Intellectual Property

Mattel v. Walking Mountain Prods. (9th Cir. 2003)

Artist who posed nude Barbie dolls not liable for using the mark Barbie in regard to his photographs because they accurately described his art which was parody.

Atari, Inc. v. N. Am. Philips Consumer Elecs. (7th Cir. 1982)

Copyright does not extend to necessary or standard elements for the treatment of a given topic.

Fishel v. Lueckel (S.D.N.Y. 1892)

Copyright infringement should follow tort law generally, so contributory and indirect infringement can create liability.

Global-Tech Appliances, Inc. v. SEB S.A. (U.S. 2011)

Knowledge that the action induced constituted infringement is an element of inducement liability. Knowledge can be shown by willful blindness however i.e. (1) subjectively believed that there was a high probability of infringement and (2) has taken actions to avoid learning about infringement, and so can be held liable.

Brookfield Communications v. West Coast Entertainment Corp. (9th Cir. 1999)

Marketing channel similarity evidenced by the mere fact that both goods are marketed on the internet.

Cty. of Suffolk v. First American Real Estate Sols. (2d Cir. 2001)

Tax maps can be copyrighted to the extent that the preparer needs an economic incentive and insofar as the public does not need the document to have notice of the law.

Morrissey v. Procter & Gamble (1st Cir. 1967)

There are limited enough ways to express the rule that allowing copyright protection would allow the entire idea to be monopolized by copyrighting just a handful. We can apply this principle without waiting for the last available form to be copyrighted. (Because the rules are nearly identical, heightened standard for showing infringement which some courts apply when there is a limited room for variation of expression cannot apply.)

MBO Labs., Inc. v. Becton, Dickinson & Co. (Fed. Cir. 2007)

Validity saving constructions are a "last resort, not a first principle." Applied only if ambiguous.

Jackson v. Warner Bros. (E.D. Mich. 1997)

60 second display of background art was fair use.

Genentech, Inc. v. Chiron Corp. (Fed. Cir. 1997)

"'Comprising' is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim."

Singer Mfg. Co. v. Birginal-Bigsby Corp. (C.C.P.A. 1963)

"American Beauty" is primarily geographically deceptively misdescriptive as applied to Japanese made sewing machines.

Precision Instrument Mfg. Co. v. Automotive Maintenance Mach. Co. (U.S. 1945)

"Any willful act concerning the cause of action which rightfully can be said to transgress equitable standards of conduct is sufficient cause for the invocation of the maxim." The maxim that unclean hands cannot take advantage of equity applies to trademark claims. (Including incontestable marks)

CG Roxane LLC v. Fiji Water Co. (N.D. Cal. 2008)

"Bottled at the source" is generic for water.

Du Pont Cellophane Co. v. Waxed Prods. Co. (2d Cir. 1936)

"Cellophane" became generic despite policing efforts.

Boston Duck Tours, LP v. Super Duck Tours, LLC (1st Cir. 2008)

"Duck tours" generic for amphibious city tours.

T. Marzetti Co. v. Roskam Baking Co. (6th Cir. 2012)

"Texas Toast" generic for croutons.

Dr. Seuss Enterprises v. Penguin Books (9th Cir. 1997)

"The Cat NOT in the Hat" found not to be fair use because it lampooned the OJ Simpson trial instead of the original work by Theodore Geisel, though this seems to be similar to Campbell in that it is the kind of work that could not be made without some copying of style.

Palm Bay Imports v. Veuve Clicquot (Fed. Cir. 2005)

"Veuve Clicquot" not confusingly similar to "The Widow" since most American consumers do not know French for "widow." Doctrine of Foreign equivalents is more of a guideline that applies when American consumers would stop and translate.

United States v. Adams (U.S. 1966)

(1) Prior art taught that batteries employing the claimed elements would not work. (2) The claimed combination worked much better than predicted. As a result, the combination is nonobvious.

Arnstein v. Porter (2d Cir. 1946)

(1) copying and (2) that the copying went far enough to be improper appropriation. The first element may be proved by defandant's admission or by circumstantial evidence, which also involves an inquiry into the similarities between the two works. The less evidence of access, the more evidence of similarity must be provided to support a finding that the work was copied. If copying is shown, then the similarities to support infringement need not be as stark as would be needed to prove copying and infringement all at once.

Westinghouse v. Boyden Power Brake Co. (U.S. 1898)

(Reverse Doctrine of Equivalents) This new invention fit the literal language of the triple-valve element of the original patent, but the Court still decided that it was not equivalent to the old design. The Court found that it would be inequitable to find Boyden (the second inventor) in infringement of the Westinghouse patent, when Boyden had found an elegant and simplified solution.

Allen Eng'g Corp. v. Bartell Indus., Inc. (Fed. Cir. 2002)

13 factors to be considered for finding experimental use (1) the necessity of public testing (2) the amount of control over the experiment retained by inventor (3) the nature of the invention (4) the length of the test period (5) whether payment was made (6) whether there was a secrecy obligation (7) whether records of the experiment were kept (8) who conducted the experiment (9) the degree of commercial exploitation during testing (10) whether the invention requires evaluation under actual conditions of use (11) whether testing was systematically performed (12) whether inventor monitored invention continually during testing (13) the nature of contacts made with potential customers.

Georgia-Pacific v. U.S. Plywood Corp. (S.D.N.Y. 1970)

15 factor test for determining a reasonable royalty. 1 The royalties received by the patent owner for the licensing of the patent-in-suit, proving or tending to prove an established royalty; 2 The rates paid by the licensee for the use of other patents comparable to the patent-in-suit; 3 The nature and scope of the license, as exclusive or non-exclusive, or as restricted or non-restricted in terms of territory or with respect to whom the manufactured product may be sold; 4 The licensor's established policy and marketing program to maintain its patent monopoly by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly; 5 The commercial relationship between the licensor and the licensee, such as whether they are competitors in the same territory in the same line of business, or whether they are inventor and promoter; 6 The effect of selling the patented specialty in promoting sales of other products of the licensee; the existing value of the invention to the licensor as a generator of sales of its non-patented items; and the extent of such derivative or convoyed sales; 7 The duration of the patent and the term of the license; 8 The established profitability of the product made under the patent; its commercial success; and its current popularity; 9 The utility and advantages of the patent property over the old modes or devices, if any, that had been used for working out similar results; 10 The nature of the patented invention; the character of the commercial embodiment of it as owned and produced by the licensor; and the benefits to those who have used the invention; 11 The extent to which the infringer has made use of the invention, and any evidence probative of the value of that use; 12 The portion of the profit or of the selling price that may be customary in the particular business or in comparable businesses to allow for the use of the invention or analogous inventions; 13 The portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer; 14 The opinion testimony of qualified experts; and 15 The amount that a licensor (such as the patent owner) and a licensee (such as the infringer) would have agreed upon (at the time the infringement began) if both had been reasonably and voluntarily trying to reach an agreement; that is, the amount that a prudent licensee - who desired, as a business proposition, to obtain a license to manufacture and sell a particular article embodying the patented invention - would have been willing to pay as a royalty and yet be able to make a reasonable profit, and which amount would have been acceptable by a prudent patent owner who was willing to grant a license.

Atlas Powder Co. v. E.I. du Pont De Nemours & Co. (Fed. Cir. 1984)

A 40% failure rate in mixing the components necessary to practice the invention does not prove lack of enablement, so long as a PHOSITA would know how to modify the failures to reach success without undue experimentation.

National Trailways Bus System v. Trailway Van Lines (E.D.N.Y. 1965)

A cancelled mark may still enjoy common law trademark protection arising from use.

Dellar v. Samuel Goldwyn, Inc. (2d Cir. 1939) (L. Hand)

A century into the development of fair use and the results are still unpredictable. "[T]he most troublesome in the whole law of copyright."

Qualitex Co. v. Jacobson Products Co., Inc. (U.S. 1995)

A color standing alone can be protectable trade dress as long as it meets the general requirements. If it serves the purpose, as it does in this case, of identifying the manufacturer of the marked products, it can be protected in the same way that descriptive marks are, in that it is not inherently distinctive and must acquire a secondary meaning. Must also be non-functional.

Nichols v. Universal Pictures Corp. (2d Cir. 1930) (L. Hand)

A copyrighted work may be described at ever higher levels of abstraction, but at some level of abstraction it is no longer protected because to give it protection would constitute protecting the author's ideas instead of her expression.

Star Athletica v. Varsity Brands (U.S. 2017)

A design incorporated into a useful article is protectable by copyright is determined by this two part test: (1) Can the feature to be protected be "perceived as a two- or three- dimensional work of art separate from the useful article"? (2) Would it "qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article"? Conceptual removal only, dissent argues for the possibility of physical removal.

MGM Studios Inc. v. Grokster, Ltd. (U.S. 2005)

A distributor is liable for acts of infringement by third parties using its product if it distributes with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps to foster infringement. (Where there is no such promoting, the rule of Sony prevents contributory liability if a product is capable of substantial non-infringing uses.)

Continental Casualty Co. v. Beardsley (2d Cir. 1958)

A form held to be copyrightable but copying just the form without the explanatory text was found not to be infringing. Where certain expressions can be necessary to accomplish a desired result in a legal or commercial conception, copyright protection is available but thin.

E.I. du Pont de Nemours & Co. v. Cetus Corp. (N.D. Cal. 1990)

A grant proposal sent to a limited number if expert reviewers is not publication under §102(a).

Aalmuhammed v. Lee (9th Cir. 2000)

A joint work is a work prepared by multiple authors with the intention that their contributions will be inseparably or interdependently merged. Each author must make an independently copyrightable contribution to the disputed work (at least in 9th Cir.). Must also be an author, which is person who superintends the arrangement.

Mayo Collaborative Services v. Prometheus Laboratories, Inc. (U.S. 2012)

A law of nature is not patentable, nor is a law of nature combined with conventional procedures, even if that law of nature was previously unknown. (Metabolite threshold; in this case.)

Brown Chemical Co. v. Meyer (U.S. 1891)

A man's name is his own property and has the same right to use it as any other part of his property.

Parke-Davis & Co. v. H.K. Mulford Co. (C.C.S.D.N.Y. 1911)

A mere extraction without change, it can be patentable. Whether something is truly a new composition of matter should be judged by practical standards. (It would be new seeming to a lay person; it has new therapeutic and commercial use.)

Micro Chemical, Inc. v. Lextron, Inc. (Fed. Cir. 2003)

A noninfringing alternative can merely be available to prevent recovery of lost profits, but it must be readily available.

Bikram's Yoga College of India v. Evolation Yoga (9th Cir. 2015)

A sequence of 26 yoga positions and two breathing exercises is uncopyrightable.

Malcolm Nicol & Co. v. Witco Corp. (Fed. Cir. 1989)

A trade name may bar registration of a similar trademark if confusion would result even if it is does not have any independent trademark or service mark significance.

Practice Mgmt. Info. Corp. v. American Med. Ass'n (9th Cir. 1997)

AMA copyright on industry standard used by the Health Care Financing Administration was valid, but the AMA was found to have misused it.

Luvdarts, L.L.C. v. AT & T Mobility, L.L.C. (9th Cir. 2013)

AT & T not secondarily liable for customer forwarding of copyrighted material in multimedia messages. Limited control and no direct benefit.

Dow Chem. Co. v. Astro-Valcour (Fed. Cir. 2001)

Abandon, suppress, or conceal basically means that an inventor neither pursues a patent nor takes steps to utilize or commercialize the invention.

Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd. (S.D.N.Y. 1993)

Abandonment is defined by statute as discontinued use with intent not to resume, which intent can be inferred from circumstances. Burden falls on party seeking cancellation because registered marks enjoy presumption of validity. Two consecutive years of disuse is presumptive abandonment.

Woodland Trust v. Flowertree Nursery, Inc. (Fed. Cir. 1998)

Absence of physical record meant that testimony to the effect that the patented watering system had been in use before being discontinued 20 years before its reinvention by Woodland Trust meant that defendants could not meet their burden of showing prior use by clear and convincing evidence, even though several witnesses testified to that effect.

Palmer v. BRG of Georgia (U.S. 1990)

Absent intellectual property, an agreement to divide up markets would be illegal per se.

Computer Associates International v. Altai, Inc. (2d Cir. 1992)

Abstraction-Filtration-Comparison test. First, sift out unprotectable material. A court should (1) analyze the program into levels of abstraction, starting from the code itself and ending at an articulation of the broad function of the program. At each level of abstraction elements should be analyzed to determine whether they are creative expression or dictated by considerations of function or efficiency, or taken from the public domain. If a substantial portion of this protectable core is copied there is infringement.

Tilghman v. Proctor (U.S. 1880)

Accidental separation of fatty acids from tallow in the operation of steam engines does not anticipate the patent on similar a process designed to separate those acids from tallow. Unwitting and undetected production of a product is not anticipatory.

Champion Spark Plug v. Sanders (U.S. 1947)

Accounting of profits only on showing of fraud or palming off, bad faith.

Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co. (2d Cir. 1990)

Aesthetic functionality turns on how many alternative designs remain for competitors.

Institut National des Appellations d'Origine v. Vintners Int'l Co. (Fed. Cir. 1992)

Affirming denial of opposition by French authority for policing wine names for registration of Chablis with a Twist mark. (Court agreed that Chablis had become generic.)

Mirage Editions, Inc. v. Albuquerque A.R.T. Co. (9th Cir. 1988)

Affixing art to a ceramic tile infringes the copyright of the the original work. Even though the art was purchased and the first sale doctrine exhausts the copyright protection with regard to resale, the production of a derivative work is like making a copy, and the result is protected.

Burgess v. Burgess (Eng. Rep. 1853)

All the Queen's subjects have a right to sell under their own names.

Cincinnati Car Co. v. New York Rapid Transit Corp. (2d Cir. 1933) (L. Hand)

Allocation of value among components of a product "is in its nature unanswerable."

U-Haul Int'l v. Jartran, Inc. (9th Cir. 1986)

Although injunctions are the main remedy in false advertising cases, court awarded $40 million dollars in damages using defendant's advertising costs as a reference point.

Roth Greeting Cards v. United Card Co. (9th Cir. 1970)

Considering the total similarity between two works, including unprotectable elements, when deciding if copying was improper.

Apple Corp. v. Motorola, Inc. (Fed. Cir. 2014

Always award some royalty for infringement.

Goodyear Tire and Rubber Co. v. Overman Cushion Tire Co. (6th Cir. 1937)

Amount that an infringer would be willing to pay while still making a profit is a reasonable royalty.

Ringgold v. Black Entertainment Television Inc. (2d Cir. 1997)

An artistic poster that appeared in the background of a tv show for less than 30 seconds was not fair use.

Vitronics Corp. v. Conceptronic, Inc. (Fed. Cir. 1996)

An interpretation that excludes that preferred embodiment is "rarely, if ever, correct."

United States v. Moghadam (11th Cir. 1999)

Anti-bootlegging provision upheld over constitutional challenge on a theory that it is a valid exercise of Congress' Commerce Clause authority.

321 Studios v. Metro-Goldwyn-Mayer, Inc. (N.D. Cal. 2004)

Anti-circumvention provision is not a copyright claim, so defense of fair use does not apply. Circumventing digital protection to make one copy can create liability if it is not exempted.

Universal City Studios, Inc. v. Corley (2d Cir. 2001)

Anti-circumvention survive intermediate scrutiny as content neutral restrictions on speech (distribution of code). Interest in preventing piracy is sufficiently weighty.

Texas Tanks Inc. v. Owens-Corning Fiberglas Corp. (5th Cir. 1997)

Any improper "exercise of control and domination" can constitute use, even if it is not a sale. Knowledge of the secret was used to develop a competing product in this case.

Demetriades v. Kaufmann (S.D.N.Y. 1988)

Architectural plans were protected by copyright from being copied, but constructing the same building was not a violation of that copyright. (Structures have little protection PGS copyrights because they are mostly functional. Congress later created special category for architecture.)

American Geophysical Union, et al. v. Texaco Inc. (2d Cir. 1994)

Archival photocopying of copyrighted material to convert articles into a useful format is not transformative and therefore not a fair use.

Voter Verified, Inc. v. Premier Election Solutions, Inc. (Fed. Cir. 2012)

Article posted on the internet but not indexed in search engines can still serve as a printed publication.

Mangren Res. & Dev. Corp. v. National Chem. Co. (7th Cir. 1996)

As long as the substance of the secret is used by the defendant, they can be liable, despite implementing their own modifications and improvements.

Mentor Graphics Corp. v. Quickburn Design Systems, Inc. (Fed. Cir. 1998)

Assignor estoppel. An assignor of a patent cannot challenge its validity.

Shamrock Technologies, Inc. v. Medical Sterilization, Inc. (Fed. Cir. 1990)

Assignor's participation of assignment under duress might be another exception to assignor estoppel.

Dastar Corp. v. Twentieth Century Fox Film Corp. (U.S. 2003)

Attribution right cases are probably abrogated by this case holding that federal copyright law provides no attribution right to the author of a creative work.

Avery Dennison Corp. v. Sumpton (9th Cir. 1999)

Avery and Dennison not famous marks, lower court reversed.

Rossi v. Motion Picture Association of America (9th Cir. 2004)

Bad faith takedown notice exposes copyright holder to suit for damages and attorney's fees per § 512 (f).

Bernard Foods Indus. v. Dietene Co. (7th Cir. 1969)

Before 1988 amendment, Lanham Act only restricted false or misleading statements in advertising about the advertiser's own product. Prior to that time, only state law tort claims were available to police false or misleading claims about a competitor's product.

Shaw v. Lindheim (9th Cir. 1990)

Bifurcation of appropriation test for copyright infringement. First, the extrinsic test involves analytic dissection of the objective manifestations of creativity (plot, themes, dialogue, mood, setting, pace, sequence, character) and determines which elements are protectable. Next, the intrinsic test applies a purely subjective test to determine whether defendant's work improperly appropriates protected expression.

Nystrom v. TREX Co., Inc. (Fed. Cir. 2005)

Boards not expressly limited to wooden boards for flooring, but use in context made it clear that the claimed invention covered only wooden deck-boards. Competitor making artificial decking material is thus not infringing. Intrinsic context.

Volkswagen AG v. Dorling Kindersley Publishing Inc. (E.D. Mich. 2009)

Book about cars and car accessories are not necessarily marketed through the same channels just because they are both sold on amazon.com.

Schwan's IP, LLC v. Kraft Pizza Co. (D. Minn. 2005)

Brick Oven Pizza was born generic, and refused registration on this ground.

In re Skvorecz (Fed. Cir. 2009)

Broadest reasonable construction standard for the prosecution process is justified because it facilitates the exploration of the farthest potential metes and bounds of protection, and thus aids in sharpening and clarifying claims.

Leicester v. Warner Bros. (9th Cir. 2000)

Building whose courtyard space and wall were designed by an artist was found to be protectable as a part of a larger work of architecture and not as a sculpture. As a result, the portrayal of the building as the Second Bank of Gotham in Batman Forever was no infringement of copyright. (Special rules allowing pictorial representations of architecture.)

Atlas Powder Co. v. Ireco, Inc. (Fed. Cir. 1999)

But a patent on a new process using the product may still be available.

Community for Creative Non-Violence et al. v. Reid (U.S. 1989)

COA was right to presume that Congress meant to incorporate the common law of agency in its definition of "employee" and especially "scope of employment" (a term of art) for the purpose of deciding if something meets definition of work for hire.

Sam Francis Foundation v. Christies, Inc. (9th Cir. 2015)

California law requiring a 5% resale royalty to the original author of the work is unconstitutional for dormant commerce clause reasons.

Maryland Stadium Authority v. Becker (D. Md. 1992)

Camden Yards mark protected because of advertising activity prior to the finalization of the name when someone starts selling t-shirts with the name after the name is finalized, but before the park opens. Bad faith emphasis.

Filkins v. Blackman (C.C.D. Conn. 1876)

Cannot sell a trademark to another firm for use on a different product.

Therasense v. Becton-Dickinson, Inc. (Fed. Cir. 2011)(en banc)

Clear and tightened requirements for inequitable conduct defenses. (1) Specific intent to deceive must be shown or inferred by clear and convincing evidence, which means that intent to deceive must be the only reasonable inference to be drawn from the facts presented. (2) But-for materiality must be shown by clear and convincing evidence, however, materiality is to be judged from the point of view of the PTO, which has a lower standard for finding invalidity than the clear and convincing evidence required to overcome the presumption of validity in a district court.

Levy v. Kosher Overseers Association of America Inc. (S.D.N.Y. 1995)

Circle K kosher mark is certification mark maintaining centralized standards.

Pioneer Hi-Bred International v. Holden Foundation Seeds, Inc. (8th Cir. 1994)

Circumstantial evidence of misappropriation can be sufficient (even with no identification of specific misappropriation). Probability of independent development shown to be very low; combined with reasonable precautions.

Community of Roquefort v. William Faehndrich, Inc. (2d Cir. 1962)

City of Roquefort has a certification mark for cheese actually cured in their caves. Enjoining name "Imported Roquefort Cheese" on cheese not made there. (Certification marks must be maintained by a non-user who makes them available to anyone who meets the qualifications.)

Williamson v. Citrix Online LLC (Fed. Cir. 2015) (en banc)

Claim can be construed as means plus function even lacking the term means if the claim "fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function." Generic terms like "mechanism," "element," or "device" are indicative of such indefiniteness.

Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd. (Fed. Cir. 1991)

Claim could extend beyond the tested embodiment, but only as far as a PHOSITA would be able to infer from the disclosure. Embodiments of the genus claim that were not adequately taught could not be validly claimed. (In this case naturally occurring version of a protein not infringing because claim on all proteins with substantially the same activity was too broad when only recombinant version was disclosed.)

Prima Tek II, L.L.C. v. Polypap, S.A.R.L. (Fed. Cir. 2005)

Claim to potless floral arrangement invalid. The only limitation over the prior art was a crimping limitation, which the Court found was inherent to the means used in the prior art, although not separately disclosed.

Regents of the University of California v. Eli Lilly & Co. (Fed. Cir. 1997)

Claiming human DNA sequence in patent is invalid unless sequence is disclosed, even though the protein that it codes for is sequenced and disclosed, and even though the rat version of the same protein was disclosed. (Gun-jumping instead of late-claiming).

In re Langer (CCPA 1974)

Claims of utility generally presumed to be credible.

The Gentry Gallery, Inc. v. The Berkline Corp. (Fed. Cir. 1998)

Claims on sectionals with controls not in fixed consoles are invalid Gentry can claim more broadly than its preferred embodiment, but in this case it is clear that the specification is limited to console housed controls. Disclosure limits valid scope of claims.

Phillips v. AWH Corporation (Fed. Cir. 2005) (en banc)

Claims should be construed from the point of view of a PHOSITA at the time of application. This is the ordinary meaning of the claim. PHOSITA is deemed to read the claim in the context of the specification. Intrinsic evidence that can be inferred from other claims, from the specification, and from prosecution history gets priority, but extrinsic sources can also be used. Avoid importing limitations from the specification that do not appear in the claims. Counsels against a construction that requires an element to fulfill every function disclosed in the various embodiments

Norian Corp. v. Stryker Corp. (Fed. Cir. 2004)

Claims to a dental repair kit "consisting of" certain chemicals is not infringed by a competing kit, because that kit also included a mixing spatula.

Coach Servs. v. Triumph Learning, LLC (Fed. Cir. 2012)

Coach is strong mark for confusion purposes, but is not famous, even though it is well known in its niche, because Congress tightened up the requirements to prove fame, including abolishing niche fame.

New York Times Co., Inc. v. Tasini (U.S. 2001)

Collective work copyrights to publish revisions of the collective works does not extend to publishing the individual copyrighted works in the context of a searchable database as separate files without the permission of the individual copyright holders.

Shakespeare Co. v. Silstar Corp. (4th Cir. 1993)

Color scheme on a fishing rod cancelled for being functional, i.e. because it helped to catch fish. Fourth Circuit reverses on the grounds that incontestable marks are not susceptible to cancellation for functionality. (Statute later revised to allow functionality challenge.)

Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2005)

Commercial success of the product has no nexus to the patent because it is at least partially the result of another blocking patent not at issue.

Omnitech Int'l v. Clorox Co. (5th Cir.1994)

Compare with Dravo. Use does not include evaluating the trade secret in order to decide whether to license it or acquire the company. How far can this (fair) use go?

Collelo v. Geographic Servs., Inc. (Va. 2012)

Competition with the holder is not necessary for trade secret liability, as long as some damage from misappropriation can be shown.

U.S. Steel Corp. v. Phillips Petroleum Co. (Fed. Cir. 1989)

Complexity attendant to first to invent system is very great because of the way that conception, diligence, and reduction to practice work. Validity of patent upheld 36 years after patent was filed.

Schering Corp. v. Geneva Pharms., Inc. (Fed. Cir. 2003)

Compound not patentable because it was automatically produced by the human body on ingestion of Claritin, even though no one had characterized that metabolite before.

American Broadcasting Companies, Inc. v. Aereo, Inc. (U.S. 2014)

Congress made clear that any showing of moving pictures with their accompanying sound constitutes a performance, whether by a broadcaster or viewer, and that act is covered by copyright if it is public. For practical purposes, Aereo transmits a performance even if it does so from multiple copies. It must be so, because the act contemplates the possibility that not all members of the public will receive the transmission at the same time, but that transmission can still count as a public transmission. Dissent (Scalia with Thomas and Alito): We should require volitionality on part of broadcaster to be liable for a performance.

United States v. Martington (2d Cir. 2007)

Constitutional challenge to anti-bootlegging provision on the grounds that the performance being recorded was not fixed. Upheld criminal provision under the Commerce Clause and as separate from, and therefore not coming under any of the limits of, the IP Clause. Potentially implies the unconstitutionality of the civil provisions.

Goldstein v. California (U.S. 1973)

Constitutional language "writings" requires fixation in a tangible medium for protection. ("Physical rendering of expression")

Rhine v. Casio (Fed. Cir. 1999)

Construe claims to preserve validity.

Lexmark Int'l v. Static Control Components (U.S. 2014)

Consumers do not have standing to sue for false advertising, statutory standing limitation, not an Article III limitation. (Even though it seems like a consumer protection provision.)

Lee v. A.R.T. Company (7th Cir. 1997)

Contra Mirage. On nearly identical facts the 7th Circuit finds that mounting a picture on tile does not constitute enough originality to constitute a new work, so the first sale doctrine applied and the tiles could be resold without infringement.

Zenith Radio Corp. v.Hazeltine Research, Inc. (U.S. 1969)

Contra above nonmetered royalties untied to rate are suddenly patent misuse. This is the same practice by the same company.

Random House, Inc. v. Rosetta Books LLC (2d Cir. 2002)

Contract giving a license to all future publication of a work in book form does not extend to newly invented media, and so does not prevent the authors from making the works available as e-books.

Othnentec Ltd. v. Phelan (4th Cir 2008)

Contrast with Pioneer. Require "actual objective evidence" of misappropriation.

Sony Corporation of America v. Universal City Studios, Inc. (U.S. 1984)

Contributory infringement can be predicated on the sale of a piece of equipment only if that equipment is not capable of substantial non-infringing uses (by analogy to patent law).

C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc. (Fed. Cir. 1990)

Contributory infringement for products that can be used to infringe can only be sustained if the defendant teaches infringement or their product enables infringement to such an extent that they can be shown to have knowingly aided and abetted direct infringement. Knowledge mens rea.

Gershwin Publ'g Corp. v. Columbia Artists Mgmt. (2d Cir. 1971)

Contributory infringement lies when one has knowledge of infringing activity and induces, causes, or materially contributes to it.

Minton v. National Ass'n of Secs. Dealers, Inc. (Fed. Cir. 2003)

Conveyance of fully operational computer program implementing and embodying invention with a warranty of workability to lessee enabled lessee to practice the invention and was thus an offer of sale.

Basic Books v. Kinko's Graphics Corp. (S.D.N.Y. 1991)

Copy shop liable for printing course packs with copyrighted excerpts.

Lasercomb America, Inc. v. Reynolds (4th Cir. 1990)

Copyright misuse can render the copyright unenforceable until its improper effects are remedied. In this case soliciting and obtaining a license prohibiting the licensor form making computer-assisted die-making software for 99 years was misuse of a software copyright.

Lotus Dev. Corp. v. Bordland Int'l, Inc. (1st Cir. 1995)

Copyright on software should lapse when it becomes an industry standard. (Is genericide in for very successful brands similar.)

Eldred v. Ashcroft (U.S. 2003)

Copyright term extension act not violative of the First Amendment, nor is it an extension beyond the limited times requirement of the intellectual property clause. Nor is there an originality problem for extending protection on existing works.

Merrill v. Yeomans (U.S. 1876); Keystone Bridge Co. v. Phoenix Iron Co, (U.S. 1877)

Court endorses precise claiming, citing patents' public notice function. Invigorates the shift from "central" to "peripheral" claiming. (Sign posts to fence posts)

Burrow-Giles Lithographic Co. v. Sarony (U.S. 1884)

Court expresses doubt that creativity or artistic accomplishment is a prerequisite to copyright protection. (but Feist takes originality to be a requirement of constitutional authorship)

Philips v. Frey (5th Cir. 1994)

Court finds that a confidential relationship exists in negotiations for the sale of a company even though neither party requested it during negotiations. (Should have known standard.)

North American Vaccine, Inc. v. American Cyanamid Corp. (Fed. Cir. 1993)

Court had to resolve plausible dispute over the meaning of the word "a" in a patent. (one example of difficulties of patent interpretation)

Chef America, Inc. v. Lamb-Weston, Inc. (Fed. Cir. 2004)

Court refused to save a claim from a drafting error, so the claim only covered cookies baked to a temperature of 450-800, instead of at that temperature.

Bateman v. Mnemonics, Inc. (11th Cir. 1996)

Court seems to implement a standard of actual knowledge of a confidential relationship in order to find misappropriation on those grounds. (High mens rea bar for misappropriation.)

Minnesota Mining & Manufacturing Co. v. Johnson & Johnson Orthopaedics, Inc. (Fed. Cir. 1992)

Court used the purpose of the patent, to create smooth casts, to inform its conclusion that the prior disclosure of the same lubricants was not anticipation of the patented invention.

Oracle Am., Inc. v. Google, Inc. (N.D. Cal. 2012)

Courts cautiously accepting of conjoint analysis (statistical technique used in market research that helps determine how people value different attributes (feature, function, benefits) that make up an individual product or service) for reasonable royalty. In this case, some of the expert testimony based on conjoint analysis is admissible, some is not.

Transparent-Wrap Mach. Corp. v. Stokes & Smith Co. (U.S. 1947)

Courts generally lenient toward grantback license requirements, i.e. contractual obligation to grant a license back to the original patent holder for any improvements to the patented technology. (Sometimes grantbacks are connected to anti-competitive pooling.)

Burns v. Meyer (U.S. 1879)

Courts should be careful not to expand the claim agreed to by both the patent office and the inventor beyond its fair meaning.

Van Prods. Co. v. General Welding & Fabricating Co. (Pa. 1965)

Criticizes Dravo court for focussing on the question of a confidential relationship. The first question should be whether there was a secret at all. If not, then a violation of a confidential relationship will not give rise to liability.

Practice Mgmt. Info. Corp. v. Am. Med. Ass'n (9th Cir. 1997)

Current Procedural Termination is a copyrighted coding system for medical procedures which has become standard. Federal agencies adoption does not make copyright invalid, but it was misuse to license the system to the agency in exchange for an agreement not to use competitor's system.

Capitol Records, LLC v. ReDigi, Inc. (S.D.N.Y. 2013)

Customers of digital download reseller are not protected by the first sale doctrine. (Reproduction right was violated by infringing reseller, illegitimate sale not first sale.)

Virtual Works, Inc. v. Volkswagen of America, Inc. (4th Cir. 2001)

Cybersquatters would sometimes threaten to post disparaging material at the domain of the trademark owner in order to improve bargaining position and exact a higher price.

Intermatic, Inc. v. Toeppen (N.D. Ill. 1996)

Cybersquatting seems unfair, but does not fit squarely into confusion based protection, this is one of many cases extending dilution to cover cybersquatting, even if it means stretching the limits of fame.

Wilson Sporting Goods Co. v. David Geoffrey & Assocs. (Fed. Cir. 1990) (Prior Art Rule)

DOE cannot be used to obtain patent coverage which could not be lawfully obtained under the literal scope of the claims. Practicing an invention that reads on the prior art or is obvious in light of the prior art cannot be infringement.

Johnson & Johnson Associates Inc. v. R.E. Service Co., Inc. (Fed. Cir. 2002)

DOE cannot be used to reach subject matter that was disclosed, but not claimed. The only option is to seek a reissuance of the patent. (Within two years of issuance.) (Tracks Douglas dissent in Graver Tank.)

WMS Gaming, Inc. v. International Game Technology (Fed. Cir. 1999)

DOE in functional claims applies only when the function is an equivalent, not the underlying structure, was equivalent but not identical, or where the accused device contains an after-arising technology that was equivalent to the patented structure.

Cartoon Network LP, LLLP v. CSC Holdings, Inc. (2d Cir. 2008)

DVR user is like VCR user and they must bear their own liability. Provider of DVR service is not contributorily liable because they exercised no volition.

Lindy Pen Company, Inc. v. Bic Pen Corporation (9th Cir. 1993)

Damages either by showing lost profit or by showing unjust enrichment. In either case, however, the district court properly required evidence directed specifically to phone sales. Evidence of damages directly attributable to infringement is necessary for damages. (Except mandatory damages for willful infringement.)

Bleistein v. Donaldson Lithographing Co. (1903) (Holmes)

Dangerous for judges to evaluate artistic merits beyond the most obvious limits.

Cartoon Network LP, LLLP v. CSC Holdings, Inc. (2d Cir. 2008)

Data buffered for less than 1.2 seconds before being automatically overwritten is transitory and does not fix a cognizable copy.

ProCD, Inc. v. Zeidenberg (7th Cir. 1996)

Database protectable from copying in contract even though it cannot be copyrighted.

Warner Bros., Inc. v. Am. Broad. Cos. (2d Cir. 1983)

De minimis doctrine allows "literal copying of a small and usually insignificant portion of the plaintiff's work."

Fisher v. Dees (9th Cir. 1986)

De minimis doctrine applies when copying "is so minimal and fragmentary that the average audience would not recognize the appropriation."

Bridgeport Music, Inc. v. Dimension Films (6th Cir. 2005)

De minimis doctrine does not apply to rap sampling. Single note could infringe. (Statute protecting recording copyrights makes clear that any direct duplication is potentially infringing.)

CyberMedia, Inc. v. Symantec Corp. (N.D. Cal. 1998)

De minimis doctrine not applied without consideration of qualitative extent of the literal copying.

Glendale Int'l Corp. v. PTO (E.D. Va. 2005)

Deceptive marks cannot be registered even if they are not geographic. Titanium impermissibly deceptive as applied to a recreational vehicle that contained no titanium.

ITC Ltd. v. Punchgini, Inc. (2d Cir. 2007)

Declines to adopt famous marks doctrine (for foreign mark?).

Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co. (U.S. 1942)

Defendant has burden of proving that not all of the profits associated with infringing sales should be awarded to the plaintiff. Windfall to plaintiff better than windfall to wrongdoer.

Kelly-Brown v. Winfrey (2d Cir. 2013)

Defendant need not use the protected content as a mark to be liable for trademark infringement.

Commil USA, LLC v. Cisco Systems, Inc. (U.S. 2015)

Defendant's belief in the validity of the patent does not have any bearing on induced infringement. Scienter for inducement only touches on intent to bring about the infringement. An invalid patent can still be infringed. (Scalia dissent invalid patents confer no exclusivity, cannot be infringed, and therefore a belief in invalidity is a defense to the mens rea of inducement.)

Hormel Foods Corp. v. Jim Henson Prods., Inc. (2d Cir. 1996)

Defendant's parodic use of a character name Spa'am was in a movie was an acceptable parody of the Spam mark. Dealt with purely under likelihood of confusion analysis.

Forstmann Woolen Co. v. Murray Sices Corp. (D.N.Y. 1950)

Defense from trademark for anti-competitive use of the trademark.

Mitchell Bros. Film Group v. Adult Cinema Theater (9th Cir. 1980)

Defense to copyright on obscenity grounds defunct. (with regard to pornography in this case)

Caterpillar Inc. v. Walt Disney Co. (N.D. Ill. 2003)

Depicting plaintiff's bulldozers being used by a villain in a children's movie is not tarnishment. Tarnishment only occurs when the famous mark is attached to the defendant's unsavory goods.

Gorham Mfg. Co. v. White (U.S. 1871)

Design patent protection was passed into law in order to "give encouragement to the decorative arts." Also, silverware is an "article of manufacture" whose design can gain patent protection.

Atlanta Attachment Co. v. Leggett & Platt, Inc. (Fed. Cir. 2008)

Despite long list of factors, one factor can be decisive in an appropriate case. In this case, lack of control was dispositive.

Weatherchem Corp. v. J.L. Clark, Inc. (Fed. Cir. 1998)

Detailed drawings enough to make invention patentable. (And therefore trigger statutory bar if on sale.)

Citizens Financial Group, Inc. v. Citizens Nat. Bank of Evans City (3d Cir. 2004)

Egregious misconduct required to invoke unclean hands against a trademark plaintiff because protecting the public is a central concern of unfair competition law.

Levi Strauss & Co. v. Abercrombie & Fitch Trading Co. (9th Cir. 2011)

Dilution requires similarity sufficient to make it likely that one will "impair the distinctiveness" of another.

Microsoft Corp. v. Multi-Tech Sys. Inc. (Fed. Cir. 2004)

Disclaimer must still be "clear and unambiguous" to overcome ordinary meaning of terms. (Must be especially strong if disclaimer comes from prosecution history rather than the specification itself.

Dawn Donut Company, Inc. v. Hart's Food Stores, Inc. (2d Cir. 1959)

Dissent in part (Lumbard) (has become the law): Dawn has some licensees who are subject to supervision by contract, and other who are not. Those who are not need not constitute abandonment if Dawn in fact provides sufficient supervision. Their New York representative claims to have carried out inspections "in many cases" but it is not clear how frequent or how probing these inspections were. This is the same representative who failed to notice Hart's use of the DAWN mark. If this were not a dissent, Lumbard would remand for more factual findings and an order to cancel the mark is it finds inadequate policing of the mark. (This is triable issue of fact.)

Alice Corp. v. CLS Bank International (U.S. 2014)

Distilling two step test from Alice. Step 1: Does the patent claim a patent-ineligible law of nature, natural phenomena, or abstract idea? Step 2: If so, does the claim contain an inventive concept sufficient to transform the ineligible law of nature, natural phenomena, or abstract idea into a patent-eligible application of the ineligible subject matter?

Zatarain's, Inc. v. Oak Grove Smokehouse, Inc. (5th Cir. 1983)

Distinction between descriptive and suggestive marks. Fish-Fri is descriptive. The dictionary meaning of "fish fry" goes directly to frying fish, which is what the product at issue is for. There is no need for imagination to connect the mark to the product. Competitors are likely to find the terms at issue useful in describing their products,

Abbott Labs v. Geneva Pharmaceuticals, Inc. (Fed. Cir. 1999)

Distinguishing Tilghman where a product is appreciated and sold, even if the ultimate usefulness of the product is not appreciated by the prior accidental producer.

Sports Unlimited v. Lankford Enters. (10th Cir. 2002)

Distributing defamatory information to group between 2 and 7 people did not constitute advertising under the act.

Data General Corp. v. Grumman Systems Support Corp. (D. Mass 1993)

Distributing program in object code format while preserving the source code in secrecy maintains the trade secret, especially when combined with NDAs from customers. (Reverse engineering from the object code would still be fine.) If an injunction were to be granted, it would be limited in duration to the amount of time it would reasonably have taken to reverse engineer.

Woods v. Universal City Studios (S.D.N.Y. 1996)

Distribution of the film 12 Monkeys enjoined because in 3 scenes it lifted the design of a futuristic torture chamber from a picture the plaintiffs book.

O2 Micro Int'l v. Beyond Innovation Tech. Co. (Fed. Cir. 2008)

District court must set the scope every claim for which parties have presented a "fundamental dispute."

Picard v. United Aircraft Corp. (2d. Cir. 1942) (L. Hand)

Experiment that is not perfected is not prior art, but experiment that eventually goes on to become an invention reduced to practice is part of the art associated with that invention.

Graver Tank & MFG. Co. v. Linde Air Products Co. (U.S. 1950)

Doctrine of equivalents exists to avoid fraud on the patent. "[I]f two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in form or shape." Invocation of doctrine of equivalents not clearly erroneous. Expert testimony by chemists suggested that the two had similar reactivity in many contexts and that manganese could be considered an alkaline earth metal for the purposes of the patent.

Lockheed Martin Corp. v. Network Sols., Inc. (C.D. Cal. 1997)

Domain name use with nothing else is not automatically trademark use, and so cannot qualify as diluting use under the statute.

Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc. (6th Cir. 2012)

Dripping red wax seal on bourbon protected.

In re Broyhill Furn. Indus. (TTAB 2001)

Dubious holding that "Toscana" is primarily geographically deceptively misdescriptive.

Childress v. Taylor (2d Cir. 1991)

Each author must make an independently copyrightable contribution in order to be a joint author.

Boston Athletic Ass'n v. Sullivan (1st Cir. 1989)

Each circuit has its own likelihood of confusion test, but factors overlap.

Gilliam v. American Broadcasting Cos. (2d Cir. 1976)

Edited Monty Python shows not actionably mutilated under moral right because these rights were not recognized at the time. Court found that the mutilation was enough to mislead the public about the contents of the original work and found that this violated the Lanham Act (Trademark). (Right to attribution in substantially original form.)

Gates Rubber Co. v. Bando Chemical Industry (10th Cir. 1993)

Elaborates levels of abstraction for the abstraction step of the widely adopted Altai test (abstraction-filtration-comparison). These are guidelines open for adaptation in particular cases. (1) main purpose (2) architecture of program (flowchart) (3) modules of operations or stored data (4) individual algorithms in each module (5) source code (6) object code. Court defined categories for filtration of (unprotectable) elements, too: (1) ideas (2) the process or methods of the program (3) facts (4) public domain (5) merged expression (6) scene a faire.

In re Yardley (C.C.P.A. 1974)

Election (of category of protection) requirement conflicts with copyright and patent statutes. Spiro Agnew caricature watch can get design patent and copyright protection.

Amgen Inc. v. Hoechst Marion Roussel, Inc. (Fed. Cir. 2003)

Enablement requirement "more indulgent" than the written description requirement. Enablement is fulfilled as long as PHOSITA could replicate the invention without undue experimentation, but the disclosure could still be insufficient if a specific feature claimed is not described in the specification.

Mavrix Photographs, LLC v. LiveJournal, Inc. (9th Cir. 2017)

Encouraging unpaid moderators can give rise to liability despite the safe harbor only if the moderator meets the common law definition of an agent.

Rolex Watch, U.S.A., Inc. v. Michel Co. (9th Cir. 1999)

Enjoining use of rolex trademark on repaired Rolexes which contained non-Rolex parts.

Coca-Cola v. Gemini Rising, Inc. (E.D.N.Y. 1972)

Enjoy Cocaine ads tarnish the famous Coca-Cola mark.

Community for Creative Non-Violence v. Reid (D.C. Cir. 1988) (aff'd 1989)

Equal ownership for joint authors, even when it is obvious that their contributions were not equal.

A.C. Aukerman Co. v. R.L. Chaides Constr. Co. (Fed. Cir. 1992)

Equitable estoppel bars all relief on an infringement claim if the holder misleads the defendant into believing they will not be sued for infringement. (1) actor estopped must make misleading communication by words, conduct, or silence (usually required to know the truth of the matter), (2) other relies on the communication (3) other would be materially harmed by permitting the actor to assert a claim inconsistent with earlier conduct. Also, equitable discretion.

Monsanto Co. v. McFarling (Fed. Cir. 2007)

Established royalty is usually best measure of a reasonable royalty.

Community of Roquefort v. William Faehndrich, Inc. (2d Cir. 1962)

French City of Roquefort entitled to prevent the use of the term Roquefort to describe Hungarian cheese because of a U.S. registered certification mark.

Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010)

Established that the written description requirement of §112(a) is separate from enablement. Based on a careful textual analysis. It means that the specification must demonstrate to a PHOSITA that the inventor possesed what is claimed as of the filing. A functional explanation of NF-kB reduction and proposal of three classes of molecules that might achieve it was not enough to fulfill description requirement, even though they ultimately panned out.

Oliver v. Saint Germain Foundation (S.D. Cal. 1941)

Estoppel invoked to prevent an author from enforcing copyright for the copying of things she presented as facts, even though they are actually a fiction. (Owner claimed the manuscript had been dictated by a spirit from another planet.)

S.A. Louis Vuitton Malletier v. eBay, Inc. (Tribunal de Commerce de Paris 2008)

Europe protective of trademarks even in internet marketplaces. eBay violated Louis Vuitton's trademark by passively allowing infringers to sell goods online.

Genesee Brewing Co. v. Stroh Brewing Co. (2d Cir. 1997)

Even generic terms can attain protection against some kinds of unfair competition. Every reasonable means to prevent confusion about the source should have been taken when appropriating the admittedly generic title "Honey Brown Ale."

Capitol Records, LLC v. Vimeo, LLC (2d Cir. 2016)

Even though state protections of pre-1972 audio recordings are saved from preemption, and even though this can be enforced against the digital service providers according the Copyright Office, court rules that the provisions of the DMCA providing for safe harbors for internet service providers from copyright law also protect those providers from state law.

Estate of Martin Luther King, Jr., Inc. v. CBS, Inc. (11th Cir. 1999)

Even with accompanying broadcast distribution, delivery of "I Have a Dream" speech did not amount to general publication so as to divest common law protections.

In re Reed Elsevier Properties, Inc. (TTAB 2005)

Even with dot com added, terms like "lawyers.com" remain generic.

Selle v. Gibb (7th Cir. 1984)

Evidence of access must be presented in all cases. Access cannot be inferred by conjecture alone.

Union Carbide v. Ever-Ready, Inc. (7th Cir. 1976)

Evidence of actual confusion can be provided by consumer surveys. Reasonably prudent purchaser varies based on the realities of the market at issue. (More care expected for expensive or otherwise high risk purchases, for example)

Rupa Marya v. Warner/Chappell Music (C.D. Cal. 2015)

Evidence showed that Warner had no leg to stand on in attempting to assert its "Happy Birthday" copyright.

Automatic Radio Manufacturing Co. v. Hazeltine Research Inc. (U.S. 1950)

Example of traditional application of principle that contract party cannot challenge the validity of the consideration that it receives to patent licensing. This used to mean that a licensee could not challenge the validity of the patent that it paid for.

Grupo Gigante S.A. de C.V. v. Dallo & Co. (9th Cir. 2004)

Exception to territoriality for trademarks where a well known Mexican mark had gained secondary meaning just north of the border, in San Diego area.

Seven-Up Co. v. Coca-Cola Co. (5th Cir. 1996)

Exception to the general rule that isolated statements or correspondence to individuals does not count as advertising under the Lanham Act. A series of sales presentations made to bottlers was held to qualify as advertising under the Lanham Act.

Hoehling v. Universal City Studios, Inc. (2d Cir. 1980)

Excluding unprotectable elements from the comparison of works.

City of Elizabeth v. Pavement Company (U.S. 1877)

Experimental use by the inventor or his agent has never been considered to have the effect of abandonment. Even incidental benefit to the public proceeding from a single experimental implementation does not constitute abandonment. Applying these principles to a road that must be tested publically, and must be tested for a long time in order to ascertain durability, it is clear that the invention was not abandoned.

Tone Bros., Inc. v. Sysco Corp. (Fed. Cir. 1994)

Experimentation must be directed to the utility of the article whose design is patented in order to trigger the experimental use exception for design patents.

Group One, Ltd. v. Hallmark Cards, Inc. (Fed. Cir. 2001)

Exploratory negotiations are not enough for patented product to be on-sale. Only things which rise to the level of a commercial offer for sale under the UCC trigger the doctrine.

Mentor Graphics Corp. v. Quickturn Design Systems, Inc. (Fed. Cir. 1998)

Express reservation of right to challenge assigned patent might be an exception to otherwise broadly applied assignor estoppel.

Fromson v. Western Litho Plate and Supply Co. (Fed. Cir. 1988)

In the hypothetical negotiation, the infringer would have had three choices, forego use, license, or infringe. Assume they chose the second when they chose the third.

Pom Wonderful v. Coca-Cola (U.S. 2014) (Course Page)

FDCA and FDA regulation authorized by it do not preclude Lanham Act suits for false advertising even for food products for which the FDA has set labeling standards. The statutes supplement each other, without resolving the question of whether canon against implied appeals or cannon that the specific controls the narrow, the statutes can be best harmonized by making both regulatory enforcement under the FDCA and private enforcement under the Lanham act conduct covered by both. Remedial and substantive complementarity.

Sunbeam Prods. v. West Bend Co. (5th Cir. 1998)

FTDA extends anti-dilution protection to famous trade dress, too.

Castle Rock Entertainment Inc. v. Carol Publishing Group (2d Cir. 1998)

Facts about Seinfeld characters are copyrightable.

Capitol Records, LLC v. Vimeo, LLC (2d Cir. 2016)

Facts raising a suspicion of infringement, as opposed to making infringement obvious, does not trigger an obligation to investigate and remove under the DMCA. This is because of the express disclaimer of a duty to monitor for those seeking a safe haven. Not even sporadic instances of encouragements by Vimeo employees to post infringing content can create a generalized encouragement to infringe which would void the disclaimer of the duty to monitor.

Feist Publications v. Rural Telephone Service (U.S. 1991)

Facts themselves have long been held uncopyrightable, whereas compilations of facts can be copyrighted in many cases. The core question is whether the method of compilation meets the low bar of originality. (Phone book listings do not meet even this low bar; alphabetizing is time honored tradition.)

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (U.S. 2015)

Facts underlying claim constructions are reviewed for clear error, but Fed. Cir. reviews claim constructions as a whole de novo. (important because of emphasis on intrinsic evidence; which is matter of law)

EON IP Corp. v. Silver Spring Networks (Fed. Cir. 2016)

Failure to construe "mobile" and "portable" is reversible error when it was evident that the parties gave the terms different meanings.

Geoscan Inc. of Tex. v. Geotrace Techs., Inc. (5th Cir. 2000)

Failure to deposit does not threaten validity, but it does make the holder ineligible for registration until deposit is made. This, in turn, prevents an enforcement suit from being brought. Dismissal on grounds of incomplete deposit.

Chamberlain Group, Inc. v. Skylink Tech., Inc. (Fed. Cir. 2004)

Fair use defense does apply to anti-circumvention provisions of DMCA. (Minority rule.)

Harper & Row, Publishers, Inc., et al. v. Nation Enterprises et al. (U.S. 1985)

Fair use is narrower for unpublished works, as here. (Despite language in the copyright act that suggests that unpublished work is evaluated under the same fair use test; a House Report seems to authorize this.) Market value is the most important element of the fair use test. Qualitatively significant taking.

Folsom v. Marsh (C.C.D. Mass. 1841) (Justice Story sitting as circuit Judge)

Fair use trailblazing opinion. Two poles are obvious, with a difficult grey area in the middle. On one hand, reviewer can "cite largely from the original work" to do genuine criticism. On the other hand, use that supersedes the original is infringing. Washington's letters could not be reproduced in substantial part without authorization.

Times Mirror Magazine v. Las Vegas Sporting News (3d Cir. 2000)

Fame can be established in a narrow product market. (Makes it easier to show famousness)

Newman v. Quigg (D. D.C. 1988)

Fantastic claims do not get presumption of credibility for proving usefulness. (Perpetual motion, in this case).

eBay Inc. v. MercExchange, LLC (U.S. 2006)

Fed. Cir. presumptive injunction for patent infringement is wrong; the established four part test for granting an injunction in other cases should be applied to patent cases as well, instead of the presumption of an injunction that the Fed. Cir. had been applying. To obtain an injunction, plaintiff must demonstrate (1)irreparable injury (2) inadequacy of remedies at law to compensate (3) that and injunction is warranted by the balance of hardships to the parties (4) that an injunction does not disserve the public interest.

Greenwood v. Haitori Seiko Co., Ltd. (Fed. Cir. 1990)

Federal Circuit talks about objective factors (commercial success, long-felt need and failure by others, awards and praise, skepticism, "Teaching Away," and unexpected results, licensing activity, copying, advances in collateral technology, near simultaneous invention) as though they are a required fourth element of obviousness analysis

Buildex Inc. v. Kason Indus., Inc. (Fed. Cir. 1988)

Firm offer sent to prospective purchaser makes an invention on-sale even if it is transmitted under the mark of confidentiality.

E.S.S. Entertainment 2000 v. Rock Star Videos (9th Cir. 2008)

First Amendment protection for video game depiction of trademarked "Play Pen" strip club as long as the use had some artistic significance and was not expressly misleading.

Sebastian Int'l v. Long Drug Stores Corp. (9th Cir. 1995)

First sale doctrine applies to exhaust trademark rights with regard to a particular good after an authorized sale of a genuine product.

Vernor v. Autodesk Inc. (9th Cir. 2010)

First sale doctrine does not apply to software licenses where the copyright owner: (1) specifies a license rather than a sale (2) significantly restricts transfer of the software (3) imposes notable use restrictions.

In re Nantucket, Inc. (C.C.P.A. 1982)

First, rejection for geographic terms requires that the terms be (mis)descriptive "of them" meaning of the goods in question. Require a connection between the type of goods being sold and the place named in the mark. Second, to be invalidated as misdescriptive, a mark must be deceptively misdescriptive, i.e. likely to deceive the public about the origin of the goods.

CoStar Grp., Inc. v. LoopNet, Inc. (4th Cir. 2004)

Fixation requirement not satisfied by transitory instantiations of data produced while transmitting a file over a network.

Altana Pharma AG v. Teva Pharms. USA, Inc. (Fed. Cir. 2009)

Focus on lead compound, a compound in the prior art that is a "natural choice" for further efforts, in order to evaluate the obviousness of a chemical compound invention.

Network Automation Inc. v. Advanced Systems Concepts Inc. (9th Cir. 2011)

Following Rescuecom.

Western Diversified Servs. v. Hyundai Motor Am. Inc. (10th Cir. 2005)

Following the requirement of Champion Spark Plug that accounting of profits is available only in cases of bad faith willfulness.

Sovereign Military Hospitaller Order of St. John of Jerusalem of Rhodes & Malta v. Fla. Priory of the Knights Hospitallers of the Sovereign Order of St. John of Jerusalem, Knights of Malta, the Ecumenical Order (11th Cir. 2015)

Follows 11th Circuit precedent that maintains that incontestability makes a mark strong, but observes that the precedent is "almost certainly wrong."

Southland Sod Farms v. Stover Seed (9th Cir. 1997)

For literally false advertisement claims court will presume consumer confusion instead of requiring proof on that point.

Lenz v. Universal Music Corp. (9th Cir. 2015)

For purposes of § 512 (f) liability, the copyright owner must consider fair use, but the standard is still subjective good faith.

Princeton Univ. Press v. Michigan Document Servs. (6th Cir. 1996) (en banc)

For-profit copying of academic readers cannot be fair use.

Dam Things from Den., a/k/a Troll Co. ApS v. Russ Berrie & Co., Inc.

Foreign works that entered the public domain for failure to comply with formalities were restored protection by an amendment adopted in order to comply with the Berne Convention.

Peeler v. Miller (C.C.P.A. 1976)

Four year delay between reduction to practice and filing of application was abandonment.

Twentieth Century Fox Television v. Empire Distrib. Inc. (C.D. Cal. 2016)

Fox show can be called Empire even though there is an actual Empire label and the shows Empire label is fictional.

Money Store v. Harriscorp Finance, Inc. (7th Cir. 1982)

Fraud must be shown by clear and convincing evidence to be a defense. It must have been a deliberate attempt to mislead the PTO. (Also, a common law suit may still be available, since trademarks can be established through use.)

Halliburton Oil Well Cementing Co. (U.S. 1948)

Functional claiming rejected by Supreme Court. (Later reintroduced by Congress, but with the limitation that means plus function claims cover the structure described in the specification and the functional equivalents thereof.)

Kelley v. Chicago Park Dist. (7th Cir. 2011)

Garden is not fixed, plants naturally die and change. At what point could the fixation be said to have occurred? Artist cultivating a garden is not an author.

Warner-Jenkinson v. Hilton Davis Chemical Co. (U.S. 1997) (All elements rule)

General statement of DOE that also covers chemicals asks whether the accused has each element or its equivalent. Substantially the same result, in substantially the same way, by substantially the same function test fits better with mechanical inventions.

Microsoft Corp. v. Lindows.com, Inc. (W.D. Wash. 2004)

Generic terms cannot be revived.

King-Seeley Thermos Co. v. Aladdin Industries, Inc. (2d Cir. 1963)

Genericide of "thermos" which had once been a inherently distinctive term (probably suggestive).

Lucent Techs., Inc. v. Gateway, Inc. (Fed. Cir. 2009)

Georgia Pacific factors reaffirmed. Jury award rejected as unsupported as a reasonable royalty. Judges must supervise the introduction of "comparable licensing" evidence to make sure it is really comparable.

Kendall-Jackson Winery v. E. & J. Gallo Winery (9th Cir. 1998)

Grape leaf is generic trade dress for wine.

Metallurgical Industries Inc. v. Fourtek, Inc. (5th Cir. 1986)

Holder of trade secret can make limited disclosures for the purpose of putting the trade secret into effect without compromising trade secret protection. Also, trade secret can be secret improvement of an known process.

Rockwell Graphic Systems, Inc. v. DEV Industries, Inc. (7th Cir. 1991) (Posner)

Holders of trade secrets must take reasonable precautions to keep the secret confidential. Reasonable precautions are determined by a factual inquiry almost always for the jury.

Columbia Pictures v. Professional Real Estate Investors, Inc. (9th Cir. 1989)

Hotels can provide legally purchased copies of copyrighted videos to guests for use in their rooms because even if a hotel is open to the public in a certain sense, each guest's room is not.

TWM Mfg. Co. v. Dura Corp. (Fed. Cir. 1986)

Hypothetical negotiation must be flexibly applied, or it will disadvantage patentees whenever the court believes that the infringer would have chosen not to use the invention at all.

Louis Vuitton Malletier, S.A. v. Hyundai Motor Am. (S.D.N.Y. 2012)

Hyundai ad including basketball with Louis Vuitton logo found infringing. Because Hyundai was shown to have no intent to comment on Louis Vuitton the court found no basis for a parody defense. It was only commenting on luxury generally. (sharply criticized decision)

BMG Rights Management (US) LLC v. Cox Communication, Inc. (E.D. Va. 2015)

ISP failed to implement its repeat infringer policy, thus forfeiting DMCA safe harbor.

Larami Corp. v. Amron (E.D. Pa. 1993)

If a competing product fails to contain even one element of a claim, it does not infringe. Doctrine of equivalents requires a showing that the allegedly infringing product has the substantial equivalent of each element. Detachable chamber on water guns represented a dramatic improvement over the internal chamber for both manufacturer and user, so it should not be treated as an equivalent.

Eppendorf-Netheler-Hinz GmbH v. Ritter GmnH (5th CIr. 2002)

If a feature is found to be essential to a product's use it is functional and no inquiry into competitive alternatives is necessary.

Rite-Hite Corp. v. Kelley Co. (Fed. Cir. 1995) (en banc)

If an injury arising from the loss of sales of a product sold alongside the patented product should be reasonably foreseeable to an infringing competitor, it is compensable to the patentee.

Quality Inns v. McDonalds (D. Md. 1988)

If plaintiff holds family of trademarks, courts might find similarity more easily for a use that adds a member to that family (McSomethings).

Sheldon v. Metro-Goldwyn Pictures Corp. (2d Cir. 1936) (L. Hand)

If someone originally came up with a poem identical to Keats's Ode to a Grecian Urn, he could copywrite it and obtain protection. No one could copy the new poem, though they could copy Keats's.

Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions (6th Cir. 1998)

Image of the Rock and Roll Hall of Fame is fanciful, but not fanciful in a trademark sense. The museum itself did not function as a trademark in the public consciousness. Pictures taken of the building were not trademark infringement because the image of the building was used only infrequently on merchandise, not enough to establish a secondary meaning of the pictures.

Elvis Presley Enterprises v. Capece (5th Cir. 1998)

Imports parody satire distinction from Copyright law into traditional trademark analysis. Court found that Velvet Elvis name of restaurant was infringing because parody is no defense and the defendant's use was satire anyway.

Carl Zeiss Stiftung v. VEB Carl Zeiss, Jena (S.D.N.Y. 1969)

In order to invoke a trademark misuse defense for anti-competitive behavior, defendant must show an antitrust violation and further show that the mark was used to accomplish the violation. It is not enough that trademarked goods or services were sold, the mark must have been the vehicle for the violation. Otherwise, trademark goal of consumer protection would be unnecessarily frustrated.

Petro Stopping Centers v. James River Petroleum Inc. (4th Cir. 1997); Sports Authority Inc. v. Abercrombie & Fitch (E.D. Mich. 1997)

Incontestable marks are not necessarily strong marks for the purposes of confusion analysis. Here a descriptive mark is still weak for confusion purposes, even though it had been made incontestable.

E.I. duPont deNemours & Co. v. Christopher (5th Cir. 1970)

Independent illegality or breach of confidential relationship is not a prerequisite for trade secret misappropriation. The Texas Supreme Court adopted the rule from the Restatement of Torts; liability for secrets discovered by any improper means. (Include anything that fall below standards of commercial morality like circumventing reasonable precautions taken by the holder)

Monsanto Co. v. Ralph (Fed. Cir. 2004)

Infringer does not have to make a profit for the royalty to be reasonable. Hypothetical negotiation does not go so far as to prevent recovery altogether.

Garcia v. Google (9th Cir. 2014) (overturned en banc in 2015)

Innocence of Muslims fraud to get an actress to contribute. She is allowed to assert independent copyright over her performance even though she does not qualify as a joint author of the work writ large. 9th Cir. en banc overturns the panel decision. The only work is the film and to allow every contributor a copyright interest in it would make swiss cheese of copyright.

Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd. (Fed. Cir. 2007)

Inquiry in three steps (1) whether PHOSITA would have selected the asserted lead compound for research (2) whether the prior art would have provided the PHOSITA with the motivation to alter the lead compound to obtained the claimed compound (3) whether PHOSITA would have had a reasonable expectation of success in making the invention.

Intermatic, Inc. v. Toeppen (N.D. Ill. 1996)

Intermatic treated as famous mark. Part of a trend of finding marks famous uncritically in order to catch cyber-pirates.

Pepsico, Inc. v. Grapette Co. (8th Cir. 1969)

Invalidating the assignment of the soft drink mark Peppy for failure to transfer any assets including formula or process.

Micro Chem., Inc. v. Great Plains Chem. Co. (Fed. Cir. 1997)

Invention that is not close to completion for which there is no demonstrated high likelihood of successful operation does not start the on-sale bar clock even if offered for sale.

Alfred Bell & Co. v. Catalda Fine Arts, Inc. (2d Cir. 1951)

Inventor is charged with full knowledge of prior art. The "author" is not and can create a work identical to that which went before, but she is only protected by copyright against copying, not against the publication of a coincidentally identical work. Originality means little more than the absence of copying. Much lower bar than patent novelty.

Miller v. Universal Studios (5th Cir. 1981)

Investigative reporter writes a book on a bizarre kidnapping and rescue. Negotiations over the movie rights break down; Universal Studios makes the movie anyway. Fifth Circuit refuses to hold the studio liable because the underlying facts of the kidnapping and the rescue are not copyrightable, only their expression in the book is protected.

Assn. for Molecular Pathology v. Myriad Genetics, Inc. (U.S. 2013)

Isolated gDNA is an unpatentable product of nature, but cDNA is patentable. Sequence itself is a natural phenomenon. Copying from mRNA unquestionably creates something new, but mere isolation of a gene does not.

Franke v. Wiltschek (2d Cir 1953)

It doesn't matter that the defendant could have got the trade secret from an expired patent if they actually misappropriated it instead. (Is this consistent with the UTSA?)

Wham-O, Inc. v. Paramount Pictures Corp. (C.D. Cal. 2003)

It is not tarnishment to use the mark nominally even to criticize the markholder's product. Scene in a film in which character injures himself misusing a Slip 'N Slide is not tarnishment.

TCPIP Holding Co., Inc. v. Haar Communic'ns, Inc. (2d Cir. 2001)

It seems unlikely that Congress intended to confer dilution protection on marks that have been famous only recently, in a small part of the country, or among a small segment of the population, since it gives a powerful monopoly all over the country.

Seymore v. McCormick (1853)

It would be a "grave error" to instruct the jury that the damages should be governed by the same rule whether the patent covers a component or a whole machine.

Buti v. Impressa Perosa S.R.I. (2d Cir. 1998)

Italian restaurant advertising in the United States cannot obtain trademark protection for its name, "Fashion Cafe," because it does not offer its service in the U.S.

Taylor Wine Co. v. Bully Hill Vineyards (2d Cir. 1978)

Junior user of her own name likely to get a limited injunction which allows the continued use of the mark but requires disclaimer of affiliation with the senior user.

Basile, S.p.A. v. Basile (D.C. Cir. 1990)

Junior user's right to his own name has been reduced to non-trademark subsidiary use alongside the firm name. In all cases, the junior user has been required to display disclaimers. Limited fair use for names like for descriptive terms.

Ruckelshaus v. Monsanto Co. (U.S. 1984)

Just compensation required for government disclosure of a trade secret.

In re Hag Aktiengesellschaft (TTAB 1967)

Kaba is descriptive of coffee.

Kadant, Inc. v. Seeley Machine, Inc. (N.D.N.Y. 2003)

Know-how acquired as an employee can later be used to accomplish reverse engineering more efficiently. To hold otherwise would completely prevent former employees from working in the same market.

Online Policy Group v. Diebold, Inc. (N.D. Cal. 2004)

Knowing misrepresentation in takedown notice exposes copyright holder to suit for damages and attorney's fees per § 512 (f).

Anheuser-Busch, Inc. v. Stroh Brewery Co. (8th Cir. 1984)

L.A. not merely descriptive of low-alcohol beer. If some imagination is necessary to connect initials with the product, it is suggestive and not descriptive.

In re Pan Tex Hotel Corp. (TTAB 1976)

La Posada is not descriptive because it is unlikely that consumers will translate it to the English 'inn." (Despite doctrine that words may be translated for distinctiveness analysis)

In re Johanna Farms Inc. (TTAB 1988)

La Yogurt not descriptive because combination of English word and French article makes it clear that the mark is a brand name.

Petrella v. MGM Inc. (U.S. 2014)

Laches does not apply to bar damages in copyright, although they are statutorily limited to the last three years of infringement before suit. (Laches may curtail equitable relief in extraordinary circumstances.)

Barcamerica Int'l USA Trust v. Tyfield Importers, Inc. (9th Cir. 2002)

Lack of express contractual right to inspect and supervise licensee's operation as well as lack of actual supervision. Both relevant in denying trademark protection.

AstraZeneca AB, Inc. v. Mutual (Fed. Cir. 2004)

Language that signals more than simply giving an example, can be a restrictive definition. Rigid formalism is not required to amount to a disclaimer of certain meanings. Definition in the specification of "[t]he solubilizers suitable for the preparations"—"semi-solid or liquid non-ionic surface active agents" effectively disclaimed any definition of solubilizer but surfactants.

Vidal Sassoon, Inc. v. Bristol-Myers Co. (2d Cir. 1981)

Lanham Act covers some statements that are literally true, but are misleading, like innuendo, indirect intimations, and ambiguous suggestions." Comparison which misled consumers about the extent and methodology of the survey relied on was actionable.

Karl Storz Endoscopy-America, Inc. v. Fiber Tech Medical, Inc. (4th Cir. 2001)

Lanham act does not prevent the owner of a trademarked product from choosing another source of repair parts, so long as there is no misrepresentation of the repairer's source of part or the repairer's affiliation with the trademark owner.

In re Le Sorbet (TTAB 1985)

Le Sorbet is descriptive because of DFE.

Pagliero v. Wallace China Co. (9th Cir. 1952)

Leaf pattern on high quality china had established a secondary meaning but it was aesthetically functional because it was an "important ingredient in the commercial success of the product." Monopoly of this aesthetic appeal undermines free competition. (Properly reserved to copyright, probably)

Big O Tire Dealers, Inc. v. The Goodyear Tire & Rubber Company (10th Cir. 1977)

Less well known senior mark holder still has a reverse confusion action. Corrective advertising award is right measure of damages. Scaled for the percentage of the junior marks campaign was in the territory of the senior mark. Divided by four on top of area of effect scaling analogy to FTC awards of corrective advertising.

Martek Biosciences Corp. v. Nutrinova, Inc. (Fed. Cir. 2009)

Lexicographer rule invoked by the dissent to argue that a definition of "animal" that included humans conflicted with consistent usage in the specification. (Lexicographer rule often invoked for mere contextual reading.)

Automatic Radio Mfg. Co. v. Hazeltine Research, Inc. (U.S. 1950)

License fee calculated as a flat rate of the licensees sales upheld.

Milne v. Stephen Slesinger, Inc. (9th Cir. 2005)

Licensees and Christopher cancelled the own license and renegotiated a more lucrative deal for the trust in anticipation of the term for reclamation rights. After Christopher died, Clare tried to exercise the rights anyway, but because Christopher had cancelled and renegotiated a better deal already, the court decided that the trust had already received the value of its rights. (Despite mandatory language "notwithstanding any agreement to the contrary."

In re Kollar (Fed. Cir. 2002)

Licensing a chemical process which requires more development for commercialization is not a sale.

Door-Master Corp. v. Yorktowne, Inc. (Fed. Cir. 2001)

Limited application of experimental use exception for design patents. Getting people's reaction to the design is not an experiment.

White v. Kimmell (9th Cir. 1952) cert denied

Limited publication to defined group without sale rights etc. does not count as publication under the 1909 act. General publication acts to divest even common law protection.

Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond's USA (2d Cir. 1997)

Lipstick brand "Sealed with a Kiss" is trademarked, but defendant's use of Sealed with a Kiss for a lipstick marked postcard campaign was descriptive fair use.

CDN Inc. v. Kapes (9th Cir. 1999)

List of wholesale prices for rare coins sufficiently original to be protected. (extensively used by coin dealers; industry standard like)

MAI v. Peak Computing (9th Cir. 1993)

Loading a copy of a program even into RAM creates a copy under the Copyright Act because it can be perceived, reproduced and otherwise communicated from the RAM.

Bosley Med. Inst. v. Kremer (9th Cir. 2005)

No violation of ACPA for operating non-commercial gripe site.

Lexmark Int'l, Inc. v. Static Control Components, Inc. (Fed. Cir. 2005)

Lockout technology that protected access to something other than a copyrighted work not covered under DMCA. No liability for circumventing.

Chicago Lock Co. v. Fanberg (9th Cir. 1982)

Locksmith that compiled a list of master key codes for code locks was not guilty of trade secret misappropriation. Each customer was within her rights to tell her portion of the trade secret, so this is like reverse engineering.

Flo & Eddie, Inc. v. Sirius XM Radio, Inc. (N.Y. 2016)

Long period without any enforcement of a public performance right under state common law makes it bizarre to claim that one exists. No common law public performance right for recordings.

Banjo Buddies Inc. v. Renosky (3d Cir. 2005)

Lost profits awarded even in the absence of willfulness.

Synergistic Int'l v. Korman (4th Cir. 2006)

Lost profits in nonwillful trademark infringement cases must be based in a balancing of equitable factors.

Louis Vuitton Malletier, S.A. v. Hyundai Motor Am. (S.D.N.Y. 2012)

Louis Vuitton themed basketball in commercial in car ad is infringing.

Gracen v. Bradford Exchange (7th Cir. 1983) (Posner)

MGM holds contest for artists to design collectors plates with image of the character Dorothy. The winner of the contest declines to enter into a contract to license the winning design. MGM gives design to another artist who produces a very similar one. Artist sues for copyright infringement, but loses because her work is determined not to be substantially different from the underlying work. As a result, it is a derivative work that infringes, and is not protectable itself.

In re New Yorker Cheese Co. (TTAB 1961)

Mark in Polish for canned ham marketed to Polish community, so more likely to cause confusion.

Richardson v. Stanley Works, Inc. (Fed. Cir. 2010)

Primarily functional designs are not ornamental and therefore not eligible for a design patent.

Nabisco, Inc. v. PF Brands, Inc. (2d Cir. 1999)

Marks must be inherently distinctive and famous in order to obtain anti-dilution protection. (This holding revised away by 2006 amendments, only fame required now.)

Nabisco, Inc. v. PF Brands, Inc. (2d Cir. 1999)

Marks need not be identical to prove dilution. Crackers shaped similarly to goldfish crackers diluted the dress.

In re Garan, Inc. (TTAB 1987)

Marks that are primarily merely a surname are treated as descriptive, whether or not they are the owner's surname. All factors to be considered, so that even rare surnames can have significance primarily merely as surnames, but rarity is a factor to be considered.

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc. (Fed. Cir. 2006)

Means plus function analysis applies only to claims that recite no structure, pure function.

Ansonia Brass & Copper Co. v. Elec. Supply Co. (1892)

Merely putting a new product to new use "even if the new result had not before been contemplated" does not allow the product to be the subject of a new patent.

Cashmere & Camel Hair Mfr. Inst. v. Saks Fifth Ave (1st Cir. 2002)

Misrepresentation of the percentage cashmere in a sweater was literally false, so was presumed to have deceived customers.

Veeck v. S. Bldg. Code Congress Int'l, Inc. (5th Cir. 2002)

Model codes enter the public domain when enacted.

Diamond v. Chakrabarty (U.S. 1980)

Modified bacteria with plasmids that allow it to breakdown all of the hydrocarbon components is a new composition of matter qualifying for a patent.

Carter v. Helmsley-Spear, Inc. (S.D.N.Y 1994)

Moral right to prevent destruction of a work of "recognized stature" depends on a two part test. "(1) that the visual art in question has 'stature,' i.e. is viewed as meritorious, and (2) that this stature is 'recognized' by art experts, other members of the artistic community, or by some cross section of society." This is supposed to be an objective standard which does not rely on the aesthetic sensibilities of the trier of fact.

In re Spirits Int'l N.V. (Fed. Cir. 2009)

Moskovskaya vodka refused registration holding that it was primarily geographically deceptively misdescriptive. Fed. Cir. reversed holding that the appropriate inquiry is whether a substantial portion of consumers is likely to be deceived, not whether some particular segment—foreign language speakers—or any absolute quantity is likely to be deceived. Remand to decide if the market was primarily Russian speakers or if it was targeted to the general population only .25% of whom speak Russian.

Application of Beatrice Foods Co. (C.C.P.A. 1970)

Most important condition for approval of a concurrent use application is that such registration must not be likely to cause confusion of buyers or others. Concurrent use registration granted with territorial limits. Each gets registration in the states where it has established use rights (23 for senior user, 5 for junior). Junior must show that this will not cause confusion. Exceptions: PTO does not have to grant a registration contrary to an agreement between the parties. Junior user who registers first gets nationwide protection subject only to senior users territorial use claims. Areas of mutual non-use may be maintained if the mark, goods, and territories are such that this is the only way to avoid a likelihood of confusion.

A&M Records, Inc. v. Napster, Inc. (9th Cir. 2001)

Napster's knowledge of infringement and ability to implement controls created a responsibility to filter out infringing content and liability for failure to meet this duty.

Keene Corp. v. Paraflex Indus., Inc. (3d Cir. 1981)

Narrow scope of trade dress protection disincentivizes attractive design. More attractive designs will be less protectable.

Penguin Grp. (USA) Inc. v. Steinbeck (2d Cir. 2008)

Narrow view of "agreement to the contrary" allows the enforcement of a cancelled and renegotiated license for Steinbeck's works. She still got the benefit of the statutory rights.

Original Appalachian Artworks, Inc. v. Blue Box Factory (USA) Ltd. (S.D.N.Y. 1983)

Narrower ordinary observer standard which focuses on the target audience. Court allowed expert witness to testify to how dolls were perceived by children.

Fuddruckers, Inc. v. Doc's B.R. Others, Inc. (9th Cir. 1987)

National chain Fuddruckers does not need to show a secondary meaning in the particular disputed area if it could show that its dress had acquired secondary meaning "among some substantial portion of consumers nationally." Distinguished in Adray.

Faulkner v. National Geographic Society (2d Cir. 2005); Greenberg v. Nat'l Geographic Soc'y (11th Cir. 2008) (en banc)

National geographic was within its rights to republish revisions when it published Complete National Geographic in a set of CD-ROMs including plaintiffs pictures. However, the 11th Circuit found that search and zoom in functions fell outside of the § 201(c) privilege.

In re Dembicczak (Fed. Cir. 1999)

Non technical inventions that are easy to understand are especially prone to cause hindsight bias in favor of obviousness.

Microsoft Corp. v. Motorola, Inc. (W.D. Wash. 2013)

Need to separate value arising from a coordinated standard from the value of a patent or group of patents in the standard.

Milbank Tweed Hadley & McCloy LLP v. Milbank Holding Corp. (C.D. Cal. 2007)

New York law firm Milbank not famous outside niche market.

Waring v. WDAS Broadcasting Station (Penn. S. Ct. 1937)

New technology requires an extension of common law public performance right. Common law of Pa. protects public performance rights for the creators of audio recordings.

Southco, Inc. v. Kanebridge Corp. (3d Cir. 2004) (en banc)

Nine digit numbering system for line of mechanical fasteners is not protectable.

Columbia Pictures Indus., Inc. v. Fung (9th Cir. 2013)

Ninth Circuit read Grokster to require proof of 4 elements for contributory infringement. (1) distribution of a device or product—Fung's sites (2) acts of infringement—more than 90% of content infringing (3) an object of promoting infringement by the use of the product—Fung personally gave assistance downloading obviously copyrighted material (4) causal link between service provided and the acts of infringement.

Nissan Motor Co. v. Nissan Comp. Corp. (9th Cir. 2004)

Nissan.com as used to complain about Nissan is infringing because Nissan Computer Corp. got ad revenue through its site.

Gaste v. Kaiserman (2d Cir. 1988); Repp v. Lloyd Webber (2d. Cir. 1997)

No evidence of access necessary if the works are "strikingly similar."

Kellogg Co. v. National Biscuit Co. (U.S. 1938)

No exclusive right to the term shredded wheat as a trade name. Shredded wheat has been used as a generic term for the article, so anyone who makes it can sell it under that name. The patents on it have expired, dedicating the invention to the public, which brings with it the right to market it under the name it have become known generically.

Gordon v. Nextel Commc'ns and Mullen Adver., Inc. (6th Cir. 2003)

No infringement for de minimis copying, that is, where the copying is so trivial 'as to fall below the quantitative threshold of substantial similarity.'

Weaton v. Peters (U.S. 1834)

No reporter can have a copyright in court opinions.

Peaceable Planet, Inc. v. Ty, Inc. (7th Cir. 2004)

No strong interest in using one's own name for a plush camel, so there is no need to apply normal restrictions on the registration of names.

Societe de Developpements et d'Innovations des Marches Agricoles et Alimentaires-Sodima Union de Cooperatives Agricoles v. International Yogurt (D. Or. 1987)

No trade, no trademark. Contra above.

Lamparello v. Falwell (4th Cir. 2005)

No violation of ACPA for gripe site operated by young gay man criticizing Jerry Falwell's anti-gay preaching at www.falwell.com.

Graham v. John Deere Co. (U.S. 1966)

Nonobviousness requirement in statute is an articulation of the standard expressed in Hotchkiss that the skill required for a new invention must be more than that of a mechanic in order to receive a patent. Secondary considerations that might factor into determinations about obviousness are commercial success, long felt need, failure of others, etc.

Funk Brothers Seed Co. v. Kalo Inoculant Co. (U.S. 1948)

Not good enough for a patent to sell a mixture of two different kinds of bacteria when those bacteria are used merely to do the same thing they do in nature as a root treatment formula. (Synergy at a minimum to qualify as a new composition of matter.)

Mushroom Makers, Inc. v. R.G. Barry Corp. (2d Cir. 1978)

Not requiring a preponderance of consumers be misled to prove likelihood of confusion. Just prove "that an appreciable number of ordinarily prudent purchasers will be misled, or indeed simply confused."

Athletic Alternatives, Inc. v. Prince Manufacturing, Inc. (Fed. Cir. 1996)

Notice function of patents require that a narrow construction be preferred when the claims are ambiguous.

Whittemore v. Cutter (C.C.D. Mass. 1813) (Justice Story)

Noting the intrinsic difficulty in ascertaining the boundaries "between what was known and used before and what is new."

OddzOn Prod., Inc. v. Just Toys, Inc. (Fed. Cir. 1997)

Novelty for design patents is judged from the point of view of an "ordinary observer" with an eye to whether the designs are distinct or one is just a modification of the other.

Religious Technology Center v. Netcom On-Line Communication Services, Inc. (N.D. Cal. 1995)

OSPs are not contributorily negligent for all infringement perpetrated using their service, but only if they have knowledge of infringement and fails to take simple measures to prevent it. This standard was adopted by other courts, but has been mooted by the passage of the DMCA with its OSP shield from liability.

Gore v. Garlock (Fed. Cir. 1983)

Objective evidence may help guard against hindsight bias.

High Point Design LLC v. Buyers Direct, Inc. (Fed. Cir. 2013)

Obviousness is to be evaluated from the point of view of an "ordinary designer" in the relevant art instead of an "ordinary observer." Two step process in which the design is compared first to a primary prior art reference, which is "basically the same as the claimed design" and second other references may be used to modify the design to match the applicant design and show obvious.

Elan Corp. v. Andrx Pharmaceuticals, Inc. (Fed. Cir. 2004)

Offer to supply limited quantities of bulk tablets not enough to change an otherwise licensing agreement into a sale.

Thaddeus Davids Co. v. Davids Manufacturing Co. (U.S. 1914)

Old case enjoining second user from using his own name because of existing mark, in order to prevent confusion.

Helsinn Healthcare v. Teva Pharm. USA (Fed. Cir. 2017)

On sale means the same thing after AIA as it did in the 1952 Act. Rejected the idea that on-sale is now limited to public sales.

George Basch Co., Inc. v. Blue Coral, Inc. (2d Cir. 1992)

Plaintiff's lost profits available even without willfulness on a showing of consumer confusion.

Estate of Biro v. Bic Corp. (TTAB 1991)

Once standing is established opposer of registration may rely on any legal grounds to oppose registration. (It is most common for an opposer to claim to be a senior user of a mark with a risk of confusion, but argument is not restricted to this line of argument.)

Egbert v. Lippmann (U.S. 1881)

One article in public use is enough to trigger an bar on patentability. Restricted use, for example, just for testing purposes, it is private, but use is not private just because it is not visible to the public. Corset use is public because it is unrestricted.

E.I. du Pont de Nemours & Co. v. Celanese Corporation (C.C.P.A. 1948)

One of first cases to allow licensing without finding that licensing worked abandonment. (Retrospectively clear that this was crucial to the growth of franchising and merchandising.)

Southland Sod Farms v. Stover Seed (9th Cir. 1997)

One of several courts that have adopted presumptive damages when a claim is literally false.

Park 'N Fly, Inc. v. Dollar Park and Fly, Inc. (U.S. 1985)

Only grounds for cancellation of an incontestable mark are genericide and abandonment. A descriptive mark can gain incontestable status only on a showing that it has gained a secondary meaning, but once it has there is a conclusive presumption of ownership. No challenge for descriptiveness without secondary acquired meaning.

In re Rubenfeld (C.C.P.A. 1959)

Only one claim allowed which references a drawing or drawings in a design patent.

Delano Farms Co. v. California Table Grape Comm'n (Fed. Cir. 2015)

Plant variety that was stolen and replanted in secret is not put to a public use.

Billy Graham Archives v. Dorling Kindersley Ltd. (2d Cir. 2006)

Owner of copyrights of Grateful Dead memorabilia sues the publisher of a Grateful Dead coffee table-book for using shrunken images of several posters and tickets without permission after negotiations broke down over licensing. Inclusion of even an entire copyrighted work in a work of an entirely new purpose transformative and granted fair use. The use hurt the market for book licenses, but not the market for traditional licenses for images, the only market for which BGA had direct evidence.

Nichols v. Universal Pictures (2d Cir. 1930) (L. Hand)

Paraphrases are still infringing. Otherwise infringers could circumvent copyright with immaterial changes. Characters must be very distinctly copied in order to trigger a violation.

Campbell v. Acuff-Rose Music, Inc. (U.S. 1994)

Parody comments on the work imitated specifically, and not merely on some broader issue, like other forms of satire, so it has a special claim on fair use. The quality of the parody is not to be judged by a court, beyond the mere determination whether the work is a discernible parody. The amount of the original work copied is a tricky case for parody, since the purpose of parody requires recognition at least, and may require more extensive copying.

Mutual of Omaha Ins. Co. v. Novak (8th Cir. 1987)

Parody has to communicate both that it is the original, and that it is not the original. To the extent that it only does the first, it is both poor parody and vulnerable to trademark suits. Affirmed a likelihood of confusion for Mutual of Omaha parody t-shirts.

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Grp., Inc. (2d Cir. 1989)

Parody that results in consumer confusion is not immune from infringement liability.

New York Yankees P'ship v. IET Prods & Servs. Inc. (TTAB 2015)

Parody use of mark could practically never succeed when the parody is also being used as a mark.

KP Permanent Make-up v Lasting Impression I (U.S. 2004) (Optional)

Party asserting fair use defense need not negate the likelihood of consumer confusion. Requiring defendant to undercut the likelihood of confusion in order to assert an affirmative defense of fair use would make that affirmative defense useless, because undercutting the showing of confusion is already a defense. Use must be descriptive, not as a mark, fairly, and in good faith. Too much confusion might prevent claim of fair use.

Playboy Enters., Inc. v. Welles (9th Cir. 2002)

Playmate of the year was free to use the trademark to accurately describe her affiliation to Playboy on her website, but was not free to use it beyond that to trade on the marks.

Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (U.S. 1989)

Patent act preempts state IP protection of boat hull designs. (Leads to passage of special protection of boat hull designs as IP.)

Accumed LLC v. Stryker Corp. (Fed. Cir. 2007)

Patent construction need not purge all ambiguities. Some line drawing problems can be left to the trier of fact.

Bowman v. Monsanto Co. (U.S. 2013)

Patent exhaustion does mean that a patentee loses protection with regard to a particular patented article upon selling it, because the monopoly price is the reward for invention and disclosure in the patent system. Exhaustion does not apply to copies made of the particular article, for which the patentee has not been compensated. This principle dooms Bowman's case, because Bowman is not using the original seeds, but has grown copies of them.

Lowell v. Lewis (C.C.D. Mass. 1817) (Justice Story)

Patent is granted only on new invention, so Story instructs a jury.

Carbice Corp. v. American Patents Dev. Corp. (U.S. 1931)

Patent misuse is prima facie evidence of antitrust violation. (effectively circumventing market power or impact showings) (short lived rule)

Mercoid Corp. v. Mid-Continent Inv. Co. (U.S. 1944)

Patent misuse to tie a patented product to a non-staple product, i.e. a product that has no substantial use except in connection with the patent. (short lived rule)

Motion Picture Patents Co. v. Universal Film Manufacturing Co. (U.S. 1917)

Patent misuse. Just like control over vending, so too control over use is exhausted at the first sale of a patented device. Just because a patentee has the right to withhold under the statute does not mean he has a right to enforce any lesser restriction. Restriction is invalid because such film is not part of the invention at issue and because it is an attempt to continue a patent monopoly in film past the date of that patent's expiration. (Licensed manufacturer of the machine is under contract to make and sell the machines under a notice of restriction and condition that the machines only be used with motion picture film containing the inventions in another patent owned by the plaintiff and leased from the one of the plaintiff's licensees.)

The Incandescent Lamp Patent (U.S. 1895)

Patent on an incandescent light using any "vegetable fibrous material" is invalid. Disclosure of fibrous filaments in incandescent lighting is not enabling, because "excessive experimentation" is required to find working filaments.

Rosaire v. National Lead Co. (5th Cir. 1995)

Patent on invention known or used by others prior to "invention" by the holder is invalid. Lack of publication is not a bar the application of this doctrine.

New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co. (Fed. Cir. 2002)

Patentee had tested drillbit in underground drilling before the critical date. Court rejected the argument that the use was either nonpublic or experimental and invalidated the patent.

Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (2d Cir. 1946) (L. Hand)

Patentee's own non-informing public use is prior art, but a third parties is not.

Ferris v. Frohman (U.S. 1912)

Performance is not publication unless tangible copies are distributed alongside it.

First Health Grp. Corp. v. BCE Emergis Corp. (7th Cir. 2001)

Person to person pitches are not advertising.

Abdul-Jabaar v. General Motors (9th Cir. 1996)

Personal name cannot be deemed abandoned during the holders life, even if he fails to use it in commerce.

GEICO v. Google (E.D. Va. 2005)

Plaintiff could not demonstrate that Google's sale of a trademarked keyword to advertisers created consumer confusion. Court noted the possibility that individual advertisers might create confusion in the text of their ads, or that Google might be a contributory infringer if it encouraged such confusing uses.

Ty, Inc. v. GMA Accessories, Inc. (7th Cir. 1997) (Posner)

Posner tries to harmonize the sliding scale between 2nd and 7th Cirs. precedent. If the works were similar to something in the public domain, access had to be proven. If the works were not similar to a public domain work, similarity could be used to infer access (sliding scale).

Juicy Whip, Inc. v. Orange Bang, Inc. (Fed. Cir. 1999)

Post-mix juice dispenser designed to circulate a colored fluid for display in order to simulate a pre-mix dispenser. Infringer of this patented machine asserts that it is not eligible for a patent because it is immoral for reasons of deception and therefore not useful. Court rejects this and puts an end to policing the morality of patents under usefulness analysis.

AutoZone, Inc. v. Tandy Corp. (6th Cir. 2004)

Powerzone not similar enough to dilute AutoZone because the bar of similarity for dilution is higher than the likelihood of confusion bar of similarity.

Fred Fisher Music Co. v. M. Witmark & Sons (U.S. 1943)

Preassignment of renewed interest in copyright upheld by the Supreme Court. Right to reclaim copyright at renewal was not treated as mandatory, but merely a default rule. (In new act, instead of reclamation at the time of renewal, Congress provided an inalienable right of reclamation between the 35th and 40th year from execution of the transfer of rights [or between 56th and 61st for copyrights predating 1977.)

Suntrust Bank v. Houghton Mifflin Co. (N.D. Ga. 2001) (11th Cir. 2001)

Preliminary injunction issued and then reversed on appeal against The Wind Gone Done, a version of Gone with the Wind. It was written from the perspective of an illegitimate child and was billed as exploding "the mythology perpetrated by the Southern classic." COA found the parody unlikely to affect the market for the original and found it to be transformative.

Champion Labs. v. Parker-Hannifin (E.D. Mich. 2009)

Presentation to GM could be "commercial promotion" if GM was the whole market for the product.

Midway Mfg. Co. v. Arctic Int'l, Inc. (7th Cir. 1983)

Presented the issue of whether circuit boards that sped up play of Galaxian and Pac-Man were derivative works. Was a significant enough change to constitute a new work, and therefore was a derivative work, whereas speeding up a sound recording is not a new work and is too trivial to warrant protection. Copyright holders of the games can monopolize the sped-up versions.

KSR Int'l Co. v. Teleflex Inc. (U.S. 2007)

Presumption of validity loses its rational when the art presented to challenge the validity of a patent was not considered by the PTO.

Warner-Jenkinson v. Hilton Davis Chemical Co. (U.S. 1997) (Estoppel)

Presumption that elements added during prosecution were meant to establish validity over prior art, but they made the presumption rebuttable, if evidence was introduced that the claim was amended for another reason. (If so estoppel could be avoided.)

Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l, Inc. (Fed. Cir. 2001)

Price erosion due to competition can be a basis for increasing the per unit recovery for lost profits due to infringement. Plaintiff must prove that they would have sold at a higher price but for the infringement. Volume will have to be adjusted down as well, however, in normal market conditions.

Cornell Univ. v. Hewlett-Packard Co. (N.D.N.Y. 2009) embraced by Fed. Cir. in LaserDynamics Inc. v. Quanta Computer, Inc. (Fed. Cir. 2012)

Price of the SSPPU smallest salable patent practicing unit is the proper base in most cases. (Fed. Cir. trying to prevent skewed awards.)

Cariou v. Prince (2d Cir. 2013)

Prince testified that his purpose in copying artwork was to "get as much fact into [his] work and reduce[] the amount of speculation." The district court found that Prince did not intend a transformation on the basis of his statements, but COA reversed, insisting on a reasonable observer standard (as opposed to intent of copier.)

In re Glavas (C.C.P.A. 1956)

Prior art for design patents can be in a different field on an article with a different function.

W.L. Gore & Assocs., Inc. v. Garlock, Inc. (Fed. Cir. 1983)

Prior use of Gore's patented machine was not secret in the sense of nonpublic, even if it was confidential. It was use in the normal course of producing goods for commercial purposes.

Dreamland Ball Room v. Shapiro, Bernstein & Co. (7th Cir. 1929)

Profiting from infringement can make one liable even if the direct infringer is an independent contractor rather than an employee.

Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd. (2d Cir. 1979)

Promoting a porn film by suggesting that Dallas Cowboys' cheerleaders appear in it and using copies of their uniforms for the female performers is tarnishment.

UMG Recordings, Inc. v. Augusto (9th Cir. 2011)

Promotional copies distributed with an express restriction on resale were subject to the first sale doctrine. There was no recurring benefit to the supposed licensor, title effectively passed without any way for the promoter to regain the freely distributed copies. Transferee is free to transfer or sell her copy.

Krueger Int'l Inc. v. Nightingale (S.D.N.Y. 1996)

Protection must be denied for the sin of delighting the sense under the doctrine of aesthetic functionality.

Aveda Corp. v. Evita Marketing, Inc. (D. Minn. 1989)

Proving fraud in obtaining a mark is a defense against even incontestable marks. Defendant must show that plaintiff (1) knowingly made false statements or submissions to the PTO and (2) that the registration would not have issued but for the false statements or submissions. Fraud is disfavored defense.

In re Hall (Fed. Cir. 1986)

Publication date can be proved circumstantially for purposes of statutory bar. In this case, it was enough that the library confirmed that the dissertation at issue was likely indexed by December when the critical date was the end of the following February.

In re Schlittler (C.C.P.A. 1956)

Publication date of a journal sets the start of the 1 year grace period, not the date of submission to a journal.

Castle Rock Entertainment v. Carol Publishing Group (2d Cir. 1998)

Publication of a Seinfeld Aptitude Test enjoined because it took numerous "facts" about Seinfeld from the copyrighted show Seinfeld. Because the facts were made up, they were found to be a part of the protected expression of the TV show.

Iberia Goods Corp. v. Romeo (3rd Cir. 1998)

Quality control cannot be talismanically invoked to defeat exhaustion. The provision must be of the kind whose violation is likely to result in differences in the products such that confusion could injure the mark owner's goodwill.

Georgia-Pacific Consumer Prods. v. Kimberly-Clark Corp. (7th Cir. 2011)

Quilted nature of toilet paper is functional.

Intel Corp. v. Radiation, Inc. (TTAB 1984)

ROM acronym is still generic because it carries the same meaning as read-only memory, a generic term. (True for most acronyms, treated the same as their long form.)

Blue Bell Inc. v. Farah Mfg. Co. (5th Cir. 1975)

Race for TIME OUT mark for bluejeans. Blue Bell's first shipment of these jeans was actually a shipment of old jeans with the new name merely pasted on over an old name. This shipment was disqualified from priority as being in bad faith, so Farah won the race and got the mark.

Johnny Blastoff, Inc. v. Los Angeles Rams Football Co. (7th Cir. 1999)

Rams have priority of St. Louis Rams mark even though Johnny Blastoff used and registered the mark as that of a cartoon football team before the move from LA was completed. Presumption of ownership by franchise owner and the heavy use of advertising relevant to the decision.

Grand Upright Music, Ltd. v. Warner Bros. Records, Inc. (S.D.N.Y. 1991)

Rap sampling infringed copyright of sampled work on the basis of fragmented literal similarity.

Jack Guttman, Inc. v. Kopykake Enterprises, Inc. (Fed. Cir. 2002)

Rare case of patent expressly defining a term, gets treated with the lexicographer rule, patent's definition governs.

Mason v. Montgomery Data, Inc. (5th Cir. 1992)

Real estate maps of a Texas county are copyrightable in two senses. (1) Mason exercised "sufficient creativity in [] the selection, coordination and arrangement of the facts that [the maps] depict" and (2) the graphic artistry of the maps was protectable.

Riles v. Shell Exploration and Production Co. (Fed. Cir. 2002)

Reasonable royalty based on hypothetical negotiation in market conditions as they were at the time that infringement began.

Callicrate v. Wadsworth Mfg., Inc. (Fed. Cir. 2005)

Rebuttable presumption of means-plus-function if word 'means' appears.

Newton v. Diamond (9th Cir. 2003)

Recording license properly acquired by Beastie Boys for sampling, but underlying work owner sued. Court found that the sampling was not improper with regard to the underlying composition, though it may well have been if the license to the recording had not been duly licensed.

CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc. (2d Cir. 1994)

Red Book valuations protectable as is its creative arrangement of information.

UMG Recordings v. Shelter Capital Partners (9th Cir. 2013)

Red flag test (for loss of ISP safe harbour) requires an evaluation of defendants subjective awareness of facts and circumstances, as well as a determination of whether the facts and circumstances would have made infringement apparent to a reasonable person (objective part). (Agrees with part of legislative history.)

Tiffany & Co. v. Costco Wholesale Corp. (S.D.N.Y. 2014)

Refusing to grant summary judgment on the question of whether incontestable mark is generic. (Question is crucial because it is often the only practical way to attack an incontestable mark.)

Century 21 Real Estate Corp. v. LendingTree, Inc. (3d Cir. 2006)

Rejecting New Kids on the Block formulation of nominative fair use. Instead they conclude that nominative fair use should not turn on whether consumers are confused at all.

Swarovski AG v. Building #19, Inc. (1st Cir. 2013)

Rejecting New Kids on the Block requirement that nominative fair user use a little of the mark as necessary. Only normal likelihood of confusion analysis is all that matters.

Gaiman v. McFarlane (7th Cir. 2004) (Posner)

Rejects requirement of independently copyrightable contribution. If one person contributes non-copyrightable ideas and the other only contributes their expression, they can be co-authors under a normal understanding of authorship.

Prestonettes v. Coty (U.S. 1924)

Repackaging trademarked goods is not infringing. Legitimate purchasers of trademarked goods can repackage and sell goods under the original mark as long as they (1) disclose the repackaging (2) reveal their name (3) disclaim any affiliation with the trademark owner (4) do not give undue prominence to the trademark of the source of the repackaged good. Exhaustion balanced against consumer confusion and protecting goodwill.

Champion Spark Plug Co. v. Sanders (U.S. 1947)

Repaired or reconditioned goods can be sold under the original trademark as long as they are labeled reconditioned and marked with the reseller's name. (But radical repair might reach a level so transformative that using the original mark would be an impermissible misnaming.)

Logan v. Burgers Ozark Country Cured Hams (5th Cir. 2001)

Requiring proof that defendant benefited from false advertisement before damages can be awarded.

Warner-Lambert Co. v. Northside Development Corp. (2d Cir. 1996)

Resale of Halls cough drops beyond freshness expiration date in violation of contractual quality control standard is ruled to be trademark infringement because it may result in devaluation of the mark. Exception to the exhaustion doctrine.

M. Witmark & Sons v. Calloway (D. Tenn. 1972)

Respondeat superior liability applies to copyright infringement. No showing of knowledge by the principal is required.

Golan v. Holder (U.S. 2012)

Restoration of foreign copyrights that had been lost due to failure to observe formalities withstood constitutional attack. Idea expression dichotomy is a built in First Amendment accommodation in copyright law. The promotion of science and the useful arts is not limited to promoting new innovations and is also furthered by international cooperation which will incentivize dissemination of ideas.

SRI Int'l v. Matsushita Electric Corp. of America (Fed. Cir. 1985)

Reverse doctrine of equivalents is rare simply because products that read word for word on an old patent are usually the functional equivalents as well.

Reingold v. Swiftships (5th Cir. 1997)

Reverse engineering protects the person who does it, because they have not misappropriated, but it does not protect those who obtain a secret through espionage (i.e. possibility of reverse engineering does not undermine secrecy.)

Ferrari S.p.A. v. Roberts (6th Cir. 1991)

Reversed by Two Pesos. Held that trade dress always requires a showing of secondary meaning for protection, even if inherently distinctive.

Brulotte v. Thys Co. (U.S. 1964); Kimble v. Marvel Entertainment, LLC (U.S. 2015)

Royalties beyond patent expiration are unlawful, per se.

Ericsson, Inc. v. D-Link Sys. Inc. (Fed. Cir. 2012)

Royalty rate times base must reflect the value attributable to the infringing features of the product and no more. Large base might skew the juries perspective.

Bailey v. United States (U.S. 1995); Reiter v. Sonotone Corp. (U.S. 1979); Colautti v. Franklin (U.S. 1979)

Rule against superfluities in statutes. (also applies to patents)

Cooling Sys., Inc. v. General Motors (Fed. Cir. 1997)

Sale barred patenting by the inventor, even though he did not make the sale himself. Illegality of the sale irrelevant to the on-sale statutory bar. (If it is misappropriation; inventor should use that remedy.)

Electromotive Div. of General Motors Corp. v. Transportation Systems Div. of General Elec. Co. (Fed. Cir. 2005)

Sales in a normal commercial environment cannot be made experimental by the secret subjective intent of the inventor to experiment. At a minimum, the customer must be informed of the products experimental status. (customer awareness is critical factor) Objective evidence of experimentation is necessary.

Selchow & Righter Co. McGraw-Hill Book Co. (2d Cir. 1978)

Scrabble granted a preliminary injunction against publisher of "The Scrabble Dictionary" on grounds that publication could render the trademark generic, causing irreparable injury.

Scripps Clinic & Research Foundation v. Genentech, Inc. (Fed. Cir. 1991)

Scripps had a patent on a protein purified from human blood. Genentech made the same protein from recombinant DNA, but the trial court finding of infringement was remanded with the question of whether the recombinant version of the protein was covered as an equivalent. Genentech made the equitable argument that the recombinant version was far cheaper.

Halo Electronics, Inc. v. Pulse Electronics, Inc. (U.S. 2016) Stryker Corp. v. Zimmer, Inc.

Seagate for willful infringement rejected by SCOTUS. Under this test, the plaintiff must show by clear and convincing evidence both (1) disregard of an objectively high risk of infringement and (2) that the defendant knew of the risk of infringement or it was so obvious that they should have known. Only subjective prong is needed, objective prong allows bad faith infringers to get off the hook. Also showing need only be preponderance of evidence, not clear and convincing. Review for abuse of discretion.

Hard Rock Cafe Licensing Corp. v. Concession Services, Inc. (7th Cir. 1992)

Secondary trademark infringement can extend to flea market operators, as well as manufacturers and distributors. Inwood rule applied to flea market owner as long as he knows or has reason to know of infringement by vendors he has allowed into the market. But he has no affirmative duty to take precautions against counterfeiters.

Woodland Trust v. Flowertree Nursery (Fed. Cir. 1998)

Section § 102 (b) unlike § 102 (a) is concerned primarily with encouraging inventor to file promptly. (Pre-AIA)

Religious Technology Center v. Netcom On-Line Communication Services, Inc. (N.D. Cal. 1995)

Seminal articulation of the requirement that there be some volitional cause of infringement "which is lacking where a defendant's system is merely used to create a copy by a third party."

Martahus v. Video Duplication Servs., Inc. (Fed. Cir. 1993)

Service mark cancelled for the priority of a similar mark just like with trademarks. (More generally, same rules for trademarks and service marks.)

In re Dr. Pepper Co. (Fed. Cir. 1987)

Services expected or routine in connection with certain goods are not eligible for a separate service mark. Service mark for contests in relation to the sale of soft drinks rejected and this decision affirmed.

VMG Enters. Inc. v. F. Quesada & Franco Inc. (D.P.R. 1992)

Should agreement settling a concurrent registration dispute receive antitrust scrutiny.

Ty, Inc. v. Perryman (7th Cir. 2002) (Posner)

Showing that use was in lawful comparative advertising is a defense to dilution claim. Any advertisement that accurately uses a mark to refer to the trademark owners cannot dilute their mark. Here, the Beanie Babies mark can be legitimately used to promote the resale of Beanie Babies even though that is very much like freeriding on plaintiff's mark.

In Data East USA, Inc. v. Epyx, Inc. (9th Cir. 1988)

Similarity between karate video games to be judged from the perspective of a discerning 17.5 year old boy. (predominantly male customer base with average age of 17.5)

Nichols v. Universal Pictures Corporation (2d Cir. 1930) (L. Hand)

Similarity in plot can be enough to support copyright infringement, but at that high level of generality protection is thin and heightened similarity showing is required.

In re Sarkli Ltd. (Fed. Cir. 1983)

Similarity in sight and sound between the mark and the English equivalent also relevant to the application of the Doctrine of Foreign equivalents. When marks are totally dissimilar the meaning of the mark and the English equivalent must be extremely close to support the doctrine.

Bosley Medical Institute, Inc. v. Kremer (9th Cir. 2005)

Site www.BosleyMedical.com was made by a disgruntled customer to criticize the institute. Trademark infringement suit dismissed because the site did not advertise or sell any goods or services, and so it was not covered by the statute as a use in commerce. (Is that right?)

In re Roman Cleanser Co. (6th Cir. 1986)

Validating transfer of trademark together with formulas and customer lists.

E-Systems, Inc. v. Monitek, Inc. (9th Cir. 1983)

Six factors for evaluating laches defense (1) strength of the plaintiff's trademark (2) plaintiff's diligence in enforcing the mark (3) the harm to plaintiff if relief is denied (4) whether defendant acted in good faith ignorance of the plaintiff's rights (5) competition between the parties and (6) the harm suffered by defendant because of plaintiffs delay. (Laches will not protect a willful infringer.)

Horgan v. Macmillan (2d Cir. 1986)

Small amount of copying, if qualitatively significant, can be infringement.

In re Fisher (Fed. Cir. 2005)

Small cDNA sequences are little more than research intermediates. They are useful only for continuing research, they have no demonstrated commercial use. To allow a patent would be to allow a hunting license. Dissent says it is a research tool like a microscope, should be patentable.

Softman Products Co., LLC v. Adobe Systems, Inc. (C.D. Cal. 2001)

Softman unbundled a suit of Adobe software products and then resold them individually in violation of the End User Licensing Agreement. Court found that "a single payment giving the buyer an unlimited period in which it has a right possession is a sale." Therefore, the first sale doctrine applies and supersedes the EULA restrictions.

Lewis Galoob Toys., Inc. v. Nintendo of America, Inc. (9th Cir. 1992)

Some degree of fixation in a tangible medium is necessary for something to count as a derivative work.

Jada Toys, Inc. v. Mattel, Inc. (9th Cir. 2008)

Sometimes even totally dissimilar marks can be confusing, or at least court backed off from the rigid version of the rule stated in AMF. Cannot rely on just one Sleekcraft factor.

Bright Tunes Music Corp. v. Harrisongs Music, Ltd. (S.D.N.Y. 1976)

Songs were so similar (very same song with different words) that even though the infringer had not intended to infringe while composing, his access is enough to prove subconscious copying.

A.J. Canfield Co. v. Honickman (3d Cir. 1986)

Source of trademarked goods does not need to be known to support a secondary meaning for descriptive marks. They must be identified at least as coming from a "single though anonymous source."

Peter Pan Fabrics, Inc. v. Martin Weiner Corp. (2d Cir. 1960)

Standard for evaluating substantial similarity is whether an "ordinary observer, unless he set out to detect the disparities [between the two works], would be disposed to overlook them, and regard the aesthetic appeal of the works as the same."

Dawson Chem Co. v. Rohm & Haas Co. (U.S. 1980)

Staple goods are not covered by contributory infringement at all. The interconnected definition of misuse that makes reference to contributory infringement makes it clear that patent holders can assert a limited monopoly in nonstaple compliments to their patented goods without needing to fear patent misuse defenses. (Congress does not like patent misuse doctrine.)

Anti-Defamation League of B'Nai B'rith v. Arab Anti-Defamation League (N.Y. Sup. Ct. 1972)

State law allows terms that have become generic to develop a secondary meaning and become protectable. (Query is this preempted as conflicting with federal trademark regime.)

Estate of Hemingway v. Random House (N.Y. 1968)

State law protection sometimes available for unfixed works. (Federal preemption provision leaves protection of unfixed works to the states.)

RealNetworks, Inc. v. Streambox, Inc. (W.D. Wash. 2000)

Streambox's capability for circumventing the restriction on copying implemented by RealNetworks is found to violate the DMCA's anti-circumvention provisions. Court found both that it was likely to be used to circumvent technological protections on copyrighted material, and that it had no other commercial purpose than to aid in such circumvention. (The "ripper" program which converted from RMA format to more common formats after downloading was not found violative; creates inference that proprietary file format alone is not a "technological protection measure.")

Inventio AG v. ThyssenKrupp Elevator Americas Corp. (Fed. Cir. 2011)

Strong presumption against means-plus-function construction.

Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Ltd. (7th Cir. 1994)

Strong presumption that franchise owner owns team mark in a relocation.

Symbol Technologies v. Lemelson (Fed. Cir. 2002)

Submarine patenting, i.e. keeping patents in prosecution for an extend period of time in order to spring them on unsuspecting industries, can be grounds to bar enforcement of the patent unless the delay can be adequately explained.

Door-Master Corp. v. Yorktowne (Fed. Cir. 2001)

Substantial similarity is enough to defeat novelty for design patents if a consumer would be deceived into buying the one thinking it to be the other.

Phillips v. Pembroke Real Estate (1st Cir. 2006)

Suit brought under VARA to prevent statutes integrated with their surroundings from being removed. Despite expert testimony to the effect that sculpture had developed to incorporate the surroundings into the work, the site specificity of the art was found unprotectable.

Weber-Stephen Products LLC v. Sears Holding Corp., No. (N.D. Ill. 2015)

Summary judgment denied on the grounds that intentional copying of a grill shape in the hope of confusion could lead to an inference of secondary meaning in grill shape.

Electro-Craft Corp. v. Controlled Motion, Inc. (Minn. 1983)

Summary judgment for defendants was appropriate when measures to protect trade secret were fatally lax. (Failure to mark documents confidential or inform employees what it considered a trade secret.)

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd. (U.S. 2002)

Supreme Court adopts rebuttable presumption that narrowing during prosecution bars doctrine of equivalents, overcome if at least one of three showings can be made: (1) the equivalent was unforeseeable to PHOSITA at the time of the amendment (2) the rationale for the amendment was no more than tangentially related to the equivalent in dispute (3) another reason that the patentee could not be reasonably expected to have described the equivalent.

Lear, Inc. v. Adkins (U.S. 1969)

Supreme Court breaks from Licensee estoppel in the interests of competition in non-protectable ideas. Licensees are the ones with the best incentives to challenge bad patents.

Octane Fitness LLC v. Icon Health & FItness Inc. (2014)

Supreme Court rejected the Fed. Cir. two part test for attorney's fees in patent cases, holding instead that they may be awarded under § 285 whenever a case "stands out" in terms of "strength of a party's litigation position" or "the unreasonable manner in which the case was litigated." (Fed. Cir. had required (1) subjective bad faith (2) objective baselessness of the case.) Court directed district courts to consider totality of the circumstances.)

Markman v. Westview Instruments (U.S. 1996)

Supreme Court takes claim construction away from juries and makes courts do them. Now Markman hearings largely precede patent cases.

Cuozzo Speed Techs., LLC v. Lee (U.S. 2016)

Supreme Court upholds BRI construction in IPRs as a reasonable exercise of PTO rule-making authority.

Sunmark, Inc. v. Ocean Spray Cranberries, Inc. (7th Cir. 1995)

Sweet-tart can be fairly used as a descriptive term for the flavor of cranberries, notwithstanding trademark protection of the candy "Sweettarts."

E.I. du Pont de Nemours & Co. v. Yoshida Int'l, Inc. (E.D.N.Y. 1975)

Teflon not generic, in part due to du Pont's education and policing campaign preventing generic use. (Policing campaign is evidence in itself.)

PC Connector Solutions LLC v. SmartDisk Corp. (Fed. Cir. 2005)

Terms "conventional," "traditional," and "standard" should be interpreted as being temporally limited to the conventions, traditions and standards from the time the patent application was filed. (Patent was not infringed just because of advancements in the I/O ports that the diskette drive could connect to, because convention at the time of patenting was outdated by the time of suit.)

Perfect 10, Inc. v. Visa Int'l Service Ass'n (9th Cir. 2007)

Tests for secondary infringement is more difficult to satisfy than the test for secondary copyright infringement. (or secondary patent infringement, for that matter.) Required both knowledge and material contribution or inducement.

Bd. of Regents, the Univ. of Tex. Sys. v. KST Electric, Ltd. (W.D. Tex. 2008)

Texas longhorn silhouette not famous outside the niche of college sporting events.

Baker v. Selden (U.S. 1879)

The art described in books of science is not covered by a copyright on the book itself. Here, the method sought to be claimed is carried out in the same medium that it is described, as a book or on paper, but that does not change the fact that copyright covers only the particular expression of an idea, not the idea itself.

Johnson & Johnson*Merck Consumer Pharmaceuticals Co. v. Smithkline Beecham Corp. (2d Cir. 1992)

The factors to show likelihood of confusion in false advertising, (1) commercial context (2) defendant's intent (3) defendant's advertising history (4) sophistication of the audience, are only relevant after the meaning to the target audience has been determined. Presumption of confusion for literally false claims, these factors must be proved by plaintiff otherwise.

In re Glavas (C.C.P.A. 1956)

The combined references need not be analogous arts in any technical sense. But they must be sufficiently related in appearance of the ornamental features as to suggest the mutual application of features.

Sheldon v. Metro-Goldwyn Pictures Corp. (U.S. 1940)

The entire profits need not be granted in a case like this. The statute instructs all profits to be given in damages, but that is all profits "which the infringer shall have made from such infringement." This case is like a patent case in which the infringing device is combined with something of the defendant's own design. Damage must be apportioned.

Kirtsaeng v. John Wiley & Sons (U.S. 2013)

The first sale doctrine per statute applies to all sales lawfully made, including those that occur outside of the United States. Dissent (Ginsburg with Kennedy and Scalia): Copyright act does not govern the creation of the international versions of the textbook, so they were not made "under" its provisions, and the first sale doctrine does not apply.

Elliott v. Google Inc. (9th Cir. 2017)

The idea that only adjective uses of a mark can serve trademark purposes is incorrect. validity stands or falls in connection with that product or service, otherwise Ivory soap could have its trademark cancelled because ivory is a substance and is generic when used in that sense. (Even assuming that the prevailing use of google as a verb was generic because that fact alone does not indicate how the public views the word itself. There are adequate substitutes to the use of the verb google that competitors can use.)

Grain Processing Corp. v. American Maize Products Co. (Fed. Cir. 1999)

The mere availability of noninfringing alternatives to maltodextrin bars recovery of lost profits damages. The defendant had never actually used a noninfringing alternative. (Facts in this case support that switching was easy, infringer switched in two weeks.)

Microsoft Cor. v. i4i Ltd. (U.S. 2011)

The presumption of validity still applies when the art used to challenge the validity was not considered by the PTO, but clear and convincing evidence of invalidity may be easier to demonstrate.

Publications Int'l v. Meredith Corp. (7th Cir. 1996)

The recipes in question cannot be copyrighted because they are an example of a "procedure, process, or system," which is the purview of patent. Recipes may be copyrighted if they include musings of the author or a history of the dishes origins.

Stewart v. Abend (U.S. 1990)

The renewal interest passes to the heirs when author dies even if they were preassigned. During the renewal term, the derivative work therefore requires continued authorization or it is infringing. Parties settled because Abend wanted to do a remake, which required a license from Hitchcock and Stewart as well. (They both had blocking rights for doubly derivative works.) (Congress used Abend rights as carrot for registration in 1992 amendment, failure to file renewal registration forfeits Abend rights.)

Plant Genetic Systems, N.V. v. DeKalb Genetics Corp. (Fed. Cir. 2003)

The reverse doctrine of equivalents can be relied on to preclude improper enforcement against later developers.

Banks v. Manchester (U.S. 1888)

The whole work done by judges is binding law to everyone, and so must be available to everyone. No copyright in it.

In re Schnell (C.C.P.A. 1931)

The same design of "an ornament impression, print or picture to be applied to an article of manufacture" can be claimed broadly for use on more than one article. (Claims for the design of an article must be more narrowly claimed.)

Anderson v. Stallone (C.D. Cal. 1989)

The script is an unauthorized derivative work, and so cannot be granted copyright protection at all. Characters are obviously distinct enough to be copyrightable as a matter of law, so summary judgment is appropriate. (Non-infringing portions of infringing works can still enjoy protection, but context makes clear that this applies only to collective works.)

Ex Parte Rivera Watch Corporation (Comr. Pats. 1955)

The test for descriptiveness in the name sense is whether the purchasing public primarily recognizes the surname as a surname.

Blanch v. Koons (2d Cir. 2006)

The ultimate test of fair use is whether the goal of promoting science or other useful arts is better served by allowing the use than prohibiting it. The use here is transformative, as Koons is trying to comment on the type of advertising that Blanch had engaged in adding a new meaning rather than superseding the old. Bad faith cannot be shown merely by a failure to ask permission. (17 U.S.C. § 107(1), "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." (2), is "the nature of the copyrighted work." (3), is "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." (4), is "the effect of the use upon the potential market for or value of the copyrighted work.")

Novartis Consumer Health Inc. v. Johnson & Johnson-Merck Consumer Pharms. Co. (3d Cir. 2002)

Third circuit has extended the presumption of deception to completely unsubstantiated claims. (Also consider the widely held doctrine that some things can be "literally false by necessary implication"; think "dolphin free" tuna.)

W.L. Gore & Associates, Inc. v. Garlock, Inc. (Fed. Cir. 1983)

Third party's sale of tape from a tape making machine does not create an on sale or public use bar.

In re Brana (Fed. Cir. 1995)

Threshold of usefulness does not demand as strong a showing for patenting drugs as FDA approval. A demonstration of pharmacological usefulness in animal tests can be enough.

Kelly v. Ariba Soft (9th Cir. 2003)

Thumbnail images found to be transformative.

Mattel, Inc. v. MCA Records (9th Cir. 2002) (Optional) (Kozinski)

Title of Barbie Girl by Aqua is not infringing. Lanham act should be construed to apply to artistic works only where consumer confusion outweighs expression. Song titles, like movie titles, speak to content more often than source. Adopt Rogers rule that literary titles can violate the Lanham Act only if they have no artistic relevance to the underlying work, or if they are explicitly misleading about source. Noncommercial use exception from dilution liability is meant to protect free speech. Noncommercial simply in sense of being fully protected by first amendment. (If it does no more than promote a commercial transaction it is commercial in that sense.

Tiffany Inc. v. eBay Inc. (2d Cir. 2010)

To find contributory infringement require a showing of specific knowledge in order to support a claim of contributory infringement for continuing to supply a service with knowledge of infringement. Knowledge of generalized infringement does not amount to more than knowledge of potential infringement on the part of each seller. Dilution claims fail for the simple reason that eBay only used the mark Tiffany to refer to Tiffany's products. There is no second mark.

Cuban Cigar Brands N.V. v. Upmann Intern., Inc. (S.D.N.Y. 1978)

To invoke defense of laches (which for trademark bars damages as well as an injunction) defendant must show (1) plaintiff had sufficient knowledge of the defendant's activities concerning the mark (2) plaintiff delayed in bringing suit (3) the defendant will be prejudiced by allowing the plaintiff to assert its rights at this time.

Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. (6th Cir. 1978)

To obtain lost profits as damages patent owner must prove: (1) demand for the patented product (2) absence of acceptable noninfringing substitutes (3) his manufacturing and marketing capability to exploit demand, and (4) the amount of the profit he would have made.

Paice LLC v. Toyota Motor Corp. (E.D. Tex. 2009)

Toyota found to infringe a patent for a torque transfer unit connecting an electric motor and an internal combustion engine. Court did not give an injunction, but gave a running royalty of $98 per unit, four times what the they awarded for past infringement.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (U.S. 2000)

Trade dress can be inherently distinctive as Two Pesos holds, but some categories of dress and trademarks are never inherently like colors in Qualitex. Unlike words and marks that can be attached to a product artificially—and therefore automatically signal source—the very design of a product itself does not intuitively carry a source identifying purpose, but will likely be assumed to serve functional or aesthetic considerations. (Significantly narrows Two Pesos)

Two Pesos, Inc. v. Taco Cabana, Inc. (U.S. 1992)

Trade dress does not require proof of secondary meaning for protection when it is inherently distinctive.

Trade-Mark Cases (U.S. 1879)

Trade marks are not protected as the "fruits of intellectual labor." They need not be novel or creative or genius. Protection is granted to the first to use a mark in commerce to protect against a "likelihood of confusion."

Bell v. Streetwise Records, Ltd. (1st Cir. 1985)

Trade names cannot be registered under the Lanham Act unless they identify the source of goods or services. Common law protection available for company names without any source identification, state registration also available.

Rohm & Haas Co. v. Adco Chemical Co. (3d Cir. 1982)

Trade secret can survive limited publication if it is still not generally known in the relevant industry.

Trade-Mark Cases (U.S. 1879)

Trade-Mark protection not supported by intellectual property clause of the Constitution.

Philip Morris, Inc. v. Liggett & Myers Tobacco Co. (TTAB 1963)

Trademark Office generally requires showing of secondary meaning in more than a limited area in order to acquire federal registration.

Interactive Prods. Corp. v. A2Z Mobile Office Solutions, Inc. (6th Cir. 2003)

Trademark and false designation law does not apply if defendant is using plaintiff's mark only in a non-trademark way.

Eva's Bridal Ltd. v. Halanick Ents., Inc. (7th Cir. 2011)

Trademark cancelled for naked licensing. Court observes that supervision need not ensure high quality to stave off abandonment, it need only ensure consistent quality.

Stanfield v. Osborne Indus. (10th Cir. 1995)

Trademark claim denied due to unsupervised licensing, happens regularly.

Moseley v. V Secret Catalogue (U.S. 2003)

Trademark dilution is unlike normal infringement; it is not the product of common law development and is not designed for consumer protection.

Dastar Corp. v. Twentieth Century Fox Film Corp. (U.S. 2003)

Trademark law does not protect copied videos for which copyright protection has expired. Source confusion for this purpose is concerned only with the source of the copy, not with the original makers of the film, so such copying and resale did not impair the purposes of trademark law. Trademark should not serve to indefinitely extend copyright.

Experience Hendrix L.L.C. v. Hendrixlicensing.com Ltd (9th Cir. 2014)

Trademark owner has duty of proving its own lost profits and expenses, but when infringer's profits are accounted plaintiff need only show defendant's revenue, expenses must be shown by the defendant.

Hanover Star Milling Co. v. Metcalf (U.S. 1916)

Trademarks are not clearly protected in an analogous way to "property rights" at all.

U.S. Surgical Corp. v. Ethicon, Inc. (Fed Cir 1997)

Traditional rule is that the patent does not to be entirely construed. Construction need only go as far as necessary to resolve the coverage for the purpose of determining infringement.

Money Store v. Harriscorp Finance, Inc. (7th Cir. 1982)

Transfer of trademark for $1 not invalid, nominal recitation of "goodwill" was enough. Very relaxed rule against gross assignments.

American Steel Foundries v. Robertson (U.S. 1926)

Transferring mark without transferring underlying production or some other source of goodwill is not allowed. (Trademark is a repository of goodwill not a true property right.)

Kienitz v. Sconnie Nation (7th Cir. 2014)

Transformativeness cannot be the sole touchstone of copyright fair use, or there would be no right to derivative works. Focus instead on four factors in § 107 especially the market effect of the use.

Kohler Co. v. Moen, Inc. (7th Cir. 1993) (Cudahy, J., dissenting)

Trying to categorize features based on their degree of essentialness is vain.

Bleistein v. Donaldson Lithographing Co. (U.S. 1903)

Trying to judge the artistic merit of works as part of copyrightability determinations is beyond the competence of courts. Some of the greatest works were not appreciated in their time and might have been denied protection under such an approach.

Car-Freshner Corp. v. S.C. Johnson & Son (2d Cir. 1995); Brother Records, Inc. v. Jardine (9th Cir. 2003)

Two circuits have applied classic "descriptive" fair-use to inherently distinctive marks, as well as descriptive marks.

Griffith v. Kanamaru (Fed. Cir. 1987)

Two justifications offered by inventor for failing to be diligent in reducing a conceived invention to practice are both inadequate, one that he was waiting for a grad student to matriculate, and two that he was waiting to receive a grant for the research. (Waiting for invention to be in most marketable form was already rejected as an excuse.)

Pfaff v. Wells Elec., Inc. (U.S. 1998)

Two requirements for the on sale bar clock to start, item must be offered for sale, and it must be ready to patent. It does not necessarily have to be physically manufactured.

Republic Molding Corp. v. B.W. Photo Utilities (9th Cir. 1963)

Unclean hands requires a balancing of both the conduct of the parties and the potential harm to the public.

American Visuals Corp. v. Holland (2d Cir. 1956)

Under 1909 Act, publication necessary to lose common law (divestive) protection is greater than the breadth of publication necessary to lose statutory protection if notice is defective (investive).

Viacom Int'l, Inc. v. Youtube (2d Cir. 2012)

Under DMCA safe harbour is available unless there is subjective belief or the availability of objective evidence of infringing material are enough to trigger a duty to remove, it does not mean that general knowledge of infringement triggers a duty to remove, which reading is in tension with the duty to remove expeditiously in any case. Willful blindness inquiry is limited but not completely abrogated by the language which prevents a safe haven from being conditioned on monitoring beyond the required standard technical measures. Thus, there is still a question of whether YouTube made a deliberate effort to avoid knowledge of infringement.

Univ. of Alabama Bd. of Trs. v. New Life Art, Inc. (11th Cir. 2012)

Under Rogers test of artistic significance video games can depict Alabama football players without infringing their mark.

People for the Ethical Treatment of Animals v. Doughney (4th Cir. 2001)

Under new cybersquatting statute ACPA individual who set up People Eating Tasty Animals site at peta.org was liable as a cybersquatter.

Toy Mfrs. of America v. Helmsley-Spear, Inc. (S.D.N.Y. 1997)

Unique registration process, forms and location for a toy fair together constitute protectable trade dress which was infringed.

Sandoval v. New Line Cinema Corp. (2d Cir. 1998)

Unpublished photographs in the background of the movie Seven appearing less than 30 seconds are de minimis copying, so no fair use analysis necessary.

Adray v. Adray-Mart, Inc. (9th Cir. 1996)

Unregistered, descriptive mark's protection limited to territory of secondary meaning. Clear error for the district court to conclude that the area of secondary meaning included all of LA County, evidence established that defendants market share was bigger in some parts of LA county before the allegedly encroaching store was opened.

Rescuecom Corp. v. Google Inc. (2d Cir. 2009)

Use in commerce includes google selling trademarked terms as advertiser keywords. Use is not purely internal, it involves selling advertising rights.

DaimlerChrysler AG v. Bloom (8th Cir. 2003)

Use in commerce requirement for infringement applied. Licensing the vanity number "1-800-MERCEDES" is not a use in commerce so it is not infringing.

Zazu Designs v. L'Oreal S.A. (7th Cir. 1992)

Use made by ZHD that predates L'Oreal's registration is trivial, and would not have sufficed to associate the mark with their source in the minds of any consumers. It does not confer any trademark rights. (Use necessary to support registration is a lower bar not to be confused.)

In re Styleclick (TTAB 2000)

Use of e prefix plus descriptor creates descriptive term for an online retailer.

Visa Int'l Serv. Ass'n v. JSL Corp. (9th Cir. 2010)

Use of eVisa for an English language school in Japan diluted credit card trademark, even though it is a word being used descriptively.

Cambridge Univ. Press v. Georgia State University (11th Cir. 2014)

Use of extensive excerpts in a course reader is not transformative. Non-profit user favored. 10% rule erroneous, work-by-work evaluation of fair use.

In re Styleclick (TTAB 2000)

Use of virtual in front of common word also yields a descriptive term.

Brenner v. Manson (U.S. 1966)

Usefulness of a homologue is not enough; applicants must disclose a sufficient likelihood of usefulness of the product. A product that is under serious investigation is not enough to satisfy the requirement of usefulness. (Usefulness requirement has bite for compounds, no hunting license.)

International Information Systems Security Certification Consortium, Inc. v. Security University, LLC (2d Cir. 2016)

Uses New Kids on the Block factors and the normal likelihood of confusion analysis in one hodgepodge test.

Sony Corporation of America v. Universal City Studios, Inc. (U.S. 1984)

Using a VCR to record television shows in order to watch them once is fair use, based on the factors enunciated in statute. (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The first factor, in particular creates a presumption against fair use if the use is commercial, and a presumption of fair use when the use is nonprofit use like personal home use. The fact that an entire work was copied is not important in this case because the entire work was available as a broadcast and time shifting merely made it available over more time. There was no showing of any threat to the value of the copyrights used. (Whether archiving is fair use remains undecided.)

New Kids on the Block v. News Am. Publ'g, Inc. (9th Cir. 1992)

Using the trademark to refer to the mark holders good or service is protected as nominative fair use so long as (1) the product or service must not be readily identifiable by a name other than the trademark (2) only so much of the mark can be used as is necessary to identify the product or service (3) user must do nothing to suggest sponsorship or endorsement.

TrafFix Devices, Inc. v. Marketing Displays, Inc. (U.S. 2001)

Utility patents give rise to a strong presumption of functionality. Party asserting trade dress bears the burden of proving non-functionality. The general test for functionality is if the element is essential to the use or purpose of the article or affects the cost or quality of the article. In cases of aesthetic functionality this inquiry can be cashed out as whether protection would create a "significant non-reputation-related disadvantage."

16 Casa Duse, LLC v. Merkin (2d Cir. 2015)

Video editing does not entitle one to an ownership in the movie as a whole. Since Casa Duse and its agent Krakovski exercised control over most of the elements of the production, they own the copyright even though Merkin registered it in his name.

Columbia Pictures v. Aveco, Inc. (3d Cir. 1986)

Video stores cannot provide a viewing room without a license because a public performance is a performance open to the public and does not require that a large crowd actually be gathered to the viewing.

Mattel, Inc. v. MGA Entertainment, Inc. (9th Cir. 2010)

Virtual identity required for thin copyright protection, i.e. where there is little protectable material or the range of creative expression is narrow. In this case, doll designs at issue.

Death Tobacco, Inc. v. Black Death USA (C.D. Cal. 1993)

Vodka and cigarettes are related products in that they are demand compliments. They both have relaxing, mood altering effects. They are also sold to the same class of purchasers, as evidenced by their placement in close proximity in several stores. Factors to be considered in Sleekcraft test.

Hall v. MacNeale (U.S. 1883)

Was prior use of safe doors and safe walls public enough to create a statutory bar? The use was still public, because although their inner workings were necessarily hidden from the outside, the use was not concealed any more than any use of such security measures would be.

Basile, S.p.A. v. Basile (D.C. Cir. 1990)

Weight of the inherent right to use one's own name has diminished as local markets have given way to the global market. Local individual reputation less important. It should still be considered to the extent that a junior user has developed some reputation in connection with his name, but not if it will seriously risk consumer confusion.

Microsoft Corp. v. i4i LP (U.S. 2011)

When Congress reenacts the same statutory language, it is assumed to give them the meaning they have been given in precedent.

In re Wands (Fed. Cir. 1988)

When a patent makes a broad claim, it must enable use of all of the species in the genus without "undue experimentation." Factors in determining whether necessar experimentation is undue include: (1) quantity of necessary experimentation (2) amount of guidance provided (3) presence or absence of working samples (4) nature of invention (5) state of prior art (6) relative skill of those in the art (7) predictability of the art (8) breadth of claims.

KSR International Co. v. Teleflex Inc. (U.S. 2007)

When a technique in prior art improves one device and a person of ordinary skill in the art would recognize that it could be used to improve another device in prior art, then it is obvious unless the actual application is beyond PHOSITA skill. Obvious to try can be obvious. "Any need or known problem" can provide the motivation to combine elements of the prior art. TSM test is too rigid an inquiry into combinational obviousness. Fed.Cir. erred in limiting the search of prior art for motivation to prior art with solutions directed at the same problem. (Abrogated TSM test; only find claims invalid if some prior art provided a motivation or suggestion to combine elements from prior art into the claimed invention.)

Linbrook Builders Hardware v. Gertler (9th Cir. 1965)

When one person engages another to produce copyrightable work, the right presumptively vests with the person at whose expense the work is done, in the absence of an agreement to the contrary. (But now statutory definition is (1) a work prepared in the scope of employment or (2) a work falling into one of nine enumerated categories (work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

AMF Inc. v. Sleekcraft Boats (9th Cir. 1979)

When products are in competition, and confusion can be expected between marks, infringement will be found. Where the goods are unrelated, there can normally be no infringement. When products are similar but not in direct competition all relevant factors including That means that all relevant factors will be considered in determining whether the mark is likely to cause confusion. (1. strength of the mark 2. proximity of the goods 3. similarity of the marks 4. evidence of actual confusion 5. marketing channels used 6. type of goods and degree of care likely to be used by the producer 7. defendant's intent in using the mark 8. likelihood of expansion in product lines)

State Indus. v. Mor-Flo, Inc. (Fed. Cir. 1988)

When the market for the patented product includes non-infringing alternatives, the assumption is that the patentee would have made the same percentage of the infringer's sales as the percentage of the overall market that the patentee controlled.

Singer Mfg. Co. v. June Mfg. Co. (U.S. 1896)

When the name of a patented product becomes necessary to market it, i.e. becomes generic, it passes into the public domain along with the invention itself.

Smith v. Dravo Corp. (7th Cir. 1953)

Where it was clear that the revelations were directed toward the sale of the business, and would not otherwise have been made, the disclosure of the trade secret is implicitly confidential and protection is not lost thereby.

Wiener King, Inc. v. Weiner King Corp. (C.C.P.A. 1980)

Where junior user gets registration first, junior user gets nationwide rights except in territory where senior user has established existing use rights.

Chirco v. Crosswinds Communities, Inc. (U.S. 2007)

Where owners of architectural copyright waited for an allegedly infringing structure to be substantially constructed before bringing suit, although they were aware of the potential infringement earlier, they cannot obtain an injunction to destroy the infringing work. (Laches)

In re Klopfenstein (Fed. Cir. 2004)

Whether disclosure in a poster session at a conference constituted publication under § 102(b) turns on balancing factors (1) the length of time the display was exhibited (2) the expertise of the target audience (3) the existence of a reasonable expectation that the material would not be copied (4) the ease with which the material could have been copied.

Herman Miller v. Palazzetti Imports and Exports, Inc. (6th Cir. 2001)

Whether lounge chair and ottoman had acquired secondary meaning presented triable issue of fact.

Hays v. Sony Corp. of Am. (7th Cir. 1988) (Posner)

Works made for hire "teacher exception" protecting the intellectual property of college professors should be considered to have survived the 1976 Act despite a lack of textual support because of the very high reliance interests in the current system of higher education.

Wright Co. v. Paulhan (C.C.S.D.N.Y. 1910) (L Hand)

Wright brothers functional patent for "means for simultaneously moving the lateral portions [of a wing] into different angular relations" and "means whereby said rudder is caused to present to the wind that side thereof . . . having the smaller angle of incidence." Their embodiment had a single cable attached both to the wing and the rudder, but this claim was enforced against inventor of ailerons because of its broad means plus function nature.

Sportvision v. SportsMedia Tech Corp. (N.D. Cal. 2005)

Yellow first-down line is functionally yellow because it is easier to see, yellow cannot be trademarked.

McNeil Nutrition v. Heartland Sweeteners (E.D. Pa. 2008)

Yellow packaging of Splenda sugar substitute was arbitrary and thus inherently distinctive. (What are you doing district court?)

Donald F. Duncan, Inc. v. Royal Tops Mfg. Co. (7th Cir. 1965)

Yo-yo generic in English, besides being descriptive in Tagalog.

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC (4th Cir. 2007)

he test for dilution has four parts. Plaintiff must show (1) that its mark is famous (2) that defendant has commenced using a mark in commerce that allegedly dilutes the famous mark (3) the similarity between the marks gives rise to an association between them (4) that the association is likely to impair the distinctiveness of the famous mark (blurring) or harm its reputation (tarnishment). Defendant has three affirmative defenses (1) fair use (2) news reporting and commentary (3) noncommercial use. Parody nature relevant to the inquiry even though fair use not available. Six factors of dilution test (i) the degree of similarity between the marks (ii) the degree of inherent or acquired distinctiveness of the famous mark (iii) the extent to which the owner of the famous mark engages in substantially exclusive use of the mark (iv) the degree of recognition of the famous mark (v) whether the user of the junior mark intended to create an association (vi) actual association between the marks. Trademark like uses are expressly excepted from the fair use defense.