ClassNotesIntellectualPropertyDyalChand

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Intellectual Property

Prof. Rashmi Dyal-Chand

Wednesday, May 29, 2002 (Class 1)

• Office hours: Wednesday 2-4pm or by appointment
• Course will cover copyright, patent, trade secrets, trademarks
• Friday, June 28 class rescheduled to Monday, June 24 at 3:15pm.

• Why do we have separate body of IP law?
  • Constitution requires it: Article I, Section 8 (copyrights and patents); commerce clause (trademarks).
  • Society has tendency to 'propertize' things it wants to protect. Presumption that we own something when we create it (thus more analogous to property law than to contracts or torts.)
  • Contracts and torts tend to give damages as remedy, property law is more willing to issue injunctions.
  • Can be consumed without depletion
  • Hard to 'fence off' vs. real property
  • Non-rivalrous--possession by one person doesn't prohibit possession by another. On the other hand, landlord-tenant ownership suggests simultaneous possession is possible.

• Practice of IP:
  • <--Prosecution

    ---

    Commercialization

    ---

    Litigation-->
  • Prosecution: claiming rights to IP from agency
  • Commercialization: structuring business deals to make money off IP
  • Litigation: when something goes wrong

• Methodology for Reading Cases
  • Does the plaintiff have rights? Has the plaintiff met criteria for claiming rights?
  • Has there been a violation of plaintiff's rights?
  • Is there any defense?

• Copyright Law
  • Constitutional basis
    • Utilitarian justification--not based on moral rights of authors
    • Patents: protect original ideas, copyright: protects expression of ideas but not ideas themselves.
  • Copyright Act of 1976
    • Congressional determination of balance between authors and public's rights
    • Originality
    • Fixation requirement: must be reproducible in some way

• Originality Requirement
  • Very low requirement; must show that work came only from author
  • Words, short phrases, coloring, font are not sufficiently original
  • Facts are not copyrightable but compilations of facts are.

Feist Publications v. Rural Telephone Service

[499 U.S. 340] 1991 United States Supreme Court (cb356)

• Feist wanted to provide regional telephone directories; Rural had directories for specific towns for its customers.
• Rural included fictitious listings to see if anyone was copying directory, listings appeared in Feist's directory.
• Feist had requested license to print listings, but Rural would not agree.
• Original means work was "independently created by author and possesses some minimum degree of creativity".
• Court found no originality in Rural's telephone book or creation of numbers.
• Should it make any difference that Rural was a monopoly required by law to publish directories?
• Company makes money from other source than directories--rather from providing telephone service.
• What if there had been 100 fictitious names, rather than 4? These might be original enough to be copyrightable.

Friday, May 31, 2002 (Class 2)

• Problem for next week: Problem 4-8 (cb397)
• Reread "useful articles" exception (cb401) next week

• Review:
  • Talked about § 102: overarching requirements of copyright, originality and fixation

Feist Publications v. Rural Telephone Service

[499 U.S. 340] 1991 United States Supreme Court (cb356)

• Recap...
• What if Rural had included 100 fictitious names instead of four?
• "Fictitious names" don't seem to be very creative; but courts are very reluctant to attempt to quantify how creative the work is.
• In a compilation of facts that has required a lot of work, protection, if any, is considered to be thin. Only selection and organization are covered.
• Copyright law tries to avoid exclusive rights over facts.

ProCD?, Inc. v. Zeidenberg

[86 F.3d 1447] 1996 7th Circuit Court of Appeals (cb363)

• Question of whether shrink-wrap license was enforceable, approach was preemption analysis.

Fixation

• § 102(a): fixation is other overarching requirements.
• Particular work has to be fixed in tangible medium of expression.
• Doesn't have to be fixed in way that humans can read it; 'can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine of device.'
• Needs to be sufficiently permanent or stable for it to be perceived for more than a transitory duration.
• Live performances can be considered fixed as long as they're recorded simultaneously with permission of author.
• Distinction between work and copy or phonorecord.
• Work is the intellectual creation, copy or phonorecord is merely the medium in which the work is fixed.
• Why is fixation requirement?
  • May be constitutionally required (constitution talks about writings, but writings is interpretted broadly)
  • Practical reason: if someone can claim copyright infringement on work not fixed, how would they demonstrate work?
• Infringing work also has to be fixed (might also be evidentiary issue).
• State law often does not require fixation, however.
• § 1101 precludes bootlegging of musical performances, since they are not covered under § 101's definition of fixation.

Formalities

• Depend on date of creation of work
• Major Categories
  • Notice
  • Publication
  • Registration
  • Deposit
• Notice
  • Different rules pre- and post-1989 (signing of Berne Convention)
  • Still helps to have notice in seeking damages, just need to include word copyright, date, name
• Registration
  • Giving copy to copyright office, not required, but required for US residents to sue, can only get damages for infringement occurring after registration, establishes prima facie evidence for copyright.

Copyrightable Subject Matter

• §102(a)
• Literary works--including computer software and non-literal elements (structure, sequence, organization)
• Musical works--distinguish between musical works and sound recordings
  • Both are protected
  • After sound recording is made, must be compulsory licensed; can be performed by others who pay royalties (§ 115).
  • Recordings are protected by § 114.

Compilations and Derivative Works

• Compilation is gathering facts or other things together, collective works are composed of original subparts.
• Derivative work: original work that has been adapted or changed, e.g., translations (could also be a compilation).
• § 103: Compilation and Derivative Works
  • If you own copyright of compilation, you own the selection and arrangement of works but not the component works themselves.
  • If you own copyright to derivative work, you own rights to modifications but not to underlying works.

Roth Greeting Cards v. United Card Company

[429 F.2d 1106] 1970 9th Circuit Court of Appeals (cb409)

• At what point does a set of uncopyrightable material become copyrightable?
• Text itself is non-original and non-copyrightable, but combination of text and artwork is considered original.

Wednesday, June 5, 2002 (Class 3) (Assignment 3)

• Outline for Today
  • Subject Matter: Types of Works--Collective
  • Subject Matter: Exclusions
    • Idea/Expression?
    • Useful Article
  • Ownership

Subject Matter: Types of Works -- Collective

New York Times Company v. Tasini

[533 U.S. 483] 2001 United States Supreme Court (sp33)

• Statutory Basis: 201(c), collective works.
• Plaintiff's argument: work doesn't fall under 201(c) collective works provision because the articles can be retrieved individually, out of context, thus plaintiff's claim they retain the copyright to the individual articles.
• Defendant's argument: entire newspaper (selection and organization) is archived, thus redistributed as collective work.
• Plaintiffs: articles are fixed independently.
• Defendants: Publishers fixed their entire collective works when they sent them over to Lexis--media neutrality.
• Economic argument: giving authors right to republish the works gives them incentives.
• Dissent: authors won't get any more money, see NYT's current licensing agreement.
• Why isn't this better left to contract law between publishers and authors?

Subject Matter: Exclusions

Idea/Expression?

• 102(b): copyright does not extend to idea, procedure, process

Baker v. Selden

[101 U.S. 99] 1879 United States Supreme Court (cb375)

• Plaintiff had new system of accounting book-keeping, described in a book that was copyrighted.
• Defendant used slight variation on system described in book.
• Process is not subject to copyright, but description is protected.
• Question: can blank forms used in book be subject to protection as well?
• Forms were found not to be copyrightable; very few ways to express this 'idea'.
• Was this a question of copyrightability or infringement? i.e., were forms not copyrighted, or were they not infringed, because they were slightly modified.
• Forms can be copyrighted when they contain original information, but form copyright is usually thin.

Morrissey v. Procter & Gamble

[379 F.2d 675] 1967 1st Circuit Court of Appeals (cb382)

• Claim of copyright infringement on contest rules
• Contest itself is not copyrightable:
  • Not fixed
  • Idea, not expression
• Rule is not copyrightable because there is such a limited number of ways to describe contest that giving plaintiff a monopoly would have a negative impact on public, merger between idea and expression.

Useful Article Exeption

Brandir International Inc. v. Cascade Pacific Lumber Co.

[834 F.2d 1142] 1987 2d Circuit Court of Appeals (cb388)

• Plaintiff claiming copyright infringement for bicycle rack originally inspired by sculpture.
• Issue of separability: if rack is physically or conceptually separable from its artistic components, this aspect is copyrightable.
• Court uses test proposed by Professor Denicola: if there is artistic expression uninhibited by "functional considerations" then that is copyrightable.
• Since design of sculpture was modified to become bike rack, court finds functional consideration in design, thus rack is not copyrightable.
• Dissent: should look at how final article is perceived. If a reasonable observer would perceive the artistic content separate from the use, then material is copyrightable.

• Other tests:
  • Temporal displacement: if a reasonable observer could see some independent aesthetic aspects, object might qualify for copyright.
  • What kind of evidence can be used to support a claim under these tests?

Friday, June 7, 2002 (Class 4)

• Plaintiff have rights?
• Infringement?
• Defenses?

• Ownership: § 201 (a) initial ownership and § 201 (b) works made for hire.
• Difference between copyright and copy

Community for Creative Non-Violence et al. v. Reid

[490 U.S. 730] 1989 United States Supreme Court (cb414)

• Who owns the copyright when one party creates the work and another pays for it?
• Issue of whether sculpture commissioned by non-profit organization qualifies as "work made for hire" under § 101 and § 201(b).
• Doesn't fall under § 101(2) because there was no written agreement, nor is it included under any of the enumerated works under § 101(2).
• Court adopts "agency" test to determine whether Reid was employee of CCNV: looks at salary, benefits; who owns "means of production"; who controls the action.
• Court remands to see if work is a "joint work"

• Work for hire cannot revert back to original creator

• Joint Authors
  • Share equally in rights--have to share proceeds from exercising rights
  • Courts prefer to find derivative works rather than joint works--easier to enforce rights when they're not jointly owned

• Overarching questions
  • Is authorship a meaningful concept at all?
  • Is it right to give only the mastermind of a work copyright protection and give nothing to other contributors?

• Historically, could not sell copyright rights; could only license them. Now ownership is transferable in whole or in part.
• Terminations of transfers: author can terminate transfers between 35-40 years after work was made, but does not include works for hire.

• License transfer agreement

• Infringement
  • Did the defendant take anything of the plaintiff's work? (was there copying)
  • Did they take 'too much'?

Arnstein v. Porter

[154 F.2d 464] 1946 2d Circuit Court of Appeals (cb434)

• Plaintiff claims Cole Porter infringed on his copyright
• If similarities are great, don't need to show access as definitively; but if they are minor, need to go to greater lengths to prove access.

Wednesday, June 12, 2002 (Class 5)

• Methodology
  • Does plaintiff have rights?
    • Works for hire, agency testing, joint works, transfer and termination issues
  • Is there infringement?
  • Defenses

• Two elements to infringement by copying:
  • Copying (sliding scale)
    • Access can be inferred when works are similar enough and source is not in public domain
  • Improper appropriation (substantial similarity, determined by ordinary observer)
    • Did defendant take protected expression?
    • If improper appropriation is substantial enough, elements collapse together.
    • Major evidentiary issues
    • Focus on needs of artists--this is why we use jury and not rely on experts

Nichols v. Universal Pictures Corporation

[45 F.2d 119] 1930 2nd Circuit Court of Appeals (cb442)

• Court assumes defendant had access to plaintiff's play, focuses on improper appropriation.
• Plaintiff claims plot and characters have been infringed.
• Court finds character and storylines are in public domain, and differences outweigh similarities.
• Characters are too undeveloped to be infringed.
• Idea/expression dichotomy--defendant may have used some of the ideas upon which plaintiff's play was based, but did not infringe on expression.
• Everything in plaintiff's play is original, but does not meet idea/expression threshold requirement.
• Infringement is decided by overall complex of impressions perceived by jury.

Steinberg v. Columbia Pictures Industries, Inc.

[663 F. Supp. 796] 1987 Southern District of New York (cb449)

• 'Moscow on the Hudson' promotional poster claimed to be infringement on New Yorker cover.
• Court finds similarities between two posters too striking to be coincidental--'collapse' of two steps occurred.
• Test applied: would average lay observer recognize the work as having same aesthetic appeal--slightly easier than Learned Hand test from Peter Pan--says that observer should not set out to detect disparities.
• 'Idea': New Yorker's myopia.
• 'Expression': specific building, layout, distinctive fonts.
• Court finds for plaintiff; enough substantial similarity to constitute infringement.

• Substantial similarity is more often based on 'quality' than 'quantity'
• Some courts divide into 'objective' and 'subjective' test
• 'Fragmented literal similarity': is material substantial part of plaintiff's work?

• Many of these cases focus more of infringement than whether plaintiff has rights, "back door entry."

• Scope of right to copy:
  • Absolute. Non-commercial copying still violates § 106, unless it falls within narrow exceptions (§ 108, 115, 118, 1008)

Right to Prepare Derivative Works

• Copyright holder can exclude others both from copying their work, and from making derivative works from their work.
• Derivative work is created if it adds new expressive elements, and serves a different market.
• Exists to attract private investment in improving the original work.
• Who benefits from right to make derivative works? Companies or authors?
• If you infringe exclusive right of copyright owner to make derivative works, you can't copyright your work.

Midway Mfg. Co. v. Artic International, Inc.

[704 F.2d 1009] 1983 7th Circuit Court of Appeals (cb464)

• Midway test for derivative work: new expressive element or new market.
• Court focuses on economic issues: enormous demand for new work, original copyright owner has right to profit from this increased demand.
• Author of derivative work cannot have copyright unless they have permission from author of original work.

Friday, June 14, 2002 (Class 6)

• Derivative works: If product will not be profitable in any new market, maybe it's not an infringing derivative work.

Right to Distribute

• First Sale Doctrine: § 109 of Copyright Act. Copyright owner has right to distribute as to first sale.

Quality King Distributors, Inc. v. L'anza Research International, Inc.

[118 S. Ct. 1125] 1998 United States Supreme Court (cb471)

Performance and Display

• If it 'moves', it's performance, if it stands still, it's display.
• Violations occur regardless of whether performance/display is for profit.
• Exception: owner of one particular copy can display more than perform.
• Right to display does not apply to architectural works.

Moral Rights

• § 106 (a): only works of visual arts, only to creator of work (not work-for-hire owner)
• Right of attribution, integrity
• Term: life of author
• Cannot be transferred, but can be waived

Vicarious Liability vs. Contributory Infringement

• Vicarious liability: need to show the right and ability of defendant to control acts of direct infringement, direct financial benefit from infringement.
• Contributory Infringement: (1) knowledge of infringing activity, (2) actual inducement causing or materially contributing to infringement

• DMCA: criminalizes anti-circumvention, and digital contributory infringement, safe harbour for internet providers that don't control information

Defenses

• Options for accused infringer:
  • No ownership (plaintiff doesn't own copyright)
  • Not copyrightable
  • Consent
  • License
  • No access
  • Statutory exception
  • 'Fair use'

Fair Use

Harper & Row, Publishers, Inc., et al., v. Nation Enterprises et al.

[471 U.S. 539] 1985 United States Supreme Court (cb491)

• The Nation magazine got prepublication excerpts of Gerald Ford's autobiography and published them, accused of copyright infringement.
• Manuscript was work for hire: until published, the author still has power to modify, etc..
• Fair Use Test:
  • Purpose and character of the use: news reporting is often favored

Friday, June 14, 2002 (Class 7)

Harper & Row, Publishers, Inc., et al. v. Nation Enterprises et al.

[471 U.S. 539] 1985 United States Supreme Court (cb491)

• Fair Use defense: should it be applicable only where owner would have given consent? Argument that fair use is most needed when owner would not give consent.
• Unpublished: more or less protection? Court seems to hold that it should have more protection.
• Brennan Dissent: idea/expression, author didn't take anything but ideas. Used biography for factual/historical information.
• 'Front-door' approach: ask whether plaintiff has rights. Argued that plaintiff's work was not protected.
• Question of whether plaintiff has rights is question of law, easiest point to examine.
• Majority in Harper & Row, however, focuses on other issues (unpublished nature of work, lack of consent, etc..), which don't go to plaintiff's rights or infringement.

Sony Corporation of America v. Universal City Studios, Inc.

[464 U.S. 417] 1984 United States Supreme Court (cb501)

• Plaintiff claiming Sony is committing contributory infringement by manufacturing VCRs.
• Requirement: knowledge and contributing materially to copyright infringement.
• On knowledge element, Court claims that Sony was not aware of any specific infringement that was occurring.
• Can't find contributory infringement if product is capable of substantial non-infringing purposes.
• Substantial = commercially significant for court.
• 'Staple article of commerce' - can't banish things from public realm that are 'basic'.
• Court finds technology has significant non-infringing uses: authorized and unauthorized time shifting.
• Authorized time shifting: government works, and content providers who don't mind time shifting.

Wednesday, June 19, 2002 (Class 8)

Campbell v. Acuff-Rose Music, Inc.

[510 U.S. 569] 1994 United States Supreme Court (cb526)

• Claim of copyright infringement on Roy Orbison's "Pretty Woman" in 2 Live Crew song, fair use defense.
• Just because 2 Live Crew recorded song for a 'commercial purpose' does not automatically preclude fair use (contrary to Circuit Court of Appeals).
• Parody less likely to displace market for original work.
• Parody must take at least enough of original to make object of parody recognizable.
• Court is comfortable looking at differences between works in addition to similarities.
• Market test: Whether "particular actions of infringer" harm the market or whether widespread conduct of the type the infringer did would harm the market. Look at market for original and derivative work.
• Court rejects presumption of market harm in cases of commercial use, narrowing Sony holding.

Remedies

• Contract (compensatory damages) and property (injunctions, criminal) damages
• When work is more transformative, damages might be more contract-like than property-like--Court could apportion damage according to what was taken.

Accepts Dogs Financially Feasible

  - Rent
  - Utilities
  - Finder's fee, security deposit, first & last month's rent
  - Transportation costs

  - Size
  - Structure

Friday, June 21, 2002 (Class 9)

• Contract vs. statutory protections: could IP protection be accomplished through standard licenses?
• Alternatives for increasing public access to copyrighted material: Presumptions, burden shifting, safe harbors, compulsory licenses, additional fair-use criteria, exceptions for certain subject matter

Trade Secrets

• Imagine someone breaks into Coca-Cola plant, steals secret formula.
• Why have alternative cause of action? Aren't tort and contract law enough?
• Arguably, tort and contract are inefficient remedies. Can't necessarily protect when damage is so irreperable.
• Should trade secrets be treated as property rights? Right not to be 'tricked' (tort-like)? Or right to have duty fulfilled (contract-like)?
• Whose rights are protected by trade secrets? Seems to be 'master' over 'servant', class of businesses and business-owners, rather than individuals.
• Trade secrets from common law and now state statutory law, based on uniform trade secrets law generally.
• prima facie case:
  • Ownership of trade secret
    • Information (any valuable information), plus secrecy (valuable only because not generally known or readily ascertainable), reasonable efforts to maintain secrecy
  • Misappropration of secret information

Metallurgical Industries Inc. v. Fourtek, Inc.

[790 F.2d 1195] 1986 5th Circuit Court of Appeals (cbb38)

• Process for making tungsten carbide, claimed to be trade secret by Metallurgical.
• No need for secret to be original
• How to determine if information is secret
  • Lengths claimed owner goes to in order to protect secret
  • Subjective beliefs of plaintiff are relevant
  • Value of secret to trade-secret holder
  • Cost of development
  • (Factors on cb45)
• Secret doesn't have to be absolute--Metallurgical disclosed modifications to some parties
• Property-rights approach: the 'fruits of one labor'

• Restatement of torts vs. UTSA
  • Old restatement: opportunity to obtain advantage over competitors, no requirement that it not be knowable
  • New restatement: must be used in busines and sufficiently secret to afford actual or potential economic advantage
  • UTSA: secrecy and not readily ascertainable

Rockwell Graphic Systems, Inc. v. DEV Industries, Inc.

[925 F.2d 174] 1991 7th Circuit Court of Appeals (cb49)

• How to maintain secrecy?
  • Lock secret up (physical security, signage)
  • Confidentiality agreements (notice to potential defendants)
  • Product design
• Perfect security is not optimal security: need to get expert opinions from industry to determine how much is enough.
• Reasonable efforts and secrecy requirement
  • Secrecy: information in public domain shouldn't automatically be secret because someone treats it that way
  • Reasonable efforts: preventing plaintiff from being able to get windfall for something already disclosed, and giving notice to potential defendants

Wednesday, June 26, 2002 (Class 10)

• Trade secrets: misappropriation
  • Improper means
  • Violation of confidential relationship

• Once trade secret is 'out' may be impossible to bring it back in--injunction may not be proper remedy.

E.I. duPont deNemours & Co. v. Rolfe Christopher et al.

[431 F.2d 1012] 1970 5th Circuit Court of Appeals (cb66)

• Defendants discovered secret process with airplane fly-over.
• Economic analysis: some kinds of espionage may be 'fair play', but Court doesn't want to impose exorbitant burdens to protecting secrets.
• Balancing between competitor's access vs. incentives to invent.
• Fear: people may price themselves out of inventing if they need to protect too much.
• Court issues injunction against anybody from using information in photographs.

Smith v. Dravo Corp.

[203 F.2d 369] 1953 7th Circuit Court of Appeals (cb71)

• Issue of what constitutes a confidential relationship.

Chicago Lock Co. v. Fanberg

[676 F.2d 400] 1982 9th Circuit Court of Appeals (cb78)

• Trade secret: code needed to break the lock.
• Court applies Restatement (California now uses UTSA).
• Finds no improper appropriation.

Employee Confidentiality

Wednesday, July 10, 2002 (Class 13)

Diamond v. Chakrabarty

[447 U.S. 303] 1980 United States Supreme Court (cb138)

• Not patentable:
  • Pre-existing
  • Physical phenomenon
  • Laws of nature
  • Abstract ideas
• Bacteria in the case found to be patentable, however, since it had been modified from nature

Parke-Davis & Co. v. H. K. Mulford Co.

[189 F. 95] 1911 Southern District of New York (cb147)

• Patent on process for purifying adrenalin. Even though adrenalin occurs naturally in the human body, process still found to be patentable.

• Medical procedures: patents can be granted, but won't be enforced.
• Medication: patents granted and enforced.
• Computer programs: patentable if result is concrete and tangible, likewise for business methods.

• Utility: usually not high barrier

Brenner v. Manson

[383 U.S. 519] 1966 United States Supreme Court (cb157)

• Question: is chemical process useful because it work or because it yields a compound that is member of class under investigation?
• Court finds subject matter not patentable when use can't be defined.
• "High water mark" for utility--probably diminished since this case.

• Utility: general, specific, moral, beneficial.

• Novelty/Statutory? Bars
• Inventor or third parties can create statutory bars--if inventor waits too long to apply for patent
• Inventor cannot destroy novelty of his own invention
• Novelty is at date of invention, not date of patent application

Rosaire v. National Lead Co.

[218 F.2d 72] 1955 5th Circuit Court of Appeals (cb169)

• Patent infringement suit.
• Since product had been publicly used prior to patent, could not be patented.
• As long as prior use was not secret or concealed, bars subject matter from patent.

In re Hall

[781 F.2d 897] 1986 Federal Circuit Court of Appeals (cb175)

• Subject matter had appeared in doctoral thesis present as one copy in a library Germany. Even though it was not widely published, just the possibility that someone could see the book made it unpatentable.

Friday, July 12, 2002 (Class 14)

Egbert v. Lippmann

[104 U.S. 333] 1881 United States Supreme Court (cb178)

• Publication/public use are generally "bright line" tests, barring patentability.

City of Elizabeth v. Pavement Company

[97 U.S. 126] 1877 United States Supreme Court (cb185)

• 'Experimental use' exception from public use
• Court finds that streets can't be tested without having the public travel on them.
• So long as inventor doesn't allow others to make and use invention, he doesn't lose title to patent.
• Policy rationale: want inventors to be able to perfect their inventions and not lose right to patent.

102(g) Novelty and Loss of Right

• Between two people who developed and filed around the same time, who gets the patent?
• Generally, first inventor gets the patent, unless:
  • concealment
  • suppression
  • abandonment
• First inventor to reduce to practice: physical embodiment, or filing patent application, unless second person to reduce to practice was first to conceive of invention.
• Conception: completeness and operativeness

Griffith v. Kanamaru

[816 F.2d 624] 1987 Federal Circuit Court of Appeals (cb190)

• Griffith, Cornell Professor, conceives of invention in June of 1981 and reduces to practice in January of 1984.
• Kanamaru conceives and reduces to practice in November 1982.
• Issue: did Kanamaru act with reasonable diligence under 102(g)?

• 102(c): no patent if invention is abandoned, 102(d) and 102(e)...

• Non-obviousness, § 103
• Inquiry into prior art: would claim have been obvious to a person with ordinary skill in the art?

Graham v. John Deere Co.

[383 U.S. 1] 1966 United States Supreme Court (cb195)

• Primary/secondary considerations
• Primary
  • Scope/content of prior art
  • Difference between prior art and claims
  • Level of skill in art--obvious?
• Secondary
  • Commercial success
  • Failures of others
  • Long-felt need/Unsolved? needs
• Graham's claim about flexiblity was not in original patent application, found to be obvious by court and thus not patentability.
• Claim drafting

Friday, July 12, 2002 (Class 15)

In re Vaeck

[947 F.2d 488] 1991 Federal Circuit Court of Appeals (cb209)

• Obviousness: would prior art suggest to person of ordinary skill that they could make invention?
• Prior art: reasonable expectation of success

• Enabling: patent application requires a specification (§ 112).
• Need to state clear claims to invention, description, information sufficient for person of ordinary skill in the art to make invention.

The Incandescent Lamp Patent

[159 U.S. 465] 1895 United States Supreme Court (cb219)

• Patent claim on lightbulb made from vegetable fibrous material rather than from mineral or gas carbon.
• Thomas Edison had to engage in extensive research to discover which material would work, thus patent on 'vegetable material' in general is invalid.
• Issue is not breadth of claim, but rather whether it's enabling.

International Patent Law

• Most countries have to 'first-to-file' system, and 'absolute priority' rules.
• Must file before public use or sale.
• Any public disclosure anywhere in the world will bar patent.
• Under GATT/TRIPS, United States has 18 month patent period.
• Need to file for patent seperately in each country.

In re John Kollar

Nos 01-1640, 2002 Federal Circuit (sp51)

• Court holds that product is not ready for patent.

Value Added Reseller Agreement

Wednesday, July 17, 2002 (Class 16)

Guest Speaker Anita Varma

• Craig Venter files for patent on 400 gene sequences: 1-300 cDNA, 301-400 EST
• 35 USC § 101:
  • Statutory Subject Matter: what is not patentable (found in nature, abstract ideas, laws of nature).
  • Aren't genes found in nature?
  • Claim: "isolated" or "purified" nucleic acid--thus not as found in nature, or recombinant proteins
• § 102 use and knowledge: limited to United States, but § 103 publication can be anywhere in the world
• 35 USC § 101 utility
• Obviousness with genes: Bell and Duevl.
• Bell: Great number of sequences that encode any given protein; one sequence found sufficiently non-obvious by Federal Circuit to qualify for protection.
• Duevl: knew only portion of protein, also found non-obvious by Federal Circuit.
• § 112, 1st paragraph: need to teach one of ordinary skill how to make invention (enabling requirement), written description, best mode (if inventor knows particular method is best way of making something, they need to disclose it)

Friday, July 19, 2002 (Class 17)

• Could public access be formally fit into test for granting injunction against patent infringement?

Trademarks

• Prima facie case:
  • Ownership of trademark
  • Defendant's markt same or confusingly similar to plaintiff's
• Generic->Descriptive->Suggestive ("Hot Wheels")->Arbitrary or Fanciful ("Apple Computers")
• Indefinite time period
• Doesn't need to be registered to be protected
• Right against everyone in commercial context
• Trademarks: apply to goods
• Service marks: apply to services

• Subject matter: words, phrases, names, symbols, logos, taglines, packaging

Qualitex Co. v. Jacobson Products Co., Inc.

[115 S. Ct. 1300] 1995 United States Supreme Court (cb568)

• Issue: can green-gold color on cleaning pads qualify as protectable trademark?
• Originally false advertising claim, trademark claim added afterwards.
• No principled reason why color can't be trademark
• Inherently distinctive vs. descriptive
• Court finds mark not inherently protectable, need to prove secondary meaning
• Functionality: cannot monopolize useful product features under trademark law
• Defendant's argument: there could be 'shade confusion' but court doesn't allow this to deny trademark rights.
• Merger: color is in limited supply. But in this case color is uncommon.

Wednesday, July 24, 2002 (Class 18)

Qualitex Co. v. Jacobson Products Co., Inc.

[115 S. Ct. 1300] 1995 United States Supreme Court (cb568)

• Functionality: part of prima facie case or affirmative defense? Courts seem to go back and forth.
• Distinctive: indicates source. Difference between inherent distinctiveness and distinctiveness: secondary meaning.

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

[698 F.2d 786] 1983 5th Circuit Court of Appeals (cb579)

• Issue of "Fish-Fri" and "Chick-Fri" alleged trademark infringement
• Court goes through several tests:
  • Dictionary definition--would need to show secondary meaning if product matched definition
  • Imagination--if term requires imagination, thought, perception to reach conclusion as to nature of goods
  • Whether competitors would need terms to describe product
  • How many competitors use the term

Friday, July 26, 2002 (Class 19)

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

[505 U.S. 763] 1992 United States Supreme Court (cb592)

Walmart Case

Traffix Case

• Product is traffic sign with unique design to keep it up with wind
• Plaintiff arguing that distinctive design had come to be associated with product, visible spring designs
• Functionality: don't need to take extra step of determining whether design is essential when it is utilitarian
• Previous patent was strong evidence that design was utilitarian

Wednesday, July 31, 2002 (Class 20)

• Greeting card trade dress infringement claim
• Can trade dress alone ever be inherently distinctive? Two Pesos--yes, 'packaging', vs. Walmart--no, 'product design'.
• Traffix: "what makes the product work"
• Qualitex: "aesthetic functionality"
• Real case: [886 F.2d 931].

Priority

• Pre-1989 needed to show use for trademark priority, then Lanham Act was amended to allow 'intent to use' registration.

Zazu Designs v. L'Oreal, S.A.

[979 F.2d 499] 1992 7th Circuit Court of Appeals (cb609)

• L'Oreal hired firm to create trademark, researched possible conflicts with "ZAZU", determined that small hair firm provided services and not products.
• Court of Appeals reverses lower court, saying ZHD's use was not sufficient to establish priority.
• Mark was unregistered; process of manufacture would have been sufficient to qualify mark for protection.
• "Active use" -- consumer protection -- common law trademark protection
• "Intent to use" -- lower threshold -- statutory trademark protection
• Use vs. Secondary Meaning
  • Use can serve evidentiary function that there is secondary meaning
  • Use->ownership
  • Secondary meaning->when mark is not inherently distinctive

Brookfield Communications v. West Coast Entertainment Corp.

[174 F.3d 1036] 1999 9th Circuit Court of Appeals (cb619)

• 1991: West Coast registered "Movie Buff's Movie Store"
• 1993: Brookfield sells MovieBuff? software
• 1996: West Coast registered domain name "moviebuff.com"
• 1997: Brookfield files for MoveBuff? trademark
• Court found Brookfield to have priority
• Early case that resulted in anti-cybersquatter statute
• West Coast did not start using website until 1998

Friday, August 2, 2002 (Class 21)

• Priority
  • Statutes: § 1115 (defenses/incontestible marks), § 1057 (constructive use once you've filed for registration), § 1063-1064 (opposition, cancellation), § 1114 (cause of action for registered trademark holders)
  • Once registration is published, parties can oppose. Even after, parties can file for cancellation.
• Why register?
  • Nationwide constructive use
  • Incontestability
  • Importation bar
  • Federal cause of action
  • Treble damages
• Grounds for refusal - §1052
  • (a) Immoral, deceptive, scandalous
  • (b) Flag
  • (c) Name/portrait/etc. without consent
  • (d) Most commonly invoked--confusingly similar
  • (e) Descrpitive, deceptively misdescriptive, geographically descriptive, etc..

Harjo v. Pro-Football Inc.

[50 U.S.P.Q.2d 1705] 1999 Trademark Trial and Appeal Board

• Disparaging (not scandalous) claim
• If claim were scandalous, would need to determine meaning to substantial part of population, and then whether that meaning is scandalous to general population.
• Disparagement: perception of general public is irrelevant--disparaging to those referred to, implicated, etc., in mark.

In re Nantucket, Inc.

[677 F.2d 95] 1982 United States Court of Customs and Patent Appeals

• Nantucket Men's Shirts, not from Nantucket.
• Why not primarily geographically misdescriptive?
• Neither geographically descriptive nor geographically deceptive misdescriptiveness.
• Geographically descriptive: can get protection from secondary meaning
• Geographically deceptive misdescriptive: no protection.

Park 'N Fly, Inc. v. Dollar Park and Fly, Inc.

[469 U.S. 189] 1985 United States Supreme Court (cb660)

• Trademark infringement action on incontestible descriptive trademark; defense is that mark should not have been registerable in the first place.
• Court holds challenge is barred by incontestible status.
• Stevens dissent: mark was unregisterable, should not be protected by Court.

AMF Incorporated v. Sleekcraft Boats

[599 F.2d 341] 1979 9th Circuit Court of Appeals (cb680)

• Slikcraft vs. Sleekcraft (recreational family boat company vs. recreational speeding boat)
• Look first at similarity of two lines of products, and if not similar, need to look at all factors (current law is probably to look at all factors).
• Court holds marks to be suggestive (in terms of strength).
• Proximity of goods: products are similar enough to lower standard of similarity.
• Sight, sound, and meaning: favors plaintiff

Wednesday, August 7, 2002 (Class 22)

AMF Incorporated v. Sleekcraft Boats

[599 F.2d 341] 1979 9th Circuit Court of Appeals (cb680)

• Eight factor analysis for trademark infringement
• Issue of 'ordinary caution' vs. 'sophistication'.

• 1125(c): dilution. Federal cause of action:
  • Plaintiff owns famous mark (some circuits require mark to be distinctive)
  • Instead of confusingly similar, issue is whether junior use causes dilution of distinctive quality of plaintiff's mark.
  • Junior use = commercial
  • Juniro use begins after plaintiff's mark becomes famous
  • 43(c)(1)(A)-(H): whether mark is famous

Nabisco, Inc. v. PF Brands, Inc.

[191 F.3d 208] 1999 2d Circuit Court of Appeals (cb697)

• Goldfish (trade dress) dilution claim
• No trademark infringement: different packaging, perhaps goldfish not distinctive enough, no actual confusion
• Defendant (in declaratory judgment) clearly met famous requirement.
• No problem with use in commerce, and use by junior user after trade dress became famous.
• Main issues: distinctiveness
  • Famous marks such as American, National, etc., not likely protectable because not sufficiently distinctive.
• Dilution of distinctive quality?
  • Distinctiveness: serves two roles--first, whether it qualifies for protection, second, whether junior use has diluting effect.
  • Goldfish are moderately distinctive.

Friday, August 9, 2002 (Class 23)

L. L. Bean, Inc. v. Drake Publisher, Inc.

[811 F.2d 26] 1987 1st Circuit Court of Appeals (cb772)

• Problem 5-6 (cb692)

Barcamerica Case