INTELLECTUAL PROPERTY OUTLINE

I. BASICS: INTELLECTUAL PROPERTY LAW

a. Justifications
i. Labor Theory (Locke)—get the product of invested labor
ii. Personality Theory (Hegel)—property is deeply connected to you
iii. Utilitarian—creates incentives for the creation and dissemination of
information
b. INS v. AP: INS took stories from AP’s bulletin without authorization (AP put in
the effort to get the story and INS didn’t)
i. Creation of a quasi-property right for unfair competition
(misappropriation)
1. Not a right against the world but rights against direct competitors
2. Not a protection of the work it is a market protection—being able
to sell something in the market
c. Sears-Compco—Preemption cases
i. The state unfair competition law was preempted by federal patent law
ii. States can have unfair competition laws but they cannot replace or intrude
on federal patent law (Kewanee Oil)
1. The Patent Act of 1952 states what is and isn’t a patent (everything
not a patent is in the public domain)
2. If the states give more patent protection than is allowed under the
Patent Act it takes away from what is in the public domain
d. Bonito Boats—there was preemption in this case but showed how there was a
whole place for states to operate such as trade dress, fraud etc. (Florida law was
preempted)
i. Boat Hull Protection Act—Allows for a 10-year protection
ii. This is an example of Congress protection for a specific thing
II. TRADE SECRETS
a. Elements for a Cause of action
i. Protectable Subject Matter
ii. Reasonable vigilance was exercised under the circumstances
iii. Misappropriation (breach)—focuses on privity (relationship between the
holder and the breacher)
b. Metallurgic v. Fourtek: Factors for whether a trade secret exists (Is the subject
matter a trade secret?)
i. Whether the subject matter is actually a secret
1. Subjective belief of P
2. Expert witness testimony
ii. Whether the subject matter was discovered at some cost to the plaintiff
1. Look at the effect on the value of the product
iii. Whether the subject is of some value to P
 iv. Does not require absolute secrecy—Metallurgic can share trade secret
with employees and others (creates a duty on the third party)
1. Sources of duty (Confidential Relationship)
a. Express—in the form of a contract
b. Status Relationship—privity (without a confidentiality
agreement)
c. Implied in fact—customary
d. Implied in law—where the court identifies there should be
a duty—equitable
v. Restatement of Torts: Factors for Trade Secret
1. The extent to which the information is known outside the
claimant’s business
2. The extent to which it is known by employees and others involved
in the business
3. The extent of measures taken by the claimant to guard the secrecy
of the information
4. The value of the information to the business and its competitors
5. The amount of effort or money expended by the business in
developing the information
6. The ease or difficulty with which the information could be
properly acquired or duplicated by others
c. Rockwell Graphics v. DEV Industries: A trade secret owner must make reasonable
efforts to maintain the secrecy of the subject matter
i. P had a bunch of drawings out to different people; D moved for summary
judgement that P failed to police their secret
ii. P makes an argument they were reasonably vigilant under the
circumstances
1. The availability of the secret was still reasonably kept because
people had to service the machines
iii. Held: Summary judgment was inappropriate because reasonable juries
could differ whether P made a reasonable effort to protect their secret
d. DuPont v. Christopher: D hired by a third party to take aerial shots of P’s
methanol plant
i. Rule: One need not breach a confidence (duty) to misappropriate a trade
secret, as long as it was acquired by improper means
ii. Proper means include: reverse engineering, research
iii. Industrial espionage is improper means
iv. Marks the shift in trade secrets from a tort (focus on privity) to a property
right (focus on rights against the world)
e. Protection for Trade Secret—As long as it is a secret
f. Defenses for a Trade Secret—Not acquired through improper means
III. TRADE SECRET: EMPLOYMENT RELATION, CONTRACT CONSIDERATIONS, AND
CRIMINAL LIABILITY
a. PepsiCo v. Redmond—D worked for P and signed a confidentiality agreement but
moved to Quaker Oats
i. P worried about D giving the “soft knowledge” such as marketing and
long term global strategies—this will be an inevitable disclosure if D
takes the other job
ii. Held: Trade Secret misappropriation occurs when former employee’s new
employment will inevitably result in the disclosure of trade secrets
1. P has shown a high probability that D will inevitably rely on trade
secrets; D hasn’t shown that they can prevent it
2. P will take a long time to stall litigation so D’s soft knowledge
becomes outdates
b. Covenants Non-Compete (reviewed for reasonableness)—Edwards
i. Length of time
ii. Geographic scope
iii. Protection of the employer
iv. Restriction on the employee’s future employment
v. Public Interest
c. Warner-Lambert v. John J. Reynolds Inc.
i. P tried to get out of their licensing agreement to make periodic payments
to D based on its manufacture or sale of Listerine
ii. Licensing agreement—you can pay to use a trade secret even if the trade
secret is known
d. Kewanee Oil—created a grey area that for trade secretes (not patentable but not in
the public domain)
i. Non-Patentable (not preempted by the copyright act)
ii. Doubtful Patent
1. Either get lucky and get a patent
2. Get protection for the time of filing—this would corrupt the system
and therefor preemption is not favorable
iii. Patentable (Preempted)
1. There is greater protection for patents
a. No reverse engineering
b. No independent discovery
c. No doctrine of equivalence
e. ProCD v. Zeindenberg—Shirk-wrap licenses (licensing out a trade secret)
i. Court holds that the shrink-wrap licenses are enforceable under general
contract law
ii. Contract is a method in which to license out a trade secret
1. This is a right against a particular party not against the world—
thus allowing for more dissemination of information
 2. Creates a flexible system allowing people to tailor the terms of use
of their product (license/end user agreements)
f. Evolving Standard for Trade Secret Violation
i. Breach (Metallurgic)Improper means (Christopher)Without
authorization (Economic Espionage Act)
IV. TRADEMARK
a. Any word, symbol or device used to identify goods and distinguish them from
others
i. Device or symbol—it can be a name; slogan; design; other kind of
communication of owner (MGM lion roar)
ii. ™  acts a s no trespassing sign you can put it on anything but doesn’t
get benefits of federal protection
iii. ®a federal protection and it has to be registered
b. 1946 Lanham Act—creates federal protection for trademarks (passed under the
commerce clause)
i. Prior trademark legislation was struck down for not being intellectual
property
ii. There is a dual system of trademark law (between state and federal)
c. Trademark functions
i. Serves as a symbol or signal
ii. Indicia of Identity
iii. Expression of good will (reputation)
iv. Mechanism for lowering search costs
v. Incentive to increase quality of goods
vi. Communication device recognition by public (secondary meaning)
d. Genericide—something becomes generic and the trademark is no longer protected
i. Kellogg v. NABISCO—shredded wheat case
1. Court Held: the name and image of the cereal “shredded wheat”
was a generic term because it was too cumbersome to describe the
product another way
a. Trade Dress element—the manufacturing process that
serves a functional purpose
ii. Murphy Door Bed v. Interior Sleep Systems
1. Fold out bed case—example of something becoming generic
2. Wouldn’t be generic if there was a secondary meaning
a. Secondary meaning—the recognition of the mark is with
the producer not the product
e. Types of Marks (Zatarain’s Inc./ Abercrombie factors)
i. Generic mark—trademark which identifies the product itself—the genus
(or type) of good but not the particular product
ii. Descriptive mark—identifies the characteristic of the product or quality of
the article or service
 1. Such as color, odor, function, dimensions, ingredients, geographic
origin
2. Requires a secondary meaning to be protected by trademark
3. More likely to be subject to fair use because people could use it to
describe their products
4. Upside—doesn’t take a lot of cost to tell people what the product is
5. Examples—Mr. Clean, Best Mayonnaise, Tasty Cakes
iii. Suggestive Marks—requires consumer to exercise imagination in order to
draw a conclusion as to the nature of the goods and services
1. Requires a leap of imagination (ex. Greyhound Bus)
2. Usually aspirational—what the company wants the product to be
3. Does not need secondary meaning
iv. Arbitrary or Fanciful mark—bears no relationship to the products or
services to which they are applied
1. Gives the most protection
2. Keeps the connection to the reputation
3. Creates new words—Twitter/Google
4. Downside—cost more to inform the consumer what the product is
f. In re Nantucket—shirts made in South Carolina but they were called Nantucket
Shirts
i. Misdescriptive
1. Reasonable basis that someone will be deceived
2. Assumption that the mark is misdescriptive
3. Rebut the assumption with secondary meaning
ii. Lanham Act §2(e) rejection—Misdescriptive (Geographically)
1. Mark indicates it’s from a certain place
2. Create a presumption that it is from the place
3. Rebut the presumption with reasonable expectations/secondary
meaning
4. Whether the misdescriptive aspect was a material factor in
consumer decision
g. In Re Old Glory Condom—Pictorial representation of a condom with the
American flag on it
i. Lanham Act §2(a)—Cannot register a mark that is immoral or scandalous
1. There are certain moral norms within the market
2. Scandalous marks are a form of enticing the consumer based off
the mark not the actual product
ii. Design was originally denied because it was viewed as scandalous an and
immoral
h. Subsequent Mark Connection
i. Taylor Wine v. Bully Hill Vineyards—Use of personal name as a
trademark
1. D sold property right to their name
 2. Secondary meaning was built up by D and transferred to P
3. Court Held
a. Names are always descriptive unless they are fanciful (ex.
Aunt Jamima)
b. D cannot use “Taylor” as a trademark but he may show the
personal connection with his new wine company
c. D can use his signature on bottle/advertisements but only
with appropriate disclaimer that he is not connected with
or the successor of P
ii. Levitt Corp. v. Levitt
1. D build Levitt town—sold the company and then sold his name
2. D moves to FL and begins building Levitt towns
3. The reputation that Levitt has as a builder is severable from the
reputation of the company he sold—however:
a. There was no disclaimer
b. There was a relationship between the products
(geographically and type of product)
i. Many people from NY move to FL to retire
ii. Ex. cheese maker couldn’t use his name after he
sold it to a wine company because the two products
are connected
V. TRADE DRESS—NON TRADITIONAL TRADE MARKS
a. A trademark can be any word, name, symbol, device, or combination thereof used
by a person to distinguish a good
b. Think: the distinctions between the different types of artificial sweetener
(Splenda, Sweet and Low, Equal)
i. Each color is distinguishing and makes identifying the product even
quicker
c. Qualitex Co. v. Jacobson Products—permits use color as a mark because it can
contain
i. Trade Dress protectable if secondary meaning and not functional
ii. Multiple colors in patters can be protected
d. Types of Functionality (Wallace International)
i. Utility—Mark is actually useful
ii. Aesthetic—cannot foreclose competition based of a certain general look
1. The design could be needed to make the certain product (baroque
spoons)
iii. Advertised functionality—A claim of functionality precludes trademark
protection (ex. Bose advertising their waved shaped speaker to optimize
sound)
iv. Competitive Advantage (Traffix)—the designs usefulness attracts
consumers
1. Functional advantage is that it resonates with consumers
 e. Hierarchy of Design Protection
i. Ordinary Design—lest protection
ii. Attractive Design
1. Depends on the functionality
iii. Unique Design—most protection
f. Traffix—When there is an expired patent there is a rebuttable presumption that the
design is functional
i. Otherwise this would allow an extension of an expired patent through a
trade dress—this would be preempted by federal patent law (similar to
Sears-Compco)
g. Two Pesos v. Taco Cabana—is the feel of the restaurant trademark-able?
i. Not the individual components but the total look and feel
1. While each of the given elements are not distinctive, when taken as
a whole it is sufficiently distinctive
2. If all the elements together are inherently distinctive—you can
identify the origin of the goods
ii. Goth Restaurant hypo—if there is only one way to create the look it falls
under aesthetic functionality
h. Walmart v. Samara Bros.—court does not afford protection to a clothing design
i. It is impossible to find a design that doesn’t have a function beyond
indicia of identity
ii. Does not overrule Two Pesos, but cabins it
iii. Package/Product Distinction—this is a near impossible distinction
1. Package—inherently distinctive; total look and feel
2. Tritium Quid—treat like a product
3. Product—cannot be inherently distinctive; the actual thing; needs a
secondary meaning
i. Hooters Case—the uniform of Hooters is a function product
VI. REGISTRATION AND COMPETING MARK
a. Lanham Act 1946—Federal form of common law doctrine that has emerged out
of state trademark law (this is a parallel system)
i. TM—state common law protection
ii. ® is federal Lanham Act protection
b. Lanham Act as a registration system—original started off as a tort but with
registration it becomes a property right
i. Two types of registration
1. Lanham Act §1(a)—once you use a trademark in commerce it can
end up on the registry
2. Lanham Act §1(b)—Intend to use a trademark but not currently
using it (staking out use)
ii. Protections under Lanham Act
1. Constructive nationwide notice of trademark
2. There is a prima facia evidence of the validity of the mark
 3. Federal agents will impound grey market goods
4. Creates a quite title after a number of years
5. Remedial Benefits
6. Right to being suit in federal court without diversity jurisdiction
Foreign right for filing under Madrid Protocol
c. Hanover Star Milling—two flour manufactures named Tea Rose (Old Rule)
i. Pre Lanham Act—trademark rights were obtained in use in commerce
ii. Priority decided by territorial market
1. If there are uses in two different markets—only get priority in the
given area
iii. Prongs
1. Mark has to be used in good faith
a. Not trying to free ride
b. There was a reasonable research not to infringe on
another’s mark
2. Within a wholly remote market
a. What is the territory of the trademark?
i. Look at sales; zone of expansion; marketing
b. Trademark still a tort—look for purposeful breach
d. Dawn Donuts Co.
i. Post- Lanham Act—changes Prongs of Tea Rose Doctrine
1. Changes good faith—because there is a federal registry there is
constrictive notice
2. Creates a national market; gets rid of wholly remote market
a. Just have to use the mark somewhere in the US to have
nation protection
e. Zazu Designs v. L’Oréal—P had unregistered plans to use the mark ZAZU in
commerce but they had not acted on those plans
i. For an unregistered mark to be protected by trademark it has to be first
used in commerce
ii. P could have registered the mark with the intent to use it in commerce but
they did not do so
f. Three Types of Bad Faith
i. Freeriding—Tea Rose
ii. Proceeding with a mark despite notice that a similar mark was already in
use (L’Oréal)
iii. Using the Trademark system to warehouse marks (Zazu)
g. Lanham Act §1(b)—Intent to use provision
i. Became effective after Zazu
ii. Bon a fide intention to use in good faith; register for four, six-month
renewals up to two years
iii. Advantage
 1. Allows time to develop a marketing campaign and still being allow
to protect mark
iv. Disadvantage
1. There is an industrial surveillance by allowing competitors to see
what you plan on using for a trademark
h. Incontestability (Park ‘N Fly)
i. Prima facia evidence of an exclusive right to use mark
1. Mark has to be registered
2. Used in commerce for five years (provide an affidavit)
ii. Immunities granted by incontestability
1. Immune from attack on the basis of priority—after 5 years you
have priority
2. Immune from attack for being descriptive without a secondary
meaning
iii. Exceptions
1. Generic Marks
2. Functional marks
3. Abandonment
4. Scandalous/Immoral marks
5. Fraud/Misrepresentation
6. Use of goodwill under certain circumstances
iv. Lanham Act §33(b)—Limits Challenges to Incontestability
1. Only exceptions specifically provided (above)
2. It must be used offensively to protect the good will of the owner;
i.e. owner has to bring suit
i. Benefits of Lanham Act
i. Prima facia evidence of mark validity
1. Rebuttable presumption that you are the bon a fide owner of the
mark
2. Do not have to show mark validity
ii. Gives nationwide constructive notice of mark ownership
iii. Incontestability
iv. Block grey market goods
v. Remedies (§35)
1. Damages/costs
2. Loss of goodwill
3. §35(e)—willful infringement; bad faith
4. Legal fees
VII. TRADEMARK FAIR USE AND INFRINGEMENT
a. Mattel v. MCA—Barbie Girl
i. The song was a parody; the song is critical of Barbie and it does not serve
the same market—there is no likelihood of confusion and qualified for fair
use
b. Types of trademark fair use
i. Descriptive Fair Use (Lanham Act §33)—Provides safe harbor to
potential infringer where the mark is descriptive
ii. Nominative Fair Use—when the mark is the most informative name for
the specific good or services intended to be referred to
1. Playboy example—saying you were a playboy bunny on your porn
site if you actually were
2. Chicago Bulls—instead of professional Chicago basketball team
iii. Expressive Fair Use—Political Parody, Satire, Expressive Uses
c. Infringement
i. Lanham Act §32—protects against the actual taking of the mark
ii. Lanham Act §43(a)—Infringement triggered by use that is likely to cause
confusion or deceive the consumer of the marks origin
1. Types of Confusion
a. Source Confusion—two similar products, not sure which
product belongs to which source
b. Sponsorship Confusion—different products but the marks
are close enough to question who is making the product
c. Subliminal Confusion—confusion of sight, sound and
meaning
d. Reverse confusion—where the big company is the infringer
d. Multi-Factor Test for Likelihood of Confusion (AMF v. Sleekcraft)
i. Strength of the Marks—Abercrombie Factors
1. If a mark is weak the products will have to be very similar and the
goods closely related
2. Marketing/Sales strength
ii. Proximity of the Goods—how similarly the two products function
iii. Similarity of Marks—in terms of sight sound and meaning
iv. Evidence of Actual Confusion—difficult to prove
1. Actual confusion must be significant in terms of total sales
v. Marketing Channels—convergent marketing channels increase the
likelihood of confusion
vi. Types of Good and Purchaser Care—time spent on researching the
product
1. The more expensive the good is the more care the buyer will
employ
vii. Intent—whether alleged infringer was acting in bad faith
viii. Likelihood of Expansion of Product lines—will P and D’s product lines
ever be likely to expand into each other
e. Points of Confusion
i. Initial Interest Confusion—mark is for a sophisticated consumer that
thought it was the actual thing but then realizes it’s not the same
 ii. Point of Sale Confusion—Two Products next to each other look exactly
alike
iii. After Sale Confusion—product mimics the actual product ($10 Rolex)
f. Other Trademark Defenses
i. Functionality
ii. Abandonment (§1127)—mark assumed abandoned if not used for 3
years—can rebut
iii. Descriptive without Secondary meaning
iv. Genericide
v. Laches—P knew D was using mark and did not do anything; inaction
caused reliance interst
VIII. DILUTION: LANHAM ACT §43(C)
a. A separate cause of action than infringement—applies only to famous marks
i. Recognizes the investment that the owner had put in the mark—becomes
more of a property right
ii. Does not require a likelihood of confusion and the two users do not have
to be competitors
iii. Standard of Harm (Victoria’s Secret)—Actual Harm
1. Advantages to Actual Harm: (1) best reflects the real harm, (2)
prevents large companies from extending mark, and (3) creates
expansive litigation so only marks worth protecting will be
protected
2. Disadvantage: (1) time—have to wait until there is actual harm (2)
allows smaller companies to dilute in the interim
iv. Congress—Only need to show likelihood of harm—TDRA 2006 Revision
1. Legislative overturn of Mosely—requires standard of likelihood of
dilution not actual
b. Famous Marks—are more recognizable, thus almost a presumption of secondary
meaning
i. Downside—the more famous and recognizable mark the more people will
want to copy it
c. Mosley v. V Secret Catalogue—Victoria’s secret brings a trademark dilution
claim against Victor’s Little Secret
i. Four Prongs for Dilution
1. Has to be a famous mark
a. Amount of sales
b. Amount spent on advertisement
c. Actual Recognition
d. Federal Registration of mark
e. Ex Post determination—court will let you know
2. Defendant is making commercial use of mark (Lanham Act was
enacted Commerce Clause)
 3. Establish Priority—the mark has to be used after the mark became
famous
4. Dilutes the mark and diminishes the capacity of the mark to
identify the good
ii. Two Aspects of Dilution
1. Blurring –death by a thousand beestings (stopping one small thing
to avoid complete corrosion)
a. Factors for Blurring
i. Degree of similarity between junior mark and
famous mark
ii. Degree of inherent or acquired distinctiveness of the
famous mark (Yale Example)
iii. Owner has substantially exclusive use of the mark
iv. Degree of recognition of the famous mark
v. Whether the user of the mark or trade name
intended to create an association with the famous
mark
vi. Any actual association between the mark or
tradename with the famous mark
2. Tarnishing—the association of the senior mark with a negative
image
a. Relative and depends on the circumstances surrounding the
senior user
d. Louis Vuitton— “Chewy Vuitton” Dog Toy
i. Blurring was present in this case—took away from the distinctiveness of
the mark
1. Affirmative Defenses for Dilution
a. Parody
i. When a parody is successful blurring is less likely
(else big companies would preclude parody)
b. Fair use
i. Advertising or promotion that is comparative
ii. News and comment
iii. Parodic or satirical
iv. Non-commercial use
c. Clean Hands Doctrine—cannot tarnish mark if senior user
used in same way
IX. CYBERSQUATTING
a. Lanham Act §43(d)—Creates a civil action where there is bad faith intent to profit
from using confusingly similar mark as a domain name (ultimately turns on
good/bad faith)
b. Rescue Com v. Google
c. PETA v. Doughney—D registered domain name “People Eating Tasty Animals”
 i. Court found bad faith—D was warehousing several marks in order to
make a profit
ii. Court cares about the intent of using the mark—intent here was not free
speech; D was holding the mark hostage in order to gain a profit
d. Lamparello v. Falwell—P seeking declaratory judgement after creating a domain
name to comment/criticize Falwell’s point of view—made fallwell.com
i. Court Held: Use of domain name for purpose of comment and criticism
does not constitute bad faith intent
X. RIGHTS OF PUBLICITY
a. Right of each individual to control the commercial use of his or her identity (right
to exploit your own image is a property right)
i. State Constructed—started with a right to privacy
1. 1903 NY Civil Rights 50-51—use of names or likeness of living
person for advertising purposes; belief that privacy was an inherent
right
2. Right to publicity started off as a privacy tort but there was a shift
to a property right
3. Common Law Privacy Tort
a. Intrusion upon P’s seclusion or solitude or into his private
affairs
b. Public disclosure of embarrassing facts
c. Publicity which places P in a false light in public eye
d. Appropriation for D’s advantage of P’s name or likeness
ii. Remedies Available: Injunctive Relief; Compensatory
b. Right of Publicity Subject matter persona—as defined by indicia or identity
i. Indicia of identity—not just the actual subject matter; but how the
individual is recognized (think—Harry Potter Glasses)
1. NY: name, photo
2. CA: name; voice; signature; photo; likeness
3. Indiana: images; gestures; mannerisms
ii. Abdul Jabar example—you can’t abandon an earlier name
c. Right of Publicity does not require prior exploitation
d. Martin Luther King v. American Standard—bust of MLK’s head
i. The Right of Publicity is a descendible right—heirs are the best fiduciaries
to protect the property interest
1. Heirs can be determined by
a. Express Stipulation (contracted)
b. Run with Estate
c. Biological Relationship
ii. The publicity right does not need to be exploited during lifetime
1. There is an obligation to police the identity to avoid it falling into
the Einstein problem
iii. Rights of Publicity & Trusts
 1. Fiduciary Responsibilities—duty of loyalty
2. Must think strategically about exploitation— “best use of the trust”
3. Must police even if not troubled by the use
e. Rosa Parks v. Target—biographic use exception; can write a biography about a
person without getting a license (First Amendment Protection)
i. Difference from MLK—it was not exploitive in the same way
f. Piscopo v. Piscopo—celebrity good will is an asset divisible as a part of a
marriage settlement
i. It is an alienable right making Rights of Publicity more of a property
right
ii. Inherent Issue—unlike a true property right it is not as certain as the same
right could be licensed and used by multiple people
g. Zacchini v. Scripps—Human Cannonball Case
i. Reporter asked to film the act but was denied; did it anyways; aired the 15
sec. act on 11 pm news with favorable commentary
ii. Court Held—recording the act was not protected by the 1st Amendment
because it was the entire act; anyone could watch the entire act for free
1. Elements of his labor, personality and utility
iii. TV station has right to report newscast of legitimate public interest which
would be protectable by individual’s right of publicity
1. Unless actual intent of station was to appropriate benefits of the
publicity (i.e. free riding)
iv. Dissent—1st Amendment right trumps absent showing an intent to
undermine publicity
h. Midler v. Ford Motor Co.—Ford hired a sound alike to sing in their commercials
because Midler didn’t want to
i. A voice is as distinctive and personal as a face
ii. Actionable: voice is widely known and deliberately used to sell product
iii. Preemption Note—no copyright protection here because voice is not
fixed to a tangible medium of expression
i. Cardtoons v. MLBPA—Cardtoons seeks declaratory judgement that it could
distribute parody cards of MLB platers
i. Economic Rationales for Rights of Publicity
1. Incentive Argument
a. Court found allowing the cards wont effective the incentive
to become a pro baseball player
2. Allocation of Resources Argument
a. D argued that seeing celebrities everywhere would lower
their worth—creation of artificial scarcity
b. P counterargument—there is no scarcity because the public
comments on celebrities
ii. Non-Economic Rationales—Natural Rights; Labor Theory (celebs by
sheer luck); Unjust enrichment; Emotional Injury
 iii. Three Prong Test for Fair Use—Right of Publicity
1. Purpose and character of Use
a. Is the primary purpose commercial? —this does not mean
the cards can’t be sold
2. Amount—took enough to be identifiable
3. Effect on Market—no negative effect on the market because
MLBPA isn’t going to make fun of their own players
j. ETW v. Jireh Pub—Painting of Tiger Woods in the Masters
i. Artistic/record of historical moment
ii. Art Test—how much is added to the creation of the image
k. Incidental Use Exception—Amazon sued for displaying book cover on website
i. Court Held: Amazon made no editorial choices and the website simulates
browsing through a bookstore
ii. Purpose: Protect non freeriding uses; making sure all secondary markets
aren’t crushed
l. White v. Samsung—Vanna White Robot Case
i. 9th Cir. Ruled that Vanna had a common law right—robot attired to look
like her next to game board recognizable as Wheel of Fortune set
m. Dustin Hoffman v. Capital Cities—Photo redone using Hoffman’s head on a
different body dressed in new fashion; article featured similar shots of other
celebs
i. Court Held: this was not “pure commercial speech”—commercial aspects
are “intrinsically entwined” with expressive elements
1. Magazine did not receive consideration for featuring clothing in
article
2. Article didn’t advance a commercial message
3. Article is a combination of photography, humor, and editorial
comment
XI. COPYRIGHT (GENERALLY)
a. Originally a function of state law—1790; First Copyright Act; Generally used for
books maps and charts (protected for 14 years)
b. Copyright Act of 1909—expanded protection to all writings; duration expanded to
28 years
c. 1976 Copyright Act—Expanded scope and duration of protection
i. Scope—All original works of authorship fixed in a tangible medium of
expression—even if unpublished
ii. Duration—Life of author plus 70 years or 75 years for works made for
hire
iii. Definition of Writing—Copyright protection exists on original works of
authorship in any tangible medium of expression now known or later
developed from which communicated either directly or with the aid of
a machine or device
d. Copyrightable Subject Matter
 i. Literature, song, dance, sculpture, graphics, painting, photography, sound,
movies, computer programming, writings
e. Requirements
i. Original Work (low threshold)
1. Requires an independent creation of a work featuring at least some
creativity
2. Something more than merely trivial
ii. Authorship
1. Created by P or by someone transferred by P prior to suit to
another
2. Works-made-for-hire
a. Employer—not actual creator—considered the
author/owner of work if within scope of ordinary
employment
3. Joint works
iii. Fixation to a Tangible Medium—more than merely transitory in nature
XII. COPYRIGHT: PROTECTABLE SUBJECT MATTER
a. Idea-Expression Dichotomy—© protects expressions not the ideas
i. Ideas are not within the definition of writing
ii. Must have ideas available to promote science and the useful arts
iii. 1st Amendment Implications
iv. Policing the boundaries between copyright and patent
b. §102—does not afford copyright protection to any idea, process, system, method
of operation, principle, concept or discovery
c. Baker v. Shelden—P made a book that had a method of bookkeeping; D took the
method and used it in his book
i. Court held—the tables/books were not protected under copyright, because
they were visual examples of a method
ii. In order to use system, it was necessary to copy author’s expression
d. Morrissey v. Proctor & Gamble—Can rules in sweepstakes be copyrightable
i. Court Held: No
1. While the expression in the rules were substantially similar; there
is only a limited number of ways to make the expression
e. Merger Doctrine
i. Use of system necessitates unlimited access (Baker)
ii. Limited opportunities for expression necessitates unlimited access
(Morrissey)
1. Expression becomes ideas when they are limited
iii. There may be some real expression but if it merges with the functionality
the expression can be lost to the public domain (Shredded Wheat)
iv. Rosenthal Jewelry—only limited number of ways to make a bee pin
therefore it is in the public domain
f. Photography
 i. Burrow-Giles Lithograph v. Sarony—photographs are copyrightable; but
have to incorporate originality
1. Spectrum ranging from selfies to something like Phlearn
2. Look at factors—posing lighting, costume etc. to get originality
3. Not copying if there is a separate original expression
ii. A document describing a photograph
1. Most cases this would not be an infringement
iii. Nature Photography—harder to copyright because nature is largely in the
public domain
1. Copyrightable elements include—lighting, camera angle, choice of
film and lens
iv. Ets-Hokin v. Skyy—Photograph of bottle; D hired another person to take a
similar picture
1. Not infringement because there are only so many ways to take a
picture of a bottle
g. Fixation
i. Embodiment in a copy or phono-record, by or under the authority of the
author
ii. Sufficiently permanent or stable for it to be perceived, reproduced, or
otherwise communicated for a period of more than transitory duration
iii. A work consisting of sounds, images or both that are being transmitted is
“fixed” if a fixation of the work is being made simultaneously with its
transmission
1. NFL games are generally recorded and aired at the same time
meaning the fixation requirement is met and the live program can
be copyrighted
h. Spectrum of Aesthetic Protection (Blienstein—circus posters)
i. Need not show that what was copied was fine art—aesthetic
nondiscrimination
ii. Applies a spectrum approach
1. High protection—fine art/studio photography
2. Low Protection—fact based work/cliché art/selfies
3. No protection—merger doctrine
XIII. COPYRIGHT: FUNCTIONALITY
a. Carol Bernhardt v. Economy Cover—mannequin case
i. Holding: A utilitarian article is only copyrightable to the extent that its
aesthetic elements can be identified and separated from its utilitarian
function
ii. Separability
1. Physical Separability—whether you can physically remove the
aesthetic aspects from the functional aspects (easy test but not very
useful)
 2. Conceptual Separability—when functionality becomes intertwined
with the aesthetic purpose
a. The mannequin has to fit a certain form in order to serve its
purpose –i.e. the way it is made is dictated by its function
b. Unlike the ornamental belt buckle the mannequins are
inseparable from their utilitarian function of displaying
clothes
iii. Dissent—The test should be whether a reasonable observer can
conceptualize the artistic elements separate from the utilitarian function
1. If the observer can conceptualize the article as artistic work wholly
separate from the work’s existence as a utilitarian article, then it
should have copyright protection
b. Other Separability Tests
i. 5th Cir.—Marketability Test
1. To the extent the product is marketed to a segment of the
population based on its aesthetics
2. Looks at what people actually buy the product to do
th
ii. 7 Cir. Aesthetic Influence Test
1. Do designers exercise independent artistic judgement
c. Brandir International—bike rack sculpture case; P said original design for the
rack came from a sculpture
i. Court Implements a Process Based Test
1. Copyright-ability ultimately should depend on the extent to which
the work reflects artistic expression uninhibited by functional
considerations
2. Artist’s aesthetic determinants—i.e. the reasons going into making
something
3. Should depend on the relationship to industrial design—bar non-
aesthetic’ utilitarian concerns—requires evidence of the design
process & nature of work
ii. Not separable if form and function are intrinsically intertwined
d. Architectural Works Protection Act of 1990 §120
i. No separability requirement for aesthetic aspects
ii. Work defined—overall work not individual aspects
iii. Must include interior but need not be inhibited
iv. Doesn’t include highways and dams
XIV. COPYRIGHT: EXCLUSIVE RIGHTS & INFRINGEMENT
a. 1976 Copyright Act §106 (Exclusive Rights)—could infringe more than one
i. Reproduction—exact copy of object
ii. Adaptation—Right to prevent creation of unauthorized derivative works
where the original work is recast or transformed
iii. Distribution—right to control the first public distribution of work
iv. Performance—exclusive right to limit public performance
 v. Display—exclusive right to show copy in a public place
b. General Limitations on §106 Rights
i. Fair Use Doctrine—criticism, comment, news reporting, teaching,
scholarship, research
1. Applies balancing test—whether a use of copyrighted material
should be permitted without the owner’s authorization
ii. Compulsory Licensing
iii. Safe Harbor Protection for Contributory Infringement—limits liability for
online service providers from monetary liability for infringing acts of their
subscribers
c. Criteria for Infringement
i. Owner has an exclusive §106 right
ii. Copying or infringement has taken place
iii. There was improper appropriation not protected by §107 fair use
d. Ownership
i. Shown by—originality, copyrightable subject matter, authors relation to
work
ii. Copyright registration provides prima facie evidence of ownership §401(c)
e. Infringement Protection goes beyond exact copying but also protects penumbra
rights –i.e. derivative works
f. Derivative Works
i. §101 Definition—a work based upon one or more preexisting works such
as translation, musical arrangements, dramatization, motion picture
version, sound recording, art reproduction, abridgement, condensation or
any other form in which a work may be recast, transformed or adapted
ii. Grendel Hypo
1. Not a derivative work because the monster stands for an idea not a
form of expression—the way the monster was portrayed was so
that the audience could relate to it
iii. Lewis Galoob Toys v. Nintendo—Game Genie; attached to Nintendo
Cartridge and allowed for mad hacks
1. Game Genie does not incorporate a copyright because it is an
enhancement
2. Derivative work must incorporate a protected work in a concrete or
permeant from
3. Nintendo can create a licensing agreement to stop other versions
iv. Issues with Derivative Works
1. Close to Reproduction—reduces the demand for the original
2. Far from Reproduction—supplant potential market; copyright
grants right to future exploitation
v. Horgan v. MacMillan—photograph of ballet in coffee table book—if there
are so many pictures is it too close or too far to be a reproduction
1. It is both and court found this to be infringing
 2. For a derivative work—have to see if it is transformative
vi. Hamlet Hypo
1. Play that focuses on other characters is a derivative work because
the plots are driven by the original plot in Hamlet
2. If you have an infringing derivative work, you can still protect
the non-infringing/original aspects of it--§103(a)
vii. Anderson v. Stallone—P wrote an idea for Rocky IV and submitted it;
then Stallone used it without paying P royalties
1. Court Held: Unauthorized derivate work is not entitled to
copyright protection even for the non-infringing portions of the
work
2. P did not have permission from D to use the stories and characters
from Rocky—his script thereby infringed on D’s exclusive right to
prepare derivative works
3. Original work tends to pervade the entire derivative work
g. Protectable Copyright
i. Steinberg—Poster of a NY street was copied by Russia
1. The two posters were substantially similar—but this does not
require copying of most of work—it was a particular expression of
a street scene
ii. Nichols v. Universal—P had a play and D had a movie that P said was
similar and taken from the play
1. L. Hand Abstraction Test—this is a spectrum ranging from
detailed to abstract
a. The more something is abstract the more it is in the public
domain (not protectable)
b. Substantially Similar—even though there is some change to
the sequencing and plot, if the heart of something is taken it
is infringement (protectable)
c. The more detailed or complex something is the more it is
going to be protected (as derivative works)
iii. Not Protectable
1. Scenes a faire—a background
a. Think—Game of Thrones and Lord of the Rings are
generally in the same fantasy world
2. Stock Characters
a. A model figure that was at one time different but is now
generic—Think: 007
3. Broad Themes
4. Historical Material
5. Material from Public Domain
iv. Protectable
1. Details
 2. Sequences
3. Narrow Themes
v. Sheldon v. Metro-Goldwyn Pictures—real woman who killed her husband;
a play was made about it; film producer’s negotiation breaks down; but the
still produced the film with a similar plot
1. The fact that D tried to negotiate shows that it is a derivative work
from the play (D had access)
2. Substantial parts of the play were taken—and what was taken was
more than just a sequence of ideas
3. Just because minor details were changed does not make it an
original work
vi. Hoehling v. Universal—book about the Hindenburg saying it was a
sabotage
1. P’s book—Saboteur destroys for the sake of communist lower
2. Another Book—Nature v. Tech
3. Film—destroyed for communist lover but many subplots
4. Important part of the case is that the book claimed to be history—If
P claimed it to be fiction it would be protectable
a. Have to determine whether it is written to be perceived as
a historical fact—even conspiracy theories are historical
fact if they are written to be
vii. Other Tests
1. 9th Cir. –Total concept and feel; mood as seen by the observer
2. 2nd Cir. (Hand Test)—break down the work from abstraction to
specific and determine what might be protected as theme—
sequence is especially strong
XV. COPYRIGHT: PROVING COPYING
a. Difficulties
i. Substantially similarity means substantial taking
ii. Hard to apply the Hand Test for music
b. P’s minimum requirement to get past summary judgement
i. A copyrighted song (Bona-fide owner of copyright; violation of §106
right)
ii. Reasonable Theory of Access
iii. Some Similarity
c. D’s possible Defenses
i. Independent Creation—no access
ii. There was access but the feature is common place—there is substantial
similarities but those similarities are shared generally amongst music
d. Evidence of Copying
i. Could have an eye witness/smoking gun evidence
ii. Circumstantial evidence—the more similar something is the more access
can be presumed
 iii. Expert at Summary Judgment
1. Listen to determine similarities
2. Transpose into a general key
iv. Ordinary Observer at Trial
e. Proving Access
i. Reasonable Probability of Access
1. Nexus—shared persons, workspace, files
2. Widely disseminated work
3. Substantial Similarity
ii. No requirement to show more than widespread distribution and likelihood
of exposure to song
iii. No intent needed for improper appropriation—infringement even if
unconscious
f. Cases
i. Arnstien v. Porter—allows people to get in court too easily with music
because it is hard to determine where the bright lines are
1. P said D had access because people who D had relationship with
stole compositions
2. Court overturned summary judgement for D
a. Access
i. There was enough access for the jury to conclude
that the similarities were not coincidental
ii. A reasonable theory was given to show D’s access
b. Substantial Similarity
i. Requires expert evidence
ii. Swirksy v. Carey—court determined that even though the notes weren’t
similar, the key, tempo progression were similar
iii. Gaste v. Kaiserman—infringement of a French song by American song
writers. French song was virtually unknown (poor sales)
1. P put forth a successful argument for substantial similarity
2. Access argument—there may have been a connection via a
publisher
a. Interesting argument—obscurity might actually suggest
access because someone looking to get away with copying
might take a lesser known piece of work
b. This argument only work if substantial similarity is great—
otherwise obscurity would go against a finding of access
XVI. COPYRIGHT: DIGITAL PROTECTION, COPYRIGHT TERM & JOINT OWNERSHIP
a. Fiest Publications v. Rural Telephone Services—telephone book copying
i. Court Held: telephone books are not copyrightable because they are mere
compilation of facts
ii. Originality is required—requiste level is extremely low; even a slight
amount will suffice. A minimal degree of creativity
 iii. Originality is a constitutional requirement stemming from the word
“author”—census data is found not created
iv. Fiest is free riding---but it is a good type of free riding because now more
people have access to the information
1. It improves the use of the phone; not necessarily the phonebook
itself
2. Fiest’s use of the book increases the efficiency
v. §101—not only protects the underlying material but the underlying
method in which it is selected or presented
1. Rural’s use was not selective
vi. Factual Compilations may possess the requisite originality
1. May choose which facts to include
2. Decisions on how to arrange and present date
vii. Not similar to INS—misappropriation is rights against a competitor;
Copyright are rights against the world—which preempt misappropriation
b. Protections After Fiest—protecting information in a data driven world
i. Copyright –protect as a compilation of information
ii. Criminal Law
iii. Contract—ProCD
iv. Technology—DCMA—gatekeeping
c. Bidder’s Edge
i. Applies Chattel tort (a state misappropriation claim) to website traffic
1. Chattel—people who go on property to impair or harm it
2. Court rules that because more people who ho on the website the
website gets hurt because it is slowed down
d. West v. Hyperlaw—two companies wanting to publish CDs of legal cases. P sues
claiming infringement of star pagination system. No headnotes or keynotes were
taken
i. Held: Star pagination is not creative, done automatically by computer—
No infringement
e. Bridgeman v. Corel—P had photographically copied famous paintings; D copied
the pictures onto a CD for sale
i. Court found the pictures weren’t original—no infringement
1. There was no originality added to taking the picture; the work of
arts was per se set of information that could not be changed
f. Key Publications v. Chinatown Today—P was very selective about which
business got placed in their phonebook
i. This was original because of its selectiveness as to the businesses that
could be listened in their directory
ii. There was a subjective choice not relying on formulaic or mechanical
selections
g. Computer Associates v. Altai—P created a program that allows other programs to
run on other operating system
 i. D hired a former employee of to make similar program—about 30% of the
work was copied
ii. D didn’t know that the employee had copied to code—remade the
program without anyone familiar with P’s product
iii. Could Held: Copyright Protection extends beyond a work’s literal
components to its non-literal components
1. Creates a Three Part Test: Abstraction-Filtration-Comparison
a. Abstraction—break down the program’s structure and
isolate each level of abstraction (generic/functional)
contained within it
b. Filtration—Filter out components that are
i. Un-copyrightable idea or that the designer included
for efficiency
ii. Included due to external factors such as standard
techniques that are inherently necessary
iii. Taken from the public domain
c. Comparison—Compare the two programs and determine
whether the protectable aspects of the D’s program are
substantially similar to the protectable aspects of P’s
program
h. Lotus v. Borland—Spreadsheet software; D copied the menu system
i. Court Held: A computer menu command hierarchy is not copyrightable
because it is a method of operation
1. Even though the menu made certain expressional choices in
choosing the command words (print, copy, save etc.) this
expression was still part of the general method of operation
2. The command hierarchy was similar to the buttons on a VCR
i. Oracle v. Google—Implementing the Android OS, Google wrote its own version
of Java
i. Google used the same names organization and functionality
ii. Court Held: Method of Operation—No copyright protection
XVII. COPYRIGHT: AUTHORSHIP
a. Community for Creative Non-Violence v. Reed—Reed commissioned to create a
sculpture of homeless nativity with specific wording
i. Court Held—Absent a written agreement to the contrary; the Copyright
Act of 1976 vests copyright ownership in the actual author or authors of
the work unless the material is a “work made for hire”—then the employer
or person whom the work was created for owns the copyright
ii. Multifactor Test to Determine if Work Made for Hire
1. Skill Required
2. Source of the Instrumentalities and Tools
3. Location of the work
4. Duration of the relationship between parties
 5. Whether the hiring party has the right to assigning additional
project to the hired party
6. The extent of the hired party’s discretion over when and how long
to work
7. The method of payment
8. The hired party’s role in hiring and paying assistants
9. Whether the work is part of the regular business of the hiring party
10. Whether the hiring party is in business
11. The provision of employee benefits
12. Tax treatment of the hired party
b. Joint Work (two authors working together)—authors of joint works may
contribute unevenly
i. But de minimus contribution will create a presumption against joint work
ii. Doesn’t matter who does fixation
iii. Joint work concerning the expression not the idea
iv. Must share intention to create joint work
v. Tenants in common—any joint owner may exercise rights over ownership
and license without permission of the other
c. Aalmuhammed v. Lee—A valuable and copyrightable contribution to a work does
not necessarily constitute ownership
i. Joint work requires
1. Copyrightable work
2. Two or more authors
3. Authors intent that their contribution to be combined into one
inseparable work
ii. Test for Co-Authorship absent contract
1. Control—with regards to style of writing and editing power
2. Objective Manifestation—Credit
a. Where are they placed on the credits = how their role was
perceived at the time
3. Contribution to Audience Appeal—success a result of contribution
d. NY Times v. Tasini—Newspaper took articles by freelance authors published in
print medium & included them without authorization on database
i. Court Held—not a revision, but a new work
1. Creates either a work as a very small part of an immense document
or since it may be set apart through a search engine as a single
work
XVIII. COPYRIGHT DIGITAL MILLENNIUM COPYRIGHT ACT (§512 OF 1979 © ACT)
a. Title I—Ant Circumvention Provisions
i. §1201(a) Prohibits the circumvention of technological measures to protect
works
ii. §1201(b): prohibits manufacturing, offering to public circumvention
technology
 b. Title II—Safe harbor provision for online service providers which follow and
takedown provisions for alleged © infringers
i. ISPs cannot be sued but still have an obligation to remove infringing
work
c. Title V: protects digital gateways to material and encryption by a legal apparatus
d. DCMA Exemptions have to be approved by Library of Congress
i. Motion Pictures and Television shows for educational uses
ii. E-Book use for the sight impaired
e. Viacom v. YouTube—DCMA safe harbor requires actual knowledge or awareness
of specific infringing work
i. ISP will not be guilty of secondary copyright infringement if
1. Does not have actual knowledge that the material is infringing
2. Is not aware of facts under which infringing activity is apparent
3. Upon learning of any infringement removes or disables access to
the material quickly
ii. 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.
XIX. COPYRIGHT: FAIR USE
a. Affirmative Defenses for Copyright Infringement
i. Statute of Limitations--§507
ii. Fair Use §107
iii. Laches—failure to act against infringement; no specific time limit
iv. Estoppel—acquiesce to infringement
v. Copyright Misuse—used for anticompetitive purposes
vi. Fraud on the Copyright Office
b. Fair Use—An affirmative defense that comes up only after a prima facie case of
infringement is shown; Fair use may be called a privilege that counters a right
i. Immunity against a specific individual using a specific work in a specific
way
ii. Ex Post—you don’t know it is fair use until after you are sued for
infringement
c. Folsom v. Marsh—Fair use starting off as common law doctrine based on English
precedents that allowed for abridgements—lays out basic framework that is later
codified in §107
d. Fair Use §107—for purposes such as criticism, comment, news reporting,
teaching (including multiple copies for classroom use), scholarship, or research is
not infringement—not limited to these
i. Fair Use Factors
1. The Purpose and Character of the use
a. Commercial/Non-Commercial
i. Commercial Purpose
ii. Commercial Setting
iii. Commercial Intent
 iv. Market Exchange
b. Transformative /Not Superseding
i. Transformative
1. New Uses
2. New Setting
3. Permitted Uses—time shifting;
interoperability; secondary markets
4. Parody
ii. Not Superseding
1. Altered, not merely copying
2. Different markets/audiences
2. The nature of the copyrighted work
a. Creative/Fact distinction
b. Prepublication/Publication distinction
i. Right to 1st encounter with audience
ii. Right may be limited by extraordinary
circumstances
3. Amount and substantiality of the portion used in relation to
the copyrighted work as a whole
a. Quantitative—gross amount taken
b. Qualitative—heart of the work
4. Effect of the use upon the potential Market
a. Actual Market—Supplanting place in market
b. Potential Market—Derivative works
ii. Rules to Employ §107
1. Fact intensive; no bright lines
2. All factors weighed together
3. No single factor is dispositive—but often a thumb on the scale of a
given factor
4. Weigh factors in light of constitutional purpose—for promoting the
progress of science and the useful arts balanced against the first
amendment
e. Sony v. Universal City Studio’s—Sony made a Video Tape Recorder; Some of
Sony’s users were infringing of Universal’s ©
i. USSC Held: Betamax may be used for significant non-infringing uses
1. Time shifting does not impair commercial value of © or create a
likelihood of future harm
ii. Equitable Considerations—infringing users were not using for commercial
gain—presumptively fair use
iii. Significant Non-Infringing Use
1. Dual Use technology—something that can be used for both
infringing and non-infringing uses
2. Balancing the risk v. technological advancements
 f. MGM v. Grokster—P2P file sharing; D advertised the infringing capabilities
i. Court Held—While there was non-infringing uses; D promoted the illegal
uses of the software thereby making it secondarily liable for the infringing
acts of the third parties
g. American Geophysical Union v. Texaco—made copies of articles to take in a lab
i. In a fair use analysis, the more the alleged infringing use transforms the
original work, the less will be the significance of other factors, like
commercialism, that may weigh against a finding of fair use.
ii. Not Fair use here because there is economic harm and insufficiently
transformative
1. Court trying to create an obligation to buy something in order to
create cheap copies
h. Harper & Row v. Nation—Nation published a small amount of the book
published by Harper (who had sold exclusive rights to Time)
i. Court Held: No fair use because even though only a small amount of the
article was taken it was the heart of the substance
ii. Major economic harm because Time canceled publication
iii. Nation intentionally supplanted the article
i. Campbell v. Acuff Rose—2 Live Crew; Pretty Woman Parody
i. Court makes a presumption that a parody is always transformative—
makes a social commentary
ii. Parody and original do not serve the same market
j. Parody v. Satire
i. Parody is trans Parody is transformative, satire is not—parody creates a
derivative work of sorts while satire creates wholly new work
1. Satire makes fun of the world—parody makes fun of the object
2. Parody creates a derivative work
3. Satire is a wholly new work
ii. Parody would be crowded out; a satire is not—A satirist may find
alternative vehicles for expression
iii. Parody prevents negotiating licensing agreements; satire does not create
bar
iv. A parodist cannot except © holder to negotiate permitting self-mockery;
but the satirist can expect such negotiations
XX. COPYRIGHT: MISC.
a. Dastar v. 20th Century Fox—Fox brought a suit against Dastar, claiming that the
sale of Dastar’s videos without attribution to the original series amounted to
reverse passing off, which was a violation of § 43(a) of the Lanham Act
i. Court Held: A previously copyrighted work that enters the public domain
may be used freely without attribution to the author or producer of the
work. Section 43(a) of the Lanham Act provides a federal right of action
against a party who uses a false designation of origin in relation to goods
or services in commerce.
 ii. Preempting the Trademark claim because the Copyright is in public
domain
1. Hierarchy of IP
a. Patent
b. Copyright
c. Trade Secret/Trademark—partially state regimes
b. Eldred v. Aschcroft—Congress can extend the time period of Copyrights and the
extension applies to current copyrights
c. Golan v. Holder—Congress can take works out of the public domain
d. Remedies—17 U.S.C. §412
i. Injunction
ii. Damages and profits
iii. Statutory Damages
iv. Impounding and destruction of infringing articles
v. Criminal Offenses
vi. Declaratory Judgment
e. Copyright Defense Short List
i. Fair Use
ii. Parody
iii. Laches
iv.Copyright misuse
v. Fraud at the copyright office