning (Durango case)o Primarily merely a surname (w/out 2ndmeaning) using ones last name on a product.o Scandalous can be ethnic/ country specific (etc. bimbo, cock)o Generic

NOTE: Things can fall into the TM graveyard-dont EVER want mark to be a NOUN NOTE: If gets rejected, can still use the mark, unless is enjoined federally -- then

they will give FFC to other courts -- more problematic w/ state court decisions asopposed to fed.

Concurrent Registration often to avoid litigation; rare. (In re NAD).Firing Line idea that those caught in the litigation should determine whether or not they wantto engage in concurrent registration of a mark. (In re NAD).

Ways to renew a TM:(10 yr renewal term is product of the TM Law Revision Act of 1988; originally the Lanham Act gave 20yrs of protection).RULE - if filed on or after 11/16/89 the term for federal protection is 10 yrs w/ 10 yr renewal terms; if

prior to 11/16/89 then 20 yr terms w/ 20 yr renewal dates!1. Must file 8 statement of continuous use every time you file a 9 renewal form every 10years.2. On top of that B.S., you must file an 8 every 6 years.3. Also, must file 15 incontestability form in year 6. This is notice to TM office and the worldthat your TM has 2nd meaning and is incontestable. Presumption that 2nd meaning if have TM for5 years. Incontestibility re: 2nd meaning or Sr. v. Jr. but you can attack it on Functionality, fraudor abandonment.

Supplemental Register (federal 109196)Examiner may offer to register your clients TM here

MUST pass 2(f) above, or mark cant register. Different from ITU, but must have actual use w/o 2nd Meaning yet After 5 years of being on the Supp Reg, TM is deemed to have acquired secondary

meaningPRIMARY REGISTER While in Supp Reg, Applicant DOES NOT GET

o Published in official gazette for anyone to oppose ito To stop importation of goods from other countries (foreign import), ANDo Constructive use throughout the country that you get with Primary.

Can still use the though

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Process for Appealing a TM denial:1. Have to be rejected by examiner.2. Go to TTAB (Trademark Trial & Appeals Board or de novo to USDC- if lose go to regular cts).3. Can appeal to CAFC (Court of Appeals for Fed Circ)4. Appeal to USSC

TTABhears ex parte claims after examiner refused registration, such as In re cases

Defenses to infringement-1. Abandonment

Express (notice in paper) Non-use (after 3 yrs presumption of abandonment/ intent not to resume;) Lack of QC (quality control) - if mark is licensed out w/t QC provisions, this would be naked

license w/c = abandonment. Loss of distinctiveness = generic

2. Generic/loss of distinctiveness: Distinctiveness - mark is distinctive & capable of protection if either

(a) inherently distinctive or(b) has acquired distinctiveness thru 2nd Meaning.

Licensing A Mark QC:If you have a party that owns mark, and they license that mark to someone else, they must be aware ofquality control (QC). The licensee must maintain QC over the product, or the license is deemed naked,w/c is the same as abandonment. Thus, you must periodically receive samples of the product to make surethe quality is OK.

F.O.M. Family of Marks

(a) Trademarks that distinguish from Goods of AnotherKing-Seely Thermos: RULE: Once the public confuses a product brand w/ the product itself, it has

begun to lose its distinctiveness & will slowly fade into the TM graveyard. HELD:Generic. Key question is what public understands when a word is used. If publicunderstands it to mean a particular brand of product = valid TM. BUT IF PUBLICETAKES THE MARK TO BE A WORD THAT DESCRIBES THE TYPE OFPRODUCT IT REPRESENTSGENERIC & UNENFORCEABLE. This is true nomatter what kind of precautions company takes. Became noun!!!Remedy: can use theword thermos, subject to justifications. It must use a lower case t; thermos must bepreceded by Aladdin. Thermos is still a registered TM, but has lost a lot of itsdistinctiveness.

March Madness (1996): a high school team had been using the term since the 1940s. HELD: NCAA cando this; public identify the term w/ NCAA, not w/ high school team.

Doctrine of Laches: Acquiescence, and also the reson there is no SOL. If acquiesces w/ingenerally 3 yrs, is out of luck. Here, school waited too long & cant sue under this doctrine.

(b) Deceptive Matter:3-part Budge test when trying to register TM (Shapely/Simmons Test):

1) Is the term misdescriptive of character, quality & function, composition or use of the goods?2) If so, are prospective purchasers likely to believe that the misdescription actually describes

the goods?

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Copyright Spring 08