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A Great Intellectual Property Outline for Law School

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					Lecture Topic: During the lecture, take notes here. Introduction  Labor/Desert Theory   What is the Lockean Labor Theory? Every person owns his or her own body  The world is held in common prior to labor or appropriation for use.  You make something useful, you should be able to use the product as yours. Apple plucked from a tree becomes property  Field enclosed for farming becomes property   How might it apply to copyrights? Labor turns common materials (pen, paper) and facts/ideas (heroes,  spaceships) into finished products (movies, etc.) Sacrificial days devoted to…creative activities deserve rewards  commensurate with the services rendered Economic Theory of Property   Incentives to make investments  Efficient uses. Encourages use by "highest valued users"  Internalizes costs by preventing "free riding" on common property or the investments of others  Reduces transaction costs of protecting one's investments against "free riding"  What is the economic theory of copyright? Ideas and expression have a "public good" aspect - hard to make a  profit. What is a public good? High fixed costs-low marginal costs = inadequate incentives  Copyright imposes artificial scarcity to enhance incentives  Allows the creator to recoup their costs  Types of IP   How do the methods of acquiring IP differ? Copyright v. patent  One something is put into tangible medium, it is automatically  copyrighted Patent must be registered  Why do they have this?  Copyrights are much less complicated than patents  Trademark v. trade secret  Trademark, must fill out an application  Trade secret is not generally known; company must actively  conceal the information Copyrights  Protectable Copyright Has the Following   Copyrightable Subject Matter: broad range of literary and artistic expression. Ideas themselves are not copyrightable, but the author’s particular expression of an idea is protectable.  Threshold for protection: work must exhibit a modicum of creativity/originality and be fixed in a “tangible medium of expression”

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Formalities: registration not required for validity, but required prior to instituting an infringement suit. Deposit of copies of the work is required to obtain registration of copyright.  Authorship and Ownership: Work must have been created by party bringing suit, or rights transferred to them. For works made “for hire,” employer and not the employee is considered the author and the owner of the work.  Duration of Copyright: Lasts for life of author plus 70 years. Overview  Statutory Definition "in original works of authorship fixed in any tangible medium of  expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device Ultimate purpose is to stimulate the creation and dissemination  of as many works of authorship as possible, in order to benefit the public. The law does this by giving creators of works of authorship limited rights in their works. Copyright protection is limited to an author's particular method of expressing an idea. Copyright never gives rights in the idea being expressed or in facts or other elements of the public domain that the author may have incorporated into the work. Copyright protects the intangible expression fixed in the  manuscript or canvas. Transfer of title does not transfer the copyright.  Originality requirement Must fulfill two requirements  Author must have engaged in some independent intellectual  endeavor and not just copied form a preexisting source Work must contain a minimal amount of creativity  Facts are "discovered" and not "created," they are not  copyright protectable, nor are slogans Fixation  Federal copyright attaches to the intangible work of authorship,  not the physical manifestation of it, but the work only qualifies for federal copyright protection once it has been fixed in a tangible form. Fixed in a tangible form when its embodiment in a copy  or phonorecord, by or under the authority of author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.  Brief History of Copyright Protection 1909 Act  Literary works became "all writings, speeches, etc."  Protection lasted 28 years, then an additional 28 with renewal  1976 Act  All written works, even unpublished works, are protected  Copyright 50 years, or 75 under certain conditions  Berne Convention  USA joins to protect US products worldwide  Cheap fakes throughout the world 

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Digital Age Changes to copy with the digital age (Napster comes to mind)  Feist v. Rural Facts: Feist wants directories from all Kansas area companies. Feist  (competing directory) offered to pay for usage of Rural’s list. Rural refused to give up list. Feist stole white page listings; Rural sues for copyright infringement. Issue: Stealing of the list copyright infringement?  Holding: There was no modicum of creativity. Though it is a compilation  of facts (compilation of facts are copyrightable). But the Constitution states it must have creativity from the "writings of an author."  Time Inc. v. Bernard Geis Associates Facts: AZ sells video of JFK assassination to Life. Life uses footage and  copyright provisions correctly. D writes book, uses pictures from the film. P states D stole and violated the copyright. Issue: Was the Zapruder movie copyrightable?  Geis says this was news, so it can't be copyrightable  Time argues that this was creatively put together. It's the way  the facts were put together Talk about the location, film, lens, etc.  Holding: Movie is protected by copyright. This was made in a creative  way. News events cannot be copyrighted, but news reports can be  copyrighted  Generally Copyrightable (creative expression) Books, articles, photographs, paintings, sculptures, maps, architecture,  charts, calendars, catalogs, music, movies, choreography, software  Generally Not Copyrightable Ideas, facts, news, processes, methods of operation, sciences,  principles, discoveries, order forms, address books, mere reproduction of public domain material Subject Matter of Copyright Types of copyright  literary works; (includes computer programs)  musical works, including any accompanying words;  dramatic works, including any accompanying music;  pantomimes and choreographic works;  pictorial, graphic, and sculptural works;  motion pictures and other audiovisual works;  sound recordings; and  architectural works  Generally copyrightable = creative expression  Books, music, instructions/diagrams on choreography, architectural works, maps/charts, catalogs, calendars, software, paintings, sculptures, pictures  These express an idea…use illustrations, etc. to express something  Generally not copyrightable  Device process, method of manufacturer, how to use something, facts, peer ideas, news, blank forms, address book
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 Baker v. Selden  Facts - Selden writes a book showing a different way of book-keeping, new way

of double entry accounting. The book flops, doesn't sell much. Years later, Baker creates a similar book and does well. Selden passed away, but his wife brought suit for copyright infringement on the book and its ideas.  Issue - Can a person who creates a book obtain a copyright on the book and ideas in the book?  Holding - No, you may only obtain a copyright on the book itself. No one is able to copy your book, but unless you get a patent for the ideas in the book, that is open to the public, as is the case here. If this policy were accepted, no new ideas would flow and everything would be copyrighted.  Copyright does not grant exclusive rights to an "art or manufacture"  Methods or diagrams necessary to an art cannot be copyrighted  Explanations, ornamental designs and pictorial illustrations may be copyrightable  Should Selden have been able to get both a copyright on his forms and a patent on his system?  Yes and no. Obviously easy to fight anyone taking his idea, but he will have trouble if he wants others to use it (must grant some type of license)  How could Selden make a natural property rights argument for a copyright in his forms? How would Baker respond?  Baker could say that there are no natural rights. It is an idea and if he wants protection, he should've got a patent  How could Selden make a utilitarian economic argument?  If you don't allow me to copyright and protect my book, I'm not going to create anymore book-keeping ideas  Baker can respond if he blocks competition, a monopoly is created  Detective Comics v Bruns Publications  Facts: Defendant creates Wonderman, essentially a rip-off of Superman. Both characters do the same things, with minor variations. Wonderman's creator says he got the idea from the general heroes (Hercules, etc.).  Issue: Is the creation of Wonderman copyright infringement?  Bruns said in defense that he merely copied idea of comic-book Hercules, a figure of mythology  Holding: Yes, the similarities are too similar. Superman creator goes in-depth at the creation, and Wonderman took a number of the similarities and used them. DC received an injunction against portrayal of Superman's powers, costume or appearance  Atari v. North American Philips Consumer Electronics Corporation  Facts: Creators of Pac-Man sue creators of K.C. Munchkin due to the similarities of the game.  Issue: Does Pac-Man get copyright protection against K.C. Munchkin?  Holding: Yes. Though K.C. Munchkin isn't the exact same as Pac-Man, it captures the total concept and feel of the game. Many aspects are similar and the stores were promoting the game as Pac-Man like.

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There was evidence that Phillips wanted to license the game, changed the color of the gobbler, and retailers referred to K.C. Munchkin as PacMan Copyright Duration and Ownership  Commencement of Federal Copyright  Under the Copyright Act of 1909, in most cases federal copyright commenced upon publication of the work with proper notice of copyright. Under the Copyright Act of 1976, federal copyright commences upon creation of the work. A work is created when it is first fixed in a copy or phonorecord.  Duration for Copyright for Works Created On or After January 1, 1978 Duration of copyright is the life of the author plus 70 years.  Works of joint authorship, life of the last of the joint authors to die plus  70 years Anonymous or pseudonymous works and works made for hire duration  is 95 years following the first publication or 120 years following creation of the work, whichever period expires first  Duration of the Copyright for Works Created but not Published before January 1, 1978 Works created but unpublished on January 1, 1978 became protected by  federal copyright on that date. Copyright will last for the life of the author plus 70 years or until December 31, 2002, whichever is longer. If the work was published on or before December 31, 2002, the copyright will not expire before December 31, 2047  Duration of the Copyright for Works Already Protected by Federal Copyright on January 1, 1978 Under the Copyright Act of 1909, federal copyright consisted of a term  of 28 years. Copyright could be renewed at the end of that term for a second term of 28 years, giving a total of 56 years. If the copyright wasn't renewed, it expired and went into public domain. 1976 Act was enacted allowed the second term to be extended an  additional 19 years Sonny Bono Copyright Term Extension Act, enacted in 1998, further  extended the second term of pre-1976 copyrights an additional 20 years (total of 67 years) If you came into existence before the effective date of the 1976  Act and continued to exist on October 27, 1998, enjoyed an initial term of 28 years, but if renewed now have a total term of 95 years.  Eldred v. Ashcroft  Facts: P wanted 20 year extension of copyright so thins didn't go to the public quite yet (Mickey Mouse, music, etc.). Opposing party did not want this, stating three arguments, 1. Overlooks the requirement of originality, 2. Fails to promote the Progress of Science, and 3. Ignores copyright's quid pro quo  Issue(s): CTEA's extension exceeds Congress's power under the Copyright Clause? CTEA's extension of existing and future copyrights violates the First Amendment?  Holding: Extension granted. 1. Talks about the originality brought up in Feist, but Feist talked about creative aspects, but never mentioned duration. 2. Progress of Science is directed by Congress, not the courts. 3. Quid pro quo ----

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- Also, Congress has changed the length of time and granted more time throughout the centuries. Person still allowed to make use of any copyrightable idea without infringing (study, research, etc.)  Premise: Congress has the power to grant extensions of copyrightable protection to people.  Dissent:  Community for Creative Non-Violence v. Reid  Facts: Artist and company that hired him in battle for copyright to piece of art. CCNV hires artists to create a sculpture depicting homeless people at Nativity Scene. $15k to do, but no mention of copyright at all. Reid wasn't given any orders except to make a statute of these people. CCNV wanted to take the model on tour, Reid objected due to material. In 1986, Reid filed for copyright, CCNV soon followed stating that since they hired him, it is their product.  Issues: Who has the copyright to the sculpture?  Holding: Reid. Work was not made for hire, did not fit within any of the nine categories. Then must look to see if he was an employee. In this case, employee isn't defined, so you must look at the established meaning. Other than the fact that CCNV told him to make the sculpture, Reid was in total control. Because of this, he was an independent contractor.  Premise: Since Reid was not an employee or hired for a work made for hire, he retained copyright control.
TABLE 4-1 Duration of Copyright Protection Date work created Created January 1, 1978, or thereafter Protected from When the work is fixed in a tangible medium of expression Term of protection* Life of the author +70 years or if work of corporate, anonymous, pseudonymous entity, or if work for hire, 95 years from publication, or 120 years from creation, whichever is less 28 years for first term; automatic extension of 67 years for second term 28 years for first term; could be renewed for 67 years; if not so renewed, now in public domain Life of the author plus 70 years or at least until 2003 if the work remains unpublished. If the work is published by 2003, term expires in 2048.

Published between beginning of 1964 and end of 1977 Published between 1923 and end of 1963 Created before January 1, 1978 but not yet published Sound recordings created prior to February 15, 1972

When published with notice

When published with notice

January 1, 1978, the effective date of the 1976 Act which eliminated common law copy right protection Depends upon treatment under applicable state law. “Any rights or remedies [for such works] under the common law or statutes of any State shall not be annulled or limited by this title until February 15, 2047.” 17 U.S.C. § 301(c).

* Copyright terms run until the end of the calendar year in which they would otherwise

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Copyright Infringement  Direct Infringement  Anyone who makes an unauthorized reproduction, adaptation, distribution to the public, public performance, or public display is liable for direct infringement to the owner of the copyright work.  Contributory Infringement Liability  One who knowingly induces, causes, or materially contributes to the infringing conduct of another  Two elements must be demonstrated Defendant must know or have reason to know of the other person's  infringing activity The defendant must actively participate by inducing, materially  contributing to, or furthering the other person's directly infringing activity Sony v. Universal City Studios  One who manufactures or distributes a product that he knows  purchasers may use to infringing copyrights will not be held liable for contributory infringement merely by making the product available to the public, as long as the product is capable of substantial non-infringing uses A&M Records v. Napster  Court elaborated on Sony, holding that if the D learns of specific  acts of infringement through use of its product or service and is in a position to stop it, it must do so, regardless of whether the system has substantial non-infringing uses. Failure to take action to stop the infringement will lead to contributory infringement. Metro-Goldwyn v. Grokster  Sony rule does not apply when the defendant's purpose in  distributing a product is to cause or facilitate infringement. Grokster decision created a new theory of indirect infringement liability called "inducement" liability, which is not subject to Sony  Vicarious Infringement Liability  Found whenever the defendant has the right and ability to control or supervise the direct infringer and a direct financial interest in the infringement. Not necessary that the defendant know of or participate in the direct infringement. Display, Performance, Derivative Works  Display  Copyright owners posses the exclusive right to display their work publicly  Performance  Copyright owners possess the exclusive right to perform or display their works publicly  Derivative Works  A work based upon 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 transformed or adapted.

 Distribution Right  "First sale doctrine" - Copyright holder cannot restrict what a purchaser of a

particular lawful copy does with that copy
 Video Pipeline v. Buena Vista  Facts: VP employed by BVHE to create trailers. VP starts using the internet for

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trailers and links them on video store websites, getting paid by the click. BVHE objects to this practice, stating this was never in the agreement. VP obliges, but then creates own trailers using the video from its customers stores. BVHE states this is copyright infringement.  Issue: Is the act of taking video and making a trailer copyright infringement?  Holding: Yes. First, must look and see if copyright is violated by looking at s. 106. Here, 106(4) is violated "in the case of…motion pictures and other audiovisual works, to perform the copyrighted work publicly. Once there, must look and see if they "performed or displayed the work publicly." Here, they did since the internet allowed the general public to click and view the trailer. VP allowed transmission of images of nonsequential scenes from a motion picture to occur over the internet and be made available to all members of the public, not just subscribers as in Playboy Enterprises. VP brings up First Sale doctrine. This shows that the copyright owner  can't control once "material ownership" is transferred to another. But court does not allow VP to use this since they held VP should not be protected by video stores who abided by the law. Fair Use (LOOK MORE INTO CASES)  Fair use defense is available once a prima facie showing of copyright infringement or violation of the moral rights in a work of visual art has been made. Applied on a caseby-case basis to identify and permit unauthorized uses of copyrighted works that further the purposes of copyright law without significantly undercutting authors' incentive to create.  Purposes such as criticism, comment, news reporting, teaching, scholarship, research normally fall under fair use  Four factors  17 U.S.C. s. 107 - Limitations on Exclusive Rights: Fair Use (1) The purpose and character of the use, including whether such use is  of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work;  (3) the amount and substantiality of the portion used in relation to the  copyrighted work as a whole; and(4) the effect of the use upon the potential market for or value of the  copyrighted work  Parody Cases  Parody based on a copyrighted work is more likely to be excused as a fair use if the parody is at least in part aimed at the copyrighted work itself and the defendant only copied to the extent necessary to "conjure up" the copyrighted work in the audience's mind, so the audience would understand the parody.  Campbell v. Acuff-Rose Music  Facts: 2 Live Crew uses Roy Orbison's Pretty Woman song and creates a parody.  Issue: Could 2 Live Crew's commercial parody be fair use?

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Holding: Yes. 2 Live Crew used the music and first line of Orbison's song, but they completely transformed the rest of it. The amount used was reasonable with regard to the group's purpose.  Reverse Engineering Object Code  May copy object code in a game to uncover and gain access to unprotected ideas and elements embodied in the object code and defendant has a legitimate interest in gaining such access to those ideas and elements. Copyright Enforcement and Remedies  Injunctions and Disposal of Infringing Articles  Preliminary and permanent injunctions may be awarded against copyright infringement and violation of the author's moral rights in works of visual art. Napster v. A&M  Napster wanted damages, but A&M wanted injunction. Ruled  for A&M and gave injunction.  Damages and/or Profits  Copyright owner can recover the actual damages suffered as a result of the infringement plus any of the defendant's profits attributable to the wrongdoing which were not taken into account in determining actual damages.  Copyright owner can also elect to recover statutory damages instead of actual damages and profits. Statutory damages can go up to $150,000.  Costs and Attorney Fees  Costs are normally awarded against a party who acted in bad faith.  TRIPS Agreement  Agreement on Trade-Related Aspects of IP Rights is based on national treatment and "most favored nation" principles and requires WTO members to comply with most of the provisions of the Berne Convention.  Must be expeditious remedies to prevent infringement Injunctions must be available, damages must be available against  knowing or reckless negligent infringement Attorney's fees and costs must be available   Must be deterrence to further acts of infringement Give P right to destroy or dispose of infringing good without sale to  public  This theory was pushed by the U.S. and a few other countries who felt their works were being infringed around the world. They were incurring billions in losses due to IP infringement in other countries Preemption of State Law
Underlying Theory Limited (although relatively long-lived) monopoly to encourage the authorship of expressive works; developed initially as a means of promoting publishing. Also reflects a moral sense that authors deserve to own the works they have created. © Act (federal); common law (limited) Literary, musical, choreographic, dramatic, and artistic works limited by idea/expression dichotomy (no protection for ideas, systems, methods, procedures); no protection for facts/research Originality; authorship; fixation in a tangible medium

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Source of Law Subject Matter

Standard for

Protection Scope of Protection Period of Protection Disclosure Rights of Others Costs of Protection Licensing and Assignment Remedies Rights of performance, display, reproduction, derivative works Life of author + 70 years; “works for hire”: minimum of 95 years after publication or 120 years after creation © notice and publication no longer required, but confer certain benefits Fair use; compulsory licensing for music compositions, cable TV, et al.; independent creation None (protection attaches at fixation); publication requires notice; suit requires registration; litigation costs Assignor has termination right between 36th and 41st years following transfer. Injunction against further infringement; destruction of infringing articles; damages (actual or profits); statutory; attorney fees; criminal prosecution

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Trademark
Underlying Theory Source of Law Subject Matter Standard for Protection Scope of Protection Period of Protection Disclosure Perpetual protection for distinctive nonfunctional names and dress in order to improve the quality of information in the marketplace Lanham Act (federal); common law (unfair competition) Trademarks; service marks; certification marks; collective marks; trade dress Distinctiveness; secondary meaning (for descriptive and geographic marks); use in commerce (minimal); famous mark (for dilusion cases) Exclusive rights in U.S.; likelihood of confusion; false designation of origin Perpetual, subject to abandonment ® notice optional; establishes prima facie evidence of validity, constructive knowledge of registration, confers federal jurisdiction, becomes incontestable after 5 years of continuous use, authorizes treble damages and attorney fees, and right to bar imports bearing infringing mark Truthful reflection of source of product; fair and collateral use Registration search; marking product; litigation costs No naked licenses (owner must monitor licensee); no sales of trademark “in gross”

Rights of Others Costs of Protection Licensing and Assignment

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Injunction; accounting for profits; damages; attorney fees; seizure and destruction of infringing goods

Trademark Law  Purpose of trademarks  Allow consumers to identify the source of goods or services. Allows them to accurately and efficiently select the products and services they want.  Distinctiveness  Marks must be distinctive before categorizing them as a trademark.  Highest in hierarchy are arbitrary and suggestive marks which are inherently distinctive. Lower in the hierarchy are common, descriptive and generic.  Types Arbitrary - Made up and have no meaning other than their trademark  meaning. Arbitrary marks are those that in no way describe the particular product or service they are meant to identify. Examples - Kodak (completely made up) and Apple (didn't make  up, but has nothing to do with the product) Suggestive - Mark that indirectly describes the product or service they  identify. Consumer must engage in a mental process of his or her own in order to associate the mark with a description of the good or service being identified. Two tests - 1. "Degree of imagination" test - more imagination  the consumer must use to get a direct description of the product or service, the more likely it is the mark will be found suggestive. 2. Is the mark one that competitors are likely to need in order to describe their own products or services. If not really needed, the mark is more likely to be deemed suggestive. Ex. Coppertone - can be used for a few different products, also  Chicken of the Sea, 7-Eleven, YouTube, Bowflex Descriptive - May include the following:  Includes (1) marks that appear to describe the product or  service they identify; (2) marks that appear to describe the geographical location from which the goods or services emanate; (3) marks that are primarily merely a person's surname; and (4) other marks that are commonly used in connection with the person's surname; and (4) other marks that are commonly used in connections with the relevant type of goods or services Color, odor, function  Geographically descriptive marks - (1) conveys to a  meaningful segment of the purchasing public primarily or immediately a geographical connotation and (2) those persons are likely to think that the goods or services in fact come from that place Surname marks - If its overall impact on the consuming  public is a surname meaning and nothing more. Must be evaluated in light of the particular good or  service they identify.

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Generic - Common descriptive name of a class or genus of good or service. Cannot serve as a valid mark for a product/service. Must look at its primary significance to consumers is an indication of the class or genus of product or service. Ex. SUV   Secondary Meaning Attained when, due to exposure to the mark in the marketplace, the  relevant consuming public views the mark not in its primary, common, descriptive or surname sense, but as an indication of the source of the product or service.  Generic Marks Common, descriptive name of a class or genus of good or service.  Cannot serve as a valid mark for that good or service. Standard for determining whether an alleged mark is or has become  generic is whether its primary significance to consumers is an indication of the class or genus of product or service or an indication of origin Asprin  Registering a Trademark  Registration of trademarks is not necessary, but the registration of marks does provide additional rights  Advantages of Registration  Right to assistance from U.S. Customs in preventing infringing goods from entering country  Presumptions of mark ownership and validity  Rights in the mark in a greater geographical area than often would be possible under common law  Actual Registering  In order to register a mark, in addition to being used in trade, the applicant must demonstrate use of the mark in interstate commerce or in a manner that affects interstate commerce  May also file in the Patent and Trademark Office (PTO)  May also file with PTO a bona fide intention to use  What are the requirements of a trademark registration?  Word, name, symbol or device  Use or BF intention to be used by a person  In commerce  To identify and distinguish source of goods or services Company needs to use the trademark to say "this is mine"   And is not comprised of or characterized by being Offensive or disparaging material  Redskins (must be disparaging to the majority of people within  the organization) Immoral subject matter  Deceptive or falsely implying a connection with person institution  Likelihood of confusion or mistake as to source  Merely geographical descriptive  Functional word or phrase ("You've got mail" was too functional to get  trademark protection)

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Trademark Protectability and Infringement  Trademark protection addresses two major points  Protects the public's interest in being able to accurately and efficiently ascertain the source of goods and services in the marketplace  Protects a trademark owner's business good will against the lost sales and damage to reputation that may occur if others are permitted to use the mark which could confuse potential customers  Two part test for trademark infringement  Was the D use of the mark "trademark use"? Defendant must use the mark in a way that invites consumers to  associate the mark with the goods/services the P has  Whether the use is likely to cause consumer confusion? 1. Strength of P mark  2. Degree of similarity between the two marks  3. Proximity of the products or services  4. Likelihood that the prior owner will "bridge the gap" into the  newcomer's product or service line 5. Evidence of actual confusion between the marks  6. Whether the defendant adopted the mark in good faith  7. Quality of defendants' products or services  8. Sophistication of the parties' consumers   Trade Dress  In order to be protected, must demonstrate the mark is capable of identifying or distinguishing the claimant's product or service Even color alone (pink insulation) can be protected if a secondary  meaning is established  Trade dress can be product packaging, product features, or even an overall image of a business  The claimant in trade dress must always demonstrate secondary meaning  Two part test in TrafFix v. Marketing Display Is the feature essential to the use or purpose of the article, or does it  affect the cost or quality of the article? If the answer to either is yes, the product is functional and  cannot be the subject of trade dress If the answer is no, then must apply the Qualitex standard…  Would the exclusive use of the feature put competitors at a significant,  non-reputation-related disadvantage? If so, there is "aesthetic functionality," and the feature may not  be protected. Only if the product feature is non-functional under both tests  can it be protected as trade dress Trademark Infringement, Nominative Use, and Fair Use  Confusion as to Source  What if an accused infringer uses a trademark on a group of products that the trademark owner does not sell?  Identical marks can sometimes cause confusion as to the source of the products, even in the absence of direct product competition.  Two ways the trademark owner can be hurt in such a situation

Quality of product is inferior Trademark owner may one day wish to expand into the market  Confusion as to Sponsorship  Causing them to believe that the trademark owner is affiliated with or sponsors the infringer's products. Make it look like one group has agreed to sponsor the other  In cases of confusion as to source or as to sponsorship, the essential question is whether consumers are likely to be confused by the similarity of the marks  Initial Interest Confusion  Competing restaurant puts a McDonalds sign on its exit. There is no McDonalds, so they hope the customer will get off the exit and attend their place.  Metatags being used to draw unsuspecting people to their website  Post-Sale Confusion  Third parties who see the product from a distance will assume the products are the same  At least some customers would buy the cheaper product for the purpose of acquiring the prestige gained by displaying what many visitors at the customers' homes would regard as a prestigious article  If there are too many knockoffs in the market, sales of the originals may decline because the public is fearful that what they are purchasing may not be an original  Reverse Confusion  Large company will adopt the mark of a smaller trademark owner  Risk is that the public will come to associate the mark not with its true owner, but with the infringer  Case was ruled for "March Madness" which gave dual use trademark protection Doesn't make sense to me, how do you decide who gets to sue?   Defenses  Genericness Term to serve the purpose of a trademark, it must point to a unique  source When a term refers instead to a general class of products, it is deemed  "generic"  The Fair Use Defense In determining whether a defendant's use is a protected fair use, a court  will consider the manner in which the defendant used the mark, whether the defendant acted in good faith, and the extent to which the defendant's use is likely to confuse consumers. If it appears the mark was used in good faith, strictly for the purpose of  describing her own product, the court will permit the use as long as there is no likelihood of confusion created by the use.  Nominative Fair Use Applied when a defendant has used the P mark to describe or refer to  the P product Three items must be used  1. P product must not be readily identifiable without use of the  mark

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2. Defendant may only use so much of the mark as is reasonably necessary to identify the P product 3. D must do nothing that would in conjunction with use of the  mark, suggest sponsorship or endorsement of his product by the P Parody and the First Amendment  Again, use the eight part test to see if there is confusion between the parody and the trademark. If a person can realize that the marks are not the same, they will normally be protected under trademark.  1. Strength of P mark  2. Degree of similarity between the two marks  3. Proximity of the products or services  4. Likelihood that the prior owner will "bridge the gap" into the newcomer's product or service line  5. Evidence of actual confusion between the marks  6. Whether the defendant adopted the mark in good faith  7. Quality of defendants' products or services  8. Sophistication of the parties' consumers  Rogers standard  If you use someone else's trademark to promote your own product yet you do not speak about that product at all, that will be a violation of the Lanham act  Don't explicitly mislead Trademark Dilution  Allows the owner of a famous, distinctive mark to enjoin another person's commercial use in commerce of a similar mark or trade name is such use begins after P mark has become famous and causes dilution to the famous mark's distinctive quality.  Example
  Trademark dilution only applies to famous marks. Several factors which include  Degree of mark's inherent or acquired distinctiveness; duration and extent of

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the claimant's use of the mark; duration and extent of advertising and publicity of the mark; geographical extent of the trading area in which the mark is used; channels of trade for the goods or services; mark was federally registered  Defenses to Claims of Dilution  Trademark is not famous  Not engaging in commercial use (commercial use defined more narrowly than commerce in the commerce clause) Search engines sued for selling advertising based on their trademarks; is  this a commercial use?  News reporting  Political commentary  Fair use in comparative advertising Cybersquatting and Cybergriping  Prohibits the registration, trafficking in, or use of a domain name that is identical or confusingly similar to, or dilutive of, another person's mark.  Two limitations  Mark must have been distinctive at the time the domain name was registered  The P must demonstrate that the defendant acted with a bad faith intent to profit from the business good will of the mark

 What to consider when the D registered the domain name with a bad-faith intent to

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profit  Whether the domain name registrant has trademark or other intellectual property rights in the name  Whether the domain name is the same as the registrant's own legal name or established nickname  Domain name registrant's prior use of the name, if any, in connection with the bona fide offering of goods or services  Whether domain name registrant acquired multiple domain names that he knows to be identical or confusingly similar to or dilutive of others' marks  If the person's registers a name just to sell, you can get that domain name cancelled, transfer the domain name to the P or have them forfeit the name  Trademark Enforcement  Injunctions  Courts grant injunctions against further trademark infringement and dilution.  Preliminary injunctions can also be available.  Damages  May recover actual damages for her business reputation and lost sales. P can prove up to three times, if necessary, in order to adequately compensate the P.  P may also recover the amount of the D profits, if the D had been unjustly enriched  Attorney Fees  Exceptional cases, you may be able to also obtain attorney fees  Counterfeit Marks  Federal law provides special, enhanced civil and criminal penalties for certain uses of counterfeit marks  False Advertising k Patents
Underlying Theory Source of Law Subject Matter Limited monopoly to encourage production of utilitarian works in exchange for immediate disclosure and ultimate enrichment of the public domain Patent Act (federal) Process, machine, manufacture, or composition of matter; plants (asexually reproducing); designs – excluding: laws of nature, natural substances, business methods, printed matter (forms), mental steps Novelty; non-obviousness; and utility Exclusive rights to make, use, sell innovation as limited by contribution to art; extends to “equivalents” 20 years from filing Right to patent lost if inventor delays too long after publishing before filing application; full disclosure is required as part of application; notice

Standard for Protection Scope of Protection Period of Protection Disclosure

of patent required to damages Rights of Others Costs of Protection Licensing and Assignment Remedies Only if licensed; can request reexamination of patent by PTO Filing, issue, and maintenance fees; litigation costs Encouraged by completeness of property rights, subject to antitrust constraints Injunctive relief and damages (potentially treble); attorney fees (in exceptional cases)

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Introduction  Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. They will get protection for a limited term (20 years if registered after June 8, 1995). Must be "non-obvious novel, and useful and are fully disclosed".  How do patents differ from copyrights?  Much more rigorous examination  Patents are more utilitarian, but it has to be potentially useful. Same for copyrights except it doesn't have to be useful.  Rights provided by patent provide a much shorter protection period; copyright much longer protection period. Copyright, people may still use other books; but under patent law, you can restrain someone from using your product.  Federal Circuits govern patents - Regional circuits for copyrights  How do patents differ from trademarks?  Cannot patent one word  Difficult to patent things like colors. Must show some advance  No requirement in patent law that your invention is successful; in trademark law, you can only get protection if you have secondary meaning or dilution if you're famous. If you're unknown or unpopular, you will be lost.  Types of Patent Theories  Locke's Labor Theory - Property interest in your own body. If you mix your labor with some of the things from the commons (earth), you should get the fruits of your labor protected. Improvements enhance value of common property and therefore justify property rights. These improvements should benefit the laborer and not the third party.  Utilitarian Theory - Exclusive rights to inventions promote general happiness for everyone.  Economic Theories of Patents  "Chicago School" Theory of Patents Inventions have a "public good" aspect (non-excludable/non-rivalrous)  High fixed costs and the chance someone steals it doesn't create  incentive to create inventions Patent system rewards innovation at a low cost   Naturally Occurring v. Man-Made Things - Plant Matter

 Diamond v. Chakrabarty - Patents may only be granted for "man-made" things,

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not for naturally occurring things. Patent may be granted for living matter that has been altered by an applicant to have characteristics if would not have had naturally.  Business Methods  Business methods are patentable subject matter as long as they produced a "useful, concrete, and tangible result.  In re Bilski Cannot have patents that are just mental processes or a method of  business unless you have a transportation to a physical object, machine, or data representative of a a physical object. Need more than just math  Need to show a connection to the world   Laws of Nature and Abstract Ideas  Laws of nature and abstract ideas may not in themselves be subject to patent protection. But you may protect these rights if you incorporate the idea with a process  Medical Procedures  Medical procedures are patentable, but remedies for infringement of such patents are limited in some cases (I'd imagine life or death) Patentability  Novelty Standard  Gayler v. Wilder - Safe case built by and patented by person A. Person B says they built this earlier. But the court held that when memory of an invention is lost, it's rediscovery is like re-inventing it. The public can not derive any good from the invention until it is rediscovered.  Coffin v. Ogden - Lock invented. This lock had been used by another person before. The second person to use it tried to get a patent, but he was unable because the use of one person defeats patentability. Neither tests or wide use is needed.  Times when novelty standard is not met: Prior knowledge or use by others (102(a)) - no patent  Knowledge - "Reduced to practice" actually or constructively or  accessible to the public. Used - "Reduced to actual practice; and used in the manner  intended by its inventor. Also accessible to the public. Prior printed publication, sales, or patent (102(b)) - no patent  Printed - normally satisfied if it was reduced to a discernible  tangible, permanent form Publication - Interested party can exercise reasonable diligence  and find the publication and the invention must have set forth sufficient information regarding the invention. Patented - Applicant's invention was the actual subject of the  patent monopoly Patent effectively granted rights in the invention before s.  102(a) applicant invented Patent disclosure was available to the public before s. 102(a)  applicant's invention date

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Prior abandonment by the inventor (102(c)) - no patent Prior invention (102(g)) - no patent Prohibits B from obtaining a patent if A made the same  invention before B did and A did not abandon, suppress, or conceal the invention Prior commercial use of business method for > 1 year - defense to  patent claim  Non-obviousness Standard  An invention is not patentable if, at the time it was made, it would have been obvious to a person having ordinary skill in the pertinent art, with knowledge of all the pertinent prior art. In order to make this determination, a court must ascertain three things (1) Scope and content of the prior art  Obviousness can be demonstrated by showing prior art or even  a combination of two or more prior art references as long as it would have been obvious to make the combination. Can also consider objective factors  (2) Differences between the pertinent prior art and the invention  (3) Ordinary level of skill in the pertinent art   Usefulness  Use if there is a current, significant beneficial use for the invention or, in the case of a process, the product of the process. Can also fail for usefulness if it fails to operate as claimed in the application.  Disclosure  Three part claim 1. Applicant must include one or more claims that clearly and distinctly  describe the invention 2. Applicant must describe how to make and use the invention with  sufficient clarity and detail to enable a person with ordinary skill in the relevant art to make use of the product 3. Must set forth the best mode that she contemplates for carrying out  her invention as of the application filing date  Design Patent  14 year protection in the design (appearance) of an article of manufacture. To qualify for a design-patent, must be novel, non-obvious, and ornamental Non-obviousness - Determined by person in the field with ordinary skill  Patent Infringement  Can be liable for infringement if (1) for directly infringing a patent; (2) for inducing another to infringe a patent; (3) contributory infringement; (4) for importing, selling offering to sell or using a product made through a process protected by a U.S. process patent; or (5) for manufacturing or selling certain components of a patented invention to be assembled abroad  Steps in determining patent infringement  1. Look at the patent claims which describes the scope of the invention. If D product/process literally falls within the description in a claim, it literally infringes the patent. However, if D has made a change so the product or process does not literally fall within the wording of any claim, he may still be liable for direct infringement under the doctrine of equivalents

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Doctrine of equivalents - Essentially if a D changes something in his patent just a bit to get around infringing a patent, he may still be held liable.  2. Doctrine of prosecution history estoppel. Must look at the scope of the patent claims to be interpreted in light of what happened in the application process in the P.T.O. If applicant took a position with regard to the scope of coverage of the claims, he will not be permitted in a later infringement action to take an inconsistent position. But patentee may rebut the presumption by showing that (1) the  equivalent at issue was unforeseeable at the time the narrowing amendment was made; (2) rationale underlying the amendment bears no more than a tangential relation to the equivalent in question; (3) the patentee could not reasonably be expected to describe the insubstantial substitute in question in the amended claim language.  Direct Infringement  Person who makes, uses, sells, offers to sell, or imports the patented invention in the United States during the patent term without the patentee's authorization will be liable for direct infringement.  Combination patents - When an inventor takes already known products but combined them in a novel, non-obvious fashion, the combination (not individual elements) are subject to the patent protection.  Inducement to Infringe  If D actively and knowingly solicits or assists a third party to infringe a patent and the third party does infringe, the D can be liable.  Contributory Infringement  Person who sells, offers to sell, or imports a material component of the patented invention which has no substantial use other than in the patented invention will be liable if (1) the D knows the component was especially made or adapted for use in the patented invention and has no other substantial use and (2) her purchaser in fact uses the component to infringe directly.  Literal infringement - Occurs when accused device contains every claim limitation  Nonliteral infringement - Occurs when accused device accused device "performs substantially the same unction in substantially the same way, to achieve substantially the same result.  Prosecution history estoppel - Presumption that an amendment of a claim to surrender of an equivalent precludes establishing infringement by that equivalent unless patentee could not reasonably have been expected to have drafted a claim that would have literally encompassed the equivalent at issue. Patent Experimental Use/Public Access Rights  Public Use  In order to be a public use, at minimum you need a gift or sale to one other person without restrictions. No need for a great number or the invention to be seen or observed by the public eye. If inventor slept on his rights too long, his invention was put to "general…use" and was abandoned.  Once patented restriction is up, you may do whatever you want with it.  Eminent Domain in Patent Law  If government takes patent of an individual, that individual can recover the reasonable and entire compensation for such use and manufacture

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 Atomic Energy  No one may declare a patent related to atomic energy to be affected with public

interest
 Patent Misuse  Patentee will be deemed to have misused his patent if he uses it unreasonably

to extend his market power beyond what Congress intended.
 Experimental Use  A person may make or use a patented invention without authorization if her

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purpose is only to satisfy her scientific curiosity or to amuse herself as an intellectual exercise and she has no commercial or other practical motivation. Patent Enforcement/Remedies  Damages: Reasonable Royalty and Lost Profits  Courts have struggled of setting appropriate measures of damages for past infringement. Court in Panduit Corp. v. Stahlin Brothers adopted a four part test to determine lost profits: Obtaining as damages the profits on sales he would have made absent  the infringement (sales made by the infringer), patent owner must prove 1. Demand for the patented product  2. Absence of acceptable noninfringing substitutes  3. His manufacturing and marketing capability to exploit the  demand 4. Amount of the profit he would have made  Lost Profits Damages - four novel theories have been introduced with  regard to lost profits Price Erosion  When only two suppliers, normally easy to determine  the damages. But what price would've been had the infringer not been around? As a result, some patent holders say they would've sold the product for higher prices. This leaves the assumption people would pay  higher prices for the product. Need reliable economic proof to show damages. Must  show non-infringing product was readily available. The "Market Share" Rule  When more than one person in market, Panduit is gone  since there are adequate substitutes But patent holders argue that market share would've  remained same but for infringer. This argument allows the presence or absence of noninfringing substitutes does not prevent the patentee from laying claim to at least some of the infringing sales. Does it make sense patentee would've captured the  sales actually made by infringer? No, I believe you should be able to take your  market share of the sales. What if others want a piece?  They must sue on their own, get their market  share.

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Lost Sales of Unpatented Components or Products Patentees want to recover unprotected components and products as well. I think this is stretching it a little too much. When does  it end? Pay for los profits/royalties and that's it. You're not making money off non-patent products, but products that were infringed. I see their point that they might sell other products of  theirs, but when does it end? How do you prove that? I think that just leads to so much litigation. Post-Expiration Sales  If you infringe and start research before patent expires,  may be subject to post-expiration sales damages.  If actual damages cannot be proved (lost profits), patent owner may be entitled to a reasonable royalty. This is the amount "which a person, desiring to manufacture and sell a  patented article, as a business proposition, would be willing to pay as a royalty and yet be able to make and sell the patented article and make a reasonable profit. Reasonable royalty is guaranteed. Hypothetical negotiation at time  before infringement. Normal negotiation has three choices for patentee.  1. Forego all use of the invention; 2. pay an agree  royalty; 3. infringe the patent and risk litigation. Here hypo number two is "presumed to have been chosen" but still must carry on justice.  Injunction  Courts are generally willing to grant permanent injunctions against further infringement, once infringement has been found. Preliminary injunctions also are available upon a clear showing of irreparable harm and likelihood of success on the merits.  Enhanced Damages  May reward up to 3x the amount of damages if a majority of the following questions are answered in favor of the P Whether D deliberately copied. Sufficiency of investigation by D when  they found out about infringement. How wad D's litigation behavior? What is the size and financial condition of the D company? Was the case close? Duration of D's misconduct? Remedial action taken by the D (try to design around the product). Motivation of harm? Concealment of misconduct? Trade Secrets Information that (1) derives actual or potential economic value from the fact that it is  not known or readily ascertainable by others, and (2) is subject to reasonable efforts to maintain its secrecy. Factors determining if something is a trade secret:  How widely the information is known outside the claimant's business  Who within the claimant's company knows the information 
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Whether the claimant has taken reasonable measures to ensure that the information remains secret How difficult it would be for others properly to acquire or duplicate the  information Whether information gives the claimant a commercial, competitive advantage  over others who do not know it How much effort or money the claimant expended in developing or acquiring  the information Remedies Injunctions - D may be enjoined from using or disclosing the P trade secret.  Damages - May be measured by (1) profits the P lost as a result of the D  misappropriation; (2) a reasonable royalty for the D use of the trade secret; or (3) the amount of the profits the D made as a result of the misappropriation


				
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