Professional Documents
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Copyright Trademark Kettle
Copyright Trademark Kettle
Copyright Trademark Kettle
Definition - Protection to authors of original works of authorship which are fixed in a tangible medium of
expression.
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Invasion of privacy Defamation Violation of trust Misappropriation Trespass Conversion Deceptive trade practices Passing off/false representation
II. WHO OWNS THE COPYRIGHT_____________________________________________ A. Author - Under most circumstances, the author is the owner of the copyright
B. 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 agreement to 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 author as the measuring life (d) You cannot represent joint-authors unless you have a signed 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 skill required to do the work The source 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 long to work The method of payment 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 of employee benefits The tax treatment of the worker (b) (2) If the author is not an employee, then: (i) Made under an expressly signed 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 Work 1) Elements - 101 (a) A work such as a periodical issue, anthology, or encyclopedia;
(b) Where a number of contributions, constituting separate and independent works are assembled into a
collective whole
2) Limitations on Rights - 201(c) (a) For a collective work, copyright law recognizes separate 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 - 101 1) Perform or display at a: (a) Place open to the public; 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 gathered 2) 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 - 107 1) A work based upon one or more preexisting 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 all of the copyright owners exclusive rights or subdivisions may be transferred. (a) Exclusive Rights - Transfer or license must be in writing signed by the owner of the specific rights
conveyed (b) Non-Exclusive Rights - license does not require writing 2) May be bequeathed by will 3) 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 - 203 1) No Waiver - Termination rights cannot be waived by contract 2) Post 1978 Works notwithstanding the duration specified in the grant, a grant may be terminated (a) When: (i) If no publication rights during the 5 years following the end of the 35th year of the grant (ii) If publications 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.
3) Pre 1978 Works <ASK LATER> (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 phonorecords 2) Prepare derivative works 3) Distribute copies or phonorecords to the public by sale, other transfer, rental, lease, or lending 4) 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 other
audiovisual works)
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3) Renewal required for work pre-1964 4) If you do not publish, you might still have state copyright protection Under 1976 Act 1) No need to publish or register the work 2) Works created after 1/1/78 get federal copyright protection when the work is fixed in a tangible medium of expression for the first time 3) Proper Notice (a) Still required for works pre 3/1/1989 (optional for works post 3/1/1989 after Byrne Convention) (b) But failure to put notice gives rise to an innocent infringer defense 4) Required to make mandatory deposit for all published works - 407 Advantages to Registering under 1976 Act 1) Serves as a public record forestalling the innocent infringer defense 2) Prerequisite to filing an infringement suit 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) The facts 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 to prevent importation of infringing goods 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 Forms 1) PA for published and unpublished works of the performing arts (musical and dramatic works, pantomimes and choreographic works, motion pictures, other audiovisual works) 2) SE for serials, works issued or intended to be issued in successive parts bearing numerical or chronological designations and intended to be continued indefinitely (periodicals, newspapers, magazines, newsletters, annuals, journals, etc) 3) SR for published and unpublished sound recordings (also for sheet music if sole author of both) 4) TX for published and unpublished non-dramatic literary works; computer software 5) RE for claims to renew copyright in works copyrighted under the law in effect through 12/31/1977 (1909 Copyright Act) and registered during the initial 28 year copyright term. Curing Defects - If you have a product made pre-1989 lacking proper notice the cure period has expired and the copyright protection has vanished (Hasbro Bradley v. Sparkle Toys) 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 extension D. Created before 1/1/78 but not published from 1/1/78 for life + 70 or 12/31/2002 whichever is greater E. Created before 1/1/78 but published between 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 protection
G. Created after 1/1/78 1) Individual life + 70 2) Corporation earlier of 95 years from publication or 120 years from creation
1) Anyone who violates any of the exclusive rights of the copyright owner stated in 106 or 106A or imports B.
copies or phonorecords in violation of 602 2) Any one who copies or uses protectable expression from a copyrighted work without permission Elements: 1) Ownership of the valid, registered, and particular copyright that is being infringed (a) You must register your work to be able to sue (b) You must have ownership over the particular 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 be some 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 it precludes any explanation other than direct copying (Selle v. Gibb) 3) Substantial similarity to the copyrighted work (a) Whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. (Steinberg v. Columbia Pictures) (b) Must be similarity of expressionnot just the idea behind the expression (Steinberg v. Columbia Pictures) (c) But when an artist makes creates a mere likenesslater works that resemble that likeness are not substantially 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. Universal Pictures) (b) Scene a Faire Contributory Infringement 1) Elements: (a) Have knowledge of the infringing activity; AND (b) Induce, cause, or materially contribute to the infringement (i) Merely providing 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 infringer when his vendors were selling counterfeit goods. (Fonovisa v. Cherry Auction) Vicarious Infringement 1) Elements: (a) Have the right and ability to supervise the infringing activity; AND (b) Have a direct financial interest in the infringing activity (i) A direct interest in the infringing transaction is not required. (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) 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 present 3) De minimis could be allowed 4) Side-by-side comparison is used
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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 character of the use (such as commercial/non-profit) Use for commercial gain weighs against fair use, but it is not per se exclusive Mere headline grabbing does not make it news reporting (Harper & Row Publishers v. Nation Enterprises) (ii) Nature of the copyrighted work Some works are more worthy of copyright protection than others. Was the work factual or fantastical? (iii) Amount and substantiality of the portion used Considers both the overall quantity taken and whether the copy took the heart of the copyrighted work (Harper & Row Publishers v. Nation Enterprises) Did the copy take no more than necessary to conjure up the original work (Campbell v. AcuffRose Music) (iv) Effect upon the market of the copyrighted work (*most important) Any evidence of actual harm (Harper & Row Publishers v. Nation Enterprises) If the copy is a mere copy and thus a substitutemarket harm more certain (Campbell v. AcuffRose 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-Rose Music) When the copyright holder establishes reasonable probability of loss of revenue, the burden shifts to the copier to show loss would have occurred anyway Time Shifting - 109 1) When a person records a TV program for later more convenient viewing (a) Only applies to free broadcast TV, not cable 2) The equipment must have substantial non-infringing uses (Sony v. Universal City Studios) Innocent Infringer no copyright notice so was not put on notice that the work was protected Work in the public domain Work is original to the defendant too no copying Statute of limitations - 3 years civil, 5 years criminal First Sale Doctrine - 109 1) Purchaser of a copyrighted work can sell, give away, or otherwise dispose of the copy or phonorecord (note limitations for software) without obtaining any further authorization. 2) Purchaser cannot, however: (a) Reproduce (except for private use) (b) Create a derivative work (c) Publicly perform the work Fraud in the Application Point of Sale Exception - 110 an exception to 106 public performance right which allows retailers of playback equipment to play them publicly for purposes of selling the equipment Single Receiver Exception you can perform publicly works that appear on free broadcast
(a) You will not get lost future profits (Stevens Linen v. Mastercraft) 2) Defendants Profits - 504(b) (a) Plaintiff required to prove Defendants 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 award
100% profits even if Defendant fails to show otherwise (Cream Records v. Schlitz Brewing) 3) Statutory Damages (a) Plaintiff must have registered the work within: (i) The first 90 days following publication; or (ii) Prior to 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 - 505 1) Plaintiff must first be eligible for statutory damages 2) Awarded at the discretion of the court E. Criminal Offense - 506 1) any person who willfully infringes for either commercial advantage; or 2) Reproducing phonorecords of copyrighted works which have a total retail value of over $1000.
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 useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof 2) Design Patents (174) May be granted to anyone who invents a new, original, and ornamental design for an article of manufacture 3) Plant Patents (161)- May be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plants (Plant Variety Production Act protection sexually)
III. RIGHTS OF PATENT HOLDERS__________________________________________ A. Right to Exclude - The right to exclude others from making, using, offering for sale, or selling the invention in
the 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 from
making, using, offering for sale, selling, or importing the invention
IV.
A. B. C. D.
TRANSFERABILITY
May be sold or mortgaged, bequeathed by will, and passed to heirs of deceased patentee. May grant licenses to others No one else may make, sell, etcwithout patent holders permission 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 and serve as public notice
(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 anticipated by Prior public knowledge A prior patent on the same invention, or A prior 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 been fully 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 relevant art to reduce the invention to practice (b) First to Conceive Rule (i) The requirement of novelty in 102 reflects the aim to protect the first person to invent something not the first to patent. (ii) But 102(g) requires that the inventor use reasonable diligence to reduce his invention to practice to maintain priority (c) Twelve Month Clock - 102(b) no patent if the invention was (1) patented or described in a printed publication in this or a foreign country or (2) in public use or on sale in this country for more than one year 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 of actual RTP (Reduction to Practice) actually making the invention 2. Proof of constructive 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 without compensation, 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 control for purposes of perfecting the invention will not bar the receipt of a patent under 102(b). Factors relevant are: 1. Length of test period 2. Whether payment is made by others who use the product 3. Whether users agree to keep it secret 4. Whether records were kept of progress 5. Whether persons other than the inventor performed the experiments or tests 6. How many tests were performed 7. How long the testing period was in relation to tests of other similar inventions Accidental Use Exception occurs when an inventor stumbles on the invention for the first time but is not immediately able to duplicate it Foreign Use Exception unpatented use without enabling disclosures in a foreign country is not a public use bar (iii) Provisional Application If someone puts your patented product on the market, you can pause the 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 a person having ordinary skill in the pertinent art as it existed when the invention was made. (ii) Looks at the relevant prior art to determine whether an invention would have been obvious at the time of invention, even if none of the prior art was identical.
(b) John Deere Test 3 factors need be considered (i) The scope and content of 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 skill in the pertinent art
(c) Secondary Considerations (i) Commercial success 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) Expert acknowledgments 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 would not be called useful, and therefore no patent. (c) Something that promotes illegal activity is not useful (cloning)
5) Often involves a series of correspondence between the USPTO and the application, which correspondence
may be used later to clarify the limits of the patent.
6) If rejected a second timefinal. VII. MAINTAINING THE PATENT____________________________________________ A. Maintenance fees paid every 3 , 7 , and 11 years or else patent cancelled (subject to stat. lim.) VIII. INFRINGEMENT_______________________________________________________ A. 271 whoever without authority makes, uses, offers to sell, or sells any patented invention, within US or
imports 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 patented article held by the . 2) Doctrine of Equivalents occurs when the infringing article performs substantially the same function in substantially the same manger to obtain the same result. A DOE claim is examined on an element by element basis in light of the file wrapper to determine whether any of the claims are equivalent. Not applied to 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 a substantial non-infringing use D. Who decides infringement? 1) Court (a) The construction of a patent, including terms of art within its claim (b) Markman hearings which are held for declaratory 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 useful B. 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 more
market 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 surrender of the invention to the public F. 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 the specifications are accurate; or 2) 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 caused material prejudice to the defendant. (b) If the delays sue for more than 6 years after the date he knows/should have known there is a presumption of laches.
2) Prosecution laches unreasonable and unexplained delay in prosecuting the patent application which may
bar 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 inferring that the patentee did not intend to
enforce his patent;
(b) The D relied on that conduct; and (c) Due to his reliance the D will be materially prejudiced if the suit proceeds 4) File Wrapper Estoppel patent owner estopped from later reclaiming subject matter which he gave up
during prosecution of the patent 5) Assignor estoppel patent owner estopped from challenging the validly of a patent he earlier assigned
X. REMEDIES_______________________________________________________________ A. Injunction -283 B. Damages - 284 C. Trebled - 284 (may be awarded for willful infringement) D. Attorneys Fees and Costs - 285 E. Time Limitation - 286 Six Year Rule prohibits recovery of damages for any infringements that occurred
more than 6 years prior to filing suit
Any course of conduct of the owner, including omissions, that causes the mark to become the generic name for the goods or services with which it is used (King-Seely Thermos v. Aladdin Industries) Otherwise lost significance as a mark
(a) The mark is not used exclusively as a certification mark (Midwest Plastic Fabricators v. Underwriters
Laboratories)
(b) If the mark registrant does not control or is unable to legitimately exercise control over the use of such
mark (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 assigned 2) Assignment must be in writing and should be registered with USPTO 3) No actual form for assignment B. Licenses 1) The duration for licenses (both exclusive and non-exclusive) are set by contract 2) 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) Actual confusion 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 the famous mark to evoke a mental association between the two; Degree of inherent or acquired distinctiveness Duration and extent of use 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 of recognition of the s mark vs. the alleged diluter Nature and extent of use of same or similar marks by third parties Whether the mark registered (ii) Such association has lessened the capacity (cause actual dilution) of a famous mark to identify and distinguish goods or services (Mosely v. Victorias Secret)
Can show a demonstrated loss of revenue Evidence that people will stop shopping at your store as a result 2) State Anti-Dilution Statutes (not preempted by Federal law) (a) must show: (i) has a distinctive mark that is capable of dilution (ii) Likelihood of dilution Judge Sweet Test Similarity of the mark Similarity of the product covered by the marks Sophistication of the consumers Predatory intent Renown of the senior mark Renown of the junior mark (b) Three potential scenarios: (i) Dilution by Blurring has a strong mark closely associated with the public as a business or as a source of a particular type of good or service; and Ds use whittles away or dilutes the strong association consumers have between that mark and the (ii) Dilution by Tarnishing Ds use of a similar mark casts the s distinctive and well-known mark or trade name in a bad light and thus tarnishes the luster of s commercial image or reputation Such as use in an unwholesome context out of context with s high quality image (iii) Likelihood of Confusion overlap C. Vicarious Infringement 1) D must have: (Hard Rock Caf v. Concession Services) (a) Control over the activity of the direct infringer; AND (b) Financial benefit (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 D suspect 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 or service (c) User must do nothing that would, in conjunction with use of the mark, suggest sponsorship or endorsement by the trademark holder B. Loss of Distinctiveness 1) Abandonment 2) Genericide 3) Naked License C. No Infringement 1) No Likelihood of confusion 2) No Likelihood of dilution
3) Defendant is Senior User D. Not Valid Trademark 1) Fraud in the Registration 2) Functionality E. Failure of holder to maintain Quality Control F. s Unclean Hands G. Not a Valid Suit 1) 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 confusion 2) May be narrowly tailored to 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 sales or injury to reputation/good will
(b) Typically need to show instances of actual confusion 2) 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 to prove the amount of Ds gross sales attributable to the infringement (c) Burden is on the D to prove 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 in good 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 mark 2) 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
IDEA MISAPPROPRIATION
I. BASICS___________________________________________________________________ A. Source of Law Common and State law
B. Scope of Rights 1) Address a claimed right to compensation for the Ds unauthorized use of the s idea 2) Duration is set by contract and may be indefinite
III.
DEFENSES
A. Idea was not novel B. Independent Development - We didnt use s ideawe used someone elses (Lueddecke v. Chevrolet) C. Idea was not concrete - Not thoroughly flushed out
IV.
PRACTICAL TIPS
B. Fosters the production of intellectual and creative works by providing the financial incentive for individuals to
expend 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 enrichment and deceptive trade practices
IV. INFRINGEMENT_______________________________________________________
A. Elements must prove 1) Commercial exploitation: might include (a) Use in advertising products or services (White v. Samsung) (b) Incorporating the likeness into a product (i) Three Stooges on t-shirts (Comedy III v. Saderup) (c) Commercial speech 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 of actual confusion (v) Marketing channels used by D (vi) Likely degree of purchaser care buyer sophistication (vii) Ds intent and good will (viii) Likelihood of expansion would the celebrity one day wish to endorse a similar product
V. DEFENSES________________________________________________________________
A. First Amendment 1) News, Editorial, Political Use may use celebrity image in non-commercial speech to comment on public figures 2) Transformative Does the work contain significant creative elements beyond mere imitation (Comedy III v. 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 for parody, satire, and criticism is generally not infringement of ROP C. First Sale Doctrine 1) If celebrity authorizes X to produce products bearing celebritys likeness, subsequent purchasers of the product have the right to resell them without any further authorization D. Valid License
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 Disclaimer D. Damages 1) Fair market value or reasonable royalty of Defendants use of s identity 2) Compensation for lowered demand for endorsements based on injury to celebritys reputation 3) Defendants profits so long as it does not lead to double recovery (some states) 4) Treble Damages Lanham Act 43(a) authorizes 5) Fees some to prevailing party, others to only prevailing plaintiff
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 which gives 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 novel B. Must be in continuous use in the claimants business III. DIFFERENCE FROM PATENTS__________________________________________
A. Trade secrets are an alternative to broadening the patent system B. Patent gives protection for only a limited amount of time after which the formula become public domain C. Trade secret is potentially unlimited in duration D. Trade secret also protects subject matter which could not be patented such as client lists or pricing information
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 permission 1) 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 contracts 3) Implied Contracts (a) If D has notice that the information which is to be disclosed is to be kept in confidence and D agrees to receive the information, or (b) If D does not object prior to receipt
VI. PROTECTING TRADE SECRETS_________________________________________ A. Express Agreement require employees to not disclose or use any trade secrets belonging to the employer B. 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 specific
areas (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
(c) The former employee or his employer cannot 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 dissipated B. 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 use 4) 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 advantage 2) 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 business 2) Extent to which it is known by employees and others involved in the business 3) Extent of measures taken by to guard the secrecy of the information 4) Value of the information to him and his competitors 5) Amount of effort and money expended in developing the information 6) 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 actual trade secret 2) D had notice that the information was a trade secret and was wrongfully acquired
3) 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 of commercial morality and reasonable conduct (b) Breach of confidence (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 competitor lawfully obtains the product, reverse engineering is allowed 2) 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 secret D. Bona Fide Purchaser Exception 1) One who receives another trade secret from a third person without knowing that it is a secret and the third partys disclosure was a breach of his duty to the other, or who learns the secret through a mistake without notice of the secrecy and the mistakeis liable to the other for a disclosure or use of the secret after the receipt of such notice (that it is a trade secret) unless prior thereto he has in good faith paid value for the secret or has so changed his position that to subject him to liability would be inequitable.
XI. REMEDIES_____________________________________________________________
A. Injunctive Relief
1) Modern Rule appropriate only for the period of time that the subject matter of the trade secret would have
remained 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 engineer or independently discover to determine the lead time 3) Few permanent injunctions issued as punitive measure B. Damages 1) Amount equal to the loss suffered by the holder; or 2) Gain realized by the person who misappropriated