1 INTELLECTUAL PROPERTY LAW 608, 01A PROFESSOR MARGO BAGLEY FALL 2002 A. Intellectual Property a. Trade Secrets-Information that provides economic advantage and is maintained in secret. Term: Perpetual (if secret) b. Patents-Protects functional embodiments of ideas, machines, processes, compositions. Term: 20 years from application filing date c. Copyrights-Protect original expression of an idea, musical, sculptural, literary work. Term: Life of author+ 70 yrs (95 yrs for work for hire) d. Trademarks-word, symbol, or phrase that can indicate source/avoid consumer confusion. Term: Perpetual (with use) B. Philosophical Perspectives: a. Natural Rights Perspective: John Locke i. Locke labor theory of property; ownership rts in prpty created by mixing man’s labor w/objects found in commons ii. Lockean “proviso”-as much and as good be left for others after the appropriation iii. Person can “engross” as much as he will before it spoils 1. Application of Locke to IP a. Mixing labor w/pre-existing tangible goods gives property rt in those goods. i. Problem w/applying to IP (patent): requires conclusion that intellectual labor confers a rt not just over goods you have worked but a rt to exclude others (in some cases, bone fide independent inventors) from using those ideas on other goods. b. Relies on labor as justification for property. i. Problem w/applying to IP: “Sweat of the brow” not recognized as basis for IP protection in U.S. law (e.g., copyright and patent law), also, the absence of effort doesn’t preclude protection. c. Lockean proviso: no harm and person can take as much from the commons as he/she can put to use as long as “enough and as good be left” for others i. Problem w/applying to IP: Assumes a world w/o scarcity of land and its products. Also “engrossment does not account for modern capital markets. b. The Personhood Perspective: Margaret Jane Radin, “Property and Personhood” i. This perspective has commonly been ignored in legal thought ii. Premise: to be a person, an indiv needs some control over resources in the external environmentthe necessary control comes in form of prpty rts c. The Utilitarian/Economic Incentive Perspective: Incentives to invent and create i. US Const, art. I, cl. 8. “to Promote the Progress of Science and useful Arts.” ii. Pro: Economic incentive benefits ; iii. Con: Costs of limiting diffusion of knowledge-limiting knowledge increases cost of acquiring a product and limits others from making advances C. TRADE SECRET PROTECTION • Info should be protected against “theft” • Overview of Trade Secret Protection o Improper use or disclosure generally a common law tort o §§757, 758 set principles followed by most states o §757: Comment b: A TS is “Any formula, pattern, device or compilation of information wh/is used in one’s business, and wh/gives him an opportunity to obtain an advantage over competitors who do not know it or use it.” § 757. Liability of Disclosure or Use of Another’s Trade Secret-General Principle. • One who discovers/uses another’s TS w/o privilege to do so, is LIABLE if he: discovered by improper means, discloses/uses in br/of confidence reposed in him, learned TS from 3d person who discovered by improper means or that 3d person was in br/of duty to other, learned TS w/notice that it was TS and disclosure was made to him by mistake §758. Innocent Discovery of Secret-Effect of Subsequent Notice or Change of Position • One who learns another’s TS from 3d person w/o notice that it is TS and that 3d person’s disclosure is a br/of his duty to other, or who learns the TS thru mistake w/o notice of secrecy and mistake: Is NOT liable to other for disclosure/use of TS prior to receipt of such notice, and • IS LIABLE to other after receipt of such knowledge unless he, in good faith paid value for TS or has changed position that to subject him to liability would be inequitable. o GATT TRIPS requires members to protect trade secrets 2 o Uniform Trade Secrets Act “Trade Secret”-info, including: formula, pattern, compilation, program, device, method, technique, or process that: • Derives independent economic value, actual, potential from not being known/readily ascertainable by proper means • Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy o Trade Secret is any confidential information that is valuable to a firm b/c it provides that firm w/competitive advantage “Improper”-theft, bribery, misrepresentation, br/or inducement of a br/of duty to maintain secrecy, espionage thru electronic/other means. Reverse Engineering or Independent Derivation SHALL NOT be considered an “improper means” “Misappropriation”-acquiring trade secret of another knowing it was acquired by improper means, disclosure of TS w/o consent of (person who improperly got TS, or knew that TS was gotten thru improper means, or had duty of secrecy, or knew that TS was acquired by accident/mistake before material change in position) • Trade Secret broken down: o Subject matter must qualify for trade secret protection type of knowledge/information that trade secret law was meant to protect Must not be generally known to all Competitive advantage/value Protection limited or lost if acquired by proper means: • Independently developed, made public, reverse engineered o Improper Means: Misappropriation: TS plaintiff must prove that D took info wrongfully-misappropriated Sometimes D was wrong b/c of obligation not to disclose: • Explicitly, by contract, or • Implied Duty o Ex/an employee o P must prove that P took reasonable precautions under the circumstances to prevent disclosure Confusion over rationale for this requirement: • evidence that the TS is valuable enough for litigation • if reasonable measures taken, chances are D took TS wrongfully Basically, P can’t freely let people have info and then claim TS later. Also, “reasonable” depends on a lot. • Theory of TS: o Utilitarian: Protecting against theft of proprietary info encourages investment in info. TS are form of property o Deterrence of wrongful acts: Tort theory Aim: punish and prevent illicit behavior, uphold reasonable stds of commercial behavior • Br/duty merges w/action for br/K o Both push in same direction of encouraging investment in TS Southwire v. Essex (TS Subject Matter Special v. General Knowledge) Facts: D hired P’s ex-employee, McMichael in order to learn P’s logistics system. Issue: Whether the logistic system is a trade secret. D’s Argument:: most of the components of the logistics was in the public domain. Holding/Reasoning:The logistics system IS TS b/c Broad Reading of TS: Unique combination of commonly known steps makes system TS. As a whole, logistics system is TS. Rockwell Graphic Sys., Inc. v. DEV Indus. Inc. (Reasonable efforts to keep secretUnder Uniform Act) Facts: “Piece part drawings” for manufacture of replacements kept in same safe as “Assembly Drawings.” ADs given to customers. Issues: Whether P took sufficiently reasonable security measures for PPDs to qualify as TS. Holding/Reasoning: Yes. Giving TS to limited # of outsiders for specific purpose not forfeiting protection. Necessary for exploitation of TS. • “reasonable under the circumstances”-depends on balancing costs and benefits Policy: 1. Encouraging inventive activity by protecting its fruits from misappropriation 2. Deterring efforts to take from one person in order to benefit another (redistributing wealth) 3 To determine TS status: 1. How widely is idea or information known outside the claimant’s business? 2. Who w/in claimant’s company knows idea or info? 3. What measures has the claimant taken to ensure that the idea or info remains secret? 4. How valuable is the idea or info to the claimant and its competitors? 5. How much effort or money has the claimant expended in developing or acquiring the idea or info? 6. How difficult would it be for others to properly acquire or duplicate the idea or info? Disclosure of Trade Secrets-Public disclosure of a trade secret destroys the “secret” and therefore ends protection forever. 1. Publishing in academic journal or other forum. Usually happens on accident or b/c prestige outweighs the secrecy value a. Or publication of an issued patent-b/c patent law requires the public disclosure of an invention w/specific specificity to enable one of ordinary skill in the art to make it. OBTAINING A PATENT DESTROYS TRADE SECRET PROTECTION. 2. Disclosure by selling a commercial product that embodies the secret. (Determined on a case by case basishow easy is it to discover the TS). Ex/Mobile Mudd alcoholic drink. a. Also secret is lost by disclosure in the manufacturing or development processes. Secrets that are apparent to the buyers of a product are considered disclosed by the product. BUT secrets contained in undecipherable form w/in product are considered secret after product sold. 3. Public disclosure by someone other than the trade secret ownerwhen an independent developer B discovers the trade secret, the TS owner A, can’t do anything. a. Also if a 3rd party steals the TS and publishes it, there is no longer a TS. You still have a c/a for misappropriation, but TS is lost. b. §10 165 of GA trade secret act. Can keep everything under seal during a TS litigation. 4. Inadvertent disclosure a. Depends on degree of carelessness as well as degree of dissemination i. example, posted on internet, secret is probably is lost. 5. Government agencies might require disclosure in order to serve some other social purpose. a. Sometimes have protection, sometimes not. E.I. DuPont De Nemours & Co. v. Christopher (TS Misappropriation: Improper Means-aerial espionage) Facts: D was hired to take aerial photographs of P’s unfinished plant in order to learn TS for methanol production. Issues: Whether aerial photography of a plant is an improper means of acquiring a trade secret when Ds have not trespassed. Holding/Reasoning: Yes. • Although no illegal conduct, or br/of confidential relationship, misappropriation of TS b/c: o Restatement of Torts, § 757: “In general (improper means) are means that fall below the generally accepted stds of commercial morality and reasonable conduct” o Proper means: reverse engineering, discovering by independent means, if published or publicly available, NO TS! • It is not reasonable to require P to put a roof over just to keep people from flying over and taking pictures Policy: Cost balancing: • Fencing costs and trade secret: The law gives you extra fencing, in order to help you invest in the TS • This case follows property/utilitarian theory b/c there wasn’t actually any tortuous act. Trade Secret Protection • State law, then later adopted Restatement or Uniform Trade Secret • Definitions of TS o Uniform Trade Secret Act (GA uses it ) GA trade secret act provisions, Definition of a trade secret-follows Uniform Trade Secret Act wh/is broader than Restatement on Torts info w/o re to form o Restatement of Torts formula, pattern, device, used in one’s business o Espionage Act-fed govt criminal penalties for misappropriation, injunction, jail time, fees financial, scientific, technical Threshold Question: Why do we want to protect trade secret? At least in patents, people eventually get the info. • patents are expensive • TS has a wider scope • Also some TS are not eligible for patent protection o customer lists o recipes • TS are indefinite while patents are limited to 20 yrs • There is no guarantee that a patent will issue when you apply. • Patent applications are now published 18 months from filing date (even though at that pt you don’t know if a patent will issue) 4 Smith v. Dravo Corp. (Confidential Relationship) Facts: P’s business: cargo freight containers. D expressed interest in buying business, during negotiations, D sent P secret blue prints, patent applications. D didn’t buy, started making P’s product. Issue: Was the info given to D in confidence, making D’s actions an improper acquisition of a trade secret? Holding/Reasoning: Yes. • No express promise of trust, but an implied one o The purpose of the disclosure was for the sale of the business o Court concludes that the purpose was understood KEY: look at whether a trade secret exists before looking at confidential relationshipthe court assumed trade secret before analyzing. Restatement (3d) of Unfair Competition: §41: Elements of confidential relationship • Either express promise OR • disclosure of TS under circumstances in wh/o relationship of the parties or o other facts surrounding the disclosure • justify the conclusion that at the time of disclosure o person knew/hade reason to know confidence intended o disclosing party was reasonable in inferring person consented to obligation of confidentiality Proper means: 1. Discovery by independent invention 2. Discovery by “reverse engineering”-starting w/the known product and working backward to find the method by wh/it was developed. The acquisition of product must be by fair means, like purchase of item, observation from public use or display, obtaining TS from published literature a. A defense: Doesn’t mean that TS doesn’t exist, just means that the reverse engineer is not liable Chicago Lock Co. v. Fanberg (Reverse Engineering is a proper Means of Acquiring TS) Facts: P, Lock co had special lock. owner couldn’t open, can get locksmith to break into it. TD compiled key codes for P’s locks, sold publication. Issue: Whether the compilation was an improper acquisition of a trade secret. Holding/Reasoning: Assuming it was TS, still not improper b/c: • If D had personally bought the locks and reverse engineered, then NOT improper use. • “improper means” suggests duty not to disclose secret • Lower court assumed that Indiv locksmiths owed implied duty not to disclose the key codes. o The logic of lower court is a chain of implied duties o Higher court agrees locksmiths have duty to lock owners, but locksmiths under no obligation to the company. wh/is contrary to law • b/c would be a state-conferred monopolysame protection a patent gives • A patent protects against reverse engineering, thus if P wanted that protection should have gotten a patent Wexler v. Greenberg(Can Employees Take Their Own Inventions?) [Old caseless likely to happen now b/c now more pro-business] Facts: D developed new chem. formulas. D left P to work at new place, Brite. Before, Brite was buying from P. After, w/D’s help, started making the product Issue: Can Employees take their own invention? Holding/Reasoning: Yes. • No one told D before leaving that they were TS • D developed the products himself • No express covenant o D has no liability • Principles o law protects employers from ex-employees disclosing trade secrets provided that there is an enforceable K or was bound by virtue of his position into confidentiality o If no TS, then subjective knowledge is not prpty of employer o Employer has to show existence of legally protectable trade secret a legal basis, covenant or confidential relationship • Usually, an employer discloses a pre-existing TS to employee, didn’t happen here, so P has to show: o that the nature of the employment relationship gave rise to duty of nondisclosure • Competing policies in law o rt of businessman to be protected against unfair competition from employee’s stealing TS vs. o Employee’s rt to best occupation 5 • Here, no confidential relationship b/c no experimentation or research, the developments by change and modification were the fruits of D’s own skill, w/o big loss from P. o why? P had hired D to copy other people’s products. • Types of Agreements o Confidentiality Agreements o Invention assignment agreements o Non-Compete Agreements must be reasonable as to • geography • duration • scope • Common law Obligation to Assign Inventions o in absence of agreement hired to invent-employer owns uses employer’s resources to invent • employee gets shop right Independent invention-employer has no rights Attributes of TS: • Info • Value • Efforts to keep secret • Indefinite term o lost if acquired by proper means independently discovered made public • by improper actionc/a for misappropriation but TS is lost • 2 inquiries o Is there a trade secret? reasonable efforts to keep secretRockwell valuable from being not readily ascertainableSpecial v. general knowledge Southwire o Is there Liability? Is there misappropriation? • proper or improper means • if proper means, may not be liable, but may still be a TS (as to the rest of the world) o Proper independent invention reverse engineeringChicago Lock • no duty of locksmiths to keep secret • trade secret is lost b/c was published public display o Improper Wrongful ActsDuPont Confidential relationshipSmith v. Dravo • confidential relationship based on purpose for wh/disclosure was made • Elements of confidential relationship: o express promiseif no express K w/employees, minority will let employee keep knowledge. Wexler o disclosure under circumstances relationship facts surrounding justify the conclusion that person knew relationship 6 Warner-Lambert v. Reynolds (Agreements to Keep Secret enforced after secret out) Facts: P had K to pay for manufacture of Listerine. But b/c it is no longer a secret, D wants out. Issue: Whether an agreement to produce a product using D’s TS is valid when the duration was indefinite and when the TS has been made public knowledge w/o fault of P. Do you have to pay for the use of a secret even after it is no longer a secret? Holding/Reasoning: Yes, its valid b/c: • Based on agreement, obligation to pay lasts as long as P makes or sells the product • No public policy to limit duration of TS o In patents, copyright there is a quid pro quo w/the public o Here, the public policy is the freedom to contract arm’s length transaction • Even if TS is discovered doesn’t affect the agreement o To change agreement is to rewrite the K o They should have put a clause that payments continue so long as it is a secret • Could there be a reason why there was no clause put in? o Payment on installment plan o or the price P had to pay, or o or the amount to pay reflects value discounted w/the possibility of disclosure. o Controversial result, Restatement (3d) of Unfair CompetitionK not enforceable, but Federal Circuit seemingly endorsed this case. o Also if there was the clause, P would have had incentive to make the TS public K-2 Ski Company v. Head Ski Co., Inc (Remedies) Facts: Crocker worked for K-2(P) learned everything on the job. C went to work for D. Lower court enjoined D from using base subassembly TS for 2 yrs, using surfacing veil TS for 1 yr. Inevitable disclosure doctrine, if employee goes to competitor, he eventually will disclose secrets. Now courts use this Issue: Whether permanent injunctions are proper remedies for violations of TS when there already was a preliminary injunction in place. Holding/Reasoning: That is a question of fact. Jury has to see if D actually followed the injunction and “paid its dues.” • Length appropriate: The injunction is the period it would have taken D to reverse engineer or independently develop the TS o Idea to take away the advantage Crocker gave to D. “Head Start” • P also asked for damages/reasonable royalties • Remedies is a problem in TS o There is always a preliminary injunction o There is a question of whether the head start was taken away during the preliminary injunction P argued that D did sell skis during that time Remand for jury to discover what happened Uncle B’s Bakery (Disclosure agreements can limit employee mobility) Facts: P, employer makes bagelsTS in making/packaging. O’Rouke, D was employee, wants to find alternative employment but can’t b/c P sez D will eventually disclose TS. D tried hard to find job, most employers scared off by the confidentiality disclosure. Issue: To balance the employer’s right to TS protection against an employee’s freedom to find a job. Holding/Reasoning: • Can’t vacate b/c risk of irreparable harm: • Not undue hardship compared to potential irreparable harm to P o Also not a surprise, he signed an agreement’ • Clarification of agreement is necessary o unanticipated shyness of potential employers o direct or indirect only means bagel production If company has segment that makes bagels, okay so long as D has no contact w/that aspect o D will advise P of a potential employer, P will respond w/consent or reasonable grounds of objection. D can fax court w/request if denied What could O’Roucke done to avoid this trouble • pick another field, although that’s where his strengths lie • The agreement needed more clarification o P argued for the broader interpretation, to include lots of bakery products • During 1st injunction, had Brooklyn Bagel’s lawyers o interest of employee different from interest of the company • Employee’s should have the competitor agree to indemnify them, so the new company would pay in case he gets sued 7 Pepsico v. Redmond, 5 months injunction, just enough for Pepsi to come up w/a new marketing plan for the next year. Injunctions should be narrowly tailored to protect the employer’s TS. Why Share (Give Up) TS? • Give up to public, competitors o to make industry grow o smaller companies get together to share expenses o combine diverse capabilities/knowledge on complex projects o Environmental technology research partnerships AT&T, TI, etc... to deal w/new ban on CFC’s to solve problems together in order to solve it quicker than otherwise public benefits. PATENT LAW A. INTRODUCTION 35 USC § 101-102, 112 (Utility Patents): Patents • paper document • property right granted by the federal govt via USPTO o nature of prpty rt negative right to exclude • not the positive right to use, just exclusion of others from making, using, selling product • govt could make compulsory licensing if there is compelling govt interest (security) • Many reasons why patent cannot be practiced by owner o illegality (ex/human cloning) o blocked or dominated (ex/patent on method of using compound dominated by patent on compound) Ex/Monoxidal • patent on original compound for hypertension • but it also grows hair, thus rogaine needs permission of patent 1 to use it for patent 2 o Economics • Territorial-must obtain patent in every country (region) where protection is desired o European patent o US o Japan • Patents are personal property o can be sold bought assigned • Time limited o Art 1, Sec 8, cl 8”Congress shall have power to... Promote the progress of science and useful arts” Science-knowledge (copyright), Useful Arts-patents fear of perpetual monopolies, now o balance need to stimulate innovation vs. free access to public domain and free competition 35 USC § 154-How long p. 98. p.101term lasts before 1995 (17 yrs from issuance) But after Uruguay, patents last 20yrs after filed but is not in effect until the patent is issued. • Applications published after 18 months • But after the 18 months when published but patent is not issued, then after the patent is issued, the inventor can sue relating back Patent Protection Rationales • Natural Law/“Justice” theories-not adapted in US o entitled by virtue of creating it John Locke, mix your labor w/pre-existing tangible goods problem: • patents confers right to exclude others from using those ideas on other goods, ever. • Relies on labor o sec 103 (c) it doesn’t matter how much time and effort it takes. Lockean proviso: person can take as much from the commons as he/she can put to use as long as “enough and as good left” for others • Rejected b/c inventions can’t be explained by natural law 8 o property right is granted by state but not something that is a natural right • Economic Theory was adopted o monopoly profit incentive we will not have adequate progress unless inventors get rewarded for efforts • Problems o Balance: how long, what kind of innovation o is patent system necessary to innovation? • Exchange-for-secrets o patent is social contract quid pro quo give us secret, we give you protection for # of yrs o Popular theory Problems: Even if secret, invention is often independently made by others Inventions patented are often ones for wh/secrecy would be difficult ot maintain (pharmaceuticals, chemicals, machines) so technically don’t need to get the secret. Players in Patent System • PTO • BPAI ( Board of Patent Appeals and Interferences) • Federal District Courtslitigation, patent infringement suit • CAFC (US Court of Appeals for the Federal Circuit) and regional circuits (again!) o Holmes v. Renaldo Regional Cts have jurisdictions where patent issue is given in counterclaim (CPwell pleaded complaint rule) • United States Supreme Court B. ELEMENTS OF PATENTABILITYPATENNTABL SUBJECT MATTER UTILITY NOVELTY NONOBVIOUSNESS ENABLEMENT • Players in the Patent System/The process, p.134 text • Inventor will file application in the PTO o most time hire patent attorney/patent agent • Will be assigned to a patent examiner (don’t have to be an attorney, but have to have technical background) • Examiner will give Office Action o rejection of claims for something • Applicant/Inventor will file response o ask examiner to reconsider o Examiner sends out office action rejection, may be a final rejection • Applicant (CIP-continuation in part) continue to file/prosecution, go through cycle again, (knowing that the patent term has start to run)OR • Applicant can appeal to Board of Patent Appeals and Interferences o then the District Court of District of Columbia o then the Court of Appeals for the Federal Circuit o then to the Supreme Court • If favorable • Patent will issue, get a patent # • There might be some mistakes in patent o typographicalfile for certificate of correction, noting errors in patent that have been fixed. o Request for reissue Patent issued, but something that caused it to be partially, or effectively defective This is dangerous • open to public o In re Hallsomeone can object • goes thru process again, might get rejected o Reexamination Have examiner look at it, examiner will say okay, patent comes out stronger or 9 3rd party can object and have this done. o Interference: Board of Patent Appeals and Interferences: 2 or more people claim to be 1st inventor o Declaratory jdgmt: Sometimes person wants judge to decide validity of a patent Title 35, U.S.C. Patent Act Part I. Establishment, Officers and Employees, Functions Part II. Patentability of Inventions Chapter 10. Patentability of Inventions Sec. 100. Definitions “Invention”-invention or discovery “Process”-process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter or material “Patentee” – patentee and successors in title “Third-party requester” – person requesting ex parte re-examination under Section 302 or inter partes reexamination under Section 311 who is not patent owner Sec. 101. Inventions Patentable 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 1. Patentable Subject Matter Diamond v. Chakrabrty-“Anything under the sun made by man.” Exceptions: laws of nature, physical phenomena, abstract ideas. Distinction btwn products of nature and man-made inventions. Nothing in Act sez can’t patent living things. Key issue: Human Intervention Parke-Davis v. Mulford-Purified form of substance from animal glands-Adrenalin. Because the purified substance is a “new thing” commercially and therapeutically, it is no longer a product of nature, thus patentable. 2. Utility Brenner v. Manson-Interference. Patent application for chemical similar to one being used in cancer experiments. This chemical has no known purpose. “A patent is not a fishing license.” Not patentable b/c would create monopoly too early in process. Justice Harlan-• impact on chemical research negative b/c discoveries build upon each other • General utility-some useful purpose • Specific-works for intended purpose • Beneficial/Moral-public interest concern o Justice Story Lowell v. Lewis, 1817Moral Utility requirement More current: Juicy Whip • Congress never intended that patent office displace state police power o other departments are supposed to do this • Morally problematic patent subject matter o transgenic animals o human stem cells o chimeras – theoretical mixed human/animal species o methods of cloning humans and cloned humans ownership of humans • 35 USC 287(c): Surgical methods exceptioncan’t sue someone else if they use your method. B/c it goes against what doctors are supposed to do Sec. 102. Conditions for Patentability; Novelty and Loss of Right to Patent. A PERSON SHALL BE ENTITLED TO A PATENT UNLESS: §102(a): The Invention was known or used by others in this country, or patented or described in a printed publication in this or 10 foreign country, before the invention thereof by the applicant for patent. THE APPLICANT’S INVENTION IS “ANTICIPATED”, LACKING NOVELTY ***A single prior art reference must disclose every element of what the patentee claims as his invention in order to “anticipate” the application. Inquiry: Actions of persons other than the inventor/applicant prior to the date the inventor/applicant made the invention. Questions: Prior to application, did others cause the invention to be known or used in the US? Did they cause it to be patented or did they make it a subject of a printed publication anywhere in the world? Policy: To prevent a second inventor from obtaining a monopoly if a previous invention has already placed the invention in the public domain before the second inventor invented. Criteria: “known to others”-invention must have been fully disclosed and disclosed invention must have been accessible to US public. “fully disclosed”-reduced to practice* (actual or constructive) “available to public”-Thus, private intracorporate/army reports/abandoned patent applications NOT sufficiently “available to public.” But anything less than publication is sufficient-tell it person w/no restrictions, capable of revealing to public “the invention must have been known to others in the US”-Evidence that invention was known & used other parts of globe will not preclude a US patent “Used by others” in this country-The use must have been accessible to public, but no affirmative steps to familiarize public is necessary. Just not secret. Rosaire v. National Lead Co. “Described in a printed publication” in this or a foreign country-“printed”-reduced to a tangible, permanent form that was discernible by the public. “publication”-if the information was accessible to the public so that a reasonably diligent American could obtain the information. In re Hall “Patented in this or foreign country”-some countries don’t publish patents, Questions: Was the applicant’s invention the actual subject matter of the earlier patent? And if so, at what point in time was the invention actually patented? §102(e): Denies a patent to B if 1) at the time B invented, the same invention was described in an application for patent pending in the P.T.O., and 2) that application was ultimately published under Patent Act §122(b) or granted. Policy: Same as 102(a) §102(g): Prohibits B from obtaining a patent if A made the same invention in the US before Band A did not abandon, suppress or conceal it prior to B’s invention date. Thus, an earlier US invention by A may preclude B from obtaining a patent even though the provisions of neither subsection 102(a) or 102(e) have been satisfied. Who is first to Invent: Invention requires: 1) Inventive Concept and 2) Reduction to practice. Presumption: First to reduce to concept to practice is first to invent. This can be rebutted. If the second person to reduce to practice can demonstrate that he was the first to conceive of the invention and was diligent in reducing the conception to practice from a date prior to the other’s date of conception, he will be found to be the first inventor. 1) The Inventive Concept: perceiving a specific result and a particular means of achieving that result, so that no more than ordinary skill in the art is needed to build or carry out the invention 2) Reduction to practice*-Actual or Constructive. Actual Reduction to Practice-building an operable prototype-physical embodiment of the invention (process-carrying out physical steps of the process) as described in the applicant’s patent claims and ascertaining that the invention works for its intended purpose. Constructive Reduction to Practice-creating and filing an application for a patent. Application must describe the invention w/sufficient specificity to enable a person w/ordinary skill in the art to make invention w/o undue experimentation Reasonable diligence in reducing to practice: Inventor continually applies himself to reducing the conceived invention to actual or constructive practice. Gaps in time in wh/no effort expended will be excused if reasonableillness or poverty. Delays due to inventor’s effort to exploit commercially/doubts to value NOT excused. “Abandonment, Suppression and Concealment”-Even if B was the second to invent, he may be favored over A, an earlier US inventor, and he may be granted a patent if A abandoned, suppressed or concealed the invention prior to B’s invention date. Policy: To encourage people to make inventions available to public. Thus, ASC construed to ensure that an earlier US inventor is diligent in bringing the invention to the public by applying for a patent or taking steps to make invention available to public. 1) Failure to file fo a patent, doesn’t mean ASC if has worked diligently to bring invention to public thru commercialization 2) Commercializing invention-using invention as trade secret is not necessarily ASC, as long as public receives benefit of invention. 3) Resumption of activity prior to second inventor’s invention: If A, first inventor, ASC but then resumed activity before second inventor, B invented, A can rely on his date of resumption as his date of invention. Interference-priority of invention contested before the P.T.O. when two pending applications claim rights over same invention ***§102(a), (e), and (g) are meant to ensure that patented inventions are novel, and that patents usually go to the first to make invention 11 ***§102(b), (c) and (d) are meant to ensure that inventors file their patent applications in a timely manner. §102(b): the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in US. Focus: On the actions of both the inventor/applicant and others more than one year before the application was filed. Note* date of application may differ from date of invention A statute of limitations: regardless of when invention made, once the invention becomes accessible to the public thru enumerated means, the inventor has 1 yr to file her application for patent. If she doesn’t, loses right to a patent Policy: 1) insures that inventions in public domain more than one yr remain in public domain 2) acknowledges inventor’s legitimate rt to a limited time to test market 3) Prohibits inventor from de facto extending his monopoly too far, w/o this provision inventor might market for 6 yrs before any competitor can enter the market and then apply for patent (thereby extending patent 5 yrs) When an invention will be deemed “in public use” in this country: if persons other than inventor/applicant use the completed, operative invention in the way it was intended under NO limitation, restriction, or obligation to keep invention secret. Egbert v. Lippmann 1) Inventor’s private personal use okay 2) Experimental use okay a. Primary use experimental i. Benefit for inventor-okay, for user-commercial ii. Features being tested were part of claimed invention-okay, peripheral-commercial iii. Strict control over 3d parties use of invention iv. Was 3d party necessary in order to test invention, if not –not experimental v. Where in developmental process, if invention was reduced to actual practice-not experimental 3) Commercial use that does not reveal the invention to the public-will trigger one yr statutory period, doesn’t run if 3d party made a secret use of patented invention When an invention is “on sale” in this country-offered for sale, regardless of whether it was in fact sold or delivered 1) so long as invention is “ready for patenting” doesn’t have to be reduced to practice to be “on sale” 2) Exception for sales that are primarily for experimental purposes 3) Offer to sell rts in the patent or patent application – assigning does NOT trigger the statutory period §102(c): if applicant abandoned his or her rt to a patent. When inventor expressly or impliedly manifests an intention to relinquish his right to a patent Policy: to encourage inventors to file an application for patent, and thus make the invention available to public, as quickly as possible. Express abandonment-openly disclaiming any intent to obtain a patent, thus dedicating the invention to the public Implicit abandonment-conduct that indicates an intent to forego a patent. Refraining from applying for a patent for a long period may be sufficient evidence of an intent not to obtain a patent §102(d): 1) the inventor filed a patent application in a foreign country more than 12 months before he filed the US application and 2) the foreign patent was granted before the US filing §102(f): Only the inventor is entitled to a patent in the invention. Inventor is person who CONCEIVED of the specific invention claimed. A person who merely directs another is not an inventor, unless he also told the other how to do it, as well. Doesn’t prevent inventor from assigning rights in an invention, or to a patent in the invention, to another. Assignee must pursue application in inventor’s name Joint inventors: If each makes a mental contribution to final invention concept, they are joint inventors. Contributions don’t have to be equal or simultaneous as long as parties collaborated. Nor must each joint inventor contribute to every aspect of invention. Application must be made jointly, in all inventors’ names. All joint inventors will own an interest in resulting patent (absent an assignment of rights) 3. Novelty and Statutory Bars a. The Nature of Novelty Policies Underlying 102(b) • Preserve the public domain (public reliance) • Encourage prompt disclosure of new inventions to the public • Avoid extension of monopoly 12 o inventor sales (1yr limitation) so the exclusive rights don’t last forever make invention, expose to public for 1 yr, decide if will be marketable, something you want to do before going thru the patent process. Rosaire v. National Lead – Invalidating prior art. §102(a):”used by others in this country.” D didn’t infringe b/c some company was using method for prospecting oil before P got its patent. As long as no one made efforts to keep it a secret, it is publicly accessible. PUBLIC= NOT SECRET. ***Note: Bagley’s article on geographical limitations sez that b/c of increased travel & communications, public use in another country is not hard to discover so this restriction is unconstitutional Inherency Doctrine-if another person accidentally anticipates the invention, is it prior art? Some cts yes, some cts no b. Statutory Bars: Publications In re Hall-Applicant’s patent denied b/c 1 copy of his doctorial thesis was cataloged in a library over 1 yr ago. Because it was indexed and cataloged, it was publicly accessible. Publication has no geographical limits while public use is only invalidating in this country. c. Statutory Bars: Public Use Egbert v. Lippman-Corset case. By allowing girlfriend to wear corset, w/o restrictions, injunction to secrecy it was a public use. P didn’t maintain control (not experimental). Dissent: if used by one woman, under clothes, how public? d. The Experimental Use Exception City of Elizabeth v. Pavement Company-Wooden road/sidewalk. P didn’t intend to abandon invention. Filed caveat (when you could still do that), constructed pavement for experiment to test qualities, the road belonged to P’s company, P paid for it himself, P checked it everyday (control) e. Priority Rules and the First to Invent Griffith v. Kanamaru-Interference. §102(g). Griffith was first to conceive but last to reduce to practice. G did not show diligence in reducing to practice. Reasons for inactivity: Cornell policy to wait for outside funding, waiting for student to start helping him. Court rejected b/c prior cases only excused inactivity for hardship cases, extenuating circumstances (very high std) Sec. 103. Conditions for Patentability; Non-obvious Subject Matter An invention is not patentable if it would have been obvious to a person having ordinary skill in the pertinent art as it existed when the invention was made. 4. Nonobviousness-“drawing a line btwn the things wh/are worth to the public the embarrassment of an exclusive patent, and those wh/are not.” Thomas Jefferson. §103no “flash of creative genius” requirement, doesn’t matter how inventor came up w/idea. Hotchkiss-porcelain doorknob case. It was new invention but obvious that a person could replace wooden/metal doorknob w/porcelain. Graham v. John Deere-Nonobviousness depends on 1) the scope and content of the pertinent prior art; 2) differences btwn the pertinent prior art and the invention at issue; 3) the ordinary level of skill in the pertinent art Invention: spring hinge on plow for rocky soil. Prior art, Graham Patent and Glencoe, each has all Deere elements except for arrangement of flexible shankCourt found no operative mechanical differences, no nonobvious differences. a. Combining References-Under §103, a single reference need not disclose the entire invention to bar a patent. §103 asks whether a researcher who is aware of all the prior art would think to create the claimed invention. It is sometimes permissible to analyze a combination of ideas from different sources of prior art in order to decide the question of obviousness In re Vacek-Killing mosquitos & Blackflies by inserting gene that makes insectide inside cyanobacteria. PTO rejected patent application b/c it would have been obvious to combine prior art references to get this idea. Court: NO! Before can combine references to determine obviousness, must pass “suggestion test”: 13 1) whether prior art suggests to scientist to make the claimed device, and 2) whether prior art suggests reasonable expectation of success. So PTO was wrong to combine references and deny patent based on obviousness. b. “Secondary” Considerations i. Commercial success ii. Long-felt need iii. Commercial acquiescence-competitors willing to pay for license, or spend effort “inventing around” iv. Additional considerations-movement of persons skilled in the art in a different direction than inventor; existence of skepticism on part of experts re the approach taken by the inventor; the fact that D copied the invention, rather than existing alternatives. Demonstrating a nexus btwn objective factor and the issue of obviousness. Commercial success from innovation and NOT heavy advertising. c. After considering Graham v. John Deere, In re Vacek, and secondary considerations: answer the question: “Would a person of ordinary skill in the art find the claimed invention obvious?” Chapter 11. Application for Patent Sec. 112. Specification (ENABLEMENT) 5. Describing and Enabling the Invention-The patent applicant must describe how to make and use the invention w/sufficient clarity, precision and detail to enable a person skilled in the relevant art to make and use it w/o undue experimentation. The enabling disclosure is made in the patent specification, wh/precedes the claims. a. Enable POOSA to make & use w/o undue experimentation b. Provide written description showing inventor had possession of invention at time of filing The Gentry Gallery v. Berkline Corp-§112. Sectional sofa patent infringement case. Gentry’s written description (specification) said that remote control goes in a console in btwn 2 recliners. Berkline put remote elsewhere, everything else is same as Gentry. G amends claim to put remote elsewhere. BUT, ”claims may be no broader than the supporting disclosure, and therefore a narrow disclosure will limit claim breadth.” G has no claim, B is not infringing. C. INFRINGEMENT 1. Claim Interpretation-Patent claims define patent owner’s property rts-“metes and bounds” a. Interpretive Sources i. Claim Language-first source of interpretation-“the plain meaning rule,” can use dictionaries ii. Patent Specification-When there is more than one definition of a claim term, patent disclosure will direct to correct one. Sometimes specification alone is sufficient iii. Prosecution History-An applicant can make statements during prosecution that limit the meaning of claim terms iv. Extrinsic Evidence-evidence wh/is external to the patent and file history, such as expert testimony, inventor testimony, and technical treatises and articles. May be used to help proper understanding of claims. Inventor’s intent (if not expressed in patent) is not used b. Canons of Construction i. Claim-specification Relationship 1. One may not read a limitation into a claim from the written description 2. One may not look to the written description to define a term already in a claim limitation, for a claim must be read in view of the specification of wh/it is a part 3. Underlying propositions of 1&2: claim must explicitly recite a term in need of definition before a definition may enter the claim from the written description; patent applicant as lexicographer, definition selected by patent applicant controls ii. Patentee as Lexicographer-reasons why requiring a definition of a claim term 1. patentee made up the word 2. patentee picked terms that are unclear-can’t get meaning from context iii. Claim Differentiation-“the law rejects superfluous, contradictory, and incongruous things” Construction of a claim that would render another claim in patent redundant is to be avoided iv. Presumptive Breadth 1. Claim should be interpreted so as to preserve its validity 2. If claim is subject to 2 viable interpretations, go w/the narrower onepenalty for unclear drafting, reasonable “tie-breaker” c. Interpretive Procedures 14 Note on the Proper Role of Judge and Jury in Patent Cases-claim construction as a matter of law? To be reviewed de novo? Markman v. Westview Instruments. While jury has power to resolve infringement under doctrine of equivalents? ilton Davis v. Warner-Jenkinson Co. Law is not clear on this. 2. Literal Infringement Sec. 271. Infringement of a Patent, Whoever… §271(a): Direct Infringement: makes, uses, offers to sell, sells any patented invention w/in US or imports into US during time of patent w/o authority is infringing §271(b): Indirect Infringement: actively induces infringement §271(c): Indirect Infringement: sells/offers to sell/imports into US components of patented machine knowing its only used for infringement, and not a staple item is a contributory infringer §271(d): it is not patent misuse if: 1) patent owner does something that a non-owner would be liable for infringement, 2) lets someone else do something that a non-owner would be liable for, 3) seeks to enforce his patent, 4) refuses to license or use his patent, 5) conditions license or sale of patented product on purchase of a separate product (unless patent owner has market power) Larami Corp v. Amron-Toy water guns. Literal infringementP must show the presence of every element or its substantial equivalent in the accused device. Here water on D’s gun is in an outside chamber, not inside like P’s, Thus, NO LITERAL infringement. Festo Corp. v. Shoketsu-Doctrine of Equivalents v. Prosecution History Estoppel. P sez D infringing on magnetic rodless cylinder b/c so similar it infringes under DOE. D, defense PHEP narrowed claims and lost rt to assert DOE for the claims it gave up. Solution: patentee bears burden of showing that the amendment does not surrender the particular equivalent in question. -A patentee’s decision to narrow his claims thru amendment may be presumed to be a general disclaimer of the territory btwn the original claim and the amended claim. -There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. -1) the equivalent may have been unforeseeable at the time of the application -2) the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question, or -3)there mary be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question -In the cases (1-3) the patentee can overcome the presumption that PHE bars a finding of equivalence. 3. What is an Element?-limitations of the claim. For an accused product to literally infringe a patent, every element contained in the patent claim must also be present in the accused product or device. If P’s apparatus has 5 parts or “elements” and D’s apparatus has only 4 of those 5, D is NOT literally infringing, even if those 4 are exactly the same as P’s 4. On the other hand, if D’s device has all of P’s elements, it is generally infringing even if D added several new elements. Exact outcome depends on precise claim language and significance of “added” elements 4. Doctrine of Equivalents (DOE)-premised on language’s inability to capture the essence of innovation, giving the claims penumbra. a. Expands patentee’s rt to exclude b. If accused device performs same function in substantially the same way to achieve substantially the same result, it infringes under DOE c. DOE is to avoid fraud on patent, make exclusive rt more meaningful, encourage people to get patents d. Problem: Prevents certainty re scope of patent e. Limitation: Prosecution History Estoppel, if you amend claim during application process, DOE may not apply 5. The “Reverse” Doctrine of Equivalents a. Defense to literal infringement ( may happen when there is a blocking patent and D is an improver on that patent) b. Rarely raised, even more rarely successful c. D literally infringes but D’s invention is so far changed in principle as to excuse liability i. Ex/Westinghouse train brake in 1887, Boyden’s brake revolutionized ability to stop trains, so different that “the contribution took the invention outside the equitable bound of the patent” 6. Equivalents for Means-Plus-Function Claims-§112 Paragraph 6:when construing means-plus-function language in a claim one must look to the specification and interpret that language in light of the corresponding structure, material or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure. 7. Contributory Infringement C.R. Bard, Inc. v. Advanced Cardiovascular Sys. Inc.-Surgeon using patented method. Not direct infringement case b/c patent owner can’t enforce patents on medical procedures. So §271(c): contributory infringement case against people who make catheter 15 necessary for procedure. P must establish: 1) catheter is material part of patented process, 2) D knew that catheter was specially made for infringing the patent, and 3) the catheter is not a staple article or commodity w/substantial non-infringing use. Court: Potential for substantial, non-infringing uses-not contributory infringement under §271(c). BUT is it Inducement under §271(b)? Ct sez genuine issue of material fact: Whether D actively, knowingly helped infringe D. DEFENSES 1. The “Experimental Use” Defense a. Key: Intent to commercially benefit as basis for liability b. Recognized by later courts but rarely if ever applied b/c evidence of commercial activity/profit motive Roche v. Bolar-generic drug manufacturers can’t begin FDA testing until after patent expires. Experimental use exception is VERY narrow: only for amusement, to satisfy curiosity or philosophical inquiry Argument, if generics have to wait, effectively expands the length of patent, So Congress enacted: -§271(e): Solely for use to submit info to FDA, in exchange, patentee can get extension up to 5 yrs if it took FDA to give approval -§271(e)(2): If you intend to engage in commercial manufacturing before patent expires, that is infringement and patentee can get injunction 2. Inequitable Conduct-Duty of candor to disclose material information, not to withhold it, or to make incorrect assertions. If applicant, patent attorney, owner of patent violates duty, can be found guilty of inequitable conduct. Penalty: Entire patent is invalidated, wh/can impact related patents. Kingsdown Medical Consultants v. Hollister Inc.-Patent infringement, D’s counterclaim of inequitable conduct. During prosecution, P renumbered and amended claim and included a claim that was rejected. In order for a court to find such a mistake inequitable conduct must do test: -Materiality of the information -Intent to deceive PTO -MUT have both Here, gross negligence does not equal intent to deceive. Note on Scope of the Patent Misuse Doctrine-form of common law “unclean hands” defense. Based on patentee’s actions in obtaining or licensing patent in violation of policy of patent or antitrust law. -Walker Process counterclaim-Antitrust defense based on patentee attempting to enforce a patent procure thru inequitable conduct -Price fixing-patentee setting price at wh/a licensee can sell a patented product -Exhaustionof patent rts and the first sale doctrine-proposition: when customer buys product, can use it resell it w/o restriction -P can license less than all uses of a patented article. Key is patentee cannot enlarge scope of his patent rts Motion Pictures Patents Company-Patentee was restricting type of film that could be used on a patented projector. Tying sale of patented projector to sale of unpatented film. Court: this is patent misuse b/c expanding rts beyond what patent allows. Today, w/§271(d): Not good law b/c film is a nonstaple good E. INTERNATIONAL PATENT LAW 1. Procedural Rules Coordinating International Prosecution a. Paris Convention – right of priority, national treatment b. The Patent Cooperation Treaty-simplifies multi-country filing, extends time to file i. Ch. 1 20 mos, Ch. 2 30 mos from date of filing. 1st 12 mos doesn’t get subtracted from the date of filing term measurement c. Foreign Filing Licenses-If invention is made in US, and inventor (nationality is irrelevant) wants to patent in other countries, must get US govt approval (foreign filing license approved if don’t hear w/in 6 most) Looking for national security issues. Then, a secrecy order imposed 2. Substantive a. TRIPS i. Incorporating IP requirements in GATT ii. Impact huge, 16 1. Developing countries now have to provide patent protection Substantive 2. Incorporating IP requirements in GATT 3. Impact huge 4. Developing countries now have to provide patent protection in all areas a. Before no protection for chemicals, pharmaceuticals (Indiamade generics)Point of dispute.Now everybody has 20 yrs, all areas of technology b. Limited way countries can impose Compulsory licenses c. Working requirement (that patentee use the invention) F. REMEDIES 1. Injunctions-§283: Preliminary Injunctions favored in patent infringement cases. Presumption of irreparable harm b/c of short term of patents. Patents grant rt to exclude, not rt to damages. Too hard to value. 2. Dangers in granting preliminary injunctions a. If wrong, can put someone out of business b. May put value on an unworthy patent Polaroid v. Kodack-public policyprotection of rts granted for valid patents, not about inventor, about public gaining benefits of invention. **If injunction granted, and patentee doesn’t make invention, public doesn’t gain Damages-§284: No less than reasonable royaltyamt person would be willing to pay to make/sell patented product and still be able to make a reasonable profit. If product not marked, no damages given until actual notice of infringement occurs (§287). Panduit: 4 factor test: DAMP -Patentee shows demand -Absence of acceptable non-infringing substitute -Patentee capability to exploit demand -Shows how much profit P would have madecan get lost profits, not infringer’s profits (except in design patent infringement) Enhanced if D was willful (up to 3x) and attorney’s fees Factors: -Deliberate -Whether D in good faith investigated -Litigation behavior -D’s size and solvency -Duration -Remedial Action by D, If good faith effort to modify may decrease damages H.H. Robertson Co. v. United Steel Deck, Inc.-P awarded preliminary injunction to stop D’s infringement. Requirements for preliminary injunction: -P’s reasonable probability of eventual success in litigation -Movant will be irreparably injured if injunction not granted -Ct should take into account, possibility of harm to other interested persons from the grant or denial of injunction and public interest G. DESIGN AND PLANT PATENTS 1. Design Patents a. Introduction-Protects ornamental appearance of article of manufacture. Design cannot be dictated by function. Single claim, 14 yr term, ordinary observer/substantial similarity. Problem time involved, toy industry is short term b. Requirements for Patentability i. Novelty ii. Nonobviousness iii. Ornamentality iv. Functionality c. Claim Requirements and Procedure d. Infringement 2. Plant Patents a. The Plant Patent Act-Only protects asexually reproducing plants b. The Plant Variety Act-Certificate protects sexually reproducible plants (USDA administers) c. Utility Patent-protects sexually and asexually reproducible plants. J.E.M. Ag Supply v. Pioneer Hi-bred (looked at Diamond v. Chakbarty) 17 i. Seed companies use the patents to prevent farmers from saving seed from one crop to use the next year and from selling surpluses Overview Copyrightable subject matter-Literary & artistic expression-books, song, dance, computer programs, movies, sculpture, paintings. Ideas themselves are not copyrightable, but author’s particular expression of an idea is protectable • Sect 102(a); Subject matter o literary works o musical works, including and accompanying works o dramatic, including and accompanying works o pantomimes and choreographic works o pictorial, graphic, sculptural works o motion pictures and other audiovisual works o sound recordings o architectural works o BUT No protection for idea, procedure, process, method of operation, concept, principle, discovery, Patentable and exceptions to patentability the expression of procedure can be copyrightable but not the underlying idea Can’t copyright titles, names, short phrases, slogans, work not fixed in tangible medium, no original authorship works in public domaincan use it in original expression but not the work fonts, history or other facts, recipes Threshold for Protection-work must exhibit modicum of originality and be fixed in a tangible medium of expression • Original to author, in common w/patent lawcan obtain a copyright if true author, more than one person can be an original author and get copyright each; minimum level of creativity (low threshold) • Fixation o embodiment by or under the authority of author, is sufficiently permanent or stable to be perceived, reproduced for a period more than transitory, simultaneous fixation (live broadcast of an event) unscheduled jam session in outdoor concert. Yes original, but is it fixed? No b/c the copying was not fixed by the authority of the author • Section 1101-deals w/unauthorized fixationAnyone copies/reproduces copies w/o permission is treated as a copyright infringeronly applies to musical performances o even when the fixation requirement bars federal copyright protection, common law protection may still be unavailable Formalities-works prior 1989, Notice of Copyright. Registration of a copyright-not strictly required for validity BUT required of U.S. authors prior to instituting an infringement suit. Deposit of copies of work is required to obtain registration of copyright Authorship & Ownership-party bringing suit must have created the work OR rights in work must have been transferred from author to party bringing suit. §102 “Works for Hire”-employer and not the original creator is considered author and the owner of the work .§101(1) Duration of Copyright-Life of the author plus 70 yrs OR 95 yrs from 1st publication in the case of entity authors (or 120 yrs from yr of creation, whichever occurs 1st) US Copyright Office-registers works, no examination besides original content requirement Copyright is protectable moment it is created Copyright Rights-• Copying-Owner has exclusive rt to make copiescan sue if copying is “material” and “substantial” • Derivative works-owner has exclusive rt to prepare derivative works o Derivative works-works based on the original but in different forms or otherwise altered. Derivatives are copyrightable to extent that they contain their own original expression 18 • Distribution-owner has rt to control the sale & distribution of the original and all copies or derivative works, including licensed copies. Only applies to 1st sale. Owner doesn’t have rt to limit resale by purchasers of works (except in certain limited circumstances) • Performance & Displays-owner has rt to control public performance & display of her works, including both literary & performance-oriented works. Rt extends to computer programs and other audiovisual works. The owner generally does not have rt to prevent the public display of a particular original or copy of a work of art, however. Limitation of Copyright Act • Fair use doctrine, compulsory licensing for musical compositions & cable t.v. • Rt is only to prevent unauthorized copying and some uses of works • Independent development of work is legal • So cts have to decide when illegal copying happens o Access to P’s work o Substantial similarityto prove copying o Substantial similarityto prove improper appropriation PhilosophyEurope, natural law; US, utilitarian Art. I, §8, cl. 8, “Promote progress of Science and Useful Arts” 37 CFR §202.1 Material Not Subject to Copyright-words, short phrases, such as names, titles and slogans, familiar symbols or designs, mere variations of typographical ornamentation, letter or coloring, mere listing of ingredients or contents, typeface Copyright does not protect “sweat of the brow” Feist Publications v. Rural Deck (Modicum of Creativity) Facts: Publisher of telephone white pages sues rival for copyright infringement. There Issue: Can a database of facts be protected by copyright Holding/Reasoning: Only if there is a modicum of creativity • Compilation may be copyrighted if it was selected/arranged in special way • Alphabetical arrangement of telephone addresses is not copyrightable o NO modicum of creativity involved in selection or arrangement o Court: Don’t have “sweat of the brow” as basis of protection. In a trade secret, amount of $ and work is relevant for trade secret but not in copyright and patent primary purpose is NOT to reward the author but to “Promote the progress of science and the useful arts” • As long as person is taking nonoriginal elements, not an infringement on the copyright of the work as a whole Limit on Copyrightability: Distinguishing Function and Expression: Idea-Expression Dichotomy 17 USC §102(b): In no case does a copyrighted protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery regardless of the form in wh/it is described, explained, illustrated, or embodies in such works. • High level of abstractionStar crossed lovers o two different expressions, o thus, Shakespeare could preclude West Side Storywe don’t want that • Continuum o Very abstract idea--------------Facts o want to be somewhere in the middle Baker v. Selden (Protectable expression v. Unprotectable ideas ) Facts: P developed new accounting system, provided forms that you would use w/the system. D published a book describing same accounting system, slightly different forms. Issue: Whether blank forms are protectable expression Holding/Reasoning: No • Copyright protects the writing/explanation of system but not the system. • The book describing the system relates to 102(b)book is a form in wh/the system is described. The system may be eligible for patent protection, but the system is not eligible for copyright protection • Concern: Back door patents: Don’t want people to avoid rigorous patent application process by getting a copyright 19 Merger Doctrine-When there is only one or but a few ways of expressing an idea, ct wil find that the idea behind the work merges w/its expression and the work is not copyrightable. Historical Facts & Scences a Faire (stock incidents, characters or settings indispensable for treatment of a topic) not copyrightable Morrissy v. Proctor & Gamble (Merger Doctrine) Facts: P owned copyright on set of rules for sweepstakes promotion, D allegedly copied one rule. Issue: Whether copyright is allowed when the expression is so tied up w/the idea that there is no other way of expressing it Holding/Reasoning: No • No infringement b/c o There are only so many ways to express the idea o the idea and the expression merge o If we gave copyright, we would be essentially giving a patent o When subject matter allows little variation in expression, providing copyright protection on any mode of expression would be the same as allowing copyright protection on the idea itself Copyright Formalities • Historically have to comply o notice, publication, registration, deposit • But now largely voluntary • Notice ©, not required since 1989 o 1909 and 1976 Acts, o Still beneficial to put sign • The effect of Publication when there is no notice o 1909 Act: protection triggered by publication Divestive-large # of works distributed, general publication w/o the notice, forfeiture of common law protection, the work goes into public domain, Small # can have common law protection Investive-Small # of works distributed, limited publication w/o notice, forfeiture of federal copyright protection, but still have common law protection Unauthorized distribution is not publication • MLKI have a dream, live speech, transmitted on radio/tv, Later got copyright • CVS used a chunk in documentary • B/c MLK’s speech was not general publication, MLK still had common law copyright protection at that time (then got federal protection later) CVS was infringing on MLK’s copyright. o 1976 fixation triggers protection publication determines when notice required (but not btwn types of protection) Publication-physical transfer to public Public performance is not a publication Post Berne Ratification • publication no longer a factor in validity o can’t lose a copyright b/c work isn’t published Registration voluntary, but can’t sue for infringement w/o registrating Works by foreign authors don’t have to be registered before bringing suit Deposit 1909deposit at Library of Congress or lose copyright 1976still mandatory but doesn’t affect validity Deposit w/Copyright office also required (can be satisfied by Library of Congress) Useful Article-article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey info 17 USC §101 Brandir Int’l v. Cascade Pacific Lumber (Useful Article Doctrine) Facts: P’s bicycle rack design. Copyright Office refused b/c art and function were combined. Issue: Distinguishing protectable “works of applied art” from “industrial designs not subject to copyright protection” Holding/Reasoning: rack not copyrightable • INTERPRETATION OF USEFUL ARTICLE DOCTRINE • IF: take copyrightable art and then use it as a bike rack, it is okay. P. 392 It is the adjustments for creating a more utilitarian purpose that court has a problem with. 20 • Conceputal separability – o Carol BarnhartDissent: Judge Newman: Temporal displacement test: test that aesthetic features are conceptually separable if “the article...stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function.” OR Whether primary use is as a utilitarian articles as opposed to an artistic work. • Majority:Judge Newman’s idea sucks • So...Majority in Brandir: Professor DenicolaIf design elements reflect merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists. Hereb/c during the design of product, changes were made to make it more functional, creates a merger of art and function • Physical separabilityphysically separate the artistic from functional remove a car hood ornament. Jaguar on a car. • Conceptual separabilityornamental lamp, can, in your mind, separate the ornamental and functional elements of a lamp shade. • Good b/c: o Consistent w/precedent, Stop discrimination against nonrepresentational art, Easy to apply, Mute testimony to origins o Parties required to present design process evidence, nature of work, then trier of fact determines: Whether the aesthetic design elements are significantly influenced by functional considerations • Apply test to facts: o Not enuff that rack may stimulate concept separate from bicycle rack concept, Form and function are intertwined in rack o Harmonious fusion of function and aestheticsthus no artistic element capable of existing independently of the utilitarian aspects of the article. • Dissent: Winter: P created original aesthetic elements that further a utilitarian purpose • Winter’s problems w/majority o Conceptual separability diminishes o Copyright will depend on luck-how the artist went about creating the work, thus, if he makes any changes that help make object more utilitarian, loses copyrightablity Useful Article Doctrine • Only applies to pictorial, sculptural or graphic works that are useful articles • Artistic elements of work must be capable of being physically or conceptually separable from the utilitarian elements of the work. Analysis of Useful Article Doctrine 1. Is it a pictorial, sculptural or graphic works? 2. Whether work is useful article at all. Useful Article-“having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”Drawing of tablecloth design NO, but tablecloth itself is a useful article.Difficult to apply as degree of functionality wanes and the degree of fanciful and artistic expression rises. 3. Physical and/or conceptual separability. Proving physical or conceptual separability is sufficient to establish copyrightability Goldstein-“A pictorial, graphic or sculptural feature incorporated into the design of a useful article is conceptually separable if it can stand on its own as a work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful w/o it.” Brandir-P couldn’t get copyright on ribbon rack. Should he have gotten a design patent (protect the ornamental aspect).Need to show design is not primarily functional, if there are other ways of design a bike rack, then it should be design patent protectable Copyright v. Design Patent 3. Design patent: protection available if design is not primarily functional a. Function can be achieved by other design techniques b. Other requirements are met 4. Copyright: artistic elements must be physically or conceptually separable from the utilitarian aspects of the article. Government Works. 17 USC §105 • No copyright protection for works of US government (prepared by officer or employee as part of duties) • However, US govt can hold copyrights transferred to it by assignment, bequest, or otherwise o §101-“A work of US Govt”-work prepared by an officer or employee of the US Govt as part of that person’s official duties. • Statute does not mention states but certain state works not copyrightable (e.g. statutes, court opinions), part of the public domain Sound Recordings • Protected as separate work from musical works (lyrics) since 1972 o Sound recordings No public performance right • Don’t need permission from person w/sound recording in order to play it No compulsory license for sound recordings, unlike musical works Whitney Houston has sound recording copyright on “ I will always love you” o Musical works (lyrics) 21 Need permission to publicly perform song Dolly Parton has copyright on “I will always love you” b/c she wrote it Roth Greeting Cards v. United Card Co. (Unique arrangement of public domain elements is copyrightable) Facts: D’s greeting cards really similar to P’s. P’s cards used words/expressions that are in public domain Issue: Whether P has copyright in the arrangement of words/ideas that are in public domain and whether D was infringing when it used similar expressions but did not copy artistic design. Holding/Reasoning: Yes D infringed b/c the whole of P’s work is copyrightable. • P has to show has a copyright, and show it was infringed (Substantial similarity btwn infringing work and work that was copyright AND Copied) • Copyright law is Different from patent law where cts don’t care if you copied or came up on your own) o Here, independent creation is not infringement • All elements of each card: text, arrangement of text, art work, and association btwn art work and text considered as a whole to be Original and Copyrightable • The text is NOT copyrightable, but the total CONCEPT of card was copyrightable o Court is treating cards like a compilationcombination of some public domain material, arrangement selection, coordination • Infringement o Substantial similarity btwn works, caused by D having copied o No problem w/independently created work coincidentally duplicating Sheldon v. Metro-Goldwyn Pictures o Test: whether the work is recognizable by an ordinary observer as having been taken from the copyrighted source B/c remarkable similarity, access, observer would recognize, thus There is copyrightable work and there was infringement Dissent: • Not infringing b/c P’s work was not copyrightable. o Why?: It was a combo of uncopyrightable words & art work wh/does not equal a copyrightable work. • Not infringing b/c D imitated BUT NOT COPIED • Problem is that the whole becoming substantially greater than the sum total of its parts. Roth Greeting CardsAt what point does a collection of uncopyrightable material become copyrightable as a compilation. Compilation-work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the existing work as a whole constitutes an original work of authorship. Collective works-is also a compilation. Work such as periodical issue, anthology, or encyclopedia, in wh/a # of contributions constituting separate and independent works in themselves, are assembled into a collective whole. §201(c) copyright of each separate contribution vests initially in author of contribution. Owner of copyright in collective work has privilege of reproducing & distributing SmithKline Beecham v. Watson Pharmaceuticals, Inc. Facts: Law requiring that generic drugs use “same labeling” as original drug Issue: FDA law or copyright law, wh/trumps? Holding/Reasoning: The FDA law trumps copyright b/c there are administrative purposes, FDA approval and NOT for creative purposes CCNV v. Reid (“employee” in work for hire situations) Facts: P hired D to make sculpture. P contributed to idea, making of sculpture. D given money and leeway. Issue: Who has copyright? Holding/Reasoning: “works for hire.” Classification (Section 101 of 1976 Act) 1. Work prepared by employee w/in scope of employment or 2. Work specially ordered for use (contribution to collective work, part of movie, translation, supplementary work, compilation, instructional text, test, test answers, atlas) if parties EXPRESSLY agree in writing that work is “work for hire.” • Not § 101(2)-sculpture doesn’t fit in categories, no written agreement saying it is a “work for hire” • So is it § 101(1)? Four interpretations: o Peregrine: work is prepared by employee whenever hiring party retains right to control product o Aldon Accessories: work is prepared by employee when hiring party has wielded control w.r.t. creation of particular work o Easter Seal Society: “employee” common-law agency law meaning o D and Amici: “employee” “formal, salaried” employees. • Court: follows “employee” common-law agency law meaning • In determining if “employee” consider o hiring party’s rt to control manner and means by wh/product is accomplished o skill required-D sculptor-skilled occupation o source of instrumentalities and tools-D supplied own tools 22 o location of work-D worked in studio, no daily supervision o duration of relationship btwn parties-hired for >2 mos. o whether hiring party has rt to assign additional projects to 3rd party-P had no rt to assign additional projects o extent of hired party’s discretion over how, when to work-D had absolute discretion o method of payment-D paid like independent contractor o hired party’s role in hiring/paying assistants-D had total discretion o whether work is part of the regular business of hiring party-P was not into making sculptures o whether hiring party is in business-P is not a business at all, o employee benefits-P offered none o tax treatment of hired party-P did nothing • D is not an “employee” Policy: Why significant if it is work for hire or not? CCNV would prefer work for hire b/c assignment has termination rights. CCNV would be author of the work if it is work for hire. This status is very important, esp here b/c no assignment agreement. CCNV could have ownership of work thru joint ownership. To show joint ownership: parties have to intend that each contributions that merge into inseparable or interdependent parts of unitary whole. Each would have undivided right in the work, under copyright there is an accounting requirement. Joint work-§101 “ a work prepared by two or more authors w/the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” • Ct interpret strictly • Contemporaneous collaboration or evidence that each author knows at time work was created that his or her contribution would at a later time be integrated as part of unitary whole • Contribution of each party must be itself copyrightable • If intent to collaborate happens after creation of initial work, resulting collaboration is a derivative work of initial contribution rather than a single work of joint authorship §201(a): Authors of joint works are co-owners of copyright in that work. Each enjoys undivided ownership, may independently exercise exclusive rts subject to accounting (§106) RIGHTS OF COPYRIGHT OWNERS: §106. Exclusive Rts in Copyrighted Works (Subject to §107-118) §106 Exclusive Rt to (1) Reproduce copyrighted work in copies or phonorecords (2) Prepare derivative works based on copyrighted work (3) Distribute copies or phonorecords of copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending (4) In case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work (5) In the case of literary, musical, dramatic, and choreographic works, and pictorial, graphic, or sculptural works, including the indiv images of a motion picture or other audiovisual work, to display the copyrighted work publicly Arnstein v. Porter (§106(1) exclusive rt of reproduction-Copying) Facts: P songwriter sez D copied his songs. Sound alike, different lyrics Issue: Whether D copied to extent is improper appropriation Holding/Reasoning: Yes. • Copying?: • Either D admits OR Circumstantial evidence (like access) o Must have similarity first otherwise access is not important o If access and similarities exist, then trier of fact has to determine whether similarities sufficient to prove copying Analysis by experts is relevant here o If access is absent, similarities have to be GREAT in order to rule out independent arrival of same result • If Copying is established THEN o Next issue ILLICIT COPYING (unlawful appropriation) Test: response of ordinary lay hearer, expert witness unimportant • Thus, if copying shown, proof of improper appropriation doesn’t have to be so strong as to prove (initial step) copying on its own • Here, o Copying? Similarities but not enough to show copying by itself When added to access, similarities are sufficient evidence to prove copying BUT access is a question of fact, lower ct judge didn’t believe, didn’t send to jury b/c “fantastic” (stooges etc...) • Summary judgment wrong b/c of genuine issue of material fact o If copying proven, need to show improper appropriation 23 another issue of fact test is NOT analytical but ears of ordinary listeners wh/jury could do well • Dissent: o Clark, Judge: Music is intellectual as well as emotional o shouldn’t abolish use of experts to dissect Policy: Circumstantial evidence of copying is on a sliding scale?? Nichols v. Universal Pictures Corp. (protected v. unprotected expression determines whether D improperly appropriated) Facts: Irish Jewish saga in play in movie. Issues: Did D copy b/c there are similar but not identical stock characters/plot, and if there was copying, was it improper appropriation? Holding/Reasoning: If D copied, copying was proper, w/in the law • D didn’t steal plot, different • 2 step test o Objective-dissect manifestations of creativity plot, themes, dialogue, mood, setting in order to determine the protectable elements o Subjective-trier of fact determines whether the D improperly appropriate examine elements or work as a whole? • There are similarities but enough differences to make different expression. • There is no single test for improper appropriation Policy: Draw the lines of level of abstractions so that “ideas” are not copyrighted. Levels of abstractions and where we should protect them. • Pyramid Idea Further up in generality Literal verbatim copying as base (clearly protectedimproper appropriation)(expression) Steinberg v. Columbia Pictures Facts: P had magazine poster w/New York and rest of world smaller. D had movie poster w/characters imposed on New York scene, added Moscow and changed NY street names. Issues: Substantial similarityhow to define Holding/Reasoning: • To prove copyright infringement o valid copyright? yes o copying by the D? Circumstantial evidence of access and substantial similarities (Arnstein) • Access establishedD had poster in his office • Sole issue is substantial similarity o IF NO SIMILARITIES, ACCESS IS IRRELEVANT o distinguish idea and expression idea of map of world w/egocentric myopic view not copyrightable Expression IS • Style, rendering of NYC blocks not based on actual street layout or bldgs so D has no excuse of Merger • details • P’s hallmark printing of words o L. Hand, “No plagiarist can excuse the wrong by showing how much of his work he did not pirate.” o Even if a small portion of D’s work was similar, still infringement o Finally, since there is proof of access, degree of substantial similarity can be less. §106(1). Copying. ANALYSIS: 1. Proof of Copying A. Direct Evidence-D admits to copying, witness sees D copying, etc.. B. Circumstantial Evidence • Access & Similarity. A sliding scale Arnstein v. Porter o If no similarities, no amount of evidence of access will suffice to prove copying o If evidence of access and similarities exist then trier of fact determines whether similarities are sufficient to prove copying o If evidence of access absent, similarities must be so striking as to preclude the possibility of independent creation 2. Improper Appropriation A. Did D copy “protected” expression? 24 1. Objective analysis-Nichols v. Universal Pictures Corp-dissect manifestations of creativity, plot, themes, dialogue, mood, setting, in order to determine protectable elements. Abstraction pyramid: General Ideas at top: not protectable P’s literal expression at bottom: Protectable B. Is there Substantial Similarity that constitutes Improper Appropriation? 2. Subjective Analysis-Nichols v. Universal Pictures Corp-trier of fact determines whether D improperly appropriated protected elements. Issues include whether a) fact-finder compares 2 works as a whole, including unprotectable elements. Roth Greeting Cards b)Fact finder only compares protectable elements c)Expert testimony-Arnsteinv. Porter (“Immaterial”) d) Perspective of Ordinary Observer, whether ordinary observer would overlook the difference btwn P’s and D’s work e) Perspective of Ordinary Observer off the street or Ordinary Observer from the target audience? Ex/17 yr old boys for a video game are more discerning. ***Fragmented Literal Similarity-D copied distinct literal elements of P’s work and incorporated them into larger work of his or her own. Cts have held that if D takes quantatively a little but if it is qualitatively the “heart” then there is substantial similarity. Harper & Row ****Comprehensive non-literal similarity-Where D copies P’s style, look w/o ever literally copying, J.D. Salinger casebook example-this is also substantial similarity Tasini v. New York Times Co. (Electronic Compilations are different) Facts: D put entire collective work online Issues: Whether authors have rt to control copying and distribution of articles online Holding/Reasoning: Yes. Posting collection online is NOT a form of revision to collective work, thus publishers don’t have rt to post online w/o permission from each author Publisher must get permission of author to include in another type of work Policy: Electronic compilations are different §106(2).Exclusive Rt to prepare derivative works Derivative work-a work based upon one or more pre-existing works. Ex/translation, musical arrangement, dramatization, fictionalization, motion pictures version, sound recording, art reproduction, abridgement, condensation, or any other form wh/a work may be recast, transformed or adopted *Author’s transformation of the original need NOT be extensive Goldstein’s Paradox: Every infringer of a derivative rt is, by definition, itself a potential copyright owner of a derivative work, w/an equal claim on copyright’s system of investment incentives. How to tell the difference btwn §106(1) rt to make copies and 106(2) rt to make derivative works. KEY. The point at wh/the contribution of INDEPENDENT EXPRESSION to an existing work effectively creates a NEW WORK for a DIFFERENT MARKET. Midway Mfg. Co. v. Artic Int’l( Change in underlying work that creates a new market is a derivative work) Facts: D sells circuit boards that speed up rate of play on P’s copyrighted video games. Issues: Whether a D that sells licensees circuit boards that speed up play is liable for contributory copyright infringement Holding/Reasoning: Yes. • D’s analogy to playing a 33 RPM at 45 or 75 o Court: additional value to copyright owner is trivial • Court: Not same b/c Speeding up makes game more challenging, increases licensee’s revenue per game • Speeded up video game is substantially different product from original but still based on original o Copyright owner has the right to make changes to work (derivative rights) Policy: Every time new market created, or new ways to get money, the right automatically goes to copyright owner. Always new ways of making revenue, copyright owners keep going to Congress to get more protection Litchfield v. Spielberg Facts: P’s screenplay and E.T. P sent “Lokey” to D, Issues: How to determine if an accused work is a copy or derivative of P’s work. 25 Holding/Reasoning: Use the Copying-in-fact test. If can’t prove that the derivative work was “substantially similar” to P’s work, then cannot show it is a derivative • P’s right to make copies violated? NO, D didn’t infringe b/c works NOT “substantially similar.” • P well, right to make derivative works is violated b/c there are two different rights o P sez 106(2) was supposed to expand definition of derivative works to include any work based on a copyrighted work • Court: Didn’t show substantial similarity, no authority for that idea • Taxe, work is derivative if would be considered infringing work if derived from a prior work w/o permission-I.E. Copying-in-fact • Since she couldn’t show substantial similarity sufficient for infringement, thus could not argue violation of derivative work To be a derivative work: It has to be different enough from original that it qualifies as a new work, BUT the copyright owner of preexisting work has right to control derivative work based on existing work. So the existing work has to be substantially similar to what the derivative work (presumably) was based upon. Rights of Copyright owners • For some § 106 rights, copying in fact need not be shown • Nichols v. Universal Pictures – patterns of increasing generalities, key issue shared qualities of 2 works, o If qualities numerous and specific can be sharing expression, o If few and general just sharing idea wh/is allowed. • Improper appropriation is fuzzy, amorphous, o Approaches-view of ordinary observer • Comprehensive non-literal similarity(Salinger case) • Quantitatively, Qualitatively • Derivative works-any form in wh/a work can be transformed, recast o Have to have substantial similarity and have to have original expression o Goldstein-derivative work creates a new market for work o § 103(b): when someone creates a derivative work (w/permission of original owner-or it is in public domain) Copyright will only cover the original expression added, thus pre-existing work in this work is still accessible by copyright owner/public domain • Midway: o Focus on possibility on if this is another way copyright owner could get more revenue o D created derivative work, infringement (speeded up video games) o Moral: get permission 1st before doing derivative work. • Litchfield v. Spielberg o Copied (not necessarily literally) o To prove infringement of derivative work, still need to show substantial similarity to the original work • Problem 4-25: o Photo owner’s right to copy (reproduction), right to derivative work o No derivative work b/c not original work (public domain + copyrighted work) OR o The arrangement could be added created expression (Rothgreeting card case) o Assuming it is a derivative work, not allowed to register derivative work if no permission from owner of pre-existing material Arguably World Enquirer wouldn’t have any copyright b/c it is a merged use and need permission of lawyer THE DISTRIBUTION RIGHT §106(3). Exclusive rt to distribute, thru sales or other means, either the original or subsequent copies of a copyrighted work. §109(a). “First Sale Doctrine”-a copyright holder cannot restrict what a purchaser of a particular lawful copy does w/that copy. The purchaser may not copy it, but may resell it w/o restriction. Quality King Distr. Inc. v. L’anza Research Int’l Inc. (Distribution right v. first sale doctrine) Facts: P sells fancy shampoo w/copyrighted labels. P spends $ on ads in US, hi prices, BUT lower abroad. D bought shampoo abroad and resold to US cheaper Issues: Whether first sale doctrine exempts D’s importation of P’s copyrighted shampoo from violating 106(3) exclusive distribution in sales of imported copies Holding/Reasoning: Yes. • 106(3) Exclusive statutory right to vend applied only to first sale of copyrighted work • §109(a)unauthorized resales by domestic distributors is NOT copyright infringement (need to rely on K law) • P argues 602(a) Unauthorized importation of copies is infringement of copyright holder’s right to distribute o Court: 602 defers to 106, wh/is limited by 109in way that doesn’t render 602 superfluous. Different result if manufacture was in another country, 602(a) would allow P to stop goods from coming in BUT since was made in US w/copyright, first sale doctrine comes into play. 26 Policy: Parallel importation: Not relevant to copyright act, int’l trade agreements also irrelevant • Limitation to first sale doctrine o Computer software companies, first sale doctrine would inevitably lead to copying o Can’t set up rental shop for software, records, tapes o Movies unaffected (Blockbuster Mirage Editions V. Albuquerque A.R.T.(limitation of first sale doctrine) Facts: Artist work was published by P. D bought coffee-table books, cut up works, glued on tiles, offered for sale Issue: Whether a D can buy copyrighted art work, make something out of it and resell Holding/Reasoning: No. • Court recognizes first sale BUT • Limits to mere sale of book and nothing else • Derivative works right implicated o Created new work and right to derivative work belongs to original owner o Disagreement over whether it is a derivative work Policy: Close to Moral rights for authors but not • Is this case about violation of distribution right or some other exclusive right? o If derivative work, then infringing o IF not derivative work, then distribution right is implicated BUT • First sale doctrine says no infringement • No copying per se • Distribution right doesn’t help-first sale doctrine • So right to derivative works does help copyright owner (the section is NOT redundantearlier question) • Is it possible to envision circumstances under wh/framing a work of art involves, original, creative expression? o Mirage shows it • Moral rights-Continental Europe • Reproduction, derivative, distribution, NEXT o Public performance/displays • Public not singing in your shower • No public display rights in architectural bldgs • Owner of copyright of sound recording has right to stop digital performances on internet but not on someone singing the song in public (lyric owner does) 106(4) Public Performance Rt 106(5) Public Display Rt • Public Performance o Motion performance when you play a movie in public place, it is being performed • Public interest exceptions § 110 o Teaching, worship, no admission charge • Compulsory licensing o List in power point o ASCAP: Businesses buy licenses for whole list and then can have people perform them (restaurant, radio, TV) Moral Rights-visual art is protected, attribution, author claim ownership, stop distorting the work (integrity) New Statutory restrictions • Audio Home Recording Act • Digital Millennium Copyright Act o Unintended consequences-too far reaching Remedies: Liability Rule (Contracts Law) Property Rule (Property law) • D has right to violate law, as long as pays P amount sufficient to compensate P’s loss • Damages are sole remedy, injunctions rare • P has right to prevent improper behavior by D, ex/trespass • Damages may be awarded BUT other remedies o Punitive damages o Injunctions o Criminal sanctions Copyright Law is a mix of Liability rule and Property rule 27 • Fair Use doctrine • Except: Allows D NOT TO PAY ANYTHING • Compulsory licensing • Statutory damages o Liquidated damages clause designed to avoid market failure in cases in wh/injury to copyright holder is hard to quantify • D can’t just pay damages when infringes • Criminal sanctions for intentional infringement • Civil cases-infringement enjoined • Seizure/impoundment of infringing articles during trial o Destroyed/forfeited if D loses • P may collect damages o “actual” o statutory-$200 up to $20,000 for innocent, and up to $1000,000 for willful Sheldon v. MGM (Remedies)( P proves that D made money off of infringement, D’s job to show that not all of profits came from infringement) Facts: Petitioners wrote play, Dishonored lady (coprytighted/unpublished). Respondants made movie. Lower ct found infringement, awarded net profits to P. Ct of Appeals said 1/5 of all profits. Issue: Whether P should get all money made off infringement when D’s profits also came from the actors/production & director experts or should there be an apportionment APPORTIONMENT of liability-comes from torts, parceling out liability of an injury Holding/Reasoning: P shouldn’t get net profits, • No statutory std, hard to compute P’s share • Burden placed on D o Must show profits made did not come from infringed work o If D can show distinction can be made, then P is not entitled to all profits • “The infringer is liable for actual, not possible gains” • Like patent infringement, infringer created profits by addition of non-infringing valuable improvementsSO WHAT HAPPENS? o Provisions for statutory damages b/c copyright losses are hard to calculate • To get remedy o Must register copyright (no examination) o Show valid copyright and substantial similarity of the works due to copying o Can get actual damages ( D’s profits-what isn’t attributable to P) International • Berne and GATT o Minimum protection to nationals of other countries US: an American copyright holder must register “Fair Use” of §107 of 1976 Copyright Act Professor Joe Beck Monday, November 04, 2002 Fair Use • Overview • FU-a rt to use a work in way otherwise infringes. Fair Use can defend yourself from infringement Or you have a constitutional rt. • Burden on defendant to prove fair use • Teaches 1A, usually gets Law Student TAs, resumes to Celeste Katz • 1A o Constitutional provision Sect 8, Cl 8 rt to copyright v. 1A “Congress shall make no law…” Traditionally FU deals w/conflict Times Inc, v. Geist-filmed shooting of JFK, sold copyright to life magazine. P is Times (owns Life) D copied films in order to talk about JFK assassination. Holding: Fair Use, no need to deal w/1A b/c fair use doctrine is an accommodation of the public interest. Suntrust Bank v. Houghton Mifflin Co. Facts: Wind Done Gone, parody of Gone w/the Wind Issue: whether it was a parody and has fair use defense Holding/Reasoning: New vantage point, Parody is a fair use A. Purpose and Character of Use-criticize and transform original B. Amount and Substantiality-used a lot But was needed C. Effect on Market-transformative nature means wouldn’t compete in same market as the market for Gone w/the Wind derivatives 28 Policy: 1A interest in preventing suppression of creative new works. Copyright cases-Injunctions • 4 things to showlikelihood of success, irreparable harm, public interest served by injunction, harm to P is greater than hard to D • George Washington paper case4 fair use factors o Purpose and Character of Use o Nature of Copyrighted work o Amount and Substantiality o Effect on the potential market or value of work • Unpublished is not a barrier to fair use • Fair Use is equitable- Factors are interrelated Nature of work effects amount (can take more from history book than fiction) • Parody • Imitates for the purpose of ridicule • Fair Use o Purposeclassic parody o Nature of copyrighted workcreative work gets max protection, but people only parody creative/popular work o Amount and substantiality17 characters, enough parody and more if it doesn’t affect the market for the work o Effect on potential marketdidn’t put in proper evidence of market effect. They said it tainted the work, and ruined value BUT that is NOT what effect on market is, would have to say that it was like a sequel… Copyright damage is damage to the market for “Gone w/the Wind” BUT criticism wh/damages the market is permitted. • 1A stopped enjoining the work Ty Inc, Beeny Baby Case Fair Use is § 107 of Copyright Act Sony Corporation of America Facts: VCRs came in. TV copyright owners sued b/c viewers could tape w/o authorization Issue: Copyright infringement? Whether VCRs have a substantial noninfringing use. Holding/Reasoning: No infringement b/c authorized time-shifting use. Even if other tv producers did care, there is always a “fair use” defense Criteria for contributory infringement 1. No other non-infringing usesfocused on time-shifting as a non-infirnging use 2. Everybody objectsthe court here slapped the P for being greedy b/c sports and religious people didn’t care. Policy: Encouraging this new technology. Laws re new technology haven’t been writtenCongress has to write new laws. 1. All four factors against Sony but Sony still won fair use 2. Statement about technology-leave it to Congress (dealing w/Content owners gripes) 3. Contributory infringement a. Other kinds of uses (Time Shifting, seeing movie at a later more convenient time) b. Permitted by copyright owners (Sports and religious people) i. No Contributory infringement Harper & Row Publishers v. Nation Enterprises, Inc. (Fair Use defense) Facts: D scooped P’s news article on Ford’s autobiography. D’s story had quotes, paraphrases, facts from manuscript Issue: What extent does fair use sanctions unauthorized use of quotations from public figure’s unpublished manuscript Holding/Reasoning: D’s use was infringement, not covered by fair use • Publication of author’s expression before dissemination authorized infringes author’s right to decide when or whether it will be made public • Author or copyright owner has control over 1st public distribution of work, even if there is “news value” to work • Fair Use factors: o Purpose of use Commercial, weighs against fair use o Nature of Copyrighted Work Greater need for factual works as opposed to fiction/fantasy, pro fair use Unpublished, against fair use EquityNation had unclean hands, b/c it was stolen o Amount and Substantiality of Portion Used 13% of D’s article was copied verbatim from P Quantitatively insubstantial, Qualitatively substantial b/c took “heart” of workwhat did Ford have to say to Nixon about a pardon Idea/Expression dichotomy o Effect on Market Single most important fair use factor Time canceled K w/P, lost $12,500-actual effect on market (for original) 29 “should become widespread, would adversely affect potential market for copyrighted work” • Not only harm to original ($12,500) but also market for derivative works • Dissent: words, idea, expression are all merged. Didn’t Nation in order to report, had to use that language. Policy: What about “monopoly reporting?” Emphasizes author’s privacy and control over publication wh/doesn’t seem to be public benefit • Internet-still commercial use, focus on improper news gathering techniques (equitable), “Scoop” American Geophysical Union v. Texaco Facts: articles in scientific journal were photocopied Issue: whether a company’s photocopying of technical journal constitutes fair use. Holding/Reasoning: Factors: 1. Purpose and Character of the Use a. Whether commercial or non-profit educational (spontaneous fits classroom use) BUT D makes $ w/research b. Transformative use-if it hasn’t been used differently, then all profits should go to copyright holder, even though a photocopy is a more usable format, not transformative c. Both a and b weigh against fair use d. Dissent: transformative 2. Nature of Copyrighted Work a. Factual, thus favors fair use 3. Amount and Substantiality of Portion Used a. Favors copyright holder b/c D copied the whole thing 4. Effect upon Potential Market or Value a. Traditional market for journals? Profit for author is recognition b. Potential i. Sales of new subscriptions, back issues-limited b/c academic journal w/unpaid, unsolicited articles ii. Licensing-lost iii. Substantial harm to value of copyrights iv. Dissent-illusory bad effects Policy: Other Defenses: Campbell v. Acuff-Rose Music, Inc. (Supreme Court)(Parodies) Facts: P owned “Pretty Woman” by Roy Orbison. D’s song is a rap parody (Luke Campbell 2 Live Crew). D offered to pay royalties but P didn’t want song defiled. Issue: Whether commercial parody is fair use Holding/Reasoning: 1. Purpose and character of use a. Parody-use of some elements of a prior author’s composition to create a new one that, at least in part, comments on the author’s workThreshold question, does it seem like a parody? Doesn’t matter if its in good or bad taste b. Commercial use BUT not presumptively unfair, have to look at other elements 2. Nature of Copyrighted Work a. Copyright is meant to protect published, creative expression, for public disseminationagainst fair use 3. Amount and Substantiality of the Use a. Not more than necessary was taken, but “heart of the work”-District Court b. Supreme court-in order to be a parody, needs to be recognizable 4. Effect of use upon potential market for or value of the copyrighted work a. D has burden b. Parody doesn’t affect the market for the original work? D didn’t say much Overall, commercial use NOT presumptively unfair. Reversed & Remanded to find effect on rap market for Roy Orbinson’s “Pretty Woman” Policy: What about Parodies and Derivative work rights? Court here expects that copyright owner must license their work in order to promote the widespread distribution of information. Transformative Use is important • Transformative Use is important result of this case o Uses that change the work are to be favored o Estate of MLK v. CVS 62% of Speech Transformative? Ct didn’t discuss. Argument that video on speech and cutting to images while MLK was speaking Los Angeles News Service-Reginald Denny got beat up 30 Other Defenses: 1. Independent Creation-D may present evidence that D created independently 2. Consent/license-D had permission 3. Inequitable Conduct-occurs when a copyright owner obtains a copyright through fraud or other deceptive conduct on the Copyright Office a. Failing to disclose owner’s plagiarism b. May lead to invalidating copyright, consequences may be different 4. Copyright Misuse-4th Circuitdefense on ground P used copyright in anti-competitive manner 5. 1st A: courts generally reject argument, b/c constitution provides for copyright 6. Immoral/illegal-modern trend rejects obscenity as excuse not to enforce copyright 7. Statute of Limitations-3 yrs after claim accrued A&M Records, Inc. v. Napster, Inc. Facts: D created system of sharing music files. 70% of them copyrighted. Issue: Whether users directly infringed P’s copyright and whether D is contributorily infringing. D tries fair use as defense Holding/Reasoning: YES infringing! • D sez: Fair use-sampling, space-shifting, permissive distribution of recordings • Court: No and providing free over internet is a “commercial used” b/c users give songs w/expectation of getting new songs. • Contributory Infringement claim: o Knowledge-D knew that users were copying protected material BUT Sony wouldn’t impute requisite level of knowledge o Material Contribution-D provided site and software for users o Financial Benefit-b/c site draws customers o Supervision-could have supervised user’s ability Dr. Seuss-read Campbell narrowly, when D wrote Cat on the Hat to parody O.J. Simpson trial, not Cat in the Hat. Trademark and Trade Dress Fundamental principles of Trademark: Tort based. Tort of misappropriation of the goodwill of the trademark owner and tort of deception of the consumer. 1905 Act-eliminated identicality and intention to deceive requirements-More fluid test: Likelihood of Confusion. • Trademarks entitled to legal protection: • Depends on classification o Arbitrary o Suggestive o Descriptive o Generic Lanham Act-Federal protection, there is also state protection Trademarks oldest IP, goodwill in your mark. Basis for protecting Trademark v. (Patent and Copyrights)-The kinds of requirement s for patent and trademark useful, new, creation Trademark isn’t about creating something new All IP have in common is the expansion in the subject matter that each can cover. Southwire-logistics system given trade secret protection. Inevitable disclosure doctrine-given trade secret protection Patents • Living matter • Plants under utility patent • Software Copyright • Public presentation of Sound recordings Trademarks-words, phrases, logos, and symbols that producers use to identify their goods. Service Marks-same purpose but used to identify services rather than goods. Titles, character names, other distinctive features of radio and television programs may be registered as service marks notwithstanding that they, or their programs, may advertise the goods of sponsor Trade names-identify the company itself. Cannot be registered under Lanham Act unless actually function to identify source of particular goods or services. Can be registered in state offices and state and federal common law may provide protection against confusingly similar company names 31 • Purpose of Trademarks: o Identify source of goods or services; protect goodwill of owner (tension) • Commerce Clause-Congress’s ability to regulate interstate commerce, must use mark in commerce o As long as used in commerce and distinctiveness protected • Duration: Perpetual as long as used in commerce • Subject Matter: Words, symbols, names, devices, used by business to distinguish goods from those of others • Federal law • State common law protection Qualtex Co. v. Jacobson Products Co., Inc. (Supreme Court)(Color can be a trademark) Facts: P had green-gold on dry-cleaning pads and sued D for using same color Issue: Whether color alone can be a trademark Holding/Reasoning: Yes. • Color can o Act as a symbol that distinguishes a firm’s goods and identifies their source w/o any other function o No competitive need for colors to remain available in the industry/not functional o Must show mark has ACQUIRED SECONDARY MEANING • Shades of green not an issue b/c courts have to decide btwn closely named products (Huggies and Dougies) • D: Not enough colors to go around, if this were true, then it would be functional and thus no trademark. o Ct:Functionality Doctrine-forbids trademark when doing so will put a competitor at significant disadvantage b/c feature essential to use or purpose of article or affects costs/quality (afraid of back-door patents) Drugs-color is functional (people separate pills according to colors Black on boat motors b/c reduces apparent size Emergency/warning color • Trademark helps were trade dress doesn’t o § 1124-ability to prevent importation of confusingly similar goods o § 1072-constructive notice of ownership o § 1057(b)-prima facie evidence of validity and ownership Policy: If you can have trademark protection for something that is functional, is a way of getting a back-door patent. It would be perpetual protection for this functional feature, not fair. Different requirements for protection, Trademark don’t have to show novelty, nonobviousness. Supplement, p. 346 § 1052 (Lanham Act § 2) Trademarks registrable p. 381 § 1127 (Lanham act § 45)Construction & Definitions, Intent of Chapter 4 Types of Registrable Marks: Trademark-any word, name, symbol, or device, or any combination thereof to identify single source of goods (can be anonymous FOR ALL TM Service Marks-any word, name, symbol or device to identify a single source of goods Certification Marks-any word, name, symbol, or device, or any combination thereof: Used by person other than its owner but Like Champagne, sparkling wine from Champagne, France. Not a single source, certifying quality (good housekeeping seal) or regional origin Collective Marks-Indicate membership, identify goods/services of group identifies requirements to be member of group 1. attached to goods and services are useful in franchising where individual stores or outlets are somewhat independent from central organization holding the collective mark. 2. Indicates person is member of group/organization 3. identify their goods and services and indicate they meet the organizations standards for admission Tradenames-Name of an organization. not itself registrable unless used as a trademark Trade Dress and Trademarks can be registered together as trademark together, however usu trade dress is separate w/o registration under §43(a) of Lanham Act-“federal common law” protection for trademarks and related source identifiers Establishment and Extension of Trademark Rights • Inherently distinctive marks are immediately capable of identifying a unique product source-rights are determined by priority of use o Inherently distinctive marks further divided into arbitrary, fanciful, and suggestive marks • All other marks, Lanham Act requires proof of an additional element: Secondary Meaning o Descriptive trademark-a word, picture, or other symbol that directly describes something about the goods or services in connection with which it is used as a markrequires secondary meaning o Secondary Meaning-It does not mean buyers need to know the identity of the source, only that the product or service comes from a single source. (Single though anonymous source) 32 Classification of Marks • Inherently distinctive (immediately registerable) o Fanciful (coined, arbitrary) o Suggestive-requires some imagination to make connection btwn mark name and goods/services Where most battle: Suggestive v. Descriptive • Descriptive (proof of acquired secondary meaning required to be registerable) o Including descriptive, misdescriptive, surnames , geographic marks • Generic (otherwise unregisterable)-Butter for butter is not protectable b/c competitors need to use the name in order to describe their product Trademark look in relation to product/goods/services Example • Apple-for the fruit it is generic but for computers it is inherently registerable o Concerned about competitors and their ability to compete Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc.(trademark classifications) Facts: Fish-Fri and Chick-Fri batter by P. D’s also call it Fish/Chicken Fry. Issue: Trademark Infringement case Holding/Reasoning: No Infringement • 1)Threshold: Whether the work/phrase is initially registrable or protectable. o Classification Generic-name of particular genus or class of wh/an indiv article or service is but a member-NEVER attain trademark protection, if at any time a registered trademark becomes generic, subject to cancellation Descriptive-identifies a characteristic or quality of an article or service-ordinarily not protectable, They MAY become valid marks by acquiring secondary meaning in minds of consuming public***This is situation for Fish-Fri • Distinction btwn generic and descriptive is degree Suggestive-suggests some particular characteristic of the goods or services to wh/it applies and requires consumer to exercise imagination in order to draw a conclusion as to the nature of the goods and services-protected w/o showing secondary meaning. Ex/Coppertone for sun tanning products Arbitrary or Fanciful-bear no relationship to the products or services to wh/they are applied-protectable w/o proof of secondary meaning Ex/Kodak • 2) How to tell If a mark is generic or descriptive. o Fish-Fri- Dictionary-definition fish-fri is to fry fish, descriptive o Imagination Test-relationship btwn words of mark and product, if it requires imagination then is suggestive, alternativelyit is descriptive o Whether competitors would need the terms to describe their products-lots of people call it fish fry, thus most likely descriptive Most likely a descriptive term • 3) If mark is descriptive, how to tell if there is Secondary meaningfactors-advertising, sales, length and manner of use, Surveys o Survey shows that fish-fri developed secondary meaning Surveys Used a lot in trademark • Survey to show (Generally) • Secondary meaning • Consumers likely to be confused o Period of time in use-after 5 yrs can apply for incontestability o Volume of sales o Amount of advertising o Consumer testimony o Defendant’s intent to copy-suggests mark has acquired secondary meaning (if it seems D is trying to take advantage of P’s goodwill that is built up in the mark) • 4) Does D have fair use defense? • “Fair Use” Defense o §33(b)(4) Fair Use defense available when descriptive terms are involved and only when term is used in descriptive rather than trademark sense. Prevents a trademark registrant from appropriating a descriptive term for its own use to the exclusion of others, who may be prevented from accurately describing their own goods. o b/c D used fish fry fairly and in good faith that firsh-fri was generic o Also packaging (trade dress) very different o Chick Fri is descriptive but surveys didn’t show secondary meaning. No protection 33 Fair Use under trademark different than copyright • Limited defensecan only use descriptively to describe your product (very narrow) • Junior user not liable for using a mark in a descriptive sense as opposed to trading on the senior user’s established trademark meaning. • Copyright has categories, factors very broad Bagley: If use descriptive mark for more than 5 yrs, can file for incontestability and no defenses could be raisedZatarains should have done this Circumstantial Evidence • Goal: provide incentives for businesses to invest in marks (quality control) we may encourage expenditures directly • New York Rule-eliminated need to show secondary meaning where Ps can point to equitable factors in their favor, like intentional deception or “palming off” by the Ds. Marks can be Registered on Federal Registration Principal Registser (PR)(Distinctive Marks) • Nationwide constructive use and notice • Possibility of incontestable status • Federal Subject Matter jurisdiction • Customs seizures of infringing goods-if goods made in another country, and your Mark is affixed, can get Customs officers to stop (confiscate) • Treble damages, attorney fees Supplemental Register • (not inherently distinctive, placed here until it has acquired secondary meaning) • Not published for opposition like PRs • Capable of becoming distinctive Registration Procedure: • File application in PTO o Actual Use o Intent to use (ITU) (no use in commerce yet) Applicant has 6 mos after notice of allowance to show use, Must submit proof of use w/in 3 yrs or the ITU is abandoned • PTO examines/Office Action/Response (go to Supplemental Register if descriptive) • Publication for Opposition (30 days) o Not in patents o Anyone can publish why it shouldn’t be registered, if no challenges • Mark registered on Principal Register (Notice of allowance if ITU (Intent to use application), must file declaration of use before registration. Specimen showing mark in use w/goods/services) • Cancellation limited/Incontestable possible after 5 years o Before 5 yr period, anyone can challenge to cancel mark o If applicant has used mark continuously for 5 yrs, can file affidavit and get incontestability • Must renew every 10 years (use affidavit after 6 years) Priority: • Protection based on use • Common law, A has priority over B Time 1 Time 2 Time 3 A Idea Use B Idea Use • Under Lanham Act • A can exclude locally, where A used it first • B will have priority all over the rest of the country Time 1 Time 2 Time 3 A Use B Use Register 34 • B’s actual use comes after A’s use, who has priority • B has priority under Lanham Act • Even though A was 1st to use mark, B’s later use refers back to the ITU’s filing date • B can exclude A everywhere b/c B is constructively considered to have used first Time 1 Time 2 Time 3 A Use B ITU Appl. Use/Register • A has priority in limited area • B can exclude all others everywhere in country • Under common law, protected to where you are selling, if you have national reputation, may have a wider area of protection Depends on facts of case Time 1 Time 2 Time 3 A Use B ITU Use/Register September 11 • Pa flight, Beamer’s last words, “let’s roll” • Todd Beamer foundation wanted to use “let’s roll” for trademark, filed ITU • Problem: lots of people already filed ITU o Beamer used it first Problem: Beamer wasn’t using term in trademark (goods/services) sense o Constructive use? o Why can’t copyright? Short phrases generally not copyrightable o §2(a). Consists of or comprises immoral deceptive or scandalous matter wh may disparage or falsely suggest a connection w/persons living or dead o §2(c). Consists of or comprises a name, portrait, or signature identifying a particular living indiv except by his written consent o Unfair Competition if falsely suggests connection w/Todd Beamer Section 2 Bars. Absolute Bars • 2(a)-immoral/scandalous • 2(b)-flag, coat of arms, insignia of US • 2(c)-image/signature of person w/o consent • 2(d)-looks too close to other marks • 2(e)(3)-• 2(e)(5) Section 2(e)(1), (2), and (4) can be registered upon proof of acquired distinctiveness 2(e). Consists of mark wh/1. when used on or in connection w/goods of applicant is merely descriptive or deceptively misdescriptive of them 2. Primarily geographically descriptive of them except regional origin okay under 1054 4. Surname • Merely descriptive or deceptively misdescriptive o Example glasswax-glass cleaner that didn’t contain waxpeople don’t necessarily expect wax to be in it (doesn’t affect purchasing decisions) • Geographically descriptive • Primarily merely a surname Two Pesos, Inc. v. Taco Cabana, Inc. (Distinctiveness of Trade Dress) Facts: TC chain of Mexican restaurants, TP came up after, restaurant looks same Issue: Whether trade dress of restaurant is protected under §43(a) of Lanham act when there is inherent distinctiveness but no secondary meaning Holding/Reasoning: Yes. • Supreme Court of the United States o Trade dress doesn’t need secondary meaning requirement b/c at odds w/generally applicable principles under 43(a) o Also acquiring secondary meaning is hard for start-ups • Protecting distinctive trade dress will enable companies to appropriate their own good will, protect small companies from larger infringers (b/c won’t have time to acquire secondary meaning) 35 Knitwaves, Inc. v. Lollytogs, Ltd. (Distinctiveness of product configurations) Facts: P’s nature sweaters for kids, enjoins D from making similar-looking sweaters. Issue: Whether the design of a sweater is protectable Holding/Reasoning: No b/c aesthetic functionality-the look of the sweater is for appearance and not to identify a single source. Harjo v. Pro-Football Inc. (Immoral or Scandalous Marks) Facts: Native American want to cancel trademarks for Washington Redskins Issue: Whether Redskins is scandalous and can be cancelled Holding/Reasoning: Yes. • Scandalous testTwo step process o 1) Determine likely meaning of matter in question o 2) Determine whether matter is scandalous to substantial composite of general public • 2A): Disparaging test: Depends on how mark makes that group feels, Perceptions of general public irrelevant o The mark is cancelled b/c it disparages Native Americans, Plaintiffs have standing, • Policy o Rights of consumers o Mark owner o Competitiors-legitimate competition o In this case, new groups: Other than o Rights, concerns of third parties that are damaged by the registration of this mark • This case isn’t really over. On appeal to District Ct of Columbia • D might argue o Inv