Intellectual Property Attack Outline
Intellectual Property Attack Outline
Intellectual Property Attack Outline
Table of Contents
Trademark Law 1
Copyright Law 7
Patent Law 16
Remedies 25
Indirect Infringement 29
The Right to Copy and Overlapping Regimes 33
Contract and Controversy over the Extension of IP Protection 38
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I. Trademark Law
a) Is the trademark protectable?
Must use mark to identify and distinguish goods and to indicate source
o Indicate source = must create separate and distinct commercial impression that
identifies source of the goods
o Bona fide use (not token)
For goods, requires affixation on packaging, good, containers, label,
associated documents
For services, requires use in advertising, etc.
If you dont register, only get priority in geographical area where used or
established
Use in interstate commerce provides priority date UNLESS mark requires
secondary meaning, in which case priority determined by when secondary
meaning acquired
o OR intent to use AND application to register
Must be followed by bona fide use within 6 months (may be extended up to
three years if you have good cause: 15 USC 1051(d))
Constructive (filing TM application) use is nationwide: if you register a TM,
youre considered to have used it across the country
Though if small party can show it had been using TM in little local
area, court may protect those rights
Intent to use application gives priority date
Intent to use must be based on bona fide intent to use mark
Must continue use
o If A abandons mark, can B adopt it?
No clear rule, but if B is deceptive, possible false advertising or cancellation
claims
Open question if consumer confused w/o deception by B
Mark must be used in commerce (defined as use in ordinary course of trade)
Priority: need to be the first person to use it
o Is mark registered?
If not, priority only in geographical area where used or advertised
If yes, nationwide priority
o Use in interstate commerce provides priority date UNLESS mark requires secondary
meaning, in which case priority determined by when secondary meaning acquired
o Cant establish priority via small sales in particular city and a few items mailed to
other states must be enough to link mark with brand in consumers minds and put
other producers on notice (Zazu, 7th Cir.)
o Analogous use:
Say Brooklyn Dodgers were about to move to LA, had done advertising, etc.;
then later get TM rights in LA Dodgers, could get priority over someone
who just started using mark on restaurant or t-shirt
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Why register?
o Enhanced remedies (especially for counterfeiting) in federal court
o Prima facie evidence of validity and ownership
o Opportunity to achieve incontestability of mark
o Nationwide constructive notice of ownership and use main reason to register
o Right to bring federal suit w/o regard to diversity or minimum amt in controversy
o Some customs benefits if people are importing articles bearing your mark
Step 1: design mark
Step 2: TM search for already existing marks
Step 3: commercial use (interstate) (more than token use)
Step 4: apply
Step 5: PTO examination
o If your application refused, can appeal to TM trial and appeals board (TTAB)
o If they refuse, can get judicial review
Claim in district court appeals etc., not used very often
More typically, file with Federal Circuit
Very rare: petition director of PTO
Step 6: TM published in TM gazette people may oppose
o How do you challenge a TM?
Can argue priority, mark descriptive, etc.
Can be brought by anyone likely to be damaged
Step 7: certificate of registration
After five years, mark becomes incontestable
Is your mark not registrable? (15 USC 1052)
o (a) Consists of immoral, deceptive, scandalous matter, or matter which may disparage
a third party or falsely suggest a connection with the third party
Not stopping anyone from using mark
Original purpose to protect public welfare/morals; now not enforced very
strongly
o (b) Consists of or comprises flag
o (c) Name, portrait, etc. of living person w/o his consent
o (d) Likely to cause confusion with another mark that hasnt been abandoned unless
Director approves concurrent registration (e.g., limit to particular kind of good)
o (e): (1) merely descriptive or deceptively misdescriptive [no secondary meaning]; (2)
primarily geographically descriptive, except as indications of regional origin
[registrable under 4 (collective and certification marks)]; (3) primarily
geographically deceptively descriptive; (4) primarily merely a surname [surname has
to have secondary meaning to register]; (5) comprises any matter that, as a whole, is
functional
For misdescriptive marks (using word in a way that doesnt describe item:
cameo for jewelry not containing cameos):
Is mark misdescriptive?
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o Likelihood of confusion
Product placement OK (e.g., Kraft ads in front of Pasta Roni boxes)
Is it a functional use not seen by consumers? (1-800 Contacts; 2nd Cir.)
Rescuecom (2nd Cir.) example: Google made internal use of TM to sell mark
to customers for advertising purposes internal use can lead to infringement,
consumers deceived
Go through Sleekcraft (9th Cir.) factors to determine likelihood of confusion
Strength of mark: more distinctive, less likely confusion will occur
Proximity of goods: how similar? Used for similar things?
Similarity of marks: sight, sound, meaning
Evidence of actual confusion
o Problem: can always find someone whos confused
o May not want to wait until public confused
Marketing channels used
Type of goods/degree of care likely to be exercised: more expensive
less likely to be confused
Defendants intent in selecting mark: did you intend to copy?
Likelihood of expansion of product line: how likely is it that
consumers will be confused in the future?
Consider industries: if industries very different, consumers may not be likely
to be confused (Brooklyn Dodgers; SDNY)
Consider consumer sophistication (Brooklyn Dodgers: people in Brooklyn
know the dodgers left)
Keep in mind: potential defenses (below)
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1976 Act: registration optional but some advantages: prima facie evidence of
valid copyright, was prerequisite to suit
Incentives: statutory damages and attorneys fees available
o Deposit with LoC
Also prerequisite to suit, but only for US works post-Berne
Potential sanctions for failure to deposit copy of work
o Recording transfer
If you dont do it, a bona fide purchaser for value of copyright voids transfer
Is the subject matter protectable?
o Literary works
Verbal, can be recorded on pretty much any kind of material object
Binary code is included (KS thinks this is purely policy-driven: most people
cant read that and know what it says!)
o Musical works and sound recordings
Sound recordings = works that result from the fixation of a series of musical,
spoken, or other sounds, but not including the sounds accompanying a motion
picture or other AV work, regardless of the nature of the material objects in
which theyre embodied
Sound recording doesnt include sound accompanying a motion picture
This means that output of musical creativity can have lots of copyrights
involved: composition, arrangement, lyrics as literary work, sound recording
if you want to use particular song, may need to get lots of different licenses
o Dramatic works
Portraying story by means of dialogue or acting, can often be literary
o Pantomimes and choreographic works
Must still be fixed, either via recording or certain style of notation
o Pictorial, graphic, and sculptural works
Includes fine arts, applied arts, photographs, prints/reproductions, maps,
globes, charts, diagrams, models, technical drawings (incl. architectural
plans), includes works of artistic craftsmanship in form but not in mechanical
or utilitarian aspects
Useful articles doctrine: useful articles can be protected by copyright only if
design has pictorial, graphic, or sculptural features that you can identify
separately
o Motion pictures and other audiovisual works
AV works = consist of a series of related images which are intended to be
shown by the use of machines or devices together w/accompanying sounds
Lots of different copyrights can be involved: screenplay w/literary copyright,
motion picture copyright, musical works and arrangements
o Architectural works
Can fix architectural work by building the building, people who copy building
can be liable for infringement
Originally, could say building protected as PGS, but would have to decide
which aspects were utilitarian
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Principle
Discovery
Public software interface (Lotus; SC)
Useful articles (w/r/t PGS works: must be able to separate out artistic
elements)
Expression included in merger doctrine
Idea and expression merge: cant copyright sweepstakes rules, e.g.,
because then public would be deprived of idea (Morrissey; 1st Cir.)
Scenes a faire doctrine: doesnt extend to incidents, characters or settings
which are as a practical matter indispensable, or at least standard in the
treatment of a given topic
Blank forms not copyrightable
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Duration of relationship
Right to assign additional projects
Hired partys discretion
Method of payment
Role in hiring and paying assistants
Regular course of employers business
Payment of employee benefits/taxes
Also must be within scope of employment
o Of kind hes employed to perform
o Occurs substantially within the authorized time/space limits
o Is actuated, at least in part, by purpose to serve master
o Does the academic exception to work for hire apply?
Has the termination of transfer right been exercised?
o Author who has transferred ownership has a right between 35 and 40 years from date
of assignment/license to terminate transfer, regardless of agreements to the contrary
o Advance written notice signed by author or termination right holders; notice must
identify the grant and the work, state effective date, served upon grantee 2-10
years before effective date
o All rights revert to author except pre-existing authorized derivative works can
continue to be used
o No termination rights for works for hire (not clear whether sound recordings are
works for hire)
Is it a joint work?
o 101: A joint work is a work prepared by two or more authors with the intention that
their contributions be merged into inseparable or interdependent parts of a unitary
whole
o House report: [A] work is joint if the authors collaborated with each other, or if
each of the authors prepared his or her contribution with the knowledge and intention
that it would be merged with the contributions of other authors as inseparable or
interdependent parts of a unitary whole. The touchstone here is the intention, at the
time the writing is done, that the parts be absorbed or combined into an integrated unit
o Joint owners considered tenants in common: undivided copyrights
Each joint owner may exercise exclusive rights to copyrighted work w/o
permission of co-owners; when they assign or give exclusive license, consent
required, but not if granting a non-exclusive license; also duty to give owners
share of what you make using copyright
o Three elements required under Aalmuhammed v. Lee (9th Cir.):
Copyrightable contribution by each author (not all circuits require)
Two or more authors
Intent to merge parts
o Control/discretion important considerations to determine authorship (Lee)
Whether party superintends the work by exercising control
Objective manifestations of shared intent to be co-authors
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Whether audience appeal of the work turns on both contributions and share of
each in its success cannot be appraised
Is it a compilation/collective work?
o 101: A compilation is a work formed by the collection and assembling of
preexisting materials or of data that are selected, coordinated, or arranged in such a
way that the resulting work as a whole constitutes an original work of authorship.
The term compilation includes collective works.
o 101: A collective work is a work, such as a periodical issue, anthology, or
encyclopedia, in which a number of contributions, constituting separate and
independent works in themselves, are assembled into a collective whole.
o 201(c): Copyright in each separate contribution to a collective work is distinct
from copyright in the collective work as a whole, and vests initially in the author of
the contribution. In the absence of express transfer of the copyright or of any rights
under it, the owner of the copyright in the collective work is presumed to have
acquired only the privilege of reproducing and distributing the contribution as part of
that particular collective work, any revision of that collective work, and any later
collective work in the same series.
Is the work in the public domain yet?
o Copyright term: life of author + 70 years, or 95 years from first publication in case of
anonymous works, pseudonomous works, works made for hire (or 120 years from
year of creation, whichever comes first)
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o Can only display a lawfully owned copy one image at a time, to viewers present at the
place where the copy is located
o 101: to perform or display publicly means: 1) to perform or display it in a place
open to the public or any place where a substantial number of persons outside of a
normal circle of a family and its social acquaintances is gathered; or (2) to transmit or
otherwise communicate a performance or display of the work to a place specified by
clause (1) or to the public, by means of any device or process, whether the members
of the public capable of receiving the performance or display receive it in the same
place or in separate places and at the same time or at different times.
Court held that DVR isnt a public performance, but could argue that it is: lots
of members of the public seeing this in different time zones and different
places
o Exceptions:
o 17 USC 110
Face-to-face teaching, distance learning
Religious services, free face-to-face charitable performances
TV, radio, etc. in small businesses, restaurants, certain other establishments
Keeping TV on in bar is a big controversy lots of specific
requirements and limitations
Argument that this is inconsistent with Berne convention: US brought
to dispute forum and lost, hasnt changed rules yet
Agricultural or horticultural fairs
Record and sheet music stores to promote sales (though probably not video
stores)
Noncommercial performance or a nondramatic literary work for
transmission to blind, deaf
Single noncommercial performance of dramatic literary work (after 10 years)
to blind through radio
Various performances for nonprofit veterans and fraternal organizations (but
not frats and sororities, unless for charitable fundraising)
Cleaning up videos for private home viewing
o 17 USC 114: various exemptions to the right in digital transmissions of sound
recordings (106(6)), note subscription, interactive services not exempted
o Compulsory licenses
Various retransmissions of cable and satellite broadcasts
Jukeboxes, subscription digital audio services, webcasting
Public broadcasting stations
Right to display work publicly (other than sound recording)
Right to perform sound recording publicly by means of digital audio transmission
Moral rights
o Limited to works of visual art
Defined as a painting, drawing, print, or sculpture, existing in a single copy, in
a limited edition of 200 copies or fewer that are signed and consecutively
numbered by the author, or a still photographic image producer for exhibition
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was intended to be protected; commercial use less likely to be fair use; most
significant aspects were what was reproduced; also consider quantity; consider good
faith and fair dealing
o Campbell v. Acuff-Rose (SC; Pretty Woman case): consider purpose and character of
use (could be parody or satire); amount and substantiality of portion used (including
transformativeness want to make sure new user is adding value and degree to
which your work is aimed at original); effect on market (here, hard to predict
wont replace old song, may increase value of original song); this was okay
o Food Chain Barbie (9th Cir.): images of Barbie in blender: criticizing Barbies
embodiment of American consumer culture; this was okay
o Blanch v. Koons: photograph changed; commercial use but this is art; genuine
creative rationale; photographer never licensed this no harm to her for this to be
used
o Perfect 10 v. Amazon (9th Cir.): strongly outcome-driven: Google Image wont exist
if find for Perfect 10 here; court says this is transformative even though its the exact
photo not putting it in some socially meaningful context
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narrower
Narrower claims also often tailored to exactly what you want to sell
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Step 1: look at each limitation and make sure theres an equivalent for each
Step 2: ask if PHOSITA would agree that the item performs substantially the
same function in substantially the same way to obtain the same result
After-arising technology can constitute literal infringement under doctrine of
equivalents (Hughes Aircraft; Fed. Cir.)
Joint infringement/divided infringement
o More than one party involved in steps of process
No infringement unless defendant controlled all parties who controlled
various parts of process (Paymentech; Fed. Cir.)
o Different countries?
General rule: patent rights are territorial
271(f) extends (b) and (c): Infringes if: whoever without authority
Supplies or causes to be supplied in or from the US
1) All or a substantial portion of components of a patented invention in
such manner as to actively induce the combination outside of the US in
a manner that would infringe if within the US OR
2) Any component of a patented invention that is especially made or
especially adapted for use in the invention AND Not a staple article or
commodity of commerce suitable for substantial noninfringing use
Knowing that component is so made or adapted AND Intending that
components will be combined outside of the US in a manner that
would infringe if within the US
271(g): non-patented items brought into US infringe if they use process
patented in US
Evidentiary problems: have to be able to prove that overseas factory is
using your process, and need enough evidence to survive motion to
dismiss
Identifying who you can sue can be difficult
Challenging issues RE: discovery
If control of system exercised in US, and beneficial use of system obtained in
the US, infringement (RIM; Fed. Cir.: Blackberry case where system worked
by having email transferred from user service to network in Canada, then back
to US)
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Third party trade secret use not held against patent applicant
o Publications
When is a document printed and published? (In re Hall; Fed. Cir.)
Reasonable degree of distribution of document OR reasonable degree
of searchability (provided by subject matter indexing, e.g.)
o Cant have made public use of patent, but may experiment
Public use
Public means not trying to hide inventions (Rosaire; 5th Cir.: oil fields
case), no requirement of secrecy (Lippman; SC: corset case)
Experimental use (102(b))
Basic rule: if what youre doing in experimentation is trying to make
it, as opposed to youve made it and now its out there, doesnt count
as public use because youre still working on it
Experimentation aimed at reduction to practice isnt public use or on
sale
Experimentation must concern development of invention (the claimed
invention, suitable for intended purposes, not marketing/market
research)
Public use of pavement okay (Elizabeth; SC)
Inventing a boat part and not following up after giving it to users not
okay (Lough; Fed. Cir.)
Giving patients braces you invent isnt public use when patients under
control (TP)
Experimental use factors (Bartell Industries; Fed. Cir.)
o Necessity for public testing
o Amount of control over experiment retained by inventor
o Nature of invention
o Length of test period
o Whether payment made
o Whether there was a secrecy obligation
o Whether records of experiment were kept
o Who conducted experiment
o Degree of commercial exploitation during testing
o Whether invention reasonably requires evaluation under actual
conditions of use
o Whether testing systematically performed
o Whether inventor continually monitored invention
o Nature of contacts made with potential customers
o New law: old case law will probably carry over for 102(a) and (b); grace period now
specifically targeted at disclosures by inventor, or by someone who got information
from inventor, or inventor publicly disclosed information
Nonobviousness (103)
o Step 1: determine scope and content of prior art
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Does particular reference fit within 102(a), (b), or (g)? I.e., was it known or
used by others in this country before the invention of the claim of issue, or
was it in public use more than one year before the filing date of the claim at
issue even if it doesnt contain all limitations of the claim?
Is reference is an analogous art is it from the same field of endeavor, or,
does it solve same problem/still reasonably pertinent?
o Step 2: ascertain differences between prior art and claims at issue
o Step 3: find the level of ordinary skill in the pertinent art
Types of problems encountered in the art
Prior art solutions to those problems
Rapidity with which innovations are made
Sophistication of the technology
Educational level of active workers in field
o Step 4: determine the obviousness or nonobviousness of the subject matter (KSR;
SC)
TSM test (there must be a suggestion or teaching in the prior art to combine
elements shown in the prior art in order to find a patent obvious) isnt only
test question isnt whether combination was obvious to patentee but
whether combination was obvious to PHOSITA
If its obvious to try, could mean that its obvious
BUT if there are lots of possibilities and result is unpredictable, wont
be obvious (Kubin; Fed. Cir.)
Not present when person tries lots of combinations and one ends up
being good (Kubin)
General guidance from prior art or field doesnt constitute obviousness
(Kubin)
o Step 5: secondary considerations
Commercial success
Could mean it was obvious! In fashion now, or marketing efforts of
company
Need to show nexus between particular patented invention and
commercial success of article (could have very successful item with
one tiny patented thing)
Long-felt but unsolved needs
Failure of others
Awards and praise
Skepticism, teaching away, unexpected results
Licensing activity
Copying
Advances in collateral technology
Near-simultaneous inventions
o No patent if differences b/w invention and prior art are such that the subject matter as
a whole would have been obvious at the time of invention to PHOSITA
Patentable subject matter
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o Process
Process, art or method, and includes a new use of a known process, machine,
manufacture, composition of matter, or material (35 USC 100(b)) can be a
method of making something or using something
o Machine
Includes every mechanical device or combination of mechanical powers and
devices to perform some function and produce a certain effect or result
(Corning v. Burden; SC)
o Manufacture
The production of articles for use from raw or prepared materials by giving
to these materials new forms, qualities, properties, or combinations, whether
by hand-labor or machinery (American Fruit Growers (SC), cited in
Diamond (SC))
o Composition of matter
Broad scope: all compositions of two or more substances and all
composite articles, whether they be the results of chemical union, or of
mechanical mixture, or whether they be gases, fluids, powders, or solids
(Shell Development Co (Dist. D.C.) cited in Diamond)
Diamond v. Chakrabarty: manmade bacterium with markedly different
characteristics from any found in nature and having potential for significant
utility is patentable
o New and useful improvement thereof
o Exceptions to patentable subject matter: policy-driven
Transaction costs of licensing everyone to do this, problems with
disseminating knowledge about how to do this
No way to design around
Some kinds of natural products DNA sequence might be what it is
Cant design around some mathematical formula
Only one way to do it
Extremely expensive to design around
Claims that are really broad principles of nature
o Could have problems under 112
Importance of particular technology that we really dont have a very good way
to deal with those in patent law
No need for patent incentive in some kinds of things
Thats one reason against business methods
Sports moves
Laws of nature
Physical phenomena
Challenges to medically-related patents
Human DNA sequences unpatentable ask whether its different by
taking it out of the body; or ask is it chemically different by the time
you take it out of the body
Abstract ideas
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IV. Remedies
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Injunctions (patent: 35 USC 283; copyright: 17 USC 502; trademark: 15 USC 1116)
o In all three IP branches, usually there will be an injunction but not always
o Four-factor test for injunction
Plaintiff has suffered irreparable injury
Remedies available at law, such as monetary damages, are inadequate to
compensate plaintiff for that injury
Considering balance of hardships between plaintiff and defendant, a remedy in
equity is warranted
Public interest would not be disserved by a permanent injunction
o Patent
After eBay (SC), some lingering concern about injunctions being issued when
patent may function more as a way to get royalties than anything else
(Kennedy concurrence); courts start denying injunctions to non-practicing
patent holders
As long as theres some ability to design around, seems like this shouldnt be
such a big problem one way to look at this is to say if you have to use this
technology, may be more valuable than it seems, or may not have seemed to
have to do anything with the Internet can you find patents that arent in
your area that are still relevant?
o More exceptions w/TM and copyright: First Amendment issues, may think you had
fair use, protect TM to protect consumers association w/source
o Trade secret: actual or threatened misappropriation (UTSA 2(a))
Damages (patent: 35 USC 284; copyright: 17 USC 504; trademark: 15 USC 1117)
o Reasonable royalties (esp. in patent context, also available for trade secrets; some
courts permit in copyright)
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V. Indirect Infringement
Patent Copyright TM
Contributory 35 USC 271(c) Case law (Sony) Case law (Inwood,
Tiffany v. eBay)
Action 1. Component adapted 1. Technology Continue to supply
for infringement (need facilitating service with
to know theres a infringement knowledge that user is
patent) 2. Not capable of infringing
2. Not suitable for substantial (how
substantial defined?)
noninfringing use noninfringing use
Knowledge required Knowledge that Knowledge of specific Specific, more than
component adapted activity (how general knowledge
for infringement specific?) of infringement; OR
willful blindness
Inducing 35 USC 271(b) Case law (Grokster) Case law (Inwood)
Action Induce e.g., Intent, active steps to Intentionally induce
provide instructions encourage
infringement
Evidence can be
circumstantial
Knowledge required Knowledge of patent Knowledge that the Knowledge that the
and that activities activity is infringing? activity is infringing?
infringe OR willful
blindness (Global
Tech)
For all types of indirect liability, there must always have been proof of underlying direct
infringement
o For inducing infringement have to prove some reasonable amount of infringement
that would support idea that youre inducing infringement
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o Easier in contributory infringement: once you prove someone bought something that
has no substantial noninfringing uses
Patent law statute: 271(b) and (c):
o 271(b): inducing infringement: whoever actively induces infringement of a patent
shall be liable as an infringer (usually involves providing information or instructions
about how to infringe)
o 271(c): contributory infringement: whoever offers to sell or sells within the US or
imports
A component of a patented invention
Constituting a material part of the invention
Knowing the same to be especially made or especially adapted for use in
infringement
Not a staple article or commodity of commerce suitable for substantial
noninfringing use
Dont want to give person who makes a screw the right to sue
everyone
Then youre liable as contributory infringer
o 40-60% noninfringing uses considered acceptable to weigh against finding of
infringement in Advanced Cardiovascular Systems (N.D. Cal.)
Copyright
o For contributory infringement, have to provide service or technology that isnt
capable of substantial noninfringing use (Sony; SC)
o One who distributes a device with the object of promoting its use to infringe
copyright, as shown by clear expression or other affirmative steps taken to foster
infringement, is liable for the resulting acts of infringement by third parties; need
intent to infringe knowledge not sufficient (Grokster; SC)
Trademark
o Willful blindness carries over
o Can be contributorily liable under Inwood (SC) if
Service provider intentionally induces another to infringe a TM
If service provider continues to supply service to one whom it knows or has
reason to know is engaging in TM infringement
o Need more than general knowledge of sale of counterfeit items: need knowledge of
particular acts of infringement (Tiffany; SDNY)
o Courts like special efforts to combat infringement, like in Tiffany: special warning
messages to sellers of Tiffany, Verified Rights Owner Program, about me pages
How do you show knowledge?
o Patent
Need to know what claim means
Courts havent dealt with this yet: if youve looked at patent and dont think
yours infringes, and you havent consulted attorney, unclear if youre okay
o Copyright
Fair use issue has come up in a number of cases, like Scientology documents
on Internet case
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For person whos hosting site and didnt put up document, hard to figure out
What was persuasive in Grokster?
Attempt to attract Napster users once Napster shut down
No attempt to develop filtration/other mechanisms to diminish
infringement
o BUT mistakes in filtering possible
Make money by selling ads: more infringement more ads
o BUT how could you have an ad-supported business and not
want more ads? Not unique to infringement
o Trademark
If its a direct copy, easy to see
Digital Millennium Copyright Act
o 17 USC 512: safe harbors and notice and takedown regime
o (a) Broad safe harbor for conduits (e.g., ISPs)
Except that injunction to prohibit access to particular subscriber or to block
access to specific foreign location may issue
o (c) Safe harbor for liability for infringement by content controlled by users if
No actual knowledge that material is infringing AND
Not aware of facts or circumstances from which infringing activity is
apparent AND
If notified follows notice-and-takedown procedure
o (d) Safe harbor for search engines similar requirements to (c)
o (l) Continuing availability of non-infringement defenses
o (m) Privacy interests and limits on obligation to monitor
o Why do we use safe harbors?
If you do a, b, and c, then youll be exempt from liability do this partly to
incentivize good behavior, sometimes in cases where to actually investigate
behavior would be costly, difficult, invade privacy, etc.
o General knowledge not enough for infringement: need specific acts of infringement:
this particular item is infringing
o What is the notice and takedown procedure?
Alleged owner sends notice to service provider (good faith belief that use
unlawful) service provider checks notice and if compliant with statutory
requirements service provider takes down work service provider notifies
poster poster may send counter-notification (good faith belief material was
removed as a result of mistake or misidentification) service provider
informs alleged owner of counter notification, replaces material 10-14 days
later, unless receives notice that alleged owner has filed suit
o Remedies for improper takedown
512(f): provides damages for knowingly materially representing that
material is infringing (owner) OR was removed by mistake or
misidentification (poster)
Lenz v. Universal Music Corp. (N.D. Cal.): ISP took down video and then
re-posted after counter-notification by poster, sued under 512(f) for bad faith
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regulation in place
Copyright preemption: 17 USC 301
(a) [A]ll rights that are
o Equivalent to any of the exclusive rights within the general
scope of copyright as specified by section 106 in works of
authorship that are fixed in a tangible medium of expression
and
o come within the subject matter of copyright as specified by
sections 102 and 103, whether published or unpublished, are
governed exclusively by this title.
o No person is entitled to any such right or equivalent right in
any such work under the common law or statutes of any State.
(b) Nothing in this title annuls or limits any rights or remedies under
the common law or statutes of any State with respect to (1) subject
matter that does not come within the subject matter of copyright ,
including works of authorship not fixed in any tangible medium of
expression; or (3) activities violating legal or equitable rights that
are not equivalent to any of the exclusive rights within the general
scope of copyright ;
But what rights are equivalent? And can a state provide state law
protection for subject matter thats expressly excluded?
Often comes down to similar analysis youd do if you didnt have law:
same conflict, obstacle, etc.
o Trade secrecy (Kewanee Oil)
Patent law promotes progress of new science and useful arts by offering right
of exclusion as an incentive; trade secret law is about standards of commercial
ethics, and also encouragement of innovation
If we have discoveries that arent within subject matter of patent law, then
theres no conflict: if we didnt provide trade secrecy protection, then may not
have sufficient incentive to create [but cant have protection over things in the
public domain, and also driven to create via things you need to make for
yourself], and also wont get any more disclosure than youd have anyway
Secret can be kept through contract anyway, though unequal
bargaining power could preclude secret being kept
Even if you have no protection, can still make money: first mover,
could have skill in how to make it, can get TM rights, reputational
benefits KS thinks court is overstating things: lots of reasons in the
business world to share things and disclose
Not a problem to cover things that arent patentable but within patentable
subject matter (like stuff thats obvious): policy of encouraging invention,
which underlies patent statute, is furthered
Differences from Bonito Boats: trade secrecy law is weaker because
doesnt protect you against independent inventors or reverse
engineering: states arent interfering with patent law via trade secrecy
law in the same way that having a statute giving protection for vessel
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hulls is interfering
How are facts protected?
o Misappropriation tort: allegation that you took something from me unfairly
o INS: right in news as against competitor by taking facts that competitor has found and
communicated
o Hot news misappropriation: protect facts for very short period of time if (NBA; 2nd
Cir.):
Highly time-sensitive value of factual information
Free riding by defendant
Threat to very existence of product or service provided by plaintiff
How are ideas protected?
o Misappropriation claim: arises from taking of an idea that is original or novel in
absolute terms (Nadal; 2nd Cir.)
o Contract claim: sufficient consideration if idea is new to recipient (Nadal)
Reliance on implied contracts
Reliance on industry custom
o Private ordering commons-type solutions
How are designs protected?
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o Design patents
Requirements
Novelty: no prior art shows exactly the same design as a whole
(ordinary observer test) 102(b) grace period applies
Non-obviousness: judged by designer of ordinary capability who
designs articles of the type presented
Ornamentality: product of aesthetic skill and artistic conception;
fairly low bar
Nonfunctionality: cannot be primarily functional or dictated by
functional considerations; also a low bar
Similar application process to applying for utility patent
Claim of design patent and it can only have one claim is entirely
based on drawings
14 year term
Basic infringement test: whether an ordinary observer who knows about prior
art would think that the accused design as a whole is substantially the same as
the patent design, thus creating some customer confusion (Egyptian Goddess
v. Swisa)
Previous test had looked at point of novelty: is it the same in the
places where patented design is novel?
This is NOT TM-type confusion: not asking if consumers think they
come from same source
o Trade dress
Cannot have aesthetic functionality or utilitarian functionality
Aesthetic: functional feature would put competitors at a significant
non-reputation-related disadvantage (Qualitex)
o Disadvantage related to the fact that everyone wants green, say
Utilitarian: functional if it is essential to the use or purpose of the
article or it affects the cost or quality of the article (Inwood)
o Affect ability to compete
Utility patent as evidence of functionality (Traffix)
o Copyright in useful articles
PGS: the design of a useful article shall be considered a pictorial work
only if, and only to the extent that, such design incorporates pictorial
features that can be identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article
Useful article: article having intrinsic utilitarian function that is not merely
to portray the appearance of the article or to convey information. An article
that is normally part of a useful article is considered a useful article.
How do we determine if ornamental features exist independent of utilitarian
aspects?
Early cases: must be physically separable
Carol Barnhart dissent: conceptual severability: if when you look at
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who (A) used improper means to acquire [it] or (B) at the time of disclosure
or use knew or had reason to know that his knowledge of the trade secret was .
. . (I) derived from a person who had used improper means to acquire it; (II)
acquired under circumstances giving rise to a duty to maintain its secrecy
Improper means
USTA: improper means includes theft, bribery, misrepresentation,
breach or inducement of a breach of a duty to maintain secrecy, or
espionage through electronic or other means
DuPont: aerial surveillance = improper means; cant avoid putting in
effort to figure out secret; want to prevent DuPont from taking
needlessly expensive precautions or acting like no legal protections
OR breach of confidence
Most trade secrecy cases
Dravo: implied confidential relationship from the fact that the only
reason for disclosure of storage container mechanism was because
Dravo expressed interest in buying business
Just because you reverse engineer item in very short time doesnt mean
youve misappropriated it (Kadant)
Easy to reverse engineer? Less likely to get trade secrecy protection
AND less likely that you misappropriated
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o Consider point at which contract no longer functions as agreement b/w two parties
and instead has effects as rights against world (e.g., sufficient market power)
o Consider balance Congress has struck
o Patent exhaustion/first sale
o Some courts more likely to find preemption for license because has remedies of
copyright/patent law (statutory damages for copyright; injunctions for both)
Exhaustion and first sale
o Patent exhaustion requirements
Patentees rights in an article are exhausted after an authorized sale; applies
also to sales of items only usable in patented process
Open question on whether this doctrine prohibits conditional sales
(you sell ink cartridge and it says single use only)
If you buy a patented item, youre allowed to repair it, but you cant
reconstruct it (eventually, if you repair the parts enough times, youre
an infringer); though courts have been very friendly toward
consumers ability to repair, buy replacement parts
Applies when C purchases product that A has licensed to B: A and Bs contract
terms dont apply to C (Quanta)
Only applies to purchased seeds, not generations of more seeds that come
after (Monsanto)
o Copyright first sale requirements
Copyright 17 USC 109(a): notwithstanding the distribution right, the owner of
a particular copy lawfully made is entitled, w/o authority of copyright
owner, to sell or otherwise dispose of the possession of that copy
E.g., copy of textbook marked promotional use only can be sold
Cant rent it out (piracy concerns)
Owners may not copy
Owners may not make derivative works?
o E.g., paste postcards onto tiles for sale (circuit split), bind
together several parts of a book for sale (2d Cir. 1903)
Three-factor test to decide when sth is a license: if owner 1) specifies that
there is a license 2) license restricts ability to transfer 3) notable use
restrictions involved in purported license (Vernor) (if license, no first sale)
o Differences b/w patent and copyright
Patent exhausts all rights; copyright just exhausts distribution right and
perhaps derivative work right
Patent talks about authorized purchases; copyright talks about owner of
particular copy
o Step 1: Was the seller authorized to sell item AND was the transfer license or sale?
o Step 2: if sale, then exhaustion/first sale applies no infringement claim against
someone who resells patented/copyrighted article or purchases from reseller; if theres
a contract, recipients breach only leads to contract damages
o Step 3: if license, if recipient breaches license shes an infringer
o Step 4: if no authority to make sale, innocent purchaser is an infringer
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