Wilf Intellectual Property Spring 2016

I. General Material
a. Theories of IP
i. Labor theory (Locke) [Pitney]
1. Reap what you have sewn
2. How much labor?
ii. Personality/Persona theory (Hegel) [Holmes]
1. Property deeply connected to you
iii. Utilitarian – what’s best for society (Bentham)
1. Create incentives for creation of products
b. Goal of IP
i. Protection of new and improved goods
ii. Discourage unfair competition in marketplace (INS v. AP)
iii. Promote disclosure of ideas into public domain (patent system)
iv. Incentive to create and invest in creations (trademarks protection)
c. Regimes of IP
i. TM – symbol used by person in commerce to indicate source
ii. TD – total image of product – overall appearance of it
iii. TS – protects economic secretive information from not being known by those who would
gain from its disclosure
1. Holder of a TS must take reasonable precautions to ensure its secrecy
iv. Copyright – original works of authorship fixed in tangible medium of expression (protects
expression)
v. Patent – requirements: novel, useful, nonobvious
d. Overall Issues
i. Preemption
1. Balance between state/federal law and public domain (Sears, Compco, Bonito
Boats)
ii. Public policy issues
II. Unfair Competition
a. Misappropriation protects against direct competitor
i. The intentional, illegal use of the property/funds of another person for one’s own use or
other unauthorized purpose . . . or by any person with a responsibility to care for an
protect another’s assets (a fiduciary duty).
ii. Note:
1. Quasi-property right
2. Common Law protection
3. Protects facts
4. Basis for Trade Secret (TS) law
iii. International News Service v. Associated Press
1. Held that AP has a quasi-property right in its published news stories as against:
a. Direct competitors (here, INS)
b. Long enough to recoup investments/labor
2. AP has no rights in its new publications as against the public
b. Palming off
i. Basis for TM protection
ii. Definition: misrepresenting something for something which it is not
iii. Avoid by: distinct/clear labels on your products

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c. Federal Preemption
i. If protected by patent or copyright (federal law), state cannot create similar state
protection because Congress implicitly was creating a public domain
ii. Sears
1. There was no patent
2. Patent decides what will/won’t be protected
3. If design were creative enough, then it could have been patented but b/c it was not
why not benefit from cheap knockoffs
iii. Compco
1. State law is preempted by patent law which defines public domain implicitly by
specifically recognizing what is patentable inventions.
iv. Bonito Boats
1. Boat design hull case
2. Florida state statute provided protection against copying boat hulls
a. Allowing state protection:
i. Impedes public use and utilitarian ideals
ii. Promotes forum shopping (certain states will try to offer most
protection)
d. Not all state IP laws are preempted – state law about marketing or implementation may be
ok—must act differently than patent
III. Trade Secrets (TS)
a. Theories of TS Protection (2)
i. Utilitarian
1. Property theory
a. Protecting against the theft of proprietary information encourages
investment in such information  incentive
2. Ruckelhaus v. Monsanto Co.
a. Holding: The Court found that Monsanto’s TS was property and, as such,
could be taken under the Fifth Amendment to give to the public.
3. Kewanee Oil v. Bicron
a. Holding: The Court reasoned that TS law provides additional incentive to
innovate beyond those of Patent law.
ii. Deterrence of Wrongful Acts
1. Tort theory
a. Punishes and prevents illicit behavior while upholding reasonable
standards of commercial behavior
b. Based on assumption that D (misappropriator) stood in confidential
relations with the P (Kewanee Oil v. Bicron)
2. Kewanee Oil v. Bicron
a. Held that TS and patent are not in conflict because:
i. TS law encourages invention in areas where patent law does not
reach and prompts the independent innovator to proceed with
discovery and exploitation of his invention knowing he can gain
protection under state TS law before getting a patent
iii. Contract law
1. Different contracts can state that one must protect the secret. If you don’t then it’s
breach and misappropriation of TS.

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2. Contracts to acquire/license TS will be enforced

a. Warner-Lambert
i. Listerine formula licensed to Lambert
ii. Claims the formula/TS became public knowledge/public domain
iii. Court held that the express terms of the contract trumped TS
b. TS examples
i. Customer links
ii. Manufacturing methods
iii. Chemical processes, formulas, related equipment
iv. Computer programming code
v. Marketing data and strategies
vi. Blueprints
vii. Genetic information
c. Sources of Protection for TS
i. State law
1. States follow the Uniform Trade Secret Act (USTA)
a. Improper means of acquiring information
b. Any information used in operation of business
c. TS holder has burden of proving that it was in fact secret information
i. By preponderance of the evidence
ii. No federal statute (possible Wilf exam Q) – design a federal TS statute
d. Difference between TS and Patent law
i. TS law prevents against a breach of duty (a tort theory)
ii. Patent law encourages invention by granting monopoly in exchange for entrance into
public domain at some point in future (a property theory)
e. What qualifies as a TS?
i. Information must be a secret
ii. Matters of general knowledge in an industry cannot be appropriate by one as his secret
iii. Information must have economic/commercial value and actually be a secret
f. Elements of Misappropriation Claim (3):
i. Information is a secret
1. Generally unknown in industry
2. Commercial value
ii. P took reasonable efforts to maintain secrecy
1. Given facts did P take sufficient steps to protect TS
iii. D misappropriated the TS
1. Improper means
2. Breach of duty/confidence
iv. Element 1: Secret
1. Rule: information is a secret when it is valuable and generally unknown/not
readily ascertainable by others in industry.
a. Rule: information that is disclosed in furtherance of business to increase
revenue/profit will not defeat a TS claim.
i. Metallurgical v. Fourtek
1. Held that zinc recovery process was valuable information
generally not known to others b/c disclosure was limited to
that necessary to generate profit

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2. Held that Metallurgical took reasonable precautions to

maintain secrecy through posting signs, requiring
nondisclosure agreements, and concealing
b. Factors to consider for if info. is secret
i. Restatement of Torts/Metallurgical
1. Extent to which information is known outside P’s business
2. Extent to which it is known by employees and others involved
in business
3. Extent of measures taken by claimant to guard the secrecy of
the information
4. Value of information to business and competitors
5. Amount of effort – money – expended in developing the
information
6. Ease or difficulty with which information could be properly
appropriated by others
c. Big problem is not whether the information was made available to others
but how it was acquired (was it misappropriated?)
v. Element 2: Reasonable Efforts to Maintain Secrecy Under the Circumstances
1. Rule: there are reasonable efforts taken to maintain secrecy when – in light of
specific facts of case – P took steps to prevent others from lawfully acquiring the
TS.
2. Factors considered by courts in determining efforts by P in maintaining secrecy
a. Are there written confidentiality/nondisclosure agreements?
b. With employees who have access to the TS?
c. With outsides who have access to the TS? (i.e. independent contractors)
d. Is TS kept somewhere that is generally closed and off-limits?
i. Doors locked?
ii. Visitors must sign in?
iii. Prevented from accessing confidential information?
e. Is access to information limited to employees who need it?
f. Are employees notified that information is confidential and valuable?
g. Are there periodic warnings and reminders?
3. Rule: an owner of a TS (Rockwell) must be able to make commercial use of its
valuable commercial information without forfeiting the ownership of that
information.
a. Rockwell Graphic Systems v. DEV Industries
i. Held that Rockwell to reasonable precautions under circumstances
when Rockwell kept designs in locked vaults, limited access to only
authorized employees, requiring signing of nondisclosure
agreements
4. Rule: unreasonable efforts are not required.
a. EI DuPont v. Christophers
i. Misappropriation of TS (manufacturing process of methanol)
occurred when aerial photos were taken while plant was under
construction. Held that requiring DuPont to close/protect roof
would be unreasonable
5. Element 3: Information must be actually misappropriated
a. Ways in which acquisition of TS is illegal (2)
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i. Improper means (based in tort law)

1. Rule: information is acquired through improper means when
the discovery falls below the generally accepted standards of
commercial morality and reasonable conduct (Restatement)
a. EI Dupont v. Christophers
i. Information was acquired by Christophers
through improper means when he flew
overhead while Dupont methanol production
plant was under construction and accordingly
exposed to industrial espionage.
2. Examples (USTA): theft, bribery, misrepresentation, breach
of duty to maintain secrecy, industrial espionage
ii. Breach of confidence (based in contract law)
1. Rule: information is misappropriated through a breach of
confidence when there is a fiduciary duty or some other duty
not to disclose.
2. Examples: employer-employee relationship
g. Contracts That Restrict the Use/Disclosure of Trade Secrets
i. Companies often require their executives – with access to valuable proprietary
information not generally known to others – to sign contracts to obligate them not to
disclose
ii. Common contracts to obligate non-disclosure (2)
1. Noncompetition Agreements
a. Contractual duty – arises from contract!
b. Employer has employee in privity to TS information sign noncompetition
agreement
c. **Must be valid under traditional contract law!
i. Edwards v. Arthur Andersen
1. Holding: Edwards’ noncompetition agreement was invalid
because it restricted him from performing work for
Andersen’s Los Angeles clients and therefore restricted his
ability to practice his accounting profession.
2. Shrink-wrap Agreements
a. ProCD v. Zeidenberg
i. Holding: The shrink-wrap agreement in ProCD’s software was
binding on Zeidenberg under contract law (UCC) and therefore
prohibited him from creating a similar telephone directory to that of
ProCD.
1. Acceptance of shrink-wrap = when he downloaded, opened,
and then used it
h. Implied Duties that Restrict the Use/Disclosure of Trade Secrets
i. Inevitable disclosure doctrine  PepsiCo
ii. Arises from fiduciary/implied/employment-employee relationship
1. This is an expansion of the general TS misappropriation claim for information not
yet disclosed but that will inevitably disclosed (Redmond)
iii. Rule: Courts can enjoin actual or threatened misappropriation of TS and restrain an ex-
employee who was in privity to proprietary information from taking a new employment

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position in a related field because of a likelihood of divulging this information in his or her
new job.
1. Inevitable Disclosure Doctrine Test (Redmond):
a. Was ex-employee in privity to sensitive information in former position?
b. Is the new position in a related field?
c. Is there a likelihood of divulging the sensitive information in new position?
2. PepsiCo v. Redmond
a. Holding: Redmond, a former PepsiCo executive taking a new executive
position at Quaker Oats, was enjoined from taking that new position under
the inevitable disclosure doctrine, when he would inevitably draw upon his
knowledge of PepsiCo’s strategies regarding the soft-drink industry (where
they were competing) in his new position as VP of Operations at Quaker
Oats.
b. Test applied in Redmond
i. Was there privity?
1. Redmond was in privity to information by being a Pepsico
executive
ii. Was D in a related field?
1. Quaker Oats was in the sports drink industry directly
competing with Pepsico
iii. Was there a likelihood of divulging information at new
position?
1. He would be dealing with marketing strategies and would
inevitably draw upon his Pepsico knowledge at meetings, in
creating a plan, strategy, etc.
iv. Redmond had a fiduciary duty not to disclose the Pepsico
information to Quaker Oats that would inevitably be breached.
i. How Does Disclosure of TS Happen?
i. Ways that disclosure may occur (5)
1. Publishes the secret in a journal or another forum to which competitors have
access
2. Sells commercial product that embodies the TS
a. Is the secret apparent to buyers of the product from the product itself?
3. Disclosure by a 3rd party – someone other than the TS owner
a. A 3rd party independently discovers the TS and discloses it (produces it,
discloses it, writes about it, etc.)
4. Inadvertent disclosure
a. A truly accidental inadvertent disclosure will not defeat a TS claim provided
reasonable efforts to maintain secrecy have been taken
b. Widespread inadvertent disclosure (i.e. mistaken email blast) will defeat a
TS claim
5. Government required disclosure (i.e. taking under Fifth Amendment) to serve a
social useful public purpose
j. Defenses to a TS Misappropriation Claim
i. Several defenses
1. Reverse Engineering

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a. Rule: reverse engineering is a defense when a competitor publicly purchase

a product – in the public domain and constituting P’s TS – and is able to
determine the secretive information by reverse engineering.
2. Independent Development
a. Rule: independent development is a defense to TS claim when D
independently develops information that constitutes P’s TS
k. Criminal Liability for TS Misappropriation
i. Economic Espionage Act of 1996
1. Makes theft or misappropriation of a TS a federal crime in two situations
a. Theft of TS to benefit foreign powers
b. Theft for commercial or economic purposes
ii. California Penal Code Section 499c
1. Imposes criminal liability on theft of TS under improper means as defined in UTSA
l. Methods of Protecting a TS
i. Beware of insiders, former employees, competitors
ii. Keep employees informed as to commercial value of discretion
1. Sign policy statements
iii. Have them sign nondisclosure agreements
iv. Train employees
v. Have management teams overseeing compliance
vi. Enforce/discipline security violations
vii. Have signs up in office
viii. Disclaimers of value of information
IV. Trademarks (TM)
a. Theories of TM Protection
i. Differs from other IP regimes – patent, copyright, TS
1. Patent, copyright, TS – designed to protect and/or reward something new,
inventive, or creative – includes ideas, physical creations, or expression
2. TM – does not depend on novelty, invention, discovery, or work of the brain
a. TM protection awarded to anyone who was the first (senior) to use a
distinctive mark in commerce
ii. Unfair Competition Theory/Producer Incentive (tort)
1. Others should not reap benefit from use of a mark created – and made stronger –
by someone before
iii. Deception to Consumer/Protection of Consumer (tort)
1. Need to protect consumers from purchasing goods of another based on similar
identifying marks
iv. Protects Investment by TM Holder/Producer Incentive
1. In creation of mark (i.e. making association between mark and their products
stronger)
2. In advertising and promoting the product in association with the mark (i.e. making
it stronger)
3. In product-related investment such as high-quality raw materials, production
equipment, and quality assurance techniques
v. Protection of TM Holder’s Goodwill
1. Consumers have come to associate mark with producer and that creates goodwill
that we don’t want to tarnish/blur

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b. Sources of Protection
i. Federal registration (most common) Lanham Act
ii. State common law (exists even when lose registration, etc.)
c. What Can be Protected as a TM?
i. Trademark (TM)
1. Word, symbol, or device
2. Requirement for a TM
a. Use in Commerce or Bona Fide Intention to Use
i. Used in commerce; or
1. Zazu v. L’Oreal
2. Court: ZAZU mark was not used in commerce when only a
few bottles had been sold, without proper labels, to friends as
a test case.
3. Factors:
a. Market- stream of commerce
b. Must be external to ordinary purchaser
c. Affixation of labels
d. Not merely token sales
e. Good faith
ii. Bona fide intention to use in commerce
b. Distinctiveness
i. Inherent – no secondary meaning required
1. Arbitrary or Fanciful (strongest mark).
a. Test: No logical relationship between mark and source
b. No logical relationship between mark and underlying
product.
c. Exxon – with gasoline
d. Kodak – with cameras
e. Apple – with computers
f. Nike “swoosh” – with athletic shoes
2. Suggestive
a. Test: No literal description of goods and services – so
imagination is required to infer
b. Evokes or suggests a characteristic of the underlying
product.
c. Some imagination on part of consumer to connect
mark with source
d. Coppertone – with sun-tan lotion (suggestive of sun-
tan lotion but doesn’t describe the product)
ii. Acquired distinctiveness (through secondary meaning)
iii. Descriptive
1. Test: describes a characteristic or quality of the underlying
product
a. Holiday Inn – hotel rooms
b. All Bran – breakfast cereal
c. Vision Center – optical services
2. 3 types of descriptive marks
a. Describes product or service
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i. Qualitex – green colored pads

b. Person’s name or surname
i. Levitt – secondary meaning was in a different
location
ii. Use of his name in the same market will create
likelihood of confusion
c. Geographic location
i. Test: whether consuming public is likely to
assume that named location is where product
originates?
ii. In re Nantucket
iii. Court: Shirt with “NANTUCKET” on it was not
geographically misdescriptive because
consuming public would not likely assume shirt
is made in Nantucket and not NC.
d. Misdescriptive marks
i. Test: protectable as long as it doesn’t affect
whether buyer decides to buy the product.
ii. Misdescriptive – protectable because not
material to potential buyers
iii. Deceptively misdescriptive – never
protectable because its material
iv. Descriptive marks are only distinctive and protectable when they
have a secondary meaning
1. Test: Does general/reasonable consumer identify the mark
with the source of product?
a. Holiday Inn – has secondary meaning b/c public
looking for hotels associates that term with the
particular provider of hotels and not hotels in general.
b. Qualitex – color of drying pads was not protectable
under TM.
i. Qualitex rule: Color is only TM protectable if it
has acquired secondary meaning.
3. Secondary meaning
a. Broadens the scope of TM protection
b. Purpose: don’t want to impede competition – let’s not protect a descriptive
mark that doesn’t have secondary meaning – you’re depriving others of
using that symbol (usually a color, etc.)
c. Marks that require secondary meaning (6)
i. Descriptive
ii. Geographically misdescriptive
iii. Deceptive misdescriptive
1. Only protectable if mark doesn’t affect whether the buyer will
buy the goods
2. Materiality: is the misdescription material to the potential
buyers?
a. If not material then it is protectable with secondary
meaning.
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iv. Surname (Levitt)

1. Needs secondary meaning if public is likely to consider first
meaning of term to be just a surname
v. Color
vi. Product design/Trade Dress
1. Walmart v. Samara Brothers
a. Product packaging doesn’t need secondary meaning
because it’s inherently distinctive
d. Courts disfavor acquired distinctiveness through secondary meaning.
i. Limit to regional marketplace (Levitt)
ii. Subject to fair use defense.
1. Zatarain v. Oak Groves
a. Could use the mark CHICKEN FRI under fair use
defense.
e. Secondary meaning factors
i. Extent of sales
ii. Length of use
iii. Exclusivity of use
iv. Facts of copying
v. Customer surveys
1. Limited accuracy
2. Can be biased
vi. Use in trade journals
vii. Size of company
viii. Number of sales or customers
ix. Actual confusion
ii. Trade Dress (TD)
1. “Total look and feel of product” (Two Pesos)
2. Visual appearance of product or packaging (Samara Brothers)
a. Product Design requires secondary meaning for acquired distinctiveness
i. Direct evidence
1. Survey evidence
2. Testimony of actual customers
ii. Circumstantial evidence
1. Exclusivity
2. Manner
3. Length of use
4. Amount/manner of advertising
5. Amount of sales
6. # of customers
b. Product Packaging can be inherently distinctive
i. But argue it’s functional too
3. Design/shape of product itself
4. Protected under Lanham Act Section 43:
a. False Designation of Origin and False Descriptions Forbidden
i. Likely to cause confusion
ii. Misrepresents the nature, characteristics, qualities, or geographic
origin
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iii. Color, Fragrance, Sounds

1. Rule: color can be protectable if it has acquired distinctiveness (through
secondary meaning)
2. Qualitex v. Jacobson Products
a. Qualitex sued Jacobson for infringement under Lanham Act 45 claim when
Jacobson used same green-gold color on dry cleaning press pads.
b. Held: the green-gold color on Qualitex’s dry cleaning press pads constituted
protectable subject matter under Lanham 45 when it had developed
secondary meaning (customers identified the green-gold color as
Qualitex’s) and there was no functionality defense (color not necessary for
pads to function)
d. Establishment of TM Rights
i. Use in commerce of bona fide intent to use in commerce
ii. Distinctiveness (inherent or acquired)
e. Marks That Cannot be Registered
i. Immoral or scandalous marks
1. Marks that are shocking to sense of decency/offensive to moral;
2. To a substantial composite of general public in context of contemporary
attitudes
a. In re old glory condoms
i. Holding: Condom with American flag on it was not
immoral/scandalous when it was in political context and cast the
country in a positive light
1. Test:
a. What is the likely meaning of mark?
b. Is it’s use likely to offend substantial composite of
general public?
ii. Disparaging marks of certain groups/classes/races
1. Protection denied if use will disparage people—living or dead, particular
institutions, or beliefs
2. Stanard – point of view of group referenced.
a. Harjo  Washington Redskins Case
i. Native Americans (reference group) felt that use of Redskins as a TM
was offensive to them.
ii. Test:
1. What is the likely meaning of the mark?
2. Is it likely to offend the group referenced?
iii. Court: just ruled that Redskins as a mark is disparaging (2014)
iii. Geographic marks
1. Test: Will purchases likely be deceived by the mark that it is actually from a
certain geographic location?
a. In re Nantucket (consumers will not think that the shirts are from
Nantucket island)
iv. Names/likeness
1. Uses that potential buyers will link with other people (i.e. covered by rights of
publicity)
2. Consumer confusion test – will ordinary consumer likely to be confused?
a. Levitt
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v. Cancellation of Registered Marks

f. Elements of a TM Infringement Claim.
i. Types of infringement claims (3)
1. Likelihood of confusion (Lanham 43)
a. Used in commerce or bona fide intention to use
b. Likelihood of confusion (Polaroid factors)
2. Dilution by blurring
a. Senior user’s mark is famous
b. D makes commercial use of his mark
c. Similarity between P and D’s marks
d. Blurring – customers will likely associate the senior mark with other
products in other markets (i.e. Louis Vuitton v. HDD)
3. Dilution by tarnshiment
a. Senior user’s mark is famous
b. D makes commercial use of his mark
c. Similarity between P and D’s marks
d. Tarnishment – weakening of mark through unsavory or unflattering
associations (i.e. Victoria’s Secret and Victor’s Little Secret)
i. VS won, if allowed victor’s little secret then allow a lot of other
victor’s secrets
ii. Likelihood of confusion (Lanham Act Section 43)
1. Use or bona fide intent to use in commerce
2. Likelihood of consumer confusion
3. Note: Other types of confusion – confusion as to source (similar industries but not
same product)
a. Polaroid (nondispositive) factors:
i. Strength of mark
1. Generic < descriptive < suggestive < fanciful/arbitrary
ii. Degree of similarity between marks
1. Sight, sound and meaning of two marks
2. If high – likely to be confused
iii. Proximity of products in marketplace
iv. Likelihood that senior user will bridge the gap
1. Will senior user be bridging the gap soon?
v. Actual confusion
1. Whether confusion among the relevant purchasing public
actually exists.
vi. Good faith in adopting its own mark
1. Intending to confuse/deceive (bad faith) is evidence of
copying.
2. Note that good faith is not dispositive at all
vii. Quality of junior user’s product
1. If high quality – likely more care put into choice – less likely
to be confused
viii. Care and sophistication of relevant consumers when purchasing
1. If high – less likely to be confused (Sleekcraft)
b. Example:

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i. T. Markey Shoes brings likelihood of confusion claim against Tee

Marquee Shirts
1. Analysis:
a. Marks are similar in sight, sound and meaning
b. Thought shoes and shirts are not the same good, they
are related
c. Sold in same department stores, consumers are likely
to see them together and associate them with one
another.
iii. Dilution (UTDA)
1. Factors courts consider (non-dispositive): (Louis Vuittion v. Haute Diggity Dog)
a. Similarity between junior mark and famous mark
b. Degree of inherent or acquired distinctiveness of famous mark
c. Extent to which owner of famous mark is engaging in substantially
exclusive use of that mark
d. Degree of recognition of famous mark
e. Whether user of junior mark intended to create an association with famous
mark
f. Whether there is actual association between the junior mark and the
famous mark
g. Anti-cybersquatting Consumer Protection Act (ACPA)
i. To establish protection under ACPA:
1. There must have been bad faith to profit using the parodied name
2. Domain name must be confusingly similar to or dilutive of distinctive/famous
mark
a. Falwell v. Lamparello
i. Falwell had website www.falwell.com and then lamparello made
website www.fallwell.com that criticized the teachings and beliefs of
falwell but had disclaimer that not associated with Falwell.
ii. No bad faith to profit off of falwell’s name. Use of domain name for
criticism and comment is not bad faith. No likelihood of confusion.
b. PETA v. Doughney
i. Doughney created website “people eating tasty animals (PETA)” as
parody of real PETA
ii. Court:
1. Found that Doughney acted in bad faith when creating the
parody
2. He intended to profit off of use of PETA famous name
c. Ty Inc.
i. Perryman was second-hand dealer of Ty’s Beanie Babies through
internet.
ii. Court: Use of “Beanies” in domain name did not violate ACPA
because of secondary market.
1. Secondary market is shielded from dilution suits
2. It’s not free-riding because it’s not in the same market
h. Defenses (6)
i. Classic Fair Use
1. Affirmative defense to TM infringement liability
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2. Junior user uses someone else’s mark not as a TM but merely to describe its own
goods or services
3. Elements
a. Use other than as a mark
b. Descriptive of goods or services of party
c. Used in good faith
4. Example
a. Target sues company that advertises using “Target Practice”
b. Company can claim fair use defense
ii. Nominative Fair Use
1. Affirmative defense
2. Elements
a. Product or service in question is not identifiable without use of the TM
b. Only so much of the TM is used as is reasonably necessary to identify the
product or service
c. User does nothing to suggest sponsorship or endorsement by TM holder
3. Junior user uses another’s TM deliberately to refer to that party for purposes such
as:
a. News reporting
b. Commentary or criticism
c. Parody
d. Advertising (comparative advertising)
iii. Functional
1. Utility (Qualitex)- Question of degree- how functional object really is
a. Color is descriptive- but here it has a secondary meaning- advertising
b. No issue of color depletion/crowding out
c. There is infinite combination of colors- colors and patterns, etc
d. Multi-colors eliminate this problem
2. Advertised utility (Traffix- expired utility patent was strong inference of utility)
a. Made the representation of utility- regardless of whether its actually useful
3. Aesthetic functionality (Wallace)
a. Design is essential for use or description of item
b. Wallace international silversmiths
i. Court: The baroque silverware was TM protectable because it was
aesthetically functional. Need the swirly design in order to compete
in the silverware market.
ii. Alternate design impossible
iii. Expands functionality to include aesthetic functionality!
4. Competitive necessity (Traffix) – someone wants it enough to make it useful
a. Wilf calls this “need to use”
5. Exception to functionality defense: if there are alternatives (i.e. other color
options) available it is likely protectable (In re Morton)
iv. Descriptive Use
1. TM is being used otherwise than as a mark
2. It’s being used to describe the goods or services of the junior user
v. Genericide
1. Over time a once stronger mark has become generic

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2. This is because of consumer’s no longer associating TM with specific source of

goods but generically with the class of products itself
a. Kleenex
b. Escalator
vi. Parody
1. Must show:
a. Lack of confusion
b. Need to convey two message simultaneously
c. Need to use part of the senior user’s TM to covey message
d. D’s use is not sponsored by P
e. Must be commenting/parodying the underlying TM itself
2. Not a complete defense, you have to go through the 6 factor fair use test. Depends
if there is a clear distinction, not necessarily robust fair use.
3. Need to make sure parody will not blur distinctiveness
4. Mattel v. MCA Records
a. Aqua produced song Barbie Girl. Mattel has valid trademark for Barbie.
Mattel sued. Aqua said it was dilutive but the court held that it was a
parody.
b. Literary titles don’t violate Lanham Act. Only connection to Mattel was
name Barbie. FTDA protects the owner of a famous mark against another
person's commercial use in commerce of a mark of trade name, if such use
begins after the mark has become famous and causes dilution of the
distinctive quality of the mark. Barbie qualifies under that but there are 3
exceptions
i. (1) Comparative advertisement, (2) commentary, and (3)
noncommercial use
1. noncommercial refers to use that consists entirely of a
noncommercial, or fully constitutionally protected, speech
a. i.e. parodies  1st amendment concerns
b. If speech is not purely commercial (not just a
transaction) then entitled to first amendment
coverage
vii. Abandonment
1. Discontinued use with intent not to resume
a. Nonuse for 3 years is prima facie evidence of abandonment (presumption
but can rebut)
viii. Loss of Distinctiveness
1. Happens when P fails to police the licensees of his TM
ix. Laches
1. Junior user used the mark
2. Time has passed
3. That time has created a reliance interest
4. Senior user did nothing to stop junior’s use
i. TM is dual system of protection
1. State common law and federal Lanham act
ii. State Protection
1. Common law (2 types)
a. Misappropriation (becomes TS) (Manufactured goodwill)
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i. Product name
ii. Product shape
iii. Product color
iv. Product packaging (TD)
b. Palming off (eventually becomes TM)
i. Intent to deceive
ii. Consumer confusion- easier to prove – more objective
c. TM: Right to prevent subsequent use of same/ similar mark if subsequent
use is likely to confuse as to origin of product
i. Related Use Doctrine: protection against use of TM on
product/service that would reasonably be thought by buying
public to come from same source
2. Requirements for Common Law TM Protection:
a. Use in commerce  Zazu!!
i. Good faith and in ordinary course of trade
ii. May accrue through solely intrastate use
iii. Test: Symbol becomes TM upon bona fide use of symbol- in
commerce in connection with relevant good/service
1. Token use is insufficient
2. Use must be lawful
3. Courts look at totality of circumstances
iv. Scope: where mark has been used and is likely to expand
b. Tea Rose Doctrine
i. Rule: geographic protection is limited to within zone of reputation
of senior user of mark.
1. Restrained to where TM is actually used and “zone of
natural expansion”
ii. Hanover star milling (Tea Rose)- tea rose flour- 2 good faith users
– operating in different areas (Midwest vs east)- Q of prior
appropriation is irrelevant when markets so separate
1. Tea rose doctrine:
a. Natural zone of expansion
i. Protects goodwill and place around goodwill
b. Natural zone of expansion factors
i. previous business activity
ii. Previous expansion or lack thereof
iii. Dominance in contiguous areas
iv. Presently planned expansion
v. Possible market penetration based on volume,
growth, customer base, and advertising
2. Rule: Lanham Act overruled Tea Rose Doctrine by
establishing nationwide rights in TM upon registration of
mark.
a. See Dawn Donuts
iii. Dawn Donuts
1. P had federal TM and sought to enjoin D’s use of TM in area but P hadn’t used it
there for 30+ yrs
2. Court: No injunction because failure to police mark.
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a. D can use Dawn Donuts in his secondary market until Dawn Donuts comes
into that market
j. Incontestibility
i. Creates a quiet title after a number of years
ii. Zazu
1. Hair salon had a hair coloring product called Zazu. Never used it, just had a plan to
eventually use it and sold a few bottles privately. L’oreal used product name Zazu.
2. An unregistered plan to use a mark in commerce creates no trademark rights for
the owner.
iii. Park’n Fly
1. Park’n fly = airport parking lots. Obtained incontestable status for the mark form
USPTO. Dollar park and fly operated similar parking lot business. PNF sued DPNF.
DPNF counterclaimed saying it’s generic and shouldn’t be registered.
2. Incontestable mark that is generic can be canceled at any time under §14©.
Descriptive marks can’t be incontestable unless they have secondary meaning.
Because PNF got incontestability means that it’s not a descriptive mark and DPF
infringed.
k. Consumer Confusion
i.
l. Purpose of TM
i. Distinguish products from multiple sources
ii. Lower search costs –more distinctive = lower cost-
iii. Promote product consistency- Incentive to maintain quality- invest in goodwill
iv. Prevents free-riders
v. Improves quality of language
vi. Regulate competition - Reduce deceptive practices
m. Benefits of Federal Registration
i. Presumption of strong mark – burden of proof shifts to alleged infringer to rebut validity
ii. Prima facie evidence of proprietary claim
iii. Incontestability after 5 years
iv. Constructive nationwide notice of existence of TM
v. In national database at PTO
V. Right of Publicity
a. Protects an individual’s marketable image or persona
b. Basically exclusively in the celebrity realm
c. 16 states have common law rights of publicity
d. 15 states have statutory rights of publicity
e. Criteria
i. Celebrity or famous/well known individual
ii. Indicia of identity
iii. Property right
iv. Right to profit from identity
v. Violation causes monetary/economic harm
f. Definition
i. Right of a person whose identity has commercial value to control commercial use of that
identity
g. Justifications

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i. Privacy interest of celebrity

1. Forbid idle gossip
2. Restore propriety and dignity to the press
ii. Economic exploitation
1. Haelen Laboratories v. Topps Chewing Gum
a. Haelen negotiated exclusive licenses from MLB players authorizing use of
their images on baseball card included in their packs of gum
b. Court: MLB players have a right in the publicity value of their photographs
and has the right to grant exclusive privilege of publishing the picture.
c. It is common knowledge that many prominent persons (especially actors
and ball-players), far from having their feelings bruised through public
exposure of their likeness would feel sorely deprived if they no longer
received money for authorizing advertisements, popularizing their
countenances displayed in newspapers, magazines, busses, trains, and
subways
h. Began with right of privacy
i. Right to prevent truthful but indecent exposures – protects embarrassment
1. 4-Prong Test for Tort of Privacy
a. Intrusion upon P’s solitaire
b. Public disclosure of private fact
c. Places P in false light in public eye
d. Inappropriately endorsed a product
i. Sources of Protection
i. Federal under Lanham Act Section 43a
1. Use of identity misled consumers into believing that individual endorsed product
at issue
2. MUST prove customer confusion
ii. State under statute and common law
1. Requirements for claim:
a. Use of identity
b. Appropriation to advantage of D
c. Lack of consent from P
d. Resulting injury to P
2. NEED NOT prove customer confusion
j. What is Protected?
i. Name/Likeness
1. If celebrity’s identity is commercially exploited then there has been an invasion of
the right whether his name or likeness is used
2. Midler v. Ford
a. Court: Distinctive voice of professional singer was widely known and
deliberately imitated in order to sell D’s product, therefore sellers have
appropriated Midler’s reputation and goodwill and have committed CA tort
i. Factors considered
1. Midler’s voice is distinctive and well-known
2. Customers think Midler’s endorsing product when she’s not
3. White v. Samsung

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a. Court: The total image – including White in front of the jeapordy board –
invokes her identity in public mind though they don’t actually think they’re
seeing White (there’s no deception)
k. Conflict between PR and Copyright
i. Copyright
1. Fixed and tangible medium of expression
2. Federal regime offers predictability
3. Robuts fair use exception
ii. PR
1. May be unfixed – i.e. voice, live, sporting event
2. No federal regime – varies from state to state
3. Emerging fair use exception
l. Purpose
i. Economic incentives
ii. Non-economic incentives
1. Safeguards natural rights
2. Prevents unjust enrichment at celebrity’s expense
iii. Promotes efficient allocation of resources
m. PR versus TM law
i. TM
1. Protects: goodwill/reputation
2. There is a tangible form of TM in TD
3. Test for infringement:
a. Dilution
b. Likelihood of Confusion
ii. PR
1. Protects: reputation/persona
2. There is a tangible form of PR
3. No need for prior commercial use like in TM
4. Test for infringement

Trademark Publicity right

What is Good will Persona - as defined by
protected? indicia of identity
Prior Yes - use in commerce No - no prior exploitation
exploitation? required
Test for Likelihood of confusion Indicia used in endorsement
infringement? & merchandise
Transfer Must assign with good will and May assign for use w/o
quality control quality

n. Does PR Survive Death?

i. Some states allow PR to survive death
1. MLK Center v. American Heritage Products

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a. AHP created a plastic bust of MLK not authorized by center who held MLK’s
Rights of Publicity
b. Court: Granted an injunction to stop producing the plastic bust
c. Test Applied:
i. Could the exploitation have occurred during MLK’s lifetime?
ii. There are problems created with this uncertainty as to whether PR survives death
1. May increase forum shopping
2. How far does it descend down a bloodline?
o. Defenses
i. Newsworthiness
1. Zacchinni v. Scripps
a. Publishing company showed video of human cannonball without his
consent.
b. Court: Human cannonball has a right to publicize his own act and profit
from the fruits of his own labor
i. Reasoning: it’s his labor, personality, and utility. If others show
video for free, he loses his persona.
c. Zacchinnie Rule: TV station ahs right to report newscast of legitimate
public interest which would be protected by individual’s right of publicity
unless actual intent of station was to appropriate the benefit of the
publicity (was actual intent to profit from his being famous?)
i. TV station was free-riding
ii. Parody
1. Cardtoons
a. Parody has fair use exception ONLY IF non-commercial use
b. Court: This was a political parody so it’s non-commercial
2. Fair use factors
a. Principle and character of use
b. Use as advertisement
c. Amount of use
d. How it is appropriated
e. Effect on market
3. Why do we allow parody exception?
a. Transformative
b. Directed toward particular use
c. We’re concerned about crowding out
4. Satire is not a fair use
iii. Fair Use Exception (borrowed from copyright)
1. Factors to consider
a. Character/purpose of use
i. Commentary/criticism is OK
ii. Educational purposes is OK
b. Amount of use
c. Affect on market
iv. Transformation/Creating a PR regime
1. From TORT to PROPERTY (MLK)
2. Finding JUSTIFICATIONS (Zacchinni)
3. Creating FAIR USE DEFENSE (Cardtoons)
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p. Problems with Right of Publicity

i. Variation among state may lead to forum shopping
ii. Questions about whether Lanham Act preempts the state law for PR
iii. Decision of what forum to bring action in
iv. Insufficient fair uses defenses
v. Federal courts are trying to interpret a state’s right of publicity law (Erie issue)
vi. Possibility of preemption by copyright law
VI. Copyright
a. General overview
i. Originally copyright was protected by each state
1. E.g. 1783 MA statute defined purpose of copyright as:
a. Utilitarian goal of producing new creative works
b. Securing of one of the natural rights of men
ii. To resolve this issue of state variations in the law
iii. Constitutional protection (patent and copyright clause)
iv. 1790 Copyright Act
1. What it protected?
a. Granted authors protection for books, maps and charts for 14 years w/
renewal option of additional 14 years
b. Later—prints, musical compositions, dramatic works, photographs, graphic
works, sculpture
2. How it protected?
a. Registration required with local district court; and
b. Notice published in local newspapers
v. 1909 Copyright Act
1. Broadened scope of copyright protection to
a. “all writings”
2. Duration
a. 28 years with 28 year renewal option
vi. 1976 Copyright Act
1. Expanded scope and duration of protection
a. Scope
i. All original works of authorship fixed in a tangible medium of
expression—even if unpublished
b. Duration
i. Life of author plus 70 years, or 75 years for works made for hire
2. Digital Millennium Copyright Act (DMCA)
a. Afford to copyright owners rights against those who circumvent copy
protection technologies
b. Safe harbor for service providers from contributory infringement claims
vii. Copyrightable subject matter
1. Literature, song, dance, sculpture, graphics, painting, photography, sound, movies,
computer programming, writings
viii. Requirements
1. Original work (low threshold)
a. Only requires an independent creation of a work featuring a modicum of
creativity

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i. Something more than merely trivial

2. Authorship
a. Created by Π or by someone transferred by Π prior to suit to another
b. Works-made-for-hire
i. Employer—not actual creator—considered the author/owner of
work if within scope of ordinary employment
c. Joint works
3. Fixation in tangible medium of expression
a. More than merely transitory in nature
ix. Copyright holder’s exclusive 106 rights
1. Reproduction
a. Π can make direct copies of original work
2. Derivative works
a. Π can prepare new works based on original but in different forms (e.g.
translations, movies off books)
3. Distribution
a. Π can control 1st sale/distribution of original, reproductions, and derivative
works
4. Public performance and display
a. Π can control public—not private—performance/display of work
5. Anticircumvention
a. Π can sue if Δ circumvents in-place technological measures (e.g. encryption)
b. Limitations of Above Rights
i. Fair use doctrine
1. Includes criticism, comment, news reporting, teaching, scholarship, research
2. Applies balancing test—whether a use of coyrighted material should be permitted
without the owner’s authorization
ii. Compulsory Licensing (CCC)
1. For musical compositions, cable television, and webcasts
iii. Safe Harbor Protection for contributory infringement suit
1. Limits liability for online service providers (YouTube) from monetary liability for
infringing acts of their subscribers
c. Difference between Patent and Copyright Law
i. Patent prevents anyone from making, using, or selling their creation
1. Independent development of similar or identical work is illegal
ii. Copyright prevents only unauthorized copying
1. Independent development of similar or identical work is perfectly legal
2. Therefore—infringement depends on D’s access and substantial similarity to
copyrighted work
d. Theories for Copyright
i. Utilitarian theory
1. Enhances public interest
2. Const. Gives Congress power to enact copyright laws in order to promote Progress
of Science and useful Arts
3. Grants monopoly against unauthorized copying of author’s work for him to recoup
his investments for creative labor (Locke theory)
a. Then goes into public domain after limited time

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e. Requirement 1 for Protection: Original work of authorship

i. Section 102 of Copyright Act
1. Independent creation of a work reflecting a modicum of originality – de minimis
originality threshold
2. Need not be strikingly unique or novel
3. Author only needs to contribute something more than “merely trivial” variation
4. Merit of author’s work does not matter at all
Community for Creative Non-violence v. Reid
Facts
 James Earl Reid commissioned to create sculpture of homeless nativity with specific wording
 Is this a work-for-hire? A joint work? Or a work whose © is vested with the artist?
Holding
 Who get's to control the work?
 Reid was the author because independent contractor
 §101 definition Work-for-hire
o A work prepared by an employee within the scope of his or her employment or;
o Specially ordered or commissioned for use as a contribution to a collective work….
o Basically the author is the mind
 Right to control the manner & means-factors used to determine whether work-for-hire:
o The skill required
o The source of the instrumentalities and tools
o The location of the work
o The duration of the relationship b/w the parties
o Whether the hiring party has the right to assign additional projects to the hired party
o The extent of the hired party's discretion over when and how long to work
o The method of payment
o The hired party's role in hiring and paying assistants
o Whether the work is part of the regular business of the hiring party
o Whether the hiring party is in business
o The provision of employee benefits
o And the tax treatment of the hired party
 Is authorship really determined by these prongs?
 Marvel v. Kirby
o Statutory termination under section 304 © post 56th year
o Endowment effect --> everyone things their contribution is more important than others
 Joint work
o Tenants in common © controlling undivided and equal fractional interests
o Any joint owner may exercise rights of ownership & license w/o permission of other joint holder.
Nevertheless, must be careful about assuring payment to other joint author
Aalmuhammed v. Lee
Facts
Spike Lee (defendant) co-wrote, directed, and co-produced the movie Malcolm X, which starred Denzel
Washington. Jefri Aalmuhammed (plaintiff) knew a great deal about Malcolm X’s life and the religion of Islam,
which played an important role in the movie. Under the supervision of Lee, Aalmuhammed assisted with
production of the movie, including helping Washington with his role, directing Washington on set, suggesting
script edits that were used in the final cut, ensuring historical and religious accuracy, and editing some of the
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movie in post-production. Lee had the final say on all of Aalmuhammed’s contributions. Aalmuhammed did
not have a written contract with Lee or Warner Brothers. Aalmuhammed requested but was denied credit as a
cowriter of the movie. Instead, Aalmuhammed was in the credits as “Islamic Technical Consultant.”
Aalmuhammed brought suit against Lee, his production companies, and Warner Brothers, seeking a
declaratory ruling that Malcolm X was a joint work, and that Aalmuhammed was a coauthor. The district court
granted Lee summary judgment. Aalmuhammed appealed.
Holding
For a work to be a joint work, there must be (1) a copyrightable work, (2) two or more authors, and (3) the
authors must intend that their contributions to the work be combined into one, inseparable work. A valuable
and copyrightable contribution to a work does not necessarily constitute authorship, as it is defined under the
statutory definition of a joint work. Significantly, authorship for the purposes of determining whether there are
“two or more authors” in terms of a joint work is not the same as authorship for the purposes of determining
whether a contribution to a work is independently copyrightable. Some of the criteria for a determination of
joint authorship for purposes of a joint work include: a joint author exercises supervisory control over the
work; joint authors objectively indicate “manifestations of shared intent to be coauthors”; and the success of
the work is the result of the contributions of both joint authors, and the relative shares of credit for that
success cannot be determined among the joint authors. In the case at bar, even though Aalmuhammed made
valuable—even independently copyrightable—contributions to Malcolm X, Aalmuhammed cannot be
considered a coauthor for purposes of determining whether the movie is a joint work. It cannot be said that
Aalmuhammed exercised any supervisory control over the movie. That role belonged to Lee, who had the final
say on all of Aalmuhammed’s contributions. Nor can it be said that Lee or Warner Brothers, or even
Aalmuhammed exhibited any objective manifestations of shared intent to be coauthors. Aalmuhammed’s
contributions were certainly valuable to the movie. And his script edits could even be independently
copyrightable. This is not sufficient for Aalmuhammed to be deemed a coauthor for the purpose of trying to
prove that Malcolm X is a joint work. The district court’s grant of summary judgment to Lee is affirmed.
 Test for co-authorship absent contract
o Control --> the mind creating the work
o Objective manifestation -- credit --> really who controls the credits
o Contribution to audience appeal --> very little to do w/©

NY Times v. Tasini
Facts
 Newspaper took article by freelance authors published in print medium & included them w/o
authorization in database--access as single article
 Newspaper defendant: safe harbor provision § 201© as a revision of a collective work
 Tasini: never agreed to this and only sold their work for purposes of print edition
Holding
 When you make a collective work only have it w/in the collection, the database is outside the collection
 How is a database different?
o Taken out of its context and severed from everything else
o It's no longer a revision it's a new work
 Creates either a work as very small part of an immense document or, since it may be set apart through a
search engine, as a single work
 NYT infringed on © rights of freelancers
o But really not winning in the end because NY times is now going to make a contract provision about
this so that it's not a problem and they aren't paying them twice
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 DMCA --> digital millennium copyright act 1998

 In response to Feist
 Title V
 One very high tech side and one low tech side
 Encryption or digital gate keeping and bolstered by legal apparatus
 WIPO Copyright treaty
 §5-12
o Anti circumvention provisions
 §1201(a): circumvention of technological measure that effectively controls access to
protected work prohibited
 Can't hack
 §1201(b): prohibits manufacturing, offering to public circumvention technology
 Can't provide information to hackers to hack
 We can mix copyrighted and uncopyrighted things together
 Title II --> safe harbor provision
o For online service providers (such as ISPs) which allow notice & takedown provision for alleged ©
infringers
o The ISP cannot be sued but still has an obligation; if there is infringing work that is on the internet,
one can write to the ISP and explain they have the copyright and to take it down
 DMCA downfalls
o Safe harbor have to have all of the factors --> not safe enough
o Burden on the ISPs
o §1201(b) --> scientist trying to work on encryption problems will be found liable
o Notice & take down is too easy
 It's not a court and they are making these decisions
o Insufficient fair use
o No general purpose exception
o Create DMCA misuse doctrine
 DMCA Exemptions
o Can send certain works to library of congress that you would like to have exempted and library of
congress will decide
 Motion pictures, television shows videos, for education uses in traditional and online
institutions, nonprofit literacy programs, film analysis, e-books, documentaries and non
commercial videos
 EU Digital Rights Management Directive
o Protects technological measures
o Exceptions -- transient or incidental copying; member states may create exceptions which do not
prejudice legitimate rights of owner
 Skylarov Case
o Created software to transfer adobe e-books to other platforms; briefly jailed, found not guilty by
jury -- but faced up to 25 years prison/$2.5 M fine

Viacom v. YouTube
Facts

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YouTube (defendant) was a website that allowed users to upload and view videos for free. In order to upload a video, a
user was required to accept YouTube’s terms and conditions, which stated, among other things, that any content the
user uploads could not be infringing. Viacom International, Inc., et al. (plaintiffs) were copyright owners whose content
was infringed upon on YouTube’s website. The plaintiffs brought suit against YouTube for direct and secondary copyright
infringement. The plaintiffs presented evidence of emails and a report from the YouTube creators referencing well-
known infringing content on the YouTube website. The district court granted YouTube summary judgment under a safe
harbor provision in the Digital Millennium Copyright Act (DMCA). Specifically, the district court held that YouTube did not
have actual knowledge or awareness of specific infringing activity as required by 17 U.S.C. § 512(c)(1)(A) and that such
knowledge was necessary for an internet service provider (ISP) to have the right and ability to control such activity under
17 U.S.C. § 512(c)(1)(B). The plaintiffs appealed.
Holding
Under the safe harbor provision in 17 U.S.C. § 512(c)(1)(A), an ISP will not be guilty of direct or secondary copyright
infringement if it (i) does not have actual knowledge that the material is infringing, (ii) is not aware of facts under which
infringing activity is apparent, and (iii) upon learning of any infringement, removes or disables access to the material
quickly. In addition, to avail itself of this safe harbor, the ISP must not get a financial benefit directly attributable to the
infringing activity when the ISP has the right and ability to control the activity. In this case, although the district court was
correct as to its finding that the DMCA requires an ISP to have actual knowledge or awareness of specific infringing
activity, the district court erred in concluding that a reasonable jury could not find that YouTube had such actual
knowledge or awareness. Given the emails to and from YouTube executives as well as a report from a YouTube executive
that referenced the amount of infringing material on YouTube’s website, a reasonable jury could conclude that YouTube
had actual knowledge or awareness of specific infringing activity. Accordingly, summary judgment was inappropriate.
Additionally, the court concludes that the district court was incorrect in its holding that knowledge or awareness is
necessary for an ISP to have the right and ability to control such activity under 17 U.S.C. § 512(c)(1)(B). Such knowledge
or awareness is not necessarily a requirement under this subsection and the district court must reconsider this section’s
applicability to this case on remand. The district court’s grant of summary judgment to YouTube is vacated and the case
is remanded.

Perfect 10 v. Amazon
Facts
In response to image searches, Google, Inc.’s (Google) (defendant) search engine communicated thumbnail versions of
images to the user. Google stored the thumbnails on its servers. Google did not store the full versions of the images on
its servers. If users clicked on a thumbnail, Google sent HTML instructions to the user’s computer on where to find the
full image on a third party website. The image then appeared from the third party website in a window, framed by
additional information from Google. This process was known as “in-line linking.” Google obtained revenue from certain
of these third party websites through advertising agreements. Perfect 10 (plaintiff) operated a subscription website for
pictures of nude models. Google’s search engine returned thumbnails of copyrighted Perfect 10 images. Perfect 10
brought a copyright infringement suit against Google and Amazon.com, Inc. (defendants). The district court granted
Perfect 10 a preliminary injunction. The district court found that Perfect 10 was likely to succeed in its claim that the
defendants violated Perfect 10’s display right by posting the thumbnails, but that Perfect 10 was not likely to succeed in
its claim that the defendants violated Perfect 10’s distribution right by linking to full size images via the thumbnails. The
district court found that the defendants’ display of the thumbnails was not fair use. The defendants appealed.
Holding
In determining whether a work was fair use, the court looks to four factors: (1) the purpose and character of the use; (2)
the nature of the copyrighted work; (3) the substantiality of the portion used in relation to the copyrighted work as a
whole; and (4) the effect on the potential market for or value of the copyrighted work. In conducting this analysis, the
single most important factor is the transformativeness of the allegedly infringing use. A work is transformative if it adds
something new, with a further purpose or different character, altering the original work with new expression, meaning,
or message. Here, as an initial matter, the court affirms the district court’s decision that Perfect 10 did not make a prima
facie showing that the defendants violated Perfect 10’s distribution right. The defendants’ websites do not distribute
Perfect 10’s images; rather, they send HTML instructions to a user’s computer on where to find the images. The
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defendants thus do not directly infringe upon the distribution right because they do not, themselves, distribute the
images. The district court also correctly held that Perfect 10 failed to make a prima facie showing that the defendants
violated Perfect 10’s display right with respect to the process of in-line linking. Although the full images appear in a
framed Google window, they are still displayed from a third party website, not Google’s website. The district court also
correctly held that Perfect 10 made a prima facie showing that the defendants violated Perfect 10’s display right with
respect to the thumbnail images. The defendants store thumbnail versions of the copyrighted images and show those
versions to users who search for them. This is clearly a display of Perfect 10’s images. That being said, however, the
defendants’ display of the images was transformative and a fair use. (1) The defendants’ purpose of displaying the
thumbnail images is completely different than Perfect 10’s purpose. Perfect 10 displays their copyrighted images for
entertainment or aesthetic purposes. The defendants’ purpose in displaying the reduced thumbnail version of the
images is to direct users where to find the full size version of the images. The defendants use the thumbnails as a
“pointer.” They are a means to an end; they are not meant to provide entertainment or aesthetic value. The defendants’
use is highly transformative and so even though the defendants receive revenue from its search engine, the first factor
weighs in favor of the defendants. (2) The images are creative works and so this factor weighs against a finding of fair
use. (3) Although the defendants copied the images in their entirety, they reduced the images and given the purpose of
allowing users to recognize the images to click through to view the full-size versions, the substantiality of the use was
reasonable. This factor is neutral. (4) Thumbnails generally are not a substitute for their full-size counterparts and thus
generally do not affect the full-size market. However, it is possible that thumbnails are effectively equivalent to the full-
size images when viewed on mobile devices. Thus there may be harm to Perfect 10’s mobile market for the images and
the court determines that this factor is also neutral. In sum, given the highly transformative nature of the thumbnails,
the court determines that the defendants’ use was fair. Accordingly, the district court’s grant of preliminary injunction is
reversed and the case is remanded.

ii. Facts are not copyrightable. They can only become protectable when they are
compiled in a way that expresses a minimal degree of creativity for originality
(idea/expression dichotomy)
iii. To be protectable as a compilation, the selection, coordination and arrangement of
the factual information must satisfy the minimal degree of creativity
1. Sweat of the Brow does not confer copyright protectability—in EU it does
2. Feist Publications v. Rural Telephone
a. Rural made telephone book as required in exchange for their grant of
monopoly over NW Kansas residents. Feist copied directly infringing on
right to reproduction
b. Court: The individual listings were not protectable when they were found
factual and as a compilation—as a whole telephone book—it’s
unprotectable because there is no minimal modicum of originality when the
information of their customers is only listed in alphabetical order.
c. How can we make a telephone book protectable?
i. Organize listings by people who move frequently versus people who
do not
ii. Put pictures of people next to their listings
d. What compilations of facts—similar to Feist—would receive
protection?
i. Zagat’s Guide—creative enough for originality because lists
businesses based on how much of a rating they get
ii. Angie’s List—creative enough because of arrangement/different
methods of expression of the facts/ideas
iii. Blue Book for Cars—probably creative enough
e. US News Law School Rankings are Sufficiently Original
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i. They use statistical modeling to get their rankings—readily

distinguishable from the Feist telephone listings just in alphabetical
order requiring no creativity (modeling looks into employment
rates, faculty ratings, difficulty of classes, etc.)
f. Wilf—believe court made mistake b/c could have read it at level of
statutory language rather than talking about Constitutional requirement
3. How do we protect databases?
a. Trade Secret law (common law)
b. Technology mechanisms—encyrption
c. Making reproduction difficult
d. Misappropriation (common law)—if there’s actual injury to original holder
iv. Merger Doctrine: when there is only one or but a few ways of expressing an idea, then
courts will find that the idea behind the work merges with its expression and the work is
not copyrightable
1. Purpose is to prevent crowding out of expression—because the idea almost
merges with the expression
2. Morrissey v. Procter and Gamble
a. Rules for a promotion contest were copied verbatim
b. Court: applies copyrightable subject matter test—
i. The first rule didn’t meet the modicum of originality
ii. It was arguably functional
iii. Crowding out—limiting the # of ways of expressing ideas
1. Subject matter is very narrow
2. To permit copyrighting the rule might exhaust all possibilities
3. Burrow Giles v. Sarony
a. Copying the Oscar Wilde phot
b. Rule: photographs are copyrightable if they are highly staged—like the
photographer has to put a lot of expression into the photo
v. Rule: Historical research is considered factual information that is not original.
1. Miller v. Universal Studios
a. Universal produced a film based on Miller’s book—that was product of ton
of labor and research into historical information.
b. Court: Universal could create the movie without violating Miller’s right to
derivative works when the information was purely historical, indeed the
energy/labor put into researching for book hurt Miller’s claim.
i. Wilf: similar to the way that Traffix plaintiffs hurt themselves by
showing the functionality/utility of their dual springs in their claim
for TM protection.
vi. Rule: compilations are copyrightable to extent that they meet requisite originality
requirement
1. To be original—there are choices author must make about selection and
arrangement of individual parts
2. Raw facts can be copied at will—only the selection/arrangement (if sufficiently
original) is protected
vii. Rule: A work is not original if it is functional
viii. Test: Whether in the mind of the ordinary consumer the utilitarian part of the article is
conceptually separable from the aesthetic function of it
1. Brandir v. Cascade
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a. Copying of the ribbon rack bicycle

b. Court: aesthetic features are conceptually separable if the article stimulates
in the mind of the beholder a concept separate from the concept evoked by
its utilitarian function
i. Here—utilitarian function is to hold bicycles and provide system for
locking them, not as art (even though copyright holder tried to get
the ribbon racks in museums, etc. to show expression)
c. Temporal Displacement Test
i. Whether primary use is utilitarian
ii. Whether article is marketable as art
iii. Whether aesthetic aspects are primary to the article
2. Carol Barnhart v. Economy
a. Economy copied the Barnhart mannequins
b. Court: mannequins are not copyrightable because they are purely
conceptually functional—completely separable from any aesthetic part of it
ix. Literary Work Issues
1. Nichols v. Universal Pictures
a. Court held that fictional characters that are so common that they are stock
characters are not protectable subject matter
f. Requirement 2: Fixation
i. Means not transitory in nature—big issue for computer software programs that can
change or issues of RAM
g. Requirement 3: Expression
i. Idea/expression dichotomy (section 102)
1. Nichols v. Universal Pictures
a.
ii. Copyright does NOT extend to:
1. Idea, procedure, process, system, method of operation, concept, principle or
discovery regardless of form in which it is described, expressed, etc.
iii. Rule: An author of a book describing a method or cooking ingredients has rights in his
expression of the method but not over the method itself. Others are free to publish later
books covering same exact method. (distinction between patent—method—and
copyright—expression of method)
iv. Baker v. Selden
1. Selden created book containing mostly ledger forms for bookkeeping (only 600
words). Then Baker created a book detailing a similar bookkeeping system.
2. Court: Selden—as author of book—does not have right to exclude others from
practicing what’s in the book (bookkeeping/ledger forms). The method of
bookkeeping described in the book is an idea that is not protectable.
a. The detailed structure of the explanatory text is unprotectable because it is
necessary to the idea itself (bookkeeping)
v. Publications International v. Meredith Corp.
1. Was the cookbook protectable subject matter?
2. Court: The recipes themselves are not protected under Section 201—they’re a
procedure by which the reader can produce many dishes.
h. Copyright in Computer Software
i. Rule: An expression that is actually part of the method of operation for some program is not
protectable subject matter.
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i. Lotus Development Corp. v. Borland

1. Lotus created a computer spreadsheet that used a series of command prompts—
copy, print, quit. Borland created a similar computer spreadsheet using the same
command prompts.
2. Lotus claimed that the menu structure—taken as a whole—was protectable
subject matter
3. Court: held that Lotus’ command menu for its spreadsheet was uncopyrightable
because it was a method of operation—the copy and print buttons are functional—
they’re how users control and operate the Lotus spreadsheet.
a. Like the buttons on a VCR, which are needed to operate the VCR and not
just expression of something functional, the Lotus command functions are
essential to operation of the Lotus spreadsheet.
4. Distinguishing Idea from Expression in Lotus
a. Court reasons—the way the commands are arranged does not make them a
literary work or an expression—they are instead part of the method of
operating the Lotus spreadsheet (or VCR).
5. Wilf: how could we make the Lotus command hierarchy for its spreadsheet
protectable subject matter?
ii. Rule: the following subject matter is not copyrightable for software programs
1. Standard practices in the industry for which the software program is designed
2. Methods or practices that a large population has come to rely upon for daily
activities
3. Need to operate on common hardware or with common software
j. Copyrighting Databases
i. Databases and compilations are generally protected
1. The specific compilation of facts is expression and protectable BUT the—Facts
though are not copyrighted (Baker v. Seldon)
ii. European Union Database Directive—protects very stringent database protection regime
1. Protects the “substantial investment” embodied in the database
iii. Compilations are copyrightable to extent that they meet requisite originality
requirement
1. Feist Publications
a. Holding. The court held that telephone books are not copyrightable as
compilations because they’re not original enough to be copyrightable
i. Even though labor was expended to collect data
b. Originality is a very low threshold of original work
i. Arrangement of a compilation is CRITICAL in whether its original
enough
2. How can we protect databases?
a. TS protection
b. Technology mechanisms (i.e. encryption)
c. Making production difficult
d. Maybe state misappropriation if there is specific injury to original holder
iv. Functionality Defense
1. Brandir International
a. Ribbon rack bicycle was not aesthetic—as P claimed—but rather functional
b. Rule: Whether aesthetic features are conceptually separable
i. Temporal displacement test
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1. Mind of the ordinary beholder a concept separate from the

concept evoked by the utilitarian function
ii. Conceptual separability factors:
1. Is primary use utilitarian?
2. Is article marketable as art or function?
3. Are aesthetic aspects primary?
2. Carol Barnhart
a. Case about whether mannequins were functional and thus not copyright
protected subject matter
b. Test
i. Were the conceptually separable such that in the mind of the
beholder it evokes a utilitarian function separate from the aesthetic
aspect?
ii. Is there a physically separable work of art embellishing the
useful article
v. Fixation Requirement
1. Defined by statute
2. For a period longer than transitory
a. Ex. cannot be erased on a whiteboard
3. Very low threshold for P to meet
vi. Protected Rights in Copyright
1. Right of produce derivative works
a. Nichols v. Universal Pictures Corp
i. The court held that the plot of a Jewish and Irish family who don’t
get along well was a stock theatrical device and therefore not
copyrightable
b. Steinberg v. Columbia Pictures Industry
i. Columbia Pictures infringed on right to adaptation when their
picture was substantially similar to Steinberg’s picture of Moscow
behind the Hudson river
ii. Substantial Similarity Test
1. Overall impression
2. Ordinary observer
a. Would average observer would have alleged copy as
having been copied from
3. Proof of access can decrease the need for substantial
similarity showing
c. Anderson v. Stallone
i. Stallone had derivative rights to his movie
1. Rocky character is protectable on its own terms
2. Story is easily constructed by using the characters
d. Lewis Galoob Toys v. Nintendo
i. Game genie to enhance Nintendo games is not fixed in a tangible
medium of expression—rather it is transitory so it is not
copyrightable
e. Sheldon
i. Story, book, play, film where there were minor differences in the
details of the story each time
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ii. Court
1. Story is in public domain
iii. Hand Abstraction Test
1. Take out all which is non-copyrightable (ideas, facts, public
domain)
2. Compare what is left to original to see if there is infringement
f. Arnstein v. Porter
i. These were musical compositions infringement claim
ii. Court
1. Prong 1—substantial similarity
a. Ordinary observer test
2. Prong 2—access
a. Showing substantial similarity is prima facie evidence
of access
3. Possible defenses
a. Independent creation  never had access
b. May have had access but those cord progressions are
common everywhere  substantially similar to ALL
songs
g. Gaste v. Kaiserman
i. Even when there is striking similarity you will need to still establish
some sort of access
h. Hoeling
i. Story of the Hindenburg crash based on sabotage
ii. This is based on historical fact—question is how much is fact versus
expression
iii. Test:
1. Whether infringing copy supplants the original
2. Whether there is a substantial taking
3. Whether there is fixated work
k. Fair Use Defense
i. Affirmative defense
ii. General considerations
1. How much use should be protected?
2. Only after PLAINTIFF makes a prima facie case
3. Permits fair use when work is:
a. Criticism/commentary
b. Parody
c. News reporting
d. Teaching
e. Scholarship
f. Research
iii. 4 Pronged Test
1. Purpose and Character of the Infringing Use
a. Test
i. Is use commercial or noncommercial?
1. Commercial
a. Market exchange
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b. For-profit
c. Establishes market effect
d. For commercial purpose
e. In commercial setting
f. Harper (court found that publication in Time was
commercial)
2. Noncommercial
a. “Time-shifting” like in Betamax
i. Using VCR to record Tv shows. But Betamax has
many legitimate, non-infringing uses. Can also
use to copy uncopyrighted material, as well as
material of which copyright owners have
permitted copying.
ii. Is use transformative or superseding?
1. Transformative:
a. Is infringing use recasting as different purpose?
b. Exs.
i. Thumbnail
ii. Book review
iii. Comparative advertising
iv. Creative documentaries
v. Morphing photographs
vi. Use in secondary markets
2. Nature of Underlying Copyrighted Work (least significant factor)
a. Test
i. Creative?
1. Creative cuts against finding fair use
ii. Pre-publication? (Harper and Row)
1. If copyrighted work is pre-publication, cuts against finding
fair use
3. Amount and Substantiality of Copyrighted Work that is Taken
a. Test
i. Quantitative (percentage taken)
ii. Qualitative (Harper and Row)
4. Effect and Value on the Current and Potential Market for the Copyrighted Work
a. Test
i. Actual harm
ii. Potential harm
1. Reputational
2. Possibility of expanding into new markets
a. Texaco found that the affect of archiving the journal
articles was on potential market and that weighed in
favor of copyright holder
b. Betamax taught us that timeshifting does not affect
the potential marketability of the copyrighted work
3. Alternative rights to be sold

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l. Parody Defense
i. Courts generally hold that infringing works that are parodies are presumptively fair use
(Campbell)
ii. Expands likelihood of proving fair use
1. Always transformative uses
2. Always taking the heart of the copyrighted work (less quantitative taking/more
qualitative taking)
3. Never causes harm to copyrighted works’ market b/c by definition different
market
iii. Campbell v. Acuff-Rose Music
1. “Oh Pretty Woman” found to be a parody because they only copied that which was
necessary
2. Rules
a. Tells us that a parody is always transformative but that it needs to take
from the heart of the original copyrighted work in order to be a parody
b. Parody also by definition ensures that the potential market for the
copyrighted work will not be adversely affected
iv. Suntrust
1. The Wind Done Gone parody was defense to copyright infringement claim
2. It wasn’t general commentary on civil war
a. But was commentary on poor depiction in GWTW
PART OF FAIR USE!!!
Folsom v. Marsh
Facts
 Common law doctrine based upon English precedents
 Abridged abridgment rule (abridgments now © infringement) -- fair use allows expansion of protection
Holding
 We must often, in deciding questions of this sort, look to the nature and objects of the selections, the quantity and value
of the material used, and the degree in which the use may prejudice the sale or diminish the profits or supersede the
objects of the original work
MGM Studios Inc. V. Grokster
Facts
Grokster and StreamCast (Grokster) (defendants) distributed free software that allowed users to share electronic
files with each other, including copyrighted materials such as songs, without permission. In distributing the
software, Grokster promoted the software’s ability to allow users to download copyrighted works for free and
made no effort to limit the infringement that was taking place. Metro-Goldwyn-Mayer Studios (MGM) (plaintiff), a
group of copyright holders, sued Grokster for copyright infringement. The district court granted summary
judgment in favor of Grokster and the court of appeals affirmed. The Supreme Court granted certiorari.
Holding
A company that distributes a device and promotes its ability to infringe copyright is liable for the resulting
infringement of third parties. Although the Supreme Court in Sony v. Universal City Studios, 464 U.S. 417
(1984) held that Sony was not secondarily liable for distributing VCRs that enabled infringement because a VCR is
capable of non-infringing uses, the Court did not hold that if a product is capable of a non-infringing use, the
manufacturer can never be held liable for resulting third party infringement. On the contrary, where the
distributor actually promotes the infringing capabilities of a product, it may be held liable for resulting
infringement. In this case, Grokster promoted its software as having the capability of downloading popular
copyrighted music and even responded to requests for help in how to do so. In addition, Grokster marketed its file
sharing product directly to former users of Napster, software well known for its infringing capabilities. Thus,

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although Grokster’s software is capable of non-infringing uses, the fact that the company promoted the illegal
uses of the software makes it secondarily liable for the infringing acts of the third party users. The judgment of
the court of appeals is vacated and the case is remanded.
o Potential non-infringing use exists but there is no safe harbor because of inducement theory
 Promotion of software to infringe --> alternative to napster
o Go back to factor (1) --> dispositive factor
 Distinction made
 Commercial/non-commercial
 Since there is a significant commercial benefit; tilts toward commercial
 Transformative/non-transformative
 Adds value to promotion of science and arts
 Economic
 Cultural
 Changing the © material
 Changing the use of the © material
 Not merely supplementing --> factor 4
o Factor (4) is very important
o Factor 1 and factor 4 are interconnected

Dastar
Facts
 Eisenhower wrote book on the crusades and gave the rights to Fox to make it into a tv series
 Fox copyright rights expired in 1977 leaving the tv series in the public domain
 Dastar wanted to expand from just cd's so took these episodes in the public domain and edited them to make their
own tv series
o No reference to the crusade series
 Fox sued for copyright infringement
 Court awarded Dastar's profits to Fox
 Court of appeals affirmed
Holding
 Depends on what "origin" in the lanham act means
 Using the literal meaning would be difficult because once copyrighted that person would still be the "origin" and it
wouldn't just be them but also writers, directors, etc. --> very long and complex line
 "origin of goods" would go against what they decided in walmart v. smarra brothers
 If Fox renewed copyright then it would have been infringement
 Dastar is the origin so not violating lanham act
 Lanham Act § 43(a) claim: false designation of origins
 Right of attribution --> moral right
o Once you go into the public domain, all the TM attribution rights get lost
 Ex: Traffix case
 Ex: Shredded wheat case
 Ex: Vanna White --> if we have a © then we have a trumping of rights of publicity
 § 301 preemption: 2 prongs: (1) within ambit of subject matter (2) seeking to vindicate equivalent right
 What does this say about attribution, authorship, public domain, scope of copyright?

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