IPSurveyOutline Franklyn Fall2010.Doc (1)

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IP Survey. Franklyn. Fall 2010

COPYRIGHT

ATTACK PLAN

I. Validity: Is the work protected by copyright1. work of authorship : which of the 8 categories is it in

i. Ideas, methods, systems are excludedii. Useful article doctrine

iii. Merger doctrine2. Fixed : Is the work fixed in a tangible medium of expression (unfixed works are not

eligible for federal copyright + creation must also be fixed under the authority ofthe author).

3. i) original and ii) creative? (this does not equal novelty) two different people canboth have copyright on the same exact picture if it was a coincidence, as long asthey made it themselves and there was a minimum requirement of creativity. This isnot like patent where one right holder excludes another from the same right.

4. Period of protection/ When was it created ? To determine whether the 1909 or 1976

Act applies and whether it is still in copyright as of todayII. Who owns the copyright?1. who was/were the initial owner(s) of the copyright

i. who had creative control (when joint situation)ii. is there possibility of joint copyright

iii. was it a work made for hire that gave copyright to someone else rather thanthe creator

2. was ownership transferred everi. any assignment/ exclusive license (exclusive licensee has standing to sue as

if he or she was the owner)ii. there has to be writing for transfer

III. Was the copyright infringed by the acts in question1. Rightsi. right of reproduction

ii. adaptation/ derivate worksiii. right of distributioniv. public performancev. public display

2. Infringementi. Copying (qualitative) a material (quantitative) amount OR

ii. Improper appropriationIV. Defenses

1.Affirmative defensesi. Fair use s107 (4 part balancing test)

1. purpose of Ds work or use2. nature of the Ps work3. amount/significance of work taken4. potential adverse economic impact on the market for P

ii. statutory exemptionsiii. compulsory licenses (pay and allowed to copy)


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iv. first sale doctrine2. no copying by proving independent creation3. not an improper appropriation de minimis copying4. no longer in copyright domain5. Never copyrighted or that it is not eligible to be copyrighted (i.e. not original

enough)6. the use does not fall into one of the categories of infringementV. Remedies

1. injunctive relief / monetary2. destruction of all infringing copies3. damages

i. actual out of pocket damages caused by the copying/infringementii. lost licensing fees (what the P could have gotten had he licensed the work)

iii. unjust enrichment or disgorgement4. statutory damages

i. Judge has discretion to award punitive damages of up to $150,000 per

occurrence of infringement. There are some rules of limitationii. Recoup attorney feesiii. However, if the case is brought wrongfully or frivolously, defendant has

right to recoup attorney fees

INTRODUCTION

A. The Lawi. Threshold is set forth in 102(a) of the Copyright Act: Copyright protection subsists,

in accordance with this title, in original works of authorship fixed in any tangiblemedium of expression, now known or later developed, from which they can beperceived, reproduced, or otherwise communicated, either directly or with the aid ofmachine or device.

ii.This creates 2 fundamental requirements originality and fixation.iii. By comparison, 102(b) denies copyright protection to any ideas, procedure,process, system, method of operation, concept, principle, or discovery

B. Theory of CopyrightUtilitarian/economic incentive theory:

Predominant justification in US; w/o protection, commerce wouldgrind to a halt. People wouldnt do anything creative w/o the incentive of amonopoly.

Labor theory: Sweat of the brow; author entitled to reap the benefits of her labor;primary justification in Europe

Neo-classical economic theory: Benefits society economically to keep things in private ownershipfor a long period ensure maximum exploitation by society. Justifieseternal copyright.


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Best way to ensure that the world has derivative works is to makesure the author has the rights to it. Author (rational self-maximizer) cancontrol the market to ensure balance between saturation and underexposure

Personhood theory: Reflection of the personality of the individual; moral rights (rather

than just commercial purposes). Keep others from mutilating your work,even if they own it.Rhetoric of the public domain: public interest against long/strong

Threshold: COPYRIGHTABLE SUBJECT MATTER

A. List (7 in 102+ 1 in 103) of copyrightable subject matteri. Literary works

including computer programs, structure, sequence organization words and short phrases are not protected (e.g. names, title, slogans)

ii.Musical works (including any accompanying words)iii. Dramatic works and Pantomime and choreographic

including any accompanying music, such as playsiv. Pictorial graphic and sculptural works (potentially broad enough to coverconventional sculptures and other 3D work, i.e. a podium or piece of furniture)

Useful article doctrine is a significant limitation Not judged based on artistic merit

v. Motion pictures Sound tracks treated as integral part of motion pictures

vi. Sound recording (separate from musicals).vii. Architectural works

Covers not only the blueprints and the plans, but also the building itself. Not analyzed under the useful article doctrine 2 limitations a) pictorial representations permitted (pictures, paintings

etc) and b) alterations to and destruction of buildings (building ownerdoes not require copyright owner consent)

viii. Derivative Works and Compilations of copyrightable subject matters Compilations and derivative works are specifically recognized by 103 as

copyrightable subject matter as long as it constitutes an original work ofauthorship and falls within one or more of the seven protected categorieslisted in 102.

Derivative work = requires a process of recasting based upon one or morepreexisting work, such as translation, musical arrangement, dramatizationetc.

Compilation = results from a process of selecting, organizing, andarranging previously existing material of all kinds, regardless of whetherthe individual items have been subject to copyright.

B. Not Copyrightable: Idea Expression Dichotomyi. 102(b) denies copyright protection to any ideas, procedure, process, system, method

of operation, concept, principle, or discovery


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ii.For a P to prove infringement of expression, the owner must show that the allegedinfringer took not just an abstract idea from his work, but copied the expression ofthat idea.

iii. The nature of functional works: Because functional works often closely integrate idea and expression, they

often conflict with copyright laws protection of original expression. Thisbasic principle is embodied in 102(b) When encountering functional work, courts will limit protection to avoid

conferring a de facto monopoly over the unprotectable aspects of thework.

Baker : cannot obtain a copyright excluding others from practicing whatwas taught in the book; Forms must necessarily be used as incident to theteaching of the systems.

F: P wrote a book about bookkeeping, feature method that

located all info onto 1 page. P sued D for infringement b/c Dused accounting forms similar to those featured in Ps book.

S Ct ruled in favor of D saying that the system could not becopyrighted, even if copyright of book is obtained, cannotprevent others from practicing what was taught in the book (Pdid not have patent protection). Also, the forms must necessarilybe used as incident to the teaching of the system. Thus, according to the court, the ledger was actually a

utilitarian object rather than an expressive work. Unlesscopyright was denied in this instance, a monopoly could ineffect be granted over the underlying idea of the system. Merger doctrine: When there is only one way or very few

ways to express an idea or method in a visual form, then BOTH

the expression and the idea are not copyrightable.

C. The Merger Doctrine (Defense)i. Definition: Courts will not protect a copyrighted work from infringement if the idea

underlying the work can be expressed only in one or a few different ways, for fearthat there may be a monopoly for the underlying idea.

ii.The key is how broadly you define the idea, its level of abstraction The more broad an idea -> more variety of available expression The more narrow an idea -> only a few ways to achieve that objective

iii. Morrissey v. Procter & Gamble , 1st Cit. p460 F: P is copyright owner of a set of game rules for sweepstakes contest

which asks applicants to print name, address, and social security numberetc including instructions for if applicant has no SSN, may use thename and number of any member of an immediate family member etc. Psues D for using the same set of instructions for its sweepstake.

R: Though there are more than one way of expressing this simplesubstance, Court holds for D. When the uncopyrightable subject matter isvery narrow, so that the topic necessarily requires if not only one form


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of expression, at best only a limited number, to permit copyright couldexhaust all possibilities of future use of the substance.

A: The Rule was so straightforward and simple that we find this limitingprinciple to be applicable.

H: In this case, copyright does not extend to the subject matter at all, and

P cannot complain even if his particular expression was deliberatelycopied.

ELEMENTS

A. Original Work of Authorshipi. 102(a) states Copyright subsists in original works of authorship.ii. originality requires

1. independent creation and2. modicum of creativity (de minimis)

iii. NOT copyrightable includes short phrases, such as names, titles, slogans; familiarsymbols or designs; mere variations of typographic ornamentation; lettering/coloring; mere listing

of ingredients1. fragmentary statements (clich) hang in there2. words dictated by functional considerations shake well before using3. translation from one medium to anothera. painting into print

iv. while facts are not copyrightable, compilation of facts may be if they feature originalselection or arrangement

1. protection would extend to only those original components2. there is no copyright protection for the facts and ideas, but possibly the

selection and arrangement of facts and ideasv. Feist Publication (p422)

F: Feist had copied information from Rural's telephone listings to includein its own, after Rural had refused to license the information. Rural had sued for copyrightinfringement.

S Ct held that Yellow page telephone numbers are not eligible forcopyright because the data itself is not creative, and the ordering of names is dictated by theworlds use of phone numbers. Compiling telephone books is not creative. no one may claimoriginality to facts because facts do not owe their origin to an act of authorship.

Court recognized factual compilations though, and said that they maypossess the requisite originality, including choosing how to arrange the collected data so that theymay be used effectively. These choices as to selection and arrangement entail a minimal degree ofcreativity that is sufficient. Thus, even though a directory contains absolutely no protectablewritten expression, it may meet the minimal requirement if it features an original selection orarrangement.

However, copyright in factual compilation is thin. A subsequent compilerremains free to use the facts contained in anothers publication to aid in preparing a competingwork, so long as the competing work does not feature to same selection and arrangement.

B. Fixation in Tangible Medium or Expression


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i. A work is fixed when it is placed in a relatively stable and permanent embodiment to permit thework to be perceived, reproduced or otherwise communicated. In effect, it must be written orrecorded in some manner. Thus, a mere performance of a work does not create copyright.

ii.Live broadcasts/transmissions are protected if recorded, even if recorded simultaneously w/transmission

iii. Unfixed work of authorship (e.g. improvisation) subject to State common law or statutoryprotection, but it is not eligible for Fed protection

C. Formalitiesi. Notice of copyright

1. 1909 Act : failure to give notice typically resulted in forfeiture of protection.2. 1976 Act (Pre-Berne): copyright protection begins upon creation,not publication. Failure to give notice will not result in forfeiture as long asit was inadvertent and holder registered the work w/I 5 years afterpublication and made r/s efforts to give notice after omission discovered.

3. Post-Berne (since 3/1/89): eliminated notice requirement.Publication of the work1. 1909 Act : protection triggered by publication, unpublished worksprotected by state common law, or constructively published by registration2. 1976 Act (Pre-Berne): protection triggered by creation of work fixedin tangible medium of expression. Publication determined when noticerequired.3. Post-Berne (since 3/1/89): w/ elimination of mandatory notice,publication no longer a factor in determining validity of works created after3/1/89; but still relevant for # of things (list on pg. 392).

i. Registration of the work w/ the Copyright Office1. Has always been voluntary, but required before bringinginfringement suit2. 1909 Act : registration required to renew copyright and pre-requisiteto bringing infringement action.3. 1976 Act (Pre-Berne): successful registration is prima facieevidence of the validity of the . Must register prior to infringement suit.Copyright holder can only obtain statutory damages and atty. fees forinfringements that occurred afterregistration.4. Post-Berne (since 3/1/89): still have to register prior to suit fordomestic works.

v. Deposit of a copy of the work w/ the Library of Congress1. 407 requires deposit of 2 copies of ea. workpublishedin the USfor which is claimed w/I 3 mo. after publication.2. Does not affect the validity of a or the authors right to bring suit.Failure to comply only results in a fine.3. Separate deposit w/ Copyright Office is required for registrationunder 408 (can be satisfied by compliance w/ 407 deposit).


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OWNERSHIP

A. Works made for hirei. 1909 Act : Works made for hire included any employee created works within the

scope of employment and anything that was commissioned by independentcontractor created works of the instance and expense of employer. This clearly

favors right of ERs (the commissioning party).ii.1976 Act: 101 Work to hire occurs under 2 circumstances:1. a work prepared by an EE w/n the scope of his or her employment;or2. a works specially ordered or commissioned for use as a contributionto a collective work, as a part of a motion picture or other audiovisual work,as a translation, as supplementary work, as a compilation, as an instructionaltext, as a test, as answer material for a test, or as an atlas, if the partiesexpressly agree in a written instrument signed by them that the work shallbe considered a work made for hire.

iii. Subdivision (1) applies to EEs

Read in connection with 201(b), which provides that ER or other person for whom the work wasprepared for is considered the author unless parties expressly agreed by written instrument. In otherwords, when a work is created by an EE w/n scope of employment, it is presumed to be made forhire unless the parties agree otherwise through K.

iv. Subdivision (2) applies to independent contractors Two limitations: must fall into one of the 9 categories AND the parties must expressly agree in k

that the work shall be considered work for hire. B/c the express agreement must indicate unambiguously that the parties agree to a work made for

hire, thus, a check endorsement legend that mentions only an assignment is insufficient to creatework made for hire.

Unclear whether the K must necessarily say work made for hire, however, if the intent of theparties was clear, a work made for hire could nonetheless be created absent the magic words.

v. Distinguishing b/w EEs and Independent Contractors When analyzing employment relationship under 101 (1) (whether the person is EE or NOT),

consider The hiring partys right to control the manner and means by which the product is accomplished, Other factors: skill required; the source of the instrumentalities and tools; the location of the work;

the duration of the relationship; whether the hiring party has the right to assign hours; the hiredpartys role in hiring and paying assistants; whether the work is part of regular business etc.Noneof these factors are determinative

CCNV v. Reid (S Ct. p489) Held: True that CCNV members directed enough of Reids work to ensure that he produced a

sculpture that met their specifications, but the extent of control weigh heavily against finding EErelationship.

A: Reid is a sculptor, a skilled occupation. He supplied his own tools. He worked in his own studioin Baltimore, daily supervisions from others were impossible. Reid was retained for less than twomonths, a relatively short period of time. During and after this time, CCNV had no right to assignhim more projects. Reid had absolute freedom to decide when and how long to work. CCNV paidhim dependent on completion on the specific job, a method by which independent contractors are


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often compensated. Creating sculptures was hardly regular business for CCNV. CCNV did notpay any EE benefits or tax etc.

B. Joint worksi. Rule

101 defines joint work as work prepared by two or more authors with

the intention that their contributions be merged into inseparable orinterdependent parts of the unitary whole. This means that there must be 1) a copyrightable work, 2) two or moreauthors and 3) the authors must intend their contributions be merged intoinseparable or interdependent parts of a unitary whole. 9th circuit also requiresthat each author to make an independently copyrightable contribution to thedisputed work.

ii.Aalmuhammed v. Lee p497 Facts: Warner Bros contracted with Lee to make the movie Malcom X,who co-wrote the screenplay and directed and co produced the movie, starring

Denzel Washington as Malcom X. Washington hired Aal to prepare him for hisrole since Aal was an Islam expert. Aal later contends that he was a co-authorand thus can obtain copyright of the movie because of his extensiveinvolvement with respect to making the movie more authentic

Analysis: Copyrightable contribution

i. Speaking Arabic to persons in charge of the mosque doesnot result in copyrightable contribution. But Aal submittedevidence that he rewrote some of the script, this evidencemust be accepted as true on SJ, these items areindependently copyrightable therefore Al presented a

genuine issue of fact. Author

i. Al concedes that he contributed substantially but was notone of the authors. Authorship is not the same as making avaluable and copyrightable contribution.

ii. As the word is traditionally used, author is the person whocauses something to come into being.

iii. In Burrow Giles v. Sarony author of a photograph was theperson who has superintended the arrangements, who hasactually formed the picture by putting the persons inposition, and arranging the place where ppl are to be the

man who is the effective cause of that; author involvesoriginating, making, producing, as the inventive ormastermind, the thing which is to be protected. The manwho really represents, creates, or gives effect to the idea,fancy or imagination.

iv. AL did not at any time have superintendence of the work.Warner and Bros and Lee controlled it. AL was not theperson who actually formed the picture by putting people in


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place or did arrangements. Al could make extremely helpfulrecommendations but Lee was not bound to accept any ofthem. Al lacked control over the work, and absence ofcontrol is strong evidence of the absence of coauthorship.

v. Al offered no evidence that he was the inventive or

mastermind of the movie Authors intent

i. Best objective manifestation of shared intent is k, but thisdoes not always occur

ii. Al, nor Lee, nor WB made any objective manifestation of anintent to be co-authors.

iii. WB required Lee to sign a work for hire agreement, sothat even Lee was not a co-author. It would be illogical toconclude that WB while not wanting Lee to own thecopyright, intended to share ownership with Al.

RIGHT TO PREPARE DERIVATIVE WORKS

A. Introductioni. The 1976 Act provides the copyright owner the exclusive right to prepare derivate

works based upon the copyrighted work s106(2).ii.The Act defines a derivative work as a work based on one or more preexisting

works, such as a translation, musical arrangement, dramatization, fictionalization,motion picture version, sound recording, art reproduction, abridgement,condensation, or any other form in which a work may be recast, transformed, oradapted. It also includes a work consisting of editorial revisions, annotations,elaborations, or other modifications which, as a whole, represent an original work of

authorshipB. Anderson v. Stallonei. Facts: Stallone wrote and played the role of Rocky Balboa in movies Rocky I, II and

II, which were extremely successful motion pictures. P, Anderson, wrote a thirty onepage treatment using Rockys characters in hopes that it would be used by Stallone inRocky IV. He sent the treatment to MGM and met with MGMs board of directors.He also signed a release that purported to relieve MGM from liability stemming fromuse of the treatment. Afterwards, Andersons attorney wrote MGM requestingcompensation for the alleged use of his treatment in the forthcoming Rocky IV.(Anderson writes the script based on Stallones press conference where he announcedthe plot/idea). Anderson alleges that Stallone stole Andersons script.

ii.Analysis:

Andersons work is derivative work of Rocky I, II and II. Derivative worksitself is a violation of copyright. He did not just take the unprotected idea that wasannounced in the press conference, he took things that were still under Stallonescopyright, such as the characters, their identities, their relationship. Characters canhave copyright in itself it they are detailed and intricate enough to the point wherethey would be recognized. Copyright infringement and making derivative work canoccur totally privately, the act that violates the law is the making of the script. Not the


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act of selling. Thou shall not make derivative work and thou shall not copy. It isthe act of copying/making derivative work itself that violates copyright.

iii. Holding: D is entitled to SJ because infringing work is not entitle to copyrightprotection. The infringer cannot sue someone who copies the infringing work, eventhough the person that copied may have copied something that may be original and

creative of the infringer. Exception: If the infringing work (i.e. Andersons work) can be

subdivided cleanly, so that you can distinguish those parts that are infringing versus parts that areAndersons own work, and infringer can show that he who copied also copied the infringers ownwork, then the infringer may sue for copyright violation. In this case, the work is intertwined andcannot be separated.

DURATION, DIVISION, TRANSFER, RECLAIM

A. Durationi. Basic terms of protection

1909 Act measured by date of publication for 28 yrs, followed by arenewal term of 28 yrs, for a total of 56 years. 1978 Act measured by life of author + 70 yrs

Date of ProtectionLength of Term

Works created on orafter 1/1/78

When work wasfixed in a tangiblemedium

Life + 70 yrs

Works created but notpublished before 1/1/78

Federal protectionbegan on 1/1/78

Life + 70 years at least through 12/31/2002 if thework remained unpublished as of that date OR

until 12/31/2047 if the work was published before1/12/2003

Works publishedbetween 1964 and 1977(inclusive)

When work waspublished with notice

Total 95 years protection.(1st term of 28 years, automatic renewal, 2nd termof 67 yrs)

Works publishedbetween 1923 and 1963

When work waspublished with notice

1st term of 28 years, renewal for 67 years, but onlyif renewal was properly obtained (not auto)

Works published before1923

n/a Work is now in public domain

B. Transferi. 1909 Act

Precluded the formal divisibility of the rights comprising a copyright. A

copyright owner could assign the entire copyright to another, but a transfer ofany lesser interest was considered a license


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One consequence of the doctrine of indivisibility was that only the

proprietors had standing to bring suit to enforce the copyright. Thus a licenseewould have to join the proprietor in order to protect his or her rights.

ii.1976 Act The Act eliminated restrictions on the formal divisibility of copyright

interests. Section 201 provides that ownership of copyright may be transferredin whole or in part. Any of the exclusive rights comprised in a copyright,including any subdivision of any of the rights may be transferred and ownedseparately. The owner of any particular exclusive right is entitled, to all of theprotection and remedies accorded.

C. Reclaiming Copyrighti. 1909 act authors could reclaim copyright interests that they had licensed at the time

of renewal.ii.1976 eliminated the renewal regime, allow authors and their survivors to reclaim

copyright interests by having right to terminate transfers of copyright b/w 30th-40th

year from execution of the transfer of rights for works created after 1977.iii. With respect to works in their second renewal term prior to 1978, s304(c) allows

authors and their families to terminate transfers b/w the 56th 61st year of copyrightprotection for such works so as to allow them to profit from the 19 year of protectionfor such works added by the 1976 act.

iv. Sonny Bono Copyright Term Extension Act of 1998 may reclaim the 20 yearsadded to their copyrights. Termination of transfer rights may not be assigned inadvance.

v. Works made for hire doctrine, the only way for a transferee to prevent atermination of transfer is by establishing that the work is made for hire and thereforeowned by the employer or commissioning party from the outset

vi. With regards to commissioned works (works prepared by independent contractors),Congress limited this exception to the termination of transfer provision in two ways;by allowing only certain enumerated categories of works to be treated as works madefor hire and by requiring that the parties specifically agree in writing that the workshall be treated as a work made for hire.

COPYING AND INFRINGEMENT

A. P must prove by per ponderous of the evidence (before filing complaint) thati. P has a protectable copyrightable workii. That work is still in copyright

iii. The plaintiff is the rightful current owner of copyright in that workiv. The work is now registered with the US copyright officev. The work copyright was infringed with regard to _______ which particular right

(specify which right) Assume the right is reproduction right (see f(i) and g(i))

vi. Defendant copied protectable elements of creative expression from Ps work Copyright law protects accidental similarity


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Copying need not be conscious, there is such a thing as unconsciouscopying

P does not have to prove intent or bad intent P merely has to prove copying Forms of copying

1. literal complete copying2. literal partial copying3. non literal pattern copying4. non literal complete copying of ideas, facts, systems, methods.

Proving copying: Direct evidence and circumstantial evidence1. direct - eye witness, camera, admission2. circumstantial two part test

a. plaintiff must prove that D had access to Ps work (that Dwas in a position to see or hear Ps work, P does not have toprove that D actually saw or heard it, that they could have,and probably did)

b. P must also prove substantial similarityc. Doctrine Striking similarity in small number of cases, Pdoes not have to prove access. This is NOT common andNOT liberally applied. In vast majority of cases, wherecopying is not admitted, there must be ACCESS +SUBSTANTIAL SIMILARITY. Majority Rule: Thisdoctrine applies when Ps work is detailed not simple.

vii. That copying rises to the level of a improper appropriation Not all copying are considered illegal. De minimis copying that would

not be obvious to a layperson will not be considered infringing. Test: Would an ordinary observer comparing the works recognize Ps

protected creative expression in defendants workviii. P has been damaged by the copying infringement and seeks the following remedies

(i.e. discouragement of profits, injunction from future copying, destruction of infringing articles)

B. CL for proving copying: Arnsteina. Facts: Arnstein sued Porter for infringement of copyrights in various of Ps

musical compositions. Some of the songs were published and some were not. Paverred that a copy of the unpublished song was stolen from his room. P suggestedthat D gained access to his songs either through publishers or a movie producer orthat D was connected with burglaries of his home, P testified that he did notknow, but only saying that P could have. D testified that he had never seen norheard the Ps compositions and that he did not have any connections with thealleged theft of such works. District Ct granted SJ for D.

b. Analysis: Copying find some similarities, but hold that unquestionably, standing

alone, they do not compel the conclusion, or permit the inference, that Dcopied. The similarities, however, are sufficient so that, if there is enoughevidence of access to permit the case to go to the jury, the jury mayproperly infer that such result is not coincidence. The circuit judge here


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held that there was no possibility of access, however, P is entitled to a trialwhere the jury decides whether his story is probable or not.

Illicit copying (misappropriation) question is whether D took from Pswork so much of what is pleasing to the ears of lay listeners, whocomprise the audience for whom such popular music is composed, that

defendant wrongfully appropriated something which belongs to the P.This question should also go to the jury.c. Holding: SJ proper

C. Improper Appropriationa. P must show D copied a sufficient amount of the protectable elements of Ps

copyrighted work as to render the two works substantially similarb. Copyright violator can produce substantially similar work in two ways: verbatim

copying and overall pattern and arrangement. These two are not mutually exclusive.c. Nicholas

Facts: P, author of Abies Irish Roe, sues D, author of another movie for

copying. Meticulously comparing the plots, the Ct concluded that the onlymatter common to the two is a quarrel b/w a Jewish and an Irish father,the marriage of their children, the birth of grandchildren andreconciliation.

Ct heldno copying based on the fact that as to both incident andcharacter, D took no more (assuming that it took anything at all) than thelaw allowed. Even assuming that Ps play was original and assuming thatnovelty is not essential to a copyright, there is no monopoly in such abackground. Though the P discovered the vein, she could not keep it toherself. The theme was too generalized an abstraction from what shewrote. It was only a part of her ideas. Nor does she fare better as to hercharacters. The D has not taken from her more than their prototypes havecontained for many decades. P presents resulting parallelism as proof ofinfringement, but the adjectives employed are so general as to be quiteuseless.

DEFENSE- FAIR USE

A. Introductioni. The doctrine is codified in 107 of the 1976 Act.ii. Consider these 4 factors to determine if there is a valid fair use (no one factor

necessarily more important than another)1. The purpose and character of Ds use:a. Commercial or noncommercial (nonprofit)i. Commercial = earns profit.

ii. Fair use doctrine is not a license for corporate theftb. Criticism, comment, news reporting, teaching

i. Non profit educational use is more likely to be fair use b/c it isless inclined to harm the market for the copyrighted work than would a commercial use


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c. **Transformative(continuum between exact duplication andcomplete modification) Central purpose: a work that is transformed adds value by creating newinformation, new aesthetics, new insights and understandings.

i. Artistic / creative / modificationsii. Selection/Arrangement (transformative organization)

iii. Reformatting (the info into a different kind of creativeproduct)2. The nature of the copyrighted work

a. b/c the ultimate goal of copyright is to increase our fund of info, thefair use privilege is more extensive for works of information such as scientific, biographical, orhistorical works, as opposed to works of entertainment.

b. Similarly, if a work is unavailable or out of print, the need for publicaccess and dissemination is greater

c. Privilege diminishes for unpublished worksi. i.e. Harper & Row the Nation magazine obtained, through an

undisclosed source, a stolen, as yet, unpublished manuscript of former President Fords autobio.

The article scooped Time mags planned excerpt from the book and Time cancelled its k as aresult. S Ct rejected Nations fair use defense, despite the newsworthiness and Nations use of only300 words verbatim from a 200,000 word manuscript, Ct concluded that the unpublished natureof a work is a key, though not necessarily determinative, factor tending to negate fair use defense.

3. The amount and substantiality of the portion used in relation to the

copyrighted work as a whole; anda. Whether the D had taken more than is necessary to satisfy the specific

fair use purposeb. Focusing on relationship b/w s relation to s workc. What % of the s work did the copy, and how important was it?i. Qualitative; and

1. How important are the words? Did the D take theheart of the work?

ii. Quantitative (percentage)d. i.e. Harper & Row even small takings can exceed fair use when the

essence of the work is taken. In this case, the verbatim copying of only 300 words out of 200,000words of Ps book was considered excessive b/c these words constituted the heart of the work.

4. The effect of the use upon the potential market for or value of the copyrighted

work

a. If the market for the copyright owners work is harmed, the incentivesfor creativity will no longer exist.

b. A use that supplants any part of the normal market would ordinarilybe considered an infringement (Harper & Row).

c. Potential marketi. Whether the took from the the opportunity to enter into a

collateral market (market for derivative works) the reasonably could have and would haved. If intended use if for commercial gain, that likelihood [of economic

impact] may be presumed (except parody)e. But if for noncommercial use, the likelihood must be demonstrated.

(Sony v. Univ. Std.).


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B. Commercial but Parody Campbell v. Acuff Rosei. Facts: 2 Live Crew made a parody of the song oh pretty woman and used a

substantial portion of it. It first asked for the copyright holders consent, but herefused. They published the parody anyhow and sold a quarter of million copies of

the song. Copyright holder sues for infringement. Conceded that but for fair use, 2Lives Crew Song would be a copyright infringement.ii. Rule & analysis

a. the purpose and character of the use, including whether such use is of acommercial nature or is for nonprofit educational purposes

the more transformative the new work, the less will be thesignificance of the other three factors. The court found that, in any event, a work's commercialnature is only one element of the first factor enquiry into its purpose and character

though parody is not necessarily not fair use, however, parodysare rarely considered not fair use, perhaps only at times when they took more than necessary.Court favors fair use if the work is a parody

b. the nature of the copyrighted work it has little merit in resolving this and other parody cases, since

the artistic value of parodies is often found in their ability to invariably copy popular works of thepast.

c. the amount and substantiality of the portion used in relation to thecopyrighted work as a whole; and

finding that the Court of Appeals erred in holding that, as amatter of law, 2 Live Crew copied excessively from the Orbison original. Souter reasoned that the"amount and substantiality" of the portion used by 2 Live Crew was reasonable in relation to theband's purpose in creating a parody of "Oh , Pretty Woman". The majority reasoned "even if 2 LiveCrew's copying of the original's first line of lyrics and characteristic opening bass riff may be saidto go to the original's 'heart,' that heart is what most readily conjures up the song for parody, and itis the heart at which parody takes aim." The Supreme Court then looked to the new work as awhole, finding that 2 Live Crew thereafter departed markedly from the Orbison lyrics, producingotherwise distinctive music.

d. the effect of the use upon the potential market for or value of thecopyrighted work.

Found that the Court of Appeals erred in finding a presumptionor inference of market harm.

Parodies in general, the Court said, will rarely substitute for theoriginal work, since the two works serve different market functions.

While Acuff-Rose found evidence of a potential "derivative" rapmarket in the very fact that 2 Live Crew recorded a rap parody of "Oh, Pretty Woman" and anotherrap group sought a license to record a rap derivative, the Court found no evidence that a potentialrap market was harmed in any way by 2 Live Crew's parodic rap version. In fact, the Court foundthat it was unlikely that any artist would find parody a lucrative derivative market, noting thatartists "ask for criticism, but only want praise."

iii. Held: Reversed the court of appeals and remanded the case for specificconsiderations because court of appeals erred in holding that i) commercial innature cannot be fair use,
http://woman/http://woman/http://woman/http://woman/http://woman/


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C. Non commercial use Sony v. Universal Studiosa. Facts

i. Copyright owners used the makers of VCRs, alleging that they were liablefor contributory copyright infringement b/c consumers bought VCRs and

used them to take movies and other programs on TV. Record shows thatmost consumers used the product for time shifting recording shows forlater viewing; relatively few consumers engaged in archiving- recordingand storing programs in a library

b. RULE

i. to determine whether Ds product is capable of commercially significantnoninfringing use, need not explore all different potential use, but rather,only need to consider on the basis, as found by Dist Ct here, that asignificant number of the uses would be non infringing =substantially noninfringing use doctrine.

c. Analysis

i. Purpose and character of use: Sony demonstrated a significant likelihoodthat substantial numbers of copyright holders who license their works forbroadcast on free tv would not object to having their broadcasts time shiftedby private viewers (time shifting). Court thinks this is legitimate, personalconsumptive use.

ii. Nature of copyrighted work: news and entertainment, everything.iii. How much copying? The whole programiv. Market impact: respondent failed to demonstrate that time shifting would

cause any likelihood of non minimal harm to the potential market for, or thevalue of, their copyrighted works

d. Held:i. Ruled that the making of individual copies of complete television shows for

purposes oftime - shifting does not constitutecopyright infringement, butis fair use. The Court also ruled that the manufacturers of home videorecording devices, such asBetamaxor otherVCRs (referred to asVTRs inthe case), cannot be liable for infringement. The case was a boon to thehome video market as it created a legal safe haven for the technology,which also significantly benefited the entertainment industry through thesale of pre-recorded movies.

PATENT

OVERVIEWA. Requirements In order to be eligible for a patent, the Patent and Trademark Office reviews each

patent application for five requirements: i) Patentable subject matter, ii) utility, iii)describing and enabling the invention, iv) novelty (and statutory bars) and v) nonobviousness.

B. Rightsi. Scope of protection:
http://television/http://time-shifting/http://time-shifting/http://infringement/http://infringement/http://use/http://betamax/http://betamax/http://betamax/http://vcr/http://vtr/http://vtr/http://television/http://time-shifting/http://time-shifting/http://time-shifting/http://infringement/http://infringement/http://use/http://use/http://betamax/http://vcr/http://vtr/


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1. Claims give the right to sue2. Exclusionary right (negative right)

a. Patent confers right to exclude others from making, using,selling, offering for sale, or importing the claimed inventionfor term of yrs.

b. Patent does not grant an affirmative right to do anythingc. Patented invention may itself be covered by a preexistingpatent

Blocking Patents: holder of an improvement patenthas right to exclude everyone from herimprovement, incl. holder of broad patent, while atsame time being barred from use of theimprovement herself unless holder of broad patentauthorizes such use

ii. Period of protection: 20 years from date of filing1. Patent is in force for 20 yrs. minus amt. of time spent in the

application/ prosecution processC. Theories Inventions are public goods that are costly to make and that are difficult to control once

they are released into the world. As a result, absent patent protection inventors will nothave sufficient incentive to invest in creating, developing, and marketing new products.Patent law provides a market driven incentive to invest in innovation, by allowing theinventor to appropriate the full economic rewards of her invention.

UTILITY PATENT ELIGIBILITYA. Patentable subject matter

i. Overall rule: Patent Act 101 provides that whoever invents or discovers any new

and useful process, machine, manufacture, or composition of matter, or any newand useful improvement thereof, may obtain a patent thereof, subject to theconditions and requirements of this title.

ii. The breadth of patentable process and products reflects congressional intent tomake patentable anything under the sun that is made by man. However, there arelimits: laws of nature, physical phenomena, and abstract ideas are not patentable.However, the court has held certain applications of principles as patentable subjectmatters.

iii. 4 categories: Patentable subject matter (of utility patent) can be separated into eitherprocess patents or product patents (machine, manufacture, composition of matter).

iv. Process

Basic principles Process is synonymous with method or a series of steps for

accomplishing some result. A process claim does not include theend product of the process. Even if the end product is not eligible forpatent, such as insulin, a well known protein, a process that obtainsthis protein through DNA cloning, which is much more efficientthan the conventional method of extracting it from the pancreas of


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hogs, the process of extraction will be patentable for the inventorcreated a new and nonobvious way to make the existing product.

Process vs. Principles (natural laws/ ideas) Test

a. Whether Applicants claim recites a fundamental principle,

and if so, whether it would preempt substantially all uses of thatfundamental principle if allowed. Bilksi. CL where ct held principle (unpatentable)

Bilski patent applicant challenged the denial of aprocess patent application for method of hedging riskin field of commodities trading in the energy marketbased on lack of patent-eligible subject matter. Thecourt, using Benson, Flook and Diehr as precedents, heldthat petitioners application not patentable because its anattempt to patent abstract ideas. The reasoning is that

claims 1-4 explains basic concepts of hedging andreduces that concept to mathematical formula, which isan unpatentable abstract idea, just like the algorithms inBenson and Flook. The remaining claims were broadexamples of how hedging can be used in commoditiesand energy markets, this is attempt to patent the use ofthe abstract hedging idea, and instruct the use of wellknown analysis techniques to help establish some of theinputs into the equation. Court found this to add evenless to the underlying abstract principle than theinvention held patent ineligible in Flook.

Benson The Court considered whether a patent applicationfor an algorithm to convert binary-coded decimalnumerals into pure binary code was a process under 101. The Court first explained that [a] principle, in theabstract, is a fundamental truth; an original cause; amotive; these cannot be patented, as no one can claim ineither of them an exclusive right. The Court then heldthe application at issue was not a process, but anunpatentable abstract idea. It is conceded that one maynot patent an idea. But in practical effect that would bethe result if the formula for converting ... numerals topure binary numerals were patented in this case. If theclaim was allowed, the patent would wholly pre-emptthe mathematical formula and in practical effect wouldbe a patent on the algorithm itself.

Flook Involved a claim using a particular mathematicalformula to calculate an alarm limit a value that


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would indicate an abnormal condition during anunspecified chemical reaction. The Ct rejected the claimas drawn to the formula itself b/c the claim did notinclude any limitation specifying an actual process,steps, factors or variables, the mechanism for monitoring

the variables etc.

CL where ct held process (patentable)a. Diehr

Involved a patent application seeking to claim aprocess for producing cured synthetic rubber products.The claimed process took temperature readings duringcure and used a mathematical algorithm to calculate thetime when curing would be complete. Noting that amathematical algorithm is unpatentable b/c they are lawsof nature, the Ct nevertheless held that the claimed

process was patent eligible subject matter. The Ctreasoned that the inventors do not seek to patent amathematical formula, instead, they seek to patentprotection for a process of curing synthetic rubber. Theirprocess admittedly employs mathematical equations, butthey do not seek to preempt the use of that equation.Rather, they seek only to foreclose from others the use ofthat equation in conjunction with all of the other steps intheir claimed process. Rule: The ct here thus drew a distinction b/wclaims that seek to preempt the use of a fundamental

principle versus those seek only to foreclose others fromusing a particular application of that fundamentalprinciple. Thus, whether a claim will be considered a claimof the principle or claim of a process depends on thescope of that exclusion, i.e. whether the effect ofallowing the claim would be to allow the patentee topreempt substantially all uses of that fundamentalprinciple. If so, the claim is not drawn to patent eligiblesubject matter.

v. Products Basic principles

Includes machines, composition of matters and manufactures Composition of matter vs. natural matter

Definition (from Chakrabarty): all compositions of two or moresubstances and all composite articles, whether they be the resultsof chemical union, or of mechanical mixture, or whether they begases, fluids, powders or solids

Diamond v. Chakrabarty


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The Court upheld a patent application for a geneticallyengineered bacterium that could be used to consume oilbecause the patentee has produced a new bacterium withmarkedly different characteristics from any found in nature.His discovery is not natures handiwork, but his own. This

was distinguished from Funk Bros v. Kalo, where thepatentee had discovered that there existed in nature certainspecies of bacteria which did not exert a mutually inhibitiveeffect on each other. He used that discovery to produce amixed culture capable of inoculating the seeds of plants.Concluding that the patentee had discovered only some ofthe handiwork of nature the court held the productunpatentable.

Parke Davis Patentee discovered how to isolate a purified substance of

significant medical use from the suprarenal glands of

animals, and called the product Adrenalin. The patenteeoriginally claimed the active principle itself, but theexaminer rejected b/c no product that is merely separatedfrom its surrounding materials and remains unchanged issubject of patent. However, after patentee amended hisclaims so that they were not limited to the active principle,the court upheld his claims, recognizing that there is a thinline between different substances and degrees of the samesubstance. In this case, the court found that even though theproduct may be a result of purification, the inventionbecame for every practical purpose a new thing

commercially and therapeutically, and that the change hereresulted in ample practical differences sufficient as groundsfor a patent.

B. Utilityi. Rule: 101 mandates the patents issue only to useful inventions. In reality,

however, the utility requirement is rarely an obstacle to patentability. A finding ofutility has long been held to require only a minimal showing that the invention iscapable of practical application. The specifically claimed utility must also bereduced to practice, a requirement intended to ensure that a patent does notblock of whole areas of scientific development by asserting a too general claim

ii. The Supreme Court View: Brenner v. Manson The patent application, Manson, claimed a new process for making a known

steroid. Manson asserted his process had utility because the steroid productitself was being tested for tumor inhibiting effects on mice, and the nextadjacent most similar chemical compound of the steroid had already beenshown to work for that purpose.

S Ct held that the claimed process did not satisfy the utility requirement of101. It viewed Mansons research in steroid chemistry, which it deemed anunpredictable art, as being at too preliminary a stage to merit patent


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protection, noting that a patent is not a hunting license and not a rewardfor the search, but compensation for its successful conclusion. Rather theCt explained the requirement is substantial utility. This substantial utilitystandard could not be achieved, the Ct held, until the process was definedand developed to the point that specific benefit exists in currently available

form The USPTO in 2001 issued examination guidelines that interpret the

Manson decision as requiring utility that is specific, substantial credible.iii. In Re Fisher

A federal circuit case in 2005 reexamined the definition of substantialutility where the claimed invention related to five purified nucleic acidsequences, commonly referred to as expressed sequence tags (ESTs), thatencoded proteins and protein fragments in maize plants. The Board ofAppeals affirmed examiners rejection of the application, who found thatnone of the recited uses for the ESTs satisfied the substantial utilitystandard.

Rule: Fisher majority held that in order to show a specific utility, anasserted use mustshow that the claimed invention can be used to providea well defined and particular benefit to the public, and that in order todemonstrate a substantial utility, an asserted use must show that theclaimed invention has a significant and presently available benefit to thepublic.

A: In the majoritys view, Fishers claimed EST failed to satisfy either oneof these criterias. Each claimed EST corresponded to the single gene fromwhich it was transcribed; yet as of the applications filing date, no functionwas transcribed of these underlying genes. The claimed ESTs were thus nomore than research intermediates that were unable to provide anyinformation about the overall structure let alone the function of theunderlying gene. Such research tool was not substantial use in majoritysopinion, since the claimed ESTs disclosed nothing more from any ESTderived from any organism.

H: Granting Fisher a patent on the claimed ESTs would amount to no morethan a hunting license, b/c Fisher could not identify the function for theunderlying protein encoding genes. Absent such identification, the claimedESTs have not been researched and understood to the point of providing animmediate, well defined, real world benefit to the public meriting the grantof a patent

C. Novelty and Statutory Barsi. Introduction

In practice, novelty is established by applying a set of technical rules todetermine if a patent applicant was really the first to make the invention sheis claiming. Under novelty, a patent can be unpatentable if it was madebefore, sold more than a year before patent application, or otherwisedisqualified by prior use or knowledge

ii. novelty


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Means new compared to the prior art. Under 102, (Novelty), patent willnot be issued to invention that was known or used(requires prior knowledgeto be public OR non secret use) by others in this country, OR patented ordescribed in a printed publication in this or a foreign country, before theinvention thereof by the applicant for patent.

Grace period Note that patent applicants enjoy a grace period of one year

between the critical date and his application filing date. During thisone year grace period, a invention may be described in a printedapplication, in public use, or on sale, without triggering a 102(b)loss of right. So long as the patent application is filed within oneyear of the first instance of the invention being released into publicdomain or commercial exploited etc, the right to a US patent willnot be lost.

Rosaire v. National Lead (5th circuit) The court examined what level of use justifies prior use in a case

where the patent claims a method of prospecting for oil by studyingrock samples formation of hydrocarbons. Plaintiff claims that in1936 he and Horvitz invented this new method and patents in suitwere issued thereon. Appellee argues that work carried on by oneTeplitz for the Gulf Oil Corp. invalidated both patents by reason ofprovision 35 U.S.C.A s 102(a) which states that an invention is notpatentable if it was known or used by others in this country.Appellant himself admits that Teplitz conceived of the same methodbut argue that Gulf did not apply for patent until 1939, did notpublicize Teplitz ideas, only experimented, and did not otherwisegive the public the benefit of the experimental work.

Trial Cts finding that the Teplitz work was a successful andadequate field trial of the prospecting method involved and areduction to practice of that method was affirmed. Ct noted that thework was performed in the field under ordinary conditions withoutdeliberate attempt at concealment or effort to exclude the public andwithout any instructions of secrecy to the employees performing thework. Thus appellees claim of the prospecting method is barredfrom the fact that there is prior use.

Appellee also argued that Teplitz work lacked publication. 5th

circuit finds that public knowledge is not a requirement and lack ofdoes not invalidate a subsequent patent.

public means not secret.iii. statutory bars Under 102 (Statutory Bars), a patent will not be issued to an invention that

was patented or described in a printed publication in this or a foreigncountry or in public use or on sale in this country, more than one year priorto the date of the application for patent in the United States.

Publications, In Re Hall


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Rule: The court restated the principle of publication bar as beinggrounded on the principle that once an invention is in the publicdomain, it is no longer patentable by anyone. And this interpretationgives effect to ongoing advances in the technologies of data storage,retrieval and dissemination. B/c there are many ways that

information may be disseminated, public accessibility has beencalled the touchstone in determining whether a reference constitutesa printed publication. BOP: proponent of the publication bar mustshow that prior to the critical date the reference was sufficientlyaccessible, at least to the public interested in the art, so that such aone by examining the reference could make the claimed inventionw/o further research or experimentation.

In this case, the federal circuit determined that appellants claim isbared from printed publication bar because the claim had previouslybeen published by another in Germany in the form of a dissertation,and that dissertation was printed publication b/c it was made

available to the public by being cataloged and placed in maincollection and accessible for anyone interested in the art. Public Use, Egbert v. Lippman

Barnes invented improved corset-springs, gave them to close friend to wear in her corset, under her clothing, for several yrs.

US Supreme Ct held that inventors act amounted to a public usethat invalidated the corset patent, noting that the inventors friendmight have exhibited the corset to any person, or made other corsetsof the same kind and used or sold them without violating anyrestrictions imposed on her by the inventor. The Ct concluded thatwhether the use of an invention is public or private does not

necessary depend on the number of persons to whom its use iskwnon. If an inventor having made his device, gives or sells it toanother, to be used by the donee or vendee, without limitation orrestriction, or injunction of secrecy, and it is so used, such use ispublic, even though the use and knowledge of the use may beconfined to one person. Decision based on 3 factors

Rule:

1. Does not require complete public use: To constitutepublic use of an invention, it is not necessary that more than one of the patented articles should bepublicly used. The use of a great number may tend to strengthen the proof, but one well definedcase of such use is just as effectual to annul the patent as many. Allowing one to use without

restrictions or limitations is just as public as if he had sold and allowed the use of a great number.2. Number of persons does not matter: whether the use of aninvention is public or private does not necessarily depend upon the number of persons to whom itsuses is known. If the inventor gives or sells to another, to be used by the donee or vendee, w/olimitation or restriction, or injunction of secrecy, and it is used, such use is public, even though theuse and knowledge of the use may be confined to one person.

3. Some inventions are by their very character only capable

of being used where they cannot be seen or observed by the public eye. Nevertheless, if its


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inventor sells a machine of which his invention forms a part, and allows it to be used w/orestrictions of any kind, the use is a public one. On the other hand, if a use is necessarily open topublic view, if made in good faith solely to test the qualities of the invention, and for the purposeof this experiment, it is not a public use within the meaning of the statute

iv. Experimental Use Exception

This doctrine negates or excuses what would otherwise appear to e statutorybar triggering activity prior to the 102(b) critical date The use of an invention by the inventor himself, or of any other person

under his direction, by way of experiment, and in order to bring theinvention to perfection, has never been regarded as [public use within themeaning of the statute]. (Nicholson Pavement)

Nicholson Pavement The inventor (patentee) Nicholson developed a method of paving

streets using wooden blocks in a checker board arrangement, whichhe tested by paving a well traveled section of public carriage road inBoston. Despite the fact that Nicholson did not file a patent

application claiming his right for six years after commencing thetesting, however, the experimental use doctrine preserved his rightto file a patent.

Rule: So long as he does not voluntarily allow others to make it anduse it, and so long as it is not on sale for general use, he keeps theinvention under his own control, and does not lose his title to apatent

Ct held that the nature of the invention required the experiment to bein public, most importantly, Nicholsons intent to test his inventionwas bona fide, and the record shows that the invention was under hiscontrol at all times. On these facts, Nicholsons experimental use of

his pavement, though in public place, did not amount to statutorydefinition of public use.

D. Non-obviousnessi. The 1952 Patent Act 103.

A patent may not be obtainedif the difference b/w the subject mattersought to be patented and prior art are such that the subject matter as awhole would have been obvious at the time the invention was made to aperson having ordinary skill in the art

ii. Graham v. John Deere Co. Graham Factors...while the ultimate question of patent validity is one of

law103 lends itself to several basic factual inquires The scope and content of the prior art The differences between the prior art and the claims at issue The level of ordinary skill in the pertinent art Secondary considerations (i.e. commercial success)

F: Graham was concerned with the construction of a plow that would notbreak upon striking soil obstructions, such as rocks. He obtained the 811patent for this. Three years later, Graham obtained a second patent,


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798, for an improvement of 811. The two inventions differed in that 1) the798 invention featured a stirrup and bolted connection of the shank to thehinge plate and 2) the 798 invention placed the shank below the hingeplate. This distinction shifted the point of wear from the bottom of the upperplate to the top of the stirrup of the hinge plate. The patentee also added that

this modification allowed the shank to flex away when the plow encountersobstruction, and thus minimizing excessive strain on the shank. S Ct held 798 invalid on the basis that 798 would have been obvious to the

inventor at the time of invention due to teachings of two references:Grahams own 811 patent and a device marketed by Clencoe Manuf. The Ctsaid certainly a person having ordinary skill in the prior art, given the factthat the flex in the shank could be utilized more effectively if allowed to runthe entire length of the shank, would immediately see that the thing to dowas what Graham did. Thus conclude that the mere shifting of the wearpoint presents no operative mechanical distinction, much less nonobviousdifferences

iii. Combining References of Prior Art, KSR International In a case where Teleflex sued KSR Intl for infringing Teleflexs patent for

an adjustable pedal assembly for car engines controlled by electronicthrottle control, the S Ct examined what constitutes as adequate teaching,suggestion, or motivation (TSM) which would render a claimed inventionobvious to the patentee.

Rule: if a technique has been used to improve one device, and a person ofordinary skill in the art would recognize that it would improve similardevices in the same way, using the technique is obvious unless its actualapplication is beyond his or her skill. When doing this analysis, the ct neednot seek out precise teachings directed to a specific subject matter of thechallenged claim, but merely take into account of the inferences andcreative steps that a person of ordinary skill in the art would employ.

The Ct held that because Redding (prior inventor) provided an example ofadjustable pedal and Smith (another prior inventor) explained how to mounta sensor on a pedals support structure, they saw little difference betweenthese teachings and the claimed patent and concluded that a personal havingordinary skill in the art could have done the same and seen the benefits ofdoing so thus patentees claim is obvious and not a valid patent.

E. Enablement (description)i. 35 U.S.C 112 provides

The specification shall contain a written description of the invention, andthe manner and process of making and using it, in such full, clear, conciseand exact terms as to enable any person skilled in the art to which itpertains, or with which it is most nearly connected, to make and use thesame, and shall set forth the best mode contemplated by the inventor ofcarrying out his invention.

PATENT PROSECUTIONA. Literal Infringement


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i. 35 U.S.C 271 gives the patentee an infringement cause of action against anyonewho makes, uses, sells, offers for sale, or imports the invention described in theclaims of the patent

ii. Literal infringement is found where the accused subject matter falls preciselywithin the express boundaries of the claim

iii. Larami v. Amron In a case determining whether SUPER SOAKERS infringed on 129 patent

for a similar water gun, the United States Dist Ct for Eastern District ofPennsylvania held that there was no literal infringement because the twoguns had different means for containing the liquid (129 requires anelongated housing having a chamber therein for a liquid while SUPERSOAKER has an external water reservoir chamber that is detachable fromthe gun and housing).

Rule: the absence of even one element of a patents claim form the accusedproduct means there can be no finding of literal infringement.

B. Doctrine of Equivalents (DoE)i. Warner Jenksinson v. Hilton provides the rule for DoE DoE is found when the accused product or process contains elements

identical or equivalent to each claimed element of the patented invention An analysis of the role played by each element in the context of the specific

patent claim will thus inform the inquiry as to whether a substitute elementmatches the function, way and result of the claimed element, or whether thesubstitute element plays a role substantially different from the claimedelement

ii. All limitations rule: Hughes VII decision clarified the Warner Jenkinson rule Each element contained in a patent claim is deemed material in defining the

scope of the patented invention, and thus the DoE must be applied toindividual elements of the claim, not to the invention as a whole. It isimportant to ensure that the application of the doctrine, even as to anindividual element, is not allowed such broad play as to effectivelyeliminate that element in its entirety.

Analysis of the role played by each element of the claim will thus informthe inquiry as to whether a substitute element matches the function, way,and result of the claimed element, or whether the substitute element plays arole substantially different from the claimed element.

C. Legal Limitations of DoE Prosecution History Estoppeli. Definition

If a patent applicant surrendered certain subject matter in the USPTO inorder to obtain its patent (e.g. by narrowing the scope of a claim throughamendment in order to distinguish subject matter disclosed in a cited priorart reference) it cannot thereafter rely on the doctrine of equivalents toobtain exclusionary rights over that same subject matter.

ii. Justifications


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This doctrine is justified by the theory that a rejection indicates that thepatent examiner did not believe that the original claim could be patented.The patentees decision to forgo an appeal by submitting an amendment istaken as a concession that the invention as patented does not reach as far asthe original claim.

Estoppel precludes a patentee from re-gaining, through litigation, coverageof subject matter relinquished during prosecution of the application for thepatent.

Where the original application once embraced the purported equivalent butthe patentee narrowed his claims to obtain the patent or to protect its validity, the patentee cannotassert that he lacked the words to describe the subject mater in question. Doctrine of equivalents ispremised on languages inability to capture the essence of the invention,but in the instance ofestoppel, the inventor knew the words for both the broader and narrower claim, but affirmativelychose the latter

iii. Festo F: Festo corp alleges AMC infringed their patent rights, however, the

alleged infringed claims were previously amended to meet patentabilityrequirements, and thus, rights to the broader claim are foregone. Defendantuses this and argues prosecution history estoppel. Petitioner contends thatthe amendments should not estop the prosecution because the amendmentswere only to clarify the ambiguity and this purely cosmetic, and did notnarrow the patents scope sufficient to raise estoppel.

Rule 1: The kind of amendments that may give rise to estoppel: Narrowed claim : estoppel arises only where claims have been

amended for a limited set of reasons, such as to avoid the prior art,or otherwise to address a specific concern- such as obviousness- thatarguably would have rendered the claimed subject matter

unpatentable. If a 112 amendment is truly cosmetic, then it wouldnot narrow the patents scope or raise an estoppel. However, if ans112 amendment is necessary and narrows the patents scope- evenif only for the purpose of better description, estoppel may apply.

Amendment narrowing claim creates presumption of prosecutionhistory estoppel unless plaintiff can forward either 1 of these 3reasons:

a. the equivalent might not have been foreseeable at the timethe invention was made. (at the time of prosecution) OR

b. amendments might have been peripheral or tangential to thenature of the equivalent element (reasonably foreseeable)

ORc. an open ended, some other reason. Rule 2: Estoppel bar is flexible

The perfect balance is by placing the burden on the patentee to showthat an amendment was not for purposes of patentability. However,when no explanation is provided, estoppel would bar the applicationof the doctrine of equivalents. These words do not mandate acomplete bar; they are limited to the circumstances where no


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explanation is established. They do provide, however, that whenthe court is unable to determine a purpose, the court should presumethat the patentee surrendered all subject matter between the broaderand the narrower language.

TRADEMARK

INTRODUCTION

A. Theory of trademark lawi. trade marks, i.e. marks which permit the goods of different makers to be

distinguished from each otherii.preventing consumer confusion and the injury to a trademark owners good will

WHAT CAN BE PROTECTED AS A TRADEMARK

A. trademarks, trade names, service marksi. section 45 of the Lanham Act defines a trademark as:

1. any word, name, symbol, or device, or any combination thereof-a. used by a person, or

b. which a person has a bona fide intention to use in commerce andapplies to register on the principal register established by this chapter,

2. to identify and distinguish his or her goods, including a unique product, fromthose manufactured or sold by others and to indicate the source of the goods, even if that source isunknown

B. spectrum of distinctiveness for WORD marks (to determine level of protection andeligibility for immediate registration)

i. Inherently distinctive and do not require showing of secondary meaning to acquire

trademark protection1. Fanciful: word is entirely made up (entirely or in pieces), i.e. Exxon, Xeroxa. strength strongest (along with arbitrary) b/c any value they possess

in terms of name recognition comes from the corporation use of the name (not natural) to associatein peoples minds b/w name and product

2. Arbitrary: word exists in English language, but its use is arbitrary and bearsno relationship whatsoever to the product. However, this depends on the fact that it ismismatched to a particular product/ service. i.e. Apple would be arbitrary for computers, butwould be generic for apples, the food.

a. strength strongest with fanciful.3. Suggestive: only indirectly conveys an impression of the goods or services to

which it is attached, thus, a term is suggestive if it requires imagination, thought and perception toreach a conclusion as to the nature of the goods, i.e. Greyhound bus suggests speed

ii. Not inherently distinctive (requires acquiring secondary meaning to register)1. Descriptive: describes quality, function, characteristic, or ingredient of the

product/service, i.e. after tan for post tanning lotion2. Test for descriptive (From Zatarain)a. Ordinary significance (dictionary definition)


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b. Imagine testi. If a term requires imagination, thought and perception to reach

a conclusion as to the nature of goods, it is considered suggestive term. Alternatively, it isconsidered descriptive term if standing alone, it conveys information as to the characteristic of theproduct.

c. Plain descriptivei. whether the term is so descriptive of the product thatcompetitors would be likely to need the term to describe their products

d. The extent to which a term actually has been used by othersi. in the market with similar service or product when

companies A to Z select the same term to describe their similar products, the term in question ismost likely a descriptive one

ii. NO protection1. Generic: one that would commonly be used as the name or description of a

kind of goods (rmb to analyze in context)a. Word can start out as generic or become generic over time (i.e.

escalator, Ziplock)b. You can use it but cannot TM itc. Can combine two generic words to make non generic phrase

C. Spectrum of distinctiveness for NON words, i.e. trade dress, sounds, smell, graphics etc(3 categories)

i. Inherently distinctive: intrinsic nature serves to ID a particular sourceii. Not inherently distinctive: requires proof of secondary meaningiii. Functional: applies traditionally to product design/ shape

1. No protection (like generic words)2. Functionality doctrine: prevents TM law from inhibiting legitimate

competition by allowing a producer to control a useful product feature. Cant claim TM in productfeature if it is either essential to the use or purpose of the article or if it materially affectscost/quality

3. Aesthetic functionality whether the feature is such that giving TM in itwould put other competitors at a significant non reputation related advantage

D. color, sounds, scenti. while color, sound or scent, alone cannot be inherently distinctive, it can serve as a

trademark if it is nonfunctional and acquires a secondary meaningE. trade- dress

i. Refers to the distinctive features of a products packaging or the distinctive featuresof the product configuration itself; it is the total image of a product. Thus trade dress must beconsidered as a whole, and may be protectable even if the individual elements used may befunctional or non- distinct

ii. possible for registration if it is capable of distinguishing in the minds of the public,the source of goods/services

iii. must be 1) non functional and 2) distinctive

HOW ARE TRADEMARKS RIGHTS OBTAINED


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A. Generali. The mark must be used to indicate origin rather than merely to identify an individualperson, character, or literary/ drama work

B. Distinctiveness (or non distinct + secondary meaning)

i. Rule: Marks that are inherently distinct only need priority use to get TM rights,however, ifmarks are not inherently distinct, they must first acquire secondary meaningto get TMprotection. (Proof that the mark has acquired a secondary meaning as a source identifier elevates itto a trademark status. )

ii. Secondary meaning exists when buyers associate a descriptive term w/ asinglesource of products, and not necessarily need to know the identity of the source.

iii. BOP P must show that the primary significance of the term in the minds of theconsuming public is not the product, but the producer,

iv. Factors relevant to proof of secondary meaning1. circumstantial evidencea. amount and manner of advertising (effectiveness and extent)

b. volume of salesc. length and manner of use2. direct evidencea. surveys

v. Zatarains, Inc v. Oak Grove Smokehouse1. Facts: Appellant, owners of Fish Fri and Chick Fri trademarks, used TM

to sold frying batter, sues Appellee Oak Grove for trademark infringing for selling products withname fish fry and chicken fry.

2. Analysis:a. Descriptive mark: Ct applied the 4 factor test for descriptive mark

and found that appellants Fish Fri and chick fri were descriptive, and not suggestive. B/cdescriptive marks are not protectable TM absent showing of secondary meaning.

b. Secondary meaning:(Dist Ct holding will not be disturbed unlessclearly erroneous) Since 1950, Z and its predecessor have continuously used the term Fish Fri toidentify this particular batter mix. Through the expenditure of over $400,000 for advertising during1976 through 1981, Z has promoted its name and its product to the buying public. Sales of FishFri increased from 37,265 cases in 1969 to 59,439 cases in 1979. Dist ct found this evidenceweigh heavily in Zs favor. Z also introduced survey results that out of 100 women questioned inthe South, 23% specified Fish Fri as the product they would buy. Cannot say that Dist Ctsfinding that Fish Fri obtained secondary meaning was clearly erroneous, thus affirm.

c. Fair use defense: Although Fish Fri has acquired secondarymeaning, it is still a descriptive term. Therefore, Z has no legal claim to an exclusive right in theoriginal, descriptive sense of the term. D is still free to use the words fish fry in their ordinary,descriptive sense, so long as such use will not tend to confuse customers as to the source of thegoods.

C. Registrationi. Lanham Act 45 provides two types used in commerce and bona fide intent to

useii. (Actual) Use


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1. Registration w/o use fails to become TM, use w/o registration does notnecessarily fail. Ownership is determined based on who was 1st to used in commerce

2. Priority defined as first to use the markin connection with the goods orservices in question, whether or not the use involved interstate commerce

iii. intent to use

1. The applicants priority date will be either the filing date of the intent to useapp, or the date on which that applicant commenced use of the mark in connection with goods andservices, whichever is earlier.

iv. Zazu Designs v. LOreal, What constitutes use and how much use is enough?1. Facts: P, Zazu Designs (ZHD), a hair salon, sued LOreal after it put out a

line of hair dye called Zazu. P doesnt sell hair dye, but has sold a small number of bottles ofshampoo. Ps argument: risk of confusion.

2. Timeline:a. Loreal has made small amount of interstate shipment of Zazu

products and obtained federal registration of TM on June 12, 1986. By August, Loreal has sold itsproducts nationally.

b. Zazu Designs (ZHD) sold a few bottles of shampoo to customers inplain bottles between Nov 1985 and Feb 1986. Shipped two bottles to a friend in Texas who paid$13. Also made shipments to a hair stylist friend in Florida- 40 bottles for $78.58. Late in 1985,ZHD ordered labels, and in Sept 1986, ZHD began to sell small quantities of shampoo in bottles w/label.

3. Rule:a. Under common law, one must win the race to the marketplace to

establish exclusive right to TMb. Now, registration system allows slight sales + registration to substitute

for substantial sales w/o noticec. Used in commerce at least means sales to the public of a product

with the mark attached4. Analysis ZHDs sales of its products are insufficient use to establish priority

over Loreal. A few bottles over the counter and a few more mailed to a friend, neither links theZAZU mark with the ZHD products in the mind of consumers nor put other producers on notice.ZHD applied for registration after Loreal not only had registered the mark but also put its producton sale nationwide. Efforts to register came too late. Intent to use a mark, like a naked registration,establishes no rights at all. Held for D.

5. Franklyn agrees with Dissent,a. Loreals knowledge of ZHDs use should defeat Loreals claim of

priority. Loreal did not even act in good faith.b. A service mark can be infringed by its use on a closely related product

Hair salons service mark is obviously infringed by Loreal selling hair products under the samename.

c. Since federal law did not apply here, TM right should be judged bycopyright, which is based on first to marketplace.

HOW ARE TRADEMARK RIGHTS INFRINGED

A. Test


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i. Whether P can show an appreciable number of relevant consumers are likely tomistakenly think that Ds goods come from the same company as Ps goods, or thatthe goods come from affiliated companies, or that Ps company is sponsoring the Dsproduction of these goods.

ii.Factor Test from (AMF v. Sleekcraft Boats)

1. Strength of the markIf mark is weak and entitled to restricted range ofprotection, only if the marks are quite similar and goods be related willinfringement be found

2. Proximity of the goods - The more likely the public is to make such anassociation, the less similarity in the marks is requisite to a finding oflikelihood of confusion

3. Similarity of the marks do the marks i) sound like? ii) look alike andiii) similar meanings?

4. Evidence of actual confusion based on complaints and not surveys, canbe rebutted, i.e. things have changed

5. Marketing channels used- Convergent marketing channels increase the

likelihood of confusion, include considering sales methods and priceranges6. Types of goods and the degree of care likely to be exercised by the

purchaser- Standard is typical buyer exercising ordinary caution, thestandard includes the ignorant and the credulous. Consider when thegoods are expensive, the buyer can be expected to exercise greater care inhis purchases. Also, whether the trademark is important to the averageconsumer

7. Ds intent in selecting the mark although P does not have to prove Dacted w/ bad intent, however, bad intent can be probative evidence ofconfusion that D was trying to confuse the public and Ct assumeslikelihood of succeed when confusion is intentionally attempted. Badintent also goes into equitable considerations.

8. Likelihood of expansion of the product lines - A strong possibility thateither party may expand his business to compete with the other will weighin favor of finding that the present use in infringing

B. AMF v. Sleekcraft Boati. Facts: Plaintiff (AMF) owns trademark slickcraft, while D uses mark sleekcraft,

D also uses a logo different from P. Both companies designs and manufactures boats.ii.Rule & analysis

1. strength of the mark Slickcraft is a suggestive mark and therefore a weak mark entitled to

a restricted range of protection. Thus, only if the marks are quitesimilar and the goods closely related will infringement be found

2. proximity of the goods Although these product lines are non competing, they are extremely

close in use and function, in fact, the use overlaps. Their functionalfeatures, are for the most part, also similar. They are so closelyrelated that a diminished standard of similarity must be appliedwhen comparing the two marks


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3. similarity of the marks Sound and meaning is really similar, almost virtually synonyms,

though distinctive logo may make the mark look more different.4. evidence of actual confusion

This evidence is persuasive proof but hard to come by. In this case,

evidence of actual confusion is negligible.5. marketing channels used each sells through authorized dealers, same sales methods are

employed, price ranges are almost identical. Each line is advertisedextensively through different national magazines, and participate insimilar boat shows etc. Although diff submarkets are involved, thegeneral class of boat purchasers exposed to the products overlap.

6. type of goods and the degree of care likely be exercised by purchaser Dist Ct found that the TM was unimportant to the average boat

buyer. Common sense and evidence indicate that this is not the typeof purchase made only on general impressions. High quality of

Ds boat is also relevant in a way, b/c TMs owner interest ofprotecting its reputation is not harmed in

Documents

IPSurveyOutline Franklyn Fall2010.Doc (1)