Copyright Spring 08

COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008
3 objectives under IP law:.............................................................................................................5

Constitutional Origins of IP Law.................................................................................................5
I. State/ Common Law Intellectual Property..............................................................................5
1) Rights in Undeveloped Ideas................................................................................................5
Elements of Misappropriation......................................................................................................5
Idea Submission (the 4 general scenarios....................................................................................5
2) Protection of Ideas.....................................................................................................................5
Theories of Recovery (levels of proof vary depending of theory of recovery.......................5
Contract Theories......................................................................................................................5
Other Theories...........................................................................................................................6
Courts vary by j.........................................................................................................................6
An Idea must be NOVEL and CONCRETE especially w/o an express K............................6
RULE: K claim generally requires less novelty and originality than CL
Misappropriation claim.............................................................................................................6
3) LIMITS ON PROTECTION................................................................................................7
II. UNFAIR COMPETITION.......................................................................................................8
1) Passing off & Secondary Meaning.......................................................................................8
THE LEVEL OF PROOF CONTINUUM...............................................................................8
2) Zone of Expansion.................................................................................................................9
4) Misappropriation OF FACTS............................................................................................10
Hot News Exception.................................................................................................................10
5) Personal Names and the Rights afforded to them............................................................10
6) TradeDress, Design, Functionality.....................................................................................11
Economic Interests- Unfair Comp in the Competitive Plan................................................11
FEDERAL IP LAW PREEMPTS STATE IP LAW...............................................................................12
PREEMPTION........................................................................................................................12
STATE V. FED LAWS.............................................................................................................12
Trade Secrets................................................................................................................................12
Elements of a T/S Claim?..........................................................................................................12
3rd party beneficiary of TS......................................................................................................12
Source of Law:.........................................................................................................................12
RESTATEMENT 757, comment B.......................................................................................13
Reverse Engineering................................................................................................................13
How do you protect a [trade] secret?.........................................................................................13
How do confidential relationship arise in TS?...........................................................................13
RULE: public has free access to trade secrets.....................................................................13
Why Patent v. TS?...................................................................................................................13
THEORY OF PROTECTION ............................................................................................................13
IV. RIGHT OF PUBLICITY................................................................................................................16
ROP claim test:........................................................................................................................17
FEDERAL LAW OF INTELLECTUAL PROPERTY................................................................................20
Supplemental Jurisdiction......................................................................................................20
Federal Jurisdiction.................................................................................................................20
CAFC (Court of Appeals for Federal Circuit)......................................................................20
Trademark Law...........................................................................................................................20
First TM Statute.......................................................................................................................20
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Lanham Act (July 5, 1946)......................................................................................................20

SMs v. TMs...............................................................................................................................20
3 levels of TM Protection (all exist congruently):....................................................................20
Legal steps to follow after choosing a mark..........................................................................21
A. Requirements for Protection..............................................................................................21
Use & Use in Commerce.........................................................................................................21
Intent to Use.............................................................................................................................21
DATE OF FILING...................................................................................................................21
N/O/A- notice of allowance.......................................................................................................22
Applications that say cancelled, abandoned, not in use...................................................23
Process for getting a TM:........................................................................................................23
Lanham Act 1052/2 (REASONS FOR REJECTION.......................................................23
Selecting a TM/ (how strong it is too):...................................................................................23
Level of Distinctiveness...........................................................................................................23
Rejections: 2(e).........................................................................................................................24
Concurrent Registration.........................................................................................................24
Ways to renew a TM................................................................................................................24
Supplemental Register.............................................................................................................24
Process for Appealing a TM denial:.......................................................................................24
Defenses to infringement.........................................................................................................25
Licensing A Mark......................................................................................................................25
(a) Trademarks that distinguish from Goods of Another.....................................................25
(b) Deceptive Matter:..............................................................................................................25
Confusing Similarity to Prior Marks.....................................................................................26
Concurrent Registration.........................................................................................................26
Merely Descriptive...................................................................................................................26
Primarily Geographically Descriptive...................................................................................26
TYPES OF MARKS................................................................................................................26
Service Mark........................................................................................................................26
Certification Mark-.............................................................................................................26
Collective Marks..................................................................................................................27
Licensee Estoppel.................................................................................................................27
Abandonment.............................................................................................................................27
Content of Marks....................................................................................................................27
Administrative Procedures - going to the show 283.......................................................27
. Rights & Remedies................................................................................................................28
Geographic Boundaries...........................................................................................................28
Dilution.....................................................................................................................................28
Limitations on Rights of TM owner.......................................................................................29
Fair Use.................................................................................................................................29
4 categories of Fair Use under TM.....................................................................................29
DOMAIN NAMES.......................................................................................................................29
ICANN......................................................................................................................................29
Cybersquatting.........................................................................................................................29
Metatag.....................................................................................................................................30
ICAN.........................................................................................................................................30
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REMIEDIES - primarily an injunction in TM law..............................................................30

For s loss................................................................................................................................30
REMEDIES..............................................................................................................................31
SECONDARY LIABILITY......................................................................................................31
TM Infringement.....................................................................................................................31
TRADE DRESS 43(A) ACTION.................................................................................................32
43(a) Elements for unregistered marks......................................................................................32
Defenses for TM Infringement..................................................................................................33
Copyright......................................................................................................................................33
Requirements for Protection......................................................................................................33
HISTORY.................................................................................................................................33
Pre 1976....................................................................................................................................33
POST 1976................................................................................................................................33
Berne Convention....................................................................................................................34
FORMALITIES REQUIRED FOR PROTECTION...........................................................34
Notice.....................................................................................................................................34
1909 Act (all works created before 1/1/78..............................................................................34
REQUIREMENTS TO ESTABLISH NOTICE....................................................................34
1976 Act.....................................................................................................................................35
The Dates in a NUTshell:.........................................................................................................35
NOTICE ISSUES.....................................................................................................................35
RENEWAL ISSUES.................................................................................................................35
Omission of copyright notice..................................................................................................35
Publication................................................................................................................................36
Registration & Deposit............................................................................................................36
Statutory Subject Matter:.......................................................................................................36
17 USC 102(a).........................................................................................................................36
(b)..............................................................................................................................................36
What is Copyrightable?..........................................................................................................36
What is not ?..........................................................................................................................36
Forms:.......................................................................................................................................37
How Long for Protection of Copyright?................................................................................37
RECAPTURE versus TERMINATION OF GRANTS/LICENSES...................................38
Exclusive Rights...................................................................................................................38
General Problem..................................................................................................................38
17 USC 203 TERMINATION...............................................................................................38
SUMMARY under 203:.........................................................................................................38
SUMMARY under 304: RECAPTURE...............................................................................39
Summary of Terms and Concerns for Particular Types of Work.......................................39
RECAPTURE..........................................................................................................................40
PUBLIC ACCESS PROVISIONS..........................................................................................40
3. Originality............................................................................................................................41
B. Ownership............................................................................................................................42
17 USC 201.........................................................................................................................42
WMFH (Work Made For Hire)..............................................................................................42
Works for Hire.........................................................................................................................43
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Transfer & Term......................................................................................................................44

Rights & Remedies..................................................................................................................44
109 F.S.D. (First Sale Doctrine)...........................................................................................45
DERIVATIVE WORK...............................................................................................................45
b. Secondary Liability.............................................................................................................46
C. 107 Fair Use.......................................................................................................................46
Fair Use:....................................................................................................................................47
Public Access Provisions...........................................................................................................47
Compulsory Licensing...............................................................................................................47
Phonorecords.............................................................................................................................47
107 (see above) Fair Use........................................................................................................47
TYPES of Licenses & Rights:.................................................................................................48
110 Single Receiver Exception..............................................................................................48
17 USC 115..............................................................................................................................48
Exclusive Rights & New Technologies- Time Shifting..........................................................49
ASCAP, BMI, SESAC...............................................................................................................50
To Prove Infringement............................................................................................................50
Computer programs/Software programs....................................................................................50
The collecting Societies (reduce transaction costs)...............................................................52
D. Establishing Infringement see 17 USC 501....................................................................53
Literature- scenes a faire (general fair scenes)-....................................................................53
2. Music.....................................................................................................................................53
3. Visual Arts............................................................................................................................53
Duration of protection.............................................................................................................54
Preemption of State Law:........................................................................................................55
DEFENSES:.............................................................................................................................55
Are blueprints copyrightable? YES...........................................................................................56
What about state statutes?..........................................................................................................56
Can a state be an author?...........................................................................................................56
US government?........................................................................................................................56
Things lawyers can copyright....................................................................................................56
Fair Use: Sega v. Accolade......................................................................................................56
Patents...........................................................................................................................................57
Types of patents.............................................................................................................................57
In order to qualify for patents, need all three:......................................................................57
If get patent rights, you control who can:..............................................................................58
Process for getting a a Patent:................................................................................................58
3 objectives of Patent Law:.....................................................................................................58
How long to monopolize patent?............................................................................................58
Novelty......................................................................................................................................59
Prior Art:..................................................................................................................................59
12 Month Use Bars Application..............................................................................................59
Publication................................................................................................................................59
Test for non-obviousness.........................................................................................................60
2 types of patent infringement...................................................................................................61
Sometimes patent trials split in parts:...................................................................................61
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Non-literal infringement............................................................................................................61
Copyright and Trademark Outline
3 objectives under IP law: enrich society with products, entertainment, and literature
1. protect creator (author/inventor) if we protect they will continue to create b/c they make money
2. Protect publisher/investor person who is going to put the money up, b/c the creator most likely wont
have it.
3. Enrich/protect the consumer public
The Overall Goal Investor will invest, creator will continue to create and the consumer will be enriched
with whatever is produced.
Constitutional Origins of IP Law

Article I, 8, clause 3, Trademark Law Congress shall have the power to regulate Commerce with
Foreign Nations, and among the several states
Article I, 8, clause 8, Copyright & Patent Law Congress shall have the power to Promote the
Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive
Right to their Respective Writings and Discoveries
I. State/ Common Law Intellectual Property
1) Rights in Undeveloped Ideas

RULE: To successfully claim misappropriation, idea must be generally novel.
Sellers v ABC (1982) (Geraldo Rivera/Elvis case)
Seller claimed misappropriation, stating that ABC and Rivera used his idea without compensation.
Specifically, Sellers pitched a theory of Elvis death (conspiracy theory of murder) to ABC who ended up
doing a feature on Elvis death but did not mention Sellers theory. There was a copyright agreement
between them re: the idea.
HELD: Elements of misappropriation were NOT met. s theory was not novel, nor sufficiently concrete to
give rise to a cause of action. Furthermore, Sellers theory wasnt even specifically used, so there wasnt
any misappropriation of his idea.
Elements of Misappropriation
1. Novel Idea-(the standard differs, NY says need to be novel to recipient, because novelty takes the place of
consideration in the K, the idea becomes the value)
2. Concrete Form has to be written, and detailed enough that someone would know how to act upon it.
3. uses s idea (the most common defense claim is that they did not use idea)
4. has expectation of $$$
Note: CA has largest amount of misappropriation claims, so there are idea submission programs
Idea Submission (the 4 general scenarios)

1. X submits her idea to Y upon Ys express solicitation
2. X informs Y that she would like to submit an idea of possible value to Y and Y does nothing to
block the submission.
3. X thrusts upon Y a full disclosure of her idea before Y has the opportunity to block the submission
4. X makes no submission at all but charges that Y has copied her idea.
2) Protection of Ideas
Theories of Recovery (levels of proof vary depending of theory of recovery)
1. Contract Theories
Express K in writing limited level of novel necessary (Damages based on compensation mentioned in K)
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Implied K the law will imply a promise but to do so court will examine the Relationship between parties
Has the submitter shown confidential relationship with the recipient (this inferentially implies contractual
relationship because confidentially implies that submitter did Not want to divest her rights and recipient aware
means he understood not to publish without consent or compensation) (Damages based on presumed amount
of payment of reasonable value of idea)
Quasi K highest level of novelty (pet rock is novel) and some proof of unjust enrichment on part of
recipient. (Damages measured by level of unjust enrichment actual profit from the use of idea).
2. Other Theories:
Tort of Conversion convert someone elses property into your own, but Courts dont really do this much
and its the hardest to recover under.
Breach of Confidentiality (Fiduciary Duty)
Courts vary by j the question often becomes who is it novel to? The person receiving the idea OR to
society?
NY says if it is novel to the recipient then it is novel the novelty becomes the consideration, especially if
it is in writing. In a quasi contract ideas must be very novel in order to force the user to pay for the idea.
One of the highest novelty standards.
CA approaches it from a services rendered approach When you submit an idea you are doing a service
for that company so it is easier to collect. Some states require the idea submitter to be a professional
inventor/submitter, b/c they are preferred over amateurs. Note the HOLLYWOOD connection here in the
easier method of enforcing an obligation.
RULE: An Idea must be NOVEL and CONCRETE especially w/o an express K.

Luddecke v Chevrolet Motor (1934) (Tilted Chevy case)
A Chevy is sagging & tells Chevy their heavy parts are all on the wrong side, and wants to submit his idea. Letters
back and forth, and tells them what his solution would be, but he never sends them the requested drawings. Chevys
new model incorporates some of ideas
Holding: Chevy is not liable for incorporating into its product generalized suggestions made regarding its product.
Ideas must be novel and specific. Here, Chevy requested for more concrete form, such as drawings, but did not
provide idea in concrete form. A common-sense idea relating to a product in a generalized way is not novel. s
suggestion was the logical solution of re-distributing weight is not novel. did NOT obtain proprietary interest in
idea sufficient to form basis of implied K. Expectation of payment is not enough, because was NOT in express
agreement.
Ways to improve a Breach of Confidentiality claim

1. Standard Approach Non - disclosure agreement (NDA)
2. Soft Approach shower with letters suggesting I trust you will not make any use of this . Make it that
so every correspondence includes mentions of confidentiality Repeat, Repeat, Repeat.
RULE: K claim generally requires less novelty and originality than CL Misappropriation claim.
Nadel v Play by Play (2000) (spinning monkey case)
is a pro toy idea man. He has an idea for a spinning toy that sings. wants to share idea with a company that
manus toys. He sends a prototype, and they were supposed to send him some samples which never got, nor did he
get his prototype back. then puts out toy with similar qualities, and claims they did not use his idea based on lack
of novelty claim and that they never got his toy, which meanwhile was sitting on s desk.
Holding: Remanded. Under K law in NY, the novelty standard is novelty to buyer, so while an idea may be
unoriginal, it may have particular value to the buyer and this is evident by willingness to enter into K. In contrast, a
misappropriation claim requires that idea be novel and original in absolute terms, because this is a property law
theory which only protects that which is not free and available to all.
The Nadel Test for Novelty
1. Generality v Specificity is it a general concept or one of specific application?
2. Commonality how many people are aware of the idea?
3. Uniqueness how different from ideas generally known?
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4. commercial availability how available is the idea to the industry

Ink is still Wet companies claim idea was yrs old, but in the end the evidence shows otherwise. (See
Nadel).
WC Fields Case: Newark dude in the 1930s submitted gag ideas to W.C. Fields. Fields asks for a few scripts
gratis (due to nuisance suits) and then he might consider entering into a K. Ct. awards Newark dude the
reasonable value of the ideas he submitted.
3) LIMITS ON PROTECTION
RULE: Even if idea does not receive patent and become publicly available and marketed, if express K was
created prior to, royalties payments will continue to be enforced since already profited from first rights.
Aronson v Quick Point Co (1979) (keychain idea)
had keychain idea. Agreement that if idea is patentable they will pay 5%, and if not 2.5%. Patent was not granted,
so in K they agreed to pay the 2.5%, but after 14 yrs, wanted out of the agreement b/c anyone could make, use,
and sell the product.
Holding: B/C it was express K and not in conflict with 3 goals of patent law, had first-on-the market rights that
was adequate consideration for the K. Failure to obtain a patent by an inventor will not preclude enforcement of a K
paying royalties on the invention to the inventor. Fed patent law does not expressly preempt state laws regarding K.
3 Goals of Patent Law

1. To foster and reward invention
2. To promote disclosure & stimulate further invention
3. To assure that ideas in the public domain remain there for the free use of the public
As a recipient of ideas, you want to avoid litigation by:

1. setting up a process for submissions
2. avoiding confidentiality
3. only want the obligation to pay if u use the idea (K)
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II. UNFAIR COMPETITION

Infringement which competes (incorporates continuum of deceptive conduct from passing off to infringement,
the injury being that consumers get a product different than the one they thought they were getting and producers
lose sales they otherwise would have made).
Acts that fall w/in the realm Unfair Competition? (1) Passing Off, (2)Dilution of , (3) False Advertising, (4)
Disparagement, (5) Misappropriation, (6) K Interference (tortious interference w/ K or economic adv), (7) Price
Fixing, (8) Bribery, (9) Fraud -- Unfair/Deceptive trade Practices, UDTPA, see consumer fraud act, (10) Right of
Publicity, (11) Pirating
Unfair Competition Supplemented by BOTH State and Federal Law
Common Law/State law cause of action would lie, at C/L, if could prove that used product to deceive
consumers into thinking was the source of the goods. INTENT TO DECIEVE is still major factor.
Federal Law/ Lanham Act enacted in 1946 created a federal law of unfair competition that parallels state unfair
competition law. (States now have own statutes as well)
43(a) general
43(c) Dilution using the same name
43(b) Cyber-squatting buying domain names of famous mark, and holding onto it until u
can sell it.
1) Passing off & Secondary Meaning

Passing off- act of falsely representing ones own product as that of another in an attempt to deceive potential
buyers.
Secondary Meaning- the trade meaning which may attach to a particular mark because its user has expended
time and money in the promotion of the mark. A name has become so identified w/ a particular biz that it
exclusively signifies only that one particular biz. must prove that the primary significance of the term in
the minds of the public is NOT the product BUT the producer. (DEFENSES-generic or dilution)
The Calculus of Passing Off

Unfair competition law seeks to protect BOTH producer & Consumer by protecting
a. the first to use a name, brand or other symbol in connection with the sales of goods or services against
b. another competitor whose subsequent use of the symbol
c. is likely to confuse consumers into believing that the first user is the source of the goods.
THE LEVEL OF PROOF CONTINUUM

1. As product descriptive and has no secondary meaning A must prove that
B palmed off goods and by words or deed deceived consumers as to source and
A must also show actual confusion by consumers.
2. As product common but has secondary meaning A must prove ONLY that
There is a likelihood that confusion that will result from Bs use of the symbol.
3. As product distinctive, non- descriptive symbol that is solely for the identification of A A can rely
on
Presumption created in her favor that A, due to other alternative symbols, in choosing to use As was
motivated by intent to deceive and was successful in doing so.
Actual identifiable symbols is NOT needed in above, JUST similaritythe more similarity, the more probable
a finding of intent to deceive.
A Name to be protected must be in ACTUAL USE, can NOT SAVE FOR LATER.
RULE: PASSING OFF although a product may not be protectable due to lack of patent and functional
features, bad faith inducement to PASS OFF product is NOT OK.
R: Functionality kills a TM!!
R: A name is not protectible when it becomes a noun!!
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William Warner v Eli Lilly (1924) (passing off, issue of functionality) (chocolate medicine case)
Eli made Coco Quinine (chocolate on pill). Warner then made Quin-Coco, identical product. Patent was not given so
this is not a problem; however, Warner told druggists to sub QC for CQ because QC is cheaper. Thus, distributor
would be buying more QC with incentive being kick backs due to selling to consumer at higher price b/c passing off
as other product.
Holding: A manufacturer may not pass off its product as the product of another. A party is entitled to make product
identical to any other non-patented product (reverse engineering). But CANNOT tell public that product is same as
original. Here, bad faith such as inducement by manufacturer to pass off is very bad.
NOTE: Functional elements ARE NOT protectable, such as color brown liquid being result of chocolate. Thus,
a functional element will kill a but Patent will protect functional elements.
2) Zone of Expansion-A prior user can retain the right to use its name & symbols in territories that would
probably be reached by the prior user in the natural expansion of his trade. Some courts limit ZOE to bad
faith.
Two types of Zone of Expansion (Z.O.E)

1. Territorial should be able to expand and keep your mark
2. Product Expanding a product line to a related good (from clothing to accessories). Ex: I make shoes and
now I want to make pocketbooks
***General rule for determining zone -- if registered in state, have state zone, if registered federally, have U.S.
B.T.G. (Bridge the Gap) - Must show you have the economics to bridge the gap (TERRITORIAL &
PRODUCT)
F.I.T.G.T.T First in Time Gets the TERRITORY Senior v. Junior rule General rule of
Trademark which mandates that the senior company will usually get first dibs on territory, unless, junior is the
company the public identifies with (See Sample v. Porrath)
R.G.D. (Related Goods Doctrine) allows one to expand their service/product to a related good, even if biz
didnt register for those goods . (PRODUCT)
EXCEPTION TO Jr. v. Sr. Rule A local biz cant enjoin another biz from using the same name in its
market if the local public is more familiar with the name of the non-local biz.
Sample v Porrath (Niagara case Sample Shops)
operated stores in NY State called Sample. operated stores in Niagara called Sample Shop. When wanted
to open store in Niagara, objected. Survey showed majority of Niagara residents identified the stores operated by
, not .
Holding: Party has the right to bar anothers use of a commercial name only if use is unfair. Unfairness exists when
party seeking injunction has expended time and effort to familiarize public w/ its name and product & the offending
party seeks to exploit that effort. When public has not in fact come to associate a certain product or service w/ a
name, the use of it by another is legit. Here, survey showed public associated w/ Sample Inc. in spite of local
character of . No secondary Meaning given to those stores. No dilution or deception. No bad faith. Thus no
injunction. Note: Court does not want to hurt biz that is in good faith. Here, they wanted to find a way so they could
both exist concurrently.
3) Dilution Claims-the act or instance of diminishing a marks strength or lessening its value.
Tarnishment of the famous mark
6 Part Balancing Test for Dilution (Mead Concurrence)

1. similarity of the marks
2. Similarity of products
3. Sophistication of Consumers
4. Predatory Intent
5. Renown of Senior Mark
6. Renown of Junior Mark
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Apply the test and see where the cookies fall, here, product different, consumers sophisticated, good faith
and different reputations associated with each mark.
Mead Data v Toyota (1989) (LEXIS/LEXUS case)
Mead not happy that Toyota putting out a LEXUS, because sounds like LEXIS. Mead & Toyota put out 2 products
similar in name were highly unlikely to be linked in public mind (Lexis-Nexis & Lexus).
HELD: No dilution. A junior product manu doesnt dilute the market of a Sr. manu if no L.O.C exists between the 2
products in the public mind. RULE: For dilution to occur, the mark or name in question must be distinctive;
where name is one of common usage or does not have a distinctive quality, dilution cannot occur. Lexis =
word, a common prefix. Also, products are not similar, consumers are sophisticated, seems to be no bad faith, & the
senior mark is really only renowned in the legal community, while the junior is for the masses.
Lanham 43(c) When companies are NOT competitors, theres the possibility of a 43 action. Wasnt
mentioned here b/c Lanham Act wasnt around at this time.
RADIO TEST if mark sounds the same on the radio, there may be a problem ( Mead is exception to rule)
Non-Functional: 3rd Cir (if its not registered, but being used):
1. Unusual AND memorable;
2. Conceptually separable from product
3. Likely to serve primarily as designator of origin (ex. Twizzler u know instantly who makes it)
4) Misappropriation OF FACTS
Hot News Exception when news is presented in timely manner, others just cant steal it and print it. Originator
entitled some time protection for limited amt of time to protect economic interests. (Stock news 15 min) (INS v AP)
What constitutes Hot News?

1. generates or gathers info at a cost;
2. info is time-sensitive;
3. s use of the info constitutes free-riding on s efforts;
4. is in direct competition w/ product or service offered by s;
5. Ability of other parties to free-ride on the efforts of or others would reduce incentive to produce
product or service that its existence or quality would be threatened.
S.A.C (Selection, Arrangement, Coordination of facts) is protected under HOT NEWS even if underlying
facts are NOT; have to balance public need for info with protecting those who invest time and $$ into
gathering info and so on.
Board of Trade v Dow Jones (1983)
Chicago wants to sell something, so they need an index for reference purposes and they want to include the DJ
index. So what is the problem? DJ put time and effort into the index, so is the index protectable. Facts are in the
public domain, and the index is a fact, not fiction. A fact is not protectable in its particular arrangement (S.A.C
Selection Arrangement Coordinatioon). The user gets a license from the Dow Jones, but here there was no
license. They are trying to take a free ride.
Holding: A partys product or service may be misappropriated even if the appropriating party offers a product unlike
any offered by the other party.
2 competing philosophies here-
(1) Sweat of the Brow Doctrine: an innovative party deserves the fruits of their labor v.
(2) allowing imitation pushes all parties to innovate further.
***COMPETITORS-Some courts require other party to be competitor so as to economically affect the other party
(i.e. INS type cases). Most courts say a violation occurs only if the one taking the news is a competitor.
**Overriding concern is whether social utility is better served by allowing or prohibiting appropriation. Whether
they are competitors or not is consideration of several factors. Dow has expended much time, energy, $$ to achieve
highly respected status. In context of stock market futures, any index can be used; giving Dow a monopoly on its 30
industrials will not stifle market. Doing so may encourage innovation by forcing experimentation. SAC- Dow Jones
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took facts and arranged them in a certain way. This SAC should be protected. Basically, Chicago should create their
own, but they cant because it has to be noted before they can use it, so Catch-22, Chicago has to pay DJ.
5) Personal Names and the Rights afforded to them

For names to be protectable, u must establish secondary meaning
Surnames whose name is common and has no secondary meaning must show:
a. that s use of the name is part of an active passing off scheme AND
b. that consumers have actually been confused.
i. If s name has 2nd meaning, need only show LOC
ii. If s name is distinctive, and 2nd meaning is strong, cts will presume consumer deception & grant relief
even absent proof of LOC.
iii. To register a surname, you must:
1. Have a statement that the individual has licensed their name OR
2. If deceased, indicate so
***Secondary meaning (1) it is no longer a noun AND (2) it is a source identifier. (Think Roy Rogers)
RULE: A name is NOT sacred, & will not be protected if doing so will create LOC & especially if done in
bad faith.
David Findley v Findley (1966)
Two brothers' grandfather started this art galley business in Midwest. Grandfather dies, father continued business,
and eventually each brother had branch. David Findley goes to NY on 57th Street. Prior to that, his brother, Wally,
had business in Chicago. Wally then comes to NY on 57th. He sets up shop using Findley name next door. David had
invested a lot into the name in NY and they both sell the same type of art, and there is a huge LOC.
HELD: An individual may be enjoined from using his own name in a biz if such use would lead to confusion w/
another biz. An individual has property interest in own name, but limited. No sacred right in name. Persons name
may not be used to appropriate goodwill of another business by causing confusion in public. Both galleries were
adjacent and sold same art- LOC great. Narrow Injunction appropriate as remedy (Wally either change name or
move to another part of NYC). ***David was first FITGTT!!! ***
LEVITTOWN When a founder leaves a company bearing his name, what are his rights? Mr. Levitt of
Levittown sells business and trademark. Housing is either service mark (unique houses) or trademark (all the
same). Several years later, tries to go into the biz again and uses his name, but the biz who bought him out is
not happy about it. The court held he couldnt highlight what he had done, but here, it might have been because
he was so in the face about it. Court relied on confusion.
6) TradeDress, Design, Functionality
Trade Dress:
Beauty (protectable) v. Utility (not protectable)
Non-functional Functional
Non-Essential Essential
Non-Functional Elements:
Unusual
Memorable
Conceptually separable from the product
Likely to serve primarily as a designator of origin
Beauty is more likely to be protected
F Work Functionality -- good for s b/c if nonfunctional, you can copy if not patented
Can copy functional aspects, if no patent, but not non-functional
(2) Economic Interests- Unfair Comp in the Competitive Plan
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MARKETING - Crescent Tool v. Kilborn- Kilborn made wrenches possessing same basic shape &
function as wrenches made by Crescent. No patent. Holding: a Jr. product may be marketed having same
shape & function as Sr. product if no LOC as to w/c its purchasing. LOC necessary condition to enjoin
Jr. A product similar in style & function not give rise to UC claim if no LOC. No confusion and Kilborns
marketing suggested no confusion (diff name, diff packaging, did not market wrench as a Crescent). A
Sr. product having no patent has no claim on a products style or function. Improper only when Jr. copies
nonfunctional elements of Sr. that makes it distinctive.
NOTE: NON-FUNCTIONAL ITEMS ARE PROTECTED WEN 2ND MEANING IS SHOWN.
FEDERAL IP LAW PREEMPTS STATE IP LAW:

There can be no state patent law.
No state can prevent the manufacturing of something patentable.
PREEMPTION - Sears Roebuck v. Stiffel Stiffel sells high end lamps & then Sears makes a pole
lamp selling it under Sears name for cheaper. Stiffels design and mech patents were deemed invalid and
also the TM. HELD- A state may regulate the METHOD of selling, but a states UC laws may not
impose liability or bar the copying of a product that is not protected by the fed patent or laws. Patent
law says what is not patentable is free to be copies. RULE: Fed laws protecting patent & laws
preempt state law. A natl system of protection would otherwise be thwarted & useless if varies on state.
(*note- state law addresses conduct, not technology- ie. passing off, etc. Thus, state laws in general do not
conflict w/ fed patent laws.) States can only regulate labeling and advertising, not the non-manufacturing
aspects of a trade.
HYPO Listerine Bottle:
Design patents protect non-functional appearance (shape of the bottle).
lasts 14 years from the granting date.
Trade Dress lasts as long as the shape is IDd w/ the product.
STATE V. FED LAWS - Compco v. Day Brite- Compco (D) began manufacturing fluorescent lighting
fixtures identical to those upon w/c Day-Brite had secured a design patent that turned out to be invalid in
the Public Domain. HELD - A state cannot use its UC laws to bar or give relief for copying a product
w/c is unpatentable under the fed law and thus in the PD. A state can impose liability for palming off
or require labeling to prevent confusion, but not for copying and selling unpatentable articles.
III. Trade Secrets - Any formula, pattern, device or compilation of info used in ones business w/c gives
him a competitive advantage over others who dont know the TS.
Must be secret but need not be absolute.
Holder of TS may communicate it to employee or to one in fiduciary relationship.
BUT, substantial element of secrecy must exist so that except by use of improper means, there
would be difficulty getting info.
Elements of a T/S Claim?

(1) Any info of P that gives P competitive edge over others;
(2) takes reasonable steps to keep secret (non-disclosure to public) NOTE: Secret just has to be
secret, does NOT have to be novel or inventive
(3) Misappropriated thru wrongful means (uses or discloses)
reverse engineering ok! If reverse engineered, keep receipt so it can be proven origingal
product was obtained through lawful means & cant make misappropriation claim
(4) Cost involved in maintaining secret
MUST BE in continuous use.
TS protects SUBJECT MATTER that couldnt receive a patent.
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3rd party beneficiary of TS - have duty to inquire into any info new employee brings. (Notice)
Source of Law:
Restatement 3rd Unfair Competition
Case law
Uniform Trade Secret Act (supplement) 1(4)
**RESTATEMENT 757, comment B - One who discloses or uses anothers TS w/out privilege to
do so is liable to other if:
1. He discovered secret by improper means OR
2. His disclosure or use constitutes a breach of confidence reposed in him by the other disclosing the
secret.
Reverse Engineering- can lawfully reverse engineer and discover a TS as long as original product is
lawfully obtained.
How do you protect a [trade] secret?

non-disclosure agreements
non-compete clauses
restrictive covenants- either when proprietor sells biz or in employment relationships
security
shredders
signs
difft ID cards for difft employees (access)
How do confidential relationship arise in TS?

Express K
Parties in special relationships confidential relationships (partners, joint venturers)
Implied K
RULE: public has free access to trade secrets.
o Those who obtain it through proper means (like published in a book), w/ no knowledge of
unlawful means of obtaining it, are not liable.
o Dont have to obtain by unlawful means to infringe on trade secrets, but by commercially
immoral means (ex. DuPont v. Christopher).
o Misappropriator is the wrong-doer, whom the law seeks to punish.
Why Patent v. TS?
Patent disclosed after 18 mos of protection if denied a patent.
TS protected as long as kept secret (i.e., Coke formula). BUT, if reverse engineered, you get f-ed
b/c now no $.
TS protects things NOT in public domain, whereas Patent is for protection of items in public
domain. Thus, TS law does not conflict with if its not patentable, its not protectible.
Policy- Serves to protect standards of commercial morality & encourage invention & innovation while
maintaining public interest in having free & open competition in manufacture and sale of unpatented
goods. Not in conflict w/ fed patent law, which deals w/ technology. TS deals only w/ wrongful conduct!
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A. THEORY OF PROTECTION (ELEMENTS OF TS APPLIED-WHAT IS A TS)

Metallurgical v. Fourtek Metallurgical hired Therm-O-Vac to make M a furnace. M modified it
extensively and went to another company to have them build a second one, but kept the TS conf. btwn M
& the prospective company. TOVs salesperson w/ 4 others started Fourtek & sold the same furnace w/
the mods to a compeetitor. M claiming TS misapp. HELD - Furnace was TS which was disclosed to
others, but ltd disclosure made this still TS: ALL 4 ELEMENTS SATISFIED (1) a secret competitive
advantage was provided to others, but it was limited & the disclosures were made to further economic
interests. No confidentiality K but reasonable steps taken to keep secret. TS determined by weighing all
equitable considerations & turn on own facts; no universal requs though secrecy a must. Other requs are
value to holder and cost of devising secret or process. A reasonable conf rel existed btwn both parties, and
though competitor failed to inquire as to process of furnace, had not yet put it to use so not liable for TS
misappropriation. Remedies Reasonable Royalties (what parties would have agreed to as fair price for
licensing), & if unable to determine that, then perm inj. Also enjoined from disclosing info.
NOTE: for perm inj the court can do many things, but they can estimate how long it
should take for one to reasonably figure the TS or if bad faith could be forever.
NOTE: 3rd Party LiabilityAccording to UTSA, a good faith purchase who becomes
aware of the improper appropriation only after acquiring the info is protectd, b/c of the
knowing: requ.
E.I. Dupont v. Christopher- The Christophers were aerial photographers taking pics for conf. client of
s refinery taking pics of the process. Photogs will not disclose 3 rd party. finds out & wants to stop the
pics from being released and find out the name of the person. The TS here is the layout, pipes, & process.
s engaged in no fraud or illegal conduct. HELD (1): One may be found to have improperly acquired
anothers TS w/out having committed illegal or fraudulent conduct. Never been rule that acquisition of
secret must be thru illegal or fraudulent conduct. RULE: TS need not be discovered thru improper
means. Proper means = reverse engineering, not industrial espionage. HELD (2): Expense to protect
industrial aerial espionage would have outweighed reason. used reasonable protection.
Remedies:
1) Lost Profits: s actual loss (D unjust enrichment x2 if willful) or reasonable royalty.
2) Injunction
3) Esq. Fees (if bad faith or willful)
Protective Order to protect your secret, but you run the risk that it may be disclosed in
court b/c records are typically open to the public. Must ask that records get sealed.
Attorneys Eyes Only only opp esq. can look at the TS, client will never see the secret.
Under Court Seal closes courtroom to public & seals records.
NOTE: on Royalties: Should always require 2 tier system Think

Listerine & Key Chain case: If u do a deal w/someone on an item that might be
patentable, u have a 2 tier royalty obligation 1.) if the patent is grantedhigher
royalty b/c of exclusivity; 2.) if the patent is not granted you are still obligated to
pay Y, which may be lower, but you have to pay b/c u have lead time, which is a
benefit.
Approaches: Reasonable Steps

Mutual non-disclosure agreement what we share w/ each other (companies) will be kept conf
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Double envelope approach any idea client wants protected, address outside envelope to
recipient. Stamped confidential front and back, and then inside is a second envelope. Attached to
it is cover letter explaining whats inside the second envelope. Second envelope is addressed back
to you so that if they dont agree to cover letter terms, they can return it back to you.
NON-COMPETES must be reasonable, and are generally NOT FAVORED

Public policy need to keep people employed, as well as the individuals right to seek
employment freely, but we dont want secrets being disclosed. Courts will carefully
scrutinize a covenant for reasonableness in the light of the need of the employer for
protection and the hardship of the restriction upon the employee. Must narrow down
the type of companies not to work for must be true competitors. Here, K not enforced.
Wexler v. Greenberg Note Case (1960): chief chemist w/ access to formulas wants to
leave company A.
o Employer cant prevent an employee from leaving, BUT
o Can prevent employee from working for competitor for a period of time.
o HYPO: cant work for 8 years unsconscionable & probably invalidated by ct
o HYPO: 8 years, but well pay you half your current salary might be
reasonable.
o KEY FACTOR in determining reasonableness of non-compete clauses: Is there
separate consideration given for the particular provision in the K>
B. Limits of Protection:
Provisions to write into K to protect your TS:
NDA- Nondisclosure Agreements
NC- Non-compete clauses (Cali doesnt like this).
R.C. Restrictive Covenants- either when proprietor sells biz or in employment relationships.
(employees services must be unique & extraordinary and limitations must be reasonable
to be upheld b/c interferes w/ ability to earn living).
RC will be upheld if:
1) reasonable in time & area;
2) necessary to protect employers legit interest;
3) not harmful to gen public;
4) not unreasonably burdensome to employee.
Shop rights- if there is no written agreement btw employer and employee, employee retains right to
invention (owns it) but employer retains royalty fee license. If the employer wants to own all rights, must
put it in writing ahead of time or else employees could license to someone else.
State v. Federal Pre-emption:

o TS law is not pre-empted.
o Economic Espionage Act (1996) federal law for protection of TS.
o Doesnt pre-empt state law, merely holds TS law is important & helps potential confict in
patent v. TS law
o As long as the state law focuses on conduct (improper conduct-someone stole, someone
trespassed, etc) and not technology, its not pre-empted. State law doesnt care if its patentable
as long as it gives a competitive advantage.
1. Personal Interests- Restraints on Post-Employment Competition
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PepsiCo v. Redmond (Gatorade Case) - was former Pepsi employee who knew pricing, marketing,
distribution & was hella sneaky about leaving (lying, etc) to go to Quaker. HELD- may prove a claim
of TS misappropriation by demonstrating that s new employment will inevitably lead him to rely on s
TS. RULE: Enjoining someone from moving onward in their employ will occur ONLY when that
someone is special & HAS EXTRAORDINARY KNOWLEDGE that would be used no matter what, just
b/c its in the brain. Unless possessed uncanny ability to compartmentalize info, he would necessarily
be making decisions about Gatorade & Snapple by relying on his knowledge of PCNA TS. It is not the
general skills & knowledge acquired during his tenure that Pepsi wants to protect, but rather the particular
plans developed by PCNA and disclosed to him while employed that are unknown to others and that give
employer advantage over his competitors. (ie Playbook & football). Fact that said he wouldnt use the
info meant nothing. Remedy: Enjoined for a period of 6 mos b/c dist plan will be obsolete shortly
thereafter. Inj until current biz plan had passed. BAD FAITH WAS A BIG ISSUE/FACTOR HERE!!
*** REMEMBER: State Law-this varies from state to state
Reed v. Strauman (Tax Advisor Firm Case- Reed sought to enforce covenant not to compete executed by
Strauman despite fact that his services had not been extraordinary or unique. HELD- NC (non-compete)
unenforceable if employees services were not extraordinary or unique. List of clients accessible to
general public. RULE: Customer list is NOT a TS, BUT theres a difference between a customer
following and a lawyer soliciting. Not a TS, but unjust & unfair b/c of comp. adv.
Drafting a covenant for your employee:
Employees services must be unique & extraordinary and limitations must be reasonable to be upheld b/c
otherwise the covenant will interfere with individuals ability to earn a living. Thus a restrictive covenant
will be held if:
o Make it a small geographical area.
o Small window of time that employee cant work for competition (6 mos.).
o Necessary to protect employers legitimate interest;
o Tailor covenants for each type of individual/ occupation.
o Not harmful to general public.
2. Economic Interests - TS in Competitive Plan

Kewanee Oil v. Bicron (1974): USSC
created 17 crystal that detects radiation (largest in the market). s employee, left, worked for
Bicron. A few years later, created same crystal. seeked to enjoin from using it b/c it was a TS.
argued it was not patented, so it was free to be copied.
ISSUE: Does federal patent policy pre-empt state TS law? NO. TS covers what patent does NOT>
State TS law reaches areas that federal patent law does not, while upholding the following policies:
1) Incentive to invent is maintained under TS law.
2) Doesnt take knowledge away from the public domain.
3) Legitimate state purpose prevent unfair conduct AND promote invention.
Compare TS w/ Patent Sec. 154 Pre-emptive patent filing allows you to donate your patent to
public domain to prevent others from patentingsneaky, sneaky sir
The TS Risk: Company A has TS, Company B arrives in the market & invents the same
thing. B didnt know & gets patent, then A has to litigate and prove prior invention.
EXAM: WHAT TO KNOW ABOUT TS: Know what a TS is, the value of ATs that are
not preempted. They are valuable and what you need to do to protect them. Know about
NCCs (non-compete clauses)
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IV. RIGHT OF PUBLICITY

What is it?
Right of an individual (celebrity) to profit from & control his/ her name, image, likeness, biographical
facts, voice, signature, performance & symbolic representation. Celebrity has interest that may be
protected from the unauthorized commercial exploitation of that identity.
Majority rule - property right descendible (some states require lifetime exploitation) (CA/NJ).
Minority rule - privacy right -- dies w/ individual (NY).
How long does ROP last?

Depends on statute/ jurisdiction.
CA = life + 70
VA = Life + 40
Always deal with ROP separately when you represent the client.
Great Ex of using ROP to adv: New Kids on the Blockb/c they rode it as long as they could,
they had over 500 different types of merchandise bore their TM, earning over $500 mil from
name, image, likeness.
A. Theory of Protection
Likelihood of Confusion Frisch Test - 8 prong test to determine whether LOC: re: violation of sec. 43(a)
of Lanham Act (any person who shall use in connection w/ any goods or services any false description
shall be liable by any person who believes he is likely to be damaged by use of such false description)
claim in Heres Johnny case
(1) strength of s mark
(2) relatedness of goods
(3) similarity of marks
(4) evidence of actual confusion
(5) marketing channels used
(6) likely degree of purchaser care
(7) s intent in selecting mark
(8) likelihood of expansion of product lines
Bette Middler case: Ford used someone w/ voice similar to hers, singing song she made famous.
Cali statute refers to celebritys voice, so no claim under this.
Cali C/L extended protection to her, got injunction and $ damages.
RULE: when a distinctive voice of a recognized professional is deliberately imitated in order to sell a
product, the sellers have appropriated what is not theirs and have committed a tort.
Carson v. Heres Johnny Portapotties- Company used his catch phrase (Heres Johnny!! The Worlds
Foremost Comodian) HELD- A celebrity may enjoin use of a phrase associated w/ him (symbolic use),
even if neither his name nor likeness is used. Majority rule applied. RULE: If a phrase has become
associated w/ celebrity, he has property interest in that phrase. ALSO alleged violation of Lanham Act sec
43(a), BUT doesnt survive the LOC test. No unfair competition here; didnt intend to deceive pubic
into believe P was assocd w/ product; no evidence s use of phrase damaged .
Celebrity has a commercial interest that may be protected:

Hirsch v. S.C. Johnson: using ones nickname rather than the actual name doesnt preclude a
cause of action.
Ali v. Playgirl: drawing of Muhammad Ali with caption Mystery Man invaded his ROP
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RJ Reynolds: unauthorized use of distinctive car of well-known race car driver violated his ROP
ROP claim test:

1) s use of s identity
2) Appropriation of s name or likeness to s advantage, commercially or otherwise
3) Lack of consent &
4) Resulting injury.
***BUT ROP not limited to appropriation of name or likeness.
White v. Samsung- Vanna White robot. s ad depicts robot in likeness of Vanna White, posed next to
game board resembling Wheel of Fortunes. White sued on ROP based on symbolic rep. ISSUE: Is there
a LOC here? MAYBE. HELD: Totality of facts here violate s ROP. The robot + the clothes + Wheel of
Fortune backdrop = violation of ROP. All 4 prongs of ROP satisfied!! Parody unsuccessful: this was
not just to be funny, but to also sell VCRs. Its not the individual elemtns, but rather all of them together.
The prongs are not only satisfied, but theyre all satisfied for profit. Also, the other celebs in the
campaign (series of futuristic ads) were being paid.
Wendt v. Host Intl (9th 1997): (Cheers case) : Norm and Cliff characters were sold by Cheers ( owner)
and imitated using animated robots, using different names, speaking to one another, at airport bars.
ISSUE: Does ROP by state trump federal copyright law? YES HELD: Just b/c characters are fictional,
doesnt mean actors lose their ROP. 9th Cir basically said the studios should have put it in the K.
NOTE Part of the reason producers rotate actors (like Batman, James Bond, etc.), is so that none will
claim a right to the character.
B. Limits of Protection
s to ROP:
1) Parody/ Satire - Conjure Up Rule- allowed to use that amount necessary of celebrity to convey
message to public and to identify celebrity); 2) Its the medium, not the message! (a parody
will be more successful when its not to sell a product). Difference btwn parody & knock-ff is the
difference btwn fun & profit. Must be transformative and its better if NOT for profit.
2) 1st Amendment/ political use or arena (most widely asserted ).
3) Editorial/ news
4) License
Comedy III Prods v. Saderup-(3 Stooges Case) shirts w/3 Stooges pics. Asserted 1st Amendment
HELD- All 3 Stooges are dead, but there is still a ROP claim b/c we are in a state that follows the
majority rule. Court uses a balancing test b/t the First Amendment and the ROP based on whether the
work adds significant creative elements so as to be something more than a mere celebrity likeness. Since
this was not a parody and was intended to represent the Three Stooges and got $$$, should have gotten a
license or made it into a transformative value i.e. significant creative elements (w/c exempts it under
the 1st), rather than just being a celebrity likeness, unlawful reproduction. Also, its medium not message:
1st Amendment allows one to say what they want, but it becomes problematic when its put on
merchandise. Ct distinguished b/w single art and reproduced art, like lithographs (art law exception for
single pieces of art). Ct looks to see if there is something new to society present in the art, something of
value that would not have otherwise been there to come under the exception. SHOULD HAVE gotten
a license or made it into a transformative expression, rather than just being a celebrity likeness,
unlawful reproduction b/c it was NOT a parody and WAS ingtended to rep the 3 Stooges & profited.
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Medium, NOT the Message!

HYPO: Dennis Rodmantis doll
Court looks at how item is being exploited, etc.
HELD: merchandising, so probably violates his ROP.
HYPO: Franklin Mint put out commemorative Tiger Woods piece after he won the Masters. Tiger
isnt happy about it. Franklin Mint can argued its a news event (just like putting it in a magazine).
HELD: its merchandize (medium prevailed over the message).
HYPO: Baseball cards
HELD: need permission from players.
Use of public images by news dont need permission.

Public images w/out an article permission needed.
Transformative TestDoes the marketability & economic value derive primarily from the celebrity,
**If Noits okay to allow someone to sell the product
**If YesForget it
v.
Cover ArtEx. Beatles on Rolling Stones Cover If there is no article inside, then u need permission,
but if its an article, then it qualifies as commentary.
Getting into court: for Fedl, bring claim under Lanham Act, or patent.
Exclusive Jurisdiction claims for which the remedy itself comes from a specific federal act.
o Patent
o there are still some state claims that might exist, but for the most part its a federal clalim.
Breach of K not paying royalties state court
19
III. FEDERAL LAW OF INTELLECTUAL PROPERTY
Supplemental Jurisdiction (1367) Fed Ct. can continue to hear the matter even if fed. claim is
dismissed; Court has discretion to hear the state claim. Gives supplemental juris over state claims.
Fed. Cts. can decline if:
(1) the claim raises a novel or complex issue of State law;
(2) the claim substantially predominates over the claim(s) over w/c the USDC has original juris;
(3) the USDC has dismissed all claims over w/c it has orginal juris;
(4) in exceptional circumstances, there are other compelling reasons for declining juris;
Federal Jurisdiction (1338) Gives Fed. ct. original juris over any civil action arising under any Act
of Cong relating to patents, plant variety protection, & TM (USDCs share w/ state courts w/ respect to
TM cases). Gives pendant juris over certain related state actions.
CAFC (Court of Appeals for Federal Circuit) started in the 1980s; hears appeals from USDCs, then
you can go to USSC.
A lot of patent cases are really breach of K claims, but one can always write a K so that it
becomes a patent infringement claim and can be brought in fed cts under fed law.
claims almost always come under fed. law although there are some state C/L claims that can
be brought. If its an infringement claim, its in FED. CT.
1. Trademark Law
TM HISTORY:
Marks have been used to identify for centuries (started w/ jewelers to ID work/craftsmanship), &
systematic legal protection began to take shape in the early 19 th century TM law began as an
infringement branch of the Unfair Competition Passing Off Doctrine.
First TM Statute Act of July 8, 1870, 16 Stat. 198 created few substantive rights providing
instead for registration of marks protected under C/L. Cong amended the Act in 1876 to add
criminal sanctions for infringing federally registered marks. HOWEVER, USSC held entire act
unconst in 1879 stating that it had no relation to Cong power over invention or discovery since TM
is result of continual use as opposed to signal invention.
Lanham Act (July 5, 1946) 1st major substantive step towards federal TM legislation. The
act has since been amended several times. Specifically, the 1988 revisions materially altered the
act in the following ways:
Modified use requirement
Strengthened evidentiary effect of registration certificate
Reduces term of registration
Widens compass of federal unfair competition law
SMs v. TMs:
If you can buy the services/ goods independently from each other, then one use is a SM and one use is a
TM use. (Service must be stuff separate from the subject of the advertising and mark must be used to ID
advertising services, not merely to ID subject of advertising. Example SM: For rock bands to use SM,
header must say in concert or performing tonight)
3 levels of TM Protection (all exist congruently):

**All 3 are based on use in some sort where first to use gets it.**
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1. Federal Statute given to all marks federally registered under the Lanham Act (15 USCA
1052) **Definitions found in 1127 of TM of 1946 (45 of the Lanham Act).
2. State Statute -- used when registered in the state, also (sm) service marks for when dealing w/
a service and is afforded the same protection as
3. State C/L -- symbol used when registered in C/L.
. . . . . . .i.e.
can be used after federal registration is granted (can used on Supplemental Register as well)
can be used when there is a state registration and in C/L use.
(SM) is a service mark for someone who provides a service like a restaurant
and SM are equal legally.
NO (SOL) for TM
Legal steps to follow after choosing a mark:

1. Conduct a TM search to determine if the mark or a similar mark is already in use.
2. If yes to #1, how is the mark being used. If its a distinctive product, it may be okaythis
shows GOOD FAITH if bad faith is proven, then may have to pay profits.
3. Once gets federal registration, has constructive use throughout the entire country so
that is probably the senior user everywhere, unless there is a C/L TM already.
A. Requirements for Protection

Fed USC 1051-1129 (or Lanham Act 1-47)
(1) Use & Use in Commerce

Until 1988 revision, TM ownership and registration in the US turned on the marks use in connection w/
goods or services in the market place. No rights attached unless used in commerce (now ok if bona fide
intent). Use was also a condition precedent to seeking registration
F.I.T.G.T.T. First in time gets the trademark! (Sr. v. Jr.) - TM law based on use; whoever
uses it first can claim ownership but right is not absolute.
Before use mark, must do Thompson & Thompson search to see if its used already.
ITU v. Use (either bona fide or in-commerce, i.e., interstate commerce)
To establish TM ownership, need to est. bona fide use.
Bona Fide Use, in order of importance:
1) quantity & continuity of sale (if need to ask whats enough, then not enough);
2) consumer purchases; (Consumer Eye Test)
3) biz of mark owner;
4) quality control;
5) a distinguishing mark;
6) intent;
7) profit or loss;
8) advertising;
9) test market.
(1) Intent to Use ITU (revisions effective 11/16/89) - after TM Act of 1989, ability to register
mark on an intent to use basis (only federal level; no CL or State law) and applications only good
for 6 mos intervals. So until actually used, have to renew every 6 mos.
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DATE OF FILINGcritical date. App goes to the examiner who declares the description of
goods is too broad, then they send an action letter and has 6 months to respond. If responds
and narrows the description down, then it is available for publication in the official gazette once
approved by examiner. can ultimately, with all the extensions, have up to 4 yrs to make use.
This is important to determine ownership & exclusive righs.
Filing of [ITU] certificate of registration (sets priority date for Sr. v. Jr.; does not start clock of
protection) this gives you senior status!!!
This is for the idea phase of your biz, when it hasnt yet become concrete.
Then you work on 9 bona fide use factors.
3 steps:
1) Comparison for conflicting marks (see USCA 1052).
2) Publication for opposition
3) If no one opposes, then USPTO issues N/O/A.
(2) N/O/A- notice of allowance (starts 1st 6 mos. & starts clock for protection) - look to this to see when
you have to renew application if not using yet.
(3) After N/O/A, given, applicant must file a verified stmt that the mark is in use in commerce w/in 6
mos.
9 factors must be in play w/in 6 mos. If you cant do this, show the office why you havent done
so, and may get renewal based on good cause.
Extensions: (5 of ITU @ 6 mos.- 36 mos. MAX- after 36 MOS have to use it or lose it!
HYPO: using mark only in NJ, but you plan to use it on an interstate basis.
o File an ITU app., w/c sets up a seniority date.
o Retroactive back to whoever was the first to use.
Blue Bell v. Farrah (1975-pre ITU case)- Time Out mark over mens line. Issue- who used 1st & what
constitutes use? HELD 1) FITGTT: Point of TM is to protect consumers in helping them distinguish
marks, and this is determined by consumer exposure, NOT internal sales; 2) Internal use (ie shipping to
salespeople) not dispositive. Key date is time when CUSTOMERS 1st see product w/ TM. CONSUMER
EYE test. Farrah shipped 1st order of Time Out clothes to customersFirst Users
TOKEN USE: Prior to 6/1/88 revision adding INTENT TO USE, the Patent & TM office
offered a safety net by tolerating token usesspare, contrived uses of a mark made for single
purpose of obtaining registration. ABOLISHED by 1988 Revision Act & requ. bona fide use in
ordinary trade of biz. Pg. 214.
Warner v. Empire(ITU in place)- Real Wheels for toy cars. Issue- can someone who used a TM
before an ITU applicant for same TM enjoin ITU applicant from using TM? HELD - No injunction. As
long as an ITU applicants privilege has not expired, ct cant enjoin obliterating the ITU (by enjoining
use) would obliterate the whole purpose of ITU RULE: When an ITU app is still current, it can not be
enjoined, BUT if actual use is pre ITU, then the court can enjoin a junior user. ITUs are allowed to
mature from date of filing. [But if actual use is SR to ITU applicant, ct will enjoin JR ITU applicant.]
Here, was a timing issue in that conflicts check didnt turn up the mark b/c it hadnt been registered yet,
was still pending. Facts: filed an ITU and tried to enjoin it stating it was already in use (though app
was pending and actually filed after s ITU). claims is not bona fide & why should be restricted
when someone based on intent when actual use already exists.
Federal/ State TM Issue: What does one do about the senior C/L user who wouldnt come up in
a search? What if they start expanding their biz from small time to big time? Will they have to
go out of biz like Warner (see above)? NO, instead, and in the name of equity, the senior is
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frozen from expansion. Example: Theres a senior C/L TM in Oregon, but your client doesnt
care b/c he doesnt plan on being there, you file an ITU, then senior expands its business
geographically. Solution: Senior C/L TM can expand during ITU phase, BUT, once your ITU
ripens to actual use, the senior gets frozen to where they are.
Biz Affairs point- 1) File ITU & 2) dont miss extension filings.
Applications that say cancelled, abandoned, not in use doesnt mean its no longer its in use.
TMs last for 20 years, and can be renewed for another 10. The only thing thats abandoned is the
application, but could be using the TM under C/L. REMEMBER, all TM law exists concurrently.
Process for getting a TM:

1. Selection of TM
2. Conflicts search (Thompson & Thompson)
3. Opinion letter
4. Filing
5. Publish for opposition in official gazette
6. Allowance (N/O/A Notice of Allowance. In TM & patent law, the USPTO will write u a letter
saying ur app has been accepted or your appication is allowed/accepted; (made official by
the allowance); actual bona fide use)
7. FOREIGN FILING 6 month limit. If files in Europe, & then someone files here, as long as
has filed here w/in 6 months of foreign filing, has seniority.
15 usc 1052(a)
section 2() of the lanham act

No TM by which the goods of the applicant may be distinguished from the goods of others shall be
refused registration on the principal register on account of its nature UNLESS it consists of a mark that
is
2(a) Scandalousimmoral, deceptive or Scandalous matter (NOTE: this determination is
based not on the general publics impression of the term, but the effect the term has on those
identified or implicated in some recognizable manner by the involved mark) (Redskins case)
2(d) confusingly similarA mark which so resembles that already registered and would either
cause confusion, deception, or mistake. (In Re N.A.D.)
2(e) mark is also not okay if: (catch all)
1. merely descriptive or deceptively misdescriptive (Sunoco/Lovee Lamb) or
2. primarily geographically descriptive or
3. primarily geographically deceptively misdescriptive
4. a surname or
5. only functional
ALL OF THESE W/O 2ND MEANING
2(f)a mark which may cause dilution under 43
Selecting a TM/ (how strong it is too):

Level of Distinctiveness
1. Coined/ fanciful very strong Ex-Hagen daaz Ice Cream
2. Arbitrary very strong Ex. Apple Computers, GAP
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3. Suggestive Strong Ex. Mr. Clean, Coppertone

-- suggests what product may be, but not descriptive of the product
4. Merely Descriptive w/ Secondary Meaning protectible (but problematic area)
5. Descriptive Not protectable w/o 2nd Meaning except on Supp. Register
6. Generic- No protection Keep it an adjective
Rejections: 2(e)
o Deceptive
o Confusingly similar (King Seeley)
o Merely descriptive w/out 2nd meaning describes mark, but not sufficient 2nd meaning by public.
o Deceptively misdescriptive w/out 2nd meaning (In re Budge)
o Geographically deceptive w/out 2nd meaning (Durango case)
o Primarily merely a surname (w/out 2nd meaning) using ones last name on a product.
o Scandalous can be ethnic/ country specific (etc. bimbo, cock)
o Generic
NOTE: Things can fall into the TM graveyard-dont EVER want mark to be a NOUN
NOTE: If gets rejected, can still use the mark, unless is enjoined federally -- then
they will give FFC to other courts -- more problematic w/ state court decisions as
opposed to fed.
Concurrent Registration often to avoid litigation; rare. (In re NAD).

Firing Line idea that those caught in the litigation should determine whether or not they want
to engage in concurrent registration of a mark. (In re NAD).
Ways to renew a TM:

(10 yr renewal term is product of the TM Law Revision Act of 1988; originally the Lanham Act gave 20
yrs of protection).
RULE - if filed on or after 11/16/89 the term for federal protection is 10 yrs w/ 10 yr renewal terms; if
prior to 11/16/89 then 20 yr terms w/ 20 yr renewal dates!
1. Must file 8 statement of continuous use every time you file a 9 renewal form every 10 years.
2. On top of that B.S., you must file an 8 every 6 years.
3. Also, must file 15 incontestability form in year 6. This is notice to TM office and the world that
your TM has 2nd meaning and is incontestable. Presumption that 2nd meaning if have TM for 5
years. Incontestibility re: 2nd meaning or Sr. v. Jr. but you can attack it on Functionality, fraud or
abandonment.
Supplemental Register (federal 109196)Examiner may offer to register your clients TM here
MUST pass 2(f) above, or mark cant register.

Different from ITU, but must have actual use w/o 2nd Meaning yet
After 5 years of being on the Supp Reg, TM is deemed to have acquired secondary
meaningPRIMARY REGISTER
While in Supp Reg, Applicant DOES NOT GET
o Published in official gazette for anyone to oppose it
o To stop importation of goods from other countries (foreign import), AND
o Constructive use throughout the country that you get with Primary.
Can still use the though
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Process for Appealing a TM denial:

1. Have to be rejected by examiner.
2. Go to TTAB (Trademark Trial & Appeals Board or de novo to USDC- if lose go to regular cts).
3. Can appeal to CAFC (Court of Appeals for Fed Circ)
4. Appeal to USSC
TTABhears ex parte claims after examiner refused registration, such as In re cases
Defenses to infringement-
1. Abandonment
Express (notice in paper)
Non-use (after 3 yrs presumption of abandonment/ intent not to resume;)
Lack of QC (quality control) - if mark is licensed out w/t QC provisions, this would be naked
license w/c = abandonment.
Loss of distinctiveness = generic
2. Generic/loss of distinctiveness:
Distinctiveness- mark is distinctive & capable of protection if either
(a) inherently distinctive or
(b) has acquired distinctiveness thru 2nd Meaning.
Licensing A Mark QC:

If you have a party that owns mark, and they license that mark to someone else, they must be aware of
quality control (QC). The licensee must maintain QC over the product, or the license is deemed naked,
w/c is the same as abandonment. Thus, you must periodically receive samples of the product to make sure
the quality is OK.
F.O.M. Family of Marks
(a) Trademarks that distinguish from Goods of Another

King-Seely Thermos: RULE: Once the public confuses a product brand w/ the product itself, it has
begun to lose its distinctiveness & will slowly fade into the TM graveyard. HELD:
Generic. Key question is what public understands when a word is used. If public understands
it to mean a particular brand of product = valid TM. BUT IF PUBLICE TAKES THE
MARK TO BE A WORD THAT DESCRIBES THE TYPE OF PRODUCT IT
REPRESENTSGENERIC & UNENFORCEABLE. This is true no matter what kind of
precautions company takes. Became noun!!! Remedy: can use the word thermos,
subject to justifications. It must use a lower case t; thermos must be preceded by
Aladdin. Thermos is still a registered TM, but has lost a lot of its distinctiveness.
March Madness (1996): a high school team had been using the term since the 1940s. HELD: NCAA can
do this; public identify the term w/ NCAA, not w/ high school team.
Doctrine of Laches: Acquiescence, and also the reson there is no SOL. If acquiesces w/in
generally 3 yrs, is out of luck. Here, school waited too long & cant sue under this doctrine.
(b) Deceptive Matter:

3-part Budge test when trying to register TM (Shapely/Simmons Test):
1) Is the term misdescriptive of character, quality & function, composition or use of the goods?
2) If so, are prospective purchasers likely to believe that the misdescription actually describes
the goods?
3) If so, is the misdescription likely to materially affect the decision to purchase? **most imp.
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If the mark only has the first 2 characteristicsit is ONLY deceptively misdescriptive (the diff
btwn untruths that injure consumers by distorting their purchase & those that have no econ. cons.
In re Budge Manufacturing Co. (Lovee Lamb case)- Company wanted to register Lovee Lamb seat
covers that are synthetic. Holding- Applied 3 part Shapely/Simmons test and found misleading & LOC.
Dont need INTENT to mislead, only LOC.
(c) Confusing Similarity to Prior Marks

In re: NAD, Inc.- NarkoMed and Narco for med products. (Concurrent Regis Issue)
NARCO MEDICAL SERVICES is a regis mark & wants to register NARKOMED. Got permission
from NARCO, whos actually a competitor. HELD-(1) The more sophisticated the consumer the less
dissimilar products must be to be distinct- Sophistication of consumer.TM registration denied only if
LOC in products occur. Docs are users here so no LOC. (2) Firing Line let consumers in firing line
decide whether theres any confusion!
Concurrent Registration Even if earlier filer (TM holder), the board still has to 1) determine
that confusion or deception is NOT likely to result and 2) impose conditions of the concurrent
user relating to mode or place of use of the marks to prevent such confusion.
NOTE: Even if case turned out differently, the companies can come to an agreement not to sue.
NOTE: WATCH FOR THESE ISSUES: CDT (Color Depletion Theory, FOM (Family of
Marks), BTG (Bridge the Gap), ZOE (Zone of Expansion).
(d) Merely Descriptive
Application of Sun Oil- Sunoco was the only one with customer blended gas & wanted to register
Custom Blended mark. HELD- Merely descriptive word cant be registered w/o successful showing of
2nd Meaning.-Sunoco didnt meet this threshold even though used the mark exclusively for 12 yrs,
extensively adv & studies showed public associated customer blend w/ Sunoco.
(e) Primarily Geographically Descriptive

In re: Loews - wanted to register Durango as name for tobacco, though not from Durango, MX.
HELD- Registration denied if name gives false impression as to its place of origin. Peeps can use
geographic names as long as not misleading. 2(e)(2) of Lanham Act re: geographically deceptive.
(a) TYPES OF MARKS - TM & SM v. Certification Marks & Collective Marks:
Service Mark - SM diff from a TM, 1127 definitions, a SM is used in connection w/

advertising to promote a product, only difference is that it distinguishes source or origin of
services, NOT goods. The dispositive question is if you can buy the service w/out the product. If
so, then its a service worthy of a SM--separate & good.
o Quick SM 2-part test:
(1) Service must be sufficiently separate from the subject of the advertising, and
(2) Mark must be used to identify advertising services, not merely to ID subject of
advertising. [ie for rock bands to use SM, header must read In Concert or
Performing 2nite]. See In re: Advertising.
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SERVICEMARK
In re: Advertising Marketing & Development - A&M came up w/ slogan Now Generation and
licensed mark to other service companies. Issue: can A&M register this as a SM? RULE: A SM must ID
the service not merely the subject of the advertising. Thus in adv, the service must be sufficiently
separate from the subject of the advertising. HELD- YES, Since A&M was an advertising company and
they were using the mark for their own promotional services. Biz cards can be accepted as a proper
speciment to receive a SM.
Certification Mark- guarantees the quality of the goods, that it meets certain standards
(examples (U) (K) symbols for kosher). Owner of a mark cannot place mark on his/her
goodsonly use allowed is oon 3rd party goods. Any user of a certification mark who is also the
owner will have it cancelled (1064). Have to allow licensees to pay and use the mark, as long as
it meets the standards. Certification orgs make a lot of $ for providing the license to companies to
put these CertMs on their products. See Midwest Plastic.
Collective Marks- TM or SM used by group to identify membership to a group or a groups

product or services. Think of these as a membership button its not necessarily speaking to
standards but saying that something belongs to the org. BBB & Dairy Farm Org, SAG, AFL all
collective to indicate one belongs to certain orgs. (not signifying any standards are met).
(Certification and collective federal only).
Licensee Estoppel- Licensee is estopped from bringing claims agst the licensor. Once you use a
license you cannot take steps to invalidate a license and you are obligated to honor and protect
license and licensor. Can bring sanctions.
Abandonment
Midwest Plastic Fabricators v. Underwriters Labs, Inc. UL is a cert licensing org that licenses marks
for quality of a hairdryer. wants to cancel using UL, claiming they are not maintaining QC, and the
companies are really testing it. However, the UL license expired even though they continued to use the
mark. RULE: Cant claim abandonment of mark merely b/c you dont want to pay someone for the
license anymore. HELD: ULs licensing of Cert Mark to 3rd parties are not naked licenses and thus not
abandonment of the mark and they retain QC over products to w/c they grant licenses for.
(b) Content of Marks

Qualitex Co. v. Jacobsen- Color can be registered as TM as long as 1) Non-functional & 2) has 2 nd
Meaning. Shapes, sounds and fragrances have previously been able to act as symbols. Ironing board
company wanted to use a Green-Gold board pad as opposed to the normal silver (b/c silver is F)
COUNTERARG to Qualitex Rule: CDT- Color Depreciation Theory - (this is only a theory!!): Grant
someone rights to a color, then you deplete the number of colors out there, b/c there are only a limited
number of colors, so rights to color should not be granted. (Cts think unlikely, though, b/c there are
infinite colors and some colors will only work for certain products, and functionality will curtail any
problems that occur and prevent the anticompetitive consequences of TM for color
FragranceIn Re Clark established that people had come to recognize her as source of the
fragrant goods
Location on Goodsnot ok, since the square piece of fabric on clothes is generally a label that
bears a TM, thus even in light of 2nd meaning, not ok. However, tag on hip pocket as opposed to
being on waistband of trousers, that has acquired 2d Meaning as the Tab even if no other
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distinguishing features is OK since Levi had already obtained registration for color tabs. (Levi
Strauss). Later, Blue Bell was held to have infringed the tab (Levi v. Blue Bell)
Family TMsterm applied to a group of TMs owned by one company in which the same
syllable or syllables recur. There is a reluctance to grant such TM, but when it happens, the mark
is strong and springkling of related uses (think Kodak).
Slogans after much resistance it was decided that certain combination of words can be TM.
Biggest hurdles for a slogan TM is getting past the claim that mark is descriptive.
B. Administrative Procedures - going to the show 283

TM has unlimited duration, b/c 2nd M could go on forever!
5 years of use is generally enough for a slogan to become in use.
Supplemental Register (minor league) - for marks lacking 2nd M or inherent distinctiveness -
really want to be on principal register (the show).
1091-96- after 5 years, you move from Supplemental register to principal register bc a
presumption of acquired 2nd M exists. But someone can dispute that.
can be used on supplemental as well as principal.
When you use the on the supplemental (not when in principal), there is no publication in OG
(official gazette), no constructive notice of use, cannot stop import at customs (can stop import if
on principal register)
Priority
Constructive Notice - (Jr. out, Sr. frozen?????????????????)
Constructive Use (when file ITU applicaiton cant use )- Jr. out, Sr. ok until .
C. Rights & Remedies
RIGHTS of the Public and LIMITS on TM owner
1. Geographic Boundaries
Dawn Donut (1959-Dawn dist donut mix to parts of NY. Hart Food stores began selling Dawn Donuts in
6 adjacent NY counties and Dawn sought injunction on use of name. HELD- Holder of registered TM
may not enjoin anothers use of same name in diff market. Lanham Act, 15 USC 1114 - Registrant may
enjoin only that concurrent use w/c created LOC in public perception as to origin of products in
connection w/ use of products. No expansion likely. Where product markets overlap, jr users use of mark
may be enjoined. Here, 2 markets do not overlap so no injunction. If expanded, Sr may be able to enjoin
Jr. user b/c they had Fed registration w/c gives them whole country. If both TM, then Sr. v. Jr and experts
and LOC come into play.
NOTE: The use by both of these parties was prio to Lanham Act, which meant there was nothing
like constructive notice. The court recog this and it was part of its reason for allowing the Jr. to
continue. Had there been constructive notice, the junior would have had notice and probably
not been allowed.
NOTE: Sometimes, the senior will not win b/c the Jr is already national and the Sr will be frozen
in its area
NOTE: Be careful when sending cease and desist letters in which you threaten to sue, b/c if u
dont sue and time passes, you could lose the claim.
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HYPO: Burger King theres 1 in IL, long before natl Burger King. Senior, state-registered BK isnt
happy about this. Federal one argues it has right over senior. State court agreed w/ national that unless
theres evidence of ZOE (that state BK intends to go natl), you cant block federal BK from coming in.
Court prescribes a 20-mile ZOE for fedl BK. Court essentially freezes the senior mark.
2. Dilution- impairment of TMs strength caused by use of the mark on an unrelated product, use blurring
TMs distinctive character or tarnishing it w/ unsavory association. Test below!
Ringling Bros- Greatest Snow on Earth.
Holding - To claim dilution, must show:
1) s mark was famous (distinctiveness is necessary, but not sufficient);
2) adopted its mark after Ps became famous;
3) s mark diluted Ps by blurring it.
**Ringling Ct says must show ACTUAL INJURY, not likelihood, under 43 of Lanham Act
HOWEVER, most state courts apply the MEAD test, where actual not necessary.
Here, no dilution under fed law.
Actual can only be shown with $$$ damages Utah used the phrase to come to their ski resorts. Ringling
Bros brought dilution claim.
Criticism: If you need actual harm, there might be too much damage by the time you have an
actual claim. Furthermore, this test requires that the junior already be established before senior
can attempt an injuction, since actual harm needs to have occurred first.
NOTE: Be sure to understand distinction btwn federal dilution claim and LOC claim.
D. Limitations on Rights of TM owner

1. Fair Use - competitors are free to use descriptive elements of a TM in a non-tm sense. (i.e. see below)
3 part test to establish fair use: (established in NKOTB case)
1) there is no alternative but to use the mark
2) the % used is no more than needed;
3) there is no suggestion of sponsorship or endorsement.
4 categories of Fair Use under TM:

1) Comparative Advertising- can use as long as accurate and not disparaging (for cts,
message conveyed is not dispositive; message received is what is key)
2) Editorial/ News
3) Parody/ Satire (amuse not confuse) - allowed for fun, not for profit.
4) Collateral Uses (F.S.D. - 1st Sale Doctrine)
Repaired/ used goods (can tell public you fix brand name though you are not a
licensed repair shop by brand company)
Repackaged goods (when buy in bulk and sell in small units, but must ID that they
are repackaged)
Dealership/ replacement parts (can say we fix VWs)
New Kids on the Block- newspaper set up 900# for survey to do story. RULE: A TM holder cant
monopolize the descriptive nature of a product, especially when its in the news context. Furthermore,
Courts do NOT want to tell fans how to spend their $$$. HELD: No TM infringement. Fair use doctrine
(news). NKOTB is descriptive of their product & a registrant cant monopolize use & prevent others from
describing a characteristic of their goods. See above for 3-part test to est. fair use. Its impossible to do
NKOTB survey w/o using their name. As long as newspaper isnt capitalizing on TKs name, its ok,
normative fair use.
Not everyone agrees w/ this case b/c there is a 43(a) concern of false affiliation.
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DOMAIN NAMES
ICANN - intl organization, vehicle for challenging domain names and domain name disputes.
43(d) - for internet marks cybersquatter provision when someone who doesnt own the rights to a
name uses it on the intenet
If the name is adopted in good faith, however, you can keep it or sell it to the company if they
make anb offer.
If in bad faith, could be subject to suit under this section.
Cybersquatting -- 43(d)register a famous domain name and then force the person who it applies to
pay you for it. This is NOT ok unless in good faith, b/c otherwise is like blackmail.
Metatag:Competitor could use competitor marks to direct the search engine to their site, by using
hidden words. The competitor would use competitor mark to redirect consumer in their favor.
ICANInternet naming committee; it is international, and this is where you get your domain name, and
where you dispute things.
REMIEDIES - primarily an injunction in TM law.

1116 Injunction (full or partial) - dont have to est. actual confusion; just LOC (Polaroid test used to
est LOC) Injunction should be given only to exstend necessary to prevent harm or unforeseen harm and
subject to principles of equity good faith/bad faith
1117 (a) Monetary Relief
For s loss
Must show: actual confusion or intentional deception; s profit* (subject to apportionment).
Damages generally can be measure by:
1. Loss of sales/profits caused by infringer use of mark OR
2. Consequent economic injury to TM owner reputation (dilution
Profits earned by can be treated as:

1. Presumptively equivalent to profits lost by and awarded on a compensatory basis (but the burden
shifts here to to show and for it to work, there should be competition shown) OR
2. As unjust enrichment (does NOT require competition) (See Maltina)
BAD FAITH usually need be shown to get profits.
*s profits: Factors of culpability (bad faith/ intentional deception/ unjust enrichment):

1. degree of certainty benefited from unlawful conduct
2. availability and adequacy of other remedies
3. role of effectuating the infringement
4. laches
5. Unclean hands
Bar on Double RecoveryEither Lost Profits or s Profits
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Actual Confusion RequiredSubject to notice under 1111 (innocent infringer defense - if truly
innocent, then can get injunction against them but no $ damages. There must have been NO indication to
that there was a TM, but constructive notice is enough to negate innocent infringer).
Attorneys Fees only in exceptional cases must show:

1. fraud
2. malicious intent by or OR
3. willful/deliberate conduct by
1117 (c) Counterfeit MarksPenalty is more severe

Greater of 3X s damages or s profits PLUS Esq fees, whatever is greater.
See also 18 USC 2320
o First offense for counterfeiting TMs = $2 mil
o Repeat offender = 5 mil + possible prison sentence
Also a statutory option under Lanham Act as to damages
When looking at whether to allow recovering s profits-Ct will look at other Factors
1. Degree of Certainty that benefited from unlawful use of s mark
2. Availability and adequacy of other remedies
3. Role of in effectuating infringement
4. laches
5. unclean hands
1118 -- destruction of infringing articles.

1119 -- Cancel/Restore Mark
1124 Freeze ImportsOnly works for marks on the principal registry doesnt work for
supplemental registry
Criminal Remedies- see 18 USC 2320
REMEDIES
Maltina v. Cawy- one who infringes on anothers TM may be held to account for his profits, even if he
did not divert sales from the mark holder. Holder of copyrights has property interest in mark and
unauthorized use violates that interest even if no sale diverted. FACTS: owned TM on a pruct in Cuba
& US and was kicked out of Cuba for political shit & came to US and tried to use it and register it, but
couldnt get enough money. then tried to register, but was told by USPTO there was too much of a
LOC so no TM, but went ahead & made product anyway. HELD: could not get apportionment b/c
it could not assoc its costs w/ the specific product. Case teaches us whether or not entitled to damages
and what you can get such as lost sales & profits. had a right to an accting discovery to get s
books & records to see what profits were, but injs must come first then only if the injunction is
insufficient to bring about equity an accounting will come about to determine $ damages.
SECONDARY LIABILITY- impt factors!!!!!

Hard Rock- claims s are counterfeiting their mark and desgign on T-shirts which are sold at a flea
market. This case, however, is about 2nd liability. CSI owned flea markets where shirts were
sold...must see if there was a level of control and monetary benefit for contributory infringement.
Willful blindness = must have actual knowledge under Lanham Act (need to est knowledge for
contributory liability).
To establish willful blindness: 1) must have suspected wrongdoing and 2) failed to investigate.
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To est vicarious liability, is liable if it has: 1) right and ability to supervise infringing abilities and 2) a
direct and financial interest in such activities (they have control and they are benefiting).
To est Contributory liability: 1) if manufacturer or distributor intentionally induces another to infringe a
TM or 2) if it continues to supply its product to one whom it knows or has reason to know is engaging in
TM infringement.
Here, USDC only found CSI to be negligent, not willfully blind, so no basis for liability.
E. TM Infringement- key question is whether public is likely to be confused btwn products.

Polaroid factors for LOC (see Drizzle)
1. Strength of markDistinctiveness of mark, or more precisely, its tendency to ID the goods sold
under the mark as emanating from a particular, although possibly anonymous, source (proof of
secondary meaning not necessary)
2. Similarity of the marksclose similarity not dispositive of LOC, have to look at other factors
as well
3. Product proximity/qualityWhere products are sold, how they are advertised, displayed, class
of customers, etc. (same stores i.e. market, price range)
4. Bridging the Gapunlikely that Drizzler will move into the upscale womens coat market
5. Actual confusionnone demonstrated here. Only a factornot necessary. While need not
prove actual confusion in order to prevail, it is certainly proper for the trial judge to infer from the
absence of actual confusion that there was also no LOC. BUT if there is a high level of actual
confusion this could trump the other factors b/c it is such an important factor and is what we
are trying to prevent
6. Good Faithno indication of trying to take a free ride
7. Quality of Product Product is good for reputation
8. Sophistication of buyersBuyers would know the difference, especially when they are
shopping for high-end womens clothing. The greater the value of a product the more careful the
typical consumer can be expected to be.
Pickle-Rite v. Chicago Pickle - Pikle-Rite brought infringement action against Chi-Pickle even though a
visual comparison of labels tend to reveal no similarity. HELD- a similarly named product may infringe
on a TM even if a visual comparison of the labels would tend to reveal no similarity. Key is whether
public will be confused. While visual representations impt, names of products are ultimate identifiers.
Did radio test and sound alike. As shoppers cant always do side-by-side comparisons, LOC judged
singly, not side-by-side. Inj relief geographically limited & ct found no actual confusion, so no $$ dam.
McGregorv. Drizzle- RULE: If no LOC and the products are NOT in competitionNO infringement.
Ct dismissed McGs infringement action against Drizzle on basis that no LOC existed btwN their
noncompeting products. McG- inexpensive golf jacket; Drizzle- fashionable womens raincoat. HELD-
Re: noncompeting products, TM will not occur if no LOC btwn products. Ct applied Polaroid factors,
supra. No LOC.
TRADE DRESS 43(A) ACTION: Federal Unfair Competition Law: Lanham Act sec 43(a):
2 Pesos v. Taco Cabana- whether trade dress of a restaurant may be protected under 43(a) of the
Lanham Act. RULE: Trade Dress is protected under Lanham Act if inherently distinctive W/O 2d
MEANING!!! Taco Cabana () operated fast food restaurants in Texas, claims that trade dress was copied
by in Houston w/similar motif. Both sell same type of food. Discussion of secondary meaning...HELD:
Not a federally registered trade dress, but mere use gives rights, so the question is whether inherently
distinctive w/o 2d meaning suits the threshold.
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Many scholars and cir courts disagreed. Most courts seem to feel that to get protection you need
2d meaning. If youre going to bring a case like this, you want surveys showing 2d meaning to
the public.
Constructive QCCourt said there was QC that existed inherently in the relationship of the 2
parties 2 bros even though they didnt talk had same ideas of quality and service.
43(a) Elements for unregistered marks:

4. false or misleading statements of fact re: Ds prods/ services or that of another
5. likelihood of/ or actual deception of consumer
6. materiality of deception to purchasers decision
7. interstate commerce
8. likelihood of/ actual injury to
A misled consumer cant bring a 43(a) action no standing. The competitor must bring the claim.
Dilution claim 43(c)
Cybersquatting - 43(d)
Defenses for TM Infringement:

Functionality
Generic
Lack of distinctiveness (should never have gotten )
Abandonment (lack of QC (naked license), expressly abandoned, 3 year presumption = actual
abandonment)
Parody / Satire
Not w/in ZOE/ not likely to BTG
Fair Use (newsworthy / editorial use)
Licensed
Sr. v. Jr.
No LOC or LOD
Innocent infringer (no reference that this was a )
Merely descriptive w/o 2nd meaning
Fraud in registration (false use, date, etc)
TM misuse
Collateral Use (ex. repair shop that repairs Hoover vacuums)
FSDFirst Sale Doctrine (once sale is made, if someone wants to resell product, can use mark)
Comparative Advertising
SOLestoppel doctrine of laches and acquiescence (SOL for doesnt exist under Lanham Act,
some state law is around 3 years and may be applied by federal cts, but they dont have to)
Unclean handsmisleading someone into believing that you have rights in something you dont,
using when not federally registered, generally misrepresentation or misleading someone to gain
an advantage; Ps promise to grant D license and then it never actually realizes and D relies on
grant to license to its detriment)
Violation of antitrust laws
Good faith
33
III. Copyright
A. Requirements for Protection
17 USC 101-803; 1001-1010
HISTORYC/L predominant law until the first fed law act which was modeled after the Statute
of Anne, in 5/31/1790, & last comprehensive re ision was signed into lawon 10/19/1976. 28 yrs later, the
Digital Millenium Act, on 10/28/98 sought to move law w/ the advancements in technology. However,
while act was est in 1790, up until the 1976 revision, was almost entirely the province of state C/L.
Pre 1976The Interplay of Fed & C/L Protectionbegins at moment of works creation ending
only upon publication w/ the authority of owner. Thus, this was the exclusive protection for
unpublished works. After publication, fed. protection took over if proper notice appeared on ALL
publicly distributed copies, if NO notice, then work fell into public domain.
POST 1976eliminated C/L law for most purposes and made Fed Law attach at first fixation in
tangible form. However, elements of C/L remained, b/c works to the province of the state, such as
choreography (not filmed or notated, conversations, speeches, live broadcast & improvised musical
compositions). (Basically, Primarily Federal Law, though still some state / CL protection exists for
unfixed works, like unrecorded speeches that arent written or recorded w/authority of speaker giving a
speech, improvised music)
Berne Conventionjoined in March 1, 1989largest effect of this being the elimination of the
notice requirement, so after the above date, notice is optional.
NOTE: Very date and fact sensitive

No SR. v. JR. here - as long as one didnt copy from the other, can have two on nearly
identical works
I. FORMALITIES REQUIRED FOR PROTECTION:

a. Notice
Original works of authorship fixed in any tangible medium of expression are protected and
include 1) literary works 2) musical works, including accompanying words 3) dramatic works,
including any accompanying music, 4) pantomimes and choreography, 5) pictorial, graphic and
sculptural work, 6) motion pics and other audiovisual, 7) sound recordings NOT protected until
1972) and 8) architectural works (see 17 USC 102, Subject Matter of )
UNFIXED WORK (what is it?): Anything live that has not been recorded before or on sheet
music, choreography that has not been notated yet. The law protects original works of
authorship, a photograph, music, and under the constitution, it is all writing. MOST WORKS
ARE FIXED!!
1909 Act (all works created before 1/1/78)

Formalities: notice, Registration / Renewal, initial term of 28 years (needed to register to get
extended term)
Publication w/proper notice or registration = divest state, invest fed - means once you have
fed copyright claim, no state claim.
Works protected originally under this Act are still subject to this Act.
34
o If a work was published w/o proper notice, it entered public domain and lost
protection.
o If its a work that has not been published register to get to divest self of state &
invest self w/ fed protection. As soon as either of these are done, 28 yr clock starts.
Under this act you get initial protection of 28 years and for more protection, you have to be
registered and file the renewal form.
o Can get an extension of 28 yrs
o A that was still valid as of 1/178 could get another 19 yrs
o In 1998 law passed allowing for another 20 yrs.
o SO 28 + 28 + 19 + 20 is the max if published pre 1/1/78
REQUIREMENTS TO ESTABLISH NOTICE: You need....

The word Copyright or symbol and year of 1st publication 2002
Name of author John Kettle
All Rights Reserved All Rights reserved
NOTE: Need to have all rts res b/c of countries that dont follow US rules / Berne
Convention)
NOTE: You want to register each song on a CD individually, so you can have u t o 20 different
infringements as opposed to one.
1976 Act: (Effective 1/1/78)

Notice OPTIONAL for post 3/1/89 for works on or after that date Works after this date do
not REQUIRE notice, BUT should still have it b/c w/o it an infringer can use the
innocent infringer defense, though anything fixed after effective date is automatically . On
3/1/89 US joined Berne Convention so had to loosen up on formalities.
Registration is needed to sue, get statutory damages & atty fees Exception is
publication and members of Berne Convention countries looking to sue in US)
o Must register work w/in 90 days of date of publication or prior to infringement;
otherwise no option for atty fees or statutory damages; can only get actual damages and
registration is deemed effective upon receipt in office.
Proper notice reqd still for works either registered or published btwn 1/1/78 and 3/1/89,
however now have ability to cure defective notice for pre 3/1/89 works (see Hasbro case)
5 year window from publication for registration (after 5 years becomes prima facie
evidence that you are the author of the work in claim).
DURATION:
o Individuals Life (last surviving author) + 50 + 20
o Anonymous, corp author, pseudonym, etc earlier of 95 yrs from publication or 120
from creation of work
407 Mandatory Deposit reqmt for any works published, you are reqd to deposit a copy
w/ Library of Congress. You can get fined if you dont deposit, but you wont lose ur . It
doesnt make sense not to deposit when you register. Theres a box applicant can check on
the form Congress oddly enough isnt required to maintain this work in their archives,
however, b/c they would run out of space. You can pay an extra fee for long time storage but
this is no longer a permanent archive.
NOTE: pre-1978 works that were unpublished, created, fixed, you could leave unpubloished,
and would not require notice, b/c since yet to be published were swept under the new law
35
and no longer required notice. The clock only pays attn if you registered and anything that
had yet to be published pre 1978 and is published post automatically vests.
BOTTOM LINE You dont have to register to get protection, BUT you must register to
sue!!
The Dates in a NUTshell:

1909 Act pre this act, work falls into public domain w/o notice, begins to relax requs post 1909 Act.
1976 Act (effective 1/1/1978) eased formalities a bit more, by allowing for more generous excuses and
errors. Then the Berne Convention wiped notice requ out completely, effective March 1, 1989
NOTICE ISSUES:
Pre 1978something was put out w/o notice, it fell into public domain, w/ very little leeway, b/c treated
under 1909 Act
Post 1978 & pre 3/891976 Act governs, requiring notice w/ some leniency
Post 3/89 need notice in one form or another.
RENEWAL ISSUES
Pre 1964 you had to file a FORM RE (renewal form), so even if published with proper notice, still
need to file or will fall into public domain.
POST 1964you did not have to file FORM RE, but you still should, b/c need to be registered to sue.
Omission of copyright notice

Hasbro v. Sparkle (1985)- is American toy manufacturer, was assigned on Transformer toys made in
Asia by Takara. Sparkle (also US company) had copied toys made in Japan where formalities are not
required. Under 1976 Act, this work was fixed b/f 3/1/89, so still needed notice. ISSUE - whether the
designs fell into public domain or whether P could cure the defect of omitted notice in the US. HELD -
Omission of notice may be cured. as copyright holder could cure omission. RULE: Under 405(a)
(2), to cure a defect, (1) have to make reasonable effort to distribute notice in US after defect discovered
(2) w/in 5 years of original publication of work and (3) must register it to cure defect. Applies to ALL
omissions, not just accidental ones.
NOTE: Need to cure issue is now mooted for the most part b/c of Berne (need to cure wouldnt
exist past 1994) but anything pre-89 still needs notice.
Publication
Look to 101 of Copyright Act for definition
o distribution of copies and
o phonorecords (p) (works where there are sound recordings only, no visuals, are (p))
Creation = protection, Distribution = right to sue!
b. Registration & Deposit:

Registration needed in order to sue (exception is publication and members of Berne
Convention countries looking to sue in US) and to get statutory damages (inc attys fees)...
have 90 days to register from date of publication, otherwise no option for atty fees or
statutory damages, only can get actual damages.
Registration deemed effective upon receipt in office.
407 deposit requirementfor any works published, you are required to deposit a copy w/the
Library of Congress.
2. Statutory Subject Matter:
36
To be copyrightable, must be
(1) Original work of authorship (no novelty, ingenuity or aesthetic merit needed; see also #3
Originality) &
(2) Fixed in a tangible medium of expression for more than a transitory period of time (ie- if there is
authorized embodiment in a copy or phonorecord & if that embodiment is sufficiently permanent
or stable to permit work to be perceived, reproduced or otherwise communicated for a period of
more than transitory duration. Copies & phonorecords will comprise all of the material objects in
w/c copyrightable works are capable of being fixed.
17 USC 102(a) = able works

(b) = non- works
What is Copyrightable? (See 102(a)) - original works of authorship.

101 defines literary works, pictorial, graphic and sculptural works, motion pictures and
audiovisual works, and sound recordings. 101, musical works, dramatic works, and
pantomime and choreographic works are as well.
SAC - selection, arrangement, coordination can a recipe book, but not an individual
recipe (that would be protected by )
102(a) - 101 + architecture. Lists some works that are protected by , in addition to ones
defined by 101 (musical works, dramatic works, pantomime and choreographic works).
State and county govts can be authors of work.
What is not ? (See 102(b))

Names, titles, slogans (these are protected by )
Ideas, plans, methods, systems or devices
Blank forms (Blank form Doctrine)
Works consisting entirely of info that is common property w/no orig authorship
Typeface as typeface
Obscene material
Works of authorship by US Government (but govt can be owners)
If there is only one way, or a limited number of ways of expressing idea, cannot .
Forms:
PAPerforming Arts (for musical compositions, c in the circle, also for movies, DVDs, b/c this
is an audio visual work. AS SOON AS VISUAL IS ON SOMETHING, IT IS PA, even if
primarily a CD w/ an audio visual componentalso video games.)
VA Visual Art 3D, Paintings, sculptures, pics & drawings)
SRSound Recording - for audio cassettes, cds, records, PURELY JUST FOR SOUND, unless
you are the sole owner of the sound and the musical compositionMUST BE SAME AUTHOR
RE Renewal Form
TXTextual Work - for books, mags, software codes, etc.
SESeries registrations - for newspapers, magazines
GRPGroup Registration newspapers
***If sole author of song and sound recording, can do SR form for both. Filing fee is $30
What is copyrightable?
Baker v. Selden(1979) Selden a book explaining and exhibiting a book-keeping system (T accts),
Baker is reproducing a portion of the books forms related to the system. ISSUE- whether system is as
37
well as book (b/f inception of 102(b)). HELD- a protects only the authors unique explanation but
does not bar others from using the system or forms incidental to such use. To give protection to forms
or system would be to give patent protection w/o a showing of novelty. Anything that is deemed F or
part of system is not expression. based on originality & protects explanation not system. BLANK
FORM IS NOT able!!-->Blank Form Doctrine RULE: Forms are F and thus not protecible
How Long for Protection of Copyright?
1909 Act:
28 Initial term
28 Renewal - file form RE (except 1964 - 12/8/77, then got automatic renewal); must file in year 28
itself.
19 Bonus if still valid on 1/1/78 when new Act effective
20 (Sonny Bono extension if valid on 10/27/98 - this is b/f Sup Ct now)
95 years max
RULE: Anything before 1/1/22, gets 56 yrs protection.

RULE: Anything after 12/31/21 gets the bonus.
RULE: If still valid on/after 10/27/98, then you get the Sonny Bono bonus!
1909 to 12/31/21- initial term of 28 years. 1 renewal term of 28 years= 56 years of ability.
Falls into PD (public domain).
after 1/1/22 - 10/26/23 (56 year protection gets you to 1/1/78) and then get 19 year bonus. 75
years protection before falls into PD.
after 10/27/23 - 12/31/77 (56 years protection + 19 year bonus) and Sonny Bono 20 years = 95
year total.
RECAPTURE versus TERMINATION OF GRANTS/LICENSES

Any grant/license that gives a can be terminated and you can get it back. This is even if you give an
indefinite grant or a 100 year grant. A licensee can maintain right to sell or exploit what has been
lawfully made, but author gets back the right to give permission for future reproductions, derivatives, etc.
Exclusive Rightsrequirement that transfer be signed and in writing.

Non-Exclusive Right need not be in writing.
General Problem203 is based on the premise that the reversionary provisions of the present section
on renewal should be eliminated, & should be substituted w/ a provision safeguarding authors due to
the unequal bargaining position of authors, b/c it is hard to know a works worth until it is exploited.
17 USC 203 TERMINATION

(distinguishes btwn date termination is effective and date notice is served)
Conditions for Termination applies to any work that is 1) not a WMFH and 2) was created on or
after 1/1/78
(1) Termination may be executed by the author and if dead (see clause 2) and if multiple
authors, a majority is required.
(2) Lists who has a right to terminate if author is dead.
(3) Termination may be effected at any time during a 5 yr period beginning for 1) NO
PUBLICATION RIGHTS at the end of 35 yrs from the date of execution of the grant,
38
OR 2) PUBLICATION RIGHTS period begins at the end of 35 yrs from the date of
publication of the work under the grant, or at the end of 40 yrs from the date of execution,
whichever happens first.
(4) Termination needs ADVANCE NOTICE in writing which should include 1) the
effective date which should fall in 5 yr period, AND 2) the notice should be served not
less than 2 or more than 10 yrs before that date chosen as effective date AND 3) copy of
notice shall be recorded in office before the effective date of termination.
SUMMARY under 203:

Entered into on or after 1/1/78 WITH NO PUBLICATION RIGHTS
o Window starts 35 yrs after the grant was given
o 35 yrs after the grant the 5 yr window opens up and you can terminate want to select a
date at the earliest point possible in the window
o Must give at least 2 yrs prior notic ef the termination date
o Cannot give notice more than 10 yrs prior to termination date
o BUT it makes more sense to give the min notice so that the license holder has a small
window to use their rights
Entered into on or after 1/1/78 WITH PUBLICATION RIGHTS
o Termination window opens the earlier of 35 yrs after publication OR 40 yrs after grant
o Under 203 the earliest this window will open up is 2013
o DERIVATIVE WORKS may continue after termination according to initial K but NO

NEW derivative work may be prepared (see 203 (b) (1)
SUMMARY under 304: RECAPTURE-this is for pre 1978

For all licenses & grants based upon recapture date of when you have to extend
o The 19 yr & 20 yr extensions that were added to older s after the 1976 act are
recapture opps
19 yr bonus is for any that was valid on 1/1/78
Any made after 1922 and before 1/1/78 can fit into this category
o At the end of the first 56 year period. 75 year period and 95 year period
the 5 year recapture window opens up
You must do the same things as above 2 yrs notice, etc, and you can recapture
BUT if you dont do this, the window opens up again 19 yrs later and then
again 20 yrs after that so the recapture window opens
o So right now, any works from 1945still a window of opportunity
1945 + 56 years = 2001 so the window opened in 2001 and closes in 2006 so
as of 2004, we can still give 2 yrs notice
o For works created 1/1/78
Corporation: 75 years after publication
Individual: Life + 50 years after death
o The important date is when the license was entered into
For 203 the license/grant date determines the dates
For 304 it is when the recapture window opens up based on when the was
entered into, so you look for the earlier of the two.
***Extensions held by corporations or publishers are subject to recapture by author or authors

estate...benefit intended by Congress for author / authors family.
39
1st time you can recapture is after 56th year, in other words year 57 (after the 1st renewal). This is a
5 year recapture window (starting at beginning of year 57 ending last day of year 61). Must give
notice of no less than 2 yrs & no more than 10 yrs from the day you want to recapture work.
2nd time you can recapture is after the 75th year, or year 76. This is a 5 year recapture window
(starting at year at beginning of year 76 ending last day of year 80). Must give notice of no less
than 2 years and no more than 10 years from the day you want to recapture the work.
ABEND RULE (Rear Window case) - If author dies in 1st 28 years, before renewal is filed,
copyright automatically goes back to estate and no notice is reqd.
o Applies ONLY when author dies w/in first 28 yrs OR prior to renewal file.
o If renewal file before death, rule does NOT apply.
o What if author dies during first 28 yrs under the 56 year period under the 1909 law?
Any and all grants end automatically if person dies w/in 1 st 28 yrs and the
license ends (Like Rear Window, so can buy rights from trustee if renewal did
not occur)
It is automatic that the rights come back to the estate
This is only for s prior to 1/1/78 under the 1909 Act only for works that
were registered or published under the old act.
Summary of Terms and Concerns for Particular Types of Work

1. More than 1 author Where 2 or more authors prepare a joint work, the will last life of last
surviving + 70 (see 302(b))
2. Author unknown (any work including WMFH) or corpapproximate authors life & add 70 years
(so either 95 from first publication or 120 from yr of creationwhichever expires first (see 302(c))
3. how does one determine should report whether author dead or alive b/c prospective user, after
either 95 yrs from publication or 120 yrs from creation, may obtain report and if nothing on life or death
in last 70 yrs, presumption created that author has been dead for at least 70 yrs - good faith to
infringement. (see 302 (e))
4. Works created before 1/1/78 1. in their first term on 1/1/78 retains previous 28 yr term, &
allows renewal but extends renewal period to 67 yrs, effectively creating a total of 95 yrs from publication
(304(a)) 2) for works already in their renewal term automatic extension of 95 yrs from date
secured (304(b))
5. Works not under statutory before 1978 (unpubl)enjoy same rights as if created after 1/1/78 and
will not expire before 2002, but if published will extend to 12/31/47. see 303
1909 1976 Berne?

28 + 28 (requ refilling LIFE + 50 + 20 (individuals) or
appropriately) + 19 (automatic 100 ) 20 (corps, pseudonyms,
renewal of a valid + 20 anonymous
(another automatic renewal)
SEE BELOW
Unregistered & Unpublished Works
All unregistered and unpublished works created under the 1909 Act are guaranteed protection
until the year 2003 as they are given life + 70 if a person. If you publish before 2003, you get a
45-year bonus tacked on.
95 + 20 if a corporation.
1976 Act (effective 1/1/78):

If an individual, you get Life + 50 (+ 20 Sonny Bono 10/27/98); essentially life + 70.
40
Corp / commissioned for work for hire / anonymous or pseudonym

75 + (20 SB) = 95 yrs from publication
OR 100 + (20 SB) = 120 yrs from creation
****Both are first to arrive; if you publish more than 25 years after work was created, then you
would get the 120; otherwise, always get the 95 from publication.
RECAPTURE
5-year window starts in the 51st year after the authors death.
Need 2-10 year notice.
PUBLIC ACCESS PROVISIONS: in Act...gives uses for the public that are free of charge.
RULE: If grant is only for reproduction rights, 5-year recapture window starts 35 years after the
grant was given, for any grants entered after 1/1/78 (effective date of 1976 Act).
Example: on 1/1/78 50 year grant given for rights to film. Starts 35 years after 1/1/78.
Example: Grant entered into 1980, then 2015 is when clock starts ticking.
Termination of Post 1/1/78 Grants of Copyright 106 Bundle of Rights

Need to have right of distribution in order to have publication rights.
If no grant of publication rights, you have 35 yrs to terminate the distribution grant.
If granted publication rights, can terminate on the earlier of 35 years after publication or 40 years
after the grant.
DOCTRINES:
Blank Form Doctrine: Fill-in-the-blank forms are often not . LOGOS on the forms
might be.
Merger Doctrine: If the idea for something and the way that the idea is expressed is
limited in the number of ways that it can be expressed then it is not protectable.
Unlawful Content: If the content of the writing/work is unlawful i.e. kiddie porn) then it
will not be able
US Govt Works: anything authored by the US Govt (fed only) is not able, BUT the
govt can own copyrights if they are authored by someone else and then sold to the govt,
it is protectable.
Characters: to what degree are characters able? To the degree that the story is about
them such that theyve stopped being stock characters. Not dependent on the actors, but
on the characteristics of the characters themselves (e.g. James Bond) but its often hard to
distinguish the actor from the actor.
3. Originality
Original authorship is a work that is fixed in a tangible medium of expression for more than a transitory
period of time.
SAC v. SOB:
(Selection Arrangement Coordination of facts / material v. Sweat Of the Brow) - SOB no longer rule
need original work of authorship- SAC).
SAC - need to be original/ creative to be able.
SOB (old rule) - not enough to be creative/ original, if theyre facts, must be creatively
compiled.
41
Research v. SAC:
With research, the mere gathering itself entitles no ...once the work is out there, someone can come
along and take advantage of that effort.
Bleistein v. Donaldson - Lithographs made to advertise a circus copied.

ISSUE- whether an advertisement could be deemed an original work of authorship to get protection.
RULE: Just b/c something is F DOES NOT mean there are not original and components.
HELD- Ads were deemed to have a functional purpose. Not precluded from just b/c they served such a
purpose b/c there was still expression that was capable of protection. ADS ARE COPYRIGHTABLE!
Practical Note: Always carry a separate notice, b/c under the rule, if you have a publication,
the inside the cover will protect everything between the front and back cover.
SOB v. SAC: Prior to Feist, if an author put a lot of work into something, even if not creative energy,
you were protected under this doctrine. Sometimes people will put in fake info to make sure that they
will know if someone copies. FEIST eliminated SOB Doctrine New Rule focuses on SACMust
show some creativity to get protection.
SAC (Selection, Arrangement, Coordination)

Feist Publications v. Rural Territory - Feist asked all phone companies in area if they could use the
listings in other phone books & entered into agreements w/all but Rural. F used Rs listings w/o Rs
consent (b/c they wouldnt be able to publish the book w/o these listing)
Holding- SOB is no longer the rule...have to establish an original work of authorship and a modicum of
creativity to get . This is not an original work of authorship b/c there was no creativity here in the
compilation of the facts, and no one can facts. Eliminated sweat of the brow.
***Could have protection for a phone book or directory as long as there is some creativity in the SAC,
and not just an alphabetical listing of facts. Also, a newspaper could be protected b/c of SAC, but not
the facts themselves.
So, someone who scribbles for 2 secs is protected, but the person who spent all this time putting
together the white pages does not have the same protectable right.
Just b/c you have a notice doesnt mean its able
Cases that follow Feist said not all directories are in the public domain, b/c many wanted to hang
onto SOB concept. The case was directory of Chinese restaurant in NY & the list was only ones
that the author deemed would still be in biz 5 yrs from date of publication. This was deemed to
be enough mental thought, so the person who tried to copy was deemed an infringer.
B. Ownership
Authorship v. Ownership - first owner of a work can transfer ownership. It must be an express transfer in
writing, unless intestate, and it can be transferred orally but only for nonexclusive licenses and cant be on
the phone.
Creator/author has to get middle person to exploit the work and if youre dealing w/ someone and
they say theyre the owner, u need to see documentation, you are only the owner automatically if
ALSO the author.
17 USC 201
(a) basica and well est. principles of law
42
that the source of the ownership is the author of the work AND
in a case of joint work, the co-authors are likewise co-owners of the
(b) Basic principle of present law

In the case of works for hire the employer is considered the author of the work and
is regarded as the intial owner of the unless otherwise agreed.
17 USC 101
Joint definedauthors who collaborate w/ each other or prepare contribution w/ the knowledge and
intention that it would be merged w/ the contributions of other authors as inseparable or
interdependent parts of a unitary whole (to be distinguished from collective works in which the
work is separate and independent)
Work Made for Hire1) Work prepared by an employee w/in the scope of his or her employment or
a 2) 1) work ordered or commissioned for use as a contribution to a collective work, 2) as part of a motion
picture or other audiovisual work, 3) as a transalation, 4) as a supplementary work, 5) as a compilation 6)
instructional text, 7) a test, 8) answer material for a test or 9) an atlas. ALL IF AGREED IN WRITING
WMFH (Work Made For Hire)

Can get ownership thru WMFH.
Can commission another to do work for you. Employer considered author and owner of
copyright unless another agreement.
WMFH definition - employees that create works
(1) w/in the scope of their employment, or a work specially ordered or commissioned for
use (9 categories in 101 Act) &
(2) need INTENT that it was WMFH (has to be in writing and signed by both parties).
TEST for w/in scope of employmentif what you are paying the independent Ker for will
become part of larger work, then it will probably fit into one of the 101 categories (ex.
individual photo not included, but if its becoming part of collection, then it is).
What happens when writing is signed after the work is started (is there intent)? Doesnt
matter, as long as the agreement is signed by both parties and the intent was present at the
start, it is sufficient even if signed after.
Can use a catchall phrase in an agreement - to the extent that the work doesnt qualify as
a WMFH, all rights of are hereby transferred
Better position is to be the author, not the owner.
o Author is the first owner of a work.
Assignment of - Owner of a work doesnt have to be an author; there can be an exclusive
licensee, it can be sold or donated, but must have an express transfer (in writing).
Recapture ownership--Authors who sell ownership can get it back despite what is in the K
at a certain point in time.
1. Works for Hire (EXCEPTION to 201(a)) & Joint Works (Co-Authorship)

Community for Creative Non-Violence v. Reid (1989)- Both parties contesting ownership of of
sculpture that CCNV asked Reid to create for them (no written agreement). CCNV wanted to take
sculpture on tour, R said no b/c he is the owner and therefore can prevent them from taking it on tour.
43
CCNV said that this was a work created by an employee w/in scope of his employment. R was given
money for his supplies but his services were free. He added addl steel grate and pedestal to work.
RULE: To be a WMFH, must either be 1) Employee w/in scope of employement OR 2) independent K,
signed agreement stating WMFH AND must fit w/in 9 categories in 101. HELD- here there was not
enough actual control to make R an employee under C/L agency theory. Employee means wherein one
party performs labor for another under circumstances in w/c that other exerts substantial control over the
work environment on the laborer, as well as the manner of performance. Not a WMFH b/c R was an
independent Ker and since this sculpture doesnt satisfy the requirements of 101(2), this is not a
WMFH, so R owns the . (Sculpture not in one of 9 categories). Also, CCNV tried to argue co-
authorship but none here b/c no intent by R to be co-authors and each part must be independently able,
w/c was not the case here (CCNV contributed the base - Ct held this to be F, not an original work of
authorship). NOTE: Parties reached agreement after case and was author w/ ltd rights to tour.
Co-Authorship Issues:
Majority rule To be joint authors, must be
o (1) Intent (btwn BOTH, so put it in writing) &
o (2) each contribution must be separately able (Copyrightable Test) - Goldsteins test.
o POLICYreduces suits for co-authorship
Minority rule intent & final work able (De Minimis Standard)
***(Merely putting money behind a project is not enough to be a co-author)
POLICYallows middle man/$ man to be deemed joint author so its argued society
is more enriched by this arrangement.
Joint Works & Majority Rule - Erickson v. Trinity Woman started Theater Company and she claims
she wrote 3 plays, when she was writing them, she had various interactions w/ the actors and she would
get suggestions. The theater company was claiming that they were joint authors and you cant infringe ur
own work. Shes seeking to enjoin theatre company from performing the 3 plays and using 2 videotapes
to w/c she owned the . claims she is the sole author. HELD - statute requires that there be intent in
order to have a joint work. Also, Court looks at 2 testsde minimis standard & copyrightability test &
adopts the ability test. The 2 contributions werent able by themselves. HOWEVER, w/ intent, if
contributor w/ majority of % says intent, courts are more likely to agree b/c thats the person who should
be arguing against intent. Best way to establish intent is a written collaboration agreement ( none here).
*If not clear as to intent, courts will look to who contributed a majority of the work (here, contributed
98% of the work).
Joint Works can help expand Protection: The old term for protection is 95 yrs, BUT new
act for individuals is LIFE + 70, so someones life is critical now. BUT if work is WMFH, it
doesnt deal with life. And in GROUP WORKS, the last to die is the measuring stick.
2. Transfer & Term

Transfer: 201 / 204
If not an author, can get ownership thru written transfer.
Not required to record ownership, but its better off in case the author attempts to make
subsequent transfers
Transfer - 201(c)
NYT Company v. Tasani - Case concerns rights of freelance authors and a presumptive privilege of their
publishers (201(c))... articles were put into databases w/o authors consent, but w/publishers.
Allegations of infringement b/c articles were included in databases not w/in the privilege of
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reproduction and distribution under 201(c). HELD- Separate in Collective work/ SAC from the of
each individual article. Since the database is not reproducing as part of original or revision, the
publishers s do not supersede the authors sAUTHORS WIN. The authors works were not
WMFH b/c the authors not employees but freelancers and no K or intent to be employees. Authors ed
their own articles and the Times ed the compilation. Thus the Times has right to print and distribute
under 201(c), not to sublease w/out permission. NYT can only reproduce revision, not ind articles in their
ind capacities. Even though Times sold all articles, the ind articles come up on database w/out context of
original newspaper, so newspaper would have had to include this in a K in order to sell. DISSENTNo
reason collective works standing along cant be viewed as revision and not be seen as issue.
C. Rights & Remedies

1. Rights
Subject to the Limitations 107-122 (Limitations on 106), the owner of a has the exclusive rights
to do and to authorize any of the following:
a. Statutory Rights- 106 Bundle of Rights

1. Reproductions (can control who makes copies)
2. Derivative (can control who makes works derived from original; 101- any form in w/c a work
may be recast, transformed or adapted.)
o A work based upon a preexisting work such as a translation, musical arrangement,
dramatization, fictionaliziation, motion picture version, abridgement, condensation,
fictionalization, motion pic version, abridgement, condensation, or any other form in
which a work may be recast, transformed, or adapted.
o In a derivative work, new material added may be protected; the underlying work is still
protected and cannot be used.
o If there is a significant amt of original work, then it may be considered a separate work
that is protectable. Transformative Reinterpretation: taking an original work, and
changing it in a new way that no one else has done. To be encouraged
3. Distribution
4. Public performance
o Excludes pictorial, graphic, structural, and architectural
o Performance is public when:
At a place open to the public at a place where a substantial number of people
outside of the normal family and social acquaintances are gathered
If it is transmitted to the public through any device, regardless of whether the
public receives it at the same or different times and places.
5. Public display
o In collective works, cannot show individual images non-sequentially
o Public is the same definition as under public performance
6. Digital audio transmission of (p) sound recordings (new right, comes from Internet)
o Applies to sound recordings of record company for the eactual fixation of music to a
tangible form
o Given to the record owner for the actual fixation of the music in record form. Need
permission from the owner
o Has the right to reproduce, distribute, etc, but NOT public performance
o EXCEPTION: If a web-site plays the music on the Internet, they must pay royalties to
the record company.
Once sale of is made, not all of the 106 rights apply anymore.
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109 F.S.D. (First Sale Doctrine) - limitation on what owner can do; no longer can the owner
control the sale of the item once is it initially sold. The right of sale now goes to the person who bought it
from owner.
Music - This does not allow you to rent, lease or loan phonorecords (music industry lobbied
Congress for this regulation), but you can rent & loan movies.
Computer software - Can make an archival copy for personal use, but cant rent or lease
software (same as phonorecords)
Generally allows you to make a copy for private home use, to distribute to a certain extent,
but still no right to public performance (Example of radio...the station has to get a license
from a rights society to play music on air).
DERIVATIVE WORK- Mirage Editions v. Albuquerque (9th Circ- 1988) - Mirage owners of prints.
Alb commercially engaged in transferring prints from book onto ceramic tile. RULE: Derivative is
defined broadly and FSD will not protect u from using bought work derivatively. HELD Cant transfer
ed work onto other surfaces w/out authorization. (106). 101 defines derivative work broadly. Became
original works of authorship? They were protected derivative works. FSD doesnt work either. FSD
allows vendee to resell w/out permission.
DERIVATIVE WORK- Lee v. Art Company (7th Circ 1997)- Lees note cards mounted on tiles in
bathroom. RULE: Mounting pics on Tiles is NOT derivative according to 7th Cir, b/c didnt do anything
and is comparable to reframing a pic. HELD 7th Cir found that these were NOT derivative works and
disagreed w/ 9th Cir in Mirage (not original works of authorship). Not an art reproduction, works not
recast, adapted or transformed. Also, note cards are not works of visual art under 106A. (used switch pix
frame analogyif you can remount pics in framesits not a derivative work, otherwise museums will
be accused of unauthorized derivative works)
VIDEO EXHIBITION- Columbia Pix v. Redd Horne - Redd, a video rental outlet proprietor, also
exhibited videos to public w/out authorization (in video booths). Problem is not the rental, but the public
performance. RULE: Video exhibition on video store considered public perf which is NOT a right
given under FSD. HELD Under POS, you can display what you are selling, but here they were
allowing someone to pick a movie and go into a private booth. This was not okay infringement b/c
the venue was deemed public. Everyone was liable. Need authorization to show publicly. 106 bars, in
case of motion pix & other audiovisual works, unauthorized public exhibition. Also, FSD defense not
apply as all other 106 rights reserved, ie. public exhibition rights.
Courts have deemed hotel rooms equivalent to the home, even though open to the public, so there
is no problem w/public performance when videos are shown in rooms. HOWEVER, if the
HOTEL transmits it to ur room, thats another story.
Under FSD, original loses rights as to how a product is dist after its bought. Blockbuster doesnt
have special rights, but now movie industry co-owns for the most part & rental stores pay for
more, so you can rent, sell, or give away what you bought, w/exception of phone records & comp
software.
Who Collects for Public Perf? Royalties for NOT, (p), collected by ACSAP, BMI, SESAC
b. Secondary Liability
Vicarious - Must show (1) Control (2) Direct Financial ($) Benefit, & (3) master/servant rel
Contributory - Must show (1) Knowledge AND (2) Provide Incentive Means (Labor
Materials)
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Fonovisa v. Cherry Auction - and enforcement action against flea market operators (not actual
sellers, but owner of site who rent to vendors). Discussion of the level of control had over the vendors
actions, and that was benefiting from the rental of the space. did have knowledge that the vendors
were selling bootleg items, but the vendors were doing so openly and refused to help w/ police
investigation. RULE: you can be secondarily liable even w/o selling items yourself.
Landlords are deemed not to have knowledge of what goes on but if they benefit other
than mere payment of rent, likely deemed contributory infringer.
C. 107 Fair Use Work must be used for Criticism, Comment, News Reporting, Teaching, Scholarship,
Research, THEN look at the various factors from Harper & Row Publishers (affirmative defense).
Factors to determine FU:
1. Purpose / Character of Use - Profit v. Non-ProfitIs it transformative
2. Nature of the Work - Fiction v. Facttaking of fact is generally ok
3. Amount Taken / Used - Quantitative v. QualitativeDid take the heart of the s work?
4. Effect on Potential or Actual Market Value of Work - (Does work replace need for work???
Transformative Reinterpretation - allows people to transform works; taking an

existing work and giving it an entirely new meaning for the benefit of society. Copyright
owner cant control this but has control over a derivative work. Not derivative work b/c if
meets FU prongs then transformative reinterpretation.
SOL is 3 yrsclock starts when infringement occurs, not when discovered
(unless intentional concealment)-when it is known or shouldve been known.
Satireuses work to comment on something else in society
Parodymakes fun of original
can not say NO if its a cover, so why could Acuff say no? B/c 2 Live Crew
viewed it as derivative, cover not considered derivatives.
VERSUS
Derivative work - a copyrightable creation that is based on pre-existing product such as

a translation, musical arrangement, fictionalization, motion picture version, abridgment,
or any other recast or adapted form and that only the holder of the copyright of the
original can produce or give permission to another to produce.
Fair Use:
Harper & Row Publishers v. Nation Enterprises - Harper had to memoirs and licensed them to
Time. Nation got a copy and scooped story and put it out first. HELD: Publication of portions of a work
soon to be published is not a fair use. C/L FU dont have to get permission if in a situation where a
reasonable holder would in fact grant permission. It is not reasonable to expect holder to allow
another to scoop it by publishing his material ahead of time. Used 4 factor test - #1 and #4 dispositive.
Generally, FU will not be one of economic competition w/ holder. Re: effect of competition, it greatly
lessens mkt value of ed work. Prior publication of work awaiting publication not FU.
*HOWEVER, After this case, Congress said use of unpublished work may be FU.
1st Serial Rights: exclusive right to license prepublication excerpts
Public Access Provisions

107 Fair Use
109 FSD
110 P.O.S. & S.R.E. (point of sale exemption and single receiver exemption)
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Compulsory Licensing
111 Secondary transmission (when a TV signal is sent further than it would normally go by a second
transmission).
114 & 115 Phonorecords**
107 (see above) Fair Use

Campbell v. Acuff Rose MusicREMANDED
ISSUEwhether 2 Live Crews commercial parody of Roy Orbisons song, Oh Pretty Woman is FU
Roy Orbinson assigned rights to AcuffRose. 2 Live Crew sought perm to use the songs and was denied
(song comes under 1909 since written in 1964, & all songs 64 & after dont have to be renewed b/c
automatic). used anyway and claimed FU ., claiming parody b/c of commentary. RULE: Parody is
ok under FU & may be considered social commentary, even if for profit and of commercial nature, as
long as transformative. PARODY MUST BE CLEAR & REASONABLY PERCEIVED.
Parody is not listed in 107, but this could be categorized as a form of social criticism; satire
would be a type of social commentary.
Ct said copying not excessive just b/c its aimed at the heart of the work no more lyrics
taken than necessary.
This would come under the 1909 Act, max duration of under that act is 95 years (so this
could be protected 1964 + 95 = 2059...would have automatic renewal b/c this is 1964, so
form RE doesnt have to be filed).
SC: Held that parodys commercial character is only 1 element to be weighed in FU test
Added to law as to applicability of FUformerly it didnt apply if someone was using
something to make $.
SOL is 3 years - clock starts when infringement occurs, not when you find out about it (unless
intentional concealment)...when it is known or shouldve been known
107 analysisthis is parody / satire, so fits into comment or criticism
Most important factordoes this parody replace the need for the original?? Ct says no,
and no effect on potential market, and no evidence of harm to rap market either.
Transformative reinterpretation - Ct says you have to look to see if the 2nd version was
changed enough and whether it has given the work an entirely new meaning
TYPES of Licenses & Rights:

1. Mechanical Licenses--The license granted to a record company by the music publisher/copyright
holder w/c allows the record company to manufacture and distribute recordings containing a
musical composition or compositions controlled by the publisher.
2. Compulsory Licenses--Same as mechanical license. Available to anyone who wants to cover and
release record containing a music work whether or not the copyright holder wants to grant it or
not. Available once the owner put out or let someone put out a phonorecord.
3. Sync Rights--Rights to sync visual images w/ sound. Such sync requires that owner of musical
composition grant user sync license for w/c negotiated fee is paid. NEED 2 LICENSES, 1 from
record company & 1 from music publisher.
a. 116: Juke BoxesTheres a license you get for (p) in a jukebox; independent negotiate
w/ every songwriter in th box
b. 118 Public Broadcast
c. 119: subject cable & satellite retransmissions of ed programming to statutory license
in prescribed circs. 118 does the same for certain uses by public broadcasters.
d. 122: Limits on 119
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4. Grand Rights: when music is used in play & ASCAP, BMI, SESAC does NOT cover it.
110 Single Receiver Exception: Have to get a license to play music in a store unless u r playing back
free radio or free TV. Certain amt of speakers allowed for free recorded and if exceed, but amount of
speakers permitted has recently been increased. 6 speakers max and 4 videos max. Other way is POS, if
you are trying to demonstrate equipment or sell music.
Expansion of SRE for bars & Restaurants
ASCAP, BMI, SESAC, (Society of European stage authors & composers) authorized by Act to
collect license fees from bars, school, where public performances of music are performed.
Live/pre-recorded fees diff/costs more. ASCAPlicenses host of event/venueIt has to be
deemed public performance to qualify under ASCAP (family of social acquaintances doesnt
qualify)NOTE: Singer/songwriter gives non-exclusive right to license people who publicy
perform their songs.
For Stores-Biz that play music need license. If you are a store, Fair Use passes on the federal
level to regulate how people go in these hotels, Bars. They felt extorted. Store under 2000
square feet have a single receiver exemption like one found in ones home. If the store has
over 2000 square feet, it can have a total of 6 speakers but no more than 4 in any one room.
For Bars/Restaurants 3750 square feet up to 6 speakers no more than 4 monitors per room
(fully operational sound + video). TV no more than max of 4 video devices e.g. monitor or
projector no larger than 55 inch diagonal & no more than 1 per room.
Clubs are granted licenses live v. pre-recorded music, how often music is played, and
accommodation of the room. If bars/ restaurants feel the license fee is unreasonable, i.e.
McGoverns fee is approx $1000/yr.
17 USC 115 (Mechanical Royalties/ license fees) (The Rule for Cover Songs)
Once a song comes out in phono record form any other group can come along as a cover as long as they
notify the of the owner. Statute requires monthly accounting based upon number of units and
once a year CPA audit:
GREATER OF:
2000-2002 7.55 or 1.45 per minute
2002-2004 8.0 or 1.55 per min
2004-2006 8.5 or 1.65 per min
2006-2008 9.1 or 1.75 per min
Quick test - if the song is under 5 minutes, will use the first number, and if greater then must multiply the
number of minutes (rounded UP always) by the per minute royalty rate (Even if a song is 6 min 5 sec,
would have to round it up to 7 min)
Dont need permission under 115 to do a cover of a song (that first came out on a
phonorecord) as long as you let the owner know that youre making the cover and you
agree to pay the statutory royalties:
Requirement of a monthly accounting, needs an annual CPA audit, and only have to pay for
unreturned copies
This is too much work...usually, people just pay 75% annually
***If a song first came out in a movie or TV show (not CD or tape) NO COMPUSORY LICENSING, will
have to bargain w/ holder & make a deal.
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Fair Use: protects productive uses, not consumptive uses
d. Exclusive Rights & New Technologies- Time Shifting

Sony v. Universal Studios - people were taping TV programs on Sonys Betamax and watching them
later. Some holders said that they didnt mind that people were doing this, but Universal Studios and
Walt Disney objected. PH: Dist ct said no relief, 9th Cir. said contributory infringement, Sup Ct
reverses. I: whether the sale of Betamax to public violates 106 rights of Universal. RULE: Unlicensed
use is NOT infringement unless it conflicts w/ one of the exclusive rights and after this case, taping for
later viewing (timeshifting) is okay, though library is not. HELD: Selling copying equipment is
allowed as long as there are good non-infringing uses of the product. Found that there was no
evidence of decreased TV viewing b/c of Betamax use, said that owners had the burden of proving that
users of Betamax had infringed on their and that Sony should be held responsible for the
infringement...Ct says that Sony is not in a position to control use of Betamax by customers. Found no
precedent for imposing vicarious liability and no contributory liability; that selling copying equipment is
OK as long as there are good, non-infringing uses of the product.
Ct came up w/concept of time-shifting - this case doesnt give the right to record for personal home
use, but gives the right to record a program for later home viewing (and the Ct assumes that the program
will be erased after viewing).
NOTE: subscription TV does not fall under this rule.
AHRA- Audio Home Recording Act allows copies of purchased CDs for personal use.
Addressed the issue of what you were allowed to do in the case of recording music from
CDs tapes, etc. as this case didnt privilege those actions. Phonorecords may be
purchased for personal private use, but a royalty is imposed on equip manus and blank
CDs, so the fee is split btwn owner & phonorecord.
Digital Millennium ActNapster claimed they were not saved by AHRA b/c they
were only for copying existing copies. Napster is infringement, but who do u sue? Go
after the source that provided the means for the infringement. Theres a concern that the
ISP will all be contributory infringers for the unlawful activity BUT theres a
Safe Harbor Provision for ISP under DMCAtheyre not deemed
contributory infringers AS LONG AS they notify the holder of who the
infringer is.
WIPO (World Intellectual Property Organization) an important force behind
the DMCA.
Anti-circumvention Lawif someone encodes their signal to prevent
others from being able to use it, and that code is circumvented
(overridden/worked around, federal law is violated (even if the material is
public domain). Its being argued against b/c of book analogy on p. 734.
Also able to mandate disclosure of names, but being argued for privacy
concerns.
ASCAP, BMI, SESAC

owner has to choose 1 of 3. They collect royalties and license out the public performances of
songs.
Stores that have music playing get a blanket license for the whole year, and then they can play all
the songs in the repertoire of whatever licensor you get. (Best to get license from all 3)
Can get a single event license for concert from 1 of 3 and then can play any song in their rep.
Radio stations get blanket licenses for a year.
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S.R.E. Single Receiver Exemption 110- if you have a stereo system of the type normally
found in ones home, and you play free radio or TV for customers in a store, you dont have to get
license from ASCAP, BMI, SESAC (but not if you play cds or tapes) only what is free to public.
P.O.S.- (Point of Sale exemption) - if you are playing CDs or tapes/ videos for the purpose of
selling them, like cd or video stores, you are allowed to do this w/o a license; part of public
access.
Can have up to 6 speakers (no more than 4 per room) and can have no more than 1 tv per room
(fully operational= sound + picture, if no sound, then can have as many as you want) (up to 55
diagonal) in bars or restaurants according to negotiated settlement about what fed law said about
this.
Need a separate license to rebroadcast cable TV.
If you put a radio station on a phone line when on hold, you would need a license for this bc its a
retransmission of the original radio program.
To Prove Infringement
ownership
SUBSTANTIAL SIMILARITY b/w and s work.
Access (can infer if STRIKING SIMILARITY exists) otherwise, can argue it was
independently created;
o Court can infer access based on similarity of both works.
What must be substantially similar is the protectable expression.
Computer programs/Software programs

able b/c there are able elements
Code is literary work under 102.
Source Code is preferred to be registered over Object Code.
Literal Components: These are able expressionsuse FORM TX to register
o Source Codeprogrammer instructions to comp
o Object Codecode that runs hardware 0s/1s
o Microcodebuilt in instructions for microprocessor
If video games have soundtrack, they would not qualify for compulsory license, need to get synch license.
Nonliteral componentscan be closer to idea than able expression
Sequence, structure & org of program including screen outputslook and feelneed to get beyond
look and feel and use AFC analysis.
AFC analysis: Abstraction Filtration Component 3 part test:
1. Abstractionstart w/ program thats being infringed and break it down into a flow chart and
filter out non-protectable AND
2. Filtrationboil it down to the heart of the program golden nugget AND
3. Component-Compare
Computer Associates v. Altai

created a code based off of idea and tried to expunge all the similar material? Issue- whether and to
what extent the non-literal aspects of a computer program (those that are not written in code) are
protected by ? RULE: If company has gone through extra efforts of putting in anti-circumvention
measures-you are not allowed to break the code or avoid the measures. HELD: Adopts a 3 step analysis
to see if non-literal elements of a computer (those that arent in written code) are protected by copyright.
AFC Abstraction Filtration Component. (to separate idea from expression and see how much
expression was taken; method of getting rid of functional code and seeing if there is anything left
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that is a literary work, protectable by and then see if has taken this part.) The more abstract that
part is, the less protectable it is. Literal code least abstract and protectable; AFC is method of getting rid
of F code (ideas and concepts) is there anything else that is protectable and able? s program was not
substantially similar to portions of program and also that TS misappropriation claim was preempted
by fed act.
o ( owner) doesnt want AFC test if representing copyright owner - would rather have
judge or jury look at entire work because then look at protectable and not protectable.
o does want AFC test, b/c what might be left may be just a di minimis taking. Maybe just $200
judgment, and may assign ct costs to
Sega v Accolade (1992)

makes cartridges, and they wanted to make for Sega, and Sega said you have to only make games for us
then, so instead reversed engineered to find F stuff that could be SEGA compatible. However, in the
process, the SEGA came up on screen or something like that. They had no license. (you can have an
implied license but not an implied exclusive license). 1) claim, and 2) claim.
Issue: is it fair use to disassemble the code and even if it is it unlawful to use the code now?
The word SEGA is not able, it is , the word itself. On the level, there were 4 args made by the :
Holding: allowed them to make copies but SEGA keeps in the code. The court sent it back to find out
if they took more. The court was just saying that the mere disassembly is ok. Those are not multiple
infringements. What the court say about the popping up of SEGA even if that is not a good thing, if
that is the ONLY way to have the game be compatible, then SEGA is at fault for using the code.
People should be able to pull out free stuff and thus you should allow for a disassembly of the mark, so
whatever negative result comes from that is your fault.
Universal Studios v. Corley

Studios put in protective measures to avoid copying of DVDs. cracked the DVD code and then
published it on a website for everyone to see. sues saying this is a infringement. RULE: If company
goes through extra efforts of putting in anti-circumvention measures you are not allowed to break the
code or avoid the measures. HELD: Ct granted inj. Anyone can go beyond the door to find the ideas
and concepts now, but it was not allowed here b/c he distributed it.
DMCA (1201-04) has exception in an educational setting circumvention is allowed
as long as it is to achieve interoperability of a program and evaluation purposes. Now,
the industry is putting things in formats that will not play on the computer and unable to create
MP3s. Not good.
In this country someone tried to wear the code on a t-shirt and give a lecture. He received
a warning and lawyer told him not to do it.
The collecting Societies (reduce transaction costs)
1. ASCAP for non-dramatic small performance rights in members musical composition who
wished to make a non-dramatic performance for profit. (biggest license purchases of ACSAP is
TV and radio stations, as well as restaurants, night clubs and hotels) You get blanket license to
perform its library, and royalties are distributed to the association members accordingly.
2. BMI similar to ASCAP
3. SESAC much smaller than the other two collecting societies
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2. Remedies
Possible remedies:
502 Injunction: can enjoin infringing activity
503 Impoundment/ Destruction
504 Damages (if in direct comp, usually measured by viewing sale as displacing , but if not in direct
comp, then usually computed by using reasonable royalty (license fees) or FMV)
(b) loss; Profits (subject to apportionment); or
(c) Statutory-must have registered to collect here & although you dont have to est profit or
loss, you MUST elect this measure before final judgment.
Pre Berne 3/1/89min $100; ordinary $250-10K; Willful up to $50K.
Post Berne 12/9/99 #s doubled min $200; ordinary $500- $20K; willful up to $100K
AND
THEN under Clinton (in light of internet)min remains at $200; ordinary $750-$30K;
willful up to $150
*** You must elect 504(c) or 504(b):
505 Esq fees

506 Criminal (see also 18 usc 2319.
507- 513- miscellaneous.
Stevens Linen Associates v. Mastercraft - dist court declined to award copyright infringement P
compensatory damages bc they involved speculation. P introduced evidence of dipping sales after
introduction of competing prods and evidence customers switched over. Holding - that damages in a
copyright infringement action involve an element of speculation does not render them unawardable. 504
allows an award in an infringement action of the copyright owners actual damages, w/c amount to lost
sales. In est lost sales bc of infringement, a ct must speculate. Here, P showed 2 substantial measures of
lost sales: evidence of lost sales & customers switch.
Cream Records v. Jos. Schlitz - D used Shaft in commercial w/out authorization. Used only a few bars
of song. Ct only awarded 15% of total award value bc of small portion. Ct also awarded $5000 for
restitution. Holding - copyright holder is entitled to full value of infringed copyright, even if only small
portion used. Where unauthorized use of a copyrighted work destroys full value of work, owner is entitled
to full value.
D. Establishing Infringement see 17 USC 501

Strict Liability (knowledge immaterial)(NO INTENT NECESSARY
KNOW what part of the bundle your client has but assume all and establish:
(1) Ownership by
(2) Substantial similarity or striking similarity (Standard for determining whether a copying
occurred is whether there is a substantial similarity btwn works. Must be overwhelming if no
accessusually similarity alone is NOT enough) Test is whether such similarity exists is
whether an average lay observer would recognize the alleged copy as having been appropriated
from the ed work)
(3) had access (or otherwise could have been created independently. Can infer if striking
similarity- inference of access can be est circumstantially by proof of similarity so striking the
possibilities of independent creation, coincidence, & prior common source are, as a practical
matter, precluded.)
(4) Unlawful taking/ use of able expression (if 107-122 do not serve as defense) was actual
protectable expression.
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SOL on Infringement- 3 years

1. Literature- scenes a faire (general fair scenes)- Stock characters & Plots are not protectable.
Nichols v. Universal Pix - ed play w/c depicted marriage btwn J-boy & Irish Catholic.
HELD - protection cannot be limited to the literal text, else a plagiarist could escape liability by
immaterial variations; however protection cannot extend to the ideas of the work. protects an author
from infringement of his expression, but not from appropriation of his mere ideas. Problem is to draw the
line btwn the idea & expression, & several methods are used. This ct used the abstractions test
every work can be abstracted on several levels. They range from most general statement of what the work
is about to the very specific reproduction of the work. Here, only similarity btwn 2 works is quarrel btwn
J and Irish dad, marriage & birth of kids. Idea taken, but not enough for violation of able expression.
Scenes a Faire is not a FU , this is a fair taking, b/c u are free to take that which is not protectable
expression. For a character to be protectable, she must have a defined and well-fleshed out character.
2. Music
RULENeed both access & substantial similarity, unless similarity is strikingeven then, questioned
Selle v. Gibb - sued Bee Gees for infringement of song. Ct said didnt prove access to the song
whose they alleged was infringed. Ct used 4-factor Infringement test. Need to prove access. Access
can be established by striking similarity. Here, the availability of the ed song was virtually de minimis
and the music expert did not state that the similarities could only be the result of copying. WON
Even if you wrote lyrics to a song, you lose lyrical protectionGeorge Harrison claimed
subconscious copying but S/L. Cant get ownership either b/c it was unauthorized derivative.
3. Visual Arts
RULE: Expressions of ideas are protectable even if ideas are not, and even if not an exact copy,k
infringement will be found if normal lay person would find similarities.
Steinberg v. Columbia Pix - Coumbia Pix used, in a clearly recognizable fashion, an illustration by
Steinberg as a model for a film poster. HELD: infringed. A visual image that would be recognized by
the average person as having been appropriated from a work infringes on that . Ct said needed to
prove copying. Ct applied 4 factor test. Standard for determining whether a copying occurred is whether
there is a substantial similarity btw works. Test is whether such similarity exists is whether an average lay
observer would recognize the alleged copy as having been appropriated from the copyrighted work. Here,
the map of NY was similar. Not copyrighting idea, but expression.
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RULE: You can infringe your own work if you assign away the rights.
Gross v. Seligman(1914)- published a photo of nude chick in a pose very similar to that of an earlier
pix, photographed and ed by the same artist of same model, that being owned by Gross. Changed it
by adding cherry stem in her mouth. HELD- Where original artist uses a work whose rights he has
granted to another (here, not WMFH) to produce a subsequent but marginally different work, the
subsequent work is a copy and the artist is an infringer. This is not the case if the subsequent work,
although substantially similar, was independently created w/o reference to the prior work. Here, there
were differences btwn the 2 photos BUT the identities were much greater than differences.
E. Rights Beyond : Moral Right

VARA- Visual Artists Rights Act 106A (requirement for US to join Berne Convention- had to add moral
rights to laws which include.
1. Paternity/Attribution(author name added or removed in order to protect and this doesnt apply
to WMFH(right to have ones name recognizedprotect honor of author &
2. Integrity: (right to prevent destruction, mutilation, distortion)
3. Right to withdraw or disavow
4. Right of disclosure
Under VARA, you are prohibited from ruining some forms of visual art.
VARA protects from mutilation & distortion and ONLY APPLIES to:
Visual art (fine art--photos, sculptures-- not commercial art)
That have 200 or fewer copies and
Those copies have to be consecutively numbered and signed and
This right is for life of author plus 70 yrs and
The art has to be something that brought about public notice i.e. be famous, renowned, or get
some newsworthy attention
Major VARA case: Helmsley- artwork in lobby of hotel was under total control of hotel, so it was
a WMFH and thus not protected under VARA and hotel could redo lobby and take out this work.
Also kid w/dorm room ceiling was renowned enough for VARA.
Film Preservation Act: for filmsoriginals cant be touched since preservedpart of Cong
requ when films were taken out of VARA. Movie industry lobbed to have them removed b/c
theyre not visual art
Droit Moral - French version of the moral rights like VARA, gives the artist moral rights to prevent the
work from being destroyed.
Droit de Suite - right to follow- when a work is resold, the artist gets a royalty for the life of the
painting, not in fed law but in some states like CA.
But compare 43(a) applies to everything else thats not visual, fine art. (see Gilliam v. ABC)
Duration of protection:
If pre-June 1991 life of author + 70 years.
After June 1991 rights end when author dies.
Right cant be assigned, BUT it can be waived (author hereby waives rights under droit morale)
You dont have to register your copyright to sue under VARA.
Have right to sue for statutory damages.
**Only thing that kills a VARA claim is WMFH claim
55
RULE: THIS CASE shows that TM false affiliation claim encompasses some of the moral rights given
under and can help works that are not considered fine art. 43(a) secures right agst distortion.
Gilliam v. ABC
A comedy troupe, Monty Python, contended that ABCs broadcasted edited versions of their comedy
routines mutilated their work and constituted infringement.
- the licensing agreement between BBC and Monty Python said that MP had to approve the final version,
and when BBC licensed it to ABC, they faced the same limitation, they can claim breach of contract and
copyright infringement
HELD - unauthorized editing of a television program for broadcasting constitutes infringement. You
can use 43(a) of the Lanham Act to claim false affiliation or false representation and here this was
changed so much that it did not represent Monty Pythons work and was a falsehood. Sometimes an item
may not be able, but the art work that accompanies it is able
- you dont have to exercise copyright claim to enforce VARA...

- can be up to 200 consecutively numbered and signed (or marked)
- get the right of attribution and integrity of work
- right to prevent the distortion of the work (even if you assigned rights away)
- you cant transfer away VARA, if pre June 1991 (life + 70) or after June 1991 (right ends when author
dies)
Dastar
Shows connection between 43(a) and copyright laws.-
Eisenhowers book > Doubleday publishes and copyrights it > Fox gets the TV rights based on US
military footage > Time Warner produced the show
- DD renewed their copyright, but Fox did not renew so the work entered the public domain for a time
- falls under the Copyright Act of 1909 (in effect until Dec. 31, 1977)
- when Fox renewed it, they gave SFM and New Line the right to distribute the video
- Dastar took footage from Foxs TV show and distributed a video series
- reverse passing off: misrepresenting someone elses goods as their own, not informing the public about
the ORIGIN OF GOODS by falsely affiliating this footage with themselvesunder the Lanham act are
you required to state the origin of goods but in this case this would be identifying the original idea of the
good because who is the original owner of the idea itself? there was compilation of footage and so on...
Origin of the final work is all thats required
F. Preemption of State Law:

Need extra state law element on top of 4 factor infringement test to survive- (ie. INTENT to copy.)
301 Preemption (Interference w/ objectives purposes)

1. Does state law grant any rights equivalent to 106? If so then preempted.
2. Does state law extend to works covered in 102. If so, then preempted.
3. Does state law require an extra element to be proven for that state law to be violated (like intent)?
Becomes a state AND federal action.
Not Preempted
K rights/Breach of Kstate rights containing no extra elementstate requires addl
element showing wrongdoing
Right of publicity(state)unless expressive subj matter e.g. voice & singing style. Ex:
3 strikes youre out songnot equivalent provision 15.2.1
56
Right of privacythese rights arent part of Act. This deals w/ an extra element, such
as showing defamation-- doesnt deal w/ this
SOME anti-competition claims false labeling, fraudulent misrepresentation, passing
off even where subject matter involved comes w/in scope of not intended to be
preempted since element of consumer confusion reps extra element that distinguishes
from rights granted under 106 of 76 Act. Deceptive trade practices
Misappropriation (state law) is preempted in 102(b) if it comes w/in the scope of --
AV, architectural etc, but no preemption of state law protection of facts e.g. hot news &
unable data compiled in comp databases (note: circ split here5 th circbroader)
Trade Secrets (where it includes elements such as invasion of personal rights or
breach of trust or confidentiality that are different in kind from infringement
i. Right of Follow (European laws) author of work that is sold gets a percentage
of all subsequent resales not preempted.
Might as well bring it in Fed ct if have fed claim.
57
DEFENSES:
1. Idea/ Expression Merger/ if Limited Ways to Express something, cant it.
2. Blank Form Doctrine
3. Functional-(ex. Recipes are functional, only the SAC may be protected. Calendars-only
artwork may be protected).
4. Names, slogans, phrasing, and title-not copyrightable
5. De Minimis Amount-only taken (This is questionable-b/c if it destroys the value De Minimis
may be enoughCream Records
6. FSD-Limited Rights 109
1) Library exception 108
7. Fair Use 107-See Below
8. Transformative Reinterpretation
9. Presumption of Death-302
10. Innocent Infringer
11. Joint Authorship
12. No Similarity
13. No Copyrightable expression
14. s copyright is invalid
15. Licensee, Licensing or Consent
16. Estoppel/Laches/Acquiescence
17. Unclean Hands
18. (Didnt Renew under the 1909 Act and is in the Public Domain
19. Didnt affix proper notice under the 1909 Act
20. Didnt Cure Defective Notice On works created after 1/1/78 and before 3/1/89 w/in 5 years.
21. S.R.E.
22. POS: Point of Sale
23. Misuse
24. Scenes A Faire- enduring popularity (IDEA)
25. Public Domain
26. SOL: 3 Years for Civil Suits, and 5 Years for Criminal
27. Fraud in the Copyright Application
28. Antitrust or misuse
Are blueprints copyrightable? YES.

To build something, you must file w/ county (local ordinances). This becomes a public record, but doesnt
mean someone can copy it.
What about state statutes?

Alaska was challenged, and turned out it cant be b/c its too necessary for the public (laws themselves).
Can a state be an author? YES, and can be owner.
US government? NO.May not claim authorship, but if a licensee of ed materials, then can be a owner.
Things lawyers can copyright:

- articles
- website
- software that helps you write the brief
W/c form do you use to register video games- FORM PA.
Fair Use: Sega v. Accolade:

Sega built into their code an automatic trigger that showed Sega on screen whenever games were
inserted. D reverse-engineered. P had no licensing agreement with D.
58
Sega appearing when Ds game is inserted 102(b) - Words, phrases, slogans, ideas, NOT
copyrightable, BUT it is trademarkable.
Segas claims:
1) Trademark
2) copyright
I: is it fair use for D to disassemble the code? If so, is it lawful for D to use the code? YES.
H: allowed D to make copies, but didnt prevent Sega from having copyright in the code.
About Segas TM popping up Sega brought it upon themselves for using this code b/c people
should be able to pull out the free parts of the code, and if its mark is attached, then Sega is
source of confusion.
Accolades arguments:
1) Based on 106, theyre only intermediate copying, and not illegal.
2) Reverse engineering is OK.
3) 117 Reformatting OK.
4) Disassembly is OK.
First Amendment - Universal City Studios v. Corley: Anti-circumvention/ DVD

D teen cracked DVD code and posted it on a web site so anyone anywhere in the world had access to it.
Industry threatened to stop manufacturing DVDs if it wasnt dealt with by the courts.
H: court granted injunction w/c prohibited D from posting the code.
Does this mean nobody can reverse engineer?
NO. You just cant share the information/ code.
Is there a constitutional right to make a copy?
NO inherent right, even though law may give you exceptions. Some say this conflicts with the First
Amendment free speech/ right to communicate.
117 Reformat allows user to reformat to make program work on their system.
Patents - 35 USC 1-376

To get patent, need to apply for it.
1st to conceive of invention, not 1st to file is afforded protection. In most countries, the first to
FILE gets the patent, but not here, so long as patent applicant uses due diligence from conception
to application. This protects the little guy over the one who has the resources to obtain the patent
1st.
Definitions 100
First act 1790; Second in 1836; Current Act 1952
US Patents only good for US not overseas
Patentable Subject Matter (new/ useful)
Or new and useful improvement thereof:
Machine
Composition of matter (ie pharmaceuticals)
Manufacture (things made by humans)
Process
Types of patents:
Utility 154-complex applications (any new/useful improvements)
Plant 161 (asexually reproduced plants that grow in the ground; human engineered)
59
Design 171-simple and basic application process (Design of Listerine bottle)

Statutory 157 (applicant donates patent to public domain- so no one else gets a patent on it!)
In order to qualify for patents, need all three:

1. Novel 102 -
Useful 101
o Manufacture something made
o Machine
o Composition of matter material (what you make something from).
o Process
2. Non-obvious 103
If get patent rights, you control who can:

1. Make
2. Use or
3. Sell
Different rules/laws governing drugs
BUT have to publicly disclose in the app how to make and use the app-the trade off
Must pay maintenance fees to keep patent
Process for getting a a Patent:

1. subject matter must be novel, non-obvious and useful
2. Wont grant a patent if the invention has been anticipated-by prior teaching/artincludes prior art
anywhere in the world.
3. Must conduct a search throughout the world to see if the invention is already in existenceif it is
patented anywhere in the world.
4. Is there a printed publication that teachers how to make this inventionmust be written down
But if it is just used in another country and not written down or patented-ok
But if it is just used in USthen barredthese will bar the patent from issuing b/c these
are priors
3 objectives of Patent Law:

1. Seeks to foster and reward invention
2. Promotes disclosure of inventions to stimulate further innovation and permit public to practice
invention once patent expires and
3. Stringent reqts for patent protection seek to assure ideas in public domain remain there for free
use of public.
How long to monopolize patent?

For utility & plant patents before 6/8/95- get longer of 20 yrs of app or 17 yrs from granting of
patent. Post 6/8/9520 yrs from app/filing (change was to prevent patents from surfacing yrs
after app)
Design - Pre 12/18/2013 14 years from grant
o Post 12/18/2013 15 years from grant
Rights do not go into perpetuity b/c Constitution wont let congress give monopoly power to
patent owner
Patent applications in the US will be published 18 mos after.
60
Cant opt out of publication if seeking foreign patents, but can opt out if show patent office that
not seeking foreign protection.
Patents
Utility
Plant
Design
*must be novel, useful, non-obvious
Utility: Design: Plant:

Machine Decorative Asexual reproduction
Composition of matter Non-functional aspects
Articles of manufacture
*1952- Processes (business method patent)
Unpatentable:
Printed material
Products of nature* (must be naturally occurring; compare to BFHH- But For Human Hands,
product would not be here- this is patentable- ie Harvard Mouse)
Laws of nature/ natural phenomena
Math formulae
Fraud based inventions
Novelty Statutory bar

Prior art (must look Worldwide) Loss of rights Application
102 (a),------- CONCEPTION------ TIME --------------------------------------------- Patent
(e), (g) 102 (b), (c) RTP (reduction to practice)
103 (d), (f)
*Due Diligence needed btwn Conception & RTP!
Prior Art: Mere use doesnt qualify. Must be application or an existing patent!!
must conduct a search throughout the world to see:
1) is this invention already in existence, OR
2) is there a printed publication available to public anywhere in the world.
a. Does it teach?
Any patent anywhere in the world that is considered prior art bars another patent. (Refer to outline given
in packet for statutory bar.)
A) 12 Month Use Bars Application If client has made public use of invention or offered it for sale,
more than 12 months from filing of patent application, they CANT get the patent-statutorily barred
This clock can start by someone elses activity-if you are the senior inventor but a junior inventor
makes public use of the same invention, this will start the 12 month clock.
Must file app or provisional app w/in first 12 monthsor else statutorily barred
BUT if use is purely for R&D it will not start the clockkept privatemust use it in TS sense
confidentiality is key to showing R&D
61
Exception true research and development stops the clock. Show this with lab notes, no earned income,
no public sale, etc.
B) Publication every patent application published w/in 18 months, unless only seeking US patent
Opt out provision some may want to do this b/c if youre application isnt granted, you may
want to keep it a trade secret.
C) Test should this invention be granted even though theres no prior art? Cong felt it was granting
patents on things not considered useful arts.
Novel ( 102) AND non-obvious ( 103).
Typically comes up during litigation as .
RTP- need to put invention to practice if you use an invention publicly for more than one year, cannot get
a patent; clock starts (12 mos allowed) when use starts (mere use in another country doesnt serve as a bar
to getting a patent, but publishing in another country would).
Statutory Standards
111 Application
112 SPECs
113 Drawings
114 Models/ Specimens (if required)
115 Oath
114 Application
1. Abstract
2. Drawings
3. Background
4. Summary of invention
5. Brief description of drawings
6. Detailed description of invention
7. I Claim section- novelty & non-obvious reqd- when Property infringed (ie- camera on a pole;
if claim broadly, may have broader scope of protection.
Application (111)
1. Specifications- must teach a person skilled in the art of w/c the invention pertains how to make/
use it.- 112 enabling disclosure-Best Mode duty of candor provision (if there are a few ways
to make something, have to put in application best way to make it). Becomes body of prior art.
2. Claims- must uniquely point out and claim the invention- property interest part that is infringed
must be novel and non-obvious. Must have at least 1 remaining claim to keep a valid patent. Must
do a patent search to see if prior art.
Abstract, drawings, background, summary of invention, brief description of drawings,
detailed description of invention, claim sectionthis is where novel and non-obvious
need to be
Diamond v. Chakrabarty (1980):

I: whether a live micro-organism is patentable? Can life be patented? YES.
Life itself is NOT patentable, BUT a microorganism is life. This was created by human hands.
But for human hands TEST made by humans, so
Life CAN be patentable when it doesnt occur in nature
62
creates microorganism that eats oil spills. It was useful, no prior art, novel, and obvious. It should have
been granted a patent.
HELD: patentable.
Cloning Cong says it doesnt meet statutory requirement of usefulness.
Test for non-obviousness (#1 raised by alleged patent)

John Deere Test: examining
1. State of the Art @ Time of Invention: Would something be obvious to an ordinary person
skilled in the arttrying to invalidate a patent by saying that the invention was obviousbut this
is a very subjective test, so it is difficult to apply.
2. Scope/ content of prior art- What existed already before this change took place?
3. Differences b/w prior art & claims at issue- Whats the diff btwn the prior art and the new
invention.
4. Level of ordinary skill in the art- what was level of skill- was this a forward-looking invention?
Would someone have eventually done it or created it?
* This test is problematic b/c too subjective- so 2nd considerations developed to help judges. Cts nowadays
use 2nd in conjunction w/ J. Deere.
Secondary considerations of nonobviousness-
commercial success (not from advertising) how successful was it? If you sell many units,
people must like it.
o Helps the patent owner.
commercial acquiescence the fact that others did NOT attempt to make it b/c they thought it
was a valid patent. Did the commercial world think it was non-obvious?
o Helps the patent owner
Commercial licensing how many others wanted to replicate it? If others got a license, they
mustve thought it good.
expert acknowledgements Have experts testify to its non-obviousness and an ordinary person
wouldnt invent it
failure of others to invent adds to uniqueness.
long felt need Was there a need for this invention? In the industry?
invention by others at the same time show that the need was filled?
You can use either one of these tests above! If you are P trying to protect your patent when its challenged,
you want to use the J. Deere test; D would want to use both or 2 nd considerations bc of expert testimony.
But, P may want to use 2nd considerations depending on facts of case.
2 types of patent infringement:

1. Literal infringement (Reads on)- it describes same invention.
- scope of claims (determined by judge- markman hearing)
- jury determines infringement
Sometimes patent trials split in parts:

1. Bifurcation (1. was there an injury and then 2. how much in damages)
*2. Trifurcation (1. is there a valid patent; 2. if so was it infringed; 3. what are the damages?)- most patent
trials are this.
63
2. Non-literal infringement- doesnt read on.

Doctrine of equivalents (DOE)- does same thing in same manner producing same results. Still
can be infringement even if doesnt read on.
*Repair v. Reconstruction - is someone infringing if they are repairing patented item?

Repair- if just to replace or fix part of patented item.
Reconstruction- if replace many parts so that it may be deemed new product; a point beyond mere
repair.
Quick Test- if cost of repair exceeds/equal to cost of new item, then its a new item. But if cost of
repair is fraction of cost of new item, then its just a repair.
Patent protection only goes up to First Sale- can resell. But protected from manufacture.
*271 Infringement- 2 types:

direct
contributory- need 1. knowledge that someone is infringing and 2. inducing infringement or
providing means and labor to infringe.
Remedies:
283 Inj
284 P damage up to 3x but not less than reasonable royalty
285 esq fees/ cost in exceptional cases to prevailing party.
286 6yr back rule on $ damages (6yr back from filing of lawsuit)-laches
287 innocent infringer (bc no notice, wasnt marked- not expected to know); significance- may get
injunction but not $ damages or esq fees
289 D profits for design patent only (subject to apportionment)
How can patents be invalidated other than expiration of protection?

Challenge continued usefulness, novelty, non-obviousness
Need to pay maintenance fees 3 years out, or every so often or else lose patent.
Sr. v. Jr.- if conceived it first up to application and used due diligence. What need to do is
convince the examiner there is nothing out there prior to this, that was prior art- nothing
been anticipated. Novelty has to come from single source!
Offer for sale- 12 month clock to get application in; if not, statutorily barred from getting
patent. Dont publish it before file patent application- if more than 12 mos in the open,
barred! R&D- if use it purely for research and development, not barred! 12 mos clock is
statutory bar.
Defenses: AKA- P.H.E. (prosecutorial history estoppel- also in TM law)

F.W.E.- file wrapper estoppel (during course of negotiation w/ patent office and give up part of
claim in order to narrow issue, estopped from raising that part of claim later.). Thus, if patent atty,
check the file.
Not novel
Obvious
Not useful
EXPIRED
Co-inventor
Design patent-functional
64
Laches (acquiescence)
Literal not present
Non literal D/O/E- doctrine of equivalence
No longer valid for failure to pay maintenance fees
Innocent infringer- no markings on product
Best mode- duty of candor- I.C.
Reverse doctrine of equivalents- may do same thing in same manner but produces a diff result.
Fraud in the application (failure to list certain patent in report, listing investors who are not
inventors)- thats why 251 exists to re-issue and cure defects.
1st sale doctrine
repair, not reconstruct
misuse (anti-trust- only call their servicemen and tie-in other products; should not have to be able
to buy other products; anything that prevents you from buying other products is misuse)
unclean hands (told someone youd give them license but dont and sue later for $)
251 re-issue (if w/i 2 years claims can be reused/ broader). To cure defects that are not
intentional.
Trade secret or patent

Publication after 18 months
157-statutory patent-discolse but not make patent claim-dont want themselves to be called an
infringer
can pay a fee to have published earlier
65

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COPYRIGHT AND TRADEMARK: KETTLE: SPR 2008

3 objectives under IP law:.............................................................................................................5

Lanham Act (July 5, 1946)......................................................................................................20

REMIEDIES - primarily an injunction in TM law..............................................................30

Transfer & Term......................................................................................................................44

Constitutional Origins of IP Law

I. State/ Common Law Intellectual Property

1) Rights in Undeveloped Ideas

Idea Submission (the 4 general scenarios)

Theories of Recovery (levels of proof vary depending of theory of recovery)

RULE: An Idea must be NOVEL and CONCRETE especially w/o an express K.

Ways to improve a Breach of Confidentiality claim

4. commercial availability how available is the idea to the industry

3 Goals of Patent Law

As a recipient of ideas, you want to avoid litigation by:

II. UNFAIR COMPETITION

Unfair Competition Supplemented by BOTH State and Federal Law

1) Passing off & Secondary Meaning

The Calculus of Passing Off

THE LEVEL OF PROOF CONTINUUM

Two types of Zone of Expansion (Z.O.E)

6 Part Balancing Test for Dilution (Mead Concurrence)

What constitutes Hot News?

5) Personal Names and the Rights afforded to them

6) TradeDress, Design, Functionality

(2) Economic Interests- Unfair Comp in the Competitive Plan

FEDERAL IP LAW PREEMPTS STATE IP LAW:

Elements of a T/S Claim?

How do you protect a [trade] secret?

How do confidential relationship arise in TS?

A. THEORY OF PROTECTION (ELEMENTS OF TS APPLIED-WHAT IS A TS)

NOTE: on Royalties: Should always require 2 tier system Think

Approaches: Reasonable Steps

NON-COMPETES must be reasonable, and are generally NOT FAVORED

State v. Federal Pre-emption:

1. Personal Interests- Restraints on Post-Employment Competition

2. Economic Interests - TS in Competitive Plan

IV. RIGHT OF PUBLICITY

How long does ROP last?

Celebrity has a commercial interest that may be protected:

ROP claim test:

Medium, NOT the Message!

Use of public images by news dont need permission.

III. FEDERAL LAW OF INTELLECTUAL PROPERTY

3 levels of TM Protection (all exist congruently):

Legal steps to follow after choosing a mark:

A. Requirements for Protection

(1) Use & Use in Commerce

Process for getting a TM:

section 2() of the lanham act

Selecting a TM/ (how strong it is too):

3. Suggestive Strong Ex. Mr. Clean, Coppertone

Concurrent Registration often to avoid litigation; rare. (In re NAD).

Ways to renew a TM:

MUST pass 2(f) above, or mark cant register.

Process for Appealing a TM denial:

Licensing A Mark QC:

(a) Trademarks that distinguish from Goods of Another

(b) Deceptive Matter:

(c) Confusing Similarity to Prior Marks

(e) Primarily Geographically Descriptive

(a) TYPES OF MARKS - TM & SM v. Certification Marks & Collective Marks:

Service Mark - SM diff from a TM, 1127 definitions, a SM is used in connection w/