Copyright & Trademark Outline

4LawSchool.com Outlines Bank

Author: Michael P.
School: Rutgers – Newark
Professor: Prof Kettl

INTRODUCTION

Everyone is an author

Copyrights – Patents – Trademarks – Tradesecrets – Unfair competition – Right of Publicity

Ideas are protectable (common law)

Sweet and Low example of Trademark

– let consumers know its the brand

– should always function as a adjective and not a noun

Article I: Section 8: Clauses 3 and 8 – enabled Congress to enact laws

– Clause 8 – copyright and patent

– Clause 3 – trademark

Trademark – State/Fed/CL

Idea – CL

Patent – Federal

Trade Secrets – State

Creator – Consumer – Inventor

Intellectual Property: maintain an incentive to produce/create for the benefit & enrichment of

society

Balance Interests of Creator/Inventor – Investor/Provider – Consumer/Public

Ideas – Trade Secrets – Unfair Comp – R/O/P – Trademark – Copyright – Patient

IDEAS

FACTORS

– novelty

– concrete form

– D used Ps idea

– P expected $

– K – express, implied, quasi

– property

– confidentiality

Sellers v. American Broadcasting Co.

– P with theory of Presley’s death sued ABC because they dismissed his story and ran a similar story later

– not novel

Lueddecke v. Chevrolet Motor Co.

– P sues Chevy for use of his idea of balancing the cars

– not novel

Downey v. General Foods Corp.

– P claims he had the idea to market Jell-O as Mr. Wiggley

– not novel, of course it wiggles

– D claims they already had the idea

Aronson v. Quick Point Pencil Co.

– P filed patent on a key holder, P made agreement with D to make key holders for 5% if patent is

approved or 2.5% if patent was not granted. Patent was never granted and after 14 years, D

wanted out of the agreement because anyone could make, use, and sell it

– because it was a express contract and it was not in conflict with patent law, D had first-on-the

market rights that was adequate consideration for the contract

– Passing Off = Fraud (palming off)

– FITGTT / Sr. Vs Jr. (first in time)

– Z.O.E. (zone of expansion)

– B.T.G. (bridging the gap)

– 2nd Meaning

– Trademarks

– functionality

– utility

– dilution

– tarnishment

– blurring

– corp name vs. tradename vs. trademark

– beauty vs. utility

– non-functional

– non-essential

– functional

– essential

– test for functionality (3rd Cir)

1. unusual & memorable

2. conceptually separate from product

3. likely to serve primarily as designator of origin

– FOM (family of marks)

– remedies

– Inj

– P loss

– D Profit (subject to apportionment)

Mead Data vs. Toyota (Lexus)

– P claims likelihood of dilution

– Judge Sweet came up with test (Sec 43c now)

1. similarity of the marks

2. similarity of the products

3. sophistication of consumers

4. predatory intent

5. renown of the senior mark

6. renown of the junior mark

Board of Trade of City of Chicago v. Dow Jones

– D claims P is stealing its info to make its own index

– is this misappropriation?

– have to show there is competition

Findley v. Findlay

– Wally opened up a art gallery down the street from his brother David’s art gallery.

– same type of art, same name of store

– likely of confusion in the marketplace

– court said Wally had to change name or move

Sullivan v. Ed Sullivan Radio and TV

– Is there a question of confusion between a actor and a television repair service?

– court found there was no indication of the nature of work in the repairshop’s name and

this called confusion

– Functionality

– no trademark

– Trade Secrets

– competitive advantage

– take reasonable steps to keep secrets

– used by P w/o permission or privilege

– remedy

– inj

– money damages

– reverse engineering is OK

– N.D.A.

– protective orders

– attorney eyes only

– court seal

Crescent Tool v. Kilborn & Bishop

– “D has as much right to copy the “nonfunctional” features of the article as any others, so

long as they have not become associated with the P as manufacturer or source.”

Sears, Roebuck & Co. v. Stiffel Co. (SC 1964)

– Sears copied a pole lamp from D, no patent, no copyright

– DC and AC determined that there was confusion between lamps

– mere inability of the public to identify the article does not support an injunction, reversed

– state law cannot prohibit copying that federal law allows

Compco Corp. v. Day-Bright Lighting (SC 1964)

– both are manufacturers of light fixtures

– D maintained no patent on design or mechanics

– while the light had acquired a secondary meaning, the non-functional aspect can be

copied at will

– NEED TO TRADE DRESS BETTER

– design patents protect non-functional appearance

TRADE SECRETS

Uniform Trade Secret Act

State Statutes

Economic Espionage Act of 1996

Closely guarded secret that gives you an economic advantage

Trade Secret turns public when a patent is granted.

Forest Laboratories v. Formulations, Inc. (DC 1969)

– sweetener tablet case

– court used restatement to come up with six factors to determine a trade secret

– court found the temperance process was a trade secret that was breached

– injunction would not work, how long would it take to reverse-engineer, how long before

it is publicly known

E.I. dupont deNemours & Co. v. Christopher

– D took aerial pictures of Dupont plant’s trade secret for producing methanol

– D refused to disclose client

– D argued that a misappropriation of a trade secret must result from an illegal activity

IAW Restatement of Torts

– Is aerial photography an improper means of discovering a trade secret

– MUST REVERSE ENGINEER

PepsiCo v. Redmond

– D left Pepsi to go to Quaker Oats and had access to inside information and trade secrets.

DC granted injunction against Redmond.

– P may prove a claim of trade secret misappropriation by demonstrating that D’s new

employment will inevitably lead him to rely on the P’s trade secrets

COMMON LAW COPYRIGHT

§1338 Judicial Code

Fed Cts

Patent

Pendent (substantial & related)

– unfair comp – misappropriation

– T.S. – TM/SM – related K.

CAFC

exclusive – patent appeals from dist. Cts.

Trademarks:

§8 – certifies contains use

§9 – renewal every 10 years

§15 – claim incontestable – done once after 6th year (deemed having a secondary

meaning after 5 years)

– USE of a mark that can function as a distinctive mark

– ITU (intent to use – only in Fed) – must be bonifide intent

– made-up words strongest

– notice of allowance (max of 36 month protection before use in six month

periods)

– filing date starts seniority

– NOA starts clock

– can last forever but must renew every ten years and prove you still use the mark IAW

§8.

RIGHT OF PUBLICITY

Frisch test

Polarad test

Sweetcraft test

43(a) action

very popular in California

Cheers case decided in favor of Cliff and Norm for use of robots in bars. In favor of state right of publicity over Fed copyright law.

Carson v. Here’s Johnny Portable Toilets

– D used the name because it was easily recognizable.

– eight factors in the likelihood of confusion test (Lanham Act)

1. strength of the P’s mark

2. relatedness of the goods

3. similarity of the marks

4. evidence of actual confusion

5. marketing channels used

6. likely degree of purchaser care

7. D’s intent in selecting the mark

8. likelihood of expansion of the product lines

– D did not use P’s name or likeness but was still identifiable to the P and was a right of

publicity issue

DISSENT: three reasons for ROP claim: 1. Vindicates the economic interests of celebrities

to profit from their fame, 2; The incentive to expend the time and resources necessary to

produce intellectual and creative works; 3. Preventing unjust enrichment and deceptive

trade practices

White v. Samsung Electronics America

– robot case

– invalid Section 3344 claim

“knowingly uses anther’s name, voice, signature, photograph, or likeness, in any

manner…..for purposes of advertising or selling”

– valid right of publicity claim under Miller (appropriate part of her identity)

1. D’s use of the P’s identity

2. the appropriation of P’s name or likeness to D’s advantage

3. lack of consent

4. injury

– valid Lanham Act claim

DISSENT: fair use parodies; in NY, Howard Hughes prevailed against the use of his name

and likeness on a T-shirt and a board game, but not against the use of his identify in an

unauthorized biography and in a fictional autobiography

* courts will measure damages for right of publicity violations by a reasonable royalty or market

value

Zacchini v. Scripps-Howard Broadcasting Co

– 30 second human cannonball act was televised by local station. P sued for right of

publicity, TC granted D’s SJ, AC reversed, SC of Ohio reversed, SC granted certiorari

– the broadcast of P’s entire performance, unlike the unauthorized use of anther’s name

for purposes of trade or the incidental use of a name or picture by the press, goes to the

heart of petitioner’s ability to earn a living as an entertainer

– 1st and 14th Amendments do not immunize D from damages

FEDERAL v. STATE LAW

Section 1338(a) – gives federal districts courts original jurisdiction over “any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks

Section 1338(b) – pendent jurisdiction

1. claim must be for unfair competition

2. federal claim to which it is attached must be substantial

3. federal claim to which it is attached must be related

The Well-Pleaded Complaint – federal jurisdiction to complaints alleging all the elements of an infringement action or claims requiring construction of a federal statute or implicating the policies of the statute

State handles state trademark, common law trademark

Federal Copyright & Trademark Claim – must be brought into Fed court

Interstate commerce claims fall into 43(a) fed court

CAFC – takes patent appeals from district courts

Full faith and credit – Article 4 § 1

TRADEMARK LAW

Blue Bell v. Farah Mfg.

– two manufacturers of men’s clothing created identical trademarks

– secret undisclosed internal shipments are generally inadequate to support “USE”

– trademark law require that labels or designs be affixed to the merchandise actually

intended to bear the mark in commercial transactions

– mere adoption of a mark without bona fide use, in an attempt to reserve it for the future,

will not create trademark rights.

Manhattan Industries v. Sweater Bee by Banff

– two companies applied for a copyright within one day of each other

– to protect the public, each company will have to differentiate its product from that of the

other company and perhaps also from the original

Distinctiveness

Inherently Distinctive

– coined / fanciful (Nike)

– arbitrary

– suggestive (Timex)

Consider Supplemental Register

– merely descriptive with 2nd meaning (Shredded Wheat)

– descriptive without 2nd meaning, not protectable

– generic, not protectable

– deceptive marks

– confusingly similar marks

– merely descriptive

– deceptively misdescriptive

– primary geographically descriptive or misdescriptive

– geographically misdesciptive with 2nd meaning

Rejection

§2(e)

1052

Secondary Meaning

§2(f)

Can lose mark after three years of non-use

All surnames need secondary meaning

If abandoned comes up in report, you must do extra research because only the application has

been abandoned

King-Seeley Thermos v. Aladdin Industries

– TC held that “thermos” had become generic

– D must confine its use of “thermos” to lower case

The Trademark Clarification Act of 1984

– the primary significance of the registered mark to the relevant public rather than

purchaser motivation shall be the test for determining whether the registration mark has

become the common descriptive name of goods or services in connection with which it has

been used

– even if that source in unknown

In re Budge Manufacturing Co.

– appeal from PTO refusal to register LOVEE LAMB synthetic seat covers for deceptive

matter under Lanham Act §2(a), 1052(a)

– Section 2(a) bars registration of a mark which consists of or comprises deceptive matter

– board applied 3 part test (Shapely test)

1. whether the term is misdescriptive as applied to the goods

2. if so, whether anyone would be likely to believe the misrepresentation

3. whether the misrepresentation would materially affect a potential purchaser’s

decision to buy the goods

– court used Simmons test

1. is the term misdescriptive of the character, quality, function, composition or use

of the goods

2. are the prospective purchasers likely to believe that the misdescription actually

describes the goods

3. is the misdescription likely to affect the decision to purchase

In re N.A.D.

– appeal from refusal to register NARKOMED for anesthesia machines because of

confusion with NARKO medical supplies IAW 2(d), 1052(d)

– no likelihood of confusing source merely by reason of similarity, NARKO didn’t care,

smart consumers

Application of Sun Oil

– refusal to register “Custom-Blended” for being merely descriptive with no secondary

meaning under §2(e)(1) and §2(f)

In re Loew’s Theatres, Inc

– refusal to register DURANGO for chewing tobacco because it was “primarily

geographically deceptively misdescriptive of the goods to which it is applied” §2(e)(2)

– reasonable for the purchaser to expect the tobacco to be from that area of Mexico

In Re Carson

– appeal from refusal to register Jonny’s name

– the name of an individual may function not only to identify the individual but also as a

trademark or service mark to identify goods sold or services rendered by the individual,

or by an authorized corporation in commerce

– court believed that these specimens are sufficient to establish that the designation

“Johnny Carson” is used by applicant not only as a name to identify himself but also as a

service mark to identify services rendered by him in commerce

Service Marks

– proper use – ads, brochures, signs…

Ex parte Handmacher-Vogel, Inc.

– Weathervane wanted to register its service mark with the words “Women’s Open Golf

Tournament” for a upcoming tournament. Committee felt that the service claimed was a

medium employed by Weathervane to advertise and promote the sale of its goods.

– can a consumer do one thing without doing the other? Ex. calling card

Certification – certifies standards met (cannot use for own products or you will lose mark)

vs.

Collective – membership badge

In re Florida Citrus Comm’n

– refusal to register a certification mark that is already a service mark

Qualitex Co. v. Jacobson Products Co.

– P wanted to register the color of its dry cleaning pads – GREEN

– § 1127 – any word, name, symbol or device, or any combination thereof

– needs secondary meaning without being functional

CDT- color depletion theory

Remedies

§1116 – Injunctive (Full or Partial as Equity Dictates)

– Monetary Relief (subject to §1111 innocent infringer defense)

§1117(a) – P own lost sales or D profit w/cost of suit (not esq fees) – only in exceptional,

bad faith cases

– corrective advertising

§1117(b) – counterfeit mark

– 3x P loss or

– D profits which ever is greater

– plus cost / esq fees

§1117(c) – statutory counterfeit penalties

– $500- 100,000 – unintentional

– up to $1 million – intentional

§1118 – destruction of infringing articles (labels, packages, ads, signs, etc)

Positive or Negative injunctions

§43(d) – cybersquatting ($1000 – $100,000)

Title 18 – intentionally traffic, attempt to traffic, knowingly use counterfeit mark, $2M or 10 years, companies $5M (repeat offenders $5M or 20 years, companies $15M)

Maltina Corp. v. Cawy Bottling Co.

– P had liquor business that went under in US. D took over name and began selling its

product. DC found infringement and awarded injunction, and D’s profits

– D claims it did not make that much profit

– if successful in innocent infringer defense – you get to keep the money

TM, RM, ®©

Hard Rock Cafe Licensing Corp v. Concession Services

– flea market owner was sued for vicarious liability for its vender selling Hard Rock T-

shirts.

– only sold 4 T-shirts, goto statutory claims

– court found standard to be “did not know or did not have reason to know” and

remanded

Pikle-Rite Co. v. Chicago Pickle Co.

– P had Polka pickles on the market. D brought Pol-Pak pickles into same market. P

wanted injunction and damages.

– court granted limited injunction because of possible confusion but granted to damages

Remedies (subject to principals of equity)

INJ = L/O/C

P damage = actual confusion or intentional deception

Esq Fees = exceptional cases (fraud, deliberate/ willful conduct, malicious)

D profits = bad faith

intentional deception

unjust enrichment
Factors:

1. degree of certainty D benefited from unlawful conduct

2. availability and adequacy of other remedies

3. rule of D in effectuating infringement

4. P laches

5. unclean hands

§43(a) C/O/A elements

1. false or misleading statements of fact regarding P’s products or sucs

2. likelihood of or actual deception of consumer

3. materiality of deception to purchaser decision

4. interstate commerce

5. likelihood of or actual injury to P

POLAROID TEST

– strength of marks

– degree of similarity between marks

– proximity of products

– P likelihood to bridge the gap

– actual confusion

– P good faith

– quality of P product

– sophistication of buyer

DEFENSES:

– abandonment after three years of nonuse

– editorial use

– naked license

– senior mark

– laches

– generic mark

– good faith

– functional

– descriptive w/o secondary meaning

– parody / satire

– comparative ads

– innocent infringer

– collateral use

– fraud in application

– no likelihood of confusion

– no likelihood of dilution

– first sale doctrine

– unclean hands

– deception

– trademark misuse (anti-trust claim)

McGregor-Doniger v. Drizzle

– P made “Drizzler” golf jackets, D made women’s coats

– P claimed trademark infringement (1114), false designation of origin (1125), common

law unfair competition

– court uses Polaroid test to determine likelihood of confusion

Two Pesos vs. Taco Cabana

– P sued for trade dress protection

– trade dress can be inherently distinctive

– court found constructive license for brother using the trade dress

White v. Samsung Electonics America

– 43(a) claim

– court used Sleekcraft test (similar to Polaroid test)

Copyright 17 U.S.C §§101 – 810, 1001-1010

1790 Act

1909 Act

– requirement of formalities

– publication with proper notice

– registration / renewal

– if you didnt follow the rules, it was public domain

1976 Act (took affect 1/1/78)

– © vests automatically upon creation

– proper notice

(optional notice for works after 3/1/89 because of Burne convention)

– use it anyway

– registration to cure notice defect for 5 years

– must register first

– then make reasonable effects to cure defect

Federal copyright law preempts state law

– except unfixed works or art (ex live unrecorded dance, music)

Came from Article I, Section 8 of the constitution

Have to register to sue!!

– except for claims from other Burne countries

– VERA rights claim does not need to register to sue or get statutory damages

Forms:

– VA – visual arts

– TX – literary works

– SR – sound recordings

– PA – sheet music

– RE – renewal

Protection is now:

– 70 years after death (or last to die)

– 95 years from publication or 120 years from creation

Copyright Law

1909 Act

28 – Publ. Or Reg.

28 – R.E. (automatic if originally filed before 1964)

19 * (1/1/78)

20 * (10/27/98)

95 Max

1976 Act (1/1/78)

Life + 50 +20

Work made for hire

Anon/Psu

75 + 20* = 95

100 + 20* = 120 First to arrive

Berne Conv 3/1/89

– no notice needed

Sonny Bono 10/27/98*

© Term Ext

Auto Renewal 1964 –>

§106 Rights of Copyright Owner

– Reproduction

– Derivative

– Distribution

– Public Performance

– Public Display

– Digital Transmission

PA, SR, TX, VA, RE

§407 Mandatory Deposit

– any work published is to be deposited with library of congress

ORIGINAL WORK OF AUTHORSHIP FIXED IN A TANGIBLE MEDIUM OF EXPRESSION FOR MORE THAN A TRANSITORY PERIOD OF TIME.

February 15, 1972 – federal protection for phonorecords

Hasbro Bradley, Inc. v. Sparkle Toys, Inc.

– Japanese company made toys with no copyright and sold some in US. Sales were poor

and P brought rights to toys, copyrighted the toys and sold them in the US. D began

selling similar toys claiming that the earlier toys were sold were public domain.

– §405(a)(2) allows a person who publishes a copyrightable work without notice to cure

within 5 years with a reasonable effort

– court found P did cure

Feist Publications, Inc. v. Rural Telephone Service Co.

Selection, Arraignment, Coordination

Original Work of Authorship

– author vs. owner

– joint authorship

– W/M/F/H

– common law agency

– compilation

– derivative work

– idea / expression merger

– originality vs. novelty

– US Gov’t works

– functionality

– transfer of ©

– publication

Bleistein v. Donaldson Lithographing Co.

– P claimed copyright on circus advertisement with work of art

– §102(b)

– common shapes or symbols are not copyrightable

– court found ad was copyrightable

A derivative work encompasses a preexisting work

Selection, arrangement, coordination

Miller v. University City Studies, Inc

– movie maker used P’s book info about kidnapping to make their movie. P claimed

sweat-of-the-brow

– research of facts is not copyrightable

Community for Creative Non-Violence v. Reid

– §101

– work made for hire = part of a larger work

Erickson v. Trinity Theatre, Inc.

– playwright had input from actors when she wrote plays. After leaving the Theatre, she

claimed copyrights on plays. D claimed joint-authorship.

– court used Prof. Goldstein’s copyrightability test

– must have intent to co-author

– each party must contribute copyrightable expressions

* co-owners can contract rights

Other test is Prof. Nimmer’s de mininis test where only the finished product must be copyrightable.

§ 203

termination of grants, licenses, transfers

§ 304

Baker v. Selden

– Seldon made a accounting book with charts making a system, Baker copied this system,

Seldon claims the whole book and everything in it is copyrighted

– by publishing the book, without getting a patent for the art, the latter is given to the

public

Blank Form Doctine – the main use of the form is to collect information, the form is not copyrightable (except for the design / logo)

Mirage Editions, Inc. v. Albuquerque A.R.T. Co.

– appellant removed selected pages from the book, mounted them individually onto

ceramic tiles and sold the tiles at retail

– § 101 exclusive rights

1. the right to reproduce the copyrighted work in copies

2. the right to prepare derivative works based upon the copyrighted work

3. the right to distribute copies to the public by sale or other transfer or ownership,

or by rental, lease, or lending

4. the right to display the copyrighted work publicly

– the first-sale doctrine does not give the right to make a derivative work (a work that is

recast, transformed, or adapted)

Russell v. Price

– a licensed derivative work of the play “Pygmalion” lost its copyright and Price took the

film and sold videotapes

– a derivative copyright protects only the new material contained in the derivative work,

not the matter derived from the underlying work

Prior to 1/1/78 –

– 28 years + 28 years (must file form RE in the last year)

– if author dies before renewal form is filed

1. the copyright for the 2nd term goes back to the estate

2. any license must stop everything automatically

§ 304

19 year extension + 20 year extension

– 5 year window to take back licenses starting the 1st day after the expiration of the

renewal period

– must give two year notice to licensee (no more than ten years back)

– if you get it the first extension, you dont have to do it again for the second extension

– licensee can continue to distribute what they already made

§203

On or After 1/1/78

– rights can be terminated 35 years after it was signed if it does not have publication rights

– must give two year notice up to ten years

§106

– reproduction

– derivative

– distribution

– public perf

– public display

– digital transmission of P

COMPULSORY LICENSES

§111 Secondary Transmission

§115 (limited by §114) PhonoRecords

§116 JukeBoxes

§118 Public Broadcast

§119 Satellite Retransmission

If w/ pub rights —–> 35 yrs after pub or 40 yrs after grant (1st to arrive)

No pub rights ——> 35 yrs after grant

5 yr window, subject to 2 yr / 10 yr notice rule

Columbia Pictures Industries, Inc. v. Redd Horne, Inc.

– video store showed videos in booths to customers

– P claimed this was public performance §106, §101

– unsuccessful defenses

– Point Of Sale exception – customers may look at movie on monitor (Blockbuster)

– First Sale Doctrine

– court found a public performance

Cass Country Music Co. v. Muedini

– restaurant owner piped music from a radio station without a licensing fee

– whether this is a public performance IAW § 106(4)

– § 110(5) provides a exception for playing music on a homestyle receiving apparatus

– if any non-home-type components are used, then it is a public performance

– <2000 – 2 speakers

– >2000 – 6 speakers, no more than 4 in a room

– >2000 – 4 x 55” TV, no more than 1 in each room

The single receiver exception is void if a charge for music.

– playback of pre-recorded music IS public performance no matter what the system is

– must license separately video and audio

Public Performing Rights Societies

ASCAP (American Society of Authors Composers)

BMI (Broadcasting Music Inc)

SESAC

Vicarious Liability

– Secondary Liability

– control

– financial benefit

Contributory Infringement

– knowledge

– contribution (material &/or labor)

– induces

– causes

§ 107 FAIR USE: criticism, comment, news reporting, teaching, scholarship, research

1. purpose & character (profit vs. nonprofit)

3. amount used (qualitative vs. quantitative)

4. effect on potential market value or P work (does it replace need for original work?)

Synchretion license – getting both artist and composer license to place in a movie

To perform anther’s song after publication of phonorecord

– must notify copyright owner that you plan to record album

– have to pay monthly statutory royalty (currently $.0755 <5 min or $.0145 per minute

(or $.0755 whichever is greater) for >5 min)

– typically negotiate a 3/4 fee deal

– songwriter cannot say no

– copyright owner maintains public performance royalties

– $1M a year for Carson’s song

Audio Home Recording Act – amending copyright act to able people to copy CDs for personal

use

Cannot rent out (P) to prevent copying

Cannot rent out computer software

No economic need to prevent video rentals

Computer games are OK to rent

Sony Corporation of America v. Universal Studios

– time shifting is permissible

– only for free broadcast

Fonovisa v. Cherry Action

market

– court found vicarious liability were the market had a financial benefit

– court found that providing the site and facilities for known infringing activity is sufficient

to establish contributory liability

– Inwood test

1. intentionally induces another to infringe on a trademark, or

2. continues to supply a product knowing that the recipient is using the product to

engage in trademark infringement

DMCA – passed to allow defense to ISPs

§106 – bundle of rights

§107 – exceptions and limitations

Fair Use Provision

– defense

Remedies:

§502 Inj

§503 Impoundment

Master Use License

§504 Damages / Profits

(b) P loss, D profits (apportionment)

§505 Esq fees

§506 Criminal

§507-513 Misc

18 USCA §2319 (criminal)

Campbell v. Acuff-Rose Music

– 2 Live Crew made a satire of Roy Obrison’s song claiming fair use

– court found fair use to be determined by the commercial use, the nature of the work, the

amount and substantiality of the portion used in relation to the copyrighted work as a

whole, and the effect of the use upon the potential market for the copyrighted work

– even if something is done for profit, it may be fair use

§ 107 FAIR USE: criticism, comment, news reporting, teaching, scholarship, research

1. purpose & character (profit vs. nonprofit) Profit ———————- Nonprofit

3. amount used (qualitative vs. quantitative) Qualitative —————-Quantitative

4. effect on potential market value or P work Did it replace original ———– or Transformative Reinterpretation

Remedies

§502 Injunction

§503 Impoundment

§504 Damages / Profits

(b) P loss

D Profit (subject to apportionment)

(c) Statutory

Pre 3/1/89 $100 min

250 – 10,000 up to $50,000 if willful

3/1/89 – 12/9/99 $200 min

500 – 20,000 up to $100,000 if willful

post 12/9/99 $200 min

750 – 30,000 up to $150,000 if willful

§505 Esq Fees

– to qualify for statutory damages, mark must be registered within 90 days of publication

or before infringement

– if P, must be the prevailing party

– is possible for D to receive

– court will not give full value

§506 Criminal (see 18 USCA §2319)

§507-5B Misc

P must register before suing except forgein burn countries

Stevens Linen Associates v. Mastercraft Corp

– DC entered injunction against D for manufacturing similar fabric. P sought lost profits

and DC found compensatory damages too speculative

– AD ruled DC should have awarded either 1) lost profits that would have been realized or

2) lost profits based upon sales, whichever is greater

Cream Record, Inc v. Jos. Schlitz Brewing Co.

– Cream wanted too much money for license so Schlitz used piece of song in commercial.

P claimed it destroyed the value to other advertisers.

– 504(b) allows lost profits with actual damages

– DC believed infringement was minimal and damages should be proportionate

– AD ruled damages may be for the entire recording or licensing fee

– it is an infringement of the entire work

Infringement (must show)

1. ownership

2. substantial similarity

3. access (can infer if striking similarity)

4. unlawful taking / use of P’s copyrightable expression

Infringement

– ownership

– substantial similarity

– access

– taking/use of protected expression

§106A Visual Artists Rights Act

– have destruction rights

– auto statutory rights

– visual art* up to 200 copies

– #’d

– signed

____________

– attribution – protects artist / work

– integrity – protects artist / work

*only certain works of VA

Pre June 1, 1991 – life + 70 years

Post June 1, 1991 – end @ death of author

106(a) V.A.R.A

Moral Rights (Droit A. Moral) – See Also Droit De Suite (right of

follow) once resold, artist gets a cut (state law)

Compare 43(a)

Preemption §301 and Federal Supremacy Clause

– look at §102(a) – list of items & §106 – bundle of rights

Look to see: extra element in state action, ie need to prove copying and breach of K or confidentiality

A.F.C. (Abstraction, Filtration, Comparison)

§106 rights can be waived but not assigned

Gilliam v. American Broadcasting Co

– used 43(a) instead of §106

Gross v. Seligman

– nude girl photographed twice

Computer Associates International v. Altai, Inc

– two companies with a source code dispute

Presumption of death

– 95 years after pub / 120 years after creation = author has been dead for 70 years

– should file death certificate with copyright office

2067 – no more state protection for phono records.

None of the works will expire until at least 2002.

If work is published before 2003, Congress will add 45 years of protection (25 + 20 (Bono)

Nichols v. Universal Pictures Corp.

– P sued D for infringement of his play into a movie. Jew/Irish theme.

– is this a derivative work?

Scene faire – scenes that must be copied to produce the story

“

Abstraction, Filtration, and Comparison – strain all the non-copyrightable material out

Selle v. Gibb

– P brought suit against Bee Gees for infringement of a song.

– expert testified that the two songs were striking similar

– court affirmed order for JNOV because the expert had no experience and the songs were

striking similar but the evidence indicated the song was original

Steinberg v. Columbia Pictures Industries, Inc.

– P sued artist for the poster of Moscow on the Hudson

– D admitted using the poster as a guide but claims the ideas were not copywritable

– court found this was an authorized derivative work

3 year civil / 5 year criminal SOL on copyright

Gross v. Seligman

–

PATENT LAW – only federal

– 15th century in Venice

– 1/1/53 current patent law

– 6,000,000 since 1856

Patents: 35 USC §§1-376 (New, Useful, Nonobvious)

– use must not be harmful to society

Prevent

– making

– using

– selling

§ 101 Subject Matter

§ 102 Novelty

§ 103 Nonobviousness

Patent Types – utility

– design §171

– non decorative, non functional

– plant §161

UTILITY

– machine

– article of manufacture

– composition of matter

– process

Design – 14 years grant

Utility Plant – Filed before June 8, 1995 – 17 years from grant

Filed after June 8, 1995 – Longer of 17 years from grant or 20 years from

application

* if filed but not granted before June 8, choice is yours

Must pay maintenance fees!!

– not required for design patents

§112 – disclose all on applications

Diamond v. Chakrabarty

– whether to patent a human made microorganism

– “but for human hands” doctrine

Can lose patent if someone challenges

Novelty Nonobvious Statutory Bar

Prior Act —————Conception —————–RTP ———————-Patent

§102(a) §102(b) §101

(e) (c) §111-115

(g) (d)

§103 (f)

AIPA : Eff 11/29/99

– unless you opt out, your patent application will be public (replaced the secret

application process that allowed for trade secret for rejected patent applications)

– unless the delay is the fault of the inventor, he is entitled to the full 17 years

– can only opt out for domestic patents

– if published it allows for royalties to be paid to inventor between publication

and patent granting

Business Method Patents

– Company B – as long as reduction of invention is longer than one year and public

use is made before patent is granted to company A, use is not

stopped when patent is granted

Application: §111 (Full Disclosure §112)

1. Specification Section – must “teach” a person skilled in the art of which the invention

pertains how to make/use it (best mode)

2. Claims Section – must uniquely point out & claim the invention (this is property interest, this

is what is infringed)

Application

1. abstract – describes gist of invention

2. drawings – references

3. background – historical prospective – list of other patents

4. summary of invention

5. brief description of drawings

6. detailed description of invention

7. “I CLAIM” section – must be novel and Nonobvious

First to conceive is first to get patent (unlike other countries where it is first to file)

– or document disclosure program – filing with patent office for two years

Must do worldwide search for prior instructions

12 MONTH CLOCK – if you do not file within 12 months of the publication or public use

of your invention, you lose the right to patent

– except research and development use (must be good program)

– except USE in a foreign country

– prevents inventors from getting more than a extra year of use

Application of Borst

– is publication of a invention in a government journal sufficient to reduce the invention for

practice IAW 12 month clock

Pfaff v. Wells Electronics, Inc.

– 12 month clock case for a computer chip socket under §102(b)

– inventor showed sketch and took a order before the 12 month period

– SC ruled the invention must 1) be ready for patenting, and 2) be the subject of a

commercial offer of sale

TP Laboratories, Inc v. Professional Positioners, Inc.

– R+D for retainer took longer than one year

– did the clock start here because it met the two rules

§157 patent – statutory patent

– donates to the public domain

– does not check to see if novel or nonobvious

	IDEAS	TRADEMARKS SERVICMARKS	UNFAIR COMP	RIGHT OF PUB	COPY RIGHT	TRADE SECRET	PATENTS
What is protected	ideas	collective, certification (federal) Lanham Act 15 USC	passing off Dupont case st/CL/43a	name, likeness voice state/ CL/43a	original works of authorship 1909 1976	any info to give you a comp advantag CCCCCCL/st/fed	plants, design (14 years from grant), utility (17 years)
Criteria	novel, concrete, used by P	distinctive/ no L/O/C			(P), – still state protected	keep secret	useful, novel, nonobvious
How Obtained	K – confident	use/reg		use and explot	fixing		file §112, 35 USC
Duration	?	§8 / §9		depends	depends	forever
Infringed By	missappro/breach	L/O/C L/O/D			unauth use sim, access, ownership	obtained by improper use	literal, non-literal (DOE)
Defenses	not the same idea	innocent infrig laches satire abandonment (after 3 years) naked license generic functional no LOD, LOC			public domain fair use factual original unclean hands	reverse engineer no secrete	fraud in the app obvoius 1-year clock

SR – sound recording

PA – performance

TX – computer software

VA – visual arts

RE – renewal

100 questions – 3 hourrrrrrrrsssssssssssssssssss

Taco Cababa Case