Outline – Intellectual Property

I. Introduction 8/19
1. Course Basics / The importance of innovation and protecting it with
IP / Working with clients.

What is Intellectual Property? It is creations of the mind. Something

that cannot be touched (ideas, concepts, methods). Examples: Book,
paintings, character, software, logo).

What can you do if you protect your IP? stop other from using it or to
get a payment by Licensing your creation.

Why allow creators to gain IP rights?

Under Article 1 Section 8 of the U.S. Constitution IP right are gained
because (1) it promotes the progress of science and the useful arts and
(2) Incentive to invest.

Major forms of IP Protection?

PATENT, COPYRIGHT, TRADEMARK, TRADE SECRET

How valuable is Intellectual Property?

a) Intellectual Property drives economic growth and competitiveness.
40% of U.S. economic growth and employment is related to
innovation.
b) Intellectual Property helps generate breakthrough solutions to global
challenges (pharmaceutical industry, agricultural industry, energy or
green technology).
c) Intellectual Property Rights encourage innovation and reward
entrepreneurs.

How to advise a client? State and explain the risk.

Failing to protect IP? Loss of asset, market, opportunity to monetize.

Issue with IP? Infringement

Handling clients: Set an action item, set price non-zero, set realistic
expectations, management client awareness/acceptance of (involves
understanding your clients, clearly communicating value, and ensuring
they feel involved and heard).

TRADEMARKS

II. Trademarks
2. Basics / Registration
a. Trademark Basics – B&J pp. 99 – 107 (skip the Problems)
b. Daniel Victor, Ohio State University Trademarks “The,” N.Y. Times,
June 23, 2022, https://www.nytimes.com/2022/06/23/us/the-ohio-state-
university.html
Note: also posted to Carmen

Why do we have trademarks?

1) PREVENT CUSTOMER CONFUSION through an efficient consumer
information flow.
2) INCENTIVE TO INVEST and build a stable brand identity by
excluding other from using the mark (in a particular kind of
use).
BRAND = IDENTITY
Why companies want to build a stable brand identity?
 Increase sales;
 Increase consumer’s trust in the quality (useful for consumers);
 Investment
 Employee recruiting/satisfaction

Trademarks: what are they?

- Indication of source of a product (specific good and services/not

function or merely decorative)
- Service Mark source of a service SM
- Trade Dress Protection of a shape or design of the product.
Examples: Louboutin shoes, coca-cola shape, golfish crackers shape.
TRADE DRESS PROTECTION CANNOT BE CLAIMED FOR
PRODUCT FEATURES THAT ARE FUNCTIONAL -> if a feature of
the product is part of its functionality, then it cannot be
trade dressed.

What can be trademarked? Words, Phrases, Logo, Colors, sounds,

smells.

Color Marks It requires a secondary meaning. It must be used in the

commerce long enough to be uniquely associated with goods and
services, and have high dree of advertising and consumers surveys.
Examples. Tiffany green, pink T-Mobile, and brown USP.

Example: Light pink barbie and darker pink T-mobile.

To be a color mark you need a secondary meaning behind the color. The
color yellow for cereals don’t have any secondary meaning, due the
intuitive connection the color yellow and cereals have between them.
Sent Marks: Smells can be trademark. Example: Play-Dough

How do you get a (new) trademark? Governed by the Lanham Act 1)

First enacted in 1946 2) Does not preempt state trademark.

 Common Law (state level)

o Use in commerce. What is used in commerce?
o Indication TM
o Week protection since there is a geographic limitation.
 Registration
o It is a federal registration with the USTP;
o There’s presumption of exclusive rights;
o Ability to prevent registration of confusingly similar
marks since you are in a watch list;
o Remedies;
o Basis for registering in other countries;

Registration requirements?

1) Intent to use in commerce (up to 3 years to demonstrate use).

2) Actual use in commerce
o “Commerce”-> broadly definition
3) Goods and services (how is going to be used?) FOR
4) Application for trademark registration is examined by USPTO. It can
be rejected if it is confusingly similar to other marks.
5) There’s a publication for opposition.
6) Renewals require proof of use.

The basis to start a company?

1) Territory?
2) Products?
3) Federal registrations
4) State registrations
5) International?

Searching and clearing? You need to go to USPTO: Tess; Google; State

database, and look for potential confusingly similar marks. It will be a
high risk or law risk.

Advising a client requires friendly tone, conclusion to start, details of

your explanation and disclaimer (It will never be law risk. It will be your
decision to decide).

3. Distinctiveness, functionality, and non-verbal marks 8/26

a. B&J Note: The Spectrum of Distinctiveness on pp 122-123
 Trader Joe’s v. Trader Bo’s
1) Trader Bo’s was nearly identical to Trade Joe’s.
2) Likely to cause confusion among consumers.
3) Likely to cause erroneous impression that Trader’s Joe are
somehow related or associated with Trader Bo’s

Abercrombie & Fitch v. Hunting World Inc.

-A&F- used “Safari” as trademark since 1926 for specific goods hats,
clothing, shoes.
- In 1970 sued Hunting World for infringement using the words SAFARI,
SAFARILAND, and MINISAFARI.
- Hunting World counterclaimed that safari is an ordinary, common,
descriptive, geographic, and generic word, which is commonly used by
the public to refer to expedition in East Africa.
- Court discussed categories of distinctiveness
- Court held that safari is generic for clothing (including hats), but NOT
for shoes.
- Cancellation of a trademark may be decreed at any time if the register
mark become “A TRADEMARK CAN BE CANCELLED IF THE TERM BECOME
GENERIC”
TAKEAWAYS”: Police your marks to avoid “genericide” and
challenge the validity if sued for infringement.

The mark needs to be DISTINCTIVE in order to be protectable and

registrable. Generic terms cannot be protected. If a mark falls into
genericide (widely used to describe a product) they lose their protection.

GENERIC: Cannot be protect and are not registrable. Example: Escalator,

Thermos -> Weakest (there’s not protection).

DESCRIPTIVE: Directly states something about the product.

Example: IBM, Flaky Round Piecrust, 365-Day Calendar, The weather
company, Paypal, The body Shop-> Weak spectrum of distinctiveness.
Descriptive marks are not protectable, unless they acquires
distinctiveness through second meaning in the minds of the consuming
public. A mark can gain secondary meaning through substantially
exclusive and continuous use after 5 years. After 5 years, a descriptive
mark will have PRESUMPTION OF VALIDITY AND OWENERSHIP and will be
able to PROHIBIT OTHERS FROM USING THE MARK.
SUGGESTIVE: Suggest (not directly) a feature of the product, but
requires imagination from the consumer. Suggestive marks are
protectable. Examples: Neflix, Quick N’ Neat and Gland-A-day.

ARBITRARY: Common term but unique to goods and services

(existing words that have no relationship to the product) Example: Apple.
Arbitrary Marks are protectable.

FANCIFUL: made up words, include obsolete or scientific terms that are

unfamiliar to the ordinary consumer. Example: Kodak, Pepsi, Pantene.
Fanciful Marks are protectable.

Zatarains Inc. v. Old Grove Smokehouuse Inc.

- Zatarain’s registered in 1962 “Fish-Fri” and “Chick-Fri” as

suggestive trademark for batter mixes.
- Oak Grove in 1983 stared to use “Chicken Fry” and “fish fry for its
own batter mixes
- Zatarin’s brought a trademark infringement suit against Oak
Grove.
- District court said “Fish-Fri” and Chick-Fri” were descriptive (Term
that identify a function of the product being sold), therefore, not
protectable.
Test for descriptiveness
* Dictionary definition
* It conveys information regarding the characteristics of the
product (without the use of imagination)
* Do the competitors need the terms used in the trademark to
describe their own products?
* Extent of actual use by others in similar goods and services
- Appeal: Zatarain’s alleged that the terms were suggestive
- Court decision: “Fish-Fri” and Chick-Fri” were descriptive. Fish-Fri has
achieved a secondary meaning, therefore is a protectable trademark.
Although, Oka Grove has a fair use of the trademark “fish fry” because it
needs the terms to describe its own product. Chick-fri was cancelled.
HOW TO ACHIEVE/ACQUIRE SECONDARY MEANING: Survey, ads,
long use.
Takeaway: A descriptive term generally is not trademarkable
unless it has achieved a secondary meaning in the market.

Why would you pick a descriptive name? It a branding strategy to clearly

show the brand positioning, it helps the consumer to know what exactly
they are getting.

Why would you pick a fanciful or arbitrary name? Branding strategy, it

shows a new entry to the marketplace, and afford worldwide trademark
filings.
 United States TPO v. Booking.com
- In 2020
- Court address generic.com trademarks
If the consumers perceive the term as a source identifier
for a product or service rather than a generic word to
describe the mark, there is trademark is eligible to
protection.

Can functions and aspects of goods and services be trademarked?

NO, functions and aspects of goods and services cannot be trademarked.
The Lanham Act does not exist to protect functionalities innovations, this
is the patent role. Example: “Mini-monopoly”.

TrafFix Devise, Inc. v. Marketing Displays, Inc.

- MDI seeks trade dress protection for the dual-spring design (that
the patent expired) against TrafFix.
- Trade dress protects distinctive design or shape of a product to
prevent consumer confusion. Trade dress NOT protect any features
that are functional to the product.
- Trade dress comes with the burden to prove that the characteristic
sough to be protected is not functional.
- Lanham Act does not protect innovation in a design, this is the
patent purpose.
- Supreme Court reversed the court of appeals' decision, ruling that
MDI's dual-spring design was functional and not eligible for trade
dress protection.
Takeaway: A functional feature cannot be trademarked, and a
patent is evidence of functionality.

Functional examples: Neon on life jackets cannot be trade dressed.

Green on mint chewable.

Multipart names: The mark is the whole phrase, although it might contain
parts that cannot be trademark, such as generic parts and existing marks
words, distinctiveness statements or disclaimers in TESS.

Lanham Act

- 1946
- Current Federal law for trademarks. It coexists with state law.
There’s not federal pre-emption. You can file a trademark lawsuit in
a federal or state court.
- State registered or unregistered marks can still be enforced to the
Lanham Act.
- Cannot prohibit the registration of disparaging marks
- Cannot prohibit the registration of immoral or scandalous marks
 - A mark is not registrable if compromise the flag or coat of arms or
other insignia of the U.S. or other nation.
- A mark is not registrable if compromises a name that identify a
particular living person without their consent (a well known person)
E.g. Obama Pajama
- A mark with substantial likelihood of confusion (with
another active mark) is not registrable.

Lanham Act says a Mark is not registrable if:

1) Merely descriptive (REGISTRABLE AFTER 5 YEARS IF
ACQUIRE DISTINCTIVENESS BY SECONDARY MEANING)
2) Primarily geographically descriptive (REGISTRABLE AFTER 5
YEARS IF ACQUIRE DISTINCTIVENESS BY SECONDARY
MEANING)
3) Primarily Geographically deceptively misdescriptive (informs the
wrong location of a good) (REGISTRABLE AFTER 5 YEARS IF
ACQUIRE DISTINCTIVENESS BY SECONDARY MEANING)
4) Primarily merely a surname (REGISTRABLE AFTER 5 YEARS IF
ACQUIRE DISTINCTIVENESS BY SECONDARY MEANING)
5) Compromise a matter that as a whole is functional

Trade Related aspects of Intellectual Property Rights

- TRIPS an agreement signed for 164 members of the world

- Prohibits geographical indications on wines and spirits that identify a
place other than their origin E.g. Champagne

Pro-Football, Inc. (Washington Redskins) v. Blackhorse

- 2015
Takeaway: A trademark that may disparage a significant part of
a group is not registrable.

Matal v. Tam
-
2017
-
Simon Tam sought to register the name of his band, the “Slants”.
The Uspto denied under the argument that the term was
disparaging to Asian groups in America.
- The trademark trial and appeal board affirmed the refusal.
- The US court of appeal for the Federal district held that the
disparaging clause of the Lanham Act was unconstitutional
- The Supreme Court of the United State reviewed the federal
district court decision and granted certiorari
- Discrimination view point from USPTO is prohibit
Takeaway: The disparagement clause of the Lanham Act is
unconstitutional because it violates the Free Speech Clause of
the First Amendment
Benefits of registration your trademark:

1) Constructive notice of claim of Ownership

2) Presumed validity
3) Incontestable after 5 years
4) Can stop importation of goods with infringing marks

Lancu v. Brunetti
- Brunetti sough to register his mark. Fuct. Application was denied
on the ground that the term was immoral and scandalous.
- The federal circuit district invalidated USPTO refusal under the
argument that the Lanham Act’s immoral and scandalous
prevision was unconstitutional
Takeaway: The Lanham Act’s prohibition on the registration of
marks that consist of or comprise immoral or scandalous matter
violates the First Amendment.

Trademark -> Prevent substantial likelihood of confusion (with

another active mark)
OBS: current registration (2 marks with the same trademark) may be
allowed in specific circumstances based on 1) good faith and 2) prior use.

5. Infringement and defenses 9/4

a. B&J Likelihood of confusion pp 171 – 174 (Stop at Lois case)
b. B&J 2023 Supplement: Jack Daniels case pp 209-210 (NOT in
the primary text!)
Optional: CNN Article June 8th 2023 Supreme Court sides with Jack
Daniels in poop-themed dog toy trademark fight
https://www.cnn.com/2023/06/08/politics/jack-daniels-bad-spaniels-
supreme-court/index.html

INFRINGEMENT -> Plaintiff must prove LIKELIHOOD OF CONFUSION

(STANDARD):

Plaintiff owns the mark and that the defendant is using in commerce,
selling, distributing or advertising of good and services in a manner likely
to cause confusion consumers.

How to prove that the defendant is using in a manner that is likely to

cause consumers confusion?

1) Similarity of the marks (SIGHT – symbol, color and words, SOUND-

phonetically, MEANING, COMMERCIAL IMPRESSION) -> The
trademark cover MARK X for Y PRODUCT.
 e.g. Mr. Clean and Mr. Stain (all cleaning protects)
2) Proximity of their goods and services (Are the marks related in
mind of the consumers)
3) Strength of the plaintiff’s mark (created with distinctiveness or
acquired distinctiveness – usually famous marks) -> more
recognized a mark is, higher are the chances of coming first in the
mind of the consumer)
4) Evidence of actual confusion (surveys – can be expensive)

Depending on the circuit

1) Defendant’s intent
2) Consumer sophistication

Peta v. Michael T. Doughney

-PETA registered the mark in 1991 (animal protection institution)
-Doughney registered PETA.org in 1995 (advertising eating
animals)
- Peta sued for trademark infringement (federal and state), unfair
competition (federal and state) and CYBERSQUATING
- PETA owned the mark; Doughney used the mark; used in
commerce, and used in a manner to cause likelihood of confusion
on consumers
CYBERSQUATING IS PROVED WHEN THE DEFENDANT
REGISTERED THE DOMAIN WITH BAD FAITH, SEEKING FOR
PROFIT AND THE MARKS ARE LIKELIY TO CAUSE CONFUSION ON
THE CONSUMERS

Lous Case (Lois v. Levi’s)

- Levi’s jeans registered mark since 1870. Incontestable registration
after 5 years. Owned the stitching format trademark in ther
pockets.
- Louis started to sell jeans with same format in the pockets.
- Levi said that could cause likelihood of confusion (similarity
between marks, proximity between marks, strength of the mark,
evidence of actual confusion)
LOUIS JEANS POCKETS WAS LIKELY TO CAUSE CONFUSION ON
LEVIS CONSUMERS

Contributory Infringement: All trademarks infringements must be direct. If

it indirect infringement, we call contributory infringement.
Contributory:
a) Intentional induce of another to infringe or
b) Or MUST KNOW or HAVE REASON TO KNOW someone used theirs
services to infringe a trademark.
 Tiffany v. eBay case
- Counterfeit Tiffany goods sold on eBay.
- eBay has not contributorily infringed on Tiffany’s trademarks
because did not know or had reason to know.
To be liable for contributory infringement, the contributory
infringer must know or have reason to know that its service is
being to infringe a trademark

Defenses for INFRINGEMENT ->

Descriptive Fair Use (classic): The defendant use the plaintiff’s mark to
describe the defendant’s product, because due the lack of distinctiveness
in the plaintiff’s mark, the defendant will need that word/phrase to
describe its own product OR geographic origin when referring to a
business location. E.g. Fry fish and Fri fish to sell batter mix to fry a fish.

There is a 3 part test to know if it a fair use:

- Plaintiff’s mark is used other than a mark in the Defendant’s product

(the plaintiff’s mark is not a source identifier)
- Plaintiff’s mark is used in a descriptive sense.
- Used in good faith.

KP Permanent Makeup v. Lastin Impression

- The fair use defense doesn’t include the burden of proofing the
lack of likelihood of confusion among consumers.
- Descriptive Fair use

Nominative Fair Use: Defendant used plaintiff’s mark to describe

the plaintiff’s product because it is associated with the
defendant’s own product.

New Kids on the Block v. News America Publishing, Inc.

-
News America newspaper used the trademark “New kids on the
Block” making reference to the New Kids on the Block because it
was associated to the News American’s service [a publication of a
polls asking readers to call and answer questions about New Kids
on the Block charging 0,50]
- It was not infringement because:
a) The use of plaintiff’s mark must be necessary to identify the
product/service.
b) The use of plaintiff’s mark was limited to what is necessary
to identify the product/service
c) The use of plaintiff’s mark does not suggest sponsorship of
the plaintiff
TAKEAWAY: Defendant used plaintiff’s mark to describe the
plaintiff’s product because it is associated with the defendant’s
own product.

Jack Daniel’s Properties, Inc. v. VIP Products LLC (2023)

- Rogers test is not applicable when the infringer uses the
trademark as source designation to its owns products. The VIP
used the jack Daniels trademark as a source designation to its
own products.
- Case remanded to lower court for regular substantial likelihood
test.
- No infringement.
- To succeed, the parody must also create contrasts in a way
the humor message is very clear. AVOIDING this way the
likelihood of confusion.

Rogers v Grimaldi (2d Cir 1989)

- Under the first amendment expressive works can be protected
from claims of trademark infringement, UNLESS:
1) The unauthorized use “has no artist relevance to the underlying
work” OR
2) Mislead about the source or content of the work.
Grimaldi work was artistic relevant and did not mislead the public.
TAKEWAY: 1ST AMENDMENT PROTECT EXPRESSIVE WORK IF
DOES NOT CAUSE CONFUSION IN THE AUDIENCE AND IF IT IS
ARTIST RELEVANT FOR THE UNDERLYING WORK

Mattel Inc v Walking Mountain Productions

-Thomas Forsythe made photographs criticizing barbie. Mattel sued him
for trademark and trade dress infringement;
- 3 part test:
A) Could not present his product (a critic to barbie) without identifying
barbie
b) Used as much was necessary to identify barbie
c) His photographs will not cause confusion that it was sponsorship by
barbie
TAKEWAY: EDITORIAL OR ARTISTIC PARODY WHICH SATIRIZES
PLAINTIFF’S IT IS A NOMINATIVE FAIR USE

6. False Advertising, Dilution, and Cyberpiracy 9/9

a. B&J Dilution basics (bolded text) pp 224-226
b. B&J Smith v Walmart case (skim) pp 230-236
b. DUE: Trademark Writing Assignment

FALSE ADVERTISING
 Pizza Hut, Inc. v. Papa John’s Intern., Inc 227 F.3d 489 (5th Cir.
2000)
- Pizza hut filed a Lanham Act false advertising against Papa’s for
“Better Ingredients, better Pizza.”
- To establish false advertising the ad must be a FALSE STATEMENT
OF FACT and not only a STATEMENT OF OPNION or PUFFERY
- A prima facie of false advertising requires:
- A) false or misleading fact
- B) fact can deceive or capable of deceive consumer
- C) deception is material/real(survey)
- D) interstate commerce
- E) consumer is or likely to be injured
Pizza hut lost. Pappa john “Better Pizza” was puffery
TAKEAWAY: TO BE A FALSE ADVERTISING THE CLAIM MUST BE A
STATEMENT OF FACT AND NOT ONLY A STATEMENT OF OPION OR
PUFFERY

DILUTION (make marks weaker) ->Protect famous marks that have

distinctiveness (inherent or acquired) against other similar marks,
regardless of the presence or absence of likely confusion, injury or
competition.

Types of dilution

Tarnishment: similarity that can harm the reputation of famous mark;

Blurring: similarity that blurs/make unclear the distinctiveness of the
famous mark;

WHAT IS A FAMOUS MARK? Recognized by the general consuming

public of the U.S. -> Household name; difficult to prove (specialized
filed in NOT famous); fame for likelihood of confusion v. fame for
dilution.

Fame for likelihood of confusion is related to one of the infringement

factors of likelihood of confusion analysis. Under this examination it is
important to understand if the plaintiff’s mark (distinct or acquired
distinctiveness) comes first in the mind of the consumer and might cause
confusion with the challenged trademark.

Fame for dilution: It a protection for famous marks that have

distinctiveness against marks that can harm their reputation or blue their
distinctiveness.

Dilution exception: Fair use (not a source identifier for their own goods –
parody, criticism, commentary), News, non commercial use;

Coach Services, Inc. v. Triumph Learning LLC 668 F.3d 1356 (Fed.
Cir. 2012)
 -
Couch registered their mark. Triumph applied to register Coach for
educational material/test prep.
- Coach opposed to triumph registration – watch list
- No likelihood of dilution (blurring)
TAKEAWAY: COUCH WAS NOT CONSIDERED FAMOUS IN THE
GENERAL PUBLIC OF U.S. ONLY BETWEEN WOMEN

Smith v. Walmart Stores

-Smith made a website called wal*ocaust and registered the
domain walqaeda.com, due to his strong convictions against
Walmart (Selling café press)
- Smith’s defense was based on parody.
- The parody must differentiate itself from the original work
and communicate SATIRE; RIDICULE; JOKING; AMUSEMENT
(HUMOR)
- Speech principally based on religious or political that also
have a secondary economic benefit is NOT COMMERCIAL
TAKEAWAY: A ARTISTIC PARODY THAT SATIRIZES THE
PLAINTIFF’S TRADEMARK IS NOT INFRINGEMENT FOR DILUTION-
TARNISHMENT BECAUSE THE FREE SPEECH PROTECTION (1ST)

Starbucks Corp. v. Wolfe’s Borough Coffee, Inc

- Evidence (phone survey) – 30% said reminds them Starbucks
- Starbuck x charbucks
TAKEAWAY: Minimal similarity and no association (dissolution by
blurring involves an association with the famous marks that
cannot weak their distinctiveness, which did not happened)

Cyberpiracy or cybersquatting -> buying up a domain name that

trademark owner might want and has not yet purchased, including
personal names if: 1) bad faith intent to profit 2) register, traffics in or
uses a name that is confusingly similar.

OBS: If marks is famous, could be dilution.

HOW TO PREVENT CYBERSQUATTING? 1) PREEMPTIVE REGISTRATION 2)

CENTRAL CONTROL/STRATEGY WITHING AN ORGANIZATION 3)
WATCHLISTS 3) STABLISH FAMOUS NATURE OF THE MARK

Lamparello v. Falwell
Lamparello had the Fallwell.com domain registered to criticize the
minister Jerry Falwell (he filed a declaratory judgment suit to state his
website was not trademark infringement.
- Court said THERE WAS NO LIKELIHOOD OF CONFUSION since the
website was clearly a critic to the minister + had disclaimer
- Not bad faith it was not looking for any profit (Bait and switch) ->
show something cheap to attract customer and offer something
 expensive
TAKEAWAY: use of a domain name for purposes of comment and
criticism does not constitute bad faith intent under
cybersquatting protection.

COPYRIGHTS

8. History / Basics 9/16

a. B&J pp 277-280 History, The 1976 Copyright Act
b. B&J pp. 286-292

U.S. -> Promote the progress of science and the useful arts.

1909 -> Copyrights Act

1976-> Copyright Act (effective for works created after 1/1/78)

RULE-> Animals cannot have authorship for copyright works.

What is copyright?

Original work of authorship fixed in a tangible mean of

expression (something that can be touched, seen, listened).

What cannot be copyrighted? Ideas, procedure, process, system,

method of operation, concept, principle, or discovery, and mere facts ->
not original work

FIXED -> Captured in a way that there is enough time to communicate.

E.g. Not recorded lecture.

What are the copyright bundle of rights?

The copyrights holder has exclusive rights to reproduce, making

derivative work, distribute, public performance, and public display.

Strict liability for infringers (intent to infringe copyrights only needed to be

prove claim re damage)

COPYRIGHTS ARE PROTECTED BY STATE COMMON LAW ->

PREEMPTS STATE COMMON LAW

Unauthorized derivative work? You can have copyright for derivative work
if you bring something new.

Feist v. Rural Telephone Services

- Putting together the telephone book with a database is not
considered ORIGINAL WORK.
Takeaway: Facts, even if included in a compilation that has
original elements, are not copyrightable.

Work for hire (the creation belongs to the employer):

a) An employee in the course of her employment.

b) Commissioned works or independent contractors (perform services
that can be controlled by an employer) if in WRITING and:
a compilation,
contribution to a collective work
a part of a motion picture (movie) or other audio visual work
a translation
a supplementary work
an instructional text
a test
answer material for a test
an atlas

Copyright Duration

Life of the author + 70 years (after 1/1/78)

Multiple authors = death of the last surviving author + 70 years

Work for higher/pseudonymous/anonymous = 95 years from

publication / 120 years from creation.

Copyrights Registration (Copyrights’ rights are automatic, you

gain them when work is created, although registration is
necessary for legal action).

a) Deposit copies with U.S. Copyright Office (There’s no examination ->

it is just a formality).
b) A copyright registration is required in order to sue someone for
infringement
c) Copyright registration is (at first sight) evidence of validity (if filed
within 5 years of initial publication)
d) Notice to public

RULE: Independent work is protected. It is okay for 2 parties

independently create the same work or substantially similar as
long as they are NOT aware of each other’s work.

9. Idea/expression, Useful Articles 9/18

a. B&J pp 305-308, 322-332
(Copyright writing assignment)
 Baker v. Selden
Selden: Created a book about financial transactions recording system
Baker: Used of a system of financial transaction system described in the
book

The knowledge or idea that a book contained is not copyrightable. The

book itself it copyrightable, but what you learn from them no.
TAKEAWAY: RULE -> COPYRIGHT DOES NOT PROTECT AN IDEA,
ONLY THE TANGIBLE MEAN USED TO EXPRESS THAT IDEA (THE
BOOK).
OBS: A PATENT MIGHT PROTECT THE IDEA.

Merger of idea and expression -> If the idea and expression are
inseparable, copying the expression is not an infringement.

Herbert Rosenthal Jewelry Corp. v. Kalpakian (The bee pin case)

The idea of jewel-encrust a bee pin and its expression are inseparable.
Kalpain did not infringe Herbet work
Takeaway: Rule: When the idea and its expression are
inseparable, copying the expression is not an infringement.

Copyright Act does NOT protect Useful articles in themselves. If

protectable, they are protectable by patent law.

USEFUL ARTICLE ARE an object that has a practical use, not just for
showing how it looks or sharing information.

Star Athletica v. Varsity Brands, Inc (Cheerleading Uniform case)

- Ballerina lamp (Mazer v. Stein 1954) A lamp in a ballerina shape it

was copyrightable. Because the ballerina design could be
identified separately from the useful article (lamp) and it could
exist independently.
- Cat lamp – conceptually separable (not materially separable), not
a original work, not protectable
Takeaway rule: A design can be copyrightable If a design
incorporates pictorial, graphic or sculpture features that can be
(1) IDENTIFIED SEPARATELY from the useful article and (2)
CAPABLE OF EXISTING INDEPENDENTLY AS AN ARTWORK

Kyle Hanagami v. Epic Games

Takeaway: Social dances steps and simple routines

choreographies are not copyrightable

Copyright Infringement
 1- Cease and desist letter from copyright owner
2- Recipient ignore or respond
3- License negotiations?
4- Suit
5- Registered copyrights are at first sight evidence of their validity (if
filed of 5 years of publication)
6- Defense
7- Trial or settlement

DEFENSES FOR INFRINGEMENT

A) Independent work;
B) You copyrights are not valid (scene a faire);
C) My use of your copyrights are okay (minimis creation);

YOUR COPYRIGHT IS NOT VALID

1) Scenes a faire are not copyrightable (a scene in a work of

fiction that is almost always required). E.g. a car chase in a movie
action, a love triangle in a romantic movie.

Copyright in Characters:

Anderson v. Stallone
A character can be copyrighted if (1) the character constitutes the story
being told and (2) the character has enough specificity.
stallone has the copyright over his character Rocky
Anderson created a story using stallone’s copyrighted character ->
unlawful
 Stallone owns the rights of Anderson’s story
TAKEWAY: RULE: Any portion (including new portions) of an
unauthorized derivative work is NOT copyrightable.

DC Comics v. Towle
-Towle copied batmobile
-Character specificity: physical and conceptual qualities, can be
recognized whenever it appears, and specially distinctive and has
unique elements
- DC won the copyrights over the car
Takeaway: A character with consistent, distinctive qualities,
unique character traits, and expressive elements that make it
widely identifiable is copyrightable

Skidmore v. Zeppelin
- Skidmore sued zeppelin for stairway to haven
- Skidmore only registered a single page of sheet muse. And failed
to prove that zeppelin has copied the protected parts of his work.
- Skidemore lost.
 - Plaintiff to claim copyright infringements must prove that
the defendant (1) copied protected elements or (1) has the
same pattern of unprotected elements.
Takeaway: Be careful with what you register, otherwise you won’t be
able to sue anyone for infringement.

Rolling Stones Anybody seen my baby v. J.d. land: Constant

Craving

– Rolling Stones gave credits. It was the refrain (a core part of the
song) can give copyrights rights.

De Minimis copying

A minimis copying is not a copyright infringement -> (1) a trivial amount

(2) not a bright line rule.

Newton v. Diamond
- Newton composed “choir”. The Bestie boys used the FIRST 6
SECONDS of choir in their songs Pass Mic.
- The 6 seconds included 3 notes and appeared only 1 time in the
4.5 min choir song.
- Court analyze if there was ACCESS + Substantially
similarity (more than minimis)
Substantiality
Quantitative: 3 notes of a 4.5 min song= 2% of whole song
Qualitative: The initial part of the song (not essence)
- If is really minimis part, this part cannot be recognized by the
average audience.
TAKEWAY: A minimis copying of a work is not copyright
infringement

Copyrights -> paparrazi suit for reproduction of their photos.

Copyright Damages -> Actual or Statutory $750 to 30k per occurrence

(Good faith lower 200k, willful raise 150k)

It is NOT a copyright Infringement uses for CRITICISM, COMMENT,

NEWS, REPORTING, TEACHING, SCHOLARSHIP AND RESEARCH.

Fair Use TEST Factors:

(1)The purpose and character of use of the infringer work (commercial

nature or non-profit educational => brings profit to the infringer? Is
it news, criticism, commentary, or news reporting? Was it legitimate
obtained? Is a transformative (adds new, creative expression or
changes the original work)?)
 (2)The nature of the copyrighted work. (is the copyrighted work
published or unpublished? Is it no fiction/historical work? Is it
confidential? Is it highly creative? Is historical? Is parody?)
(3)Amount and substantiality of the portion used in relation to the
copyrighted work as a whole (quantity and quality (core/heart? or a
trivial amount?)
(4)The effect of the use upon potential market and value of
copyrighted work. (the use will effect the market for the
copyrighted work? Is there actual damage?)

Fair Use: I used but it is okay (affirmative defense). The defendant has the
burden of proof. Needs to explain why it was okay to use it.

Sony Corp. of America v. Universal City Studios

-
Sony created video-cassette machine (VCR) to record movies and
shows on TV.
- Universal sued sony for contributory infringement alleging sony
product was contributing for the infringers be able to record their
copyrighted work.
- Sale of a product is okay if capable of substantial non-
infringing uses (legitimate uses), even if copy copyrighted
work.
- Time shifting was fair use.
Unauthorized Time shifting for private home use must be
characterized as a noncommercial, nonprofit activity, and time
shifting did not cause any harm to the company and expanded
their public -> OKAY
Sony won and VCR product was not contributory infringement
TAKEAWAY: A Product that have widely non-infringement uses,
cannot be a contributory infringer. TEST OF FAIR USE FACTOR.

Haper & Row v. Nation enterprises

-Haper & Row wrote drafted a manuscript about president Gerald.
And sold Times an article about the memoir that should be
published a week before the book.
- Nation magazine had unauthorized access to the memoir and
published an article about it before
- Happer sued Nation for copyright infringements.
a) Purpose of the use: news reporting, but unauthorized and
commercial
b) Nature of copyrighted work: historical, unpublished,
confidential
c) Amount or substantiality: took the heart of the work
d) Market’s effect: Actual damage
TAKEAWAY: It was no considered fair use. Nation was liable for
copyright infringements.
 Campbell v. Acuff-Rose (Pretty woman case)
- Roy Orbison owner’s of the song pretty woman
- Live Crew asked permission to make a funny song using pretty
woman and it was denied. They made it anyway.
- Lower court the use was commercial and said Live crew use was
not fair use
a) Purpose: commercial but transformative
b) Nature: parody
c) Amount and substantiality: no more than necessary to identify the
original work.
d) Market’s effect: TBD (Difficult with transformative work).
Live crew use fair use.
- TAKEWAY: Parody= More transformative is the new work,
less important is the other factors of fair use, such as
commercialism.
Whether the specific use of the secondary work at issue was
transformative.

Perfect 10 v. Amazon and Google (2007)

- Google image search shows thumbnails. Perfect 10 sells image of
nude models.
Takeaway: Google’s displaying of thumbnail reductions of
Perfect 10’s images in its search results was “highly
transformative” and, therefore, fair use.

Google v. Oracle (2021)

- Google copied Oracle’s Java SE platform into its Android platform
so programmers who were familiar with Java could also program
using the Android system
a) Purpose: commercial but transformative -> create new computer’s
program;
b) Nature:
c) Amount and substantiality: just the necessary to produce
transformative work
d) Market’s effect:
Takeaway: reimplementing computer code in a new context is
fair-use

Andy Warhol v. Goldsmith (2023)

Goldsmith’s photo of Prince was used for Vanity Fair magazine without
licensing.
- what is sufficiently transformative to invoke the fair-use
doctrine?
Orange Prince was not fair use, because it was not transformative.
TAKEAWAY: The greater the difference between the original and
challenged uses, the more likely that the transformed.
Secondary Infringement

- Secondary liability:
 Contributory infringement: know or had reasons to known that its
services was contributing for the infringement;
 Vicarious liability: has the right and ability to supervise the
infringement and has financial interest in the infringement;
 Induced infringement: A device that promotes infringement of
someone else’s work.

A & M Records, Inc. v. Napster, Inc. (2001)

- Napster had a software with an index where its subscribers uploaded
and downloaded copyrighted songs between themselves.
- Napster was copying and distributing copyrighted songs in his software
-
Subscribers were the primary infringers. Napster was the
secondary infringer.
TAKEAWAY: Napster was liable for contributory infringement
because knew its subscribers were infringing copyrights; and
vicarious infringement because had the right and ability to
police its system.

MGM Studios Inc. v. Grokster Ltd

Similar to Napster case, however, Grokster no index.
Product was capable of non-infringing use, but the company promoted
its illegal uses
TAKEAWAY: Distribute a product that promotes copyrights
infringement makes a company liable for secondary
infringement for induced infringement.

 DMCA (Digital Millennial Copy Act (1998) (MOST IMPORT

THING PROVIDERS MUST HAVE NOTICE AND TAKEDOWN
IMPLEMENTED)
 Defense to online services providers from copyright infringements
 Applies to:
1) Transitory communications
2) System Caching
3) Storage of information on systems or networks at direction of
users.
4) Information location tools

Online service providers must (Right to control and tied financial

benefit)

 Have a police terminating infringement;

 Be updated with standard law regarding digital services;
 Example: YouTube, apple, google and etc.

Transitory communications

 TRANSITORY/PROVIDER DOES NOT MODIFY CONTENT/CHANNEL FOR

THE CONTENT

System Caching

 (Users request for material) Notice and takedown measures

implemented.

Storage of information on systems or networks of users

 Notice and takedown measures implemented.

Information location tools

 Notice and takedown measures implemented.

Viacom v. International Inc. V. Youtube

- Third parties (primary infringement) posted Viacom’s content on Youtube
(secondary infringement
- Parties settled.
TAKEAWAY: DMCA is a defense for online service providers in
infringement cases if they comply with notice and takedown
measures, unless they have knowledge of the infringement.

Leveraging the DMCA ->

A) Defense/ safe harbor

B) Tool to get objectionable content removed without chasing
individuals

First Sale Doctrine

- The owner of a particular copy, lawfully made, of someone’s

copyright work, can sell or dispose as they want it. E.g: Buy a book.
You can sell your hard copy.

Kirtsaeng v. John Wiley & Sons, Inc.

- John Wiley published academic textbooks in the U.S. Supap
Kirtsaeng had its family ship from Asia academic book to him in
the U.S. and he would resell here.
TAKEAWAY: No geo limitation for first sale doctrine. Someone
can import a hard copy of a book made abroad and sell it here
and it not copyright infringement

PATENTS
Patent are federal and goes to the federal courts.
What is a patent? Anything under the sun made by man, even living
organism (engineered bacterias).

What are the patent’s right: Exclusive right to

making/using/selling/offering for sale/importing what is claimed in an
invention.

Territorial rights You need to file a patent application in each country.

Time?
You can have a patent and still infringe other people’s patent.

You can patent useful technics to existing technology.

How to get a patent? (it’s hard to obtain, expensive, offer strong

rights [independent creation is not a defense], have to
disclosure)
THERE’S NO COMMON LAW PROTECTION FOR PATENTS. YOU MUST
REGISTER TO HAVE ANY IP RIGHTS.

1) Idea for an invention

2) Submit patent application with the USTPO (application published
after 18 months -> until publication trade secrets)
3) USPTO examiner will:
a) Search of prior art
b) Issues office action
o Rejection (most common)
o Lacks novelty, obvious, formalities
c) Prosecution (amendments and arguments)
d) Allowance
e) Formalities
f) Issuance

Disclosure/ enablement requirement -> Must describe the

invention with enough details that a Personal having ordinary
sills in the art (PHOSITA) to make and use

O’Reilly v. Morse (The telegraph patent) 1853

- Enablement requirement
TAKEAWAY: A person who applies for a patent cannot claim
ownership of inventions or processes that they haven’t
described in the specification portion of this patent application

Amgen v. Sanofi (2023)

- A lab made artificial antibodies to treat high cholesterol
- Disclosure cite 26 antibodies (not the entire class)
TAKEWAY: Must describe invention with enough specificity for a
PHOSITA make and use & You never know if your patent
challenges.

Types of patents:

1) Utility -> Filing data + 20 years

2) Design -> original, new, ornamental/ filing date + 14 years
3) Plant
o invented/discovered in a cultivated state, and asexually
reproduced
o utility patent requirements
o Not Tuber propagated (sweet potato)
o Filing data + 20 years

Patent requirements

 Included in the statutory categories (process, machine, [article of]

manufacture, composition of matter)
 Useful
 Novel
 Nonobvious

Cannot patent

 Immoral, illegal
 Judicial exceptions
o Law of nature
o Abstract idea (Mathematical concepts; methods of organizing
activity; mental process/Pure algorithm,
o Natural phenomenon
 Humans
 Nuclear weapons
 Not tuber propagated

Patent holder can prevent other from making what they have claimed in
their patents.

- A claim has elements

- To infringe, ALL the elements from the claim must be the same
- If lacks 1 or more elements – NOT an infringement

Valuable patent
 Broad (general word. e.g. many type of shoes) difficult to design
around without hitting on your patent (easier to infringe).
 Less elements in the claim = broad
 Visible from end product (discoverable)
PS. If the patent has elements that cannot be discoverable, the patent is
less valuable.

Example: A chair comprising few elements in their claim is broad and

more valuable. It poses high risk to infringe on other people.

Less valuable patent

 Narrow patent = more claim elements (e.g. specific type of shoe)
 offers great protection against infringement, although it might not
be very valuable.
 Easier to design around, all you need is not include one of the
several elements.

Diamond v. Chakrabarty
- Chakrabarty invention: Genetically engineering bacteria that can
break down oil.
- Bacteria organisms qualify as new manufacture and composition
of matter
- He made the bacteria, he did not discovery it (does not exist in
nature).
Takeaway: Genetically engineered living organism (e.g.
bacteria) are patentable.

Mayo Collaborative v. Prometheus Labs

- Invention: Process to use thiopurine drugs to treat patients with
auto diseases.
Takeaway: A law of nature or natural phenomena must carry
enough additional features or be enough transformed in order
to make a formula, test or abstract idea patentable.
- Monitoring drug levels not patentable

Diamond v. Diehr
Invention: Process for controlling the curing of rubber in a mold to make
precision rubber products, that included mathematical formula is
patentable.

TAKEWAY: Laws of nature (e.g. mathematical equation) themself

are NOT patentable, UNLESS the invention has additional
features confirming that the creation is more than a pure math
formula (that cannot be monopolized).

Ass’n for Molecular Pathology v. Myriad Genetics Inc.

Takeaway: An Isolated DNA sequency is not patentable because

it is product of Nature.
- Isolate human DNA not patentable (cDNA is patentable because is
not naturally occurring).
 Alice Corp v. CLS Bank Intn’l (2014)
- Alice invention: Method of using a third party computer scheme to
mitigate financial risk in settlement.
- The idea of intermediated settlement is well known. The addition
of a generic computer to implement the program does not
TRANSFORM the abstract idea in something new.
TAKEWAY: ABSTRACT IDEAS ARE NOT PATENTABLE.
- Adding a generic computer to an abstract idea does not make it
patentable.

Benefits of having patents:

- Marketplace advantage (exclusive rights to that invention)

- Can license and receive payment
- Defensive tool

Disadvantage -> Expensive; you need to disclosure how to make it.

Patents subject matter:

 Utility (useful)
 Novelty
 Nonobiousness

Utility (useful)

 USTPO establish the guidelines when an invention is useful;

 An invention is useful when:
o A person having ordinary skills in the art would appreciate
why the invention is useful;
o The utility is specific, substantial and credible.

Brenner v. Manson
- Created a process to manufacture steroids. This steroids did not
prove to have any utility upon society (he failed to disclose, at the
moment of the application, a sufficient probability that its steroids
had tumor-inhibiting abilities)
- An invention must prove its useful at the moment of the
application for patent, and no at some moment in the future.
TAKEAWAY: Subject matter with lack of utility are not
patentable.

Novelty (new) -> It is not novel if it’s prior art .

  cannot revel the invention more than 1 year prior to the effective
date of patent application.

OBS: If public use/sale “clocks starts” -> you have 1 year to file
application. 1 year and 1 day you cannot file an application for patent
anymore. Exception: Experimental use.

Prior art
1) Information known publicly
2) Before the effective filing data of the U.S. patent application
 Have someone else already invented the thing you’re trying to
patent, and
o Patented it,
o Sold it,
o Offered it to the public
o Described in a printed publication
 Before the effective filing date of your patent application (can
claim priority)

Gayler v. Wilder
- James Conner invented a fireproof safe to protect paper from
fire. (Conner’s invention wasn’t known publicly.
- Daniel Fitzgerald invented the same safe and assigned it to Wilder.
Takeaway: If the public for some reason don’t get the knowledge of
the invention, and a new invention is created in the meantime, the
novelty requirement is met.

 To say a patent is not novel, the prior art reference must contain all
the claim elements of the invention at issue.

In re Cruciferous Sprout
- Invention: cultivation of cruciferous sprouts (broccoli and
cauliflower) in a way that could reduce cancer levels.
- Prior art disclosed the same type of sprouts so the anti-cancer
component was inherent to it.
TAKEAWAY: Even inherent details in prior art that are NOT
expressly claimed in the patent still can challenge novelty.

Preamble vs. claims: The stuff you said on your record will be used against to
you. The preamble in this case counted.

Pennock v. Dialogue 27 U.S. 1 (1829)

Water Hose case
- Statutory Bar -> You have 1 year to file a patent application after
public use or sale, after 1 year the requirement novelty is no
longer met.
 City of Elizabeth v. Nicholson Pavement Co.
- Wooden pavement case
- If an invention is put into public use to experimentation or
testing quality purposes, the 1 year of the statutory bar is
not applicable. The patent still make the novelty
requirement.

 If there a secrecy obligation, experimental use might not be

permitted

Non-obviousness

 Not patentable if at the time the invention was made it was

obvious to a PHOSITA.
 Not patentable if combined prior art references shows it was
an obvious invention. -> teachings from the prior art itself would
made it obvious to PHOSITA
Scope of prior art – “analogous”.

Graham v. John Deere Co. 383 U.S. 1 (1966)

Invention: Plow design
4 part test for obviousness
1) Scope and content of prior art
2) Differences between the prior art and claims at issue
3) Level of the PHOSITA
4) Commercial success of the subject matter

In re Carl D. Clay 966 F.2d 656 (Fed. Cir. 1992)

• Invention: Use of gel to fill dead space at the bottom of an oil storage
tank.

In this case the prior art couldn’t be considered analogous to the

claim because they belonged to distinct fields, and it was not relevant
to the problem the invention was solving. Therefore, it was not
obvious to the PHOSITA.

In re Bell
The USPTO bear the burden of saying something is obvious.
Something only can be classified as “would’ve been obvious to try” if
choosing from a finite number or identified practicable solutions.

Kimberly-Clark v. Johnson & Johnson 745 F.2d 1437 (Fed.

Cir. 1984)
- Patent infringement re sanitary napkins
- Presumption of obviousness shifted from inventor to the PHOSITA.
Would the PHOSITA have known (he is imaginary being).
How to fight non-obviousness?

a) Prior art does not describe every element of your claim

b) Why references should be combined
c) Add a claim limitation (narrow the scope of the claims)

 1 PEACE OF PRIOR ART ALL THE ELEMENTS (Novelty)

 OBVIOUS THEY CAN COMBAIN MULTIPLES ELEMENTS OF PRIOR ART
(Obvious)

INFRINGEMENT

Direct infringement

 Makes/uses/sell/offers to sell a patent invention within the US or

imports a patent invention in the U.S.
 Infringing when practices all elements of the claim
 Doctrine of Equivalents: prevents accused infringers from escaping
liability through insubstantial changes in design/functions. To
infringe by equivalents, the element in an accused product or
process isn’t literally the same as the claimed element, but it’s close
enough. Example. One claim a cone shape, the other claim
octagonal shape, stills infringement.

Winans v. Denmead
- Railroads cars shapes to haul coal
- Winan’s invention (car in a shape of CONE)
- Denmead’s invention (car in a shape of OCTAGON)
TAKEWAY: Winans intended to cover the concept of a conically
shaped coal car with his octagon car. It was infringement.
Doctrine of equivalents.

Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605
(1950)
Linde patent for flux (used for welding) with magnesium in its
composition;
Graver Tank patent for flux with manganese in its composition
- Court said manganese could be substituted for magnesium in flux
composition.
- Graver’s flux does substantially the same thing, in the same way,
to achieve the same result as Linde’s patent -> Patent
infringement. Doctrine of equivalents. It means the
difference between the patents are NOT substantial.

WarnerJenkinson Co. Inc. v. Hilton Davis Chemical Co. 520 U.S.

17 (1997)
3 elements test
- All the elements tests. They go element by element in the
invention to find the scope of the invention.

Doctrine of Equivalents: the differences in the claims description

between both patents are INSUBSTANTIAL, in other words, does not
represent significant changes and they are the same.

Patent of a Bedazzle chair back (including rhinestones, sequins, glitter). A

second patent that use safety pins instead of glitter INFRINGES that
patent BECAUSE the changes are insubstantial. Pins have the same
function, same way, and same result, which is decorate the chair.

Standard of Proof -> Preponderance of evidence. Example. Cro w/

adjustable strap patent. If you take the strap out, you don’t infringe.

 But if you make an adapter kit to adjust the crocs and sell it –
Infringement
 Encourage someone to make it and sell the adjust kit – infringement

Indirect infringement

 Contributory infringement (needs a direct infringer): sell or offers

to sell a component of patented or material or apparatus for a
patent process & the uses of this component, material, apparatus is
in the patent product.

Example: Sell the adjustable strap separate from the crocs (contributory
infringement). Person who bought the separated strap to use in the crocs
(direct infringer).

 Induced infringement: Induce or encourage a third party to infringe

& has knowledge that its acts were infringement.

Actual knowledge or willful blindness (believes has high probability of

happening and does anyway).

Patent issued by USTPO -> Presumption of validity.

Defense to infringement: I don’t infringe. I’m missing at least one

element of your claim.

Defense to infringement: You patent is invalid .

 Prior art
o lack of Novelty or Lack of Non-obviousness
 Failure to meet statutory requirements
 o Inadequate written description (enablement for PHOSITA to
make and use)
o Non-patent subject matter (not a machine, process,
manufacture, composition of matter or improvement thereof);
OR (judicial exceptions)
 Inequitable conduct (Fraud on the USPTO)
o Duty of disclosure all known relevant prior art to the
examiner
o Intent to deceive the USPTO (knew prior art reference, knew it
was material and deliberate withhold the information0
o The withheld information is material.

Defense to infringement: I have a license so my use is okay

Defense to infringement: Patent exhaustion so my use is okay (first

sale doctrine)

 Once a patented product is sold, the patent holder's rights to control

the product are exhausted. The purchaser can then use or resell the
product without restriction.

Dolly the seep

- Clones are not patentable because it constitute a natural
phenomenon and it did not possess any different characteristic
from the one that happened in nature.

Bilski v. Kappos
- Invention: How buyers and sellers of commodities in the energy
market can protect, or hedge, against the risk of price changes.
- Not patentable because it is an abstract idea.

Repair doctrine -> if someone is allowed to make, use, or sell a

patented item, they also have the right to fix and replace parts of
that item that are not patented.

TRADE SECRETS

 Uniform Trade Secrets Act– 1985 (adopted by all the states except
NY)
 Defend Trade Secrets Act (2016)
 Federal or state actionable
 Trade secrets has global coverage.
 Seizure of property possible
 Whistleblower immunity -> Disclosure to att/government okay.
What is a trade secret? Information which (1) reasonable measures are
taken to keep it secret; and (2) is valuable because it is secret. Example:
Secret sauce, big mac sauce, google, coca cola recipe, WD-40.

Duration? As long as it is kept secret.

Right of a trade secret owner? (1) Stop or (2) be compensated for

misappropriation (takin by improper means).

- A secret disclosed by proper means is okay.

- Trade secret cannot be protect against: Reverse engineering (you
should chose trade secrets protection if the invention is difficult to
be reversed engineered); independent creation; public
observation (these things are okay).

What happens if a trade secret becomes public? It cannot be

protected anymore.

How to protect a trade secret? (reasonable measures)

 Limit information to those with a need to know

 Non-disclosure agreements (NDA)
o Employee agreements
o Contracts with vendors/partners
 Non-compete agreement (NCA)
o Employee agreement
 Strong IT security infrastructure
 Control of personnel factors (hiring/satisfaction/exit polices/insider
risk)
 Controlling the accessibility of important documents

What are improper means?

1) Theft,
2) Bribery,
3) Misrepresentation,
4) Breach or inducement of a breach of a duty to maintain secrecy.
5) Espionage (electronic or other)

E.l Du Pont de Nemours v. Christopher (1970)

- Dupont was working on a secret process to build a plan to produce
methanol. Christopher committed industrial espionage and took photos
of the plants using an airplane.
- Christopher discovered the process by improper means without
permission, when Dupont was taking reasonable measures to keep it
secret. (put a roof over the plants would’ve been highly costly).
- Court said we must balance cost factor in reasonableness
 TAKEAWAY: Act of flying over the plant and taking photos was not
 illegal, but violated social norms.
 Framework to analyzing cutting edges

Rockwell Graphic v. DEV (1991)

- Rockwell and DEV were competing manufactures. Rockwell would
buy parts necessary to its production, and would provide vendors
drawings of the pieces they needed.
- Secret drawings were in a vault and had company had NDA in
place. But, engineers and vendors had copies.
- Rockwell’s executive left and went to DEV. Security guard caught
taking photos of the drawings was fired and went to DEV too.
- Rockwell sued Dev for trade secret misappropriation.
a) Rockwell took reasonable measures but needed to share
the copies with its vendors and engineers (balance of
costs and benefits of a reasonable measure)
b) This case was not a matter of summary judgement
because included reasonableness analysis.
c) Require estimation and measurement by person

Evaluation of what is considered reasonable mean?

 Size of the company

 Financial strength of the company
 Competitiveness of the industry
 Value of the secret (Do I protect my car as I’m driving a Honda or
Ferrari?
 Protection and access control
 Catalog function so near-immediate proof of misappropriation.

NDA – Nondisclosure agreements

1) What is confidential? 2) what is not confidential? 3) what is the

standard of care? 4) duration? 5) freedom of action.
 Agreement to keep something confidential.
 Why do I need an NDA?
o Just because you label something a trade secret doesn’t mean
it is.
 Types? One way out, one way in/two (or more way)
 Why NDA is an important IP strategy?
o Evidence of reasonable measures for trade secrets
o Preserves the ability to file for a patent.
o Control release of copyright works
o Contains specific terms/obligations that define relationship
  NDA recipient (manage contamination); NDA disclosure (control
dissemination);
 Watch out for rogue terms “overly broad terms)

MISAPPROPRIATION (only by improper means)

 Under Defend trade secrets act

o Plaintiff = owned a trade secret
o Defendant= misappropriated the plaintiff’s trade secret &
caused damage to the plaintiff

Non-compete agreement.

 Employee promises not to work for direct competitors of the

employer for a LIMETED TERM, after leaving the company.
 Evidence of reasonable measure to protect trade secrets
 NCA to be enforceable must contain legitimate business interests:
o Protect trade secrets
o Confidential business or professional. Information
o Company relationships with specific clients
o Specialized training

IP Contracts

NDA, NCA, EULA’s, Business contracts (Buying/selling/M&A).

Trade secret? Employee owns if there no agreement.

Patent? Employee owns if there no agreement.

Stanford. V. Roche
Stanford agreement did not include an assignment but rather a promise
to assign rights in the future. The Cetus agreement, in contrast, included
an actual assignment. As a matter of contract law, Roche, as the
successor in interest to Cetus, owned Holodniy’s invention
(researcher).