Go through IP news INTRODUCTION I. Overview: Distinguishing forms of IP Protection a.

Trade Secrets: Never publicly disclosed/confident what gives it economic value i. Dupont v. Christopher (p. 47): Guy flying over company compound to find out how company was building the factory ii. Issues: How to keep trade secrets in technologically advanced world (Google Maps) iii. Examples: recipes for coke, Listerine b. Patents: Give protection to the form of the idea and exclude others from making that product & gives exclusive use of that invention for 20 years i. Examples: Drugs v. generic drugs (same ingredients but patent has expired); iPad ii. Profs favorite Patent: US Patent No. 6,022,219 (Feb. 8, 2000)- Painting Kit & Related Material- Elise Cohen, Aspen, CO Methods patent iii. Petition to patent: need to disclose invention + no one else has come up with it lots of requirements c. Copyright: Give protection to an original form of expression i. Related Rights: Moral rights (rights creators have in their work) 1. Issue: Black & white movies- do original creators have vested right? ii. Campbell v. Acuff-Rose Music (p. 408): 2 versions of pretty woman song- defended as fair use iii. Constitutional Power: Congress has power to enact progress of science & the arts d. Trademark: Making a link form a logo to a brand- protects the goodwill, origin, and quality of product- any risk is bad for the brand i. Ex. Starbucks, Tiffanys light blue box (can the color be protected?) ii. Creative Commons Movement: People putting their work into the public domain for any noncommercial purpose & make notes if you modify it e. World Intellectual Property Organization (WIPO): International treaty established under the UN i. Berne Convention: protects literary works ii. IP property rights: arise purely from domestic law- national statutes create patent rights iii. Rights that countries enact in domestic laws to react to the international treaty 1. Patent right: territorial- only valuable in the US and need a separate patent if you want it protected in another country TRADE SECRET I. Trade Secret Law: Restatement Torts 757- Comment b (35): a. Extent to which the info is known outside of the business b. Extent to which it is known by employees & others involved in the business c. Extent of measures taken to guard the secrecy of the info d. Value of info to company & competitors e. Amount of effort or money expended to develop the info f. Ease or difficulty to property acquire or duplication by others II. Trade Secret Motivation: a. Incentivize innovation: to create & put in efforts b. Protect efforts: Unfair competition & disallowing improper means i. Properly acquired: need real effort, not getting someone drug ii. Police bad behavior: disincentivize behavior we consider immoral- fair playing field III. Uniform Trade Secret Act (45 states) Section 1: Trade secret means info, including a formula, pattern, compilation, program, device, method, technique or process that:

(1)Derives independent economic value, actual or potential, from (2) not being generally known to, and (3) not being readily ascertainable (4) by proper means by, other persons who can (5) obtain economical value from disclosure or use; and i. Proper means: looks at ease to discover through proper means, not unsavory business practices 1. Simple info: easier to reverse engineer & less likely independent efforts will leave a clear record of exonerating evidence higher risk of wrongfully mistaking lawful competition for misappropriation 2. UTSA Objective test of secrecy: focus on how readily people in the Ps business community can obtain the disputed info by proper means b. Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy i. Issue: What is reasonable? 1. Objective evidence: Info did have value as a secret 2. Subjective belief: owner subjectively believed the info was valuable as a secret & worth protecting 3. Intensity of owners effort: More effort, more likely it stayed a secret a. Inquire into levels of: physical security, contractual security (confidentiality ks), social security (how the employees act) b. Marking everything confidential: dilutes the meaning of confidentiality IV. Trade Secret Generally: Indefinite time period (v. patent is public after 20 years) a. If harder to reverse engineer, might prefer trade secret protection b/c longer time & anything can be a TS b. Value of TS: comes from being not generally known c. Burden: On the party asserting the trade secret to show it is a TS d. Policy: promote the maintenance & standards of commercial ethics & encouragement of invention V. What constitutes Secrecy? a. Amoco Productions v. Laird: Glen (employee) disclosed amocos mining secrets (a US geographical survey map that was a public document but with areas circled) to Laird, who bought the lease to the land based on Glens info. L is the D b/c Amoco wants to be able to drill on the property that L, on the basis on Gs info, has the rights to. So A can only get what they want by stopping L, not G. i. Combination of public information (testing methods & locations were not secret): Question was how readily ascertainable this info was 1. Trade secrets may include elements that are readily ascertainable in the public domain, but when viewed together may be a TS a. Elements of readily ascertainable: degree of time, effort & expense required of D to acquire or reproduce the alleged TS info by other proper means i. Note: some states have gotten rid of readily ascertainable 2. This was a unique undertaking- Amoco used its own proprietary, confidentially stored info & considerable resources only ascertainable if you are rich or have a lot of resources a. It may be the knowledge you learn by failure of the other sights that is valuable ii. CDI Energy Sevices v. West River Pumps: 3 men hired by CDI started a competing company & CDI alleged they stole proprietary info & solicited business from CDI clients. 3 men originally hired by being stolen from a competitor & when they leave they bring some clients to CDI- so CDI hired them b/c of the connections they had 1. Allegedly stole: customer names, contact info, pricing info a. Might be TS in certain facts here was a small collection of easily identifiable, locally operated oil companies b. Little effort by CDI to conceal the data

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c. Question: who owns what customers order, when & how much? Generally: TS info that employees create w/in the scope of their assigned duties is owned by the employer, not employees a. BUT employers do NOT have any claim over an employees general skill & knowledge in a particular field, which an employee can use in future employment b. Info employees bring to company & leave with belongs to employees i. Policy: would limit employability of employees to work in that field ii. Senior Execs (ex. CEO of coke going to pepsi): usually have non disclosure, non compete w/the company ks- employees get more money then 3. Note: breach of loyalty is a separate claim- goes to improper means, but not part of TS protection itself iii. Samuelson & Scotchmer, Law & Economics of Reverse Engineering (111 Yale LJ 1575): It is permissible to reverse engineer a product! 1. Not improper means: promotes competition & progresses innovation- newcomers can build on it and may discover new things thanks to the knowledge iv. Reasonable Efforts to Maintain Secrecy: 1. Rockwell Graphic Designs: Involves piece parts (may not qualify for patent protection) & access to the piece parts is supposed to be limited. a. Unlikely they were not given the documents: so probably obtained improperly b. Did they take steps to preserve the secrecy? Not really- looks sloppy does not deserve TS protection c. Cost/benefit analysis: to determine whether the company has done enough given the cost VI. Misappropriation: needs to be of a trade secret, not free information a. UTSA S1: i. Acquisition of a trade secret of another by a person who (1) knows or has reason to know that the TS was acquired by (2) improper means; or ii. Disclosure or use of a TS of another w/o express or implied consent by a person who: 1. Used improper means to acquire knowledge of the TS, or 2. At the time of disclosure or use, knew or had reason to know that the knowledge of the TS was: a. Derived from or through a person who had utilized improper means to acquire it b. Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use, or c. Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use 3. Before a material change of his position, knew or had reason to known that it was a TS and that knowledge of it had been acquired by accident or mistake a. This covers not improper means b. Generally UTSA: i. I know you stole a formula and gave it to me misappropriation 1. Knowing a third party did something wrong makes it illegal ii. Acquired v. Derived: 1. Derived: If an employee gives a third party enough info to reverse engineer & it enables them to derive the TS and w/o employee breaching the employers confidence, it could not have been figured out iii. Improper means: includes theft (physical force or breaking in), bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy or espionage through electronic or other means (wiretapping, eavesdropping, etc). 1. Reverse engineering & independent development alone: not improper means 2.

a. Through inspection & analysis of the product to create a duplicateproper means Misappropriation 1: Where competitors seek to obtain & use TS info i. Ask: (1) is it a trade secret + (2) How was that info acquired? ii. Dupont v. Christopher: photographing the facility while under construction & passing it on to a client. An anonymous person hired Christophers & Dupont was seeking to get the photos back by getting an injunction before they can be given away to prevent the disclosure. So seeking injunction not to misappropriate by disclosing. 1. Is it a trade secret? a. Owner took reasonable steps to maintain secrecy: putting a tarp over during construction is not reasonable 2. How was that info acquired? a. Flying was an improper means b. However, our devotion to free wheeling industrial competition must not force us into accepting the law of the jungle as the standard of morality expected in our commercial relations so is all industrial espionage improper means? c. Open question: Does Google maps mean you have to take more extensive measures & put up a tarp? But pictures are not in real time, so may not expose d. Misappropriation 2: Employees who were given access to the TS material & used it when they left i. Ask: (1) is it a trade secret + (2) If it is, then is this a misappropriation? 1. Needs duty + breach of that duty 2. P: needs to prove every element ii. Omega Optical v. Chroma Technology: We see another reason why such efforts to maintain secrecy are important to legal protection: An employers efforts to maintain secrecy help make employees aware of the TS status of the info and thus help create the duty that the employees owe to their employer to maintain that secrecy 1. Omega needed to alert that the info is confidential 2. Duty of confidentiality: taking reasonable steps (ex. Confidentiality agreement) + breach of those obligations that give rise to a misappropriation claim iii. Silvaco Data Systems v. Intel: Intel had used software acquired from Silvaco. The source code was stolen from Silvaco. Intel only had the object code, which is only readable by a computer & not in itself revealing. Intel did not have the source code. 1. Misappropriation under CUTSA through: a. Acquisition: receive or come into possession of (not passive b. Disclosure c. Use: directly exploits the secret for his own advantage i. Pie/recipe analogy: by having the pie, you dont know the recipe. But if you have the recipe, that is different 2. Did Intel acquire the source code? No- using the object code is not the same as using the source code. a. One cannot be said to have stolen something he never had b. Intel did not possess the info constituting the TS, therefore they did not have knowledge of the TS VII. Remedies a. Injunctive Relief: UTSA Section 2: i. Actual or threatened misappropriation may be enjoined. An injunction shall be terminated when the TS has ceased to exist, but the injunction may be continued for an additional reasonable period of time in order to eliminate commercial advantage that otherwise would be derived from the misappropriation c.

In exceptional circumstances, an injunction may condition future uses upon payment of a reasonable royalty for no longer than the period of time for which use could have been prohibited. Exceptional circumstances include, but are not limited ot, a material & prejudicial change of position prior to acquiring knowledge or reason to know of misappropriation that renders a prohibitive injunction inequitable 1. Ex. Problematic to prohibit the use) iii. In appropriate circumstances, affirmative acts to protect TS may be compelled by court order 1. Ex. Order for party to destroy everything they have related to the TS b. Damages: UTSA Section 3: i. Except to the extent that a material & prejudicial change of position prior to acquiring knowledge or reason to know of misappropriation renders a monetary recovery inequitable, a complainant is entitled to recover damages for misappropriation. Damages can include both the actual loss caused by misappropriation & the unjust enrichment caused by misappropriation that is not taken into account in computing actual loss. In lieu of damages measured by other methods, the damages caused by misappropriation may be measured by imposition of liability for a reasonable royalty for the unauthorized disclosure or use of a TS. ii. If willful & malicious misappropriation exists, the court may award exemplary damages in an amount not exceeding twice any award made under subsection a. 1. UTSA Section 4: Generally no attorneys fees in TS cases unless willful & malicious c. Monetary Damages: Courts typically select the measure that gives the P the greater recovery i. Lost profits v. Unjust Enrichment 1. Lost Profit: But for the violative act of D, we would have made X a. Usually more $$ & larger ranges b. Look at the effect on P of what has happened in the marketplace b/c of the misappropriation 2. Unjust Enrichment: Where D made money from the misappropriation the benefit ii. Pioneer Hi-Bred v. Holden Seeds: P & D were not direct competitors 1. Issue: what is the harm to the original owner? How do we make the owner whole? 2. MORE? d. Special Remedies Challenges: i. Trade Secrets & Internet Disclosure 1. DVD Copy Control Association v. Bunner: Content owner prevents DVD from playing in different markets. The copy control mechanism (CSS) was critical to DVD business model. CSS could not work on Linux and the Linux community wanted it available. Bunner disclosed CSS a. Is this a trade secret? i. Before the public discussion: yes- only people receiving CSS code were manufacturers that were subject to confidentiality clauses that disallowed reverse engineering. ii. Court distinguishes between existing on the internet v. being widely distributed iii. Viral distribution timing matters: Court found that the info Bunner published was not still a secret at the time he put it up.--> viral distribution was before Bs posting 1. At some point, the public disclosure becomes so public that courts dont want to hurt third parties that come into the info iv. Where is the line? If at some point before the lawsuit is filed, would it preclude DVD copy control from getting any damages? 1. Nevada Statute: not for things that have gone viral? 2. Misappropriation & posting or dissemination on internet- effect: A TS that is misappropriated & posted, displayed or otherwise disseminated on the

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internet shall be deemed to remain a TS and not to have ceased to exist for the purposes of termination an injunction if: a. The owner, within a reasonable time after discovering the TS has been misappropriated & posted, displayed or otherwise disseminated on the internet, obtains an injunction or order issued by a court, required that the TS be removed from the internet, AND b. The TS is removed from the internet w/in a reasonable time after the injunction or ordering requiring removal is issued 3. SO: (1) Need to actively try to remove it can only go after poster + (2) Has to get it offline quickly v. Interim harm? NV Statute 6004- mere positing on the internet does not kill the TS but 2 requirements? ii. Trade Secret & Criminalization: 1. California Penal Code (p. 78)- Treats as theft: Every person is guilty of theft who, w/intent to deprive or withhold the control of a TS from its owner, or w/an intent to appropriate the TS to his own use or to the use of another, does any of the following: a. Steals, takes, carries away, or uses w/o authorization, a TS b. Fraudulently appropriates any article representing a TS entrusted to him c. Having unlawfully obtained access to the article, w/o authority makes or causes to be made a copy of any article representing a TS d. Having obtained access to the article through a relationship of trust & confidence, w/o authority & in breach of the obligations created by that relationship, makes or causes to be made, directly from and in the presence of the article, a copy of any article representing a TS 2. Economic Espionage Age- criminalizes TS theft in certain circumstances: a. Section 1831: TS theft that is undertaken intending or knowing that the offense will benefit any foreign government, foreign instrumentality, or foreign agent b. Section 1832: theft as to any TS that is related to or included in a product that is produced for or placed in interstate commerce i. Domestic TS theft is a federal felony ii. Attempt & conspiracy are included c. Aleynikov: Works on software at Goldman & before he leaves to go to another company, he uploads to a foreign server pieces of software which he uses at the new company. He is convicted under Economic Espionage Act. i. Policy Concerns: 1. Work used from Goldman came from fellow employees 2. Do we want to set an example or make taxpayers pay to prosecute? a. This is a civil issue & a civil wrong that should be handled as a civil matter b. But, this is the kind of IP theft that is prevalent c. Potentially enormous $$$ for the US in the future 3. Criminal prosecution is rare- what tips the scales? 3. Digital Millennium Act: notice & take down- if they take it down, no liability but if they leave it up they are liable VIII. Inevitable Disclosure Doctrine: former employer context: ex-employee will inevitable disclose trade secrets to a new employer by virtue of the job a. PepsiCo v. Redmond: Redmond worked at Pepsi & left for a new job at Quaker. At Pepsi, he was GM for all business units in Cali & learned TS such as strategic plan & annual operating plan. They want a preliminary injunction to prevent him from divulging Pepsi TS relating to pricing, marketing & distribution.

Preliminary injunction: (1) substantial likelihood to prevail on the merits + (2) significant harm w/o the injunction ii. Holding: given the new position, he will necessarily disclose the secrets- it is not general knowledge but particular knowledge & there is no way he could do his new job w/o relying on the TS iii. This is a misappropriation they think might happen high degree of probability that it will be inevitable & immediate 1. Policy: Do not want to impede job mobility 2. The higher up you go, the harder to move w/in the industry: the price of CEO hiring goes up b/c they will not be able to move freely (so higher severance package) increases the cost of senior talent b. Bayer v. Roche Molecular Systems: Roche has Bayer sign an agreement that he wont disclose confidential info from his prior company (Roche is protecting itself) but Bayer sues anyway. There is no evidence that he disclosed TS. i. TX Standard: Is it inevitable disclosed? 1. Is the new employer a competitor? 2. What is the scope of the Ds new job? 3. Has the employee been less than candid about his new position? 4. Has P clearly identified the TS which are at risk? 5. Has actual TS misappropriation already occurred? 6. Did the employee sign a nondisclosure or non competition agreement? 7. Does the new employer have a policy against use of others TS? 8. Is it possible to sanitize the employees new position? ii. Cali: Rejects inevitable disclosure doctrine 1. CA public policy: favors employee mobility- Silicon valley industries 2. CA Plaintiff: must show an actual use or actual threat Once the employee violates the TS law in a nontrivial way, the employee forfeits the benefit of the protective policy in CA & court will consider other factors to determine extent of irreparable injury c. Hypo: Confidentiality Agreement in consulting Contract: i. Part 1: Preserve info as a TS: any information, material or sample which is provided by company, written, oral, visual, electronic, etc. prepared for... 1. Extremely broad- included any information ii. Part 2: All info means pertaining to companys inventions, designs tools, equipment, plans, etc. 1. Much narrower definition- better 2. What if there is no definition? Then you may get a newspaper at the company & you cant talk about it? No- a court will not enforce it. a. Cannot define by contract something as a TS that cannot be a TS iii. Part 3: Shall not disclose such info or the nature of the service he renders to the company, except to authorized representatives of the company. Remains in effects during & after the assignment & shall be for the benefit of the company 1. Company is unlikely to negotiate these terms iv. The stuff is secret which is not publicly disclosed by the company 1. What if it went viral on the internet? Under TS law, this is no longer confidential info 2. BUT: the K defines it as confidential info- this is much broader v. What about outside the course of company but part of the company? Not covered b/c not provided on behalf of the company so not w/in the definition vi. What about breaching something that you may have discovered but you did not know it was a TS? You cannot know it is a TS unless someone tells you!

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Non-Competition Agreements: In the absence of a non-compete clause, someone who has the TS may use it this is a post-employment obligation that prohibits ex-employer from working for a competitor i. Rationale: Inevitable disclosure & defining improper means 1. Concern of employer: the employee will go to another company and have an unfair advantage against you + risk of misappropriation 2. Balance the legitimate concerns of finding a job v. being overly restrictive ii. Counseling Clients: Worry about scope of restriction + duration or restriction 1. You cannot work for X, X, or X companies: Bad b/c then you cannot work there in any capacity, even unrelated 2. Companies vary if they will negotiate iii. Google v. Microsoft: Google & Lee are suing Microsoft. Lee is trying to get his non-compete clause into CA jurisdiction (which does not enforce the clause- forum shopping) & seeking declaratory judgment that the clause is invalid. 1. Clause: While employed at Microsoft and for a period of one year thereafter, I will not (a) accept employment or engage in activities competitive w/products, services or projects (including actual or demonstrably anticipated research or development) on which I worked or about which I learned confidential or proprietary information or TS while employed at Microsoft; (b) render services in any capacity to any client or customer of Microsoft for which I performed services during the 12 months prior to leaving Microsoft; (c) induct, attempt to induce, or assist another to induce any person to terminate his employment w/Microsoft or to work for me for any other entity. I will provide a copy of this agreement to those I seek to be hired by before accepting employment. a. Very narrow: Cant take a job related to what he did or service any client & cant steal people all within one year i. Legitimate requests & not over broad 2. Google is suing: want Lee to work there and do not want to wait a year a. What should Google legal counsel advice them to do? Make this go away before it becomes a lawsuit; contact Microsoft to try to negotiate a waiver of the clause or maybe something Google can give them 3. Jurisdictional Split: a. Washington: enforces reasonable non-compete agreements b. Cali: very hard to enforce non-compete agreements i. Industries: technology & film- both have high mobility with workers & would harm the industries if mobility were restricted would hurt creative & advancement iv. Walter Karl v. Wood: Mail insert company & Woods is EVP of package insert sales by working his way up from the mailroom. 1982- Woods signed K saying he wont use confidential info unless in employment & wont take anything with him when he goes. 1986company wanted to get rid of golden parachute agreement that was in 82 agreement & signed termination & release of the 82 agreement but signed a new salary deal w/o signing a new non compete clause. Woods leaves the company & sets up a competing business & takes customer info from Walter (he had tried to buy the division but Walter refused). 1. Fiduciary duty of loyalty: did exist but different from TS confidentiality 2. Wood did not actually take TS: the info he took was available in public directories so not TS 3. Denied preliminary injunction v. BDO Seidman v. Hirshberg: Reimbursement clause: require D to compensate BDO for serving any client of the firm w/o 18 months after termination of employment

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Different than non-compete clause: allows to compete but he must pay for it Standard of reasonableness for employee agreements not to compete: Restraint is reasonable if it: (1) is no greater than is required for the protection of the legitimate interest of the employer, (2) does not impose undue hardship on the employee, and (3) is not injurious to the public a. There is a third party at stake in professional services cases clients (#3- public) b. Ask: Whether accounting is a learning profession- restricted b/c of unique circumstances i. Professional services: worry about employers interests ii. Learned professional services: unique & extraordinary services iii. FN 1: Prohibits lawyers from being participants in a non-compete clause 1. Different than accountant: For lawyers, client is the boss, not the law firm. So clients gets to choose the lawyer, otherwise would be restricting the clients choice 3. His role in the accounting firm: bring clients in a. Clause- he cant work for ANY BDO clients, even if he did not work for them while at the firm overbroad and no legitimate interest for BDO b. Holding: Agreement is partially enforceable (not unenforceable)- need to rewrite this clause 4. If employers clause is overly expansive (overly restricts ex-employee from earning a living) the could will partially invalidate it a. Here they rewrite the scope of the clause: Enforce payment provision for certain clients but not others; no problem with duration 5. 3 Options for courts: (1) declare enforceable & employee would have to pay everything, (2) declare unenforceable or (3) rewrite clause) Oregon Rule: Constrains a courts ability to rewrite clauses: Legislative solution that tells you what must be included: 50% of salary for non-compete period 1. First: either the employer must give the employee written notice 2 weeks prior to the first day of employment that a noncompetition agreement is required as a condition of employment or the agreement must be entered into in connection w/an existing employees bona fide promotion. Second, the period of noncompetition cannot be longer than 2 years. Third, the employer must have a protectable interest (which justifies the need for the agreement) 2. Also have a rule for lower paid employees that they have to pay severance for the noncompete 3. Comparison to rewrite rule? a. Better to not rewrite the clause? Incentive to write overreaching clauses and at worst the judge will write it down anyway i. Hard for courts to rewrite: how to determine appropriate duration, should they rewrite substantive provisions of a private k? b. Worse than rewrite rule? Unfairly harms the employer to determine everything Essay at the end? Attributes between patent protection & TS: tradeoff when you go for patent b/c you must fully disclose- but inventions build on each other More?

PATENT LAW I. Theory: To promote the progress of science & useful arts, by securing for a limited time to authors & inventors the exclusive right to their writings and discoveries. (Constitution Art. I, Sec. 8, Cl. 8) II. Substantive Requirements: a. Formalities:

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Patentable subject matter: 35 USC 101- Whoever invents or discovers any new & useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. 1. Patentable Process a. Gottschalk v. Benson: algorithm that converted numbers to 0s and 1s for computers i. Issue: was this algorithm method a patentable process? NO- an algorithm standing alone is not patentable b. Diamond v. Chakrabarty: genetically engineered microorganism i. Issue: Is it manufacture or composition of matter? Can you patent living organisms? YES (split 5-4) ii. In Europe, this is prohibited c. Adrenaline Case: Enabled purified adrenaline to be produced. Patentable b/c it did not on its own exist in nature- could not get it refined like that in nature alone d. Diamond v. Diehr: Process for curing synthetic rubber. i. Issue: Can this whole apparatus qualify for patent protection? The algorithm itself is not patentable, but the process is. e. Bilski v. Kappos: part of a series of business method patent cases. Petitioners application seeks patent protection for a claimed invention that explains how buyers and sellers of commodities in the energy market can protect or hedge against the risk of price changes i. Key claims: Claim 1: steps & Claim 4 ii. Holding: The machine or transformation test is NOT the exclusive test if something is patentable 1. Machine test: is it tied to a particular machine or apparatus? a. Not helpful for business methods 2. Business methods MIGHT be patentable 3. Abstract ideas NOT patentable a. Do not want to constrain future invention- would undermine the promotion of science Utility 1. Section 101 does not use the term utility- it is part of the concept of promotion of science. Court looks to see whether there is utility in the reported invention 2. Brenner v. Manson: Priority dispute about process for making steroids (utility in a chemical process claim). a. Can a chemical compound qualify as useful? YES (patented drugs) b. Problem here: No showing that the compound in fact inhibited tumors (not clear if actually useful) i. Patentor argues: novel chemical process yielding an intended product that was not harmful, therefore it is useful- used in experimental function; also similar to known useful compound and will likely be useful Court rejects ii. Needs a substantial or real and specific benefit in the current form 1. Did not even show it would be useful for experimentation 2. People would be prevented from conducting experiments b/c would always encounter patented elementsdo not want to impede progress 3. Juicy Whip v. Orange Bang: OB is claiming invalidity of JWs drink dispenser patent b/c it would fail utility. Dispenser makes it look like the customer is getting juice from clear tank but really getting it from a hidden one that makes it healthier and OB copied JW tank.

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a. Imitation is not a reason alone to deny utility: the ability of a product to appear as another is a specific benefit satisfying utility i. Ex. Synthetic leather, cubic zirconium- designed to imitate ii. Morality: May play into subject matter but deceptive practice is not an issue under utility Novel 1. 35 USC 102: A person shall be entitled to a patent unless: a. Novelty Provision: (a) the invention was known or used by others in this country, or patented or described a printed publication in this or a foreign country, before the invention thereof by the application for patent, or i. Needs to be unknown + prior art as of date of invention 1. Invention Date: First to invent standard (interference to determine first inventor) ii. The inventors own activities, taking place after he has made the invention, cannot negate patentability under (a) iii. Geographical differentiation: an eligible pre-invention document negates novelty no matter where the document came from or what language it appeared in b. Statutory Bar: (b) the invention was patented or described in a printed publication in this or a foreign country in public use or on sale in this country, more than one year prior to the date of the application for patent in the US i. So if I sit on my invention, I may be precluded ii. Application Date 1. What has to be described? (1) Everything that is in the patent (each and every limitation of the claim) + (2) Or enough is described that the person having ordinary skill in the art (PHOSITA) has to have the ability to make the claimed invention from what is out there iii. Anticipations Identity & Enablement Requirements: Prior art anticipates the claim or reads on 1. Titanium Metals v. Banner (1985): formula to patent is a range of metals, not precise a. Statutory Bar argument (102b): 5 years prior to filing a Russian article described something in 3 pages and highly technical. Not accessible & unlikely that people read it. Says nothing about the specific patented product or the end use of it. i. If the alloy described in claims 1 & 2 were previously described in the article not novel & statutorily barred ii. The article described the alloy but not precisely this one or the anti corrosive properties not relevant for the court. iii. The product was already out there: the patent application recognized more uses & disclosed a lot that was not anticipated by the Russian article iv. Enablement: There was enough in the article (prior art) that someone in the field could make the same alloy b. What has to be shown? The patent was ANTICIPATED by the articlethe composition was already known, so not novel iv. Printed Publication: must be publically accessible: disseminated or otherwise made available so that persons interested and ordinarily skilled in the art, exercising reasonable diligence, can locate and recognize and comprehend the essentials of the claimed invention w/o the need to conduct further research or experimentation

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In re Klopfenstein: Patent office denied application & inventor is appealing the denial. Inventor made a PowerPoint presentation, printed the slides & put it on posters that were displayed for 2 days and on running stream at a presentation at a chemist meeting a. Old cases: printed publication required distribution & index i. Cronyn: index but only w/name and title, not the actual project- so not catalogued in a meaningful way and not sufficiently publicly accessible b. ASK: Was it publicly accessible? i. Distribution as a proxy for public availability: If he distributed the slides would have been enough ii. In re Hall: Printed publication of dissertation- indexed and freely available to general public if you physically went therepublicly accessible iii. Stuff on Internet? Go through all the factors- How would you prove time on display (archive.org): only way to make it not publicly accessible on the internet is if password protected (unless you give people the password, then need to go through the factors) c. Factors of Publicly Accessibility of the Reference i. (1) Length of time the display was exhibited: helps determine the opportunity of the public in capturing, processing and retaining the info conveyed by the reference- the more transient the display, the less likely it will be a printed publication ii. (2) The expertise of the target audience: helps determine how easily those who viewed it could observe and remember the displayed material iii. (3) The existence or lack of reasonable expectations that the material displayed would not be copied: professional & behavioral norms may entitle a party to a reasonable expectation that the info wont be copied- want to preserve the incentive for inventors to participate in academic presentations; if parties have taken steps to prevent the public from copying the info, the opportunity for widespread public accessibility is reduced- license agreements, non-disclosure agreements, anti copying software, disclaimers iv. (4) The simplicity or ease with which the material displayed could have been copied: more complex a display, more difficult for members of public to effectively capture the info; the simpler it is, the more likely members of the public could learn by rote or take notes adequate enough for later reproduction v. Here: 2 days, audience is those of ordinary skill in the art, no disclaimer discouraging copying (free to take notes or photograph them), only a few of the slides had the novel info. 2. Note (p. 224-4): Lawyers & patent applicants have obligation to disclose material info in Klopfenstein, the inventor told about the presentationswould have made patent unenforceable & lawyer would get bar discipline Statutory Bar & Experimental Use: Public use that bars patentability v. experimental use to know that it will be worth something? 1. Beachcombers v. Wildewood Creative Products: Kaleidoscope at a party more than 1 year before the patent application & showed to 20-30 intimate friends and did not tell anyone it was a secret.

iv.

Holding: This is a public use Factors: i. Showed to people: here was 20 ii. Did not ask them to keep it confidential: If she did, then would be market research and more experimental 2. City of Elizabeth v. American Pavement (p. 226): Puts down boardwalk to see what happens when public uses it over time valid patent a. Nature of the product: the product cannot be tested without lots of people walking on it- only way to know if it works is by use over time b. Experimental use? Open to public & used by public BUT this was not public use up until the point where they learned enough to know if it worked c. Note: public knowledge does not invalidate the patent, but it is public use or sale vi. When does 1 year grace period run? 1. Pfaff v. Wells Electronics: Inventor made prototype for texas instruments but did not file patent until after 1 year later. Issue- whether or not this was on sale. Inventor was confident it would work, but before investing lots of money he wanted to make this he had sales. K enabled him to get loan from a bank or give down payment to get started. a. Definition of on sale: (1) subject of commercial offer for sale + (2) must be ready for patenting i. Meaning: need either proof of reduction to practice or proof that prior to the date the inventor prepared drawings or other descriptions such that PHOSITA could reduce it to practice ii. Here: had drawings sent to manufacturers and anyone would produce the prototype iii. If allowed to sit on it for a while, then would create incentive to extend your rights: once it is starting to be used, you want the public to know with clarity what is public knowledge available for use and what is not b. Note: it takes take to prepare patent apps (6 months) and the system should account for this delay Non-obvious 1. Scope & Content from Prior Art a. Prior art: inventions which occurred earlier i. In patent application, section called references- earlier patents, publications in scientific journals, prior uses- everything that happened before this invented endeavor that is recorded 2. Differences between the Prior Art (PA) and the claimed invention a. Claim: words used to describe the invention; symbols that describe the thing i. Ex. Post it: claim is (1) note paper (2) sticky/non sticky glue 3. From the perspective of a PHOSITA, whether the differences between the PA & the claim is obvious at the time of invention a. Obvious: Could they have readily made it? Apparent? Readily done? Easy, simple routine? i. This is hard to do at the time of invention 4. Objective evidence/secondary considerations

a. b.

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a. (1) Commercial success, (2) failure of others- shows it was not easy, (3) long-felt need, (4) others copy it all the time, (5) others license it all the time, (6) chemical obviousness, (7) unexpected results 5. Post it example: a. What is the prior art? Learn how to read the symbols that make up the invention i. Paper: invented in 1950 ii. Sticky/nonsticky glue: 1980 b. Obviousness is almost impossible b/c it wants you to forget what you already know c. Why should this get/not get the patent? i. The stuff is all there already, already had been combined, and both have end purpose (against) ii. If an ordinary person could have done it why didnt they 30 years ago iii. This is a different use and different than what has already been invented (envelopes) d. Post made 1B a yearstrong objective evidence of nonobviousness e. What if we rip in half and call it a husband persuader: add a new use, color, size, shape i. PHOSITA would know that you can change shapes, colors ii. If it is a genuinely new & inventive use, out of the field of expectation, it may be inventive 1. Ex. Shoe polish turns into hair growth product: could get a patent a. Blocking patents: 2 patents on same products w/different uses b. Lawyers try to unblock patents w/licensing deals 6. Teachings, Motivations, Suggestions (TMS): Forms of evidence of prior art a. Must come from before time of invention; motivation from a suggestion from a teaching 7. Less patents now- have adjusted the level of ordinary skill upward (changes the test): PHOSITA also has creativity (closer to Einstein) 8. In defining prior art, what is pertinence? a. In re Clay: invented improvement to the way oil was stored. Patent office denied patent b/c combining 2 references it anticipated the invention. i. 2 factors to determine if a reference was an analogous art: 1. Whether the art is from the same field of endeavor, regardless of the problem addressed; or a. Shoe polish/hair tonic example: not same field of endeavor. Seems like a total accident & inadvertent discovery 2. If the reference is not w/in the field of the inventors endeavor, whether the reference is still reasonably pertinent to the particular problem with which the inventor is involved a. Is hair care field pertinent to hair growth field? Claim Construction: Adequate description that sets out the claim 1. 35 USC 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 a. Requires: describe the invention so that a PHOSITA could make it + purpose of the claim (define the invention) b. Mark man Hearing: construction of patent is exclusively w/in province of the courtpretrial procedure that adjudicates the scope of the claim

2.

3.

Fed Circuit: this is a matter of law, so appellate review is de novo (SC has not determined if matter of law or fact- if fact, app ct can only reverse on clear error) Claim Construction Methods a. How to construe the language that appears in the claim: i. Written description ii. Dictionary iii. Definition for ordinary meaning of a PHOSITA iv. Meaning at the time of invention v. Prosecution history b. Ex. case- the term for the action of a suit v. opinion: legal dictionary (external evidence), context, differs to layman and technical meanings, we want the ordinary meaning that the person skilled in the arm would know c. Specific language in your patent is only understood when reading the correspondence to see how you have changed the words from the initial submission to the final one i. Treatise, chemical handbooks, patent office makes you change words d. Court cant give undue reliance on external sources i. Nystrom v. Trex: board: Nystrom wants to invalidates Trexs claim that uses term board, but does not say the material of the board- the product description uses wood but not the claim. When it rains, the water flows off but you can still walk on it comfortably. If the claim does not mean wood only, then it will be infringing. Also, if convex means specific radius rather than just something amorphous it will preclude many claims. 1. Board: What did the court look at? a. Words of the claim: claim 16 uses wood but not claim 1. i. Looking internal to the patent: how does it treat the term? Interpretative presumption that if you use the term 1 place and not elsewhere, you intend different meanings (but not definitive) b. Intrinsic Record: Prosecution history i. Within PTO, operating w/in wood planks; talked about grain of wood (this implied that it is wood cut from logs) c. Holding: Board means wood- ordinary meaning that they found from intrinsic record- did not look at dictionary (extrinsic) 2. Convex: radius sufficient to make it comfortable to walk on- within some zone a. Holding: not limited to a specific radius b. Do not look externally if you can determine it from intrinsic material Definiteness: Claim has to be sufficiently definite a. 35 USC 112: The specification shall conclude with 1 or more claims particularly pointing out and distinctively claiming the subject matter which the applicant regards as his invention i. If too indefinite/vague, it will be invalid- people need to know what they will be allowed to do that will not infringe on the patent b. Hearing Components v. Shure: 920 patent. Subject matter- heading aid that keeps out earwax and easy to remove for older people. Says wax guard is readily installed and replaced by a user. i. Issue: is the claim specific enough? 1. District Court: too subjective from the phrase standing by itself 2. Fed circuit: Reverses- this is sufficiently definite.

i.

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The fact that you didnt need the tool is more broad. That it was a necessary term to distinguish it from prior art- all the other tools needed special tools. The DC looked at how the device was used. b. The term was used to distinguish from prior art, so it is not indefinite. As opposed to providing an instruction of how the user is supposed to use the product. c. Looked for reasonable meaning of readily installed and replaced by user- reasonable to mean without tools and solvent Enablement Requirement: description should be sufficient to enable someone to recreate the invention/process 1. 35 USC 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 a. A claim is invalid if the written description does not enable it b. Specification= written description + claims 2. In re Wands: patenting the process to create an antigen (living organism) that tells if you have hep b or not. B/c it is living stuff, question if it is undue experimentation where the description is not enough for a PHOSITA to make it. a. Patent office: claims the data shows unpredictable outcome of the process b. Inventions based on living organism: hard to make i. Living organism: patentable subject matter in US but need to deposit the cell line so that people can experiment (materials: need to be readily available or deposited) c. Normal experimentation OK versus Undue experimentation NOT OK i. Undue Experimentation: standard of reasonableness, having due regard for the nature of the invention and the state of the art. The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance w/r/t the direction in which the experimentation should proceed d. Holding: There is sufficient disclosure to satisfy the enablement requirement b/c the antibodies can be readily made from known methods and materialssome experimentation is ok Fed circuit says question of law i. Here: Quantity- compared stats; do not need a lot of guidance to make them; doesnt have to spell everything out, just a person skilled in the art & whats described here + prior art could make it e. Undue Experimentation 8 Factor Test: i. Quantity of experimentation necessary (less is better) ii. Amount of direction or guidance presented (more is better) iii. Presence or absence of working examples (presence is preferred) iv. Nature of invention (is it complicated?) v. State of prior art (well developed? Then dont need to teach as much) vi. Relative skills of PHOSITA (if very skilled, then need less instruction) vii. Predictability/unpredictability of the art (more predictable, less teaching needed) viii. Breadth of claims (the more you claim, the more you have to teach) 3. Sitrick v. Dreamorks: Claimed invention- insert yourself into video games & movies. Problem is that movies require a different process. a. Enablement problem: would invalidate the claim that covers movies; if they have a patent, it will cost more for customers

a.

b. Outside of US: may create a moral rights issues where copyright owner/author of film owns moral rights and by changing it you may have a problem b. Lasts 20 years from date of filing i. Reason: b/c if too long, will stifle invention but need to motivate/create incentives to inventors by giving some reward; sufficient incentive to make investors invest (monetary investment & creative investment) c. Public Disclosure i. Maximizes societys benefits ii. Independent creation & Reverse engineering NOT Defenses d. Process: File with patent office PRO evaluates (has it satisfied the substantive requirements?) III. Judge Rader: Fed Circuit Ct of Appeals Judge- IP & Trade commercial practice law a. Bright line tests: facilitate the marketplace in making quick decisions but need flexibility in the rules IV. Infringement: a. 35 USC 271a: Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the US or imports into the US any patented invention during the term of the patent therefore, infringes the patent b. Ownership/Standing: Inventor came up w/the idea & will be the patentee at first i. Pharma company and new drugs? 1. Employees agree to assign all rights & interests in any inventions that they come up in the course of their work to the employer- so employer holds the patent (via employment agreement) a. But: Anything the employee does on his own time, unrelated to the job he keeps the rights c. Direct/indirect Infringement: i. Direct: the accused is accused of 1 or more of the following: making, using, offering to sell, selling or importing NO knowledge requirement 1. Method of exercising a cat patent: a. Method of inducing aerobic exercise in an unrestrained cat comprising the steps of: i. Directing an intense coherent beam of invisible light produced by a hand held laser apparatus to produce a bright highly focused pattern of light at the intersection of the beam and an opaque surface, said pattern being of visual interest to the cat and; ii. Selectively redirecting said beam out of the cats immediate reach to induce cat to run and chase beam and pattern of light around an exercise area b. What if he used a gerbil instead? i. Not literal infringement- It is a gerbil, not a cat ii. Not substantial equivalent- it is a gerbil c. What if he used an LED flashlight? i. Not literal, not bright, highly focused pattern of light d. What does the patent mean by cat? i. Under claim construction, does this include a leopard? ii. If its in a zoo is it an unrestrained cat? Yes, it is on a leash. Is it an exercise area? The fence gives it an exercise area ii. Indirect: the accuses party has not itself directly carries out each and every limitation of a claimed invention, but it has brought someone else to the brink of infringement 1. 35 USC 271b: Whoever actively induces infringement of a patent shall be liable as an infringer 2. Contributory Infringement- 35 USC 271c: Whoever offers to sell or sells w/in the US or imports into the US a component of a patented machine, manufacture, combination, or

composition or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non infringing use is liable as a contributory infringer a. Knowledge Requirement: Do not want someone responsible for contributory claim if they did not know d. Literal/Substantial Equivalent: Embraces each and every limitation in the claim or the substantial equivalent i. Comprising & consisting 1. Comprising: If anything is there, it is a problem 2. Consisting: Means it has to be all & only those elements ii. Festo Corp v. SKK: 1. Test: If same function, same way of doing it, and same result substantially equivalent a. Worried once start allowing equivalents, future inventors dont have certainty b. Look at prosecution history: how claim got to be expressed in patent the way it is expressed i. If changed the language estopped from claiming infringement of that broader/earlier form ii. Operated as a complete bar to a claim of equivalence to that amended claim 2. If changes were necessary to secure the patent, then have estoppel for substantial equivalents: infringer must be infringing literally i. This is a Rebuttable Presumption: 1. Unforseeability Rebuttal 2. Tangentability Rebuttal 3. Some other reason Rebuttal 3. Defenses: a. Claim doesnt read on- claim doesnt cover this at all b. Accused has license to practice i. Could be a dispute what the license covers c. Invalidity: argue that the patent is invalid and should not have been issued iii. 2 Questions under contemporary equivalents analysis: 1. Factual: Is the alleged equivalent an insubstantial change from the recited claim limitation? a. Determine whether the alleged equivalent performs substantially the same function, in substantially the same way, to achieve the substantially same result, as the claim limitation? 2. Legal: Do any of the legal restrictions hemmed around the doctrine of equivalents but this theory of recovery off limits for the patentee? V. Stanford Symposium: a. History of Patent Act- Peter Menell i. Having flexible language is good; Courts are better able to oversee patent law than Congress b. Bilski & Business Methods- Mark Lemley i. Bilski opinion all over the place: The test hasnt been rejected or confirmed. It is used sometimes, depending on the interpretation of the opinion ii. Patentable subject matter: Gate keeper function 1. Business method cannot be patentable if too abstract 2. Machine or transformation test is too abstract: need bright line tests to encourage innovation c. Software Patents & Innovation- Steven Weiner

i. Progress has not been slowed like people thought ii. Patent regime promotes economic innovation & overall economy d. Bilski & Context- Morgan Chu i. Companies are lining up on both sides (business methods & software industry)- Need to look on a case by case basis 1. Causal link between patent and innovation VI. Santa Clara Symposium (2007): Territorial Application- presumption that patent law only applies in US unless Congress expressly says otherwise a. 35 USC 271a: within the US Worried about where infringement takes place i. Ex. If on foreign website for a transaction that will not occur in the US but directed at US citizens? Or offer to sell to US citizen but transaction occurs in Canada? b. 35 USC 271f: Whoever without authority supplies or causes to be supplied in or from the US all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the US in a manner that would infringe the patent if such combination occurred w/in the US i. Worried about country where the components are put together ii. Ex. Legally put together in France where there is no patent, then shipped to US even though French law says ok, it violated US law c. Statutory Schemes Territorial Approach i. 1952 Act: Said manufactured, etc. within US ii. 1972 shrimp case: components made in US, assembled abroad, not made in USA 1. Did this to get around US laws 2. Nexus between local commerce, lack of harmonization, and protecting IP- American economic position iii. 1984 enacted 271f: components made in USA + assembled abroad Made in USA for territorial reach d. Global Commerce & Harmonization i. Harmonization: laws should be the same in every country- not same wording but same outcome 1. US laws do not have same results as other countries a. If we were harmonized, patentable subject matter would be the same in other countries & then we would not care about extraterritorial problem or sovereignty questions b/c it would be a violation in both countries 2. Business methods: protected in US but not outside US- lack of harmonization 3. Who is the inventor? First to file (but US used to be first to invent) e. Cases discussed i. Pelligrini v. Analog Devices: brushless motor used in rides. Manufactured broad, sold abroad with instructions for making & engineering specs were sent from US. Was labeled made in the US which deceived foreign public 1. Physical manufacture and assembly occurred abroad 2. Is the documentation (engineering specs) a component? NO a. There has to be something physical- a piece of the product needs to come from US ii. Eolas v. Microsoft: Discs w/data on them. Master disc was made in US and then made duplicates abroad by copying and sent back to US. 1. Component: software that was on the disc a. So all the copies were infringing271f allows extension of liability overseas in limited circumstances (made components in US & copied abroad) b. Assume: software is not a patent infringement in the country it was being copied

ATT v. Microsoft: Master disc is used to make all the copies abroad & Microsoft wants each of the copies to be considered a violation. All the copies are sold to other countries 1. SC Holding: Golden master disc is NOT a component for copied made abroad that are used to sell abroad a. Software content is the component, NOT the disc 2. Policy problems: This incentivizes outsources 3. If the court went the other way: it would risk that communication would be infringement; damages would be extreme an completely denying foreign countries policy (would be too broad); would push research offshore iv. Voda v. Cordis: Infringement under US patent law that occurred in US + infringement that occurred in another country under foreign law. They want US court to hear foreign patent infringements under foreign law under supplemental jurisdiction. 1. Fed circuit denied hearing foreign law claims in US court discretionary a. Note: foreign law is a matter of face in the US v. Cases not discussed in class: 1. RIM: First 271f applied to a method claim- Cannot have use of a method where part of the method practiced outside of US (call center in Canada)- control of system & beneficial use in US, so infringement under 271a 2. Rotech v. Mitsubishi: Offers to sell w/in US (business activities in US)?? f. Act of state doctrine & Patent invalidity: i. Act of State: A country has immunity for its acts of state in relation to civil litigants in other countries 1. But if suing that patent is invalid, validity may be judged by the government- In US you can appeal, but others you cant COPYRIGHT LAW I. Basics: a. Origins i. Royal Decree (1556) to Statute of Ann (1710): Copyright gave monopoly to print & distribute when printing press was developed authors economic right ii. Continental Approach (copyright/droit dauteur): Looks at more than economic rights of the author- author should have rights to the integrity of his work b. US Federal Copyright Acts i. Copyright Act of 1790: authors rights, notice/registration; deposit requirement (give government copyrighted work to establish a public record); one of Congresss first acts ii. 1909: protection for all writings iii. 1976: fixation + codification of fair uses; beginning of information age iv. 1980: CONTU Report; software era v. 1988: Berne implementation (international treaty) & UCC 1. Open question if rights for visual arts: are we acting in line w/berne convention? vi. 1990: Architectural works vii. 1992: Audio Home Recordings Act viii. 1998: Digital Millennium Copyright Act; issue of fashion design? c. US Constitution Article 1, Section 8, Clause 8: Congress has the power... to promote the progress of science (patent) and useful arts (copyright) by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries i. Same philosophy as patent: want to incentivize creativity by providing remuneration d. Formalities: i. Used to have to put notice (c), name of copyright holder and date ii. Berne convention got rid of notice to be protected

iii.

iii. But- Notice is a prereq to be able to sue for damages e. Duration- limited time: Copyright lasts for life of author + 70 years i. If author is a corporation: 95 years from date of publication f. Ownership: Ask who owns the work II. Subject Matter: What qualifies for copyright protection? a. 17 USC 102a: Copyright protection subsists in... original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device b. What gets protection: i. Original work of ownership (Ask: Is it original?)- Originality 1. Blestein v. Donaldson Lithographing: P made posters for circus ads. Circus needed more prints but when to a cheaper competitor who copied the posters. a. Holding: illustrators are creators, even when they are drawing images of real people. i. Others are free to copy the original (if from real life) but not free to copy the copy ii. Ads can be copyrighted b. Judges should not evaluate the artistic merit in determining if it should be covered under copyright law originality is not the same as artistic merit 2. Feist Publications v. Rural Telephone Service: Rural was a telephone company and required by state law to give away phone books and made money by selling ads. F made phone books and it contained all of Rs area plus areas of other phone companies and made money by selling ads. R got info by looking at customer records but F copied Rs information. F enhanced directory by adding street addresses, which R didnt have. a. Rule: Facts are not copyrightable (not an original expression) i. But: facts may be patented but different terms of protection b. A compilation of facts may be copyrightable if the author chooses which facts to include and how to arrange the data originality in the way it is compiled i. Need to add value & add creativity/originality ii. What is enough originality? Look at how it is put together 1. Lexis/WL: head notes are an indexing tool that shows creativity and order 2. Compilation copyright only protects the arrangement, not the facts c. Holding: Rurals directory was not copyrightable not original, only did alphabetical order and did not really select any info i. Feist directory was original copied numbers, merged w/other data, changed selection & arrangement 1. It was a fact they copied: R used fake names that F also used 2. Policy: losing incentive to make phone books d. Idea/Expression Dichotomy: How to separate ideas (not protected) v. expression (protected) i. Phone books are usually abc order; what if 123 order? By neighborhood? ii. Sweat of the brow doctrine the amount of effort a person puts into compiling the facts does NOT make it original e. Other countries: database extraction right- gives compilers of facts protection- not allowed to extract facts from the database- freeloading problem i. Versus US: thinks progress is better by allowing free riding f. 3 elements to qualify as a copyrightable compilation (17 USC 102a): i. Collection & assembly of preexisting material, facts or data ii. The selection, coordination or arrangement of those materials

iii. The creation, by virtue of the particular selection of an original work of authorship 3. Examples: What satisfies originality requirement? a. These all satisfy: i. Email to family member describing what you did yesterday ii. Doodle jotted in margin of book iii. Snapshot of kid playing w/puppy iv. Tape of birds, sounds you record while walking through the woods 1. The way the recording is done (walking)- participant in sound experience b. What about recording of silence OPEN QUESTION i. Ask: Is silence an artistic statement? Problem w/infringement- how to show access ii. Fixed- Fixation 1. MAI Systems v. Peak Computer (p. 315): MAI made computer software and after it was installed, they maintained computer systems for additional cost. Some MAI employees left to Peak and Peak stole some of MAI maintenance ks a. Holding: Image on the RAM was sufficiently permanent or stable to permit to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration it was fixed under 102a i. In order to perform maintenance, you had to run the program. Running the program made a copy from the hard drive onto the computers RAM 1. MAI sold license to users to make copies, but not Peak 2. Peak argued: image of the program on RAM was temporary, so not fixed ii. Generally: Storage in RAM is a copy that is fixed iii. In tangible medium of expression (Ask: What is tangible?) iv. Does not have to be known now (at the time statute was written) v. Can be reproduced c. 17 USC 102a: Works of authorship include (not exclusive list) the following (as long as tangible): Literary works; musical works including any accompanying works; dramatic works, including any accompanying music; pantomimes and choreographic work; pictorial graphic and sculptural works; motion pictures and other audiovisual works; sound recordings; architectural works i. Ex. DVD of movie- might have a number of copyrightable pieces owned by different people all licensed together into the movie- soundtrack, musical score, script d. NO Copyright Protection- 17 USC 102b: NO COPYRIGHT PROTECTION for: 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 i. Baker v. Selden: S wrote how to book that described new method of bookkeeping (double column accounting), using example ledgers. B wrote a book on bookkeeping also and used similar ledgers 1. SC Holding: Double entry accounting is a method of operation & NOT itself copyrightable a. This may have been able to be patented 2. Use of the art v. a book explaining the art- How do distinguish a. ASK: Is the form of expression the essence of the idea? i. If you cant express it in other ways, then it is use of the art ii. Concept of merger: if an idea can only be expresses in 1 or a few ways, granting copyright on that expression would lock up anyone from using that idea. Since you cant copyright ideas, you cant copyright the limited ways to express the idea b/c the idea behind the work merges w/its expression b. What about health insurance form? Is this a method of operation or copyrightable?

i. Baker- this was a standard form of accounting everyone uses ii. In health insurance, there are different source codes for different procedures e. Useful Articles: If a pictorial, graphic or sculptural work is a useful article, it can only be copyrighted if the aesthetic features are separate from the utilitarian features i. Step 1: Analysis of statute (17 USC 101): Is it a useful article? 1. Useful article: article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. ii. Step 2: Separability Analysis (17 USC 102a5): If design features can be identified separately from and are capable of existing independently of the utilitarian aspects of the article, then it entitles the creator of a useful article to a copyright on its design 1. Ex. Mont Blanc pen: Is the design of the pen independent of the use? Yes- gold band, white star are not related to the function of the pen. a. The design elements are copyrightable. Also, white star is trademarked. 2. Mazer v. Stein: sculpture that was used as lamp base copyright protection is ok 3. Physical Separability Test: a. Ex. Jaguard shaped hood ornament on a car is physically separable from the car itself 4. Conceptual Separability Test: Is form intrinsically linked to function? a. Brandir v. Cascade Pacific Lumber: B designed bike rack that was featured in design mags. C began copying the bike racks. i. Holding: Bike rack not copyrightable final form was a product of industrial design, not minimalist sculpture 1. Denicola test of conceptual separability: If design elements reflect a merger of aesthetic and functional considerations, the artist aspects of the work cannot be said to be conceptually separable from the utilitarian aspects a. Where design elements can be identified as reflecting the designers artistic judgment exercised independently of functional influence conceptual separability exists 2. Subjective standard: court looks at features of the work and decides if the creator chose the features for design/function reasons or aesthetic reasons a. ASK: Was the dominate characteristic aesthetic or functionality? b. Policy: this is close to court making judgment on art 3. What about Ludwig minimalist chair? What about the chilling effect??? b. Apple v. Franklin Computer: F made computers that were compatible w/Apple computers, which required them to have the same operating software. F copies Apples operating software i. Holding: Operating systems & computer software is copyrightable ii. Operating system v. applications (which were copyrightable) 1. Even though OS was part of what made the computer work, the statute does not differentiate between OS and applications programs 2. Ex. Iphone has OS so apps that work on it wont work on android a. Impact of Lotus decision?? Easy to switch programs; cost to switching in learning; w/o merger doctrine there would be implications for developers; android development is open source but does have copyright where apple just keeps it proprietary iii. Doctrine of merger did not apply: there were other possible ways to write the OS so there was not a single expression to express that particular idea 1. Expression: same idea can be expressed in many ways can be copyrightable 2. Here: not protecting the functionality, but expressiveness- you can extract the writing from the functionality

c. Lotus v. Borland: L developed software to make spreadsheets and B made competing software that used identical menu features. B did not copy any of Ls stuff, but wrote all the code themselves i. Holding: Ls menu commands were uncopyrightable b/c they were a method of operationthey were the method the user controls and operates the program ii. There is only 1 or a limited number of ways of expressing the idea idea is merged w/the expression so no copyright iii. Mazer v. Stein: sculpture that was used as lamp base copyright protection is ok III. Who is the Author? Who Owns the copyright? a. Joint Authors: 17 USC 101 Joint Work: Work prepared by 2 or more authors with the intention that their contribution be merged into inseparable parts i. Benefits of joint ownership: 1. Right to royalty: split the proceeds 2. Right to make copies: Each owner can fully exercise w/o the permission of the other ii. Thomson v. Larson: L was author of Rent. L used Ts services to help the musical. 1. Holding: Rent was NOT a joint work & T could not get copyright on it 2. Standard for Joint Work: ASK a. Would this be an independent copyrightable contribution of each? b. Was there mutual intent for them to be joint owners at the time of the work? i. Consider: Who has decision-making authority? Who pays bills? Signs contracts? 3. Ex. Editor on law review- No joint ownership with author- there are independent contributions but not mutual intent b. Work for Hire Doctrine: work prepared by an employee w/in the scope of employment i. CCNV v. Reid: homeless sculpture, third world America. CCNV hired Reid to make it and there is no written contract. 1. Employee & Independent Contractor: a. If you are an employee the employer is the owner of the copyright b. If you are an IC working under a commissioning party then the commissioner is the owner of the copyright i. It needs to be 1 of the specifically mentioned things: Reid is not 2. Employee under the common law of agency- does not need salary- How is the hiring party treating the individual? If treated like an employee, it falls w/in the statuteFactors: a. Hiring partys right to control the manner and means by which the product is accomplished i. ASK: Who controls how it is made? 1. Reid selected the models b. Skill required c. Source of the instrumentalities and tools i. Reid recommended the material to help make it cheaper d. Location of the work i. Being made in Reids studio w/o CCNV supervision e. Duration of the relationship between the parties f. Whether the hiring party has the right to assign additional projects to the hired party g. The extent of the hired partys discretion over when and how long to work h. The method of payment i. The hired partys role in hiring and paying assistants j. Whether the work is part of the regular business of the hiring party k. Whether the hiring party is in business l. The provision of employee benefits

m. Tax treatments of the hired party 3. Holding: Reid was an IC (should have just defined by k) 4. Differences when this falls into the public domain: duration of copyright is longer for CCNV IV. Duration of the Rights: How long is copyright ownership? a. 17 USC 302: i. Life of author + 70 years ii. Works for hire: date of publication + 95 years OR date of creation + 120 years (whichever expires first) ex. Something is published after they die b. Renewals & Terminations of Transfers i. Before 1976: first term of 28 years + renewal term (had to take steps to renew) 1. Author assignments: author could regain ownership when he renewed a. Protected the author: could renegotiate if their work is successful (ex. Harry potter) 2. People began developing contracts to assign the renewal right a. But- If author died w/in the 28 years, the heirs were assigned copyright and not bound to renew with the publishers ii. 1976 Act (consistent w/international obligations): Lifetime + 50 years 1. Limited time of assignment to 35 years a. Statute prohibits relinquishing this transfer right by contract b. Notice requirements: file notice that they will exercise termination notice c. 1/1/13 will be the first time artists can reclaim their works iii. Sony Bono Copyright Term Extension Act (1988): extended duration of copyright to 70 years 1. Effect: works that had not yet entered the public domain had 20 more years (Mickey Mouse) 2. Eldred v. Ashcroft:: E ran website for public domain classic books a. Argued: retroactivity does not promote the progress of science- works have already been made so it is not incentivizing creation b. Congress has the constitutional power to promote progress...for limited time court was deferential to congress i. Issue of what is a limited time? How far will Congress extend? c. Breyer Dissent: This is a constitutional question and should not just give deference i. This is a wealth transfer: now public will have to pay royalty right V. Exclusive Rights: Rights that copyright owners get a. 17 USC 106: i. Reproduction: to reproduce the copyrighted work in copies or phonorecords ii. Derivative Work: to prepare derivative works based upon the copyrighted work 1. Ex. Write a movie after writing the book; write quiz book based on tv series; decorative tile containing a copy of the work; decorative plate with painted image from movie; costumes based on characters 2. Derivative work: a work based upon 1 or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which as a whole represent an original work of authorship a. Exception for sound-a-like recordings: might be a problem under performance right but not infringement b/c it is not a sound recording??? iii. Public Distribution: 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

1. First Sale Doctrine: The right of a copyright holder to distribute expires after the first sale a. Creates secondary market: only allows limited monopoly, not perpetual control b. Ex. Profs book w/sticker saying it is not for resale: Sticker is not enforceable but people wont resell it b/c he knows he may not get anymore free books i. If it said resale is prohibited it would be incorrect ii. If he writes in the book, his notes are not copyrighted- not original iv. Public Performance: in the case of literary, musical, dramatic, and choreographic works, pantomimes and motion pictures and other audiovisual works, to perform the copyrighted work publicly 1. Perform or display a work publicly means: a. To perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or b. To transmit or otherwise communicate by a performance or display of the work to a place specified in 1 or to the public by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or different times 2. Ex. What about playing on a beach? It is open to public; Background music at party? 3. Verizon Wireless: VW filed SJ motion to determine if they must pay public performance licensing fees for ringtones before they invest more. a. Alleged violation of public performance right: act of downloading the ringtone on to the phone is transmitting it to a large number of recipients b. SDNY: Not public performance- download function is not performing i. Ringing/Playing it not a public performance it is in the normal cycle of family and acquaintances 1. B/c the ringing is not public performance, VW will not be liable in the chain back to transmission of the music 2. Personal use exemption: VW is not secondarily liable when phone owners play the song v. Public Display: in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly 1. Ex. Display a photo in a museum vi. Digital Public Performance for Sound Recordings: in the case of sound recordings, to perform the copyrighted work publicly by means of digital audio transmission VI. Establishing a Prima Face Case of Infringement: (1) Ownership of the copyright- and that the copyright is valid; (2) Infringement- that D made an unauthorized exercise of the 106 rights a. Where D copied protected elements of Ps work: Direct & Indirect copying i. Proof of infringement: 1. Actual copying 2. Copying by direct evidence a. Ex. Napster, mega upload: copy of the actual copyrighted song and making a bootleg, so it is direct evidence to see the actual file ii. Criteria for court to look at: (1) Access to the work + (2) substantial similarity 1. Access: demonstrate a reasonable opportunity to view or copy Ps work (more than a possibility) a. Arises through: (1) a particular chain of events established between Ps work and Ds access to that work that put it in your possession; or (2) Ps work had been widely disseminated

2. Substantial Similarity: a. Export Ventures v. Einstein Moomjy: P took public domain elements from 2 carpets and combined them, modified them (making it less symmetrical and invert the color scheme), and added elements to make a rug. D took same public domain sources, modified them differently and added new material. i. Substantial copying: More than de minimis- goes beyond public domain elements ii. Held: This was infringing- the changes were not substantial enough, even though it was an inexact copy 1. Court judged the aesthetics, which they dont want to do a. Bike rack: not how artistic, but utilitarian aspects iii. THINGS TO ID: the public domain elements in Ps work, Ps new elements, public domain elements in Ds work, elements in Ds work copied from P, new elements added by D b. Three Boys Music v. Bolton: TBM is suing B for copying the song love is a wonderful thing. i. Phrase itself- love is a wonderful thing- is not original & not copyrightable- it idea merges w/the expression ii. Jury finds access & substantial similarity Court defers to jury 1. Evidence of access: It was played on a radio where he grew up; he admitted to being a big fan of TBM and having the whole collection; in the recording studio he asked if he was copying Marvin Gaye a. Subconscious copying: Allowed but usually cases remote in time i. He had a feeling he has heard this before 2. Substantial similarity: independent elements cannot be copyrighted by the compilation of the song is iii. Defense of Independent creation: failed b/c access & substantial similarity rebuts independent creation VII. Defenses: Limits on Exclusive Rights a. Fair Use: 17 USC 107: the fair use of a copyrighted work...for the purposes such as criticism, comment, news reporting, teaching,...scholarship, or research is not an infringement i. Generally: You can take part of someones copyrighted expression & use it as long as it is not a lot, you are using it for a purpose that is ok, (non commercial), and you are not undermining the economic value of the original copyright want something transformative 1. Balance: free expression & monopoly rights these uses promote progress ii. Fair Use Four Factor Analysis: DO EVERY TIME- mix of fact & law- Context specificlook as an aggregate assessment 1. Purpose and character of use a. Ask: Is it a permissible purpose + commercial aspect (for profit) 2. Nature of copyrighted work a. Ask: What kind of work? Book, music, news? The more expressive it is & creative, it is more forgiving to be allowed as fair use 3. Amount & substantiality of the portion used in relation to the work as a whole a. Ask: Is it substantial? Is it a bulk or the key part? i. Difference between copying 3-4 pages v. 1 paragraph ii. The more you take, the less strong fair use claim is iii. But, even if you take a little, it might not be fair use 4. Effect of the use on the potential market or value of the copyrighted work a. Ask: Does this undermine the commercial value of the copyright holder? If so, to say its fair use undermines the rights of the author iii. Campbell v. Acuff Rose Music: 2 live crew claimed they wrote a parody of Pretty Woman

iv.

v.

1. FIRST ASK: Did they copy it? Substantially similar? YES- they admitted to it and tried to negotiate a license 2. SECOND ASK- Which kind is the use? Here- Parody v. Satire a. Parody: pokes fun at the actual expression itselfneeds to reference original expression (note: parody not mentioned in 107) i. Here: 2 live crew poked fun at original singers nave view of man b. Satire: pokes fun at society 3. Holding: Commercial parody can be fair use a. Transformative use: takes it out of its original context & does something socially relevant helps fair uses analysis b. It is a criticism/comment: Does not matter if the parody is in bad taste c. Commercial Use: does NOT preclude fair use (under purpose and character) d. Effect on the market: no evidence on the effect on sales of the original song i. Not fair use if people would buy this song instead of the original ii. Distinction between criticism that kills demand for the original v. something that steals demand for the market: 1. What if parody is so successful & destroys the market for the underlying work? Ex. Book review trashes book still gets fair use defense. 4. Note: Court treats fair use as an affirmative defense & person asserting it has the burden of proof a. But statute says fair use is not an infringement: sounds more like a limit on the rights, not a defense 5. Hypo: Barbie Girl song by Mattel v. Aqua song- not a parody, just a cleaned up version a. Purloining or conjuring up? Is it trying to capture Barbie revenue or destroy Barbie? b. Mattels version is not undermining the spoof market- may even help it c. Fair use? All factors cut against fair use except 4 6. Hypo: This land is our land song: It is a comment on the election, not the song not parodying the underlying work & no effect on the market for the original song Harper & Row v. the Nation: unauthorized infringement of unpublished manuscript of biography on Gerald Ford. It contained insight into Watergate scandal. Publisher had exclusive on first publication so tells H&R they wont pay b/c they were not first to publish 1. Unpublished manuscripts: both copyright and fair use apply 2. Apply the four factors Not Fair Use a. Purpose of the use: news reporting- trying to scoop the news for the commercial value- they knew it purloined and illegally obtained i. Bad Faith character: commercial way of seeking a scoop b. Nature of copyrighted work: Less forgiving about uses of unpublished work i. What if only took facts? Then just news c. Amount: It is not a substantial amount of stolen words but those words are at the heart of the story d. Effect on market: It completely undermined first publication market- people will not buy the book b/c they see Ford had little to say 3. Ex. What about publishing excerpts from unpublished pentagon papers? a. Purpose & character: may be a more noble purpose Sony v. Universal Studios: Sony made Betamax home video recorder. 1. Derivative Liability Claim: Universal claimed that song was liable for copyright infringement by the users of the machine 2. Is this fair use? Yes- time shifting is fair use so no contributory liability a. If there is fair use no primary liability cannot be secondary liability b. Can the equipment be used for substantial, non-infringing uses?

i. Purpose of Use: Time shifting is ok; this is not a commercial activity- the user has already been invited to view the show in that manner ii. Amount of the work infringed: generally the whole thing iii. Potential harm on market: No evidence of any harm in the record 1. Could have tried to show that it harmed the market for rebroadcast vi. American Geophysical Union v. Texaco: Texaco ordered a few subscriptions of the science journal for the whole company and would pass them around to all the scientists to copy articles for future use. Everyone in company did it but chose 1 guy to represent them all and analyzed the 8 articles he photocopies. No evidence that he actually used the copies 1. Fair use analysis: Hard to predict b/c very fact sensitive No fair use here a. Purpose & Character of use: Against Texaco i. Texaco is a commercial entity not dispositive 1. Very attenuated commercial gain from the copying ii. Is nature of the use transformative? No- archival, but more valuable and helpful b. Nature of copyrighted work: For Texaco i. Copyright only covers the expression? c. Amount and substantiality of portion used: Neutral (but hurts Texaco) i. Each article has its own copyright, so they used the entire portion of the copyrighted work 1. Authors assign copyright to the journal, but the journal as a whole is not the entire copyright d. Market Effect: Against Texaco i. Market: sale of issues of magazine- But only a few subscriptions lost & not strong evidence so just a little against Texaco ii. Licensing revenue for individual articles: Hurts the market for the journal to sell reprints vii. Perfect 10 v. Amazon: Thumbnail images on Google. 1. Burden on Perfect 10 to rebut the presumption of fair use 2. Fair use analysis: This is fair use no market to harm + highly transformative a. Factor 1: Favors Google i. Highly transformative- adds something new & great public benefit 1. Kelly: The artists use of the images served a different function than the websites use- improving access to info on the internet v. artistic expression 2. Search engine transforms image into a pointer directing a user to the source of info ii. Transformative use outweighs people downloading the thumbnail b. Factor 2: Against Google- creative but previously published c. Factor 3: Neutral- took the whole pic but needed to for it to be transformative d. Factor 4: Neutral- Cell phone dl market but no proof of harm & transformative b. Independent development: If someone came up with it themselves i. Ask: Was there access to the protected work + is there substantial similarity between protected work and the new work? VIII. Secondary Liability: a. Two types of secondary liability: i. Contributory infringement: one who, which knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, is liable ii. Vicarious Infringement: if an agent is acting on my behalf and infringes, I am liable 1. Liability if 2 conditions: (1) Control- right and ability to supervise + (2) Direct financial benefit

b. Fonovisa v. Cherry Auction: fair that sold illegal copyrighted recordings. Suing auction company b/c they knew i. Vicarious liability Test: Looked to landlord & dance hall cases liable 1. Control of the premises: right & ability to supervise- booths paid Cherry, they policed the booths 2. Direct financial benefit: Not making money off the sale of illegal context directly, but getting money from daily rental fees, admission, food ii. Contributory liability: liable 1. Knowledge: yes + 3rd circuit holding that providing the site and facilities for known infringing activities is sufficient c. Sony v. Universal Studios: Betamax- sony is manufacturer i. Is Sony liable for contributory infringement? No 1. Universal argued: it provided the means w/constructive knowledge that it would used for infringement 2. It is a generally sold good & substantial non infringing uses d. MGM Studios v. Grokster- IF EXAM HAS FILE SHARING CASE, REFER TO THIS i. Grokster facts: peer to peer network w/no central server. The computers connect to each other. Gnutella described itself as a technology, not to promote piracy, BUT it could withstand lawyers. Only 10% of use on Grokster was non infringing 1. Different than Napster (who was vicariously liable): had a master index 2. Advertising: Napster alternative- wanted to get napster uses when it got shut downaffirmatively looking to capture illegal file sharers 3. Issue: under what circumstances the distributor of a product capable of both lawful and unlawful use is liable for acts of copyright infringement by third parties using the product 4. Holding: one who distributes a device w/the object of promoting its use to infringe, as shown by clear expression or other affirmative steps taken to foster infringement, is liable fort the resulting acts of 3rd parties ii. Vicarious Liability Standard: Indirect liability- notion of inducement- inducing someone else to engage in the violation encouragement! (from patent law) 1. Versus Sony: knowingly contribute- no liability b/c knowledge was not sufficient for intent a. Also, Sony was anecdotal (no evidence of effects) but here there was actual evidence of substantial infringing uses and little evidence of substantial non-infringing uses 2. Here: Clear expression of intent (emails, internal memos) iii. Breyer dissent: did not want to impose liability 1. Emphasize future potential: worry about impact of stifling development of this technology for non-infringing uses iv. Effect of YouTube on this: 1. Intention: user generated content, not violation of copyrights 2. Users own the copyrights, not youtube a. Question: What is the user authorizing youtube to do with the content? Can they sell it to someone else (like they sold to Google?) b. Sub licensable and transferable license??? IX. Judge Speakers: a. Judge Patel: silicon valley judge PATENT i. Reed Alsaver case: distinction between jurisdiction & claims processing (patent) 1. First step: Do we have jurisdiction a. Jurisdiction even though did not have registration certificate? i. Circuit split if you need the certificate or ok if you filed registration & waiting

b. P files infringement contention, then D files c. Marksmen hearings/claim construction hearings 2. It all comes down to lawyering b. Judge Burzine: 9th Circuit (largest fed ct of appeals but doesnt hear patent cases) i. Rierdan case: He spins off & markets the name and concept 1. Is there a use of commerce if hes not in the market selling things? 2. What kind of confusion are we looking at? Sophisticated buyers are less likely to be confused ii. DMCA Copyright: Note- written w/old technology in mind 1. Who is covered under safe harbor? a. Decided whether it covers entities where product on the internet is storing & enabling access through transformation of material????? iii. Grokster: Technology- bit torrents- designed to get around Napster holding 1. She doesnt think it matters if it literally violates the law: it was created for people to get access to copyrighted material and the process of how they get it should not matter a. But, this could change copyright 2. Napster: server had an index that was an intermediary 3. Grokster: No card catalog, no centralization a. Question of Contributory Liability: inducing/facilitating the infringement and assisting in the ability to infringe i. Did they have intent? Knowledge? ii. Can the system have substantially other kinds of legitimate activities? Napster sis not iv. Copyright laws are a few years behind the technology 1. Substantial non-infringing use? 2. Can only be contributory infringement if there is an underlying infringement v. Problem: this system is inverse- they review is after 1. Bankruptcy courts do it better: but expert agencies at the trial level might be harder b/c they review de novo X. DCMA gives legal protection to technological tools used to prevent copying a. Anti Circumvention Provision (17 USC 1201): you are not allowed to try to get around the prevention tools but allowed to circumvent technical protections for certain permissible uses i. This is an access control? b. Safe Harbors: These listed things wont be violations and you wont be liable for copyright infringement i. Transitory Communications: no copyright violation if some storage during TC ii. System Caching: ex. Google caching thumbnails iii. Information residing at direction of others: ex. Blogspot hosting your blog iv. Information Location tools: ex. Hot links c. Notice/Take Down (17 USC 512c3A): Safe harbors 3 & 4 create a mechanism for potentially obtaining removal of material that a copyright owner believes is infringing from a website, without filing a lawsuit or prove infringement i. To qualify for safe harbor protection, you need a designated agent ii. Ex. Jetblue video- assume the person who posted the video isnt the person who made the video & the person who made the video owns the copyright. They will not be responsible provided they have a notice & takedown regime iii. Notice has to be very specific: 1. A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed

2. Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works on that site 3. Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material 4. Information reasonable sufficient to permit the service provider to contact the complaining party, such as address, phone number, and if available, email address at which the complaining party may be contacted 5. A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law 6. A statement that the info in the notification is accurate and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed iv. Once the receive the notification, they need to act fast to take it down v. Counter notification: if they put it back up believing they are allowed- the copyright owner could them take to court XI. Remedies: a. 4 types i. Civil Damages (17 USC 504) 1. Actual Damages: Displacing the ability to perform the work elsewhere 2. Wrongfully obtained profits- need nexus w/infringement a. Disgorgement b. Would not have gotten but for the infringement c. Costs saved (like not paying license fee) ii. Injunctive Relief (17 USC 502) iii. Criminal Penalties (17 USC 506a) 1. Issue: Trying to reward authors w/economic incentives but this empowers state to seek criminal penalties for private economic harm to an individual where the person can sue civilly iv. Seizure (17 USC 503a and 17 USC 509a) 1. Ex. Publisher publishes infringing book- stop future sales, seize copies out there, get money b. How to calculate damages: i. Frank Music v. MGM: Las Vegas show that used music w/o authorization. Had a license from ASCAP but this did not cover this use. They used 4 songs in a 10 song show 1. Civil Damages: a. Actual damages: None- the copyright owner can still perform the songs at other venues b. Wrongfully obtained profits: only a portion of sales came from infringement c. Indirect profits: the show designed to bring clients to stay at the hotel- needs an association w/the infringement itself ii. Davis v. The Gap: Do not want infringer to benefit from the infringement- Ask: What is the appropriate disgorgement of the ill-gotten gain associated w/the infringement? 1. Here: license fee would have been too speculative