Final Review

Dilution Definition: Trademark Dilution Revision Act of 2006

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

Trademark Infringement Polaroid Factors

(3) The marketplace proximity of the two marks: -How close are the two companies geographically -How close are the two product lines? Examples: 1. Delta Airlines and Delta Faucet: both national, very different product lines. -No consumer confusion 2. Burger King and Burger King: one national, one regional, identical product lines. -Very likely consumer confusion (4) the likelihood that the senior user of the mark will bridge the gap: -What are the chances that the company that used the mark first is likely to extend into the junior user's geographic area or product line?

Sampling of a Sound Recording (Bridgeport v. Dimension Films)

1. "No further proof is necessary than the fact that the producer of the record or the artist on the record intentionally sampled." 2. Sampling is NEVER ALLOWED (unless you have a license)

Patent - What is the right conferred and How long does it last

1. "The right to exclude others from making, using offering for sale, or selling, selling or importing the invention" - Once Patent is issued the patentee must enforce the patent without aid of the USPTO 20 years from the date it was filed

Descriptive Marks and Secondary Meaning

1. A descriptive term can be protected as a trademark if it has secondary meaning (i.e., acquired distinctiveness). 2. Secondary meaning is established when a mark has come through use to be uniquely associated with a specific source. - "To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." -The issue of whether secondary meaning is present is separate from the question of whether a mark is descriptive.

Secondary Meaning

1. A descriptive term can be protected as a trademark if it has secondary meaning (i.e., acquired distinctiveness). 2. Secondary meaning is established when a mark is uniquely associated with a specific source. 3. To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. 4. Zatarain's Fish Fri was able to show secondary meaning by using survey data; however, they could not get Chick Fri.

Motion

1. A formal request made to a judge for an order or judgment (you are "moving" the court to do something for you)

Functionality Doctrine (TraFix Devices vs. Marketing Displays)

1. A patent on a hinge design had expired, and the plaintiff sought to assert trade dress rights in the design instead. 2. The Court noted that the plaintiff must meet a heavy burden of proof that the hinge design was not functional (plaintiffs are always required to prove non-functionality under section 43(a) trade dress actions). 3. This burden cannot be met when the feature claimed under the utility patent is also the feature claimed for trade dress purposes.

Trademark Infringement defense: Generic Terms

1. A trademark can always be attacked on the ground that it is or has become generic. 2. Section 1065 the Lanham Act states that "the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable: Provided, That—... (4) no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered." 3. Always Police your marks - If a trademark is at risk of becoming abandoned, start a marketing campaign (Velcro to Hook and Loop)

Copyrights: Music and Videos

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

Right to Create Derivative Works

1. A work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be *(recast, transformed, or adapted)* 2. A work consisting of editorial revisions, annotations, elaborations, or other *modifications which, as a whole, represent an original work of authorship, is a derivative work* 3. Examples: -Turning books into movies; sequels; action figures based on a character in a work

Incontestability

1. After a user has had a registration for 5 years the registration with the USPTO cannot be challenged. - This is different from being sued for trademark infringement - you can ALWAYS be sued for trademark infringement. The claim just may or may not be actionable. 2. A challenge to a registration can happen for a number of reasons but the most common is that the mark is descriptive and there was no secondary meaning. - This is solely about the validity of the registration and not about consumer confusion between competing companies. IMPORTANT: The registration shall be conclusive evidence of: - the validity of the registered mark and of the registration of the mark - the registrant's ownership of the mark - the registrant's exclusive right to use the registered mark in commerce.

The Functionality Doctrine

1. An aspect of a product or trade dress is legally functional, and thus unprotected under trademark law, if it is one of a limited number of efficient options available to competitors and free competition would be unduly hindered by according the design trademark protection. -Kind of sounds like the Merger Doctrine from © 2. This doctrine helps to assure that competition will not be stifled by the exhaustion of a limited number of options for product packaging or design. 3. To carry out this policy, a product feature is deemed functional and cannot serve as a trademark, -Not Registerable: "if it is essential to the use or purpose or affects the cost or quality of the article." 4. The person seeking to register a trade dress has the burden of proving that the matter sough to be protected is not functional.

Derivative Works Infringement

1. An unauthorized derivative work would infringe the original work even though the derivative work may add a significant amount of creative effort. 2. If a derivative work is authorized, it is typically separately copyrightable. 3. Examples: Think of the amount of original work that would go into converting a book into a movie but that would still infringe if no permission. 4. A variation from something in the public domain that is found to be trivial is not considered a derivative work and is not copyrightable

Fixation in a Tangible Medium of Expression

1. As soon as a creative work is written down or recorded in some tangible form, copyright protection is triggered. -Your notes are protected by copyright. -This presentation is protected by copyright. -The scribbles on the stalls in the bathroom are protected by copyright. 2. But, remember the holding in Feist: -Facts are not copyrightable and your notes and my presentation are mostly facts. -Someone can go pull the facts and create a new work written in a tangible medium. Note: However, someone cannot just go make photocopies. That's infringement.

Burger Kings vs Hoots

1. Burger King (Hoots) -Single restaurant in Mattoon, IL -Senior User - began using trademark first -State trademark registration -No federal trademark registration 2. Burger King (Chain) -Major national chain -Junior User - began using the trademark after the Matton restaurant -Federal trademark registration and incontestable Because the single restaurant was operating before the national chain, it cannot be forced to change its name because of state law rights.

Blue Bell vs. Farah Manufacturing

1. Careful examination of the record discloses that Farah shipped its first order of Time Out clothing to customers in September of 1973. Blue Bell, approximately one month behind its competitor at other relevant stages of development, did not mail its Time Out garments until at least October. 2. Though sales to customers are not the sine qua non of trademark use, they are determinative in the instant case. 3. These sales constituted the first point at which the public had a chance to associate Time Out with a particular line of sportswear. -Farah wins.

Statute of Limitations. 17 U.S. Code § 507 - Limitations of Actions

1. Civil Actions - No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued. - "Accrued" is a magic word 2. It is not entirely clear if the clock starts at the moment the infringement occurs or when the plaintiff knew or should have known. -Knew or should have known: actual knowledge or constructive knowledge

Perks of Federal Trademark: Constructive Notice and Incontestability

1. Constructive Notice: - This means that nobody can claim ignorance of your federal registration. - This prevents someone from being able claim good faith and being allowed to carry on with using the mark, assuming it is confusingly similar. -- "Super sorry! Totally didn't know!" does not work. 2. Incontestability: - A party cannot challenge your federal trademark registration if it has been registered for more than 5 years. - This gives the trademark owners peace of mind, up to a point, that their registration and rights are secured. Constructive Notice and Incontestability are NOT related except for the fact that they are both perks of a federal registration.

Duration - 17 U.S. Code § 302 Duration of copyright: Works created on or after January 1, 1978

1. Copyright endures for a term consisting of the life of the author and 70 years after the author's death 2. In the case of a joint work prepared by two or more authors who did not work for hire, the copyright endures for a term consisting of the life of the last surviving author and 70 years after such last surviving author's death. 3. In the case of an anonymous work, a pseudonymous work, or a work made for hire (when something is published, like a song, without an artist named), the copyright endures for a term of 95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first

Uncopyrightable material Useful Articles: Denicola Test

1. Copyright protects creative features but not functional ones. 2. When a creative element is added to a functional object, it can still be copyrighted if it is conceptually separable from the useful features! Example: Denicola test (from Brandir v. Cascade) -Ribbon bike rack case; they won design awards for this -If design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. -Where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists.

Bright Tunes Music v. Harrisongs Music (subconscious Infringement)

1. Did Harrison deliberately use the music of He's So Fine? I do not believe he did so deliberately. Nevertheless, it is clear that My Sweet Lord is the very same song as He's So Fine with different words, and Harrison had access to He's So Fine. This is, under the law, infringement of copyright, and is no less so even though subconsciously accomplished - Harrison had access to He So Fine because it was a huge hit, including an admission that he had heard it

Copyright - What is the right conferred and How long do they last

1. Distribution rights and rights to derivative works 2. Author's life plus + 70 years after the author's death. - For works made for hire, and for anonymous and pseudonymous works the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.

Probative Similarity

1. Do the two works in question, the original work and the allegedly infringing work, look or sound the same? 2. If yes, they are probatively similar.

Flow Chart Patent Options

1. Experimenting → 102 Trigger → One Year Max → Provisional → One Year Max → Nonprovisional 2. Experimenting → 102 Trigger → One Year → Nonprovisional 3. Experimenting → Provisional → 102 Trigger or any disclosure, whether or not confidential → One Year from Provisional→ Nonprovisional

Motion to Dismiss - Federal Rule 12(b)(6)

1. Failure to state a claim upon which relief can be granted -The plaintiffs complaint did not state something actionable so that the case should be dismissed

So what if I took it? 17 U.S. Code § 107 - Limitations on exclusive rights: Fair use (defense to infringement)

1. Fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as (Listed purpose not an infringement of copyright.) "Cops Never Stop The Right Con" -criticism -news reporting -scholarship -teaching (including multiple copies for classroom use), -research -comment 2. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include— "punk n*ggas aint eatin" (1) purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) nature of the copyrighted work; (3) amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) effect of the use upon the potential market for or value of the copyrighted work. 3. The fact that a work is unpublished shall not itself bar a finding of fair use

Intent to Use (ITU) Trademarl Application

1. Fixes the issues in Blue Bell: remember that counsel for both companies did a search and gave it the all clear 2. The "intent to use" (or ITU) provisions of the Lanham Act essentially enable a party to obtain temporary preemptive rights to a mark that it intends in good faith to use in commerce in the reasonably foreseeable future. -Allows you to file a registration application before using it in commerce and you can renew it every 6 months for up to 3 years

Five Cetgories of Trademarks (registerable or not)

1. Generic - unregisterable 2. Descriptive - unregisterable unless showing of secondary meaning 3. Inherently distinctive marks - registerable, grouped together for analysis: -Suggestive -Arbitrary -Fanciful It can be sometimes be hard to determine if a mark is generic or descriptive; or if a mark is descriptive or suggestive These lines can get blurry

Uncopyrightable material: Idea/Exression Distinction Hoeling vs. Universal Studios

1. Ideas are never copyrightable. Expressions are never copyrightale 2. Hoehling v. Universal Studios, 618 F.2d 972 (2d Cir. 1980) -Hoehling, an author, writes a book about the Hindenberg disaster. -There is a theory that Eric Spehl, a crew member, sabotaged the ship. -Universal produces a movie on the disaster and the Spehl theory is incorporated into the movie. -Here, Universal took the same idea and ran with it but did not use the same expression of the idea -(You can use the same idea but you need to have a different expression of that idea) -Lots of similarities, naturally, in the two expressions of the same idea.

Analyzing Copyright Infringement

1. If any right in the bundle of sticks is violated, the copyright has been infringed. 2. Five principal rights: reproduction, distribution, derivative works, public performance, and public display. -These five rights are considered economic rights -Touchstone of U.S. Copyright protection 3. A sale or a license of one of these rights does not necessarily mean that the recipient has the right to exercise other rights.

Statutory Rights: Limited Area Exception (Bruger king vs Hoots)

1. Issue of trademark priority and the geographic scope of trademark rights in the case of a nationally known company with federal trademark registration and a good-faith local trademark owner who has registered under state law. 2. Federal law takes over because of the Supremacy Clause. !3!. Court acknowledges and protects the right of good faith local trademark owners to continue their use of a mark in their market area as it existed at the time the other party obtained federal trademark registration. 4. But the scope of the smaller restaurants rights are once again limited to the area in which it actually had operations when the national Burger King obtained its federal registration—the area around Mattoon, Illinois. 5. Despite having registered its mark under the Illinois statute, the local restaurant did not thereby obtain rights to the entire state of Illinois.

Constructive Notice

1. It is critical to understand if the senior user or the junior user (or neither) has a federal trademark. 2. If they start suing each other, these can be some of the results: - If the junior user has a federal trademark, the senior user might get squeezed into a geographic area. Think of Burger King. -If the senior user has a federal trademark, the junior user may get completely shut down. In either case, likelihood of confusion must be found through application of the factors. Otherwise, everyone can keep operating as they did before and expand if they wish.

Acquiring Secondary Meaning

1. It is often difficult to establish that a highly descriptive term is entitled to trademark protection, because it may be deemed generic and because it may be difficult to prove that it has attained sufficient recognition as a brand to have secondary meaning (i.e., acquired distinctiveness). - To determine if a mark has attained sufficient recognition as a brand to have secondary meaning 2. A number of factors go into determining of whether a mark has sufficient recognition as brand that warrants a finding of secondary meaning, including " -The amount and manner of advertising -Volume of sales -Length and manner of use -Direct consumer testimony -Consumer surveys."

Trade Dress Information

1. Jury found that Taco Cabana had ownership of trade dress in its restaurants, that the trade dress was not functional, that it was inherently distinctive, that it lacked secondary meaning, and that the defendant had caused a likelihood of consumer confusion as to the source or association of the restaurants' goods and services 2. The 'trade dress' of a product is essentially its total image and overall appearance. It involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. 3. The Supreme Court agreed and held that it was protectable, so long as it was not functional. -Not functional -Inherently Distinctive -Lack of secondary meaning

Word Marks and Logos

1. Keep in mind that a logo can be used as a trademark. This is in addition to the words themselves. 2. Think about Coca Cola and the logo to the right. 3. The design of a logo is also going to be covered under Copyright law because subject to the originality requirements.

Sync Licenses

1. Many music publishers have entered into license agreements with YouTube permitting the use of the songs they control in exchange for a percentage of any advertising revenues (although in some cases the publisher may set a policy that a particular song is blocked from use). 2. As a result, in most cases, YouTube has already obtained an agreement with the music publisher. To determine whether or not a publisher is participating in an agreement with YouTube, please contact the publisher directly. Publisher contact information may be found at ASCAP or BMI. -This is why you can go to Facebook jail or Instagram jail.

Substantial Similarity Applied to Music (Swirsky v. Carey)

1. Music is not capable of ready classification into only five or six constituent elements; music is comprised of a large array of elements, some combination of which is protectable by copyright 2. When trying to find substantial similarity compare the two works in question with combination of five otherwise unprotectable elements: 1. Lyrics -the words -melody of the lyrics 2. Melody -Instrumental component may have a different melody than the lyrical component 3. Drum Beat -Certain genres have beats (hip hop, disco, slasa, reggaeton 4. Chord Progression 5. Instrumental Selection 6. Hook (lyrical or melodic or both)

First Sale Doctrine: Limit on the Right of Distribution

1. Notwithstanding the provisions of section 106(3), - the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord. 2. Allows for copies of a work to compete with the market for new versions, serving as a check on pricing 3. Important Exceptions: commercial rental of computer software and copyrighted music. -You can't go make copies of these works; that'll violate the ©

Conditions for Obviousness

1. Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and content of the prior art; and (B) Ascertaining the differences between the claimed invention and the prior art; and (C) Resolving the level of ordinary skill in the pertinent art. Objective evidence relevant to the issue of obviousness sometimes referred to as secondary considerations may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results.

Trademark Infringement defense: Comparative Advertising

1. One of the fundamental purposes of trademark law is to promote legitimate competition in the marketplace. 2. In order for a new or small competitor to sell its product in competition with large well known branded products, it is often helpful to mention the famous brand name. 3. Thus, the ability of competitors to make reference to the trademarks of others for purposes of comparative advertising is helpful to competition and consumers. 4. Competition in the marketplace requires that a firm be able to make truthful statements about its competitor's product, including claims of equivalence.

Phosita

1. Person have ordinary skill in the art - "The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention" -The reasonable person from torts in the patent context 2. Phosita can do anything in the art field that does not require an INVENTIVE STEP -She can do the obvious -"It would have been obvious to a person have the ordinary skill in the art..."

William R. Warner & Co. v. Eli Lilly & Co. (Deceiving consumers)

1. Plaintiff was entitled to prevent the defendant from marketing a chocolate and quinine tonic under a name that was confusingly similar to the plaintiff's brand, and to prevent the defendant from inducing druggists to substitute the defendant's product for that of the plaintiff. 2. Trademark owners can assert harm to their own commercial interests, but they have a more compelling case when they can show that consumers have been defrauded or deceived in some way. 3. A store could also sell a cheap knockoff under an expensive name and charge a premium.

The Right of Publicity

1. Publicity rights only apply to individuals; companies or other business organizations rely on trademark law and related doctrines. 2. If a person's name develops secondary meaning in association with commercial offerings, people can develop trademark rights in their name or other attributes to complement their publicity rights (which exist automatically). 3. When enforcing those rights, trademark law requires that the usage creates a likelihood of consumer confusion. 4. In contrast, consumer confusion is irrelevant to a publicity rights claim.

Arbitrary and Fanciful Marks

1. Same words, different uses, different spots on spectrum: -Ivory is generic when referring to product from elephant tusks but arbitrary for soap -Apple is generic for fruit but arbitrary for computers 2. Exxon is fanciful, as it was coined specifically for the oil company -Evolution of the Exxon mark: Standard Oil → S.O. → Esso → Exxon Prob started as suggestive or arbitrary (standard as applied to oil) then moved to fanciful

How can you hurt yourself when patenting something

1. Showing people the invention without confidentiality restrictions Think trade show, demos, tv commercials, etc. Triggers the time Also can have your invention stolen 2. Publishing a professional paper Think research, e.g. professor or engineering publication 3. Start selling the product or offering to sell the product Even if the products are not going to be made for a while, you still cannot sell the product You can sell the rights to the product but not the product itself → All of these will trigger the 1 year grace period. In practice, you should ALWAYS file a provisional before any one of these events occur.

Uncopyrightable material: Scènes à faire doctrine

1. Similarities in the two works: the scènes à faire doctrine -Inevitable background scenes that are common to a particular type of work at issue --You cannot claim copyright to scènes à faire 2. In the Hoehling case: -Pre-WWII Germany is going to have beer hall scenes, Nazi uniforms and greetings, other classic Nazi stuff Examples: Think about the commonalities in: -Saving Private Ryan and Inglorious Basterds -Forrest Gump's Vietnam scenes and Apocalypse Now

Parts of Patent

1. Specification This is your written description, including an abstract and detailed description of your drawing Enablement (refers to the requirement that a patent enable one of ordinary skill in the art of the invention to practice that invention - to build a prototype) Best mode needed (the specification shall set forth the best mode contemplated by the inventor of carrying out the invention) - safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure To get a patent, you have to publicly disclose your whole invention in exchange for that monopoly 2. Claims The legal definition of your monopoly Typically much narrower in scope than your specification 3. Drawings Not technically required but almost always used and very helpful to understand invention Can help with broad interpretations of your disclosures

Trade Dress: Two Pesos v. Taco Cabana

1. Taco Cabana operated Mexican fast-food restaurants in Texas. Its trade dress consisted of "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals 2. Two Pesos entered the Texas market later, opening restaurants that were deliberately and strikingly similar to the overall appearance of a Taco Cabana location.

Trademark Infringement

1. The Likelihood of Confusion Standard: to establish a classic claim of unfair competition or trademark infringement, the trademark owner must show a [likelihood that ordinary purchasers will be confused regarding the source, sponsorship, affiliation, or origin of the goods or services in question.] 2. This standard is expressly part of the language of the Lanham Act, both with regard to proof of infringement of registered trademarks (under section 32 of the Lanham Act) and of unregistered trademarks, which are protected under section 43(a) of the Lanham Act.

Motion of Summary Judgement - Federal Rule 56

1. The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. - One party states that there are no facts in dispute so the court should apply the law to these facts and, when applying the law, it is clear that the court should rule for the moving party.

Holding

1. The court's determination of a matter of law based on the issue presented in the particular case -The court held that defendant infringed plaintiff's trademark.

Defense

1. The denial or pleading of the defendant in answer to the claim or charge that has been made. -Someone accuses me of something, these are my defenses to the claim E.g., fair use or something was not patentable or copyrightable

Red Soles Case

1. The district court invalidated a well-known trademark registration obtained by Christian Louboutin in 2008, allowing Yves Saint Laurent to sell shoes that were also adorned with red soles. 2. The Second Circuit ruled that Louboutin is entitled to protection for his distinctive red-soled shoe, except that he cannot have exclusive rights to red soles when the entire shoe is red in color. 3. The ruling effectively allows YSL to sell its monochrome red shoes, while allowing Louboutin to protect its distinctive red sole mark in other situations

Functionality Doctrine from (Qualitex Case)

1. The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature 2. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

Functionality Doctrine Purpose

1. The functionality doctrine serves as an important bulwark against undue expansion of trademark protection, particularly in the trade dress area 2. A commonly raised scenario involves a functional feature that has attained secondary meaning (i.e., acquired distinctiveness) through the success of the product—and perhaps by virtue of a patent monopoly. 3. The functionality doctrine would suggest that, despite the recognition of origin and other indicia of secondary meaning with regard to the product, the functional elements of that product cannot be trademarked.

William R. Warner & Co. v. Eli Lilly & Co. (Cont.)

1. The plaintiff was unable, however, to obtain an injunction barring the defendant from selling the product at all. 2. Trademark law does not prevent competitors from advertising and competing honestly. 3. IMPORTANT: This highlights the difference between trademark rights as distinguished from patent protection, which does provide an exclusive right to make, use, sell, or offer to sell the product itself. In other words, trademark law focuses on deceptive marketing, but does not provide exclusive rights to sell the product itself. 4. Trademark law does not offer exclusivity with regard to selling the product itself. It only protects the brand or trademark.

Trade Dress Cont.

1. The product packaging cases, of which there are many, are relatively uncontroversial. - This lack of controversy may reflect the fact that there are many packaging choices available to competitors and ordinarily no plausible claim that the packaging serves functional purposes. 2. Product packaging is largely an extension of ordinary trademarks found on products such as logos and brand names. -Accordingly, not only is the name Coca-Cola protectable, but so is the red-and-white swirl packaging of its producer's cans and the distinctive shape of the old-fashioned Coke bottle.

Experimental Use : Exception to 1 year rule

1. The question posed by the experimental use doctrine is whether the primary purpose of the inventor at the time of the sale was to conduct experimentation. - Experimental use means perfecting or completing an invention to the point of determining that it will work for its intended purpose. Therefore, experimental use ends with an actual reduction to practice. Trying to make an invention work does not start the clock ticking; it is understood that it takes time reduce these things to practice

Dilution Examples

1. There were some instances, however, in which the result under this standard might be undesirable. The classic hypothetical examples are "DuPont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos, [and] Bulova gowns." 2. In each of these instances, even though the ordinary consumer would not be confused—i.e., would probably not believe that the plaintiff trademark owner was the source or sponsor of the defendant's goods or services—there was still some damage done to the DISTINCTIVE QUALITY of the plaintiff's brand name. 3. Over time, if these uses were allowed to proceed unabated, the term "Kodak" would no longer automatically bring to mind the maker of film and other photographic products.

Statutory Trademark Rights and Incontestability

1. These are rights from the trademark statute that was passed under the commerce clause. 2. Enterprises that successfully register and maintain their trademarks with the U.S. Patent & Trademark Office receive significant benefits. 3. The most important of these rights are constructive notice under section 22 (15 U.S.C. § 1072) and incontestability under section 15 of the Lanham Act (15 U.S.C. § 1065). 4. In effect, this pair of provisions permits a federal registrant to obtain preemptive rights over any post-registration users of confusingly similar trademarks.

Beating 103

1. This is where we look at what would be obvious to Phosita. This is really a matter of opinion. 2. These rejectwons are typically about combining multiple pieces of prior art. 3. In practice, you attack the combination. -nobody would have thought to combine them to make the claimed invention, or explain that the combination does not work together

Substantial Similarity

1. To determine whether an instance of copying is legally actionable, a side-by-side comparison must be made between the original and the copy to determine whether a layman (a person without professional or specialized knowledge in a particular subject) would view the two works as substantially similar. 2. Whether two works are substantially similar is a question for the jury itself to determine by examining the actual works in question - Where a high degree of access is shown, courts require a lower standard of proof of substantial similarity. Swirsky v. Carey -The allegedly infringing work has copied original, protectable elements of the original work

Elements of Copyright Infringement

1. To establish a claim for copyright infringement, a plaintiff must prove: -Ownership of a valid copyright - The defendant copied basic elements of the plaintiff's work that are original 2. To establish actionable copying (i.e., the second element), a plaintiff must prove - Factual copying & -Substantial similarity Positive Black Talk, Inc. v. Cash Money Records

Trademark Coexisitng

1. Two identical marks can coexist so long as the goods and services are not related 2. Trademarks are earned through use in commerce. -You show that consumers associate the mark with the goods or services 3. Two users of the same trademark -Senior User - First to start using the trademark -Junior User - Begins using the trademark after the first user 4.Trademark law protects trademarks and not products themselves

Question of Fact

1. Typically means this is a question for a jury unless it is a bench trial, meaning the judge is the finder of fact and makes conclusions of law

Defense to Infringement: Fair Use

1. Under this theory, infringement has occurred. However, the infringer is doing something permissible 2. Permissible purposes: criticism, comment, news reporting, teaching, scholarship, and research. Examples: 1. Quotation of passages from a scholarly work, -such as quotes contained in a law review article, citing and quoting from earlier law review commentary. 2. Parody 3. Summary and brief quotations from a speech or an article 4. Copying of a small part of the work to discuss a particular educational point 5. Work might incidentally appear in a news reel or a broadcast of a work

Copyright Ownership

1. Who the author is? 2. A "joint work" is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole 3. Example: Childress v. Taylor: co-authorship requires that each author contribute creative expression substantial enough to be independently copyrightable -Theoretically avoids "he took my idea and wrote a book" and claims for purported coauthors that provided minor ideas, suggestions, and changes

Defenses to Trademark Infringement

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

How to beat 102 rejection

1. You argue An element or elements are missing from the reference cited against you That the examiner misunderstood (respectfully) 2. You narrow your claim to include an element not included in the prior art that was included in your application When you add an element, you reduce the scope Think of the Camelbak Maybe all water bottles in the past had containers and tops, but there was no bite valve. You add the bite valve to the claim and you are good to go Show that the reference cited against you was after your filing date

17 U.S. Code § 115 in English

1. You may cover a song and you will automatically be granted a compulsory license. When you cover a song, you are performing the underlying composition. Examples: -Whitney Houston's I Will Always Love You, cover of Dolly Parton -Jimmy Hendrix's All Along the Watchtower, cover of Bob Dylan 2. You may also license a song for digital distribution. 3. You do not need permission to cover a song but you do need --to notify the © holder and --pay the mechanical royalty 4. The cover artist will not own the © to the underlying musical composition but will own the © to the audio recording

17 U.S. Code § 115 in English Cont.

1. You may not sample another's music under any circumstances. Period. -This is infringement of the sound recording and is not allowed. -You can do whatever you want if you have a license but Copyright law does not allow for any use of another's sound recordings without permission. 2. Example: Thinking to 1989 -Taylor Swift: owns the underlying musical composition and her recordings -Ryan Adams: owns just his recordings -So, nobody can sample either Adams or Swift. But only Swift would get the compulsory license to another cover. (If somebody covers ryans, they must notify ryan not taylor even though she did a cover)

Actionable

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

Minimum Standard of Creativity Feist Publications, Inc. v. Rural Telephone Service Co.

2.Two important points -Facts are not copyrightable; -Compilations of facts are generally not copyrightable. 3. Originality -as used in ©, -To qualify for copyright protection, a work must be independently created by the author (That just means not copied!) and must possess some minimal degree of creativity Examples: -What if two people come up with the same thing independently? -Originality is a requirement of 1.8.8

Three Hurdles

35 U.S.C. §102 - Conditions for patentability; NOVEL (1 year to file) 35 U.S.C. § 103 - Conditions for patentability; NON-OBVIOUS subject matter 35 U.S.C. § 112 - Specification (ENABLEMENT and Best Mode)

17 U.S. Code § 115 compulsory license (Musical Arrangement)

A compulsory license includes the privilege of making a musical arrangement of the work to the extent necessary to conform it to the style or manner of interpretation of the performance involved, but the arrangement shall not change the basic melody or fundamental character of the work, and shall not be subject to protection as a derivative work under this title, except with the express consent of the copyright owner.

Copyrights - What is it

A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed

102 Prior Art that anticpates my invention

A patent or a printed publication disclosing a widget, or a widget in use or on sale, that includes all three elements (a), (b), and (c).

U.S.C. 102(a) Novelty; Prior Art

A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. The Prior Art is what you cross for your first two hurdles, novelty and obviousness → must be new and must not have been obvious If all of the elements of your invention are "anticipated" by the prior art, you will not get a patent Exceptions: -(a)Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection -(b) These expectations limit the use of an inventors own work as prior art when the inventor's own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly

Uncopyrightable Material: Words and Short Phrases (Copyright Office Circular 34)

A. Copyright law does not protect -names, titles, or short phrases -expressions. "Never takes wiggas precious loose change" 1. Names of Products or services 2. Titles of works 3. Names of businesses, organizations, or groups (includes performing groups) 4. pseudonyms of individuals (pen or stage names) 5. Listing of directions in recipes, formulas, or labels (text directions copy-rightable) 6. Catchwords, catchphrases, mottoes, slogans, short advertising expressions

Trademarks - What is the right conferred / how long does it last

Allows prevention of confusingly similar arks to enter the market Forever

Example of Infringement: Ambush Marketing

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

Prior Art

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

Works made for hire

Aymes v. Bonelli: A. Work for hire means the person in question was an employee of the company and the copyright goes to the company B. Copyright goes to the person in question if he was an independent contractor and not an employee C. Number of factors that needed to be weighed to determine if someone was an employee: 1. The hiring party's right to control the manner and means of creation; 2. The skill required; 3. The provision of employee benefits; 4. The tax treatment of the hired party; and 5. Whether the hiring party has the right to assign additional projects to the hired party.

Common Law Trademark Use

Blue Bell, Inc. v. Farah Manufacturing Co. -This is for when neither party has a federal trademark. -Illustrates common law "use". -Two companies using the mark "Time Out" for men's clothes. -Both parties market their goods on a national scale, so a joint utilization cannot work. -Issue: which party established prior use of the mark in trade?

The Intellectual Property Clause 1.8.8

Congress shall have Power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries Mentions for limited time and exclusive right

The Commerce Clause 1.8.3

Congress shall have power to regulate commerce with foreign Nations, and among the several states, and with the Indian Tribes

Parody, Satire, and Other Expressive Uses

Consider how a lawyer should advise a potential parodist as to its liability in light of this standard, as well as the parodist's likely response if it were not interested in defending against protracted and unpredictable litigation involving a large, well financed opponent. Another important factor was the weight the Mutual of Omaha court gave to the plaintiff's survey evidence and the apparent absence of such evidence in L & L Wings. In light of the outcomes in these cases, it seems likely that a well advised and wealthy trademark owner would foot the bill for a survey to bolster its claim of confusion.

17 U.S. Code 102 - Subject matter of copyright: In general

Copyright protection exists in: -Original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, (directly or with aid of machine ) A. Works of authorship include the following categories: "Let me drink copious pitchers of Ale, study after" 1. Literary Works 2. Musical Works, including any accompanying words 3. Dramatic works, including any accompanying music 4. Choreograpic works and Pantomimes 5. Pictoral, graphic, and sculptural works 6. Audivisual works 7. Sound recordings 8. Architectural works B. copyright protection for an original work of authorship does NOT extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

Defamation: Restatement (Second) of Torts

Defamation laws protect the reputations of individuals and other entities (such as businesses) from untrue and damaging statements. Libel refers to statements that can be seen (typically written and published), while slander occurs when a defamatory statement is spoken or otherwise audible (such as a radio broadcast). To prove either type of defamation, plaintiffs must prove the following four elements: 1. (Defamatory Statement) the plaintiff must prove that the defendant made a false and defamatory statement concerning the plaintiff. 2. (Publication to Third Party) the plaintiff must prove that the defendant made an unprivileged publication to a third party. 3. (Negligence) the plaintiff must prove that the publisher acted at least negligently in publishing the communication. 4. (Special Damages) in some cases, the plaintiff must prove special damages.

The Spectrum of Distinctiveness

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

Prosecution

Describes the interaction between applicants and their representatives and a government office

Actions of the inventor to prevent patentability

Disclosures more than one year before filing date Public use of more than one year before the filing date On sale for more than one year before filing date

Public Policy reasons for having a deadline - Baxter International, Inc. v. COBE Laboratories, Inc.

Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available; Favoring the prompt and widespread disclosure of inventions; Allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent; and Prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time

Trademarks - What they do

Distinguishes the source of goods from one party from those of others About the integrity of the marketplace and preventing consumer confusion Not about rewarding creativity

17 U.S. Code § 115 compulsory license & when it does not apply (Duplication of sound recording.)

Duplication of sound recording. 1. A person may not obtain a compulsory license for the use of the work in the making of phonorecords {duplicating a sound recording fixed by another}, including by means of digital phonorecord delivery, unless - Such sound recording was fixed lawfully - The making of the phonorecords was AUTHORIZED by the owner of the copyright in the sound recording

Pleading

Every legal document filed in a lawsuit

Trademarks: infringement

Every single potential outcome of trademark infringement hinges upon a finding of consumer confusion, except dilution of a famous mark. We analyze trademark infringement by analyzing consumer confusion with the likelihood of confusion factors (here, Polaroid test from Second Circuit): (1) Strength (2) Similarity (3) Proximity (4) Bride Gap (5) Actual Confusion (6) Bad Faith (7) Quality (8) Sophistication If you apply these factors to the facts of a case and decide customers would be confused about the products coming from the same company, trademark infringement has occurred and one of the outcomes from the previous slide will occur. If you apply these factors to the facts of a case decide customers were not confused, everyone gets to keep operating.

Section 15 of the Lanham Act

Except on a ground for which application to cancel may be filed at any time under paragraphs (3) and (5) of section 14 of this Act [15 USC 1064(3), (5)], and except to the extent, if any, to which the use of a [mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this Act of such registered mark] the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been [in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable.]

Elements of Infringement: Factual coping inferred from...

Factual copying can be proven by direct or circumstantial evidence 1. direct evidence of copying is rarely available, factual copying may be inferred from: - Proof that the defendant had access to the copyrighted work prior to creation of the infringing work (purposeful or circumstantial evidence) - Probative similarity "requires a showing that the works, when compared as a whole, are adequately similar to establish appropriation" 2. If a plaintiff establishes an inference of factual copying (by showing access and probative similarity), the defendant can rebut that inference, and thus escape liability for infringement, if he can prove that he independently created the work. 3. If a plaintiff has established factual copying (and the defendant does not establish independent creation), the plaintiff must also prove that the copyrighted work and the allegedly infringing work are substantially similar

Five Categories of Trademarks

GDSAF (******** Shit Ass F*ck) 1. Generic (never trademarkable) - Trademark that has come to be understood as reffering to the genus of which the particular product is a species (Examples: Band-Aid, Velcro, Chapstick) -understand if the type of service or goods is determined in the mark. For example, if you're selling tables and wardrobes, is the word "furniture" in the mark? -Do consumers understand that the mark identifies the type of goods or services you're selling without educating them 2. Descriptive (can be trademarkable is secondary meeting) cannot acquire distinctiveness if not in public domain - Identifies a significant characteristic of the article; conveys an immediate idea of the ingredients, qualities or characteristics of the goods (Examples: International Business Machines - IBM, SHARP - Television) 3. Suggestive - Requires imiganitation, thought and perception to reach a conclusion as to the nature of goods (distinctive but not descriptive) - mark which does not describe a product, but suggests or references it, requiring consumers to exercise imagination to connect the mark with the product (Example: MICROSOFT - suggestive of software for microcomputers) 4.Arbitrary -Use of a common word applied in an unfamiliar way -utilizes a device having a common meaning that has no relation to the goods or services being sold (Example: Apple) 5. Fanciful -Words invented solely for their use as trademarks (Example: EXXON, KODAK)

Dilution: (3)Famous Mark

If a trademark is famous to general consuming audiences of the US, the senior user can stop a junior user from using it, even if there would not be consumer confusion.

17 U.S. Code § 115 compulsory license & when it does not apply

In the case of a digital music provider seeking to make and distribute digital phonorecord deliveries of a sound recording embodying a musical work under a compulsory license for which clause it does not apply: 1. The first fixation of such sound recording was made under the authority of the musical work copyright owner, and the sound recording copyright owner has the authority of the musical work copyright owner to make and distribute digital phonorecord deliveries embodying such work to the public in the United States 2. The sound recording copyright owner, or the authorized distributor of the sound recording copyright owner, has authorized the digital music provider to make and distribute digital phonorecord deliveries of the sound recording to the public in the United States

Incontestability: What it can't protect against

Incontestability does not shield a registration from all attacks: Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. If a registration is challenged, a proceeding will happen before the USPTO

Joint Inventors

Inventors may apply for a patent jointly even though: They did not physically work together at the same time; Each did not make the same type or amount of contribution; or Each did not make a contribution to the subject matter of every claim of the patent.

Ordinary Skill in the Art

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

Right of Publicity (Midler vs. Ford Motor Co.) Holding

Midler expands the scope of the right of publicity beyond its traditional protection of name and images and even its broader coverage of name, voice, likeness, or other identifying characteristics associated with the plaintiff. The court allows the plaintiff to obtain relief for the use of a "sound-alike" imitator of her voice in a commercial. The outcome of the case can be explained by two facts. The first is the defendants' bad faith in using an imitator after Midler declined to participate in the advertisement and instructing the imitator to make her voice and style sound as similar as possible to Midler in voice and style. Second, the sound-alike was perhaps too successful-listeners could reasonably believe that the voice was in fact Midler's, and no apparent effort was made to dispel this notion.

Patents - What are they

Patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention

Actions of Other to prevent Patent ability

Patented Described in a printed publication In public use On sale Otherwise available to the public before the effective filing date

Likelihood of Confusion Factors

Polaroid Corp. v. Polarad Electronics Corp. This case set forth a balancing test for determining the likelihood of confusion, consisting of the following factors: "Some Say People Bake All Boys Quality Scones" (1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the marketplace proximity of the two marks; (4) the likelihood that the senior user of the mark will bridge the gap; (enter the Junior users market) (5) evidence of actual confusion; (6) the junior user's bad faith in adopting the mark; (7) the quality of the junior user's goods; and (8) the sophistication of the relevant consumer group. This is a balancing test where you weigh all of these. No one factor is determinative and gives courts a whole lot of wiggle room

The Right of Publicity William L. Prosser Privacy, 48 CAL. L. REV. 383

Prosser's ... included "[a]ppropriation, for the defendant's advantage, of the plaintiff's name or likeness," which has evolved into the modern "publicity right." Say this on test if it is a question: "Here, Phosita asserts that we have misappropriated her name or likeness because..."

Colors, Sounds, Scents, and Other Marks

Qualitex Co. v. Jacobson Products Co. (Supreme Court) -Can a color alone be registered as a trademark under the Lanham Act? -The manufacturer of dry cleaning and laundry press pads sued a competitor, alleging that the defendant's imitation of the green-gold color of the plaintiff's pads constituted trademark infringement and unfair competition. -The plaintiff had used the color scheme since the 1950s and had obtained a federal trademark registration for the color. 1. Holding: -No special legal rule precludes color alone from serving as trademark and that the green-gold color of a manufacturer of dry cleaning press pads could in itself be registered as a source-indicating trademark. -The court required that the trademark owner establish secondary meaning (i.e., acquired distinctiveness), in effect treating the color trademark in the same manner as other descriptive marks.

Non Obvious Example

Reference 1 A patent that discloses elements (a) and (c) but not (b) Reference 2 A second patent that discloses element (b) for a similar invention The examiner will send you a rejection, under 103, that reference 1 discloses elements (a) and (c) but not (b). However, reference 2 discloses element (b). It would have been obvious to a person having the ordinary skill in the art to combine the teachings of reference 1 and reference 2 to arrive at the claimed invention

1.8.8 Patents and Copyrights

Rewarding authors and inventors for their creations by allowing a limited monopoly Incentivizes creativity and allows us to advance as a society People will invest time and resources if they can protect the investments

Right of Publicity (White vs. Samsung Electronic America) Holding

Samsung's parody advertisement did not use the plaintiff's image, name, voice, or any other traditionally protected attribute. Judge Kozinski's eloquent dissent from the denial of en banc rehearing persuasively addresses some of the broader problems with the panel opinion. Significantly, the panel did not actually hold that the plaintiff was entitled to relief, but only that she was entitled to go to trial on her claims.

17 U.S. Code § 115 compulsory license & when it can be applied

Scope of exclusive rights in nondramatic musical works: Compulsory license for making and distributing phonorecords 1. For nondramatic musical works, exclusive rights provided by clauses (1) & (3) of section 106, to make and to distribute phonorecords of such works, are subject to compulsory licensing A compulsory license includes the right to authorize others to make and distribute phonorecords and to distribute the phonorecord by means of a digital phonorecord delivery Conditions for compulsory license: 1. A person may obtain a compulsory license only if -the primary purpose in making phonorecords of the musical work is to distribute them to the public for private use, including by means of digital phonorecord delivery - and phonorecords of such musical work have previously been distributed to the public in the United States under the authority of the copyright owner of the work, including by means of digital phonorecord delivery

Trademark Infringement defense: Fair Use

Section 1115(b) of the Lanham Act provides the trademark fair use defense. It states: (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin... Fair Use if Trademark includes: - Partys individual name in his own business - individuals name of anyone in privity with such party - terms or device which is descriptive and used fairly in good faith only to describe the goods and services of such party - geographic region

Right of Publicity (Midler vs. Ford Motor Co.)

Singer Bette Midler apparently made it a practice to refuse to be involved in commercial advertisements (though she has since appeared in a recent commercial for Acura). In the 1980s, she rejected an offer to participate in a Ford Lincoln Mercury television commercial, which was part of the company's "Yuppie Campaign." Ford's advertising agency then hired Ula Hedwig, who had been a backup singer for Midler, to sing "Do You Want To Dance" (a song Midler had recorded) in the commercial. Hedwig was asked to "sound as much as possible like the Bette Midler record." Although neither Midler's name nor a picture of Midler was used in the commercial, the court held that "when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California."

Feist Publications, Inc. v. Rural Telephone Service Co. Sweat of the Brow Theory Elements for copyright protection for compilations:

Sweat of the Brow Theory -Copyright is a reward for the hard work that went into compiling facts -Expressly rejected in the U.S. Elements of Copyright protection for compilations 1. The collection and assembly of pre-existing material, facts, or data 2. The selection, coordination, or arrangement of those materials; and 3. The creation, by virtue of the particular selection, coordination, or arrangement, of an "original" work of authorship. NOTE: Facts are never copyrightable *irregardless* of who discovered them

Right of Publicity (White vs. Samsung Electronics America)

Tests the outer reaches of the claim. The defendant's advertisement consisted of an image of a robot with a blonde wig and evening dress, turning the letters in a futuristic game similar to "Wheel of Fortune." The court's finding of potential liability in Vanna White's suit against Samsung seems to leave little room for parody in product advertising, as it would be difficult to conjure up the image of any well-known celebrity without doing at least as much as was done in this case. Many commentators find the outcome and reasoning of this decision to be troubling, as it expands the right of publicity beyond the Midler context, where some viewers or listeners might well have believed Midler's voice was actually incorporated into the advertisement.

Statutory Rights: Limited Area Exception

That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from A DATE PRIOR to (A) the date of constructive use of the mark established pursuant to section 7(c), (B) the registration of the mark under this Act if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 12 of this Act: Provided, however, That this defense or defect shall apply [only for the area in which such continuous prior use is proved....]

DOCTRINE OF EQUIVALENTS

The doctrine of equivalents arises in the context of an infringement action. If an accused product or process does not literally infringe a patented invention, the accused product or process may be found to infringe under the doctrine of equivalents. The essential objective inquiry is: "Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?"

Specification - 112

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

Descriptive or Suggestive

There are three possible ways to analyze the problem: (More Suggestive because more protectable) (1) whether imagination is required in order to see a connection between the mark and the product, (2) whether other producers need to use the term in order to compete effectively (competitive need) (3) whether the mark has been used extensively by competitors other than the purported trademark owner (third-party use).

Becoming Generic

There is some danger that a term that is already descriptive can become generic, but so can a mark that is arbitrary, fanciful, or suggestive. The acquisition of secondary meaning (i.e., acquired distinctiveness) through use and successful marketing can lead to protection for a descriptive (or otherwise weak) mark, but even that strong de facto consumer recognition does not lead to legal protection in the case of generic marks. For example, "corn flakes" is a generic term and cannot be protected. - Yet most consumers probably think of Kellogg's when they think of corn flakes. Kellogg's has strong de facto recognition in the term "corn flakes," but possesses no right to exclude others from its use in the market. The term remains the generic name for the cereal product, despite its associations with Kellogg.

Complaint

This is the lawsuit filed by the plaintiff

Fair Use Trilogy

Three Supreme Court Cases on the Subject 1. Sony Corp. v. Universal City Studios -Time shifting for a later viewing is permissible 2. Harper & Row v. Nation Enterprises -Even if you are within a favored category, it is possible that a use may not be a fair use when analyzing the factors. Here, destroyed the market. 3. Campbell v. Acuff-Rose Music Inc. Parody is *almost* always permitted.

Trademarks: Infringement

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

Music

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

Question of Law

Typically means that the judge or appellate court judges decide the issue

Trademark Infringement defense: Abandonment

Under the Lanham Act, a mark is deemed to be abandoned if either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide [use of such mark made in the ordinary course of trade], and not made merely to reserve a right in a mark. (*Not using the mark in the ordinary course of trade for 3 years is abandonment*) (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark (*If a mark becomes the generic name for something, like Velcro, and the original trademark owner does nothing, like a marketing campaign, then it is abandoned*)

Application

What you submit when you are seeking patent, copyright, or trademark protection

Patents: What can (or can't) be patented & Unpatentable subject matter

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

Trademarks - What is it?

Word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others A service mark is a word, phrase, symbol, and/or design that identifies the source of a service rather than goods

Public Domain

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

Trademarks: Registrations with the USPTO

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

Provisional Patent Application

essentially a place holder to protect against a statutory bar or to ensure a priority date; cheaper You have one year from filing your provisional application to decide if you want to file a nonprovisional application Gives you a year to play around and see if the invention is commercially viable or to save up for the more expensive application

Nonprovisional

formal application and will get examined, can "claim priority" to a provisional application

Substantially similar

may infringe under the doctrine of equivalents

Bundle of Sticks: 17 U.S. Code § 106 - Exclusive rights in copyrighted works

the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: 1. Reproduction -Reproduce copyrighted work in copies or phonorecords 2. Derivative Works -Prepare derivative works based of copyrighted work 3. Distribution -To distribute copies or phonoreords of the copyrighted work to the public by sale or transfer of ownership (rental/lease/lending) 4. Public Performance -For audiovisual works, literary, musical, dramatic, choreographic works, motion pictures, the author may perform the copyrighted work publicly 5. Public Performance -For sound recordings, the author may perform the copyrighted work publicly by means of a digital audio transmission 6. Public Display -For literary, musical, dramatic, choreographic works, pantomimes, pictorial/graphic/sculptural works & other audiovisual work, the author may display the copyrighted work publicly

Reduction to Practice (RTP) -Actual RTP -Constructive RTP

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