Home‎ > ‎Classes‎ > ‎

Intellectual Property

HTML clipboard

Class cite: http://james.grimmelmann.net/courses/ip2009S/ (pdf)




Subject Matter Slides; Distinctiveness Slides



Exam: 3 essay questions / 4 double spaced pages per question (12 pt. Times New Roman) / Margin 1 inch

Review:  May 4th (Monday) @ 17.00 B310

Final (PDF) (TIFF)


Federal Court's interactive map: http://lawschool.westlaw.com/federalcourt/federalcourt.asp?appflag=38&mainpage=16&subpage=4

Office: 9-11 Tuesdays

Recommended Courses

  • Administrative Law
  • Conflicts of Law
  • Remedies



IP law bump up against each other.

Trade Secret

  • protects confidential information
  • informal (do not qualify for other federal protections)


  • Federal regime
  • doctrines are interrelated with infringements
  • Claims
    • define scope


  • Federal
  • expressions of idea
    • must be specific
    • cannot be an idea but an expression


  • State (using) & Federal (registering)
  • must be distinctive
  • cannot be descriptive of goods



Warner-Lambert v. Reynolds
Listerine Case

Inventor licenses the formula to pharmaceutical.  Problem: is the contract worthy of signing for Warner, but at the same time Reynolds does not to disclose formula.  Trade secrets prohibit Warner from making a profit out of secret.  Information is hard commodity.

Trade secret prohibits unethical business practice.  But not a general purpose solution, b/c others can free ride, while the one person is stuck with the contract.


IP is about incentives

  • why incentives?
    • Warner can reveal formula to others


Hypo: One person invented a novel.  There are 1 million readers who are willing to pay $20 a copy.  $1 costs to produce a copy.

  • value to society $19 million (net value to society)
  • cost to society $1 million
  • IP rights make it possible
  • if no IP rights
    • have "illegitimate" competition
    • at the end, the value would be close to the $1 / copy
    • if no profit, then no incentive, no creation
    • IP rights solve incentive problem (this problem is the one that courts have to balance)
  • Problem: a.k.a. incentive / access tradeoff
    • exclusive rights have costs
    • anti piracy laws cost society
      • they limit good things to small segment of population
      • society as a whole is worse off
  • Access incentive
    • stronger rights - more incentive
    • second generation - lesser incentive
  • Patents / Copyrights attempt to maximize societal wealth


Basis of the argument for trademark

  • drug stamp article from the supplement
    • serve as a quality proof
    • serve to state what it is (e.g. particular kind of drug)
    • problem: no trademark laws (not copyright laws)
    • result: people imitate popular brand (a.k.a. counterfeits)
      • result: reputation goes down quickly
      • people cannot trust trademarks
  • theory: consumer search costs
    • if you know the trademark you save time on
      • searching
      • informing
      • mistake cost reduction
    • society does not want to pay for search costs
    • but you're willing to pay for reduction of search costs
    • result: consumer and producer win

Main goal of the patent system is to prevent secrecy. 

Trademark is against innovation.



Trade Secrets

  • Means of protecting firm's commercial information
  • Particularly useful in process related inventions
  • Examples of trade secrets
    • customer list
    • business plan
    • marketing strategies
  • Novelty is not required (in Patents novelty required)
  • Requirement
    • Commercial Advantage
  • Lasting Period
    • remains secret, and
    • maintains value
  • State law (Patents are federal law)
  • Roots lie in
    • Property
      • utilitarian justification - provide incentives to produce valuable commercial information
    • Tort
      • deterrence of unethical commercial behavior (theft)
  • Cause of action
    • trade secret is acquired
      • by improper means
      • through a breach of a confidential relationship (in form of express / implied contract)
  • Defense against trade secret breach allegation:
    • reverse engineering (not available in patent infringement cases)
  • Enforcement
    • non-competition agreement
      • viewed skeptically by courts
        • balance of interest between the interest of the employer in maintaining the secrecy of its information against the interest of the employee of realizing his professional livelihood

Primary sources of trade secret law:

  • The Uniform Trade Secret Act (USTA)
  • Restatement of Torts


Greek fire - provided military edge to Greeks for many centuries

  • used same method that modern corporations use today
  • compartmentalization
    • limited people knew the information
  • nondisclosure agreement
    • emperor had to swear


  • security precautions are costly
  • secret is only as good as you can keep it


  • customer lists
  • processes (cooking recipes)
  • computer codes
  • business model (hotmail)
  • informal knowledge
    • know-how
  • needs to be valuably protectible - your business must have benefit

What do you, as a business, do to keep it secret?

  • confidentiality agreements
  • physical / electronic security
  • compartmentalize
  • non-competitive agreement
  • tell employees what is confidential (warn them)
  • put out products that does not reveal the process
    • buy domain names through shall companies

Commonalities of above: THEY ARE COSTLY

  • employees cannot do the job as efficiently
  • non competitive agreement
    • legal costs for enforcement
    • discouragement of persons to work there
  • security
  • need to be much more formal
    • slow to business
  • costly to society

Theories of Protecting Trade Secrets

  • Negotiations
    • impossible without protection of information
  • Incentives Theory
    • businesses cant keep it secret, or it cost too much - so don't bother to create it
  • Tort Theory (commercial morality theory)
    • Competitive practices are bad: sign up employees.  No ethical business should do that. 

Elements of Trade Secrets

  • common law
    • e.g. NY
  • statutes


  • Economic Espionage Act


  • Restatement of Torts
    • NY Follows
  • Uniform Trade Secrets Act


  • information valuable b/c of secret
    • actual secrecy (pg. 943)
  • subject of reasonable efforts to keep it secret
    • reasonable precautions (pg. 943)
  • defendant misappropriated that information by unfair means



Learning Curve v. PlayWood
7th Circuit (2003)
Trade Secret Case

Facts:  During the discussion of proposed business venture, which both parties agreed to keep confidential, PlayWood proposed the track model, and produced as sample.  Learning Curve asked to hold on to the sample, and was allowed to do that by PlayWoodPlayWood did not ask for a receipt for the cut track, nor did they seek a written confidentiality agreement to protect alleged trade secret: clickety-clack track.  Later, PlayWood discovered that Learning Curve was selling discussed product, and sent a cease and desist letter to them.  Learning Curve responded by seeking declaratory judgment that it owned the concept, and obtained a patent claiming on of Learning Curve employees (the one who received the track) as an inventor.  Learning Curve's track provided $20 million in sales by 1Q, and $40 million for combined track and accessory sales.

Procedural History:  in a jury trial, jury returned verdict in favor of PlayWood (found substantial evidence for misappropriation).  Judge, overruled the jury, and granted judgment as a matter of law in favor of Learning Curve. PlayWood appealed. 

Issue:  whether there was legally sufficient evidence for the jury to find that PlayWood had a trade secret in its concept for the noise-producing tract


IL Trade Secrets Act:

Trade secret is information, including but not limited to technical or non-technical data, a formula, pattern, compilation, program, device, method, technique, drawing, process, financial data, or list of actual or potential customers or suppliers, that:

  1. is sufficiently secret to derive economic value, actual or potential, from not being generally known to other persons who can obtain economic value from its disclosure or use
    • precludes trade secret protection for information generally known or understood within an industry even if not to the public at large
  2. is the subject of efforts that are reasonable under the circumstances to maintain its secrecy or confidentiality

Common Law Factors (Restatement of Torts) - instructive guidelines for ascertaining whether a trade secret exists under the Act

  1. the extent to which the information is known outside of the P's business
  2. the extent to which the information is known by employees and others involved in the P's business
  3. the extent of measures taken by the P to guard the secrecy of the information
  4. the value of the information to the P's business and to its competitors
  5. the amount of time, effort and money expended by the P in developing the information
  6. the ease or difficulty with which the information could be properly acquired or duplicated by others

Existence of the trade secret is a question of fact

Holding: PlayWood's concept could not easily have been acquired or duplicated through proper means


  1. the extent to which the information is known outside of the P's business
    • no similar track existed
    • D attempted to differentiate its track from that of its competitors unsuccessfully
    • P persuasively testified that his concept was unique
    • D attempted to obtain patent
      • to patent the invention it must be novel
      • trade secret need not be novel or obvious
  2. the extent to which the information is known by employees and others involved in the P's business
    • P was a small business
    • Only manufacturer (one person) knew of it otherwise
      • trade secret does not lose its confidentiality if it is disclosed to agents or servants, without whose assistance it could not be made of any value
    • D's knowledge was limited to corporate officers
  3. the extent of measures taken by the P to guard the secrecy of the information
    • must be reasonable under circumstances
    • were the trade secrets given as a result of a confidential relationship between the parties?
    • oral agreement is OK
    • did D (in the course of conversation) disclose information to P that can be deemed as confidential?
    • disclosee has the duty to maintain received information in secrecy
    • relative size and sophistication matters: was P less experience in dealing with trade secret matters than D?
    • the evidence must be viewed in light most favorable to P
  4. the value of the information to the P's business and to its competitors
    • did P's concept had value to both parties?
      • rise in revenues for D?
      • royalty potential for P
    • the fact that the concept (in form of the prototype) is unfinished / preliminary is irrelevant
  5. the amount of time, effort and money expended by the P in developing the information
    • significant expenditure of time and/or money in the production of information may provide evidence of value
      • significant expenditure is not required in all cases
        • example of cases where significant expenditure is required:
          • data compilations (customer list)
            • not creative or original
            • labor intensive
        • example of cases where significant expenditure is not required:
          • artistic designs spanning from intuitive flashes of creativity
    • would the value of the concept differ had the P spend more time and resources on its development?
  6. the ease or difficulty with which the information could be properly acquired or duplicated by others
    • did D spent time and resources to acquire this information (successfully)?
    • was the concept publicly available?
    • could the product have been reverse engineered?
      • reverse engineering can defeat a trade secret claim, but only if the product could have been properly acquired by others

Other notes:  seems to follow Restatement approach.  Court made a distinction between:

  • a trade secret that will be disclosed if and when the product in which it is embodied is placed on sale, and
  • a trade secret embodied in a product that has already been placed on sale, which allows for reverse engineering


Misappropriation is not the issue.  On the facts presented, PlayWood made a good case.

The issue is whether PlayWood has a trade secret at all (before establishing responsibility)

Establishing trade secret

  • Did the people outside of PlayWood know about the toy?
    • no, expert testimony
    • Learning Curve shot itself in a foot by filing a patent, and spent money for R&D; advertise as a brand new
    • Why does it make sense to keep something secret?
      • if it is not secret, you get false positives
      • if you can claim a trade secret in a pen, why bother inventing a better pen (incentives theory)
  • What information is at stake? How broadly was this information known?
    • smallest group possible
    • They told the toymaker, so it cannot be a secret?
      • but they had a oral agreement
      • unreasonable to acquire absolute secrecy
    • trade secret is not a substitute for keeping the stuff secret.
  • Measures taken by PlayWood to guard the secrecy?
    • did not tell anyone else besides the man who made it
    • did not market it
    • i.e. did not do anything dumb
    • only one prototype
    • they are small business
    • not much they could have done (therefore)
  • Value of the Concept to PlayWood and to its Competitors
    • idea is valuable
    • district court reason: prototype did not work properly (fault of reasoning: could be improved with trial and error): yes Learning Curve added some value, but it is the initial idea that worth a lot
    • damages are measured in terms of stolen business opportunities
  • Amount of Time, effort and money expended by PlayWood in Developing its Concept
    • very little: half an hour, less then a dollar
    • why time and effort matters?
      • goes into value of idea
      • tells us that it is worthwhile for the company to expend its resources
      • sign that one thought it is valuable to invest in it
    • court discounts this factor b/c of expertise (does not need to spend much time)
    • not important factor in idea cases (other cases such as customer list or other data intensive things are another matter - takes time to compile)
  • Ease or Difficulty of duplication or properly being acquired?
    • obvious only when you see it
    • if not made, hard to figure out
    • if the idea is valuable, but trivial, it is not likely to steal it

Bottom line: valid trade secret

Trade secret laws can protect things that are valueless on their own, but are valuable in context

  • valuable in the context of business

Case is about the idea that one single idea can be a trade secret.



Bondpro v. Siemens
7th Circuit (2006)
Trade Secret Case

Facts: P disclosed to D, in the course of negotiations, the process that dispenses with the certain step in manufacturing of electrical generators (process that dispenses with the female mold).  The negotiations resulted only in confidentiality agreement.  Thereafter, D filed a patent application on its own behalf without seeking a license for a process similar to P.  Patent Office rejected application.  D never used the process.  There is no evidence that other companies used P's process.


  1. whether the process was a trade secret, and (if yes)
  2. whether it was improperly disclosed to the world by D


A trade secret that becomes public knowledge (as a result of filing of patent application) is no longer a secret.  The unauthorized disclosure of a trade secret is unlawful, resulting in:

  • third parties lawfully taking advantage of info from patent application
  • D's liability to P for consequences of revealing P's trade secret to the world

Failure to take reasonable steps to prevent gratuitous disclosure forfeits trade secret protection from a process.

Theft of a secret gives rise to liability only when it is accomplished by:

  1. Tort, or
  2. Breach of Contract

Appropriation of a trade secret requires proof that the information constituting the secret derives independent economic value (actual or potential) from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use

Holding: Process does not have measurable commercial value.  Many of the elements of the process are already in the public domain.  D did not disclose a trade secret


Is there evidence of value of any use that others may have made of P's process? (no)

Did either P or D use the process commercially? (no)

  • Evidence of investment in the process development has little weight without the commercial exploitation of that process

Did P present evidence that would have enable the market value of this process to be estimated? (no)

Did P take measures to conceal its process? (yes)

  • confidentiality agreements with
    • employees
    • customers
    • suppliers
  • keeping the documents describing the process locked

Did P violate his contractual undertaking? No

  • if indeed a trade secret, then need for details is a must
  • P's process is described in general terms, which usually be widely known
  • P acknowledged that many elements are in public domain
  • P claimed that it is the precise execution of each element in conjunction with precise execution of each additional element that makes the process a secret - however P failed to express precise details

Patent Disclosure:

  • publication destroyed a trade secret

If Bondpro has a trade secret, part of the damage is what others can make of it.  Because Bondpro lost ability to license or sell it to them, it is part of the damages. 

It is tricky to define what the secret is?  They cannot define it.

Nexus; info X Y and Z was in my possession and was secret.  Defendant got it.  Bondpro could not show the linkages between the secret and the idea.

Other notes:

  • Under Uniform Trade Secrets Act (UTSA, ratified by over 40 states), to qualify as a trade secret the information sought to be protected must
    • provide its owner with economic value
    • not be readily discoverable through proper means
      • taking reasonable measures for securing the subject matter's secrecy is a must
  • Other definition of trade secret:
    • something that gives economic advantage over others [Restatement (Third) of Unfair Competition]
  • Bondpro was never actually able to say, with specificity, what it was that Siemens took from it. The court analyzes this as a matter of defining the secret. Another way to explain it is to say that Bondpro definitely has secret information, and it has valuable information, and Siemens took information from Bondpro. But Bondpro never showed that those three coincided on the same information. The SAME information must be secret, valuable, AND taken.



Incase v. Timex
1st Circuit (2007)
Trade Secret Case

FactsIncase was a manufacturer of watch cases for Timex.  Together they developed design (parties went back and forth with specs, design ideas, and at least 20 prototypes.  Timex never entered into a contract with Incase for the manufacturing of these units.  Then, it contracted a different company for the production of prototypes and relied on Incase's drawings.

Issue:  whether Incase took reasonable steps to preserve the secrecy of the price tag design

Law:  P must show:

  1. the information is a trade secret
  2. P took reasonable steps to preserve the secrecy of the information
    • there must be affirmative steps to preserve the secrecy of the information as against the party against whom the misappropriation claim is made
    • protecting a trade secret calls for constant warning to all persons to whom the trade secret has become known and obtaining from each an agreement, preferably in writing, acknowledging its secrecy and promising to respect it
    • to exclude the public from the manufacturing area is not enough
  3. D used improper means, in breach of confidential relationship, to acquire and use the trade secret

HoldingIncase had not presented any evidence that the information was secret or that it had taken reasonable steps to preserve the secrecy of the information.


No documents were marked as secret or confidential.   There was no security precautions or confidentiality agreements.  P did not inform D that the design was a secret.  VP did not tell anyone within the company the design is confidential.  P's principal designer did not think of the case as secret.  P's secrecy policy was never articulated to D

Other notes:

  • Duty to maintain secrecy
    • Pursuant to UTSA, trade secret information
      • cannot be generally known
      • reasonable efforts must be made to maintain the information secrecy
        • mark all proprietary documents (as confidential)
        • limit access to necessary employees
        • limit photocopying
        • limit electronic distribution
        • create passwords
        • lock away

S4 and S5

S4 is not a valuable protective secret.

S5 may be a secret.

Dispute regarding S5

  • Problem:  their behavior was not reasonable toward maintenance of secrecy.


  1. It is unfair to ask the law to help you when you did not bother to help yourself
  2. Perhaps the information really was not a secret
  3. If you're not treating it as secret, how are other people suppose to know that it is secret

May say that Timex may have an estoppel argument: did not tell us therefore we did not know

Need to ask following questions:

  • was it secret?
  • was D acting as it was secret?
  • did D do something wrong?

Secret idea is about reducing cost, but reasonable effort is costly: so need to make D to do at least some costly things


Problem 14-1

P asserts that D misappropriated the former's customer lists, which included customer phone numbers, addresses, and emails.  These lists were kept on P's password-protected server.  Only high-level sales reps. were given passwords.  P did not require its sales reps. to sign a confidentiality agreement, nor did it restrict access to paper copies of the customer lists, however, sales reps. were discouraged from printing customer lists.  Has P done enough to protect the secrecy of its customer lists?

No, there were no reasonable efforts - not a trade secret.  Case where second factor of Restatement becomes relevant.




Casebook 960–69 (Christopher, Stoneham)
Casebook 977–78 (note 1)
Assignments: Chicago Lock Co.
Supplement 4–5 (Flaming Moe hypothetical)


Misappropriation of a Trade Secret

Misappropriation Definitions (page 797)

  • acquisition acquired by improper means

Reverse engineering is not misappropriation

  • cannot derive from contract or tort

    • resemble both

Implied oral agreement (Learning Curve)

  • obligated by confidentiality because D said it is secret, or subject to confidentiality expectation

  • was the communication of confidentiality proper?

If the concept of the idea like in Learning Curve is secret, then working around the idea will not  let you off the hook

Purpose of duty of non-disclosure is to enable negotiations

  • scope of the duty is not to make commercial exploitation

  • you are allowed to use it and investigate it to help you decide whether to buy a license

    • e.g. buying software company v. developing knowledge in-house

Default Duty: free to have express contract that looks into the idea of product investigation


Other situations where one is under duty not to reveal someone's information:

  • attorney-client privilege

  • wills and trusts

  • doctor - patient

Have legal protections to preserve duty of confidentiality.

  • express agreement can override implied promise



Misappropriation cause of action must be based on

  • assertion that the D acquired the trade secret through improper means, or

  • breach of a duty of confidentiality based on contract

    • can be express or implied


Chicago Lock v. Fanberg
9th Circuit (1982)
Trade Secrets Case - Improper Means

Facts:  Fanberg, a locksmith, solicited for serial numbers of locks manufactured by P that were opened by other locksmiths.  Then, Fanberg published the information in a magazine that he made available for sale to anyone for around $50 (sold about $350 manuals).  Fanberg did not seek a permission from Chicago Lock to compile and sell the key codes.


  • Whether key codes were compiled through improper means
    • Whether the Fanbergs' solicitation for serial numbers from other locksmiths reverse engineering date is an "improper means" with respect to Chicago Locksmith
      • Whether individual locksmiths, from whom Fanberg acquired the serial number, owed implied duty to Chicago Lock not to make the disclosures


Trade secrets are protected only when disclosed or used through improper means.

Trade secrets will stop being "secrets" when

  • the owner divulges them
  • they are discovered through proper means
    • independent invention
    • accidental disclosure
    • reverse engineering

Basis for liability is the employment of improper means, not mere copying or use. Restatement (First) of Torts, Sec 757

Trade secret owner has a duty not to disclose the secret to others - the duty is owed to those from whom the secret has been confided under express or implied restriction of disclosure or nonuse.

Holding:  Chicago Locks' key code is not protected because they did not show breach of confidence between Chicago Lock and Fanberg; Chicago Lock and other locksmiths; Chicago Lock and lock purchasers.  Chicago Lock failed to show the use of improper means by the Fanbergs.

Reasoning:  Fanbergs reversed engineered a number of locks (and their respective serial numbers) on their own - means are proper.  They also obtained serial numbers from other locksmiths who themselves reversed-engineered locks (reverse engineering is proper means).

Fanberg may be held liable if he intentionally procured other locksmiths to disclose the trade secrets - intentionally procured to breach their duty of non-disclosure to Chicago Lock

Lock owners are in fiduciary relationship with lock owners, and owe a duty of non-disclosure to them if injured. Locksmiths do not owe duty to the Chicago Lock, the manufacturer.

Lock purchaser's own reverse-engineering of his own lock, and subsequent publication of key code, is an example of independent invention and reverse engineering expressly allowed by the trade secret doctrine.  Therefore the lock code was discovered through fair and proper means.


Fanbergs do a lot of correlation work and figure out key number on their own (used computer program).  Got info from other locksmiths who reversed engineered these keys themselves.  Based on that info, they created guide.

What is Chicago Lock doing to keep correlation secret?

  • will make it only upon identity proof
  • stamp keys "do not duplicate"
  • engage in physical security
    • keep it in headquarters
    • do not sell key "blanks"

Despite all of this, Chicago Lock can't use trade secret to keep out the info.

Theory, if you own the lock, you can do anything you want to analyze it.

Reasons for / against having that kind of a rule:

  • encourages ingenuity, encourage take-over culture, can modify / make it better
  • it is about property rights: you have weaker property rights over the lock if you can't analyze it
  • it preserves secrecy because you not looking at everything
  • encourages other business to take the product and make their own version
  • selling something publicly is incompatible with keeping it secret
  • reverse engineering minimizes invention costs

Argument against

  • costs of protection may outweigh the benefit
  • it is much easier to protect the processes than to protect the product
    • lock itself shows what the secret is

Chicago Lock pushing restrictions on the consumers

If the lock stated that you cannot reverse engineer it conditioned on the sale, only the purchaser bound.



DuPont v. Christopher
5th Circuit (1970)
Appropriation of Trade Secret through Improper Means Case

Facts:  D took aerial photographs of P's plant for an unknown client.  P found D, and upon refusal to surrender the photographs, sued for wrongfully obtained photos revealing P's trade secrets.  P claimed that it developed an unpatented process for methanol production giving them competitive advantage

Issue:  whether aerial photography of plant construction is an improper means of obtaining another's trade secret

Law: one who discloses or uses another's trade secret, without a privilege to do so, is liable to the other if

  • he discovered the secret by improper means
    • Proper means examples
      • Independent Research
        • to obtain knowledge of a process without spending the time and money to discover it independently is improper unless the holder voluntarily discloses it or fails to take reasonable precautions to ensure its secrecy
      • Reverse Engineering
  • his disclosure or use constitutes a breach of confidence reposed in him by the other in disclosing the secret to him (Restatement of Torts. Sec. 757)

Holding: D used improper means to obtain P's trade secrets, while P's efforts to keep the trade secret protected were reasonable under the circumstances

Reasoning:  to acquire secret by improper means, one does not to engage in confidential relationship, a trespass, or other illegal conduct - the scope is much broader.  D deliberately flew over the P's plant to get pictures of a process which P had attempted to keep secret.  While some things that are in plain view, or visible through binoculars do not necessarily imply protection, it is not right to require P to guard against the unanticipated, undetectable, or unpreventable methods of industrial espionage now available.

P's plant was under construction, because it was not completed, it was exposed, and would require unreasonable expenditures to keep it covered while in construction.

DuPont's process for making methanol is a secret.

Third party is interested in sequence of machines, which is visible.

Does Christopher commit a trespass? No

Christopher did not do anything legally wrong independent of the photography

Improper means "includes stuff that are not otherwise a tort" - one may not go around trade secrecy when one is taking reasonable precautions to preserve their secrets

What is reasonable precautions: putting up the fence

Would defining the law broadly make sense?

  • well, fence shows that you are serious on keeping secrets to yourself
  • signals everyone else to keep out
    • otherwise how will I know that this a a trade secret
      • aerial view will still show that the place is fenced, therefore persons on the plane will be on notice not to take photos
    • economic justification: if there was another less expensive way which DuPont could do but didn't, it could be held against them

In espionage cases one must consider

  • honesty
  • fair play

Court is asking:

  • whether it is ethical?

The guys in the airplane are there for one purpose only:

  • misappropriate trade secret
  • or hacking in to the computer for example

Christopher's are not competitors, it is the third party, however, they are still liable.  Is the third party liable? Yes

What should DuPont do to go after that third party?

  • compel Christopher's to name the third party (which court does)


UTSA definition of Improper Means

Theft, bribery, misrepresentation, breach of inducement of a breach of duty to maintain secrecy, or espionage through electronic or other means

Proper Means

  • reverse engineering
    • starting from the product and figuring out the techniques
  • independent creation
  • patent / literature searches
  • internet search

If obtained through proper means, USTA would not afford trade secret protection

If the information is knowable from a public source, it does not matter under UTSA if the competitor learns of the information from that source or from the party claiming trade secret protection.  The USTA approach is more protective of the public domain.



Rohm & Haas v. Adco Chemical
3d Circuit (1982)

Facts: D memorized P's trade secret and delivered it to a competitor.  D argued that there was not trade secret b/c the info was already published.

Law: information is subject to trade secret protection as long as competitors do not know or use the information (law requires actual knowledge of the competitor)

Holding:  D did not obtain information from publicly available sources


Confidential Relationship Defined (Restatement of Unfair Competition. Sec. 41)

A person to whom a trade secret has been disclosed owes a duty of confidence to the owner of trade secret if

  • the person made an express promise of confidentiality prior to disclosure of the trade secret
  • the trade secret was disclosed and
    • the person knew or had reason to know that the disclosure was intended to be in confidence, and
    • the other party to the disclosure was reasonable in inferring that the person consented to an obligation of confidentiality



Circuit (2000)
Non-compete Agreement Case

Facts: D, masters degree holder in marketing, held important position (int'l marketing) in the P&G which entitled him a lot of confidential knowledge of data and market research.  While in P&G, D signed an agreement to not compete with P&G for 3 years after the termination of his employment, in consideration of the company's stock options.  The agreement not to compete is optional in general, but is required if one wants stock options.  Also, as a part of all-employee requirement, D signed a confidentiality agreement when he was hired (in which he agreed not to disclose any of P&G confidential information or trade secrets).  Sometime after, D went to work for another company (Alberto-Culver) as an officer (president).  Alberto-Culver's hair product did compete with P&G's products. 

Issue:  whether D breached the non-compete agreement; whether D misappropriated trade secrets

Law:  Non-compete agreements that are reasonable are enforced.  Unreasonable are enforced to the extent necessary to protect an employer's legitimate interests

Raimonde Factors (to determine the enforceability of non-compete agreement):

  • Whether the agreement contains time and space limitation
  • Whether the employee is the sole contact with the customer
  • Whether the employee has confidential information and trade secrets
  • Whether the agreement seeks to limit only unfair competition or is designed more broadly to eliminate ordinary competition
  • Whether the agreement seeks to stifle the employee's inherent skill and experience
  • Whether the benefit to the employer is disproportional to the detriment to the employee
  • Whether the agreement bars the employee's sole means of support
  • Whether the skills that the agreement seeks to restrain were actually developed during the employment
  • Whether the forbidden employment is merely incidental to the main employment

Confidential: known to a limited few; not publicly disseminated

Trade Secret: information that

  • derives independent economic value (actual or potential), from not being generally known / readily ascertainable by proper means, by other persons who can obtain economic value from it, AND
  • it is subject of efforts that are reasonable under the circumstances to maintain secrecy

Trade Secret Consideration Factors:

  • the extent to which the information is known outside the business
  • the extent to which it is known to those inside the business
  • the precautions taken by the holder of the trade secret to guard the secrecy of information
  • the savings effected and the value to the holder in having the information withheld from competitors
  • the amount of effort or money expended in obtaining and developing information
  • the amount of time and expense it would take for others to acquire and duplicate the information

Holding: non-compete agreement was reasonable requirement of P&G


Non-compete agreement:

  • D had access to confidential information and trade secrets (Whether the employee has confidential information and trade secrets);
  • agreement sought to limit only unfair competition by prohibiting D's employment in the same industry branch with direct competitor (Whether the agreement seeks to limit only unfair competition or is designed more broadly to eliminate ordinary competition);
  • D could work at competitor's company at areas other than hair-care for the term of the non-compete agreement (Whether the benefit to the employer is disproportional to the detriment to the employee; Whether the agreement bars the employee's sole means of support). 
  • D's talents and knowledge were actually developed during his employment with P&G - i.e. masters degree in marketing does not count? (Whether the skills that the agreement seeks to restrain were actually developed during the employment);
  • three year limitation is reasonable as D's marketing information has useful life of 3-5 years (Non-compete agreements that are reasonable are enforced; Whether the agreement contains time and space limitation)

Trade secrets:

  • Evidence demonstrated that D was privy to massive amounts of trade secret information (the precautions taken by the holder of the trade secret to guard the secrecy of information);
  • It is not the data itself that is trade secret (it is available to anyone from marketing firm), but the analysis and interpretation that is confidential (the extent to which the information is known outside the business;
  • the value to the holder in having the information withheld from competitors; the amount of effort or money expended in obtaining and developing information; the amount of time and expense it would take for others to acquire and duplicate the information)

Unresolved questions:  There are two issues: non-compete agreement and misappropriation of secrets.  The court goes to great length to discuss that the information D handled was a trade secret, but does not talk about misappropriation in that context.  Does the court imply that working for competitor in the D's capacity is equivalent to trade secret misappropriation?  Or do the non-compete agreement and misappropriation of secrets are not mutually-exclusive terms?

Serve as a buffer-function.  More enforceable then other.  NY enforceable. CA is not enforceable.

D is allowed to go work for other company.

Entrap with something, will serve as evidence of compensation



Let’s All Go to Flaming Moe’s

Moe Szyslak is the owner of Moe’s Tavern, where the specialty drink is a “Flaming Moe.” Moe mixes the drinks in a back room, then sets them on fire in front of the customer.

(1) A representative from Tipsy McStagger’s Good-Time Drinking and Eating Emporium meets with Moe to discuss licensing the recipe. As part of the negotiations, Moe tells them how it’s made. Tipsy McStagger’s breaks off talks and start selling its own version. What result? 

Because the confidentiality agreement was not communicated by Moe, he will not have cause of action (Trade secrets will stop being "secrets" when the owner divulges them.  Chicago Lock)

On the other hand, McStagger's knew or had reason to know that the disclosure was intended to be in confidence - because they discussed licensing, and the other party to the disclosure was reasonable in inferring that the person consented to an obligation of confidentiality. Restatement of Unfair Competition. Sec. 41

When there is expectation of confidentiality, it must be kept confidential.  Moe is more likely to win this one.

(2) The Tipsy’s rep orders a Flaming Moe, pours it into a thermos, and uses a gaschromatograph to analyze its chemical composition. By so doing, they learn that the secret ingredient is cough syrup.  What result?

Moe has no cause of action because the trade secret was found through proper means - reverse engineering

Reverse engineering protects those who actually do it!

(3) The Tipsy’s rep goes to Moe’s Tavern and bribes a bartender to tell them the formula.  What result?

Since the bartender is in privy with Moe, Tipsy owes a duty of non-disclosure because the information was obtained through improper means

Misappropriation because the bartender has a duty of confidentiality.  Bar tender is induced - inappropriate means

(4) Same facts as in (3), except that anyone who tastes the drink can recognize that it’s cough syrup. Tipsy’s still bribes the bartender to tell them. What result?

A trade secret that becomes public knowledge (as a result of filing of patent application) is no longer a secret (Bondpro).  Because anyone recognizes that there is a cough syrup, it is a public knowledge, therefore means of acquiring it are not improper.  But, because Tipsy's did use the improper means to acquire, he owes duty of nondisclosure to Moe.

If it is public knowledge, it is not a secret, therefore it is not misappropriation to bribe the bartender.  Thing fails the test of being trade secret, and therefore even if improper means are utilized, there is no liability.

Independent invention is not reinventing patent

Reverse engineering is permissible

If the owner tells you info without duty of confidentiality - it is Fine

Fine to learn it from the third party who found it legitimately

Trade secret possessor lives in fear that someone else will discover it: this fear is one of the engines that drives you out of trade secret and into the patent.

If mistakes are not isolated, then it is evidence that you are not taking reasonable precautions


Part II : Patent


Casebook 655–62 (overview)
Casebook 685–93 (Datamize)
U.S. Pat. No. 4,800,666

Goal of patents

  • induce invention in exchange for limited monopoly
  • 20 year limitation period
  • you can have a patent, but be forbidden from doing anything in it
    • if you have a previous step in other patent patented
  • two incentive effects
    • incentive to invent
    • incentive to disclose


U.S. Pat. No. 4,800,666

  • patent is in public domain
  • if kid thinks of the same technique, and utilizes it - is it a patent infringement?
    • yes, if patent is not expired
  • References Cited
    • prior inventions
      • is there a difference by putting them in dirt as previous patent established
  • Patent Number: 4800666
    • sequentially numbered
  • Name: Lukehart Patent (top left corner)
    • or use last three numbers (i.e. 666 patents)
  • Date of Patent (Jan. 31, 1999)
    • date the patent begins
  • File Date: date he brought patent to US PTO (Feb. 26, 1988)
  • Expiration: Feb. 26, 1988 (filing date) + 20 years
    • before 1995, was 17years from the approval date - was abused by prolonging unnecessarily: wait until other similar patents come out and then sue
  • Claim (line 43): everything after is claim, everything before is specification
    • describe what things your patent covers
    • only the things that match one of the claims exactly would infringe
  • what is one uses 1/10 inch sand
    • ask
      • is it obvious?
      • is the claim new?
  • metes and bounds
    • description of intellectual space boundary
  • Relationship of Multiple Claims
    • 2 claims directed to device
    • 1 claim for process
    • each claim stands alone for validity and enforceability
      • if claim 3 fails, then claims 1 & 2 are obvious
      • each claim is a separate "shot" for infringement definitions
    • Claim 1 describes things, while claim 2 describes things within claim 1, then claim 2 is defined as a dependent claim
      • purpose of dependent claim
        • if claim 1 does not pass obviousness threshold, it goes away, but
        • because claim 2 is more specific, it has a better chance of survival
  • Claims have to be reasonably precise (not indefinite)
  • Specifications (written description) - Enablement
    • patentee properly disclosed how to use a patent
    • can the invention be used without "undue" experimentation
    • if the ordinary person can't figure out how to make this work then the claim is considered not to be enabling
    • if you claim broadly - you must enable broadly
    • must show your invention - know how to make it work
    • can't keep secrets
      • if you know how to make it work best, it is got to be in your description
    • Field of Search: 43/3 (fishing apparatus or methods), 55 (bait holders)
      • helpful indexing system
  • Definitiveness:
    • line 22: standard bait box: is it definite? probably "yes" for fishing person
      • if it was "unusual" bait box: it would be indefinite



Patent requirements

  • must be useful
  • cannot be
    • formula
    • nuclear weapon
  • must be novel
  • priority test
    • first to invent:  whoever invented first gets the right to patent (in the US)
  • statutory bar
    • if you wait too long you waive your right
      • e.g. sell for one year, then file patent
  • patent must be non-obvious
    • to person having an ordinary skill in the art must think it is not obvious
  • enabling requirement
    • describe the invention in clear enough terms that typical person would be able to make whatever patent describes
  • if you get a patent, you are not allowed to disclose critical details on how it works
  • under today's rules, patent term extends 20 years from the filing date


Patent Office Procedure

1790 - First Patent Act

  • even secretary of state had to do that
  • some did it to meet T. Jefferson

1793 - introduced registration form

  • did not work

1826 - examination system

  • puts US PTO in charge that your invention is new and useful
  • structure we have today

The basic mechanic is essentially universal around the world

  • Pluses
    • less frivolous claims


Software Patents

  • 1980s: first generation patents were bad


Patent Examining Procedure

  • critical date on the patent is the filing date
  • if too late can lose out on timing rules
  • want to file promptly
  • don't show up too early - may get rejected for lack of utility
  • must understand your invention, if don't then cannot get you the best claim
  • must understand uses, to relax your constraints
    • i.e. i/o worms use other invertebrates
  • you can amend you claims as you go on
    • but, the written description is frozen the moment you file
  • patent is given to examiner
    • check for mechanical correctness
    • look for disqualifications
    • do prior art search
    • figures out which claim can be around
  • rejection
    • give up
    • amend
  • if amended
    • approved
    • final rejection
  • Judicial Review
    • CAFC
      • exclusive jurisdiction over patent cases and appeals
      • trial in local district court leads to CAFC
  • Jobs / Title
    • patent examiner
    • patent prosecution
      • must pass patent bar
      • don't need to be member of the patent bar to do patent work
        • licensing
        • advisory
        • technical knowledge is helpful but not required




  • govt. issued grant
  • confers upon the patent owner the right to exclude others from
    • making
    • using
    • offering for sale
    • selling the invention into the US
  • for period of 20 years ending from the filing date of the patent application

Three types of patents

  • Utility
    • majority of patents
  • Design
  • Plant

No such thing as common law patent rights

  • can only be acquired by filing application with the US Patent and Trademark Office (PTO)

Patent is comprised of two parts:

  1. Description (a.k.a. specification)
    • disclosure of the claimed invention (teaching device)
  2. Claim
    • most important part b/c delineate patent owner's property right

Patent applications are published 18 months after filing, but only for applicants what are also seeking protection outside of the US

  • Patent Prosecution
    • process of applying for patent
  • Record Prosecution
    • record of the prosecution proceedings before the PTO
    • a.k.a. file history
    • done ex-parte
      • done only between the applicant and the examiner

Patent application is examined by an examiner who is trained in the patent area of that particular patent

  • needs to determine
    • whether invention is novel
    • whether invention is non-obvious
    • whether application satisfies the disclosure requirements
    • whether application meets the utility and subject matter eligibility requirements

Office action

  • sets forth the reasons for the rejection
  • applicant can either abandon  or submit an amendment
    • amendment may narrow claim

Final office action

  • 2d rejection of the application (i.e. rejection of the amendment)
  • choices of the applicant at this point:
    • make a request for continuing examination
    • appeal the decision to the Board of Patent Appeals and Interferences
    • file another application
    • abandon the application

Dependent claim may be added to independent claim

  • dependent claim incorporates all of the limitations to the independent claim on which it depends plus the limitations set forth in the dependent claim itself

A patent does not provide a right to make, use, and sell the claimed invention

  • Inventor I patents a chair having a seat portion, a back portion, and 4 legs.  Subsequently, Inventor 2 patents a chair having a seat portion, a back portion that reclines, and 4 legs.  Although Inventor 2 received a patent because reclining feature was novel and not obvious, he cannot practice his claimed invention because it would infringe Inventor 1's patent.
    • Infringement exists here because Inventor's 2 chair has all of the limitations of Inventor 1's patent claim - seat portion, back portion, 4 legs
    • While reclining feature may have allowed Inventor 2 to patent his chair in the light of Inventor 1's patent, the reclining feature does not save the inventor from infringement
    • By the same token, Inventor 1 cannot practice Inventor's 2's claimed invention
      • Solution
        • Cross-licensing agreement permitting each to practice their respective claimed inventions (assuming Inventor 2's invention is an improvement over Inventor 1's with greater commercial potential)


Four disclosure requirements

  1. Enablement
  2. Written Description
  3. Best Mode
    • specification
    • 35 USC 112(1)
  4. Definiteness
    • claim
    • 35 USC 112(2)
      • a.k.a. metes and bounds of the patentee's protected interest
      • establish the patentee's property rights
    • see Datamize v. Plumtree



Datamize v. Plumtree
Fed. Cir. 2005
Patent Definiteness Case

Fact:  Patent examiner rejected the claim as being indefinite for using the phrase "aesthetically pleasing."  The patent was for the software computer interface that user could design with predefined characteristics.  Use interface to write "aesthetically pleasing" kiosks.

Issue: whether "aesthetically pleasing" meets the definiteness standard

Law: Every patent's specification must conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 USC 112(2)

The purpose of definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude

  • definiteness requirement does not have to compel absolute clarity
  • definiteness claim depends on whether those terms can be given any reasonable meaning

Holding: in order for the claim term to be definite, it requires "objective anchor"  The patent's specification did not supply any standard for measuring the scope of the phrase "aesthetically pleasing"


The patent does not provide how one objectively could establish whether the interface is "aesthetically pleasing."  In the absence of a workable objective standard, "aesthetically pleasing" does not just include a subjective element, it is completely dependent on a person's subjective opinion.  The written description does not provide any reasonable, definite construction of "aesthetically pleasing"

The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual practicing the invention.  Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention

Questions that patent drafter must address:

  • which color combination would be aesthetically pleasing and which would not?
  • how does one determine whether a color combination is aesthetically pleasing?

Indefiniteness Test:  Only claims not amenable to construction or insolubly ambiguous are indefinite

Must have objective guidance.





  • Casebook 662–85 (O’Reilly, National Recovery Technologies, Gentry Gallery)


Enablement functions:

  1. information dissemination
  2. constraining claim scope

Enablement purpose:

Keep claimer on the leash - specification's enablement must commensurate with the scope of the claim (patent cannot claim more than it discloses)

  • must bear reasonable correlation to the scope of the enablement
    • specifications must enable a person having ordinary skill in the art to make and use the claimed invention without undue experimentation


O'Reilly v. Morse
US Supreme Ct. (1854)
Enablement Case

Facts:  Morse patented the telegraph, claiming, among other things: "I do not propose to limit myself to the specific machinery, or parts of machinery; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, letters, or signs, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer."

Issue: whether breadth of the claim (electro-magnetism) commensurate with the specification (specific machinery described)

Law:  patentee cannot claim more than he discloses (claim scope must  be commensurate with what is disclosed in the specification)

Holding:  the claim is too broad: (1) his claim also covers things he have not discovered (cannot claim more than you invented), and (2) his claim covers forces that his invention utilizes i/o being limited to the invention itself, and (3) he already had a patent for essentially similar instrument

Reasoning (J. Taney):  Morse claims exclusive rights to every improvement where the motive power is the electric or galvanic current that results in printing characters at distance.  To be sustained, the machinery claim is irrelevant, because if someone else invents simpler machinery it would constitute infringement.  Morse excludes other inventors in the area of electro-magnetism distance printing, while holding exclusively that right.  Morse can invent new machinery, and without disclosure to the public maintain that monopoly - that means that his claim is for inventions that have not been yet invented.

Furthermore, it is not the discovery of elector-magnetism, but the machinery that can effectively utilize electro-magnetism that Morse is responsible for.

And, Morse patented in 1846 "improvement of local circuits, by means of which intelligence could be printed at intermediate places along the main line of the telegraph.  The Morse Code is a mere variation of the machine he already patented, and therefore, is not entitled to a new patent by mere improvement of the former one.

Morse patented telegraph.  Writes 7 claims.  Then writes claim 8: broad, sending electro-magnetic messages over distance - signs.

What is wrong with claim?  he did not invent things that could be covered

What else is wrong?  he did not give the knowledge required to make this work (claim is broader than disclosure)

Morse has not invented any other ways therefore should not be allowed a broad claims for narrow disclosure.

Dissent (J. Grier):  One must focus on significance of the invention.  Improvement  in a known art is as much the subject of a patent as the art itself (policy argument).  Therefore, it is consistent with the goal of promoting technological innovation.

What is the harm to society if he does get a patent for invention?

  • monopoly on invention
  • no incentive to invent, although you can still can get a patent

What is the difference between the real world where claim is stricken down (vs. virtual upholding)? 

  • Morse walks away with more money.  Other, has a smaller invention incentive. 
  • Counterargument:  Morse's incentives would become smaller (bigger claims for ones result in lesser incentive for other to invent)

Proper balance between no patents and a monopoly?

  • Enabling doctrine: limit claim to what is actually described and invented

Other argument: Morse's invention is unique (revolutionary)



The Incandescent Lamp Case
US Supreme Ct. (1895)
Enablement Case

Facts:  inventor disclosed discovery  related to carbonized paper as a good incandescing conductor, but in claim sought protection for "carbonized fibrous or textile material"

Issue: whether breadth of the claim commensurate with the specification

Holding:  claim is much broader than specified: inventor  claimed a genus, but discovered a species

Reasoning:  inventor is entitled to protection of the species (i.e. paper), but the fact that the paper belongs to the fibrous kingdom did not invest inventor with sovereignty over this entire kingdom.  Inventor may not shut out others from any further efforts to discover a better specimen of that class then the patentee had employed, it would be an unwarranted extension of his monopoly, and operate rather to discourage than to promote invention.

The case arises out of Edison's invention of bamboo stick that allegedly infringed on the patent of carbonized paper.

Claims cannot be any bigger than what is actually invented


35 USC 112 (pg 935)

  • written description
  • enablement
    • need to understand the policy basis
  • best mode requirement


Exxon Chemical Patents Inc. holding by Board of Appeal for the European Patent Office

  • claims must be supported by the description
    • definition of the invention in the claims that needs support
  • extent of the patent monopoly should correspond to the technical contribution to the art in order for it to be supported / justified
    • definition of the claim should essentially correspond to the scope of the invention as disclosed in the description
    • claims should not extend to subject matter which, after reading the description, would still not be at the disposal of the person skilled in the art


Enablement Measured at the Time of Filing

  • compliance with the enablement requirement is judged as of its filing date (National Recovery)
  • filing date is proof of an inventor's latest date of invention
  • earlier one can show date of invention, the more likely it is that there will be less prior art available to competitors and PTO


Best Mode Requirement

  • patentee must disclose the best mode of practicing the claimed invention
  • purpose is to prevent inventors from obtaining patent protection  while concealing as a trade secret from public preferred embodiments of their claimed invention
  • Two Part Test
    • whether at the time of filing the inventor knew of a mode of making and using his invention that he considered best, (if yes) then
      • is it the optimal mode (subjective best mode)
    • Is the disclosure adequate to enable one of  ordinary skill in the art to practice the best mode or has the inventor concealed his preferred mode?
      • must enable (objective test)
  • No Duty to Update after invention is filed
  • Unique to the US
  • way to prevent patentee to hold on to trade secrets, and to disclose the whole invention
  • cannot keep the good chunk of information (essential information) to yourself
  • only kicks in when the inventor does think that there is no better way



Production Details

  • do not need to be disclosed
  • Two types:
    • equipment on hand or prior relationships with suppliers
    • details of production of which those of ordinary skill in the art are aware



National Recovery v. Magnetic Separation
CAFC (1999)
Undue Experimentation Case

Facts:  National Recovery appeals arguing that lower court required the disclosed specifications to world perfectly under all circumstances.  It argues that disclosure requirement must embody general principle and works.

Procedural History:  written description did not explain how to distinguish between signals that passed through irregular portions of the container and those that did not.  National Recovery failed to determine where irregularities existed in the container

Issue:  whether one of ordinary skill in the art may construct the instrument without undue experimentation


Enabling:  Patent specifications should enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation (35 USC 112)

Claim Scope:  the scope of the claims must be less than or equal to the scope of enablement

Enablement Scope: specifications + the scope of what would be known to one of ordinary skill in the art without undue experimentation

If, by following steps set forth in the specification, one of ordinary skill in the art is not able to replicate the claimed invention without undue experimentation, the claim has not been enabled as required under Sec. 112

Holding:  One of ordinary skill in the art would not be able to construct a machine that is capable of selecting signals without undue experimentation.  The specification of the patent does not enable one of ordinary skill in the art to practice the full scope of the invention embodied in the claim

Reasoning:  the claim broadly claims theoretical possibility while specifications point out to equipment limitations.   One of ordinary skill may not distinguish readings that did pass and that did not.  Inventor further attests that additional experimentation would be necessary (i.e. filed early).  Patent provides a starting point from which one of skill in the art can perform further research in order to practice the claimed invention, but is not adequate to constitute enablement.

The enablement portion does not tell you the process.  Claim says take a look at certain radiation, but does not tell you which exactly.  Makes you assume of the low rate of irregularity.

The patent is not enabled b/c it tells you very little how to take readings that correspond to regularities the way it is claimed

Undue experimentation: full scope of the claim must be practiced

Description has some utility (which is good enough): utility is low threshold. 

This case has a too broad claim: covers improvements on irregularities.

Undue experimentation is obvious because D could provide no guarantees


Undue Experimentation

  • some experimentation is permissible
    • that includes routine experimentation
  • if technology is nascent, it must be very specific


Factors in determining undue experimentation:

  1. the quantity of experimentation necessary
  2. the amount of direction or guidance presented
  3. presence or absence of working examples
  4. the nature of the invention
  5. the state of the prior art
  6. the relative skill of those in the art
  7. the predictability or unpredictability of the art
  8. the breadth of the claim


Automotive Technologies v. BMW
CAFC (2007)

Facts:  In patent involving sensing mechanism for deployment of airbags, claim included both mechanical and electronic sensors.  The specification enabled only mechanical sensors

Holding:  disclosure of only mechanical side sensors does not permit one skilled in the art to make and use the invention as broadly as it was claimed, which includes electronic side impact sensors.

Reasoning:  Electronic side sensors are not just another known species of a genus consisting of sensors, but are distinctly different sensor compared with the well-enabled mechanical side impacts sensor fully discussed in the specification



Written Description (a.k.a. WD)

  • Required under Sec. 112
    • the specification shall contain the written description of the invention
  • Serves as a check on patent applicants who wish to retain their original filing date
  • Addresses whether the  amended claims in the original application or new claims in the subsequent application have support in the original specification and, therefore, are entitled to the original filing date
  • Assures the applicant's claimed invention is entitled a particular priority date (date of invention) and prevents an applicant from later asserting that he invented that which he did not


Gentry Gallery v. Berkline
Written Description Case

Facts:  reclining sofas facing the same direction (to watch TV) are claimed on the patent.  It is hard to make because lever is on the side, so they put it on the console (between the two recliners).  D invented similar invention but hidden controls somewhere else.  P thinks console is a big deal.  D things it is not.  Disclosure regards the console as being the heart of the invention.  P claims dual recline sofas in general, but in disclosure it is only two reclining sofas with consol in between: description is smaller than the claim.  This is not an enablement case, because disclosure points that reasonable artist would be able to make similar thing (don't need undue experimentation).

Issue: did P actually invent couches that had control somewhere else

Law: must clearly convey to artist that the applicant has invented the all of the things claimed in the patent

Holding: no, the only P thought of is having recliners with console in between

Reasoning:  patent was predominantly focused on the console in between.  P did not regard itself on anything other then consol.

Written description is very minor part of the exam (one point versus enablement which is point)



Statutory Subject Matter and Utility

  • Casebook 693–706 (Chakrabarty)

  • Casebook 719–24 (Brenner)

  • Supplement 6–9 (Coonan, Juicy Whip)


Statutory Subject Matter

  • inventions eligible for patent protection
  • set worth in Sec. 101
    • include
      • process
      • machine
      • manufacture
      • composition of matter / useful improvement of matter
    • also includes things "made by man" (Chakrabarty)


Diamond v. Chakrabarty
US Supreme Ct. (1980)
Statutory Subject Matter Case

Facts:  D filed a patent for genetically engineered bacterium which is capable of breaking down multiple components of crude oil.  PTO rejected the claim for bacteria on the grounds that (1) micro organisms are products of nature, and (2) living things are not patentable subject matter under 35 USC 101. 

Issue: whether Chakrabarty's micro-organism constitutes a manufacture or composition matter within the meaning of the statute

Law:  Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title (35 USC 101)

Holding:  the discovery is not nature's handiwork but inventor's own; accordingly it is patentable subject matter under Sec. 101



  • manufacture
    • the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery
  • composition of matter
    • include all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they are gases, fluids powders or solids
  • The Committee Reports 1952 Act
    • Congress intended statutory subject matter to include anything under the sun that is made by man

Not Patentable

  • laws of nature
  • physical phenomena
  • abstract ideas
  • new minerals (naturally occurring)
  • new plants in the wild
  • combinations of naturally occurring plants (partial handiwork of nature)

Engineered Bacteria

New bacterium with different characteristics from any found in nature and one having the potential for significant utility

There is no exclusion of patentability for things that are alive.

Artificial life forms:  genetically modified corn

Argument for promotion or inhibition:

  • patent only certain process slow down
  • disclosure will promote research
  • many people will rush in to make genetic corn
  • people eating corn ought to know what they eat

Incentive effects get complicated very quickly.

Allowing something is like a official approval.  Should the state be handing out things that are immoral.

How much have to be invented, rather then discovered?

  • Note 4 (pg. 704-705)
    • a gene as it exist in the human body is not subject to patent protection, but a gene "isolated from its natural state and processed through purifying steps that separate the gene from other molecules naturally associated with it" is eligible for patent protection under Sec. 101
  • Parke-Davis Case (1911)
    • P was trying to patent adrenalin (pure form).  Adrenalin molecule existed for a long time.  P was first person to take the plant and extract out the pure adrenalin.
      • can get a patent on a process
      • it is not enough, someone can invent a different process
      • applies for a patent on a molecule itself (not allowed)
        • naturally occurring process rule
      • can't rely on the phrase invent (he did not invent) or discover (it was known for a long time)
      • this guy made it possible for people to use chemical
      • patent allowed: became useful for practical results (rewarded at isolating it and making it useful)
      • making something which existed and putting it in useful form counts! (exceptions)

Abstract ideas and laws of nature are not patentable.



Utility (Usefulness)

  • based on the IP clause of the Constitution
    • to promote the progress of the useful arts by granting patents
  • Statutory foundation
    • 35 USC 101
      • Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.


Brenner v. Manson
US Supreme Ct. (1966)
Patent Utility (Usefulness) Case

Facts:  Manson filed a patent claim for steroid.  PTO denied Manson's application on the grounds of failure to disclose any utility for the chemical compound produced by the process.  Manson replied that his steroids were undergoing screening for possible tumor-inhibiting effects in mice.  CCPA reversed PTO finding holding that a novel chemical process is patentable so long as it yields the intended product and so long as the product is not itself detrimental.

Issue:  is the chemical process "useful" within the meaning of Sec. 101 either (1) because it works, i.e. produces intended product? or (2) because the compound yielded belongs to a class of compounds now the subject of serious scientific investigation?

Law:  Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

It was never intended that a patent be granted upon a product, or a process producing a product, unless such product be useful.

Holding:  patent for the chemical process is denied because its utility has not been shown (patent is not a hunting license: it is not a reward for the search, but compensation for its successful conclusion)

Reasoning:  Courts rejects proposition that tumor-inhibiting effects in mice satisfies utility requirement - i.e. the lack of real showing that it indeed does have tumor inhibiting effects.  It defined useful invention as one which may be applied to a beneficial use in society, in contradistinction to an invention injurious to the morals, health, or good order of society, or frivolous and insignificant.

Patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute.  Until the process claim has been reduced to production of a product shown to be useful, the metes and bounds of that monopoly are not capable of precise delineation

What is wrong with patentability of the steroid process?  how close you have to be to make sure that patent works, court is not sure that this chemical works

  • must show that the chemical is out to do good (e.g. removing tumor)
  • must show that the stuff is actually works

Court found that the article itself is useless.  If end product is useless, then no patent would be granted.  At least one component has to work!

What is the claimant actually claim it does?  claims that another chemical like it inhibits tumors, also, they are working on testing that it really does inhibit tumor

  • cannot say that something like it works
  • also cannot say that you're still testing
  • really say that you do not have complete article
  • if the chemical did work on mice tumor, then it is possible it can work on people, than have a good argument for utility

Effect that the rule has on the research process: says no evidence that the cure is cancelled - what harm is done by giving this person a patent?

  • link between utility and enablement: if you can't prove it is useful ...
  • danger in having a monopoly on non-finished research

Progression in the research path:

Vague Idea --------------------------------------------------------------------------Every Result you can ask for


            person is about here
              not done enough lab work

So it is about timing.

At some point you get immediate well defined benefit.  Denial means that more work needs to be done.



Juicy Whip v. Orange Bang
CAFC (1999)
Public Morality Case (Disguised as lacking utility)

Facts:  Juicy Whip filed for a patent claiming post-mix beverage dispenser. The dispenser created an impression that the principal source of dispensed beverage was the bowl, while in fact the machine mixed the beverage immediately before it was dispensed.

Law: and invention is "useful" if it is capable of providing some identifiable benefit.  It must not be injurious to the well being, good policy, or sound morals of society. 

Issue:  whether the fact that it gives misconception to users that the drink is not mixed by the machine but in the bowl (while it is mixed by the machine) renders it useful for the purposes of patent law

Holding:  inventions cannot be ruled un-patentable for lack of utility simply because they have the capacity to fool some members of the public

Reasoning:  it is ok for one product to imitate another product (jewelry, leather).  Much of the value of such products resides in the fact that they appear to be something they are not (hence utility).  Post-mix dispenser meets the statutory requirement of utility by embodying the features of post-mix dispenser while imitating the visual appearance of a pre-mix dispenser.

The requirement of utility in patent law is not a directive to the PTO or courts to serve as arbiters of deceptive practices.

Old line of 19 century cases that did not allow gambling devices.  Now we became more tolerant.

Immorality argument: fooling consumer (the only application is to trick consumers)

Argument that it is useful for other things (then tricking consumers):

  • this is not the juice machine with secret compartment, but an ordinary soda fountain that was modified to dispense drinks
  • ordinary machine that shows what the drink is like, but is more sanitary

Argument that PTO has no business to police morality:

  • institutional argument: no guidance on new and useful
  • it is business of legislative branch
  • other branches like FTC and FDA are better equipped to determine the morality / deceit
    • they specialize in determination and penalties

Broader Holding:

  • there is no public policy exclusion for statutory utility
  • J. Story:
    • Invention cannot poison people, promote debauchery (orgy), or to facilitate private assassination
      • it is not inventions, but the people who do that
  • If invention has one real use, it is enough to support a patent
  • If has other uses, then provide broader claim
  • The fact that it can have immoral uses, it does not negate its utility

Pretty much anything can be useful.  Is there anything that is not substantial enough that can be useful? Hard to think of

Court's phrase: specific and substantial utility

Utility rejections:  genetically modified mouse $10000 on the basis of the utility as snake food?

  • how about testing out for drugs
  • in the future of easy genetically modification: mice that has good taste for snakes
  • utility must be based on patented invention
  • inventor is trying to avoid doing the hard work by showing invention works, inventor makes some sham reason
  • inventor has the burden of showing that the society would find it useful
  • the invention lacks "specific" utility because the the use doesn't depend on the specific features of the invention (i.e. the extensive genetic modification)
    • Any other mouse would work just as well, which tells us that the supposed use is a sham.

Utility Summary:

  • invention needs utility that can be minimal and that it actually works
  • cannot manufacture utility of useless stuff like snake food or a step in the research
  • there is not special exclusion for immoral inventions (deceptive inventions are OK)



Novelty, Priority

  • Casebook 725–45 (Rosaire, Griffith, Fujikawa)

Who invented something new or available?

Who gets the patent?

Sec. 102(a) (pg. 935)

A person shall be entitled to a patent unless the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.

Worm Patent (Lukehart)

  • prior art anticipates the claim - invalidates it for being not novel
  • somewhere out there there is another similar patent application
  • the worm patent would be denied
  • as long as one reference is in the patent already filed, it would invalidate later filed claim
  • If Lukehart's article is out there it invalidates claim one
  • What about claim 2
    • Claim 2 may survive claim 1 because it is more precise
    • no per se rule that dependent claim will automatically fail


  1. Novelty is claim by claim
    • dependent claim can be saved even if independent claim is too broad
  2. Claim is found if single prior art reference discloses all its limitations
  3. Patent may invalidate more general claim 1, but not necessarily claim 2 which is more precise



35 USC 112.  Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless:

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent

  • proving the date of invention
  • "known or used" means that the knowledge alone can defeat novelty
  • in light of Rosaire, publicity requirement must be understood as the absence of secrecy
    • but, mere absence of secrecy is not enough, and court may consider other things
      • physical evidence of prior knowledge
      • relationship of witnesses
      • passing of time

(e) the invention was described in

(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or

(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent,

except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language;

  • when the invention is deemed "known or used" by third party

(g)(1) during the course of an interference ... another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or

  • Interference
    • administrative proceeding within PTO
    • the process by which priority is determined

(g)(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

  • Priority provision, which is invoked when two or more parties are claiming the same invention
    • each party involved in a priority contest is asserting he invented first
    • asking PTO / court to award priority invention to him
  • General rule to award priority
    • the party A to reduce to practice is the fist to invent and is awarded the patent, unless
      • the party B was
        • last to reduce to practice, but
        • was first to conceive, and can show
          • reasonable diligence (see Griffith, Fujikawa)
  • Abandonment / suppression / concealment
    • see Griffith, Fujikawa


All subsections above do not decide the issue of which party is entitled to the patent, but whether some third party knew or disclosed the applicant's claimed invention before the applicant himself invented, thereby defeating novelty


Proving Invention Date


When two or more parties are vying for a patent on the same invention, the patent is awarded to the party who invented first, not the party who filed a patent application first (a.k.a. first-to-invent principle)


  1. First & true inventor (first to reduce the invention to practice)
    • where more then one party is seeking a patent on the same invention
      • a party who was second to reduce to practice is first & true inventor, but must
        • show that he (i.e. party second to reduce the invention to practice) was first to:
          • conceive the invention, and
          • exercised the reasonable diligence in reducing his invention to practice
            • deals with the question what the party was doing between conception and reduction to practice
              • measured from the time just prior to conception of the party who first reduced to practice (Party B) and ends at the reduction to practice date of the party who first conceived (Party A)

                                                                      |________________Diligence Kicks In_______________|

          A Conceived                         B Conceived                    B reduced to practice                 A reduced to practice

          • if Party B cannot prove its conception date, then the conception date is merged with reduction to practice date
          • inventor does not need to show continuous effort
            • ongoing lab work may be deemed sufficient
            • inventor must show that he was pursuing his goal in the reasonable manner
  2. Reduction to practice (a.k.a. RTP) is shown if the inventor can prove that the invention works for its intended purpose
    • Two types of RTP
      • Actual RTP
        • occurs when the invention is shown to be suitable or work for its intended purpose
          • i.e. physically made or tested
            • e.g. prototype
        • actual working conditions are not required
        • lab test is deemed sufficient
        • neither perfection nor commercial viability are required to show actual reduction to practice
      • Constructive RTP
        • applicant never built or tested his invention but satisfied Sec. 112 disclosure requirement
          • Policy
            • encourage early disclosure
            • actual testing may delay the disclosure
        • inventor  will not be entitled to a prior date of invention if he only came to appreciate his discovery at a later time
  3. Conception is proved through the presentation of corroborated evidence that the inventor formed in his mind a definite and permanent idea of the complete and operative invention (as it is applied to practice)
    • Corroborating evidence is evidence that tends to support a proposition that is already supported by some evidence


Known or Used

Rosaire v. Baroid
5th Cir. (1955)
First & true inventor (first to reduce the invention to practice) Case

Facts:   In 1949, Rosaire filed an infringement lawsuit against Baroid.

Players involved:


  • patented the method for prospecting for oil in 1936 
  • admits that Teplitz conceived the idea first, but did not publish it or otherwise give the public the benefit of the experimental work
    • in my opinion a wrong move,  b/c under the first & true inventor fundamental principle, the party that is second to reduce the invention to practice must show that it was fist to conceive the invention in order to qualify for first & true inventor status


  • began using the same method as in Rosaire patent in 1947
  • contended that Teplitz work invalidated Rosaire patents because it was used before the Rosaire invention


  • an unrelated oil exploration company, use the same method as in Rosaire 1936 patent, throughout 1935 and 1936
  • did not apply for patent until 1939

Procedural History:  Trial court held that patents were invalid because Teplitz used the same method as in Rosaire's patent claim before Rosaire filed for a patent (I think that Rosaire's lawyer should have argued that Rosaire conceived the invention before Teplitz).  The Teplitz work was a successful trial of the prospecting method and a reduction to practice of that method.

Issue:  whether the work of Teplitz was an "unsuccessful experiment" (which would establish validity of Rosaire patent claim, if true), or was a successful trial of the method patented (which would render Rosaire patent unenforceable)

Holding:  Rosaire patent is invalid because Teplitz was the fist & true inventor, as he demonstrated by the reduction of his invention to practice (RTP)

Reasoning:  Appellate court agreed with trial court's finding that the Teplitz method was a successful experiment.  The Teplitz work was not carried forward was not due to unsuccessful experiment, but due to examine data that resulted from Teplitz methodology.  Teplitz does not have to publish his work so long as his invention is practiced in the ordinary course of business.  Public knowledge (of Teplitz invention) must not be shown to invalidate the patent.

If A invents before B, B cannot get the patent

Two issues: (1) did Teplitz actually invented it; (2) concern for it being unpublished

Reduction to practice is the critical date: date when you can actually show that the idea works

Secrecy problem: does anyone know that this works

  • Not outside the company
  • Why court says it does not matter?
    • did the first inventor affirmatively keep it secret?
      • no secrecy or instructions thereof
      • it was done in a way that could have made public aware
  • What would Teplitz have to do to make it NOT count?
    • try to keep it as trade secret - make reasonable efforts to maintain secrecy
  • Even if no member of public can actually learn, there is a broad policy that looks for establishment that somebody knows that you're using it


Proving Lack of Novelty

  • requires each and every claim limitation to be disclosed in a single reference (identity of invention)
    • single reference does not have to explain every detail of claimed invention
      • considered together with the knowledge of one of ordinary skill in the pertinent art
  • Novelty v. Non-obviousness
    • when proving novelty, you must use single reference, when proving non-obviousness you may combine references



First thing you do is draw a timeline

  • date parties file for patents

    • A files

    • B files

  • first to file basis is n/a in US - first to invent basis, which depends on reduction to practice

    • if B reduced to practice first, B can win priority dispute

Diligence requirement

  • exception to the reduction to practice

If you were first to reduce to practice and first to conceive, you got the patent

If B conceives first, but reduces last - diligence of B kicks in

  • from competitors conception to reduction to practice

The person who is second to reduce prevails if they were first to conceive and were diligent from the time opponent conceives to the time the product is reduced to practice



Griffith v. Kanamaru
CAFC (1987)
Reasonable Diligence Case

Facts:  Patent was filed for aminocarnitine compound (useful in diabetes treatment) by Griffith and Kanamaru.  PTO found that Griffith failed to establish reasonable diligence by failure to explain inactivity between 06/15/1983 and 09/13/1983. 

Griffith argued that the delay was caused due to (1) funding from Cornell University, and (2) due to him waiting for another person to join his research team

Date Griffith Kanamaru
06/30/1981 Conception  
11/17/1982   Period for which reasonable diligence must be established Filed for patent - constructively derived from RTP date is the conception date (b/c conception was done overseas)
01/11/1984 Reduction to practice  

Public Policy:  public policy favors early disclosure

Issue: whether it is reasonable for (1) Cornell to require public to wait for the innovation, and (2) whether it was reasonable for Griffith to wait for a particular RA

Holding:  convenience of timing of the semester schedule does not justify 3 month delay (not reasonably diligent) and Cornell's policy of funding only makes the point that Cornell consciously chose to assume the risks.  Furthermore, Griffith delay was caused by work on other projects and funding proposals which point to the fact that aminocarnitine research was a second or third priority.  Therefore, Griffith failed to establish reasonable diligence or a legally sufficient excuse for inactivity.  Kanamaru has patent priority over Griffith


Caselaw deems excuses to be reasonable / unreasonable as follows

  • Reasonable

    • attorney delay due to work on related applications

    • inventor does further testing

    • outside interferences (i.e. poor health, daily job demands, family responsibilities)

  • Unreasonable

    • vacation due to relative's illness

For court to consider the excuse of waiting for RA, Griffith needs to demonstrate

  • that he faced genuine shortage of personnel (not demonstrated here)

  • that particular RA was the only person capable of conducting experiment

For the court to consider the excuse of Cornell's funding limitations, Griffith needs to demonstrate

  • genuine hardship (as opposed to educational custom not to commercialize the research activity)

  • in reference to Harvard President's article articulating that diligent reduction to practice, to satisfy the patent laws, may interfere with a faculty member's other duties, can be inferred as that Cornell has consciously chosen to assume the risk that priority in the invention might be lost to an outside inventor

Griffith put aside the aminocarnitine experiment to work on other projects and grant proposals.

Was Griffith diligent? No



Fujikawa v. Wattanasin
CAFC (1996)
Suppression / Concealment Case (Abandonment)

Facts:  Fujikawa filed for patent for compound and method for inhibiting cholesterol biosynthesis in humans and other animals.  Wattanasin challenged Fujikawa patent claim on priority grounds.  Fujikawa could not claim his conception and reduction to practice date because his activities were done outside of US (Sec. 112(g)(2):  A person shall be entitled to a patent unless before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it)

Timetable of Events:

Date Wattanasin / Sandos (Wattanasin's Employer) Fujikawa
1979 began searching for drugs which would inhibit the biosynthesis of cholesterol  
1982 Wattanasin assigned to the project  
1984-1985 synthesized three compounds  
1985-1986 no activity - shelved the project  
01/1987 second phase began, interest revived  
08/20/1987   effective date (i.e. patent filing date) b/c inventive activity occurred overseas: RTP and Conception Date
10/1987 reduction of invention to practice for the compound  
12/1987 reduction of invention to practice for the method  
01/1988 Committee decided the invention was ripe for patent  
01/1988-05/1988 Gathering Data for patent  
latter half of 1988 drafting the patent  
03/1989 filed for patent  

General Law:

Sec. 102.(g)(2) Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

======================================================================== (part IV)

Issue:  whether Wattanasin intentionally suppressed or concealed his invention between the time he reduced to practice and the time he filed his patent application (question of law)

Law:  inventor deliberately suppresses or conceals his invention (Sec. 112(g))

  • requires more than the passage of time

  • requires evidence that the inventor intentionally delayed filing in order to prolong the period during which the invention is maintained in secret

Holding / Reasoning:  Fujikawa presented no evidence that Wattanasin delayed filing for this purpose

========================================================================  (part IV)

Issue:  whether 17 month period between the reduction to practice of compound, or the 15 month period between reduction to practice of the method, and Wattanasin's filing justify an inference of suppression or concealment (question of law)

Law:   inventor deliberately suppresses or conceals his invention (Sec. 112(g))

  • there was too long a delay in filing a patent application

    • it is not the time elapsed that is controlling factor but the total conduct of the first inventor

Holding:  Wattanasin was able to persuade the court that albeit there were 3 months (out of 17) of unexplained delay, Wattanasin's employer was slowly moving towards filing application.  The court concluded that it could not infer suppression or concealment from looking at the totality of circumstances

Reasoning:  Wattanasin engaged in significant steps toward perfecting the invention and preparing an application during 17 month period.  During that period testing was taking place (2 months).  As soon as the testing was complete,  Wattanasin's employer patent committee approved Wattanasin's invention for filing (1 month).  Then collection of data for patent application took place (5 months).  By August (3 months later), Wattanasin's employer lawer began drafting application through March next year (7 months). The only unexplained period is 3 months (May - August)

======================================================================== (part IV c)

Issue:  whether the fact that Wattanasin reduced compound count to practice in 1984 and waited for over four years before filing a patent constitutes suppression or concealment

Law:  suppression and concealment could be negated by the renewed activity prior to and opposing party's effective date (is effective date filing date of the patent?)

  • it that is the case, than the party can no longer rely on the original date of reduction to practice to establish priority (can the party rely on the date of conception?)

  • can only rely on the date of renewed activity

Legal Policy Argument:  Concern that denying an inventor the benefit of his renewed activity, might discourage inventors and their supporters from working on projects that had been too long set aside, because of the impossibility of relying, in priority contest, on either their original work or on their renewed work

  • to rely on renewed activity for purposes of priority would encourage the manager to fund the additional research

  • denying an inventor the benefit of renewed activity would discourage the manager from funding the additional research

Holding:  Wattanasin returned to his abandoned project before Fujikawa effective date and worked diligently towards reducing the invention to practice a second time


Abandonment: something that you do after RTP but before you file

Theory: if you abandon / suppress / conceal between RTP and Filing you lose your priority.  You get your priority only after you resume the process at the date you have resumed.

Abandonment is much more lenient standard then Diligence standard.  Once your succeed, once your file shows that you got it, you can proceed with much more lenient speed.

Fujikawa tried to argue that the opponent conceived in 1984

One that reduces but abandons, loses priority, and receives date from the time you resume



Statutory Bars

  • Casebook 773–801 (Space Systems, Egbert, Lough, Klopfenstein)

Statutory construction (pg. 935):

  • drops words by others - includes your actions

The purpose of the statute:

  • make sure inventors are diligent
  • if it is in broad public use, there is no point for patent

Why would someone would choose to delay to file a patent?

  • competition
  • cut off rights / but give some leeway
  • RTP
  • need time to get the patent application right
  • some things want to preserve trade secret

Once not to patent decision is made, it would not serve good for society to patent it at a later point.  It is not just about just getting there - your own actions can trigger it

  • public display
  • push for disclosure (not at your convenience)


Novelty v. Statutory Bar

  Novelty Statutory Bar
Section Sec. 102 (a) Sec. 102(b)
Who Concern with what others have done Concern with what anyone have done
When Something that occurs before the invention Something that occurs before one year before filing
What Actions that trigger:
  • known or used (Rosaire)
  • when something is patented or printed publication
Actions that trigger:
  • public use (Corset Springs, Motor Case)
  • when something is patented
  • when something is printed publications
  • when something is on sale



35 USC 102(b)

  • Inventor will be barred from obtaining a patent if more than one year before the filing date of his patent application, he or a third party
    • sells
    • offers for sale
    • publicly uses the claimed invention

    in the US, or

    • patents, or
    • describes in a printed publication

    the claimed invention anywhere in the world


  • statutory bar operates independent of novelty
  • focuses on third party activity prior to the critical date


On Sale Bar

Space Systems v. Lockheed
CAFC (2001)

Facts: Space Systems (Ford) conceived the idea of making fuel efficient technique for position correction of space satellites, and before putting it to practice, sent the proposal to a French company.  Then, took months for testing and RTP, then filed patent after RTP

March 19, 1982 Proposal
April 21, 1982 Invention
April 21, 1983 Critical Date

Issue:  whether the critical date starts from the time of sales proposal but before RTP, of after RTP. 

  • Whether what they offered for sale is the same thing that sold?

Law: (Prof says not to worry about the Pfaff test)

Pfaff test:  two ways to show that an invention is ready for patenting are

  1. if it has been actually reduced to practice, or
    • patentee has an embodiment that meets every limitation and operates for its intended purpose
      • an invention works for its intended purpose when there is demonstration of the workability or utility of the claimed invention
  2. if prior to critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention
    • must ask yourself if the inventor is able to prepare a patent application that would comply with the enablement requirement of Sec. 112

Holding:  for complex inventions a bare conception that has not been enabled is not a completed invention ready for patenting

Reasoning:  RTP is not necessary in every case.  To be ready for patenting the inventor must be able to prepare a patent application  - that is to provide an enabling disclosure requirement.  When development and verification are needed in order to prepare a patent application that complies with Sec. 112, the invention is not yet ready for patenting

Other Notes:

  • Meaning of commercial offer for sale:  the offer must meet the level of an offer for sale in the contract sense as understood by the commercial community
    • a communication that fails to constitute a definite offer to sell the product and to include material terms is not an offer in the contract sense (Restatement)
  • On-sale bar does not arise from assignment that is executed to raise funds to be used to further develop or refine the invention
  • Selling the patents itself v. selling what is claimed in the patent
    • Selling patent is selling property rights, with their right to exclude - it does not invoke Sec. 102(b)
      • Sec. 102(b) relates to the sale of the product, not prospective licensing activity
  • Sale Subject Matter
    • an inventor does not run afoul of Sec. 102(b) if he offered for sale something significantly different than what he claimed.  If what is claimed is different from what is offered for sale, that the offer for sale is not covered by that claim (Sparton)

It does not matter if you actually sold it

  • commercial offer for sale
    • if you miss a key part of the invention, then sale bar does not apply
    • if it does not include limitations in the claim, any limitations, sale bare is not triggered
    • e.g. Lukehart starts selling boxes only
    • Did you put that device as a commercial offer for sale


Public-Use Bar

Egbert v. Lippmann
US Supreme Ct. (1882)

Facts:  The case arose out of an infringement complaint of the patent for the corset-springs improvements.  The defense to the infringement was the prior public use.  The springs were used by inventor's wife.

Issue:  whether the use of corset-springs by inventor's wife constitutes public use

Law:  to constitute the public use of an invention it is not necessary that more than one of the patented articles should be publicly used.  One well-defined case of such us is just as effectual to annul the patent as many.

  • the donee / vendee, should be able to use the invention without limitation / restriction / injunction of secrecy
  • use must be public
  • knowledge may be confined to one person only

Holding:  Public use will be found when one person other than the inventor, engages in one non-private use of the article

Reasoning:  Inventor gave her corset steels without obligation to secrecy.  The springs were not presented for the purpose of experiment, nor to test their qualities.  The use of corset springs by inventor's wife does constitute public use and the inventor slept on his rights for 11 years

Dissent:  because it is a wife of the inventor, and the nature of invention is usually closed to the public eye, it should not be considered a public use

Other notes:

  • minimalist approach because the public use was inventor's (Barnes') wife
  • Sec. 102(b) is applicable when a third party, unbeknownst to the inventor, publicly uses or sells the invention
  • It is irrelevant under Sec. 102(b) if the invention were pirated or fraudulently obtained by a third party who then used or offered  the invention for sale

Two corset springs is enough? Yes

Is one person enough? Yes

If it cannot be seen - that does not matter

Actions that are consistent with trade secret, can still start the public sale bar

Either people learn about this from his disclosure, or someone else invents it - can't sleep on your right



Experimental Use

Lough v. Brunswick
CAFC (1996)

Facts:  Lough was a marina worker.  While servicing the boats, he noticed corrosion on stern drives.  He devised a seal that would eliminate the corrosion. Then Lough distributed 6 prototypes to friends, co-workers, and acquaintances in spring 1986.  On June 1988 he filed the patent, which was issued on 1989.  Brunswick learned of Lough's invention, designed an improved seal, and began marketing it.  Lough sued Brunswick in 1993 for infringement.  Brunswick claimed that Lough's invention was in public use before the critical date.  Lough maintained that the invention was not a public use but an experiment.

Issue:  whether six prototypes in 1986, prior to the critical date, constituted experimental use so as to negate the conclusion of the public use


  • One is entitled to a patent unless the invention was in public use in this country more than one year prior to the date of the application for patent in the US. (Sec. 102(b))
  • Patentee may negate showing of public use by coming forward with evidence that its use of the invention was experimental
  • Lough Factors
    • number of prototypes and duration of testing
    • whether records or progress reports were made concerning the testing
    • the existence of a secrecy agreement between the patentee and the party performing the testing
    • whether the patentee received compensation for the use of the invention
    • the extent of control the inventor maintained over the testing
      • most critical factor
        • if the inventor has not control over the alleged experiments, he is not experimenting

Holding: in order to negate public use through experimental argument one must show demonstrate Lough Factors, especially critical among them being the control of the inventor

Reasoning:  experimental use is a question of law which is determined through totality of circumstances test.  After providing prototypes to third parties, Lough did not ask for any comments concerning the operability of these prototypes.  Lough kept no records of alleged testing.  Nor did he inspect the seal assemblies after they had been installed by other mechanics.  Subjective intent to experiment is generally of minimal value.  Lough was required to maintain some degree of control and feedback over those uses for prototypes if those tests were to negate public use.

Other notes:

  • Experimental Use Doctrine

    • sees to balance two policies

      • give the inventor time to test and perfect his invention / assess invention's utility in operation

      • prevent inventors from extending the statutory period of exclusivity by delaying filing for a patent while commercially exploiting the invention

    • balance is achieved through Reasonable Purpose Test

      • inventor's purpose must be one of experimentation, not commercial exploitation; and

      • the scope and length of the activity must be reasonable in terms of purpose

        • if the purpose was experimental and the activity reasonable, it does not matter that the inventor benefits incidentally from the activity

Relying on experimental use exception


Also City of Elizabeth Case (pg. 792)

  • invention of wooden block pavement

  • installs it on the private section of road

  • for six years it is out in the open

  • court held that it is experimental use

    • visit road regularly

    • speak to the toll keeper

    • inspect the road


Printed Publication

In Re Klopfenstein
CAFC (2004)

Facts:  Klopfenstein was denied a patent application on the grounds that it was a printed publication two that was presented two years before the critical date.  Klopfenstein appeals on the grounds that the the publication was not printed because it was not copied

Issue:  what constitutes "printed publication" under Sec. 102(b)

Law / Application:  Klopfenstein Factors

  • length of time the display was exhibited

  • the expertise of the target audience

  • the existence of reasonable expectation that the material would not be copied

    • must look at professional and behavioral norms

    • must look at protective measures

      • license agreements

      • non-disclosure agreements

      • anti-copying software

      • disclaimer informing that no copying of information is allowed

  • ease with which the material displayed can be copied

Holding:  If one displays the information even for short periods of time but targets the audience of ordinary skill in the art and takes no measures to protect the information (viewed in light of professional and behavioral norms and ease of copying) then that display does constitute a printed publication under Sec. 102(b)


Example where printed publication was found:

  • public billboard targeted to those of ordinary skill in the art that describes all of the limitations of an invention and that is on display for the public for months

  • oral presentation with copies of it distributed to the public of ordinary skill in the art - MIT Paper

Example where printed publication was not found

  • student theses that was presented to a handful of faculty members and had not been cataloged or indexed

Application of Klopfenstein Factors:

  • the expertise of the target audience - audience was comprised of persons of ordinary skill in the art

  • the existence of reasonable expectation that the material would not be copied - took no measures to protect information

  • ease with which the material displayed can be copied - it was simple to copy


Putting a poster is a printed publication

Purely Oral Presentation?  not printed publication

  • no copies are given out

  • shorter

  • length of time and confidentiality are big part of it

    • if copies of presentation are distributed, then it is printed publication

Memo Stamped Confidential? not printed publication b/c confidential, not public, internal

Catalog mailed to customers? printed publication

Something given outside the group

Thesis?  must have both indexing and actual accessibility (Hall v. Cronyn case)

.PDF on a personal webpage, publicly assessable? printed publication (same as digital)


Make special effort to understand technologies - look at what is different in the patent




Casebook 745–773 (Graham, KSR)


Sec. 103 Conditions for patentability; non-obvious subject matter

  • Deals with Question
    • whether the claimed invention would have been obvious to a person of ordinary skill in the art at the time the claimed invention was made
  • Seeks to prevent the issuance of a patent that would withdraw what is already known in the field
  • patent may not be obtained even on novel inventions
  • invention may be new but nonetheless obvious and thus unpatentable
  • obviousness starts from the prior art
  • "patentability shall not be negative..." response to Supreme Court case that required flash of genius
    • Congress rid off "flash of genius" requirement and only asked for non-obviousness requirement
    • it should be something in between
    Sec. 103. Conditions for patentability; non-obvious subject 
        (a) A patent may not be obtained though the invention is not 
    identically disclosed or described as set forth in section 102 of this 
    title, if the differences between the subject matter sought to be 
    patented and the prior art are such that the subject matter as a whole 
    would have been obvious at the time the invention was made to a person 
    having ordinary skill in the art to which said subject matter pertains. 
    Patentability shall not be negatived by the manner in which the 
    invention was made.


Graham v. John Deer
US Supreme Ct. (1966)

Theory: patents should be issued on substantial inventions only

Why would we not patent things that ordinary mechanics would not be able to achieve?

  • on the edge of public domain
  • encourage flash of genius

How do we access obviousness?

Would an inventor would want to have an earlier or later invention for non-obviousness purposes?

  • earlier, because more you wait, more things can happen

Look to see at the level of training, techniques, quickness, inventiveness in combining things

Secondary Considerations:

  • Why is commercial success is relevant?
    • the fact that it did so well commercially is it is not obvious
    • also if it was obvious someone else would be doing that
  • What is the effect of people trying and failing to solve this problem
    • if same people of ordinary art failed is to your advantage

Patent at issue:

  • chisel plow: curved arm that is digging into the ground
  • problem: how it is attached to the tractor
  • need to give chisel some flexibility
  • shank is attached to the tractor with spring which is strong enough to push it back but loose enough to bend to obstacles such as rock formations
  • the whole thing is about the placing the spring

A lot of obviousness findings is about telling the thought story with justification along the way

Supreme Court made up hypo to justify the obviousness

  • if free-flexing is crucial difference, then the desired result would be obtainable by not boxing the shank within the confines of the hinge.  The only other effective place available in the arrangement was to attach it below the hinge plate

Holding:  The invention is obvious because a person having ordinary skill in the prior art would immediately see that the thing to do was what Graham did - invert the shank and the hinge plate

Once the inventor tells the story, then it may not have been obvious

Arguments One Can Make for Non-Obviousness:

  • Teach away argument
    • prior art teaches away from the claimed invention
    • execution of the prior art resulted in failure



KSR Int'l v. Teleflex
US Supreme Ct. (2007)

Problem: special kind of obviousness - not one piece of prior art but a combination

  • under what circumstances can one combine prior arts and make it be obvious
  • there is no one answer for this

Issue: is it obvious to combine references

How the court addresses the problem of obvious reference combination?

  • CAFC: if in the literature of prior art points to the idea of combination than it is obvious
    • looking for cases in which prior art taught for combinations
      • is the prior art teaches towards the combination or away from combination
        • if towards, than obvious
  • What if prior art is silent?
  • The combination that requires reasoning is also non-obvious

Prof's analysis of how claim 4 fits together:

  • Breakdown
    • pedal
      • adjustable (must be)
      • fixed pivot (makes more appealing)
    • sensor
      • inside the pedal
      • fixed position (not on a non-moving piece)

All of the things above were known in the prior art

  • one prior art describes everything for pedal (Asano)
    • everything as far as mechanics are concerned, but nothing electric
  • another prior art describes that it is better to have a sensor in the pedal ('936)
  • another prior art  talks about fixed position (Smith)

'936 + Smith teach us everything about sensor side

Connection to put a sensor in the pedal comes from '068 patent

Adjustable pedal sensor coves from Rixon patent

Supreme Court: 

  • the idea of putting sensors in the sensor now days is obvious because everyone knows of advantages.  In-pedal sensor teaches by '936.  Then Smith will tell you about fixed position

Legal Principles

Question of predictability

  • The combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results
  • is it expected / predictable that the elements will work in the certain manner
    • does the device create a new synergy

The combination simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious

If a person of ordinary skill can implement a predictable variation, Sec. 103 likely bars its patentability

Reasoning:  There existed a marketplace that created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for achieving this advance.  Attaching the sensor where both KSR and Engelgau put it would have been obvious to a person of ordinary skill



* Casebook 803–27 (Phillips, Larami)
* Casebook 867–78 (Jazz Photo)

How can you tell that there is infringement?

  • must have same elements as the later one

The patent is enforceable from the date it issues

  • enjoys provisional rights beginning the date application is published until the date of issue

Challenger bears the burden of proof (for invalidity)

  • standard of proof
    • clear and convincing evidence
  • allegation
    • patent infringement
      • meaning of the patent claim
        • claim construction
        • claim interpretation

Patent Infringement Cause of Action

  • direct infringement
    • D himself committed the act
    • can be
      • Literal Infringement
        • occurs when every limitation of the claim is recited in the accused device
      • Doctrine of Equivalents (DOE)
        • infringed device is equivalent to that of the patent
        • Limitations
          • Prosecution History Estoppel (PHE)
            • precludes a patent owner from obtaining a claim scope that would resurrect subject matter surrendered
              • can be done through amendment or cancellation
              • Example
                • Inventor initially claims chair with 3 legs.  The examiner rejects the applications because there is prior art that discloses a chair with 3 legs.  In response inventor amends the claim by deleting 3 legs and adding 4 legs
          • Public Dedication Rule
            • Subject matter disclosed in the specification but not claimed is dedicated to the public domain
            • Example
              • Claim is for four legs.  Specification refers to chair with 4 legs and 3 legs.  The public dedication rule can be used by the competitor to argue that the Inventor dedicated "three legs" to the public domain because the Inventor, while expressly disclosing 3 legs in the specification, only claimed 4 legs
  • indirect infringement


Claim Interpretation

Claim construction is a matter of law!

Judges would like to resolve the matter at the summary judgment level

But on factual questions - you have a constitutional level

Meaning of the claim is often required by the judge

  • can be done by the court rules


  • Judge

  • Lawyers

  • Expert Witnesses

Losing on summary judgment - goes to CAFC

To decide the meaning of the claim is to decide the case.

CAFC has been receptive to both

  • Intrinsic Evidence
    • Preferred to Extrinsic
    • Examples
      • claim
      • specification
      • prosecution history
  • Extrinsic Evidence
    • Examples
      • dictionaries
      • technical treatises
      • expert testimony (to a lesser extent)


Phillips v. AWH
CAFC (2005)
Intrinsic v. Extrinsic Relationship Case

Facts:  Phillips filed a patent for steel panels that can be welded together to form vandalism-resistant walls.  Later found that the company AWH, was using his product without his permission and sued.

Issue:  to what extent should the court rely on a patent's specification in seeking to ascertain the proper scope of its claim

  • Subsidiary issue:  what the patent claim actually mean?
  • Baffles - what it means?
  • Yes / No Question that the court is trying to figure out:  whether that includes or excludes the projection of 90 degrees

Holding:  Extrinsic evidence must always be read in light of intrinsic evidence, with the great deference to intrinsic.  The fact that WD does not describe ALL functions of the invention, does not mean that it is limited only to those functions in the patent.

Legal Principles:

Intrinsic Evidence



The claims of the patent define the invention to which the patentee is entitled the right to exclude.  Claims must be read in view of the specification of which they are part.  Specification is the single best guide to the meaning of disputed term.

  • if specification reveals a special definition given to a claim term which is different from the meaning it would otherwise possess, the lexicography in the specification is dispositive

Prosecution History

  • complete record of proceedings before PTO
  • prior art cited during the examination of the patent
  • it is less useful for claim construction because it lacks clarity of the specification

Extrinsic Evidence

  • less significant than intrinsic
  • less reliable than intrinsic
  • must be considered in the context of the intrinsic evidence


  • not part of the patent and its prosecution history
  • publications may not be written by or for skilled artisans therefore may not reflect the understanding of a skilled artisan in the field of patent
  • expert reports and testimony is generated at the time or for purposes of litigation and therefore subject to bias (not present in intrinsic evidence)
  • because of large scope of potential extrinsic evidence, litigants may pick those that are favorable to them leaving to the court the heavy burden of filtering the useful extrinsic evidence



  • technical dictionaries
  • should be used as one of many tools to assist the court

Expert Testimony

  • useful for providing background and details on invention
  • court should discount any expert testimony that is at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history


  • to avoid importing limitations from the specifications into the claim, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so

Application of Legal Principles to Facts:

The language in the written description refers to "further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shall walls" - 3 requirements:

  1. baffles must be made of steel
  2. baffles must be part of the load bearing means for the wall section
  3. baffles must be pointed inward

Therefore, baffles refers to objects that check, impede, or obstruct the flow of something.

The fact that the WD sets forth multiple objectives should not be read restrictively to require that the baffles in each case serve all of the recited functions

Other Notes:

  • Court emphasized the importance of context
  • gave specification a more important role in claim interpretation

The case revolves around the background where CAFC is trying to set a ground rules for appeal.

Claims are given ordinary meaning to the ordinary artist in the filing world (Basic Legal Principle)

  • context matters a lot

Possible sources of evidence:  Lukeheart example

  • What is the definition of sand?
    • General purpose dictionary: sand is not plastic
    • Disclosure
  • The fact that rectangular is mentioned in 2 but not in claim 1, is not interpreted as limitation
  • Technical Dictionary: Fishing Dictionary
  • Experts

So: Extrinsic

  • Dictionaries
    • general
    • technical
  • Treatises
  • Expert testimony


  • words of the claim
  • specification
  • prosecution history

Patentee is lexicographer in its own right

  • patentee can make up of its own definitions
  • need to state them in specification

Argument:  the baffles would not include 90 degree angle

  • specification never includes 90 degree angle
  • purpose is to deflect projectiles from hitting walls: need 90 degree angle to deflect stuff
  • Support:
    • dictionary
      • impede / obstruct flow
  • Claim 2 emphasizes fighting of projectiles: does not care about deflection angles
  • Specification: there are other purposes besides deflecting staff
    • structural support
    • sound prevention
    • compartmentalization
  • Therefore do not need to read claim 1 as dispositive
  • Purposes are not essential to the claim
  • Therefore 90 degree is acceptable (Holding)

Why would you not want to have your claim read broadly?

  • possibility that prior art may anticipate your patent



Literal Infringement

An accused device will be found to literally infringe when the device possesses each and every limitation recited in at least one patent claim


Larami v. Amron
PA District Ct. (1993)
Literal Infringement Case

Facts:  Amron alleged that Larami's water gun (Super Soaker) infringed one of its own.  Super Soaker operates by pressurizing water housed in a detachable tank with an air pump.  Amron's water gun, unlike Super Soaker, contains electrics that illuminate the water stream and make noises.

Issue: whether Super Soaker literally infringes Amron's patent

Legal Principles:

  • Claim defines and limits the right to exclude others
  • Patent owner must meet the burden of establishing infringement by showing the presence of every element or its substantial equivalent in the accused device
  • If even one element of the patent's claim is missing from the accused product, then there can be no infringement as a matter of law

Holding:  Claim 1 is missing one element - detachable water chamber - that the accused device has.  Therefore, there can be no finding of literal infringement

Application of Law to Facts:

Court eliminated 22 claims as not relevant.  Out of six remaining, judge focused only on one (if established that one does not infringe, he needs to go no further).

Claim 1 requires the toy gun to have a housing having a chamber inside for a liquid.  Super Soaker's chamber is external and detachable.  Because Claim 1 is missing one element - detachable water chamber - there can be no finding of literal infringement.

Other Notes:  if "inside" was omitted from the claim, the outcome may have been different

  • accused product that has each and every limitation of the claim will still infringe even if the accused product has additional elements associated with it
    • Claim elements: A, B, C
    • Accused device elements: A, B, C, D - infringement
    • Accused device elements A, B, D - no infringement

First person to sue gets to pick the venue.


Infringement Defenses

  • Types
    • Non-infringement
    • Invalidity
  • Statutory Basis
    • 35 USC 282
      The following shall be defenses in any action involving the validity 
      or infringement of a patent and shall be pleaded:
              (1) Noninfringement, absence of liability for infringement or 
              (2) Invalidity of the patent or any claim in suit on any ground 
          specified in part II of this title as a condition for patentability,
              (3) Invalidity of the patent or any claim in suit for failure to 
          comply with any requirement of sections 112 or 251 of this title,
              (4) Any other fact or act made a defense by this title.

Patent Exhaustion & Repair / Reconstruction Doctrine

  • Patent Exhaustion a.k.a. First Sale Doctrine
    • Patentee is stripped of his rights in the product that embodies the claimed invention once he sells the product
    • Patent owner's rights with respect to the product end with its sale
    • Purchaser may use or resell the product free of patent
      • applies only to the product sold
  • Repair / Reconstruction Doctrine
    • a purchaser of a patented product may repair the product but may not reconstruct it


Jazz Photo v. ITC
CAFC (2001)
Repair Case

Facts:  Jazz Photo was importing refurbished cameras.  Fuji instituted Sec. 337 for patent infringement with ITC.  ITC found that infringement did exist. The refurbished cameras contain all of the elements of all / most of the claims

Issue:  whether refurbishing cameras constitute repair / reconstruction

Legal Principles:

  • the purchaser of a patented article has rights of any owner of the personal property
  • ownership does include the right to preserve the useful life of the original article

Permissible Repairs

  • replacement of worn fabric
  • modification and resizing of machine parts
  • disassembly and part replacement of the gun mounts
  • rebuilding of worn truck clutches (on commercial scale)

Drill bit is patented so cannot make the new ones

Holding:  act of inserting new fill and film container, resetting the film counter, and resealing the broken case constitutes repair

  • cannot use repair to make more
  • importance of the parts
    • film and battery are not important pieces of the camera
  • replacing parts that wear out early rather then the parts that age at the same time as to render it not usable

Other Notes:

  • Repair / Reconstruction Doctrine provides rules of the exhaustion principle
  • Patent Exhaustion Principle applies when there is no express contractual restrictions

Three primary Repair / Reconstruction Situations:

  1. Entire patented item is spent and reconstructed to be usable
  2. Spent part is replaced
  3. Part is not spent but is replaced to enable the machine to perform a different function

Relationship between basic patent rights

  • prima facie right to use and sell

Patentee has the exclusive right to use it and sell it

  • ones sold - they parted with their rights - no further right to prevent you from selling it yourself
    • patentee cannot sandbag users

Tension between individual owner right to use device and patentees right to make

  • figuring out what changes are small enough to count as repair



Patent Review

* 2008 Final Exam, problem 1


Issue:  Whether Spielberg has violated any of Crichton's IP rights, or would if it carries out its proposed plans

Timetable of Events

Date Spielberg Crichton Goldblum
2001   started cloning research for mammoth  
04/02/2004   attended Goldblum lecture, realized that Goldblum technique can help to complete mammoth DNA sequence  
12/12/2004 Shortly after, Spielberg executive read Goldblum publication and decided to use it cloning mammoth   Published academic paper explaining how to apply his sorting method to DNA matching
05/12/2005   Completed mammoth DNA sequence using Goldblum's technique  
06/15/2005 Produced own complete mammoth DNA sequence (98% identical to that of Crichton)    
08/20/2005   Impregnated elephant with embryo containing Mammoth DNA using publicly available technique (i.e. no infringement)  
12/02/2005 Impregnated elephant with embryo containing Mammoth DNa    
03/18/2007   Mammoth is born  
03/19/2007   Press conference and announcement of mammoth cloning effort: details were explained  
03/20/2007   Patent application is filed  
03/23/2007   Mammoth dies due to respiratory infection  
09/29/2007 Mammoth is born    
01/12/2008   USPTO grants a patent  


Novelty / Statutory Bar

  • Reduction to practice
    • Possibilities
      • 06/15/2005
      • 08/20/2005
      • 03/18/2007
      • 03/202007
    • Gldblum's lecture predates and will defeat the novelty
      • prior art
    • Whether Spielberg was in fact the first inventor
      • no way on this problem that Spielberg is a first inventor
  • Check Statutory Bar
    • Filing date is 03/20/2007
    • Bar date is 03/20/2006
    • Means that Goldblum paper runts prior to statutory bar
      • it is prior art, what does it take out from the patent?
        • the paper discusses the DNA matching, which the claim 3 describes - therefore, claim 3 is defeated
        • other elements?
          • 4 is not defeated because mammoth element is presented (must defeat every element)


  • if they disclosed one DNA sequence
  • techniques you need for impregantion are well known
  • Issue 1: Claim 1 is two broad "have they enabled people to make mammoth"
    • scope issue
  • Claim 3 & 4
  • Claim 1 is OK because there is only ONE mammoth
  • Claim 2:  they did not enable the artist to go out and make it happen - it takes a lot of work to get from DNA to Mammoth.  But because the impregnation is well known and because 2 teams have actually done it - that process need not be published - therefore no enablement issue

Statutory Subject Matter

  • Claim one
    • claim something naturally occurring in nature
    • man made element fact is important (something that probably not existed in nature)
  • Claim 2
    • sequence is naturally occurring (Chakabarry)
    • but the tension is mammoth itself is naturally occurring
    • given the fact that they have been extinct for thousands of years, perhaps one should not consider mammoth as naturally occurring
  • Claim 3 & 4 no objections of statutory subject matter
    • processes that have not been carried out before


  • is it going to be obvious for the ordinary artist to produce the mammoth?
    • obvious to try to do it?
    • Once you have the Goldblum out there, then it is obvious  to apply this to make a mammoth becaue the problem is obvious


  • Zoo example
  • Moral utility objection
  • Discussion of Juicy Whip takes care of the requirement that it does not defeat utility


What Spielberg has done so far that might constitute infringement?

  • done 3, 4, 1, but have not made 2 (due to different DNA sequence)
  • nothing that Spielberg has done creates the patent liability b/c all things they have done was before the patent was issued
    • can keep the mammoth alive but nothing more

Cloning more mammoths from the available sequence, does that trigger any patent claims?

  • infringing on claim 1
  • do not literally infringe, because different sequence for claim 2
  • Claims 3 &4 does not infringe because process the Spielberg will go through (diagram 3--4 ..... 1,2)


Mastodon Issue

  • If Spielberg wants to clone mastodons, he will infringe on claim 3 for matching mastodon sequences to make the DNA sequence
  • Claim 4 does not apply because brings mammoths into the play
  • Claim 1 is not applicable for same reasons as 4
  • So ok if statutory bar applies to claim 3


Part III: Copyright

Advent of the printing press and movable type in the mid 15th century.

  • possibility of new business model
    • printing things cheaply
  • 1710
    • shifts the rights from printers / publishers to authors (statute)
    • in exchange for statutory right, copyright is limited
    • 14 year renewable term which then goes to public domain
  • Historical propositions
    • encourage writers creativity
      • US Constitution borrows that:  "exclusive rights to Writings..."
      • Copyright Acts
        • Maps / Prints / Books
    • 14 year renewable term sticks around for most of 19th Century
    • 1909 Act
      • destabilization of print / printing press
      • player piano
      • movies
      • phonograph
      • radio
      • television
    • 1950s
      • 20 year drafting process for new Act to adopt changing technologies




What is the Subject



Disclosure Registration (with Govt.) Term Independent Creation Defense
Trade Secret Innovation About Useful Information Low Threshold


Not Allowed No Indefinite Yes
Patent Innovation About Useful Information High


Must Yes (USPTO) 20 years No
Copyright Creativity About Originality Low


Your Choice Optional (but recommended)

Have a copyright even before you register it

Life of the author + 70 years Yes (only against people who copy)


Prerequisites for protection

  • originality

Idea v. Expression

  • difficult to discern


  • who is the author when more then one person involved

Duration of rights

Exclusive rights

  • 6 of them
    • make copies
    • distribute
    • make works
    • publicly display / perform
  • exclusive rights do not cover use
    • reading aloud to yourself does not create a copyright
    • Amazon reading aloud example



  • Test
    • Substantial Similarity
      • did the defendant copy from the author
      • did the defendant copy too much



Introduction, Originality

* Casebook 305–27 (Bleistein, Feist)
* Problem 6-2



  • protection of fruits of human creativity

Legal Basis

  • Constitution (Art. I, Sec. 8, cl. 8)
    • The Congress shall have the Power to promote the progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries
  • Statute
    • Copyright Revision Act of 1976
      • a.k.a. Copyright Act
      • its predecessor is American Copyright Act of 1790
  • Common Law
    • when a work became subject to statutory copyright, common law rights, if any existed became extinguished


Copyright Act

  • 3 Criteria
    • must be original
    • must be fixed to tangible form
    • must consist of expression (as opposed to ideas)


Originality and Authorship (First Requirement)

  • "original and founded on the creative powers of the mind"
  • writing includes photographs


17 USC 102
Subject Matter of Copyright

a)  Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.  Works of authorship include the following categories

  1. literary works
  2. musical works, including any accompanying words
  3. dramatic works, including any accompanying music
  4. pantomimes and choreographic works
  5. pictorial, graphic, and sculptural works
  6. motion pictures and other audiovisual works
  7. sound recordings
  8. architectural works

b) in no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method, concept, principle, or discovery, regardless of the form in which it is described, explained illustrated, or embodied in such work



Bleinstein v. Donaldson Lithographing
US Supreme Ct. (1903)
Originality Case

Facts:  D published advertisement for the circus.  P alleged infringement.


  1. Whether copyright is barred by the fact that the chromolithograph is an image taken from nature (i.e. circus performers)
  2. Whether chromolithographs designed to advertise a circus production are works "connected with fine arts."

Legal Principle:  So long as the illustration shows unique combinations of figures, sizes, lines and colors it is deemed original and does not infringe on the copyrights of another, subject to copyright of its own, regardless of its intended use

  • Originality lies in formulating new mental images of reality and transferring them to fixed from, and not in mere reproductions (creative author focus)

Holding:  Chromolithographs are original pictorial illustrations depicting unique combinations and are entitled to the protection of the copyright law


  • Nondiscrimination Principle
    • Whether they are used for advertisement is irrelevant (court refuses to go into value judgment as to the quality of the art)
    • Commercial value is just as good as aesthetic or educational value for the purposes of copyright

Other Notes:

  • Author
    • person who records the ideas of the mind
    • person who supplies ideas themselves

Chromolithographs: hand-drawn posters

  • copyrightable subject matter

Issue:  whether the posters meet the basic requirement being original

What about the poster is original? (general principles)

  • artist's choice that have not been used before
  • the copy is the personal reaction of an individual upon nature
  • copyright protects original works of authorship (authorship is something of author's unique personality as it is expressed in the work)
  • uniqueness of the vision

How does the artist exercise choices with regards to shape of individuals?

  • individual line in moustache may have creativity - drawing decision
  • choices of color
  • shading
  • lettering
    • arrangements
    • font choice
  • choice about figurines
  • overall graphic designed of the poster
  • size of the poster (not enough by itself, but an element to consider - b/c can always boil down the novel to something else)
  • choice of words

Even accidental act may be considered original

Negative Factor: "copyright for 'real' work not for the junk"

  • court disagrees
  • it is not for judges to decide on quality - dangerous undertaking for persons trained in the law to decide what is good art or bad
    • measure of creativity's worth is economic
      • good enough to be paid for - good enough for the court
  • non - discrimination principle
    • courts will not judge on artistic quality

Copyright for things intended to be an art rather than ad poster? Court disagrees

Bleinstein Rules

No discrimination in terms of

  • Quality
  • Use
  • Subject they depict

all we care about is the uniqueness

"others can copy the original, but not free to copy the copy"

  • can go to circus and copy circus people
  • can not copy the originality of the poster



Feist v. Rural
US Supreme Ct. (1991)

Facts:  Rural is a KS regional telephone monopoly that is required by the law to produce phone directories.  Rural's directory include phone #, name of a person, name of town in alphabetical order.  Feist is publishing company that specializes in publication of directories.  In addition to publication of the phone, name, and town, it also provides residents address.  Feist approached Rural to arrange a licensing agreement, whereby it would use the Rural's directory data in its publication.  Rural rejected the offer and Feist proceeded with publication without Rural consent.  Rural sued for copyright infringement

Legal Principles:

  • It is the original compilation of facts (i.e. selection, arrangement), not the facts themselves that are copyrightable
  • Work independently created by author is copyrightable so long as it possesses some (even if extremely low) degree of creativity
  • The primary objective of copyright is not to reward the labor of authors, but to promote the Progress of Science and useful Arts (Sweat and brow doctrine is dismissed)
  • Copyright infringement requires (1) proof of ownership of valid copyright, and (2) originality
  • If the compilation of data is mandated by law, then cannot be considered independent, and therefore cannot be original


  • compilation (17 USC 101)
    • work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.  The term compilation includes collective works
      • Required elements
        • that the material be preexisting
        • coordination / selection / arrangement of the material
        • originality
          • focus on the manner of collection
          • originality principle is applied to work as a whole
          • selection / arrangement must be independent
          • must display the minimal level of creativity

Issue:  Whether white page compilations of Rural constitute original work


Publication of basic information - name, town, tel. # - in alphabetical order (by surname) lacks the modicum of creativity necessary to transform mere selection into copyrightable expression.

  • age old practice, rooted in tradition and so commonplace that it has come to be expected as a matter of course

Because Rural was required to make the compilation by law, it did not truly select to publish names and telephone numbers, therefore may not be original (prof. suggests that legal requirement does not negate creativity).

Other notes:

Rural established proof of ownership of the valid copyright by showing foreword text and original material in its yellow pages advertisements (first prong).

Door to door survey

  • no copyright claim
  • independent creation case
  • did not do that due to presence of fake names

Why are facts are not copyrightable?

  • Constitutional problem: no originality - did not come out of author's mind, and therefore not his creativity
  • Policy reasons
    • cannot amend a Constitution
    • endless proof problems
    • copyright office will not register titles and short phrases

Compilation Copyright Argument:  compilation reflects originality in selection and arrangement

  • encyclopedia
    • list of topics covered is is copyrightable
    • arrangement is copyrightable
  • Guinness book of World Records
    • arrange things in different categories they made up
    • they select which records to show

Originality in Rural's selection

  • No, mechanical application of the simple data
  • Arrangement in alphabetical order is obvious

Can Feist pick up the phonebook xerox copy the book given the holding of the case?

  • Yes, but only the white pages




The Frank Gallery Problem (pg. 326)

Facts:  Frank Gallery displays 19th century art.  It also sells CDs of that art.

Issue:  whether reproductions of the art constitute original work

Reasoning:  reproductions are essentially digital data that is assembled in an specific way.  The question is whether the digital data is original.  Yes, because the production of CDs is something new, not relevant to 19th century art (which by itself is not copyrightable)



Fixation, Expression

  • Casebook 327–47 (Williams, Baker, Nash)
  • Problem 6-3



  • 17 USC 101
    • The creative work must be fixed to tangible medium of expression
      • Policies / Reasons
        • Support distribution of creative output through society
        • Evidence
        • Prevents opportunism by authors
        • Reserves federal statutory copyright exclusively for works that are "fixed"


1976 Act

  • throws formalities out of the window
  • copyright comes into existence the moment you create the work


  • definition is broad
    • tangible medium
    • can use machine or device to make it perceptible
    • notes
      • fixes only things there
    • anything other than human brain counts


  • recorder is a copy
  • material objects where things are fixed

Work of authorship

  • idea that is not fixed

Exclusive rights

  • reproduce work in copies


Williams Electronics v. Artic International
3d Cir. (1982)
Fixation Case

Facts:  Williams designed a videogame that it incorporated in the game console.  The copyrights were registered: computer program and audiovisual effects.  Artic produced substantially similar videogame.  Williams sued alleging infringement.  Artic's main defense was that the videogame was not copyrightable b/c its images were not fixed

Legal Principles:

  • Fixation requirement is met whenever the work is sufficiently permanent or stable to permit it to be reproduced, or otherwise communicated for more than one transitory period
  • do not be distracted by the argument that something is brief.  Look for tangible object that contains copy that could be perceived by human - you got the copyright

Application:  Original audiovisual features of the videogame repeat themselves over and over - the modes are fixed in a temporal sense.  Each game mode consists of a static and therefore copyrightable collection of images and sounds, which is fixed in the game's computer memory


  • Audiovisual works
    • 17 USC 101
      • works that consist of a series of related images which are intrinsically intended to be shown by the use of machines, or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied
        • Video game display is audiovisual work under 17 USC 101
  • Copies
    • 17 USC 101
      • Material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.  The term "copies" includes the material object, other than a phonorecord.
        • Memory devices of the game is a copy on which the work is fixed under 17 USC 101

Computer program is stored on chips (chips are tangible object)

The computer program itself was not copied.  The program is not the same.  Defendant never looked at program, but wrote from scratch. 

D has a good argument: never copied the program, but what shows up on the screen, which is not fixed

Why is "not fixed" argument wrong?

  • because it happens in a repetitive way
  • you see images over and over again
  • line between the things that game creates and your (player's) contribution



Problem 6-3 (pg. 334)
Parade Copyrights

Facts:  PC promoted parade, incurring substantial expenditures, and sold exclusive rights to WJM.  WKRP, a WJM's rival, plans to broadcast the parade also.  PC would like to enjoin WKRP from broadcasting the parade, but can only do that by establishing its copyrights.

Issue:  whether public events can may be copyrightable

Life performance is not copyrightable, but the performance of it is.  Because it used its own equipment, it is not copyrightable.




Copyright protection is only limited to the expression of the work (not to ideas or facts)

  • only expression is considered to be a creative output of the author
  • expression is intangible thing that can be identified and possessed by author
  • future authors may incorporate preexisting ideas and facts into their own new works
  • taking things out of being copyrightable
  • Sec. 102 (b)
    • in no case copyright protection extends to any idea
  • idea is uncopyrightable v. expression which is copyrightable
  • idea is abstract
  • expression is concrete



Baker v. Selden
US Supreme Ct. (1880)

Facts:  Selden copyrighted books where he described accounting methodology through blank account illustrations.  Baker published a book where he explains the accounting system of the Selden's book.  Selden sued for copyright infringement.

Legal Principles:  where one publishes the process, that person is entitled to copyright of book itself, but not to the process described therein.  Blank account books are not subject to copyright

Application:  no one has a right to print or publish Selden's book, or any material part thereof.  However the instruction to the art can be practiced and used by any person.


  • expression of Selden's system with illustrations and diagrams was so intertwined that a copyright could not be sustained
  • Baker (Defendant) copied only forms, but not text and forms are not protectible by copyright
    • Blank Form Rule
      • rejects copyrights in forms that are designed only to receive information, not to convey

P invented improved system to be more effective.  Book explains the system along with blank forms.  Baker (D) publishes similar accounting system.  Selden sues on copyright infringement, and loses because the work was not copied.

The accounting system (way of keeping books) is not copyrightable - Yes

  • process is for patent (not copyright) system
  • copyright does not cover functional matter
  • policies for patent (innovation, openness, limited monopoly, etc.)

When something could constitute expression, but it is necessary to express idea, than those expressions become uncopyrightable themselves

If clear expression is necessary to do the idea, than that expression becomes uncopyrightable


  1. Ideas are "slice of the top" which cannot be copyrighted.  (Nash)
  2. Processes and systems are not copyrightable (i.e. treatise is copyrightable, but the doctoring in that treatise is copyrightable) (Baker)


Nash v. CBS
7th Cir. (1990)
Idea v. Expression Case

Facts:  Nash written historical accounts (non-fiction) about legendary bank robber Dillinger.  CBS made a movie (a fiction, not a documentary), where a lot of ideas were borrowed from Nash's books.  Nash sued for copyright infringement.

Issue:  whether CBS used "too much" pursuant to fair use doctrine

Law:   In no case does copyright protection for an original work of authorship extends to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work

Holding:  CBS did not more than 17 USC 102(b) permits.  CBS used Nash's analysis of history (i.e. his idea about the history) but none of his expressions.

Reasoning:  intellectual progress is possible only if each author builds on the work of others.  Every work uses scraps of thought  from thousands of predecessors.  But, to deny authors all reward for the value their labors contribute to the works of others also will lead to inefficiently little writing.  Before the first work is published, broad protection of intellectual property seems best; after it is published, narrow protection seems best.  The biggest difference between Nash and CBS is that Nash did non-fiction, while CBS did a play: Nash's rights therefore, lie in expressions (words, arrangement of facts), but not in the facts themselves.  CBS took those facts, and build their own play upon them.  Historical facts (as claimed by Nash) are among the "ideas" and "discoveries" that the statute does not cover.

Other Notes:

  • line between unprotected idea and protected expression may lie at many places within given work, including its plot and its characters
    • idea than must be distilled from its expression
      • the guiding consideration in drawing the line is the preservation of the balance between competition and protection reflected in the patent and copyright laws

Court says if it was the work of fiction it would be a difficult case.

What is copyrightable in Nash's work?

  • arrangement
  • ordering
  • specific words describing Dillinger
    • hierarchy of abstractions
      • bottom: words
      • top: generic idea
      • in between: organization, wording, phrasing style
  • draw a line between abstraction and specificity: abstraction is not copyrightable; specificity is copyrightable

Can you get a copyright on cross-dressing Dillinger?

  • yes, but must be specific
    • shorts
    • San Diego
    • red color
  • just mere "cross-dressing" is abstract and not copyrightable

Sherlock Holmes example:  cannot copyright investigator - too abstract; can get copyright by filling in details: pipe smoking, "elementary" saying; hat wearing; humiliating others.... etc.  - it is those details that make things copyrightable


17 USC 105

  • US Govt. forms is not copyrightable
  • Law itself is not copyrighted




  • Casebook 355–81 (CCC, Lotus, Brandir)


If there are one or few ways of expressing the idea, then that expression is not copyrightable under Merger Doctrine.


CCC v. Maclean
2d Cir (1994)
Merger Doctrine Case

Facts:  Maclean produces car pricing guide (competitor to Kelley Blue Book).  The numbers are not derived from statistics using mathematical formula (objective), but rather use subjective judgment of the authors.  CCC takes the information of Maclean, imports it into the computer database, and provides the digital version to its customers.  In addition to Maclean's data, CCC also provides averages of Maclean and Bluebook value average.  Numerous Maclean customers canceled their subscriptions opting for CCC's services instead.

Legal Principles: 

To the extent the design is original and reflecting creative judgment - can copyright

Merger Doctrine Proposition

  • when the expression is essential to the statement of the idea, the expression also will be unprotected
Situations where Merger Doctrine Will  NOT Apply Situations where Merger Doctrine Will Apply
soft ideas infused with author's taste or opinion expressions directed to the understanding of phenomena or the solving of problems
expressions that do not materially assist the understanding of future thinkers  
Where the method can be implemented in more then one way to the extent that the selection of data is the useful method itself, the merger doctrine should bar copyright in the selection, because granting the copyright would effectively grant the owner a monopoly over both the selection and method, rather than promote competition in different forms of implementing the method
Subjective Opinions
  • data is created / authored in the first place (i.e. not a fact per se)
Objective Facts
  • public policy grounds: no one should be able to obtain a copyright monopoly on facts
  • would prevent authors and creators from developing and distributing new theories about those facts


Holding:  Merger Doctrine is not applicable to books that express statements of opinion in a subjective manner which will not assist the understanding of the future thinkers

Other Notes:

Scenes a Fair Doctrine:

  • unprotectability of incidents, characters, or settings which are as a practical matter indispensable, or at least standard in the treatment of a given topic
  • focuses on expectation of audience as to certain expressive forms
    • plot devices
    • stock or standard characters
    • images
    • sounds
    • expressive techniques

Merger doctrine serves social policies.

Disguised sweat of the brow argument.

Other argument, if allow red book to copy freely, will take away incentive to produce it, and make society worse off

To analyze similar case, approach this with soft facts argument (use purely doctrinal terms)

In class, do not make the policy argument.  This court did get entangled in policy argument.

Looks like misappropriation (INS v. AP): dead because Copyright Act blew it away and preempts it



Lotus v. Borland
1st Cir. (1995)
Method of Operation Case

Facts:  Borland developed spreadsheet program that used command hierarchy of Lotus.  Lotus sued for infringement.  As a defense, Borland argued did not dispute that it factually copied the words and arrangement of the Lotus menu command hierarchy, but rather argued that it lawfully copied the unprotectable menus of Lotus

Issue:  whether Lotus menu command hierarchy is a method of operation

Law: 17 USC 102(b)

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

Legal Principle:

If specific words are essential to operating something, then they are part of a "method of operation" and as such are unprotectable

To the extent menu is pretty it is copyrightable

Holding:  menu command hierarchy is a method of operation and therefore uncopyrightable


  • method of operation refers to means by which a person operates and/or controls something

Concurring Opinion:

The menu commands are standard procedures that Lotus did not invent and are common words that Lotus cannot monopolize.  For policy reasons of innovation, it is better not to keep consumers locked in the Lotus products due to "switching costs." but rather let them choose which program to buy - creates innovation

About whether same program can have same keyboard featured as another one.

Free Competition v. Not a Place for Copyright Law

Example of Clutch:  some things are fundamental: need to have park, need to have 2 gear - essential parts of the gear (can make a merger argument)

People's expectations: people expect spreadsheet controls to work in certain ways

  • countervailing consideration / policy reason

Want to standardize because want to promote competitions

  • interface is a good place to strip off copy rights

Standardization is good (network effect)

  • more people use it - more usable
  • collective enrichment

Concern: standardization can lead to inefficient interfaces

Macs spreadsheets can use Windows formulas because of this case



Work of Authorship v. Copy

  • Copyright protects a literary work, but not the book that encases it

Matthew Bender v. West

Facts:  HyperLaw produced and marketed CD-Rom compilation of judicial opinions that had previously appeared in West's copyrighted reporters.  HyperLaw's opinions included page breaks - a star pagination system - that West claimed as proprietary

Issue:  whether star pagination is a copyrightable matter

Law:  17 USC 202: Ownership of copyright as distinct from ownership of material object

Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

Legal Principle:  intangible work of authorship is copyrightable, but the tangible artifact is not

Holding:  star pagination was not part of the work of authorship that West was entitled to protect

  1. HyperLaw's product created no actionable copy of the West compilation
  2. Pagination is an artifact of reproduction of the work in a physical medium rather than a product of creativity


The Statutory Categories

17 USC 102(a): Subject matter of copyrights

  • literary works
    • see Nash
  • dramatic works
  • architectural work
    • may not prevent members of the public from photographing it if the building in which the work is embodied is located in or ordinarily visible from a public place
      • 17 USC 120(a)
  • sound recordings
    • does not have the exclusive right to publicly perform the work
    • e.g. musical works
      • if played on radio entitled to royalties to copyrighted song but not to a sound recording


Bandir v. Cascade (Ribbon Rack Case)
2d Cir. (1987)
Pictorial, Graphic, and Sculptural Works Case (Idea / Expression Case)

Facts:  Ribbon rack, which is a bicycle rack, has artistic as well as utilitarian functions

Issue:  whether bicycle rack is copyrightable due to its artistic design

Law: 17 USC 101: Pictorial, Graphic, and Sculptural Works

``Pictorial, graphic, and sculptural works'' include two- dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

Legal Principles

If design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements.  Conversely, where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual reparability exists

Application:  Rack is not copyrightable.  Form of the rack is influenced in significant measure by utilitarian concerns and thus any aesthetic elements cannot be said to be conceptually separable from the utilitarian elements.

Idea - bicycle rack.  Has the expression merged into the idea.

Would someone buy it because it looks nice?

Ask what designer set out to do?

Whether the artists intention can be a useful guide?

If the artist intended to make art, then there is copyright - not a useful test

Are the artistic aspects too intertwined?

Themes: high art v. low art issue

  • design art
  • industrial design: useful and good looking

Fundamental Question: can we really respect design?

  • probably not

Role of idea:  keeping functional material out of copyright

  • things that work / utilitarian are not copyrightable

Holding:  to the extent it is functional you cannot copyright

Challenge: how to draw a line where the question is how much is it original and creative v. how much is it useful



Ownership, Duration

  • Casebook 399–422 (Aalmuhammad, CCNV)
  • Problem 6-7


Formalities are no longer taken seriously (4 of them).  Today, it no longer matters.  If in practice, encounter the work that predates 1989 you may want to pay attention of the copyright.

  • Copyright is enforceable without notice
  • However, may want to put it out to protect yourself against innocent infringer
  • Deposit
    • when you register, send two copies: one goes to Library of Congress another is for files of Copyright Office


Sec. 201. Ownership of copyright

(a) Initial Ownership.--Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowners of copyright in the work.

(b) Works Made for Hire.--In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

(c) Contributions to Collective Works.--Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.


Ownership of a copyright vests immediately and automatically in the author of a copyrightable work (17 USC 201)

Copyright in a work of authorship belongs to the individual responsible for its "creative" content, and not to a party whose contribution was to take that creative input and convert it through some mechanical process, into a fixed form


Aalmuhammed v. Lee
9th Cir. (2000)
Ownership Case - Joint Work

Facts:  Aalmuhammed served as an advisor in the movie Malcolm X in various scenes and Islamic dispositions (rewrote some dialogue passages; wrote scenes of Hajj).  Aalmuhammed never had a written contract with Warner Brothers (Production Company) or Lee (Film Director for production company).  After extensive help, as P alleges, Aalmuhammed  claims that the Malcolm X was a "joint work" and  that Aalmuhammed is the co-owner of the copyright.

Issue:  whether Aalmuhammed is a co-author of the movie

Legal Principles:

Joint Work

A joint work is a work prepared by two or more authors with the intention that their contribution be merged into inseparable or interdependent parts of a unitary whole

There must be

  1. a copyrightable work
  2. two or more authors
  3. the authors must intend their contributions be merged into inseparable or interdependent parts of a unitary whole
  4. each author to make an independently copyrightable contribution to the disputed work


  • author is  "he to whom anything owes its origin - originator, maker, one who completes a work of science or literature (Constitutional Definition)
  • author is  the person to whom the work owes its origin and who superintended the whole work - the master mind (Burro-Giles Definition)
    • someone who has artistic control

Policy Argument (of the Court):  Progress would be retarded rather than promoted, if an author could not consult with others and adopt their useful suggestions without sacrificing sole ownership of the work.  Too open a definition of author would compel authors to insulate themselves and maintain ignorance of the contributions others might make.

  • policy by itself is incoherent without defining who the author really is


  • P did not superintend the work
  • Warner Brothers and Director controlled the work
    • could accept & reject P's recommendations
    • even Director was not co-author due to signing "work for hire" agreement with Warner Brothers
  • P did not present evidence that he was master mind of the movie

Mistake of Warner: needed him to sign that this is a work for hire

Joint Work (17 USC 101)

A joint work is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole

Here, one combined work.

Unless there is fixed prearrangement, then there is a 50/50 split.  Would result in inequitable outcome.  Court goes about it by narrowing the ownership definition (otherwise Aalmuhammed would have won)

  • Court puts down a rigid test
    • must have control
    • court is buying into view into how movies are made in order to rule against Aalmuhammed
      • trying to come up with some factors of relationship that Aalmuhammed is too small of a player
      • Burrow-Giles Case
        • photographer is not the author, because many other things matter: settings, color, shading
      • Audience appeal (who do people really go to see)
      • Contract perspective
  • Prof. says that is not the good guide
  • Each creative industry has distinctive structure of how they distribute rights
    • Hollywood is the most restrictive, centralized model

Joint Authorship

  • must contribute something original
  • must have intent to merge contributions
  • if more than one person passes above, must look at their relative importance of contributions and their intent of being co-authors


Problem 6-7 (pg. 407)

Facts: produce comic books together.  Then one falls out.

Issue: is there joint authorship?

  • initial 4 issues can be joint works
  • copyrightable pieces of expression - he is a joint author

Can be hard to find creativity: must be copyrightable standing alone.  Can we cut apart?  Comic book is deeply fused together with creativity of both persons


Works made for hire:

  • (b) Works Made for Hire.--In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright (17 USC 201)
    • if you make work for someone else then that person is original owner
    • What is "work made of hire"
      • work prepared by employee within the scope within the scope of her employment (17 USC 101)


CCNV v. Reid
US Supreme Ct. (1989)

Facts:  CCNV contracted Reid to sculpt the statute.  CCNV conceived the idea and provided guidance.  Reid did the sketching and sculpting.

Issue:  who has the ownership rights: whether Reid sculpture was a "work prepared by an employee within the scope of his employment (Sec. 101(1) of 1976 Act)

Holding:  CCNV is not the author of the sculpture, but can be co-author

Subject was the homeless people

List of factors that go into deciding whether it is work that is made for hire (pg. 417)

  • the hiring party's right to control the manner and means by which the product is accomplished
    • sculptor had more day to day control
  • the skill required
    • sculptor has the skill
    • the type of skill required makes it more likely that the work will be done independently
  • the source of the instrumentalities and tools
    • sculptor supplied the tools
    • more likely to be the independent contractor
  • the location of the work
    • done in his own studio
    • like an independent contractor
  • the duration of the relationship between the parties
    • worked only for that specific project
  • whether the hiring party has the right to assign additional projects to the hired party
    • no ongoing relationship
    • open ended
  • the extent of the hired party's discretion over when and how long to work
    • sculptor had the discretion
  • the method of payment
    • piecework payment is more characteristic to the type of independent contractor
  • the hired party's role in hiring and paying assistance
  • whether the work is part of the regular business of the hiring party
  • whether the hiring party is in business
    • not a strong factor
    • regular business
  • employee benefits
    • none of the benefits
  • the tax treatment of the hired party

Overall, it looks like the sculptor is clearly independent contractor.

If employer is not going through financial hit of payroll and benefit taxes, then that employer cannot come back and say that he is employee for copyright purposes.

Case gives Reed the copyright, give CCNV the physical ownership of the sculpture.

Post Scriptum:  CCNV wants to make more sculptures - at the end they settled



  • copyrights start as soon as it is fixed
  • lasts for 70 years
  • if unknown author then 90 years after creation




  • Casebook 423–44 (Three Boys, Tufenkian)
  • Casebook 572–77 (Lee v. A.R.T.)


A work that infringes is not just infringing, but also is uncopyrightable (judicially made law)

 Showing infringement is a standard 2 step process

  • prove you have a exclusive rights (valid copyright)
  • prove that D infringed (violation of 6 exclusive rights under 17 USC 106)

1st right - right to reproduce the work of copies

  • reproduction right
    • prove that D copied from you, not made it independently
    • show that D copied too much of your original expression

17 USC 106

Copyright owner has no obligation to publish or distribute the work, but has the sole right to determine whether, and under what circumstances, others may do so

Copyright Enforcement

  • direct infringement
    • pursued against individual / firm which has exercised one or more of the copyright owner's exclusive rights without permission
  • secondary liability for infringement
    • liability for direct infringement committed by someone else
    • categories
      • contributory liability
        • D substantially contributed
      • vicarious liability
        • responsibility of D due to his legal relationship with infringer

Direct Infringement

  • Relevant Statutes
    • 17 USC 106: Exclusive Righs of Copyrighted Work
    • 17 USC 501: Infringement of Copyright
  • strict liability
    • Must show both of the following elements
      • D must have copied P's copyrighted work (as opposed to independent creation)
        • a.k.a. copying of fact
          • must show
            • infringer actually reproduced P's work (mechanically, electronically)
      • Infringer (1) had access to the P's work and (2) it is substantially similar to P's work
        • Assessment of substantial similarity
          • objective criteria / extrinsic
            • spatial / temporal proximity
          • subjective / intrinsic
            • deals with the question of: whether the copyist copied too much of the P's work

Copying v. Independent Creation

  • Relevant Statutes
    • 17 USC 106(1): Exclusive Rights to Copyrighted Work
    • 17 USC 101: Definitions - Copies, Fixed
  • Infringer (1) had access to the P's work and (2) it is substantially similar to P's work
    • the fact that D copied P's work does not automatically mean that D infringed the P's copyrights
  • Substantial Similarity
    • context of copying-in-fact
    • context of infringing copyright


Three Boys Music v. Bolton
9th Cir. (2000)
Substantial Similarity Case in the Context of Infringing Copyright

Facts:  Bolton came out with the song.  Isley Brothers alleged infringement.  Jury found infringement.  Bolton argued that he made the work independently.  Claim of copying separated 25 years.

Legal Principles:  Substantial Similarity requires proof of the following elements

  • Access
    • proved by either
      • particular chain of events between P's work and D's access
        • e.g. dealings with the publisher or record company
      • P's work is widely disseminated
        • Theory that the copyright infringement of a popular song was subconscious
        • Can be done through any channel - if not access is possible then no infringement is possible
  • Substantial Similarity
    • Extrinsic similarity
      • concrete elements based on objective criteria
    • Intrinsic similarity
      • subjective inquiry asking whether the ordinary reasonable person would find the total concept and feel of the works to be substantially similar

If access and substantial similarity are established, P creates presumption of copyright.  The burden shifts to D to rebut that presumption through proof of independent creation

Inverse Ratio Rule: discussion did not make sense

Application of Legal Principles:

  • Widespread dissemination & Subconscious Copying
    • Bolton grew up listening to Isley Brothers
    • DJs played song widely on TV and radio
    • Bolton confessed being a fan of Isley Brothers
    • Bolton was inquiring whether his work infringed on someone else's work

Holding:  Court decided not to overturn jury's findings

Other Notes:

  • Copyright law recognizes the possibility that multiple authors will independently produce an identical / nearly identical work, and if so, each may independently demonstrate the necessary originality to support a copyright
  • Dissection
    • copying-in-fact
      • ok to do
      • can examine and compare elements independently of their place in the work as a whole
    • infringing similarity
      • not permitted
      • works compared in the while form
      • expert testimony is not permitted
      • question of similarity is measured by a lay audience, represented by jury

How Isley showed, that after 25 years Bolton infringed?

  • 2 things, that are not elements, but evidence that makes a good taste
    • Access
      • How can Bolton show lack of access?
        • widespread dissemination never reached him
        • lack of direct link
    • Similarity
      • must not be explained by innocent creation
      • innocent explanations
        • both base their work on the same thing (Rugs Case)



  • about drawing the line between a modification so slight that liability for infringement should be imposed nonetheless and modifications so substantial that the creator of new work should be immune from the predecessor's claim
  • Circumstances
    • D incorporates only a portion of work into a larger new work
    • D incorporates all of the work into a larger work
    • D neither expands, nor contracts, but presents the work in an altered form


Tufenkian v. Einstein
2d Cir. (2003)
Substantial Similarity: Total Concept & Feel Analysis

Facts: Tufenkian copyrighted a Heriz carpet that he designed by combining two public domain images and doing minor editing.  Defendant, retained former co-worker of Tufenkian and designed Bromley carpet.  Tufenkian sued for infringement

Legal Standards

  • Average Lay Observer Standard (not employed in Tufenkian):  whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work
    • The parties' works are substantially similar if the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same
  • Discerning Observer Standard (used in Tufenkian):  whether the two works share the same "total concept and feel" from the perspective of more sophisticated viewer
    • used where P's work is based largely on public domains sources

Legal Principles

  • Analysis Employed
    • Total concept & feel
      • dissect the work in order to clarify what is not original (public domain)
      • those elements that are in public domain should be factored out (no plagiarist can excuse the wrong by showing how much of his work he did not pirate)
      • than tell the jury what to consider, what to compare

Public Policy Goals:

  • Facts and ideas should remain in the public domain and free for others to use
  • Support the interest of the creative compiler in drawing on public domain elements to produce a creative and protectible work
  • Substantial similarity is intended to identify substantial similarity of protected material

Application of legal principles:

  • Determining originality
    • design must not be
      • uniform / homogeneous simplification
    • design (from public domain) must be
      • selective
      • particularized
      • non-mechanical

Holding:   Bromley copy is near-exact copy of the Heriz and therefore infringing

Not ordinary observer test.  Trying to figure out whether D took originality that P had.  So in most copyright cases, turning things over to the jury will do, in contrast to the patent world where judges decide patent as a question of law.

In copyright cases, if the matter is complicated, you can still use lay jury, but bring in the experts to testify.

In this case, why can't we ask regular jury? 

  • D goes a step beyond then using public sources
  • it is not just public domain source
  • D copied non-copyrightable work - he copied the public domain part
  • in this situation use discerning observer test

What made P's work copyrightable?

  • arrangements of flowers

What did D copy?

  • stick figure border part (idea)
  • put a beetle in

Principle:  adding original elements is not by itself save you from substantial similarity

D copied a lot of "absences" from the P's rug.  P simplified public domain design - made a lot of choices in choosing which elements to omit (i.e. removing things can be creative).  Court found creative originality in  simplified version.  Court furthermore found a lot of similar "omissions" from the infringing rug.



First Sale

  • once the copyright owner has sold a particular copy of the work, the owner of that copy may lawfully dispose of it by gift, resale, or rental, without interference by the copyright owner
  • owners of lawfully obtained copies of the work are still prohibited from reproducing the work or preparing derivative works without the permission of the copyright owner
  • narrower then fair use
  • defense to distribution
  • Sec. 109 of Copyright Act


Lee v. ART
7th Cir (1997)
Derivative Work Case

Facts:  ART purchased Lee's note cards and mounted them on ceramic tiles (covering the art with transparent epoxy resin) and then resold the tiles.  Lee challenged this practice as derivative works that required her permission

Issue:  whether card-on-tile is a derivative work

Definition (17 USC 101):  A derivative work is work based upon one or more preexisting works which may be transformed or adapted.  A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole represent an original work of authorship, is a derivative work

Reasoning:  the art is bonded to a slab, but not changed in the process.  It depicts exactly what is depicted when it left studio.  Mounting work is not "transformation"

Distribution violation?

  • there is violation, but it is covered by first sale defense

The moment author's copyrighted book is sold, they are exhausted.  Although the tile is distribution, the painting on it is exhausted by virtue of the first sale defense.

Focus on 17 USC 106 (Learn it)

  • here, specifically 17 USC 106(2) - derivative work

Case gets you at public policies - not to tie up object with remote copyright claim (do not have long leash to prevent reframing)


Sec. 106. Exclusive rights in copyrighted works

    Subject to sections 107 through 122, the owner of copyright under 
this title has the exclusive rights to do and to authorize any of the 
        (1) to reproduce the copyrighted work in copies or phonorecords;
        (2) to prepare derivative works based upon the copyrighted work;
        (3) to distribute copies or phonorecords of the copyrighted work 
    to the public by sale or other transfer of ownership, or by rental, 
    lease, or lending;
        (4) in the case of literary, musical, dramatic, and 
    choreographic works, pantomimes, and motion pictures and other 
    audiovisual works, to perform the copyrighted work publicly;
        (5) in the case of literary, musical, dramatic, and 
    choreographic works, pantomimes, and pictorial, graphic, or 
    sculptural works, including the individual images of a motion 
    picture or other audiovisual work, to display the copyrighted work 


Secondary Liability

  • Casebook 473–502 (Fonovisa, Grokster, Perfect 10)


3 kinds of secondary liability

  • Vicarious
  • Contributory
  • Inducement

All are common law, no statutory equivalent

Vicarious Liability

  • requires
    • right to control
    • ability to control
  • direct financial interest

Contributory Liability

  • knowledge of infringement
  • material contribution

Jointly and severally liable for infringement

  • requires direct infringement


Secondary Liability Types

  • Contributory
    • party substantially participates in an activity
    • party knows that copyright infringement is the probable result
  • Vicarious
    • party benefited financially from the infringement
    • party had the power to control the activity that produced infringement

Fundamental Principle

  • there can be no secondary liability unless someone is identified as a primary (i.e. direct) infringer


Fonovisa v. Cherry Auction
9th Cir. (1996)
Vicarious & Contributory Liability Case

Facts:  Fonovisa, an owner of copyrighted music sued Cherry Auction, a flee market operator for copyright infringement.  Although Cherry Auction was not directly infringing, it allowed vendors to sell pirated music.  Cherry Auction supplied parking, did advertising, and retained the right to exclude vendors for any reason any time - including for patent and trademark infringement.

Vicarious Liability

Legal Principles

An operator of the venue where infringement occurs is liable for infringement even if that infringement was done by a different party so long as the operator

  • controls the premises
  • derives substantial financial benefit from the infringement

Adjudicative Rules

  • Control
    • actual knowledge by the operator about the infringement is not required
    • formal, contractual ability to control direct infringer is not required
    • mere ability to police direct infringers is sufficient to satisfy control requirement (i.e. right to control)
  • Financial Benefit
    • Element of Causation: but for provision of venue, there would be no infringement
      • direct benefit (such as in form of commission fees) is not required
      • benefit does not have to flow directly from the direct infringers - benefit may come from incidental sources (such as public / public attention - drawing customers, see substantiality)
      • Substantiality includes
        • admission fees
        • concession stand sales
        • parking fees

knowledge is not required (gets pushed to contributory side)


Contributory Liability

Legal Principles:

One who with knowledge of infringing activity, induces, causes or materially contributes to the infringing conduct of another is liable for contributory infringement

Adjudicative Rules:

  • Knowledge
    • Things that lead to constructive knowledge
      • Raid from the Sheriff's office (thing of the past)
      • Sheriff's letter notifying contributory infringer about the on-going sales of infringing material (thing of the past)
    • Concerns with interweaving of direct infringer's activities and the activities of the third party, rather than by their legal relationship (not relevant)
      • Can evaluate at
        • direct infringer level
          • knowledge of the character
          • nature of business
        • transaction level
          • infringing transaction v. innocent transaction
  • Material Contribution
    • Facilitating environment and market for infringing sales to thrive
      • Providing site and facilities
        • it is enough by itself to establish material contribution
      • Providing utilities, parking , advertising, plumbing, and customers
      • Failure to comply with police request
        • provide information about direct infringers

Source of knowledge

  • How do you characterize the knowledge?
    • do not have the specific notice that at that time at this place the infringement will occur
    • this type of knowledge is of general kind - constructive kind


Sony Case Discussion (pg. 480)

  • Sony cannot control how VCR is used once it is out of their hands (vicarious liability is not applicable)
  • Contributory side
    • VCR contributes to infringement materially
    • Knowledge
      • if know specifics, then have duty to stop
      • if only general knowledge, then OK so long as other
  • Rule:
    • Device with substantial infringement uses is shielded from vicarious liability but not contributory liability
    • Devise must be capable of substantial non-infringing uses
    • Defense to contributory copyright liability
    • keep in mind the Grokster - intent to cause infringement, then can't avail yourself to Sony defense


Napster Case

Control: have the server



MGM v. Grokster
US Supreme Ct. (2005)
Inducement Infringement (3d test)

Facts:  Grokster designed a file sharing software (peer-to-peer network).  Promoted the software to the users, suggesting its copyright infringement potential.  MGM sued Grokster under the theory of secondary liability

Vicarious Liability - part of inducement test

Legal Principles

Vicarious liability is established when one is profiting from direct infringement

  • Unlike Fonovisa v. Cherry Auction, control requirement is absent.  Only profit

Adjudicative Rules

When ones volume determines the monetary gain (profit) that is enough to establish vicarious liability


The extent of software's use determines the gain to the distributors.  The commercial sense of the enterprise turns on high volume use. (prof says that this statement is only to support the bad intent, rather then talk about vicarious liability)

Contributory Liability - part of inducement test

Legal Principles

One who distributes a device with the object of promoting its use to infringe copyright (impermissible purpose), as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.

  • Contributory negligence is established when one intentionally induces or encourages direct infringement
  • a.k.a. Inducement Rule

Adjudicative Rules

  • evidence must go beyond a product's characteristics or knowledge that it may be put to infringing uses
  • evidence must show
    • statements and/or actions directed to promoting infringement
    • active steps taken to encourage infringement
    • one form of such evidence is advertising
    • another form of such evidence is instructing someone on how to infringe (in form of email instructions / customer service support)
  • focus is on purposeful, culpable expression and conduct


  • Aim to Satisfy a Known Source of Demand for Copyright Infringement
    • those who accepted D's software, fact finder could conclude as the ability to download copyrighted music files
    • Ads / solicitations broadcasted messages designed to stimulate others to commit violations
      • distribution of newsletters containing links to articles promoting infringement
      • coding search engines to be associated with Napster (OpenNap)
    • Affirmative response to request for help in locating and playing copyrighted materials
  • No attempt to develop filtering tools or other mechanisms to diminish the infringing activity
  • Direct evidence of unlawful objective


Inducement Infringement Test (Some perceive it as a part of contributory liability, prof. likes us to think of it as a separate prong)

  • someone intentionally inducing infringement
  • focus on bad mental state



Perfect 10 v. Amazon - Prof. did not discuss in class
9th Cir. (2007)
Contributory & Vicarious Liability Case (Google Case)

Facts:  Perfect 10, an erotic photo online magazine sued Google and Amazon for infringement of their copyrights.  Specifically, when the image query in Google provided images of Perfect 10: both via links (including that of unauthorized third parties) and via its own server (in a form of smaller image).

Contributory Liability

Legal Principle

One infringes contributorily by intentionally inducing or encouraging direct infringement

Adjudicative Rules

  • defendant must actively encourage infringement through specific acts
  • if the product is not capable of substantial or commercially significant non-infringing uses, that can be considered as active encouragement
  • defendant knowingly takes steps that are substantially certain to result in direct infringement
    • principles of imputed intent / common law fault based liability
      • if the actor knows that the consequences are certain, or substantially certain, to result from his act and still goes ahead, he is treated by the law as if he had in fact desired to produce the result
  • Failure to Act (Napster Test)
    • If one knows of infringing activity (within its controlled space) and fails to act upon it, that actor contributes to infringement
      • if a computer system operator learns of specific infringing material available on his system and fails to purge such material from the system, the operator knows of and contributes to direct infringement


  • Google cannot be held liable solely because
    • the design of its search engine facilitates infringement
    • it did not develop technology that would enable its search engine to automatically avoid infringing images
  • Google could be held contributorily liable if it had knowledge that infringing Perfect 10 images were available using its search engine, could take simple measures to prevent further damage to Perfect 10's copyrighted works, and failed to take such steps

Vicarious Liability

Legal Principle

One infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it

Adjudicative Rules

  • Requires
    • Control over the direct infringer implies
      • legal right to stop or limit the directly infringing conduct
        • contractual advertising relationship between search engine operator and infringing third-party websites is irrelevant for the purposes of control assessment, so long as that third party would still be able to continue infringing on copyrighted material
      • practical ability to stop or limit the directly infringing conduct
    • Direct financial benefit from direct infringement
  • The search engine operator that has contractual advertising relationship with infringing third party websites


  • Google has no legal right to limit third-party websites from distributing infringing copies
  • Google lacks the practical ability to police third party sites
    • no software that can analyze every image on the internet
  • Third party websites would be able to infringe Perfect 10s copyrights whether or not Google excercises its power to terminate a contractual AdSense relationship with them
  • My comments:
    • it looks like on Vicarious side, Google failed to persuade the court on "direct financial benefit" argument, but succeded on "control" arugment
      • conclusion: must have both control and direct financial benefit




Fair Use

  • Casebook 529–61 (Sony, Harper & Row, Campbell)

Fair use is a complete defense - need to know for exam

  • generic defense
  • 4 factor analysis


17 USC 107.  Limitations on exclusive rights: Fair use

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.


Sony v. Universal
US Supreme Ct. (1984)
Fair Use Doctrine Case

Facts:  Sony manufactured video tape recorders, which were capable of recording copyrighted works on a television.  Surveys showed that the primary use for tape recorders was time-shifting.  Universal sued Sony for infringement due to marketing of the product.  Non-direct revenue stream.

Legal Principles:

Substantial Noninfringing Use Doctrine:  Use that has no demonstrable effect upon the potential market for, or the value of, the copyrighted work need not be prohibited in order to protect the author's incentive to create

Adjudicative Rules

  • if the activity is of commercial or for-profit nature, then the activity would be presumed unfair; if the activity is not commercial and of nonprofit nature, such activity is presumptively fair
    • to overcome presumption of fairness challenger must show
      • particular use is harmful
      • if the use should become widespread, it would adversely affect the potential market for the copyrighted work
      • actual present harm need not be shown
      • must demonstrate meaningful likelihood of future harm


  • Sony demonstrated that substantial number of copyright holders would not object to having their broadcasts time-shifted by private viewers (i.e. particular use is not harmful)
  • Universal failed to demonstrate that time-shifting would cause harm to the potential market of copyrighted works

Other Notes:

  • Statutory Immunity
    • 17 USC 1008
      • No action may be brought alleging infringement of copyrights based on the manufacture, importation, or distribution of an audio recording device / medium based on the noncommercial use by a consumer of such a device or medium
    • immunity for the noncommercial consumer creation of musical recordings using recording medium
    • e.g. making mix tapes for private parties is legal

You can watch the tape you found on the street

  • not a copy
  • private use

Made a copy of the TV?

  • infringement

Push it back to VCR?

  • no infringement

Thing to notice / point: Record Button

Court is looking at what happens to the tape later.  Fair use looks at the whole picture.

Other factors:  Copyright owner (producer of the show) permits the copying.  Court could stop there, because there is no infringing use.  Therefore fair use doctrine is not applicable

Unauthorized Time-shifting

  • Purpose of the Use
    • Noncommercial (i.e. if you tape Jaws you're not buying cassette does not count as commercial)
  • Nature of the work - not much to tell us
    • Published (i.e. made available to public at large)
    • Expressive
  • Amount and Substantiality
    • did not discuss much
  • Effect on the market
    • this factor, along with 3d factor recedes into the background
    • if you time-shift you'll probably will just watch it once

Factual questions are questionable.  Time-shifting is also questionable.


Harper v. Nation
US Supreme Ct. (1985)
Fair Use Doctrine (Excerpts) - factor 1 matters a lot

Facts:  President Ford contracted Harper to publish his memoirs.  Harper received an agreement to publish Ford's memoirs and an exclusive right to license prepublication excerpts.  As memoirs got close to completion, Harper made an agreement with Time magazine: $25000 in exchange for the right to excerpt 7500 words from Mr. Ford's memoirs (regarding Nixon's pardons) one week before publication date.  Navasky, a publisher of Nation magazine clandestinely obtained a copy of the manuscript and published the excerpts without permission.  Navasky knew that his possession is not authorized.  As a result of Navasky's publication, Time magazine cancelled the contract.

Issue:  whether  Nation's copying of 400 words (i.e. 13% of the article as a whole) and using excerpts of Ford unpublished manuscript constitutes infringement

Legal Principle(s)

So long as the use of work does not unfairly appropriate the author's original contribution, that work is not infringing

Adjudicative Rules

  • the fact that the work is unpublished is a factor tending to negate the defense of fair use
    • statutory right to first publication is recognized by the Act
    • it is a key but not necessarily determinative factor

Congressional Factors

  • Purpose of the use
    • does the author intend to exploit the value of its infringement
    • is the publication commercial as opposed to non-profit
      • if commercial then presumed to be unfair
        • commercial evaluation technique
          • whether the user stands to profit from exploitation of the copyrighted material without paying customary price (i.e. not whether the sole motive of use is monetary gain)
    • Commercial / Non Commercial
    • Is it favored use? (e.g. criticism, news reporting... etc.)
  • Nature of Copyrighted Work
    • Facts / Expressed
      • whether infringer excerpted subjective descriptions whose power lies in the author's individualized expression
      • whether the expressive element of work exceeds that of necessary to disseminate facts
      • if work is primarily factual than the copyright is thinner
      • expressive works are the norm; factual works have reduced protection
    • Published / Unpublished
      • if work is unpublished the interpretation should be read narrower
        • whether infringement impeded the right to first publication, it encompasses choices of:
          • whether to publish in the first place
          • when
          • where
          • how
      • Publishing is regarded as special commercial exploitation (concept of "unpublished")
      • Copyright has a privacy protection function (don't want to publish due to embarrassment)
      • unpublished work is a point for the plaintiff
  • Amount & Substantiality of the portion used
    • whether the copied work was most interesting and most essential part of the work as the whole
      • qualitative, not quantitative based approach
    • is it more likely to be fair use if D uses less or more of the work?
      • the more you take worse it is
    • Quantitative Aspect
      • copied 300 words out of 200,000
      • cannot dilute out by adding irrelevant text
    • Qualitative Aspect
      • the "heart" of the work
      • capture expressive part of the book
  • Effect on the market
    • whether infringement materially impairs the marketability of work
    • must establish the reasonable probability between infringement and a loss of revenue
      • whether the damage would have occurred had there been no taking of copyrighted expression
    • market effect on original copyright
      • need to protect copyrighters incentives
    • question: if your use is to become widespread what effect on the market would there be?


  • Purpose of the use
    • the author made a "news event" out of infringement
    • circumvent the copyright holder's commercially valuable right of first publication
  • Nature of Copyrighted Work
    • copyright holder had an interest in confidentiality
    • Nation's publication gave no opportunity for control
  • Amount and Substantiality
    • excerpts are structured around dramatic focal points of the manuscript
  • Effect on the market
    • Time cancelled its contract

400 words is enough for substantial similarity

News report is mentioned in Sec. 107

  • closer to the line case
  • how is news reporting promote society interest?
    • people learn about the world and develop opinions about things
  • How this type of current events is different?
    • message not of the news per se, but the fact that they got this manuscript first
  • Is the use one of those listed in Sec. 107?  Is it specially favored by the public policy?
  • Whether it is commercial or non-profit
    • non-profits are less likely to be doing bad things
    • trust more b/c not in it for the money
  • Purpose?
    • commercial definition is not like the one in IRS... so if non-profit (as defined by IRS) sells magazines commercially, then the purpose is considered commercial


Bad faith is a non-statutory factor to be considered in adjudication



Campbell v. Acuff-Rose
US Supreme Ct. (1994)
Fair Use Case (Parody Context)

Facts:  Campbell wrote a parody song - Pretty Woman - mimicking the original "Oh Pretty Woman."  Proposed royalty arrangement to the copyright holder of the original.  After copyright holder refused, proceeded with the album release, which sold over 1/4 million copies.  Copyright owner of the original sued.

Legal Principles and Application

The purpose and character of the use

  • Is it commercial in nature?
  • parody needs to mimic and original to make its point
  • parody may or may not be fair - cannot employ any presumptions
  • must be judged on case by case basis
  • can the parodic character be reasonably perceived?
  • Transformative Use - if transformative use, then wins
    • adds something new with the further purpose or different character
      • if you're supplanting - not good fair use case
      • if you're adding to it by throwing lots of originality then it is good for fair use
    • borrowing things that are necessary
      • you can't parodise without copying
    • the overall collage was transformative

The nature of the copyrighted work - barely enter into the case

  • some works are closer to the core of intended copyright protection than others
  • parodies almost invariably copy publicly known expressive works

The amount and substantiality of the portion used in relation to the copyrighted work as a whole- barely enter into the case

  • there must be justification for particular copying done
  • parody must be able to "conjure up" at least enough of that original to make the object of its critical wit recognizable - if Campbell copied significantly less memorable part of the original, it would be difficult ot see how its parodic character would come through
  • Campbell not only copied the first line of the original but departed markedly thereafter for its own ends
  • How much did you take as compared to how much you needed to take in order to make your parody?
    • i.e. are you really making a parody

The effect of the use upon the potential market

  • What is the extent of market harm caused
  • Would unrestricted and widespread conduct of D result in a substantially adverse impact on the potential market of the original
  • How would  adverse ruling (to D) affect the market of derivative works
  • This is not to be used with criticism that suppresses demand (not relevant for the court purposes)
    • example: parody scathing theater review which is
  • Could copyright holder say that there is a market to license the rap versions of Pretty Women songs?
    • changing genre is not a problem
    • argument is circular and cannot by itself win it
    • Test: is the market traditional? reasonable? or likely to be developed?
      • the case is remanded for consideration on this issue

Parody is important to our culture: use of criticism

Parodist is unlikely to make permission: don't trust the author for the criticism of the original value

Distinction between parody and satire


Review: Google Book Search


Google Book Partnership program

  • partnered with libraries
  • scan the books, make them searchable, and show snippet button

Copyright issues

  • Books are copyrightable
    • original creative expressions
    • fixed to tangible medium (from library)
  • Idea / Expressison:  When Google photograhps, are google scans of the books copyrightable?
    • infringement / copyrighability
    • Google's Scans are not original (the picture itself has no copyrightable expressions)
    • contributing no originality
    •  Objection:  to hte extent their scanning infringes would be overall uncopyrightable derivative work
  • Whether Google actually infringed?
    • is the Google infringin on exlusive rights (i.e. rights to reproduce copies)
    • Servers are the tangible objects that makes it a copy
    • Infringement: did it copy form books / are they substantially similar
      • yes - substantially similar
    • Other exclusive rights infringement?
      • distribution
    • Fair Use
      • a few sentences is enough to potentially infringe the fair use
      • Google Books Searchable
        • Factors
          • Purpose
          • The purpose and character of the use
            • use that furthers knowledge and enhances public benefit
            • commercial use
            • transformative use?
              • change in media will not be sufficiently transformative
              • search itself could be construed by transformation in purpose (only 2d and 9th Cir. adopted)
          • The nature of the copyrighted work
            • published work
            • expressive / factual
              • who does it wind up favoring
                • Plaintiff is likely to be an author of highly expressive book
          • The amount and substantiality of the portion used in relation to the copyrighted work as a whole
            • How much has been taken?
              • under snippet view not much
              • is snippet a heart of the work?
            • What about the scan i/o snippet?
              • not making it available
              • need to scan the whole book to make it searchable
              • it is part of the scanning
              • did no more then what is necessary
              • if buy transformative argument, then need to buy this argument too
          • The effect of the use upon the potential market
            • reduces the incentive for authors to make things available again
            • if need for snippet then will not buy it

Legitimate licensing market for making the books searchable?

  • Google is a first comer
  • Not clear there is a market for search ability piece

Settlement is structured in a way where Google is not directly paying, thus google can avoid saying that there is a licensing market for scanning and searching.

Secondary Liability

  • Libraries are shipping books to Google
  • Are libraries secondarily liable?
    • Vicarious Liability
      • Control Rights
        • Libraries can prevent Google form scanning
      • Direct Financial Benefit
        • Google is not paying for it
        • Give back the libraries the digital copies
    • Contributory Liability
      • Knowledge
        • Libraries know
      • Material Contribution
        • Yes, books are material, libraries are providing them
      • looks like Libraries are contributory infringers
    • Counter argument: 
      • First sale shields the libraries from liability
      • But not shielded necessarily from Google acts of infringement


Most books don't sell that well.  Copyright ownership is forgotten over time.  Result, nobody sure who owns a copyright.  Situation: no way to get a copyright license because the owner is not known.

Therefore, the settlement and lawsuit is big deal.  A lot of owners will not sue, some like S. King will.  Google cannot differentiate.  It needed a "fair use" win in order to proceed, or it will have individual lawsuits. Now, after negotiated with everyone, then in better position.  On the settlement it is not just scanning, it is also selling (digital copies), pays 63% to the copyright owner.  System: all copyright owners are deemed to have authorized unless said otherwise.  Good for orphan works, b/c will never show up.  So, what happens to unclaimed funds: donated to charities that benefit authors / pays registry's expenses / gets redistributed between authors who have shown up.  This way is fair to copyright owners.  It works because it is class action on behalf of all copyright owners. 

Class action is still out for approval.

Is class action fair to class members?  Does not seem fair.  Settlement has a good opt out book (just opt out - give Google a notice)

Make orphan work more available, but problematic b/c the Google is not the sole owner.



Part IV: Trademark and Unfair Competition

Elements of trademark infringement

  • the use of someone else trademark that causes confusion


  • reduction of search costs

    • reduction of mistakes costs

    • reduction of other waste

  • b/c cost is reduced society is better off

  • incentive for goodwill  investment

    • value that comes with positive association

Cause of action is available when D's mark causes confusion

  • consumers actually have to associate the mark with you / your product

  • never have marks in the abstract

Federal / State interaction

  • Registration creates confirmation

It is conventional to write the trademark name in CAPS

Can use the trademark on or for the goods


Introduction, Distinctiveness

  • Casebook 19–37 (Horizon Mills, Bristol-Myers)
  • Casebook 116–22 (Rock and Roll Hall of Fame)


To obtain protection for its mark, a seller must use the mark in commerce to distinguish its goods and services from those of others.  Trademark protection is available without any formal registration requirements, but both state and federal statutes provide more protection for registered marks.  Common and statutory law protects only marks that are capable of identifying and distinguishing the user's goods or services from the goods manufactured or sold by others.

Applicable law:

  • Lanham Act
  • 15 USC 1051 - 1127

Whether consumers are likely to recognize / associate specific term or symbol with the product of a particular manufacturer

  • mark should indicate a particular source (not to be confused with manufacturer)

Whether the term is descriptive?

  • not inherently indicators of source
  • inherently descriptors of goods

Secondary Meaning

  • when the efforts of the user of the mark have created sufficient consumer recognition of the term as a source indicator that the source indicating meaning dominates the merely descriptive meaning


Distinctive Elements


  • used for entire class of goods
  • e.g. water, thermos
  • no way to to describe the good by others rather then using that word
  • never trademarkable if generic to start with
  • if it becomes generic, then you lose trademark rights
  • never protectible
  • genericide does not apply to coloring and distinctive appearance, only the word itself

Descriptive - risky, but great for marketing (want positive association with brand): source of tension between legal and marketing

  • capable of becoming trademark if public associates you with the product (a.k.a. secondary meaning)
  • protectible upon the showing of secondary meaning


  • suggest quality good
  • do not directly describe them
  • e.g. coppering (for sun block screen)
  • considered to be distinctive enough to be a trademark


  • real words descriptive in some context but disconnected in the context
  • "apple" computer
  • considered to be distinctive enough to be a trademark

Fanciful  - most protectible

  • completely invented
  • e.g. XEROX
  • considered to be distinctive enough to be a trademark


Class Example Pictures

Taco House

  • generic
  • descriptive

Pakistan Tea House

  • descriptive

Mike's Papaya

  • not descriptive, b/c not selling papaya - sell hot dogs
  • generic if contextual (what does the public in the area would understand) - New York City Market Generic
  • Can be descriptive due to secondary meaning
  • Weakly protected mark

Jewelry & Watch Inc.

  • generic

GoldenKrust (carribean bakery & grill)

  • suggestive: not buying crust

We are nuts about nuts

  • suggestive


  • submarines got genericided
  • suggestive
    • play on the double meaning of sub

The Patriot

  • arbitrary

Dunkin' Donuts

  • donuts by themselves are descriptive
  • dunkin' is suggestive (dipping)
  • secondary meaning developed is very powerful

Amish Market

  • it is grocery store


  • generic

West Broadway Cleaners

  • descriptive b/c says where it is
  • cleaners by itself is generic
  • visual logo is strong
  • if not on the West Broadway, then arbitrary


  • suggestive, bordering on fanciful

Jamba Juice

  • fanciful (Jamba)
  • Juice is generic


Horizon v. QVC
SDNY (2001)
Generic v. Descriptive Meaning Case

Facts:  QVC used word "slinky" in marketing of its products.  Horizon, who had earlier registered "SLINKY" with USPTO, sued for infringement

Issue:  Whether "slinky" bears a descriptive or generic connotation

Legal Principles:  If the word historically have been descriptive, but later adopted for association with specific product that a company registers, that company is entitled to the trademark protection of that product's name despite the fact it was historically descriptive

  • 5 terminological trademark categories: Generic, Descriptive, Suggestive, Arbitrary, Fanciful

  • Public Policy Aims

    • concern with consumer protection
      • aim to prevent confusion among the public resulting from fraud and deception in the marketing and sales of products


Legal Foundation of Generic

  • refers to genus / class of product (i.e. not particular product)

    • can be adjectives (not only nouns)

      • examples

        • matchbox cars

        • Miller Lite

  • can never indicate the origin of the product

  • in accord with public policy (see below) and therefore afford no trademark protection (consumer would already know what they are buying)

  • if majority of the buying public (i.e. general consumer) associates the term with a product, rather than the source of the product (regardless of whether source is known), than that product is generic

Adjudicative Rules for Generic Determination

2 Principal Circumstances for affirmative generic determination

  • Seller appropriates an existing generic term and claims exclusive rights in it as a "trademark" of that term

    • seller never had trademark rights

    • plaintiff needs only establish that the term is generic through an examination of the term itself

      • examples

        • flor-tile: wooden flooring

        • cola: soft drink

        • hog: large motorcycles

  • Seller establishes trademark rights in a term which a majority of public then appropriates as the name of a product

    • trademark rights cease, and the product becomes a victim of genericide

    • reasons for genericide

      • trademark owner's failure to police the mark resulting in widespread usage by competitors

      • public's inability to call the product by any other name than the trademarked term

    • examples

      • aspirin: acetyl salicylic acid

      • cellophane: transparent cellulose sheets

      • escalator: moving stairway

      • Thermos: vacuum insulated bottles

Evidence admissible in courts for Generic Determination

  • seller does not contest / object

  • seller himself uses the term generically

  • dictionary definitions

    • lush, fluid, and clinging fabrics that have a close fit on the figure

  • media usage (newspapers, magazines)

    • it is not necessary to symbolically designate a trademark (©,™): mere capitalization is enough (i.e. "Slinky") in order to show trademark recognition

  • consumer surveys

    • in trademark litigations, consumer surveys are highly encouraged (but not required)

Rebuttable presumption (on part of the defendant) that trademark registration creates

  • term is not generic

  • term is merely descriptive

  • term is accorded secondary meaning by the public

  • Application

    • court must presume that SLINKY is not generic b/c it has been registered


  • deals with "how it is" not with "what it is"

  • differentiated from "generic" by the nature of degree

  • supplies the characteristics and qualities of the article, its color, order, function, dimensions

  • if the term is determined to be descriptive, defendant must proof a "secondary meaning"

    • Secondary meaning deals with consumers' recognition of the term and association with a source

      • Primary Significance Test

        • Primary Significance of the term in minds of the consuming public must be the producer rather then the product in order to court to uphold the trademark validity of that producer

        • The term is generic if the principal significance of the word is the category

        • For example, SONY only has a source-indicating significance, while TiVO has a dual function indicating the source (i.e. supplier) and the category of goods (TV)

      • a.k.a. Genus - Species Test

        • Genus: category of goods (e.g. shredded wheat cereals)

        • Species: particular manufacturer (Nabisco)


  • QVC persuaded the court by presenting evidence (dictionary, media) that "slinky" is a common descriptive name, but failed because
    • "slinky" describes characteristics / qualities of several classes of garments which have a sinuous, sleek texture that hugs the body
    • "slinky" does not identify a specific material or garment
    • "slinky" before Horizon's registration did not classify the garments to which it was attached (e.g. slinky gown or dress)
    • "slinky" described the visual / textual characteristics of garments
    • Horizon adopted the descriptive term in developing its new material consisting of acetate and spandex - therefore not historically generic but descriptive
  • QVC had shot itself in the foot by promoting Ads where slinky was not used as a descriptive adjective but rather with reference to a distinct type of fabric
    • "Slinky is an incredible fabric that looks great on all sizes and body types"
    • "Dresses and sportswear made of Slinky are perfect for work, casual, or dressy occasions"


Generic Nouns and Adjectives

  • to acquire trademark rights a supplier must choose a distinctive mark as its source indicator
    • Bud Light is a species of the genus Light Beer, because Bud indicates source
  • Generic nouns and adjectives are incapable of being distinctive and cannot obtain trademark protection

Context (Arbitrariness)

  • Ivory would be generic when used to describe elephant tusks, but arbitrary when used in the context of soap
  • BEERMAN may be generic for beer vendors at ball games, but arbitrary when used in connection with sales of clothing
  • If word is misspelled, consumers are likely to associate it with source, not description (Swim Skool)



Bristol v. McNeil
2d Cir. (1992)
Descriptive v. Suggestive Categories

Facts:  Bristol a producer of Excedrin PM sued McNeil, a producer of Tylenol PM for affixing "PM" which is allegedly subject to trademark protections.  Bristol did not register neither Excedrin, nor PM with USPTO.

Procedural Adjudication

First plaintiff must establish that the trademark / trade dress is of the type that deserves protection under Sec. 43

Second, plaintiff must show that the allegedly infringing trademark will cause consumer confusion

To overrule the District Court, appellant must show that the lower court's ruling was clearly erroneous

Issue:  whether "PM," when affixed to an analgesic trade name has direct enough connection between PM and nighttime sleep aid (descriptive category) or the connection is more indirect, which is suggestive category

Legal principles under Sec. 43 Inquiry

  • Category of trademark?
    • generic
    • descriptive
    • suggestive
    • arbitrary
    • fanciful
      • EXXON in connection with petroleum

    Context:  The word "apple" would be arbitrary when used on PCs, suggestive when used in "Apple-A-Day" on vitamin tablets, descriptive when used in "Tomapple" for combination of tomato-apple juice, ad generic when used on apples

Descriptive Category Legal Principles

Eligible for protection only if become distinctive of the producer's goods in commerce (a.k.a. secondary meaning)

  • public must primarily associate the product with a particular source
  • if the plaintiff can show that the descriptive term is primarily associated with a single producer, a sufficient question is raised to justify further inquiry into the likelihood of confusion
  • secondary meaning is a factual determination
    • Must introduce evidence
      • advertising expenditures
      • consumer studies
      • sales success
      • unsolicited media coverage
      • attempts to plagiarize
      • length and exclusivity of use
    • Use Primary Significance Test
    • The goal is to successfully establish the source - indicating power of a term rather then simply expenditures
      • consumer surveys may be particularly helpful


  • conveys an immediate idea of the ingredients, qualities or characteristics of the goods
  • 2 types of description
    • Literal
    • Description of the Purpose / Utility of the product

Suggestive Category Legal Principles

  • requires imagination, thought and perception to reach a conclusion as to the nature of goods
  • does not require P to prove secondary meaning in order to qualify for trade mark protection


  • PM acts as modifier
  • PM does not literally describe the presence of a sleep aid in the product
  • PM refers to purpose / utility
  • PM may suggest a nighttime product (i.e. not clearly erroneous - i.e. will not be overruled) - therefore descriptive
  • Question of secondary meaning
    • the burden was on Bristol to establish lack of secondary meaning not on McNeil to establish that it is present

Other Notes

Descriptive / Suggestive Methodologies (3 of them)

  • How much imagination is required to infer what the product is or is like, keeping in mind that buyers do not spend much time thinking
    • Whether the mark directly conveys an unequivocal idea about characteristic, function, quality, or ingredient of the product or service to a reasonably informed buyer
  • Whether some reflection / multistage reasoning is required to infer what the product is or is like
    • the more imagination, reflection, or reasoning required, the more likely the mark will be considered suggestive rather than descriptive
  • Whether, even if the mark tells something about the good or service, it is equally likely to conjure up some other, purely arbitrary connotation

Classification / Strength

  • the weaker the mark, the more evidence courts require to prove that an alleged infringer's mark causes confusion
  • frequency of use by others

Good way to show is make a consumer survey.  Bristol's argument is awful - intentional copy is circular.



Rock And Roll Hall of Fame v. Gentile
6th Cir. (1998)
Source Indicator for Good / Service Case

Facts:  Museum had an original architecture design.  It registered building design and the words "THE ROCK AND ROLL HALL OF FAME" as trademarks.  Gentile, on its own made photographs of the museum and started selling them.  Museum sought injunction to prevent Gentile from selling the photograph posters


In order to be protected as a valid trademark, a designation must create a separate distinct commercial impression, which performs the trademark function of identifying the source of the merchandise to the customers.

There is not such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed.

Consumers should be mistakenly led to believe that the defendant's goods are produced or sponsored by the plaintiff.


Museum had not used the image as a trademark.  To be registrable or protectible mark, the device must have been used as a source-indicator, used to identify the source of merchandise or of a service.

The variety or representations of the building (i.e. different corners / angles) indicate that the Museum was not attempting to create a single distinct impression that consumers would identify with the Museum as the source of the goods on which the representations appeared.  Only if consumers came to believe that goods with pictures of the building were all supplied by the Museum could they be confused by another person's use of a similar picture

Other Notes

Cola Analogy (i.e. lack of it)

In Coca-Cola v. Gemini Rising, the Coca-Cola brought an action to enjoin defendant from printing, distributing and selling commercially a poster that consisted of an exact blown-up reproduction of its trademark, with the exception of Cola being a Cocaine (i.e. enjoy cocaine).  Court ruled for Coca-Cola because consumers had been confused about who was the supplier of the poster (no such evidence for Museum), and the likelihood that consumers would believe that Coca-Cola would engage in that sort of pop-art advertising.

Appeal to copyright policy.  Try trademark, but must build association with consumer's mind.  Symbol is recognized but does not stand for anything.

  • consumers need to be confused about source (where the product came from)
  • must be consistent and clear to build up association




Trade Dress and Product Design

  • Casebook 38–62 (Two Pesos, Samara Bros. Traffix, Qualitex)


  • Generic
    • can never be distinctive
  • Descriptive
    • Acquired Distinctiveness
      • Secondary Meaning
  • Inherently Distinct Levels
    • Suggestive
    • Arbitrary
    • Fanciful

Lines of analysis

  • can it be distinctive on its own?

Beyond words

  • graphics
  • font
  • logos with colors and drawings
  • symbols
  • sounds

Trademarks are trademarks because

  • they are source identifiers
  • competitors have no useful need for them


Trade Dress Examples

  • Holstein cow is a trade dress on Gateway Computer Packaging
  • Particular shade of brown on UPS trucks and uniforms is a trade dress


Two Pesos v. Taco Cabana
US Supreme Ct. (1992)
Applicability of the Secondary Meaning Case

Facts: Taco Cabana established its first restaurant in San Antonio in 1978.  Its building design and colors were claimed to be as its distinct features and be considered as trade dress.  Two Pesos restaurant opened in Houston in 1985.  Two Pesos adopted similar motif of Taco Cabana's trade dress.  Two Pesos expanded rapidly into other markets, but did not enter San Antonio.  In 1986 Taco Cabana expanded into markets where Two Pesos was doing business. In 1987 Taco Cabana sued for trade dress infringement

Procedural History:  Trial jury found the Taco Cabana's trade dress inherently distinctive

Issue: whether secondary meaning is required for inherently distinctive categories of marks (suggestive, arbitrary, fanciful)

Legal Principles:

Marks are classified  in categories of increasing distinctiveness: Generic - Descriptive - Suggestive - Arbitrary - Fanciful

  • Suggestive, Arbitrary, and Fanciful are inherently distinctive and therefore entitled to protection

Distinctiveness general rule:

1) either inherently distinctive (i.e. suggestive, arbitrary, or fanciful), or

2) acquire distinctiveness through secondary meaning

Holding:  Secondary meaning requirement only applies to merely (descriptive) descriptive marks, but not inherently (suggestive, arbitrary, fanciful) descriptive ones

Other Notes:

  • in Wal-Mart, Supreme Ct. held that decor of the restaurant is a trade dress but not a product design trade dress.  It is rather product packaging trade dress


  • does not mean one mark looks like other trade marks
  • about seeing the mark and recognizing is as brand name
  • colors always have to have secondary meaning (i.e. can never be inherent) - Qualitex
  • until you have succeed you have no trademark rights

Case is about whether trade dress is capable of being inherently distinctive.  No show of secondary meaning. So must show inherent distinctive.  Must ask, is this capable of ever being inherently distinctive.  For Two Pesos the answer is yes - design of the restaurant

Is it possible for store to have distinctive design?

  • Yes, Apple Store for example

Trade Dress can be suggestive / inherently descriptive

  • gateway computers cow boxes
  • takes product design
  • need to show evidence of design



Wal-Mart v. Samara
US Supreme Ct. (2000)
Product Design Requires Secondary Meaning Case

Facts:  Wal-Mart struck a deal with one of its suppliers to produce a clothing that is similar in the design to that of Samara.  Samara sued Wal-Mart for trademark infringement for its product design

Issue:  whether product design trademark infringement is inherently distinctive or descriptive, therefore requiring the show of secondary meaning


Trade dress requirement requires showing of distinctiveness though

  1. inherent distinctiveness - its intrinsic nature serves to identify a particular source
  2. acquired distinctiveness - developed secondary meaning
    • occurs when in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself

Following marks that are NOT inherently distinct as a matter of law and require showing of secondary meaning

  • color - does not overrule Qualitex
  • product design

Other Notes:

  • After Two Pesos, trade dress may either be inherently distinctive or have acquired distinctiveness (through secondary meaning)
  • After Wal-Mart, product design cannot be considered inherently distinctive because its intrinsic nature does not serve to identify a particular source
    • The design of sersucker children's clothing in Wal-Mart (hearts, flowers, fruits ... etc.) is not obviously source indicating
  • In Joanne (2006) Federal Circuit went as far as interpreting Wal-Mart of requiring proof of secondary meaning whenever the purchase implicates a utilitarian or aesthetic purpose, rather than a source-identifying functions



Qualitex v. Jacobson
US Supreme Ct. (1995)

Facts:  Qualitex has been manufacturing special shade of green-gold color pads (sells to dry cleaning firms for dry cleaning presses).  In 1989 Jacobson began to sell its own press pads to dry cleaning firms and colored its pads in a similar green-gold color.  In 1991, Qualitex registered green-gold color on press pads with the USPTO. 

Issue:  whether trademark can consist solely of color

Legal Principles:

  • So long as the mark is serving source-distinguishing purpose, any source-distinguishing characteristics may be employed
    • Examples of source-distinguishing characteristics
      • shape
      • color
      • fragrance
      • word
      • sign
  • Functionality Doctrine
    • If the product feature is functional it cannot serve as a trademark
      • Trademark law seeks to protect firm's reputation
      • Trademark law does cannot prohibit legitimate competition by allowing the producer to control useful product feature
    • If a design's "aesthetic value" lies in its ability to confer a significant benefit that cannot practically be duplicated by the use of alternative design, then the design is functional (Restatement)


Qualitex developed secondary meaning, where the customers identify the press pad's source by associating it with a color.  Other then source identification, the green-gold serves no other function.  It presents no competitive obstacles as other colors are equally usable for press pads.

Holding:  trademark is valid - in light of the variety of other colors and designs available, the color of the pad did not give the manufacturer any non-repudiation related competitive advantage

Other Notes:

  • court rejects color dilution argument of the defendant - if color depletion arose, the doctrine of functionality would prevent the anticompetitive consequences
  • Non-functional trade dress that is not inherently distinctive and all nonfunctional product designs are registrable only with secondary meaning
  • Source Identification Test
    • does design feature serve any purpose other than to ID the supplier
    • if feature is solely source identifying then the feature is protectible
  • Competition Test
    • is there an alternative to the design feature in question
    • is access to that design necessary for effective competition

Qualitex is for color as applied to its product. Why Jacobson would want to use that color?

  • in consumer mind it is associated with established product
  • free ride on supposedly established high quality
  • no particular reason

Color has no effect on the actual use of the pads.

Where the consumers associate the color with product, as here, it has acquired secondary meaning.  More broad rule:

  • if anything acquires secondary meaning then that can be used as a trademark

Similarity Disputes

  • is my shade of green different from your shade of green

Trademarking Smell

  • difficult to describe smell
  • fixation problem: competitors will not be able to steer clear due to ambiguity



Traffix v. MDI
US Supreme Ct. (2001)

Facts:  MDI had a patent for road sign.  After the patent expired, its competitor Traffix started making similar signs under similar name (Wind-Master / WindBuster)

Issue: whether trade dress is applicable

Legal Principles:

  • Burden of Proof
    • the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional
  • A utility patent is strong evidence that the features therein claimed are functional
    • creates statutory presumption that the features are deemed functional until proved otherwise by the party seeking trade dress protection
  • Where the design is functional there is no need to proceed further to consider if there is a competitive necessity for the feature


  • consumers do not associate the look of the dual-spring device with MDI
  • dual spring device is functional and is essential feature of MDI trade dress allegation
    • springs are necessary to the operation of the device
  • because functionality is established, the question of secondary meaning will not be considered

Holding: product feature is functional and cannot serve as trademark

Functionality Test

  • If it is essential to the use of article or affects the cost or quality of the article
  • functionality is an absolute bar to the trademark
  • functional matter belongs to realm of generic
  • must not interfere with a patent system
  • make sure you are not getting false positives: if your football has better rubber, that does not mean the consumers are buying it because they associate that football with better rubber, but rather because they are getting it because they simply have a better grip on in.
  • competition


  • within trademarks is a trade dress (combination of elements in which the product is presented to the buyer to the extent it designates source)
    • within trade dress is a product design
      • Here, is this particular product design is functional?
        • Yes, b/c patented (strong evidence)
        • Not to be functional it needs to be ornamental and incidental



  • Casebook 66–87 (Phillips-Van Heusen, JT Tobacconists, California Innovations)
  • Casebook 122–25 (certification and collective marks, the supplemental register)
  • Problems 2-8, 2-9, 2-10


Copyrights / patents - rights come purely from act

Trademark - state / federal / common law rights

  • federal registration is a confirmation that you got rights
  • Lanham Act
  • Section referred by Lanham Act (not USC code)
    • have same numbers in the Act as un USC (parallel references)
  • Restriction on registration, for the purposes of this class, are the rules for the trademark

Registration Procedure

  • there is examination process (more rigorous than in copyright)
  • applications are public
  • PTO verifies that there is actual use (send samples of use in commerce)
  • Must not be confusingly similar to something already there
  • Must not be within excluded categories
  • there are opposition / cancellation / interference procedures
  • Administrative PTO Proceedings

Sounds can be inherently distinct

Colors can be both

Generic things can never be registrable


Sec. 2(a)

No trademark by which the goods of the applicant may be distinguished

  • generic / descriptive

... immoral ...

  • problematic b/c govt. is imposing its view
  • First Amendment - if register it than the govt. is preventing others from freedom of speech
  • immoral / scandalous line is getting less important

.... matter which may disparage of falsely suggest a connection with persons

  • dykes on bikes
  • assessed from the perspective of group disparaged by it

Sec. 2(b)... flag or insignia of a nation

  • can't put the Swiss flag without legitimate reasons

Sec. 2(c).... name, portrait, signatures

  • why signature of a living individual problematic?
    • if anyone exploiting it but you, it shall be denied
  • no guaranteed right for you to use the name
  • have guaranteed negative mark to stop others from using your name

Sec. 2(e)(4)... primarily merely a surname

  • means all they see is a last name
  • in category for which you need a secondary meaning to register
  • Examples
    • Garren
      • if no one recognizes it as a name then cannot be registered
    • Silver
      • yes, can be registered


Deceptive, Misdescriptive, and Deceptively Misdescriptive Marks

  • Lanham Act prohibits registration of
    • deceptive marks
    • deceptively misdescriptive marks
      • unless there is proof of secondary meaning
  • Sec. 2(e)(1)
    • merely descriptive
    • can be registered
  • Generic: not registrable
  • Descriptive: must show secondary meaning
  • Deceptively Misdescriptive
    • example: synthetic fabric under name "sypersilk"
    • descriptiveness + falsity
    • do not want someone sneak past description
    • advertising problem: can be deceiving consumers


In re Phillips-Van Heusen Corp.
Trademark Tr. & App. Bd. (2002)
Deceptively Misdescriptive Trademark Case

Facts:  Phillips-Van filed application to register "SUPER SILK" for clothing made of silk-like fabric.

Issue:  whether the term falsely and materially indicates that the applicant's goods contain silk when in fact they do not (i.e. deceptively misdescriptive mark)

Legal principles:  Two part test for deceptively misdescriptive mark

  1. Does the mark misdescribe the goods or services?
  2. Are consumers likely to believe the misrepresentation?

If test above is satisfied, must also satisfy additional consideration:

  • Would the misrepresentation be a material factor in the purchasing decision?

Other markings (not pertaining to trademark), such as FTC labels,  are irrelevant - registration trademark alone must pass the muster

Adjudicative criteria:

  • in order for a term to misdescribe goods / services, the term must be merely descriptive (as opposed to suggestive) of significant aspect of that good / service plausibly possess but in fact do not
  • The term must be considered in entirety


  • SUPER SILK would describe characteristic / feature of any articles of clothing that are made of silk
  • SUPER SILK misdescribes goods inasmuch as they are not made of silk fabric
  • Does the mark misdescribe the goods or services
    • Because silk fabrics have several significant properties which are available in various grades and degrees, including those with superior, excellent or first-rate quality, they can be viewed as super silk fabrics, and therefore term SUPER SILK would misdescribe the goods (fist prong)
  • Are consumers likely to believe the misrepresentation?
    • Customers would believe that such goods, when marketed under the term "SUPER SILK," are made of superior grade of genuine silk.  (second prong)
  • Whether the misdescription is likely to affect the decision to purchase the good
    • presence or absence of silk is a material consideration in a consumer's decision to purchase such items
    • consumers desire silk material (by applicants admission that they would check the fiber content on the tag)
    • silk fabric possesses desirable attributes and therefore is likely to affect the decision to purchase the good
  • FTC mandated labeling is irrelevant
    • the mark standing alone must pass muster, for that is what the applicant seeks to register, not extraneous explanatory statements (Budge)
    • USPTO is in not position of providing constant monitoring of the manner in which the mark appears on the goods

Other Notes:

  • deceptive marks may never be registered
  • deceptively misdescriptive marks may be registered so long as misrepresentation is NOT a material factor in the purchasing decision


3 Part Test - Sec. 2(a)

  • Does the mark attribute to the good's quality it does not have (if yes)
  • Would consumers believe that statement (if yes)
  • Would they buy the product because of it (if yes)

    If yes to all three - mark is deceptive - can never be registered


  • Does the mark attribute to the good's quality it does not have (if yes)
  • Would consumers believe that statement (if no)
  • Would they buy the product because of it (if yes)
    • deceptively misdescriptive
    • Sec. 2(e)(1)
    • can overcome with secondary meaning



Problem 2-8 (pg. 71)

Is the mark APPLE used in connection with computer hardware deceptively misdescriptive?  If so, is it deceptive? deceptively misdescriptive


Problem 209 (pg. 72)

Is DIAMONDLITE trademark in connection with jewelry containing fake diamonds deceptive or materially misdescriptive?

  • Dictionary defines "lite" as containing less than the legal, standard, or usual weight, of little importance, and made with a lower calorie content or with less of some ingredient


Geographic marks:

  • Primarily geographically descriptive marks:  registrable with secondary meaning
  • Primarily geographically deceptively misdescriptive marks: never registrable


In re JT Tobacconists
Trademark Tr. & App. Bd. (2001)
Primarily Geographically Descriptive Marks Case

Facts:  MN corporation, located in MN, filed an application to register the mark "MINNESOTA CIGAR COMPANY."  The company is in business of selling cigars, cigar cases, humidors.  Registration was denied on the grounds that the mark is primarily geographically descriptive of company's goods

Law:  To make a Primarily Geographically Descriptive finding one needs to establish

  1. The primary significance of the mark is that of the name of place generally known to public
  2. The public would make a goods / place or services / place association
    • believe that the goods / services for which the mark is sought to be registered originate in that place

Adjudicative Presumptions:

  • So long as the geographical place is neither obscure nor remote, a public association  with the place (second prong) may be presumed
  • Generic qualifiers in addition to primarily geographically descriptive term does not relevant (i.e. only geographic term must be considered)


  • The primary significance of the mark is that of the name of place generally known to public
    • MINNESOTA CIGAR COMPANY is primarily geographically descriptive of applicant's products
    • B/c MN is one of 50 states, the term is not obscure nor remote
    • "CIGAR COMPANY does not detract or alter the fact that primary significance of the mark as a whole is geographical
  • The public would make a goods / place or services / place association
    • Cigars, cigar cases and humidors (unlike tobacco) are manufactured products which could have their origin anywhere
    • D did not overcome presumption: nothing in the record which even suggests that it would be incongruous for the public to believe that products are produced and shipped in MN

Holding:  Goods / place association exists in that customers for D's goods would believe that its products are made in MN and that b/c its products indeed come from that state, its mark is primarily geographically descriptive of its goods (i.e. MINNESOTA CIGAR COMPANY is not a registrable trademark)


In re California Innovations
CAFC (2003)
primarily geographically deceptively misdescriptive case

Facts.  California Innovations is a Canadian based corporation.  Trademark Trial and Appeal Board refused to register its mark: CALIFORNIA INNOVATIONS.   The board concluded that the mark was primarily geographically deceptively misdescriptive.

Legal Principles:

Due to NAFTA changes, PTO should evaluate geographically deceptive marks under 15 USC 1053(e)(3) new test, where PTO must deny registration if

  1. the primary significance of the mark is a generally known geographic location
    • mark must be evaluated as a whole
    • examiner may weight significance of each element within the mark
  2. the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place
  3. the misrepresentation was a material factor in the consumer's decision


  • the primary significance of the mark is a generally known geographic location
    • CA is a prominent part of mark
      • not overshadowed by INNOVATION, or element design
    • Court declined to affirm the above this part of PTO finding
  • Public is likely to believe that the goods originate in CA
    • evidence cited by PTO - fashion industry, automobile organizers - are immaterial because appellant limited its product appeal to bags and wraps
    • no evidence with regard to bags and wraps

Holding: decision vacated and remanded for application of new 3 prong test.


Grounds for Denial Mark Categories Primarily Geographically Descriptive Primarily Geographically Deceptively Misdescriptive Geographically Deceptive
Relevant Case JT Tobacconists California Innovations Mentioned in CA Innovations
Applicable Law Lanham Act Sec. 2(e)(2) Lanham Act Sec. 2(e)(3) 15 USC 1052(a)
Applicable Timeline Before & After NAFTA After NAFTA After NAFTA
1st Element The primary significance of the mark is that of the name of place generally known to public The primary significance of the mark is a generally known geographic location The mark misrepresents ore misdescribes the goods
1st Element Comparison Same Same  
2d Element The public would make a goods / place or services / place association The consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place The public would likely believe the misrepresentation
2d Element Comparison Public belief must be correct Public belief must be mistaken  
3d Element   The misrepresentation was a material factor in the consumer's decision


The misrepresentation would materially affect the public's decision to purchase the goods
3d Element Comparison   Same Same
Registration Possibilities for (affirmatively established) categories Registration available with secondary meaning If misrepresentation is a material factor in the consumer's decision - cannot be registered

If misrepresentation is NOT a material factor in the consumer's decision - can be registered

Book (pg. 79) says that registration upon showing the secondary meaning is also possible

Can never be registered


Proving the Second Element - Services / Place Association

  • mere showing that the location is known for performing services in question is not enough
  • must show additional reason for the consumer to associate the services of the applicant with the geographic location invoked by the mark
    • e.g. in case of the restaurant: chef from that location; menu similar to ones in that location; food that comes from there...


Geographic test for our purposes is the same as false claims

  • Alaska Salmon
    • no registrable
    • geographically misdescriptive
    • similar to JT Tobacconists
  • Alaska (trademark for Bananas)
    • arbitrary - registrable
  • Dodge Durango
    • Durango is a state in Mexico
    • people have no goods/place association for cars and Durango
    • Durango is not known for cars, and people seeing the name would not think that the cars come from Durango
    • the mark is registrable
  • Egyptian Cotton
    • generic
    • no registrable
  • Atlantis Casino
    • no Atlantis, so OK
  • Peculiar (for blue jeans)
    • OK, since not associated with place
  • French Fri
    • generic


In re Municipal Capital Markets Corp.
Problem 2-10, pg. 80

Facts:  TX corporation filed registration for COOPERSTOWN to be used in connection with restaurant services.  Cooperstown is a town in central NY known for the Baseball Hall of Fame - it is synonymous with the Baseball Hall of Fame

Issue:  whether COOPERSTOWN passes the first part of the 3 part test - generally known geographic location

Answer: in the nation where baseball is a dominant sport, yes, it is generally known.



  • Lanham Act prohibits registration of marks that are primarily a surname without secondary meaning (i.e. primary significance of the mark must be the source not the surname)
  • When the mark in question consists of a surname and additional words, the question becomes what consumers would think of the mark as a whole
    • Da Vinci Mark Case
      • mark used in connection with personal jewelry
      • Holding
        • no consumer could reasonably believe that Leonardo Da Vinci was associated with the products
    • Lane Capital Management v. Lane Capital Management
      • P sued D where
        • P used "Lane" because it indicated narrow path that suggested a controlled approach to investing
        • D used "Lane" because it was his last name (and lost)
      • Holding:  non-surname meaning of the word "Lane" and its combination with other words were strong enough to negate its surname significance it the minds of consumers

Offensive, Scandalous, and Disparaging Marks

  • PTO has burden of proof
  • test is subjective - doubt should be resolved in favor of the applicant
  • involves consideration of whether the mark is shocking to the sense of truth, decency, or propriety, disgraceful, offensive to the conscience or moral fillings, disreputable, or calls for condemnation

Flags, Coats of Arms, Insignia

  • registration of marks that falsely suggest a connection with people, beliefs, institutions, or symbols are prohibited
  • should ID particular govt. / govt. body

Names, Portraits, Signatures

  • marks consisting of a name, portrait, or signature of a living person or of a deceased President are prohibited

Marks that falsely suggest connection with particular people  are prohibited

Certification Marks

  • not source indicating
  • indicate that goods / services have certain characteristics
  • may be used by all who meet criteria, but may not be used by owners
  • involve actually descriptive marks
  • UL logo
  • must have objective standard and let anyone who passes let use the mark
  • owners may not use the mark themselves

Collective Marks

  • indicate that user is a member of particular organization
  • union names / logos

Trademark v. Service Mark

  • apply to different types of business (business for goods / business for services)
  • purpose is the same
  • trademark used on goods
  • service mark used for services that you offer

Supplemental Register

  • available if can't be registered on the principal register
    • exceptions
      • generic names
        • incapable of becoming distinctive
      • deceptive marks
  • if the mark later becomes distinctive through the secondary meaning, then can be registered on the principal register
  • registration does not create any substantive rights to the mark




  • Casebook 87–112 (Allard Enterprises, Healthcare Communications, Peaches Entertainment, Eastman Kodak)
  • Problem 2-13


US has a use requirement for trademark, outside of US trademark can be granted solely on the basis of registration

Senior User

  • person who first uses a mark for a particular product / service in particular geographic market

Junior User

  • person who begins using the same mark after senior user
  • mark may not be similar to that of senior user as to cause confusion

Registration of the mark

  • nationwide rights


Allard v APR
6th Cir. (1998)
Nature & Extent of Use Case

Facts:  Allard sued APR for trademark infringement.  Allard registered its - APR - trademark in 1994.  APR defense was that although not registered, it had used it prior to Allard.

Heagreen (APR)


  • 1989: started the company
  • 1993/1994 sends out resumes and putting his mark on resume and letterhead
    • use was not very intensive
  • 1993 founds the company (does not give you any trademark rights by itself)
  • 4/30/1994 "Use"

Legal Principles:

Trademark ownership is acquired only from prior appropriation and actual use in the market (commerce)

  • deemed in use when used / displayed in the sale or advertising of services or services rendered in commerce
  • ownership begins to accrue when trademarked goods are placed on the market
    • intra-company sales are insufficient to establish use
    • placement on the market must be bona fide
      • if the mark is placed on the good not for genuine sale but for the purpose of reservation of that mark - use is not bona fide
  • deep market penetration, wide spread recognition is not necessary
  • single use in trade may sustain trademark rights if followed by continuous commercial utilization

Adjudicative Rules:

  • Registration is a prima facie evidence of ownership and places on defendant the burden of showing that their uses of mark were legally sufficient to establish prior ownership

Holding:  Allard is the junior user of the mark despite the fact that he had registered the mark and APR did not


  • defendant established that he used the mark before P's registration through word of the mouth / relationship type marketing - acceptable commercial business practice
  • D's trademark usage was limited, but continuous part of ongoing program to exploit the mark commercially

 Other Notes:

  • rights of unregistered users do not extend beyond the geographic areas in which they have actually used their marks
    • courts allow exceptions under "zone of natural expansion" doctrine
  • registered users are entitled to nationwide rights
  • rights of mark apply only to products / services in connection with which the mark was used
  • Abandonment
    • nonuse with intent not to resume use
    • mark becomes generic
    • uncontrolled (a.k.a. naked) licensing
  • Renewal is indefinite

Quantum of use can be small and can be enough to establish senior user

  • evidence of goodwill
  • question of threshold (did person build enough good will)


Trademark law has geographical basis

  • Portland ME and OR same named in the same business can coexist
  • no confusion between ME and OR consumers
  • building up rights based on geographic area
  • for inherently distinctive marks your sales are themselves a goods will
  • for descriptive marks you may need to show the secondary meaning (sales may not have been driven by the mark)
  • the senior user for that region wins
  • if one business wishes to expand to IL, they can


Healthcom v. CA
8th Cir. (2001)
Geographic Extent of Rights Case

Facts: Dispute arose over the right to use mark "CareLink" between Healthcom and CA.  CA claimed that it had superior rights to the mark in the six-county region because of its first use and well-established presence in the area.

  • Healthcom
    • first to use the mark nationally (1991)
    • 1991-1992
      • market emergency response cervices
    • 1992-1995
      • spent $50000 attempting to sell its services in AR
      • made only one $385 sale (was stopped in 1994)
      • 04/1994 - 09/1995 no AR customers
    • 1995-1999
      • 7 contracts with  healthcare providers in AR
      • 350 individual subscribers in AR
      • 1999 AR revenues $82000
    • never had a customer for its CareLink services located within CA 6 county region
      • no good will
      • no trademark rights in the particular geographic region
      • although senior user nationally, does not have rights in the 6 counties
  • CA
    • first to use the mark in six counties in AR
    • all of its customers reside in 6 county AR region
    • activities publicized beyond 6 county AR region
    • did not know of CareLink name and logo
    • registered CareLink with AR in 1995
    • intensity of use - 5-10 million

Legal Principles:

  • Tea Rose / Rectanus Doctrine
    • The first user of a common law trademark may not oust a later user's good faith use of an infringing mark in a market where the first user's products or services are not sold
    • The owner of a mark may not monopolize markets that his trade has never reached and where the mark signifies not his goods but those of other
  • Registered Mark owner limitations
    • The owner of a registered mark has the right to expand its use into a new market unless an infringing user has penetrated that market prior to registration
      • so even if you're registered, still may not infringe on a market where similar trademark has been used by someone else
    • Exceptions
      • De minimis rule
        • if the first user's activities in a remote area are small, sporadic, and inconsequential, the first user is not entitled to protection against a later user's good faith adoption of the mark in that area
  • Market penetration
    • advertising alone is not sufficient to establish significant market penetration
      • may be enjoined from making a sale and advertising (both) in the 6 country region

Holding:  Healthcom may not use CareLink mark in Ca's 6 county region; CA is not entitled to injunction of Healthcom's use of CareLink mark outside of CA's 6 county region


  • Healthcom's one time $385 sale before CA's mark adoption is de minimis market penetration
  • CA has superior common law rights to its 6 county region
  • CA is a state-registered user of the mark

Other Notes:  the right of a junior user depend on its good faith adoption of the mark.

  • Good Faith Considerations
    • lack of prior knowledge of the other's use
    • intent to reap the benefits of the other's good will
    • to carry out a purpose inimical (hostile) to the interests of the others

Healthcom infringe on CA rights? no, b/c failed to penetrate CA's territory.

  • does not explicitly consider of what would happen if Healthcom expanded to other parts of AK


Sec. 1: the owner of the trademark....

  • who is the owner of the trademark?
    • establish use through goodwill
  • registration provides additional benefits to already established ownership at common law
    • Fed. registration treats you as you have used the mark anywhere in the country
      • no more geographic restrictions in the country

If a restaurant opened in OR between (or before) the time ME opened and registered

  • OR would have superior trademark rights in PDX
  • Can restaurant expand to Eugene from PDX
    • No (clock starts as of the date of registration)


Don Donut Doctrine: even if you have superior rights due to federal registration, you can't sue the guy to make him leave if his is not there (P must have presence and have consumers who can be confused)


Intent to use system - must actually use the mark

  • provides clarity in figuring out who gets there first
  • file intent to use registration - way of establishing a priority date
  • have 6 months (can get extension)
  • if within this time period started using it
  • if anyone comes in after that - you can get them if they are infringers
  • your claim of intent has to be bona fide
  • application has to be as real as you're making an application for trademark


PEC v. ERA (Peaches Entertainment v. Entertainment Repertoire)
5th Cir. (1995)

Facts:  PEC is a big retail music chain.  Registered trademark - PEACHES - in 1976.  Began using trademark in 1974.  ERA is a smaller retail music store.  Does not have registered trademark, but dba as PEACHES since 1975.  Two companies met it Orleans Parish (suburb of New Orleans) and contested each other for infringement.

District Court Holding (upheld as a good law): intermediate junior user is entitled to exclusive use of the trademark within the territory that it had established prior to the federal registration of the mark

Issue:  to what extent PEC can use the PEACHES service mark

Law:  junior users (parties who use a mark subsequent to another's use) may retain rights, if their use predates the senior user's registration so long as the use was adopted without knowledge (see email) of the registrant's prior use and has been used continuously by the junior user

  • rights are limited to the area where continuous use is proved
  • that area (of continuous use) is frozen at the time the senior user obtains registration
  • the area is determined based on the proof of recognized sales coming from junior user territory

Holding:  The junior user can use its trademark anywhere within the territory established by the court

Other Notes:

  • Intermediate Junior User - enjoys the exclusive rights to a limited area despite the senior user's later registration
    • Supplier of goods or services who was
      • the second to use the mark in a particular product market
      • the first to use it in a limited geographic market
      • began its use before the senior user's federal registration

Email Follow-up:

Can you please advise whether the legal principles with respect to rights of the junior user I have written correctly.  Specifically, I am not certain about the knowledge part of the principle (I don't think it is relevant based on your Portland, ME and Portland, OR example).

Junior users (parties who use a mark subsequent to another's use) may retain rights, if their use predates the senior user's registration so long as the use was adopted without knowledge of the registrant's prior use and has been used continuously by the junior user
  • rights are limited to the area where continuous use is proved
  • that area (of continuous use) is frozen at the time the senior user obtains registration
  • the area is determined based on the proof of recognized sales coming from junior user territory
You don't need to worry about that phrase.  Some (but not all) courts insist that the junior user's choice of marks must have been made "in good faith" i.e. not knowing about the senior user's choice of marks.  Those courts will NOT allow the junior user to continue use where the junior user chose a mark deliberately because of the senior user's name.  The theory there is that the junior user's choice was driven by an intent to capture goodwill, so there must have been goodwill in the place where the junior user does business.




Problem 2-12, pg. 106


  Mark Name Year Place Registered
Plaintiff KISS FM 1984 Los Angeles No
Plaintiff KISS FM 2001 Savannah No
Defendant KISS 97.5 1985 Myrtle Beach  
Defendant KISS 104 2000 Savannah  
Defendant KISS 92.3 2002 Raleigh  

May P enjoin D use in

  • Myrtle Beach?
    • no - unregistered / different market
  • Savannah?
    • no because D is Junior User
  • Raleigh?
    • no - unregistered / different market

How would it affect the P's rights if the P obtained a federal registration for KISS FM mark in 1989?


Registration requirements

  • distinctiveness
  • priority in time
  • use as a source identifier
  • may file application based on actual use (in the interstate commerce for Feds)
  • may temporarily reserve right to mark not used by filing intent-to-use application (a.k.a. ITU application)
    • designed to prevent duplication of marketing records
    • allows an applicant to reserve a mark for 6 months, with possible good cause extensions up to 36 months
    • considered to be the "constructive" date of first use, even if the actual use came later
    • application must include
      • statement of domicile / citizenship
      • goods in connection with which applicant has bona fide use intention
        • bona fide requirement is shown by evidence of product development, market testing, plans (no fixed quantum of evidence, but must be more than mere subjective statements)
      • drawing of the mark


Kodak v. Bell
CAFC (1993)
Intent-to-use Case

Facts:  Bell filed intent-to-use application for 6200, 6800, and 8100 to be used as a trademark for microfilm reader/printer.  Kodak opposed on the grounds that it would be used as a model designation and be merely descriptive (which would require Bell, then, to also demonstrate secondary meaning).  Board held that it could not determine whether the numerical designation is merely descriptive, because the use had not began.

Issue:  whether Board (PTO) may presume in favor of intent-to-use applicant that the mark is not descriptive, where that applicant has not yet shown actual mark use (and other party is opposing it)

Holding:  numerical designators may be found presumptively not descriptive

  • Unless the applicant originally claims use of the mark as purely a model designator (i.e. descriptive), the PTO can make a determination of descriptiveness of numerical designators only after the statement of use has been filed.
  • If upon such further examination, PTO determines that the mark is used in a merely descriptive manner, then PTO must refuse registration.

Reasoning:  Legislative history allows PTO to raise issues of registrability that might not be evident until the applicant shows use.  Statute contemplates for reexamination to affirm the presumption employed.

Some things you can establish up front, some you have to wait


Benefits of registration

  • helpful presumption of validity
  • eligible for "incontestability"
    • certain objections to the trademark become unavailable over period of time
      • e.g. cannot be descriptive without secondary meaning


Secondary register

  • confers no rights
  • Benefit for those who provide notice, while trying to build good will
  • helps you to bootstrap for foreign register


  • TM: please respect my mark - not indicative of secondary register
  • ® Actual approval from PTO



  • Casebook 127–51 (Lever Bros, A&H Sportswear)
  • Problems 3-1, 3-3

Patent infringement

  • makes sense since defines scope
  • matches elements of the claim one by one

Copyright infringement

  • what ordinary observer must think


  • multifactor test depending on the circuit
  • aim - whether consumers are likely to be confused (standard)
  • if diverts customers than will infringe
  • messy part: trying to state when the infringement has occurred

Infringement Factors

  • Polaroid Factors
  • ... see Lever Bros



Confusion Type Description Relevant Case  
Point-of-sale confusion Direct Confusion Trademark owner suffers immediate harm as a result of lost sale that consumer made mistakenly believing that he was buying authentic trademark product (ex. selling Rolex watches in Times Square) Lever Bros v. American Bakeries D allegedly used another's trademark on its goods
Reverse confusion Infringer is more well-known than the trademark owner - consumer mistakenly believes that the mark owner's goods were supplied by the infringer A&H Sportswear v. Victoria's Secret Trademark owner claims that consumers will mistakenly believe that its swimsuits were supplied by the more well known defendant
Post-sale confusion initial buyer not confused at the point of sale, other consumer was confused and developed negative perspective about the brand as a result of that    
Pre-sale confusion (a.k.a. initial interest confusion) one uses service similar to an owner's mark to create initial consumer interest in its own product, even if that confusion is dispelled before any sale occurs Class Example  

Key to proving claim - likelihood of consumer confusion


Lever Bros. v. American Bakeries
DNY (1982)
Direct Confusion Case

FactsLever produces and markets margarine under trade name AUTUMN.  AUTUMN came on the market in 1975, on that year trademark registration was obtained.  American makes bread under trade name AUTUMN GRAIN. 

Issue: whether confusion is likely to result from direct infringer's use of mark similar to P's

Legal Principles and Application:

  • Strength of Mark
    • Arbitrary and fanciful mark is strongest type and entitled to wider protection scope
      • AUTUMN is arbitrary
    • If the mark was / is commonly used in your similar industry it is favorable, defendant may not be barred so long as the D's product is non-competitive to that of P
      • AUTUMN has been in common use long before Lever - does not possess such a distinctiveness as to serve as a bar to non-competitive food products
    • Measuring
      • whether the mark is strong (arbitrary / fanciful) or weak (descriptive)
      • why arbitrary trademark would bring more confusion of the plaintiff? 
        • measuring how much goodwill did the plaintiff build (i.e. if plaintiff does not have any good will, then there is nothing to steal)
        • more goodwill - more confusion, no goodwill - no confusion
        • if there is little goodwill then have higher burden to show that P had built goodwill
      • arbitrary mark can favor the plaintiff, but that does not prove confusion: does consumer see the mark and think of the plaintiff?
      • So
        • look at inherent nature of distinctiveness
        • look at acquired goodwill of the mark through the secondary meaning
  • Degree of Similarity
    • based on the commercial impression the marks create as they appear in the marketplace
      • side-by-side comparison is inappropriate if the goods are not sold side-by-side (like bread and butter)
        • context in which marks appear is so dissimilar as to negate the likelihood of confusion on the part of purchasers
    • general impression is more important than details
    • invitation to put together two marks and compare them - "general impression" but also do not ignore particular qualities (court talks about them too)
      • color schemes (in trademark itself or trade dress)
      • wording (build around word "AUTUMN") - context is different: bread and margarine
      • look at the context (see above)
      • look at the sight, sound and the meaning
        • meaning like SLICK AND SLEEK
      • typeface / font
      • marketing channels (i.e. margarine used with bread)
      • packaging (trade dress)
  • Proximity of the Products
    • would P's sales drop if the D's product reputation / quality goes down
    • evidence
      • not necessary, but with long time passage its absence becomes a strong indicator of presumption in D's favor
    • are the products accorded different treatment in handling and sale
    • further apart goods are, the less likely confusion there is
    • purely about the products (unlike trademark which is Degree of Similarity concerned with)
  • Quality of D's Products
    • will consumer dissatisfaction with D's product negatively affect P's product
      • D's strong sales demonstrate comparable if not higher degree of customer satisfaction
    • Prof. says bad prong, because tells you nothing about the actual reason
  • Sophistication of the Buyer
    • Are sales based on impulses or introspection
      • ordinary bread / margarine purchasers will not stop to analyze the intricacies of trademarks / packaging
      • purchases are governed by appearance and general impression, not in-depth analysis
      • ordinary purchaser is a casual unsophisticated buyer
    • Price
      • due to low price buyer will exercise less caution, making a confusion more likely (looks like the only plus that judge gave to P)
    • how aware are the buyers about differentiation among goods
    • if cheap then indicates that confusion is more likely
  • Bridging the Gap
    • senior user's interest in preserving avenues of expansion and entering into related fields
    • trademark law protects legitimate potential and expansion into related fields
    • the more closely the products compete - the smaller the gap - the more likely there would be a confusion even without intent
    • likelihood that P will enter D's market
      • bread and margarine are distinct products
      • P, throughout its 85 year old history never considered expansion from margarine into bread (strong evidence against P)
      • if P makes many types of goods, consumers might reasonably think it has expanded into a new line of business (which is not the case)
    • same consideration that go into similarity of products: whether in the future there is tendency of convergence
    • why should we consider venue that the P did not enter?
      • natural growth (natural buffer)
  • Good Faith (a.k.a Intent)
    • is the imitation intentional
      • D done research and rejected some marks, testified under oath of its unawareness of P's mark, competed in different markets - evidence of non intentional trademark adoption
    • do others use variation of the P's mark
      • yes, many in the food industry adopted word AUTUMN
    • put out a mark in a hope that people will be confused

Other Notes:

  • Actual Confusion
    • if consumers interpret a term as descriptive rather than source indicating, confusion about the source from concurrent use is unlikely
      • weaker the mark (descriptive, suggestive) - stronger proof required that there will be confusion
  • Strength of Mark
    • if many others have used the word AUTUMN in their marks, the mark is less distinctive
  • Conditions of Sale
    • if selections are made quickly, without much thought, in self-service environment; if prices are low, buyers are less likely to pay close attention to the differences between marks
  • Intent / Bad Faith
    • infringement claim does not require proof of intent
    • innocent infringement may be enjoined
    • intent / bad faith may indicate that confusion is likely
    • knowledge of other's mark is relevant to but not dispositive of the intent issue 

Multifactor Test Application (from computer algorithm analysis of 100 cases) - Martin Bee Test

  • Are the marks similar? if not, then D wins
  • Did D act in bad faith? if no, P wins
  • Was there actual confusion? if yes, then P wins
  • Are the goods similar? if not, then D wins
  • Is it a strong trademark? if no then D wins

Cannot use this on the exam b/c court's do not use them - suggests which factors need to emphasize.

Watch out for reasoning - court may decide beforehand and shade the factors.


A&H Sportswear v. Victoria's Secret
3d Cir. (2000)
Reverse Confusion Case

Facts:  A&H makes swimwear under MIRACLESUIT mark.  Manufacture's 10% of swimsuits sold on US market.  Victoria's Secret entered the swim market recently and began selling the swimwear under mark THE MIRACLE BRA.  Along with the mark, Victoria puts the disclaimer stating that the suit is not associated with A&H

Issue:  whether consumers are likely to think that MIRACLESUIT is a product of Victoria's Secret (whether there is a likelihood of consumer confusion as to the source of a product)

Policy Behind Reverse Confusion:  junior user saturates the market with a similar trademark and overwhelms the senior user.  The senior user loses the value of the trademark - product identity, corporate identity, control over its goodwill and reputation, ability to move not new markets.

Legal Factors:

  • The price of goods and other factors indicative of the care and attention expected of consumers when making a purchase
    • should be analyzed similarly to direct confusion
  • Whether the goods are marketed through same channels of trade and advertised through the same media
    • should be analyzed similarly to direct confusion
  • The extent to which the targets of the parties' sales efforts are the same
    • should be analyzed similarly to direct confusion
  • The relationship of the goods in the minds of consumers, whether because of the near-identity of the products, the similarity of function, or other factors
    • should be analyzed similarly to direct confusion
  • Similarity of Marks
    • Victoria's disclaimer (which served as a tipping point in the court's decision for direct confusion) is not a strong factor in reverse confusion because A&H does not put the disclaimer on its products (and it is allegedly injured party)
  • Strength of the Marks
    • Commercial Strength
      • the mark owner whose commercial strength is greater is more likely to effectuate reverse confusion
        • junior user uses more advertising
      • the strength should be analyzed in terms of
        • the commercial strength of the  junior user as compare to the senior
        • ad / marketing campaign by the junior user and if it has resulted in a saturation in the public awareness of the junior user's mark
  • Distinctiveness / Conceptual Strength
    • strong mark is to be weighted in favor of senior user
      • do not want perverse result that less imaginative works would be more likely to win reverse confustion claims than arbitrary / fanciful ones
        • EXXON marked toys in the store - EXXON went into the toy business
      • not very clear about the reasoning behind this concept
  • The intent of the D
    • should weigh against the D in the same manner as it would in a direct confusion case
    • possibility that the larger company had adopted the mark with deliberate intent of pushing its rival out of the market - usurpation of business identity reverse confusion doctrine intends to prevent
    • the likely scenario would be that intent to confuse would not be present
  • Factors relating to actual confusion
    • Large amount of one type of confusion in a claim for a different type may work against the plaintiff
      • Evidence that consumers thought that MIRACLESUIT was a Victoria's product would support a reverse confusion claim (would weaken direct confusion claim)
        • therefore must be careful when claiming both!
          • The existence of reverse confusion might disprove P's claim that its descriptive mark has a secondary meaning, thus resulting in no recovery at all
  • Harm: will turn away b/c there is excess goodwill expectations
  • swamped goodwill of smaller guy
  • may be seen as a freeloader
  • or may suffer harm



  • hockey team distributes their badges - trademark itself is a good
  • very hard to fit this in the trademark confusion
  • selling the trademark by itself may constitute infringement
  • it is more of false sponsorship / endorsement claim as opposed to trademark infringement


Other types of confusion

  • from the point of sale to before... initial interest confusion
    • drive off hwy seeing McDonalds, but find Burgermaster only
    • would not have driven off if sow Burger master , but since there - decided to use Burger master
    • so no confusion at the point of sale, but because of initial interest confusion you ended up spending / eating at Burger Master
    • post sale confusion
      • Fake Chanel Bags
      • Everyone knows / no one is deceived
      • what is the harm to Chanel?
        • other people deceived
        • others will sell fake Chanel bag
        • downstream purchaser fear concern
        • false endorsement - bad impressions about brand
          • b/c a lot of counterfeits are out there it damages the Chanel brand



Dilution, Abandonment, Incontestability

  • Casebook 178–82 (Wedgwood Homes)
  • Supplement 14–20 (Barcamerica)
  • Casebook 234–40 (Park n’ Fly)
  • Need to read Clorox & Electro Source from the supplement


Dilution by tarnishment (other one dilution by blurring)

  • worsens the reputation
  • harder to benefit from goodwill

Limits on dilution?

  • yes, balancing act
  • no limitation may destroy copyright

Federal statute Sec. 43(c) - dilution (pg. 299)

  • limited to famous marks
    • nationally known
  • defenses
  • actual dilution is not required (merely likelihood of it)


Wedgwood Homes v. Lund
OR Supreme Ct. (1983)
Trademark Dilution Case

Facts:  Wedgwood has been engaged in the development, construction and marketing of residential real estate in one county for 25 years.  Wedgwood launched advertisements promoting its quality.  Over the years, Wedgwood established secondary meaning.  Defendant maintained dormitory style housing for the elderly in low retirement apartment complexes in the same part of the county for past 5 years under name Wedgwood Downs and Wedgwood Place.

Issue:  whether Wedgwood Downs/Place dilutes Wedgwood trademark

Legal Principles:

If the mark has come to signify P's product in the minds of a significant portion of consumers and if the mark evokes favorable images of plaintiff or its product, it possesses the distinctive quality of advertising value - consumer recognition, association and acceptance - that trademark will be entitled to protection from dilution

  • Dilution protection is extended regardless the manner by which trademark acquired its distinctiveness
    • i.e. coined words, arbitrary words, secondary meaning
  • Situations where dilution may arise
    • injury to the value of the mark caused by actual or potential consumer confusion
    • injury caused by use which detracts from the reputation associated with P's mark
    • diminution in the uniqueness and individuality of the mark resulting from defendant's use of similar mark - issue on which the case was decided
      • Where a tradename possesses the distinctive quality of favorable associational value, a second use may be enjoined under the statute whenever this is proven to be necessary in order to prevent the diminution of P's name as and advertising tools.


  • the mark became distinct through secondary meaning
  • Distinctive quality
    • Association in the Minds of Consumer
      • P demonstrated by introducing survey as evidence that shows high association between the words "Wedgwood" and "Homes" in the minds of consumer
    • Positive Name Recognition
      • Wedgwood Homes is a well recognized name that approaches high degree of local fame, therefore, has commercial value to P
  • Diminution in the uniqueness and individuality of the mark resulting from defendant's use of similar mark
    • name possesses the distinctive quality of positive associational value with its product (Holding)



  • judicial finding that you deliberately decided to get rid of good will
  • allows you to draw inference of abandonment if not used for 3 years
  • must have stopped using the mark and must have intended not to resume it



Barcamerica v. Tyfield
9th Cir. (2002)
Trademark Abandonment Case


  Barcamerica Renaissance Cantine Tyfield
1972     Began selling wine under Leonardo Da Vinci tradename (in Italy)  
1979     Began selling Leonardo Da Vinci wine to US importers  
1981 Application filed for Leonardo Da Vinci mark      
02.14.1984 PTO grants Leonardo Da Vinci mark      
1988 Licensing Agreement to use Da Vinci mark for 5 years (1993). Agreement is non-exclusive    
1989 Agreement to an exclusive license to use Da Vinci mark in the US for wine products and alcoholic beverages    
08.1989 PTO acknowledged mark's incontestability (In United States trademark law, having been registered as a trademark for more than five consecutive years without a challenge, and therefore conclusively presumed not to cause confusion with any other trademark, and to have acquired distinctiveness)      
1993 Becomes aware of Cantine's use of Leonardo Da Vinci Mark    
1996     Tyfield becomes exclusive US importer and distributor of Cantine wine products bearing Leonardo Da Vinci Mark

Cantine learns of Barcamerica's trademark

05.1997     Seek cancellation of Barcamerica's registration  
01.1998 Filing instant action, move to suspend Cantine proceedings - motion granted      


Issue:  whether Barcamerica abandoned its mark

Holding:  Barcamerica engaged in naked licensing of Leonardo Da Vinci mark and therefore is estopped from asserting any rights in the mark

Legal Principles:

  • A trademark owner may grant a license and remain protected provided quality control of the goods and services sold under the trademark by the licensee is maintained.
  • Uncontrolled (a.k.a. naked) licensing may result in the trademark ceasing to function as a symbol of quality and controlled source - constitutes abandonment of any rights to the trademark by the licensor
  • Subjective intent to abandon trademark need not be shown
  • Quality Control
    • does not have to be express or formal
    • may rely on licensee's own efforts to control quality


  • Quality Control
    • random tasting and reliance on Renaissance's reputation is not enough
    • Barcamerica fails to state when and how often and under what circumstances he tastes wine
    • reliance on reputation of the winemaker is not enough as he is deceased
    • Renaissance did not demonstrate quality control procedures utilized by Renaissance with regard to testing wine
    • Barcamerica failed to demonstrate any knowledge / reliance of actual quality control / effort to monitor
    • In the absence of formal agreement, need to have close working relationship, which Barcamerica and Renaissance failed to demonstrate
    • Suggestion of the court (minimal effort):  sample on an annual basis, in some organized way, some adequate number of bottles of Renaissance wines

Other Notes:

  • desire to maintain trademark rights is not enough to prevent abandonment (not enough to demonstrate good faith by itself)
  • Lanham Act Sec. 45 creates a presumption of abandonment with no intent to resume use when non-use for three years is shown
    • rebutted by showing legitimate business reasons for the owner's conduct demonstrating intent to resume
  • Underlying purpose of loss of rights under abandonment
    • protecting consumers from confusion
    • protecting the trademark owner investment in goodwill

Policy: if don't care about the law (i.e. quality) then why should we care about it


Park 'N Fly v. Dollar Park And Fly
US Supreme Ct. (1985)
Incontestability Case

Facts:  P operates airport parking lots in various cities as Park 'N Fly.  P registered mark in 1971. In 1977 filed for incontestability status and received it.  Respondent also operates airport parking lots, but in a different city (PDX).

P filed infringement action requesting the court to enjoin D from using words "Park And Fly."

Issue:  whether the mark is unenforceable b/c it is merely descriptive

Legal Principles:

Incontestable status provides conclusive evidence of the registrants exclusive right to use the mark

  • may not be challenged on the grounds that it is merely descriptive (i.e. mark describing the qualities or characteristics of a good / service which is registrable upon showing of secondary meaning)
  • Incontestable mark may be cancelled if
    • becomes generic
    • it has been abandoned
    • it is being used to misrepresent the source of the goods / services
    • was obtained fraudulently or contrary to the provision of Sec. 4


  • before a mark becomes incontestable an opposing party may prove any legal or equitabble defense which might have been asserted if the mark had not been registered - i.e. D could challenge P's mark as merely descriptive if the mark had not become incontestable (too late for that)
  • holder of registered mark may rely on incontestability to enjoin infringement and that such an action may not be defened on the grounds that the mark is merely descriptive

Other Notes:

  • Incontestable status confers a conclusive presumption of validity and exclusive right to use a mark in connection with specified good / service
  • additional defense v. affirmative defense
    • Additional Defense
      • Present reasons why P has no valid case
        • D's assertion of seniority
        • D's assertion of lack of likelihood of confusion
    • Affirmative Defense
      • Assertions of facts and arguments that, if true, will defeat the complainant's claim even if all of the allegations in the complaint are true
        • e.g. contributory / comparative negligence in tort law



Electro Source v. PPI
9th Cir. (2006)
Intent to Abandon Case

Facts:  Mallett owned "Pelican Mark." (word pelican with picture of it in a circle).  Nature of business - travel cases.  His business was failing.  He continued to sell of inventory and transferred trademark rights to Electro Source.  Electro Source sued PPI that had distributed products under trademark "Pelican Products" "Pelican"...  As a defense PPI claimed that Electro Source transaction were not bona fide b/c they were not made in connection to which goodwill accrued.

Holding:  unless the trademark use is actually terminated, the intent not to resume use prong does not come into play

Legal Principles:

  • The mens rea element (i.e. intent to abandon) is not relevant, so long as even a single sale is made in good faith


  • discontinuance of trademark
    • if don't use for 3 years - prima facie evidence of abandonment - creates a presumption
    • requires complete discontinuance
  • intent not to resume use of trademark
    • prospective intent to abandon the mark in the future is irrelevant

Bona Fide Use:

  • mark is placed on the goods (or their containers), and
  • goods are sold / transported in commerce
  • not made merely to reserve right in the mark
    • good faith nominal / limited commercial sales of trademark goods are sufficient to avoid abandonment, where circumstances legitimately explained the paucity of sales (i.e. business liquidation)

Court is sympathetic to D.  Bona Fide sales - selling your inventory.  If just mere goal to trademark alive - then not bona fide.  If want to maintain trademark, then need to have a program where real goods are being sold.  Mere advertisement is not enough.

You may lose trademark rights under Lanham but still keep under common law.  If that happens, then you're limited to the geographic area given that someone else registers it



False Advertising

  • Washboards made by American Washboards Co. made of wood and aluminum
  • Other company makes zinc washboards that say aluminum on it
  • Trademark Elements
    • trademark over word ALUMINUM (descriptive, maybe generic)
    • no secondary meaning - no trademark rights
    • therefore not trading on American Washboard's good will
    • whether competition law has something to say about it?
      • trademark law is tied in to competition law
      • in 1900 it was not possible to do anything about it
      • now, Sec. 43(a) gives false advertisement prohibition
      (1) Any person who, on or in connection with any goods or services, 
      or any container for goods, uses in commerce any word, term, name, 
      symbol, or device, or any combination thereof, or any false designation 
      of origin, false or misleading description of fact, or false or 
      misleading representation of fact, which--
              (A) is likely to cause confusion, or to cause mistake, or to 
          deceive as to the affiliation, connection, or association of such 
          person with another person, or as to the origin, sponsorship, or 
          approval of his or her goods, services, or commercial activities by 
          another person, or
              (B) in commercial advertising or promotion, misrepresents the 
          nature, characteristics, qualities, or geographic origin of his or 
          her or another person's goods, services, or commercial activities,
      shall be liable in a civil action by any person who believes that he or 
      she is or is likely to be damaged by such act.
      • reverses the result in washboard case - plaintiff has been harmed b/c it loses sales
  • two ways to show falsity
    • literal falsity
      • rat poison in Dasani water by Fuji people
    • as Fuji how can you cause trouble
      • H2O can be poisonous
    • falsity by implication
      • consumers might believe
      • lack of ability to prove / disprove is characteristic of puffery
      • puffery is sellers privilege to lie so long as he says nothing specific
      • disclaimer may be used but to the point (Ms. Cleo got in trouble by saying that "we can predict your future")
      • comparative advertising invites a lot of risk
        • if do it, you give your competitor airtime
        • if one trademark reduces the appeal of the other then it is dilution by tarnishment (John deer Commercial)
    • puffery is the defense to false advertising


Clorox v. P&G
1st Cir. (2000)
False Advertising Case

Facts:  P&G launched the advertisement campaign "Mas blanco no se puede"  advertising its laundry detergent Ace con Blanqueador.  Later, P&G added a pitch: Compare con su detergente... Mas blanco no se puede.  Clorox sued for false advertisement

Lanham Act:  Any person who uses any false or misleading description of fact in commercial advertising, misrepresents the nature, qualities of his or other person's goods - shall be liable to  those who believe that they are likely to be damaged by such act


  • Is "Ace con Blanqueador" literally false because Clorox tests rove that chlorine bleach whitens better than detergent used alone?
  • Is "Ace con Blanqueador" literally false b/c it falsely suggests that Ace liquid contains whitener or bleach?

Legal Principles (& Application)

  • Is advertisement false on its face (i.e. literally false)? if "Yes" then...
    • court may grant relief w/o considering consumer reaction
    • issue of fact
      • determine the claim in advertisement
        • assume as true that chlorine bleach whitens better than Ace and that a contrary claim would be literally false
          • whether any of P&G ads make a claim of whitening superiority over bleach?
            • analysis can be explicit and implicit
              • Commercial claims that are implicit cannot be characterized as literally false
            • The overall theme of the commercials is that bleach is unnecessary if clothes are washed with Ace, and that Ace is equal or superior in whitening ability to a detergent and bleach combination
            • It is reasonable to interpret that advertisements implied a superiority of Ace over chlorine bleach

      • evaluate whether that claim is false
  • Is advertisement literally true or ambiguous but likely to mislead and confuse consumers? if "Yes" then...
    • must show how consumers actually acted (not how they could have reacted)
      • Is there an implied claim that is misleading to consumers (of Ace equivalent qualities / characteristics as to CLOROX)
        • Clorox introduced surveys that demonstrated evidence of consumer confusion and are entitled to relief
  • Puffery (i.e. exaggerated advertising)
    • if ad claim is specific and measurable then the superiority claim is not puffery
      • Are statements "Compare with your detergent... whiter is not possible" constitute puffery?
        • "whiter is not possible" alone can be a boast, but in the context, it invites consumers to compare Ace with other detergents - a claim that is specific and measurable

Other Notes:  Elements of false advertising claim under Lanham Act (15 USC 1125(a))

  1. A false or misleading description of fact or representation of fact by the D in a commercial advertisements about its own or another's product (focus of Clorox)
  2. The statements actually deceives or has the tendency to deceive a substantial segment of its audience
  3. The deception is material, and it is likely to influence the purchasing decision
  4. The defendant placed the false or misleading statement in interstate commerce
  5. The plaintiff has been or is likely to be injured as a result of the false or misleading statement, either by direct diversion of sales from itself to defendant or by a lessening of goodwill associated with its products


Assignment in Gross

  • when you sell the registration
  • sells you only registration and no trademark rights
  • right to use the mark without good will
  • not inheriting your trademark rights
  • they must be build the trademark from scratch
  • to get it right - you must also sell them the good will
  • need to sell them the whole package
    • e.g. sell the store along with trademarks



Fair Use

  • Casebook 240–58 (Sunmark, Arnold, August Storck, Walking Mountain)
  • Problems 4-2, 4-3

Fair Use Defenses

  • Classic Fair Use
    • Describe the product
    • using the mark to describe
  • Nominative Fair Use
    • truthful
    • appealing to the meaning as the owner would use


Sunmark v. Ocean Spray
7th Cir. (1995)
Classic Fair Use Case

Facts:  Ocean Spray used sweet-tart in its commercial to advertise the juice-drink.  Sunmark, the maker of SweeTARTS, fruit flavored sugar candy alleged infringement.  SweeTARTS mark is incontestable.

Issue:  whether Ocean Spray used Sunmark's SweeTARTS mark as a descriptive phrase of their own products

Legal Principles:

If P employs words as descriptions, and not as a mark, there can be no infringement under fair use

  • the description must be in good faith
  • the mark needs to refer to characteristic of the product it describes
  • it is irrelevant whether the public is confused as to the origin (The use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake to the origin of the product) unless the confusion about the product's source shows that the words are being used, de facto, as a mark


  • Ocean Spray used sweet-tart descriptively
    • drink has elements of sweetness (sugared) and tartness (cranberries)
    • both sweet and tart are words of description of ordinary English
  • Sunmark cannot prevail without demonstrating a likelihood of confusion
    • Ocean Spray's marketing surveys showed that 3 out of 257 people were confused - not much confusion
    • Sunmark did not overcome the burden

SunMark candy was descriptive (i.e. sweet and tart).  Strong case for secondary meaning (also incontestable).  Mark is capable being the mark you can sue on.  More arbitrary the trademark, the worse D is off.

D wins because the mark describes the cranberry juice: focus on how D uses the mark.  The issue is whether Ocean Spray used the mark descriptively.

About whether you use your phrase descriptively.

Test asks whether you have a reason to, in good faith reason, to use those words.

If metal polisher manufacturer was using SweeTarts then he would use because it is truly arbitrary



Arnold v. ABC
SDNY (2007)
Fair Use Case

Facts: P is a creator of TV show called "What's your problem?" and the owner of mark "What's your problem?."  It is the comical show in which a host interviews real people and solves their problems.  D, ABC, airs well known television show Boston Legal about fictional Boston law firm.  As a part of its efforts to promote Boston Legal, ABC uses phrase "What's your problem?" in advertisements throughout US.

Issue:  whether context of ABC use of "What's your problem?" constitutes a fair use

Legal Principles:

P must establish that its mark (1) merits protection, and (2) D's use of P's mark is likely to cause consumer confusion as to the mark's source.

  • P must show likelihood of confusion as a part of prima facie case
    • if P uses well known descriptive phrase as a mark, then P is deemed to have accepted the risk that others will use it to describe their goods / services
  • D has no independent burden to show that there was no confusion when raising fair defense

D must establish: the use of the name, term, device charged to be an infringement is a use, otherwise than as a mark, of a term or device which is descriptive of and used fairly and in good faith only to describe the  the goods or services of such party

  • D must have used the term
    • other than as a mark
    • in a descriptive sense
      • not narrowly confined to words that describe characteristic of the goods
      • need not describe anything about the infringer's goods (phrase Come on Strong appearing on men's clothes was found to be descriptive, notwithstanding the fact that it was not description of the clothes but rather the intended use of the clothes)
    • in good faith
      • prior knowledge of a senior user's mark does not , without more, create an inference of bad faith
        • additional showing that D indented to trade on the good will of the trademark holder (by creating confusion as to source of sponsorship)


  • Descriptive
    • "What's your problem?" does not describe Boston Legal
    • Phrase is generically descriptive to the potential viewing public - show is about fictional lawyers in a fictional law firm offering legal services
  • Confusion
    • if there is one, P is presumed to have accepted the risk of likely confusion
    • phrase is not used to ID / distinguish Boston Legal or indicate its source
    • identity is evidence by prominent display of show's title and ABC's own mark and photos of stars
  • Good Faith
    • Fact that some ABC employees were familiar with P's show is not enough.  P carries a burden to put on set of facts that, if true, would lead to conclusion that ABC sought to conflate Boston Legal with P's show.  P did not carry through that burden (its show is little known cable-access TV program)
      • Conflation occurs when the identities of two or more individuals, concepts, or places, sharing some characteristics of one another, become confused until there seems to be only a single identity

Other Notes:

  • Fair Use & Good Faith
    • courts typically combine these concepts
      • Gatorade used "Gatorade is Thirst Aid" infringing on "Thirst Aid" mark by placing greater prominence on "Thirst Aid" rather then on Gatorade
    • Copying the typestyle, packaging, labeling of the mark owner is indicative of bad faith

Weak connection (few ABC employees seen the show).  How close a fit is descriptive fair use?

  • Billboard Example
    • why not a trademark?
      • descriptive phrase, can be trademark
      • billboard other trademarks (ABC, Boston Legal) were available - the sing was not used as a trademark
    • Problem - if reverse situation - have been using "What's your trademark?" for years and established secondary meaning
      • ABC may have won that
    • Descriptive fair uses beat regular confusion and reverse confusion
  • Burden of proof and pleadings
    • 9th Cir. requires absence of proof of consumer confusion
    • 3d Cir. does not do that
    • Supreme Ct. stepped in but has not clearly resolved the issue
    • plaintiff may / may not have burden of proof to disprove it (i.e. descriptive fair use)
  • The way to defend is to say the D has really weak mark and there is no confusion - court is unwilling to go there

Book gives unduly D - friendly view


  • Must not be used as a (1) mark, (2) in a descriptive sense, and (3) in good faith
  • Lack of consumer confusion is compatible with consumer confusion, but court has allowed to consider the amount of consumer confusion in weighing other factors

Types of cases

  • Descriptive / Classic / Unmodified
  • Nominative Fair Use
    • Comparative Fair Use


August Storck v. Nabisco
7th Cir. (1995)
Comparative (Advertising) Fair Use Case

Facts:  Nabisco, an owner of the LIFESAVER mark made a candy which was 25% lower in calories then its competitor's candy - Werther's and put that statement on its package (25% Lower in Calories Than Werther's (R) Original Candy).  Storck did not appreciate the comparison and filed suit arguing that Nabisco was about to infringe its trademark and trade dress

Holding:  Nabisco may use competitor's name on its product label for the purposes of quality comparison so long as the consumer will not be confused

Legal Principle:  Use of rival's mark that does not engender confusion about origin or quality is permissible

  • Confusion
    • P need to come forth with evidence (e.g. surveys)

Reasoning:  FDA and FTC encourage product comparison.  Courts must give high regard to the interest of the general public, which is great beneficiary of competition.  Interests of the public carry the day.

Other Notes

  • public policy argument may be interpreted as affirmative defense, where some confusion would be tolerated in order to promote competition
  • Good Faith
    • comparative advertising cases where the use has been held unfair are those where the alleged infringer uses the other's term in a way that makes it look like the infringer's own mark and confusion is likely
      • Pebble Beach using names of other golf courses
      • Sweetmate using Sweet 'N Low mark more distinct (larger) then its own

Could a plaintiff put forth dilution by tarnishment argument? It is possible to make that argument, but it is not here

How does Nabisco uses banner (use words to increase the distance)?

  • competition policy - honest comparisons matter
  • comparative fair use is a species of nominative fair use:  Werther's trademark on the bag is not what's in the bag; not making the false link as to other buyers of trademark and their own use; pointing at someone else's bag entirely; using the mark to describe exactly the same use that competitor describes
  • no attempt to pass off delight as their own
  • key is truthfulness:  conclusive legal determination
  • may not play up the confusion (Sweetmate example)


Mattel v. Walking Mnt. Productions
9th Cir. (2003)
Nominative Fair Use Case

Facts:  D produced photos of Barbie dolls nude and juxtaposed with vintage kitchen appliances.  D argued that the photos was an attempt to critique the objectification of women associated with Barbie.  D used the word "Barbie" in some of the titles of his works.  Mattel sued claiming the infringement on trade dress and trademark

Holding:  D's use of Mattel's Barbie qualifies as nominative fair use

Legal Principles:

Where D uses P's mark to describe the P's product, even if the D's goal is to describe his own product, the D's use of P's mark is nominative.

  • Goal of nominative use is for the purposes of comparison, criticism, or point of reference
  • The use cannot be "as a mark" and must be in good faith

Nominative Use becomes Fair Use when D proves 3 elements

  1. P's product / service must be one not readily identifiable w/o use of trademark
  2. Only so much of the mark(s) may be used as is reasonably necessary to ID the P's product / service
  3. User must do nothing that would, in conjunction with the mark, suggest sponsorship / endorsement by the trademark holder


  • D's use of Barbie trade dress is nominative
    • used Barbie figure to conjure up associations of P, while at the same time to ID his own work - criticism and parody of Barbie
    • D used trade dress of P as a point of reference for his own work
  • D's use was nominative and fair
    • P's product / service must be one not readily identifiable w/o use of trademark
      • D's use of Barbie is necessary in order to conjure up the Barbie in a photo medium - difficult to create Barbie parody w/o using doll
    • Only so much of the mark(s) may be used as is reasonably necessary to ID the P's product / service
      • ID of D's product depends on description of P's product, therefore more use of P's mark / dress is reasonably necessary - difficult to create Barbie parody w/o using Barbie likeness
    • No affirmative statement of sponsorship disclaimer is required here

In comparative you point others.  Here, it is somewhat similar - Barbie dolls stand for Barbie.  His own product can best be described in terms of Barbies.  It is a statement about Barbie.

Parody / Satire distinction

  • artistic relevance
  • Barbie girl song - parody that targets Barbie - Mattle also lost on that one

Do you have to use it to make your point test

  • if don't need to use that logo / phrase then can't do that

Other notes:

  • Bar named "Velvet Elvis"?  Held as infringing b/c applied as entertainment service
  • If confusion about sponsorship - then can be held infrining (Michelob Ad about oil spill)




  • Casebook 270–80 (Maltina)
  • Problem 5-2
  • Casebook 598–99 (note on Suntrust Bank)
  • Casebook 610–13 (Engel)
  • Casebook 616–18 (notes on seizure and attorneys’ fees)
  • Casebook 927–33 (Amazon.com)


Maltina v. Cawy
5th Cir.  (1980)

Facts:  Maltina registered trademark - Malta Cristal, Cristal -  for soft drink in Cuba and US.  Although successful in Cuba, he was not so successful in US (i.e. no diversion of sales by Cawy). But Cawy was successful.  Cawy applied for trademark, was denied on the basis that Maltina already had registration.  With knowledge of Maltina trademark ownership, Cawy began producing and distributing Malta under "Cristal" in 1968.  In 1970 Maltina sued.  District court awarded damages to Maltina as follows:

  • $55050 for gross profits
  • $35000 for damages to reputation and good will of Maltina


Issue #1:  Whether damages for gross profits were appropriate notwithstanding the fact that profits did not result in sale diversion from Maltina

Legal Principles #1:  so long as the defendant willfully and deliberately infringes (i.e. has prior knowledge of the trademark ownership) the conduct constitutes unjust enrichment and injunction alone will not deter future infringement adequately.  Therefore, profits from infringing sales are necessary to deter future infringement.

Application #1:  Defendant deliberately infringed (evidenced by refused trademark application) $55050 in gross profits constitutes unjust enrichment and P is entitled to compensation equal to gross profits that resulted from unauthorized infringing sale


Issue #2:  whether Cawy can deduct overhead expenses

Legal Principle #2:  The overhead may be deducted so long as the defendant is able to support the contention that overhead expenses are actually related to infringed product sales (i.e. must separate them out from the rest)

  • defendant has the burden of establishing deductions from gross profit
  • deductions of legal fees related to the suit are not allowed

Holding #2:  Defendant failed to meet burden of showing its expenses actually increased its overhead expenses.  Proportionate share of overhead is not deductible when the sales of an infringing product constitute only a small percentage of total sales (because it is small portion it is not likely to have increased overhead costs)


Issue #3:  whether $35000 in actual damages (a.k.a. lost profits) from infringement are justified

Holding #3: P failed to produce any evidence supporting $35000 claim of actual damages


Other Notes:

  • tort law causation principles apply to claims for monetary relief in trademark cases.  If P seeks damages, he must prove that D's conduct caused harm such as diversion of trade that reduced profits
  • if P is entitled to accounting, D has the burden of showing that its profits were not caused by its infringing activity
  • P's business must have enough of a track record to provide a foundation for calculating lost profits
  • a registered trademark owner who does not display ® or the words "Registered in U.S. Patent and Trademark Office," may not recover profits or damages without proof that the D had actual notice of the registration
  • allowing P to recover both measures would result in overcompensation; one solution is to deduct from the total sum the amount of overlap
  • Lanham Act Sec. 34 requires P to prove only the D's sales revenues from infringing activity.  The burden then shifts to the D to prove the cost of producing those sales
  • The increased expenses resulting from the infringing activity are called variable costs, which are deducted from sales revenues. 


Note on SunTrust Bank

Thrust of the argument focused on injunctive relief in the case of copyright violation.  Whenever fair use doctrine is overstepped, injunctive relief is not always an automatic remedy.

  • The goals of copyright law - to stimulate the creation and publication of edifying matter - are not always best served by automatically granting injunctive relief when parodists are found to have gone beyond the bounds of fair use
  • injunctive relief is not a matter of right to victorious plaintiff (freelance articles that were used improperly did not mean that the articles would have to be removed from the databases
  • injunctive relief in copyright cases is discretionary


Engel v. Wild Oats
SDNY (1986)
Copyright Statutory Damages Case

Facts:  Wild Oats willfully infringed on Engel's photographs by publishing them on T-shirts.  Wild Oats sold $2500 T-shirts resulting in $1878.52 of net profits.  Engel requested statutory damages in lieu of net profits.

Legal Principles:  copyright victim is entitled to choose between actual damages (plus infringer profits) or elect statutory damages.  Statutory damages are determined by the court's discretion.  Once P elects statutory damages, she may not go back.  The dual goal is to provide equitable remedy to copyright owner and discourage further infringement

  • Courts Discretion
    • broad
    • subject to statutory limits
      • $250-$10000 for unwillful infringement
      • $10000-$50000 for willful infringement
  • Factors of Consideration in determining the cost
    • infringer's profits
    • nature of copyright
    • difficulty of proving actual damages
    • circumstances of the infringement
    • whether infringement was willful
      • willfulness does not have to be actual - compelling circumstantial evidence pointing to reckless disregard for (willful blindness to) plaintiff's right in the photograph is sufficient to establish willfulness

Other Notes:

  • no punitive damages in copyright law


Additional Remedies for Copyright Infringement:

  • destruction (a.k.a. disposition)
  • seizure by US Govt. (if criminal, or by CBP if at the border)
  • Attorney Fees
    • at court's discretion


Amazon v. B&N
CAFC (2001)
Preliminary Injunction as a Remedy Case

Facts:  B&N came out with "Express Lane," which Amazon argued infringed on its 'single' action patent.  Crux of the Amazon patent was the storage of consumer info on its server so that shopper would not have to reenter the information, thereby reducing the number of steps to complete the purchase.  B&N defended by arguing lack of infringement and invalidity of the patent

Legal Principles:

Preliminary Injunction granted upon showing:

  • likelihood of success on the merits - must be established!
    • likelihood that Amazon will prove that B&N infringes on its patent
    • likelihood of Amazon claim to withstand B&N challenges to the validity and enforceability of its patent
      • So long as B&N raises a substantial question concerning (1) infringement, or (2) validity that Amazon cannot rebut as lacking substantial merit - the preliminary injunction shall not be granted
    • infringement and validity must be performed on claim-by-claim basis
    • infringement analysis steps
      • determine the scope of the claim
      • see if any scope limitations (or its substantial equivalent) is present in the accused device
  • irreparable harm if an injunction is not granted - must be established!
    • irreparable harm is presumed when  a clear showing of patent validity and infringement has been made
      • Basis for adopting such presumption
        • finiteness of patent
        • expiration is not suspended
        • passage of time can work irremediable harm
  • balance of hardships tipping in claimant's favor - preferable but not necessary
    • hardship on a manufacturer, who is preliminarily enjoined, can be devastating b/c he must withdraw his produce from the market before trial.  On the other hand, the hardship on a patentee denied an injunction after showing a strong likelihood of success on validity and infringement can also be quite harmful as his patent rights are of limited term
  • injunction has a favorable impact on the public interest - preferable but not necessary

Validity Challenge

  • can be successful on evidence that would not suffice to support a judgment of invalidity
  • standard: clear and convincing
  • must demonstrate lack of genuine dispute of material facts
  • At Preliminary Injunction Motion
    • must demonstrate vulnerability of the issue (at preliminary injunction), validity is the issue at trial
      • requires less proof then clear and convincing
      • patentee need not establish validity beyond question
        • must present clear case supporting validity challenges


  • Infringement
    • Amazon had demonstrated a substantial likelihood of establishing literal infringement (of at least 4 claims)
  • Validity
    • Court did not focus its analysis of the validity issue on any particular claim - clear error
    • B&N mounted a serious challenge to the validity of Amazon's patent by arguing that ordinary skill in the art could fill in the gaps in the asserted references, given the opportunity to do so at trial
    • B&N cast enough doubt on the validity to avoid a preliminary injunction


Rock Morris Review

How good are his trademarks?

  • Rock Morris and Rock Morris Sauces
    • Registrability
      • Sec. 2(c) is not an obstacle:  so long as there is consent you can register
      • Sec. 2(e) does not apply:  to apply it would have to be Morris only
    • Arbitrary Mark
    • Does he use the mark?
      • yes, $250 establishes the use - source of good will
    • Priority rights
      • started using them in 2002
      • priority based on actual use in South Texas
      • predates anything anyone else in the problem was doing
      • therefore got nationwide presumptive rights

People are using the words Rock Morris in the contenxt of "Rock Morris Facts," is there a trademark infringement?

  • Not selling anything, not using anything as trademarks
  • Not associating it with any type of good they are selling

Users are not named for the most part.

Jeremy Hawke

  • entrereneur (signal that something commercial is happening)
  • discussing book with user submitted
  • Cause of Action?
    • dillution by tarnishment
      • underware is unpleasant image
      • engages in violent wrongful conduct
      • for federally dillution cause of action marks have to be famous
        • trademark is not famous, but Rock Morris is
    • dilution by blurring
      • selling mark as unrelated good may blur the goods
      • counter-argument any other associations are swamped by Rock Morris association as a movie star
    • Trademark Infringement
      • Completely Dissimilar Goods - not likely to be confused
      • Public itself is reponsible for creating this
  • False Advertising
    • not there, but may discuss

Trademark Defenses

  • Nominative Fair Use Argument
    • You need to use Rock Morris - wrong
      • Mark is being used for Name
    • Classic Fair Use
      • these are funny statements about Rock Morris.  Must use words Rock Morris, and no other way.
    • Not trying to build on good will, but using the words Rock Morris to describe what the large segment of the public uses them to describe

Copyright Piece of the Question

  • Does Rock Morris have any copyrights?
    • may have copyright in movies or copyrightable contributions.  However, most likely he would not have any expressive contributions to rock morris personal
  • Other people who have copyrights?
    • Paris & Nicky could be authors
      • sole / joint / works for hire?
        • not work for hire
        • initially owned copyrighs (probably jointly)
        • if you claim something is a fact, then you're estopped from saying it is not
      • argument that individual facts by themselves are copyrightable
      • originality? picked out and decided which "facts" to use
    • Hawke compilation copyright in the manuscript?
    • Linkages - if Paris and Nicky have copyright, then Hawke may not have copyright because he infringes on theirs
      • question of fair use?
        • if not argue the specific infringement

Assuming that Hawke has a right in a manuscript, does copying the whole thing is an infringement by Sherman? I.e. Can Sherman be sued?

  • Infringement unless there is a fair use defense
  • Fair use defense
  • Non-commercial use, but should have send the original i/o of copy