Fundamentals Of Intellectual Property Outline

7/30/2019 Fundamentals Of Intellectual Property Outline

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Fundamentals of Intellectual Property Outline

State Law of IP

Rights in Undeveloped Ideas

1) 4 ways to get Something for your ideasa) Express Contract: come with a formalized proposal of a K for an idea, terms of document very

important to consider and formulate; limited to contracting parties [court likely to enforce]

b) Implied Contract: draft a letter to all possible parties, start talking w/o signing anything,assumes fair course of dealing and that mutual understandings will be implied based on letters

handshakes, conversations; clear understanding of who is contracting [court likely to enforce]

c) Quasi-Contract: unjust enrichment, no course of dealing and no Ki) 2 Key Concepts

(1)Concreteness: not an abstract idea, specificity of idea to label it your idea, lessoriginality the more abstract

(2)Uniqueness: new, different, not something anyone else thought of, heavily limited b/ctaking away a thought from everyone

d) Property Interest: similar to quasi-K but hesitant to lump everything into a property interestw/o some concrete expression

2)Theories of Protectiona) Lueddecke v. Chevrolet Motor Co.

i) Plaintiff alleged that through letters between the parties, plaintiff sold and conveyed todefendants ideas on how to correct the defect. Nothing in the correspondence indicated that

plaintiff's idea was novel or useful enough to enable plaintiff to assert a property right.

ii) Plaintiff did not know whether his suggestion would be necessary or practical and plaintiffhad not experimented to determine its effectiveness. Plaintiff had no property right in the

mere idea of experimentation. Defendants did not offer to make any agreement to pay

plaintiff for his mere suggestion and defendants' correspondence did not invite plaintiff's

suggestion.

iii)Voluntarily divulging such information made plaintiff's suggestion common propertyavailable to defendants.

b)Nadel v. Play by Play Toys & Noveltiesi) InDowney, the NY Ct of Appeals clarified that the novelty requirement in submission

of idea cases is different for misappropriation of property and breach of contract claims


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(1)In misappropriation claims, the idea must have originality or general novelty tosupport the claim

(a)Why? - The law of property does not protect against the misappropriation or theft ofthat which is free and available to all

(2)For contract-based claims in submission of idea cases, a showing of novelty to thebuyer will supply sufficient consideration to support a K

ii) Elements to consider when determining novelty:(1)Specificity or generality(2)Uniqueness(3)Commercial availability

3) Limits of Protection: The Place of Ideas in the Competitive Plana) Copyright Act 301 preempts state lawif three conditions are met:

i) The work protected by the state law is fixed in a tangible medium of expression, (contractnot oral)

ii) Work comes within the subject matter of copyright,iii) State law grants a right that is equivalent to any of the exclusive rights within the general

scope of copyright

b) Generally, if there is an added element in the state law, then it is usually not preempted


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Unfair Competition

1) Theories of Protectiona) What does Unfair Competition seek to protect?

i) The original investors goodwillii) Guarding against competitors deceptive actsiii)Preventing consumer confusion

b) Misrepresentation deals with the situation in which a businesss use of deceptive ormisleading representation in marketing its goods or services is likely not only to deceive

consumers, but also to injury a competitors commercial interest

i) 2 branches of unfair competition:(1)Passing off when misrepresentations relate to the source of goods or services, this

branch of unfair competition regulates the misrepresentations

(2)Misrepresentation when the deceptive representation relates to the qualities orcharacteristics of the goods or services, the unfair competition claim sounds in

misrepresentation

c) Misappropriationi) Competing policies:

(1)Protection should be afforded one who expends labor and money to develop products(2)Freedom to imitate and duplicate is vital to the free market economy

ii)Whether protection against misappropriation is necessary to foster creativity depends inpart upon the expectations of that sector of the business community which deals with the

particular intangible


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Trade Secrets

1) Definition - any formula, pattern, device or compilation of information which isused in one's business, and which gives him an opportunity to obtain an advantage

over competitors who do not know or use it.

2)Theory of Protectiona) Why protect? commercial morality, trade secret law helps prevent a wild west commercial

environment

i) Overall policy: trade secret law serves to protect the standards of commercial morality andencourage invention and innovation while maintaining the public interest in having open

competition in the manufacture and sale of unpatented goods

b) Factors to determine whether its a trade secret:i)

Extent to which the info is known outside plaintiffs businessii) Extent to which it is known to employees and others involved in the business

iii)Measures taken by claimant to guard the secretiv)Value of the information to the secret holderv) Ease or difficulty with which the information could be acquired or copied by others

c) Trade secret doesnt have to be unique or novel, but at least must possess a modicum oforiginality which separates it from everyday knowledge

d) Must always consider the steps taken by plaintiff to conceal the secret and whether the secretcontains some actual or potential economic value

e) Restatement of Torts Formulation:i) One who discloses or uses anothers trade secret, without a privilege to do so, is liable to the

other if:

(1)He discovered the secret by improper means, or(2)His disclosure or use constitutes a breach of confidence

f) When may you use anothers trade secret?i) If you discover the process by reverse engineering applies to the finished productii) If you discover it by your own independent research

(1)However, one may not avoid these labors by taking the process from the discovererwithout his permission at a time when he taking reasonable precautions to maintain its

secrecy

g) Remediesi) How valuable was the trade secret to the Plaintiff? then base a reasonable royalty on thatii) Injunction but how long should it last?


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(1)Majority view only as long as it remains a secret. Once that information becomespublic, then the injunction is ended

(2)Minority view if we want to encourage commercial morality then someone shouldbenefit when it becomes public

3) Limits of Protectiona) Personal Limits: Restraints on Post-Employment Competition

i) Trade secret misappropriation Defendant has new job: P can prove trade secretmisappropriation by showing defendants new employment will inevitably lead him to rely

on the plaintiffs trade secrets

ii) If an injunction issues, where do you draw the line w/r/t employment?(1)Ask, will employee be using just general skills? Or will the employee be using specific

information

(a)If you have specific information rising to level of trade secret, courts more likely toenjoin you from utilizing that type of information w/ your subsequent employeriii)Negative Covenants Restricting Competition

(1)Judicial disfavor in enforcing these agreements(2)Only enforceable to the extent they are reasonable look to:

(a)Reasonable in time and area?(b)Necessary to protect employers legitimate interests?(c)

Not harmful to general public(d)Not unreasonably burdensome to the employee

b) Economic Interests: The Place of Ideas in the Competitive Plani) Copyright Act 301 preempts state lawif three conditions are met:

(1)The work protected by the state law is fixed in a tangible medium of expression,(contract not oral)

(2)Work comes within the subject matter of copyright,(3)State law grants a right that is equivalent to any of the exclusive rights within the

general scope of copyright

ii) Generally, if there is an added element in the state law, then it is usually not preempted


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Right of Publicity

1) Theory of Protectiona) The right of publicity protects the celebritys pecuniary interest in the commercial exploitation

of his identityi)If the celebritys identity is commercially exploited, there has been an invasion of his right

whether or not his name or likeness is used

ii)An identity may be exploited even if the persons name or picture is not used, as long as whais used clearly identifies the wronged person(1)Right of publicity can extend to look-a-likes, sound-a-likes

b) Equitable relief will be granted if there is likelihood of confusion. Factors to consider:i)Strength of plaintiffs markii)Relatedness of the goodsiii)Similarity of the marksiv)Evidence of actual confusionv)Marketing channels usedvi)Likely degree of purchaser carevii)Defendants intent in selecting the markviii)Likelihood of expansion of the product lines

c) Strength of mark refers to level of recognition of the celebrityd) In determining intent, relevant question is whether defendant intended to profit by confusing

consumers

2)

Limits of Protectiona) First amendment v. right of publicity:i)In balancing between First Amendment and right to publicity, test is whether work adds

significant creative elements as to be transformed into something more than a mere

celebrity likeness or imitation.

ii)Another way to formulate the test is:(1)Whether a product containing a celebritys likeness is so transformed that it has become

primarily the defendants own expression rather than the celebritys likeness

iii)Reasoning(1)When artistic expression takes the form of a literal depiction or imitation of a celebrity

for commercial gain, directly trespassing on the right of publicity without adding

significant expression beyond that trespass, the state law interest in protecting the fruits

of artistic labor outweighs the expressive interests of the imitative artists

b) How a claim works:i)Artist faced with right of publicity challenge

(1)He/she may raise 1st amendment as affirmative defense inasmuch as it containssignificant transformative elements


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Federal Law of Intellectual Property

Trademark Law

1) Theories of Protection: Passing Offa) Rule- the imitator of anothers goods must sell them as his own production. He cannot lawfully

palm them off on the public as the goods of his competitor

b) Calculus of Passing Off:i) Unfair competition seeks to accommodate the interest of businesses is choosing and

investing in symbols that will capture their goodwill, and the interest of consumers in being

free from confusion about the source of goods and services, by protecting:

(1)The first to use a name, brand or other symbol in connection w/ sale of goods/servicesAGAINST

(2)Another competitor whose subsequent use of the symbol (3)Confuses, or is likely to confuse, consumers into believing that the first user, rather than

the competitor, is the source of the goods or services

2)Requirements for Protectiona) Use and Use in Commerce

i) Distinction between TM applications based on use and applications based on intent to use(1)Based on Use

(a)PTO will review the app for compliance with statutory formalities. If it qualifies forstatutory protection it will be published in the Official Gazette for purposes of

opposition. If no one opposes the application, the PTO will then register the mark(b)If you file based on use you have to submit a specimen to show how the mark is being

used

(2)Intent to use (ITU)(a)Same initial steps as applications based on use. Difference lies after the opposition

period. If no one successfully opposes the application the PTO will issue a "notice of

allowance"

(i)Following the notice of allowance, it will register the mark if, within six months,the applicant files a verified statement that the mark is in use in commerce

(b)Applicant gains "constructive use" by filing this type of application(i)Filing the application "shall constitute constructive use of the mark, conferring a

right of priority, nationwide in effect, on or in connection with the goods or

services specified in the registration

(c)The filing of the ITU application constitutes constructive use as of the filing date,with nationwide priority over anyone else w/ 3 exceptions:

(i)Someone has used it,(ii)Filed, or(iii)Has earlier effective foreign priority date before your filing,


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1. Then constructive use doesnt apply (prior user, prior applicant, someone withearlier effective foreign priority date)

ii) Use for Priority v. Use for Registration(1)What constitutes Use for Priority?

(a)Test:(i)Adoption(ii)Essential test - Use in a way sufficiently public to identify or distinguish the

marked goods in an appropriate segment of the public mind as those of the

adopter of the mark

1. Use analogous to TM use is ok to establish priority(b)Typical Scenario

(i)Mark used in advertisement for product which not yet sold1. If the product is sufficiently advertised so that a substantial amount of public

will associate the use with the owner

(2)What constitutes Use for Registration?(a)Technical trademark use

(i)Goods - mark is used in connection with the goods and sold(ii)Services - mark is used in connection with the services(iii)Need use in commerce

1. Use in commercea. Gastown case - court ruled that use in commerce includes use in intrastate

commerce that directly affects interstate commerce

b. Concept of what constitutes 'in commerce' is ever broadeningiii)ITU Applicant rights v. First Commercial User

(1)I.e., A files ITU, B commences commercial use(a)B brings suit. Can A be preliminarily enjoined from engaging in commercial use

reqd for full registration on a motion by B?

(i)No, as long as As ITU privilege has not expired1. Reasoning: ITUs permit the holder of the ITU to use the mark in commerce,

obtain registration, and thereby secure priority retroactive to the date of filing

the ITU application

(ii)However, if B can demonstrate that it used the mark before the holder filed itsITU application or that filing was invalid, may be entitled to an injunction

(b)Could A sue B on the same facts?(i)No, there would be no instance for likelihood of confusion to the consumers since

they have not used it yet

(ii)Constructive use can be used defensively but not offensively to prevent someoneelse from using the mark if they have not yet used the mark in commerce


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b) Distinctiveness and Related Statutory Standardsi) Relative Inquiry 2 questions

(1)Does the Plaintiff have a protectable property right in the name it seeks to defend fromuse by others?

(a)The Mark must be sufficiently distinctive or must have acquired secondarymeaning

(2)Was there infringement? Judged by likelihood of confusionii) 4 Categories of Protectable (or not Protectable) Marks:

(1)Arbitrary mark does not relate to goods at all (i.e. Apple, Kodak)(a)Protectable - Inherently distinctive

(2)Suggestive suggests a characteristic & requires imagination by consumer in order tobe understood as descriptive

(a)Protectable - Inherently distinctive(3)Descriptive

(a)Only protectable, if at all, if it has acquired secondary meaning NOT inherentlydistinctive

(b)If merely descriptive, they have to be in the public domain, otherwise competitorscant use those terms to describe their goods

(c)Test for determining whether suggestive or descriptive:(i)Imagination test how much imagination required on part of consumer in trying

to pull some indication from the mark about the qualities, characteristics, effect,

purpose, or ingredients of the product or service more imagination cuts toward

suggestive

(ii)Are sellers of similar product likely to use, or actually do use, the term inconnection with their goods? cuts toward descriptive

(d)Secondary meaning(i)Plaintiff must show that the primary significance of the term in the mind of the

consuming public is not the product but the producer

(ii)5 types of evidence considered in ascertaining whether secondary meaning hasattached to a mark:1. Survey evidence2. The length and manner of use of the name3. The nature and extent of advertising and promotion of the name4. The volume of sales; and5. Instances of actual confusion

(4)Generic(a)Never protectable by TM


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(b)Refers to the product as opposed to the source. Where the term refers to product,you cant protect it/get exclusive rights to it

(c)TMs are supposed to identify source, not product - thats the basic dichotomy the lawmakes

(d)No specific statutory section to have refusal on being generic(i)So its rejected on mere-descriptiveness

iii)Deceptive Matter(1)Section 2(a) of the Lanham Act bars registration of a mark which consists of or

comprises deceptive matter

(2)That a mark or part of a mark may be inapt or misdescriptive as applied to anapplicant's goods does not make it deceptive

(3)Registerable?(a)Deceptively misdescriptive marks can be registered upon proof of secondary

meaning under section 29(f)

(b)Deceptive marks can never be registered(4)In relation to deceptive misdescriptiveness, we use this standard:

(a)Is the term misdescriptive of the character, quality, function, composition or use ofthe goods

(b)If so, are prospective buyers likely to believe that the misdescription actuallydescribes the goods

(c)If so, is the misdescription likely to affect the decision to purchaseiv)Confusing Similarity to Prior Marks

(1)Most common refusal of registration is confusing similarity to prior marks(2)Confusing similarity factors:

(a)Similarity of marks, are they identical? (look alike, sound alike, commercialimpression imparted)

(b)Similarity of goods. Specific nature of goods(c)Whether there are sophisticated purchasers(d)Cost of good/service

(3)Other considerations(a)The closer the marks are, the farther away the goods can be to support a likelihood ofconfusion

(b)Analyzing the marks, especially ones w/ more than one design/word(i)Have to look at the marks in their entirety, but its not improper to bisect the

marks and give less weight to the less distinctive part of the mark and more

weight to the more distinctive part


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(c)Consent to use agreement?(i)Should be given great weight(ii)However, no weight to naked consent agreements

v) Merely Descriptive or Deceptively Misdescriptive(1)Because one merchandiser has latched onto one of the descriptive terms does not mean

it can force its competitors to limit themselves to the use of the others; All of the generic

names for a product belong in the public domain

vi)Primarily Geographically Descriptive or Deceptively Misdescriptive(1)To support a refusal on the grounds that the mark is geographically misdescriptive, have

to show the fact that the goods dont come from there have a material effect on the

publics purchasing decision

(2)When is this analysis applicable?(a) Mark must contain a geographic place(b)There has to be a goods-place association

(i)If the goods do come from the place, it will be refused asgeographicallydescriptive (2(e)(2) refusal)

1. However, can still be protected/registered if has secondary meaning(ii)If the goods do not come from the place and the misrepresentation would

materially affect the publics decision to purchase the goods, it will be refused as

geographically deceptively misdescriptive (NAFTA 2(e)(3) refusal)

1. No amount of secondary meaning will allow protectionc) Statutory Subject Matter

i) Types of Marks 4 Categories(1)Trademarks

(a)"word, name, symbol, or device, or any combination thereof, that a person eitheruses or has a bona fide intention to use

(2)Service marks(a)"word, name, symbol, or device, or any combination thereof, that a person either

uses or has a bona fide intention to use

(3)Collective marks(a)a trademark or service mark used by the members of a cooperative, an association orother collective group or organization [or which such an entity has a bona fide

intention to use], and includes marks used to indicate membership in a union, an

association or other organization

(b)2 types:(i)Collective trademark or collective service mark(ii)Collective membership mark


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(4)Certification marks(a)word, name, symbol, or device, or any combination thereof but one that is used (or

intended for use) by a person other than its owner

(i)Anyone who meets the standards has to be able to use the certification mark, youcan't discriminate

ii) Content(1)Functionality Doctrine

(a)Prevents TM law, which seeks to promote competition by protecting a firm'sreputation, from instead inhibiting legitimate competition by allowing a producer to

control a useful product feature

(b)Product features are functional cannot serve as a trademark - if it is essential to theuse or purpose of the article or if it affects the cost or quality of the article

(i)In other words, if exclusive use of the feature would put competitors at asignificant non-reputation-related disadvantage

(c)Overall policy:(i)Dont want to protect if to protect it would have an adverse effect on competition

3)Administrative Proceduresa) See notes

4)Rights and Remediesa) Rights - Geographic Boundaries

i) Zone of natural expansion(1)If the use of the marks by the registrant and the unauthorized user are confined to twosufficiently distinct and geographically separate markets, with no likelihood that the

registrant will expand his use into defendant's market, so that no public confusion is

possible, then the registrant is not entitled to enjoin the junior user's of the mark

(2)Ex. 2 companies use same mark, same product, in different parts of the country(a)One co., (A), moves into Bs territory and sues B for TM infringement(b)W/in Bs jurisdiction, B owns that mark because consumers associate that product

with Bs territory

(c)As natural zone of expansion did not fall w/in Bs jurisdiction(d)Constructive use wont help A here because of the earlier use exception

(i)Dont get constructive use and constructive notice confused (kicks in at the timethe registration issues)

ii) Common law principle Tea Rose/Rectanus Doctrine(1)Has been carried into the Lanham Act(2)Under the act today, if Bs first use of the mark took place before A filed to get a

registration, and B is a good faith junior user in a remote geographic area, B has better

rights to the use of that mark in that remote geographic area and can even expand its


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use of the mark up until the time that a registration issues in favor of A, at which point

Bs geographical expansion is cut off

iii)Presumption of federal registration(1)Registration presumes you get the right to use the mark nationwide

iv)Concurrent Use(1)As a general rule in concurrent use proceedings between to applicants, the senior user is

entitled to a registration covering the entire US, less the area in which the junior user

has established territorial rights.

(a)But, territorial rights need not to be coextensive with territorial usev) Constructive Notice v. Constructive Use

(1)Constructive Notice 2 consequences(a)Prevents a junior user who begins her use after the date of the senior user's

registration from acquiring any right to use the mark, and

(b)It confines the rights of any senior, unregistered user to the territory that the useroccupied at the time of the registration

(2)Constructive Use(a)Prevents a junior user from acquiring any right to use the mark after the

application's filing date, so long as a registration ultimately issues; it does not,

however, freeze the rights of any senior unregistered user

vi)Related Use Doctrine(1)A - uses mark on shirts(2)B - uses mark on socks(3)A - uses mark on socks

(a)Who has better right to the use of the mark on socks ?(b)A would be considered to have better rights because of the relatedness of the goods

b) Rights Dilution Under State Lawi) One can recover on dilution, even though there is no likelihood of confusion. There can still

be injury to the selling power of the trademark

ii) Standard to make a claim under dilution:(1)Marks must be very or substantially similar, absent such similarity, there can be no

viable claim of dilution

iii)2 ways to show dilution of a mark:(1)Blurring - Diluting of the distinctiveness of the Ps mark

(a)If a reasonable buyer is not at all likely to link the two uses of the trademark in his orher own mind, even subtly or subliminally, then there can be no dilution

(i)Dilution theory presumes some kind of mental association in the reasonablebuyers mind between the two partys uses of the mark


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(ii)This mental association may be created where the P's mark is very famous andtherefore has a distinctive quality for a significant percentage of the defendant's

mar

(2)TarnishmentDs use of the mark tarnishes the reputation of Ps mark(a)Generally talking about situations where D's use of its mark is in connection with

shoddy merchandise or in connections with something that some people might

consider to be offensive in some way.

iv)Factors militating against finding of dilution:(1)Ps mark must possess a distinctive quality capable of dilution(2)Plaintiff must show a likelihood of dilution

c) Rights Dilution Under Federal Lawi) Federal Trademark Dilution Act (FTDA)

(1)Defines dilution as the lessening of the capacity of a famous mark to identify anddistinguish goods or services

(2)Congress said the test for recovering for dilution is no longer the need to show actualdilution but likelihood of dilution is sufficient

ii)As in state law, federal dilution is actionable in 2 situations:(1)Dilution byblurring

(a)An association arising from the similarity between a mark or trade name and afamous mark that impairs the distinctiveness of the famous mark and may be found

regardless of the presence or absence of actual or likely confusion, of competition, or

of actual economic injury

(b)6 factors to determine whether there is dilution by blurring(i)The degree of similarity between the mark or trade name and the famous mark

1. In determining similarity, consider differences in the ways the marks arepresented, look to the overall impression created and the context

(ii)The degree of inherent or acquired distinctiveness of the famous mark(iii)The extent to which the owner of the famous mark is engaging in substantially

exclusive use of the mark

(iv)The degree of recognition of the famous mark(v)Whether the user of the mark or trade name intended to create an association

with the famous mark(vi)Any actual association between the mark or trade name and the famous mark.

(2)Dilution bytarnishment(a)Dilution by tarnishment is an "association arising from the similarity between a

mark or a trade name and a famous mark that harms the reputation of the famous

mark

(b)TM may be tarnished when(i) Linked to products of shoddy quality


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(ii)Portrayed in an unwholesome or unsavory context, with the result that the publicwill associate the lack of quality or lack of prestige in the defendants good with

the Ps unrelated goods

d) Limitations on Rightsi) Fair Use

(1)Classic Use for fair use:(a)Using a term in its primary descriptive manner to describe and aspect of its product

or service.

(i)In these cases the D is using the term in issue not as a TM but just to describesome aspect of its product.

(ii)Arises where P's mark starts at merely descriptive, acquires secondary meaning,and then somebody else wants to use that term to describe some aspect of their

product. The D has to be allowed to do that to describe their product

(2)Nominative Fair Use(a)D is using the term at issue to describe the Ps product, or referring to the P(b)Commercial user entitled to the nominative fair use defense if 3 requirements are

met:

(i)The product or service in question must be one not readily identifiable withoutuse of the trademark;

(ii)Only so much of the mark or marks may be used as is reasonably necessary toidentify the product or service; and

(iii)The user must do nothing that would, in conjunction with the mark, suggestsponsorship or endorsement by the TM holder

(c)Policy - the D is not trying to trade on the good will of the Ps mark, but merelyreferring to the Ps mark as a short hand reference where there is really no other way

of doing it. Not using the term at issue as a source identifier

(3)Parody(a)Defined as a simple form of entertainment conveyed by juxtaposing the irreverent

representation of the TM with the idealized image created by the mark's owner

(b)A parody must convey two simultaneous - and contradictory - messages:(i)That it is the original,(ii)But also that it is not the original and is instead a parody

1. This message must not only differentiate the alleged parody from the originalbut must also communicate some articulable element of satire, ridicule,joking, or amusement

e) Limitations on Dilutioni) Literary titles do not violate Lanham Act unless:

(1)The title has no artistic relevance to the underlying work whatsoever, or, if it has someartistic relevance, unless the title explicitly misleads as to the source or the content of

the work


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ii) 3 statutory exemptions potentially dilutive by nevertheless permitted:(1)Comparative advertising(2)News reporting and commentary(3)Noncommercial use

(a)Noncommercial use refers to a use that consists entirely of noncommercial, or fullyconstitutionally protected, speech

(b)Def'n ofcommercial speech: "although the boundary between commercial andnoncommercial speech has yet to be clearly delineated, the 'core notion ofcommercial speech' is that is 'does no more than propose a commercial

transaction.'

iii)Parody(1)A parody is not automatically a complete defense to a claim of dilution by blurring

where the defendant uses the parody as its own designation of source, i.e. as a

trademark

(a)Parody only protected by fair use defense only if the parody not a designation ofsource for the persons own goods or services

f) Remediesi) Accounting of Profits

(1)Should be granted if:(a)The defendant is unjustly enriched(b)If the P sustained damages from the infringement, or(c)If an accounting is necessary to deter a willful infringer from doing so again

ii) 90-95% of TM cases, if successful in establishing liability, you are going to get an injunctioniii)Statutory (sect. 35 of Lanham Act)

(1)In certain circumstances where the defendant has been found to be particularlyegregious, the court can treble (3x) the damages

(2)In exceptional cases, the P can recover its attorneys feesiv)Award of profits

(1)If the P can show that the D acted willfullyv) Burden

(1)P has burden to show what the profits are, and then the burden shifts to the D to show ifthere were any deductions

vi)Actual Damages(1)Damages can consist of loss sales, lesser or lower profit margin(2)Many courts will say you cannot get an award of damages unless you can show actual

confusion

(3)Cannot recover for the same injury twice, so if your injury is already being compensatedthrough lost sales, your not going to be awarded damages through loss profits

vii)Dilution remedies


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(1)Unless you can establish that D acted willfully the remedy is only going to be aninjunction

g) Secondary Liabilityi) Contributory Infringement

(1)If a mfr or distributor intentionally induces another to infringe a TM, or if it continues tosupply its product to one whom it knows or has reason to know is engaging in TM

infringement, the mfr or distributor is contributorially responsible for any harm done asa result of the deceit

ii) Contributory infringement and Service providers(1)Service provider may be contributorially liable for infringing conduct of another if:

(a)If the service provider "intentionally induces another to infringe a TM, and(b)If the service provider continues to supply its service to one whom it knows or has

reason to know is engaging in TM infringement

(i)More than general knowledge or reason to know that its service is being used tosell counterfeit goods

(ii)Some contemporary knowledge or reason to know of which particular listings areinfringing or will infringe in the future is necessary

(2)Cannot be liability under secondary liability unless there is direct liability/infringement(3)Service provider not permitted willful blindness cannot shield itself by looking the

other way

(a)Willful blindness is equivalent to actual knowledge for purposes of the Lanham Acth) Infringement

i) Polaroid factors to help determine whether Ds mark infringes Ps mark:(1)Strength of P's mark

(a)Refers to distinctiveness of the mark, its tendency to identify the goods sold underthe mark as emanating from a particular source

(b)Determined by looking at two things:(i)Conceptual strength

1. Generic, descriptive, suggestive, arbitrary, or fanciful?(ii)Commercial strength

1. Same factors to determine whether secondary meaning exists2. Depends on actual market place recognition(2)Similarity of the marks

(a)Sight, sound, connotation or commercial impression(3)Similarity of the goods or services (proximity of the goods)

(a)Goods dont have to be identical or even be competitive but have to be related inenough ways so that there is a likelihood of confusion

(i)Closer the marks, further apart the goods can be(ii)Closer the goods are, further apart the marks can be

(b)Measured by whether the products are: (1) complementary; (2) sold to the same classof purchasers; and (3) similar in use and function


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(i)Proximity becomes less important when the products are adequately labeled andthe consumers are more sophisticated because then consumers would merely be

confronted with choices among similar products.

(4)Actual confusion(a)Usually dont have to show actual confusion in order to win(b)Sometimes actual confusion is difficult to obtain

(5)Sophistication of the purchasing public(a)The more expensive the product is, the more care the consumer will exercise before

making the purchasing decision, therefore the less likely that person will be confused

(6)Intent(a)Dont have to show intent to win(b)But if there is evidence of bad faith, most often the P is going to win

(7)Marketing channels(a)i.e. Retail v. wholesale

(8)Advertisingii) No side by side comparison

(1)However if the products would be side by side in a grocery store then such comparisonwould be appropriate

iii)Anti-Dissection Rule(1)Analyzing two marks for likelihood of confusion when they consist of more than one

work and a design

(a)They have to be looked at in their entireties, but its not improper to give more weightto the more distinctive part of the mark

i) Trade Dress and Federal Unfair Competition Lawi) Trade Dress

i) Defn overall appearance or image of a businessii) Essentially 2 branches of trade dress protection:

(1)Packaging(2)Product design/product configuration

iii)Trade dress must be nonfunctional(1)In order for trade dress to be protectable/for P to prevail, the trade dress has to be

non functional

(a)A product feature is functional if it is essential to the use or purpose of the articleor if it affects the cost or quantity of the article(b)Competitive necessity

(i)A functional feature is one the exclusive use of which would not putcompetitors at a significant non-reputation-related disadvantage

(ii)Looking at competitive necessity is appropriate in cases of aestheticfunctionality


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(c)If the trade dress is not registered, then the burden is on the P to establish thatthe trade dress is nonfunctional

(i)Also have to establish likelihood of confusion generally look to same factorsas word marks

iv)No special rules w/r/t trade dress general principles in the Lanham Act applyv) Product design v. Packaging

(1)Difficult to distinguish between product design and product packaging(a)However, to the extent that these are close cases, courts should err on the side of

caution and classify ambiguous trade dress as product design

(i)Product design Can never be inherently distinctive1. Cannot be protected under section 43(a) w/out a showing of secondary

meaning


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Patent Law

1) Requirements for Protectiona) Statutory Subject Matter (35 USC 101)

i) Live, man-made micro-organism is patentable subject matter under 101 (Chakrabarty)(1)By using the language any manufacture or composition of matter, Congress

contemplated that patent laws should be given wide scope

ii) 3 exceptions to 101s broad patent-eligibility:(1)Laws of nature(2)Physical phenomena(3)Abstract ideas

iii)Process Patents(1)Federal Circuits test for determining patent eligibility of a process:machine ortransformation test:

(a)a claimed process is surely patent-eligible under 101 if: (1) it is tied to a particularmachine or apparatus, or (2) it transforms a particular article into a different state or

thing

(2)SCOTUS said machine or transformation test not the sole test for determining patenteligibility of a process, but rather a useful and important clue, an investigative tool, for

determining whether some claimed inventions are processes under 101.

iv)Business Method Patents(1)No categorical exclusion of business method patents

v) Process patents including a law of nature(1)If a law of nature not patentable, then neither is a process reciting a law of nature

(a)Unless that process has additional features that provide practical assurance that theprocess is more than a drafting effort design to monopolize the law of nature itself

Statutory Standards

1) Novelty (35 USC 102)a) Prior knowledge? 2 criteriai) Prior knowledge of an invention must be publicly known, not secretii) Public knowledge standard:

(1)In order for there to be public knowledge, should look to whether the disclosure issufficient to enable one skilled in the art to reduce the disclosed invention to practice

(2)Does not need to be reduced to practice to be prior knowledgeb) Effective 102 refusal:


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i) The single reference has to disclose every element of the claimed invention, either explicitlyor inherently

c) AIA changesi) SEE NOTE 2 PG 457

d) On-sale Bar (102(b))i) Applies when two conditions are satisfied before the critical date (1 year before the filing

of the patent application)

ii) Precludes the patenting of an invention if the invention:(1)Is the subject of a commercial offer for sale and(2)Is ready for patenting

(a)Can be proved if:(i)Invention has been reduced to practice before critical date or(ii)Sufficiently described, prior to the critical date, to enable a person skilled in the

art to practice the invention

e) Grace periodi) One year grace period that the device can be on sale before you have to file patent

application

(1)If you file w/in grace period, then the on-sale activity is not invalidating prior art(2)If filing occurs more than one year before filing date, then the inventor loses the right to

the invention and loses the right to get a patent

ii) Policy if it out there for the public, people have a reasonable expectation that it is in thepublic domain

iii)This grace period exists in new AIAf) Statutory Bar - Public Use Bar (102(b))

i) "[a] person shall be entitled to a patent unless(b) the invention wasin public usein thiscountry, more than one year prior to the date of the application for patent in the United

States."

ii) Non-secret use?(1)Non-secret use prior to patenting does not in itself invalidate the patent

(a)So long as the pre-patent use is controlled by the inventor and the invention is notmade available to the public at large, non-secret use is ok

iii)Policy:(1)Encourages inventors to assert their right to a patent with due diligence.(2)Simultaneously, it protects the public in its use of invention,

(a)Encourages prompt disclosure of new and useful information, and(b)Discourages attempts to extend the length of the period of patent protection.

iv)Experimental Use(1)If experimental use applies, then the statutory bar and grace period are not applicable(2)SEE FACTORS, NOTE 6 PG. 477


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v) Presumption of Validity(1)35 USC 282 places the burden of proof upon the party attacking the validity of the

patent, and that burden of persuasion does not shift at any time to the patent owner

vi)Changes under the AIA(1)If you, the inventor, disclose it within one year prior to the filing date, you're ok(2)If you disclose, and then someone else discloses, and then you file w/in one year from

youre disclosure, then youre also ok(3)PTO's interpretation - if you disclose w/in one year, and then somone else dislcoses

something very similar to what you have done, then you cannot take advantage of the

grace period because it occurred prior to the filing of your application

vii)Another major change(1)AIA establishes a grace period in some cases of third party disclosure, but for an

inventor to qualify he or she must disclose prior to the third party disclosure.

(a)If not, there is no grace period and later filed patent application will fail novelty test.(b)If you do, then as long as you filed within one year of first disclosure (your

disclosure, not the third party's disclosure), then the application will meet 102(2)This is a departure from old law, which incurred a once year grace period

g) Priority (35 USC 102(g))i) Under current law, patent granted to thefirst to invent, not first to apply

(1)If the first inventor resumes work on the invention before the second inventor begins,the patent goes to the first inventor

(a)The first inventor can show activity following reduction to practice to rebut anassumption of concealment or as evidence of renewed activity regarding the

invention

(2)Concealment(a)Legal inference of concealment based on "too long" delay between reduction to

practice and application can be rebutted with evidence of resumption of activity on

the invention prior to the earliest date to be claimed by the second inventor

ii)AIA Changes(1)102(g) is not carried forth in new AIA

(a)Going to a first to file system gets rid of priority contests between two inventors ininference proceedings

(b)Primary difference when we go to first to invent system is that we still have a graceperiod, whereas in the rest of the world there is no grace period. Other countries are

absolute novelty requirement

(2)Emphasize that we are moving to first inventor to file(a)Derivation proceeding - allows the true inventor to institute this proceeding and

have the PTO make a determination as to who was the true inventor

(3)Prior User Rights - note 4 pg. 484


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2) Nonobviousness (35 USC 103)a) 103 - Patentability is to depend, in addition to novelty and utility, upon thenon-obvious

nature of the subject matter sought to be patented to a person having ordinary skill in the

pertinent art

b) Standard:i) Whether the inventions set forth in the claims, each as a whole, would have beenobvious to

one of ordinary skill in the artwhen they were made, in view of the teachings of the prior

art as a whole

c) SCOTUS provided an analytical framework here that the courts and PTO can utilize in makingthe nonobviousness determination:

i) Scope and content of prior art(1)PRIOR ART Any prior knowledge or activity regarding a particular invention, that

may be considered by the Patent and Trademark Office, in granting or denying a patent

application or by the court in determining a patent infringement action(2)Standard:

(a)Is it reasonably pertinent to the particular problem with which the inventor wasinvolved?

ii) Differences between claimed invention and the prior artiii)Ordinary skill in the artiv)Secondary considerations

(1)Commercial success:(a)In order for commercial success so show non-obviousness, you also have to show

there is a nexus between the commercial success enjoyed by the product and the

invention. If the commercial success is attributable to the fact that the company has

a large marketing budget, then the fact there is commercial success is not going to be

particularly relevant

(2)Long felt but unsolved needs,(3)The failure of others,(4)Industry acquiescence

(a)One way it can be demonstrated is if a number of other companies in the industryhave taken a license - leads the courts to assume that the taking of a license showsthe invention is valid because otherwise you wouldnt take the license

d) Obviousness is a legal question based on factual evidencee) AIA Changes

i) Under AIA nonobviousness will be measure at the time of filing, not at the time of invention


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f) KSR and the TSM Testi) Teaching, suggestion, motivation test used by the Federal Circuit:

(1)A patent claim is only proved obvious if "some motivation or suggestion to combine theprior art teachings" can be found in the prior art, the nature of the problem, or the

knowledge of a person having ordinary skill in the art."

(2)The logic behind this test was that hindsight was the real problem with patent law(3)The other thing that was happening was the insistency on using secondary

considerations

ii) SCOTUS inKSR said that the TSM test is not the end all be all test its a good startingpoint but it shouldnt be trapped in the rigidness of finding some motivation

(1)Also said, w/r/t determining scope and content of prior art,(a)Youre not limited to prior art focusing on the particular problem which the patentee

is addressing, but the particular problem that is being addressed by the patent claims

- its a broader inquiry

(2)Obvious to try(a)SCOTUS said obvious to try is a relevant factor(b)A person of ordinary skill is also a person of ordinary creativity, not an automaton(c)It determining whether something is obvious you have to apply common sense

g) Section 102 and 103 in Concert: What is Prior art?i) When does something become prior art?

(1)The disclosures contained in the patent become a part of the prior art as of the time theapplication was filed, not at the time the patent is issued

(2)A co-pending application in the PTO is prior art:(a)"The delays of the patent office ought not to cut down the effect of what has been

done[the first applicant] had taken steps that would make it public as soon as the

Patent Office did its work, although, of course, amendments might be required of

him before the end could be reached. We see no reason in the words of policy of the

law for allowing [the second applicant] to profit by the delay."

ii) Difference between novelty and loss of right(1)There may be novelty when an inventor invents his invention, but if he sleeps on his

rights and does not file he will not be entitled to a patent as a matter of policy

(a)What starts the period running is clearly the availability of the invention to thepublic through the categories of disclosure in 102(b), which include a printedpublication anywhere describing the invention.

(i)If the reference contains enough disclosure to make his invention obvious, theprinciple of the statute would seem to require denial of a patent to him

(ii)The same is true where a combination of two publications or patents makes theinvention obvious and they both have dates more than a year before the filing

date


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3) Utilitya) 35 U.S.C.S. 101 Whoever invents or discovers any new andusefulprocess, machine,

manufacture, or composition of matter, or any new and useful improvement thereof, may

obtain a patent therefor, subject to the conditions and requirements of this title.

i) Law requires that the invention not be frivolous or injurious to the well-being, good policy,or sound morals of society

ii) No qualification of general utility in the statutesb) Process claims

i) Until the process claim has been reduced to production of product shown to be useful, themetes and bounds of that monopoly are not capable of precise delineation

ii) Unless and until a process is refined and developed to this point where specific benefitexists in currently available form there is insufficient justification for permitting an

applicant to engross what may prove to be a broad field

iii)A patent is not a hunting license. It is not a reward for the search, but compensation for itssuccessful conclusion

4) Inventorshipa) For a valid patent to issue, the claimed invention must have originated with the applicant or

applicant

i) The law is that the inventor or inventors are the ones who are entitled to a patent5) Enabling Disclosure (35 USC 112)

a) Contains the written description, enablement and best mode requirementsi) Subjective tests

b) Best mode requirement is subjective to the inventor at the time of filingi) You have to disclose best mode to get your patent,

(1)But if you get your patent it wont be invalidated if you did not disclose best modec) Subsequently developed formulae cannot be used to render non-enabling or indefinite that

which was enabling and definite at the time the application was filed

i) A patent is not invalid because of a need for experimentation(1)A patent is invalid only when those skilled in the art are required to engage in undue

experimentation to practice the invention

ii) Distinguishing what infringes from what doesnt is the role of the claims, not thespecification.

Infringement

1) Direct Infringement (aka literal infringement)a) Look at the claims and the infringed product. Does it contain each and every element of the

claimed invention?

i) If it does, there is direct infringement and it is the end of the case


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2) Doctrine of Equivalentsa) Rule that two inventions are the same for purposes of patent infringement if they achieve

essentially the same result in the same manner despite trivial differences

i) If the alleged infringing product has the same function, operates in the same way, andproduces the same result, then there is infringement under the doctrine of equivalents

ii) Probative Inquiry in determining equivalence:(1)Does the accused product or process contain elements identical or equivalent to each

claimed element of the patented invention

b) Doctrine of equivalents must be applied to individual elements of the claim, and not to theinvention as a whole

c) Proper time for evaluating equivalency is at the time of infringement, not at the time the patentwas issued

3) Prosecution History Estoppel (aka File Wrapper Estoppel)a) Available as a defense to infringement

i) States that the difference between the original claims the claim and narrowed/amendedcannot be recaptured

(1)Not going to be able to rely on the doctrine of equivalents to recover on a claim ofinfringement based on the doctrine of equivalents

ii) If alleged infringer raises prosecution history estoppel, patentee must show that thepurpose for the amendment was not related to patentability

(1)If they are successful, the doctrine of prosecution history estoppel is precluded(a)However, if they are not successful in establishing such a purpose, a court should

presume that the purpose behind the required amendment was related to

patentability

(2)Presumption places burden on patentee to show:(a)The amendment was not made for any reason dealing with patentability (i.e. to avoid

prior art), and

(b)That the amended claim might still be infringed under the Doctrine of Equivalentsiii)Scope of Prosecution History Estoppel

(1)May apply to any claim amendment made to satisfy Patent Acts requirements(2)Amendment is not an absolute bar to a claim of infringement under the doctrine of

equivalents

Rights and Remedies

1) Rightsa) Right to exclude is the patent monopoly for a period of 20 years

i) One infringes a patent if he begins manufacture of a patented product during the life of thepatent, even if he does not complete it until after the patent's expiration

ii) Repair does not infringe


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(1)One does not infringe a patent when he replaces worn-out parts on a patented productwith parts that alter its function

iii)Reconstruction, however, does infringe.(1)It is a form of making, which is specifically included in statutory language

2) Remediesa) 35 USC 284 damages adequate to compensate for the infringement 2 methods:

i) Reasonably royalty(1)This is a floor for damages(2)Recoverability:

(a)To find an award for reasonable royalty - court puts itself in the position of theparties at the time the infringement took place

(i)Look to similar agreements for similar technologies.(ii)Or better yet, if the patentee has licensed its product to others, what are its

terms?

ii) Lost profits(1)Theory as a result of the infringement, I have lost money on those sales(2)Recoverability:

(a)Patentee must show a reasonable probability that but for the infringement, itwould have made the sales that were made by the infringer

(b)If a particular injury is reasonably foreseeable by an infringing competitor, then thatinjury is generally compensable

(3)Patentee is entitled to all the damages that flow from the infringement of themanufacture or sale of his/her invention

(a)Entire market value rule:(i)If there is some functional relationship between the patented and unpatented

items, then the patentee could recover damages based on lost sales or reasonable

warranty based on the unpatented component

(ii)I.e. damages for unpatented component parts are recoverable if they functiontogether with the patented component to produce a desired result

1. If they can work independently shows no functional relationshipb) Permanent injunction

i) Not automatic upon finding of infringementii) Must go through the consideration of all the equitable factors to determine if permanentinjunction appropriate

c) Lachesi) If alleged infringer succeeds on a laches defense, patentee is barred from recovering based

on activity occurring before the suit

ii) But, patentee not barred on recovering based on what took place after the suit and notbarred from getting an injunction


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d) Equitable Estoppeli) Where an alleged infringer establishes the defense of equitable estoppel, the patentee's

claim may be entirely barred

Preemption

1) Unfair Competition and Trademark Lawa) A states unfair competition law cannot impose liability for, or prohibit, the copying of an

article which is unprotectable under either federal or copyright lawsi) These unprotected articles are in the public domain, therefore a state cannot prevent the

copying of such an article on the basis that its unfair competition law would be violated due

to the probability of confusion as to source

2) Trade Secret Lawa) Federal law does not preempt state trade secret law

i) Preemption will only be found if state trade secret law interferes with the policiesunderlying patent law

b) In cases where the trade secret is not patentablei) No conflict in this context, as trade secret law takes nothing from patent law

c) In cases where a trade secret is also patentable creates greater conflicti) The real conflict is disclosure, basic quid pro quo of patent law requires disclosure, but this

is not so in trade secret law

(1)However, the advantages of patent are so great, that as a matter of practicality, onepossessing a patentable product will always opt for the patent as opposed to trade secret


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Copyright Law

1) Requirements for Protectiona) Formalities Notice and Publication

i) Copyright Act of 1976 (17 USC) is operative statute(1)Says that copyright subsists when you have 2 events occurring:

(a)Original work of authorship(b)Work fixed in a tangible medium of expression

(2)Term of protection = life of author + 70 yearsii) Berne Convention 1989 Amendments to the act

(1)No longer require copyright noticeb) Formalities Registration and Deposit

i) Do not have to register your copyright, but there are good reasons to do so:(1)

If you register w/in first 5 years of publication is prima facie evidence of validity ofregistration

(2)Most important - If you do sue somebody and are successful, you're probably going towant attorneys fees and statutory damages. You cant get either of these unless you

register your work w/in certain periods of time

(3)If you want to bring a suit and the workis protected under US copyright, it wasntalways clear if you could do so unless you had registration

c) Statutory Subject Matteri) Section 102 General Subject Matter of Copyright

(1)Original Work of Authorship(2)Fixation in Tangible Form

(a)A work would be considered fixed in tangible medium of expression if there has beenan authorized embodiment in a copy orphonorecordand if that embodiment "is

sufficiently permanent or stable" to permit the work "to be perceived, reproduced, or

otherwise communicated for a period of more than transitory duration."

(3)These two elements merge through fixation in order to produce subject mattercopyrightable under the statute(a)Distinction

(i)Object in which the original work of authorship is fixed1. can only be fixed in copies or phonorecords

(ii)Original work of authorship1. Can be in many forms

ii) Section 101 Categories of Works of Authorship:(1)Musical works; dramatic works; pantomimes and choreographic works; literary works;

pictorial, graphic, and sculptural works; motion pictures and audiovisual works; and

sound recordings


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iii)Idea/Expression Dichotomy

(1)Copyright does not protect the underlying idea, only protects the expression of that idea(a)i.e. the protection afforded by a copyright on a book explaining an art or system

extends only to the authors unique explanation thereof and does not preclude others

from using the system or the forms necessarily incidental to such use

d) Originalityi) Has to be an independent creation with a degree of minimum creativity

(1)If you independently created it and it contains some degree of creativity, it will be anoriginal work

ii) Judges are not equipped to judge art, and even if they were, they dont want to bemakingvalue judgments

iii)Facts are not copyrightable, but compilations of facts are(1)No one can claim originality to facts b/c they do not owe their origin to an act of

authorship

(2)Factual compilations, however, may possess the requisite originality(a)Compilations are selected, coordinated, and arranged facts. These selections,

coordinations, and arrangements are the only things protected, not the underlying

facts

2) Ownershipa) Default rule person who created the work, authored the work, owns the copyright to the work

i)

Exception work made for hire doctrine(1)If a work is considered to be made for hire, then the employer is considered the authorof the work

(2)Significant consequences if work determined to be a work made for hire:(a)Who owns the copyright?(b)How long does the copyright last?(c)Whether any assignments or licenses granted under the copyright may be terminated

under the termination of transfer provisions

(3)Work is created for hire if:(a)The work is created by an employee within the scope of his employment(b)Employee: defined by common law agency principles

(i)One party performs labor for another under circumstances in which that otherperson exerts substantial control over the work environment on the laborer, as

well as the manner of performance(c)Factors to consider:

(i)The level of skill required, tax treatment of the putative employee, the singlenessof the assignment, and the source of the instrumentalities of the labor


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(ii)How someone is compensated goes a long way in determining whether someonehas created a work made for hire or not

b) Joint Worksi) Defn a work prepared by two or more authors with intent that contributions be merged

into a whole

ii) Collaborative contribution produces a joint work when:(1)The contribution represents original expression that could stand on its own as the

subject matter of the copyright

(a)i.e. each part has to be separately copyrightable(2)Parties must have intended to be joint authors at the time the work was created

iii)Rights of Joint Authors(1)Joint authors hold undivided interests in a work, no matter how minor their

contribution

(2)Each author, as co-owner, has the right to use or license the use of the work, subject toan accounting to the other co-owners for any profits

c) Transfers of Ownershipi) Distinguish between collective work and compilation

(1)Compiliation each independent part is not copyrightable(2)Collective work each independent part is copyrightable

ii) 201(c) Absent an express transfer of the copyright or any rights under it, theowner ofthe copyright in the collective workis presumed to have acquired only:(1) The privilege of reproducing and distributing the contribution as part of that particular

collective work(2)Any revision of that collective work, and(a)Revision denotes a new version

(3)Any later collective work in the same seriesiii)Protects freelancers copyright in his or her contribution

3) Rights and Remediesa) Rights 5 Fundamental Rights for Copyright Owners:

i) Reproduce as copies or phonorecords(1)Right to copy not limited to exact reproductions(2)A work has to be fixed in order for it to be a copy

(a)In order to be fixed, the work has to be:(i)An embodiment sufficiently permanent or stable for it to be reproduced(ii)Has to be for a period of more than transitory duration

ii) Prepare derivative works based on copyrighted work(1)Derivative work defined as anyform in which a work may be recast, transformed, or

adapted


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(2)Derivative work is based on a pre-existing work, but the copyright in the derivative onlycovers that in the derivative which is original to the derivative(a)The copyright in the original work belongs to the owner of the underlying work, but

by definition, a derivative work has additional, new copyrightable material, which is

not in most cases attributed by the original copyright owner, but the owner of the

original copyright owns the new copyrightable derivative part

(3)Statutory examples:(a)Translation, musical arrangement, dramatization, fictionalization, motion picture

version, sound recording, art reproduction, abridgment, condensation, or any other

form in which a work may be recast, transformed, or adapted. A work consisting of

editorial revisions, annotations, elaborations, or other modifications which, as a

whole, represent an original work of authorship, is a derivative work

(4)Some courts have held that framing and other methods of mounting do not infringe theauthors right to make derivative works

(a)This is because it does not possess a sufficient level of creativityiii)Distribute copies or phonorecords of the copyrighted work to the public by sale or other

transfer of ownership

(1)Closely tied to the right to copy(2)An important limitation on the right to distribute is the first sale doctrine (section

109(a) of the copyright act)(a)Provides that if the copyright owner parts w/ title to a particular copy of a work, then

he or she at that point loses all control over use of that work by the purchaser

(i)The theory is that the consideration that is provided by the sale of the work wouldcover any subsequent use of that work by the purchaser

(ii)Only goes to that particular copy(3) Related right importation right section 602 of the Act(a)Prohibits the importation into the united states of copyrighted works acquired

abroad

iv)Public Performance(1)In general, no public performance rights in sound recordings

(a)Artists get no money from their music being played on the radiov) Public Display

b) The first 3 rights apply to all copyrighted works. Close relationship between the first three, inmany cases the alleged infringer is found to infringe all 3 of these rights

c) Limitationsi) Fair Use

(1)This doctrines notion is that one using a copyrighted work should not have to obtain acopyright holders permission to use the copyrighted work in a situation where a

reasonably copyright holder would in fact grant permission


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(2)Four factors to be considered in determining whether fair use:(a)Purpose of the use

(i)Commercial or non-profit?1. The crux of this distinction is whether the user stands to profit from

exploitation of the copyrighted material without paying the customary price

2. If a use is commercial as opposed to non-profit, that weighs against a findingof fair use

(ii)If the work essentially supersedes the original, chances are youre not going tohave fair use

(iii)Transformative use?1. Weighs toward a finding of fair use2. By transforming, youre not superseding the original and its not acting as a

substitute

(b)Nature of the copyrighted work(i)The law generally recognizes a greater need to disseminate factual works as

opposed to fiction/fantasy

(c)Amount and substantiality of the portion used(i)Have to weigh both quantity and quality of what was taken

1. No plagiarist can excuse the wrong by showing how little he did not pirate2. Conversely, if a substantial portion of what was copied is verbatim, that is

evidence of qualitative value of the copied material

3. Even if small amount copied, if what was copied is of high expressive valueand plays a key role in the infringing work, that weighs against fair use

(d)Effect on the market(i)Most important element of fair use(ii)To negate fair use, one need only show that if the challenged use should become

more widespread, it would adversely affect thepotentialmarket of the

copyrighted work(iii)Must also take into account the harm to the derivative market

(3)Parody(a)Affirmative defense to an action for copyright infringement under the fair use

doctrine that the infringer's use of the copyrighted material was permissible for thepurpose of criticism or satire

(b)Applied to amount and substantiality factor:(i)In order for it to be a Parody, people have to understand that is a parody, people

have to understand what it is that youre making fun of

1. Otherwise it would not be an effective parody


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ii) Secondary Liability(1)Vicarious Liability:

(a)There must be control over the infringing activity and there must be a financialbenefit over the infringing activity to be held for vicarious liability

(2)Contributory Liability:(a)There must be knowledge of the infringing activity and material contribution to the

infringing conduct to be held liable for contributory liability

d) Exclusive Rights and New Technologiesi) If a machine which copies is capable of substantial, non-infringing uses, then it is going to

be found to be non-infringing, and you cant hold defendant liable for contributory

infringement

ii) Have to analyze these cases on a case by case determination, taking a holistic approach andweigh every factor where theyre applicable

iii)Inducement Rule (1)Premises liability on purposeful, culpable expression and conduct(2)One who distributes a device to promote its use to infringe copyright as shown by

affirmative steps to foster infringement, is liable for the resulting acts of infringement by

third parties

4) Infringementa) Infringement = copying AND unlawful appropriation

i) If a party engages in just copying but does not unlawfully appropriate, then there is noliability, and vice versa. There has to be both

ii) Copying(1)Usually has to be established through circumstantial evidence(2)Most important circumstantial evidence is proof of access

(a)May be able to offer proof of direct access.(3)Inference of access

(a)May be established circumstantially by proof of striking similarity(i)This inference says that the possibilities of independent creation, coincidence and

prior common source are, as a practical matter, precluded

(b)If successful, copying is presumably proved simultaneously(c)However, although proof of striking similarity may permit an inference of access, P

must still meet some minimum threshold of proof which demonstrates that the

inference of access is reasonable

iii)Unlawful appropriation 2 different issues to look at(1)Look at Ps work and pull out the uncopyrightable material from the copyrightable

expression, only want to protect that which is protectable


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(2)Compare that which is protected with the defendants work, and then make adetermination as to whether those works based on that comparison are substantially

similar(a)Need substantial similarity of protectable expression

b)Abstractions testi) The more general or abstract, to the extent that the similarities relate to general concepts,

then its less likely that the courts are going to find infringement(1)Its only where the similarities are more of a concrete expression where youre going to

find infringement

Documents

Fundamentals Of Intellectual Property Outline