Intellectual Property

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Diamond v. Chakrabarty

"Anything under the sun made by man" Patentable subject matter has to be the work of man

Trade Secret Definition

"Trade Secret" means information, including a formula, pattern, compilation, program, device, method, technique or process, that: (1) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; AND (2) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. *Burden of proof on party asserting the trade secret

Doctrine of Equivalents

It says you can still infringe even if, when you compare your invention to a patented one, the two aren't precisely identical. The differences, however, are so trivial and insubstantially different that they're basically the same.

Rationale for Patents: economic

The patent is what keeps the selling price above a certain level such that, if continued to be sold at that price, you will make a profit. It gives you monopoly power for a 20 year time period so you can set any price you want for that product, enough to recoup your initial investment.

Abandonment

What does it mean to abandon a mark? - If a word or symbol is a mark (distinctive) because it evokes in the consumer's mind the producer, not just the product, what do you think abandonment means... - ... When it no longer can indicate the producer. How can you abandon a mark? • Willy-nilly licensing without exercising control over product quality ("naked licensing" or "naked transfers") - Why is that abandonment? • Genericity • Non-Use: 3 years of consecutive non-use (with intent not to resume use) creates a rebuttable presumption of abandonment - Explain why we include "intent not to resume use"? What examples can you think of where non-use is not abandonment?

Trademarks - Market Specific

You can get a TM of BASS for beer because bass has nothing to do with beer. But Bass is also a shoe company. So bass can be TM'd when it doesn't relate to the thing it means. There's an argument of: TO WHOM is it generic? It becomes generic when the people using the word refer to the act. Highlights the key piece of evidence in cases like this: CONSUMER SURVEYS. You can Xerox a paper on an HP copier.

Trademark Defenses

- Descriptive fair use - Nominative fair use - Use in comparative advertising. - Use in parody, criticism of owner of mark. - For news reporting, commentary - Non commercial uses

Substantive Requirements

*Patentable subject matter*: human invention is the key. *Usefulness* *Novelty* *Non-obviousness* Words in a patent application are given their plan and ordinary meaning to one of skill in the art.

Trade Secrets - Purpose

"trade secrets" allow holders of secrets to share the secrets in a controlled way with confidence that the law will protect the holders from invasive behavior by others, called "misappropriation."

Trademarks - 4 Categories of Potential Marks

(1) Generic: a word, phrase that says exactly what the product is *Never a mark.* EX: Company sells computers and you call yourself Computers. (2) Descriptive: identifies or describes some or part of the product *TM'able only with secondary meaning (if over time word has gone from describing product from identifying producer).* EX: Your company sells modems and you call yourself Fast. Your company sells televisions and you call yourself Sharp. (3) Suggestive: alludes to the product *Yes, TM'able.* EX: Your company sells suntan lotion and you call yourself Coppertone. Your company sells juice and you call yourself OceanSpray. (4) Arbitrary or Fanciful: no relation to the product characteristics whatsoever *Yes, always TM'able.* EX: Your company sells computers and you call yourself Apple. Your company sells photography equipment and you call yourself Kodak.

Trade Secrets Elements

(1) how easy it would be for someone to discover secret through proper means when the purported trade secret is relatively simple information, we face a higher risk of wrongly mistaking lawful competition for misappropriation. (2) focuses on steps owner took to keep a secret. Important for following reasons: • Proves subjective belief that info was valuable/worth protection • Intensity of effort proves secret's relative value • More effort to keep secret, more likely to stay a secret

Trademarks - Major Takeaways

(1) telling us that TM law is about consumer psychology, and (2) drawing a border around TM law, keeping TM law from bloating copyright and patent law.

Factors relevant to the public accessibility of printed publication

(1) the length of time the display was exhibited, (2) the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and (3) the simplicity or ease with which the material displayed could have been copied.

*You cannot Copyright Ideas* They are not fixed and tangible forms of expression Policy: Cannot prove who came up with it first, similar expressions can occur differently

Misappropriation of Trade Secrets

(i) Acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or (ii) Disclosure or use of a trade secret of another without express or implied consent by a person who (A) used improper means to acquire knowledge of the trade secret; or (B) at the time of disclosure or use, knew or had reason to know that the knowledge of the trade secret was: (I) Derived from or through a person who had utilized improper means to acquire it; (II) Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or (III) Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or (C) before a material change of his [or her] position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake. Misappropriation is the COA for liability with stealing a trade secret. In order to apply misappropriation rule, must close read the statute and determine the elements of the offense. Facts apply to each element of the offense.

- Originality - Fixation (in some tangible means of expression)

Secondary Liability - 2 Types

1. Contributory Infringement 2. Vicarious Liability

2 Types of Dilution

1. Dilution by BLURRING: strong mark's signaling power is weakened because you see the similar mark on some unrelated, different product. Loss of signaling power. 2. Dilution by TARNISHMENT: when you downgrade the goodwill you associate with a mark/producer because you saw a similar mark on a bad product. Loss of goodwill.

Factors to consider when analyzing fame

1. Duration, extent, reach of advertising and publicity 2. Extent and reach of goods/services offered under the mark 3. Actual recognition of the mark 4. Registration

TS MISAPPROPRIATION EXAM ANSWER METHOD***

1. Establish TS (1) and TS (2) with sub-elements and relevant facts for each element 2. Establish misappropriation 3. Misappropriation via what...? (i.e. improper means) 4. Cite cases a. If first impression, Go to statute

Patentable Subject Matter - Processes

1. First, are processes are patentable at all? Why? o Yes, b/c a process can be very unique (Diamond v. Diehr) o Time and effort it takes to make something vary based on the process used o Developing a process can make production more efficient - faster and cheaper, also safer for workers o The product can also be safer, cheaper, and more environmentally friendly 2. Second, what about computer processes make them patentable? o Computers are pervasive, impossible to not allow patents o Computer processes have to be created by a human o The Federal Circuit used the "useful, concrete, and tangible result" test for computer processes

Doctrine of Equivalents - 2 Applications

1. Insubstantial differences test 2. Function-way result: yes to equivalence if the element at issue does basically the same thing, in basically the same way, to get to the same basic result (the term is "substantially")

Patent Prosecution Process

1. Inventor 2. Application (includes written description, drawings, etc.) 3. Patent Examiner Reviews it (can take a while) 4. Response from the PE 5. Inventor responds with amendments (back and forth) 6. Eventually, may get patent. (20 years if you pay your fees) 7. If not, appeal to admin appeals board and then ultimately, federal circuit/supreme court

SOLVING A WORD PATENT PROBLEM

1. Look within patent (usage) 2. Dictionaries 3. Trade Custom

What are "proper means"?

1. The difference is between possible to reverse engineer and doable 2. Prove the ease/difficulty, cost, time through an expert or evidence 3. The easier it is to reverse engineer something, the less likely it is going to be entitled to trade secret protection

1. Utilitarian 2. Lockean labor theory 3. Personhood theory

Rule of patent construction is that words get their "plain and ordinary meaning as understood by a person of ordinary skill in the art and when read in context of the specification and prosecution history" except when...

1.The patentee acts as his or her own lexicographer 2.The patentee expressly disavows the fact that his or her product includes a certain element, specification

PATENTABLE SUBJECT MATTER

35 U.S.C. § 101 Whoever invents or discovers any new and useful process art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Old Patent Statute

35 USC Section 102 - *for any patent applications filed before 3/16/13*

New Patent Statue

35 USC Section 102 - for any patent applications filed after 3/16/13

Confusion Under § 43(a)

6 Factor Test 1. Similarity between the marks 2. Intent of infringer 3. Evidence of actual confusion 4. Marketing 5. Degree of care of consumers 6. Strength of marks

Trademarks - Confusion Factors

8 Confusion Factors 1. The strength of the mark 2. Similarity of the goods 3. Similarity of the marks 4. Evidence of actual confusion 5. Similar marketing channels? 6. Consumer sophistication and likelihood of care 7. D's intent 8. Expanding product line using the marks? When you have a strong distinctive mark, consumer confusion more likely, more likely that junior user will feed off senior user when consumer associated new product with older product.

A copyright protects a literary, musical, dramatic, choreographic, pictorial or graphic, audiovisual, or architectural work, or a sound recording, from being reproduced, etc. without the permission of the copyright owner.

35 U.S.C. § 103(a)

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. *103(a) of the Patent Act is unhelpful. It only tells us that obvious things are not patentable. It doesn't tell us (1) what is obvious and what isn't, and (2) how to determine.*

Infringement - Definition

A prima facie case of copyright infringement is typically stated as consisting of two basic elements: (1) ownership of a valid copyright [OWNERSHIP/VALIDITY] (2) an unauthorized exercise of a § 106 right [CIRCUMSTANTIAL PROOF]

Area of copyright/patent overlap: when you design something that is useful. Patent = something original and useful. Copyright = something original and fixed in a tangible manner. You can design something that has a particular purpose (i.e. belt buckle or a lamp base). The Rule: if a pictorial or graphic feature can be identified separately from an exist independently of the useful thing, then you can obtain a © on it.

Constitutional Authority for the IP Sector of Law

Article 1, Section 8, Clause 8 of the Constitution 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... Societal Benefit, incentive to create; Allows Congress to give temporary ownership to creator to determine price pt.

Community for Creative Nonviolence v. Reid (CASEBOOK 390) - Analysis

Analysis * work for hire can arise through one of two mutually exclusive means, one for employees and one for independent contractors... To determine if employee over independent contractors, consider..... • hiring party's right to control the manner • means by which the product is accomplished. • skill required • the source of the instrumentalities and tools • the location of the work • the duration of the relationship between the parties • whether the hiring party has the right to assign additional projects to the hired party • the extent of the hired party's discretion over when and how long to work • the method of payment • the hired party's role in hiring and paying assistants • whether the work is part of the regular business of the hiring party • whether the hiring party is in business • the provision of employee benefits • the tax treatment of the hired party Rule If the work is for hire, "the employer or other person for whom the work was prepared is considered the author" and owns the copyright, unless there is a written agreement to the contrary. Outcome Not employee...independent contractor Precedent: WORK FOR HIRE-- agency principles.

Trade Secrets - Limited Secrecy

Absolute secrecy makes it difficult for the information holder to exploit the information's commercial value; the possessors of secrets often need to share those secrets with others to exploit the secret effectively or efficiently.

Thomson v. Larson (CASEBOOK 383) - Analysis

Analysis Not enough proof on mutual intent to move to consider factual indicia of relationship: Decision-making authority (Larson retained) Billing (unequivocal) Written Agreements with Third Parties (Larson alone entered agreements as sole author) Additional Evidence (Larson knew co-authorship with Aaronson but never applied to Thomson who was just dramaturge) History of refusing collaboration. Thomson statements reflect "flattery" to work with him Outcome No Co-Authorship Precedent: *JOINT-AUTHORSHIP Most important factor in determining authorship is INTENT that work of several be turned into one. When that is not helpful, look to (1) Did each make independently ©able contributions? And (2) If so, did the parties fully intend to be considered co-authors*. Evidence to prove (2) • how the contributor regarded himself • who had decision making power • right to enter into contract

Article I, Section 8, clause 8 of the Constitution: Congress has the power to "promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

Section 106 Rights: "Public" ...Public performance/public display.

But what is public? Two answers: (1) If the place is a traditionally public place, a movie theatre, an atrium, an open lot -it's public. (2) If the place is a traditionally "non-public" place -something else, like a home or an event space with invited guests -the size of audience matters. Think about the implications of basing "publicness" entirely on the size of the audience. Positives? Negatives?

What about information that contains "readily ascertainable" elements?

Can still be TS because taken together, the info is unique, not previously available

What are "reasonable efforts" to keep something secret?

Cases provide examples of sufficiency/insufficiency. 1. Employees signed confidentiality agreements (Cemen Tech p. 41) 2. Claimed as trade secrets (Id.)

What is the principle of patentability?

Combine enablement (clear enough to make/use, no undue work, experimentation), processes cases & DNA case Myriad

Copyright Originality- Lower threshold than novelty requirement in patent Non-obvious requirement on top of novelty proves that patent process is even harder than copyright.

Dilution - Definition

Dilution happens when products are different and marks are similar. (Now in Lanham Act § 43(c)).

Trademarks - Confusion Rationale

Distinctiveness and confusion in trademark law are two sides of the same coin: Distinctiveness makes something TM'able, confusion (or dilution) ruins it. Both depend on assumptions about consumer psychology. This gives TM law an inherent uncertainty. The lawyer is then tasked with mitigating uncertainty. Are we making assumptions about what's going on in consumers' heads? If so, are they correct? Is that an adequate basis on which to rest trademark law? Does the law integrate ways to specify, rationalize, or prove the assumptions about how people think?

Brenner v. Manson (CASEBOOK PAGE 187)

Facts * 2 patent apps for same exact process for steroids. Legal Q * Whether utility must be already proven for patentability. Brenner Argument * Cannot patent before use is discovered because stagnates research because patent controls area of knowledge. One goal of patent law is to keep knowledge open so this is inconsistent w/policy concerns. Manson Arg * Process has specific utility (similar to compound that resulted in tumor-inhibiting effect in mice). Produces the intended product and the compound yielded belongs to a class of compounds now the subject of serious scientific investigation. Outcome * NO, NOT patentable. Did not satisfy the utility requirement because the patent applicants did not show that the steroid served any practical function; "a patent is not a hunting license." A patent is a compensation for a successful conclusion. We don't give you a monopoly to continue investigation with exclusivity. We give you monopoly once you're done. Precedent: (Namely in science/medical/research fields) The thing itself has a specific, substantial utility. The balance/trade is not just monopoly for disclosure, then; it's monopoly in return for something useful.

International News Service v. Associated Press (CASEBOOK PAGE 6)

Facts * INS would take AP dispatches news bulletins, paraphrase them and distribute them as news Legal Q * Does a news service own IP rights to its news stories that it posts, such that it can prevent a competitor from disseminating it? INS Argument * Once released, news is common possession/fair use to all who may access it AP Argument * INS making money off of work they did not do; must protect AP labor Outcome * Held for AP. INS must gather own news. Precedent: When a competitor is seeking profit, unfair advantage in competition is an unauthorized interference with normal and legitimate business practices.

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC - Overview

Facts * Louis Vuitton Malletier S.A. (LVM) (Plaintiff), a manufacturer of luxury goods, claimed that Haute Diggity Dog, LLC (Defendant), a pet products manufacturer, among other things, diluted Plaintiff's trademarks by creating and selling a line of "Chewy Vuiton" dog chew toys that spoofed Plaintiff's handbags and trademarked designs. LV Argument Any use by a third person of an imitation of its famous marks dilutes the famous marks as a matter of law. Dilution of tarnishment because dog could choke on toy.

Thorner v. Sony Computer Entertainment America LLC (CASEBOOK PAGE 134)

Facts * Thorner accused Sony of infringing claims of patent for video game controller that gives tactile feedback Legal Q * What does the patent mean by "flexible"? What does the patent mean by "attached"? Thorner Argument * "Flexible" means capable of being flexed. And if that's true, this patent infringes because it is trying to be too broad, trying to control flexible devices. But I already have control over flexible devices. // "Attached" includes interior and exterior. So infringement because even though my attachment is inside and yours is outside, it doesn't matter--still violates patent. My patent covers attachment, regardless of where. Sony Argument * Flexible should have ordinary meaning of "capable of being flexed with ease." Thorner's is rigid. Two different items. Distinguishes the patents as different from each other. // Your patent uses the word "embedded" which means "attached" is inside and "embedded" in outside. So your patent is limited and this is not infringement. "Attached" means to the outside, otherwise would be "embedded" Outcome * Term "attached to said pad" should be given its plain and ordinary meaning which encompasses either internal or external attachment. Although you can act as own lexicographer, this patent did not rise to that level. Evidence in industry publications, nature of Thorner's patent relies on "attachment" as inside AND outside, "embedded" is sub-category of attached. // No issue of material fact on flexibility issue. Held for Thorner. Application of Plain and Ordinary Meaning in Patent.

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

Facts * Two sellers of permanent make-up used the phrase "micro color" in marketing materials. KP Permanent Make-Up, Inc. (Plaintiff) claimed it first used the phrase while Lasting Impression I, Inc. (Defendant) had an incontestable trademark for the phrase. Plaintiff sued Defendant in a declaratory judgment action and Defendant counterclaimed for trademark infringement. Plaintiff moved for summary judgment on the counterclaim. Outcome * In a trademark infringement action, the plaintiff has the burden of proof to show that a fair-use defendant's use of mark is likely to cause consumer confusion. The fair-use defendant does not have to demonstrate the opposite proposition, which is that confusion is unlikely. Some confusion is likely to occur simply because the mark is descriptive and that is a risk undertook by the registrar of the trademark. If the confusion leads to an objectively unfair use, the courts may then consider it infringement. Plaintiff does not have to bear the burden of proof in providing evidence that confusion is unlikely because it is the trademark infringement defendant. Precedent: Plaintiff has the exclusive burden to demonstrate likelihood of confusion, and then defendant's burden is only to show the affirmative defense of fair use.

Smith v. Chanel, Inc.

Facts * Ad that says: smells like Chanel No. 5 but it's cheaper. Chanel sues for infringement of the TM through dilution. Legal Q * Can a legit, open copier of an unpatented product with a TM use that TM in advertising? Smith Arg * People who want Chanel will pay for it & status symbol. We're just extending fragrance to lower market. Chanel Arg * Chanel worked hard to associate Chanel with ELITE, EXCLUSIVITY to keep it at certain level of clientele and this erodes it. Outcome * This is ok. Because people who buy Chanel at Saks is not the same person who will buy $5 knockoff because as soon as consumer sees knockoff at Saks, that erodes Saks business. So the consumer is NOT the same. So court is not concerned about this because no possibility of confusion or dilution here; totally different market. Chanel did not plan to go into JCPenney market. So not applicable to TM law. Precedent: * Cases like this that encourage high end brands to create lower level brands for Target etc. because if you started to go into these markets, misuse or knockoff of this market erodes your potential goodwill in a lower market.

KSR International Co. v. Teleflex Inc. (CASEBOOK PAGE 238)

Facts * Combined sensor and pedal to make new and improved pedal. Legal Q * Non-obvious if combination of 2 already existing inventions? KSR Arg * New and not obvious because not previously combined. Teleflex Argument * Patent for new pedal is invalid: adding a sensor, in a world where cars operate via computer technology, is obvious. Infringes on Teleflex patents. Outcome * Fails non-obviousness requirement because this was the natural next step for the industry. Eventually all would have gotten there because innovation is leading towards car operation via computer tech. Precedent: When there are simple steps to create something new from old things, it is likely obvious

Amoco Production Co. v. Laird (CASEBOOK PAGE 29)

Facts * Amoco hired Laird who found evidence of oil. Legal Q * What constitutes "readily ascertainable" information for the purposes of a trade secret? Amoco Argument * Information appearing on their map, the product of an extended and costly exploration effort, is not readily ascertainable and thus constitutes a trade secret Laird Argument * Info provided by the map could have been duplicated by other economically feasible means, so it is readily ascertainable & not a trade secret. Anyone could have contracted Airborne and hired it to perform the microwave radar survey. Amoco failed to show that any other form of prospecting, such as satellite imaging, could not have generated the same info. Outcome * Protectable as a Trade Secret. Amoco utilized easily accessible information already within the public domain but undertaking was unique to the marketplace. Policy * Promote maintenance and standards of commercial ethics and the encouragement of invention Precedent: Factors to consider in evaluating "readily ascertainable" include time, effort and expense required of a D to acquire/reproduce an alleged trade secret info by other proper means. There is no economic feasibility standard.

Titanium Metals Corp. of America v. Banner (CASEBOOK 201)

Facts * Application for patent of a three-mineral alloy. Same alloy previously cited in published Russian article 5 years before filing date, but cited different properties of same alloy. Legal Q * When is a claim "anticipated" for the purposes of a new art that is patentable? Titanium Arg Disclosure of characteristics of alloy is different and not previously cited. "Good corrosion resistance against hot brine" was not mentioned in Russian article. Banner Arg * Alloys not new art. Were previously cited in Russian article. Although article does not cite utility at issue in this patent, it does cite properties which means authors had to make the alloys to obtain the data. So not new. Outcome * NOT patentable. Not new art. Plus, the single prior art alloy anticipates claims that recite a range of values for the ingredients. Precedent: Recitation of a new property that previously existed but may not have been discovered, is not a new art.

Thomson v. Larson (CASEBOOK 383) - Overview

Facts * Aronson & Larson joint authors of Rent. Aaronson gave Larson permission to develop play on his own. Deal said that rock play would name Larson and original concept/lyrics by Aaronson but Aaronson not considered co-author. Larson went on, hiring Thomson as a dramaturge and dramatically changing the play. Larson died and Thomson contacted estate for dramaturge credit and co-authorship (royalties). Brought suit claiming co-authorship and said she never relinquished her right/license for the work. 1. Original agreement with Billy Aronson 2. Larson "vehemently" rejected bookwriter 3. Emphasized himself being the only author 4. Contract with dramaturg, "in full consideration of the services" 5. Intensive cooperation/collaboration, lots of work involved 6. The play was VERY different after they worked on it 7. Author agreement gave Larson final say, control, billing as "sole author Legal Q * Whether or not a Joint-Art... Thomson Arg * Mutual Intent requirement only when limited contributions and she made major contributions. Her major contributions prove that she was co-author.

Association for Molecular Pathology v. Myriad Genetics, Inc. (CASEBOOK PAGE 178)

Facts * BRCA testing for mutation of genes causing breast cancer Legal Q * Is isolating DNA patentable? Is cDNA patentable? Assoc. Argument * Myriad found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention. Myriad Arg * Manipulating BRCA DNA triggers "right to exclude others from making" its patented composition Outcome * Naturally occurring DNA is not-patentable when isolated. Complimentary DNA is patentable because it is not naturally occurring. Synthetic strand of DNA that is the same sequence of nucleotides, but is human-created. Isolating naturally occurring DNA is not patentable, but creating your own DNA is patentable. Precedent: the fact that something is groundbreaking does not make it patentable. You have to patent the discovery process, not the discovery itself. Naturally occurring matter is not patentable until passes human-creation threshold.

Starbucks Corp. v. Wolfe's Borough Coffee, Inc. - Overview

Facts * BlackBear started selling roast called Charbucks Starbucks Arg * District Court should have ignored the term "Mis-ter" or "Blend" before or after "Charbucks" in assessing the "degree of similarity" factor because those terms are generic and "too weak to serve a brand-identifying function; Submitted survey of association and negative reaction to Charbucks.

Cariou v. Prince

Facts * Cariou copyrighted photos in Prince's exhibition catalogue where he altered images greatly Outcome * FAIR USE except 5 remanded (1) different aesthetic and approach (seen and testified to); reasonably perceived as transformative; didn't just present differently but added something new (2) cannot say more than necessary was used Precedent: Secondary use comment not required for fair use; factor 1

E.I. duPont deNemours & Co. v. Christopher (CASEBOOK PAGE 51)

Facts * Christophers hired by 3rd party to take aerial photos of the duPont facility. Secret process to produce methanol was photographed. Legal Q * What must exist to prove misappropriation? Whether aerial photography of plant construction is an improper means of obtaining another's trade secret... duPont Argument * Christophers had wrongfully obtained photographs revealing DuPont's trade secrets, which they then sold to a third party. The under-construction plant was a TS. DuPont claimed aerial photography was improper means. Cites invasion of privacy case. Any expert could deduce their process by viewing the photos. Christopher Argument * Not a TS. And even if a TS, public airspace no misappropriation because for an appropriation of trade secrets to be wrongful there must be illegal conduct. So claimed proper means. Outcome * Illegal conduct is a subset of improper means. Does not have to be illegal to be improper. Unreasonable to expect duPont to protect area under construction from aerial photographs. Too expensive and burdensome. Motive speaks to their impropriety. Anything that short-circuits the work (time, money effort) to discover secret itself is improper means. Precedent: *Inspection and analysis constitutes proper means. Discovery through reverse engineering and own independent research is also proper. When the labor process is avoided and the secret holder takes steps to ensure secrecy, it is improper.*

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (CASEBOOK 260)

Facts * Festo owns two patents for rodless cylinder that relies on magnets to move objects in conveying system. Amended patent application three times regarding the lip of the device and the outer shell material. SMC entered market with similar device that uses 1 ring instead of 2 like Festo. Lip and shell material differ. Legal Q * Does PHE bar all infringement actions against equivalents? Festo Arg * Device so similar that it falls within infringement under Doctrine of Equivalents. Shoketsu Arg * Festo is estopped from making that claim because prosecution history of its patents. By amending, narrowed the claim and surrendered alternatives upon which SMC now makes its device. Outcome * No, Certainty. Complete bar does not adequately balance the interests. Narrowing only tells us what the invention isn't not what the invention is, or what is equivalent to the invention. When a patent applicant makes a change he admits the difference is material. Where he decides to amend instead of appeal and retain design, he admits that previous is unpatentable and abandons original claim. No difference if amendment was made to avoid prior art or to comply with patent requirements. Estoppel applies. However, it does not stop equivalents from being claimed. Unforeseeable equivalents may exist. Remanded. Application of Prosecution History Estoppel. Precedent: The patentee has to show that his amendment should not give rise to estoppel and show that his amendment does not surrender the particular equivalent.

Fonovisa, Inc. v. Cherry Auction, Inc. (CASEBOOK 488)

Facts * Fonovisa is music recording co. Cherry Auction operates swap meet. Vendors pay auction. Auction regulates venders and customers pay auction to attend. Cherry Auction knew vendors sell counterfeit recordings in violation of Fonovisa TM & ©. Local sheriff asked auction to provide info on infringement at auction. Auction agreed to but failed to comply & provide it. Legal Q * Did auction serve as a mere landlord-like entity while tenant infringed, or did auction contribute to the infringement? Fonovisa Arg * Vendors occupied small booths within premises that auction controlled/patrolled. Cherry Auction had the right to terminate vendors for any reason so in turn, had ability to control activities of vendors on premises. Auction promoted swap meet & controlled access of customers to the area. Auction received financial benefit because daily rental fee by vendors, customer admission fee and parking/food/other services customers sought to purchase infringed recordings. Cherry Auction Arg * Financial benefits do not satisfy prong b/c commission, directly tied to sale of items, is required. Auction just like landlord. Swap meet doesn't provide anything more than space, rented. Ignore addt'l services. Outcome *Case law supports the Cherry Auction having control needed to establish vicarious liability. Auction has more control than a mere landlord-like entity. Auction gets substantial financial benefit from admission fees, concession and parking, all flowing directly from customers wanting to buy infringing items. So, direct financial benefit requirement satisfied. Sale of counterfeit music is the "draw" to the auction* Auction is CONTRIBULITORY in INFRINGING b/c difficult for infringing activity to take place without swap meet's support and services (space, utilities, parking, advertising, plumbing, customers). Provides environment for activity to occur. Precedent: * Contributory and Vicarious Infringement example

Cemen Tech Inc. v. Three D Industries, L.L.C. (CASEBOOK PAGE 40)

Facts * Former CTI employee left CTI to work for 3D. 3D came out with a very similar product as CTI's. Legal Q * What is "readily available" information and "reasonable efforts" eligible for TS protection? Determining economic value of the information that CTI identifies as its trade secrets CTI Argument * Our mixer, component parts, manufacturing processes, and customer and supplier information constitute trade secrets. We have processes and design features developed that are unique. Duration doesn't matter and the information was intended to be confidential; Employees signed confidentiality agreements, had patent agreements and cited other employee conduct. 3D Argument * Info on CTI's mixer is not a trade secret because readily ascertainable through reverse engineering. Difficulty in reverse engineering the device means that without trade secret info, unlikely it would have been done in that amount of time. Outcome * CTI took steps to keep such information confidential. CTI required its employees to acknowledge receipt of an employee handbook, which included a nondisclosure agreement. In addition, employees were required to sign a patent agreement. Granted trade secret protection. Precedent: "Readily available" must mean actually readily attainable. Potential for availability is not a consideration. Confidentiality agreements constitute reasonable efforts.

MGM Studios v. Grokster

Facts * Grokster & Streamcast has file sharing system. 90% of content on it was copyrighted works. After Napster, SC developed OpenNap, encouraging Napster behavior. Developed kit for advertisers with press articles relating it to Napter-type. Banner ads, urging adoption. Grokster did a bit less, but similar. Both have business models confirming principal object as downloading © works. No revenue from users, just from ads which become worth more with more users. No effort to filter © material. Grokster Arg * Free copying even of copyrighted works may be authorized by the rightholders. Potential noninfringing uses of their software are significant in kind, even if infrequent in practice. Some musicians gain new audiences by distributing copyrighted works free in P2P networks. Outcome (1) each company showed itself to be aiming to satisfy known demand for © infringement (Napster's market). SC internal docs made constant reference, advertised program to Napster users, same Napster concept except not just music (so worse). Grokster's name derived from Napster. (2) Neither company attempted to develop filtering tool to diminish infringement using their software. (3) Unlawful objective to use infringement to make money since infringement brings users, users bring ads and ads bring money. Precedent: *One who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties*

Board of Regents, University of Texas v. KST Elec.

Facts * Longhorn logo from University of Texas; inverted version of logo for energy product. University claims that company's use of the longhorn will detract from University's use. Legal Q * How famous is "famous"? University Arg Nationally broadcasted, regularly on TV UT helmet named #1 helmet logo; suggest recognizable Second most valuable football league in NCAA Team won several national championship In Rose Bowl watched by large audience SI cover with players On Wheaties boxes with logos Sell sponsorships Record for most royalties KST Arg * Niche kind of fame; only in sports community TM law does not care that team is good; just speaks to skill, not to fame Sponsorship sales just means strong business model; not to fame Wheaties box just means you were on a Wheaties box for like a wheat; does not mean generally famous Outcome *UT's evidence fails to demonstrate the extremely high level of recognition necessary to show ''fame''*

To determine if.... Invention - (Prior Art + Ordinary Artisan's Skill) = 0, consider entire picture.

If: Invention -Prior Art + Ordinary Artisan's Skill) + Commercial Success + Previous Failure + Unmet Need ------- 0 Then: NOT OBVIOUS

A&M Records v. Napster

Facts * Napster facilitates MP3 transmission between and among its users via peer-to-peer file sharing. Legal Q * Did Napster contributorily infringe? Napster Arg * Napster claimed Sony v. Universal to say it's protected. Just providing mechanism. Outcome * Napster had both actual and specific knowledge of direct infringement in its system. It could have blocked access by suppliers of infringing materials but did not. It could have removed the material but did not. Napster's future revenue was directly dependent on increases in userbase so financial benefit satisfied. Napster retains right to control access to its system, as cited in its policy. However, its control is limited. The system does not read the content of indexed files other than to check that they are in MP3 format. But since the file names are within the premises that Napster can police. So they were supervisors who did not stop infringement. Therefore, *CONTRIBUTORY INFRINGEMENT.* Precedent: Contributory infringement example

King of the Mountain Sports, Inc. v. Chrysler Corp. (CASEBOOK 608)

Facts * P sells hunting hear. Chrysler advertised Jeep as King of Mountain FOR NOW during promotion. KofM Arg * Likelihood of SPONSORSHIP confusion Chrysler Arg * No likelihood of confusion exists Outcome * Sight, sense, meaning and style all different No intent by D Not competitors; just sponsorship issue Degree of care not relevant in sponsorship Only 7 cases of consumer confusion *NO LIKELIHOOD OF CONFUSION* Precedent: Sponsorship Confusion Analysis

In re Klopfenstein (CASEBOOK 206)

Facts * Patent discloses methods of preparing foods comprising extruded soy cotyledon fiber ("SCF"). Claim also discloses that feeding it to mammals will lower their bad cholesterol and raise their good cholesterol. The fact that extrusion reduces cholesterol levels was already known. What was not known was that double extrusion increases the effect for stronger results. Cited in 14-slide presentation where notes were allowed and no handouts. Legal Q * Whether a reference represents a "printed publication." Pro Arg * Never disseminated or indexed so cannot count as a "printed publication" Con Arg * Just because dissemination or indexing indicates publication, it doesn't make them the only 2 indicators of publication. Key inquiry for publication is whether it's "publicly accessible." Outcome * NOT patentable. Shown for an extended period of time to members of the public with ordinary skill in the art of the invention. Notes and photos were allowed. Such a way where copying info would be easy for those exposed, especially considering long exposure time. So....Not patentable because accessible to public and therefore, a printed publication.

Beachcombers v. Wildewood Creative Prods. (CASEBOOK 212)

Facts * Patent for improved kaleidoscope. Legal Q * Whether circumstances prove" public use" Beachcombers Argument Bennett's kaleidoscope was not in public use. In control of Bennett. Wildewood Arg * Discussed with friends (via entry book), 20-30 guests, personal demonstration of device for feedback with no efforts to conceal. Guest/friend said distinctive characteristic was noted, that many looked and examined device and that Bennett never asked for it to remain a secret. Outcome NOT Patentable. Precedent: Social analysis conducted for consideration in whether in "public use"

Martek Biosciences Corp. v. Nutrinova, Inc. (CASEBOOK PAGE 139)

Facts * Patent for microorganisms that produce high levels of an Omega-3 fatty acid. Legal Q * Interpretation of the word "animal" in the patent to include humans or not. Martek Argument * Term "animal" includes humans AND non-humans, so D infringed on patent. *Plaintiffs often want broader/bigger definition and Defendants often want narrower definition. Lonza Argument * Considered in its entirety, it clearly limits the claim term "animal" to non-human animals so not infringement. Outcome * Martek used no words or expressions that manifestly exclude coverage of humans, and thus, it would be improper to override the patentee's express definition of "animal" to limit the scope of the claims. The patent does not clearly disclaim coverage of humans. Martek had explicitly defined the term "animal" in the '244 patent in a way that would include humans: "The term 'animal' means any organism belonging to the kingdom Animalia." Martek defined the term in the specification and that the term carried its ordinary meaning, in which case it included humans. On remand, the district court will need to consider whether the patent has been infringed under this broader definition. Precedent: Application of Plain and Ordinary Meaning. Written description requirement can be satisfied even if the scope of the claims is broader than the disclosure. An abandoned application does not establish reduction to practice.

Juicy Whip, Inc. v. Orange Bang, Inc. (CASEBOOK PAGE 192)

Facts * Post-mix beverage dispenser that looks like pre-mix beverage dispenser Legal Q * Does a patent have utility if it deceives the public? Juicy Whip Argument * Invention provides an accurate representation of dispensed beverage for the consumer's benefit while eliminating the need for retailers to clean their display bowls. Orange Arg * Deceives the public by making the beverage seem "fresher" Outcome * YES, Patentable. Utility has to confer public benefit. The invention at issue here altered one thing to make it look like another thing, which made the latter more sellable. Value in salability. *Precedent: An invention does not lack utility for patent purposes simply because it can fool the public, through imitation, in a manner that is designed to increase product sales.*

CDI Energy Services, Inc. v. West River Pumps, Inc. (CASEBOOK PAGE 36)

Facts * Prior Employees of CDI started West River and took client lists from CDI with them Legal Q * What is "not easily known" standard for information that is eligible for protection? CDI Argument * Made substantial investments to train employees, develop business in the area, and develop employee lists, demonstrating the value that the former employees took from CDI. i.e. extensive training. Took reasonable efforts to protect secrecy with confidentiality policies. West River Argument * Info is easily attainable because easily identifiable and business is locally operated. Record shows little effort of confidentiality by CDI. No confidentiality agreements signed by employees. Outcome * Client lists are not trade secret protected information. Precedent: "Not easily known" means cannot be easily ascertainable

Mayo Collaborative Servs. v. Prometheus Labs., Inc. (CASEBOOK PAGE 170)

Facts * Process that helps Dr's determine if a given dosage is high/low for particular Crohn's Patient Legal Q * Transformed non-patentable natural laws into patent-eligible applications of those laws? Mayo Arg * Patent claims exclusive right over human body. Prometh. Arg * Diagnoses research is expensive and to continue, should be protected by patent Outcome * NO, NOT Patentable. Still Natural Law. Processes involve routine activity previously engaged in by researchers in field. Policy * Patent would risk typing up use of natural law and inhibit future discoveries. *Law of Nature not patentable*

Qualitex Co. v. Jacobson Prods. Co.

Facts * Qualitex makes specific green dry cleaning pads. Jacobson cites 4 reasons why colors should not be protected by TM. Legal Q * Is a color TMable? Jacobson Arg (1) if the law permits the use of color as a trademark, it will produce uncertainty and unresolvable court disputes about what shades of a color a competitor may lawfully use. (2) colors are on limited supply (3) cites cases and (4) firms may already use colors as PART of a TM Outcome Courts can analyze color, when one color is a mark there are alternatives, functionality doctrine, cases cited by Jacobson were before Lanham Act, TM protection is more valuable than trade dress. Qualitex can TM their green *Precedent: A color can be TMable.*

Cartoon Network v. CSC Holdings

Facts * SDVR: record cable programming on central hard drives housed and maintained by Cablevision at a "remote" location. RS-DVR customers may then receive playback of those programs through their home television sets, using only a remote control and a standard cable box equipped with the RS-DVR software. *Involves Reproduction Right because copy to hard drive* • Special type of DVR (RS-DVR): users can store TV shows on a central HD in separate location • RS-DVR is much more like a VOD (Video On Demand) service, except users have to request something be recorded and can only view what they requested • The technology: uses buffers (which are just temporary storage places that allow stuff to go from A to B) that store data (the TV show) for 0.1 seconds, after which all data is erased and replaced by other data, and 1.2 seconds, respectively Legal Q Copyright Infringement; unauthorized copy of a copyrighted work? CN Arg While Cablevision has permission to make a copy of particular program (during original transmission), it doesn't have permission to take another copy of that show and have it available for time-shift viewing. CSC Arg Sort-of a copy but only for 1.2 seconds and then overwritten for another 1.2 seconds of another thing. Buffering! MAI Rule * Never addressed duration element of fixation, so you cannot assume that duration requirement does not exist. This case involved storage on RAM, but since the length was not an issue the only thing MAI can conclude for us is that loading programs onto RAM CAN result in a copy, but it doesn't say that it always has to. Outcome * Not fixed because data is not there long enough to be specifically fixed. 1.2 seconds of storage is not enough, it is transitory. "in the absence of compelling arguments to the contrary"

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

Facts * Samara Bros makes kids clothes. Walmart sent designer pics of Samara Bros clothes to copy. Legal Q * under what circumstances a product's design is distinctive, and therefore protectible Rule A mark is inherently distinctive if: (1) its intrinsic nature serves to identify a particular source or (2) mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning, which occurs when, in the minds of the public, the primary significance of it is to identify the source of the product rather than the product itself. Samara Arg * product-design trade dress can never be inherently distinctive. Outcome * Consumer predisposition to equate the feature with the source does not exist. Courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning. product's design is distinctive, and therefore protectible, only upon a showing of secondary meaning *Precedent: Product design requires secondary meaning to be distinctive.*

Campbell v. Acuff-Rose Music, Inc. (2 Live Crew)

Facts * Satire of original Pretty woman song Legal Q * Is parody fair use? Rule * The threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived (see 4 factors above)

Sony Corp. of America v. Universal City Studios, Inc. (CASEBOOK 492)

Facts * Sony Betamax made VTR capable of recording. Recorded Universal City's copyrighted programs. Accuse Sony of contributing to infringement by providing device. Legal Q * Is noncommercial home use recording of material broadcast over public airwaves fair use of copyrighted works or is it copyright infringement?... Is the Batamax capable of commercially significant NONinfringing uses? Sony Arg * Television programs that could be copied w/o objection from any copyright holder include sports, religious programs and educational programs. Betamax Consumer Surveys submitted as evidence. Universal Arg * Sony supplied means to infringe, encouraged activity through advertising device. Outcome *Sony did not even supply the programs to be infringed. Universal provided own programs. Sony only supplies equipment generally capable of copying, whether copyrighted or not, whether permitted or not. Only contact between Sony and the users who copy is disclosed in the Batamax manual, informing them that programs may be copyrighted. No proof that Sony's ads encouraged infringement activity* One potential use of the Betamax is private, noncommercial time-shifting in the home. Universal has no right to prevent other copyright holders from authorizing it for their programs. Precedent: * secondary liability for device manufacture example

Sony v. Universal

Facts * Sony manufactures and sells video recorders; Universal owns programming being recorded. Program is viewed in time-shifting so not taking away from original airing. Legal Q * whether the sale of video recorders to the general public violates any of the rights conferred upon respondents by the Copyright Act Rule * Challenge to a noncommercial use of a copyrighted work requires proof either that the particular use is harmful, or that if it should become widespread, it would adversely affect the potential market for the copyrighted work. Actual present harm need not be shown. Nor is it necessary to show with certainty that future harm will result. What is necessary is a showing by a preponderance of the evidence that some meaningful likelihood of future harm exists. Sony Arg * most © holders would not object; no harm to value Universal Arg * skewed ratings; live viewership will decrease; telecast rerun audience will decrease; theater/film rental will suffer Outcome * time-shifting for private home use is noncommercial and not harmful to original product. Harm is speculative and minimal at best; note societal benefit. Time shifting is fair use. Precedent: * Challenge of noncommercial use of copyrighted work

W.L. Gore & Assocs., Inc. v. Garlock, Inc. (CASEBOOK 213)

Facts * TEFLON tape, developed by a secret process, is sold prior to one year before Gore (P) applied for a patent on the process. Legal Q * Is it "public use" for a third party to commercially use a process in secret? WL Gore Arg Failure to meet the required clear and convincing standard under § 102(a) Garlock Arg * "Public use" was made over one year prior to Gore's application for patent. Outcome * Assuming that Cropper's machine used the patented process, there is no evidence that someone could figure out the process by viewing Cropper's machine, even while in operation. There is no evidence that by examining the tape product that the public could discover the process. NOT "Public Use" Precedent: It is not "public use" for a third party to commercially use a process in secret.

Two Pesos, Inc. v. Taco Cabana, Inc.

Facts * Taco Cabana very specific motif. Two Pesos very similar. Legal Q * Can trade dress be TM if distinctive and has secondary meaning? Rule * An identifying mark is distinctive and capable of being protected if it either: (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning. Petitioner Arg * trade dress has not acquired a secondary meaning shows conclusively that the trade dress is not inherently distinctive Outcome * proof of secondary meaning is not required to prevail on a claim under § 43(a) of the Lanham Act where the trade dress at issue is inherently distinctive *Precedent: Trade dress can be TM if inherently distinctive.*

Top Tobacco, L.P v. North Atlantic Operating Company, Inc

Facts * Top Tobacco sells to roll your own cigarette smokers. Top Tobacco insists that it has exclusive rights to the word "top" for use on tobacco in this market. "Fresh-Top Canister" on North American's can Top Tobacco Arg * "Fresh Top" is spelled and sounds the same as fresh "TOP", and thus it traipses through the list Outcome * "Fresh-Top Canister" on North American's can does not stand out and trade dress is distinctive. ZIGZAG can is "Fresh-Top Canister", with "Fresh-Top" serving as a phrasal adjective modifying the word "canister" rather than as the product's brand; Next to impossible to believe that any consumer, however careless, would confuse these products

Bilski v. Kappos

Facts * Trying to patent procedure for instructing buyers and sellers how to hedge risk Legal Q * Can patent can be issued for invention designed for the business world? Need physical transformation? Bilski Argument (1) it is not tied to a machine and does not transform an article; (2) it involves a method of conducting business; and (3) it is merely an abstract idea = application involved only mental steps that do not transform physical matter and was directed to an abstract idea Kappos Arg New method, with benefit to buyers and sellers Outcome NO, NOT Patentable. General concepts (abstract ideas), they are not new ideas, they are principles that are already out there Precedent: Limiting abstract idea to specific use is still not patentable. Machine-transformation test is not determinative and sole test for whether business invention is patentable (but still a useful & important clue).

Diamond v. Diehr (CASEBOOK PAGE 158)

Facts * Trying to patent process that cures rubber and uses a computer program that applies math formula to improve the molding of the synthetic fiber; Several steps in proposed process. Legal Q * Whether use of math formula is patentable SM. Diamond Arg Simply combined an unpatentable program with a conventional rubber curing press. Diehr Argument * Precise production requires constantly measuring the actual temperature inside the mold. Because temperature is inside, formula is used. New art = continuous temperature of mold inside, feeding of info into computer for recalculation of cure time and signal to open the mold. Outcome * YES, Patentable. Computer involvement doesn't mean unpatentable. This formula isn't being patented but its use in a process is. Mathematical Formula is not patentable but when in larger process, it is. *A process is patentable when it is very unique and makes production more efficient or benefits society*

Harper & Row, Publishers, Inc. v. Nation Enterprises (CASEBOOK 450)

Facts * Unpublished manuscript of Ford Memoirs scooped by The Nation; quoted 300-400 words/ 13%. Harper's contract with Time to publish not performed. Nation argues fair use defense. Nation Arg * Essential to reporting the news story; precise manner in which Ford expressed himself [were] as newsworthy as what he had to say"; the public's interest in learning this news as fast as possible outweighs the right of the author to control its first publication. Outcome * NOT FAIR USE; Nation theory would expand fair use to effectively destroy any expectation of copyright protection in the work of a public figure. Absent such protection, there would be little incentive to create or profit in financing such memoirs, and the public would be denied an important source of significant historical information. (1) Nation went beyond simply reporting uncopyrightable information. Actively sought to exploit headline value of its infringement, making a "news event" out of its unauthorized first publication; not merely the incidental effect but the intended purpose (2)Nation did not stop at isolated phrases but excerpted subjective descriptions and portraits of public figures whose power lies in the author's individualized expression. Such use, focusing on the most expressive elements of the work, exceeds that necessary to disseminate the facts. (3)Nation took the heart of the book; most powerful passages (4)Harper had promised time exclusivity in chapters which Nation used; SAME exact market Dissenting Op. * 300-400 words were about historical events; minimal use of literary form *Why is this not fair use? Expressive value of the excerpts and their key role in the infringing work*

Zatarain's, Inc. v. Oak Grove Smokehouse, Inc.

Facts * Zatarains makes fish-fri batter. Oak Grove has similar mix on market called fish-fry. Zatarains claims TM infringement. Zatarains Arg * Fish-fri is suggestive mark automatically protected from infringing uses by virtue of its registration; Oak could have chosen from dozens of other possible terms in naming their coating mix Oak Grove Arg * "fish fry" is a generic term identifying a class of foodstuffs used to fry fish and merely descriptive of the characteristic of the product; a number of companies other than Zatarain's have chosen the word combination "fish fry" to identify their batter mixes. Outcome FAIR USE 1) the dictionary definition, 2) the imagination test; 3) usefulness of the term to competitors, and 4) actual use of the term by other merchants, in finding that "Fish-Fri" was a descriptive term identifying a function of the product being sold. Precedent: 4 categories explained; Descriptive terms are not protected by trademark without a showing of secondary meaning in the minds of the public.

Community for Creative Nonviolence v. Reid (CASEBOOK 390) - Overview

Facts * an artist and the organization that hired him to produce a sculpture contest the ownership of the copyright in that work 1. Contract and money 2. He was an artisan with special skill 3. Provided his own tools 4. Did the work in his own studio 5. No supervision 6. Short amount of time for project Legal Q How to determine if someone is an employee or an independent contractor?

Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc. (CASEBOOK PAGE 249)

Facts *Researcher stumbled on the anticonvulsive properties of what became known as Topamax during a search for a new antidiabetes drug. Legal Q *Non-obvious when one of ordinary skill in the art could have discovered but did not? Argument * A generic drug maker challenged the Topamax patent because it would have been obvious to any diabetes drug researcher to design a drug like this. Outcome * Satisfies non-obviousness requirement: Given the unique paths the researcher would need to take to get to this result, it cannot be obvious. (Can happen by accident) Precedent: Never use hindsight.

Three Boys Music Corp. v. Bolton (CASEBOOK 410)

Facts • Isley Bro's song came out in 1966; Bolton's came out in 1991 • Bolton's hit 49 on Billboard • Bolton grew up listening to groups like the Isley Brothers; he testified that he had been listening to rhythm and blues artists since childhood, that he was an Isley Brothers fan • The original song was widely distributed where Bolton grew up • Bolton wondered if he was copying Legal Q Reasonable access to constitute copying? Bolton Arg * TV shows playing song never aired in CT (TV Guide presented) and 129 songs with that name have © ... the two songs shared a combination of five unprotectable elements: (1) the title hook phrase (including the lyric, rhythm, and pitch); (2) the shifted cadence; (3) the instrumental figures; (4) the verse/chorus relationship; and (5) the fade ending. Isley Arg * widespread dissemination and subconscious copying - Bolton grew up listening to them, it was on the radio, he was a big fan, while recording questioned sound's familiarity Outcome * ACCESS: "The Isley Brothers' reasonable access arguments are not without merit. Teenagers are generally avid music listeners. It is entirely plausible that two Connecticut teenagers obsessed with rhythm and blues music could remember an Isley Brothers' song that was played on the radio and television for a few weeks, and subconsciously copy it twenty years later. Furthermore, Ronald Isley testified that when they met, Bolton said, "I have all his stuff." Finally, as the district court pointed out, Bolton's remark about Marvin Gaye and "Some Kind of Wonderful" indicates that Bolton believed he may have been copying someone else's song." The work tape revealed evidence that Bolton may have subconsciously copied a song that he believed to be written by Marvin Gaye. Bolton and Goldmark's his-tory of songwriting presents no direct evidence about this case. HELD FOR ISLEY BROTHERS *Precedent: Infringement can occur even if just strikingly similar*

Feist Publications, Inc. v. Rural Telephone Service Co. (CASEBOOK 350)

Facts As a utility, Rural publishes a standard phone book. It has to, required by law. It gets the information as a result of houses filling out required information. Feist publishes a phone book, but it's wider, has more information. Rural was the only utility that refused to license the information so Feist took them. Legal Q Is a phone book copyrightable? Why is this an issue? Because a phone book is full of facts. But it can be arranged in a unique way. Outcome Facts cannot be copyrighted, but compilations of facts can generally be copyrighted. Facts are not original. The author chooses what facts to include, in what order to place them, and how to arrange the collected date so they may be effectively used by readers. Thus, even a directory that contains no written expression that could be protected, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement. But, even though the format is original, the facts themselves do not become original through association. The copyright on a factual compilation is limited to formatting. The copyright does not extend to the facts themselves. Because Rural's white pages lack the requisite originality, Feist's use of the listings cannot constitute infringement. Precedent: (Originality Issue) Compilations of facts are copyrightable, facts are not. "Modicum of Creativity"

Experience Hendrix, LLC. v. Electric Hendrix, LLC.

Facts Defendant is family friend of Hendrix. After Hendrix death, sought to use name in Vodka. Defendant Arg (2) they are only selling vodka, which is not a good that is related to the types of goods Plaintiffs' marks cover, such as key chains, T-shirts, and memorabilia. Outcome (1) strength not challenged (2) very close proximity of relatedness of goods (3) general similarity of marks in that the marks convey the same dominant impression due to the similarities of the images, the predominant placement of the word HENDRIX, and identical references to Jimi Hendrix. (4) Plaintiffs have emails denoting consumer confusion (5) Similar commercial avenues, ads on websites, fan searches all similar. (6) degree of care of vodka purchasers can be high but degree of care customers would use does not alleviate any likelihood of confusion that would arise from the similarity of the marks (7) clear intent (8) already in conflicting areas. INCONTESTABLE MARK; STRONG LIKELIHOOD FOR CONFUSION Fighting over words: Jimi Hendrix Electric, Jimi Hendrix Electric Vodka, Hendrix Electric, Hendrix Electric Vodka And Fighting over pictures Factor that the court focuses on: INTENT (Bottom of 606) Courts seem to be basing confusion on 3 things: how non-mundane the mark is and similarity of products and marks. Think about toothpaste aisle

Export Ventures, Inc. v. Einstein Moomjy, Inc. (CASEBOOK 416)

Facts Heriz rug made with distinctive motifs. Bromley rug made mirroring some of those features; Sues for © infringement and injunctive relief. Trial court decided no © infringement: Applied the "more discerning observer test" intended to emphasize that substantial similarity must exist between the defendant's allegedly infringing design and the protectable elements in the plaintiff's design; comparing "overall feel/aesthetic" of 2 designs. Bromley 514's overall aesthetic is due to the public domain sources and to defendants' own efforts," rather than to any copying of protectable aspects of the Heriz Appellee Arg Heriz's extensive use of designs taken from the public domain combined with the Bromley's distinctiveness precludes a finding of infringement; noted differences/addition in Bromley from Heriz Appellant Arg Disputes "total concept and feel" analysis; in comparing the two for the "feel" the court factored out public domain elements. District court failed to consider whether material portions of Bromley infringed on corresponding parts of Heriz. Outcome Heriz designer made particular design decisions, cropping and elongating the Battillossi half-field and selectively eliminating numerous design motifs, making it cleaner. Simplifying is not a design choice but the half-field is. In these ways, Bromley can be seen to be an exact copy of the Heriz rug. Mimics these choices. Structural layout is identical in both. INFRINGEMENT. (Public Domain Rationale: CB 418)

Kellogg Co. v. Toucan Golf, Inc. - Overview

Facts Kellogg produces cereal, Fruit Loops using many different versions of Toucan Sam, registering as TM. Toucan Golf uses a toucan drawing "GolfBird" to represent its products. Legal Q 8 part test for likelihood of confusion. Factors include: (1) the strength of the plaintiff's mark; (2) the relatedness of the goods or services offered by the parties; [A- if the parties compete directly, confusion is likely if the marks are sufficiently similar; B-if the goods and services are somewhat related, but not competitive, then the likelihood of confusion will turn on other factors; C- if the products are unrelated, confusion is highly unlikely.] (3) similarity of the marks; (4) any evidence of actual confusion; (5) the marketing channels used by the parties; (6) the probable degree of purchaser care and sophistication; (7) the defendant's intent; and (8) the likelihood of either party expanding its product line using the marks Kellogg Arg * Likelihood that consumers will be confused as to source of TGI's products. Submitted consumer surveys showing strong association b/w toucan and cereal. Kellogg is in golf industry through sale of golf balls and golf shirts with Toucan Sam on them, plus solicitation of Froot Loops on golf course.

Difference Between Prior Art and Invention and Ordinary Skill

If: Invention - Prior Art = 0 Then: Not Novel If: Invention - (Prior Art + Ordinary Artisan's Skill) = 0 Then: OBVIOUS *employs obvious creativity

Pfaff v. Wells Electronics, Inc. (CASEBOOK 217)

Facts Pfaff asked by Texas Instruments to design device for them. • March 1981: Pfaff drew TI sketch and showed them • April 8, 1981: TI provided written PO for 30,000+. • July 1981: Devices started to be built. • April 19, 1982: Pfaff applied for Patent. • 1985: Pfaff received patent...sued Wells for infringement when they made device similar to his. Legal Q Whether the commercial marketing of a newly invented product may mark the beginning of the 1-year period even though the invention has not yet been reduced to practice Pfaff Arg Invention has not been reduced to practice (in a working model) and had not been made at the time of the PO. The invention was not complete at the time of the PO so could not have been "on sale" yet. Wells Arg Pfaff's patent was invalid. By accepting the PO from TI, Pfaff placed invention "on sale" 1 year and 1 week before patent application Outcome Pfaff could have patented his idea based on the drawings that he had shown to Texas Instruments, because they were complete enough to allow another engineer to build the invention from the designs. Precedent: An invention can actually be patented before it is reduced to practice, because the "invention" occurs when the inventor has a fully formed idea of how the invention will be made. Two things make something "on sale": 1. When it is subject of a commercial offer for sale, and 2. When it is ready for patenting, which includes reduction to practice and all materials prepped for the patent prosecution process

Keinitz v. Sconnie Nation

Facts Sconnie Nation made tshirts for event with Soglin's face. Photog sues for © infringement. In fair use, no market challenge for factor 4. Sconnie Arg * Posted to website by photog and Sconnie only downloaded and altered. Outcome * Tshirt is no sub for photo. Focus on factor 3. Didn't need to use this photog's work to mock mayor/it could hurt photog's rep. BUT fair use because only smile remains, so much of original tossed.

Baker v. Selden

Facts Selden wrote a book about double entry bookkeeping, which included explanations, descriptions, sample forms. He obviously has a © in the books. Baker has a similar system with same results but different arrangement. Legal Q Does he also have the exclusive right to use (or license) the bookkeeping method he describes? Analysis The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no exclusive right to the modes of drawing described, though they may never have been known or used before. By publishing the book, without getting a patent for the art, the latter is given to the public. Holding Blank account-books are not the subject of copyright; and that the mere copyright of Selden's book did not confer upon him the exclusive right to make and use account-books, ruled and arranged as designated by him and described and illustrated in said book. *Selden wrote a book about double entry bookkeeping, which included explanations, descriptions, sample forms. He obviously has a © in the books (LITERARY), but does he also have the exclusive right to use (or license) the bookkeeping method he describes? This is a perfect case to learn about holdings.*

Brandir International, Inc. v. Cascade Pacific Lumber Co. (CASEBOOK 367) - Overview

Facts a bicycle rack made of bent tubing that is said to have originated from a wire sculpture. Original design was 1 continuous piece of wire, displayed in his home and not to the public, as personal expression. Also designed bike shaped sculpture that shows he gave no thought to the utilitarian application of any of his sculptures until he accidentally juxtaposed the bicycle sculpture with one of the self-standing wire sculptures. Nov 1978 when friend suggested its use, Brandir started production. Nov 1982 discovered similar product by Cascade Legal Q Separable use and aesthetic? Brandir Arg * Copyrighted work of art does not lose its protected status merely because it subsequently is put to a functional use. Rack can and should be characterized as a sculptural work of art within the minimalist art movement TEST/RULE * 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. Conversely, where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists.

Fair Use - Definition

Fair use is an affirmative defense to copyright infringement. The defendant bears the burden of proving that, when viewed together, the facts weigh in favor of fair use. 1. Purpose and character of the use 2. Nature of the copyrighted work 3. Amount and substantiality of the portion used 4. Effect on the market or value of the copyrighted work

What is the standard for something being "readily available"?

Flexible standard including evidence of... 1. Ease/difficulty (Amoco, p32) measurable by work 2. Have to put in "substantial research investment" (time, expense, effort) for TS protection (Amoco p32, 33) 3. It cannot simply be theoretically possible to get the information, it has to be readily attainable (Cemen Tech, p42)

Novelty - Definition

For an invention to be patentable, it has to be... 1. ...a patentable subject: we need human invention, no natural laws, processes are sometimes ok 2. ...useful: it has to do something ,and in certain contexts, have specific, articulable applications in real life 3. ...new

Goal of Copyright Law

Goal is to reward creation via economic reward/profit, recognition, societal betterment and incentivize innovation.

Uniform Trade Secret Act (UTSA// state law) tells us that information....

Has some economic value precisely because it is not generally known and not readily knowable by proper means by people who can benefit from it • Focuses on the secret itself. • Info is unlikely to be a trade secret if it's simple because anyone can potentially figure it out. • D could have discovered the info or reverse-engineer it. This is what we mean by proper means. • Proper because labor and effort went into discovering how it works. LABOR THEORY • If the info is readily available, less likely to be a trade secret because does not provide value as a secret. AND People make some reasonable effort to keep secret. • Focuses on what the secret keeper did • Working to keep something a secret is evidence that you think it's worth something as a secret • How hard he or she worked to keep it a secret is evidence of relative value • More effort put in, the more likely it stayed a secret

Secondary Liability - Assisting, Inducing Infringement

If someone else is doing the infringement at your behest or on your web platform or because you manipulated him or her, you can be held secondarily liable.

What is a "Printed Publication"?

Is a slide presentation, printed slides on display for 2.5 days and again on display for less than 1 day at a later time, a "printed publication"? In re Klopfenstein.

Novelty - What is "in public use"?

Is an invention "in public use" if it was displayed and used at a cocktail party? Beachcombers The court is asking to analyze social situation.

Section 106 Rights: Reproduction

Keep in mind: When there is digital technology involved, short of giving someone a hard drive, there is copying/reproduction involved. But what about incidental digital reproduction?

Adequate Written Disclosure

Key elements of adequate written disclosure: o Enablement requirement: the disclosures in the patent application have to be complete, clear and sufficiently exact to allow any person skilled in the art (or close to it; it is an invention, after all) to make and use it. o Look to In re Wands (Fed. Cir. 1988) for factors to consider: • Patent does not have to disclose what is well known • No one said it has to be easy • Just no "undue work" or "undue experimentation" (Wyeth v. Abbot Labs)

Incontestable Marks

Lanham Act § 15: A mark can become incontestable if, (1) after registration, it is (2) used in commerce (3) continuously for 5 years. Benefits: - No longer subject to a challenge of descriptiveness/lacking secondary meaning - Conclusive evidence that the mark is valid and conclusive evidence of ownership and owner's right to use it nationwide But... - Can still be challenged for genericity, abandonment, fraudulent registration

Secondary Liability - Definition

Liability that is placed on a person who did not directly infringe the copyright but who helped the infringer or benefited from the infringer

Parker v. Flook (1978)

Limited use of a mathematical algorithm to monitor a catalytic conversion process (No) What distinguishes processes that are patentable and processes that are not patentable: There has to be some application of the math, the mathematical formula cannot be the whole process for which the patent is being sought. AKA: Patentable when there is math + device. Not just an abstract idea.

Tangible Property

Mine and not yours; excludability // Only 1 person using it; rivalry

United States v. Adams

New underwater battery. Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as Adams did required that a person reasonably skilled in the prior art must ignore 2 long accepted factors. (Previous Failure Consideration; Defied Convention and people in field wouldn't have come up with it.) Patent Granted Contrary to all conventional wisdom and practice. Relative to the industry. Newness is not the only thing that's important in patents. It's innovation. **Relevant evidence can be inventor's previous failures.

Characteristics of Intangible assets

Non-excludability // Non-rivalrous in consumption

Normally, this isn't an issue. This legal question comes up, usually, in two contexts: 1. When more than one person was involved in creating the artistic work, or 2. When the artistic work was made in an employment context

Prior Art

Novelty is determined relative to what we call PRIOR ART. Think of it as everything before your invention that's related to your invention. It could include things that you're improving upon or things that make up parts of your ultimate invention. If they look too much like your invention, you're SOL.

Utility - Definition

Once determined it is Potentially Patentable SM, must meet requirement series. One requirement is Utility. Patentability is not work but rather transformativeness and innovation. The key to that is usefulness.

Brandir International, Inc. v. Cascade Pacific Lumber Co. (CASEBOOK 367) - Analysis

Outcome (Majority) While the RIBBON Rack may be worthy of admiration for its aesthetic qualities alone, it remains nonetheless the product of industrial design. Form and function are inextricably intertwined in the rack, its ultimate design being as much the result of utilitarian pressures as aesthetic choices. In-deed, the visually pleasing proportions and symmetricality of the rack represent design changes made in response to functional concerns. remains no artistic element of the RIBBON Rack that can be identified as separate and "capable of existing independently, of, the utilitarian aspects of the article." NOT SEPARABLE. Ribbon Rack is not copyrightable. Whole point of design is to lock more bikes in small space so entire design is utilitarian and not separable. Without this design, it's not useful. Court says you should've gotten patent on this. Dissent (Minority) any reasonable observer would easily view the Ribbon Rack as an ornamental sculpture. Another design completely different can serve same purpose. Court subsequently determines what is and what is not art....VALUE JUDGMENT WITH NO BASIS IN LAW. Precedent: Likely that design of most useful articles will be excluded from copyright. Policy: Copyright over patent because originally designed to be art before function Courts don't like © after expired Patent because policy...trying to extend patent period so some skip patent and go straight to ©.

Kellogg Co. v. Toucan Golf, Inc. - Analysis

Outcome (1) each mark is fanciful. Kellogg's doesn't resemble real toucan. 2) Kellogg has not shown it has nationally marketed golf equipment so Kelloggs presence in golf industry is not significant. 3) Both parties' goods are completely unrelated and word marks only similar in common word of Toucan. Use of word Toucan is arbitrary. 4/5/6/7/8) Kellogg has presented no evidence of actual consumer confusion. No similar avenues of commerce. Clientele different. No evidence of intent to hurt Kellogg. No evidence TGI wants to enter cereal game or Kellogg wants to enter golf game fully. NO CONFUSION. • Focused on only three 1. Strength of the mark (distinctiveness and popularity) 2. Similarity/relatedness of the products (Competitors? Yes to confusion if marks are similar) (Related products, but not competitors? Maybe) (Unrelated? Not likely) 3. Similarity of the marks (split it apart or look at it together?)

Starbucks Corp. v. Wolfe's Borough Coffee, Inc. - Analysis

Outcome * D by Blurring: Minimal similarity between Starbucks and Charbucks. Logos very different. No intent by BlackBear to associate with starbucks. Not enough proof of actual association. D by Tarnishment: Doesn't tarnish and could actually help Starbucks. Charbucks is very high quality. Overall: dissimilarity of the marks as used in commerce, the weakness of the survey evidence, and the fact that consumers encounter Charbucks term only in conjunction with other marks unique to Blackbear, Charbucks marks are only weakly associated with the minimally similar Starbucks marks Precedent: Dilution by Tarnishment Analysis • Evidence: Surveys, marketing strategy • Standard: Mere association of one mark with a famous one is not enough for tarnishment; the consumer has to feel that the junior mark is harming the famous mark.

Campbell v. Acuff-Rose Music, Inc. (2 Live Crew) - Analysis

Outcome * POSSIBLE FAIR USE; REMAND; factors explained (1) whether new work supersedes object or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is "transformative." (440) substituting predictable lyrics with shocking ones . . . [that] derisively demonstrate[e] how bland and banal the Orbison song seems to them (2) recognition that some works are closer to the core of intended copyright protection than others (3) quality and importance of material used; look to context Specific part that was copied from original was memorable; no more was taken than necessary (4) consider harm to original AND harm to market Parody serves different market function than the original Precedent: Breakdown of 4 Fair Use factors; PARODY can be fair use *A parody is transformative if it can be reasonably perceived as commenting on the original copyrighted work. * Why is it still fair use? It's about QUALITY and IMPORTANCE as well as AMOUNT

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC - Analysis

Outcome B/c Haute Diggity Dog's (Defendant) "Chewy Vuiton" marks are a successful parody, they will not blur the distinctiveness of the famous marks as a unique identifier of their source. Defendant intentionally associated its marks, but only partially and imperfectly, so as to convey the simultaneous message that it was not in fact a source of Plaintiff products. Rather, as a parody, it separated itself from the Plaintiff marks so as to make fun of them. No dilution by tarnishment because no evidence dog ever choked. Precedent: (1) Trademark dilution by blurring does not occur where a famous and distinctive mark is parodied, but the mark is only mimicked and not actually used. (2) Trademark dilution by tarnishment does not where harm to a famous mark is only speculative and without record support. Elements of the Case: (All TM Litigation Elements) 1. Mark distinctiveness 2. Infringement a. Confusion b. Dilution by Blurring c. Dilution by Tarnishment 3. Defense in Nominative Fair Use Another Defense: Use for news reporting, commentary

Equivalents and Estoppel

Ownership of IP is about the exclusive right to do something or prevent others from doing something. The patent right is the right to exclude others from: Making, Using, Selling, Offering to Sell, Importing Patent Infringement can be direct or indirect. You can do it yourself or you can induce/contribute to others infringing. You can literally infringe which means every part of your "invention" has been done. Non-literal infringement tells us that someone can infringe without doing exactly what someone else did.

Gottschalk v. Benson (1972)

Process for converting binary coded numerals into pure binary code (Not patentable) computers cannot function properly unless the information is put in binary code (computers can only read binary code)

Enablement Requirement

Provided adequate written disclosure that enables a person of ordinary skill in the art to make and use the invention. (network specific! Engineer in engineering industry, etc.) In return for disclosure, the PTO (and society) gives you a limited monopoly to control the sale of your invention.

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC - Rule

Rule * Dilution Claim Requires P to show: (1) that the plaintiff owns a famous mark that is distinctive; (2) that the defendant has started using a mark in commerce that allegedly is diluting the famous mark; (3) that a similarity between the defendant's mark and the famous mark gives rise to an association between the marks; and (4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark 6 statutory factors that must be taken into consideration when determining if a junior mark has diluted a famous mark: (i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark.

APPLYING FOR A PATENT

Rule of patent construction is that words get their "plain and ordinary meaning" as understood by a person of ordinary skill in the art and when read in context of the specification and prosecution history except when: a. Patentee acts as his own lexicographer b. Patentee expressly disavows fact that his product includes certain element/specification

So, we need to know: 1. When is something a "useful article"? 2. Are parts "separable"? If you design a useful thing, you can get a © on the design element of the useful thing as long as separable from utility element of the device. Types of Separability: • Physical: An ornate hood ornament on a car comes off the car. It is literally separable. • Conceptual: But are there things that are still "separable" even though they cannot be physically removed from the useful article?

Trademarks - Definition

Symbols, Slogans, Words, Phrases... Differentiated by everything (i.e. font, color) Trademarks are limited property rights in words or symbols. (all about branding and consumer trust) The law of trademarks protects those owners from others' use of their marks in a way that may confuse consumers. So, when in doubt, trademark law isn't about use/misuse, it's about confusion. *something becomes a mark when it is used in commerce to identify good/services. For addt'l protection, get TM at USPTO. *

The Copyright Act doesn't just give you a © and a © doesn't just give you control over something. It gives you rights over your artistic creation. 1. Reproduction 2. Preparation of Derivative Work 3. (Public) Distribution 4. (Public) Performance 5. (Public) Display 6. (Public) Digital Transmission/Performance of a Sound 7. Recording

Section 106 Rights: Distribute Copies

The copyright owner has the right to distribute. You can't sell her copyrighted work. Unless... First Sale Doctrine - Once the © owner has given up title to her copy, she cannot restrict its subsequent transfer. - This allows sales of used things. - BUT! The First Sale Doctrine cannot help you if you have to make a copy of the thing to resell/transfer it. Where is this a problem? And, why? What right is still being infringed?

Secondary Consideration Application

The greater the commercial success, the less likely it is to be non-obvious. If there is an un-met need in the industry, more likely it is to be non-obvious. Previous failures, more likely it is to be non-obvious.

Non-Obviousness - Requirement

To determine if something is obvious, determine the prior art's scope, the difference between the prior art and the invention and the ordinary artisan's skill. Then use "secondary considerations" --commercial success, unmet needs, previous failures --to help. Did the prior art tech/suggest/motivate (TSM test) to someone of ordinary skill in the art to create in the invention?

Secondary Liability - Vicarious Liability

To punish one who unfairly reaps the benefits of another's infringing activity. Factors: Right and ability to control the infringement Direct financial interest in the infringement Right and ability to control infringing activity Must be actual control, not legal or theoretical Direct financial interest in the infringement Financial interest must come from infringing activity Attracting customers Revenue from incidental sales NOT from a fixed rent payment

Obtaining Patent Protection

Trade secret protection through keeping it a secret. Copyright is the moment you put pen to paper. Trademark protected if used in commerce. Patents are different, requiring process with lawyers and PTO. Patents more concerned with benefit/addition to society. When the use of the device is included in the patent, if you construct the same device for different use, you can get a new patent. If use is not included, device itself is protected.

Section 106 Rights: Derivative

Translation, musical arrangement, fictionalization, a new version, an abridgment, movie based on a book

Trademarks - Confusion Analysis

Two places to go after showing use in commerce: (1) Lanham Act Section 43(a)---- Two types of confusion: 1. As to "affiliation, connection, association" 2. As to the "origin, sponsorship, approval" (2) Lanham Act Section 43(a); Lanham Act Section 32----- Does not specify type(s) of confusion

How do we determine *when* to use plain and ordinary meaning?

Was she acting as her own lexicographer? YES→ then follow lexicon NO→ if no, ask...Was there disavowal? YES→disavow NO→Use plain and ordinary meaning.

Trademarks - 2 Sides of the Law

What is the foundation of a protectable mark? • Distinctiveness • Can be inherent or developed over time, i.e., secondary meaning What is the foundation of trademark infringement? • Confusion • If the key to distinctiveness is evoking the producer, not the product, what is at the heart of confusion? • Confusion as to the producer, the origin, association, source

Trademarks - Confusion

What's at the foundation of trademark infringement? • Confusion • If the key to distinctiveness is evoking the producer, not the product, what is at the heart of confusion? Confusion as to the producer, the origin, association, source

When you don't have direct evidence of copying, you need reasonable access to the thing you are alleged to have copied. How do you show this? One of two ways: 1. A clear chain of events between the original work and the defendant's work (like the publisher gave it to you) 2. Wide availability (which implies that you subconsciously copied the original work) Access is important. Even as access varies, we can still get infringement (they are inversely proportional): 1. Where similarity is so striking, we don't need to prove a lot of access to prove copying 2. Where there is some similarity, you need more evidence of access

Secondary Liability - Contributory Liability

Whether the defendant, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another Factors: Knowledge of infringing activity Material (substantial) contribution to the infringing activity Knowledge of infringing activity Knowledge is a key element Often in cases where one party actively encourages another to infringe Material (substantial) contribution to the infringing activity Defendant must have provided the infringer with the means to infringe

What does it mean to be "not generally known"?

Within a particular market, not known to everyone. 1. Does not have to be public, to everyone. To whom, then? 2. Information cannot be easily obtainable "by relevant factors" in the relevant industry (CDI Energy, p37) Policy considerations: only from people who can benefit from it, hard to keep from everyone so easier on companies if just competitors excluded

Literal Infringement

direct, actual copy; Derivative Work: creating a new "thing"

Trademarks - Genercity

if something can develop secondary meaning over time, it can also lose meaning and become generic or descriptive over time. As TMs become verbs (acts for the things they're referring to) the more likely they become generic. TWEET may go generic.

How do we determine plain and ordinary meaning?

o Look at evidence from the entire patent o Determine how a word at issue was used elsewhere in the patent application o Identify any distinctions between the word usage at issue and word usage elsewhere o Analyze how those in the industry use the term

Novelty - Factors to consider

• Availability to the "public" is the key (public in patent law means one ordinarily skilled in the art) o Distribution and indexing and proxies, indicators of availability o If it's distributed and indexed, likely a printed publication o But even if not, it still could be • Length of time on display o Expertise: When audience becomes more skilled, length of display time becomes shorter • Expectation material will be copied, simplicity of material, etc.

• Compilations of facts are copyrightable, facts are not o This is the idea/expression or fact/expression distinction o Why? There is nothing creative about facts. Facts are discovered. Recall discovery/creativity in patent law. o What makes compilations creative? • How do we determine if a compilation is copyrightable? o Look to the manner in which the facts have been selected, coordinated, arranged. • *Creativity, not work, is at the center of copyright* The key indicator of non-copyrightability is ordinariness in context.

Trademarks - Rationale

• Consumer costs: proxy for trustworthiness • Costs/harms to TM owner associated with confusion/affiliation with weaker products affect willingness to develop products • Incentive to invest in goodwill and quality • Prevents free-riding

What are the relationships and who are the individuals that these portions of the definitions refer to? (FORMER EMPLOYEES)

• Derived from or through a person who had utilized improper means to acquire it. • Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or • Derived from or through a person who owed a duty to the person seeking relief to maintain a secret or limit its use; or Before a material change of his position, knew or had reason to know that it was a TS and that knowledge of it had been acquired by accident or mistake.

All Limitations Rule

• Each element of a claim must be present in an allegedly infringing device in order to establish literal infringement. • Limits the doctrine of equivalents and prevents the doctrine's application to an entire claim, rather than the claim's constituent elements.

Doctrine of Equivalents - Policy

• Fairness • Inherent limits of Language • Encourage innovation • Disclosure in exchange for monopoly *Stuff you narrowed out when USPTO told you your patent is too broad-- you are estopped from claiming its equivalent to your patent.*

2 Prerequisites to a Dilution Claim

• Fame • Distinctiveness

Rationales for Dilution by Blurring

• Increases in consumer search costs; efficacy of name drops • Intent to feed off the goodwill of a famous mark • Work done to make it famous - The key question: *Is the association, arising from the similarity of the marks, one that impairs the famous mark's distinctiveness?* - Suddenly, dilution law becomes pretty narrow.

RELIEF FOR MISAPPROPRIATION

• Injunction • Compensation by lost economic advantage • Punishment If you want to stop dissemination: Injunction If you want to punish the appropriator: Disgorgement If you want to compensate TS owner: Damages

Patentable Subject Matter - Takeaways

• It is very broad • Subject matter cannot be naturally occurring • Human work is required • What are the limiting principles of patentable subject matter? • Is a process for doing something patentable? • Can we ever patent something that is naturally occurring if do something to it?

Theories of Ownership

• LABOR THEORY (Locke): Creator put the work in, has right to sell or license it to whomever. You did the work, you mixed your labor with raw materials, you created a benefit for the public. Based on Merit/Deserve it? Based on Backpay? • • ECONOMIC INCENTIVE: If creators cannot be guaranteed monopoly power and the money that comes with it after creation, they have no incentive to create. Not about work, about money. Money encourages creation in the first place. How much incentive is enough? American IP Law • • PROPERTY THEORY: (Locke/Lessig): You created it, it is yours. Does not matter how much work was involved. • INVIOLATE PERSONALITY: (Warren/Brandeis): Your creations are more than just your property, they are a part of who you are, they define your essence as a person. Therefore, any invasion of your right to sell your creations is not just a breach of property rights, but an affront to your dignity and human rights.

Implications of Requiring Utility

• Limits what's patentable • Patents only for things/process that do something • Doing something better than before is patentable

Patent Infringement Types

• Literal: the accused item falls within the literal scope of each and every limitation of the asserted patent claim • Non-literal: occurs when the accused item falls outside the literal scope of one or more of the claim limitations, but for each such limitation the accused item contains a close substitute feature that is the functional equivalent of the missing literal limitation • Direct: the accused infringer is the very person who committed the infringing act • Indirect: the accused infringer encouraged or helped someone else to commit direct infringement

Difference in Novelty Statutes

• Location Limitations Old: (a) implicates here and there; both foreign and domestic. New: (a)(1) doesn't specify where. Applies everywhere. No distinction b/w foreign and domestic. • "First to..." Rule Benefit of "first to invent" rule includes a more fair standard for solo-inventor who may not have resources to pay for patent process but invented it before a huge corporation did. Benefit of "first to file" rule prevents people from hoarding knowledge & encourages development Old: (a) "before invention" New: (a)(1) "before the effective filing date" To show date of invention, cite: personal journals, testimony of witnesses (partners, fellow employees or employers), time stamped pictures/recording, docs/communication b/w co-inventors, post-marked mail, experimental records • Disclosure by Whom? Old: (a)(2) described-- passive New: (b)(1)(a) provides more specificity to public disclosure exception; provides more protection for inventor from those who improperly/unlawfully disclose • Knowledge vs. Availability Old: (a) "Known or used by" requires engagement with... New: (a)(1) "Otherwise Available" does not implicate engagement but focuses on availability.

Patentable Subject Matter - Policy v. Law

• Policy explanation: What would happen if we gave one company control over the formula that monitors if your oil refinery is about to explode? What about if only one company had the knowledge to convert numerals into binary? The ability of doctors to correct dosage? We do not want to give anyone a monopoly over any of this knowledge • Legal explanation: By giving a patent for a specific process (such as Diehr) we are not limiting or excluding other's access knowledge

What is the line b/w proper and improper means?-- misappropriation?

• Proper means example: Reverse engineering, independently discovering information • Improper means example: theft, crimes, bribes, extortion, breach of confidentiality agreement, extending access beyond what is appropriate

Festo Presumption

• When the patentee is unable to explain the reason for amendment, estoppel not only applies, but also bars the application of the doctrine of equivalents as to that element • The patentee has to show that his amendment should not give rise to estoppel and show that his amendment does not surrender the particular equivalent

Non-Obviousness - Definition

• You can't just combine A and B and claim that AB is new and non-obvious (243) • That a AB was meant to solve a different problem than A or B does not, alone, make it non-obv (246) • If there is a huge market for it, more likely to be non-obvious (246, 250) • When there are simple steps to create something new from old things, it is likely obvious (249) • Never use hindsight (250) • When the invention confounds experts or has experts skeptical it could work, more likely non-obvious (250)

Intellectual Property

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