Final Exam

Abandonment Defense

(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. *Nonuse for 3 consecutive years* shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to *become the generic name for the goods* or services on or in connection with which it is used or otherwise to lose its significance as a mark

What causes registration to be cancelled? (incontestability does not shield a registration from all attacks)

(1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow.

The Trademark Dilution Revision Act of 2006 (TDRA) revised section 43(c) in several crucial ways:

(1) reversing the Moseley case's actual dilution standard, and putting into place a *likelihood of dilution standard* somewhat akin to the Mead Data Central approach under the New York dilution statute; (2) expressly recognizing a *dilution by tarnishment claim*; (3) more precisely defining a famous mark, *which must be famous to general consumer audiences* in the United States; and [know this factor] (4) setting forth *factors for determining whether a mark is famous and whether it has been blurred* by the defendant's mark.

owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to *reproduce* the copyrighted work in copies or phonorecords; (2) to prepare *derivative works* based upon the copyrighted work; (3) to *distribute* copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to *perform the copyrighted work publicly*; (5) 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*; and (6) in the case of sound recordings, to *perform the copyrighted work publicly by means of a digital audio transmission.*

three possible ways to analyze the problem: *Descriptive or Suggestive* - Where on the spectrum?

(1) whether *imagination is required* in order to see a connection between the mark and the product, (2) whether *other producers need to use the term* in order to *compete effectively* (competitive need), and (3) whether the mark *has been used extensively by competitors* other than the purported trademark owner (third-party use). Paraphrased: - imagination - competitive need - third party prior use

2 factors further explained - Marketplace proximity and Bridging gap

(3) the marketplace proximity of the two marks: - How close are the two companies *geographically* and how close are the two *product lines*? -- Delta Airlines and Delta Faucet: both national, very different product lines. ---No consumer confusion -- Burger King and Burger King: one national, one regional, identical product lines. --- Very likely consumer confusion (4) the likelihood that the senior user of the mark will bridge the gap: - What are the chances that the *company that used the mark first is likely to extend into the junior user's geographic area or product line?*

102 - actions of others to preclude patentability, and actions of inventor to preclude patentability

*Actions of others to preclude patentability* - Patented - Described in a printed publication - In public use - On sale - Otherwise available to the public before the effective filing date *Actions of the Inventor to Preclude Patentability* - Disclosures more than one year before filing date - Public use of more than one year before the filing date - On sale for more than one year before filing date

Fixation in a Tangible Medium of Expression

*As soon as a creative work is written down or recorded in some tangible form, copyright protection is triggered. * - Your notes are protected by copyright. - This presentation is protected by copyright. - The scribbles on the stalls in the bathroom are protected by copyright. But, remember the holding in Feist: - Facts are not copyrightable and your notes and my presentation are mostly facts. - Someone can go pull the facts and create a new work written in a tangible medium. - I may have a very thin © for the way I SCA this, but that's weak. - However, someone cannot just go make photocopies. That's infringement.

Constructive Notice and Incontestability

*Constructive Notice:* - This means that nobody can claim ignorance of your federal registration. - This prevents someone from being able claim good faith and being allowed to carry on with using the mark, assuming it is confusingly similar. -- "Super sorry! Totally didn't know!" does not work. - It is critical to understand if the senior user or the junior user (or neither) has a federal trademark *Incontestability:* - A party cannot challenge your federal trademark registration if it has been registered for more than 5 years. - This gives the trademark owners peace of mind, up to a point, that their registration and rights are secured. Constructive Notice and Incontestability are NOT related except for the fact that they are both perks of a federal registration.

Defamation: Restatement (Second) of Torts

*Defamation* laws protect the reputations of individuals and other entities (such as businesses) from untrue and damaging statements. *Libel* refers to statements that can be seen (typically written and published) *Slander* occurs when a defamatory statement is spoken or otherwise audible (such as a radio broadcast). To prove either type of defamation, plaintiffs must prove the following four elements: - First, the plaintiff must prove that the defendant made a *false and defamatory statement concerning the plaintiff* - Second, the plaintiff must prove that the defendant made an *unprivileged publication to a third party* - Third, the plaintiff must prove that the *publisher acted at least negligently in publishing* the communication. - Fourth, *in some cases*, the plaintiff must *prove special damages*

Specification 112

*Enablement and Best Mode* The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to *enable* any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the *best mode* contemplated by the inventor or joint inventor of carrying out the invention.

Exception to 1 year rule

*Experimental Use* The question posed by the experimental use doctrine is whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation. - MPEP 2133.03(e) Experimental use means perfecting or completing an invention to the point of determining that it will work for its intended purpose. Therefore, *experimental use ends with an actual reduction to practice*. - MPEP 2133.03(e)(3) Trying to make an invention work does not start the clock ticking; it is understood that it takes time reduce these things to practice

Definitions of 5 trademark types

*Generic*: one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. *Descriptive*: identifies a significant characteristic of the article; conveys an immediate idea of the ingredients, qualities or characteristics of the goods. - To become protected, requires "secondary meaning" *Suggestive*: requires imagination, thought and perception to reach a conclusion as to the nature of goods. *Arbitrary*: use of a common word applied in an unfamiliar way. *Fanciful*: words invented solely for their use as trademarks.

Motion to Dismiss and Motion for Summary Judgment

*Motion to Dismiss* under Federal Rule 12(b)(6) - failure to state a claim upon which relief can be granted - The Plaintiff's complaint did not state something actionable so the case should be dismissed. *Motion for Summary Judgment* under Federal Rule 56 - The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. - One party states that there are no facts in dispute so the court should apply the law to these facts and, when applying the law, it is clear that the court should rule for the moving party.

Qualitex Co. v. Jacobson Products Co. (Supreme Court)

*No special legal rule precludes color alone* from serving as trademark and that the green-gold color of a manufacturer of dry cleaning press pads could in itself be registered as a source-indicating trademark. The court required that the *trademark owner establish secondary meaning* (i.e., acquired distinctiveness), in effect *treating the color trademark in the same manner as other descriptive marks*

Sync License

*Paid to the publisher/composer. one of two (master) licenses required to license songs for visual media* Many music publishers have entered into license agreements with YouTube permitting the use of the songs they control in exchange for a percentage of any advertising revenues (although in some cases the publisher may set a policy that a particular song is blocked from use). As a result, in most cases, YouTube has already obtained an agreement with the music publisher. To determine whether or not a publisher is participating in an agreement with YouTube, please contact the publisher directly. Publisher contact information may be found at ASCAP or BMI. This is why you can go to Facebook jail or Instagram jail.

Distinction: 2 types of similarities

*Probative Similarity* (together w/ access determines factual copying) - Do the two works in question, the original work and the allegedly infringing work, look or sound the same? - If yes, they are probatively similar. *Substantial Similarity* (together w/ factual copying determines actionable copying) - The allegedly infringing work has copied original, protectable elements of the original work The two works may just have unprotectable things in common. In that case, they are just probatively similar. But if they have protectable things in common, they are substantially similar.

Types of Patent Applications

*Provisional* - essentially a place holder to protect against a statutory bar or to ensure a priority date; cheaper *Non-provisional* - formal application and will get examined, can "claim priority" to a provisional application - You have one year from filing your provisional application to decide if you want to file a non-provisional application - Gives you a year to play around and see if the invention is commercially viable or to save up for the more expensive application

How you can hurt yourself

*Showing people the invention without confidentiality restrictions* - Think trade show, demos, tv commercials, etc. - Triggers the time - Also can have your invention stolen *Publishing a professional paper* - Think research, e.g. professor or engineering publication *Start selling the product or offering to sell the product* - Even if the products are not going to be made for a while, you still cannot sell the product - You can sell the rights to the product but not the product itself → All of these will trigger the 1 year grace period. In practice, you should ALWAYS file a provisional before any one of these events occur.

Parts of a Patent

*Specification* - this is your written description, including an abstract and detailed descriptions of your drawings To get a patent, you have to publicly disclose your whole invention in exchange for that monopoly. This is where @Phosita gets her knowledge to make your invention after the patent expires. *Claims* - this is the legal definition of your monopoly Typically much narrower in scope than your specification *Drawings* - not technically required but almost always used and very helpful to understand inventions Can help with broad interpretations of your disclosures

Sweat of the Brow theory and Elements for copyright protection for compilations

*Sweat of the Brow Theory:* Copyright is a reward for the hard work that went into compiling facts - Expressly rejected in the U.S. (pisses me off) *Elements for copyright protection for compilations:* 1) The collection and assembly of pre-existing material, facts, or data; 2) The selection, coordination, or arrangement of those materials; and 3) The creation, by virtue of the particular selection, coordination, or arrangement, of an "original" work of authorship. Facts are never copyrightable irregardless of who discovered them Ideas are never copyrightable Scenes a faire never copyrightable - Inevitable background scenes that are common to a particular type of work at issue Useful Articles are never copyrightable

Copyrights - definition - right conferred - length of protection

*What is a Copyright?* A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed. *What is the right conferred?* Distribution rights and rights to derivative works. *How long does it last?* - Author's life plus + 70 years after the author's death. - For works made for hire, and for anonymous and pseudonymous works the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.

Patents - definition - right conferred - length of protection

*What is a Patent?* A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. *What is the right conferred?* The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. - What is granted is not the right to make, use, offer for sale, sell or import, but the *right to exclude others from making, using, offering for sale, selling or importing the invention*. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO. *How long does it last?* Short answer: 20 years from the date it was filed

Trademarks - definition - right conferred - length of protection

*What is a Trademark?* - A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. - A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. - The term "trademark" is often used to refer to both trademarks and service marks. *What is the right conferred?* Allows prevention of confusingly similar marks to enter the market. *How long does it last?* FOREVER! *Sort of MORE: - Distinguishes the source of goods from one party from those of others - About the integrity of the marketplace and preventing consumer confusion - This is not about rewarding creativity

Beat a 102 rejection

*You argue* - An element or elements are missing from the reference cited against you - That the examiner misunderstood (respectfully) *You narrow your claim to include an element not included in the prior art that was included in your application* -- When you add an element, you reduce the scope -- Think of the Camelbak --- Maybe all water bottles in the past had containers and tops, but there was no bite valve. --- You add the bite valve to the claim and you are good to go Show that the *reference cited against you was after your filing date*

Sound recording copyright exclusive rights

- *duplication and derivative works* (a) The exclusive rights of the owner of copyright in a sound recording are limited to the rights specified by clauses (1), (2), (3) and (6) of section 106, and do not include any right of performance under section 106(4). (b) The exclusive right of the owner of copyright in a sound recording under clause (1) of section 106 is limited to the *right to duplicate the sound recording* in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording. The exclusive right of the owner of copyright in a sound recording under clause (2) of section 106 is limited to the right to *prepare a derivative work* in which the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality. The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.

Registerability : 5 trademarks

- Generic - unregisterable - Descriptive - unregisterable unless showing of secondary meaning Inherently distinctive marks - registerable, grouped together for analysis: - Suggestive - Arbitrary - Fanciful It can be sometimes be hard to determine if a mark is generic or descriptive; or if a mark is descriptive or suggestive - These lines can get blurry

5 elements of music

1) Lyrics 2) Melody 3) Drum Beat 4) Chord Progression (You heard this in the Axis of Awesome) 5) Instrumental Selection 6) Hook (lyrical or melodic or both)

factors that go into determining of whether a mark has *sufficient recognition* that warrants a finding of *secondary meaning*

1) The amount and manner of advertising 2) volume of sales 3) the length and manner of use 4) direct consumer testimony 5) consumer surveys

Works made for hire factors

1) The hiring party's right to *control the manner and means of creation*; 2) The *skill required*; 3) The provision of *employee benefits*; 4) The *tax treatment of the hired party*; and 5) Whether the *hiring party has the right to assign additional projects* to the hired party.

5 principal rights

1) reproduction 2) distribution 3) derivative works 4) public performance 5) public display A sale or a license of one of these rights does not necessarily mean that the recipient has the right to exercise other rights.

Categories of Trademarks

1. Generic 2. Descriptive 3. Suggestive 4. Arbitrary 5. Fanciful Fanciful is the best one 3,4,5 are INHERENTLY distinctive 1 is never trademark-able 2 can be if secondary meaning, can't have secondary meaning when launching a new product

Defenses to Trademark Infringement

1. You are not actually infringing - there is no consumer confusion (analyzed by applying the Polaroid factors)! 2. Abandonment - the other party has abandoned the mark 3. Generic terms - the mark is not protectable 4. Comparative advertising - we are just competing and talking about your product, not confusing consumers 5. Fair Use - We are just talking about it

Co-authorship in copyright

A "joint work" is a work prepared by two or more authors with the intention that their *contributions be merged into inseparable or interdependent parts of a unitary whole*

Descriptive Marks and Secondary Meaning

A *descriptive term can be protected as a trademark if it has secondary meaning* (i.e., acquired distinctiveness). Secondary meaning is established when a *mark has come through use to be uniquely associated with a specific source* "To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." The issue of whether secondary meaning is present is separate from the question of whether a mark is descriptive.

secondary meaning

A *descriptive term can be protected as a trademark if it has secondary meaning* (i.e., acquired distinctiveness). Secondary meaning is established when a mark has *come through use to be uniquely associated with a specific source* To establish secondary meaning, a manufacturer must show that, in the minds of the public, the *primary significance of a product feature or term is to identify the source of the product rather than the product itself* Zatarain's Fish Fri was able to show secondary meaning by using survey data; however, they could not get Chick Fri.

The Functionality Doctrine: TrafFix Devices, Inc. v. Marketing Displays, Inc.

A patent on a hinge design had expired, and the plaintiff sought to assert trade dress rights in the design instead. The Court noted that the plaintiff must meet a heavy burden of proof that the hinge design was not functional (plaintiffs are always required to prove non-functionality under section 43(a) trade dress actions). This *burden cannot be met when the feature claimed under the utility patent is also the feature claimed for trade dress purposes*

102 - Novelty, Prior art

A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention Exceptions: (1) *Disclosures made 1 year or less before the effective filing date of the claimed invention*.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Generic Terms defense

A trademark *can always be attacked* on the ground that it is or has become *generic*. Section 1065 the Lanham Act states that "the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable: Provided, That—... (4) *no incontestable right shall be acquired in a mark which is the generic name* for the goods or services or a portion thereof, for which it is registered."

Copyrights Music and Videos

A video with music contains three copyrights: 1) the video images, 2) the sound recording, and 3) the underlying song composition (music publishing rights). In a video where you are performing a cover song, you might control the copyrights to the video images and sound recording but don't control the music publishing copyrights. To use the song composition, you need to negotiate a *synchronization license* directly with the music publisher. Even a cover song requires a license to be paired with a video!

Incontestability - further

After a *user has had a registration for 5 years the registration with the USPTO cannot be challenged* - This is different from being sued for trademark infringement - you can ALWAYS be sued for trademark infringement. The claim just may or may not be actionable. A challenge to a registration can happen for a number of reasons but the most common is that the mark is descriptive and there was no secondary meaning. This is solely about the validity of the registration and not about consumer confusion between competing companies. The registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce

Midler v. Ford Motor Co.

Although neither Midler's name nor a picture of Midler was used in the commercial, the court held that "when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California." - Cannot use a voice that is meant to be very similar as the famous person that rejected to be part of the commercial Expands the scope of the right of publicity beyond its traditional protection of name and images and even its broader coverage of name, voice, likeness, or other identifying characteristics associated with the plaintiff 2 facts of case: 1) The defendants' bad faith in using an imitator after Midler declined to participate in the advertisement and instructing the imitator to make her voice and style sound as similar as possible to Midler in voice and style. 2) The sound-alike was perhaps too successful, listeners could reasonably believe that the voice was in fact Midler's, and no apparent effort was made to dispel this notion.

Example of infringement - ambush marketing

Ambush Marketing - the practice by which a *rival company attempts to associate its products with an event that already has official sponsors*. Hashtags and other slogans for major sporting events are likely trademarked. Using #Rio2016 would be infringing. In general, if you are not a sponsor of a major sporting event or festival, avoid referencing it on social media or in promotions.

The Functionality Doctrine

An aspect of a product or trade dress is legally functional, and thus unprotected under trademark law, if it is one of a limited number of efficient options available to competitors and free competition would be unduly hindered by according the design trademark protection. - Kind of sounds like the Merger Doctrine from © This doctrine helps to assure that competition will not be stifled by the exhaustion of a limited number of options for product packaging or design. From Qualitex (green steamer pad case): - The functionality doctrine *prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature* - It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, after which competitors are free to use the innovation. - If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity). To carry out this policy, a product feature is deemed functional and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." The *person seeking to register a trade dress has the burden of proving that the matter sought to be protected is not functional* The functionality doctrine serves as an important *bulwark against undue expansion of trademark protection, particularly in the trade dress area* A commonly raised scenario involves a functional feature that has attained secondary meaning (i.e., acquired distinctiveness) through the success of the product—and perhaps by virtue of a patent monopoly. The functionality doctrine would suggest that, despite the recognition of origin and other indicia of secondary meaning with regard to the product, the functional elements of that product cannot be trademarked.

Derivative Works

An unauthorized derivative work would infringe the original work even though the derivative work may add a significant amount of creative effort. If a derivative work is authorized, it is typically separately copyrightable. - Think of the amount of original work that would go into converting a book into a movie but that would still infringe if no permission.

Prior Art

Any evidence that your invention is already known. Prior art *does not need to exist physically or be commercially available*. It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to your invention. Includes all publications, patents, and public uses or sales that exist before the "critical date"

Baxter International, Inc. v. COBE Laboratories, Inc. - Why 102?

Baxter International, Inc. v. COBE Laboratories, Inc. 1) *Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available*; 2) Favoring the *prompt and widespread disclosure of inventions*; 3) Allowing the *inventor a reasonable amount of time* following sales activity *to determine the potential economic value* of a patent; and 4) *Prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time.*

Complaint, Pleading, and Motion

Complaint - this is the lawsuit filed by the plaintiff Pleading - every legal document filed in a lawsuit Motion - a formal request made to a judge for an order or judgment (you are "moving" the court to do something for you)

Duration of copyright: Works created on or after January 1, 1978

Copyright in a work created on or after January 1, 1978, subsists from its creation and, except as provided by the following subsections, endures for a term consisting of the *life of the author and 70 years after the author's death* In the case of a joint work prepared by two or more authors who did not work for hire, the copyright endures for a term consisting of the *life of the last surviving author and 70 years after such last surviving author's death* In the case of an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of *95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first*

Subject matter of copyright: In general

Copyright protection subsists, in accordance with this title, 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. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works. (b) Copyright protection *DOES NOT extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery,* regardless of the form in which it is described, explained, illustrated, or embodied in such work.

useful articles

Copyright protects creative features but not functional ones. When a creative element is added to a functional object, it can still be copyrighted if it is *conceptually separable* from the useful features. If design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists

Copyrights Review

Copyrights Review

Defense and Holding

Defense - the denial or pleading of the defendant in answer to the claim or charge that has been made. - Someone accuses me of something, these are my defenses to the claim - E.g., fair use or something was not patentable or copyrightable Holding - the court's determination of a matter of law based on the issue presented in the particular case - The court held that defendant infringed plaintiff's trademark.

Spectrum of Distinctiveness

Degree to which a mark is distinctive and can thereby serve a source-indicating trademark function generic → descriptive → suggestive → arbitrary → fanciful ex: Sea salt → Fish-Fri* → Jaguar, Citibank → Apple, Camel → Exxon

Trademarks: Infringement - Continued

Every single potential outcome of *trademark infringement hinges upon a finding of consumer confusion, except dilution of a famous mark*. We analyze trademark infringement by analyzing consumer confusion with the likelihood of confusion factors (here, Polaroid test from Second Circuit): (1) the *strength* of the mark; (2) the degree of *similarity* between the two marks; (3) the *marketplace proximity* of the two marks; (4) the *likelihood that the senior user* of the mark will *bridge the gap*; (5) evidence of *actual confusion*; (6) the *junior user's bad faith* in adopting the mark; (7) the *quality of the junior user's goods*; and (8) the *sophistication* of the relevant *consumer group*. If you apply these factors to the facts of a case and decide customers would be confused about the products coming from the same company, trademark infringement has occurred and one of the outcomes from the previous slide will occur If you apply these factors to the facts of a case decide customers were not confused, everyone gets to keep operating.

Flowchart for patents

Experimenting → Provisional → 102 Trigger or any disclosure, whether or not confidential → One Year from Provisional→ Nonprovisional

Facts

Facts are not copyrightable; Compilations of facts are generally not copyrightable Originality - as used in ©, this means that the work was independently created by the author

Factual Copying

Factual copying may be inferred from 1) proof that the defendant had *access* to the copyrighted work prior to creation of the infringing work AND 2) *probative similarity* Defense: If a plaintiff establishes an inference of factual copying (by showing access and probative similarity), the defendant can rebut that inference, and thus escape liability for infringement, if he can *prove that he independently created the work* If a plaintiff has established factual copying (and the defendant does not establish independent creation), the plaintiff must also prove that the copyrighted work and the allegedly infringing work are substantially similar.

Intent to Use (ITU) Trademark Application

Fixes the issues in Blue Bell: remember that counsel for both companies did a search and gave it the all clear The "intent to use" (or ITU) provisions of the Lanham Act *essentially enable a party to obtain temporary preemptive rights to a mark that it intends in good faith* to use in commerce in the reasonably foreseeable future. *Allows you to file a registration application before using it in commerce* and you can renew it every 6 months for up to 3 years.

Compulsory License

In copyright law, a right determined by statute rather than negotiation between licensor and licensee. For example, copyright owners of nondramatic music have complete control over recording rights of their properties until they license the material for the first recording. But *after this first recording is distributed to the public, they are compelled by law to license any other person to produce and distribute recordings* of the copyrighted music in exchange for a *fixed statutory royalty* A person may by complying with the provisions of this section obtain a compulsory license to make and distribute phonorecords of a nondramatic musical work, including by means of digital phonorecord delivery. A person may obtain a compulsory license only if the primary purpose in making phonorecords of the musical work is to distribute them to the public for private use, including by means of digital phonorecord delivery, and— (i) phonorecords of such musical work have previously been distributed to the public in the United States under the authority of the copyright owner of the work, including by means of digital phonorecord delivery; or

Burger King v Hoots - Statutory Rights: Limited Area Exception

Issue of trademark priority and the geographic scope of trademark rights in the case of a nationally known company with federal trademark registration and a good-faith local trademark owner who has registered under state law. Federal law takes over because of the Supremacy Clause. *Court acknowledges and protects the right of good faith local trademark owners to continue their use of a mark in their market area as it existed at the time the other party obtained federal trademark registration.* But the scope of the smaller restaurants rights are once again limited to the area in which it actually had operations when the national Burger King obtained its federal registration—the area around Mattoon, Illinois. Despite having registered its mark under the Illinois statute, the local restaurant did not thereby obtain rights to the entire state of Illinois. FACTS of case: Burger King - Single restaurant in Mattoon, IL - Senior User - began using trademark first - State trademark registration - No federal trademark registration Burger King - Major national chain - Junior User - began using the trademark after the Mattoon restaurant - Federal trademark registration and incontestable - Because the single restaurant was operating before the national chain, it cannot be forced to change its name because of state law rights

Word Marks and Logos

Keep in mind that a logo can be used as a trademark. This is in addition to the words themselves. Think about Coca Cola and the logo The design of a logo is also going to be covered under Copyright law because subject to the originality requirements

Ordinary Skill in the Art

Level of basic knowledge and applied knowledge in a particular field, such as the methods and technologies that are standard and generally known in the relevant area

3 hurdles

Novel Non-obvious Enablement

Comparative Advertising Defenses

One of the fundamental purposes of trademark law is to promote legitimate competition in the marketplace. In order for a new or small competitor to sell its product in competition with large well known branded products, it is often helpful to mention the famous brand name. Thus, the *ability of competitors to make reference to the trademarks of others for purposes of comparative advertising is helpful to competition and consumers* Competition in the marketplace requires that a firm be able to make truthful statements about its competitor's product, including claims of equivalence.

Patents Review

Patents Review

PHOSITA

Person having the ordinary skill in the art USPTO: "The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention." This is your reasonable man from torts in the patent context Your girl Phosita can do anything in the art field that does not require an inventive step - She can do the obvious - I earn a living fighting this statement: "It would have been obvious to a person having the ordinary skill in the art..."

Likelihood of Confusion Factors (Probably on Test - Memorize)

Polaroid vs. Polarad Case - set forth a balancing test for determining the likelihood of confusion, consisting of the following factors: (1) the *strength* of the mark; (2) the degree of *similarity* between the two marks; (3) the *marketplace proximity* of the two marks; (4) the likelihood that the *senior user* of the mark will *bridge the gap*; (5) evidence of *actual confusion*; (6) the *junior user's* *bad faith* in adopting the mark; (7) the *quality* of the *junior user's goods*; and (8) the *sophistication* of the relevant *consumer group.* This is a balancing test where you weigh all of these. No one factor is determinative and gives courts a whole lot of wiggle room.

Question of Fact, Question of Law, Application, Prosecution

Question of Fact - typically means this is a question for a jury unless it is a bench trial, meaning the judge is the finder of fact and makes conclusions of law Question of Law -typically means that the judge or appellate court judges decide this issue Application - What you submit when you are seeking patent, copyright, or trademark protection Prosecution - describes the interaction between applicants and their representatives and a government office - Patent and trademark prosecution/U.S. Patent and Trademark Office

Arbitrary and Fanciful Marks

Same words, different uses, different spots on spectrum: - Ivory is generic when referring to product from elephant tusks but arbitrary for soap - Apple is generic for fruit but arbitrary for computers Exxon is fanciful, as it was coined specifically for the oil company - Evolution of the Exxon mark: -- Standard Oil → S.O. → Esso → Exxon -- Prob started as suggestive or arbitrary (standard as applied to oil) then moved to fanciful

Trademark Infringement

The Likelihood of Confusion Standard: - to establish a classic claim of unfair competition or trademark infringement, the trademark owner must show a *likelihood that ordinary purchasers will be confused regarding the source, sponsorship, affiliation, or origin of the goods or services in question.* This standard is expressly part of the language of the Lanham Act, both with regard to *proof of infringement of registered trademarks* (under section 32 of the Lanham Act) and of *unregistered trademarks, which are protected under section 43(a) of the Lanham Act.*

Right of Publicity

The appropriation tort protecting a celebrity's right to have his or her name, picture, likeness, voice and identity used for commercial or trade purposes only with permission. Say this on test if it is a question: "Here, Phosita asserts that we have misappropriated her name or likeness because..." Publicity rights *only apply to individuals*; companies or other business organizations rely on trademark law and related doctrines. If a *person's name develops secondary meaning in association with commercial offerings, people can develop trademark rights in their name* or other attributes to complement their publicity rights (which exist automatically). (Ex: George Foreman Grills) *When enforcing those rights, trademark law requires that the usage creates a likelihood of consumer confusion* In contrast, *consumer confusion is IRRELEVANT to a publicity rights* claim.

White vs Samsung Electronics

The defendant's advertisement consisted of an image of a robot with a blonde wig and evening dress, turning the letters in a futuristic game similar to "Wheel of Fortune." Samsung's parody advertisement did not use the plaintiff's image, name, voice, or any other traditionally protected attribute. Judge Kozinski's eloquent dissent from the denial of en banc rehearing persuasively addresses some of the broader problems with the panel opinion. Significantly, the panel did not actually hold that the plaintiff was entitled to relief, but only that she was entitled to go to trial on her claims.

The Functionality Doctrine: Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011)

The district court invalidated a well-known trademark registration obtained by Christian Louboutin in 2008, allowing Yves Saint Laurent to sell shoes that were also adorned with red soles. The Second Circuit ruled that Louboutin is entitled to protection for his distinctive red-soled shoe, except that he cannot have exclusive rights to red soles when the entire shoe is red in color. The ruling effectively allows YSL to sell its monochrome red shoes, while allowing Louboutin to protect its distinctive red sole mark in other situations

First Sale Doctrine

The doctrine that allows purchasers of a copyrighted work to resell it or rent it out The owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord. Allows for copies of a work to compete with the market for new versions, serving as a check on pricing. Important *Exceptions: commercial rental of computer software and copyrighted music*. - You can't go make copies of these works; that'll violate the ©

Trademark Dilution

The unauthorized use of a distinctive and famous mark in a way that impairs the mark's distinctiveness or harms its reputation. *If a trademark is famous to general consuming audiences of the US, the senior user can stop a junior user from using it, even if there would not be consumer confusion.*

Fair Use Defense

The use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and *used fairly and in good faith only to describe the goods or services of such party, or their geographic origin*...

Music - copyrights

There are two separate and distinct copyrights that arise in the context of music: 1) Copyright in the underlying musical composition (sheet music) 2) Copyright in the sound recordings (masters)

Statutory Trademark Rights and Incontestability

These are rights from the trademark statute that was passed under the commerce clause. Enterprises that successfully register and maintain their trademarks with the U.S. Patent & Trademark Office receive significant benefits. The most important of these rights are *constructive notice* under section 22 (15 U.S.C. § 1072) and *incontestability* under section 15 of the Lanham Act (15 U.S.C. § 1065). In effect, this pair of provisions permits a federal registrant to obtain preemptive rights over any *post-registration* users of confusingly similar trademarks.

William R. Warner & Co. v. Eli Lilly & Co.

This highlights the difference between trademark rights as distinguished from patent protection, which does provide an exclusive right to make, use, sell, or offer to sell the product itself. In other words, *trademark law focuses on deceptive marketing*, but does not provide exclusive rights to sell the product itself. Trademark law *does not offer exclusivity with regard to selling the product itself. It only protects the brand or trademark*

Common Law Trademark Use: Blue Bell, Inc. v. Farah Manufacturing Co.

This is for when neither party has a federal trademark. Illustrates common law "use". Two companies using the mark "Time Out" for men's clothes. Both parties market their goods on a national scale, so a joint utilization cannot work. Issue: which party established prior use of the mark in trade? Careful examination of the record discloses that Farah shipped its first order of Time Out clothing to customers in September of 1973. Blue Bell, approximately one month behind its competitor at other relevant stages of development, did not mail its Time Out garments until at least October. Though sales to customers are not the sine qua non of trademark use, they are determinative in the instant case. These *sales constituted the first point at which the public had a chance to associate Time Out with a particular line of sportswear* Farah wins.

Faur use trilogy - 3 important cases

Three Supreme Court Cases on the Subject 1) Sony Corp. v. Universal City Studios - *Time Shifting is permitted* 2) Harper & Row v. Nation Enterprises - *Even some uses in a favored category might not be considered fair uses* 3) Campbell v. Acuff-Rose Music Inc. - *Parodies are almost always permitted*

Reduction to Practice (RTP)

To be eligible for a patent, you have to "reduce your invention to practice" *Actual RTP* - physically making and using the invention *Constructive RTP* - description of an invention that is sufficiently detailed to allow Phosita to make it on her own This is your patent application - written description and drawings Enablement (hurdle #3)

Substantial Similarity

To determine whether an instance of copying is legally actionable, a side-by-side comparison must be made between the original and the copy to determine whether a *layman would view the two works as substantially similar* Whether two works are substantially similar is a question for the jury itself to determine by examining the actual works in question. Where a high degree of access is shown, courts require a lower standard of proof of substantial similarity. Swirsky v. Carey, 376 F.3d 841, 844 (9th Cir. 2004)

Elements of Copyright Infringement

To establish a claim for COPYRIGHT INFRINGEMENT, a plaintiff must prove: (1) *ownership of a valid copyright* and (2) *Actionable Copying* - the defendant copied constituent elements of the plaintiff's work that are original. To establish ACTIONABLE COPYING (i.e., the second element), a plaintiff must prove: 1) *factual copying* and 2) *substantial similarity*

Trademarks Review

Trademarks Review

Trademark - basics

Two *identical marks can coexist* so long as the goods and services are *not related* Trademarks are *earned through use in commerce* - You show that consumers associate the mark with the goods or services There are *two categories of trademarks*: COMMON LAW trademarks and FEDERALLY REGISTERED trademarks. - Anyone can tack on TM to anything and put the world on notice that they consider their word, phrase, or image to be a trademark. - ® is used to identify federally registered trademarks *Two users of the same trademark* Senior User - First to start using the trademark Junior User - Begins using the trademark after the first user

Trade Dress: Two Pesos v. Taco Cabana

Two Pesos entered the Texas market later, opening restaurants that were deliberately and strikingly similar to the overall appearance of a Taco Cabana location. Jury found that Taco Cabana had ownership of trade dress in its restaurants, that the trade dress was not functional, that it was inherently distinctive, that it lacked secondary meaning, and that the defendant had caused a likelihood of consumer confusion as to the source or association of the restaurants' goods and services The 'trade dress' of a product is essentially its total image and overall appearance. It involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. The Supreme Court agreed and held that it was protectable, so long as it was *not functional*

Trademarks: Infringement

Two companies are using the same trademark in commerce. One company sues the other company for trademark infringement with the goal of stopping the other company's use of the trademark. There *has to be consumer confusion* otherwise both companies can continue to operate. - Unless one trademark is a famous mark and dilution is appropriate; consumer confusion does not play a role in dilution. Who was first? These are just some examples for reference and context: If the junior user sues a senior user: - Senior user may get geographically locked in if the junior user has a federal trademark. -- Think of Burger King. - If there is no federal trademark, whoever was first user in commerce probably wins. -- Think of Blue Bell pants case. If the senior user sues a junior user: - Junior user could get completely shut down. -- Ed Sullivan case, for example.

Commerce Clause

U.S. Constitution, Article 1.8.3 [The Congress shall have Power] To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes TRADEMARKS

IP clause

U.S. Constitution, Article 1.8.8 [The Congress shall have Power] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. 1.8.8: Patents and Copyrights - Rewarding authors and inventors for their creations by allowing a limited monopoly - Incentivizes creativity and allows us to advance as a society - People will invest time and resources if they can protect the investments

Trade Dress

We have already discussed this some with Two Pesos v. Taco Cabana The product packaging cases, of which there are many, are relatively uncontroversial. This lack of controversy may reflect the fact that there are many packaging choices available to competitors and ordinarily no plausible claim that the packaging serves functional purposes. *Product packaging is largely an extension of ordinary trademarks found on products such as logos and brand names* Accordingly, not only is the name Coca-Cola protectable, but so is the red-and-white swirl packaging of its producer's cans and the distinctive shape of the old-fashioned Coke bottle.

What is and is not patentable?

Whoever invents or discovers any *new and useful*: -process, -machine, -manufacture, or -composition of matter, - or any new and *useful improvement* thereof, ^ may obtain a patent for it, subject to the conditions and requirements of this title. New (novel, not obvious) and useful (enablement - made it work) Unpatentable subject matter - Laws of nature - Natural phenomena - Abstract ideas

Uncopyrightable Material

Words and Short Phrases Copyright law does not protect names, titles, or short phrases or expressions. Even if a name, title, or short phrase is novel or distinctive or lends itself to a play on words, it cannot be protected by copyright. The Copyright Office cannot register claims to exclusive rights in brief combinations of words such as: Names of products or services Names of businesses, organizations, or groups (including the names of performing groups) Pseudonyms of individuals (including pen or stage names) Titles of works Catchwords, catchphrases, mottoes, slogans, or short advertising expressions Listings of ingredients, as in recipes, labels, or formulas. When a recipe or formula is accompanied by an explanation or directions, the text directions may be copyrightable, but the recipe or formula itself remains uncopyrightable.

Public Domain

Works in the public domain are those whose intellectual property rights have expired, have been forfeited, or are inapplicable

115 in English

You may *cover a song and you will automatically be granted a compulsory license*. When you cover a song, you are performing the underlying composition. You may also license a song for digital distribution. You do not need permission but you do *need to notify the © holder and pay the mechanical royalty* The cover artist will not own the © to the underlying musical composition but will own the © to the audio recording

Sampling (music)

You may not sample another's music under any circumstances. Period. - This is infringement of the sound recording and is not allowed. - You can do whatever you want if you have a license but Copyright law does not allow for any use of another's sound recordings without permission.

Trademarks: Registration with USPTO

You want to get your trademark registered with the federal gov't. Question: Is there any other trademark on the federal register that would be confusingly similar to consumers as to the source or origin of the product or service? Restated in more English: *Does any other company have a trademark registered that would make consumers think the two products actually come from the same company?* Example: Delta Airlines and Delta Faucet? No Hypo 1: McDonald's Restaurant and Señor MacDonaldo's Burritos? Yeah, probably. Hypo 2: Microsoft and Micro Software Solutions? Definitely. You compare the *similarity in the trademarks AND the similarity in the goods and services* Even if you get a trademark registration, you can still be sued for trademark infringement.

Statute of Limitations

b) Civil Actions - No civil action shall be maintained under the provisions of this title unless it is commenced within *three years after the claim accrued.*

Fair use elements

factors to be considered shall include— (1) the *purpose and character* of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the *nature* of the copyrighted work; (3) the *amount and substantiality* of the portion used in relation to the copyrighted work as a whole; and (4) *the effect of the use upon the potential market* for *or value* of the copyrighted work. Under this theory, infringement has occurred. However, the infringer is doing something permissible. *Favored purposes:* criticism, comment, news reporting, teaching, scholarship, and research.

Actionable

furnishing legal ground for an action Something sufficient enough sue for; the law provides a remedy for what happened