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Intellectual Property – Outline
I. Introduction II. Trade Secrets – pure wealth distribution btw competitors, protect incentive to obtain info A. Subj. Matt. – econ. valuable secret, reasonable precautions; terminates upon pub. disclosure B. Misapprop. – improp. acquisition (comm. morality), improp. disclosure C. Remedies – injunction (property rule), end = secret terminates OR head-start over III. Patents – exclusion, property rule, rights defined by claims A. Subj. Matt. – process, machine, manufactures, business methods; NOT natural laws, abstract ideas B. Utility – substantial & specific utility; credible utility (must do what it claims to do) C. Novelty & Non-obviousness – no patent where known/used by others; not obvious from prior art D. Specification – describe & set out claims; must enable person to make it (quid pro quo) E. Interpretation – claim is boundary of patent; canons: validity, go w/ narrower one, can’t limit claim from desc. F. Infringement – literal, doctrine of equivalents (presump. for narrow claims), inducing, contributing G. Defenses – experimental use (amusement, idle curiosity), inequitable conduct, misuse IV. Copyright – utility + moral – fixation & formalities, originality & creativity A. Subj. Matt. – only copyright expression, useful article doctrine (PGS), categories flexible (“including”) B. Ownership & Duration – vests in author upon fixation C. Rights – copies, derivatives, distribute, public performance & display, digital transmission D. Infringement – copying = access + similarity; improp. approp. (enough of protected expression) E. Defenses – FU, reverse engineering, parody V. Trademark – business tort, no protection for functional features A. Protected? – anything (color) – crowding out concern B. Classification – generic, descriptive, suggestive, arbitrary – 2nd meaning, FU, trade dress C. Priority – priority of use in commerce OR registration w/ intent to use D. Fed Registration – important part = incontestability E. Infringement – likelihood of confusion, dilution, false advertising F. Defenses – genericness, functionality, abandonment VI. State Law A. Misappropriation & Trespass B. Contract C. Privacy / Publicity D. Fed Preemption
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I. Introduction A. Source – CL v. statute – trade secret = CL, trademark = CL origins, patents = statutory, copyright = statutory B. Duration – indefinite period (CL) v. fixed (statutory) C. Domain – limits on what can be protected D. Characteristics – CL property = bundle of sticks; IP = clearly defined rights E. Theory – moral (labor makes it mine, reward for investment), utilitarian (coordination, incentive) II. Trade Secrets A. Subject Matter 1. Elements – economically valuable secret, reasonable precautions, wrongful acquisition or disclosure 2. Definition a. Economically valuable (what is means of measuring?) – normally talking about business things b. Secret = not known / knowable c. Res = idea itself, not object containing it – need not be patentable d. Must not be “readily ascertainable” by competitors e. Why need separate subject matter? – K and torts could suffice i. K may not exist – liability rules only get immediate perpetrator ii. Property rules go beyond initial perpetrator iii. Might not be any available tort f. Subjective belief in secrecy = EE of actual secrecy (Fourtek, p. 33) 3. Self protection a. Rationale – at some point, mismanagement becomes more responsible than wrongdoing b. Owner need not take extraordinary measures (Rockwall Graphics, p. 42 – piece part drawings) c. Dual roles: evidentiary (actually is a valuable secret) + remedial (efficient level of self-protection) 4. Disclosure – terminates protection a. What is secret, and what is not? – where do we draw the line? b. Valuable alternative to patents c. Disclosing to suppliers is common – look for licensing agreement or understanding of secrecy d. Obscure journal publication? i. How readily accessible must it be? ii. Might be inconsistent w/ reasonable self protection e. Inadvertent disclosure – secret protected, provided that person who acquired it knows it was a mistake B. Misappropriation 1. Two parts – improper acquisition of info + improper disclosure of the info 2. Improper Acquisition a. Two rationales of TS: pure wealth distribution btw competitors + protect incentive to obtain info b. Flying over unfinished plant to photograph processing methods = improper (DuPont, p. 55) i. Don’t have to protect secret w/ impenetrable fortress ii. Look to commercial morality 3. Reverse Engineering a. Ok to reverse engineer locks, since locksmiths owe no duty to lock maker (Chicago Lock, p. 67) b. How to prevent? i. Confidentiality agreement – works for people in privity to K – locksmith isn’t bound by EULA ii. Might be unconscionable to prevent end user from using product in certain ways c. Assumption that there is some kind-of clear commercial morality – but can free ride on competitor! 4. Confidential Relationships – If selling idea, buyer under implied position of trust (Smith, p. 59) 5. Departing Employees a. Company can protect employee-acquired info by confidentially agreement, but ct won’t imply one (Wexler, p. 74 – chemist leaves to work for competitor) b. Distinguish: employer disclosing to employee VS. employee acquiring during employment c. Inevitable disclosure – employee can be enjoined from working for competitor, if no way that confidential info will stay secret (PepsiCo, p. 86 – manager goes to work for Quaker)
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i. Non-compete clause can only last for reasonable period ii. CA – doesn’t enforce these at all d. Balance: mobility of employees VS. companies disclosing necessary info to employees e. Nonsolicitation – like non-compete clauses 6. Licensee must pay royalties, even after trade secret disappears (Warner-Lambert, p. 92 – Listerine) a. If doesn’t have to pay, creates MH problem – licensee might leak secret b. Restraint on trade? – later people have advantage = don’t have to pay for secret c. Consideration for K – probability that person has a real property right C. Remedies 1. Property rule (injunction) = normal remedy a. Should ct have discretion to invoke only damages? b. Should injunction ever end? – secret terminates = end; K-2 Ski Co = head-start injunction 2. Unjust enrichment may be allowed (UTSA § 3) 3. Electronic Espionage Act – how and why is this criminal statute broader than UTSA? III. Patents A. Introduction 1. Right to EXCLUDE others from making, using, selling, or importing invention 2. Rights defined by specific claims in app that may not be co-extensive w/ physical object 3. Patentability – utility patents, design patents, plant patents 4. Patent secured by grant from PTO, which screens apps for patentability 5. Limitations: first sale doctrine 6. Protection = property rule (injunction) – tension btw patents & anti-trust 7. Purposes: a. Incentive to create – why not give reward? – duration & breadth?? b. Prospect – supplementary – allow patentees to coordinate follow-on innovation c. Expansion of public domain – forces public disclosure 8. Prosecution – 406k per year – PTO grants 66-75% of apps 9. Process – first office action, second & “final” action, Board of Patent Appeals 10. Other features: a. No notice of app (unless filed outside U.S., in which case, notice after 18 months) b. PTO review is ex parte c. Continuations – allow application to be re-filed – keep original filing date, if don’t change description B. Subject Matter 1. § 101 – process, machines, manufactures, compositions of matter – not laws of nature, abstract ideas, etc 2. Can patent living thing that is created in lab, w/ specific utility & that isn’t like any natural thing (Chakrabarty, p. 120) 3. Laws of nature / natural phenomena a. Distinction btw discovery & invention (Funk Bros. – combining 2 bacteria not patentable – but fails Chakrabarty test) b. Q – does this thing exist in nature or not? c. Synthesizing something found in nature to purer form = patentable (Parke-Davis, p. 128) 4. Gene technology – patentable, provided in isolated & purified state – must be utility for it 5. Abstract ideas a. Software i. Mere algorithm not patentable, but process for producing X using program is (Diamond v. Diehr) ii. Computer data system patentable if produces “useful, concrete, tangible result” (State St., p. 941) b. Business Methods i. No exception for business methods under § 101 C. Utility 1. Must show a substantial and specific utility (Brenner, p. 136 – showing that homologous Y chemical has a use doesn’t show utility for X)
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a. Doesn’t have to be useful on the marketplace b. Don’t want to have a claiming problem – people claim too broadly 2. PTO Guidelines a. Specific & substantial credible utility b. Substantially useful c. Credibly useful – has to be able to work (perpetual motion machine not patentable) 3. Moral Utility a. Europe has morals & “public order” limit on patents b. Assuming this would be a good thing, how would we define/enforce it? D. Novelty & Non-obviousness 1. Novelty a. § 102(a) – no patent where known or used by others prior to invention i. 2 prongs: known/used in U.S.; known/used elsewhere + patented/published in U.S. ii. Result = first-to-invent rule b. Patent denied for oil exploration technique – had been used by other company (Rosaire, p. 149) c. Does not have to be public use, just use 2. Statutory Bar a. § 102(b) – no patent where used/sold in U.S. or patented/published anywhere >1 year before filing b. Novelty attaches at date of invention, statutory bar looks at date of filing c. Result = force inventor to choose – either keep as trade secret, or file for patent d. Single copy of these in German Univ. library = “publication” (Hall, p. 154) e. Single use can be “public” use, even if not observable (Egbert, p. 157) f. LINE = commercial v. personal g. “On sale” bar = 2 requirements – offered for sale + ready for patenting h. Experimental use != “public use,” even if open (City of Elizabeth, p. 163) 3. Other Requirements a. 102(c) – no patent where abandoned b. 102(d) – no patent (>12 months) where inventor files for patent in other country c. 102(e) – no patent where invention = described in published app or actual patent granted d. 102(f) – no patent where applicant itself didn’t invent e. 102(g) – no patent where not first to invent 4. Nonobviousness a. Why require? i. Kitch – already incentives to make obvious & we only need to incentive non-obvious improvements ii. Simply another way of getting at novelty b. Steps: identify prior art, identify diff btw collective prior art & invention, identify level of art possessed by person having ordinary skills in art, consider “secondary” factors i. Commercial success ii. Long-felt, but unsolved need iii. Failure of others iv. Copying v. Unexpected results c. Nonobviousness construed in 1952 patent act (Graham, p. 172 – person skilled in making plows would find this obvious – no patent) d. What counts as prior art for 103? – much more limited – what people skilled in the art would look at e. Obviousness need not flow from prior art refs themselves, it can come from other sources (Dembiczak, p. 187 – PTO didn’t show that A and B would show to combine elements to create C) f. Trick – knowing how to combine art sources g. PTO takes this more serious than Fed Cir E. Specification (description & enablement) 1. Specification – contains description & set of precise claims
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2. Description – way of making sure you really invented what you are claiming 3. Enablement – shows that you made it AND quid pro quo for patent 4. Claim cannot be overbroad – aren’t enabled or matched by descriptions (Incandescent Lamp, p. 197 – S/M didn’t enable their invention, since most of fibrous material claimed wouldn’t work) 5. Method for doing A w/ use of X isn’t described unless X is identified (U of Rochester, s p. 3) a. Description requirement reigns in broad patents b. Could come down to inventive step (specific utility, like Brenner) – don’t know what your patent does c. Super-enablement requirement – must show that you locked down a secret d. Cuts bottom out of prospect theory – U of Rochester can’t get upstream patent 6. Best Mode – describe best use of invention – quid pro quo of the patent F. Interpretation / Infringement 1. Interpretation a. Patent ~ deed – claims don’t necessarily line up w/ identifiable thing b. Matter of law, for ct to decide – uniformity is important c. Sources – claim language, specification, prosecution history d. Claim = boundary line of patent e. Patentee can be lexicographer – not like K, patent addresses entire world – all must be on same page f. Canons – presumptions that are appropriate i. Can’t read limitation into claim from description, but can look to description to define claim’s terms ii. Validity iii. If two viable interpretations, go w/ narrower one (puts burden of clarity on patentee) 2. Infringement a. Literal Infringement i. Super Soaker doesn’t infringe TTMP’s water gun, since chamber isn’t “therein” (Laramie, p. 226) ii. Drafting issue – make broad claims, but not overbroad b. Doctrine of Equivalents i. Presumption in favor of narrow claims ii. Don’t hold patentees strictly to claims – limitations of language iii. Rationale: way of correcting for mistake in drafting, technological change iv. Fed Cir – would obliterate doctrine, if it could v. Triple identity test (purpose, means, ends) – look at all elements therein (Warner-Jenkinson, p. 230) (a) Look at all elements therein (b) For each of those elements, does accused patent make any significant change w/ respect to purpose and/or means? vi. Prosecution history estoppel (a) Patentee can’t claim any element given up in response to demand from examiner, unless unrelated to patentability (b) Assumption – any change in claim to avoid conflict from prior art, estopped from claiming infringement (c) Applied, even if claim dropped for reasons of form (Festo, p. 237) (d) Rebuttal – change was matter of trivial form c. Reverse Equivalents i. Used in old SC decisions ii. Device could be so far changed from patented article that it performs similar function in substantially different way, but still falls in literal words of claim iii. Basically, way of excusing examiner of granting the patent in the way he did iv. Odds of actually finding a patent that literally infringes, but doesn’t equivalently infringes – remote v. Practicing prior art – if practicing prior art, patent must be invalid (Tate Access Floors, p. 265) d. Inducing and Contributing i. Active (construed: knowing) inducement – form of infringement – § 271(b)
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ii. Contributory infringement (§ 271(c)) – supplying component, knowing it is especially made or adapted for infringing use & is not staple article of commerce w/ substantial non-infringing purposes iii. Patentee must prove: actual infringement + contributory infringement iv. Patentee might can claim that device can only be used in infringing way (Bard, p. 269) v. § 287(c) – immunizes medical practitioner from infringing a patent doing a “medical activity” (a) Puts cost of medicine onto manufacturers – but licensing fees will pass down to practitioners (b) Inventors of methods are doctors themselves (c) Method patents are being taken out by doctors, then assigned to huge manufacturers G. Defenses 1. Experimental Use a. Def – use for “amusement,” “idle curiosity,” or “philosophical inquiry” (Madey, s p. 15) b. Cannot claim experimental use simply by saying you’re non-profit & doing research c. No fair use defense in patent law – could expand “experimental use” idea 2. Inequitable Conduct a. If patentee engages in intentional deceit of PTO, infringer is ok (Kingsdown, p. 275) b. Gross negligence isn’t enough to bar enforcement c. Applicant must only disclose prior art they know of d. Prosecution laches – denied relief if sleeping on rights to prejudice of others – continuation apps 3. Misuse a. Exhaustion (first sale) i. When you resell device, all you are reselling is the device ii. If you restrict sale, you are trying to get more out of your patent & restrain commerce b. License restriction invalid b/c machine tied w/ film whose patent has expired (Motion Picture Patents, p. 281) i. First-sale doctrine merged w/ misuse ii. Ct is concerned that patentee is leveraging “monopoly” on device over to film c. Tying i. Price discrimination – where tied good is an input to the tying good & is used in variable proportions, tying can be used to price according to use ii. I can make the device such that it will only work w/ my input – if anyone tries to duplicate my input, that is contributory infringement (§ 271(d)) iii. Tying product must have monopoly / market power for per se illegality to kick in d. Antitrust and Misuse i. Controversy whether misuse should be coextensive w/ misuse ii. Misuse is broader than anti-trust iii. Patents take guidance from antitrust laws, not coextensive iv. If antitrust condemns a practice, it is misuse – but not the other way around v. Misuse != antitrust claim e. Patents and Antitrust i. Patent doesn’t privilege or immunize conduct from antitrust law (§ 211) ii. However, antitrust law may allow patentees to do some things that wouldn’t otherwise be allowed iii. Can’t use patent to monopolize to exclude others, except simply enforcing the patent IV. Copyright A. Introduction 1. Overview – right attaches when work is fixed, duration depends upon owner, limits: first sale & fair use 2. Theory – utility (economic incentives), moral 3. Fixation & formalities a. Why require fixation? i. Not plausible that it’s implied by “writings” in Const. ii. Could be EE of authorship – but author already has burden of proof iii. Limits scope – but recording basketball game doesn’t make it more important
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iv. Explanation – it’s the way we protect works b. What is fixation? – § 101 – must be > transitory duration – doesn’t have to be permanent c. State laws often protect unfixed “works” – CL protection for “right of publicity” d. Publication – not required post 1976 e. Notice – no longer required f. Registration – not required to secure protection, but prerequisite to infringement action for U.S. works; also important benefits (statutory damages & attorney’s fees) 4. Originality & Creativity a. Original = independently created by author + possess at least minimal degree of creativity i. Can’t copyright facts, or even organization of facts into phone book (Feist, p. 329) b. Congress might be able to protect database under Commerce Clause B. Subject Matter 1. Idea v. Expression a. § 102(b) – can’t copyright: idea, procedure, process, system, MoO, concept, principle, discovery b. Accounting forms aren’t copyrightable & not infringement to take “idea” of the forms (Baker, p. 345) c. Merger – when an idea can only be expressed in limited # of ways, idea & expression merge – not copyrightable (Morrissey, p. 351 – limited # of ways of expressing contest rules) d. Scenes a faire – literary conventions not protected, stock characters & scenes e. To what extent can you “discover” history? – application of Feist 2. Useful Article Doctrine a. § 102 – can copyright pictorial, graphic, & sculptural works – but 101 excludes design of useful articles, except where utilitarian aspects are separable b. How to determine separability? (Brandir, p. 356 – bike rack) i. Only non-utilitarian functions can be copyrighted ii. Bike rack gets protection IFF we can physically or conceptually separate utility from design iii. Dissent – look at purpose of designer – predominantly influenced by which motivation? c. Fashion industry doesn’t have copyright protection – everyone copies from each – industry keeps moving 3. Government Works a. No copyright protection for any work of U.S. govt. b. Some states have copyright on some of their works through CL c. U.S. can hold copyrights, if not produced by it or its employees (ex: Sacagawea dollar – contractor) 4. Categories a. § 102 includes these categories i. Literary works ii. Musical works, including words iii. Dramatic works, including music iv. Pantomimes and choreographic works v. Pictorial, graphic, and sculptural works vi. Motion pictures and other audiovisual works vii. Sound recordings viii. Architectural works b. Categories are flexible – “including” doesn’t limit protection to this list c. Music and sound recordings i. Separate protection for recordings – different artists record in different ways ii. Compulsory licensing regime for music – people get “cover licenses” (also for TV, etc) d. Dramatic, pantomimes, & choreographic works i. Unfixed musical performances protected by § 1101, but other performance works must be fixed ii. Why? – rock artists wanted protection from people using camcorders in concerts e. PGS and architectural works i. Goofy lamp requires separation of utilitarian function from design
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ii. But architecture doesn’t require separation – just couldn’t get a copyright otherwise f. Compilation and Derivative Works i. Under control of owner of original work, since author’s rights under 106 include rights to make derivative works ii. Why a separate category? (a) I only get copyright for what I did (b) Need a way to tie new works back to the original work – make sure Moby Dick doesn’t turn from whale to giraffe C. Ownership and Duration 1. Eldred – extended copyright by 20 years & applied it retroactively 2. Took stuff out of public domain D. Rights / Infringement 1. Six exclusive rights under § 106: a. Reproduce copies b. Prepare derivative works c. Distribute to the public d. For literary, musical, etc – perform publicly e. For literary, etc – display publicly f. For sound recordings – perform by means of digital transmission 2. Copying a. Required to show infringement of any of specified rights b. Two step analysis (Arnstein, p. 404) i. Proof of “copying” = access + similarity ii. Improper appropriation – enough was taken, of protected expression, to be infringement 3. Appropriation a. Has D copied sufficient amt of protected expression? b. Two elements: i. Quantitative – doesn’t have to be very large – not proportionality test ii. Qualitative c. How do you compare works? – similarity of elements OR the whole? 4. Copying Software a. Scope of protection against “copying” i. Literal text protected against direct copying ii. Nonliteral elements also protected against improper appropriation b. Steps: (Altai, p. 874) i. Abstraction – levels, starting at bottom (unpack the code) ii. Filtration – what is protected? iii. Comparison – compare accused program against protected program c. But this is opposite of Steinberg (test: “they look similar”) – Altai is going component by component d. Altai unpopular w/ software companies, but great w/ legal sector – after filtration, not much is left e. Do we want copyright for software in the first place? 5. Derivative works a. Derivative works identified in § 106(2) as separate right b. Relationship btw 106(2) and 103 – derivative author v. original author (Anderson, p. 427) i. By virtue of original author’s copyright, he controls all downstream uses ii. Kind-of example of Kitch’s prospect theory – give broad rights to the first author c. Must add non-trivial amt of originality to the underlying work i. Is this same standard as Feist? ii. Mickey Mouse wind-up toy – NOT a derivative work (can’t take from public domain w/out adding modicum of originality) iii. Require more originality in this context (ordinarily, de minimis standard)
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iv. Must add dollop of originality as an evidentiary guarantee (to sort out multiple infringement claims) v. (Gracen, p. 432 – plate design not different enough from movie to get copyright protection) 6. Distribution a. 106(3) – copyright owner has exclusive right to distribute – but exhausted w/ first sale (109(a)) b. First sale is same under patent law – why does it exist? i. Software co. might want to control secondary market by forbidding resale (a) Implied in first transaction – I get complete control over the fixation (b) But there could be EULA preventing resale ii. Can this be circumvented by contractual restrictions? 7. Public Performance & Display a. Compulsory licensing i. Copyright law has 6 instances of compulsory licensing ii. There is a political story behind each one – bargains are struck as new disputes arise iii. Could argue that ALL of these rights should be protected by liability rules, not property rules iv. § 111 and 119 – secondary retransmission of broadcast signals by cable & satellite companies v. § 114 – license for performance of digital sound recordings vi. § 115 – “mechanical license” – after first public distribution of musical work, others can obtain license to make a sound recording of it vii. § 116 – license for “jukebox” performance of musical works viii. § 118 – license for public broadcast performance of musical & artistic works 8. Moral Rights a. According to Bering Convention – must provide protection for moral rights b. Pretty bogus arguments that U.S. does this – TM doesn’t really, CL does it c. Limited to author of visual works – novelists not protected i. But doesn’t protect much ii. Somebody can colorize a movie if they want d. Author may waive the right, but not transfer it to others (106(a)) 9. Contributory & Vicarious Liability a. Contributory infringement = making component part that can be used only w/, or made especially adapted for use w/, infringing product, unless it is staple article of commerce b. Grokster, s p. 40 i. 9th Cir – summary judgment for Ds – didn’t have actual knowledge of specific acts of infringement ii. What degree of knowledge / intent is required to defeat Sony safe harbor? (a) Don’t need knowledge of specific infringements (b) Souter – active inducement (c) Breyer – active inducement is be all and end all (d) Ginsburg – EE of actual non-infringing use (can’t just be capable) iii. Staple article of commerce – not needed, if you find active inducement E. Defenses: Fair Use 1. Why FU for copyright, but not patents? a. You can know exactly what metes & bounds of patent property right are, but difficult for copyright b. Dissemination of knowledge – sort-of expression argument, but also applies to patents c. Copyright concerns speech – but patents can to – and copyrights are sometimes things 2. Four factor test (Harper & Row, p. 451 – advance publication of acquired book pieces = infringement) a. Purpose – news, but commercial b. Nature of work – unpublished, cuts against FU to protect authorial control (but it was being published) c. Amt & substantiality – about 1% of book – should we filter out public domain (like Altai) d. Effect on market – substantial (KEY ELEMENT) 3. Under staple article of commerce doctrine, VCR doesn’t infringe, if it is capable of substantial noninfringing uses – focus on end users (Sony, p. 462)
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a. Time-shifting is FU – market effect “minimal & speculative”, home use – but complete copying of published works 4. Digital Rights Management a. New issues due to digital tech – copying is cheap & easy – increased reliance on self-help b. Digital Millennium Copyright Act i. Illegal to disable anti-copying protections (required under WIPO treaty) ii. It’s ok to circumvent use protections, but not access – can’t traffic in either kind of device 5. Photocopying of scientific article != FU (American Geophysical Union, p. 468) a. Purpose of use – commercial entity (uphill battle) b. Nature – largely factual nature of articles favors D c. Amt + substantiality – articles copied in entirety d. Effect on market – substantial harm to P – clearly D would pay more, if couldn’t copy 6. Reverse Engineering a. Fair use = IF disassembly is only way to gain access to ideas & functional elements AND there is legitimate reason for seeking such access (Sega, p. 918) b. Rationale – avoid extending copyright too far in software context i. Absolutely impossible to determine boundaries of right w/out looking at software ii. Like trade secret – ok to keep secret, but can’t possibly reach reverse engineering 7. Parody – Transformative Use a. Campbell, p. 481 i. If use is “transformative,” why should it matter how much of original was used? (a) In some sense, transformative is measured by amt that it displaces original product ii. Factor 4 (market) – “no derivative market for criticism” – can’t claim lost licensing iii. Difference btw satire & parody – parody requires certain amt of copying, but can satirize w/out using original work at all b. Game Genie – allows users to alter video games – split courts i. If it’s not a derivative work, no reproduction right being infringed ii. Users have implied permission to load programs – still playing w/ characters, but in different way iii. Mechanically, this looks like Sony – just making a different game V. Trademark A. Introduction 1. Theory & Purpose a. Origin – primarily business tort – unfair competition b. Protects consumers against confusion as to source & origin of goods / services c. Protects competitive process against “unfair competition” d. Interests of consumers & competitors might be divergent e. Not really a property right, since you can’t own it in gross i. Must be associated w/ goodwill of product ii. Infringement – only if proof of consumer confusion 2. Protected by CL and statutes (state & fed) – mostly CL 3. Protection based on priority of use OR registration w/ intent to use 4. No protection for functional features B. Complicated relationship w/ copyright C. What Can Be Protected? 1. § 45 – any word, name symbol, device used to identify & distinguish goods / services & their source 2. Color can be a mark, where it is non-functional (Qualitex, p. 538) 3. Crowding out / competitive advantage issue – nothing distinctive about colors, apart from words, symbols 4. Lanham requires saying where this particular video came from (Dastar, s p. 71) a. Reverse passing off – people might think Fox ripped off Dastar b. Reputation issue for Fox – not identified as original source OR people will think ripping off Dastar c. Fox is seeking attribution rights – reputation interest (kind-of moral right)
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d. Can still have reverse passing off if Dastar appropriated & resold Fox’s video 5. To what extent can Congress do something that actually conflicts w/ rights under IP clause D. Classification and Elements 1. Classifying a. Types: i. Generic – no TM protection (but safe against intentional palming off) (a) Just describes the product (b) Rejected by registrar & the courts (c) Generocide – becomes generic over time ii. Descriptive / geographic – protection, w/ proof of 2nd meaning (a) Imagination test – Does mark require that consumer use imagination in some way to associate name w/ product? – if yes, suggestive iii. Suggestive – protection even w/out 2nd meaning iv. Arbitrary / fanciful – protection even w/out 2nd meaning b. Famous marks – get protection against dilution 2. 2nd meaning a. People associate the mark w/ the origin / source of the good / service b. Don’t require surveys – good EE, but they don’t show association c. Circumstantial: promotional effort, sales volume, length & manner of use, established place in market d. Geography can play role 3. Fair Use a. Ds could continue using descriptive mark for descriptive purposes, as long as doesn’t confuse b. Identify brand of product that is resold, repair services for product, use in comparative ads, identification that product is copy of another c. “Nominative” FU – non-TM use of TM (ex: parody) 4. Trade Dress & Décor a. Distinctiveness is NOT required for trade dress restaurant design (Two Pesos, p. 559) i. Don’t have to prove 2nd meaning, but must still prove likelihood of confusion b. Distinctiveness IS required for trade dress on products (Wal-Mart, p. 565) c. How to prove distinctiveness: consumers must associate w/ distinctive source E. Priority 1. Priority of use in commerce OR registration w/ intent to use (Lanham Act) 2. (Zazu, p. 572 – LO got national priority based on 1st registration w/ use) a. P (ZHD) has no claim – only trivial sales & no registration b. Dissent – LO acted in bad faith, knew of ZHD plan to market products 3. Geography – CL, get exclusive use zone defined by period of active use, enhanced by surrounding area 4. Once national registrant enters, CL TM owner is locked into current territory 5. Why require use? a. Don’t want marks entirely property-right like b. Protect goodwill, reputation, brand names, identification w/ goods that are sold c. Mark standing by itself wouldn’t be worth much, but first filer could get a windfall d. Precisely why Congress passed Anti-Cyber Squatting Act F. Federal Registration 1. Incontestability – important part a. But not everything becomes incontestable b. Can still contest: generic, fraud, abandonment, functionality G. Infringement 1. Likelihood of Confusion a. Overview i. § 32 – applies specifically to registered marks (reproduction, counterfeit, copy, colorable imitation) ii. § 43(a) – more general enforcement (any word, term, name, symbol, device)
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iii. But 2 element is identical for both – likely to cause confusion mistake or deceive (as to origin, sponsorship, approval, etc) b. Potentially expansive concept – where scope of TM protection really determined c. Factors to consider (AMF, p. 614) i. Strength of mark (can be either intrinsic or commercial – ex, McDonald’s = strong commercially) ii. Proximity of goods (how directly they compete w/ each other) iii. Similarity of marks (sight, sound meaning) iv. EE of actual confusion v. Marketing channels used vi. Buyer sophistication (type of goods) vii. D’s intent viii. Expansion of product line (closely related to proximity of goods) d. Other Confusion i. Reverse (a) Cf: reverse passing off = palming off another’s goods as own – also arises under copyright (b) Normal confusion = little guy trading on big guy’s reputation (c) Reverse confusion = big guy appropriating little guy’s mark (d) Infringer really not benefiting from existing mark’s value – but public likely to perceive that little guy is free-riding off big guy’s mark (e) Crowding out effect (retailers reluctant to carry little guy & big guy) (f) Loss of identity (g) Treat just like any other confusion ii. Initial Interest (a) Consumer diverted to competitor (b) Problematic for online search engines (1) Problem – fair use (2) Assumes that searchers are looking for particular source & get “diverted” (3) Perhaps searchers search for mark solely for purpose of finding competitors iii. Post Sale (a) Third party (not consumer) gets confused (b) Ex: fake Rolexes sold on “Rolex replica” website (c) No chance that consumer believes authenticity (d) But consumers buy the replicas to fool 3rd parties into believing they are real 2. Dilution a. Must be famous + distinctive (43(c)) b. Lower standard than confusion – merely requires “mental association” c. Actual dilution i. Easy case – straightforward tarnishment – associating inferior product w/ established mark ii. Harder – blurring – comparable to genericide (“greatest snow on Earth”) d. Direct form – actual appropriation of mark – Kodak pianos – no confusion, but harm done (TM less likely to refer to that specific source) e. Less problematic – FU / comparison – “the Cadillac of bean bag chairs” f. Nissan Computers v. Nissan Motors – can Uzi use domain for computer sales? 3. False Advertising a. § 43(a)(1)(B) – any person who … in commercial ad or promotion, misrepresents goods shall be liable to any person who believes that he is likely to be damaged by such act b. Must show reasonable basis for believing you are injured c. Most cases involve comparative ads d. Don’t have to show material falsity – but how do you evaluate truth here? (Johnson & Johnson, p. 666) e. Cases might be systematically trivial i. Used to be anticompetitive, but now it’s more the big guys going against each other
nd
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ii. Something inefficacious here – ad campaigns are over soon f. Why no claim for consumers? i. Lanham picks up CL understanding – must be commercial harm ii. Businesses have competitive interest in suing – they will do it better iii. Consumers can (and do) bring suits in state courts iv. Might be single-actor, transaction cost problem (but could have class action) H. Defenses 1. Genericness a. Theory – refusal to protect generic brands is: i. Required to protect competitors (a) TM protected on assumption there’s enough to go around (b) Once a mark is generic, there aren’t any words to describe product, other than by using the mark (c) Competitors are forced to use 2nd best descriptive terms (d) BUT competitors could come up w/ their own neat word & advertise it (e) Two issues: describing product to consumers, overcoming brand leader ii. Required by theory of TM (a) By definition, it doesn’t identify a unique source – no longer identifies your products (b) Marks aren’t supposed to be property interest, in and of themselves iii. Unjustified (n a way, it’s punishment for success; product name is synonymous w/ type of good) iv. Compulsory license (tax on being the first mover) b. What should mark owner do? i. Resist ii. Alter the brand (or promotion) iii. Embrace with equanimity c. Even w/ generic term, can’t deliberately pass off your good under that term (Murphy, p. 676) 2. Functionality (TrafFix, p. 686) a. Theory – TM isn’t supposed to be substitute for patents – this would create Const. issue b. Cf: useful article doctrine from copyright i. Copyright – dealt w/ conceptual separation ii. Here – question is one of essentiality & cost – essential to performance of product c. Can’t claim trade dress protection for something that was specifically covered by utility patent 3. Abandonment a. MLB lost Brooklyn Dodgers mark by moving to LA & only resumed use w/in limited scope – doesn’t prevent restaurant from operating (MLB, p. 696) b. Assignments “in gross” AND “naked” licenses = abandonment i. Theory of TM – identify source of good ii. If mark is totally assigned, consumers no longer have assurance of source & quality iii. Explains why Riviera was reluctant to sign ZAZU mark to L’Oreal iv. Must transfer something w/ which the mark was previously associated v. Licensing w/out transfer of goods ok, if supervision of quality of goods (Dawn Donuts, p. 704) vi. But for some marks we do have TM in gross (ex: Harvard, Hard Rock Café) VI. State Law A. Misappropriation & Trespass 1. Quasi-property right in news – lasts as long as it takes for market saturation (INS, p. 740) a. INS passed off some of AP’s news reports as its own w/out giving credit – overruled by Dastar 2. Post-Feist, could Congress protect against misappropriation of news information? – perhaps 3. Both Dastar & Feist – there are const. limits on what is protectable under IP CL 4. Injunctive relief granted under trespass to chattels against spider of site (eBay, p. 820) a. What was eBay’s harm? – business model – more exposure of sellers hurts eBay B. Contract 1. Shrink-wrap license valid if: notice on outside, “I assent” at install, refund option (ProCD, p. 752)
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2. Can’t enforce license terms on someone, unless they explicitly assent (Netscape, p. 759) C. Privacy / Publicity 1. Response to mass advertising 2. Property-type interest in name, likeness, photo, portrait, voice, personal characteristics 3. Intertwined w/ privacy 4. Distinction among jurisdictions – publicity being separate from privacy a. If property right, celebrity’s interest is assignable & descenable 5. Can’t appropriate someone’s distinctive voice (Midler, p. 792) 6. Parody on person’s likeness & job is ok (White, p. 795) D. Federal Preemption 1. To what extent can state law provide supplemental patent law protections? 2. To what extent can TM law provide protections that overlap or conflict w/ patent & copyright? 3. Preemption found? a. Sears – yes i. Knock-off lamps by Sears ii. SC – preemption doesn’t allow state unfair competition claim to proceed b. Goldstein – no i. Live performances protected by CA ii. No fed law to conflict w/, so state can fill in the gap c. Kewanee – no i. Trade secrets – all state law d. Bonito Boats – yes i. FL state law – illegal to take copy of boat hull design by molding process ii. Ct strikes it down – preventing reverse engineering iii. State law is allowing you to get protection for design, where fed law would require design patent 4. Principle? a. Every case still purports to be good law b. Balancing btw private property & public domain i. Whenever we find Congress has made a balancing judgment, don’t want states to undo that ii. Tricky part – how to decide when the line has been drawn 5. Types: a. Field preemption b. Conflict preemption i. Inconsistent obligations – state law gives way ii. Inconsistent policy choices / objectives (state undermines fed policy) (a) Difficult to define “inconsistent” 6. Const. Exclusivity a. Whether IP Cl. is independent restriction on what Congress can do b. Could Congress create unending property rights in IP? – maybe under Comm. Cl. c. Anti-Bootlegging Act (1994) – valid under Comm. Cl. (Kiss)