Copyright Trademark Kettle

8/8/2019 Copyright Trademark Kettle

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I. WHAT IS A COPYRIGHT___________________________________________________A. Definition - Protection to authors of original works of authorship which are fixed in a tangible medium of

expression.

B. Types of works - 1021) Literary works2) Musical works, including accompanying words3) Dramatic works, including any accompanying music4) Pantomimes and choreographic works

5) Pictorial, graphic, and sculptural works6) Motion pictures and other audiovisual works7) Sound recordings8) Architectural works

C. What is not subject to protection - 102(b)1) Ideas2) Procedures3) Process4) System5) Method of operation6) Concept7) Principle

8) DiscoveryD. Qualifications for Copyright

1) Elements:

(a) Work must be original(i) Original to the author(ii) The author must have created it(iii) Possess at least some minimal degree of creativity

(b) Work must befixedin a tangible medium of expression(i) Put into a copy or phonorecord

E. Special Doctrines for Special Circumstances

1) Facts

(a) Facts are not copyrightable as they are not original (Feist Publications v. Rural Telephones)

(b) While a book containing facts is copyrightable, the underlying facts are not2) Selection, Arrangement, and Coordination

(a) While facts are not protectabletheselection and arrangementof them may be so long as it has aminimum degree of creativity (Feist Publications v. Rural Telephones)

(b) But only the components of the work that are original to the authorare copyrightable (Feist Publicationsv. Rural Telephones)

3) Sweat of the Brow

(a) This doctrine does not permitthe copyright of facts (Feist Publication v. Rural Telephones)(b) Originality, not sweat, is the touchtone of copyright protection (Feist Publications v. Rural Telephones)

4) Commercial Works

(a) Copyright is not limited to protecting thefine arts (Bleistein v. Donaldson Lithographing)

(b) Works commercial in nature are just as eligible for protection (Bleistein v. Donaldson Lithographing)5) Systems, Procedures, and Functionality(a) A bookon a given system or procedure may be copyrightable (Baker v. Seldon)(b) But the underlying system or procedure is not (Baker v. Seldon)

F. Federal vs. State Preemption - 3011) Elements:

(a) The state rights are not equivalent to the bundle of rights under 106; and(b) The law does not deal with the subject matter of102-103

2) Un-preempted claims

(a) Contract breach(b) ROP


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(c) Invasion of privacy(d) Defamation(e) Violation of trust(f) Misappropriation(g) Trespass(h) Conversion(i) Deceptive trade practices(j) Passing off/false representation

II. WHO OWNS THE COPYRIGHT_____________________________________________A. Author - Under most circumstances, the author is the ownerof the copyrightB. Joint Work

1) Elements - 101(a) A work prepared by two or more authors;(b) With the intention that their contributions be merged into one whole work; and(c) The two parts must be independently copyrightable (majority rule)

2) Implications

(a) Joint authors are deemed co-owners unless an agreementto the contrary(b) Absent an agreement, each joint author has the right to exercise his rights in the work as long as he

accounts to his co-authors for any profits

(c) The copyright duration in a joint work using the last surviving authoras the measuring life(d) You cannot represent joint-authors unless you have asigned waiver

C. Work Made For Hire

1) Elements - 101(a) (1) A work prepared by an employee within the scope of his employment; or

(i) Employment defined by the common law of agency (CCNV v. Reid)

The level of skillrequired to do the work

Thesource of the tools and instrumentalities used to do the work

The location of the work

The duration of the relationship between the parties

Whether the hiring party has the right to assign additional projects to the worker

The extent of the workers discretion over when and how longto work

The method ofpayment

The workers role in hiring and paying assistants

Whether the work is part of the regular business of the hiring party

Whether the hiring party is a business

The provision ofemployee benefits

The tax treatmentof the worker

(b) (2) If the author is not an employee, then:(i) Made under an expresslysigned written instrument; and(ii) Specially ordered or commissioned for use as a:

Contribution to a collective work As a part of a motion picture or other audiovisual work

As a translation

As a supplementary work

As a compilation

As an instructional text

As a test or as answer material to a test

As an atlas

D. Collective Work1) Elements - 101

(a) A work such as aperiodical issue, anthology, or encyclopedia;


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(b) Where a number of contributions, constitutingseparate and independent works are assembled into acollective whole

2) Limitations on Rights - 201(c)(a) For a collective work, copyright law recognizesseparate copyrights in:

(i) The individual works(ii) The collective work

(b) Without an express transfer, the owner of copyright in the collective work may only:(i) Reproduce or distribute the contribution as part of that collective work (NY Times v. Tasini)

(ii) Revise that collective work and any other collective work in the same series (NY Times v. Tasini)(c) The 1976 Act explicitly rejected the Indivisibility Doctrine in favor of a bundle of rights

E. Public Performance - 1011) Perform or display at a:

(a) Place open to thepublic; or(i) Fact that public spaces can be reserved for private parties does not make it non-public (Columbia

Pictures v. Redd Horne)

(b) Place where substantial number of persons outside the family/friends circle are gathered2) Transmit to

(a) Place where substantial number of persons outside the family/friends circle are gathered(b) To the public whether the performance is seen at the same place or at same times

F. Derivative Works - 1071) A work based upon one or morepreexisting works, such as a:

(a) Translation(b) Musical arrangement(c) Dramatization(d) Fictionalization(e) Motion picture version(f) Sound recording(g) Art reproduction(h) Abridgment(i) Condensation(j) Or any other form in which a work may be recast, transformed, or adapted

2) A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole,represent an original work of authorship

III. TRANSFER OF COPYRIGHTS___________________________________________A. Transfer of Ownership - 201(d)

1) Any or allof the copyright owners exclusive rights or subdivisions may be transferred.(a) Exclusive Rights - Transfer or license must be in writing signed by the ownerof thespecific rights

conveyed

(b) Non-Exclusive Rights - license does not require writing2) May be bequeathed by will3) Any of the exclusive 106 rights may be transferred separately and the owner would be entitled to all

privileges associated with that individual rightbut not the others

B. Termination of Transfers - 2031) No Waiver - Termination rights cannot be waived by contract2) Post 1978 Works notwithstanding the duration specified in the grant, a grant may be terminated

(a) When:

(i) Ifno publication rights during the 5 years following the end of the 35th year of the grant(ii) Ifpublications rights during the 5 years following the end of the earlier of:

35 years after publication; or

40 years after the grant(b) By:

(i) Written notice provided between 2-10 years before the termination date specified.


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3) Pre 1978 Works (a) Similar right of termination for the newly added years that extended the former maximum term of the

copyright from 56-95 years and the Sonny Bono 20 year extension.

IV. WHAT RIGHTS?________________________________________________________A. Bundle of Rights - 106

1) Reproduce the copyrighted work in copies and phonorecords2) Prepare derivative works

3) Distribute copies or phonorecords to the public by sale, other transfer, rental, lease, or lending4) Public performance of literary, musical, dramatic, choreographic, pantomimes, movies, or other audiovisual

works

5) Public display of literary, musical, dramatic, sculptural works (including individual images of movies or otheraudiovisual works)

6) Public performance by digital audio transmission of sound recordingsB. Moral Rights

1) VARA Rights - 106A

(a) Elements - must be a visual work under101(i) Under 200 copies;

(ii) Consecutively numbered

(iii) Signed

(b) What Rights - 106A(a)(i) To claim authorship of that work andprevent the use of authors name on works of visual art he did

not create (1)(A)

(ii) To prevent the use of authors name of works of visual art in the event ofdistortion, mutilation, orother modification of the work that would beprejudicialto authors honor or reputation (1)(B)

(iii) Subject to limitation, may prevent (a) intentional distortion, mutilation, or other modificationthat would be prejudicial to authors honor or reputation (3)(A)

(iv)Subject to limitation, toprevent any destruction (intentional or grossly negligent) of a work ofrecognized stature(3)(B)

(c) Scope of Rights - 106A(b) Whether or not the copyright holders, VARA extends to:(i) Authors;

(ii) Joint-Authors(d) Duration of Rights - 106A(d)(i) After VARA authors (or last surviving joints) life - 106A(d)(1)(ii) Before VARA authors life - 106A(d)(2)

(e) Transfer or Waiver - 106A(e)(i) (1) VARA rights may not be transferred, but may be waivedso long as its:

Author must expressly agree in asigned written instrument;

Instrument must identify the work, the uses of that work, and will only apply to that work;

Ifjoint authors, a waiver made by one author is a waiver for all

(ii) (2) Transfer of VARA does not transfer any otherof the bundle of copyright rights2) Lanham Act 43(a)

(a) 43(a) protects againstfalse impressions of a products origin(b) If a D were to present a distorted version of the s work it would be protected (Gilliam v. ABC)(c) But origin refers only to the essential proprietornot the author (Dastar v. 20th Century Fox)

V. GETTING COPYRIGHT PROTECTION______________________________________A. Under 1909 Act

1) Protection was secured bypublishing the work with proper notice(a) Proper Notice

(i) Need either copyright or and year of original publication(ii) If you omitted the notice you lost protection

2) Certain unpublished works could be protected by registering


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3) Renewal required for work pre-19644) If you do not publish, you might still have state copyright protection

B. Under 1976 Act

1) No need topublish or registerthe work2) Works created after 1/1/78 get federal copyright protection when the work isfixed in a tangible medium

of expression for the first time3) Proper Notice

(a) Still required for works pre 3/1/1989 (optionalfor works post 3/1/1989 after Byrne Convention)

(b) But failure to put notice gives rise to an innocent infringer defense4) Required to make mandatory depositfor allpublishedworks - 407C. Advantages to Registering under 1976 Act

1) Serves as a public record forestalling the innocent infringerdefense2) Prerequisite tofiling an infringementsuit in court (not required for VARA)3) If made within 5 years of publication prima facie evidence of:

(a) The validity of the copyright(b) Thefacts stated in the certificate

4) If made within 3 months (90 days) of publication and prior to any infringement can get(a) Statutory damages and attorneys fees become available(b) Otherwise the owner could only get actual damages and defendants profits(c) But if you dont register within 90 days you can still sue

5) Can record the registration with the Customs office toprevent importation of infringing goodsD. Procedure for Registering

1) Properly completed application

2) Non-refundable filing fee for each application

3) Non-returnable deposit of a copy (or two) of each work to be registered

E. Forms

1) PA for published and unpublished works of theperforming arts (musical and dramatic works, pantomimesand choreographic works, motion pictures, other audiovisual works)

2) SE forserials, works issued or intended to be issued in successive parts bearing numerical or chronologicaldesignations and intended to be continued indefinitely (periodicals, newspapers, magazines, newsletters,annuals, journals, etc)

3) SR for published and unpublishedsound recordings (also for sheet music if sole author of both)4) TX for published and unpublished non-dramatic literary works; computersoftware5) RE for claims to renew copyrightin works copyrighted under the law in effect through 12/31/1977 (1909

Copyright Act) and registered during the initial 28 year copyright term.

F. Curing Defects - If you have a product made pre-1989 lacking proper notice the cure period has expired and thecopyright protection has vanished (Hasbro Bradley v. Sparkle Toys)

G. Blank Form Doctrine If the form substantially conveys the information, then it may be copyrightable

VI. HOW LONG DOES PROTECTION LAST__________________________________A. Published or registered before 1922 public domain

B. Published with notices from 1922-1963 28 years + 47 + 20 renewal (if requested)

C. Published with notice from 1964-1977

28 years + automatic 67 year extensionD. Created before 1/1/78 but notpublished from 1/1/78 for life + 70 or 12/31/2002 whichever is greaterE. Created before 1/1/78 butpublishedbetween 1/1/78 12/31/02 from 1/1/78 for life + 70 years or

12/31/2047, whichever is greater

F. Phonorecords created before 2/15/72 were not taken out of state/common law protectionG. Created after 1/1/78

1) Individual life + 70

2) Corporation earlier of 95 years from publication or 120 years from creation

VII. INFRINGEMENT_______________________________________________________A. Who is liable - 501


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1) Anyone who violates any of the exclusive rights of the copyright owner stated in 106 or 106A or importscopies or phonorecords in violation of602

2) Any one who copies or uses protectable expression from a copyrighted work without permission

B. Elements :1) Ownership of the valid, registered, and particularcopyright that is being infringed

(a) You must registeryour work to be able to sue(b) You must have ownership over theparticular right being infringed(i.e. right to make derivatives,

perform the work publicly, etc)

2) Access to the copyrighted work(a) General Situations

(i) Since actual evidence is rarely available, you may use circumstantial evidence(ii) But there must besome evidence that the work was available to the infringer (Selle v. Gibb)(iii) The possibility of the access must be a reasonable possibilitynot a bare one (Selle v. Gibb)

(b) Striking Similarity

(i) Striking similarity may presume access(ii) But only if the similarity is such that itprecludes any explanation other than direct copying (Selle v.

Gibb)

3) Substantial similarity to the copyrighted work(a) Whether an average lay observerwould recognize the alleged copy as having been appropriated from the

copyrighted work. (Steinberg v. Columbia Pictures)

(b) Must besimilarity of expressionnot just the idea behind the expression (Steinberg v. ColumbiaPictures)

(c) But when an artist makes creates a mere likenesslater works that resemble that likeness are notsubstantially similar (Gross v. Seligman)

4) Unauthorized copying or use of copyrightable expression

(a) General plots, scenes characters, and backgrounds are not copyrightable expression (Nichols v. UniversalPictures)

(b) Scene a FaireC. Contributory Infringement

1) Elements :(a) Have knowledge of the infringing activity; AND

(b) Induce, cause, or materially contribute to the infringement(i) Merelyproviding the site and facilities is enough (Fonovisa v. Cherry Auction)

2) Example Owner of a swap meet, who make infringement possible by his meet, was a contributory infringerwhen his vendors were selling counterfeit goods. (Fonovisa v. Cherry Auction)

D. Vicarious Infringement

1) Elements:

(a) Have the right and ability to supervise the infringing activity; AND(b) Have a direct financial interestin the infringing activity

(i) A direct interestin the infringing transaction is notrequired. (Fonovisa v. Cherry Auction)2) Example Owner of a swap who profited from admission charges and could close any vendor had both an

interest and ability to supervise in the infringing activity. (Fonovisa v. Cherry Auction)E. Software Infringement

1) Extract the non-protectable expression and retain what is protectable (Abstraction, Filtration, Comparison -AFC)

2) Compare the extracted material with the suspect work to see if it is present3) De minimis could be allowed4) Side-by-side comparison is used

VIII. DEFENSES_____________________________________________________________A. Fair Use - 107

1) Elements(a) Fits a category of use

(i) Criticism


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(ii) Comment(iii)News reporting(iv) Teaching (including multiple copies for classroom use)(v) Scholarship(vi) Research

(b) Factors of Analysis

(i) Purpose and characterof the use (such as commercial/non-profit)

Use forcommercial gain weighs against fair use, but it is not per se exclusive

Mere headline grabbingdoes not make it news reporting (Harper & Row Publishers v. NationEnterprises)

(ii) Nature of the copyrighted work

Some works are more worthy of copyright protection than others.

Was the workfactual or fantastical?

(iii) Amount and substantiality of the portion used

Considers both the overall quantity taken and whether the copy took the heart of thecopyrighted work (Harper & Row Publishers v. Nation Enterprises)

Did the copy take no more than necessary to conjure up the original work (Campbell v. Acuff-Rose Music)

(iv)Effect upon the marketof the copyrighted work(*most important)

Any evidence ofactual harm (Harper & Row Publishers v. Nation Enterprises)

If the copy is a mere copy and thus asubstitutemarket harm more certain (Campbell v. Acuff-Rose Music)

If the copy is transformativemarket harm less certain (Campbell v. Acuff-Rose Music)

No protection for adverse effect on the market from biting criticism (Campbell v. Acuff-RoseMusic)

When the copyright holder establishes reasonable probability of loss of revenue, the burdenshifts to the copier to show loss would have occurred anyway

B. Time Shifting - 1091) When a person records a TV program for later more convenient viewing

(a) Only applies tofree broadcast TV, not cable

2) The equipment must havesubstantial non-infringing uses (Sony v. Universal City Studios)C. Innocent Infringer no copyright notice so was not put on notice that the work was protectedD. Work in the public domain

E. Work is original to the defendant too no copyingF. Statute of limitations - 3 years civil, 5 years criminalG. First Sale Doctrine - 109

1) Purchaser of a copyrighted work cansell, give away, or otherwise dispose of the copy or phonorecord (notelimitations for software) without obtaining anyfurther authorization.

2) Purchasercannot, however:(a) Reproduce (except for private use)(b) Create a derivative work(c) Publicly perform the work

H. Fraud in the Application

I. Point of Sale Exception - 110 an exception to 106 public performance right which allows retailers ofplayback equipment to play them publicly for purposes ofselling the equipment

J. Single Receiver Exception you can perform publicly works that appear onfree broadcast

IX. REMEDIES_____________________________________________________________A. Injunctions - 502B. Impounding or Disposition - 503C. Damages - 504

1) Actual Damages


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(a) You will not get lost future profits (Stevens Linen v. Mastercraft)2) Defendants Profits - 504(b)

(a) Plaintiff required to proveDefendants gross sales(b) Defendant required to prove deductible gross expenses and other causes for profit other than

infringement

(c) If clear that not all of Defendants profits were attributable to the infringement, court will not award100% profits even ifDefendant fails to show otherwise (Cream Records v. Schlitz Brewing)

3) Statutory Damages

(a) Plaintiff must have registeredthe work within:(i) The first 90 days following publication; or(ii) Priorto infringement

(b) Amounts(i) Pre 3/1/1989

$100 minimum

$250-10,000 (ordinary)

up to $50,000 (willful)(ii) 3/1/1989 12/9/99

$200 minimum

$500-20,000 (ordinary)

Up to $100,000 (willful)(iii)Post 12/9/99

$200 minimum

$750-30,000 (ordinary)

$150,000 (willful)

D. Costs and Attorney Fees - 5051) Plaintiff must first be eligible for statutory damages2) Awarded at the discretion of the court

E. Criminal Offense - 5061) any person who willfully infringes for either commercial advantage; or2) Reproducing phonorecords of copyrighted works which have a total retail value of over $1000.


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I. WHAT IS A PATENT_______________________________________________________A. Three Types of Patents

1) Utility Patents(154)- May be granted to anyone who invents or discovers any new and usefulprocess,machine, article of manufacture, or compositions of matters, or any new useful improvementthereof

2) Design Patents(174) May be granted to anyone who invents a new, original, and ornamental design foran article of manufacture

3) Plant Patents (161)- May be granted to anyone who invents or discovers and asexually reproduces anydistinct and new variety of plants (Plant Variety Production Act protection sexually)

II. DURATION OF PATENT PROTECTION_____________________________________A. Utility

1) Post 1995 20 years from thefiling of the application2) Pre 1995 17 year period fromgrant

B. Plant

1) Post 1995 20 years from thefiling of the application

2) Pre 1995 17 year period fromgrantC. Design 14 years from date ofgrant

III. RIGHTS OF PATENT HOLDERS__________________________________________

A. Right to Exclude - The right to exclude others from making, using, offering for sale, or selling the invention inthe US or importing the invention into the US.

B. Not a Right to Use - Not the right to make, use, offer for sale, sell or import, but the right to exclude others frommaking, using, offering for sale, selling, or importing the invention

IV. TRANSFERABILITYA. May be sold or mortgaged, bequeathed by will, and passed to heirs of deceased patentee.B. May grant licenses to othersC. No one else may make, sell, etcwithout patent holders permissionD. A license is purely a promise not to sueany form works

E. Transfer or sale of patent, or application for a patent, must be in instrument in writing.F. Assignment, grants, and similar instruments are recorded by USPTO andserve as public notice

V. REQUIREMENTS FOR PATENT PROTECTION______________________________A. Objects Qualifying for Patents

1) Patentable objects - 101(a) Machines constructed things(b) Processes process, act, or method (primarily industrial or technical processes)(c) Articles of manufacture articles that are made (includes all manufactured articles)(d) Compositions of matter chemical compositions which may include mixtures of ingredients as well as

new chemical compounds

(e) New and useful improvements of the above new combinations of old products and processes toproduce a new and useful result

(f) Business methods2) Things not patentable

(a) Printed materials(b) Products of nature (unimproved or unaltered by man)(c) Laws of nature(d) Mathematical formulas or methods of calculation (exception for business method patents)(e) Fraud based inventions things likely to injure the public or to promote fraud

3) Patenting Life Diamond v. Chakrbarty(a) Man made microorganisms are patented under a but for human hands test(b) Distinction not between living and inanimate things, but between products of nature, and human made

inventions.


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(c) If a living thing would not exist but for human hands patentable.B. Elements of Patent

1) Must be Novel - 102(a)(a) If the intention is not novel, it is deemed anticipated and not patentable.

(i) The invention may be anticipatedby

Priorpublic knowledge

Aprior patenton the same invention, or

Aprior description of the invention published in a printed publication that teaches the art (prior

art)(ii) In re Borst known by others means

Invention must have beenfully disclosed; and

Disclosed invention must have been accessible to the U.S. public

The prior knowledge must have been sufficient to allow a person of ordinary skill in the relevantart to reduce the invention to practice

(b) First to Conceive Rule

(i) The requirement of novelty in 102 reflects the aim to protect thefirst person to inventsomethingnot the first to patent.

(ii) But 102(g) requires that the inventor use reasonable diligence to reduce his invention to practice tomaintain priority

(c) Twelve Month Clock- 102(b) no patent if the invention was (1) patented or described in a printedpublication in this or aforeign country or (2) in public use or on sale in this country formore than oneyear prior(12 months) to the date of the application for patent in the US.

(i) On Sale Bar to be barred this must happen:

The product is the subject of a commercial offer for sale; AND

The invention must be ready for patenting, either by:

1. Proof ofactual RTP(Reduction to Practice) actually making the invention2. Proof ofconstructive RTP preparation of drawings that would enable a person of ordinary

skill in the art to make the invention

(ii) Public Use Bar when an inventor allows his invention to be used by others, with or withoutcompensation, this is also a public use and starts the 12 month clock

Experimental Use Exception the use of an invention by an inventor or others under his controlforpurposes of perfecting the invention will not bar the receipt of a patent under102(b).Factors relevant are:

1. Length of test period2. Whetherpaymentis made by others who use the product3. Whether users agree to keep itsecret4. Whetherrecords were kept of progress5. Whether persons other than the inventorperformed the experiments or tests6. How many tests were performed7. How long the testing period was in relation to tests of othersimilar inventions

Accidental Use Exception occurs when an inventor stumbles on the invention for the first timebut is not immediately able to duplicate it

Foreign Use Exception unpatented use without enabling disclosures in a foreign country isnot a public use bar

(iii) Provisional Application If someone puts your patented product on the market, you can pausethe 12 month clock by filing a provisional application

2) Must be Non-Obvious - 103(a) An invention is not patentable if:

(i) It would have been obvious to aperson having ordinary skill in the pertinent artas it existed whenthe invention was made.

(ii) Looks at the relevant prior art to determine whether an invention would have been obvious at thetime of invention, even if none of the prior art was identical.


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(b) John Deere Test 3 factors need be considered(i) Thescope and contentof the pertinent prior art - court will consider that prior art which is reasonably

pertinent to the particular problem solved by the invention

(ii) Differences between the pertinent prior art and the invention at issue(iii) The ordinary level of skillin the pertinent art

(c) Secondary Considerations

(i) Commercialsuccess of the patented application(ii) Commercial acquiescence by the composition people not making it because they thing you have a

valid patent(iii) Commercial licensing people coming to you for a license thinking you have a valid patent(iv)Expertacknowledgments what do experts say(v) Failure of others to invent despite long felt demand no one else came up with it(vi)Long felt need is there a need for this problem to be solved?

3) Must be Useful - 101(a) Useful refers to the condition that the subject matter:

(i) Must have a useful purpose(ii) That there is a current significant, beneficial use for the invention.

(b) Useful includes operativeness -- a machine which will not operate to perform the intended purpose wouldnot be called useful, and therefore no patent.

(c) Something that promotes illegal activity is not useful (cloning)

VI. PATENT APPLICATION_________________________________________________A. Basic Components of the Application

1) Must be in writing- 1112) IncludeSpecification

(a) A written description of the invention and the manner and process of making it and using it, in full,clear, concise, and exact terms as to enable any person skilled in the art to which it pertains to make anduse the same - 112

(b) Must include a claim or claims particularly pointing out and distinctly claiming the subject matterwhich the applicant regards as his invention - 112.

3) A drawingif necessary for the understanding of the subject matter sought to be patented - 113; or a modelor specimen - 114

4) Oath to the effect that he believe himself to be the original and first inventor of the invention and statewhich is his country of citizenship - 115

5) FeeB. Joint Creations

1) May befiled jointly and may be owned jointly.2) Any joint owner, no matter how small the part interest, may:

(a) Make, use, offer for sale, and sell and importthe invention for his own profit provided they do notinfringe anothers patent rights, without regardto the other owners,

(b) Maysell the interestor any part, orgrant licenses to others, without regardto the other joint owner,unless the joint owners have made a contract governing their relation.

C. Examiner

1) Evaluates the application for its compliance2) Searches through:

(a) US patents(b) Publication of patent applications(c) Foreign patent documents, and(d) Available literature to see if the claimed invention is new, useful, and non-obvious and if the application

meets the requirements of the patent statute and rules of practice.

3) If application is rejected, which is often, the applicant must request reconsideration in writing withspecificreference to the Examiners grounds for rejection.

4) Applicant must clearly indicate why they believe their invention should receive a patent in view of theobjections.


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5) Often involves aseries of correspondence between the USPTO and the application, which correspondencemay be used later to clarify the limits of the patent.

6) If rejected asecond timefinal.

VII. MAINTAINING THE PATENT____________________________________________A. Maintenance fees paid every 3 , 7 , and 11 years or elsepatent cancelled(subject to stat. lim.)

VIII. INFRINGEMENT_______________________________________________________

A. 271 whoever without authority makes, uses, offers to sell, or sells any patented invention, within US orimports into US, during the term of the patent infringes.

B. Two types

1) Literal Infringement where the infringing article is identical or reads on to the claims of the patentedarticle held by the .

2) Doctrine of Equivalents occurs when the infringing article performs substantially the same function insubstantially the same manger to obtain the same result. A DOE claim is examined on an element byelement basis in light of the file wrapper to determine whether any of the claims are equivalent. Not appliedto the invention as a whole.

C. Other types

1) Inducement of Infringement - 271(b)(a) Anyone who actively induces infringement is liable:

(i) Distribution of instruction on the uses of the patented process;(ii) Encouragement of a licensee to breach his license

2) Contributory Infringement - 271(c)(a) Liable Those who sell components made or adapted especially for use in an infringement of a patent

(b) Not Liable those who sell commodities which have asubstantial non-infringinguseD. Who decides infringement?

1) Court

(a) The construction of a patent, including terms of art within its claim(b) Markman hearings which are held fordeclaratory construction of claims.

2) Jury

(a) Decides the question of infringement

(b) Whether it actually infringes or not.

IX. DEFENSES_____________________________________________________________A. Patent invalid for being non-obvious, not novel, or not usefulB. Fraud in the patent office holder of the patent made misrepresentations or withheld material information

during the patent process and did so intentionally

C. Misuse of the patent equivalent to unclean hands. Patentee used his patent in such a way as to gain moremarket power than the grant of the patent was intended to convey.

D. Lack of payment of maintenance fees

E. Invention abandoned - 102(c) refers to the intentional surrenderof the invention to thepublicF. Innocent infringer - 287 notice must be given that the article is patented. If no notice given to the infringer,

either by such notice or by the filing of an action for infringement, the infringer is not liable for money damages.G. Patent expired

H. Experimentation exception person may make a patented article or process:1) To ascertain whether thespecifications are accurate; or2) For experimentation which is not for profit for business purposes philosophical experimentation

I. Equitable defenses

1) Laches

(a) Patentee unreasonably and inexcusably delayed bringing an infringement action and the delay causedmaterial prejudice to the defendant.

(b) If the delays sue for more than 6 years after the date he knows/should have known there is apresumption of laches.


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2) Prosecution laches unreasonable and unexplained delay inprosecuting the patent application which maybar enforcement of the patent

3) Equitable estoppel if the D can show the following then no suit:(a) Patentee, by misleading conduct led the D into reasonably inferringthat the patentee did not intend to

enforce his patent;

(b) The D reliedon that conduct; and(c) Due to his reliance the D will be materially prejudicedif the suit proceeds

4) File Wrapper Estoppel patent owner estopped from later reclaiming subject matter which he gave up

during prosecution of the patent5) Assignor estoppel patent owner estopped from challenging the validly of a patent he earlier assigned

X. REMEDIES_______________________________________________________________A. Injunction-283B. Damages - 284C. Trebled - 284 (may be awarded for willful infringement)D. Attorneys Fees and Costs - 285E. Time Limitation - 286 Six Year Rule prohibits recovery of damages for any infringements that occurred

more than 6 years prior to filing suit


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REQUIREMENTS FOR TRADEMARK PROTECTION _________________________A. Mark must be used in commerce

1) Prior to 11/16/1989

(a) Mark had to be used in the marketplace in connection with the goods or services(b) No ownership rights would attach until used in commerce(c) A mark that had not been used could not be registered

2) Post 11/16/1989

(a) Requirement altered to allow for registration on intent to use

(b) But it cannot be a token use simply to gain registration3) Affixation

(a) The mark must beproperly affixedto the goods or service(i) For trademarks achieved byplacing markon goods, on tags, etc(ii) For service marks achieved by using the markin the course of selling or advertising services

B. Mark must be distinctive1) Abercrombie Categories

(a) Inherently distinctive

(i) Arbitrary or Fanciful mark

Arbitrary has meaning but does not describe the product or its services

Fanciful has no other meaningbut as the trademark

(ii) Suggestive marks Indirectly describe the product or service they identify

The consumer must come to engage in a mental process of his own to connect the mark to theproduct or service

The amount of imagination they exercise to make the connection is considered in deeming amark as suggestive vs. merely descriptive

Competitors do not need to use the mark to describe their own products(iii)Marks appearing on the federal register

(b) Not inherently distinctive Needsecondary meaning- 1052(f)(i) Descriptive marks - 1052(e)(1) (Application of Sun Oil)(ii) Deceptively misdescriptive - 1052(e)(1)

(iii) Primarily geographically descriptive - 1052(e)(2)(iv)Primarily geographically misdescriptive - 1052(e)(3) (In Re Loews Theaters; Arizona tea)(v) Surnames - 1052(e)(4)(vi)Merely functional - 1052(e)(5)

Merely Functionalnot protectable

1. Do competitors need itto compete effectively functional2. Does the feature give one producer a competitive advantage because it functions in a

superior manneror is more economicalthan alternatives functional

3. Is the featuresubstantially relatedto the purpose of the product functional Non-Functional

1. Trade Dress Protectable if:

a. May be inherently distinctive (Two Pesos v. Taco Cabana)b. Not inherently distinctive +Secondary meaning2. Color Protectable if:

a. It is non-functional(note some colors have become functional)(Qualitex v. JacobsenProducts)

b. Hassecondary meaning(Qualitex v. Jacobsen Products)3. Product Design (Samarra Brothers v. Wal-Mart)

a. Cannot be inherently distinctiveb. Requires proof ofsecondary meaning

(c) Secondary Meaning when the public recognizes the mark as an indication of the source of the productor service.


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(i) Can be established through:

Directly - Surveys

Circumstantially

1. Long and extensive use of the mark in connection with a product2. Created secondary meaning through extensive advertising3. Proof ofsubstantially exclusive use for 5 years (prima facie evidence) - 1052

(ii) Can be challenged by:

Attacking validity of the survey

Secondary meaning in one market does not give you secondary meaning in the whole market(Durango cigars and Durango tobacco in In Re Loews Theaters)

(d) Inherently non-distinctive Generic marks(i) A mark is deemed generic if itsprimary significance to the public is the identification of a type of

product or service (Kleenex, Boogie Boards) and not the source or origin.2) An otherwise distinctive mark cannot be:

(a) Deceptive - 1052(a)(i) Simmons/Shapely Test

Is the term misdescriptive of the character, quality, function, composition, or use of the goods?

If so, are prospective purchasers likely to believe that the misdescriptions actually describe thegoods?

If so, is the misdescription likely to affect the decision to purchase?1. If yes mark is deceptive and barred from protection or registration (In Re Budge

Manufacturing)

2. If no mark is merely deceptively misdescriptive and needs secondary meaning(Application of Sun Oil)

(b) Confusingly similar - 1052(d)(i) No registration if a mark so resembles an earlier markas to be likely to cause confusion (In Re

NAD)

(ii) But the owner of a previously registered similar markmay consent to anothers use if they believethere to be no likelihood of confusion (In Re NAD)

(iii) Can grant a concurrent registration if there are no competing territories (In Re NAD)

(c) Contain scandalous matter - 1052(a)(i) Prohibits giving offense to the conscience or moral feelings; exciting reprobation, calling outcondemnation (Hurricane Katrina drinks)

(ii) Uses perceptions of the offended class (as opposed to general public) when determining what isderogatory

(d) Disparagement or false connection - 1052(c)(i) No registration if it may disparage or falsely suggest a connection with:

Persons (living or dead) - 1052(c)

Institutions

Beliefs

National symbols - 1052(b)

(e) Abandoned - 1127 [45](i) Through Non-Use - 1127 [45]

Use has been discontinued with intent not to resume such use

Intent not to resume may be inferred from circumstances

Nonuse for3 consecutive years is prima facie evidence of abandonment

Use means bona fide usenot a mere token use(ii) Through Loss of Quality Control

If mark licensed for use by someone else, owner must exercise QCor its abandoned

Occurs if the owner grants a naked license

(iii) Through Loss of Distinctiveness - 1127 [45]


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Any course of conduct of the owner, including omissions, that causes the mark to become thegeneric name for the goods or services with which it is used (King-Seely Thermos v. AladdinIndustries)

Otherwise lost significance as a mark

II. PROCEDURE FOR REGISTRATION_________________________________________A. Required Filings

1) Use in Commerce - 1051(a) [1(a)]

(a) Requirements(i) Bona fide use of a mark in the ordinary course of trade

Not a mere token use

Bona fide use factors :1. Quantity and continuity of sale2. Consumer purchases3. Business or mark owner4. Quality control5. Distinguishing mark6. Intent7. Profit or loss8. Advertising

9. Test market(ii) Deemed in use when:

Placed in any manner on goods or their containers (or on services when it is used in the sale ofadvertising services); AND

The goods aresold or transportedin (interstate) commerce

When the good first meets the consumers eyes(b) Timeline

(i) File an application(ii) Examination(iii)Appearance in the Official Gazette USPTO publishes that the mark has appeared(iv) Open to Opposition to the mark Protestors have 30 days to file opposition (may request extension)

(v) REGISTRATION USPTO issues certificate of registration - 1057(b)2) Intent to Use - 1051(b) [1(b)]

(a) Requirements

(i) Must be a bona fide intent to use(ii) Court cannot enjoin an applicantfrom using during thependency of the intent to use application

(WarnerVision Entertainment v. Empire of Carolina)

(iii) First to file the ITU gets the trademarknot first to use(b) Timeline

(i) Do a trademark search with Thompson & Thompson (failure to do so is willful infringement)(ii) Receive an action letter with results(iii)File an application filing sets the priority date

(iv)1st Examination

(v) Open to Opposition(vi) Receive Notice of Allowance(vii) Have 6 months to use the mark in commerce(viii) Extensions

1st automatic upon request another 6 months

2nd, 3rd, 4th, 5th must show good cause another 6 months(ix) Actual Use(x) File a Statement of Use

(xi)2nd Examination

(xii) REGISTRATION USPTO issues certificate of registration - 1057(b)B. Supplemental Filingsmust be made or else registration is cancelled


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1) 6th Year(a) Must file a 8 (Statement/Affidavit of Continuous Use)

(i) Actual specimen of the mark and affidavit setting forth:

The goods on which the mark is used

The goods on which it is not being usedand the reasons why (not abandoned)

(b) Should also file a 15 (Statement of Incontestablility)(i) Ifno adverse claim to the mark during the first five years, the registrants right to use the mark

become incontestable

2) Every ten years(a) Must file a 8 (Statement/Affidavit of Continuous Use)(b) Must file a 9 (Renewal)

III. ADVANTAGES TO REGISTERING_______________________________________A. Principle Register

1) Constructive notice to the public of the registrants claim of ownership in the mark eliminates theinnocent infringerdefense

2) Prima facie evidence of the validity of the registration, ownership of the mark, and the exclusive right to usethe mark in commerce in connection with the goods and services specified in the certificate

3) Possibility ofincontestability after 5 years giving limited grounds for others to attack the mark that is 5 years

or older makes the markimmune from cancellation and subject to attack only for fraud, genericide, andabandonment

4) Ability to bring an action concerning the mark infederal court5) Recoveryfor profits, damages, and costs in federal court infringement action and the possibility oftreble

damages andfees

6) Availability ofcriminal penalties for counterfeiting actions7) Use of the US registration to get registration in foreign countries8) The ability to file the US registration with Customs toprevent importation of foreign infringing goods

B. Supplemental Register - 10911) For marks in lawful use and capable of distinguishing goods or services but lack either inherent

distinctiveness or established secondary meaning

2) Does not provide the full advantage of Principle Register

3) After5 years on the Supplemental, the registrant can seek to move the mark to the Principle

IV. OTHER TYPES OF MARKS______________________________________________A. Service Marks

1) Definition - 1127 [45](a) Any word, name, symbol, or device or combination;(b) Used by a person or which a person has a bona fide intention to use in commerce and applies to register

on the principle register;(c) To identify and distinguish the services of one person from the services of others or to indicate the source

of those services even if that source is unknown.

2) Registration for service marks identical to that of trademarks - 1053 [3]

3) Advertising To register a service mark for advertising:(a) Mark must be used in the sale or advertising of services to identify and distinguish the services of one

person from the services of another and to indicate the source of that service;

(b) The services must be sufficiently separate from the subject of the advertising; (In Re Advertising &Marketing Development) and

(c) The mark must be used to identify the advertising services themselves (In Re Advertising & MarketingDevelopment)

B. Certification Marks

1) May be registrable under thesame terms as trademarks - 1054 [4]2) Cancellation of a certification mark can occur if:


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(a) The mark is not used exclusively as a certification mark(Midwest Plastic Fabricators v. UnderwritersLaboratories)

(b) If the mark registrant does not controlor is unable to legitimately exercisecontrolover the use of suchmark (Midwest Plastic Fabricators v. Underwriters Laboratories)

3) [Can you adopt a common law certification mark?]

V. TRANSFER OF TRADEMARKS_____________________________________________A. Assignment

1) A registered mark or mark for which an application has been filed can be assigned2) Assignment must be in writingandshould be registered with USPTO3) No actual form for assignment

B. Licenses

1) The duration for licenses (both exclusive and non-exclusive) areset by contract2) Be wary to not grant naked licenses owner must maintain quality checks

VI. INFRINGEMENT_______________________________________________________A. Likelihood of confusion

1) Polaroid Factors: (Second Circuit) (McGregor v. Drizzle)

(a) Strength of s mark distinctiveness and tendency to identify the goods source

(b) Similarity of the marks, products, or services in appearance, sound (radio test), meaning(c) Product proximity in the marketing channels sold at the same or same kind of stores(d) Quality of the Ds goods does it tarnish or conjure up the goodwill of s product(e) Bridging the Gap between the marks how likely for to enter this market(f) Actualconfusion persuasive evidence(g) Good faith of the D did D intentionally adopt this mark(h) Sophistication of the buyers careful and discriminating consumer

2) Other issues(a) Reverse Confusion

(b) Disclaimers

(i) Simply putting a were not affiliated with X on your product does not disclaim liability(ii) Would turn on how likely it is that consumers will see it (is it conspicuous?)

(c) Lingering Good Will

(i) Applies in instances of an abandoned mark(ii) Even though producer no longer uses it, it has a lingering image to the consumers who may not

know better

(d) No Side-By-Side Comparison(i) Court will not examine the conflicting marks next to each other(Pickle-Rite v. Chicago Pickle)

B. Likelihood of Dilution

1) Federal Trademark Dilution Act - 43(c)(a) must show :

(i) D made use of a junior mark sufficiently similar to thefamous markto evoke a mentalassociation between the two;

Degree ofinherent or acquired distinctiveness Duration and extent ofuse of the mark

Duration and extent of the advertising and publicity of the mark

Geographical extent of the trading area where the mark is used

Channels of trade for the goods or services on which the mark used

Degree ofrecognition of the s mark vs. the alleged diluter

Nature and extent ofuse of same or similar marks by third parties

Whether the markregistered

(ii) Such association has lessened the capacity (cause actual dilution) of a famous mark to identifyand distinguish goods or services (Mosely v. Victorias Secret)


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Can show a demonstrated loss of revenue

Evidence that people will stop shoppingat your store as a result

2) State Anti-Dilution Statutes (not preempted by Federal law)(a) must show :

(i) has a distinctive markthat is capable of dilution(ii) Likelihood of dilution Judge Sweet Test

Similarity of the mark

Similarity of theproductcovered by the marks

Sophistication of the consumers

Predatory intent

Renown of theseniormark

Renown of thejuniormark

(b) Three potential scenarios:(i) Dilution by Blurring

has a strong markclosely associated with the public as a business or as a source of a particulartype of good or service; and

Ds use whittles away or dilutes the strong association consumers have between that mark andthe

(ii) Dilution by Tarnishing

Ds use of a similar mark casts the s distinctive and well-known mark or trade name in a badlight and thus tarnishes the lusterof s commercial image or reputation

Such as use in an unwholesome contextout of context with s high quality image

(iii) Likelihood of Confusion overlapC. Vicarious Infringement

1) D must have : (Hard Rock Caf v. Concession Services)(a) Controlover the activity of the direct infringer; AND(b) Financialbenefit

(i) By charging admission prices, D had financial benefit (Hard Rock Caf v. Concession Services)D. Contributory Infringement

1) D must have : (Hard Rock Caf v. Concession Services)

(a) Knowledge that the infringement was taking place; AND(i) Knowledge means willful blindness not mere negligence(ii) Did Dsuspect wrongdoing?(iii) If so, did the D deliberately fail to investigate

D had policy, but never enforced it (Hard Rock Caf v. Concession Services)

(b) Provided the means for infringement or assistance

VII. DEFENSES_____________________________________________________________A. Fair Use

1) Must show : (NKOTB v. New American Publishing)(a) The product/service must be readily identifiable without the use of the trademark

(b) Only so much of the trademark has been used as is reasonably necessary to identify the product orservice

(c) User must do nothing that would, in conjunction with use of the mark,suggest sponsorship orendorsementby the trademark holder

B. Loss of Distinctiveness

1) Abandonment2) Genericide3) Naked License

C. No Infringement

1) No Likelihood of confusion2) No Likelihood of dilution


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3) Defendant is Senior UserD. Not Valid Trademark

1) Fraud in the Registration2) Functionality

E. Failure of holder to maintain Quality Control

F. s Unclean Hands

G. Not a Valid Suit1) Laches

2) State Statute of Limitations (there is no federal SOL)H. Innocent Infringer

I. Violation of Anti-Trust

J. Trademark or Service mark misuse

VIII. REMEDIES_____________________________________________________________A. Injunctions - 1116 (preferred remedy)

1) Only need to establish likelihood of confusion2) May be narrowly tailoredto remedy the offense (such as placing appropriate labels)

B. Monetary Damages - 1117 (available whether mark is registered or unregistered)1) Actual Damages - 1117(a)

(a) Burden on the to show losses incurred due to loss of salesor injury to reputation/good will

(b) Typically need to show instances of actual confusion2) Defendants Profits - 1117(a)

(a) usually must show bad faith or deception on the part of the Defendant to receive any profits(i) Not doing a trademark search presumes bad faith

(b) Burden is on the toprove the amount of Ds gross sales attributable to the infringement(c) Burden is on the D toprove non-attributable profits and attributable losses/expenses as an off set to the

gross revenue claimed by the

(d) Court will have leeway to adjust the monetary awards depending upon:(i) Whether the D acted ingood faith(ii) Whether the has not been made whole (Maltina v. Cawy Bottling)

3) Costs

(a) Can award cost of suit(b) Treble damages(c) And reasonable attorneys fees

C. Statutory Damages

1) For counterfeit marks - 1117(c)(a) Not-Willful $500 100,000 per counterfeit mark

(b) Willful $1,000,000 per counterfeit mark2) For Cyber Squatting - 1117(d)

(a) may receive no less than $1,000 nor more than $100,000 per domain name as court deems just


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IDEA MISAPPROPRIATION

I. BASICS___________________________________________________________________A. Source of Law Common and State lawB. Scope of Rights

1) Address a claimed right to compensation for the Ds unauthorized use of the s idea2) Duration is set by contractand may be indefinite

II. MISAPPROPRIATION_____________________________________________________A. Elements must show :

1) Idea must be novel(a) Objective Novelty

(i) Idea must be original to (Sellers v. ABC, Lueddecke v. Chevrolet)(ii) Idea must be innovative or original in nature (Sellers v. ABC, Lueddecke v. Chevrolet)

(b) Novelty to the Buyer (New York; Nadel v. Play-by-Play Toys)(i) For a contract claim, an idea need only be novel to the buyerto serve as consideration

2) Idea must be in concrete form(a) Idea must be capable of being reduced to writingor used within 24 hours(b) Idea must be reduced to a tangible form committed to writingor incorporated into a tangible product

(c) Is the idea fully developed and flushed out (Lueddecke v. Chevrolet)3) Idea must be used by the D4) Plaintiff must have an expectation of payment

(a) Express contract - Contract existspromising to pay for an idea(i) Lower standard of novelty required

(b) Implied contract Where idea is novel (higher standard) and concrete and:(i) D has paid for such ideas in the past,(ii) is customarily paidfor such ideas, or(iii) Industry has a custom of paying for such ideas (Nadel v. Play-by-Play Toys)(iv)If the D expressly declaredhe will not pay, courts will not imply such a promise

(c) Quasi contract Where there has been unjust enrichmentfor a novel and concrete idea, but court will

not award if(i) Disclosure for the idea was unsolicited(ii) The idea was not novel or concrete

(d) Breach of confidentiality

(i) No novelty required(ii) Typically mandated to be waivedbefore recipient will even consider a submission

(e) Tort of Conversion

(i) Idea that the recipient of the idea took property

(ii) Extreme and rarely used

III. DEFENSES

A. Idea was not novelB. Independent Development - We didnt use s ideawe used someone elses (Lueddecke v. Chevrolet)C. Idea was not concrete - Not thoroughly flushed out

IV. PRACTICAL TIPSA. For submitters Double envelopeB. For recipients waiver of confidential relationshipC. Few cases are successful


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RIGHT OF PUBLICITY

I. POLICY BEHIND THE ROPA. Vindicates the economic interests of celebrities, enabling those whose achievements have imbued their identities

withpecuniary value to profit from their fame

B. Fosters the production ofintellectual and creative works by providing thefinancial incentive for individuals toexpend the time and resources necessary to produce them

C. Serves both individual and societal interest by preventing what our legal tradition regards as wrongful conduct:

unjust enrichmentand deceptive trade practices

II. SCOPE OF RIGHTSA. Pecuniary Interest in the Commercial Exploitation

1) The right of a celebrity to control and profitfrom the commercial exploitation of his or hername, image,likeness, performance, voice, biographical facts, and symbolic representation.

2) Celebrity refers to an individual who has reached a celebrated status, including entertainers, sports figures,politicians, business people and other public figures. Also extends to non-celebrities to the extent they havepecuniary value in their identity

B. Transfer of ROP

1) ROP is a right of property (Majority, California)

(a) Rights descend at death to successors in interest(b) May be assigned or sold2) ROP is a right of privacy (Minority, New York)

(a) Ends with the death of the celebrity

III. SOURCE OF RIGHTS____________________________________________________A. State law

B. Lanham Act 43(a)

IV. INFRINGEMENT_______________________________________________________A. Elements must prove

1) Commercial exploitation: might include(a) Use in advertisingproducts or services (White v. Samsung)(b) Incorporating the likeness into aproduct

(i) Three Stooges on t-shirts (Comedy III v. Saderup)(c) Commercialspeech

2) Appropriation of identity(a) Direct name or likeness

(b) Nickname (Crazylegs)(c) Cartoon likeness (Ali)(d) Use of phrases associated with the celebrity (Carson)(e) Use of impersonators (Midler v. Ford)(f) Combinations that conjure an identity (Race car driver)

3) Likelihood of confusion

(a) Frisch Test / Sleekcraft Factors

(i) Strength of the mark level of celebrity(ii) Relatedness of the goods source of celebritys fame and the product(iii) Similarity of the mark similarity of image used to celebrity image(iv)Evidence ofactualconfusion(v) Marketingchannels used by D(vi)Likely degree ofpurchaser care buyer sophistication(vii) Ds intentand good will(viii) Likelihood ofexpansion would the celebrity one day wish to endorse a similar product


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V. DEFENSES________________________________________________________________A. First Amendment

1) News, Editorial, Political Use may use celebrity image in non-commercialspeech to commenton publicfigures

2) Transformative Does the work contain significant creative elements beyond mere imitation (Comedy IIIv. Saderup)3) Parody

(a) Poking fun is acceptable, but may only use as much as necessary to conjure up the celebrity(b) Focus is on the medium not the message if found to be used for commercial gain no defense

B. Fair Use use forparody, satire, and criticism is generally not infringement of ROPC. First Sale Doctrine

1) If celebrity authorizes X to produce products bearing celebritys likeness, subsequent purchasers of theproduct have the right to resell them without anyfurther authorization

D. Valid License

VI. PREEMPTION - 301A. Majority View

1) RORrarely preemptedbecause while the celebritys persona may be fixed in the photos, videos, films, etcthe subject matter of the ROPthe celebritysfame and identityare not fixed

2) The requirements ofidentifiably and commercial purposes distinguish ROP from copyright claimsB. Minority View

1) ROP ispreemptedby federal law (Kozinski in White v. Samsung; Wendt v. Host International)

VII. REMEDIES_____________________________________________________________A. Injunction usually granted when unauthorized use is found on the grounds that ROP interests are unique and

such use may cause irreparable harm

B. Destruction or Impoundment some states order

C. Forced Issuance of a DisclaimerD. Damages

1) Fair market value orreasonable royalty of Defendants use of s identity2) Compensation forlowered demandfor endorsements based on injury to celebritys reputation3) Defendants profits so long as it does not lead to double recovery (some states)4) Treble Damages Lanham Act 43(a) authorizes5) Fees some to prevailing party, others to only prevailing plaintiff


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TRADE SECRETS

I. WHAT IS A TRADE SECRET_______________________________________________A. Uniform Trade Secrets Act definition

B. Restatement of Torts Any formula, pattern, device, or compilation which is used in ones business and whichgives him an opportunity to obtain an advantage over competitors who do not know or use it.

C. Kettle Any information which would give a business an economic competitive advantage

II. REQUIREMENTS__________________________________________________________A. Does not have to be novelB. Must be in continuous use in the claimants business

III. DIFFERENCE FROM PATENTS__________________________________________A. Trade secrets are an alternative to broadening the patent systemB. Patent gives protection for only a limited amount of time after which the formula become public domain

C. Trade secret ispotentially unlimited in durationD. Trade secret also protects subject matter which could not be patented such as client lists orpricing information

IV. SOURCE OF RIGHTS____________________________________________________

A. Common law misappropriationB. States that have adopted the Uniform Trade Secrets Act or Federal Economic Espionage ActC. Other State law

V. SOURCE OF CONFIDENTIAL RELATIONSHIPS_____________________________A. Confidential relationships require that the party who gains knowledge of the trade secret refrain from

disclosing or using it without the trade secret owners permission1) Parties to a special relationship

(a) Agent principal relationship(b) Employer employee relationship(c) Partners or joint venture

(d) Fiduciary relationships (Such as attorney client)2) Express contracts3) Implied Contracts

(a) If D has notice that the information which is to be disclosed is to be kept in confidence and D agrees toreceive the information, or

(b) If D does not objectprior to receipt

VI. PROTECTING TRADE SECRETS_________________________________________A. Express Agreement require employees to not disclose or use any trade secrets belonging to the employerB. Assign employer may ask employee to assign in advance all trade secrets he may develop during his

employment

C. Non-Compete Agreement employee agrees not to compete with the employer for specific times in specificareas (narrowly interpreted)

D. Agent employees, as agents, owe a duty of confidentiality to employers (principal) even after termination

VII. DOCTRINES____________________________________________________________A. Doctrine of Inevitable Disclosure

1) Applies if a former employee takes or intends to take a job where use of a trade secret is inevitable

2) Doctrine Provides: (Pepsico v. Redmond)(a) If a former employee knows the former employers trade secrets;(b) It would be difficult for him not to rely on or use the trade secrets in his new position because the duties

in his new position are so related or similar to hose in his old position; and


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(c) The former employee or his employercannot be counted on to avoid use of the secrets,(d) The former employee can be enjoined from taking the new positionbut only for a limited timeuntil

the threat to the trade secrets is dissipatedB. Misappropriation by Memory

1) Definition - Whether an employee can stop a former employee from using trade secrets retained in memory.2) Scope - Governs where a former employee has already used a memorized trade secret.3) Remedy - The remedy would be to obtain an injunction which would prevent further use4) Difficulty Distinguishing between a protectable trade secret and non-protectable knowledge and skills

acquired through his employment or experience

VIII. DETERMINING A TRADE SECRET_______________________________________A. Kettle Elements : (EI duPont v. Christopher)

1) Does it give a competitive advantage2) Did the holder take reasonable steps to keep it a secret

B. Other Factors:

1) Extent to which the information is known outside of s business2) Extent to which it is known by employees and others involved in the business3) Extent ofmeasures taken by to guard the secrecy of the information4) Value of the information to him and his competitors5) Amount of effort and money expended in developing the information6) Ease or difficulty with which the information could be properly acquired or duplicated by another

IX. TRADE SECRET MISAPPROPRIATION___________________________________A. Elements :

1) The disclosure and/or use was of an actualtrade secret2) D had notice that the information was a trade secret and was wrongfully acquired3) Can either show:

(a) The acquisition of the trade secret was by wrongful or improper means; OR(i) Illegal means such as theft, bribery, or wiretapping(ii) But also applies to activity that is otherwise legal(EI DuPont v. Christopher)(iii) Means which would fall below the generally accepted standards ofcommercial morality and

reasonable conduct

(b) Breach ofconfidence(i) Existence of a trade secret(ii) Communicated to the D(iii)While D was in a position of trust and confidence(iv) Used by the D to the injury of

X. DEFENSES________________________________________________________________A. Reverse Engineering

1) Provided the competitorlawfully obtains the product, reverse engineering is allowed2) But the fact that is was reverse engineered does not de facto mean it was lawful

B. Independent Development (Clean Room Development)C. Not a Secret - Holder did not take reasonable steps to keep it secretD. Bona Fide Purchaser Exception

1) One who receives another trade secret from a third person without knowing that it is a secret and the thirdpartys disclosure was a breach of his duty to the other, or who learns the secret through a mistake withoutnotice of the secrecy and the mistakeis liable to the other for a disclosure or use of the secret after thereceipt of such notice (that it is a trade secret) unless prior thereto he has in good faith paid value for thesecret or has so changed his position that to subject him to liability would be inequitable.

XI. REMEDIES_____________________________________________________________A. Injunctive Relief


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1) Modern Rule appropriate only for the period of time that the subject matter of the trade secret would haveremained unavailable to the D but for the misappropriation

2) Others Reasonable Commercial Lead Time

(a) Weigh evidence of the amount of time a person of ordinary skill would have required to reverse engineeror independently discover to determine the lead time

3) Few permanent injunctions issued as punitive measureB. Damages

1) Amount equal to the loss suffered by the holder; or2) Gain realized by the person who misappropriated

Documents

Copyright Trademark Kettle