Final Ip Outline

8/8/2019 Final Ip Outline

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TRADEMARKS DEFINITION, 45: A trademark is a word, name, symbol, device, or any combinationthereof, that is used to distinguish the goods of one person from goods manufactured orsold by others, and to indicate the source of the goods, even if the source is unknown.

-A mark can be practically anything, as long as its inherently distinctive or capable

ofacquiring distinctiveness to the extent that it functions as a source identifier.PRIMARY SIGNIFICANCE TEST: Source Identification is Key: What is the primarysignificance of the mark to an ordinary member of the relevant consuming public? To bedistinctive primary significance to consumer must be the identification of a SpecificSource, not just a specific type of product.

FOUR CATEGORIES of MARKS: Differing Levels of DISTINCTIVENESS

1) GENERIC: words that describe whatit is; classes of goods like book -NO TMPROTECTION

-Genericide: when words like Kleenex and Xerox become part of common vernacular-Effect of Registration: If TM is registered theres a strong presumption that theterm is not generic

-D has Burden of Proving that it is which they might do by the following:

Evidence of generic: (Horizon Mills)(1) seller didnt contest widespread use by competitors,(2) seller uses the term in a generic way,(3) dictionary definitions,(4) media usage (general media, not trade publications),(5) consumer survey (arguably most persuasive way).

2) DESCRIPTIVE: words that1-literally describe product, how it is (light beer) or2-describe the basic purpose or utility of the product (Excedrin pm)

Protected only if it acquires 2ndary meaning to the public linking theproduct to a single source.

-Primarily Geographically Descriptive: primary significance of mark is that 1) itsa place generally known to the public, and 2) relevant, reasonable public would

believe the goods originate there 3)and they DO-ALSO OK w/ 2ndary Meaning.3) SUGGESTIVE:Protected, inherently distinctive Indirectly describesrequiresmultistep mental process to make the connection. (e.g. Treetop, Greyhound, Coppertone)4) FANCIFUL or ARBITRARY: Most Protected, inherently distinctive

-Fanciful: things that are wholly made up like Exxon, Kodak, Polaroid,-Arbitrary: takes something real and associates it w/ something it doesnt match,i.e. Apple computer

SPECIFIC CATEGORIES of MARKS: Trade Dress, Product Design, Color

TRADE DRESS: CAN be inherently distinctive, does NOT require 2ndary meaning (TwoPesos v. Taco Cabana)

-An Identifying mark is distinctive and protectable if it is

-Inherently distinctive OR-Has acquired 2ndary meaning-Eligibility also depends on non-functionality

-NOTE: Although trade dress CAN indicate source to consumer, in close cases courtsshould err on side of caution and classify ambiguous trade dress as product designand require 2ndary meaning. (WalMart)Policy: Protecting an inherently distinctive trade dress from the beginning, w/owaiting for secondary meaning to accrue is important for the originators business.

PRODUCT DESIGN: CANNOT be inherently distinctive, ALWAYS requires 2ndary meaning(WalMart v. Samara Bros)

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-Rationale: consumer is not predisposed to identify the design with the source b/cdesign characteristics usually have other purposes besides source identification(utility, aesthetic appeal)

COLOR: NOT inherently distinctive, CAN get protection if NOT FUNCTIONAL and has 2ndarymeaning (Qualitex)

NON-QUALIFYING MARKS: Functional, Misdescriptive, GeographicallyMisdescriptive, Deceptive

FUNCTIONAL: A mark is functional and therefore not protectable if it is:1) Essential to the purpose and utility of the product

And/or2) Affects the cost or quality of the product to the extent that giving one personcontrol over it would prevent others from effectively entering or competing in themarket.

Utilitarian v. Aesthetic Functionality: If it has utilitarian functionalitythats the end of the inquiry, worry about competitive necessity more foraesthetic (pp 56-57).

Product Features: CANNOT receive Trade Dress Protection if its FUNCTIONAL (TrafFixDevices v. Market Displays)

-An expired utility patent is strong evidence that the design is functional-Person seeking trade dress protection has burden of showing the feature is NOTfunctional-The Lanham Act does not give trade dress protection to a functional design justbecause the owner advertised so that the public would associate the design with thesource

POLICY: Allowing a functional feature to be TMed would be like giving a patent withoutregard to whether the feature qualifies for a patent. Also, unlike patents, TMs are forever.

Deceptive, Misdescriptive, and Deceptively Misdescriptive Marks:1-Deceptive: misdescribes (geographically or otherwise) in a way that materiallyaffects purchasing decision

-NEVER protected (Van HeusenSupersilk)

2-Deceptively Misdescriptive: misdescribes something about the product,consumers are likely to think its true, but doesnt make a difference in whether or notthey buy it.

If primarily geographic, 2(e)(2):NOT protectableNever Ok tomisrepresent origin of goodsIf some other category: PROTECTABLE w/ 2ndary meaning.

3-Non-deceptively Misdescriptive, 2(f): misdescribes the product, but no onewould believe it was true, probably making it arbitrary and thus inherently distinctive

-PROTECTABLE w/o need for 2ndary meaning-Ok for geographical if no one would believe goods originated there, e.g. NorthPole Bananas.

OTHER Non-Qualifying Marks: Offensive, scandalous, and disparaging 1052(a)(b)

(c)1-Consider if mark is shocking to sense of truth, decency, or propriety, disgraceful oroffensive to the conscience or moral feelings.2-HIGHLY SUBJECTIVE: Trademark Trial and Appeals board says resolve uncertainty infavor of the applicant.3-Consider proposed mark in the context of the marketplace as applied to the goods andservices described in the application.

-Disparaging: would a substantial composite of those referred to , identified, or implicatedin some recognizable manner by the mark view the mark as disparaging?

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Registration of a SURNAME 1052(a), (e)(4) protectable with 2ndary Meaning-Primary Significance Test: if significant primarily only as a surname then NO TM.

Obtaining Rights By Using A Mark:Nature and Extent of Use: Has there been ACTUAL USE, and WHEN did it start?(Timeline useful here)

TM ownership rights flow from1-prior appropriation &2-actual use in the market.

a) Actual/Genuine use in the market may be established even if:1-the first use is not extensive &2-it does not result in:

-deep market penetration or-widespread recognition.(both of which , if present, strongly weigh in favor offinding actual use)

b) Doesnt matter if the market use is good business, word ofmouth/homegrown strategies count as long as:

1-They are sufficiently public (allowing inference of commercial use)

2-Represent a real attempt to gain business, and3-They are consistentand continuous, even if not high in volume.

c) Abandonment of Marks: LA45 describes 3 ways this can happen:1-Non-use w/o intent to resume use, may be inferred from facts like nonuse for 3consecutive years.2-Genericide: the mark becomes generic3-Uncontrolled/Naked Licensing: If a mark owner licenses another to use themark but doesnt control the nature of use, licensees may depart from the markowners quality standards and the public may be misled b/c the TM wont have thesame signaling effects that it originally did.

d)Token Use: Nominal Shipments of goods dont count as sufficient usefor TM rights if its obviously done so no one else can use the mark.

Geographic Extent of Rights:

Injunctive Reliefover intermediate junior user?1- P must prove that its prior use of the mark penetrated the geographicmarket in question:

Market Penetration: Sweetarts Test:1-$ value of sales at the time the other user entered the market.2-Number of customers compared to population of state.3-Relative and potential growth of sales.4-Length of time since significant sales.

2-Present Likelihood of Confusion: nationwide rights conferred byregistration dont entitle a TM owner to injunctive relief unless theres apresent likelihood of confusion.

To enjoin a Geographically Remote user the Registered owner must prove:

1-Owners TMd products and the infringing products are being sold in the samegeographic areaOR

2-Owner has concrete plans to expand into the infringers trade area.

Tea Rose/Rectanus Doctrine: the first user of a common law trademark may notoust a later users good faith use of an infringing mark in a market where the firstusers products or services are not sold.

Good faith Use: 1) lack of prior knowledge of the others use, 2) adoption ofmark w/o intent to reap benefits of others good will or, 3) to carry out a

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purpose inimical to the interests of the other

INTERMEDIATE JUNIOR USERS: Potentially retain limited geographic rightsRULE: 15 U.S.C. 1115(b)(5)-if a junior user begins using a mark before the senior userregistered it, the junior user may have limited rights to the mark if:

1- the mark was adopted without knowledge of the registrants prior use and

2-the mark has been continuously used by the party.3-This only applies to the area where the junior did business up until the senior userregistered the mark (the zone of reputation).

-The junior user must establish significant sales in the areas (Sweetartsmarket penetration?) the mark has gained reputation(not de minimus, ThinkHealthcom).-Advertising alone cant establish junior users TM rights in an area.

Junior User Trade Area: Once the trade area is established, the junior user can expand toexploit the entire trade area, up to its boundaries.

-IF Junior user starts using after the Senior has already registered:Dawn Donut:junior user can get geographically remote limited exclusive rights use as longas theres no likelihood of confusion BUT, jr. users rights subject to sr. users decision toenter that market, so big risk for the jr. user. Plus internet now makes it hard to show thatgeographical remoteness negates likelihood of confusion.

Infringement And Consumer Confusion32(1) Lanham Act, Infringement of Registered Marks; 43 (a)

STEP 1: Does the Mark qualify for protection?-VALIDITY of MarkSTEP 2: Does the P have exclusive rights to use the mark?STEP 3: Is there a LIKELIHOOD of CONSUMER CONFUSION???

Direct Confusion RULE: POLAROID factors (Lever Bros. v. AmericanBakeries)

1)Degree of similarity of the two marks2)Strength of the mark:

source indicating capability of the mark, where is it on the spectrum in reference tothis particular good/service.2)Proximity of the products:

.

4)Likelihood that the prior owner will bridge the gap5)Actual confusion6)Ds good faith7)Quality of Ds product8)Sophistication of buyers

1) SIMILARITY between the two Marks: are they substantially identical? (Counterfeit)-Typically where we start in the process, weighted very heavily in the mind of the judge RULE: Similarity of a registered mark & an applicants mark are determined by the DuPont

factors: (In re Coors Brewing Co.)Similar in:1-appearance,2-sound,3-connotation, &4-commercial expression of the two marks : typeface, packaging, colors

and if so, evaluate5-similarity of the goods/ services

2) Strength of the mark: Focuses on the marks distinctiveness and tendency to

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identify the goods as coming from a particular source.2 Factors Used to Measure Strength of Mark:

1-Distinctiveness of the Mark: Is it generic, descriptive, suggestive, arbitrary,or fanciful2-Recognition value: TO BE A TRADEMARK, A SYMBOL MUST CREATE ASEPARATE AND DISTINCT COMMERCIAL IMPRESSION linking the

product to a SINGLE SOURCE.(Autumn Bread v. Margarine)3) Competitive Proximity: Evaluate:1-Nature of the goods: are the parties selling the same thing?2-Channels of marketing: do they sell through the same media?3-Market segments: do they target the same buyers?4-Geographical trading area5-Any other ways in which relevant products do or do not share a market of the 2products

4) Likelihood prior user will bridge the gap (b/w the proximity of the 2 products)-Look at senior users interest in preserving avenues of expansion and entering intorelated fields:

We protect a sphere of commerce around the genre the senior user/TM

owner competes in.-Applies where Junior user is operating in a different market genre from senior,-Evidence of mark owners Business Plans:

1- Does the mark owner have concrete plans to bridge the gap?2-Takes into account whether the Ps brand/product diversity is wideenough, and the two markets are similar enough that a consumer wouldassume the P has expanded their product line.

5) Actual ConfusionIts black letter law that actual confusion need not be shown to prevailunder the Lanham Act, since it is very difficult to prove and the Act only requires aLikelihoodof confusion. (Lois Sportswear)

6) Defendants good faith: Generally not heavily weighted.

7) Quality of the Ds product:

-Inferiority of the infringers product supports and inference that it wont be confusedfor the real thingBUT-Courts have recognized that the existence of inferior infringing goodsstrengthens a Ps interest in protecting its reputation.

8) Sophistication of the buyers:Takes into account Attention and time buyers spendwhen considering the sourceAnd also whether people who see it being worn or used will know.

Reverse Confusion: Senior user is overwhelmed by junior users saturation of marketconsumers are likely to think the junior user is the source of the senior usersgoods/services.

Factors that are the same for direct confusion:attentiveness of consumerdegree to which the channels of trade and advertisement overlap

FACTORS: Similarity of Marks, Strength of Marks, Conceptual StrengthCommercial Strength, should be analyzed in terms of:

-The commercial strength of the junior user as compared to the senior.-Any advertising or marketing campaign by the junior user thatsresulted in saturation of the public awareness of the junior users mark.

Secondary Liability: Did they know/should they have known: It is well-establishedthat if a manufacturer or distributor intentionally induces another to infringe a trademark, or

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if it continues to manufacture or distribute products for one whom it knows or has reason toknow is engaging in trademark infringement, the manufacturer or distributor hascontributory responsibility for any harm done as a result of the deceit.

What about Landlords/Licensors? Same duty imposed by SCT on mnfrs anddistributors.Willful Blindness: Suspects wrongdoing and deliberately fails to investigate b/c

they dont want to know.-Willful Blindness=Actual Knowledge for purposes ofLanham Act-No duty to seek out and prevent violations but cant look away onceyou have reason to suspect.

Extent of Control:If supplies service rather than product courts look at the extent towhich monitors/controls the actions of the infringer. Direct control/monitoring by D usually= contributory infringement.Inducement: Did D encourage, tempt, or persuade the infringer to infringe?Vicarious Liability: Can be proved by showing:

Agency relationship: established by showing 1)Principals right to control allegedagent 2) alleged agents power to alter the legal relations of the principal3 Alternative ways to establish Vicarious Liability: Proof of1) Apparent oractual partnership 2) Authority to bind in third party transactions, 3)Jointownership/control over the infringing parties

TRADEMARKDILUTION15 USC 1125(c)(1); 15 USC 1052(f): Only applies to FAMOUSand distinctive marks!

Blurring: impairs distinctivenessTarnishment: degrades the good will of the product.

Starts in the states, protecting the selling power of the senior user, and providing onlyinjunctive relief.Federal Dilution not until 1995 43 (c):Trademark Dilution Revision Act 2006 (TRDA )Factors: requires that the marks beidentical, nearly identical, or substantially similar/identical to the protected mark.

Substantial similarity test: more stringent for blurring than it is for determining alikelihood of confusion.

-Mark used by alleged diluter and protected mark must be similar enough thata significant segment of the target group of consumers sees the two marks asessentially the same.

The court may considerall relevant factors including the following: TDRAFactors

1-Similarity of the mark with the famous mark2-Degree of inherent or acquired distinctiveness of famous mark3-The extent to which the owner of the famous mark engages in substantiallyexclusive use of it4-The degree of recognition of the famous mark5-Whether infringer intended to create assn w/ famous mark6-Actual mental assn b/t alleged infringers mark & famous mark

Policy: Dilution claims are traditionally viewed as protecting only the mark owners goodwill and not protecting consumers because you dont have to prove confusion. But: maybe

dilution creates noise in the marketplace and distorts the signals received by consumers.

CYBERSQUATTING: Establishing Internet domain names utilizing others marks as namesRULE: Lanham Act 43(d): Creates a Cause of Action for a TM owner who canestablish:

1-It has a VALID markentitled to protection2-Its mark is distinctive OR famous3-The defendants domain name is identical or confusingly similar to ORin the case of famous marks, dilutive of the owners mark4-The defendant used, registered, OR trafficked in the domain name WITH

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its strictly descriptive capacity, to describe their own product or its geographicorigin, or identify that it contains s product (Intel inside).

Focuses on HOW and WHY the INFRINGER uses the mark,NOT how owneruses itRULE: (Sunmark, Inc. v. Ocean Spray Cranberries)To be fair use, alleged infringermust use the term:

1- other than as a mark,2-in a descriptive sense, AND-The use of a name that is similar to (or IS) a TM to truthfully describe aproduct (not as a mark) is not infringement even if it causesconsumer confusion.

3-in good faithBad faith RULE STATEMENT: requires showing that the defendantintended to trade on the good will of the mark holder by creatingconfusion as to source or sponsorship.Bad faith indicators: proving an alleged infringer was aware ofmark NOT ENOUGH

-Copying typestyle, packaging, or labeling DOES indicate BadFaith.

POLICY: to compete effectively and to inform consumers about the qualities andcharacteristics of their products, sellers must be able to describe their products andhave access to descriptive terms necessary to compete, even if those terms areanothers TM.

Artistic Fair Use: the use of marks as social commentary (e.g. Warhols Campbell Soupcan, Barbie Girl song)

As social commentary, 1A values are balanced with the TM owners source-indicatinginterests.

Comparative Fair Use: Comparative advertising is a descriptive use andpermissibleas comparative fair use

-Usually little danger of confusion: Generally the point if to distinguish the twobrands.

-Use of a rivals mark that doesnt create confusion is beneficial to consumers so theycan compare.

Nominative Fair Use: def uses the mark as an expression of something else (e.g. artistic,social commentary, etc.)First amendment helps in these cases.

Generally used for purposes of comparison, criticism, or point of reference (parody,Barbie enchiladas)

3 Elements of Nominative Fair Use:1-Ps product not be readily identifiable w/o use of TM2-Only so much of the mark may be used as reasonably necessary toidentify Ps product3-User must do nothing that would, in conjunction w/ TM, suggestsponsorship or endorsement by TM owner.

Fair Use for Reconditioned Goods: Consider:1-Are the repairs or the reconditioning so extensive that it would be a misnomer tocall the product by its original name?2-SCT focuses on a comparison of the qualities and characteristics of the goods whennew, and after the reconditioning process.

Repackaged Goods and Component Parts:Truthfully describing whats inside yourproductmade w/ Hersheys

-OK to use w/o permission, even if re-packager modifies mark holders goods andmakes inferior product.

-CaveatNot ok if deceptive/confusing: if the declaration of the component

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part is so prominent that it makes the consumer think the new product and thecomponent part are from the same source.

COPYRIGHT COPYRIGHT Policy: not to reward the labor of authors, but to promote the progress of

science and useful arts.REQUIREMENTS, 102(a): Copyright protection available for:

1) original (minimally creative-Feist) works ofauthorship2) fixed3) in any tangible medium of expression,

-now known or later developed-from which they can beperceived, reproduced, or otherwisecommunicated,either directlyor with the aid of a machine or device

4) Consist ofEXPRESSION rather than IDEAS or FACTS, which must remain inthe Public Domain

SUBJECT MATTER of 17 U.S.C. 102: In General

GENERAL CATEGORIES:

1) literary works; (includes computer programs) 2)musical works, including anyaccompanying words; 3) dramatic works, including any accompanying music;4)pantomimes and choreographic works; 5)pictorial, graphic, and sculptural works; 6)motion pictures and other audiovisual works; 7) sound recordings (works that resultfrom the fixation of a series of musical, spoken, or other sounds, but NOT the soundsaccompanying audiovisual works.) and 8) architectural works

EXCLUSION of PROTECTION for IDEASCopyright does NOT extend to any idea, procedure, process, method of operation,principal, or discovery

-ideas and facts preexist creative efforts OR would exist without them andcant be possessed by a single person.

Is it an IDEA? General elements necessary for the creation of other works SUCHAS:1-Concept: game show, parade w/floats2-Solution (this type of idea or the expression that flows from it is usually excludedfrom protection because its functionalmore below): design of forms necessaryto implement an accounting system, rule for a game, etc.3-Building Blocks: plot and theme of novel, colors and shapes in visual works4-Scenes a faire: ideas standard in a genre; formulas

-elements necessary to implement an unprotected ideaDo the similarities between 2 works follow from the idea? (e.g. business man contemplating

jumping photo, lots of differences, but lots of similarities too, but the similarities follow fromthe businessman jumper idea.

-If its too close to call between copying an idea or an expression, is there a policyconsideration that would function as a tie breaker? (e.g. blue paintings example)

EXCLUSIVE RIGHTS: 106 (1)-(6)The owner of copyright under this title has the exclusive rights to do and to authorize any ofthe following:(1) to reproduce the copyrighted work in copies or phonorecords;(2) to prepare derivative works based upon the copyrighted work;(3) to distribute copies or phonorecords of the copyrighted work to the public by sale orother transfer of ownership, or by rental, lease, or lending;

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(4)perform the copyrighted work publicly: in the case of literary, musical, dramatic,and choreographic works, pantomimes, and motion pictures and other audiovisual works;(5)display the copyrighted work publicly: in the case of literary, musical, dramatic, andchoreographic works, pantomimes, and pictorial, graphic, or sculptural works, including theindividual images of a motion picture or other audiovisual work, and(6)in the case of sound recordings, to perform the copyrighted work publicly by

means of a digital audio transmission.OWNERSHIP & AUTHORSHIP:The person who creates the work is the sole owner from the moment the work is fixedUNLESS:

WORK MADE for HIRE: 101 (p629): A work prepared by EITHER:1) an employee creating the work within the scope of employment,

if no traditional employment K exists, look to common law of agency:1- hiring partys right to control product2- skill required3- source ofthe instrumentalities/tools4- location of the work5-duration of the relationship between the parties

6-whether the hiring party can assign additional projects to hiredparty7-extent ofhired partys discretion over when and how long towork8-method ofpayment9-hired partys role in hiring/paying assistants10-whether the work is part of the regular business of the hiringparty11-whether the hiring party is in business12-the provision ofemployee benefitsAND13-the tax treatment of the hired party.

OR2) an independent contractor specifically commissioned to make a work that fallswithin the 9 categories described in 101 (2)andtheres a written agreementmemorializing the work made for hire status:

1)Motion picture2-Other audiovisual work3-Translation4-Supplementary work5-Compilation6-Instructional text7-Test8-Answer material for a test9-As an atlas.

NOTE: If you K that something will be a work made for hire but it doesnt fall into one of the9 categories, a court may still construe the agreement as transferring ownership of to thehirer.

STRATEGY and ARGUMENT: If its not a work made for hire, could you argue jointauthorship instead? Did the person who wants in contribute any type of copyrightableexpression? (like the producers on tv show who control the set and costumes and theappearance of the stuff in the pics taken by the freelance photogs)

Copyright Ownership in a Work Made for Hire vests in EMPLOYER or HIRINGPARTY

JOINT AUTHORS and Joint WorksRULE: (Aalmuhammed v. Lee )To be joint work there must be

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1) a copyrightable work,2) two or more authors who each contribute copyrightable expression

BUT Note: Valuable & copyrightable contribution doesnt necessarily= Author

3) The authors must INTEND their contributions be mergedintoinseparable or interdependent parts of a unitary whole.

-Requires some kind of objective manifestation of shared intent to beco-authors

Test for authorship:An author1-exercises control,

-The person to whom the work owes its origin and who superintendedthe workthe mastermind.-Absence of control is strong evidence against authorship.

2-coauthors make objective manifestations of a shared intentto becoauthors, and3-Audience appeal of the work turns on both contributions.

The contributions are integrated to the extent that you couldnt point toeither one as the conclusive reason for its success.

Copyright Ownership vests equally in all joint authors, who may each FULLYexercise ALL rights endowed by , as long as they share any proceeds equally w/ theothers

DERIVATIVE WORKS authored by someone other than original author: who owns? See 17 U.S.C. 101, 103

RULE: (Gracen-Dorothy plates) A derivative work must be substantially differentfrom the underlying workto even BE copyrightable.BUT Consider: RULE, Mirage Editions v. Albuquerque A.R.T. co.:

A work will be considered a derivative work only if:-It would be considered an infringing workif the material which itderived from the preexisting work had been taken without consent of a

copyright proprietor of such preexisting work.To prove it would be considered an infringing work as perabove,

must show that the alleged infringing work and the originalare:

Substantially similar in both ideas andexpression.

Soto be a copyrightable derivative work you have to balance the need forsubstantial similarity in the context of creating something substantially different,BUT:If it IS, and they were authorized to create the work (license, etc.) they own the in the derivative work, UNLESS allowed that would interfere w/ original authorsability to exploit the original.

Policy: main reason involves public domain stuff. If I use the last supper in my creation ithas to be different enough from the original that other people who want to use the publicdomain painting arent subsequently prevented because of my

LIMITATIONS on COPYRIGHTABILITY: Facts, Ideas, FunctionalFACTS, generally: NOT copyrightable b/c facts do not owe their origin to an act ofauthorship.

Actual facts v. fictional facts: actual facts exist whether someone discovers them ornot, they did not originate in the mind of the discoverer. Facts about Seinfeld werecreated from the imagination of the writers, so even though theyre true WRT the show,

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they are not FACTS for the purposes of lawFiction Portrayed as Fact: If you write a work and portray it as being factual, andsomeone else uses the facts for another work, you CANNOT claim infringement laterby revealing that your facts were really expression, Nash v. CBS

COMPILTATION of FactsCAN be Copyrightable 101: (Feist) A work formed by thecollection and assembling or preexisting materials or of date that are selected, coordinated,

or arranged in such a [minimally creative] way that the resulting work as a whole constitutesand original work of authorshipMinimal Creativity: works must show some modicum of creativity, but this isnt a superhigh standard. Just cant be so mechanical, routine, and entirely typical as to require nocreativity whatsoever.Selection and Arrangement: these are the elements of a compilation that make itcopyrightable, and the only elements which ARE copyrightable. Did you make creativedecisions about what to include and how to organize it?

-Facts you selected and arranged are STILL UNPROTECTABLE, anyone can use factsfrom your compilation.

IDEAS:MERGER DOCTRINE: Where an idea and its expression are inseparable, copyright shouldbe denied to prevent monopoly of the idea. Did the author have any meaningful

choice in deciding how to express a particular idea?1-Commonly applied for Phenomena/Solutions: ideas that describe scientificphenomena or provide solutions like Instructions, recipes, commercial valuationsthings where there are limited ways you can really express it.2-Suggestion/Opinion/Taste: Ideas that dont explain or solve, but are insteadinfused with the authors taste or opinion (e.g. pitching form) NOT ALWAYS APPLIED ifopinions/taste/suggestions dont materially assist the understanding of futurethinkersPolicy Question: If its an idea in the second category, do we think withholdingthe merger doctrine (allowing copyright) will impair free public access to ideas?

SCNES FAIRE: Conventions of a genre.-Refers to the unprotectability ofincidents, characters, or settingswhich are, asa practical matter, indispensable, or at least standard in the treatment of a

given topic.-Audiences have come to expect certain plot devices, stock/standard characters,images, sounds, and expressive techniquesPolicy Alternatives:

1)The communicative effect of the device may be so great that a given worklacking those features wouldnt be able to achieve any communicativeeffect.

OR2)The communicative effect is so great that the benefitof their use for futurecreators clearly outweighs any possible costto the originators of thefeatures.

Is it FUNCTIONAL: (Baker v. Seldon): Is it like the formswhich were necessary to use theaccounting system and therefore not protected, or is it like the essay explaining the

systemwhich was protected because there are many diff ways one could write an essayexplaining the systemBLANK FORMS RULE: Rejects copyright in forms that are designed only to receiveinformation, NOT convey it (e.g. timecards, graph paper, diaries, bank checks, etc.)

Clues it might be FUNCTIONAL:1-Is it necessary to copy the element in order to implement an unprotected idea?2-Does the element increase the efficiency of the process?3-Do external factors favor adoption of the element in question?4-Has the element become a standard in the relevant industry?

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5-Is it necessary for compatibility with other works?

Is it utilitarian?:-Intended to bring a result? i.e. bike assembly instructions-Is there only one way to efficiently give a set of instructions? (merger doctrine)-are the instructions succinct and efficient descriptions of use (prob. Functional &unprotected), or do they contain elements clearly unnecessary for instruction, like creative

phrasing, jokes, or historical information (creative elements and specific expression wouldbe protected, but not the actual instructing parts b/c how many ways can you say insert pega into slot b?)

Is it a useful article?An article having an intrinsic utilitarian function that is NOT merely toportray its own appearanceor to convey information

-map, instruction manual, anatomy dummy NOT USEFULconveys its ownappearance andconveys info)

#1: is the work a useful article under the statutory definition?-It has intrinsic utilitarian function: chair, belt buckle, door handle

If YES, then#2: does it have SEPARABILITY?

aesthetic features that can be identified separately from, and are capable

of existing independently of, the utilitarian aspects?If YES, then it may be copyrightable

-Separability, 101,113: RULE: (Brandir-Ribbon Rack) A PSG work is copyrightableif its aesthetic elements can be conceptually separatedfrom its functional elementsPhysical: creative lamp design not protectable b/c you cant physically separate thefunctional from the creativeConceptualfancy belt buckle case. Sure its functional, you can use it to buckleyour belt, but the fancy design has nothing to do with the function of buckling yourbelt, its conceptually separate.-Would an individual looking at it think of the aesthetic aspects of the work as beingseparate from the functional aspects?-Design Process: separability only if the designer can make aesthetic choices that

are unaffected by functional considerationsribbon bike rack, every change in shapemade for aesthetic purposes affects the function of the bike rack.

-Mannequin: its aesthetic design is geared toward its utilitarian goal of displaying clothes,the more attractive it is, the more life-like, the better job it does of selling the clothes.

Establishing Copyright InfringementINITIAL CONSIDERATIONS:Has D potentially infringed by:

-Direct copying of the work-Preparation of a derivative work based on the work-Distributed a copy of the work to the public-Performed the work publicly-Displayed a copy of the work publicly?

Does one of the limitations apply to what D did: i.e. facts, functional, fair use?

-Has there been Misappropriation?-Did D copy (or adapt, distribute, perform or display) protected material,

OR-Did D only use non-protected materials (such as non-original expression, facts,ideas, or functional elements)

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-Is s work Substantially similar?

INFRINGEMENT Requires proving 2 things:1-Ownership of a valid copyright2-Copying of constituent elements of the work which are original.

Enforcing Copyrights: 1st-- Determine which rights have been violated-Usuallymore than one

-Owners acquire certain exclusive rights so those who exercise those rights withoutpermission can be enjoined and/or are liable for damages.

copying is shorthand for the infringing of any of the copyright owner's five exclusiverights.

Right to prepare derivative worksRight to reproduceRight to distributeRight to display publiclyRight to perform publicly

Direct Infringement: Copy has to be fixed in the same medium as the originalRULE: must prove(Three Boys Music Corp v. Bolton) :

1-Ownership of a valid copyright.

2-Copying in Fact: does NOT have to be intentional (could be subconscious)MUST SHOW:a) Reproduction of s work by some process

ORb) ACCESS: had access to s work and the works aresubstantially/probatively similar in light of that access.

1-Proof of access requires a reasonable opportunity (more than abare possibility) or possibility to view or copy the s work.

Evidence of Reasonable Access proven by:1-Establishing a Chain of events b/w s work and s accessto that work (e.g. dealings w/ publisher/record co.) OR2-s work has been widely disseminated (i.e. through salesof sheet music, records, radio performance, etc.).

Infers Subconscious copying often theorized as aresult of Widespread dissemination (Learned Hand:Everything registers somewhere in our memoryIt is noexcuse that in invading the authors rights his memoryplayed him a trick.)

AND2-Substantially similarity

STARTING LINE: filter out and disregard all non-protectableelements.

Scenes a faire: generic plotlines, genre conventions,etc.

BASELINE QUESTION: Are any of the PROTECTABLEELEMENTS, STANDING ALONE, substantially similar?

Two-part Test:1) Extrinsic similarity (Objective): identifies concreteelements based on objective criteria. (Must be proved tosurvive summary judgment; jury cant find SS withoutboth ex/intrinsic similarity evidence).

1-Often requires analytical dissection of work andexpert testimony.2-Relies on specific criteria that can be listed andanalyzed: real similarities at the level of plot,character, themes, mood, pace, dialogue,

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sequence of events, etc.3-Filter out and disregard non-protectable elements.4Identify where the works share ideas/expression: dothe shared areas constitute protectable expressiveelements?

2) Intrinsic similarity (Subjective):AlsoOrdinary

Observer Test (2

nd

Circuit) Would a reasonable person findthe overall concept and feel of the works to be substantiallysimilar? (This is a jury question, not to be considered ina motion for summary judgment).

Access Inverse Ratio Rule:Requires a low standard of proofof substantial similaritywhen a high degree of access is shown.

-Absent any proof of access can still make an infringement claimif the songs are strikingly similar, creating a presumption ofaccess.

INDEPENDENT CREATION: Reasonable access + Substantial similarity = Presumption ofcopying

Shift of burden to to prove Independent Creation: Evidence like work tapes, notes,etc. recognizes possibility that multiple authors will independently produce identical/nearlyidentical expressive work, leaves room for them to demonstrate requisite originality tosupport a .

Infringing Copying-MisappropriationRULE: (Tufenkian-Persian rugs)P must show:

1-his work was actually copied and2-substantial similarity or that copying was unlawful appropriation forexample,

protected expression in earlier work copiedamount copied was more than de minimis.

Relies on Feist:s creative choices in Selection, arrangement, and editing of public domainelements was mimicked by .

Just because altered one thing that changed the overall feel doesntchange the fact that he substantially copied s original contribution to thepublic domain material. (Poem may add a new stanza that changes the wholetone/message of the poem, but it doesnt change the fact that the rest of the poem isan exact copy),

Unauthorized Derivative Works See 17 U.S.C. 106(2)

Derivative Work: Definition (101):A work ofauthorship that is based on a preexisting worksuch as:

1-Translation

2-Musical arrangement3-Dramatization4-Fictionalization5-Motion picture version6-Sound recording7-Art reproduction8-Abridgement9-Condensation10-Any other form in which a work can be

Recast

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your family.)RULE: (Columbia Pictures-in store movie rental)To perform a work means in thecase of a motion picture or other audiovisual work, to show its images in anysequence or to make the sounds accompanying it audible. To perform a workpublicly means to perform it at a place open to the public or at any place wheretheres a gathering of a substantial number of persons outside of a normal circle of a

family & its social acquaintances is gathered.HOLDING: Ds services are the same as a movie theater but with someprivacy. Just because cassettes can be viewed in private does not alter thefact that the store is open to the public. Transmission to the public is publiceven if people are not all in the same place or view at the same time.

Transmission to a public setting such as a hotel room is a public performance.Thus, Ds private rooms are like viewing in a hotel room and constitute apublic performance.Think about type of control exercised by the person showing thework.

Secondary Liability:Contributory: SCT (MGM)intentionally inducing or encouraging direct

infringement1-Substantial participation in, or material contributionto theinfringing activity,

RULE: Sonylimits imputing culpable intent as a matter of law justbecause the product could be used for infringement.

-Balance: are there more non-infringing uses availablethan infringing uses?Which use are the ppl buying it most likely to employ?-If there is a substantial non-infringing utility to the productgreater than its infringement utility or primarily intended by, orprimarily known of by the party that distributes it, the fact thatit could be used for infringementdoes not satisfy thisprong.

2-Knowledge (actual or constructive) that infringement is likely tooccur.Knowledge: determined by the extent of the interweaving of thedirect infringers activities and the activities of the 3rd party.Spectrum:

K of character of DI/nature of DIs businessK of infringement/innocence of transactionsHOLDING: (Cherry Auction) Providing the site and facilities for knowninfringing activity is sufficient to establish contributory liability.

Inducement (Sometimes grouped with Contributory): (MGMv. Grokster Inc.)proven by evidence ofaffirmative intent that the product be used to infringe:

Active steps taken to encourage direct infringement Including, but NOTlimited to

express promotion of counterfeit goods,encouraging their sale, orprotecting the identity of the infringers.

such as:Advertising an infringing use, orInstructions on how to engage in an infringing use

HOLDING, MGM:One who

distributes a device

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with the objectofpromoting its use to infringe copyright,

as shown byclear expression orother affirmative steps taken to foster infringement

is liablefor the resulting acts ofinfringement by 3rd parties.

Vicarious: SCT (MGM)profiting from direct infringement while declining to exercisea right to stop or limit it.(Fonovisa v. Cherry Auction) does not require active participation, only:

1-Directfinancialbenefit from the infringementCausal Relationship: Can be estd through showing that infringinggoods are a draw for customers.9th Cir. Says there doesnt have to be a direct commission gained fromthe infringement to satisfy this prong: flea market caseCherryAuction didnt get a commission from the sale of the infringingrecordings, but they didget the daily booth rental fee from theinfringers, as well as the entrance fees and concession proceeds fromcustomers who came to buy the recordings.

2-Power to control the infringing activityControl: represents the character of the legal relationship b/w DIand 3rd party.

Spectrum: Actual supervision (Emp/empee) Formal right to control estd thru K(vendor/vendee)

Anti-Circumvention & Technological Protection MeasuresRULE: (RealNetworks v. Streambox) Digital Millennium Copyright Act (DMCA)prohibits technology or product that :

1-is primarily designed for the purpose of circumventing a technology thateffectively controls access to a copyrighted work or protects a right of acopyright owner;2-has only a limited commercially significant purpose or use other than to

circumvent such technological protection measures; or3-is marketed for use in circumventing such technological protectionmeasures. 17 U.S.C. 1201(a)(2), 1201(b).

Fair Use: Defense to Copyright Infringement- 17U.S.C. 107BEFORE WE GET TO FAIR USE D HAS TO SHOW A VIOLATION OF ONE OF THEIR 106 RIGHTS.

Unauthorized Use Infringement: Unlicensed use of a work isnt infringing, even ifits not authorized, UNLESS:

It conflicts with one of the specific exclusive rights conferred by law.

Ordinary and Personal Use: permissible

4 FAIR USE FACTORS: Burden of Proof on D to prove it IS fair use, not on toprove it ISNT.

1-Purposeand Character of the Use: commercial v. private/non-profitPURPOSE:Criticism, Parody, and Other Exemplary UsesGenerally ok according to 107: Criticism, comment, news reporting, teaching(copies for classroom use), scholarship, research, etc.

a-Challenging use for commercial gain: likelihood of future harm ispresumed.

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-SCT says: a use is commercial if the users stands to profit economicallyfrom exploiting the copyrighted material without paying the customaryprice.

b-Challenging non-commercial use requires proof that:1-The particular use is harmful

OR

I2-f the particular use becomes widespread it would adversely affectpotential market for the work.c- NOTrequired to show:

actual present harm, orcertaintyof future harm

d- IS required to show by a preponderance of evidence:Some meaningful likelihood of future harmexists

CHARACTER: Is it, and to what extent is it, transformative:DOESIT:

1-Add something new with a further purpose or differentcharacter,2-altering the first with new expression, meaning, or message

DOES NOT have to visually transform the work, coulduse the work for a different expressive purpose than theoriginal. Ex: under Bill Graham Archives v. DorlingKindersley Ltd. 2nd Cir. Said s use of s concert posterwas transformative because it was used in abiographical timeline, a totally different expressivepurpose than the original authors use as a concertpromotion.

2-Nature of the Copyrighted work: Published v. unpublished, fact or fiction, etc.

3-The substantiality of the portion used in relation to the copyrighted workas awhole

-Focuses on qualitative use, not just quantitative. (e.g. even thougharticle only used 300 words, those 300 words represented the heart of theentire work).

Parody exception: a parodys ability to comment on the original isdependent on a recognizable allusion to the original, which usuallyrequires using the most distinctive or recognizable (the heart)features of the original.

4-The effect on the potential market use or value of the work/ impairment ofcommercial value of

Right of first publication: commercial value of this right lies primarilyin exclusivityPolicy: creating/preserving incentives for creative effort

Is it going to cut into the economic incentive of the original author: consider,

is s use going to create a market substitute for the copyrighted work, or amarket substitute for the exercise of one of s rights if he chooses to use itlater?Supplanting Ps market: creating a substitute=BAD,Suppressing s market: scathing criticism that makes it so no onewants it anymore=OK

PARODY: use of some elements of a prior authors composition to create a new one that,at least in part, comments on that authors works.

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Parody, like other comment or criticism, may claim fair use under 107.Threshold Question: would a reasonable person perceive the work as aparody?

Whether the parody is in good or bad taste doesnt matter, not forthe court to decide.

Does the new work:

1-Supersedes the objects of the original (creates a marketsubstitution/replacement)OR2- Do the Parody and the original usually serve different market functions.3- Is it, and to what extent is it, transformative: DOESIT:

Add something new with a further purpose or different character,altering the first with new expression, meaning, or message

Parody has an obvious claim to transformative value.

Parody is NOT: a commentary that has no critical bearing on thesubstance or style of the original which the alleged infringer merely usestoget attention or avoid the drudgery in creating something fresh.

If this is the case the claim to fairness diminishes accordingly (if notvanishes), and other factors, like the extent of its commerciality,loom larger.

RULE: (Campbell v. Acuff-Rose-Orbisons Pretty Woman)Factors relevant to determine fairuse:

Purpose of the UseNature of the Copyrighted work

The substantiality of the portion used in relation to the copyrighted work as a wholeThe effect on the potential market use or the value of the copyrighted work

HOLDING:Purpose of use: 2 Live Crews song reasonably could be perceived ascommenting on or criticizing the original. Whether it is in good taste is not for ct to decideNote: ct asks whether D adds something to the work to transform it into something differentor just copying/ taking advantage of Ps song

PATENTS Five Elements for Patentability

1. patentable subject matter ( 101)2. utility ( 101)3. novelty ( 102)4. non-obviousness ( 103)5. enablement & written description ( 112)

ELEMENTSOF PATENTABILITY: SUBJECT MATTER35 U.S.C. 101

Whoever invents or discovers any new and useful process, machine, manufacture, orcomposition of matter, or any new and useful improvement thereof, may obtain a patenttherefore, subject to the conditions and requirements of this titleThing Group: Machines, Manufacturers, and Compositions of matter are product claims.

They are things.You can use the words device, apparatus, however,a manufacturer is something that is static; a machine has moving parts.Compositions of Matter that are chemical in nature (I.e. a new compound, newcombinations of compounds, and things distinguishable from machines andmanufacture).

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Processes: These are not things but are acts that develop

Diamond v. Chakrabarty (Subject Matter; 1980) Anything under the sun made bymanIssue: does Cs micro-organism constitute a manufacture or composition of matter w/inthe meaning of 101?

Holding: Yes its patentableReasoning: not naturally occurring; product of human ingenuity; bacterium has markedlydifferent characteristics from any found in nature and one having the potential for significantutilityNotes: the fact that it consists of products of nature does not mean that thecombination is a product of nature.In re Bilski Fed Cir. 2008 Note: machine-or-transformation test is not the sole test, but isa useful & important clueRULE: A process is patent-eligible under 101 if:

1) Its tied to a particular machine or apparatus : If its not it means you couldpractice the invention in your head, which means that its an abstract ideaand impossible to enforce.

OR2) It transforms a particular article into a different state or thing.

ELEMENTSOF PATENTABILITY: ENABLEMENT & WRITTEN DESCRIPTION35 U.S.C. 112: SPECIFICATIONThe specification shall contain a written description of the invention, and of the mannerand process of making and using it, in such full, clear, concise, and exact terms as toenable any person skilled in the art to which it pertains, or with which it is most nearlyconnected, to make and use the same, and shall set forth the best mode contemplatedby the inventor of carrying out his invention.The specification shall conclude with one ormore claims particularly pointing out and distinctly claiming the subject matter which theapplicant regards as his invention.

4 DISCLOSURE Requirements: 112; 1-3 Refer to Description/Specs, 4 refers to Claims1) Written Description: Serves 2 functions

1-Notice: allows 3rd parties to see where your property boundaries lie2-Timing of Invention: limits patentees ability to file subsequent patentsbroadening the claims, while keeping their original filing date.

a. Claim Amendments: any time you amend claims later it has to besupported in your earlier application, otherwise you cant have the filing dateof your earlier claims.

2) Enablement: requires a patent holder to teacha PHOSITA how make and use an itemwithout undue experimentation

- What is undue, i.e. too much, experimentation?Trial and error ok, but undueexperimentation is not.

Look at:1- the technology,2-quantity of experimentation necessary,

3-amount of direction or guidance presented, presence or absence of workingexamples,4-nature of the invention,5-the state of the art,6-relative skill of those in the art,7-predictability or unpredictability of the art,8-the breadth of the claims.

-Constrains scope of claim:A patentee cannot claim more than he disclosesScope of the claim must bear reasonable relationship to the scope of enablement so

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inventor cant gain patent rights beyond what is enabled.-Info disclosed has potential immediate value to follow-on researchersinterested in improving the patented invention.

3) Best Mode: Application MUST disclose the best mode forcreating/processing/using/constructing your invention:(Unique to US: US is the only country that requires best mode, so its often a pitfall for

foreign applicants)2 Part TEST to Determine Compliance w/Best Mode Req:

1st ProngSubjective: At the time of filing, did the inventor know of a modeof making/using his invention that he considered best?

If YES, then:2nd ProngObjective: Is disclosure adequate to enable PHOSITA to practicethe best mode, or has the inventor concealed his preferred mode?

Compares what the inventor knew w/ what he actually disclosed.-Judged as of the filing date: if you come up with some better mode a few yearsafter you got your patent you wont get busted on this one. BUT: How muchimprovement activity should patentees be allowed to capture?-Public Policy: Prevent inventors from obtaining patent protection while concealing(as a trade secret) the preferred embodiments of the claimed invention from the

public.DONT HAVE TO INCLUDE:PRODUCTION DETAILS:-Commercial Considerations: e.g. equipment the inventor has on hand,relationships with suppliers, etc.

Because these considerations do not relate to the quality of theclaimed invention.

-Routine Considerations: Things that matter vis--vis the claimedinvention, but are routine details of production a PHOSITA would already beaware of.

BUT: whos to say what the BEST way is??4) Definiteness-THE CLAIMS : State your claims with clarity, since the claims are yourproperty boundary.

-Claim terms must be clear enough that PHOSITA will understand the limitations ofthe term:-Its a good strategy toprovide definitions of key terms in thespecification.

-Invention can be broken down into several claimsgood idea to do so b/c if any partof claim is invalid the whole thing is struck, so if other aspects of the invention areembodied in other claims they could survive.-Must be clear to fulfill the notice function: public is informed of the scope of theinventors right to exclude-Will help show if your claims are valid

Rejections under 112(2):-Typo rejections: easily fixed in prosecution-Vague/Indefinite: more substantive than typo; claim is too vague to show where

the claim boundaries lie.-Does not always lead to rejection, BUT, if the patent is issued andinfringement takes place, vague claims could be vulnerable and subject toreview during litigation

ELEMENTSOF PATENTABILITY : UTILITYGeneral Utility: can the invention as claimed really do anything? Is it capable of any use?Specific Utility: does the invention work to solve the problem it is designed to solve? Theinvention doesnt have to be perfected, but must be refined and developed to a point

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where specific benefit exists in its currently available formPolicy: Otherwise you allow an applicant to engross what may prove to be a broadfield.

Beneficial or Moral utility: does the intended purpose have some minimum social benefit,or is it at least not completely harmful or deleterious? Does society want this done?

ELEMENTSOF PATENTABILITY: NOVELTY & PRIORITY102 102:A Person Shall Be Entitled to a Patent UNLESS :

(a) Known, used, or printed: the invention was known or used by others (occurs totallyindependent of applicant and his invention) in this country, or patented or described in aprinted publicationin this or a foreign country, before the applicants date of invention.(b) Bars: Public Use, On Sale; Patented/Printed in Foreign Country more than 1year

prior to date of US patent application(c) Abandonment(d) Impact of Foreign patent app: No US patent if you applied for a foreign one morethan 1yr before applying in US.(e) Prior Patents: The invention was described by an application or actual patent w/filingdate prior to your invention date(f) Not the Inventor: if you did not yourself invent the subject matter of the patent

(g) Interference: Someone else might be able to foil your patent by establishing priorityover you (conception & diligence)

NOVELTY: Not KNOWN, Not USED, No PRINTED PUBLICATION 102(a)-Geographic Distinction: known or used as delineated in102(a) refers ONLY to prior artknown or used in the US(BUT we do allow you to RTP in another country and have it count for proving the worthinessof your patent in the US.)

KNOWN: To be known by others in the US prior to applicants invention date, theinvention must have been:

1)RTPd, or described in writing sufficient to enable a PHOSITA to make itw/o undue experimenting.

AND

2)Accessible to the public-Publicity Requirement: very light, No affirmative act necessarybasically basically understood as lack of secrecyno efforts madeto conceal.

USED : To be used by others in US prior to apps invention date, the inventionmustve been:

1)RTPd, or described in writing sufficient to enable a PHOSITA to make itw/o undue experimenting.2)Accessible to the public (see above)

AND3) Used in the manner for which is was intended by its inventor

PRINTED PUBLICATION BAR: Misleading, does NOT actually have to beprintedORdistributed to count.

Dissemination and Public Accessibility are the keys to the legal determinationof published.

RULE: (Klopfenstein)To be a printed publication the reference must havebeen

1) sufficiently accessible2) to the niche of people who would actually be interested in,or who work in, the art (PHOSITAs);

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Factors to consider:1-Length of time the display was exhibited2-Expertise of target audience3-Existence (or lack of) of reasonable expectations material will not becopied

-Has audience been prohibited from or instructed not to take

notes or photos?-Is presentation in a form that makes it easy to copy therelevant portions?

4-Simplicity or ease with which the material could have been copied

NOVELTY: BARSPUBLIC USE, ON SALE 102 (b)

Public Use Bar 102(b):(refers to use resulting/related to applicant, as opposed to 102a- use occurring separate andindependent of applicant)

Public Use: ifmore thanone year before patent app is filed:-persons other than the inventor/applicant-used the completed, operative invention

1)The device used in public includes every limitation of the laterclaimed inventionOR

2) By obviousness, if the differences between the publicly usedinvention and the claimswould have been obvious to a PHOSITA.3) Public use doesnt require that more than one of theinvention be used: one well-defined case of use is enough to suffice.

-in the way it was intended to be used-and are under no limitation, restriction, or obligation to keep the inventionsecret.

Public v. Private: Whether use of an invention is public or private does NOTnecessarily depend on the # of people who see or know about its use.(Ex:Egbert: Corset stays built inside corset, not seen in public)

Policy:Trying to get invention into the public domain. We want people to file theirpatents in a timely manner so the 20yr time will run and the invention will reachpublic domain in a reasonable length of time.

Strategy to Avoid Finding of Public Use:Inventor controls the use of the inventionInventor imposes confidentiality on the person using it.

NOTE!! 3rd Party Public Use: 102(b) makes no distinction between inventoractivity and 3rd partyactivity WHICH MEANS 102(b) applies even when a 3rd party,UNBEKNOWNST TO INVENTOR, publicly uses the invention!

EXPERIMENTAL USE EXCEPTION to Public Use: Showing ExperimentalUse negates a showing of Public Use

Definition of Experimental Use: use of an invention by-the inventor himself, or-any other person under his direction,-by way of experiment,-in order to bring the invention to perfection is NOT Public Use.

TEST: Determining Experimental Use: Evaluate the totality of thecircumstances (Lough) including:

1-Extent of Use: Number of prototypes and duration of testing2-Monitoring Use: Whether records or progress reports were made

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2-Distinction between offering to sell the PATENT ITSELF, and offering to sell whatsCLAIMED in the patent.

a. Selling thepatent, i.e. the property rights=OKb. Selling the claims, i.e. the invention itself=NOTOK

NOTE!! 3rd Party SALE: 102(b) makes no distinction between inventoractivity and3rd partyactivity-- 102(b) applies even when a 3rd party, UNBEKNOWNST TO

INVENTOR, sells or offers to sell the invention!

NOVELTY: No ANTICIPATION 102 (e)ANTICIPATION: Proving LACK of NOVELTY byAnticipation Requires Prior Artwhere:

-Each and every claim limitation of applicants invention isdisclosed/enabled in a singlereference so as to place the invention in thepossession of a PHOSITA

-This has to be a single invention: you cant prove lack of novelty byshowing that the challenged patent can be pieced together from abunch of other prior art patents.

-BUT if a PHOSITA could piece it together, it might fail as

obvious under 103-The single reference doesnt have to explain every single detail, itstaken as a whole with the knowledge that a PHOSITA would have.

Prior art must have strict identity with the challenged invention!!PRIORITY: PROVING DATE of INVENTION: 102 (g)(1) Critical for all 102 Noveltyprovisions

1st to REDUCE INVENTION to PRACTICE (RTP): Prima facie First and True InventorReduction to Practice (RTP): 2 types

1) Actual: Inventor can prove that the invention is suitable, or works for its intendedpurpose.

1-Prototype, etc.: physically made and tested2- Lab tests: can be sufficient if they simulate actual working conditions, actual

working conditions not required:-Perfection and commercial viability NOT REQUIRED to show actual RTP.(Fujikawa v. Wattanasin).

2) Constructive: happens when the patent application is filed.CRTP may occur even if the applicant never built or tested his invention as long ashe satisfies 112 disclosure reqs.

Policy: to encourage early disclosure of the invention.

1st to CONCEIVE: Exception to being 1st to RTP, requires DILIGENCEA party who was the last to RTP might be the true and first inventor IF

1) First to CONCEIVE of the invention1) Must be shown by: objective evidence that the inventor was the FIRST to

form in his mind a definite and permanent idea of the complete andoperative invention as it is thereafter applied in practice.-To be the first and true inventor you have to have invented it on purpose.Even if you invent it by accident while working on another project, the dateyou stumble on it counts, not the date you started the project that led to it

-If another inventor conceived of your accidental invention before youstumbled upon it, and they exercised reasonable diligence in RTP, thenthey will be the first and true inventor of the invention for that

purpose.AND

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2) REASONABLE DILIGENCE exercised in reducing invention to practice (he didntabandon, suppress, or conceal the invention.) from the time of conception upuntilthe time the other person filed the patent.Policy: Balances interest in rewarding/encouraging invention w/public interest inearliest possible disclosure.

ANYDELAY:

-Requires proof of a legally sufficient excuse for any periods of inactivity onthe inventions RTP: Standards for sufficiency depend on whether the inventor is aregular person or one whose job is to invent (corp, researcher)

-Reasonable everyday problems and limitations OK, if its an independentinventor b/c not expected to devote entire life to RTPing invention: job, familyresponsibilities, financial limitations, all ok reasons for delay or inactivity.

-Other generally acceptable excuses: 1) illness;2) waiting for manufacture bya3rd party supplier of a special part or synthesis of a special compound needed tocontinue work on the invention (NOT for regular items easily procured from othersources); 3) delay while continuously seeking a company capable of actually RTPingyour invention 4) Delay due to collection of data in order to prepare patentapplication-Generally UNACCEPTABLE Excuses: 1) Commercial ConsiderationsDelaysdue to raising capital for commercial exploitation of the invention not excusable; 2)Waiting for someone specific to be there to help, when there are plenty of othersaround capable of doing the work (Griffith c. Kanamaru)

Griffith v. Kanamaru: Griffith couldnt show that hed made his invention his firstpriority. Instead, it seemed to take a backseat to other projects. Because ofthis, the court decided the delay was not excusable.

-Abandonment (Also 102(c)), Suppression and Concealment1) Is there Evidence that inventor intentionallyabandon, suppress, or conceal theinvention b/w RTP and filing?2) Can we inferA, S, or C from an unreasonable or unexplained delay?

Abandonment also 102(c): if 1st true inventor abandoned, you can get a patent ifthe 1st kept it secret (its not KNOWN)-Not a total bar: If you abandon, but resume when you find out someone else isworking on it you could still get priority as long as you RTP 1st, or if its already RTP,the date you resume work would be the invention date.S&C: Not the time elapsed thats the controlling factor, but the total conduct ofthe first inventor.

ELEMENTSOF PATENTABILITY: NON-OBVIOUSNESS 103Non-Obvious Inquiry-103 (Most common reason for invalidating patent rights):Would the claimed invention have been obvious to a PHOSITA (also, ordinary creativity) inthe art the time the claimed invention was made?

FIRST: Identify your PHOSITAb/c obviousness depends on what the PHOSITA wouldknow/do.

- RememberORDINARYSkill (which also implies ordinary creativity)We dont

want to set this bar too high, we dont always equate it with the skill of the inventorbecause the inventor might be extraordinary:

SECOND: Identify Scope and content of the prior art: Only ANALAGOUS prior art takeninto consideration, you cant pull stuff from totally unrelated fields (limited to fields of whicha PHOSITA would be reasonably aware)

103 violation can result from multiple references combined: diff from102(e), anticipation.

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Threshold Question: Is the sought after patent a combination which:1-merely unites old elements2-with no change in their respective functions3-and yields no more than one would expect from such an arrangement?

Time of invention: 103 requires casting the mind back to the time of invention, toconsider the thinking of one of ordinary skill in the art, guided only by the prior art

references and the then-accepted wisdom in the field.Clues that it might be OBVIOUS: Predictable Use = Predictable Results: Probably NOTOBVIOUS(KSR v. Teleflex):

1-If a PHOSITA can implement a predictable variation, 103 likely bars patentability.2-Apparent Reason to use known methods to combine familiar elements which yieldonly predictable results.3-Improvement is no more than the predictable use of prior art elements according totheir established functions.4-If its something already known in prior art that's altered by the mere substitution ofone element for another known in the field, its obvious if it doesnt do more thanproduce a predictable result.

PREDICTABLE RESULTS COROLLARY: Conversely, if prior art warns that a

particular combination is1- really hard or dangerous, or2- Not worth trying b/c its certain to only yield certain predictable results,

BUT you figure out a way to combine it that yields productive, unpredictable results,then thats a good inference of NON-OBVIOUSNESS!

Evaluation of 2ndary Considerations: objective inquiries to shed light on origin ofpatents subject matterIs it OBVIOUS in light of:

1-Interrelated teachings of multiple patents2-Demands known to the design community or present in the marketplace:Any needor problem known in the field of endeavor at the time of invention and addressed bythe patent can provide a reason for combining the elements in the manner claimed,and thereby render the invention OBVIOUS.

3-Scientific literature and market demand driving design trends.4-Background knowledge of a PHOSITA, as well as creative steps he would employ,a. PHOSITAs knowledge of uses of items beyond their primary purposes

5-Other independent inventors coming up with your invention at the same time youdid.

Maybe its NOT Obvious in light of:1-Licensing or acquiescence of others to your patent

-We think people dont want to pay for something if they can obviously get itfor free-BUT: it could just be cheaper to license than develop yourself

2-Awards for your invention3-Skepticism, teaching away, unexpected results for what you did (PredictableResults corollary above)4-Copying by others5- Others have failed to solve the long felt need/problem known in the field that thepatent addresses.6- Advances in collateral technology: are you creating a sphere of innovativeimprovement?

OBVIOUS even if:1-Applicant was trying to solve DIFFERENT PROBLEM from the patentee:Identity of motivation, purpose or problem to be solved is NOT required to find thatan applicants invention is obvious.

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particular meaning in the pertinent field.#2Literal Infringement: Accused device doesnt have to use ALL the patentedinventions CLAIMS, but P must prove that it includes elements Identical or equivalent toEach and Every Elementof the Claim it DOES utilize.The absence of even 1 element of a patents claim in an accused product meansthere is NO literal infringement

Ex: Supersoaker water chamber is external while TTMPs claim 1 described a chamber in acontained housing and Supersoaker doesnt have light and sound covered by TTMPs claim1. SUPERSOAKER does not literally infringe

DOCTRINE of EQUIVALENTS (DOE): Infringing device/process does notinfringe on each and every limitation in the claim, but the part that differs isequivalent to the omitted/altered limitation.

DOE is applied to each limitation, NOT THE INVENTION AS A WHOLEYou cant argue that Ds overall invention is an equivalent of yours b/c it doesthe same basic thing the same basic way.

Considerations in Determining Equivalents:1-Triple Identity Test: 1) Does Ds element perform 1) the same functionin 2) substantially the same way to 3)obtain the same result as the claimedelement?2-WouldPHOSITA know differing elements were interchangeable @ time ofinfringement?3-Will finding Ds element equivalent give patentee rights he wouldnt havebeen able to obtain4-Was patented invention a breakthrough (equiv. more likely) or relativelyminor in broad field.

Question of FACT, not LAW: DOE questions ALWAYS go to the JURY.Timing Distinction: Literal infringement v. DOE:

Literal: measured at the time of filingDOE: measured at the time of infringement.

All-Limitations Rule: Under this rule, for there to be infringement under the DOE anequivalent of each claim limitation must be found in the accused device.

Tricky Issue---what is an ELEMENT? Sometimes used to mean a singlelimitation, sometimes used to describe a series of limitations making up acomponent of the claimed invention.

When two elements of the accused deviceperform a single function of the patented invention,

ORwhen separate claim limitations are combined into asingle element of the accused device,

THENFinding DOE Infringement of the claim limitation isntnecessarily off the table

IFthe differences are INSUBSTANTIAL.

Policy FOR the DOE: After-arising technologySCT says we dont want theinventor to have to predict what insubstantial equivalents/variations could arise asthe invention enters the marketplace or could be invented later. This wiggle roomallows capture for those things.Policy AGAINST the DOE: are we allowing patentees to capture things they didntenable in their application, giving more exclusive rights than we think hes due? Westill want to encourage invention.

PROSECUTION HISTORY ESTOPPEL (PHE), Limits DOE: If you took aposition during prosecution with regard to scope of coverage of the claims, PHEprevents you from taking an inconsistent position later in order to argue that

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something you changed or affirmatively gave up should be an equivalent.SCT RULE (Festo): Rebuttable Presumption of PHE arises when anamendment is made during patent prosecution that NARROWS THESCOPE of the claim to SECURE THE PATENT UNLESS:

UNLESS the patentee can show:1-reason for amendment wasNOT to avoid prior art or specific

concern eg: obviousness2- equivalent hes seeking to capture was unforeseeable @ time ofthe amendment.3-The claims of equivalence are for aspects of the invention thathave only a peripheral relation to the reason for theamendment.

OR 4-Some other reason suggesting that the patentee couldntreasonably be expected to have described the insubstantialsubstitute in question.BUT

-If the patentee is UNABLE TO EXPLAIN reasons for the amendment, Ct shouldassume PTO had a good reason related to patentability to include the limitation: PHEapplies ANDbars infringement thru DOE

PHE POLICY: Prevents a patentee who narrowed his claim during prosecution toovercome a prior art rejection by recapturing the surrendered claim breadth duringlitigation.

Contributory Infringement 271: 3rd party sale of a component for a patenteddevice or the sale of a component for use in practicing a patented process to someone otherthan the patentee.1-Component must be a non-staple item that is not suitable for substantial non-infringinguse.2-Knowledge: seller under 271 must have knowledge that the component is especiallymade or adapted for use in an infringement of a patent.3-Direct Infringement Required: Contributory Infringement can only be found if there isdirect infringement.

DEFENSES to INFRINGEMENTPublic Dedication Rule: If you disclosed something in the specification but did not list it asa claim, its dedicated to the public domain. You cant win on infringement if someonethen uses the info in the specs that you didnt claim!

First Sale Doctrine/Patent Exhaustion: Once lawfully sold, the Patentee is stripped of hisrights in that particular productembodying his invention leaving purchase free to use,repair, modify, discard, and resell the product.

-To Invoke 1st Sale Doctrine the sale must occur in the US-1st Sale Doctrine DOES NOT give purchaser a right to make anew article onthe template of the original.

REPAIR (OK) v. RECONSTRUCTION (NOT Ok):

Repair is an Affirmative Defense to Infringement: Once P establishes infringement,the BoP is on D to prove by a preponderance of the evidence, that the activitiesperformed constitute REPAIR.

3 Primary Repair & Reconstruction Situations:#1: Entire Patented item is spent and alleged infringer reconstructs it to make ituseable again.#2: A spent part is replaced (See SCT test inAro)Repair#3: A Part is NOT spent, but replaced to enable the machine to perform a differentfunctionkin to repair

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Repair=Preserving Fitness for Use: SCT Common thread (according to Fed Cir.):license to use a patented combination includes the right to preserve its fitness for use.

Requires consideration of:1-Remaining useful capacity of the article2-Nature and role of the replaced parts in achieving that usefulcapacity.

1-Repair Defined as:-Disassembly and cleaning ofpatented articles-accompanied by replacement ofunpatented parts that are worn or spent-in order to preserve the utility for which the article was originally intended.

-Replacement of unpatented parts, having a shorter life than isavailable from the combination as a whole, is characteristic ofrepair, not reconstruction.

-Large scale overhauling (assembly line, etc.) can be ok: Navy overhauledpatented gun mounts on an assembly line, deemed ok b/c assembly line approachwas simply a matter of efficiency and economy.-Commercial Scale Overhauling can be ok: Company that acquired used clutchesand disassembled, cleaned and replaced the worn out parts-Burden of Proof:

Reconstruction: Usually involves replacing/remaking the patented components oncetheyre spent (at the point where a reasonable person would purchase a new one)BUT: Patentees intentions for duration of use dont factor into reconstructionanalysis.Just b/c patentee didnt intend their item to be usable more than once doesntmean refurbishing non-patented parts of the product for extended use constitutes forbiddenreconstructionFujis intent that their cameras be single use didnt really matter to thecourt in deciding if s refurbishment was forbidden Reconstruction.

LICENSE: The license gained by purchase of a patented article is governed by thelaws of K.Unless there are express conditions of sale which limit purchasers use ofthe article, Sellers intent for limited use wont control.

The Use (and Misuse) of Contracts in Patent LawPatent Misuse: (Morton Salt) Ct wont hear infringement claim if P misuses patent

by conditioning sale of patented product on buying unpatented product(Tying=patented item available in package deal only)P must show correction of misuse and dissipation of consequences before thecourt will hear it.

Permissible Field of Use Restrictions: (Mallinckrodt) P can limit use of patenteddevice by license or K.

REMEDIES for Patent InfringementLOST PROFITS: P must show that but for infringement, P would have made thelost profit. If successful, the burden is on D to show the damages are unreasonable. (MicroChemical)

PanduitFactors for LOST PROFITS-P must prove:1-Demand for patented product

2-Absence of acceptable noninfringing substitute-Lots of non-infringing alternatives it makes it hard to know what sales theinfringer captured

3-Ps manufacturing & marketing capability to exploit the demand4-Amount of profit P would have made

REASONABLE ROYALTIES: Evidence that infringement caused industry-wide depression ofmarket for licensing Ps product is required to show that P should get reasonable royaltiesin excess of what P actually charges for a license. (Trio)

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TRADE SECRETS

Three elements of a trade secret claim:

1-Subject Matter: information sufficiently secret to derive economic value, actualor potential, from not being generally known to other persons who could obtaineconomic value from its disclosure or use.

-Formula, pattern, compilation, program, device Customer lists, Businessplans/models, Marketing Strategies

2-Reasonable Precautions taken to protect: Info is the subject of efforts that areconsistently diligent and reasonable under the circumstancesto maintain itssecrecy or confidentiality.

-Efforts only have to be reasonable, they dont have to beperfect.3-Wrongful Misappropriation: P must showinformation was acquired throughdeception or theft

-Often results from breach of explicit and implied duties to protect secret.-Improper Means: Industrial EspionageEven though your shady practice might

not technically be breaking a law, One may not avoid these labors by taking theprocess from the discoverer without his permission at a time when he is takingreasonable precautions to maintain its secrecy

IS IT A TRADE SECRET? Factors to Consider in Making the Determination:(Issue of Fact=JURY QUESTION)

1- Is the info known outside s business : If YES, to what extent?-Not enough to be the 1st or only one to use info, if its generally known butunderutilized info TS.

2-Extent to which the info is known by employees and others involved in the sbusiness

BUT, Note: a TS doesnt lose its character by being confidentially disclosed toagents or servants without whose assistance it could not be made of anyvalue.

3-PRESERVING SECRECY: Reasonable Effortscan be shown by AFFIRMATIVE STEPSsuch as:

-Clear affirmative communication to all who have access that the info isCONFIDENTIAL is critical-Confidentiality Agreements: depending on circumstances, Oral confidentialityagreements can be reasonably relied upon (e.g. business mtg in Playwood: partiesorally agreed to confidentiality)

-Jury can take into consideration size & sophistication of parties, as well as therelevant industry.-Weighs in favor of if D is big player and is small time relying in good faithon Ds confidentiality.

-Confidential Relationship: Well established that the formation of a confidentialrelationship imposes duty upon the disclosee to maintain the info received in theutmost secrecy,-Marking all proprietary info Confidential-Limiting access to info only to employees who need to know for efficientexploitation of the info-Judiciously limit copying and electronic distribution-Create passwords-Adopt other traditional security methods, lock and key-Reasonable determination includes cost/benefit approach in determiningsufficiency of Ps efforts.

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-FAILURE to TAKE REASONABLE MEASURES: persuasive evidence that the infohas no real value to

The following is insufficient Proof of Secrecy (Timex):-Keeping info private from others but w/ no formal lock & key system orC&NDAs.-Evidence of trade practice that seems to support inference of

confidentiality.4-Value of the info to the s business and its competitors:-Value of info NOT diminished by an idea not being fully developed at thetime misappropriates it.-Value is in the innovation: someone in the industry could probably refine amisappropriated prototype.

In Playwood, the fact that the track prototype took wasnt fully workable yetdidnt make it less valuable b/c it only needed tweaking to get right.

5-Amount of time, effort, and money expended by in developing the info:-How hard and/or expensive it was to figure out, acquire, assemble, tells somethingabout how valuable it is (e.g. a customer list compiled after years of developingcontacts and pounding the pavement)

6-Ease or difficultywith which the info could be properly acquired or duplicatedby others:

BUT until disclosed by being put on the market, a concept should be entitled to TSprotection,

Distinctions Between Trade Secret & PatentDuration: Trade secret protection can last in perpetuity as long as 1) info remains secret2) info retains its valueTrade Secret is State Law, Patent is FederalInfo eligible for Trade Secret protection may or may notbe eligible for patent protection.

BUT: Even if it is, obtaining a Patent destroys trade secretb/c the patent publiclydiscloses info

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