Patents

A. INTRODUCTION

Patent section layout:

o Historical origins
o Overview of elements of patentability
o Substantive treatment of each of those elements
o Rules and doctrines concerning patent infringement
o Remedies in patent cases

1. Historical Background

P law began within the renaissance first real P system arose in Venice in 15th century
Venetian Act lays out all the essential features of a modern P statute.
National P system rooted in the Constitution
The history of the US P system in the 20th century reflects wrings between greater and
lesser protection.
In 1982, Congress passed Federal Courts Improvement Act, creating the new Court of
Appeals for the Federal Circuit which handles several important types of cases, but
from the beginning one of its primary functions has been to hear all appeals involving Ps.
Overall, Ps are more likely to be held valid now than in previous decades. It is generally
easier to get an injunction against an infringer, although this is subject to pressure now
that companies have emerged that specialize in acquiring and asserting Ps against large
manufacturers.
Overall, the perceived value of Ps has increased since the courts founding.

2. An Overview of the Patent Laws

Requirements for Patentability - The Patent and Trademark Office (PTO) reviews each P
application to see if it meets 5 requirements listed below

B. THE ELEMENTS OF PATENTABILITY

1. Patentable Subject Matter: process, machine, manufacture, or
composition of matter
2. Novelty 102: no identical prior invention
3. Utility 101: specific practical application
4. Nonobviousness 103: inventive leap (not a trivial step) forward
5. Enablement: description of the invention such that one of skill in
the art would be able to practice it

Subject matter that is not patentable:

o Laws of nature
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o Physical phenomena
o Abstract ideas

Patent Rights - Rights Conferred by a Patent

o A patent confers the right to exclude others from making, using, selling, offering
for sale, or importing the claimed invention for the term of the patent
Pre-1995 patent term is 17 years from the date of issue (generally)
Post-1995 patent term is 20 years from the date of filing (generally)
o The claims determine the scope of the invention (how broad or narrow the
coverage)
o The specification describes the invention, and often describes the prior art and
gives examples
1. Patentable Subject Matter: What types of inventions will be considered eligible for patent
protection?
o 35 U.S.C. 101
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and requirements
of this title.

a. Composition of Matter
Diamond v. Chakrabarty pg 132 product claim - (The proper distinction is not
between living and non-living things, but rather between products of nature and humanmade inventions)
F: Genetically-engineered bacterium that could break down crude oil, a feature that was
not possessed by any naturally occurring bacteria and could have significant value for the
treatment of oil spills
Legislative history supports a broad construction (anything under the sun made
by man)
Chakrabartys bacteria plainly qualify as patentable subject matter as a product of
human discovery that does not occur in nature
With regard to the Boards Plant Act argument:
o The Board argued that the two Acts addressing the patentability of
engineered plants are evidence that living things are not patentable subject
matter; plus one of the Acts specifically excludes bacteria as patentable
subject matter
The Court states that the Acts were enacted to dispel two notions
that prevented artificially bred plants from being considered
patentable subject matter: (1) even engineered plants were
products of nature, and (2) qualities not amenable to written
description requirement (color, scent)

The Court conceded that the categories of patentable subject matter are left to the
legislature; however once they have spoken, it is the courts that interpret that
language
o the current language of 101 is applicable to microorganisms, evidence
by the courts understanding and explanation of its decision
o Congress purposefully made the language of 101 broad because it
intended to promote and protect that which is unforeseeable

Parke-Davis & Co. v. H.K. Mulford Co.

F: Inventor who worked for the plaintiff was granted two patents covering a medication
that was superior over the predecessor medications because of its purity
There is generally no objection to patent claims covering a process for extracting
a natural product, as compared to a claim to the product itself
Natural products that have been isolated and/or purified (i.e., modified from their
natural state) may be patentable
Difference between claims that seek to preempt the use of a fundamental principle
and claims that seek only to exclude others from using a particular application of
that fundamental principle
o (the latter is patentable subject matter)
Machine-or-Transformation Test: A claimed process is patentable under 101 IF:
1. it is tied to a particular machine or apparatus, OR
2. it transforms a particular article into a different state or thing
Two corollaries to the machine-or-transformation test:
1. Mere field-of-use limitations are generally insufficient to render an
otherwise ineligible process claim patent-eligible
2. Insignificant post (extra)-solution activity will not transform an
unpatentable principle into a patentable process
Association for Molecular Pathology v. U.S. Patent and Trademark Office pg 140
o Fed. Cir. 2011
o Patent claim by Myriad on BRCA 1 and BRCA 2 which are breast cancer
susceptibility genes
o Issue: Are human genes that have been identified and isolated patentable? Yes
o Holding: Reversed DC and found that isolated DNA is patentable
o Isolated DNA is different than native DNA..isolated DNA contains just a
fraction of naturally occurring DNA molecule (no you cannot have a patent on a
gene, but you can on a CDNA)
o Misc: About to be heard in Supreme Court
1 Mayo Collaborative Services v. Prometheus Laboratories, Inc.
o Facts:
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S.
___ (2012), was a case decided by the Supreme Court of the United States
that held that claims directed to a method of giving a drug to a patient,
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measuring metabolites of that drug, and with a known threshold for

efficacy in mind, deciding whether to increase or decrease the dosage of
the drug, were not patent eligible subject matter.[1] The decision was
controversial, with some parties claiming it frees clinical pathologists to
practice their medical discipline, and other parties claiming that it
destabilizes patent law and will stunt investment in the field of
personalized medicine, preventing new products and services from
emerging in that field.[2]
The case arose in a dispute between Mayo Collaborative Services and
Prometheus Laboratories concerning a diagnostic test. Mayo Collaborative
Services is a for-profit[3] diagnostic testing lab offering diagnostic
services that operates as a subsidiary of Mayo Foundation For Medical
Education And Research,[4] which is a nonprofit corporation[5] affiliated
with the Mayo Clinic. Mayo Collaborative Services does business as
"Mayo Medical Laboratories", has 3,200 employees working in 58
laboratories and offers services worldwide.[6]
Prometheus is a specialty pharmaceutical and diagnostics company in the
fields of gastroenterology and cancer; it was bought by Nestl in 2011.[7]
Prometheus sells diagnostic kits and also offers diagnostic services as a
diagnostic testing lab.
o Holding: Claims directed to a diagnostic method that involved observing a
natural correlation were not patent eligible subject matter. The process patent that
Prometheus Laboratories had obtained for correlations between blood test results
and patient health is not eligible for a patent because it incorporates laws of
nature.
o Reasoning:
Mayo again appealed to the Supreme Court, which agreed to take the case.
It was argued on December 7, 2011 and the court handed down a
unanimous decision on March 20, 2012.[1] The Supreme Court reversed
the Federal Circuit and basically reiterated the findings of the District
Court.[19][20]
The court called the correlation between the naturally-produced
metabolites and therapeutic efficacy and toxicity to be an unpatentable
"natural law" and found the first two steps to be not genuine applications
of those laws[, but] rather ... drafting efforts designed to monopolize the
correlations.[1] (condensation of quote from Patently-O[19]) The court
said, "Because methods for making such determinations were well known
in the art, this step simply tells doctors to engage in well-understood,
routine, conventional activity previously engaged in by scientists in the
field. Such activity is normally not sufficient to transform an unpatentable
law of nature into a patent-eligible application of such a law."[1] Patently4

O provides a succinct summary: "The conclusion is that (1) a newly

discovered law of nature is itself unpatentable and (2) the application of
that newly discovered law is also normally unpatentable if the application
merely relies upon elements already known in the art."[19]
The court seemed to be aware of the impact its decision would have on the
diagnostics industry,[20] as it ended its decision by writing, "In
consequence, we must hesitate before departing from established general
legal rules lest a new protective rule that seems to suit the needs of one
field produce unforeseen results in another. And we must recognize the
role of Congress in crafting more finely tailored rules where necessary....
We need not determine here whether, from a policy perspective, increased
protection for discoveries of diagnostic laws of nature is desirable."[1]

b. Abstract Ideas pg 156

While general subject matter limitations are disfavored under section 101 (the products
of nature rule being a notable exception), there are a number of judicially developed
doctrines that limit the subject matter of patents.
Of these, one of the most important is that rule against patenting abstract ideas.
This rule appears to derive from the traditional idea that Ps are intended to cover
devices or physical things in the useful arts, not more esoteric matters.
The case that follows provides guidance from the Supreme Court on what constitutes an
unpatentable abstract idea.
BILSKI v. KAPPOS pg 158
o Facts: Bilski v. Kappos, 561 U.S. ___ (2010), was a case decided by the
Supreme Court of the United States holding that the machine-or-transformation
test is not the sole test for determining the patent eligibility of a process, but rather
"a useful and important clue, an investigative tool, for determining whether some
claimed inventions are processes under 101."[1] In so doing, the Supreme Court
affirmed the rejection of an application for a patent on a method of hedging losses
in one segment of the energy industry by making investments in other segments
of that industry, on the basis that the abstract investment strategy set forth in the
application was simply not patentable subject matter.
o Procedure:
Applicants were denied a patent by the Patent and Trademark Office
(PTO) for claims pertaining to a process of managing risk in commodities
trading. The PTO examiner deemed the invention not to be of patentable
subject matter under 35 U.S.C. Section 101. The Board of Patent Appeals
and Interferences affirmed the decision.
On appeal, the U.S. Court of Appeals for the Federal Circuit affirmed. The
court relied on Supreme Court precedent stating that an invention is
patentable if: "1) it is tied to a particular machine or apparatus, or 2) it
transforms a particular article into a different state or thing." Reasoning
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from this, it held that the applicants' invention clearly failed this test
(machine-or-transformation test) and therefore did not constitute
patentable subject matter.
o Issues:
1) Did the Federal Circuit err by using the machine-or-transformation test
in determining patentable subject matter?
2) Does the machine-or-transformation test prevent patent protection for
many business methods and thus contradict congressional intent that
patents protect "methods of doing or conducting business."
o Hold:
1) No.
2) No. The Court held that the invention, in this case, could not be
patented. More broadly, however, the Court held that business methods
can be patented, even if does not pass the "machine or transformation"
test.
o Reasoning:
Legal provision: Patent Act
The Supreme Court affirmed the Federal Circuit, holding that the
applicants' claimed invention is not patent eligible. With Justice Anthony
M. Kennedy writing for the majority, the Court reasoned that the Federal
Circuit did not err when it used the "machine-or-transformation test" to
determine patentability. However, the Court noted, in contrast to the
Federal Circuit, that the machine-or-transformation test is not the sole test
for determining patent eligibility.
Justice John Paul Stevens, joined by Justices Ruth Bader Ginsburg,
Stephen G. Breyer, and Sonia Sotomayor, concurred in the judgment. He
disagreed with the majority to the extent it suggested that any series of
steps that is not itself an abstract idea or law of nature may constitute a
"process" within Section 101. Justice Stephen G. Breyer, joined by Justice
Antonin Scalia, also concurred in the judgment. He noted his agreement
with Justice Stevens' concurrence and also highlighted the extent to which
the Court agreed on many fundamental issues of patent law raised by this
case.
In re Bilski
F: Applicants challenged the denial of a patent application for a method of hedging risk in
the field of commodities trading based upon the grounds that the subject matter was not
patentable
The Supreme Court has held that the meaning of process as used in 101 is
narrower than its ordinary meaning
o A process claim is not patentable if it claims
laws of nature

natural phenomena
abstract ideas
The issue presented is whether the claims are directed to a fundamental
principle (abstract idea) or a mental process AND, IF SO, whether
substantially all uses of that principle would be preempted
Purported transformations of public or private legal obligations or relationships,
business risks, or other such abstractions cannot meet the test because they are not
physical objects or substances, nor are they representative of physical objects or
substances.

Mayo/Alice Test: 2 part test

i. determine whether the claims at issue are directed to one
of those patent-ineligible concepts
ii. search for the inventive concept i.e., an element or
combination of elements that is sufficient to ensure that
the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself
2. UTILITY

The P code protects all inventions that are novel, USEFUL, and nonobvious.
Chemists often synthesize compounds that they believe might be useful someday for
something but for which no particular use is known.
When they apply for Ps on these compounds, they sometimes run headlong into the
utility requirement, as the following case (Brenner) demonstrates.
Utility
35 U.S.C. 101
Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
USPTO Guidelines for Utility:

The asserted utility must be specific, credible and substantial

The credibility element avoids the patenting of inventions that are fantastical
o if an invention is directed towards a certain function, it must be able to perform
that function, otherwise it is not useful
o classic example is perpetual motion machine
Examples of insubstantial, throw-away utilities are:
o complex device to be used as a landfill
o a costly and painstakingly derived compound to be used in shampoo or fish food

 Brenner v. Manson Chemical Compound Utility

F: patent application was denied by the examiner for failure to disclose any utility for the
chemical compound produced by the claimed process.
The Court identified two questions with regard to utility as it relates to Brenner:
o Is a chemical process useful just because it works (produces the intended
product)?
o Is a chemical process useful because the compound yielded belongs to a
class of compounds that are the subject of serious scientific investigation?
Justice Story stated:
o a useful invention is one that may be applied to a beneficial use in
society, in contradistinction to an invention injurious to the morals, health,
or good order of society, or frivolous and insignificant.
The Court held that unless a process is refined and developed enough such that
a specific benefit can be shown, there is insufficient justification to allow the
monopoly provided by the grant of a patent
Note: Brenner in many ways represents the HIGH-WATER MARK of the utility
doctrine. Most applications of the doctrine have been quite limited in the hurdles they
place before innovators. Certainly, any number of frivolous ideas are patented,
suggesting that the burden of showing utility cannot be all that high. Thus, dont assume
that Brenner can readily be extended by analogy
In re Fisher
F: Applicants claims recite 7 uses for ESTs (Expressed Seq. Tags) he identified. The
examiner and the Board of Appeals rejected applicants claims for failure to demonstrate
a specific and substantial utility
Applicant argues:
o that it does not matter that the function of the gene is not known because
the specific usefulness of the invention is how the identified ESTs can be
used
o says that support for his argument is found in the general commercial
success of ESTs
Government argues:
o the uses for the ESTs claimed by applicant are applicable to all ESTs and
are only a starting point for further research, the end result of which may
be patentable
The Federal Circuit affirmed the Boards decision
o The ESTs are research intermediates, i.e., tools used to conduct further
research, and the end result of such research may not reveal any useful
discovery
Note on the Patent Office Utility Guidelines pg 185
Note on Moral Utility pg 187
o The fight against immoral inventions was not limited to patents for gambling
devices. Another line of cases denied patents for inventions that could be ued only
to defraud. These cases are reviewed and rejected in the following case Juicy
Whip.
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 Juicy Whip v. Orange Bang: Moral Utility

F: Patent at issue covers a juice dispensing system- glass bowl on top really just
circulates an undrinkable liquid- the actual juice is dispensed from tanks hidden below
the glass bowl display
o Rickard invention was a process for treating tobacco leaves so that they
appeared spotted; at the time spotted leaves were thought to be superior;
the process did not actual improve the quality of the leaves and so the only
purpose of the invention was to defraud the consumer
o Aristo Hosiery patent claimed a seamless stocking with a structure on
the back that imitated a seam; at the time, seamed stockings were
considered to be of higher quality; the structure did not actually improve
the quality of the stocking, resulting in a deception to the consumer
Federal Cir. Holding: The fact that one product can be altered to make it
look like another is in itself a specific benefit sufficient to satisfy the statutory
requirement of utility
o The fact that consumers believe that they are receiving fluid directly from
the display tank, even deceptively so, is not by itself sufficient to render
the invention unpatentable for lack of utility

4. Novelty and Statutory Bars: Old Law and New pg 226

1952 Act: 35 U.S.C. 102. Conditions for Patentability; Novelty and Loss of Right to
Patent
Novelty and Statutory Bar
35 U.S.C. 102:
A person shall be entitled to a patent unless
a. Novelty
a. A person shall be entitled to a patent unless
a. the invention was known or used by others in this country, OR
b. patented or described in this or a foreign country, before the invention
thereof by the applicant for patent
b. Statutory Bar
o A person shall be entitled to a patent unless
the invention was patented or described in a printed publication in this or a
foreign country, OR
in public use or on sale in this country, more than one year prior to the date of the
application for patent in the United States [critical date]
*An inventors own work can be cited against her.

35 U.S.C. 102(a)
a. The Nature of Novelty
Rosaire v. National Lead Co.
F: Plaintiff held patents relating to methods of prospecting for oil or other hydrocarbons,
and sued defendant for infringement.
Defendant argued: invention was practiced by Gulf Oil before the date of
plaintiffs invention; the patents are therefore invalid under 35 U.S.C. 102(a)
(known or used by others in this country)
Gulfs work was done openly in the ordinary course of business, with no effort to
keep the activities a secret
No affirmative act to bring the work to the attention of the public is required by
statute
Plaintiffs patents are invalid under 102(a)
Corroboration Requirement: Supreme Court Guidelines When Determining Prior Use In
The U.S. By Testimony

Physical record of events

Relationship of witnesses to party claiming prior use
Length of time between prior use and date of claimed invention
Evidence of abandonment

Note on The Inherency Doctrine

The issue of inherency arises when one unintentionally and accidentally produces a
product, which may anticipate a later invention that intentionally produced the same
product
Accidental and unwitting production of a product, while in the pursuit of other and
different results, without knowing what was being done or how it was being done
cannot be anticipatory
Inquiry is the invention in the prior art in a way that provides a public benefit?

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35 U.S.C. 102(b)
b. Statutory Bars: Publications
Recall from the introduction to this section that one difference between statutory bars
under the 1952 Act (which we cover in this subsection) and novelty is that an inventor
can create a statutory bar by her own actions (e.g., publication of an article), whereas she
cannot destroy the novelty of her own inventions.
In short, an inventorys own work cannot be cited against her (in general) under section
102(a), but it is fair game under section 102(b)
Notwithstanding this fact, for many purposes the two provisions are not appreciably
different.
For example, the definition of publication a term you will recall occurs in both
sections 102(a) and (b) is the same for both.
Thus, although the following case involves a section 102(b) reference, the reasoning is
equally applicable to cases decided under section 102(a)
In re Hall pg 237 - dPublicness standard In general, a publication becomes
public when it becomes available to at least one member of the general public.
F: Patent claims were rejected under 35 U.S.C. 102(b), with the prior publication being a
doctoral thesis. Patent filing date was February 27, 1979 critical date is February 27,
1978
Testimonial evidence showed that university policy was to make dissertations
available to the public by cataloguing them and placing them in the main library
collection after receiving them from the faculty
Holding: Rejection of the claims was affirmed
o The proponent of the publication bar must show that prior to the critical
date, the reference was sufficiently accessible at least to the public
interested in the art, such that one skilled in the art could make the claimed
invention without further research or experimentation by examining the
reference
o Routine business practice to show the performance of a specific act is
sufficient evidence to establish a prima facie case
c. Statutory Bars: Public Use
Egbert v. Lippman pg 237
F: Plaintiff sued defendant for infringement of a patented improvement in corset springs.
Gave gf a pair in 1955 and another in 1958
Holding: The inventor allowed another to use the invention for more than the
statutorily allowed time, with no restrictions public use
The use of one patented article is sufficient for public use
Whether or not the invention can be seen by the public eye is not determinative
On-Sale Bar
o Two conditions must be satisfied before the critical date:
1) the product must be the subject of a commercial offer for sale
2) the invention must be ready for patenting
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proof of reduction to practice before the critical date, OR

proof that prior to the critical date, the inventor had prepared
drawings or other descriptions of the invention that were
sufficiently specific to enable one skilled in the art to practice the
invention

If the invention is being used in a good faith test (experimental use) in the public
eye, there is not public use
EXPERIMENTAL USE FACTORS:
o Necessity for public testing
o Amount of control retained by the inventor during the experiment
o The nature of the invention
o The length of the test period
o Whether payment was made
o Whether there was an obligation of secrecy
o Whether records were kept
o Who conducted the experiment
o The degree of commercial exploitation during testing
o Whether the invention reasonably requires evaluation under actual conditions of
use
o Whether testing was systematically performed
o Whether there was continual monitoring by the inventor
o The nature of contacts made with potential customers
d. The Experimental Use Exception
City of Elizabeth v. American Nicholson Pavement
F: Inventor developed a new and improved wooden pavement system, which he installed
by a toll house on a portion of a public road. Inventor stated that he chose this location to
test the usefulness and durability of his invention because it was a high-traffic area. The
inventor checked the system almost daily for six years and asked the toll house keeper
questions about it
The use of an invention under the control of the inventor for experiment in
order to bring the invention to perfection is not a public use of the invention
o long periods of time may be necessary
o public experimentation may be necessary
o improvements are not required to show experimental testing
o the public may derive an incidental benefit from the testing
e. Priority Rules and the First to Invent Under the 1952 Act pg 248

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Priority
35 U.S.C. 102(g)

Prohibits B from obtaining a patent if A made the same invention in the US

before B did, and A did not abandon, suppress, or conceal the invention.

Priority General Rules:

First to reduce to practice and not abandon gets priority
First to conceive and last to reduce to practice gets priority IF continual and
reasonable due diligence, which is measured beginning from the time just prior
to second conceivers conception date

Conception
o The formation in the mind of the inventor of a definite idea of a
complete and operative invention as it is thereafter reduced to
practice
Requires a certain degree of specificity
o A person of ordinary skill in the art could reduce to practice without
undue experimentation
Reduction to practice
Get the invention to work for its intended purpose
Actual
Building a model
Making a drawing
Constructive
Filing an enabling patent application (model not required)
where you explain it

Griffith v. Kanamaru pg 249

F: Kanamaru holds a patent directed to a chemical compound useful in the treatment of
diabetes. Griffith claims that he has priority over Kanamaru for the same invention
June 30, 1981 Griffiths conception
January 11, 1984 Griffiths reduction to practice
June 15-September 13, 1983 lapse in work by Griffith
November 17, 1982 Kanamarus filing date
Holding: The reasonable diligence standard balances the interest in rewarding
and encouraging invention with the publics interest in the earliest possible
disclosure of innovation
o Reasonable excuses for inactivity in reduction to practice are generally
those that are everyday problems and limitations encountered by an
inventor (person), i.e., hardships
o Waiting for a student who does not possess a unique skill related to the
research is not reasonable when there is otherwise no shortage of staff
o Waiting for outside funding is not a reasonable excuse

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 Patent Prosecution:

Patent Applications
o provisional application a placeholder application
o non-provisional application complete application

Patent Application Parts

o specification describes (enables) the invention, often discussing the prior art
and providing examples and/or drawings of the claimed invention
o claims set the scope of the invention
independent claims broad claims
dependent claims narrower claims, which depend from (contain all
elements of) their independent claim
o oath declares that the named inventor(s) actually invented what is claimed

First Year After Filing (application not yet examined)

o application is assigned to an art unit based upon the technology
o applicant may file Information Disclosure Statement (prior art references)
o applicant may file Preliminary Amendment
o examiner searches the prior art

First Office Action

o patent may be granted (unlikely)
o parts of the application are rejected, usually the claims
o reasons for each rejection must be stated and explained

Applicants First Response

o accept the rejection
delete and/or amend claims
o argue against (traverse) the rejection
argue for the validity/patentability of the claimed invention
delete and/or amend claims
can also amend the specification, but newly disclosed material will not
benefit from filing date

Applicants Response After Final Rejection

o file an Amendment After Final Rejection
o file a Continuation
continuation application essentially starts everything over again with
the benefit of the original filing date
continuation-in-part application starts again with newly added
material, which does not benefit from the original filing date
file an Amendment After Final Rejection and a Continuation
o appeal to the Board of Patent Appeals and Interferences

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Examiner interviews, by phone or in person, may occur throughout prosecution

Prosecution generally ends when a patent issues or is abandoned

American Inventors Protection Act of 1999

o U.S. patent applications that cover inventions that will be the subject of foreign
patent applications are published 18 months after filing
o The holder of a published application acquires certain provisional rights as of the
date of publication
when the patent issues, the patentee can recover a reasonable royalty from
an infringer IF the infringer had actual notice of the published application
AND the claims of the issued patent are substantially identical to that of
the published application
injunction is not a remedy
Invention Disclosure:
Enablement and Written Description
35 U.S.C. 112
The specification shall contain a written description of the invention, and of the manner
and process of making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best mode contemplated by
the inventor of carrying out his invention.

Enablement:
o A disclosure is enabling IF it would allow a person of ordinary skill in the art to
practice the invention without undue experimentation.
o Factors to determine undue experimentation:
quantity of experimentation
amount of direction or guidance provided
presence or absence of working examples
nature of the invention
state of the prior art
relative skill of those in the art
predictability of the art
breadth of the claims
Written Description:
o Applicant must show that he was in possession of the invention as of the filing
date

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compare original disclosure to final claims to determine whether the

application stated in the disclosure that the specific elements of the claims
were important aspects of the invention
o The written description requirement is more restrictive than the enablement
requirement. A disclosure may teach one skilled in the art how to practice the
invention, but if it does not describe each element of the claims, the written
description requirement will not be satisfied.

Gentry Gallery Inc. v. Berkline Group

F: Plaintiffs patent was directed to a sectional sofa that had two parallel reclining seats separated
by a console. Defendant manufactured a sectional sofa that had two parallel reclining seats with
a seat in between the two, the back of which could fold down
During prosecution, plaintiff distinguished its sofa from a prior art reference, which was
directed to a sofa that had two parallel reclining seats with a seat in between that had a
tray on its back
The court found that defendants sofa was like the prior art and, therefore, did not
infringe plaintiffs patent
o The court stated that an applicant complies with the written description
requirement by describing the invention, with all its claimed limitations and
plaintiffs disclosure did not describe the option of placing the controls
somewhere other than the console
Best Mode:
o The best mode requirement is designed to prevent a patentee from holding back
certain knowledge from the public, effectively maintaining part of the invention
as a trade secret while protecting the whole of the invention under patent law
o Best mode violations are found where there is either:
a failure to disclose a preferred embodiment, OR
a failure to disclose a preference that materially affects making or using
the invention
o Factors to consider to determine a violation
whether the inventor had a best mode at the time of filing
whether the disclosure is adequate to enable one of ordinary skill to
practice the best mode
5. Nonobviousness pg 257
Nonobviousness
35 U.S.C. 103
A patent cant be obtained if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.

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 Major Difference Between Anticipation (102) and Obviousness (103)

o For a prior art reference to make a claimed invention unpatentable for lack of
novelty (102), the reference must disclose ALL elements of the inventions
(anticipation)
o A single reference need not disclose all elements of a claimed invention for
the invention to be found unpatentable under 103 as being obvious
o To find obviousness, prior art references may be combined; BUT, there must
be a reason to combine them
Factual inquiries underlying the question of law of obviousness (Graham
):
o scope and content of prior art
o differences between prior art and claims at issue
o obviousness and nonobviousness of the subject matter

o Secondary Considerations
commercial success
long felt but unsolved needs
failure of others
awards and praise
skepticism, teaching away, and unexpected results
licensing activity
copying
advances in collateral technology
near simultaneous invention
Obvious to try: An invention that was obvious to try is not obvious when:
o one must vary all parameters (try numerous possible choices) until one
possibility arrives at a successful result, and the prior art gives either no
indication of which parameters are critical or no direction as to which of the
many choices may be successful
Inverse notion:
o one skilled in the art merely pursues known options from a finite number of
identified, predictable solutions

Graham v. John Deere Co.

F: The device, which was a combination of old mechanical elements, was designed to
absorb shock from plow shanks as they plow. Plaintiff obtained a first patent, and
then obtained a second patent based upon an improvement. 5 prior patents indicating
the state of the art were cited by the PTO during the prosecution of plaintiffs patent
The district court and the court of appeals found that the prior art taken
together contained all of the mechanical elements of plaintiffs invention, and
one prior-use device alone contained all of the elements
Holding:
17

o The Supreme Court first focused its analysis on plaintiffs first patent
as prior art, agreeing with the patent examiner that the improvement
was a matter of design well within the expected skill of the art and
devoid of invention
o With regard to the prior-use device that contained all elements of
plaintiffs invention, the Court found that rearranging the elements
to produce the same function did not meet the requirements of
nonobviousness
a. Combining References pg 269
To anticipate a patent application under section 102, a single prior art reference must
disclose every element of what the patentee claims as his invention.
If a prior art reference does not disclose all the parts of an invention, it does not
anticipate the application.
Under section 103, however, a single reference need not disclose the entire invention to
bar a patent. Thus, section 103 asks whether a researcher who is aware of all the prior art
would think to create the claimed invention.
In deciding the question of obviousness, it is sometimes permissible to analyze a
combination of ideas from different sources of prior art (known as prior art references).
KSR International Co. v. Teleflex Inc.
F: Plaintiffs invention is directed to a mechanism for combining an electronic sensor with an
adjustable automobile pedal such that the pedals position can be transmitted to a computer
that controls the throttle in the vehicles engine
A patent composed of several elements is not proved obvious merely by
demonstrating that each of the elements was, independently, known in the prior art
It is important to identify a reason that would have prompted one of ordinary skill in
the art to combine the elements in the way the claimed invention does (away with the
TMS (teach, motivate, suggest) test)
If a person of ordinary skill can implement a predictable variation, 103 likely bars
patentability
The court found that, based upon the prior art, it would have been obvious to a pedal
designer of ordinary skill to put a sensor on a fixed pivot point of an adjustable pedal
assembly
In re Kubin
F: Applicants invention is directed to the isolation and sequencing of a human gene that encodes
a particular part of a protein
The court agreed with the Board that one skilled in the art would have recognized the
benefits of isolating the protein and determining its sequence because of the important
role protein plays in immune function, and this can be done by conventional methods
b. Secondary Considerations

18

D. INFRINGEMENT
1. Claim Interpretation
Patent Infringement
35 U.S.C. 271(a)
Whoeve makes, uses, offers to sell, or sells any patented invention,
within the United States, or imports into the United States any patented
invention during the term of the patent therefor, infringes the patent.

Map of Steps
Rule
o Literal infringement
Exception
Doctrine of equivalents
o Exception
Prosecution history estoppel
Exception
o Equivalent not reasonably foreseen

Literal infringement every element of the claim is present in the accused device
Infringement by equivalents (Doctrine of Equivalents) a substantial equivalent of
every element of the claim is present in the accused device
2-Step Infringement Analysis
1. properly construe the claims
2. compare claims to the accused product/process
Types of Evidence
1. intrinsic patent and prosecution history
claims themselves
specification

19

 prosecution history
2. extrinsic information other than the patent and prosecution history
dictionaries, technical texts
testimony
Canons of Claim Interpretation
o Ordinary v. Contextual (Particular) Meaning
Presumption that the meaning of a claim term is its ordinary and
customary meaning
From the perspective of one of ordinary skill in the art
At time of the invention (filing date)
Despite starting with the ordinary meaning, claim terms are interpreted
within the context of the patent
Lexicographer Rule- patentees can define claim terms as they wish
o Disclaimer of Subject Matter- patentees can affirmatively disclaim a certain
meaning of a claim term through language in the specification or statements made
during prosecution
o Claim Differentiation- contextual meaning from other claims
when different terms are used in separate claims, a difference in meaning
is presumed
still look to intrinsic evidence to determine if the patentee is using the
terms interchangeably
o Purpose of the Invention- one may look to the purpose of the invention to
interpret a claim term such that the meaning of the term promotes the purpose of
the invention
o Preserving Validity
Claims should be construed, if possible, to preserve their validity
This doctrine is less often used in light of Markman
o Narrow Construction Preferred
When there are two plausible meanings for a claim term, the narrower
interpretation should be chosen
Compare to MPEP 2111.01, which states that during examination,
the claims must be interpreted as broadly as their terms reasonably
allow
o Comprising v. Consisting of
Comprising: the named elements are essential to the invention, but other
elements may be added and still form a construct within the scope of the
claim
20

Consisting of: complete accounting of the elements of the invention

b. Standards for Construing Claims; Sources of Construction pg 298

Phillips v. AWH Corporation
F: Plaintiff held a patent directed to modular steel-shell panels that can be welded
together to form vandalism-resistant walls
The claim term at issue was baffles While the specification discusses
positioning the baffles to deflect projectiles, that is just one embodiment of the
invention
o The specification also teaches other purposes for the baffles, such as
providing structural support
Intrinsic evidence is the best source of information to use when interpreting
claims; first the patent (specification and claims) and then the prosecution
history
o Extrinsic evidence can be very useful, but poses the risk that it will be
used to change the meaning of the claim terms
2. Literal Infringement
35 U.S.C. 271 gives the patentee an infringement cause of action against anyone who
makes, uses, sells, offers for sale, or imports the invention described in the claims of the
patent.
This right runs from the day the patent is issued until the end of the patent terms
(formerly 17 years from the day of issue, now 20 years from the day the patent
application is filed).
Because a patent is defined in terms of its claims, a patent infringement lawsuit is reolved
by comparing the claims of the patent to the accused product.
Larami Corp. v. Amron
F: Amron asserted that Laramis line of SUPER SOAKER water guns infringes its patent
Claim 1: toy comprising an elongated housing having a chamber therein for a
liquid . . .
o The court found that the SUPER SOAKER has an external water
reservoir/chamber that is detachable from the gun housing and not
contained in the housing; therefore, the product does not infringe
3. The Doctrine of Equivalents pg 328
Doctrine of Equivalents: Supreme Court Tests
o Triple Identity Test: the accused devise performs substantially the same function
in substantially the same way to obtain substantially the same result (Graver
Tank v. Linde Air Prods. 1950)
o All Elements Rule: analyze the role played by each element in the claim and
inquire whether the substitute element matches the function, way and result of the
claimed element or if they are substantially different (Warner-Jenkinson v. Hilton
Davis Chemical 1997)
o Foreseeability Bar: a patentee is barred from seeking doctrine of equivalents
protection for any subject matter it should have known it was giving by amending
the claims (Festo, 2002)
21

 Doctrine of Equivalents: Considerations

o The proper time frame for evaluating equivalency is at the time of infringement
o After-arising technologies (developed after the date of the claimed invention)
challenge the definition of an element of the claimed invention
o Prosecution History Estoppel:
The presumption that an element of a claim was narrowed during
prosecution of the patent to meet the requirements of patentability and
thus that subject matter cannot be recaptured under the doctrine of
equivalents, the patentee may rebut this presumption by showing that the
amendment was for another purpose
The status of this presumption, and the doctrine of prosecution history
estoppel generally, was the key issue in the FEST case decided by the
SCT.
Festo Corp. v. Shoketsu Kinzoku Kogyo
F: owns two patents directed to piston-driven devices that use magnets
to move objects in a conveying system. amended the applications to
meet the examiners objections and added prior art references
Defendants product uses a single sealing ring with a 2-way lip
and the outer shell is made of a nonmagnetizable alloy
Plaintiff sued for infringement under the doctrine of equivalents
Defendant argues: plaintiff is estopped from applying the
doctrine of equivalents to subject matter added during prosecution
because the amendments narrowed the invention, surrendering
alternatives to the elements
Holding: The patentees narrowing amendments were made in
order to overcome a 112 rejection and possibly also to avoid the
prior art and, therefore, it has not rebutted the presumption that
prosecution history estoppel applies
o Estoppel arises when an amendment is made to secure the
patent and the amendment narrows the patents scope
A proper analysis requires an examination of the subject
matter surrendered during prosecution, and such an inquiry
is omitted with a complete bar
The purpose of the doctrine of equivalents that language is
imperfect and copyists should not be permitted to make
insubstantial changes and substitutions that add nothing but take
the copied matter outside the scope of the patent is still present
even with a narrowing amendment
The patentee bears the burden of proving that the narrowing amendment does not
surrender the particular equivalent in question
Instances where the equivalent may not have been surrendered

22

o it was unforeseeable at the time of the application (after-arising technologies)

o the reason for the amendment may bear no more than a tangential relation to the
equivalent
o some other reason why the patentee could not reasonably have described the
equivalent
c. Subject Matter Disclosed But Not Claimed pg 345

Even before the SCT issued its opinion in FESTO, the Federal Circuit decided another en
banc case that could significantly restrict the scope of the doctrine of equivalents: the
doctrine of dedication to the public domain.
Along with FESTO, the JOHNSON & JOHNSON case represents another important
inroad on the doctrine.
As you read the case, consider where patentees and infringers are left in the wake of these
2 decisions.

Johnson & Johnson Associates v. R.E. Service Co.

F: owns a patent relating to the manufacture of circuit boards in a manner that prevents
most of the damage caused by manual handling. The claim at issue-an aluminum sheet is
used in the invention. manufactured circuit boards using a sheet of steel instead of a
sheet of aluminum
Defendant argued: the specification of plaintiffs patent disclosed the use of a
steel sheet, but the plaintiff did not claim a steel sheet; therefore, the use of a steel
sheet was dedicated to the public
Precedent holds that when a patentee discloses subject matter, but declines to
claim it, he has dedicated the unclaimed matter to the public
o Application of the doctrine of equivalents to recapture subject matter
deliberately left unclaimed would be contrary to the rule that the
claims define the scope of the invention and the patentees exclusive
rights
o Additionally, patentees could then narrowly claim an invention to avoid
patentability issues and then, after the patent issues, use the doctrine of
equivalents to establish infringement based upon the broad disclosure of
the specification

A patentee who fails to claim disclosed subject matter may still have a remedy
o within 2 years from the grant of the original patent, a patentee may file a reissue
application and attempt to broaden the scope of the original claims to include the
disclosed subject matter
o the patentee may file a continuation application IF all applications in the chain
have not yet issued or abandoned

23

Infringement by Inducement
35 U.S.C. 172(b)
Whoever actively induces infringement of a patent shall be liable as an infringer.
** While 271(b) does not provide for a requirement of intent, the judiciary and legislative history
have set such a requirement

C.R.
Bard
Inc.
v.

Contributory Infringement
35 U.S.C. 271(c)
Have to produce a product that is specifically going to be used in the product/process
(knowledge/intent)
o Sale of a component for use in practicing a patented device or composition or
the sale of a component for use in practicing a patented practice
o Cant be a staple article of commerce capable of substantial non-infringing use

Advanced Cardiovascular
F: Plaintiff holds a patent directed to a method for using a catheter during an angioplasty
procedure. Defendant markets a catheter for use in angioplasty. Plaintiff sued for infringement
Plaintiff argues that a surgeon placing one of defendants catheters into the coronary
artery would infringe its patent and thus defendant is liable for contributory infringement
Statutory requirements to find contributory infringement in this case:
o 1) defendant sells a catheter for use in practicing the claimed method
o 2) the catheter constitutes a material part of the invention
o 3) defendant had knowledge that the catheter is made or adapted for use in
infringing the patent
o 4) the catheter is not a staple article or commodity of commerce suitable for
substantial noninfringing use
Three possible fact patterns that may arise while using defendants catheter:

o Because there are substantial noninfringing uses for defendants catheter,

summary judgment in favor of plaintiff was not warranted
Plaintiff also asserted that defendant induced infringement by:
o providing detailed instructions on how to use the catheter in a manner that
infringed the patent
o positioning the side openings in a place on the catheter so as to allow a user of the
catheter to infringe the patent
Federal Circuit held that because a genuine issue of material fact exists, a
grant of summary judgment in favor of plaintiff was not appropriate
(remanded)

Infringement Defenses
o Common Law Experimental Use Defense - Judicially-created defense to
infringement, allowing for the unlicensed use of a patented invention for the purpose
of pure scientific inquiry
24

o Statutory Experimental Use Defense allowing for the use of a patented invention
for FDA-related experimentation
35 U.S.C. 271(e)(1)
It shall not be an act of infringement to make, use, offer to sell, or sell
within the United States or import into the United States a patented
invention . . . solely for uses reasonably related to the development and
submission of information under a Federal law which regulates the
manufacture, use, or sale of drugs.
o Inequitable Conduct- Failure to disclose material information OR submission of
false material information, with an intent to deceive renders the entire application
unenforceable
o Exhaustion of Patent Rights- The initial authorized sale of a patented item
terminates all patent rights to that item
When we as consumers, purchase items that are covered by patents and use
that product, we cannot be liable for infringement

Kingsdown Medical Consultants v. Hollister

F: Plaintiffs patent had a long and complex prosecution, involving 118 claims handled by inhouse counsel. In a continuation application, which was filed by outside counsel, it was
incorrectly represented to the patent office that claim 43 corresponded to allowed claim 50 of the
parent application. Claim 50 had been narrowed during prosecution of the parent application to
overcome a 112 rejection. The continuation application was filed with the rejected, not the
accepted, version of claim 50
Upon being sued for infringement, defendant asserted that plaintiffs patent was
unenforceable due to inequitable conduct
The district court found plaintiffs patent unenforceable because of inequitable conduct
based upon:
1. gross negligence (mistake regarding claim 50)
2. acts indicating intent to deceive (plaintiffs attorney saw defendants device prior
to filing the continuation application)
Federal Circuit Holding:
1. Gross negligence does not itself justify an inference of intent to deceive
2. There were several undisputed facts showing the relative ease of plaintiffs
mistake in the continuation application with regard to claim 50
3. There is nothing proper, illegal or inequitable in filing or amending a patent
application for the purpose of obtaining a right to exclude a known competitors
product from the market
Quanta Computer v. LG Electronics
F: LG licensed to Intel the right to the inventions of certain patents relating to microprocessors.
In a separate agreement, Intel agreed to give written notice to its customers that the license does
not extend to any product made by the customer that combined the Intel product with another
product. Quanta purchased microprocessors from Intel and received this notice. Quanta

25

manufactured computers using the Intel parts in combination with non-Intel parts in ways that
practice the LG patents. LG sued Quanta for infringement
Does the doctrine of patent exhaustion apply to method claims?
o The Court held that while it is true a patented method cannot be sold in the
same way as an article, methods may be embodied in a product, the sale of
which exhausts the patent rights
o To allow an end-run around exhaustion by following LGs logic would violate
the long-standing principal that once a patented item is made and sold, there is
no restriction on its use

To what extent must a product embody a patent in order to trigger the doctrine
of patent exhaustion?
o The Court found that the microprocessors that made up the Intel products
substantially practiced the LG patent claims because everything inventive in
each patent is substantially embodied in the Intel products
o The only thing necessary to practice the patents is the application of common
processes or the addition of common parts
Was Intels sale to Quanta an authorized sale sufficient to trigger the doctrine
of patent exhaustion?
o The Court found that Intels authority to sell its products embodying the LG
patents was not conditioned on the notice or on Quantas decision to abide by
that notice
the sale constituted an authorized sale, and the doctrine of exhaustion
applies

26

 Copyright
THE PURPOSE AND NATURE OF COPYRIGHT LAW:
To stimulate the creation and dissemination of as many works of authorship as possible,
in order to benefit the public. The law does this by giving creators of works of
authorship-limited rights in their works. Copyright never gives rights in the idea being
expressed or in facts or other elements of the public domain that the author may have
incorporated into the work.
102(a). Copyright protection subsists in original works of authorship fixed in any
tangible medium of expression
o original work of authorship
o fixation
o formalities
In the modern day, needed to a very limited extent.
Not so much limited, not a high hurdle today.
Overview:
Copyrightable Subject Matter spans a broad range of literary and artistic expression;
ideas are not copyrightable, but an authors expression of an idea is copyrightable
Threshold for Protection a modicum of originality AND fixture in a tangible medium of
expression
Authorship and Ownership the author (creator) or owner (transfer of rights) must file
for infringement; for works made for hire, the commissioner of the work is the
author/owner
Duration of Copyright
o lifetime of the author + 70 years
o 95 years from publication or 120 years from creation, whichever is first
(anonymous works, pseudonymous works, works for hire)
Formalities procedural requirements imposed on authors that are necessary to obtain
copyright protection but do not relate to the substance of the copyright (notice,
publication, registration, and deposit)
* The Copyright Office functions more like a title registry office. A copyright is protectable at
the moment the work is created.
Requirements for a Copyright:
o 17 U.S.C. 102(a)
Original works of authorship
Originality=
o Independent Creation

27

o Modicum of Creativity
Section 101 A compilation is a work formed by
the collection and assembling of preexisting
materials or of data that are selected, coordinated, or
arranged in such a way that the resulting work as a
whole constitutes an original work of authorship
Facts are not copyrightable
But original compilations are
Fixed in any tangible medium of expression, now known or later
developed
To be afforded federal copyright protection, the work must be
embodied in some stable form such that it can be perceived in
some way by others
An unfixed work of authorship may be subject to protection under
state common or statutory law
From which they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device.

Works of authorship include the following categories:

(1) literary works
a. works other than audiovisual works, expressed in words, numbers, or
other verbal or numerical symbols or indicia, regardless of the nature of
the material objects, such as books, periodicals, manuscripts,
phonorecords, films, tapes, disks, or cards, in which they are embodied
(17 U.S.C. 101)
b. words and short phrases, such as names, titles and slogans, are excluded
because they do not meet the minimal requirements of authorship
(2) musical works, including any accompanying words
a. includes individual musical compositions, sound recordings, musical
dramatic works, motion picture sound tracks, audiovisual works such as
sound effects
b. owners of musical composition receive the right of public performance
c. sound recording receive the right of digital performance, but not public
performance
(3) dramatic works, including any accompanying music
(4) pantomimes and choreographic works: portrayal of a story by dialogue or acting
a. simple dance steps (choreography) and conventional gestures
(pantomime) are excluded
(5) pictorial, graphic, and sculptural works
a. 2- and 3-dimentional works of fine, graphic, and applied art,
photographs, prints and art reproductions, maps, globes, charts,
28

diagrams, models, and technical drawings, including architectural

drawings . . . (17 U.S.C. 101)
(6) motion pictures and other audiovisual works
a. Audiovisual works works that consist of a series of related images that
are intended to be shown by the use of devices such as projectors,
viewers or electronic equipment
b. Motion pictures works that consist of a series of related images that,
when shown in succession, impart an impression of motion (subset of
audiovisual works)
(7) sound recordings; and
a. includes individual musical compositions, sound recordings, musical
dramatic works, motion picture sound tracks, audiovisual works such as
sound effects
b. owners of musical composition receive the right of public performance
c. sound recording receive the right of digital performance, but not public
performance
(8) architectural works
a. 1976 Act architectural works limited by the useful article doctrine
b. Post-Berne Convention Architectural Works Copyright Protection Act
of 1990 protects the design of a building as embodied in any tangible
medium of expression . . . includes the overall form and elements of the
design, but not individual standard features
c. Two-Part Test
(1) determine whether original design elements are present
(2) determine whether such elements are functionally required
d. Limitations
(1) pictorial representations are permitted IF the work is embodied
in a public place
(2) modifications and/or destruction is allowed
o 17 U.S.C. 102(b)
In no case does copyright protection for an original work of authorship
extend to any idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work.

29

o
o
o
o
o

Copyright Rights: 17 U.S.C. 106

Reproduction the owner has the exclusive right to make copies, and may sue for
infringement even if the copy is in a different form or only part of the whole IF the
copying is material and substantial
Derivative Works the owner has the exclusive right to prepare works that are based
upon the original, but are in a different form or otherwise altered
Distribution the owner has the right to control the sale, distribution, and license of
the original and all copies and derivative works ; this right ends with the first sale
Performance and Display the owner has the right to control public performance and
display of her works
Anticircumvention generally, circumvention of technological protection measures
designed to safeguard digitally encoded works is prohibited
Moral Rights visual artists possess an attribution right in their works (credit the
author of a work which appears in another work), as well as rights to prevent
intentional destruction, distortion, mutilation, or other modification of their work

Philosophical Perspectives
o Natural Right rewarding the author for his work
o Utilitarian encourage creation and promote the arts and sciences, which enhances
society
Copyright protection is limited in time and scope so as to not unduly
burden other creators or free expression
B. Requirements
1. Original Works of Authorship pg 438
17 U.S.C. 102. Subject Matter of Copyright: In General
o (a)
A more difficult problem arises when an author creates a work in a mechanical or
functional manner.
The SCT examined this set of issues through a constitutional lens in the following case Feist
Feist Publications v. Rural Telephone Service
F: Rural may have been the 1st to discover and report names, towns, and telephone #s of
its subscribers, but this data does not owe its origin to Rural
To qualify for a copyright, work must be original to the author Rurals pages
are typical
Copyrights extend to original works that possess at least some minimal degree of
creativity
The choices with regard to the selection and arrangement of the complied
facts may be sufficiently original, so as to warrant copyright protection, IF
they are made independently by the compiler AND entail a minimal degree of
creativity
**Copyright protection is subject to an important limitation not every element
of a copyrighted work is necessarily protected
30

Notwithstanding a valid copyright, a competing compiler of facts may use the

facts contained in anothers work to aid in preparing his own work, so long as the
competing work does not feature the same selection and arrangement of the
copyrighted work

To show infringement, must prove:

o ownership of a valid copyright
o copying of elements of the work that are original
Berne Convention For The Protection of Literary and Artistic Works
o The U.S. joined the Berne Convention to expand protection of U.S. copyrighted
works throughout the world (March 1, 1989)
o The Berne Convention requires the copyrighted of works of authors from other
Berne Union countries to be protected in the same manner as that of the
copyrights of its own nationals
o U.S. copyright statutes were amended to bring them into compliance with at least
the minimum standards set forth in the Berne Convention
2. Fixation in a Tangible Medium of Express pg 449
H.R. Rep. No. 94-1476 pg 449
Fixation Requirement
o As a basic condition
o Writings
Construed to mean any physical rendering of the fruits of intellectual
activity
o Doesnt matter method of fixation
o 101. (TWEN)
A work is fixed in a tangible medium of expression when its
embodiment in a copy or phonorecord, by or under the authority of the
AUTHOR, is SUFFICIENTLY STABLE to permit it to be perceived,
reproduced, or otherwise communicated for a period of (ON TWEN)
o Not fixed no CR protection
o Videogame Cases
3. Copyright Formalities:
Copyright formalities are procedural requirements iposed on authors by the
government that are necessary to obtain copyright protection but do not relate to the
substance of the copyright.
The US has traditionally had 4 such formal requirements:
o Notice of copyright;
o Publication of the work;
o Registration of the work with the Copyright Office; and
o Deposit of a copy of the work with the Library of Congress.

31

Copyright formalities have continuing relevance to the practice of copyright law,

particularly for works created prior to January 1, 1978, the effective date of the 1976 Act.

1: Notice
1909 Act protection begins upon publication and appropriate form of notice was
required for protection (year of first publication, copyright symbol, name of owner)
1976 Act protection begins upon creation, not publication, and reasonable placement of
notice was required
Post-Berne Convention notice requirement is eliminated prospectively; voluntary notice
is encouraged (alleged infringers are precluded from claiming innocence if reasonable
notice)
In 1993 and 1994, the U.S. restored foreign copyrighted works under the North
American Free Trade Agreement Act (NAFTA), and the Trade-Related Aspects of IP
Rights (TRIPs) and General Agreement on Tariffs and Trade (GATT), respectively
2: Publication
1909 Act actual or constructive (registration with Copyright Office) publication
triggered protection
1976 Act publication really just goes to notice
Post-Berne Convention
o deposit at Library of Congress is mandatory only for published works
o published works of foreign authors must meet certain statutory requirements for
protection
o publication dictates the duration of protection in some instances
o certain reproduction, transfer, and performance rights depend on publication
o prima facie case evidence of valid copyright where registration occurs within 5
years after publication
o damages damages and attorney fees may be awarded for published works where
registration precedes infringement and registration is within 3 months after
publication
3: Registration
1909 Act registration required by the 28th year to renew copyright
1976 Act registration is optional, but encouraged by incentives
o prima facie evidence of copyright validity
o registration required before filing for infringement
o statutory damages and fees for infringements occurring after registration or after
publication if registered within 3 months
Post-Berne Convention registration is required for U.S. and non-Berne nations prior to
filing for infringement
4: Deposit 2 copies of each work published in the U.S. for which copyright is claimed must be
deposited with the Library of Congress within 3 months of publication

32

1909 Act failure to deposit could result in forfeiture of copyright

1976 Act deposit is still mandatory; failure results in a fine and delay in completing
registration, but does not affect the validity of the copyright
Post-Berne Convention no change from 1976

Derivative Works and Compilations protection extends only to original material

o Derivative work a work based upon one or more preexisting works
o Compilation a work formed by the collection and assembling of preexisting
materials or data that are selected, coordinated, or arranged in such a way that the
resulting work, taken as a whole, constitutes an original work or authorship
Section 103
Compiling doesnt give you any rights in the underlying works
Just the selections, arrangement, and organization of the works
Electronic Compilations
o Removing an electronic version of a work from its context as part of the collective
work and placing it into a searchable database does not fall within the scope of the
copyright protection of the collective work
o Putting a collective work into electronic form, but maintaining the context of the
work is covered by the copyright of the collective work
C. COPYRIGHTABLE SUBJECT MATTER pg 461
1. Limitations on Copyrightability: Distinguishing Function and Expression
This section considers the fundamental doctrines that operate to channel protection for
works between the patent and copyright regimes.
a. The Idea-Expression Dichotomy
The most significant doctrine limiting the copyrightability of works is the ideaexpression dichotomy, which is partially codified in section 102(b):
o 102. Subject Matter of Copyright: In General..
(b) This is the idea expression dichotomy codified
The division between protectable expression and unprotectable ideas was developed in
the seminal case of Baker v. Selden.
Baker v Selden
Not copyrightable because the bookkeeping methods are standard
The book itself is copyrightable
Copyrighting recipes: Cant copyright recipes b/c they describe a procedure
o BUT a collection of recipes put together as a cookbook is copyrightable
Selden wrote a how-to book that described a new, exciting method of bookkeeping,
including example ledgers for better ways to keep track of revenues and expenses.
Baker wrote a book on bookkeeping also. It used ledgers that were pretty much the
same as the ones Selden proposed. Selden sued for copyright infringement.
o Selden argued that Baker had stolen his method.
33

o Baker argued that you can't copyright a method, only an expression of that
method. Because his book didn't slavishly copy Selden's, it was not a violation
of Selden's copyright.
Baker didn't copy any of the text from Selden's book, he just used the
same bookkeeping system.
The Trial Court found for Selden. Baker appealed.
o The Trial Court found that Baker's books were "in large and material part
identical with and infringements of the books of Selden system."
The US Supreme Court reversed.
o The US Supreme Court found that a copyright did not give an author the right
to prevent others from using the same method.
"The copyright of a book on bookkeeping cannot secure the exclusive
right to make, sell, and use account books prepared upon the plan set
forth in such a book."
o The Court found that Selden couldn't copyright the forms because the forms
are necessary to the use of the bookkeeping system (aka merger).
The concept of merger is that if an idea can only be expressed in one
way or a few ways, granting a copyright on that expression would
effectively lock up anybody from using the idea. Therefore, since you
can't copyright ideas, you can't copyright those limited ways to express
the idea because the idea behind the work merges with its expression.
The Court found that the forms are functional and not expressive, so
Selden couldn't copyright the forms for that reason either.
o The Court found that what Selden was really trying to protect was a patent on
his method, but he didn't have a patent. He only had a copyright.
Patents are used to protect ideas and methods (aka "useful arts").
Copyrights can only be used to protect expressions.
"The description of the art in a book, though entitled to the benefit of
copyright, lays no foundation for an exclusive claim to the art itself."
At the time, Selden's method would probably not have been eligible
for patent protection, but he could probably patent it now under 35
U.S.C. 101.
The decision in this case has now been codified in 17 U.S.C. 102(b).
o See also 37 C.F.R. 201.1, which says that blank forms are not copyrightable.

Lotus Development v. Borland Intl. pg 467

F: Lotus has a spreadsheet program with a specific command menu
If its not protected under the copyright law, youre free to copy it
This work was not copyrightable
o Its just a method
Lotus command menu compared to buttons on a VCR both are
necessary means for operation
Morrissy v. Procter & Gamble pg 480

34

F: Copyright for a set of rules for a sales promotion contest sued defendant for copying
its first rule of the contest
Limited number of ways to ask for identifying information
Would mean other parties, completing a mere handful of forms, could exhaust
ALL possibilities of future use of the substance
Contains no creative authorship
Comments and Questions
The Merger Doctrine pg 48: The Mirrissey case applies what has come
to be known as the merger doctrine: when there is only one or but a few
ways of expressing an idea, then courts will find that the idea behind the
work MERGES with its expression and the work is not copyrightable. The
doctrine is an extension of the basic rationale of Baker v. Selden.
Limiting Doctrines:
o Merger Doctrine: When theres only one or a few ways of expressing an idea,
the idea behind the work merges with its expression and the work isnt
copyrightable
o To provide otherwise might enable a person to obtain a de facto monopoly in the
subject matter, or idea, by obtaining a copyright in all the alternative forms of
expressing it.
o Design of Useful Articles pg 482

Useful article one that has an intrinsic function - - useful practical thing
There are times when the expressful elements of useful articles can get
copyrighted
101: In order to get copyright:
Must be identified separately from; and
capable of existing independently of the utilitarian aspects of the
article

1. Idea-Expression Dichotomy
Merger doctrine
Baker v. Selden
Lotus v. Borland
Morrissey v. Procter & Gamble
2. Useful Article Doctrine
Brandir v. Cascade Pacific
Government Works - copyright protection is not available for any work of the
U.S. government, but the government is not precluded from obtaining copyrights
by transfer
Brandir Intl. v. Cascade Pacific Lumber Co. pg 484
F: Ribbon Rack is NOT copyrightable the form of the rack is influenced in significant measure
by utilitarian concerns and so any aesthetic elements cannot be said to be conceptually separable

35

conceptual separability is destroyed when you take original art and change it to meet
requirements
o Denicola Test
if design elements reflect a merger of aesthetic and functional
considerations, the artistic aspects of a work cannot be said to be
conceptually separable from the utilitarian elements
if design elements can be identified as reflecting the designers artistic
judgment exercised independently of functional influences, conceptual
separability exists

D. OWNERSHIP AND DURATION pg 506

Copyrights today are in many ways like other forms of property interests. As we will see
in section E, a copyright includes numerous distinct rights
Once a CR is acquired, the entire bundle of rights may be assigned to others.
Alternatively, the owner may divide and transfer particular rights.
Nonetheless, there are significant differences between the ownership rules governing CRs
and those governing other property interests.
The most important difference is that CRs have limited duration. As required by the US
Constitution, CRs enter the public domain after a statutorily determined limited time.
Furthermore, Congress has differentiated the ownership, transfer, and termination of
these rights in other ways as well.

1. Initial Ownership of Copyrights pg 506

As noted earlier, CR law since the 1700s has vested CR in authors and artists who create
works satisfying the requirements of CR law.
Under current law, an individual who writes, composes, or paints an original work of
authorship on her or his own acquires the CR upon the works creation. 201(a).
Since many works in our modern and increasingly interconnected economy, however, are
produced in the employment context, commissioned by a production company or
publisher, and/or result fro collaborations among numerous authors, we begin our
exploration of initial ownership with doctrines governing works made for hire and jointly
created works.

a. Works made for hire pg 507

201(b) If a work is made for hire within the meaning of the Copyright Act, the employer
or other person who ordered and financed the work is deemed the author for copyright
purposes and is the initial owner of the copyright.

Under 101 there are 2 ways for a work to be work for hire:
(1) if it was prepared by an employee within the scope of her employment

36

(2) works created by independent contractors if (1) the work fits into one of the 9
enumerated categories of works; and (2) the parties have expressly agreed in a
written, signed instrument that the work will be considered a work made for hire.
a. a work specially ordered or commissioned for use as a contribution to a
collective work, as a part of a motion picture or other audiovisual work, as a
translation, as a supplementary work, as a compilation, as an instructional
text, as a test, as answer material for a test, or as an atlas, if the parties
expressly agree in a written instrument signed by them that the work shall be
considered a work made for hire.

Possible Test to see if they are for hire:

o Right to control
o Actual control
o Common law of agency (In Reid employee is to be defined under the common
law of agency)
o Formal, salaried, employee

2 ways to have
o Either an employee
o Or through a contract

Factors to consider in determining whether one is an employee:

o hiring partys right to control
o skills required
o source of the tools
o location of the work
o duration of the relationship
o whether other projects can be assigned
o discretion over when to work and who does the work
o method of payment
o whether the work is part of the commissioners regular business; whether
commissioner is a business at all
o benefits and tax treatment

Community for Creative Non-Violence v. Reid pg 507

F: is a non-profit organization to help the homeless, which commissioned a sculpture to
display in the Christmastime Pageant. was to construct the figures and plaintiff
As a general rule under the Copyright Act, the party who creates the work is the author
For works made for hire the commissioner of the work is the author, unless there is a
written agreement stating otherwise
o Restatement 2d of Agency
o An employees work is deemed within the scope of employment IF:
it is within the kind he is employed to perform;

37

it occurs substantially within the authorized time and space limits;

AND
It is actuated, at least in part, by a purpose to serve the master.
Holding: wasnt an employee of
o Defendant was not an employee of plaintiff
defendant is a skilled worker and used his own tools
he worked in his own studio in a different state than plaintiff; thus, while
plaintiff maintained sufficient control to ensure that the work was to its
specifications, daily supervision was not possible
duration of working relationship was short 2 months
plaintiff had no right to assign additional work
defendant worked when he wanted within the time frame
payment was for the project as a whole
defendant had control over all assistants
plaintiffs regular business was not sculpting
defendant received no benefits, nor were taxes paid by plaintiff

FACTORS

EMPLOYEE

INDEPENDENT
CONTRACTOR

Hiring partys right to control the manner

and means by which the project is
accomplished

Employer has
right to control

No right to
control

Higher the skill level, more likely IC

Little skill

Great skill

Source of instrumentalities and tools

Hiring party

Hired party

Location of the work

Hiring partys
place

Hired partys
place

The duration of the relationship b/w parties

Long

Short

Extent of the hired partys discretion over

when and how long to work

Yes

No

Method of payment

Paycheck

Response to
Invoice

Hired partys role in hiring and paying

assistants

Little

Hired party
controls

Whether the work is part of the regular

business of the hiring party

Yes

No

Whether the hiring party is in business

Yes

No

Provision of employee benefits

Yes

No

38

Tax treatment of hired party

Payroll tax
deducted

No Payroll taxes

b. Joint Works:
101: a joint work is a work prepared by two or more authors with the intention that
their contributions be merged into inseparable or interdependent parts of a unitary whole
o Requirements:
Copyrightable work
2 or more authors
Intent: joint if they collaborated, knowing and intending that their work
would be merged with others to become part of a unitary whole
Aalmuhammed v. Lee pg 515
F: Warner Brothers contracted with Spike Lee to make the movie Malcom X, starring Denzel
Washington
Plaintiff did the following:
o directed actors and did voiceovers
o created at least 2 new scenes with new characters
o translated Arabic into English
o selected proper prayers and religious practices
o edited parts of the move during post-production
o met with Islamic organizations to persuade them the move was accurate
wanted to be listed as a co-writer for the film- which didnt happen, so he applied for a
copyright office said conflicting w/ previous application from Warner Bros.
How to determine authorship in absence of a contract:
o Control
o objective manifestation of a shared intent to be co-authors
o the appeal of the work turns on both contributions
Joint Works Are Tenancies-In-Common
When an agreement doesnt state otherwise:
Co-owners have an equal, undivided ownership in the entire work, even where their
respective contributions are not equal
Upon the death of each joint owner, the decedents share passes to his heirs
Each co-owner may use the work and license it to others, but a written agreement is
required to transfer the copyright or give an exclusive license
c. Collective Work: 17 U.S.C. 101 pg 522
Compilation made up of copyrighted material (periodical issue, anthology, or
encyclopedia)

39

Ownership of copyright in collective works: in the absence of an express assignment of

copyright, the author of each separate contribution in a collective work retains copyright
in the contribution. The author of the collection own copyright in the expression he or she
contributed usually the selection and arrangement of the individually copyrightable
contributions
o Copyright in each separate contribution to a collective work is distinct from
copyright in the collective work as a whole, and vests initially in the author of
the contribution.
o Copyright Act 201(c) provides that, in the absence of a writing to the contrary,
the author of the collective work will have separate privileges with regard to the
individual works he has collected

3. Duration and Renewal pg 526

4. Division, Transfer, and Reclaiming of Copyrights pg 531
a. Division and Transfer of Copyright Interests Under the 1909 Act pg 532
b. Division and Transfer of Copyright Interests Under the 1976 Act pg 533
c. Reclaiming Copyrights pg 533
Copyright Infringement for Copying
o (1) Whether the work has actually been copied
(a) the copying doesnt have to be exact
(b) substantially similar is sufficient
o (2) Whether the copying appropriated sufficient protected material to violate
owners copyright rights

Copying- evidence may consist:

o (1) copied s work
(a) defendants admission that he copied or
(b) circumstantial evidence usually evidence of access from which the
trier of facts may reasonably infer copying
o (2) The copying was to the extent that it constituted improper appropriation

If there is evidence of access and similarities between the works exist, then it must be
determined whether the similarities are sufficient to prove copying
o technical analysis
o expert testimony
o sometimes referred to as probative similarity
o objective measure of similarity

If there is no evidence of access, the similarities must be so striking so as to preclude the

possibility that plaintiff and defendant independently arrived at the same result

40

If copying is established, the standard for determining whether unlawful

appropriation has occurred is that of the ordinary lay hearer
o Dont need expert testimony
o Ask what is pleasing to the ears of lay listeners
subjective measure of similarity
Where the similarities between the works are so extensive and striking, it is possible,
without more, to justify an inference of copying and prove improper appropriation

E. TRADITIONAL RIGHTS OF COPYRIGHT OWNERS pg 536

1. The Right to Make Copies

The right to reproduce is the most fundamental of the rights granted to the CR owner.
It includes all rights to fix a work in a tangible medium of expression, including the right
to make phonorecords.
The right to reproduce granted by section 106(1) is not limited to exact reproduction
such as copying a disk or making a photocopy. Rather, it is a broad grant of the right to
prevent others from making exact or substantially similar reproductions by any means
now known or later developed, and fro which the work can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or device, 101
(definition of copies).
Phonorecords includes not only disks that may be played on record player the
technology that existed at the time of the 1976 Act but all material objects in which
sounds, other than those accompanying a motion picture or other audiovisual works, are
fixed by any method now known or later developed, and from which the sounds can be
perceived, reproduced, or otherwise communicated, either directly or with the aid of a
machine or device. 101.

a. Copying
Arnstein v. Porter pg 538
F: Arnstein sued Porter alleging Porter plagiarized from several of his songs; while some of the
songs were fairly well known, some of his account of how Porter might have had access was
fairly fantastical
Holding: the court found that while similarities were present, they were not sufficient to
permit the inference that defendant copied, but not so insignificant as to warrant SJ
b. Improper Appropriation

The second problem that arises in assessing infringement is determining whether the
has copied sufficient protected expression to violate the s CR interests.

41

Judge Learned Hands opinion in NICHOLS v. UNIVERSAL, decided more than 80

years ago, remains the seminal case framing this inquiry.
As you study this opinion, pay close attention to the manner in which the court
distinguishes protected and unprotected expression and how it determines whether the
has improperly appropriated the s work.

Objective Test:
o analytically dissects the objective manifestations of creativity (plots, themes,
dialogue, mood, setting, pace, sequence, characters) in the plaintiffs work in
order to determine the elements that are protectable under copyright law.
Subjective Test:
o trier of fact determines whether the defendants work improperly appropriates the
plaintiffs protected expression.
Fact finders reaction
Must pertain to copyrightable material
Must lay out specifically to jury what material they are concerned
about

Nichols v. Universal Pictures Corp. pg 545

F: Both and wrote plays involving feuding Irish and Jewish families, where the child of one
family falls in love and marries the child of the other family and then have children, and in the
end the families reconcile
Holding: It was only part of her idea, not infringement
- No infringing b/c what was copied was non-copyrightable. What little was copied
does not amount to substantial similarity

Rule:

1. The less developed an authors characters, the less likely they can be
copyrighted
2. Abstractions come to a point where they are no longer protected because it
could prevent the use of his ideas which is not protected under copyright.
3. Toss/filtering out: facts, ideas, ideas merged, scenes a faire, process of system
Then compare what is left to see if substantial similarity
o Close limitation, not literal copying, can still be infringement b/c substantially
similar

Limitations on the Exclusive Right to Copy:

Archival Copies for Public Libraries
o one copy
o preservation and replacement of existing works if replacement cannot be obtained
at a fair price
42

o non-commercial users
o libraries are not liable for copyright violations by their patrons so long as they
provide notice of copyright laws
Ephemeral Copies by Broadcasters
o broadcasters are allowed to make ancillary copies during the course of
broadcasting, such as when recording a program for replay
Cover License
o allows the recording of anothers musical composition under a license
o does not allow changes to the basic melody or fundamental character of the work
Non-Commercial Copies of Musical Compositions and Sound Recordings
o allows consumers to make copies for non-commercial use
Running Computer Software
o allows a consumer to copy a computer program for archival purposes or as
necessary as an essential step in the utilization of the program in conjunction with
a machine
Maintaining Computer Software
o allows consumers to make copies of programs on a machine if necessary during
maintenance of the machine
Fair Use
o defense for many instances of copying
Computer Software
Computer Associates International v. Altai, Inc pg 556
o CA wrote a computer program that would allow their scheduling software to run
on different kinds of computers. Altai sold a similar kind of scheduling software,
so they asked their programmers (who were kept segregated from CA's program),
to write a program with the same functionality, which they did.
o CA sued Altai for copyright infringement.
o The Trial Court found for Altai. CA appealed.
o The Appellate Court affirmed.
The Appellate Court looked to Baker v. Selden (101 U.S. 99 (1879)), and
noted that an idea cannot be copyrighted, only the expression of that idea
can be copyrighted.
The Court applied the Abstraction - Filtration - Comparison test.
In Abstraction the court breaks up the program into different
levels, from very general to very specific.
o E.g. Main purpose, program structure, modules, algorithms,
data structures, source code.
In Filtration, the court decides what components are absolutely
essential to fulfilling the abstract function of the program at the
various levels.
o Also filter out everything that is dictated by efficiency,
external factors, or in the public domain.
In Comparison, the court looks at the components of the program
43

which are not absolutely essential to fulfilling the abstract function

of the program to see if they are similar.
The Court performed the Abstraction - Filtration - Comparison test and
found that the copyrightable elements from CA's program were not
substantially similar to those elements in Altai's program.
o Basically, this case said that what the courts need to do is to sift out all elements
of the allegedly infringed program which was ideas of dictated by efficiency or
external factors, or taken from the public domain in order to find "a core of
protectable expression." At that point the courts should focus on whether there are
substantial similarities between any elements within this core in the two
programs.
2. The Right to Prepare Derivative Works pg. 563

The 1976 Act provides the CR owner the exclusive right to prepare derivative works
based upon the CR work. 106(2)
The Act defines a derivative work as a work based on one or more pre-existing works,
such as a translation, musical arrangement, dramatization, fictionalization, motion picture
version, sound recording, art reproduction, abridgement, condensation, or any other form
in which a work may be recast, transformed, or adapted.
As the following case reflects, Anderson v. Stallone, this right structure can operate like a
prospect affording the original author a broad opportunity to exploit new arkets and
incremental improvements in his or her work.

Anderson v. Stallone pg 574

F: After the first 3 Rocky movies Anderson wrote a treatment for Rocky IV that he hoped would
be used by Stallone and the movie company. The treatment incorporated the characters created
by Stallone in his prior movies
Visually depicted characters may be granted copyright protection IF the character
is developed with enough specificity so as to constitute protectable expression
To make the treatment Anderson used the characters without permission Andersons
work is an unauthorized derivative work and since the work is unauthorized derivative
work, no part of the treatment can be granted copyright protection
it is assumed that in a derivative work the underlying work is employed throughout

Rights of Copyright Owners:

o 17 U.S.C. 106
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 or other transfer of ownership, or by rental, lease, or
lending;
4) . . . to perform the copyrighted work publicly;
5) . . . to display the copyrighted work publicly; and

44

6) . . . to perform the copyrighted work publicly by means of a digital

audio transmission.

Distribution Right: 106(3)

Grants copyright owners the right to distribute the original or copies of a copyrighted
work
o The copier who does not distribute is liable for infringement
o The unknowing distributor of unauthorized copies is liable for infringement

First Sale Doctrine / Exhaustion Principle: a copyright holder cannot restrict

distribution of the copyrighted work after the first legitimate sale or other transfer
o Once first sale is made, the rights of the copy have been exhausted
Exceptions to First Sale Doctrine
o Record Rental 109(b)
o Software Rental 109(b)
computer programs and music cannot be
Importation right: allows copyright owners to prevent commercial importation of
copyrighted works acquired abroad

Public Performance and Display:

Perform:
to recite, render, play, dance, or act it, either directly or by means of any
device or process or, in the case of a motion picture or other audiovisual
work, to show its images in any sequence or to make the sounds
accompanying it audible (17 U.S.C. 101)
To perform of display the work publicly means - - to display it in place open to
the public
Only public display is actionable if I watch the game Im ok
If its public and you display it to the public thats ok
If its not public and you open it to non family friends that wouldnt often
get caught
Bars actually get licenses
Display:
to show a copy, either directly or by means of a film, slide, television
image, or any other device or process or, in the case of a motion picture or
other audiovisual work, to show individual images nonsequentially (17
U.S.C. 101)
Limitations:

The owner of a copyrighted work (owner of the work, not the copyright) is entitled to
display the work to viewers present at the place where the copy is located

Compulsory licenses
45

o
o
o
o

cable and satellite retransmission

Jukeboxes
public broadcasting
webcasting

Public interest exemptions 17 U.S.C. 110

o face-to-face teaching activities
o distance learning activities
o religious services
o face-to-face performances of non-dramatic literary or musical works for free or
for charity
without any purpose of direct or indirect commercial advantage
o home listening of nondramatic musical works extended to small businesses
o retail promotion of nondramatic musical works

5. Moral Rights for Visual Artists 106(A)

Moral rights extend beyond ownership of economic control of works or authorship to

encompass protections of the personality of the author.
They include the right to have ones names associated with ones work right of
attribution and the right to protect ones work from mutilation or distortion right of
integrity
o Attribution right:
Having your name associated with the work
o Integrity right:
Prevents intentional destruction, distortion, mutilation, or other
modification of a work
o Protection extends to paintings, drawings, prints, photographs, and sculptures,
existing in a limited number of copies (200 or less)
o Protection doesnt extend to changes that are the result of time or conservation
measures, or works incorporated into a building that is being destroyed
o Duration the life of the author (works created on or after 6/1/91)

E. Indirect Liability: those who contribute to or control the infringing acts of others

Respondeat superior: employers are liable for the infringing acts of their employees:
IF the act was done during a business activity for which he was employed
EVEN WHEN the act was done without the employers knowledge or against
orders
Vicarious liability: those who profit from an infringing activity that they have the ability
to prevent
Contributory liability: one who has knowledge that the activity is infringing AND
induces, causes, or materially contributes to the infringement is liable
46

In an action for contributory copyright infringement, the copyright holder may not
prevail unless the relief he seeks affects only his copyrights OR unless he speaks
for virtually all copyright holders with an interest in the outcome of the action
Not long after the passage of the 1976 Act, the scope of contributory infringement
liability was tested in a case in which the CR owners claimed that the sale of a
recording device VCR illegally contributed to infringement. (Sony v.
Universal)

Cant have indirect infringement without direct infringement

Sony Corp. v. Universal City Studios Inc.
F: Universal sued Sony, claiming that Sonys sale of VCRs made them liable as a contributory
infringer because consumers used the product to tape movies and other programs shown on
television
The sale of copying equipment, such as Sonys VCR, does not constitute contributory
infringement IF the equipment is capable of substantial noninfringing uses (which it is)
Rule: Unless a patented device has absolutely no significant non-infringing use, the
maker of the device cannot be held liable for any potential infringement by the
people it sells the device to, i.e. the scope of the patent defines the parameters of the
liability for such infringement.
VCR Borrow from patent law the staple article of commerce doctrine: the sale of
copying equipment, like the sale of other articles of commerce, does not constitute
contributory infringement if the product is capable of substantial non-infringing uses
Unauthorized Time-Shifting :whether the activities are a fair use of the copyrighted works
the purpose and character of the use: time-shifting for private home use is a noncommercial, nonprofit activity
the nature of the copyrighted work: time-shifting merely allows one to view a work that
he was invited to view at another time
the substantiality of the portion used: under the circumstances, the fact that the entire
work is reproduced does not have its usual negating effect against a finding of fair use
G. Defenses:
Fair Use: 17 U.S.C. 107 pg 609-610
o including such use by reproduction in copies or phonorecords or by any other means
specified by that section, for purposes such as criticism, comment, news reporting,
teaching (including multiple copies for classroom use), scholarship, or research, is not an
infringement of copyright.
Factors Used to Determine Fair Use:
1. the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
a. Talk about commercial use and transformative use
i. Most important to this analysis is the transformative nature of the
work does it alter the original with new expression, meaning, or
message?
47

ii.

Transformative Use: one that has something new added, allowing

for a further purpose or different character and providing value
beyond that found in the original
1. An untransformed copy is likely to be used for the same
purpose as the original, thereby going against a finding of
fair use
b. The fact that a publication was commercial and not nonprofit weighs
against a finding of fair use
i. every commercial use of copyrighted material is presumptively an
unfair exploitation of the copyright owners rights
ii. the crux of the profit / nonprofit distinction is not whether the sole
motive of the use is monetary gain, but rather whether the user
stands to profit from the exploitation of the copyrighted
material without paying the customary price
c. Defendants conduct is relevant to the character of the use
2. the nature of the copyrighted work;
a. The law generally recognized a greater need to disseminate factual works
as compared to works of fiction
b. Excerpting expressive elements from a work exceeds that which is
necessary to disseminate the facts
c. The fact that a work is unpublished is a critical element of its nature
d. The scope of fair use is narrower with respect to unpublished works
3. the amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
a. whether the quantity and value of the portion used are reasonable in
relation to the purpose of the copying
4. **the effect of the use upon the potential market for or value of the
copyrighted work.
a. Most important factor!
b. To negate fair use, one need only show that if the allegedly infringing
article should become widespread, it would adversely affect the potential
market for the copyrighted work
i. The inquiry must take account not only harm to the original, but
also harm to the market for derivative works
ii. a challenge to a noncommercial use of a copyrighted work requires
proof either that the use is harmful OR that it would adversely
affect the potential market if it became widespread
1. a showing of actual harm or certain future harm is not
required
iii.
the standard is a showing, by a preponderance of the evidence,
that there is some meaningful likelihood of future harm

48

iv.
v.

if the intended use is for commercial purposes, the likelihood may

be presumed
if the intended use is for a noncommercial purpose, the likelihood
must be demonstrated

**The fact that a work is unpublished wont bar a finding of fair use if such finding is made
considering all the above factors**
Harper & Row v. Nation Enterprises
F: was the publisher of an autobiography about Gerald Ford. Before the book was released, an
undisclosed source provided with an unauthorized copy of the manuscript produced an
article about Ford featuring this info
Publication of an authors work before the author does so seriously infringes the
authors right to decide when and how the work will be made public
o Under ordinary circumstances, the authors right to control the first public
appearance of her work outweighs a claim of fair use
o Where extensive resources have been invested in creating an original work that is
soon to be released to the public, no legitimate aim is served by pre-empting the
right of first publication
First we look at all four factors!!!!!
1. Purpose and Character of Use
a. Taking Gerald Fords manuscript and putting it your magazine is
SUPPLANTING
b. Whats happening here is a book is being published and now your making
a news event out of your publicationnot the same as news reporting
2. Nature of Copyrighted Work
a. This is more fact based which would have us leaning towards D
b. Butthis is unpublished which leans for P
3. Amount and Substantiality of Copying
a. Small in quantity but it was the most important parts of the book
4. Effect on Potential Market for Copyrighted Work
a. Completely destroyed potential market TIME left, will not pay Harper
maybe not as much interest in the book anymore
Videotaping:
Sony Corporation of America v. Universal City pg 623
Facts: Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984),
also known as the Betamax case, is a decision by the Supreme Court of the United
States which ruled that the making of individual copies of complete television shows
for purposes of time shifting does not constitute copyright infringement, but is fair
use.
Hold 1: Manufacturers of home video recording machines could not be liable for
contributory copyright infringement for the potential uses by its purchasers, because
the devices were sold for legitimate purposes and had substantial non-infringing uses.

49

Hold 2: Personal use of the machines to record broadcast television programs for later
viewing constituted fair use. Ninth Circuit Court of Appeals reversed

Reasoning:
The Court's 5-4 ruling to reverse the Ninth Circuit in favor of Sony hinged on
the possibility that the technology in question had significant non-infringing
uses, and that the plaintiffs were unable to prove otherwise.
The question is thus whether the Betamax is capable of commercially
significant noninfringing uses ... one potential use of the Betamax plainly
satisfies this standard, however it is understood: private, noncommercial timeshifting in the home. It does so both (A) because respondents have no right to
prevent other copyright holders from authorizing it for their programs, and (B)
because the District Court's factual findings reveal that even the unauthorized
home time-shifting of respondents' programs is legitimate fair use.
Factor 1: If there are millions of owners of VTR's who make copies of
televised sports events, religious broadcasts, and educational programs ... and
if the proprietors of those programs welcome the practice, the business of
supplying the equipment that makes such copying feasible should not be
stifled simply because the equipment is used by some individuals to make
unauthorized reproductions of respondents' works....
Factor 2: When one considers the nature of a televised copyrighted
audiovisual work ... and that time-shifting merely enables a viewer to see such
a work which he had been invited to witness in its entirety free of charge, the
fact ... that the entire work is reproduced ... does not have its ordinary effect of
militating against a finding of fair use.
Factor 1: Combined with the noncommercial, nonprofit nature of timeshifting, he concluded that it was indeed a fair use.

Photocopying:
American Geophysical Union v. Texaco Inc. pg 628
A group of publishers of scientific journals sued Texaco for copyright infringement, claiming
unauthorized copying of its journal articles
Purpose and Character of Use
The purpose of archiving the articles was to have it available for reference when needed
o (1) Commercial use :
the copying was to facilitate Texacos scientific research, which may serve
a broader public purpose, but also could be regarded simply as another
cost of Texaco doing business
You should weigh commercial exploitation (direct and exclusive financial
reward) against any benefit to the broader public interest
o (2) Transformative use: the district court properly found that Texacos use was not
transformative

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transformed copy: has something new added, allowing for a further

purpose or different character and providing value beyond that found in
the original
untransformed copy: likely to be used for the same purpose as the
original, thereby going against a finding a fair use
o the primary archival purpose of the copying goes against a finding
of fair use, despite the benefit of the copy being a more usable
format
Nature of Copyrighted Work
The law generally recognizes a greater need to disseminate factual works than works of
fiction
Because the journal articles are factual in nature, this factor favors Texaco
Amount and Substantiality of Portion Used
The articles were copied in their entirety, so this factor favors plaintiffs
Effect Upon Potential Market
When there exists an easy means to obtain a copy at a reasonable price, the scale tips in
favor of the copyright owner, which is the case here
Holding: Copyright was substantially harmed

c. Parody pg 639: Makes fun of an original work by at once imitating and distorting the work
A. Special Considerations in Parody cases
A parody based on a copyrighted work is more likely to be excused as a fair use if the parody
is at least in part aimed at the copyrighted work itself and the defendant only copied to the
extent necessary to conjure up the copyrighted work in the audiences mind, so that the
audience would understand the parody.
For a parody to be effective, one must be able to recognize the original work, and this
recognition is the result of taking from the original its most distinctive or memorable
features
With regard to parodies, copying does not become excessive merely because the portion
taken was the heart of the original
Satire: A text or performance that uses irony, wit, or sarcasm to expose or attack human vice,
foolishness, or stupidity

For a satire, the proper inquiry is whether the alleged infringer had a genuine, creative
rationale for borrowing the work

Campbell v. Acuff-Rose Music, Inc. pg 640

F: 2 Live Crew produces a parody of Roy Orbisons Oh Pretty Woman. Plaintiff, the songs
publisher files suit for infringement; defendant argues the song is a parody of the songs
earnestness and cites fair use.
Rule: So long as the parodist takes no more than what is necessary from the original
work to make her point, and so long as there are substantially original features of the

51

work blended with those features of the original, the parodist is not barred from
citing fair use even if the portions she takes are qualitatively substantial.
With a parody, in particular, it is likely that the new work will not affect the market
for the original
o The law recognizes no derivative market for critical works, such as parodies,
because the right to derivative works for copyright owners extends only to
those works that the copyright owner would want to create (also public
policy)

d. Remixes
Bill Graham Archives v. Dorling Kindersley Ltd. pg 653
F: published a book that tells the story of the Grateful Dead and includes over 2000 images
with explanatory text. claims that it owns the copyright to 7 images in the book and did not
give permission for their reproduction
While there are no categories of presumtively fair use, precedent holds that fair use
protection is often extended to the use of copyrighted material in biographies,
recognizing such works as forms of historic scholarship, criticism and comment that
require incorporation of original source material

Purpose and Character of Use:

Defendants display of the images supports the transformative nature of the work
o the reduced size is sufficient to allow readers to recognize the historical
significance of the posters, but is inadequate to offer more than a glimpse of their
expressive value
o the reproductions have not been used in any way to promote the sale of the book
and are incidental to the commercial value of the book
Nature of the Copyrighted Work
o The court of appeals limited the weight placed on the fact that the images were
creative works because defendants work was transformative
Amount and Substantiality of the Portion Used
o While precedent does not hold that copying an entire work favors fair use, courts
have concluded that such copying does not necessarily weigh against fair use IF
copying the entirety is necessary to make a fair use of the image
Effect of the Use on the Market
o This analysis requires a balancing of the benefit the public will derive if the use is
permitted and the personal gain the copyright owner will receive if the use is
denied
The proper inquiry is to examine the impact on potential licensing
revenues for traditional, reasonable, or likely to be developed markets
o Transformative works are not a typical market for licensing

Blanance of Factors pg 659

Blanch v. Koons pg 659
is a visual artist known for incorporating pop culture objects and images into his
artwork
s photo was an ad for sandals in a first-class airplane cabin
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o changed the angle of the legs, added a heel to one foot, and modified the
coloring
o

Analysis Used by Court: USE THIS WHEN GOING THROUGH FAIR USE
Purpose and Character of the Use: s use was transformative his purpose in using s
image was very different from s goal in creating it
the copyrighted work was used as raw material in a distinct creation
testified that his use of plaintiffs image allowed for an authentic comment on
consumerism, which would not have been present if his own photograph had been
used (he likened the situation to quoting v. paraphrasing)

Commercial Use the public exhibition of art has a value that benefits the
broader public interest
Nature of Copyrighted Work:
s work was published
Amount and Substantiality Used: copied only that which was necessary to evoke his
commentary, which was a reasonable amount
Market Effect: None doesnt license her work and s piece had no effect on s career
and it didnt diminish the value of the photo
Reverse Engineering
Sega Enterprises Ltd. v. Accolade Inc.
F: creates and markets video entertainment systems, including the Genesis console.
Purpose and Character of the Use
copied plaintiffs code for a legitimate, essentially non-exploitative purpose, the
commercial aspect of which is minimally significant
The copying was done specifically to study the functional requirements for compatibility
with the Genesis console
Nature of the Copyrighted Work
The functional aspects of plaintiffs programs are not protected
to hold that defendants method of reverse engineering (which is the only way to do it) is
per se an unfair use would be to grant a de facto monopoly over the functional aspects of
the work
Amount and Substantiality of the Portion Used
Although defendant copied the entirety of s work, the ultimate amount used was so
limited, this factor is of very little weight
Market Effect
s use simply enabled it to enter the market for works of the same type as the copied
work
In this market, it is the characteristics of the game program that determine its commercial
success
Defendant did not usurp plaintiffs market; its just a competitor
Other Copyright Defenses:
o Independent Creation allegedly infringing work was created without copying
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o Consent / License permission to use the copyrighted material

o Inequitable Conduct occurs when a copyright owner obtains a copyright through
fraud or other deceptive conduct on the Copyright Office and renders a copyright
invalid
o Copyright misuse using copyright protection to undercut free competition
o First Amendment courts generally reject a defense based upon first amendment
rights because the Constitution provides for the protection of copyrighted works
and copyright law allows for first amendment-type considerations
o Immoral / Obscene Works at late as the 1960s, some courts found that obscene
works were not protected by copyright laws
o Statute of Limitations (copyright infringement) 3 years after the claim accrued

54

 Trademark

Trademark Theory:
o Trademark functions in modern practice are widely viewed as devices that help to
reduce information and transaction costs by allowing customers to estimate the
nature and quality of goods before purchase.
o Consumers rely most on trademarks when it is difficult to inspect a product
quickly and cheaply to determine its quality.
o Trademarks differ in fundamental ways from the other types of IP protection.
Patents, copyrights, and trade secrets are designed to protect and/or reward
something new, inventive, or creative, whether it be an idea, a physical
creation, or an expression.
A trademark, by contrast, does not depend upon novelty, invention,
discovery, or any work of the brain. Rather, TM protection is awarded
merely to those who were the first to use a distinctive mark in commerce.
o Trademark protection is awarded to one to first use the mark in commerce
o The fundamental principles of trademark law come from tort law unfair
competition and consumer deception
o Trademark rights acquire with use and continue only so long as the use continues
Trademark rights promote investment in:
the creation of a mark
promoting a product in association of the mark
the quality of the products associated with the mark
Types of Marks:
o Trademark any word, name, symbol, or device, or any combination thereof
used by a person OR which a person has a bona fide intention to use in commerce
to identify or distinguish his or her goods, for which registration is applied
o Service Mark - any word, name, symbol, or device, or any combination thereof
used by a person OR which a person has a bona fide intention to use in commerce
to identify or distinguish his or her services, for which registration is applied
o Certification Mark - any word, name, symbol, or device, or any combination
thereof used by a person other than its owner OR which the owner has a bona fide
intention to permit a person to use in commerce to certify regional or other origin,
material, mode of manufacture, quality, accuracy, or other characteristics, for
which registration is applied
used by groups to identify a particular type of goods that conform to
centralized standards

55

open to anyone meeting the standards set forth for certification

o Collective Mark a mark used by the members of a collective group, or which

the group has a bona fide intention to use, in commerce, for which registration is
applied
o Trade Dress
the design and packaging of materials
the design and shape of a product
protected without registration
The Basic Economics of Trademarks and Advertising pg 766
o Despite the fact that developed economies spend more than 2% of their GNPs on
advertising, economists have not reached consensus regarding the economic
function of TMs.
o Advertising may have the effect of differentiating in the minds of consumers
products that are in fact similar or identical. The result of this brand
differentiation may be that the trademark owner obtains some power over price.
o Economists studying the informational role of advertising make an important
distinction, one worth keeping in mind when studying trademark law. They
distinguish between a products simple SEARCH CHARACTERISTICS (price,
color, shape, size, and product category) and its more complex EXPERIENCE
CHARACTERISTICS, such as taste or long-term durability.
o The former search characteristics are aspects of product quality that
consumers can verify by inspecting the product before they buy it. It is easy to see
why firms would invest in advertising these qualities: they are basic aspects of a
product, and consumers can easily verify whether the claims are true.
o Obviously, no amount of advertising makes sense unless consumers remember the
name of the product. This is where trademarks come in: they are essential
shorthand.
When they are effective, consumers strongly associate the TM with the
producers product. The TM comes to embody all of the firms
informational investments.
o Often, courts and commentators speak of the economic value of consumers
associations with a firm and its TM as the firms GOODWILL.
Goodwill can be thought of as the residual benefit the firm receives from
making the 3 types of investments described above.
4 Categories of Marks
1. Generic: the mark is so associated with the product or service that it has become the
natural way to refer to that product or service
a term that refers OR has come to be understood as referring to the genus of which
the particular product is a species
a term may be generic in one market and descriptive, suggestive or arbitrary in
another market

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Lanham Act 14 provides for the cancellation of a registered mark that has become
the common descriptive name of a product
proof of secondary meaning can NOT transform a generic term into a subject
for trademark
2. Descriptive: describes the product or service
a term that conveys an immediate idea of the ingredients. Qualities or characteristics
of the goods
Lanham Act 2 forbids the registration of a mark that is merely descriptive of goods
or services UNLESS the mark has acquired secondary meaning
removing from public use a phrase that describes a product or the function of a
product prevents competitors from entering the market and advertising their
products/services AND would generate confusion (there are a limited number of
descriptive phrases)
o When determining secondary meaning, the major inquiry is the
consumers attitude toward the mark
o The mark must denote to a consumer a single thing coming from a single
source
o The mark holder may show this by both direct and circumstantial evidence
o Factors to be considered are:
amount and manner of advertising
volume of sales
length and manner of use
direct consumer testimony
consumer surveys
o Consumer testimony and surveys are the only direct evidence
o When examining circumstantial evidence, the inquiry is not directed to the
extent of the promotional efforts, but rather their effectiveness in altering the
meaning of the mark to the public
3. Suggestive: suggest a product or service in ones mind
a term that requires imagination, thought and perception to reach a conclusion as to
the nature of the goods
Entitled to registration without proof of secondary meaning
4. Arbitrary or fanciful: the mark bears no relationship to the product or service
Entitled to registration without proof of secondary meaning
** the decision of the PTO to register a mark without requiring proof of secondary
meaning creates a rebuttable presumption that the mark is suggestive or arbitrary
rather than merely descriptive
Color, Fragrance, and Sounds
Qualitex Co. v. Jacobson Products Co. pg 775
F: uses a specific shade of green-gold color, which it trademarked, on the pads it makes
and sells to dry cleaners for presses. began selling pads with a similar color

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Color, like shape, sound and smell, can identify and distinguish a brand through
secondary meaning
Secondary meaning the primary significance of a product feature is to identify
the source of the product rather than the product itself
o Nothing in the basic objectives of trademark law prevents a color that has
obtained secondary meaning to be trademarked
The functionality doctrine does not prevent a color to be trademarked
Functionality Doctrine a product feature is functional if it is essential to the
use or purpose of the product OR if it affects the cost or quality of the product
o functional features cannot be trademarked
o prevents trademark law, which seeks to promote competition by protecting
ones reputation, from instead inhibiting competition by allowing one to
control a useful product feature
Plaintiffs green-gold color serves no function for its product, but has developed
secondary meaning by identifying plaintiff as the source of the product

E. ESTABLISHMENT OF TRADEMARK RIGHTS pg 781

1. Distinctiveness
a. Classification of Marks and Requirements for Protection
When a TM is immediately capable of identifying a unique product source,
rights to the mark are determined solely by priority of use.
For all other TMs those deemed not inherently distinctive the Lanham Act
requires proof of an additional element to secure TM rights: secondary
meaning.
The Zatarains case that follows explores the hierarchy of TM classifications
and illustrates why classifications matter.
The most important type of work or symbol requiring proof of secondary
meaning is the DESCRIPTIVE TM.
o A descriptive mark is defined as a word, picture, or other symbol that
directly describes something about the goods or services in connection
with which it is used as a mark.
In addition to descriptive marks, several other categories of marks require
secondary meaning to acquire legal protection: most notably
o Geographic Marks such as Nantucket drinks
o Personal Name Marks such as OMalleys beer
Secondary meaning exists when buyers associate a descriptive term with a
single source of products.
It does not mean that buyers need to know the IDENTITY of the source, only
that the product or service comes from a SINGLE source.
Zatarains, Inc. v. Oak Grove Smokehouse, Inc.
F: is the manufacturer and distributor of many food products, including batter mixes which it
markets under the names Fish-Fri and Chick-Fri both of which are trademarked. sued ,
who markets batter mixes for frying fish and chicken and labels the packages FISH FRY or
CHICKEN FRY
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Secondary meaning words with an ordinary and primary meaning of their own may,
after long use with a particular product, come to be known by the public as specifically
designating that product
o To establish secondary meaning, one must show that the primary significance of
the mark in the minds of the public is not the product but the producer
o Proof of secondary meaning is an issue only with respect to descriptive marks
o The burden of proof rests with the senior user of the mark and a high degree of
proof is required
Fair Use Defense
o even when a descriptive term has acquired secondary meaning sufficient to
warrant trademark protection, others may be entitled to use the mark without
liability for infringement IF the mark is used fairly and in good faith only to
describe the good or services
only available in actions involving descriptive terms
the terms must be used in a descriptive manner and not as a trademark
prevents a trademark owner from appropriating a descriptive term for its
own use
others are entitled to use terms for their primary, descriptive meaning, so
long as such use does not lead to consumer confusion
Descriptiveness Determination
1. Dictionary provides the ordinary meaning of words
o fish fry refers to preparing and consuming fried fish
2. Imagination Test measures the relationship between the words of the mark and the
product to which they are applied
o if the words require imagination, thought and perception to determine the
nature of the goods, they are suggestive
o if the words alone convey information as to the characteristics of the product,
they are descriptive
o Fish-Fri indicates something to fry fish with and is descriptive
3. Whether competitors would be likely to need the words used in the mark to describe
their products
plaintiffs competitors would find the words fish and fry useful in describing
their products as there are not many other words available
4. The extent to which the words have actually been used by others marketing a
similar product or service
a number of companies have used the words fish and fry in some
combination to describe fry batter mixes
Fish-Fri Although plaintiffs mark has acquired secondary meaning, because it is
descriptive plaintiff has no legal claim to the exclusive right in the original descriptive
meanings of the words in the mark
Defendants use of the words was fair and in good faith because it used them in their
ordinary, descriptive sense
Neither the circumstantial evidence nor the direct evidence of secondary meaning for ChikFri favors plaintiff

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c. Distinctiveness of Trade Dress and Product Configuration

Distinctiveness:
o One possible way around a finding that a term is descriptive or generic is to alter
the term by misspelling it or using an acronym
the relevant question for the court is whether the altered term has the same
connotation as the original term
ROM is generic
EZ and Klear become suggestive
o Personal names must acquire secondary meaning to obtain trademark protection
there is a limited fair use defense for personal names
Two Pesos, Inc. v. Taco Cabana, Inc. pg 804
F: operates a chain of fast-food restaurants serving Mexican fare in the San Antonio areait
has a specific trade dress. opened Mexican restaurants in Texas, but not in San Antonio, with a
trade dress similar to that of
Jury Findings:
Plaintiff has a trade dress
The alleged infringement creates a likelihood of confusion for ordinary customers as to
the source of the restaurants goods and services
o The legal recognition of an inherently distinctive trade dress acknowledges the
owners legitimate proprietary interest in its unique and valuable informational
device, regardless of whether substantial consumer association yet conveys the
additional protection of secondary meaning
o Imparting the requirement of secondary meaning to an inherently distinct trade
dress, would undermine the purpose of the Lanham Act, which are to prevent
deception and unfair competition and secure an owners good will in his business
Lanham Act 43(a):
(1) Any person who, on or in connection with any goods or services, or any container for
goods, uses in commerce any word, term, name, symbol, or device, or any combination
thereof, or any false designation of origin, false or misleading description of fact, or false
or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive as
to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his
or her goods, services, or commercial activities by another person,
OR
(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or
another person's goods, services, or commercial activities, shall be
liable in a civil action by any person who believes that he or she is
or is likely to be damaged by such act.

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(3) In a civil action for trade dress infringement under this Act for trade dress not registered on
the principal register, the person who asserts trade dress protection has the burden of proving that
the matter sought to be protected is not functional.
Wal-Mart Stores, Inc. v. Samara Brothers, Inc. pg 810
F: Plaintiff designs and sells childrens clothesDefendant sent photographs of plaintiffs
spring/summer line to a designer, who copied, with only minor modifications, plaintiffs line,
which sold with a great profit
A mark or trade dress can be distinctive in one of two ways:
1. inherent distinctiveness its intrinsic nature serves to identify a particular source
2. secondary meaning
3. Product packaging, which may be inherently distinctive, is distinguishable from
product design

Product design is not inherently distinctive and requires a showing of secondary

meaning for protection

2. Priority pg 828
The requirement that a mark must be used to obtain a right in the mark prevents one from
reserving marks in order to make competitors marketing more costly
public use lets others know that they should not invest resources to develop a similar
mark
public use allows others to associate a mark with particular goods
Lanham Act 45: Use in Commerce
The term use in commerce means the bona fide use of a mark in the ordinary course of
trade and NOT made merely to reserve a right in the mark
A mark shall be deemed to be in use in commerce on goods when:
1. it is placed in any manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed thereto, OR if the nature of
the goods makes such placement impracticable then on documents associated with
the goods or their sale, AND
2. the goods are sold or transported in commerce

A mark shall be deemed to be in use in commerce on services when:

1. it is used in advertising the services AND the services are rendered in commerce,
OR
2. the services are rendered in more than one state OR the U.S. and a foreign
country, AND the person rendering the services is engaged in commerce in
connection with the services
Zazu Designs v. LOreal, S.A. pg 829
F: LOreal develops new coloring product. In researching possible trade names, it comes across
Zazu name, registered as a state service mark by a salon in Illinois.

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The salons sales were insufficient to establish priority over LOreal a few bottles sold
to customers and a few more mailed to friend is not sufficient to link the ZAZU mark
with the salons products in the minds of consumers nor put other producers on notice
Use sufficient to register a mark that is soon to be widely distributed is not necessarily
enough to acquire rights in a mark in the absence of registration
Registration gives notice; token use alone does not

Geographic Limitations on Trademark Use:

o For unregistered marks, ownership of a mark does not necessarily confer
nationwide protection
o Rather, the mark is protected only where the marked products are sold or
advertised
o Trademarks are not intended to confer a broad property right, but merely to
protect the goodwill the mark owner has invested in the mark
Exceptions:
o a mark owner is entitled to the exclusive use of a mark in any geographic area in
which the marks reputation has been established, even if the product is not sold
in that area
o a mark owner is entitled to protection in a geographical area that the owner is
expected to reach in the normal expansion of the business, even if there is no
current likelihood of confusion
o a mark owner is entitled to prevent anyone from intentionally trading on her
goodwill, even outside her established geographic area

If two unregistered marks come into conflict in a particular geographic region, the
conflict will be resolved in favor of the earliest user in that area
Trademark registration automatically confers nationwide protection of a mark (Lanham
Act 15)
If one of two unregistered users of a mark registers the mark, he is entitled to exclusive
use throughout the country, but the unregistered user may assert a limited area defense
Limited Area Exception (Lanham Act 33(b))
o confers upon junior users the right to continued use of an otherwise infringing
mark in a remote geographical area IF that use was established prior to the other
partys federal registration
o the junior user must have used the mark continuously in that location
o If both parties file for registration of marks that are in use in different
geographical areas at the same time, the PTO will generally declare an
interference
o If the parties agree OR the PTO deems it is appropriate, both marks may be
registered for concurrent use and restrictions will be imposed to avoid consumer
confusion
Trademark Registry:

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3. Trademark Office Procedures pg 848

Principal Registry Benefits:
o Registration is constructive notice that the owner of the mark has the right to use
the mark throughout the entire U.S.
o Registration is prima facie evidence of validity, ownership, and exclusivity
o Registration is prima facie evidence that the mark has been used continuously in
commerce
o After five years of continuous use in commerce, the mark becomes incontestable
o The owner may sue for trademark infringement in federal court even when
diversity does not exist
o The owner may obtain increased statutory damages for infringement
o The owner may prevent the importation of infringing goods
Supplemental Registry Benefits: Doesnt give you the same rights
o You can still file in federal court regardless of diversity
o Certain rights under the Paris Convention that assist overseas registration of the
mark (also for Principal Registry)

Bars to Registration: Lanham Act

2(a): Immoral, Scandalous, or Disparaging Matter

o Doesnt mean you cant have common law rights, just cant register it
o Vulgar, overly sexually explicit, deceptive is misleading to consumers and
scandalous is something that is morally wrong (ex: Redskins found to be
scandalous or disparaging)
Bar is absolute
o Examples of marks that are immoral/scandalous:
Amish (brand if cigars)
Madonna (brand of wine)
Libido (perfume)
Booby Trap (bras)
o Examples of marks that are not immoral/scandalous:
Buddha beachwear
Black Tail magazine
Bad ass musical instruments

2(b) bars the registration of marks containing the flag, coat of arms, or other insignia of
the U.S., of any state or municipality, or of any foreign nation OR any simulation of such
symbols

63

o no additional element of disparagement or false suggestion is needed to preclude

registration
2(c) bars the registration of marks containing a name, portrait or signature of a
particular living person OR a deceased U.S. president during the life of his widow
unless written consent

2(d) bars the registration of marks that so resemble marks registered with the PTO OR
used previously in the U.S. by another and not abandoned, as to be likely when used in
connection with the goods of the applicant to cause confusion, mistake or deception

2(e)(1) bars the registration of marks that when used in connection with the goods of
the applicant are merely descriptive or deceptively misdescriptive

2(e)(2) bars primarily geographically descriptive UNLESS secondary meaning

demonstrated

2(e)(3) bars from registration a mark that when used on or in connection with the
goods of the applicant is primarily geographically deceptively misdescriptive of the
mark EVEN IF secondary meaning is demonstrated

2(e)(4) bars from registration a mark that is primarily a surname

o A mark that is primarily merely a surname CANNOT be registered UNLESS it
has acquired secondary meaning
o Inquiry- what is the terms primary significance to the purchasing public?
o Burden is on examiner to establish case that mark is primarily merely a
surname then burden shifts to the applicant to rebut
o Factors to consider when determining whether a marl is primarily a
surname:
Degree of surname rareness
Whether anyone connected with applicant has the surname
Whether the term has a recognized meaning other than that of a surname
Structure and pronunciation or look and sound of the surname
2(e)(5) bars from registration a mark that is functional EVEN IF it has acquired
secondary meaning
o functionality is determined in light of utility, which is determined in light of
superiority of design
o 4 evidentiary factors for functionality
patent that discloses the utilitarian advantages of the design
advertising material in which the originator of the design touts its
utilitarian advantage
availability of alternative designs
comparative manufacturing cost of design (cheaper/simpler to make)
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EXAMPLE: if you design a hammer and you make a grip that

makes it easier to hold and it has a special swirly design where
your fingers would go and you want to trademark that swirly
design where your fingers you you could trademark the logo, but
not the design that make it easier for your fingers to grip
EXAMPLE: fancy dishwasher fluid bottle you want to trademark,
but comes out that the shape of the bottle makes it easier to hold
that functionality could come out and bar you
Geographic Marks pg 852
In re Nantucket Inc.
F: Applicant argued that the shirts werent from Nantucket and consumers wouldnt be
deceived by the NANTUCKET sign on the shirts
Test for Registrability of a Geographically Descriptive Term:
o (1) whether the mark has a readily recognizable geographic meaning AND
no alternative non-geographic significance
o (2) whether applicants goods come from that geographical place
(a) IF applicants goods come from a geographical place AND an
informed consumer associates the mark with the geographical
place AND the consumer associates the goods with the place as a
source, the mark can NOT be registered because it is merely
geographically descriptive UNLESS there is secondary meaning
(b) If there is NO association of the goods with a source, then the
term is arbitrary and NOT geographically descriptive
(c) If applicants goods do NOT come from the geographical place
AND the public would NOT associate the goods with the place,
then the mark can be registered b/c is only geographically
misdescriptve (but NOT deceptively misdescriptive)
o Court said its OK for the mark to be geographically misdescriptive,
as long as its not DECEPTIVELY SO!!
Test for Registerability of a Geographically Deceptively Misdescriptive Term:
o The mark is the name of place known generally to the public, AND
o Purchasers are likely to believe, mistakenly, that the goods or services sold
under the mark have their origin or are connected to the geographic place

Examples:
Paris for perfume- primarily geographically deceptively misdescriptive
Paris for diapers- arbitrary
Wall Street for desk organizers- primarily geographically deceptively misdescriptive
Dodge City for chewing tobacco- arbitrary

Opposition pg 859: Lanham Act 13(a)

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o allows one to file an opposition to the registration of a mark (w/in 30 days of

publication) IF one believes that he would be damaged by such registration
o Opposer must prove that:
It is likely to be damaged by registration of the mark, AND
There are valid legal grounds why the applicant is not entitled to register
the mark
14 allows the cancellation of a mark once it has already been registered if you arent
able to catch it before it registers
Incontestability pg 861: Lanham Act 15
o Except on a ground for which application to cancel may be filed at any time . . .
shall be incontestable provided that:
There has been no final decision adverse to the claim of ownership OR to
the right to register the mark, AND
There is no pending proceeding involving said rights, AND
An affidavit is filed within one year after the expiration of the five-year
period stating the mark has been in continuous use for five consecutive
years and is still in use in commerce, and the other matters specified in
paragraphs (1) and (2), AND
No incontestable right may be acquired in a mark which is the generic
name for the goods or services or a portion thereof
o The doctrine is somewhat of a misnomer b/c one can still contest an
incontestable mark by at least 9 of the following ways ( 33(b)):
Fraud in obtaining registration
Abandonment
Misrepresenting a source
Fair use of the mark
Limited territory defense of junior user
If someone has a small geographic territory where their mark has
become well known, you cant take that away from them
Prior registration
Use of the mark to violate antitrust laws
Using your mark to create some sort of monopoly
Equitable defenses (laches, estoppel)
If youve disclaimed something during the examination procedure
Functionality
Reasoning for Incontestability:
o pure statutory doctrine that reflects an underlying policy decision in trademark
law that is something like the notion of quiet title in property
o 5 years after registration, a mark may become inconstestable and cannot be
cancelled based upon grounds of priority or descriptiveness

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Park N Fly, Inc. v. Dollar Park and Fly, Inc. Incontestability pg 861
F: has operated long-term parking lots near airports called Park N Fly Mark was granted
incontestable status. Dollar Park operates a similar business in Oregon. argued that the mark
should be cancelled b/c its generic or that its merely descriptive
language of the Lanham Act refutes any conclusion that an incontestable mark may
be challenged as merely descriptive
Incontestability status promotes the goals of the Lanham Act by protecting the mark
owners good will and avoiding consumer confusion
Trademark Infringement pg 868:
o s use of the mark has created a likelihood of confusion about the origin of the
s goods or services
o must show that:
it has developed a protectable right in the mark
is using a confusingly similar mark in such a way that it creates a
likelihood of confusion, mistake, and/or deception for consumers
o The confusion created can be that s products are the same as that of the s OR
that the is somehow associated, affiliated, connected, approved, authorized, or
sponsored by

Rescuecom v. Google Use as a Trademark pg 868

F: is a national computer service company that offers on-site computer services and sales.
Google search engine in addition to a list of search results, related ads pop up when a user
enters a term
argues that bc of the way displays the ads, users may easily be misled to believe that
the ads that pop up are part of the search results and that the appearance of competitors
ad and link in response to a search for s company is likely to cause trademark confusion
o Differences between GOOGLE and 1-800:
In 1-800, didnt use, reproduce, or display s mark at all
In 1-800, advertisers couldnt request or purchase key words to trigger ads
to pop up, rather the display of an ad was controlled by the category of the
search
o argues that 1-800 suggests that an internal use of a mark, such as in a computer
program is not use in commerce
The court stated that product placement (ex: advil next to ibuprofen at CVS) itself is
not necessarily free from liability
o Fair product placement is not deceptive to consumer
o If product placement were found to be deceptive, the retailer may be liable
HOLDING: The infringement inquiry does not end at whether or not used s mark,
but continues to determine whether such use caused confusion, mistake or deception
AMF Incorporated v. Sleekcraft Boats Likelihood of Consumer Confusion pg 876

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F: Plaintiff, designer and manufacturer of Slickcraft recreational boats, sues defendant, maker of
Sleekcraft recreational boats, for trademark infringement
When goods of the alleged infringer compete for sales with those of the trademark
owner, infringement will usually be found IF the marks are sufficiently similar
o The alleged infringers intent is considered
o Evidence of likelihood of confusion is examined
When goods of the alleged infringer are related, but do not compete, several other factors
are considered
When goods arent related, infringement will not usually be found b/c no confusion
Look towards sight, sound, and meaning of the words
Holding: Injunction warranted
Factors for Determining Likelihood of Confusion for Related Goods
Strength of the mark
Proximity of the goods
Degree of similarity between the marks
Evidence of actual confusion
Marketing channels used
Type of goods and degree of care likely to be exercised by the consumer
o Will the consumer do a lot of research on the good before purchasing?
s good faith in adopting the mark
likelihood of expansion of the product lines
Applied Here:
Strength of the mark plaintiffs mark is suggestive and while protectable and possibly
strengthened by advertising, is relatively weak
Proximity of the goods although the two boat lines are do not compete in the same
market, they are extremely close in use and function
Similarity of the marks similarity is tested on 3 levels: sight, sound, and meaning
Sight the marks are the same except for 2 inconspicuous letters in the middle of
the first syllable
Sound while the two marks can be distinguishable, the difference is slight
Meaning the words are virtual synonyms
Evidence of actual confusion plaintiff introduced evidence that confusion had
occurred, but it was not a substantial showing
Marketing channels marketing channels for both lines are parallel
Types of goods and purchaser care the proper standard is the typical buyer exercising
ordinary caution
o the typical buyer takes great care in choosing a boat and is not necessarily swayed
by trademarks
o equivalence in quality will not necessarily harm the mark owner, but may
contribute to an assumption of a common connection
Intent defendant acted in good faith
Likelihood of expansion evidence shows that both parties are diversifying their model
lines and the potential that one or both will enter the others sub-market is strong
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Marks Found to be Confusingly Similar

AllState for auto insurance and driving school
Boars Head for deli meats and beer
Don Diego for cigars and tequila
Greyhound for bus line and taxicabs
Monopoly for game and apparel
Rolls Royce for cars and radio tubes
Tiffany for jewelry and motion pictures
V8 for vegetable juice and vitamin tablets
Yale for locks and flashlights
Marks Found NOT Confusingly Similar
AllState for auto insurance and mortgage brokering
BlueShield for medical plan and mattress
Faultless for laundry starch and canned foods
Lutess for restaurant and cosmetics
White House for tea/coffee and milk
Dilution:
o You can claim that if you dont meet infringement that your trademark is being
diluted
Trademark Dilution Revision Act (2006)- must show that:
1. it owns a famous mark thats distinctive
2. has commenced using a mark in commerce that is allegedly diluting its famous mark
3. A similarity between s mark and its famous mark give rise to an association between the
marks, AND
4. This association is likely to impair the distinctiveness of its famous mark OR is likely to
harm the reputation of its famous mark

In the context of blurring, distinctiveness refers to the ability of the famous mark to
identify a single source
Dilution occurs when s use creates the possibility that the famous mark will lost
its ability to serve as a unique identifier of s product
o need NOT show:
Actual or likely confusion
The presence of competition
Actual economic injury
o 3 Defense are allowed:
fair use
news reporting and commentary
noncommercial use
6 factors to Determine Likelihood of Dilution by Blurring
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o similarity of the marks

o degree of distinctiveness of the famous mark
o extent to which the owner of the famous mark is engaged in exclusive use of
the mark
o degree of recognition of the famous mark
o whether the user of the allegedly diluting mark intended to create an
association with the famous mark
o any actual association between the allegedly diluting mark and the famous
mark
Dilution by Tarnishment:
to show dilution by tarnishment, must show that s use of the mark harms the
reputation of s mark
Louis Vuitton v. Haute Diggity Dog DILUTION pg 892
F: sued on the grounds that s chewy vuiton dog toy product diluted its trademark

The first 3 factors of the dilution test are not at issue

1. Plaintiff owns a famous mark that is distinctive YES
2. Defendant has commenced using a mark in commerce that is allegedly diluting its
famous mark YES, in wording and color
3. A similarity between defendants mark and its famous mark give rise to an
association between the marks YES, as a parody
Issue - whether the association is likely to impair the distinctiveness of its famous mark OR is
likely to harm the reputation of its famous mark

parody is not automatically a complete defense to a claim of dilution when the is

using the parody as a trademark, i.e. to identify its goods
o It is the fact that plaintiffs mark is so strong and that defendants mark is a
successful parody that leads to the conclusion that defendants use will not dilute
plaintiffs mark

Trademark Dilution Revision Act (2006)- must show that:

5. it owns a famous mark thats distinctive
6. has commenced using a mark in commerce that is allegedly diluting its famous mark
7. A similarity between s mark and its famous mark give rise to an association between the
marks, AND
8. This association is likely to impair the distinctiveness of its famous mark OR is likely to
harm the reputation of its famous mark

In the context of blurring, distinctiveness refers to the ability of the famous mark to
identify a single source

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Dilution occurs when s use creates the possibility that the famous mark will lost
its ability to serve as a unique identifier of s product
o need NOT show:
Actual or likely confusion
The presence of competition
Actual economic injury
o 3 Defense are allowed:
fair use
news reporting and commentary
noncommercial use

6 factors to Determine Likelihood of Dilution by Blurring

o similarity of the marks
o degree of distinctiveness of the famous mark
o extent to which the owner of the famous mark is engaged in exclusive use of
the mark
o degree of recognition of the famous mark
o whether the user of the allegedly diluting mark intended to create an
association with the famous mark
o any actual association between the allegedly diluting mark and the famous
mark
Defenses:
o
o
o
o

Genericness
Functionality
Abandonment
Fair Use

1) Genericness - 794:
Are either born generic or are made generic via genericide
o Genericide: become generic over time
A generic term can be trademarked in a context where it is NOT being used it its generic
sense (Apple computers)
A generic description answers the questions: Who are you? What are you?
Trademarks answer the questions: Where do you come from? What quality is associated
with you?
The Murphy Door Bed Inc. v. Interior Sleep Systems Inc Genericness pg 794
F: Murphy name was used it had to be identified as a trademark and no other products could be
promoted or sold as Murphy products. decided to incorporate his own company, using in the
name Murphy Bed
Generally, the has the burden of showing that it has a valid trademark and, if the mark
is unregistered, that it is not generic

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However, when the public has appropriated a term established by the maker of a product,
the burden shifts to the to prove genericness
A critical step in the courts allocation of the burden of proof in cases where the mark is
claimed to be generic is the determination of whether the alleged genericness is by
reason of common usage or by reason of appropriation by the public
o From the perspective of the consuming public
o The decisions of the PTO and the TTAB are afforded great weight
o The term is included in many dictionaries as a description of a bed that folds
into a wall
o There was evidence by way of newspaper and magazine ads that the term
was used generically to describe a wall bed

Test for Genericness: What is the primary meaning of the phrase to relevant buyers?
Factors for determining genericness:
Competitors use the same term to describe goods
How the trademark holder uses the word
Dictionary definitions
Media use
Testimony of persons involved in the field
Consumer surveys
Ex: Xerox ad as an example of protecting a trademark from genericide: There is no such thing a
xerox. And There are two Rs in Xerox (as in the trademark).
2) Functionality pg 817
A feature is functional IF:
The exclusive use of the feature would put competitors at a significant non-reputational
disadvantage
It is essential to the use of purpose of the product
It effects the cost or quality of the product
It makes the product work better
Traffix Devices Inc. v. Marketing Displays Inc. pg 817
F: spring mechanism look of a design that allows temp. road signs to stay upright
The party asserting trade dress protection bears the burden of proving that the matter
sought to be protected is not functional
E. DEFENSES pg 953
3) Abandonment pg 953
A mark shall be deemed to be abandoned when EITHER:
1. its use has been discontinued with intent not to resume
intent NOT to resume may be inferred from circumstances

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non-use for 3 consecutive years is prima facie evidence

use beans the bona fide use of the mark made in the ordinary course of
trade and NOT merely to reserve a right in the mark
2. When any course of conduct of the owner causes the mark to become the generic
name for the goods connected with the mark OR otherwise lose its significance
2) Exhaustion/First Sale pg 966
As with patent and copyright law, once a TM owner sells a TMed good, the buyer of that
good is free to resell the good without permission of the TM owner.
The IP protection governing that product is exhausted after the first authorized sale.
As the 9th Circuit explained, the right of a producer to control distribution of its
trademarked product does not extend beyond the first sale of the product.
The first sale doctrine, however, applies only to authorized sales of genuine products.
The exhaustion doctrine is subject to important limitations relating to resale of goods
without requisite quality control requirements, repackaging of goods, and repair and
reconditioning of goods.
It also arises with regard to importation of goods.
3) Fair Use
The fair use doctrine is considered in the Zatarains case. But properly understood, fair use
is a defense to a TM infringement claim.
4) Fair Use
Even when a descriptive term has acquired secondary meaning sufficient to warrant
trademark protection, others may be entitled to use the mark w/o liability for
infringement IF the mark is used fairly and in good faith only to describe the good or
services
o The term must be used in descriptive manner and not as trademark
A claiming trademark infringement bears the burden of proving a likelihood of
confusion
A asserted the affirmative defense of fair use does NOT also acquire an independent
burden of negating any likelihood of confusion

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