Intellectual Property Nard/Outline

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Intellectual Property
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Text Image of Law of Intellectual Property: [Connected Ebook] (Aspen Casebook)
Law of Intellectual Property: [Connected Ebook] (Aspen Casebook)
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Related course(s) Patent Law

PATENT LAW[edit | edit source]

Patent Provides a right to exclude others from practicing the invention for a term of 20 years. It is a limited monopoly granted in exchange for public disclosure of the invention. The policy behind patent law is to promote “progress.” Types of Patents

  • - Utility patents​ may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
  • - Design patents​ may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
  • - Plant patents​ may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant

Hurdles to Patentability

  • - Subject Matter
  • - Novelty
  • - Priority
  • - Non-Obviousness
  • - Proper claiming, written description, and enablement of the invention - Duty of Candor to the Patent Office

There are three exceptions to patentability

  • - Products of nature (physical/natural phenomenon)
  • - Abstract ideas
  • - Laws of Nature

What is patent eligible?

Acquiring Patent Rights[edit | edit source]

Claiming & Disclosing the Invention[edit | edit source]

Written Description - The written description contains the claims of the patent.

  • - Claims - these are the bounds of application (exactly what is being protected)
  • - The claims must not write onto prior art
  • - The claims must claim the actual work the inventor has done
  • - The claims must claim all specific features and embodiments that are later claimed
  • - These should start very broad and slowly get more narrow. Any use that you place in the claim may be limiting so make sure to use broad language or non-limiting language. If the part is not in the original claim it cannot be in the final claim, and if it is not within the final claim it is not protected,

Philips v. AWH Corp. p. 29 - Claim interpretation. The issue here was whether the term “baffles” in the Phillips patent includes the type of angles that AWH’s panels uses. To determine the scope of the term, what type of evidence should the Court consider and what is the hierarchy? There had to be an understanding of the general ordinary, customary meaning. The Court also looked first to intrinsic evidence (application, claims, prosecution evidence); then the Court looked at extrinsic evidence (expert witnesses), anything external to the patent application form.

Statutory Subject Matter[edit | edit source]

Is the claim patentable under the statute? Is the claim directed at one of the excluded categories? Does the claimed invention add an inventive concept to the excludable area?Patentable under statute - 35 USC § 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 Diamond v. Chakrabarty p. 88 - Respondent’s micro-organism plainly qualified as patentable subject matter. The Court found that respondent had produced a new bacterium with markedly different characteristics from any found in nature and which had the potential for significant utility - bio-engineering. This was a non-naturally occurring manufacture of matter.
  • - The relevant distinction is between products of nature and human-made inventions

There are three exceptions to patentability

  • - Products of nature (physical/natural phenomenon)
  • - Abstract ideas
  • - Laws of Nature

Products of Nature (Physical/Natural Phenomenon) Association for Molecular Pathology v. Myriad - Myriad had a patent on a test to identify an isolated DNA characteristic in females that identifies genetic disposition for breast cancer. The Court found that this was a discovery of a product of nature. There was no creation or alteration of any genetic information, only locating the DNA which is a product of nature.

Laws of Nature Mayo Collaborative Services v. Prometheus Laboratories Inc. p. 97 - A new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Here, Prometheus developed a process that helped physicians determine proper dosage levels of drugs used to treat autoimmune diseases. The Court found that Prometheus’ process is not patent eligible because it didn’t add to natural law, nor did it sufficiently transform natural law. There was no inventive concept beyond the law of nature.The Mayo Two Step Test:

  • - First ask if the patents are aimed towards a patent ineligible concept, such as involving a law of nature.
  • - Second ask if some inventive concept ​ has been added. The claims must do something​ significantly more than simply recite the law of nature.

Abstract Ideas (Algorithms and Software) Algorithms:Diamond v. Diehr - Applying a mathematical equation to determine when to open a mold for a specific product. The additional steps transformed ​ the process into an inventive application of​ the formula. Thus it was patent eligible.

  • - The key is to segregate the abstract idea (here, the equation) and see if anything remains that will be patentable.

Business Methods - The concept of hedging is an unpatentable abstract idea. It still needs to add an inventive piece to the known method. Hedging is a well known method and all this process does is apply itAlice Corporation v. CLS Bank International p. 124 - The Court expands on Mayo, reiterating that abstract ideas are not patentable because monopolies over abstract ideas threaten innovation. Here, it was an abstract idea combined with a computer program. Applying the Mayo test: the claimed is aimed at a patent ineligible concept (an abstract idea) but the computer implementation does not provide an inventive concept​ .​

  • - The Court builds on the Mayo test when applied to abstract ideas: To be patentable, a claim that recites an abstract idea must include "additional features" to ensure "that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]." It must contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application

Novelty and Priority[edit | edit source]

General rule is that the first to reduce the invention to practice is the inventor. The second inventor can be the inventor if he was the first to conceive it, and that it works for the intended purpose (reduction to practice).A patent can be proven invalid as anticipated by a prior art:

  • - Patent
  • - Patent application
  • - Printed publication
  • - Public use
  • - Sale; or
  • - Otherwise known to the public

Which law applies for novelty:

  • - For patents filed before March 16, 2013 the old law applies
  • - Novelty defined from date of first invention (reduction to practice)
  • - 102(a) novelty - known or used in this country; patented or described in printed publication in this or a foreign country before invention
  • - 102(b) statutory bars - invention was patented or described in printed publication in this or a foreign country; public use or on sale in this country, more than one year prior to application
  • - Geographic limitation - use, sale, known had to be in this country
  • - For patents filed after March 16, 2013 the new law applies
  • - Novelty measured as of the date first application filed
  • - There is no geographic restrictions

Reduction to practice can be actual or constructive

  • - Constructive - Can use date of filing patent application ​ even if invention never built or​ tested, provided disclosure requirements met
  • - inventor may claim earlier date of invention via evidence of earlier conception or
  • - Actual Reduction To Practice - when an inventor can “demonstrate that the invention is suitable for its intended purpose.” (E.g. prototype).
  • - Neither perfection nor commercial viability is required

See Problem 2-1 p. 152 - The idea of the treatment was not known to be successful yet. Therefore it was not reduced to practice​ ​ prior to the publication.Section 102(a) - A person shall be entitled to a patent unless the invention was known or used by others in this country or patented or described in a printed publication.Rosaire v. Baroid Sales Div. p. 152 - The method for prospecting and requiring to take samples of soil was never published, although it was openly used. The Court says that it does not need to be affirmatively publicized or patented. An invention that was known or used by others in this country before the patentee’s invention is not patentable.​ Priority - Under AIA, priority is based on the first inventor to file. Pre AIA was first to invent principle.Griffith v. Kanamaru p. 164 - Griffith claimed to have priority over Kanamaru’s patent application, but the Board found that he had failed to establish reasonable diligence in completing the reduction to practice of the invention. He abandoned it, did not pursue reduction to practice, did not have reasonable diligence to reduce to practice after conception, and thus lost the patent. This was pre-AIA.

Nonobviousness[edit | edit source]

  • 103 - if obvious no patent; no patent if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

- The Court must consider the scope and content of the prior art, the differences between the prior art and the claims at issue, as well as the level of ordinary skill in the applicable art.Graham v. John Deere Co. p. 180 - improvement on a machine patent for adding a shock absorber to vibrating shank plows was found to be obvious, because the difference between the two were negligible and it was not a skillful invention.

Enforcing Patent Rights[edit | edit source]

The burden of establishing invalidity is on the party asserting such invalidity. To meet this burden, the challenger must persuade the factfinder of its invalidity defense by clear and convincing evidence.Direct Infringement - Patentee brings action against Defendant who himself is committing acts that infringe on one or more patent claims.

  • - Literal Infringement - Every limitation recited in the claim is found in an accused device
  • - Non-literal Infringement (DOE) - Doctrine of Equivalents. This is not exactly in the matter of the process of the patent claim, but its equivalent.
  • - Limited by prosecution history estoppel and disclosure-dedication rule

Literal Infringement[edit | edit source]

When a patent claim reads on an existing claim. Every element of a patent claim must be literally infringed. Thus each element of the claim must be interpreted and compared.Larami Corp. v. Amron p. 253 - The patent case concerning toy water guns. The SuperSoaker did not literally infringe because the housing of the tanks language called for a housing and a tank “therein,” whereas the other had the tank on the top of the housing.Doctrine of Equivalents - Non-Literal Infringement​Applies if accused device performs substantially the same function in substantially the same way to obtain the same result. This applies to all elements, looking at each individual element to see whether it matches the function, way and result of the claimed element, or whether the substitute element plays substantially the same role as the claimed element. - “Function-Way-Result” test

  • - Performs substantially the same function
  • - In substantially the same way
  • - To obtain the same result

Prosecution History Estoppel - Once a patent is narrowed, the patentee is estopped from making an equivalent claim for the ground between the original version and the new version. Also, patentee is estopped from capturing subject matter during litigation that was unclaimed but “foreseeable” at time claim scope was narrowed.Warner-Jenkinson Co. v. Hilton Davis Chem., Inc. p. 263 - Change in claim to keep it from going against prior art (before said above 9.0 pH, not 6.0 to 9.0). Prosecution History Estoppel applies where inventor narrowed the claims in the course of prosecution in order to avoid rejection - he cannot later include the previously excluded material under DOE. If the reason behind amendment is unclear, the burden is on the patent holder to prove the reason for amendment, and the Court then must decide if the reason is sufficient to overcome Prosecution History Estoppel.Inducement - A person induces by actively and knowingly aiding and abetting another’s direct infringement. Knowledge of both: The existence of a patent; AND that the intended activities will infringe that patent/lead to infringing that patentDoctrine of willful blindness - an action taken to deliberately keep from obtaining knowledge that would prove culpability is knowledgeGlobal-Tech Appliances, Inc. v. Seb S.A. p. 303 - Whether a party who actively induces infringement of a patent must know that the induced acts constitute patent infringement. SEB copied GT’s design for a fryer and asked an attorney to conduct a right to use study (withholding information on patent). Attorney did not find the prior art and said making product was allowable. SEB took action not to know by not telling the attorney that they copied the design, willful blindness is tantamount to knowledge, so they were found to have knowledge. They knew the probability of infringement and deliberately avoided learning.

The Patent Infringement Analysis[edit | edit source]

  1. Claim construction
  2. Literal infringement (direct or indirect)
  3. Equivalent infringement (direct or indirect)
  4. Defenses to equivalent infringement
    1. Prosecution History Estoppel
  5. Affirmative defenses to infringement
    1. Section 112 defenses
    2. Non-enablement, written description, claim indefiniteness
    3. Anticipation (lack of novelty; section 102)
    4. Obviousness (section 103)

TRADE SECRET LAWS[edit | edit source]

Intro[edit | edit source]

Protects certain secret business information against unauthorized acquisition or disclosure by a person who obtained it through improper means or in breach of a confidentiality agreement.Trade Secrets v. Patents:

  • - Trade secrets must be the subject of reasonable efforts to be kept secret
  • - Patented inventions must be disclosed
  • - Trade Secret protection is unlimited in duration
  • - Until they are no longer secret
  • - Until they are independently developed
  • - Until they are reverse engineered - Patent = 20 years
  • - Independent development and reverse engineering are not defenses to patent infringement

Defining a Trade Secret[edit | edit source]

Information, including a formula, pattern, compilation, program, device, method, technique or process that derives independent economic value, actual or potential, from not being generally known to and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use- any information used in one’s business that gives its owner an opportunity to obtain an advantage over competitors who do not know or use the secret- and is the subject of efforts that are reasonable under the circumstances to​ maintain secrecyFactors to consider:

  • - The extent to which the information is known outside of plaintiff’s business;
  • - The extent to which the information is known by employees and others involved in the plaintiff’s business;
  • - The extent of measures taken by the plaintiff to guard the secrecy of the information;
  • - The value of the information to the plaintiff’s business and to its competitors;
  • - The amount of time, effort and money expended by the plaintiff in developing the information; and
  • - The ease or difficulty with which the information could be properly acquired or duplicated by others.

Learning Curve Toys, Inc. v. Playwood Toys p. 1440 - Misappropriation of a trade secret in a realistic looking and sounding toy railroad track. The Courts looked to the multifactor restatement list (above). They also found that reasonable measures under the circumstances were taken to preserve the secrecy. The concept could not easily have been acquired or duplicated through proper means.BondPro Corp. v. Siemens Power Generation p. 1452 - The Court examined the factors again. There must have been reasonable steps to maintain the secrecy of the process. Had a confidentiality agreement here, but it was still generally known to other businesses and one other company had developed another method.InCase, Inc. v. Timex Corp. p. 1457 - All forms of trade secret legislation require the trade secret owner to take reasonable measures to maintain secrecy.Misappropriation

  • - Acquisition of a trade secret through improper means; ​ or​ - Disclosure or use of a trade secret either:
  • - in breach of a confidentiality obligation; or
  • - that was acquired through improper means

Misappropriation by “Improper Means”[edit | edit source]

“Improper means” includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means. Reverse engineering or independent derivation alone shall not be considered improper means.E.I. DuPont De Nemours & Co. v. Christopher p. 1462 - Renting a plane and taking aerial shots of a building that was being built and the chemical system that was being built to create ethanol was not the proper means of independent research. It was a trade secret with reasonable efforts to protect secrecy, but the act was unlikely and unexpected and would have required more expenses to prevent. Applied restatement factors here as well to determine that it was a trade secret that was acquired through improper means.

Employer-Employee Relationship[edit | edit source]

Courts consider economic impact on the prior company and the employees ability to work, as well as contracts and provisions restricting use of trade secrets.Procter & Gamble Co. v. Stoneham p. 1466 - There was a reasonable non-compete clause and thus it was enforceable. Defendant’s work required confidential information and trade secrets after considering employee’s level of employment, process, access to data.RLM Communications, Inc. v. Tuschen p. 1471 - Employee left company but took files copied onto a CD, giving it to a successor. The clause in the contract were overly broad and thus not enforceable. Also, the employer must have raised an inference of actual acquisition or use of trade secrets to determine misappropriation. Although she took the CD, there was no evidence to raise the inference because there was no evidence she retained any information on the CD.PepsiCo, Inc. v. Redmond p. 1478 - Confidentiality agreement between a high level employee at PepsiCo. Here, he would have to make decisions at his new job based on the knowledge he acquired as an employee. Inevitable disclosure even if he hasn’t disclosed anything yet. There are trade secrets at stake here, and the plaintiff proved that there was an inevitable reliance on the trade secrets.'

COPYRIGHT LAW[edit | edit source]

17 USC §102: Copyright protection subsists…in ORIGINAL works of authorship, FIXED in any tangible medium of EXPRESSION, now known or later developed, from which they can​ be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or deviceRequirements for Copyright Protection:

Originality and Authorship[edit | edit source]

  1. Must be independently created
    1. Material must owe its origin to the author
  2. Must have a minimum quantum of creativity (minimal degree of creativity)
    1. E.g. arrangement, selection, coordination, lighting, angles, etc.
    2. Must not be mechanical or routine

The Non-Discrimination Principal - The Court will only assess whether the work has a minimal spark of creativity, not whether it is highly artistic, mundane, or amateurish.Bleistein v. Donaldson p. 441 - Copying in reduced form of three chromolithographs prepared by employees of the plaintiffs for advertisements of a circus. The creation of a circus poster just showing people doing their acts was sufficient for originality. The court shall not determine what is art.Feist Publications, Inc. v. Rural Telephone Service Co. p. 446 - Phonebook is notoriginal because it falls below the level of creativity. The selection, coordination, or arrangement of facts here was not original. Nothing added to the preexisting materials (names, numbers).

  • - Compilations -​ The originality persists in the selection, arrangement, and coordination of the facts. Here there was no originality in these.
  • - Additionally, copyright will not be given merely because the person worked hard; there is no sweat of the brow

Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc. p. 459 - The court does not believe that Meshwerks digital wire frame sculptures constituted independent creations. Rather they were very good copied of Toyota's vehicles. The only common element here was the “car as car” and there were no discernible decisions made by the plaintiff (absent were lighting, shading, coloring, etc.)

Fixation[edit | edit source]

. . . fixed in a tangible means of expression.

  • - Sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period more than a transitory duration
  • - Fixation must have been by or under the authority of the author

Two aspects of “fixed”

  • - Attached to a physical object
  • - Static over time

Williams Electronics, Inc. v. Artic International, Inc. p. 470 - Copyright on the audiovisual effects - the images and sounds perceived through the projector. The repetitive images of a video game is fixed despite the player causing images to change because the game is held in RAM until it is shut off. The Court determined that the sequences were substantially repetitive along with many displays that remain constant regardless of player control and thus found fixation satisfied.Garcia v. Google, Inc. p. 475 - 5 second appearance in the film was not copyrightable because the motion picture is a single integrated work.

Expression[edit | edit source]

17 U.S.C. § 102(a) Subject Matter of Copyright

  • - “Works of authorship include ​ the following categories:​
  • - literary works;
  • - musical works;
  • - dramatic works, including any accompanying music;
  • - pantomimes and choreographic works;
  • - pictorial, graphic, and sculptural works;
  • - motion pictures and other audiovisual works;
  • - sound recordings; and
  • - architectural works.”

The Idea/Expression Dichotomy - The expression is copyrightable, but underlying ideas are not.

  • - In no case does copyright 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 which it is described, explained, illustrated, or embodied in such work

Merger Doctrine - where only a finite number of ways exist to express an idea, the idea and expression merge into an uncopyrightable whole.Baker v. Selden p. 487 - A book made on how to make bookkeeping charts and the charts made based on teachings were not copyrightable. The accounting system itself is an idea/abstract idea, and thus cannot be copyrighted.

  • - Underlying ideas/teachings of a book are not copyrightable, but actual words

(expression) contained in the book are. Thus you can follow the instructions of the book to make the thing described, you just can’t copy the instructions

  • - Concept of merger - if the expression is so indispensable to the statement of the idea that the two merge, it cannot be protected.

Nash v. CBS, Inc. p. 492 - Nash did not say his work about John Dillinger, and the theory that Dillinger is still alive, is a fiction. His rights were only in his expression, and saying that they were facts placed them in the public domain.Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC p. 500 - The “Sequence” here determined to be an idea, healing art (which can only be secured by patent), a process, system, and not a compilation or a choreography, and thus not protectable by copyright. It is ultimately an idea.

Limitations on Copyrightability[edit | edit source]

Merger Doctrine (from above) - where only a finite number of ways exist to express an idea, the idea and expression merge into an uncopyrightable whole.CCC Information Services, Inc. v. Maclean Hunter Market Reports, Inc. p. 510 - The books here were sufficiently original in their selection ​ ​and coordination ​ ​of the facts and the professional opinions on how a value will be in a current market. Thus, the court says, these valuations are the original creation of Maclean. The fact that an arrangement of data responds logically to the needs of the market for which the compilation ​ ​was prepared does not negate originality. - Merger did not apply in this case.

Classifying Copyrightable Works[edit | edit source]

Non-exclusive categories of 17 U.S.C. § 102(a) - Statutory language- if a pictorial, graphic or sculptural work​ is a ​ useful article​ , defined as an​ article having an intrinsic utilitarian function​ that is not merely to portray the​ appearance of the article or to convey information, then it can only ​ be​ copyrighted if it contains features that can be identified separately from​ , and​ are capable of existing independently of, the utilitarian aspects​ of the article​

Useful Article Doctrine[edit | edit source]

  • - Only the separable elements of a useful article are subject to copyright protection
  • - Analysis
  • - Is the item a PGS work? (Is yes move on, if no it doesn’t matter if it is useful)
  • - Is the item useful? (if yes move on to separability analysis; if no it is copyrightable)
  • - A “useful article”​ is an article having an intrinsic utilitarian function that is not merely to​ portray the appearance of the article or to convey information

Separability Test - Where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists. An expressive element of a useful article is physically separable if it can stand alone from the article as a whole and if such separation does not impair the utility of the article

  • - Kieselstein-Cord v. Accessories by Pearl, Inc. - primary purpose of belt buckle was ornamental and not functional so copyrightable
  • - Carol Barnhart Inc. v. Economy Cover Corp. - torso forms used to display clothing not separable as there was no artistic element to the torso. Usefulness inseparable from aesthetic or artistic features. What was claimed as artistic intertwined with the utilitarian features; to separate it would render it useless.
  • - g. Jar looks like an apple, holds cookies. Can be separable.

Pictorial, Graphic, and Sculptural Works[edit | edit source]

  • - Subject to the useful article doctrine.
  • - If design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian aspects.
  • - Where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.

Star Athletica LLC v. Varsity Brands, Inc. - Cheerleading outfits. A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic or sculptural work -- either on its own or fixed in some other tangible medium of expression -- if it were imagined separately from the useful article into which it is incorporated; that test is satisfied here.

Music, Literary Works[edit | edit source]

  • - Rights attached are different for musical compositions and sound recordings
  • - Copyright in musical composition - earns no matter who performs
  • - Copyright in sound recordings - do not have the same broad extent of rights
  • - limited to the right to prepare a derivative work in which the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality.
  • - Literary Works - Need not be “literary” (i.e., “suited to literature rather than everyday writing or speech”)
  • - Broad enough to encompass “numerical symbols or indicia

Compilations and Derivative Works[edit | edit source]

Derivative Works - Must satisfy the same level and requirements for copyrightability. Only the expression added to the original works are copyrightable.Schrock v. Learning Curve International, Inc. p. 543 - The photos of Thomas the Train were derivative works because they portrayed him in scenes and the Co gave permission to create the derivative work.CharactersKlinger v. Conan Doyle Estate, LTD p. 551 - Although character of the story develops over time and the whole character is not in the public domain, a copyright because of supposed future stories would not be acceptable.

Works Made For Hire[edit | edit source]

In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright. A work made for hire is:

  1. Employee within the scope of employment
  2. Specially ordered or commissioned works (writing + 9 categories)
    1. as a contribution to a collective work,
    2. as a part of a motion picture or other audiovisual work,
    3. as a translation,
    4. as a supplementary work,
    5. as a compilation,
    6. as an instructional text,
    7. as a test,
    8. as answer material for a test, or
    9. as an atlas,

Factors to consider in determining whether a hired party is an employee

  • - The skill required
  • - The source of the instrumentalities and tools
  • - The location of the work
  • - The duration of the relationship between the parties
  • - Whether the hiring party has a right to assign additional projects to the third party
  • - The extent of the hired party's discretion over when and how long to work
  • - The method of payment
  • - The hired party's role in hiring and paying assistants
  • - Whether the work is part of the regular business of the hiring party
  • - Whether the hiring party is in business - The provision of employee benefits, and - The tax treatment of the hired party.

Another important consideration is the hiring party’s right to control' Community for Creative Non-Violence v. Reid p. 580 - created nativity sculpture of homeless people was not a work for hire because he was not an employee. Own tools, own studio, own time, typical compensation for independent contractors, no payroll or taxes.'

Direct Infringement[edit | edit source]

Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 … is an infringer of the copyright

Copyright Infringement Analysis[edit | edit source]

  1. Ownership of a valid copyright; and
  2. Unauthorized exercise of a 106 right
    1. Copying in fact (“Copying”):
      1. Direct evidence (admission, documentary, etc.) or
      2. Circumstantial evidence
        1. Acces AND
        2. Similarity
          1. Extrinsic test (objective)(expert) AND
          2. Intrinsic test (subjective)(reasonable person)
        3. AND improper appropriation (is what was copied protected; improper copying or substantial similarity)

Direct Evidence Or Circumstantial Evidence Of Copying:

  • - Access
  • - Inverse Ratio Rule (some circuits) - the greater the access the less similarity needed; the greater the similarity the less access needed
  • - Still a minimum degree of similarity that is needed
  • - If the work is widespread there is more likelihood of access and subconscious copying - Similarity
  • - Extrinsic test - Compare all elements of the works. Call experts to testify about this.
  • - Intrinsic test - reasonable person

Improper Appropriation:

  • - Substantial Similarity
  • - Compare only the copyrightable elements
  • - Quantitative and qualitative analysis
  • - Separate out the non-copyrightable elements
  • - Improper Copying

Three Boys Music Corp. v. Bolton p. 597 - Access can be proven by particular chain of events or wide dissemination and subconscious copying. It was more probable than not that Bolton had heard the song.Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc. p. 607 - What is protected and what is unprotected must be sorted out properly. The material portions that were infringed were a major design that was exactly copied.Funky Films, Inc. v. Time Warner Entertainment Co. p. 616 - Plaintiff must articulate to court what it exactly is seeking protection in. There wasn’t substantial similarity here as the literary devices were ideas and too abstract, old stereotypes.L.A. Printex Industries, Inc. v. Aeropostale, Inc. p. 623 - Evidence of wide dissemination, sold fabric in the same area, both based in L.A. Color and shape not exactly the same, but the arrangement and coordination substantially similar. Ultimately, the intrinsic test is for the jury.

Derivative Works[edit | edit source]

Enumerated under section 106. Infringing derivative works as opposed to authorized derivative works.

  • - Any other form in which a work may be recast, transformed, or adapted
  • - Must use a substantially similar analysis to determine if the work is a derivative and thus an infringement

Copyright subsists only in the new expressionary elements. If the party does not have the right to use the underlying work, they cannot get copyright protection in the derivative work.Micro Star v. Formgen, Inc. p. 643 - Must exist in concrete or permanent form​ , and is​ substantially incorporating protected materials from the preexisting work. Duke Nukem​ game, derivative work infringed because no license. Objective elements from the story itself as well, where the MAP files recreates that expression.

Public Display & Public Performance[edit | edit source]

Enumerated under section 106. The owner of copyright under this title has the exclusive rights to do and authorize and of the following:

  • - in the case of literary, musical, dramatic, and choreographic work, pantomimes, and motion pictures and other audiovisual works, to perform ​ the work ​ publicly​ ;​
  • - in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display ​ the copyrighted work ​ publicly

'Public Performance

  • - to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or
  • - to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times

Columbia Pictures Industries v. Redd Horne, Inc p. 666 - Public performance regardless of being in a private room, same time or different times. The copyright owner gave no rights to perform publicly the copy of the movie.

  • - Public store - Anyone can walk in
  • - Performance - Transmission

American Broadcasting Companies, Inc. v. Aereo, Inc. p. 672 - Broadcasting television over the internet was violation because people were capable of viewing at the same time. Shows or displays images, transmission. Even though just supplying the equipment (warehouse with antennas), and going to an individual’s laptop, still public. Entity communicates the same contemporaneously perceptible images and sounds to multiple people'

Secondary Liability[edit | edit source]

Three Types of Copyright Secondary LiabilityContributory liability: Knowingly participating in the infringing conduct of another

  • - g. Providing equipment for the manufacture of infringing goods

Vicarious liability: Benefiting financially from infringement that one has the right and ability to prevent (e.g., Fonovisa)

  • - g., Providing a venue for infringing performances

Inducement of infringement: Taking active steps to encourage direct infringement (e.g.Grokster)

  • - g. Distributing a device with the purpose of promoting its use to infringe a copyright

Secondary liability requires a direct infringer​[edit | edit source]

Vicarious Infringement[edit | edit source]

  • - to punish one who unfairly reaps the benefit of another’s infringement
  • - Requires: Right and ability to control/supervise a direct infringer; AND - Direct financial benefit from the infringement
  • - Knowledge of infringement not required

Contributory Infringement[edit | edit source]

  • - The defendant has knowledge ​ (​ actual or constructive) of infringement AND the defendant induces, causes or materially contributes ​ to infringement​
  • - Supply to infringer of something necessary to infringe might equal material contribution

Fonovisa, Inc. v. Cherry Auction p. 690 - Swap meet hosts defendant vendors, collecting fees and benefitting while vendors sell copyright materials. Cherry controls the premises, supervise infringing activities, and financially benefits. Sufficient for vicarious and contributory.Flava Works, Inc. v. Gunter p. 694 - Direct infringers are people copying the videos and uploading them. However, did not invite people to post, not facilitating the infringement, users are going on and doing it.

Inducement of Infringement[edit | edit source]

Metro-Goldwyn Mayer Studios, Inc. v. Grokster, LTD p. 704 - Defendants had software to get around infringement. Used the infringement case of Napster for popularity, encouraging infringement with active steps. Intent mattered here, advertising for users to infringe.

Fair Use[edit | edit source]

Use for purposes such as criticism, comment, news reporting, teaching, scholarship, or research is not an infringement of the copyright.Factors to consider:

  • - The purpose and character of the use;
  • - including whether such use is of a commercial nature or is for nonprofit educational purposes or for a similar purpose
  • - The nature of the copyrighted work;
  • - Creative or non-creative (facts); published or not
  • - The amount and substantiality of the portion used in relation to the copyrighted work as a whole (quantity and quality as a whole); and
  • - The effect of the use upon the potential market for or value of the copyrighted work - Also, transformative? See below

Transformative -​ The use is more likely to be fair if it is transformative. Can be transformative when:

  • - something new has been created by adding new expression to the original work; or
  • - when the work serves a new and different function and is not a substitute for the original Factors to Consider:
  • - Is it a new work?
  • - transformative when something new has been created by adding new expression to the original work - It is in the same market?
  • - transformative when the work serves a new and different function and is not a substitute for the original
  • - Does it have the same meaning?
  • - Is it expressing or commenting on something else?

Special Types - Parody, reverse engineeringCampbell v. Acuff-Rose Music, Inc. p. 775 - The rap version of “oh pretty woman” was a parody of the original. Factors below:

  • - Purpose & Character of Use:
  • - Can “parodic character”…be reasonably perceived? Does 2nd work criticize or comment 1st?
  • - Parody recognized as subject to fair use.
  • - Nature of Underlying Work
  • - If “parody” this factor not so important
  • - Amount & Substantiality of Taking: parody always goes to “the heart”…but is it excessive?
  • - Dilemma because it requires the creation of unauthorized derivative work v. benefits of entertainment, social commentary and artistic innovation.
  • - Defendant’s work must be aimed, at least in part, against accusing work
  • - Defendant’s work may take from underlying work at least enough to “conjure up” - Must be tied to 1st factor - Effect on Potential Market?
  • - Transformative?
  • - Doctrine is in this case

Bill Graham Archives v. Dorling Kindersley LTD. p. 789 - Concert posters reproduced in reduced size in biography. Fair use factors analyzed, as well transformative doctrine, fair use applied.'

TRADEMARK LAW[edit | edit source]

Acquiring Trademarks Rights[edit | edit source]

The term trademark includes any word, name, symbol or device, or any combination thereof-

  • Used by a person in commerce, or
  • Which a person has a bona fide intent to use and registers the mark to identify and distinguish his goods from those manufactured or sold by others and to indicate the source of the goods.

Use - What constitutes sufficient useDistinctiveness - Source indication. The mark’s capacity to identify sourcePurposes of Trademark

  • - Consumer Interests: helps avoid consumer confusion about source and quality of goods
  • - Producer Interests: helps producers prevent others from profiting from their own reputation and quality through misappropriation or misidentification of goods

Five years of continuous use after registration results in “​ incontestability​ ”​[edit | edit source]

- To the extent that the right to use the registered mark has become incontestable, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the markStill subject to fair use and functionality, however.

Distinctiveness[edit | edit source]

A mark may be deemed distinctive in two different ways: inherently distinctiv​ ​e, or have ​acquired distinctiveness ​or secondary meaning​ ​. Otherwise it is a mark incapable of becoming distinctive.Arises out of use. Some are inherently distinctive, some acquire distinctiveness

  1. Inherently Distinctive - Automatic protection, no secondary meaning required
    1. Arbitrary marks
    2. Fanciful marks
    3. Suggestive marks
    4. Some unique, eye-catching abstract designs
  2. Acquired Distinctiveness - Marks capable of becoming distinctive; only capable of distinction and protection upon acquisition of secondary meaning.
    1. Descriptive marks with secondary meaning
    2. Geographically descriptive marks
    3. Surname marks
    4. Common or simple abstract designs or colors
  3. Marks incapable of becoming distinctive - not capable of protection
    1. Generic words and symbols
    2. Descriptive without secondary meaning

Abercrombie & Fitch Co. v. Hunting World, Inc. p. 953Abercrombie Spectrum

  • - Generic: refers to the genus of products or services offered.
  • - Never protection
  • - Descriptive: tends to describe ingredients or characteristics of the product, but is not simply a name for it.
  • - Can acquire distinctiveness only through secondary meaning - g. IBM
  • - Suggestive: requires imagination, thought and perception to reach a conclusion as to the nature of the goods; some suggestion of qualities, but not so direct as a descriptive term.
  • - No requirement for secondary meaning
  • - g. Microsoft
  • - Arbitrary: No connection between the product and the word’s literal meaning; thus any association is tied to the producer, rather than the mere type of product.
  • - No requirement for secondary meaning
  • - g. Apple
  • - Fanciful: Similar to arbitrary—no connection in literal meaning. Typically these are coined or made--up words
  • - No requirement for secondary meaning
  • - g. Exxon, Google

Descriptive v. Suggestive - Courts have used several tests to see if a mark is descriptive as opposed to suggestive

  • - The Dictionary Test:​ Is a dictionary definition of the mark a description of the product?
  • - The Imagination Test:​ Does the term require some imagination or deduction to determine what product it is suggesting?
  • - Do competitors need to use the mark?:​ Is the mark highly useful to competitors to describe the product?
  • - Extent of use by competitors

Descriptive Marks Factors to Consider for Secondary Meaning:

  • - The length and manner of use of the mark
  • - The volume of sales under the mark
  • - Survey evidence

Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. p. 961 - Fish-Fri has secondary meaning but fair use applied to describe goods or services. Chick-Fri did not have valid trademark - no secondary meaning.

Trade Dress[edit | edit source]

Protects the design of the packaging, and the design of the product itself if these serve as source identifiers. These are non-word marks.

  • - g. shape of the coca-cola bottle is trade dress

Trade dress can be inherently distinctive and not require secondary meaning; or it can acquire distinctiveness through secondary meaning by means of usage.Two Pesos, Inc. v. Taco Cabana, Inc. p. 997 - the store’s trade dress was inherently distinctive and thus no need to require secondary meaning for inherently distinctive trade dress protection. The trade dress here is somewhere in between packaging and the design of the product itself.Color - Trade dress can include color. Color can be trademarked and serve as an identifying symbol if:

  • - The color has developed a secondary meaning; and
  • - It is not functionally required

Depletion of colors will trigger functionality requirement. Also must not harm valid competition.Qualitex Co. v. Jacobson Products Co. p. 1001 - Color can indicate things. For trademark protection, it must develop a secondary meaning. Color of green and gold iron pads was found to be a valid trademark.Product Design v. Product Packaging

  • - Product Packaging can be inherently distinctive
  • - The package that the product is contained in
  • - Product Design needs a secondary meaning in order to be distinctive - Actual design of a product.
  • - Note: As said above, Two Pesos is somewhere in between. Courts should generally classify ambiguous trade dress as product design.

Walmart Stores, Inc. v. Samara Bros., Inc. p. 1009 - Issue on whether a design of clothing line inherently distinctive or needed secondary meaning. Design of a dress needs a secondary meaning in order to be considered distinctive.

Functionality[edit | edit source]

Trademark law does not protect functional itemsFunctional - if it essential to the use or purpose of the article or if it affects the cost or quality of the articleStep One: Mechanical Functionality

  1. Is the claimed trademark essential to a use or purpose; or
  2. Does it affect price or quality?
  3. Presumption of functionality if covered by a utility patent
  4. Expired utility patents are strong evidence that feature claimed in the patent is functional
  5. De facto v. De jure

Step Two: Aesthetic Functionality

  1. Would protection of the feature as a trademark result in significant non-reputation related competitive disadvantage?
  2. E.g. Orange soda. Designating origin then it is not mechanical, but allowing protection would not allow other orange sodas to compete in the market.

Generally, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article, or it affects the cost or quality of the article.”If functional after step one, stop. No trademark. If no on step one, go to step two. If functional on step two, no trademark.TrafFix Devices, Inc. v. Marketing Displays, Inc. p. 1017 - springs on traffic sign are essential to the use and purpose of the sign withstanding high winds. If the alleged trade dress feature is functional under the first part of the test, that ends the inquiry.De Facto Functionality v. De Jure Functionality - De Facto Functionality:

  • - Product design has a function, e.g. a bottle has a function – to hold liquid.
  • - Bottle shape may not be designed to function better, it may be trade dress, e.g. Orangina bottle; being an indication of the source. Thus may ​ ​be protected - De Jure Functionality:
  • - Product has a particular shape because it works better​ ​ having that shape, e.g. bottles that narrow at the top pour better and can be sealed more cheaply. These are not entitled to trademark protection. Four factors to consider:
  • - Existence of a utility patent
  • - Advertising materials touting design’s utilitarian function
  • - Availability to competitors of functionally equivalent designs
  • - Facts indicating the design results in comparatively cheap or simple method of manufacturing the product

Valu-Engineering, Inc. v. Rexnord Corp. p. 1023 - De jure functionality. Shape or design of it made it so that it works better in that particular shape or design. Also properly limited to a single application​, functional as to the wet areas. Finding functionality, burden is on the applicant to prove non-functionality, which they failed.Aesthetic Functionality - Aesthetic functionality is about the competitive need for certain features that play an important role in a product, but where the importance does not relate to the utilitarian function of the product.

  • - Features are aesthetically functional when exclusive use of those features would put competitors at a significant non-reputation-related disadvantage - Second step after finding “no” on first step.

Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc. p. 1036 - Keychains and frames with labels of marks without license. Aesthetic function indistinguishable from and tied to the mark’s source-identifying nature.Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. p. 1047 - Mark had a secondary meaning to merit protection, but the protection only goes to the qualifier that the red sole contrasts with the remainder of the shoe. A shoe entirely red would not infringe. Not mechanically functional, and not aesthetically functional to the contrast only.Jay Franco & Sons, Inc. v. Franek p. 1057 - Circular beach towel, advertised utilitarian function and fashion statement. Incontestable after 5 years, utility patents with claims, alternative design more expensive, impairs competition; functional.

Acquisition, Use, and Priority[edit | edit source]

Trademark rights are based on actual use of the mark in commerce. There are questions of geographic area and who used the mark first in commerce.

  • - The first user is the Senior User. The second is the Junior User.

Priority - Priority goes to the first party to have a bona fide use of the mark in commerce.Use

  • - Use can be either be through “substantial sales”; OR
  • - Use can be through registration with some bona fide sales and an intent to continue using the mark in sales

Note - Bad faith can remove priority

  • - Bad faith occurs when a party has simply tried to reserve a mark to increase costs for competitors and has not attempted to use in the marketplace

Blue Bell, Inc. v. Farah Manufacturing Co. p. 1065 - Use in commerce must be bona fide, in good faith, and not a token use just to use the mark. Farah shipped the orders first, and thus wins on those grounds. Sales were determinative here.Notes p. 1071 - Token use is allowed for registration, but not for priority. Considers qualitative v.quantitative use in commerce. Token use was not a bona fide intention to use the mark in commerce.Tacking:Hana Financial v. Hana Bank p. 1072 - Tacking: a party may clothe a new mark with the priority position of an older mark. The jury makes the determination of whether tacking is available because the inquiry operates from the perspective of an ordinary purchaser or consumer.Intent to Use

  • - Use based application - Register after using mark in commerce. Verify use and include date in application
  • - File an Intent to Use Registration - Application for bona fide intention to use trademark
  • - A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark
  • - If accepted, date of filing used as registration date.

WarnerVision Entertainment Inc. v. Empire of Carolina, Inc. p. 1082 - Empire filed ITU application, put notice of intent. Concerns of trademark trolls when Warner used in commerce first. Empire is allowed to use because it was necessary for registration, Warner has to prove filed ITU first or used before application.See also Problem 10-6 p. 1086

Geographic Scope of Rights[edit | edit source]

An unregistered ​ ​user’s trademark rights are geographically limited. Unregistered users in different geographic areas generally have their rights in their respective areas, regardless of whose use came first in an absolute sense.Rectanus: Under common law, 1st user of mark may not oust a 2nd user’s good faith use of an infringing mark in a remote market where 1st users goods are not sold.Registered Mark: Federal mark provides constructive notice, nationwide, but Rectanus still holds UNLESS the infringing user had penetrated the market PRIOR TO REGISTRATION.For Market Penetration, consider the Sweetart factors​:​

  • - Money value of sales at time later user entering market
  • - Number of customers (compared to state population)
  • - Relative & potential growth of sales
  • - Length of time since significant sales

United Drug Co. v. Theodore Rectanus Co. p. 1087 - Neither the senior nor the junior user has registered the mark. Prior to 1911, only Northeast. Once go into Kentucky, Rectanus already established. Would abscond with their good will, consumer association in Kentucky. Allowing them to come in would cause consumer confusion. Good faith by Rectanus, used first, but never registered, can continue use of mark in territory.National Association for Healthcare Communications, Inc. v. Central Arkansas Area Agency on Aging, Inc. p. 1093 - Used Sweetart factors. The junior only used in Arkansas, 6 counties, senior cannot be entitled to exclusive use in the particular Arkansas market.

Loss of Rights[edit | edit source]

Discontinuation of use with intent not to resume use results in abandonmentA mark shall be deemed to be “abandoned” if either of the following occurs

  • - When its use has been discontinued with intent not to resume such use.​ Intent not to​ resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of​ such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
  • - When any course of conduct of the owner​ , including acts of omission as well as​ commission, causes the mark to become the generic name​ for the goods or services​ on or in connection with which it is used or otherwise to lose its significance​ as a​ Purchaser motivation shall not be a test for determining abandonment under this paragraph.
  • - Can be rebutted with evidence of use or intent to resume use

Factors to consider for Non-Use:

  • - Length of period of non-use?
  • - Nature of intent to resume use?
  • - Timeframe in which intended use will be resumed?

Emergency One, Inc. v. American FireEagle, Ltd. p. 1149 - Prima facie case of abandonment here. This Court says service and merchandise is not use, but E-One still had evidence to rebut with intent to resume use of mark on fire trucks. Must show intent to resume use in the reasonably foreseeable future, which is a factual inquiry.Naked Licensing

  • - Licensor allows licensee to use mark on any good licensee chooses. Can cause mark to lose significance. Abandoning right by having insufficient control.

Stanfield v. Osborne Industries, Inc. p. 1157 - Osborne saying naked license, abandoned rights, insufficient control. Burden on party asserting insufficient control. Here had no rights, no control, no contractual control, didn’t work with them, only saw them in court, only look at the pad once.Reliance didn’t work either because didn’t show special relationship

Infringement[edit | edit source]

Any person who shall, without the consent of the registrant

  • - use in commerce any reproduction, counterfeit, copy, or colorable imitation of a​ registered mark in connection with the sale, offering for sale, distribution, or advertising​ of any goods or services​ on or in connection with w​ hich such use is likely to cause confusion, or to cause mistake, or to deceive; …​
  • - shall be liable in a civil action by the registrant for the remedies hereinafter provided…

The Defendant must use the trademark in commerceLikelihood of Confusion Plaintiff must prove

  • - Valid trademark that is owned by the P
  • - Use of the mark by the D in commerce resulting in a likelihood of confusion (use factors below)

When goods compete, an infringement is found if the marks are substantially similar enough to cause confusionWhen goods are related, but not competitive, several other factors are considered:Polaroid Factors (2nd Circuit):

  • - Strength of Plaintiff’s mark
  • - Proximity of products
  • - Similarity of marks
  • - Actual confusion
  • - Likelihood of Plaintiff bridging the gap
  • - (Good or bad faith) (goes primarily to remedy, but may also indicate intent to confuse)
  • - (Quality of defendant’s product) (goes primarily to harm)
  • - Sophistication of customers Sleekcraft Factors (9th Circuit):​
  • - Strength of the mark;
  • - Proximity of the goods;
  • - Similarity of the marks;
  • - Evidence of actual confusion;
  • - Likelihood of expansion of product lines
  • - Defendant's intent in selecting the mark
  • - Type of goods and the degree of care likely to be exercised by the purchaser; - Marketing channels used

Likelihood of Confusion Standard (Factors Analyzed): Strength of the Mark

  • - Looks at which category of protection the mark is placed in (suggestive; descriptive w/ secondary; arbitrary)
  • - If mark is weak, must show that marks are quite similar, and goods are closely related Proximity of the Goods
  • - Looks to see how closely the goods are to the same market - Factors considered:
  • - Are goods complementary?
  • - Are the products sold to the same class of purchaser?
  • - Are the goods similar in use and function?
  • - The closer the market the less similarity is required between the marks

Similarity of the Marks

  • - Tested using three non-exclusive factors:
  • - Sight - is it similar in look
  • - Sound - how the mark sounds when pronounced
  • - Slight differences in sound will not protect infringer
  • - Meaning

Evidence of Actual Confusion

  • - Difficult to prove, but is persuasive if it can be proven

Marketing Channels Used

  • - Convergent marketing channels increases the likelihood of confusion - Considers:
  • - Where is the product sold?
  • - What is the price?
  • - Where advertised?

Type of goods and the degree of care likely to be exercised by the purchaser

  • - The higher the degree of care that is to be exercised the less likely confusion will occur - High priced items usually have a higher degree of care

Defendants intent in selecting the mark

  • - Looks at knowledge of other mark at the time of creation

Likelihood of expansion of the product line

  • - How likely are the goods to be expanded into the competing market?

Virgin Enterprises Ltd. v. Nawab p. 1164 - Used Polaroid factors and analyzed each

Other Types of Confusion:[edit | edit source]

  • Sponsorship or Affiliation;
  • Initial Interest Confusion;
  • Post Sale​ Confusion

Confusion as to Sponsorship

  • - A similarity between the marks causes consumer to believe that the two symbols are related and are sponsored by the same company

Warner Bros., Inc. v. Gay Toys, Inc. p. 1184 - Dukes of Hazard toys, Warner Bros. has licensed other toy manufacturers to produce authorized replicas of the "General Lee" through its subsidiary. It is not necessary that Warner Bros. actually manufacture the toy cars, but merely that a confusion as to manufacture or sponsorship result.Initial Interest Confusion

  • - One party uses a mark similar to the senior mark, to create interest in its own product, even if any confusion is dispelled before a sale occurs.
  • - Purchaser is “lured” or “diverted” to the alternate product
  • - Infringement can occur when party takes action to create initial interest but never sells good under the auspice of confusion
  • - Must be able to capitalize on the use of the mark to make sales
  • - In internet cases, 9th Circuit also considers “the labeling and appearance of the advertisement and the surrounding context on the screen displaying the results page…”
  • - Look to reasonable consumer (nature of goods/type of consumer)
  • - What would that reasonable consumer believe, based on what s/he saw on webpage?

1-800 Contacts, Inc. v. p. 1196 - Purchasing of search-engine keywords, ad space using trademark. Results show both organic and sponsored links. Confusion alleged here is people going to Lens believing it is sponsored by 1-800. Stats don’t really show confusion. Survey also flawed. Also percentages not much, so minimal weight. No confusion.Multi Time Machine, Inc. v., Inc. p. 1209 - Multi Time Machine, Inc. (Multi Time) (plaintiff) manufactured military-style watches. Amazon’s website had a search engine for finding products. If a consumer searched for “mtm special ops,” Amazon’s website displayed a list of military-style watches that Amazon did sell. No infringement here, no initial interest confusion. Amazon sufficiently indicated not the plaintiff’s watches, not similar items.Post Sale Confusion

  • - Third parties who see the product confuse the product - Confusion arises after the sale
  • - g. Original buyer knows that the alleged infringer is the source of the goods, BUT someone later viewing the goods might believe that the origin was the TM owner
  • - The “harm” to the TM owner occurs downstream

General Motors Corp. v. Keystone Automotive Industries p. 1224 - General Motors sued Tong Yang and Keystone for trademark infringement, alleging that Tong Yang’s grilles caused a likelihood of post-sale confusion. General Motors alleged that the logo-shaped placeholders on Tong Yang’s grilles were still visible after consumers mounted the Chevrolet and GMC emblems onto the grilles, and the placeholders’ low-quality appearance caused harm to the General Motors brand.

Trademark Dilution[edit | edit source]

Protects trademark holders from actions of others that will diminish or dilute mark or goodwill of selling power. These cases do not​ involve or require a likelihood of confusion. Instead, the​ standard is a likelihood of blurring​ or a ​ likelihood of tarnishment​.


  • - Distinctive- the ability of the famous mark uniquely to identify a single source and thus maintain its selling power
  • - Look to above distinctive analysis (Abercrombie Spectrum)
  • - Famous
  • - Factors considered:
  • - The duration extent and geographic reach of advertising and publicity of the mark
  • - The amount, volume, and geographic extent of sales of goods or services offered under the mark
  • - The extent of actual recognition of the mark
  • - Whether the mark was registered

Two Forms of DilutionBlurring -​ This is the whittling away of the power of the mark by impairing the distinctiveness. If the mark is used by more than one business, it lessens the power of one party’s ability to distinguish against another.

  • - Factors:
  • - Similarity between marks
  • - Degree of distinctiveness of the famous mark (strength of mark) - Exclusive use of mark
  • - This asks if the mark is being used by another Co.; if used it is a weaker case of blurring
  • - Degree of recognition of famous mark
  • - Intent to create an association with the famous mark
  • - Any actual association between the mark and the famous mark

Tarnishment -​ This is harm that is done to the mark. Unreliable or poor quality, scandalous or obscene, creates a negative association in the minds of consumers. Tarnish mark even with no confusion. Association that harms the reputation of the famous mark.

  • - Association arising from the similarity between a mark and a famous mark that harms the reputation of the famous mark - Factors:
  • - Association
  • - Similarity
  • - Harm to reputation

Note: A clear semantic association between a new mark used to promote sex-related products and a famous mark results in a rebuttable presumption of dilutionMoseley v. V. Secret Catalogue, Inc. p. 1244 - Famous mark. Victor sex shop. Offended army officer reports. Supreme Court rules in favor of Moseley with no actual evidence of tarnishment at time. Statute went from actual to likelihood of tarnishment​ ​. Don’t need to show actual association, can show clear semantic association​ ​. Also, sex related items, rebuttable presumption​. Then to rebut must do survey that shows consumers don’t find a negative association.Trademark Dilution Analysis:

  1. Mark famous?
    • - Factors for Fame:
    • - Duration
    • - Extent
    • - Geographic reach
    • - Amount
    • - Volume
    • - Degree of recognition
  2. Likelihood of tarnishment?
    • - Harm reputation
    • - Obscene
    • - Association arising from similarity of mark?
  3. Likelihood of blurring?
    • - Similarity
    • - Strength of mark under Ambercrombie spectrum
    • - Intent to create association
    • - Actual association

DMCA, © Recapture, MMA[edit | edit source]

17 U.S. Code § 512 - Limitations on liability relating to material onlineService Provider

  • - “A provider of online services or network access, or the operator of facilities therefore...”
  • - Safe harbor from direct and contributory infringement:​
  • - Service provider “shall not be liable … for infringement of copyright”
  • - Failure to comply “shall not bear adversely” on other defenses an OSP may raise

4 Safe Harbors:

  • - Transitory digital network communications
  • - System caching
  • - Information residing on systems or networks at the direction of users - Information location tools (links, index, pointers, etc.)

General Requirements:

  • - Comply with standard technical measures
  • - Policy terminating accounts of repeat infringers
  • - Upon notice​, acts expeditiously to remove or disable access​

Notice Requirements:Elements of notification - To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:

  • - A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law

Note: Copyright holders must consider fair use before issuing takedown notices​ for​ content posted on the internet- Lenz v. Universal - Mom responds to take down notice with FAIR USE and files action against Universal for misrepresentation of a DMCA claim17 U.S. Code § 203 - Termination ​ of transfers and licenses granted by the author​ Note: On or after 1/1/1978Transfers made by the author, except those by will; not applicable to works made for hire

  • - Who can terminate? Author, heirs (whoever owns 51%)
  • - When? 5 year window beginning 35 years from date of execution of grant
  • - Except for first publication rights, when it begins the earlier of 35 years after publication or 40 after the grant
  • - Notice must be served not more than 10 or less than 2 years prior (must be recorded with © Office)

Which grants are eligible?

  • - Transfers made on or after 1/1/78
  • - Transfers made BY THE AUTHOR
  • - Not works made for hire
  • - Not disposition by will

Cease and Desist LettersNo formula: some lawyers’ letters are lengthy, others’ are short: demand cessation & reserve rightsBeware of “Streisand Effect”: EXPECT PUBLICATIONState who you represent and their rights’

  • - State what rights, inter alia, are being violated
  • - Demand o/b/o client
  • - Set time frame for response/action