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INTELLECTUAL PROPERTY OUTLINE

JUSTIFICATION FOR IP LAW 1. One usually captures economic benefits from property one creates or acquires, but nature of IP allows free-riders. Without IP law, any observer can replicate an idea, using/selling the same product and stealing the economic value of what is created. Copiers dont incur investment costs (R&D and time). Thus, theres no incentive to develop IP in the first place w/o economic rewards. Legal protection for IP encourages investment. Market then determines whether exclusive rights are valuable or not.

PATENTS Constitutional Authority - Art. I, 8, cl. 8 Congress shall have Power to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries Definitions 1. Manufacture: Production of articles from raw or prepared materials by giving the materials new forms, qualities, properties, or combinations, whether by hand or machinery. (Diamond v. Chakrabarty) 2. Composition of Matter: All compositions of two or more substances and all composite articles, whether the results of chemical union or mechanical mixture, and whether they be gases, fluids, powders or solids (Diamond v. Chakrabarty) 3. Process: An act, or series of acts, performed upon the matter, transforming or reducing it to a different state or thing. (Gottschalk v. Benson) 4. Invention: Conception of the invention, a well-defined idea 5. Reduce to Practice: When the invention is built or created 6. Constructive Reduction to Practice: Not built, but one has diagrams/instructions showing how to build/use it. Equivalent to enablement; filing a patent is constructive reduction to practice. Invention Experimentation Reduced to Practice (Actual or Constructive) Public Policy for Patent Protection 1. Patent as social contract: a. Patentee gets a temporary monopoly b. Society gets: 1. Education of new technology 2. The invention after 20 years 3. Benefits from new technology: improvements in the economy from introduction of new products and processes, increased employment, and better lives c. Economic incentive for people to invent and invest in sciences and useful arts d. Boundaries of this property right must be clear to enable efficient investment in innovation. Patent holder must know what he owns, and the public must know what he doesnt. 2. Jefferson: One may exclusively possess an idea for so long as he keeps it to himself; but the moment its divulged, everyone can possess it without dispossessing others. Ideas should spread freely for the moral and mutual instruction of man and improvement of his condition. 3. If we allow patents too easily, other inventors will be deterred from their work upstream. 4. Justification for Limited Duration: One who discovers something new doesnt worsen the situation of others; if he didnt stumble upon the idea no one else would have. However, as time passes the likelihood increases that others would have had the idea. Scope of Patent Protection 1. 20 years, measured from date of filing, 154. Under some circumstances, like interferences and appealed rejections, term may be extended for up to 5 years, 154(b) 2. Relationship B/tween Product and Process Patents a. An inventor with a PRODUCT patent has the right to exclude all others from making, using or selling that product for any and all purposes, including purposes the inventor didnt discover b. One who discovers a new property for the existing patented product may obtain a PROCESS patent for the process of using [product] to do [new process]. c. The process patentee must still obtain a license from the product patentee to use the product for the new process. However, the product patentee must also get a license from the process patentee before using the product to do the new process 3. 271: Patentee has exclusive right to make, use, sell, offer for sale, or import the invention described in the claims of the patent. 4. Invention v. Innovation: Development work is necessary to make an invention a viable commercial product. The first commercial version of an invention is an innovation. The patent system rewards innovations only indirectly, by granting patents for inventions.

PATENT VALIDITY 1. 5 Elements of Patentability a. Patentable Subject Matter, 101 b. Novelty, 102(a) c. Utility, 101 d. Nonobviousness, 103(a) e. Enablement, 112 Patentable Subject Matter, 101 a. Expansive term any used in 101 = Congress intended broad category of patentable subject matter b. Non-Patentable Subject Matter: 1. Laws of nature 2. Physical phenomena/products of nature a. EXCEPTION: A purification of the principle that becomes for every practical purpose a new thing commercially and therapeutically is patentable subject matter. (Parke-Davis) a. Difference is discovery of an inherent property and the invention of a new property or use of a natural product b. Nature doesnt provide the substance in the purified form c. Human DNA Sequences: Patents for human DNA sequences valid b/c they typically claim isolated and purified gene sequences. Same logic applies to patenting of stem cells progenitor cells that can produce other cells d. Distinction b/tween organic (patentable) and inorganic purified compounds (not patentable) (Parke-Davis; Deforest) b. EXCEPTION: Can get a PROCESS claim for method of extracting a natural substance (Ex Parte Latimer) 3. Abstract Ideas a. EXCEPTION: A new device by which an abstract idea may be made practically useful 4. Mere combinations of existing species that dont: produce a new species, acquire a different use or effect, or improve in any way their natural functioning i.e. when the organisms continue to act like they always did (Funk) 5. Printed Matter a. Rule extended to deny patents for physical items, like games where only what is printed on the board is new b. EXCEPTION: Printed matter may be part of a patentable invention - if the invention as a whole claims a new and useful physical structure or if the relationship b/tween the printed matter and the physical structure is new and nonobvious. (In re Lowry) c Broad application of the printed matter doctrine is disfavored (In re Lowry) 6. Congress can make exceptions to patentable subject matter: a. 1996 FL precludes owners of patents on medical and surgical procedures from enforcing those patents, 287(c) c. Human-made living organisms, plants, and animals are patentable as a manufacture or composition of matter (Chakrabarty) d. Determination is morally neutral e. Patenting Business Methods: Patentable subject matter, but difficult to prove nonobviousness (State St. Bank v. Signature) f. Plant Patent Acts: 1. 1930 Plant Patent Act: Protection for certain asexually reproduced plants 2. 1970 Plant Patent Act: Protection for certain sexually reproduced plants 3. 1970 Plant Variety Protection Act: Protection for certain sexually reproduced plants but excluded bacteria Utility, 101 a. Low burden to prove utility patentee must show merely any specific utility when the patent is first filed 1. Insufficient that the product/process can be used as an object of scientific research (Brenner v. Manson) 2. Machines serving only to amuse or entertain are useful b. Types of Utility 1. General Utility: Whether an invention is operable 2. Specific Utility: Whether the invention solves the defined problem 3. Beneficial/Moral Utility: Whether the inventions intended purpose has some minimum social benefit or at least isnt harmful a. No longer used to prevent immoral behavior or deceptive trade practices (Other agencies (FTC, FDA) protect consumers). Ability of one product to look like another is sufficient to satisfy utility requirement (Juicy Whip v. Orange Bang) c. PTO Utility Guidelines: An asserted utility must be specific, credible, and substantial 1. Specific Utility Ex: Asserted utility for gene sequence that will identify a disease insufficient must include more detail, like the specific type of disease sought to be identified 2. Credibility prevents patent approval for far-fetched inventions, like time machines 3. Substantial: a. Excludes throw-away (complex invention as landfill) or insubstantial utilities (transgenetic mouse as snake food) b. Problem for gene sequences: The raw sequence information is of only nominal value. Real value lies in identifying the whole genes that include each sequence and identifying what those genes code for. Then proteins can be mass produced, diseases identified, and gene therapies devised. c. Commercial notion involved in determining what is substantial no one will buy expensive snake food d. Policy For: 1. A patent isnt a reward for the search, but compensation for its successful conclusion 2. Contract Justification: To deserve temporary monopoly, inventor must provide something useful to the public. Novelty and Statutory Bars, 102

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Novelty What 3rd Parties have done 1. Product/process must be new compared to the prior art 2. The Inherency Doctrine: Arises in cases involving accidental anticipation of an invention, often resulting from creating a physical product in a chemical process. When inventor later intentionally makes the product b/c she has some use for it, the prior unintended production of the product may be raised as prior art to the invention. a. Some cases hold that where the accidental producer was not aware of the product and didnt attempt to produce it, the first production didnt bar a patent b. Other cases hold that if a product is known in the art already, an inventor cant obtain a patent on the product merely by putting it to a new use, even if the new result had not before been contemplated. The inventor could obtain a patent on the new process using that product, however. 3. If there is prior knowledge of a product, the inventor cant get a product patent, but can get a process patent for a new use 4. Tension in Claim Drafting: Broader the claim language, the more likely the drafter is to run into prior art, but the broader the claim language, the more protection he gets 5. Cant combine prior art references to find something not novel a single prior art reference must disclose every element of what the patentee claims 6. Invention not patentable if it was known or used by others in this country before the patentees invention thereof, 102(a) 7. Oral evidence of prior knowledge and use requires stringent corroboration supporting physical evidence is preferred 8. Once invention is perfected and publicly known, its part of the prior art - ask whether POSA knows about it Statutory Bars: Patent is barred based on too long a delay in seeking patent protection what the inventor has done 1. The Printed Publication Bar, 102(b) a. If inventor fails to file a patent application within 1 year of the articles publication, shes barred from receiving a patent b. Printed publication meaning includes advances in technology of data storage, retrieval, and dissemination. c. Public accessibility determines whether a reference is a printed publication - must show that prior to the critical date, the reference was sufficiently accessible, at least to the public interested in the art, so that by examining the reference one could make the claimed invention without further research or experimentation. 1. The effective date is that of actual publication receipt by subscribers is required. The date a manuscript was sent to the publisher or mailed is irrelevant. 2. Evidence of routine business practice may establish an approximate time a publication became accessible (In re Hall) d. Policy: Encourages inventor to get to the patent office e. Patent applications as printed publications: 1. 122: Patent applications generally published 18 months after filing, so a pending published application can bar another application 2. Exception - 122(b): Can elect to preserve confidentiality of the application by waiving right to file in other countries Confidentiality allows applicant to gain protection under trade secret law 2. The Public Use Bar, 102(b) (Egbert v. Lippmann) a. Use may be public, even though confined to one person, used only once, or inside the invention or unobservable to the public (even if in software, unclaimed aspects of the system werent publicly available, and one skilled in the art wouldnt be able to build and practice the claimed invention without access to the secret aspects of the product. (Lockwood v. American Airlines)) b. Nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use c. Critical that there isnt an obligation of secrecy or any restriction on its use d. ML: CAFC focuses on the nature and purpose of the use in deciding whether it was public or not: a. Use for a commercial purpose is generally a public use, even if it is secret and even if it only occurs once b. Use for personal interest or enjoyment will generally not be considered a public use. f. The Experimental Use Exception (City of Elizabeth v. Pavement Co.) 1. Experimental use of an invention by the inventor or by another under his direction, in order to bring the invention to perfection, isnt public use so long as the inventor, in good faith, is testing its operations a. Justification: If inventor is experimenting, then he hasnt yet used the invention b. A long period may be necessary to test things like durability c. Even if experiments reveal no changes are necessary, still just experimentation d. The invention may be located and used in the premises of another or in public and the use may even benefit the owner of the establishment or incidentally benefit the public. Yet, if used under the surveillance of the inventor, and for the purpose of enabling him to test the machine it will still be experimental, not public, use e. However, if the inventor lets his machine be used by others generally, either with or without compensation, or if it is, with his consent, put on sale, then it is in public use and on public sale and clock starts ticking 2. Policy: Public benefits from inventor making sure the invention is perfect and properly tested before patent is granted. 3. The On Sale Bar, 102(b) a. On-sale bar applies when 2 conditions are satisfied before the critical date: 1. Product is sold or offered for sale. a. Discussions not rising to the level of a definite offer to sell dont count 2. The invention must be ready for patenting, proven by either: a. Proof of reduction to practice b. Proof of constructive reduction to practice 3. Process Patents: If the process offered for sale, in its normal use, inherently possessed each of the claim limitations, then the process was on sale, whether or not the seller recognized his process possessed the claimed characteristics. (Sclatech)

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Even if both the inventor and potential customer receive federal funding, they will still be considered separate commercial entities shared funding source doesnt mean theyre controlled by the same entity. Offer for sale triggers the on-sale bar. Public use/ On sale bars can result from 3rd party conduct: Sale of the invention by a 3rd party can preclude inventor from later obtaining a patent, even if 3rd party stole the invention. Inventors remedy is state action for misappropriation of a trade secret. 102(a) Novelty v. 102(b) Statutory Bars a. 102(a) focuses on before the invention; 102(b) focuses on date of application whether publication/use occurs more than 1 year before the applicant filed 102 a a a a b b b b Was the Invention: known used patented published patented published In public use On sale By: others others others others anybody anybody anybody anybody In: US US Any country Any country Any country Any country US US Before: Date of invention Date of invention Date of invention Date of invention 1 year prior to filing 1 year prior to filing 1 year prior to filing 1 year prior to filing If Yes: N O P A T E N T

c. d.

Abandonment may be found by the conduct of the inventor at any time, even within the 1 year named in the law. If invention is in public use or on sale prior to the statutory time, it is conclusive evidence of abandonment - patent is void. Priority Rules and the First to Invent, 102(g) 102(g)(1) Interference proceedings - priority contests b/tween rival claimants to the same patentable subject matter to the extent permitted in 104 - 104 allows proof of prior inventions in any country that is a signatory to the WTO. Inventors from any WTO country may introduce evidence of prior inventions. 102(g)(2) Use of prior inventions as a source of prior art. Invoked outside interference context, like when D invokes 3rd party invention as prior art reference to defeat validity of Ps patent in this country - Only evidence of prior inventions made in the US may be introduced outside the interference context.

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Reasonable Diligence Standard: 102(g) - Priority generally goes to the first inventor to reduce an invention to practice, without abandoning the invention, UNLESS another inventor was the first to conceive, but the last to reduce to practice: The first conceiver may retain priority if he is reasonably diligent in reducing to practice, with diligence being measured from a time just prior to the second conceivers conception a. Ct. may consider reasonable everyday problems and limitations encountered by an inventor. (Griffith v. Kanamaru) 1. Commercial development isnt acceptable excuse for delay - Delays caused by inventors efforts to refine an invention to the most marketable and profitable form insufficient excuses for inactivity. 2. Hardship (day-to-day) causes are acceptable excuses reasonable vacations, illness, responsibility to feed family, daily job demands, etc. b. Policy: Encourages inventor to get to the patent office b/c he doesnt know if there are others working on the same thing at the same time = he must be diligent all the time. P conceives D conceives D reduces to practice P reduces to practice

P Must Prove Reasonable Diligence Prior User Rights: a. Granted to non-patentees if they can show they were using the invention before it was patented by someone else b. Limited prior user rights for business method (process) patents, 273 1. Prior user cant expand its sales or improve its product if doing so would infringe on the patent 2. Rights arent generally transferable 3. Trade-Related Aspects of Intellectual Property (TRIPS) Agreement (Part of the GATT) a. WTO members may introduce evidence of pre-patent filing inventive acts (evidence of conception and reduction to practice) in their home country for purposes of establishing entitlement to a patent under the US first to invent system, 104 b. Permits provisional applications, 111. Although a provisional application must be fully enabling under 112, it doesnt have to include any claims. A brief description and drawing suffice to establish applicants priority, provided that a more complete application is filed within one year. Filing a provisional application doesnt begin the 20-yr. clock for the applicants patent term; only the filing of a full-blown application, with a claim or claims, does so. Nonobviousness, 103 2.

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Obviousness is a legal question which AC reviews independently, though based upon underlying factual findings reviewed under the clearly erroneous standard (In re Vaeck) If review of PTO Board of Appeals findings of fact then standard is substantial evidence (Dickinson v. Zurko) TEST: Comparing the subject matter sought to be patented with the prior art, whether the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art (Graham v. John Deere) 1. Involves several factual inquiries: a. Scope and content of the prior art b. Differences b/tween prior art and claims at issue c. The level of ordinary skill in the pertinent art 2. Secondary considerations may also be considered as long as there is a showing of a nexus b/tween the secondary consideration and the inventive characteristics of the claimed discovery. Secondary considerations arent dispositive - work as plus factors tipping balance in a particular case. a. Commercial success b. Long felt but unsolved needs c. Failure of others d. Copying e. Unexpected results f. Display of other objective indicia of having made an important social contribution Combining Prior Art References: (In re Vaeck) 1. Ct. may analyze a combination of ideas from different sources of prior art that were available at the time the invention was made, 103 2. 2 factors: a. Whether the prior art would have suggested to POSA that he should make or carry out the claimed product or process. Does the prior art: 1. Explicitly suggest the substitution that is the difference b/tween the claimed invention and the prior art 2. Present preliminary evidence suggesting the claimed method could be used to produce the result at issue, or 3. Contain detailed enabling methodology for practicing the claimed invention, a suggestion to modify the prior art to practice the claimed invention b. Whether the prior art would reveal that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success 3. The showing must be clear and particular. Broad conclusory statements regarding the teaching of multiple references, standing alone, arent evidence (In re Dembiczak). However, some cts. may not require such particularity as long as POSA would know that combining the references would produce the result, it is sufficient (SIBIA) a. Best defense against hindsight is demanding a rigorous showing of the teaching or motivation to combine prior art references. (In re Dembiczak) If undue experimentation is required, then invention isnt obvious.
NONOBVIOUS

OBVIOUS - What Person of Ordinary Skill in the Art Would Know Prior Art

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Enablement, 112 a. 2 Constraints on Breadth of Patent Claims: 1. The prior art 2. One cant claim anything beyond what he has discovered or beyond the limits of the invention b. Policy: Lets the public know what the patentee claims as his own, the cts. what they are to construe, and competing manufacturers exactly what they must avoid. Ensures public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time. (University of Rochester v. GD Searle) c. The Written Description Requirement 1. Specification must prove applicant was in possession of the invention at the time of application (either by actual or constructive reduction to practice), including all elements and limitations 2. Question of fact deferential clearly erroneous standard applies (University of Rochester) 3. Description must support the claim. A claim isnt limited to the preferred embodiment disclosed in a specification. Applicant is generally allowed claims, when the art permits, which cover more than the specific embodiment shown. However, a narrow disclosure will limit claim breadth. Thus, an applicant is entitled to claims as broad as the prior art and his disclosure will allow. (Gentry v. Berkline) 4. Patent applicant neednt test all embodiments of his invention, but if the description is so vague and uncertain that no one can tell, except by undue experiments, how to construct the patented device, the patent is void. (Incandescent Lamp) 5. Specific Applications: a. Compositions of Matter: Giving only the names of the substances to be mixed together, without stating any relative proportion unambiguously = patent is void. If, from the nature and character of the ingredients to be used, they arent susceptible of such exact description, the inventor isnt entitled to a patent. (Wood v. Underhill)

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DNA and Chemical Inventions: Requires a precise definition, such as structure, formula, chemical name, or physical properties (University of Rochester) The Best Mode Requirement 1. At the time of filing, patent must disclose the best mode of practicing the claimed invention contemplated by the inventor whether there was a preferred way to build or use the claimed device or process 2. Test: a. Did the inventor contemplate a preferred way? 1. If not, violation 2. Entirely subjective inquiry, turning on inventors belief in the existence of a best mode b. If so, was disclosure in the specification adequate to enable POSA to practice the best mode of the invention? 1. Objective inquiry depending on the scope of the claimed invention and the level of skill in the relevant art 3. Updating a Best Mode Disclosure During Patent Prosecution: Inventor neednt update best mode disclosure in the continuation application if the material in the continuation app. is common subject matter with that of the original application. Inventor only needs to disclose a best mode in a continuation application if the claim feature associated with that best mode first appeared or first received adequate written description in the continuation. 4. Policy: Prevents a patentee from holding back knowledge from the public, in effect maintaining part of the invention as a trade secret while protecting the whole under patent law. The Enablement Requirement 1. The specification must enable POSA (not judges or lawyers) to make and use the invention 2. Test: No undue experimentation. Routine screening or experimentation is okay. a. Reasonableness standard for what constitutes undue experimentation in a given case - consider nature of the invention and the state of the art b. Considerable experimentation permissible if routine or the specification provides a reasonable amount of guidance on how experimentation should proceed. c. Factors for determining whether a disclosure requires undue experimentation: 1. Quantity of experimentation necessary 2. Amount of direction or guidance presented 3. Presence or absence of working examples 4. Nature of the invention 5. State of the prior art 6. Relative skill of those in the art 7. Predictability or unpredictability of the art 8. Breadth of the claims d. Undue experimentation if the number of inoperative combinations becomes significant Relationship b/tween 103 and 112: Difficulty of the relevant field will benefit the patentee for nonobviousness claim but makes it hard for inventors to enable broad claims in such fields, since they must prove that THE SAME person skilled in the art would be able to produce other examples covered by the claim without undue experimentation.

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INVALIDATING A PATENT AND STANDARD OF REVIEW 1. 2. 3. Patent validity = issue of law, reviewed de novo (Madey v. Duke) An issued patent is presumptively valid; the presumption can be overcome only through clear and convincing evidence, 281 Summary Judgment: (University of Rochester) a. Party seeking invalidation at SJ must submit clear and convincing evidence of invalidity (same standard as at trial). b. SJ appropriate when movant demonstrates there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Ct draws all justifiable inferences and construes all reasonable facts in the non-movants favor c. CA reviews a DCs grant of SJ de novo, reapplying SJ standard. d. CA reviews a DCs denial of SJ under more deferential abuse of discretion standard Patent issues asserted in counterclaims can be heard by regional circuit cts. (Holmes Group v. Vornado Air) Validity challenges during preliminary injunction proceedings may be supported on evidence that wouldnt suffice to support a judgment of invalidity at trial. One neednt prove actual invalidity. (Amazon.com v. Barnesandnoble.com)

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CLAIM INTERPRETATION 1. Interpretive Sources a. Intrinsic Evidence: Strongest 1. Claim Language a. Claims define the property right; word meanings define the claim boundaries. Minor variations in phrasing and meaning can = infringement b. How would POSA understand the claim term? (Phillips v. Awh) 1. Begin with POSAs understanding b/c inventors are often skilled in the art and b/c patents are addressed to others with skill in the pertinent art. POSA has knowledge of any special meaning and usage in the field. 2. POSA is deemed to read the claim term both in the context of the particular claim in which the disputed term appears and in the context of the entire patent, including the specification. c. The ct. may not add a narrowing modifier before an otherwise general term that stands unmodified in a claim. 1. Ct. will generally construe a general claim to cover all known types of structure that are supported by the patent disclosure

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d. Plain Meaning Rule: Cts. often use plain meaning and dictionary definitions to choose b/tween competing interpretations Patent Specification a. May look to the specification for the purpose of better understanding the meaning of the claim. (Phillips v. Awh) 1. May reveal a special definition given to a claim term by the patentee that differs from its plain meaning. In such cases, the inventors lexicography governs, but the patentees definition must be clear and explicit 2. May reveal an intentional disclaimer or disavowal of claim scope by the inventor. His intention, as expressed in the specification, is dispositive (Phillips v. Awh) a. If description describes a feature of the invention and criticizes other products that lack that same feature, then patentee has disavowed the other products (and processes using these products) c. PTO gives claims their broadest reasonable construction in light of the specification as it would be interpreted by POSA (Phillips v. Awh) d. Dont read a limitation into a claim from the written description, but can look to the written description to define a term already in a claim limitation, for a claim must be read in view of the specification of which it is a part. 1. EX: Although specification often describes very specific embodiments of the invention, the ct. shouldnt confine the claims to those embodiments. If a patent describes only a single embodiment, the claims of the patent neednt be construed as being limited to that embodiment. 2. Justification: (Phillips v. Awh) a. 112 of the Patent Act requires only that the claims themselves set forth the limits of the patent grant b. A POSA rarely would confine their definitions of terms to the exact representations depicted in the embodiments. 3. The manner in which the patentee uses a term within the specification and claims usually will make the distinction apparent. (Phillips v. Awh) 4. Even if patent asserts an invention achieves several objectives, doesnt require that each of the claims be construed as limited to structures capable of achieving all the objectives. (Phillips v. Awh) e. a can mean one or more, but may be singular depending on the patent specification f. and/or - a device that does only x wont infringe patent specification that does BOTH x AND y g. including may = required 3. Prosecution History a. Applicants statements made during prosecution may limit the meaning of claim terms b. Similar to prosecution history estoppel, a rule that limits the doctrine of equivalents c. Consists of the complete record of the proceedings before the PTO and prior art cited during patent examination d. Evidence of how PTO and inventor understood the patent e. Disadvantage: B/c it represents an ongoing negotiation b/tween the PTO and applicant, rather than the final product of that negotiation, it often lacks clarity of the specification (Phillips v. Awh) b. Extrinsic Evidence: 1. Expert testimony, inventor testimony, dictionaries, technical treatises, articles, etc. 2. If intrinsic evidence resolves ambiguity of a disputed claim term, its improper to rely on extrinsic evidence. a. Justification: The claims, specification, and file history - not extrinsic evidence - constitute the public record. The public, including competitors, relies on this record. Allowing public record to be altered by extrinsic evidence introduced at trial frustrates publics ability to rely on the public record. 3. Where intrinsic evidence doesnt resolve the ambiguity, extrinsic evidence may be consulted. However, extrinsic evidence may only aid understanding of the claims, it cant be used to vary or contradict the claim language. 4. An inventors interpretations of words in a claim that are proofered after the patent has issued for purposes of litigation are given no weight. (Larami v. Amron) 5. Extrinsic evidence is less reliable b/c: (Phillips v. Awh) a. It isnt created at the time of patent prosecution for the purpose of explaining the patents scope and meaning b. It may not be written by or for skilled artisans, so it may not reflect the understanding of a POSA c. Expert reports and testimony is generated at the time of and for the purpose of litigation and thus can suffer from bias. The effect of that bias is exacerbated if experts opinion isnt subject to cross-examination. d. Each party will choose pieces of extrinsic evidence most favorable to its cause, leaving the Ct. to filter the useful extrinsic evidence from the fluff e. Undue reliance on extrinsic evidence undermines the public notice function of patents Interpretive Canons: a. Avoid surplusage and contradictions b/tween claims b. A claim should be interpreted so as to preserve its validity, to the extent possible. c. If a claim is subject to two viable alternative interpretations, the narrower one should apply. Applies only when two equally plausible meanings for a claim term are possible, not just when there are cases of ambiguity. Interpretive Procedures: a. Patent infringement cases must be tried to a jury, but claim construction is a matter of law (judge) (Markman v. Westview) 1. Policy For: a. Judges are better at construing written instruments than jurors b/c they do it all the time b. Patent construction requires training and practice that judges have = judge more likely to properly interpret documents c. Although jury is best at assessing credibility, not with patents: Judge construing the patent is in a better position to ascertain whether an experts definition is consistent with the specification and claims d. Need for uniformity in the treatment of a given patent: 1. Patent limits must be known for the protection of the patentee, to encourage others to invent, and assures the invention is ultimately dedicated to the public 2. Need for uniformity suggested in Congress creation of CAFC as an exclusive appellate Ct. for patent cases. 2.

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CAFC reviews DC findings on claim interpretation de novo no deference to the TCs construction of the claims Result: Full trial on subordinate issues may be irrelevant depending on how CAFC interprets a claim. To avoid wasting time and money, parties obtain TCs legal interpretation of claims via SJ and then appeal to CAFC. CAFC avoids interlocutory appeals for patent claim interpretation issues.

PATENT INFRINGEMENT, 271 1. Infringement, whether literal or under the doctrine of equivalents, is a question of fact for the jury. On appeal, standard of review is discretionary clearly erroneous. (Hilton Davis) a. Proof can be in any form - expert testimony, documents, treatises, articles, disclosures of the prior art, etc. b. Like any other issue of fact, final determination requires a balancing of credibility, persuasiveness and weight of evidence Literal Infringement a. Must interpret the elements or limitations of the claim and compare the accused product with those elements (Larami v. Amron) b. Patentee must prove presence of every element in the accused device, regardless of how insignificant it is c. Generally, adding new features wont negate infringement. Outcome of such a case determined by the precise claim language and the nature and significance of the added elements. d. DEFENSE: Reverse Doctrine of Equivalents 1. Although Ds invention literally infringes Ps patent, the Ct. can refuse to find infringement on the ground that the subsequent invention was a significant contribution that took the invention outside the equitable bounds of the patent - the device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way 2. An equitable doctrine, preventing extension of the claims beyond the fair scope of the invention - rarely successful Doctrine of Equivalents a. A product/process that doesnt literally infringe may nonetheless be found to infringe if there is equivalence b/tween the elements of the accused product/process and the claimed elements of the patented invention. Patent owner must prove the accused product has the substantial equivalent of every limitation or element of a patent claim. (Warner-Jenkinson) b. Tests for Whether Elements are Equivalent: 1. Whether POSA would have known of the interchangeability of the claimed and accused elements at the time of (alleged) infringement. 2. Triple Identity Test: a. Two devices that are different in name, form or shape are equivalent if, at the time of infringement, they: 1. Perform substantially the same function 2. In substantially the same way 3. To obtain substantially the same result as the patented device 3. Insubstantial Difference Test: Copyists cant avoid infringement liability by making only insubstantial changes to a patented invention (Festo) 4. Raders Foreseeability Test (concurrence in Johnson & Johnston) May be how the law develops a. DOE doesnt capture subject matter POSA reasonably could have foreseen at the time of the patent application. If you dont claim it you dedicate it to the public. 1. Objective Test uses POSA b. Policy For: 1. Enhances notice function of claims by making them the sole definition of invention scope in all foreseeable circumstances. 2. Avoids After Arising Technology Problem 5. The particular test used is less important than whether the test answers the essential inquiry: Whether the accused product or process contains elements identical or equivalent to each claimed element of the patented invention. Different frameworks may be more suitable to different cases, depending on their particular facts. c. Objective doctrine. Whether you intended to infringe is irrelevant (Warner-Jenkinson) d. Cts. determine breadth of equivalents on the degree of advance over the art the original patent represents: 1. If mere improvement patent, Ct. unlikely to find equivalence even if only a modest distance beyond literal terms of the claims. 2. But, if a pioneer invention, a wholly novel device, or an invention that distinctly progresses the art, it is entitled to a broad range of equivalents. If a pioneer patent is involved, a ct. will stretch to find infringement even by a product whose characteristics lie considerably outside the boundaries of the literal claims a. However, even a pioneer patent isnt infringed by a device that doesnt meet the triple identity test f. Policy For: (Festo) 1. Language cant always capture the essence of the invention, so the patent scope extends to all equivalents ofthe claims 2. Otherwise, copyists would just make insubstantial changes which, though adding nothing, are enough to avoid literal infringement. Literal copying is rare. Invention would be discouraged. (Graver Tank) g. Policy Against: (Festo) 1. Extending protection beyond literal terms creates uncertainty about where the patent monopoly ends. If range of equivalents is unclear, competitors cant differentiate b/tween permitted alternatives and an infringing equivalent. They may be deterred from creating legitimate alternatives or they may invest by mistake in infringing products 2. It may be difficult to determine what are equivalents 3. Uncertainty leads to wasteful litigation h. Subject Matter Disclosed But Not Claimed 1. When a patent drafter discloses but doesnt claim subject matter, the unclaimed subject matter is dedicated to the public. Patentee cant reclaim the subject matter under the doctrine of equivalents: Application of the doctrine of equivalents to recapture subject

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matter deliberately left unclaimed conflicts with the primacy of the claims in defining the scope of the patentees exclusive right. (Johnson & Johnston) a. Justification: By failing to claim alternatives, PTO was deprived of opportunity to consider whether these alternatives were patentable and POSA, reading the specification and prosecution history, and interpreting the claims, would conclude that P, by failing to claim the alternate, dedicated the use of such systems to the public. 2. Policy: A patentee cant narrowly claim an invention to avoid prosecution scrutiny by the PTO, and then, after patent issuance, use the doctrine of equivalents to establish infringement b/c the specification discloses equivalents. Such a result would merely encourage a patent applicant to present a broad disclosure in the specification of the application and file narrow claims, avoiding examination of broader claims that the applicant could have filed consistent with the specification. (Johnson & Johnston) 3. A patentee who inadvertently fails to claim disclosed subject matter isnt left without remedy: a. Within 2 years from the grant of the original patent, a patentee may file a reissue application and attempt to enlarge the scope of the original claims to include the disclosed but previously unclaimed subject matter. A patentee must file the continuation before all related applications have issued or been abandoned. b. A patentee can file a separate application claiming the disclosed subject matter under 120, which allows filing as a continuation application if filed before all applications in the chain issue. 4. Under Raders Foreseeability Test (concurrence in Johnson & Johnston), subject matter disclosed but not claimed would be rejected b/c it was foreseeable at the time of application. i. DEFENSE: Prosecution History Estoppel (Warner-Jenkinson) 1. If PTO rejected an earlier version of the patent application on the ground that a claim didnt meet a statutory requirement for patentability, and the patentee responds by narrowing his claims, this prosecution history estops him from later arguing the subject matter covered by the original, broader claim was an equivalent. (Festo) a. Voluntary amendments are treated the same as amendments required by the examiner or made in response to a rejection by an examiner for a stated reason 2. If reason for amendment is unknown, burden is on the patentee to establish the reason for an amendment required during patent prosecution. a. If reason is given: The ct. then decides whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by the amendment. b. Where no explanation is established, the ct. presumes the PTO had a substantial reason related to patentability for including the limiting element added by amendment. Prosecution history estoppel bars the application of the DOE as to that element. c. Justification: Patentee, as author of the claim language, is expected to draft claims encompassing readily known equivalents. 3. Prosecution history is a FLEXIBLE bar to the doctrine of equivalents, not a complete bar: (Festo) a. The narrowing amendment may demonstrate what the claim isnt; but may still fail to capture precisely what the claim is. b. SC adopted a foreseeable bar: Patentee is barred from seeking doctrine of equivalents protection for any matter it should have known it was giving up by amending its claims. If a reasonable patentee couldnt have foreseen the limiting effect of an amendment, the doctrine of equivalents remains available. c. Patentee has the burden of overcoming the presumption that amendments relate to patentability and bar all equivalents. Patentee can overcome the presumption: (Festo) 1. If equivalent was unforeseeable to POSA at the time of the amendment (after-arising technology). (Festo) 2. Amendments made for reasons tangential to the equivalent in question. Factors include: a. Contribution of the claimed technology b. Nature of the technology of the reference leading to the amendment c. Nature of the accused infringers technology 3. Some other reason suggesting the patentee couldnt reasonably be expected to have described the insubstantial substitute in question. 4. A patentee shouldnt be able to obtain, under the DOE, coverage which he couldnt lawfully have obtained from the PTO by literal claims. (Wilson Sporting Goods) a. Visualize a hypothetical patent claim, sufficient in scope to literally cover the accused product. Then ask whether that hypothetical claim could have been allowed by the PTO. If not, then it would be improper to permit the patentee to obtain that coverage in an infringement suit under the DOE. 5. Policy For: (Festo) a. Encourages competitors to rely on the prosecution history and the public record of the patent proceedings b. When an examiner draws attention to a problem in the claim, it forces inventor to eliminate some of the ambiguity of language inventor cant later argue there are limitations of language. DEFENSE: First Inventor Rights: 273 a. Permits a first inventor who doesnt file an application to continue using technology claimed in another inventors later patent application. However, defense only applies to inventions claiming a method of doing or conducting business, 273(a)(3) DEFENSE: Experimental Use a. Judicially created exception to infringement that allows for the unlicensed construction and use of a patented invention for very limited purposes for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry. b. Legislative Exception for Experimental Use of Pharmaceuticals Related to FDA Drug Approval Requirements: 271(e)(1) 1. Permits pre-expiration regulatory testing of a patented drug 2. In return, pharmaceutical patentees may obtain extensions of their patents to partly offset the regulatory review period. The scope of exempt subject matter under 271(e) has been interpreted to cover medical devices. 3. Federal Food, Drug, and Cosmetic Act regulates the manufacture, use, or sale of drugs. Under the FDCA, a drugmaker must submit research data to the FDA at 2 stages of new-drug development:

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A drugmaker must gain authorization to conduct clinical trials (tests on humans) by submitting an investigational new drug application (IND). The IND must describe preclinical tests (including tests on animals) of the drug adequate to justify the proposed clinical testing. b. To obtain authorization to market a new drug, a drugmaker must submit a new drug application (NDA), containing full reports of investigations which have been made to show whether the drug is safe for use and is effective in use. The NDA must include all clinical studies and preclinical studies related to a drugs efficacy, toxicity, and pharmacological properties. 4. The 271(e)(1) exemption extends to all uses of patented inventions that are reasonably related to the development and submission of any information under the FDCA, including preclinical studies of patented compounds appropriate for submission to the FDA in the regulatory process. (Merck v. Integra) a. Scientific research performed without intent to develop a particular drug or without a reasonable belief that the compound will cause the sort of physiological effect the researcher intends to induce isnt reasonably related to the development and submission of information to the FDA b. At least where a drugmaker has a reasonable basis for believing a patented compound may work, through a particular biological process, to produce a particular physiological effect, and uses the compound in research that, if successful, would be appropriate to include in a submission to the FDA, that use is reasonably related to the development and submission of information under Federal law. 5. Under certain conditions, the exemption is broad enough to protect the use of patented compounds in: a. Experimentation on drugs that arent ultimately the subject of an FDA submission or 1. Justification: Even at late stages in the development of a new drug, scientific testing is a process of trial and error. Neither the drugmaker nor its scientists have any way of knowing whether an initially promising candidate will prove successful after experiments. Thats why they conduct experiments. b. Use of patented compounds in experiments that arent ultimately submitted to the FDA 1. Justification: It wont always be clear to parties seeking FDA approval exactly which kinds of information, and in what quantities, it will take to win agency approval. This is especially true at the preclinical stage of drug approval. FDA regulations provide that the amount of information on a particular drug that must be submitted in an IND depends upon such factors as the novelty of the drug, the extent to which it has been studied previously, the known or suspected risks, and the developmental phase of the drug. The use of patented compounds in preclinical studies is protected under the statute as long as there is a reasonable basis for believing the experiments will produce the types of information relevant to an IND or NDA. 6. Merck didnt involve research tools Use of an existing tool in ones research is different from study of the tool itself the ct. expresses no view about whether the statute exempts from infringement the use of research tools in the development of information for the regulatory process. c. Review of the DCs interpretation of the experimental use defense and its proper scope are questions of law and statutory interpretation reviewed de novo. (Madey v. Duke) d. Not an affirmative defense that must be pled in the responsive pleadings or lost. The defense may be raised in the responsive pleadings or at a later stage of the case, within the procedural discretion typically afforded to the trial Ct. judge. (Madey v. Duke) e. The alleged infringer has the burden of proving experimental use (Madey v. Duke) f. Use is disqualified from the defense if it has the slightest commercial implication. (Madey v. Duke) 1. Major research universities often sanction and fund research projects with arguably no commercial application whatsoever. However, these projects further the institutions legitimate business objectives, including educating and enlightening students and faculty participating in these projects. These projects also serve to increase the status of the institution and lure lucrative research grants, students, and faculty. (Madey v. Duke) 2. Regardless of whether a particular institution or entity is engaged in an endeavor for commercial gain, so long as the act is in furtherance of the alleged infringers legitimate business and isnt solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act doesnt qualify for the very narrow and strictly limited experimental use defense. (Madey v. Duke) g. The profit or non-profit status of the user isnt determinative. (Madey v. Duke) DEFENSE: No infringement by accused if the equipment is owned by and in control of a 3 rd party, even if equipment is located on the accuseds property. (Madey v. Duke) DEFENSE: Doctrine of Patent Misuse: Tying not allowed for patent licensing. While you are misusing your patent, ct. wont enforce it, 271(c) and (d) Problem: After-Arising Technologies a. When a subsequent device using new technology is accused of infringing a patent, prevailing view is that new technology can be an equivalent. True even though Graver Tank stated an important determinant in the equivalents inquiry is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was. b. Therefore, a device performing the same function and achieving the same result in the same way as a patented invention can be found to infringe even if it uses technology developed after the patent was issued c. However, it is the entirety of the technology embodied in the accused devices that must be compared with the patent disclosure. d. Reverse DOE Exception: If all the claimed functions are performed in the accused devices by subsequently developed or improved means, it may be considered so improved so as not to infringe. Types of Improvements include: (Texas Instruments) a. Improvement in material b. Reduction in the number of components c. Increased efficiency of an individual component d. Enhanced overall design

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MEANS-PLUS-FUNCTION CLAIMS, 112, 6

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Note the language says an ELEMENT, not a CLAIM. 112 doesnt permit claims to an entire function (like broadcasting), but does allow functional language in claims to cover claim elements Result: PTO and cts. look to the specification to define the invention. The patentees claim element doesnt cover all means for doing X the claim covers what is in the specification and any equivalents thereof. Not every claim that uses the phrase means for is a means-plus-function claim. Use of the word means triggers a presumption for a means-plus-function claim. But this presumption may be overcome if: a. The claim element recites no function corresponding to the means, OR b. The claim element recites a definite structure which performs the described function - A claim term recites sufficient structure if the term, as the name for structure, has a reasonably well understood meaning in the art. Mustnt explicitly recite the structure, material, or acts needed to perform the function. The 112 language ties claim scope to the structure(s) disclosed in the patents specification, so equivalents are literal infringements. 112, 6 Equivalents and the Doctrine of Equivalents: In limited circumstances, a means-plus-function claim that isnt literally infringed can be infringed under the doctrine of equivalents: a. Where the function (as opposed to the corresponding structure) was equivalent but not identical b. Where the accused device contained after-arising technology that was equivalent to the patented structure, but was not known at the time the patent application was filed. (Chiuminatta Concrete) Writing a claim element as a means plus function claim gets around the foreseeability problem. But, if the accused device differs in some respects from that disclosed in the patentees specification, the patentee will want to argue not a means-plus-function claim.

COMPUTER PROGRAMS 1. Computer Programs Are Typically Patentable Subject Matter a. The application of the law of nature to a new and useful end is patentable, either as a product or process claim (Gottschalk v. Benson) b. Mathematical Algorithms 1. Mathematical algorithms, formulas, or calculations arent patentable subject matter to the extent they are merely abstract ideas. The idea must be reduced to some type of practical application a useful, concrete and tangible result. a. Justification: Implements or applies the formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing) 4. The patentee cant seek to pre-empt the use of the equation but rather may seek only to foreclose from others the use of that equation in conjunction with all the other steps in the claimed process. (Diamond v. Diehr) c. A general-purpose computer becomes a special-purpose computer once it is programmed to perform particular functions pursuant to instructions from program software (In re Alappat) Novelty and Statutory Bars a. Even informal software demonstrations may constitute public use of software, 102(b) b. Offers to allow others to use software even in a quasi-commercial setting may trigger the 102(b) on-sale bar. Nonobviousness a. SC has taken a broad view of obviousness in the computer industry, focusing on whether analogous systems to the patentees had been implemented in computers before, rather than analyzing the precise differences b/tween the patentees program and the prior art programs. If a reasonably skilled programmer could produce a program analogous to the patented one, and if there was motivation in the prior art to do so, the patented program is obvious. (Dann v. Johnson) b. Invention found nonobvious, even though each of the elements of the invention could be found in the prior art, where the prior art didnt identify the problem to be solved. Allows patentees to focus their invention on solving a previously unknown problem rather than on the particular elements of their solution. (In re Zurko) 112 Requirements: a. Enablement 1. Varies according to the nature of the claimed invention as well as the role and complexity of the computer program needed to implement it. (Northern Telecom) 2. Generally, actual program code neednt be disclosed in a patent specification to meet 112. Undue experimentation standard applies a. If the program is an integral part of the invention, mere identification of it is insufficient to satisfy 112 b. Failure to disclose specifics of a program that would take 2 years to recreate renders a patent invalid under 112. There are some circumstances, though, when program code will be a mere clerical function to a skilled programmer. 3. Often code isnt the novel part of the invention. Then, writing a code or program is within the competence of an ordinarily skilled programmer wont have to disclose it. Disclose only if the program itself is the invention. Often its just the relationship b/tween code and hardware that must be disclosed. Usually can disclose in terms of flowcharts rather than the code itself. b. Best Mode 1. Where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. Source code neednt be disclosed. (Fonar v. GE) 2. Justification: normally, writing code for such software is within the skill of the art once its functions have been disclosed. (Fonar v. GE) c. Written Description: Stating the function of the best mode software satisfies the requirement. Infringement a. Trend in software infringement cases is to interpret the patent claims narrowly 1. Ct. has found noninfrigement where patentees means-plus-function claim didnt disclose a function identical to the alleged infringers function. (GE v. Nintendo) 2. Narrow application of the DOE also

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b. Most software patents have claim elements written in means-plus-function format c. The reverse DOE may be particularly important in the software industry PTO Examination Guidelines for Computer-Implemented Inventions: Floppy Disk Drives a. Non-functional descriptive material (music, literature, art, photographs and mere arrangements or compilations of facts or data, etc.) isnt patentable subject matter. 1. Non-functional if descriptive material is merely stored so as to be read or outputted by a computer without creating any functional interrelationship, either as part of the stored data or as part of the computing processes performed by the computer b. Non-functional descriptive material may be claimed in combination with other functional descriptive material on a computer-readable medium when there is a functional interrelationship among that data and the computing processes performed when utilizing that data c. Must treat each claim as a whole. d. The mere fact that a hardware element is recited in a claim doesnt necessarily limit the claim to a specific machine or manufacture. e. To be protected, a claimed computer-related process must either: 1. Result in a physical transformation outside the computer for which a practical application in the technological arts is either disclosed in the specification or would have been known to a skilled artisan, or 2. Be limited by the language in the claim to a practical application within the technological arts. f. The claimed practical application must be a further limitation upon the claimed subject matter if the process is confined to the internal operations of the computer. If a physical transformation occurs outside the computer, it isnt necessary to claim the practical application. A disclosure that permits a skilled artisan to practice the claimed invention, i.e. to put it to practical use, is sufficient. On the other hand, it is necessary to claim the practical application if there is no physical transformation or if the process merely manipulates concepts or converts one set of numbers into another 1994 TRIPS Agreement Article 27, 1 a. Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. b. Patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.

BIOTECH ISSUES 1. 2. If the phrase is preceded by DNA encoding, its primary subject is the DNA. DNA and protein are two distinct types of biological molecules, and, therefore, the claim limitation must be carefully construed in light of the relevant claim language (Amgen v. Hoechst) DNA produces protein, but two different types of DNA may produce the same protein a. Asymmetrical relationship b/tween the DNA and the protein: If I know the protein, that doesnt mean I know the DNA. b. Impact on nonobviousness: Just b/c I know the protein sequence, doesnt mean I know the DNA sequence. However, if I know the DNA sequence, then the protein will be obvious. c. Thus, cts. want the DNA sequence to be stated in the claim. Even though you have the DNA sequence for some other animal, unless you have described the human sequence, which youre seeking protection on its not protected. d. Referred to as degeneracy of the genetic code: There are more ways to code for a protein than are actually used. Thus, if you know the DNA nucleic-acid structure, you know the protein, but if you know the protein amino-acid structure, you dont necessarily know the DNA structure that coded for it. 1. A gene is a region of DNA on a chromosome whose sequence encodes a specific protein. A triplet of nucleic acids in the gene sequence, called a codon, specifies individual amino acids. The order of this series of codons determines the amino acid sequence of the protein. Given the triplet nature of the codon and the four possible nucleic acid bases, the resulting genetic code generates 64 possible permutations, 61 of which code for amino acids. There are 20 different amino acids found in human proteins. Having 61 codons coding for only 20 amino acids results in degeneracy meaning that an amino acid may be coded for by more than one codon. For example, the amino acid leucine can be coded for by 6 separate codons. This degeneracy of the genetic code presents a challenge to a biotechnologist attempting to determine the DNA sequence from the amino acid sequence that it codes for: which of the various possile codons actually codes for the amino acid present in the sequence. Enablement: a. Standard is undue experimentation to determine all the relevant DNA sequences. If there is undue experimentation, inventor will have a hard time getting patent extension to other DNA sequence. But if not, then will be able to get protection for both. b. For DNA sequences, patent applicant must disclose how to make and use enough sequences to justify grant of the claims sought. The applicant neednt test all the embodiments of his invention, but he must provide a disclosure sufficient to enable one skilled in the art to carry out the invention commensurate with the scope of his claims c. Analog Claims in Chemical and Biotechnology Patents 1. Analog Defined: Two different molecules with almost identical chemical structure will normally behave in approximately the same way. 2. Many chemicals and DNA sequences have analogs 3. Analogs create problems: If one claims only the precise DNA sequence or chemical structure they have identified, others can design around the invention relatively easily by varying an insignificant part of the total structure 4. To avoid this problem, many patentees claim not only the precise structure they have produced, but its analogs as well. This, however, creates enablement problems a. Although it isnt necessary that a patent applicant test all the embodiments of his invention, the inventor must provide a disclosure sufficient to enable POSA to carry out the invention commensurate with the scope of his claims. A patent applicant may thus claim his invention generically.

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DNA sequences: The inventor must disclose how to make and use enough sequences to justify grant of the claims sought. Generic claims to genetic sequences are likely valid where they are of a scope appropriate to the invention disclosed by an applicant. b. A specification may contain a written description of a broadly claimed invention without describing all species that claim includes d. Functionally Equivalent Claims for DNA Sequences: 1. Recent patents use expansive claim format, which characteristically reads I claim Y nucleotide sequence and functionally equivalent Y sequences having at least x percent sequence homology with said sequence. 2. Homologous regions have identical nucleotide sequences. Thus the percent homology is a measure of the similarity b/tween two strands of DNA; 100 percent homology means the two strands are identical. Homology is normally measured by hybridization, which takes advantage of the complementarity b/tween the two strands of a DNA molecule. 3. One of the two strands from one segment of DNA is joined with the complementary strand from another DNA segment; this forms a hybrid segment. If all the nucleotides match up, or form complementary base pairs, there will be no unmatched regions on the hybrid, and one may conclude that the two original segments are 100 percent homologous. But if there are any mismatches, if any nucleotide on one strand isnt matched with its complementary nucleotide on the other, the hybrid strands wont be bound together at that point. Utility: Pharmaceuticals/Biotech - Human Testing Not Needed to Prove Utility: a. Can show it works and has potential benefits to society through animal testing. Dont need to show its safe or effective for people. b. Justification: The patent law, particularly in the context of pharmaceutical inventions, expects further R&D and the FDA will require human testing later. c. Policy: The costs associated with human testing would prevent many companies from obtaining patent protection on promising new inventions, thereby eliminating an incentive to pursue, through R&D, potential cures in many critical medical areas Nonobviousness a. Cases often involve issue of obviousness b. When prior art suggests a very large number of possibilities but fails to suggest which of those possibilities is the correct one, the claimed invention isnt obvious. (In re Bell) c. Biotech Processes: 103(b) - where an inventor has developed a new and nonobvious composition of matter produced using a biotechnological process, the process as well as the composition of matter is nonobvious

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TRADE SECRETS SOURCE OF AUTHORITY 1. 2. Common Law Tort Rest of Torts 757, 758 a. 757, cmt b: A trade secret may consist of any formula, pattern, device, or compilation of information which is used in ones business, and which gives him an opportunity to obtain an advantage over competitors who dont know or use it. It may be a chemical compound, a process of manufacturing, treating or preserving materials, a pattern for a machine or other device or a list of customers b. Later versions of the Restatement didnt include, but still relied on heavily b/c it had been adopted by so many Cts. Uniform Trade Secrets Act (UTSA): NCCUSL Model State Statute a. Differs in some respects from CL b. Enacted by 40 states and DC c. Pg 30, textbook d. Information isnt a trade secret if it is generally known or readily ascertainable by proper means. Under this view, once a secret is readily available through public sources, it loses all trade secret protection. D is free to obtain the information from the public source or from P herself. ( 39, cmt. f). When the information is readily ascertainable from such public sources, however, actual resort to the public domain is a formality that shouldnt determine liability. TRIPS Agreement: Article 39 requires member nations to protect trade secrets

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PUBLIC POLICY FOR TRADE SECRETS 1. Utilitarianism a. Protecting against theft of proprietary information encourages investment in such information. b. Trade secrets are property c. Desirable to deter efforts that have the purpose and effect of redistributing wealth from one firm to another. d. Keeps American industry competitive. Patent protection is costly and temporary. Tort Theory: Deterrence of wrongful acts a. Goal is to punish and prevent illicit behavior, and uphold reasonable standards of commercial behavior b. Duty-Based Theory/The Maintenance of Commercial Morality: Whether P has a valuable secret or not, D knows the secret through a special confidence he accepted. There is a duty of confidence that cant be breached (Du Pont v. Masland) Differences B/tween the Utilitarian and Tort Theories a. Utilitarian approach doesnt limit the class of improper means to those that arise in tort or contract law (Rockwell v. DEV) Equitable underpinnings. Its only fair that one should be able to keep and enjoy the fruits of his labor. If a businessman has worked hard, has used his imagination, and has taken bold steps to gain an advantage over his competitors, he should be able to profit from his efforts. B/c a commercial advantage can vanish once the competition learns of it, the law should protect the businessmans efforts to keep his

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achievements secret. Allows the owner to profit off the invention and provides an incentive to be inventive, even though he cant get a patent on it. ELEMENTS OF A TRADE SECRET CLAIM 1. Must be subject matter qualifying for trade secret protection a. The type of knowledge or information that trade secret law was meant to protect, and b. Not generally known to all P, the holder of the trade secret, must establish that he took reasonable precautions under the circumstances to prevent its disclosure P must prove D acquired the information wrongfully that D misappropriated the trade secret a. Use or disclosure is wrong when the information is acquired through deception or theft. b. In many cases Ds use or disclosure is wrongful b/c of a preexisting obligation to P not to disclose or appropriate the trade secret. Such an obligation may arise: 1. Explicitly, by contract a. Public policy limitations on the scope and duration of the agreement will often come into play, in some cases resulting in substantial judicial modification of the explicit obligations of the contract b. Technology Licenses and employment agreements 2. Implicitly, b/c of an implied duty a. EX: Most employees are held to have a duty to protect their employers interests in the employers secret practices, information, and the like.

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SUBJECT MATTER QUALIFYING FOR TRADE SECRET PROTECTION 1. Current trend is to protect as a trade secret any valuable information. So long as the information is capable of adding economic value to P, it can be protected by trade secret law. a. Factors for Whether Trade Secret is Valuable 1. Precaution: Takes $ to protect it. Since P wont incur costs for no reason, its evidence that P perceives the secret as valuable 2. Whether it is commercially valuable 3. If I can get an advantage over my rivals if its not known by my rivals To qualify as a trade secret, the subject matter involved must be secret: (Metallurgical Industries) a. Cant be a matter of general knowledge in an industry. Information must not be generally known or readily ascertainable by competitors in an industry b. That scientific principles involved are generally known doesnt refute a claim if there is more that is unknown c. Subjective belief in the secret is a factor suggesting secret exists: 1. Security measures cost money, and manufacturer wouldnt incur costs if it believed its competitors already knew the information d. Secrecy neednt be absolute. 1. Holder may, without losing protection, communicate to employees involved in its use or to others pledged to secrecy. 2. Some disclosures made to further the holders economic interests wont destroy secrecy. a. Failure to obtain confidential relationships in these business dealings doesnt conclusively disprove secrecy. Confidentiality isnt a requisite, only a factor b. Justification: To require absolute secrecy would greatly limit holders ability to profit from his secret 3. Licensing is like implied confidentiality b/c if licensee discloses, it loses commercial viability makes free something it paid for e. Nevertheless, a substantial element of secrecy must exist, so that except by the use of improper means, there would be difficulty in acquiring the information, Rest. Torts 757, cmt b f. Rest. Torts factors for determining whether information constitutes a trade secret: 1. Extent to which the information is known outside the claimants business 2. Extent to which it is known by employees and others involved in the business 3. Extent of measures taken by the claimant to guard the secrecy of the information 4. Value of the information/modifications to the business of its competitors 5. Amount of effort or money expended by the business in developing the information 6. Ease or difficulty with which the information could be properly acquired or duplicated by others a. Cost of developing the secret device or process, including time, effort, and money to make the necessary changes. g. The factors neednt exist in every case, case-by-case determination, weighing all equitable considerations. h. Must information actually be known to competitors or merely be knowable 1. Many cts. following Rest. Of Torts say information must actually be known to competitors. a. Allows P to protect information that could have been acquired properly but in fact wasnt b. Underscores unfair competition rationale for protection focuses on the way D acquired the information c. Even Rest. jurisdictions place some limit on what can qualify for trade secret protection. If information is generally known to the public, or within a specialized industry, no protection. 2. Other states require only knowability Categories eligible for protection as trade secrets are quite expansive, include: a. Secret combinations of items which by themselves are publicly known b. Scientific, technical and business information, such as customer lists and business plans The secret neednt be strictly novel: The idea may have occurred to someone before; it may even be in use by another. But if it isnt generally known or readily ascertainable to the competitors in an industry, it may still qualify for trade secret protection. Thus prior art isnt effective defense, necessarily. The idea neednt be complicated; it may be intrinsically simple so long as it isnt common knowledge

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Some Cts. have suggested a trade secret may be no more than a merely mechanical improvement a good mechanic could make Rest 3d Unfair Competition definition of a trade secret: A trade secret is any information that can be used in the operation of a business or other enterprise and that is sufficiently valuable and secret to afford an actual or potential economic advantage over others. a. Under the new restatement, many different companies can possess the same information and each protect it as a secret Public Disclosure a. Trade secret protection continues indefinitely until public disclosure of the secret. Disclosure can occur by: 1. Publishing the secret, often by publication of an issued patent or a. B/c patent law requires public disclosure of an invention with sufficient specificity to enable POSA to make it, obtaining a patent on an invention destroys trade secret protection. Thus, inventor must elect either patent or trade secret protection. b. Exception: If D steals Ps trade secrets and publishes them in its own patent application, ct. will conclude the trade secret owner didnt have the opportunity to elect to give up trade secret protection and will rule publication of Ds patent didnt disclose Ps trade secrets. (Rhone-Poulenc Agro v. DeKalb) c. 1999 - Congress changed US law to require that some (but not all) patent applications be published after 18 months. Since it takes average of 3 years for patent to issue, many applicants will face an election b/tween trade secret protection and the prospect of future patent protection. Most patent licenses allow licensee to use trade secrets and know-how related to or associated with the patent. d. Depositing a work with the US Copyright Office destroys trade secrecy. (Weygand v. CBS) 2. By selling a commercial product embodying the secret, sometimes a. Test: Whether the secret is apparent from the product itself. Secrets apparent to the buyers of a product are considered disclosed by the product, but secrets contained in undecipherable form within the product (such as object code in a computer program) are considered secret even when the product is sold b. Disclosure may occur even without sale of the product itself, if the secret is disclosed freely and without restriction during the manufacturing or development processes. c. Licensing is evidence a secret has value and is worth protecting. But it also suggests he isnt trying to keep the information secret at all but rather is attempting to profit from its disclosure. 3. By a 3rd Party a. When someone else independently develops or discovers the secret - they publish the secret, she defeats not only her rights to protection, but others rights as well. b. Posting works to the Internet makes them generally known at least to the relevant people interested in the news group. Once trade secret is posted on the Internet, it is effectively part of the public domain, impossible to retrieve. One who originally posted the trade secret may be liable for trade secret misappropriation, but those who download Internet information arent liable for misappropriation b/c there is no misconduct involved in interacting with the Internet 4. Inadvertent Disclosure leaving information in the public view a. Reasonable to argue a truly accidental disclosure shouldnt defeat protection if reasonable precautions were taken. b. But if inadvertent disclosure is widespread, unfair and impracticable to require the public as a whole to give back the secret. c. UTSA 1(2)(ii)(C): Misappropriation for someone to disclose a secret they have reason to know has been acquired by accident or mistake; Rest. 3d Unfair Competition 40(b)(4): Takes same position, unless accidental acquisition was result of the trade secret owners failure to take reasonable precautions to maintain secrecy of the information 5. Mandatory Disclosure By the Govnt a. Sometimes agencies require disclosure of product contents or trade secrets in order to serve some social purpose, like health and environmental concerns. b. Mandatory disclosure of trade secrets may constitute a taking under the 5th A. (Ruckelshaus v. Monsanto) c. If information can be obtained from the govnt under the Freedom of Information Act, not a trade secret (Frazee v. US)

REASONABLE EFFORTS TO MAINTAIN SECRECY 1. Cts. justify requirement differently: a. Some see it as evidence the trade secret is valuable enough to bother litigating 1. The owners precautions are evidence secret has real value. b. Others argue where reasonable precautions are taken, chances are D acquired the trade secret wrongfully 1. The greater the precautions P took to maintain secrecy, the lower the probability that D obtained them properly and the higher the probability it obtained them through a wrongful act (Rockwell v. DEV) Precautions generally must include certain efforts to prevent theft or use of the idea by former employees When a company discloses its trade secrets to a limited number of outsiders for a particular purpose, there is imposed a duty of confidentiality on the part of the person to whom the disclosure is made. (Rockwell v. DEV) Whether a precaution is reasonable depends on a balancing of costs and benefits that vary from case to case - whether the additional benefit in security would have exceeded the cost. (Rockwell v. DEV) a. Perfect security isnt optimum security b/c economically inefficient b. The more the owner of the trade secret spends on prevention, the more he demonstrates the secret has real value deserving of legal protection, that he really was hurt as a result of the misappropriation, and that there really was misappropriation. However, the more he spends, the higher his costs. The costs can be indirect as well as direct. c. Inquiry requires estimation and measurement by persons knowledgeable in the particular field Information in the public domain cant be turned into a secret merely by treating it like a secret. Unlike the Uniform Act, the new Restatement doesnt contain a requirement that Ps take reasonable precautions to protect their secrets. The comment to 39 takes the position that, while precautions taken to maintain secrecy of information are relevant in determining whether the

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information qualifies for protection as a trade secret, if the value and secrecy of the information are clear, evidence of specific precautions taken by the trade secret owner may be unnecessary. Rest. 3d Unfair Competition 39, cmt g. 7. More than an intention is required P must show it manifested that intention by making some effort to keep information secret. (ElectroCraft v. Controlled Motion) 8. Relaxed security alone doesnt preclude a finding of reasonable efforts to maintain secrecy. Factor includes whether there is evidence that industrial espionage is a major problem in the industry; if not a problem, security measures may not have been needed (Electro-Craft v. Controlled Motion) 9. No confidential relationship b/tween a manufacturer and marketing firm hired to distribute (Entertainment Research Group v. Genesis Creative); but proprietor of an IMAX movie theatre had duty to IMAX to protect specifications of the projector as trade secrets from a competitor attempting to reverse engineer the technology (IMAX. v. Cinema) 10. Companies with trade secrets must tell the secret to their employees, their business partners, and often their distributors and customers as well. The risk of inadvertent use or disclosure can be reduced by: requiring employees, licensees, and even customers to sign confidentiality agreements; investing in physical security measures against theft (fences, safes, and guards); and designing products themselves so they dont reveal their secrets upon casual (or even detailed) inspection 11. Trade secret law doesnt protect owners against legitimate purchasers who discover the secret through reverse engineering, absent a valid nondisclosure agreement. However, at least one Ct. has said that the possibility a product might be reverse-engineered doesnt foreclose trade secret protection against people who havent actually reverse-engineered the product. 12. Reasonable efforts to protect secrecy of an idea contained in a commercial product such as locks, black boxes, or the use of unreadable code may suffice to maintain trade secret protection even after the product itself is widely circulated. (Data General) MISAPPROPRIATION OF TRADE SECRETS IMPROPER MEANS 1. Acquisition (Disclosure for Rest. Torts 757) or use of a trade secret is illegal only: UTSA 1; Rest 3d Unfair Competition 40 a. Where done through improper means, or b. Where it involves a breach of confidence. Law recognizes and enforces higher standards of commercial morality in the business world. (DuPont v. Rolfe) One may use the secret process if he discovers the process by reverse engineering or if he discovers it by his own independent research, but one may not avoid these labors by taking the process from the discoverer without his permission at a time when he is taking reasonable precautions to maintain its secrecy, even if the means for discovery are obvious and little experimentation is needed. (DuPont v. Rolfe) Rest. 757, cmt. f: Improper means are those which fall below the generally accepted standards of commercial morality and reasonable conduct. Commercial privacy must be protected from espionage which couldnt have been reasonably anticipated or prevented. (DuPont v. Rolfe) a. Aerial photography of plant construction is an improper means of obtaining anothers trade secret b. Fact specific inquiry, determined by time, place, and circumstances Rest. 3d Unfair Competition 43: Improper means includes theft, fraud, unauthorized interception of communications, inducement of or knowing participation in a breach of confidence, and other means either wrongful in themselves or wrongful under the circumstances of the case. It doesnt matter that Ds could have gained knowledge from a study of the expired patent and Ps publicly marketed product. The fact is they didnt. Instead they gained it from P via a confidential relationship, and in doing so incurred a duty not to use it to Ps detriment. This duty they have breached. (Franke v. Wiltschek) Policy For: a. Utility: If P has allowed his trade secret to fall into the public domain, he enjoys a windfall if permitted to recover damages merely b/c D took the secret from him, rather than from the public domain as it could have done with impunity. b. If trade secret is regarded as property protected only against wrongdoers, D is perfectly entitled to obtain the property by lawful conduct if he can, and he can if the property is in the hands of persons who themselves committed no wrong to get it. c. If trade secret is regarded as property protected against the world, D is perfectly entitled to obtain the property if P has abandoned it by giving it away without restrictions. (Rockwell v. DEV) Reverse Engineering Computer Code: If you have to make a copy of the program to reverse engineer it, then you violate . Thus, code is adequate to protect secret

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COPYRIGHT SOURCES OF AUTHORITY 1. 2. 3. Constitution Act Preemption Most CL and state statutes preempted, 301

ANALOG DEFINED 1. Content storage and distribution centered around means of mechanically capturing and reproducing works of authorship like printing, phonographs, photographs, film, and photocopies which fix works of authorship through some human or mechanical process of deforming a physical object (paper, film) in a manner that conveys an image (letter, number, image) or signal varying in audio frequency (sound) or light or color intensity (film)

PUBLIC POLICY FOR COPYRIGHT

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Contract: a. Author gets temporary monopoly b. Society Gets: 1. Enhanced public interest in useful art and sciences 2. Increased availability and amount of literature, music, and other arts 3. Eventual entry into the public domain c. Monopoly privilege is neither unlimited nor primarily designed to provide a special private benefit. Rather, limited grant is means by which an important public purpose may be achieved. Intended to motivate the creative activity of authors and inventors by the provision of a reward, and to allow public access to the products of this genius after the limited period of exclusive control has expired. (Sony Corp. v. Universal City Studios) Moral Rights/ Natural rights of the author to control the use of his work and be rewarded for it Anti-commons Problem: Nobody can do anything b/c everything is so privatized. If I have to get permission from a bunch of different owners, I cant put the pieces together and I cant innovate

COPYRIGHTABLE SUBJECT MATTER, 102 1. 2. 102: Non-exhaustive list of 8 broad categories of works of authorship The Idea-Expression Dichotomy, 102(b) a. Neither facts nor ideas are protectable, but the expression of those facts or ideas is (Baker v. Selden) b. Recipes: (Publications v. Meredith) 1. Recipes directions for preparing the assorted dishes fall squarely within the class of subject matter specifically excluded from protection by 102(b). Protection for ideas or processes is the purview of patent. 2. But parts of recipes may be able. There are cookbooks where authors lace directions with musings about the spiritual nature of cooking, reminiscences associated with wafting odors of certain dishes, and tales of historical or ethnic origin. c. Drawing the Line B/tween Idea and Expression - Judge Hands Abstraction Test 1. Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about and at times may consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ideas. protection is granted to a character if it is developed with enough specificity so as to constitute protectable expression 2. Application of the merger doctrine involves the same levels of abstraction problem. Characterizing the idea of a work at a lower level of abstraction brings the idea in close alignment with the expression, rendering that expression unprotectable. The more likely the expression alleged to have been infringed is in fact an idea. 3. Some Cts. have softened the harsh consequences of finding merger (i.e., no protection against copying) by finding that works with limited means of expression are able but that the scope of protection for such works is thin. 4. Incidents, characters or settings indispensable, or at least standard, in treatment of a given topic. Allowing such protection would unduly prevent subsequent authors from using general settings with which audiences relate e. The Merger Doctrine: When there is only one or a few ways of expressing an idea, cts. will find that the idea behind the work merges with its expression and the work (even the expression) isnt able. 1. Insurance and commerce: Use of specific language in forms and documents may be so essential to accomplish a desired result and so integrated with use of a legal or commercial conception that proper standard of infringement is one which will protect as far as possible the ed language and yet allow free use of the thought beneath the language. (Continental Casualty v. Beardsley) What ISNT ABLE: a. Exclusive right to make, sell, or use the art or manufacture described therein. (Baker v. Selden) b. Historical facts not an original work of authorship. Some cts. extend rule to deny for historical research. c. Words and short phrases like names, titles, and slogans d. Familiar symbols or designs e Mere variations of typographical ornamentation, letter or coloring f. Mere listing of ingredients or contents g. Type face as typeface h. Sweat Works (Feist) 1. Assemblage of information in a mechanical or functional manner, lacking creativity 2. Post Feist, owners of databases and other factual compilations have turned to contract law to protect sweat of the brow investments. Efficacy of this approach varies widely depending on whether the factual compilation at issue is widely distributed or sold to a limited number of vendors 3. Alternatively, one may argue for a common law restitution-like remedy when hard work is blatantly appropriated by a copyist Govnt Works, 105 and 101 a. Judicial Opinions: No reporter can have in Cts written opinions. Whole work constitutes authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all, whether a declaration of unwritten law or an interpretation of a constitution or statute. b. Statutes: Legislature cant deny public access to statutes. Both state and federal statutes are in the public domain c. 105: protection not available for work of the US Govnt, but Govnt not precluded from receiving and holding s transferred to it by assignment, bequest, or otherwise 1. 101 defines work of US Govnt as a work prepared by an officer or employee of US Govnt as part of that persons official duties. HR: Definition should be construed in the same manner as definition of work made for hire. d. When a federal govnt agency commissions a work by an independent contractor.

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LH: Bill deliberately avoids making any sort of outright, unqualified prohibition against in works prepared under Govnt contract or grant. 2. Where govnt agency commissions a work for its own use merely as an alternative to having one of its own employees prepare the work, the right to secure a private is withheld. 3. However, cases where denial of protection would be unfair or would hamper production and publication of important works. 4. Where, under the particular circumstances, Congress or the agency involved finds the need to have a work freely available outweighs the need of the private author to secure a , the problem can be dealt with by specific legislation, agency regulations, or contractual restrictions. e. A doesnt expressly limit protectiblity of works created by state govnt officers or employees in their official capacities, but cts. hold that certain types of govnt works, like statutes, codes, and judicial opinions, are inherently part of the public domain 1. Justification: a. Limitations on access to such works would raise due process concerns where failure to adhere to such laws or regulations threatens civil or criminal liability. f. 2nd Circuit: Municipality may retain in its tax maps to the extent the entity or individual who created the work needs an economic incentive to create the work and public doesnt need notice of the particular work to have notice of the law. Literary Works a. Defined, 101: Works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, films, tapes, disks, or cards, in which they are embodied. 1. LH: The term doesnt connote any criterion of literary merit or qualitative value: includes catalogs, directories, and similar factual reference, or instructional works and compilations of data. b. Protection for literary works extends not only to the literal text but also to non-literal elements of a work such as its structure, sequence, and organization. 1. One may not circumvent law by paraphrasing an original text. 2. Scope of protection for non-textual elements: Judge Hands Standard a. Two plays may correspond in plot closely enough for infringement. The same is true as to characters, quite independently of the plot proper. The less developed the characters, the less they can be ed; that is the penalty an author must bear for marking them too indistinctly. 3. Titles, names of characters, and phrases may also be protectable under unfair competition law and TM law Pictorial, Graphic, and Sculptural (PGS) Works a. Defined, 101; Scope of rights outlined in 113 b. Cts. dont judge artistic merit of the work other than to determine that the threshold of original expression has been attained c. Limitation on Scope of Protection for PGS Works: The Useful Article Doctrine and the Separability Test, 101 1. Applies only to PGS works - no counterpart for literary or musical works 2. The design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article, 101 a. Threshold issue is whether a work is a useful article at all - 101 Useful article Defined: An article having an intrinsic utilitarian function that isnt merely to portray the appearance of the article or to convey information. b. protection extends only to protected elements doesnt cover the whole configuration of the utilitarian article c. Physical v. Conceptual Separability 1. Minority Rule: Recognizes physical separability only 2. Majority Rule: a. Physical or conceptual separability is sufficient 1. Difference: Rug EX cant separate design from the rug, but can draw design separate - concept is different b. Supported by HR referencing physically or conceptually separable elements. (Brandir Intnl v. Cascade) 3. Tests: a. Physical Separability Test: Expressive element of a useful article is physically separable if it can stand alone from the article as a whole and if such separation doesnt impair the utility of the article 1. EX: Dress design: You cant separate out the design itself if you take it out, the dress disappears. Patterns may be separable, but cut of clothing isnt b. Conceptual Separability Tests: 1. Temporal Displacement Test (Judge Newmans dissent in Carol Barnhart) a. Aesthetic features are conceptually separable if the article stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function. b. Extremely difficult, if not impossible, to administer or apply. (Brandir Intnl v. Cascade) 2. Professor Denicolas Test, adopted in Brandir Intnl v. Cascade a. Elements are protectible if form and appearance reflect the unconstrained perspective of the artist - the work reflects artistic expression uninhibited by functional considerations; it reflects the designers artistic judgment exercised independently of functional influences b. If design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work arent conceptually separable from the utilitarian elements. c. Problem if the artist modified it so it would be more utilitarian. d. Parties must present evidence relating to the design process and the nature of the work, with the trier of fact making the determination whether aesthetic design elements are significantly influenced by functional considerations 1.

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Goldstein Test: Feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as a work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it. 3. Alternative Avenue for Protection: Design Patents, PA 171 a. One still must satisfy other requirements of the PA. b. Ornamental means non-utilitarian. CAFC held a design may have functional components as long as the design doesnt embody a function necessary to compete in the market. If the functional aspect of a design may be achieved by other design techniques, then it isnt primarily functional. 4. BOAT HULLS: DMCA affords designers of original boat hulls 10 years of protection. Act excludes from protection designs dictated solely by utilitarian function of the article, 1302(4). To secure protection, designer must register the work within 2 years of making the design public. Like patent law, the Act affords the owner the exclusive right to make, sell, import, or distribute for sale or any commercial use any hull embodying the design. Like law, 1308 doesnt impose liability for independently created designs. d. Photographs, drawings and maps: Limited range of expressive choices limits scope of protection afforded by law 8. Architectural Works a. Works Post - Dec. 1, 1990 1. Protection for design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. 2. The work includes the overall form and elements in the design, but doesnt include individual standard features, like doors, 101 3. Office considers functionality, using a 2-prong test: a. Whether there are original design elements present in the architectural work, including overall shape and interior architecture b. If such design elements are present, whether the design elements are functionally required 1. If no: Work is protectable without regard to physical or conceptual separability even the aesthetically pleasing overall shape of an architectural work is protected b. Works Pre Dec. 1, 1990 1. Governed by standard for PGS works; Protection limited by the useful article doctrine and the idea/expression dichotomy. Architectural structures, as opposed to the drawings for them, have little if any protection under law. c. The protection of 102(a)(8) is subject to two limitations set forth in 120, cant prevent someone from taking a picture and owners of the building can destroy or modify the building 9. Dramatic, Pantomime, and Choreographic Works a. Protection extends to written or otherwise fixed instructions for performing the work of art. b. A dramatic work portrays story by means of dialogue or acting. It gives direction for performance or actually represents all or a substantial portion of the action as actually occurring rather than merely being narrated or described. c. Distinguishing b/tween literary, musical, and dramatic works can be important in practice. Although the three types of works are often captured in the same form, i.e., written text, performance and display rights may vary depending on whether the work is dramatic or nondramatic, 110(2), 115 d. in pantomime and choreographic works inheres either in notation or, more commonly, in a film recording. Impromptu, unrecorded dancing isnt a protectable work b/c it isnt fixed in a tangible medium of expression. e. Many of the rules governing dramatic, pantomime, and choreographic works parallel rules for literary works. 1. for choreographic works doesnt extend to simple dance steps in social dance settings and protection for pantomimes doesnt extend to conventional gestures - both are akin to the short phrases denied protection among literary works. f. All 3 are entitled to protection against literal copying and against copying of their expressive elements, character, action, and dialogue. 10. Musical Works and Sound Recordings a. Musical Compositions Sheet Music/Lyrics/Etc: 1. protects musical works written on paper, pressed onto a phonorecord, recorded on audiotape, or otherwise fixed in a tangible medium of expression. 2. Must be original in its melody, harmony, or rhythm, individually or in combination. 3. Sheet music and lyrics are protectable as a musical composition, in much the same way a play or short story is protected. 4. Subject to a compulsory license (cover license) once released to the public - other recording artists can record their own versions of the ed composition, so long as they pay the statutory fee and follow the statutory procedure laid out in 115. a. Cant claim cover license exception if D substantially changes the song from its original version 5. A affords a general public performance right to owners of in the underlying musical compositions b. Sound recordings: 1. The recording the magnetically or electronically recorded version of the song is protectable as a separate work. 2. No compulsory license provision 3. Definition: Excludes sounds accompanying a motion picture or other audiovisual work, 101. Such recordings are protected as part of the motion picture or audiovisual work. 4. doesnt prohibit close imitations of an artists sound recording, sound-alike versions, 114(b), although such recordings may run afoul of the right of publicity and the FTCs unfair trade practice guidelines, one must still pay musical composer a royalty 5. A doesnt afford a general public performance right to owners of in sound recordings, except a limited exception for digital transmissions of the recordings 6. Extends protection to impromptu performances if they happen to be recorded and are therefore fixed in a tangible medium of expression. Audiovisual recordings of impromptu performances will have the same effect c. These 2 distinct works might have different owners, or one entity might own both. d. Policy for dual protection: Individuality in expression inevitably occurs during a particular performance of a prewritten musical work. The sound recording protects the individual artist from those who would copy her recorded work, regardless of who owns the to

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the music the artist performed. B/c the sound recording doesnt extend to the music itself, owners of sound recording s are unable to prevent nonliteral infringement - i.e., another groups recording of the same song e. 114 and 106 11. Motion Pictures and Other Audiovisual Works a. Definitions establish that sound tracks are an integral part of the motion pictures they accompany not separate musical works ELEMENT 1: ORIGINAL WORKS OF AUTHORSHIP, 102(a) 1. Originality requirement is a low burden a. Need only independent creation (not copied) more than a merely trivial variation, featuring a modicum of creativity b. Cts. dont judge artistic merit of a work. Compilations of facts protected, if they possess requisite originality (Feist) a. Author chooses which facts to include, in what order to place them, and how to arrange the collected data so they may be used effectively by readers. b. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original, even if directory only contains facts c. Selection and arrangement of facts cant be so mechanical or routine so as to require no creativity whatsoever. (Feist) 1. Selection, coordination, and arrangement of white pages dont satisfy minimum standard for protection. (Feist) 2. Nothing creative about arranging names alphabetically - so commonplace it has come to be expected as a matter of course (Feist) d. in a factual compilation is thin b/c protection extends only to those components of a work that are original to the author. (Feist) 1. A subsequent compiler may use the facts contained in anothers publication to aid in preparing a competing work, so long as the competing work doesnt feature the same selection and arrangement. No matter how much original authorship the work displays, the facts and ideas it exposes are free for the taking. (Feist) e. A compilation of cable television companies serving each community in the nation not able - communities listed alphabetically and selection not original b/c every community served was included. Fictional Factual Works a. If author writes a manuscript that she claims is fact, even though the work is fictional, that author wont be able to prevent another from appropriating these fictitious facts in another work on the basis of infringement, estoppel defense Maps are able but may have issues with originality: Original b/c author exercised sufficient creativity in the selection, coordination and arrangement of the facts the maps depict and the graphic artistry of the maps themselves sufficiently original to qualify for protection. (Mason v. Montogemary Data)

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ELEMENT 2: FIXATION IN A TANGIBLE MEDIUM OF EXPRESSION, 102(a) 1. An unfixed work of authorship (improvisation or an unrecorded choreographic work, performance, or broadcast) is subject to protection under State common law or statute, but isnt eligible for Federal statutory protection under 102. 301, which preempts state laws with the same scope as federal , expressly retains state laws that protect unfixed expression. Many states afford such protection. a. Exception: In 1994, Congress added 1101 to the Act, giving some protection to unfixed musical performances, by making it illegal to traffic in unauthorized recordings of a live musical performance Live broadcasts reaching public in unfixed form but before simultaneously recorded a. Look to definition of fixation in 101 b. The recorded work is considered a motion picture subject to statutory protection against unauthorized reproduction or retransmission of the broadcast if either: 1. The images and sounds to be broadcast are first recorded and then transmitted, or 2. The program content is transmitted live to the public while being recorded at the same time The definition of fixation excludes purely evanescent or transient reproductions like those projected briefly on a screen, shown electronically on a television or other cathode ray tube, or captured momentarily in the memory of a computer. Under the first sentence of the definition of fixed in 101, a work is fixed if there has been an authorized embodiment in a copy or phonorecord and if that embodiment is sufficiently permanent or stable to permit the work to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. The second sentence makes clear that, in the case of a work consisting of sounds, images, or both, that are being transmitted, the work is regarded as fixed if a fixation is being made at the same time as the transmission The fixation requirement arises in two separate portions of the Act: a. Requirement for protection, 102(a) b. To determine whether D infringed a 1. 106(1) provides a owner has the exclusive right to reproduce the ed work in copies or phonorecords and 101 of the act defines copies as material objects in which a work is fixed. Therefore, D doesnt infringe the right to reproduce unless she has reproduced ed work in fixed form. Historically, the practical effect of the fixation requirement has been to slow s adaptation to new technologies. Justification for Fixation Requirement: Constitution: Article I, 8, cl. 8 refers to writings, which could be interpreted to require a tangible fixation of the work.

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FORMALITIES 1. 2. Requirements imposed on authors by the govnt that are necessary to obtain protection but that dont relate to the substance of the Notice a. 1909 Act

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FL protected only works containing the following in the appropriate form and location, and the year of first publication a. The word Copyright, the abbreviation Copr., or the symbol b. The name of the holder 2. Notice had to be placed on the title page or the page immediately following 3. 21 excused omissions due to accident or mistake, although interpreted narrowly b. 1976 Act/Pre-Ratification of Berne Convention (January 1, 1978 March 1, 1989): 1. Protection upon creation of a work rather than upon publication 2. Congress kept notice requirement, but liberalized rules governing form and location of notice 3. Failure to give notice on a small number of copies wouldnt result in forfeiture; nor would even large-scale omissions, so long as they were inadvertent and the copyright holder registered the work within five years after publication and made reasonable efforts to give notice after the omission was discovered c. Post-Ratification of the Berne Convention: (Post 1989) 1. Eliminated notice requirement of US copyright law prospectively. Thus both the 1909 Act and 1976 Act (pre-Berne) regimes still apply with regard to works publicly distributed without proper notice prior to March 1, 1989. 2. Congress encouraged voluntary notice by precluding an alleged infringer from claiming innocent infringement in mitigation of actual or statutory damages except in limited circumstances if the copy to which she had access contained a proper notice d. Notice of copyright, in different forms, is required on all works created prior to 1989 (pre-Berne Convention) Publication a. 1909 Act: 1. Protection upon publication of the work 2. Unpublished works protected under state common law, or constructively published by registration with the Copyright Office. 3. Divestive v. Investive Publication a. Divestive publication resulted in forfeiture of common law copyright protection b. Investive publication resulted in forfeiture of federal copyright protection if notice inadequate 4. Common law claim of infringement: distribution must be quite large to constitute publication 5. Federal claim of infringement: requirements for publication quite narrow 6. Under both CL and FL infringement cases, cts. treat concept of publication to prevent piracy 7. The extent of distribution required to divest common law copyright protection is substantially greater than that required to invest, i.e., require notice for, a federal copyrighted work. 8. Ct. distinguished b/tween limited publication whereby distribution of copies to a definitely selected group and for a limited purpose, and without the right of diffusion, reproduction, distribution or sale didnt constitute a publication for purposes of the 1909 Act, and general publication, which operated to divest common law protection. (White v. Kimmell) 9. Cts generally found that public performance or display of a work didnt constitute publication unless tangible copies of the work were distributed to the public. 10. Unauthorized distribution didnt constitute publication b. 1976 Act / Pre-Ratification of Berne Convention: 1. Federal protection triggered by creation of a work fixed in a tangible medium of expression 2. CL copyright preempted. 3. Publication determines when notice is required. 4. Defined publication as distribution of copies or phonorecords of a work to the lay public by sale or other transfer of ownership, or by rental, lease, or lending. 5. Offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. 6. Public performance or display of a work doesnt of itself constitute publication. 7. Publication turns on physical transfer of copies to the public generally without disclosure restrictions or to a narrower group for purposes of distribution or dissemination. 8. Definition of publication expressly excludes public performance or display c. Post-Ratification of the Berne Convention: (1989) 1. Eliminated mandatory notice requirement, so publication no longer a factor in determining validity of works created after March 1, 1989. 2. Publication still has relevance for works created after March 1, 1989 in the following respects: a. Deposit: Deposit at the Library of Congress mandatory only for published works, 407 b. Works of Foreign Authors: Whereas all unpublished works are protected regardless of nationality or domicile of the author, published works of foreign authors are protected only under the conditions described in 104(b) c. Duration of Copyright Protection: The term of protection for entity owners and works for hire is 95 years from the year of first publication and 120 years from creation for unpublished works, 302(c) d. Library Photocopying: The reproduction rights of libraries depend on whether work has been published, 108(b),(c) e. Termination of Transfers: 203(a)(3) f. Certain Performance Rights: 110(9), 118(b),(d) g. Establishing Prima Facie Evidence of Validity of Copyright: Registration of copyright must occur within 5 years of first publication ( 410(c)) h. Damages: Statutory damages and attorney fees are available for published works only if registration preceded the infringement or if the work was registered within 3 months after publication, 412 Registration a. Registration has always been voluntary, but in a very limited sense US authors must register to sue. This requirement remains in effect today, in spite of US adherence to the Berne Convention

1.

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b.

5.

6.

1909 Act: 1. term ran 28 years, with author having right to renew the copyright for an additional 28 years. 2. Didnt require registration to obtain a copyright, but did require registration by the 28th year in order to renew the copyright. 3. Registration of the work was a prerequisite to bringing an infringement suit c. 1976 Act/Pre-Ratification of Berne Convention: 1. Abolished renewal and set a single copyright term, a copyright owner isnt required to register her work, but there are important incentives encouraging her to do so: a. Successful registration constitutes prima facie evidence of validity of the copyright, 410 b. holder must register the copyright before bringing an infringement action, 411 c. holder can obtain statutory damages and attorney fees only for infringements that occurred after registration or which occurred after publication if the work was registered within three months after publication d. holder need only file for registration of copyright and obtain a response before bringing suit. She is entitled to bring suit even if the Copyright Office rejects her registration application d. Post-Ratification of the Berne Convention: (1989) 1. To comply with the Berne Convention, Congress amended 411 to eliminate the requirement that copyright owners whose country of origin is another Berne member nation must register their works prior to instituting suits. However, Congress retained the requirement of registration prior to suit for domestic works, thereby imposing a greater burden on those who first publish in the US. 2. A works country of origin is the country in which it was first published, or in the case of unpublished works the country in which it was created Deposit a. 407 requires deposit of 2 copies of each work published in the US for which copyright is claimed within 3 months after publication. (Certain categories of works are exempted from the requirement). b. Enhances collection of the Library of Congress and promotes progress by spreading and making knowledge accessible. c. 1909 Act 1. Register of s could demand compliance with the deposit requirement - failure to comply could result in forfeiture of d. 1976 Act 1. Library deposit requirement, while still mandatory, doesnt affect validity of a or authors right to bring suit, 407. 2. Failure to comply gives rise to a fine, but no other penalty. e. A separate deposit with the Copyright Office is required for copyright registration by 408. However, this requirement may generally be satisfied by 407s Library Deposit. Failure to comply with the 408 deposit requirement results in a refusal to register the copyright b/c this deposit enables the Copyright Office to know what its registering. Restoration of Foreign ed Works a. US formality requirements at odds with other countrys rules. A number of foreign works that received copyright protection in their home country entered the public domain in the US b/c their authors failed to comply with formalities. b. 1994 TRIPS Agreement 1. Congress added 104A, which provides for restoration of copyright protection for certain foreign works that had lost protection in the US due to noncompliance with formalities imposed by US copyright law. 2. In effect, these works are retrieved from the public domain in the US and are treated in the same way as any other copyrighted works for purposes of duration, ownership, and so on. c. Problems Created by Restoration 1. protection in restored works isnt retroactive. However, owner does have the right to cut off future uses of the work after a limited grace period by giving the Copyright Office notice of her intention to enforce the copyright. 2. Derivative works based on the newly protected work: The act provides that authors of such derivative works may continue to exploit them, provided they pay reasonable compensation to the original copyright owner.

AUTHORSHIP/ OWNERSHIP AND DURATION 1. 2. 3. 4. Once a copyright is acquired, the entire bundle of rights is assignable or the owner may divide and transfer particular rights Unlike other property, s have limited duration, entering the public domain after the statutorily determined time The work must have been created by the party bringing suit, or rights in the work must have been transferred by the author to the party brining suit. Initial Ownership of Copyrights a. Individuals acquire upon creation, 201(a). b. ownership vests initially in the author or authors who create the work, 201(a) 1. Author is the party who actually creates the work - person who translates an idea into a fixed, tangible expression entitled to copyright protection, 102 c. EXCEPTION: Works for Hire 1. Works produced in the employment context or commissioned by a producer or publisher 2. Employer or other person for whom the work was prepared is considered the author and owns the copyright, unless there is a written agreement to the contrary, 201(b). 3. Classifying a work as made for hire determines the: a. Initial ownership of the copyright b. Copyrights duration, 302(c), and c. Owners renewal rights, 304(a); termination rights, 203(a); and right to import certain goods bearing the copyright, 601(b)(1) 4. TEST: Works Prior to 1978

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d.

Presumption that any works created within scope of employment or commissioned by independent contractors (at the instance and expense of the employer) vested in the employer. b. Presumption can be overcome by an express agreement to the contrary or other evidence suggesting an alternative intention of the parties, such as industry custom and lack of supervision or creative control by the employer. c. Policy Against: Freelance authors lacked bargaining power to reject contractual clauses designating their works as works made for hire 5. TEST: Works After 1978: a. 101, A work is for hire when: 1. A work is prepared by an employee within the scope of his employment, or 2. A work falls within one of nine enumerated categories a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, a test, answer material for a test, or an atlas and evidenced by a written agreement signed by both parties expressly stating that the work is intended to be a work made for hire. b. Meaning of employee (Community for Creative Non-Violence) 1. Term carries its common-law agency law meaning 2. Factors for determining whether a hired party is an employee under CL of agency, non of which is determinative a. Hiring partys right to control the manner and means by which the product is accomplished b. The skill required c. The source of the instrumentalities and tools d. The location of the work e. The duration of the relationship b/tween the parties f. Whether the hiring party has the right to assign additional projects to the hired party g. The extent of the hired partys discretion over when and how long to work h. The method of payment (A sum dependent on completion of a specific job is a method by which independent contractors are often compensated) i. The hired partys role in hiring and paying assistants j. Whether the work is part of the regular business of the hiring party k. Whether the hiring party is in business l. The provision of employee benefits, and m. The tax treatment of the hired party 6. Policy For Work for Hire Doctrine: a. Reduced transaction costs: A work for hire is deemed to be a corporate creation, so it neednt be assigned. In essence, it preassigns a work to the employer, eliminating costs of negotiation and executing assignment agreements. b. Circumvents the inalienability of termination of transfers. The work belongs to the employer ab initio, rather than by assignment. c. Automatic assignment may help solve holdout problems in compilations and multimedia works, where the publisher must compile the works of a number of authors. 7. Even if a work is created by an employee, it must also be within the scope of his employment in order to be deemed a work made for hire. Rest. 2d of Agency 228 Test: A servants work is deemed within the scope of his employment if: a. It is within the kind he is employed to perform b. It occurs substantially within the authorized time and space limits; and c. It is actuated, at least in part, by a purpose to serve the master 8. EXCEPTION: Universities cant claim to own professors works under the works made for hire doctrine. This exception finds little or no textual support in the 1976 Act. Some cts. conclude the Act abolished the teacher exception, but most work hard to find a way to keep the doctrine alive. Joint Works 1. 101, A able work prepared by 2 or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole a. If so, they are co-owners of the copyright in the work, 201(a) 2. Authorship (Aalmuhammed v. Lee) a. Authorship isnt the same thing as making a valuable and copyrightable contribution need more than just independent creative contribution b. Photographer is the author the person who has superintended the arrangement, who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be c. Author involved in originating, making, producing, as the inventive or master mind, the thing which is to be protected; the man who really represents, creates, or gives effect to the idea, fancy, or imagination d. Author is the person to whom the work owes its origin and who superintended the whole work, the master mind. e. Movies: Author is generally, in absence of a contract to the contrary, someone at the top of the screen credits, sometimes the producer, sometimes the director, possibly the star, or the screenwriter person with artistic control. 3. Intention (Aalmuhammed v. Lee) a. Each author must make an independently copyrightable contribution to the disputed work by contributing expression b. In determining whether the parties have the intent to be joint authors, the ct. looks at who has decision making authority, how the parties bill themselves, and other evidence 4. Several factors suggest themselves as among the criteria for joint authorship, in the absence of contract: 1. Whether the person exercised control - the inventive or master mind who creates or gives effect to the idea. 2. Whether there are objective manifestations of a shared intent to be coauthors. The best objective manifestation of a shared intent is a contract saying the parties intend to be or not to be coauthors

a.

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5.

Factual Inquiry: Different people do creative work together in different ways, and even among the same people working together the relationship may change over time as the work proceeds. 6. Coaching of actors, to be copyrightable, must be turned into an expression in a form subject to copyright 7. Cts. dont generally consider quality of the work for originality, but they apply a high threshold and more searching inquiry for determining joint authorship e. Collective Works 1. 201(c): Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole; and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and a later collective work in the same series 2. Defined: 101, A work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole f. Joint v. Collective Work: Joint work you can reproduce, collective works you cant Duration and Renewal, 302-05 a. Joint Works: term is measured from the death of the last surviving author, 302(b) b. 106A(d) governs duration of certain moral rights of visual artists

5.

Duration of Copyright Protection Protected From Term of Protection* When the work is fixed in a tangible Life of the author + 70 years (or, if work of corporate, medium of expression anonymous, pseudonymous entity, or work for hire, 95 years from publication, or 120 years from creation, whichever is less Published b/tween beginning When published with notice 28 years for first term; automatic renewal of 67 years for second of 1964 and end of 1977 term, 304(a) Published b/tween 1923 and When published with notice 28 years for first term; could be renewed for 67 years; if not so end of 1963 renewed, now in public domain Created before January 1, January 1, 1978, the effective date Life of the author plus 70 years or at least until 2003 if the work 1978, but not yet published of the 1976 Act which eliminated remains unpublished. If the work is published by 2003, term CL copyright protection expires in 2048 Sound recordings created Depends upon treatment under applicable state law. Any rights or remedies for such works under the CL prior to February 15, 1972 or statutes of any State shall not be annulled or limited by this title until February 15, 2047. 301(c) * Copyright terms run until the end of the calendar year in which they would otherwise expire, 305, thereby adding an additional period of up to one year for purposes of administrative convenience Date Work Created Created January 1, 1978, or later 6. Division, Transfer, and Termination of Transfers a. 202: Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object in which the work is first fixed doesnt of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object. 1. Thus author of a letter retains interests in the writing even though sent to the addressee. Addressee obtains ownership of the material object but may not infringe the copyright interests of the author. The addressee may view the object and show it to others, but he may not make copies, prepare derivative works, distribute the work, or perform or display the work publicly b. 201(d): 1. Ownership of may be transferred in whole or in part by any means of conveyance or by operation of law and may be bequeathed by will or pass as personal property by applicable laws of intestate succession 2. Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all the protection and remedies accorded to the copyright owner by this title. c. 101 defines transfer of copyright ownership to include an assignment or an exclusive license of any of the exclusive rights comprised in a copyright. Divisibility of copyright ownership enables any owner of an exclusive right to bring an infringement suit without having to join the copyright proprietor d. 204: Requires transfers of copyright ownership to be executed in writing and signed by the copyright owner. e. 205: Voluntary recordation of transfers with the Office and priority rules for resolving cases of conflicting transfers

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f.

g. h.

Termination of Transfers, 203(a) 1. Although parties are free to assign copyright interests, contract isnt a perfect substitute b/c of limitation on free alienability of copyright interests: Authors and their survivors have an inalienable power to terminate transfers of copyright b/tween the 35th and 40th year from the execution of the grant for works created after 1977, 203(a)(3). This termination of transfer rights may not be assigned in advance. 2. EXCEPTION: Transferee can prevent a termination of transfer by establishing the work was made for hire. a. For commissioned works, Congress limited this exception in 2 ways: 1. Allows only certain enumerated categories of works to be treated as works made for hire notice sound recordings not on the list 2. Requires the parties specifically agree in writing that the work shall be treated as a work made for hire 3. OLD RULE: For works in their second renewal term prior to 1978, 304(c) allows authors and their families to terminate transfers b/tween the 56th and 61st year of copyright protection for such works so as to allow them to profit for the 19 years of protection for such works added by the 1976 Act. Copyright owners may assign contingent renewal rights under the 1909 Act in advance. This power, however, doesnt apply to the additional 19 years of protection of the extended renewal term bestowed by the 1976 Act. 4. Policy: Better ensures that authors and their families are able to reap a fair portion of the benefits of the authors creative efforts. Congress concerned that authors had unequal bargaining power in negotiating rights with publishers and marketers resulting in part from the impossibility of determining a works value until it has been exploited. Gives struggling artists whos value isnt known or recognized at first, ability to bargain later, once widely recognized, to receive adequate compensation Assigned rights differ from works made for hire in certain other respects, such as the duration of copyright protection Ownership of can be determined in advance before the work is fully created

INFRINGEMENT 1. Direct Infringement: 501(a), P must prove: a. Ownership of a valid copyright b. A violation of any of the exclusive rights of the copyright owner as provided by 106 and 106A c. 3rd party conduct irrelevant in an action for direct infringement of respondents copyrights. (Sony) Contributory Infringement (3d Party Liability) a. Adequate protection of a monopoly may require cts. to look beyond actual duplication of a device or publication to the products or activities that make such duplication possible (Sony) b. Article of Commerce Doctrine: Sale of copying equipment, like the sale of other articles of commerce, doesnt constitute contributory infringement if the product is capable of commercially significant/substantial noninfringing uses. (Sony) 1. Where an article is good for nothing else but infringement, there is no legitimate public interest in its unlicensed availability, and there is no injustice in presuming or imputing an intent to infringe. Conversely, the doctrine absolves the equivocal conduct of selling an item with substantial lawful as well as unlawful uses, and limits liability to instances of more acute fault than the mere understanding that some of ones products will be misused. It leaves breathing room for innovation and vigorous commerce. (Grokster) 2. Sony barred secondary liability based on presuming or imputing intent to cause infringement solely from the design or distribution of a product capable of substantial lawful use, which the distributor knows is in fact used for infringement. (Grokster) c. In action for contributory infringement against seller of copying equipment, the copyright holder may not prevail unless the relief he seeks affects only his programs, or unless he speaks for virtually all copyright holders with an interest in the outcome. The seller of the equipment that expands those producers audiences cant be a contributory infringer if it has had no direct involvement with an infringing activity. (Sony) 1. Most use of VCR was fair use = cant be liable for others lawful uses d. In order for D to be a contributory infringer, user must be directly infringing. If user has fair use defense, no contributory infringement e. Inducement Theory of Contributory Infringment: One who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a contributory infringer. (Napster) 1. Knowledge: (Napster) a. Sony didnt hold manufacturer and retailers of video tape recorders liable for contributory infringement despite evidence the machines could be and were used to infringe Ps copyrighted works. Ct. declined to impute requisite level of knowledge where D made and sold equipment capable of both infringing and substantial noninfringing uses b. In an online context, evidence of actual knowledge of specific acts of infringement is required to hold a computer system operator liable for contributory copyright infringement c. For the operator to have sufficient knowledge, copyright holder must provide necessary documentation to show there is likely infringement. If such documentation is provided, D is liable for contributory infringement b/c its failure to remove the material and thereby stop an infringing copy from being distributed worldwide constitutes substantial participation in distribution of ed material d. If a computer system operator learns of specific infringing material available on his system and fails to purge such material from the system, the operator knows of and contributes to direct infringement. Absent any specific information which identifies infringing activity, a computer system operator cant be liable for contributory infringement merely b/c structure of the system allows for exchange of copyrighted material. To enjoin simply b/c a computer network allows for infringing use would violate Sony and potentially restrict activity unrelated to infringing use. 2. One who distributes a device with the object of promoting its use to infringe , as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by 3d parties (Grokster)

2.

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3.

2 Competing Interests: Balance b/tween supporting creative pursuits through protection and promoting innovation in new communication technologies by limiting liability for copyright infringement (Grokster) 4. When a widely shared service or product is used to commit infringement, it may be impossible to enforce rights in the protected work effectively against all direct infringers, the only practical alternative being to go against distributor of the copying device for secondary liability on a theory of contributory or vicarious infringement (Grokster) 5. Sonys rule limits importing culpable intent as a matter of law from the characteristics or uses of a distributed product. But nothing in Sony requires cts. to ignore evidence of intent if there is such evidence. Thus, where evidence goes beyond a products characteristics or the knowledge that it may be put to infringing uses, and shows statements or actions directed to promoting infringement, Sonys staple-article rule doesnt preclude liability. (Grokster) 6. Evidence of active steps taken to encourage direct infringement, such as advertising an infringing use or instructing how to engage in an infringing use, show an affirmative intent that the product be used to infringe, and a showing that infringement was encouraged overcomes the laws reluctance to find liability when D merely sells a commercial product suitable for some lawful use. (Grokster) 7. One who distributes a device with object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by 3d parties. Mere knowledge of infringing potential or of actual infringing uses isnt enough to subject a distributor to liability. Nor would ordinary acts incident to product distribution, such as offering customers technical support or product updates, support liability in themselves. The inducement rule premises liability on purposeful, culpable expression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful promise. (Grokster) 8. Trying to prove by Ds own statements that his unlawful purpose disqualifies him from claiming protection. 9. If device otherwise is capable of substantial noninfringing uses, ct. cant find contributory infringement liability based merely on a failure to take affirmative steps to prevent infringement, in the absence of other evidence of intent. (Grokster) 10. Breyer, concurring: Advantages of Sony Rule (Grokster) a. Sonys rule provides entrepreneurs with needed assurance that they will be shielded from copyright liability as they bring valuable new technologies to market. b. Sonys rule is clear, allowing developers of new products capable of substantial noninfringing uses to know, ex ante, that distribution of their product wont yield massive monetary liability. At the same time, it helps deter them from distributing products that have no other real function than or that are specifically intended for infringement c. Sonys rule is strongly technology protecting. The rule deliberately makes it difficult for cts. to find secondary liability where new technology is at issue. Sony thereby recognizes that the laws arent intended to discourage or to control the emergence of new technologies, including (perhaps especially) those that help disseminate information and ideas more broadly or more efficiently. Thus, Sonys rule shelters VCRs, typewriters, tape recorders, photocopiers, computers, cassette players, cd burners, DVRs, mp3 players, Internet search engines, and P2P software. But Sonys rule doesnt shelter descramblers, even if one could theoretically use a descrambler in a noninfringing way. d. Sonys rule is forward looking. By referring to a capacity for substantial noninfringing uses, scope covers current and future uses. e. Sonys rule is mindful of the limitations facing judges where matters of technology are concerned. Judges have no specialized technical ability to answer questions about present or future technological feasibility or commercial viability where technology professionals, engineers, and venture capitalists themselves may radically disagree and where answers may differ depending upon whether one focuses upon time of product development or time of distribution. f. Counters Ginsbergs argument for a more stringent standard Vicarious copyright infringement (Napster) a. D is vicariously liable if he has: 1. The right and ability to supervise the infringing activity, and a. The ability to block infringers access to a particular environment for any reason whatsoever is evidence of the right and ability to supervise b. To escape liability, the reserved right to police must be exercised to its fullest extent. Turning a blind eye to detectable acts of infringement for the sake of profit gives rise to liability. c. Failure to police the conduct of the primary infringer = vicarious liability for copyright infringement. 2. A direct financial interest in the direct infringement a. Financial benefit exists where the availability of infringing material acts as a draw for customers. Financial benefit can be shown where infringing performances enhance the attractiveness of a venue

3.

RIGHTS OF A COPYRIGHT OWNER, 106 1. Right to Make Copies, 106(1) a. Independent development of a similar work is perfectly legal. Only copying whether directly proven or inferred is infringement. b. 106: A copyrighted work is infringed by reproducing it in whole or in any substantial part, and by duplicating it exactly or by imitation or simulation. Wide departures or variations from the copyrighted works would still be an infringement as long as the authors expression rather than merely the authors ideas are taken c. Problem: Many copyrightable works intermingle original expression with public domain materials, ideas, facts, stock literary elements, scenes a faire, and other nonprotectable elements d Elements for Infringement: (Arnstein v. Porter) a. Copying of a copyrighted work 1. Evidence may consist of: a. Direct evidence: D admits he copied; eyewitness testimony; records indicating one author obtained the work from another; distinctive flaws in a work; etc.

26

b.

Circumstantial evidence: Different Cts. Use Different Approaches 1. 2d Circuit: Arnstein v. Porter Approach a. Either 1 or 2, and 1. Access to Ps work, from which the trier of facts may reasonably infer copying 2. If evidence of access is absent, striking similarity so as to preclude possibility that P and D independently arrived at the same result b. Substantial Similarity 1. If no similarities, no amount of evidence will suffice to prove copying c. Ct. uses dissection and expert testimony may be received to aid trier of fact 2. 7th Circuit: P must present sufficient evidence to support a reasonable possibility of access b/c the jury cant draw an inference of access based upon speculation and conjecture alone (Selle v. Gibb) 3. Posner tried to harmonize the 7th and 2nd Circuit tests by characterizing Selle as dealing with a situation in which 2 works may be strikingly similar, even identical, not b/c one is copied but b/c both are copies of the same thing in the public domain. Access may be inferred when 2 works are so similar to each other and not to anything in the public domain that it is likely the creator of the second work copied the first, but the inference can be rebutted by disproving access or otherwise showing independent creation. (Ty v. GMA) The copying was unlawful appropriation 1. Whether D appropriated sufficient material to violate Ps rights 2. Total Concept and Feel Test: Whether the work is recognizable by an ordinary observer as having been taken from the copyrighted source. (Roth Greeting Cards) 3. Hands Level of Abstraction Test: (Nichols v. Universal) a. If literal copying: Whether the part so taken is substantial, and therefore not a fair use of the copyrighted work b. However, plagiarist often takes an abstract of the whole rather than blocks of the work. Upon any work, especially plays, a great number of patterns the use of his ideas, to which, apart from their expression, his property is never extended. 1. For plays, controversy chiefly centers upon characters and sequence of incident. 2 plays may correspond in plot closely enough for infringement and the same may be true of characters, independently of the plot 2. The less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly 4. Test For Improper Appropriation: 9th Circuit bifurcates the analysis into an objective and subjective test: a. Extrinsic Test: Objective test analytically dissects the objective manifestations of creativity (plots, themes, dialogue, mood, setting, pace, sequence, characters) in Ps work to determine which elements are protectable 1. Uses dissection and expert testimony b. Intrinsic Test: Trier of fact, applying a purely subjective perspective, determines whether Ds work improperly appropriates the Ps protected expression 1. Hard for jury to make the correct distinctions; must be instructed the only thing protected is that for which P is the author c. One must delineate what the fact finder compares in deciding whether two works are substantially similar. Cts. differ in how to do this. 1. Some cts. hold the fact-finder shall compare the entirety of the 2 works, including the unprotectable elements 2. Others exclude nonprotectable elements from the comparison 5. Fragmented literal similarity: Cases where D copied distinct literal elements of Ps work and incorporated them into a larger work of his own. a. Test: Whether similarity relates to matter which constitutes a substantial portion of Ps work not whether such material constitutes a substantial portion of Ds work. b. Quantitative relation of the similar material to the total material contained in Ps work is certainly of importance. However, even if the similar material is quantitatively small, if it is qualitatively important the trier of fact may properly find substantial similarity. In such circumstances D may not claim immunity on the ground the infringement is such a little one. If, however, the similarity is only as to nonessential matters, then a finding of no substantial similarity should result 6. 2d Circuit Lay Observer Test for Substantial Similarity: Whether the ordinary observer, unless he set out to detect the disparities b/tween the two works, would be disposed to overlook them and regard their aesthetic appeal as the same. (Arnsten v. Porter) a. Some cases narrow the ordinary observer perspective: focus on impressions of the target audience for the work b. Some cts. have loosened the requirement Instead ask whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. P neednt meet the severe ordinary observer test. The copying neednt be of every detail so long as the copy is substantially similar to the copyrighted work. (Steinberg v. Columbia Pictures) c. Dissection and expert testimony are irrelevant d. In some cases, similarities b/tween P and Ds work are so extensive and striking as, without more, both to justify an inference of copying and to prove improper appropriation. e. The proper criterion isnt a comparison of the respective musical compositions as they appear on paper or in the judgment of trained musicians. 1. Justification: Ps legally protected interest is his interest in the potential financial returns from his compositions which derive from the lay publics approbation of his efforts

b.

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2.

At trial, P may play the pieces for the jury. P may call witnesses whose testimony may aid the jury in reaching its conclusion as to the responses of such audiences. Expert testimony of musicians may also be received, but it wont be controlling on this issue it should only be used to assist in determining reactions of lay auditors. 1. Experts used to educate the jury about what the relevant public (12 year old girls, 17 year old boys, country music fans, tec) perceives g. Problems with the Lay Observer Test: 1. Hard to apply if there is a 3rd piece in the public domain 2. Get difficult subject matter: software 3. Get targeted audiences 4. Sometimes design is composed of objects solely in the public domain, but expression of those objects is protectable 7. No plagiarist can excuse the wrong by showing how much of his work he didnt pirate infringement may occur by reason of a substantial similarity that involves only a small portion of the work, especially if qualitatively significant(Steinberg v. Columbia Pictures) 8. While evidence of independent creation by D rebuts Ps prima facie case, absence of any countervailing evidence of creation independent of the copyrighted source may well render clearly erroneous a finding that there wasnt copying (Steinberg v. Columbia Pictures) 9. Where proof of access is offered, the required degree of similarity is somewhat less than that necessary in the absence of such proof. (Steinberg v. Columbia Pictures) c. Cts. often loosely use the term substantial similarity in referring to both comparison of similarity in assessing circumstantial proof of copying and the comparison of substantial similarity in assessing improper appropriation, but it has different meaning depending on the stage of the analysis. 1. The degree of similarity required to establish circumstantial proof of copying is gauged along a sliding scale and incorporates objective criteria. 2. The substantial similarity standard applied in assessing improper appropriation is completely subjective and is premised upon a finding that copying has occurred. d. Copying and Improper appropriation are issues of fact; Issues of credibility should be left to the jury, even if Ps story seems improbable e. Copying may occur (and rise to the level of infringement) even though it is completely unintentional f. Potential Ds sometimes go to great lengths to avoid having access to works that might influence them. Movie studios and television producers return unsolicited scripts unopened. In the computer industry, program developers occasionally prepare new programs in clean rooms, in which procedures are established to regulate the entry and exit of material from the location where the work is being created and the creative process is carefully documented. g. Limitations on the Exclusive Right to Copy 1. Libraries, 108 a. Public library or archives can make one copy of a work for the preservation and replacement of existing works, but only if the work cant be replaced by purchase at a fair price. b. Libraries can make single copies for noncommercial users, as long as the library doesnt engage in systematic reproduction or distribution of such copies. c. Libraries arent liable for copyright violations by their patrons (even those using on-site photocopiers), as long as it posts conspicuous warnings notifying users of the copyright laws. 2. 112 and 118(d): Broadcasters can make ephemeral or ancillary copies of certain performances and displays during the course of broadcasting. EX: Broadcasters can make a copy during course of retransmitting a program. 3. 115: One can record a musical composition upon payment of a royalty determined by a formula specified in the statute. But, artists cant record anothers musical compositions if they havent been recorded with permission at least once before. Doesnt permit new artists to make substantial changes in the work recorded, except to the extent necessary to adapt the work to a new genre 4. 1008: Consumers can make copies of sound recordings for noncommercial use. Manufactures of DAT decks and tapes must pay a royalty to the Office for distribution to owners. Sale of DAT decks that can copy copies is prohibited. 5. 111: Compulsory Licenses Derivative Works and Compilations, 106(2) a. Derivative Work Defined: Works based on the original but in different forms or otherwise altered (translations, movies based on books, etc). A work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a derivative work b. Compilations: Defined: Work formed by collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. Includes collective works, 101. 1. Collective Work: A work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole. c. Overlaps with the right to make copies d. in a derivative work/compilation extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, 103(b), and is independent of the of the preexisting work e. Policy for granting separate copyright protection to the original elements of a derivative work: 1. Derivative works at the end of a chain of related works may bear little resemblance to the original copyrighted work. 2. Protects new expression derived from works already in the public domain

f.

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3.

3. Derivative works often capture different markets 4. May facilitate division of ownership b/tween the original author and his licensees f. The total concept and feel - common phrase used by the cts. g. All elements of the work, including text, arrangement of text, art work, and association b/tween art work and text, must be considered as a whole (Roth Greeting Cards) h. Rights of Authors and Publishers in Electronic Compilations 1. 201(c): When a copyrighted work is contributed to a collective work, the copyright in the collective work (held by its publisher) is separate from the copyright in the component works (held in the first instance by the authors). Unless the parties agree otherwise, the owner of the copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series without the permission of the authors 2. When a collective work such as a magazine or law review is put on the Internet, publishers have treated the electronic version of their publication as if it were the same as the print version. They have acted as though they had the rights to authorize the online use or reproduction of articles from their magazine 3. However, removing articles from their context as part of a collective work and placing them into searchable databases as separate files goes beyond the 201(c) privilege (NY Times v. Tasini) 4. Many publishing and recording contracts today contain clauses assigning rights to all media now known or ever invented within the universe or some variation i. In some circuits a work is derivative if it would be considered an infringing work of the material which it had derived and had been taken without consent of the copyright proprietor of the prior work. (Anderson v. Stallone) 1. Copying names of characters is highly probative evidence of infringement he has appropriated the significant elements of protected expression in the characters 2. Where there is literal similarity it isnt necessary to determine the level of abstraction at which similarity ceases to consist of an expression of ideas since literal similarity by definition is always a similarity as to the expression of ideas j. 103(a): Subject matter specified by 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists doesnt extend to any part of the work in which the material has been used unlawfully. 1. Policy: Prevents an infringer from benefiting, through copyright protection, from committing an unlawful act, but preserves protection for those parts of the work that dont employ the preesxisting work. (Anderson v. Stallone) 2. The effect of 103(a) is to deny copyright to derivative works, and only apply to compilations. Derivative works are assumed to employ the infringing work throughout. Therefore, in a compilation the non-infringing portion is deemed protected, but if a derivative work, no part of the work could be protected. (Anderson v. Stallone) 4. 103(a) allows an author whose authorship is the arrangement or ordering of several independent works to keep the copyright for his arrangement even if one of the underlying works he arranged is found to be used unlawfully. The infringing portion is easily severable and the scope of the compilation authors own work is easily ascertainable. k. Derivative work must be substantially different from the underlying work to be able l. 103: New expression contained in a derivative work is separately copyrightable. 103(b) extends copyright only to new expression, and not to preexisting material included in the derivative work. Interestingly, 103(a) provides that only the original author or a licensee is entitled to a copyright in the derivative work. This means that if an infringer makes a movie out of a copyrighted book, adding substantial expression of her own in the process, she isnt entitled to a copyright in any portion of the movie in which infringing material appears m. Unlike patent law, which allows later inventors to obtain a patent on his improvement even though that improvement also infringes another patent, prohibits a later creator from appropriating and adding to the copyrighted material of an original creator 1. Policy: Protects reputational interest of authors - By requiring ex ante licensing of anyone who wishes to incorporate a copyrighted work into another work, the law ensures that the owner of the copyrighted work will completely control all manifestations of it. Thus, derivative works rules allow a moral rights aspect to creep into US law - the strong protection given derivative works affords the original copyright owner control over alterations or improvements upon her work n. Speeded up or similarly altered works: 1. Unclear whether speeded-up or similarly altered video games are derivative works. A speeded-up video game is a substantially different product from the original game. It is more exciting to play and requires some creative effort to produce. Thus, owner of the copyright on the game might be entitled to monopolize it on the same theory that he is entitled to monopolize the derivative works specifically listed in 101 2. A speeded-up phonograph record probably isnt - there being no change in the tune or lyrics, it isnt a new work 3. Test: Whether the additional value to the copyright owner of having the right to market separately the altered version of the work is too trivial to warrant legal protection for that right o. Can have a derivative work without copying: Ex: artwork tile cases p. To get your derivative work protected, it must be fixed in a tangible medium of expression, but does an infringing derivative work have to be fixed in a tangible medium of expression? 1. Yes: 101 Def. of Derivative Work: Says any other form in which a work may be recast, transformed, or adapted, suggesting it must be more permanent than just fleeting 2. No: 101 Def. of Derivative Work: No requirement that it must be fixed in a tangible medium of expression Distribution, 106(3) a. Right to control the sale and distribution of the original and all copies or derivative works, including licensed copies. b. LIMITATION: The First Sale Doctrine 109(a) a. Right extends only to the first sale of such works. A copyright holder cant restrict what a purchaser of a particular lawful copy does with that copy, purchaser cant copy it, but may resell it without restriction or liability b. Some cases reason the first sale doctrine doesnt apply to works made or transmitted by computer. Some cases have held that loading a file into computer memory makes a copy of that file

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Economics Justification: The artist is entitled to make copies of her work and sell them. For each of these copies, the market determines how much they are worth. Customer has paid the copyright holder this value, b/c it was sold for as much as the copyright holder wanted for that particular copy. Any profit the customer then makes from the resale is his own the copyright holder doesnt have right to any extra b/c theyve already been paid c. Reconciliation of the distribution right and the first sale doctrine is controversial in cases where purchasers of cards and books containing artwork have mounted and affixed the pictures on ceramic tiles which they then sold 1. Some cts. find the process of attaching art from a book onto ceramic tiles constitutes the preparation of a derivative work. a. These cts. reject the first sale defense, arguing that although D could purchase a copy of Ps book and subsequently alienate its ownership in that book, the right to transfer applies only to the particular copy of the book which appellant purchased and nothing else b. The mere sale of the book to the appellant without a specific transfer by the copyright holder of its exclusive right to prepare derivative works doesnt transfer that right to appellant. The derivative works right remains unimpaired and with the copyright proprietors. 2. 7th Cir. reached contrary result, holding the mere mounting of pictures on tiles didnt rise to the level of originality required to create a derivative work and that the first sale doctrine immunizes Ds from liability for unauthorized distribution d. Right to import: a. Manufacturers often sell goods in multiple national markets, sometimes pricing goods differently depending upon supply (cost of manufacturing locally, advertising expense) and demand (income, tastes, availability of substitutes) conditions b. To preserve these price differentials across national borders, copyright owners sought protection against unauthorized imports c. 602 prohibits importation into the US of copyrighted works acquired abroad 1. Contains various exceptions such as importation of works for govnt use (but not for schools and excluding audiovisual works (except for archival purposes)), personal use (limited numbers of copies), and scholarly, educational, or religious purposes (also subject to specified limitations) d. Relationship between right to import and the first sale doctrine has generated tension 1. Problem: Company sells at a cheaper price abroad, another buys the goods, re-imports them into the US, and sells them at a discounted rate - SC held the first sale doctrine applies since goods were lawfully made under 109 2. Where imported products are manufactured abroad with the authorization of the copyright owner, purchased lawfully there, and then re-imported into the US, lower cts. hold the first sale doctrine doesnt nullify the 602 importation right 3. 602 is qualified by 109(a) 4. Any copyright on a label is going to effect the importation of the product to which the label is attached e. Policy for the distribution right: a. To control the right of first publication b. May make it easier to find and sue infringers. Distributors may be easier to identify than original copiers b/c they operate on a larger scale, and there may be fewer to go after. Suing distributors may also be more palatable to copyright owners in some cases than suing actual infringers f. Author has important right to choose if and when he will publish. a. Policy: Author and public both benefit by assuring authors the leisure to develop their ideas free from fear of expropriation. This outweighs any short-term news value to be gained from premature publication of the authors expression. b. Authors control of first public distribution implicates not only his personal interest in creative control but also his property interest in exploiting prepublication rights, which are valuable and serve as a valuable adjunct to publicity and marketing Public Performance and Display Rights, 106(4) and (5) a. Extends to computer programs and other audiovisual works. b. Owner generally doesnt have the right to prevent display of a particular original or copy of a work of art in a public place c. Architectural Works Excluded: No public display right exists in architectural works. Thus, not infringement to show a house where people can see it d. Sound Recordings: Limited public performance right - covers only digital performance of sound recordings 1. Playing music over the airwaves doesnt infringe copyright in the sound recordings played (However, copyright in the musical composition is infringed by public performance unless a royalty is paid to the composer) e. Performance v. Display: 1. Performance and display rights roughly parallel each other; most copyrighted works are covered by one or the other, 101 a. If it moves, its a performance b. If it stays still, its a display 2. Distinction is important b/c the scope of the exclusive protections is different 3. Performance: a. Any act taken to make a work perceivable to the viewer or listener, or cause a work to be reproduced (even in a transient form that doesnt create a copy under 106(1)) is a performance. b. EX: Playing a CD or videotape, reading a book aloud, or dancing a work of choreography c. Some cts. limit definition: Play in 101 is limited to the playing of sound recordings. Therefore, playing a board game in a national games tournament isnt a performance of the game (Allen v. Academic Games League) 4. Display: a. Definition of a display is limited by 109(c), providing that the owner of a particular copy of a work is entitled to display it to viewers present at the place where the copy is located. b. The limitation allows most common displays of a work including those works fixed at a single location from which they are visible to the public c. Showing artwork in a gallery without authorization isnt copyright infringement; however, showing the same piece of art through a television broadcast or over a computer network would infringe the display right f. Public Defined

c.

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g.

If the place of performance or display is open to the public, it doesnt matter how many people actually view the performance. Clause (2) appears to cover all broadcasts to the public even if members of the public dont view the copyrighted work at the same place or time. Thus a television broadcast is a performance, even though no one may watch it at all, or if people only watch it in the privacy of their own homes. 2. Video Rental Stores: 3d Circuit held video rental stores cant provide viewing rooms for customers b/c performance of a rented movie in such a room is public (even though the room is rented only to one group at a time) 3. A telephone booth, a taxi cab, and even a pay toilet are commonly regarded as open to the public, even though they are usually occupied only by one party at a time Statutory Limits on Performance and Display Rights a. Fair use, 107 b. Public Interest Limitations, 110 1. Most live educational performances and displays are exempt under 110(1), as are transmissions to classrooms or for other laudable purposes, 110(2) 2. Religious performances and displays are exempt under 110(3) 3. Face-to-face performances of nondramatic literary or musical works for free or for charitable purposes are exempt, 110(4). 4. Record stores may play records without charge to promote their sale under 110(7), although the closely analogous performance of videos in video stores without permission is likely prohibited 5. Fairness in Music Licensing Act, 1998: Congress substantially broadened an exemption for home listening of transmitted performances to extend to small businesses (less than 2,000 square feet), restaurants (less than 3,750 square feet), and larger establishments conforming to limitations on the number of loudspeakers and television screen size. 110(5). These establishments would still require a public performance license from the musical composition owner to host live or taped performances. Also provides a new process by which establishment owners can challenge the royalty rates set by performing rights societies. Provisions are contained in 512 1. May 2000, WTO panel found the Act to be in violation of the TRIPs Agreement and the Berne Convention for the Protection of Literary and Artistic Works. Although member nations may craft limited exceptions that dont conflict with a normal exploitation of the work and dont unreasonably prejudice the legitimate interests of the rights holder, the WTO panel concluded that 110(5) operated on too large a scale. b. Rather than appeal the WTO decision, the US has indicated its intention to amend 110(5) and has agreed to pay approximately 1.1 million in damages /year until it brings its law into compliance c. Compulsory Licenses 1. TV Broadcast: 111 authorizes television broadcast relays, or secondary transmission, under a variety of circumstances where they arent for profit and arent content-controlled. a. EX: Owner of an apartment building with a single reception antenna may relay its signal to residents of the building without charge. 2. Cable TV: Cable systems are entitled to transmit television broadcasts over their networks and charge a fee for the service, provided that the cable network registers its intent to do so and pays a royalty based on the revenues it receives from subscribers. The royalty rate is set forth in the statute. a. Disputes resolved privately or through ad hoc arbitration panels. b. Cable companies cant delay or alter the programming they relay from television broadcasts 3. Satellite TV: 119 provides a similar right to a compulsory license for satellite transmission to unserved households that is, households that dont receive the normal transmission signal from a particular network or other station, either through broadcast or cable. Satellites may broadcast the signal of those stations to subscribing recipients upon the payment of a royalty. a. Unlike 111, however, 119 doesnt specify the royalty rate. The rate is subject to voluntary negotiation or compulsory arbitration b/tween the satellite owner and the individual stations or networks 4. Cover License: 115 entitles musicians and record companies to make and sell their own recordings of copyrighted musical works that have previously been recorded with permission by another artist, as long as they pay a set fee to the copyright owner and dont change the basic melody or fundamental character of the work. 5. Jukeboxes: 116 authorizes owners of jukeboxes (coin-operated phonrecord players), to publicly perform the musical works contained in the jukebox subject to a compulsory license. This compulsory license, like that in 111, is fixed by statute 6. PBS: 118 authorizes public broadcasting stations to transmit musical and artistic (but not literary or audiovisual) works upon payment of a compulsory license. This section doesnt, however, set royalty rates. Rather, it requires public broadcasters and owners of such works to negotiate a rate every 5 years under supervision of the Librarian of Congress 7. Digital Sound Recordings: 114(d)-(j) limits the newly created right of performance in digital sound recordings, both restricting the scope of the new right and creating a compulsory license mechanism to be invoked should the parties fail to agree on an appropriate royalty d. Exclusions: Under 112, entities authorized to transmit a performance or display are allowed to make and keep a small number of copies for archival and security purposes in some (but not all) cases, but may not otherwise use or claim derivative rights in those copies. 1.

MORAL RIGHTS, 106A 1. Normally include: a. Right of Attribution: Right to have ones name associated with ones work b. Right of Integrity: Right to protect ones works from mutilation or distortion Limited set of moral rights for a limited class of works, 106A a. Include the artists right to:

2.

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3.

4.

1. Claim authorship of the work 2. Prevent the use of her name on works she didnt create 3. Prevent the use of her name on works that have been modified or distorted 4. Get limited rights to object to the modification or destruction of their original works. b. 106A and 113(d) place important limitations on these rights, however. 1. Applies only to visual art, which 101defines as a very limited category of objects 2. (a)(3)(B): Applies only to works of recognized stature 3. If the author is dead, 106A doesnt prohibit mutilation of a work 4. Moral rights arent transferable author has them for life and through the end of that calendar year. Berne Convention speaks of an authors retaining such rights even after relinquishing the copyright. Author can waive the moral rights though. Ratifying the Berne Convention: a. Congress concluded existing federal and state protections satisfied Article 6 moral rights obligations. b. LH noted rights under 106; 115(a)(2)(relating to distortions of musical works under the compulsory license); 203(termination of transfers); LA 43(a) (relating to false designations of origins and false descriptions); state and local laws relating to publicity, contractual violations, fraud and misrepresentation, unfair competition, defamation, and invasion of privacy; and new state statutes in 8 states protecting rights of integrity and paternity in certain works of art. Artists have also sought moral rights protection under a variety of legal theories other than 106A a. LA: Mutilation actionable under the LA - sufficient to violate the LA that a representation of a product, although technically true, creates a false impression of the products origin (Serra v. General Services Administration) b. Publication of public domain fairytales edited in a form substantially similar to Ps books violated Ps right of attribution under the LA, and that failure to attribute quotes taken from Ps work to the P doomed a fair use defense under copyright law c. Altering a copyrighted work created an infringing derivative work, even though the alteration didnt involve making of a new copy. (Mirage Editions v. Albuquerque A.R.T.)

FAIR USE DEFENSE TO COPYRIGHT INFRINGEMENT, 107 1. 2. 3. Fair Use is an affirmative defense 107 EXs of Fair Use: Criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research 107 Factors: a. Purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes 1. Commercial use is presumptively unfair. Non-commercial use is presumptively fair use. Profit/nonprofit distinction isnt whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price (Harper & Row) a. Since most secondary users seek at least some measure of commercial gain from their use, unduly emphasizing the commercial motivation of a copier will lead to an overly restrictive view of fair use. However, status as a for-profit company isnt irrelevant to the fair use analysis. Must consider the nature and objectives of the user. (American Geophysical Union v. Texaco) 2. Factors: (Harper & Row) a. Whether the use had the intended purpose of supplanting holders commercially valuable right of first publication. b. The propriety of Ds conduct - fair use presupposes good faith and fair dealing c. The value obtained by the secondary user from the use of the copyrighted material d. Whether use was to benefit the public or primarily for the commercial interests of the infringer 1. Cts. are more willing to find a secondary use fair when it produces a value that benefits the broader public interest. The greater the private economic rewards reaped by the secondary user (to the exclusion of broader public benefits), the more likely the first factor will favor the copyright holder and the less likely the use will be considered fair (American Geophysical Union v. Texaco) e. Whether it is a transformative use (American Geophysical Union v. Texaco) 1. The more transformative the new work, the less significant the other factors are that may weigh against a finding of fair use 2. To the extent the secondary use involves merely an untransformed duplication, the value generated by the secondary use is little or nothing more than the value that inheres in the original. Rather than making some contribution of new intellectual value and thereby fostering the advancement of the arts and sciences, an untransformed copy is likely to be used simply for the same intrinsic purpose as the original, thereby providing limited justification for a finding of fair use. 3. To the extent the secondary use adds something new, with a further purpose or different character, the value generated goes beyond the value that inheres in the original and the goal of copyright to promote science and the arts is generally furthered 4. Converting into a different format can have significant independent value f. Whether archival copies: (American Geophysical Union v. Texaco) 1. Defined: Done for primary purpose of providing numerous people each with his own personal copy of each article without having to purchase another original journal 2. Tilts against fair use - although archival use isnt dispositive of infringement a. Justification: Making copies to be placed on the shelf in an office is part of a systematic process of encouraging employees to copy articles so as to multiply available copies while avoiding payment b. Nature of the copyrighted work

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Determination of how expressive the work really is. Not all copyrighted works are entitled to the same level of protection. Protection doesnt extend to ideas or to functional or factual aspects of the work, or to expression merged with the facts. Works of fiction receive greater protection than works that have strong factual elements, such as historical or biographical works, or works that have strong functional elements, such as accounting textbooks. Works that are merely compilations of fact are copyrightable, but the copyright in such a work is thin. (Sega) 2. Unpublished Works: a. Fact that Ps work is unpublished is a factor tending to negate fair use b/c authors right of first publication is significant encompasses not only the choice whether to publish at all, but also the choices of when, where, and in what form first to publish a work. (Harper & Row) b. ed works that are kept private are entitled to protection b/c the privacy of the author is implicated. In recognition of concern that strong protection for unpublished works could adversely affect historical research and other important values reflected in the fair use doctrine, Congress amended 107 to add: The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the 107 factors. The extent to which this provision reequilibriates the balance in favor of the use of unpublished works remains unclear. LH expressly approves Harper & Row statement that the unpublished nature of the work is a key though not necessarily determinative factor tending to negate the defense of fair use. (Harper & Row) c. Amount and substantiality of the portion used in relation to the copyrighted work as a whole, and 1. Even if only a small portion of the protected work is used, still liable if what is taken is the qualitative heart of the work. 2. Even if only a small portion of the infringing work is, no plagiarist can excuse the wrong by showing how much of his work he didnt pirate (Harper & Row) a. Percentage of the potentially infringing work composed of copied material is particularly noteworthy in suits against movies and television show creators, alleging that the movie or show infringes the copyright of a work shown briefly in the background of the film. In these cases, the copyrighted work (a chair, a sculpture, a poster, or a song) may be taken in its entirety, but it is generally a miniscule portion of Ds work. Cts. dealing with these cases have come to different conclusions under the fair use doctrine 3. Cts. differ at whether proper to look only at portion of infringing work or protected work used d. Effect of the use upon the potential market for or value of the copyrighted work 1. Most important factor - Fair use limited to copying by others which doesnt materially impair the marketability of the copied work (Harper & Row) 2. To negate fair use one need only show that if the challenged use should become widespread, it would adversely affect the potential market for the ed work. This inquiry must take account not only of harm to the original but also of harm to the market for derivative works (Harper & Row) 3. Even copying for noncommercial use may impair holders ability to obtain the rewards Congress intended him to have. (Sony) 4. Ct. must bear in mind the precise ed works, and recognize nature and history of the potential market for or value of these particular works. Separate analysis for: (American Geophysical Union v. Texaco) a. Impact on Sales of the ed Work 1. Though there is a traditional market for journal issues and volumes, in the form of per-issue purchases and journal subscriptions, there is neither a traditional market for, nor a clearly defined value of, individual journal articles, since: a. Articles are submitted unsolicited to journals b. Publishers dont pay authors for the right to publish their articles or to acquire their s; the only form of royalty paid by a publisher is often just the reward of being published, publication being a key to professional advancement and prestige for the author c. Publishers incur costs and labor of producing and marketing authors articles, driven by prospect of capturing the economic value stemming from the s in the original works, which the authors have transferred to them. The monopoly privileges conferred by protection and the potential financial rewards therefrom dont motivate authors to write individual articles; rather, they serve to motivate publishers to produce journals, which provide the conventional and often exclusive means for disseminating these individual articles. b. Impact on Licensing Revenues/Fees 1. Generally, a holder can demand a royalty for licensing others to use its ed work 2. Cts. consider only traditional, reasonable, or likely to be developed markets when 3. The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop 4. Though publishers havent established a conventional market for the direct sale and distribution of individual articles, they have created, primarily through the CCC, a workable market for institutional users to obtain licenses for the right to produce their own copies of individual articles via photocopying. Since a viable market for licensing rights for individual journal articles exists, it is appropriate that potential licensing revenues for photocopying be considered in a fair use analysis 5. The right to seek payment for a particular use tends to become legally cognizable under the 4 th fair use factor when the means for paying for such a use is made easier. Unauthorized use is considered more fair when there is no ready market or means to pay for the use, but such use is less fair when there is a ready market or means to pay for the use. 5. If not transformative, especially likely that cognizable market harm will occur b/c it is a substitute. But when the second use is transformative, market substitution is less certain, and market harm may not be so readily inferred. (Campbell v. Acuff-Rose) List of examples and factors to be considered in determining fair use arent exhaustive (such as and shall include). Fair Use and News Stories (Harper & Row) a. The fact that the words the author has chosen to clothe his narrative may of themselves be newsworthy isnt an independent justification for unauthorized copying of the authors expression prior to publication

1.

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6.

7.

8.

9.

s idea/expression dichotomy strikes a definitional balance b/tween the 1st Amendment and the Act by permitting free communication of facts while still protecting authors expression. isnt a restriction on freedom of speech b/c it protects only form of expression and not the ideas expressed. The news element the information respecting current events contained in the literary production isnt the creation of the writer, but is a report of matters that are the history of the day. assures those who write and publish factual narratives that they may at least enjoy the right to market the original expression contained therein as just compensation for their investment. 2. Otherwise fair use would expand so as to destroy any protection in the works of public figures. Absent such protection, there would be little incentive to create or finance political memoirs and the public would be denied an important source of significant historical information To allow a fair use defense whenever the social value of dissemination outweighs any detriment to the artist, would deprive owners of their right in the property precisely when they encounter those users who could afford to pay for it. If every volume that was in the public interest could be pirated away by a competing publisher, the public soon would have nothing worth reading (Harper & Row) Videotaping: Unauthorized Time-Shifting is Fair Use (Sony) a. Time-shifting for private home use must be characterized as a noncommercial, nonprofit activity. Time-shifting merely enables a viewer to see a work which he was invited to witness in its entirety free of charge - the fact that the entire work is reproduced doesnt have its ordinary effect of militating against a finding of fair use. b. Time-shifting may enlarge the total viewing audience, To the extent time-shifting expands public access to freely broadcast television programs, it yields societal benefits. The public interest in making television broadcasting more available. Supports an interpretation of the concept of fair use that requires the holder to demonstrate some likelihood of harm before he may condemn a private act of time-shifting as a violation of federal law. (Community Television of Southern CA) Photocopying (American Geophysical Union v. Texaco) a. See Factor 4 Above for Copies of Individual Journal Articles b. For-profit copying of academic readers (bulkpacks) not a fair use (Princeton University Press v. Michigan Document Servs) 1. Liability of photocopy shops: Ct. rejected argument that it is the professors, not the copy shop, that perpetrated and authorized the infringement, even though copy shop wasnt in a position to know whether professors who submitted packets had obtained the proper permissions. Ct. seems to say copy shop must undertake burden of obtaining the necessary permissions for the professors. (Basic Books v. Kinkos) 2. As a practical matter, owners in academic books are unlikely to sue college professors for copyright infringement: a. Most of their authors are college professors b. College professors are responsible (directly or indirectly) for most purchases of academic books, so they have a powerful influence on the market c. Much more difficult to sue many individual college professors than a few large national copy shops Parodies (Campbell v. Acuff-Rose) a. A parody makes fun of an original work by at once imitating and distorting the work. For an effective parody, the audience must recognize the connection b/tween the parody and the original work, necessarily involving some deliberate copying of the original. Parody may or may not be fair use. One cant take more than what is necessary b. Threshold question is whether a parodic character may reasonably be perceived. Ct may also ask whether the parodic element is slight or great, and the copying small or extensive in relation to the parodic element. A work with slight parodic element and extensive copying will be more likely to merely supersede the objects of the original c. It doesnt matter whether parody is in good taste. It would be a dangerous undertaking for persons trained in law to constitute themselves final judges of the worth of a work, outside of the narrowest and most obvious limits. d. Parodies and the First Fair Use Factor: 1. Parody is transformative. It can provide social benefit by shedding light on an earlier work, and, in the process, creating a new one. Parody, like other comment or criticism, may claim fair use under 107 2. Goals of - to stimulate creation and publication - arent always best served by granting injunctive relief when parodists go beyond fair use. Sometimes owners interest may be adequately protected by an award of damages for whatever infringement is found. 3. Satire can stand on its own two feet and so requires justification for any borrowing. 4. No presumption that the commercial nature of parody makes it unfair. e. Parodies and the Second Fair Use Factor: 1. Fact v. Expression inquiry doesnt impact parody cases, b/c parodies almost invariably copy publicly known, expressive works f. Parodies and the Third Fair Use Factor: 1. Focus on persuasiveness of a parodists justification for the particular copying done similar to first factor, b/c extent of permissible copying varies with the purpose and character of the use 2. The parody must be able to conjure up at least enough of that original to make the object of its critical wit recognizable. What makes this recognition possible is quotation of the originals most distinctive or memorable features, which the parodist can be sure the audience will know - using some characteristic features cant be avoided. Once enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the songs overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original. 3. Copying doesnt become excessive merely b/c the portion taken was the originals heart. But, in parody, context is everything, and the question of fairness asks what else the parodist did besides go to the heart of the original g. Parodies and the Fourth Fair Use Factor: 1. For parody pure and simple, it is more likely that the new works wont affect the market for the original in a way cognizable under this factor, that is, by acting as a substitute for it (superseding its objects.) This is so b/c the parody and the original usually serve different market functions 2. There is no protectable derivative market for criticism, including parody pure and simple. The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop. Yet the 1.

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unlikelihood that creators of imaginative works will license critical reviews or lampoons of their own productions removes such uses from the very notion of a potential licensing market. 3. Parody may have a complex character, with effects not only in the arena of criticism but also in protectable markets for derivative works, too. Then, the law looks beyond the criticism to the other elements of the work. 4. Relevant harm to derivatives is the harm of market substitution. The fact that a parody may impair the market for derivative uses by the very effectiveness of its critical commentary is no more relevant under copyright than the likely threat to the original market. Satire v. Parody: Parody makes fun of the work itself; satire uses the work to make fun of something else

OTHER DEFENSES 1. 2. 3. 4. 5. 6. 7. 8. Statutory Defenses, 108-118 Independent Creation Consent/Licensure Inequitable Conduct Copyright Misuse 1st A. Immoral/Illegal/Obscene Work Statute of Limitations

DIGITAL COPYRIGHT LAW 1. Digital Copyright Legislation a. Record and Software Rental Legislation, 109(b): Congress amended first sale doctrine to prohibit rental of sound recordings and software b. Audio Home Recording Rights Act of 1992, 1001-10 1. Govnt imposed technological design constraints on manufacture of copying devices: To compensate copyright owners for the copying that could result from these technologies, manufacturers and importers of digital audio recording equipment and blank tapes, disks, or other storage media must pay a percentage of their transfer prices (2% for digital audio devices and 3% for storage media) into a royalty pool, which is distributed to owners of musical compositions (1/3) and sound recordings (2/3) based on prior year sales and air time, 1003-07. 2. Established a royalty on the sale of devices and blank recording media: 1002(a) prohibits importation, manufacture, and distribution of any digital audio recording device that doesnt incorporate technological controls (Serial Management System or functional equivalents) that block second-generation digital copying - users can make copies directly from a cd, but not from digital copies made using the technology 3. 1008: Immunity for manufacture, importation, and distribution of digital audio devices meeting the 1002 design requirements, any analog audio recording devices, and any recording media. Also immunizes consumers from infringement liability for the noncommercial use of analog or qualifying digital devices for making copies. Violations of the AHRA arent copyright violations the AHRA contains its own enforcement, remedy, and dispute resolution provisions ( 1009-10) c. Digital Performance Rights in Sound Recording Act of 1995 1. Amended 106 and 114 of the Act to establish an exclusive right to perform sound recordings publicly by means of a digital audio transmission, allowing record companies who hold a right in the sound recording to demand a royalty on digital performances, including downloading, uploading, and streaming digital transmissions. The Act tempers this new right with various exemptions and limitations and a compulsory licensing regime applicable to non-interactive services meeting various complex requirements, 114(d) 2. Traditional television and radio broadcasters may continue to perform sound recordings without being subject to this new right, even if they convert their signal to digital form, 114(d)(1), and various secondary transmissions of exempt primary transmissions and transmissions within business establishments (like MUZAK) dont implicate the digital performance right d. No Electronic Theft Act of 1997 (NET Act) 1. Strengthens criminal prosecution and penalties against those who distribute copyrighted works without authorization 2. Criminalizes various intentional acts of copyright infringement without regard to whether D benefited financially from such acts. 3. Stiffened criminal penalties applicable to copyright infringement committed through electronic means. Person found guilty can receive three years in prison for a first offense and be forced to pay a substantial fine, even for illegally distributing sound recordings valued as little as $1000, 2319 e. Digital Millennium Copyright Act of 1998 (DMCA) 1. Enacted anti-circumvention and anti-trafficking bans, but eased concerns of ISPs and telecom companies by creating a series of online service provider safe harbors. Other competing interests protected through narrow limitations and exemptions 2. Anti-circumvention and Anti-trafficking Provisions (DMCA, Title I) a. Focuses on ensuring efficacy of technological control measures put in place by copyright owners by legally sanctioning technological measures that control access to a work and those protecting particular rights of a copyright owner by regulating use of a work where access is granted b. Technological measures controlling access to a work: 1201(a) prohibits specific acts to circumvent technological measures and the manufacture, import, trafficking in, and marketing of devices that: 1. Are primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a copyrighted work 2. Have only limited commercially significant purpose or use other than to circumvent such technological protection measures, or

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Are marketed for use in circumventing such technological protection measures, 1201(a)(2) Violations dont constitute copyright infringement, but create civil and criminal liability, 1203-04 Imposes limited technology controls on some videocassette recorders, 1201(k) requiring future analog VCRs to incorporate new anticopying technology 6. 1201(a)(1): To circumvent a technological measure is defined as descrambling a scrambled work, decrypting an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measures, without authority of the copyright owner, 1201(a)(3)(A) 7. Detailed exemptions for law enforcement activities, radio and television broadcasters, libraries, encryption researchers, filtering of content to prevent access by minors, and protection for personally identifying information, 1201(d), (e), (h), (i) c. Technological measures regulating use of a work where access is lawfully obtained 1. EXs: Purchase of a DVD 2. 1201(b) prohibits trafficking in and marketing of circumvention devices. This limited protection designed to prevent impairment of users ability to make fair use of content to which they have been given access. 3. Allows circumvention of use controls, but the ban on trafficking of circumvention devices (including instructions) puts the means for such access beyond reach of all but the most technically adept who can decrypt restricted works. 4. 1202 bolsters encryption efforts by prohibiting removal or alteration of copyright management information, such as digital watermarks and identifying information, conveyed along with a copyrighted work 5. Narrow Exceptions: a. Authorizes Librarian of Congress to exempt any classes of copyrighted works where persons making noninfringing uses are likely to be adversely affected by the anti-circumvention ban, 1201(a)(1)(B). Classes are reviewed every 3 years. In its first review, 2 narrow classes of work were exempted: 1. Compilations consisting of lists of websites blocked by filtering software applications, and 2. Literary works, including computer programs and databases, protected by access control mechanisms that fail to permit access b/c of malfunction, damage or obsolescence. b. Circumvention of technological protection measures allowed for purposes of reverse engineering of computer programs for the sole purpose of identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program, 1201(f)(1) 4. Online Service Provider Safe Harbors (Title II) a. Safe harbors insulate OSPs from liability for transmitting, storing, or linking to unauthorized content. In order to qualify for safe harbor treatment, an OSP must meet three general threshold conditions: 1. Adopt, implement, and inform its subscribers of its policy for termination of repeat copyright infringers, 512(i)(1)(A) 2. Adopt standard technical measures used by copyright owners to identify and protect copyrighted works, 512(i)(1)(B), and 3. Designate an agent to receive notification of claimed infringement from copyright owners and register that agent with the Office b. More specific criteria in order to qualify for particular safe harbors: 1. Transmission and routing (transmitting copyrighted material without authorization, 512(a)): OSP must act as a passive conduit, neither directing, initiating, selecting, or modifying the content being transmitted by 3d parties 2. Storage (storing such material on their servers, 512(c)): OSP must not have actual notice that infringing material resides on its servers and promptly remove or block access to infringing material upon learning of copyright violations 3. Caching (making temporary copies on their systems (system caching)), 512(b), and 4. Linking (providing links to infringing material, 512(d)) c. OSPs satisfying these requirements are shielded from monetary relief and most forms of equitable relief d. To protect users rights, the OSP must promptly notify users that material has been blocked or removed. The user may then provide a counter notification stating the material may properly be stored, which the OSP must promptly pass along to the owner. OSP must replace or unblock the material within 10 to 14 business days of receiving the counter notification unless the owner informs the OSP that it filed a ct. action to restrain the infringement, 512(g)(2) Enforcement and Judicial Interpretation of Digital Copyright Law a. Digital Hardware Devices 1. The AHRA applies narrowly to digital audio recording devices, not to general computer technology. Thus, 9th Cir. held the Rio device didnt implicate the AHRA, dismissing the action 2. 9th Cir. observed in dicta that space shifting was noncommercial personal use b. Search Engines, Services, and Software 1. Online Music Lockers a. First Factor: Service often commercial in purpose and non-transformative in character; space shifting unlikely to transform it in legally cognizable ways. Test: Whether D added new aesthetics, new insights and understandings to the sound recordings. b. 4th Factor: Effect upon potential market for or value of the work. D may argue its service promotes sales of CDs by providing a means to make them more readily available. Ct. will likely conclude that the service impinged upon the owners ability to develop their own online distribution channels (UMG v. MP3.com) 3. P2P Networks: a. Napster didnt qualify for OSP transmission and routing or linking safe harbors b/c Napster didnt transmit, route, or provide connections through its systems within the meaning of 512(a) and therefore didnt fall within the definition of the transmission immunity. Also found it hadnt adequately established compliance with the general threshold requirements under 512 b/c it hadnt shown that it had adopted, reasonably implemented, and informed users of a termination policy for repeat copyright infringers.

3. 4. 5.

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c.

d.

e.

Advantages: B/c P2P networks dont need a central computer server to mediate the exchange of information or files among users, the high-bandwidth communications capacity for a server may be dispensed with and the need for costly server storage space is eliminated. Since copies of a file are available on many users computers, file requests and retrievals may be faster than on other types of networks, and since file exchanges dont travel through a server, communications can take place b/tween any computers that remain connected to the network without risk that a glitch in the server will disable the network in its entirety. Given these benefits in security, cost, and efficiency, P2P networks are employed to store and distribute electronic files by universities, govnt agencies, corporations, and libraries, among others. A user who downloads and installs the necessary software possesses the protocol to send requests for files directly to the computers of others using compatible software. The users request goes to a computer given an indexing capacity by the software and designated a supernode, or to some other computer with comparable power and capacity to collect temporary indexes of the files available on the computers of users connected to it. The supernode (or indexing computer) searches its own index and may communicate the search request to other supernodes. If the file is found, the supernode discloses its location to the computer requesting it, and the requesting user can download the file directly from the computer located. The copied file is placed in a designated sharing folder on the requesting users computer, where it is available for other users to download in turn, along with any other file in that folder. In some variations of the software, there are no supernodes. In these versions, peer computers using the protocol communicate directly with each other. When a user enters a search request into the software, it sends the request to computers connected with it, which in turn pass the request along to other connected peers. The search results are communicated to the requesting computer, and the user can download desired files directly from peers computers. Neither versions use servers to intercept the content of the search requests or to mediate the file transfers conducted by users of the software, there being no central point through which the substance of the communications passes in either direction. (Grokster) Disadvantages: There may be redundant copies of popular files. The creator of the software has no incentive to minimize storage or bandwidth consumption, the costs of which are borne by every user of the network. It is more difficult to control the content of files available for retrieval and the behavior of users. (Grokster) BitTorrent breaks files into smaller pieces and provides users information about the location of the various pieces, allowing rapid distribution of very large files. Its used for full length feature films, software, and music, as well Linux upgrades and podcasts. BitTorrent is an open source program that is available for free (and doesnt earn any income from advertising) Use of the subpoena provision of the DMCA, 512(h), against an ISP to identify Internet users the RIAA believes are infringing s of its members - whether 512(h) applies to an ISP acting only as a conduit for data transferred b/tween two Internet users, such as persons sending and receiving e-mail or sharing P2P files. 512(c)(3)(A) doesnt fit transmitting in 512(a) (RIAA v. Verizon) 1. The terms of 512(h) and the overall structure of 512 = a subpoena may be issued only to an ISP engaged in storing on its server material that is infringing or the subject of infringing activity. 2. In order to pursue apparent individual infringers, the RIAA needs to be able to identify the individuals sharing and trading files using P2P programs. The RIAA can readily obtain the screen name of an individual user, and using the IP address associated with that screen name, can trace the user to his ISP. Only the ISP, however, can link the IP address used to access a P2P program with the name and address of a person the ISPs customer who can then be contacted or sued by the RIAA. 3. A owner (or its agent, like the RIAA) must file 3 items with its request that the Clerk of a DC issue a subpoena: a. A notification of claimed infringement identifying the ed works claimed to have been infringed and the infringing material or activity, and providing information reasonably sufficient for the ISP to locate the material, all as further specified in 512(c)(3)(A) b. The proposed subpoena directed to the ISP, and c. A sworn declaration that the purpose of the subpoenas is to obtain the identity of an alleged infringer and that such information will only be used for the purpose of protecting rights under the laws of the US 4. If the owners request contains all 3 items, then the Clerk shall expeditiously issue and sign the proposed subpoena and return it to the requester for delivery to the ISP. Upon receipt of the subpoena the ISP is authorized and ordered to disclose to the owner the identify of the alleged infringer. 5. The ct. ordinarily reviews a DCs grant of a motion to compel or denial of a motion to quash for abuse of discretion. But if the challenge is based upon errors of law, like errors regarding the meaning of the statute, the review is de novo. 6. Meaning of and Interaction B/tween 512(h) and 512(a)-(d). a. 512 creates 4 safe harbors, each of which immunizes ISPs form liability for infringement under certain highly specified conditions 1. Transitory Digital Network Communications, 512(a): Safe harbor for infringement of by reason of the ISPs transmitting, routing, or providing connections for infringing material, subject to certain conditions, including that the transmission is initiated and directed by an Internet user. 512(a)(1)-(5) 2. System Caching, 512(b): Safe harbor for infringement of by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the ISP, 512(b)(1), as long as certain conditions regarding the transmission and retrieval of the material created by the ISP are met. 512(b)(2)(A)-(E) 3. Information Residing on Systems or Networks at the Direction of Users, 512(c): Safe harbor for infringement of by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, as long as the ISP meets certain conditions regarding its lack of knowledge concerning, financial benefit from, and expeditious efforts to remove or deny access to, material infringing or that is claimed to be the subject of infringing activity, 512(c)(1)(A)-(C) 4. Information Location Tools, 512(d): Safe harbor from liability for infringement of by reason of the provider referring or linking users to an online location containing infringing material or infringing activity,

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by using information location tools such as a directory, index, reference, pointer, or hypertext link, subject to the same conditions as in 512 (c)(1)(A)-(C) b. Notice and take-down provisions are present in 512(b)-(d), but absent from 512(a). Provisions make a condition of the ISPs protection from liability for infringement that upon notification of claimed infringement as described in 512(c)(3), the ISP respond expeditiously to remove, or disable access to, the material claimed to be infringing, 512(b)(2)(e), 512(c)(1)(C), and 512(d)(3) c. 512(h) precludes Clerk of Ct. from issuing a subpoena to an ISP acting as a conduit for P2P communications b/c a 512(h) subpoena request cant meet the requirement in 512(h)(2)(A) that a proposed subpoena contain a copy of a notification of claimed infringement, as described in 512(c)(3)(A). In particular, subpoenas may fail to meet the requirements of 512(c)(3)(A)(iii) if they dont b/c the ISP isnt storing the infringing material on its server and cant, identify material to be removed or access to which is to be disabled by the ISP. Important b/c 512(h)(4) makes satisfaction of the notification requirement of 512(c)(3)(A) a condition precedent to issuance of a subpoena: if the notification filed satisfies the provisions of 512(c)(3)(A) and the other content requirements of 512(h)(2) are met, then the clerk shall expeditiously issue and sign the proposed subpoena for delivery to the ISP. d. SEE Subsection 512(c)(3)(A) e. Infringing material obtained or distributed via P2P file sharing is located in the computer (or in an off-line storage device, like a cd) of an individual user. No matter what information owner may provide, the ISP can neither remove nor disable access to the infringing material b/c that material isnt stored on the ISPs servers. f. Disabling an individuals access to infringing material and disabling access to the internet are different remedies. 512(j)(1)(A)(i) authorizes injunction restraining ISP from providing access to infringing material and 512(j)(1)(A)(ii), authorizes injunction restraining ISP from providing access to a subscriber or account holder who is engaging in infringing activity by terminating the accounts of the subscriber or account holder. These distinct statutory remedies establish that terminating a subscribers account isnt the same as removing or disabling access by others to the infringing material resident on the subscribers computer. g. Senate and House Reports, only technical errors such as misspelling a name or supplying an outdated area code wont render ineffective an otherwise complete 512(c)(3)(A) notification. If the RIAAs notification identifies absolutely no material the ISP could remove or access to which it could disable, it has problems. 512(c)(3)(A) concerns means of infringement other than P2P file sharing 7. Structure of 512 a. The ISP activities described in 512(b) and (d) are storage functions. As such, they are, like the ISP activities described in 512(e) and unlike the transmission functions listed in 512(a), susceptible to the notice and take down regime of 512(b)-(d). 512(h) applies to an ISP storing infringing material on its servers in any capacity whether as a temporary cache of a Web page created by the ISP per 512(b), as a Web site stored on the ISPs server per 512(c), or as an information locating tool hosted by the ISP per 512(d) it doesnt apply to an ISP routing infringing material to or from a personal computer owned and used by a subscriber. b. The storage activities described in the safe harbors of 412(b)-(d) are subject to 512(c)(3), including the notification described in 512(c)(3)(A). By contrast an ISP performing a function described in 512(a), such as transmitting e-mails, instant messages, or files sent by an Internet user from his computer to that of another Internet user, cant be sent an effective 512(c)(3)(A) notification. Therefore, the references to 512(c)(3) in 512(b) and (d) lead to the conclusion that 512(h) is structurally linked to the storage functions of an ISP and not to its transmission functions, such as those listed in 512(a). 8. 512(h) doesnt authorize the issuance of a subpoena to an ISP acting as a mere conduit for the transmission of information sent by others. 9. It isnt the province of the cts. to rewrite the DMCA in order to make it fit a new and unforeseen Internet architecture, no matter how damaging that development has been to the music industry or threatens being to the motion picture and software industries. Only Congress has the constitutional authority and the institutional ability to accommodate fully the varied permutations of competing interest that are inevidently implicated by such new technology. Stream Capture Technology 1. Real Player Technology: Once loaded, a computer can access RealNetworks servers, establish a digital handshake, and stream content (coded in RealNetworks proprietary .RMA format) to be perceived in real time at the computer. The user cant store content (unless the content provider activated the download capability). 2. RealNetworks sued Streambox, manufacturer and distributor of the Streambox VCR and Ripper technologies, for violations of the DMCA. The Streambox VCR product enables users to access and download copies of RealMedia files that are streamed over the Internet. It enables the user to mimic the operation of RealPlayer software and then circumvents the authentication procedure in order to gain access to streamed content. Unlike the RealPlayer, the Streambox VCR bypasses the copy switch so that users can download content, even if the content owner intended that it only be streamed. Once downloaded, the content can then be accessed, copied, and distributed at the users discretion. Streamboxs Ripper technology enables users to convert files from RealMedia (.RMA) format to other formats such as .WAV (format used for music editing), .WMA (Windows Media Player), and .MP3 3. Ct. held that aspects of the Streambox VCR were likely to violate the DMCAs anti-circumvention provisions. The authentication process used to establish a handshake b/tween the RealPlayer and a RealNetworks server constitutes a technological measure that effectively controls access to copyrighted works. The VCRs means of establishing access and then bypassing the copy switch circumvents the technological protection measures. The ct. further found it had no significant commercial purpose other than to enable users to access and record protected content. The ct. rejected Streamboxs defense that its software allows consumers to make fair use copies, such as to time or space shift access to content. It distinguished Sony on 2 grounds:

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Many of the copyright owners there authorized or wouldnt have objected to having their content time-shifted whereas all of the content owners using the RealNetworks technology to stream their works specifically chose not to authorize downloading; and b. Sony didnt address new protection afforded by the DMCA 4. Ct. declined to enjoin Streamboxs Ripper software, raising serious doubts as to whether the .RMA format constituted a technological protection measure within the meaning of the DMCA and noting it could serve significant legitimate purposes 5. Ct. stated those who manufacture equipment and products generally can no longer gauge their conduct as permitted or forbidden by reference to the Sony doctrine. For a given piece of machinery might qualify as a staple item of commerce, with a substantial noninfringing use, and hence be immune from attack under Sonys construction of the Act, but nonetheless still be subject to suppression under the DMCA. d. Constitutionality of the DMCA: Ct. rejected argument that the DMCA is unconstitutionally vague and violates the 1 st A. on the grounds that the DMCA prohibits trafficking in and marketing of all circumvention devices all isnt vague. (US v. ElcomSoft) Distributors and Publishers of Decryption Code a. Content industries try to use the DMCA to prevent distribution of technology that can decrypt technological protection measures. These cases have brought Title 17 into tension with the 1st A b. DVD Decryption (Universal City Studies v. Corley) 1. Decryption algorithm developed to decode Content Scrambling System (CSS) encryption designed to protect DVD content. DVDs play only on hardware devices loaded with software to unscramble CSS. Companies granted a royalty-free license to the DVD Copy Control Association, which in turn licenses this technology to hardware manufactures and motion picture studios for a modest administrative fee 2. A 15 yr. old Norwegian kid reverse engineered and developing DeCSS, a program that decodes CSS. The boy posted the code to his website, and it spread over the Internet. Movie industry got authorities in Norway to arrest the kid and removed the code from his site. 3. Another person posted the code on his publications website and provided links to other sites posting DeCSS. 8 Major motion picture studios sued, alleging his posting of the code violated the DMCAs anti-trafficking ban. He defended on 3 grounds: a. That his sole motivation for posting DeCSS was to enable people with computers running the Linux operating system to enable a Linux-based DVD player and hence fell within the DMCAs reverse engineering exception. Under 1201(f)(1) and (2), a person may circumvent, or develop and employ technological means to circumvent, access control measures in order to achieve interoperability with another computer program provided that doing so doesnt infringe anothers copyright. In addition, under 1201(f)(3), that person may make information acquired through such efforts available to others, if that person provides such information solely for the purpose of enabling interoperability of an independently created computer program with other programs, and to the extent that doing so doesnt constitute copyright infringement 1. Ct. found reverse engineering defense inapplicable b/c statute limits its application to only the person who successfully reverse engineers the program, not anyone who seeks to disseminate the program (even if for the sole purpose of promoting interoperability) b. That the purpose of DeCSS is to allow others to make fair use of the Ps copyrighted works (for educational use in comparing films or for time shifting) 1. Congress intended the anti-circumvention and anti-trafficking provisions to trump traditional fair use (and Sonys staple article of commerce doctrine). Instead, fair use under the DMCA is handled through limitations built into the anti-circumvention ban, such as 1201(c)(1) (providing that violation of the anti-circumvention ban cant be the basis to prohibit fair use of content obtained through such circumvention), specific exemptions, and the periodic rulemaking process set forth in 1201(a)(1)(B)-(E) for exempting particular classes of works for which fair use is likely to be adversely affected c. That the DMCA violated 1st A. freedom of expression by preventing him from speaking (posting and linking to DeCSS) 1. Ct. held computer code, including decryption algorithms, constituted protected speech under the 1 st A. Nonetheless, ct. upheld the DMCAs limitations on such speech. B/c the limitations are content-neutral (they target the functional aspect of the speech and only incidentally affect its message), they were subject to intermediate scrutiny. They were adequately justified by the substantial govntal interest in developing effective means for restraining unauthorized distribution of copyrighted works in the digital age, werent related to the suppression of free expression, and didnt burden substantially more speech than necessary to further the interest in arresting piracy. Ct. also upheld the constitutionality of the DMCAs application to linking on similar grounds. Ct. determined injunctive relief was proper due to the great harm caused to copyright owners by unauthorized distribution of copyrighted works and the need to take strong preventive measures, including restrictions upon the freedom of expression, to reduce the risk of widespread piracy via the Internet OSPs, Investors, Advisors, and End Users a. Content industries have always felt some reluctance to pursue individual copyists and distributors out of practical concerns and potential backlash among customers; but as the level of unauthorized distribution has risen, they have expanded efforts to stop unauthorized reproduction and distribution as well as to educate the public about the structure and benefits of copyright protection. These efforts have taken place at a number of levels: online service providers, universities, investors and advisors, businesses, and end-users. The content industries have also lobbied the govnt to step up public enforcement of copyright law b. Online Service Providers: While immunizing OSPs from monetary damages and most forms of injunctive relief, the DMCAs safe harbor provisions also impose responsibilities upon OSPs to promptly block or take down sites containing unauthorized content. Pursuant to these provisions, the RIAA and the MPAA have sent out thousands of cease-and-desist letters and shut down thousands of sites with the cooperation of ISPs. The RIAA has pressured universities to block access to file sharing sites through university networks, and has begun filing take down notices directly with universities in their capacity as OSPs for their students. c. Digital Distribution Venture Investors and Advisors: Venture capitalists became increasingly wary of the legal costs, economic risk, and potential vicarious liability associated with investing in these ventures. The recording industry has brought suits directly against a.

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officers, directors, and venture capitalists involved in Napster, though the DC dismissed the suits. Even some former attnys were sued for malpractice. The net effect of these actions could be to chill both investment in and advising of new technology ventures relating to reproduction and distribution of content. d. Businesses: RIAA has sued businesses where employees set up a computer server allowing coworkers to download and access MP3 files. These cases led companies to establish policies prohibiting downloading of music on company computers e. Govnt Enforcement: The NET Act was specifically created to ease prosecution of infringers. The more general problem of computer crime fraud and spreading computer viruses has led the DOJ to establish a specialized cybercrime units throughout the nation. Unintended Reach of the DMCA: Control of Aftermarkets Through Technological Protection Measures a. The first wave of anti-circumvention litigation focused on the threat from digital piracy of music, film, and books by those offering means to decrypt technological protection measures. By prohibiting decryption of digital locks on content, the DMCA would encourage content industries to release their copyrighted works into digital channels of commerce. b. Language of the DMCAs anti-circumvention provisions, however, has produced an unanticipated second generation of DMCA litigation involving use of technological protection measures to exclude competitors from after-markets goods or services supplied for a durable product after its initial sale, such as replacement parts, ink, or film. In order to exert exclusive control over such aftermarkets for their durable products, several companies have embedded digital code into their products and aftermarket components that must interoperate in order to function. When competitors in these aftermarkets have decrypted such digital code in order to manufacture their own components, these durable product manufacturers have sued, alleging violation of the anti-circumvention provisions of the DMCA. CAs rejected 2 claims in 2004: 1. Lexmark Intnl v. Static Control: Allowed sale of replacement printer ink cartridges that worked with Lexmarks printer by sending the proper authentication sequence to the printer. D hadnt circumvented an encryption system at all, and even if it had it could lawfully do so in order to make its system interoperable 2. Chamberlain v. Skylink Technologies: Buyers of remotely-operated garage doors are authorized to decrypt the lockout code, since otherwise they would be unable to open their own garage doors.

PROTECTION OF COMPUTER PROGRAMS 1. 2. Computer software protected under as literary works Idea/Expression Dichotomy: Drawing the line too liberally in favor of protection bestows strong monopolies upon those who develop operating systems that become industry standards and upon the first to write programs performing specific applications and would thereby inhibit other creators from developing improved programs and computer systems. Drawing the line too conservatively allows programmers efforts to be copied easily, thus discouraging creation of all but modest incremental advances. a. Merger Doctrine important in computer software cases where subsequent computer manufactures seek to develop computers offering compatible operating systems and subsequent programmers seek to develop application programs featuring the same menu command structure of popular programs Scope of Software Copyright a. Protection for Literal Elements of Program Code 1. A computer program is a set of statements or instructions to bring about a certain result, so protecting object code and microcode raises issues of separating expression from utilitarian elements 2. Those aspects of a work which must necessarily be used as incident to the idea, system or process that the work describes, arent able. Elements of a computer program that are necessarily incidental to its function are unprotectable. (Altai) b. Protection for Non-literal Elements of Program Code 1. extends beyond a literary works strictly textual form to its structural, non-literal components, like general flow charts and specific organization of inter-modular relationships, parameter lists, and macros (Altai) 2. MINORITY RULE, 3d Cir.: Whelan Idea v. Expression Test: Purpose or function of a utilitarian work is the works idea, and everything that isnt necessary to that purpose or function is part of the expression of the idea. Where there are many means of achieving the desired purpose, then the particular means chosen isnt necessary to the purpose it is expression, not idea. a. Problem: Ct. conflates merger analysis and the idea/expression dichotomy, which allows protection of procedures, processes, systems, and methods of operation, which are expressly excluded under 102(b). b. Problem: Prevents Copying for Interoperability - if everything below the general purpose of the program is protectable, then particular protocols are also protectable b/c there are other ways of serving the general purpose of the program. Such a result would effectively bar competitors from developing interoperable programs and computer systems. c. 2nd and 5th Circuit doesnt follow Whelan; some circuits have 3. MAJORITY RULE, 2d Cir: Altais Substantial Similarity Test for Non-Literal Elements of Computer Programs: AbstractionFiltration-Comparison a. Step 1: Abstraction 1. Dissect Ds program structure and isolate each level of abstraction contained within it. Process begins with the code and ends with an articulation of the programs ultimate function, retracing and mapping each of the designers steps in the opposite order in which they were taken during the programs creation (reverse engineer it) 2. At the lowest level of abstraction, a computer program is a set of individual instructions organized into a hierarchy of modules. b. Step 2: Filtration 1. Examine the structural components at each level of abstraction to determine whether an IDEA or included b/c an: a. Element Dictated by Considerations of Efficiency, So as to be Necessarily Incidental to that Idea 1. Merger Doctrine: When there is essentially only one way, or a limited number of ways, to express an idea, the expression is said to have merged with the idea itself. It is necessarily incidental to the idea being expressed

3.

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c.

Efficiency concerns may narrow the practical range of choices so as to make only one or two forms of expression workable options. To determine whether the merger doctrine precludes protection to an aspect of a programs structure, ask whether the use of this particular set of modules is necessary to efficiently implement that part of the programs process. If yes, then the expression represented by the programmers choice of a specific module or group of modules has merged with their underlying idea and is unprotected 2. Efficiency = deriving the most concise logical proof or formulating the most succinct mathematical computation. The more efficient a set of modules are, the more closely they approximate the idea or process embodied in that particular aspect of the programs structure 3. Since there may be only a limited number of efficient implementations for any given program task, it is quite possible that multiple programmers, working independently, will design the identical method employed in the allegedly infringed work. If this is the case, no infringement. Since evidence of similarly efficient structure isnt particularly probative of copying, it should be disregarded in the substantial similarity analysis b. Element Dictated by External Factors 1. Mechanical specifications of the computer on which a particular program is intended to run 2. Compatibility requirements of other programs with which a program is designed to operate with 3. Computer manufacturers design standards 4. Demands of the industry being serviced, and 5. Widely accepted programming practices within the computer industry c. Element Taken from the Public Domain 1. No protection of expression that is commonplace in the computer software industry. 2. Process defines the scope of Ps c. Step 3: Comparison 1. Left with a kernel, or kernels, of creative expression. Compare this material with the structure of the allegedly infringing program to determine whether the protectable elements are substantially similar whether D copied any aspect of this protected expression 2. Consider the copied portions relative importance with respect to Ps overall program 1. De Minimus Exception: Allows literal copying of a small and insignificant portion of Ps work (Warner Bros. v. ABC) d. Policy Considerations 1. Always keep in consideration the preservation of the balance b/tween competition and protection The limited scope and duration of the holders statutory monopoly reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation ultimately serves to promote broad public availability of literature, music, and the other arts. 2. Substantial effort alone cant confer status on an otherwise unable work. Despite the fact that significant labor and expense often goes into computer program flow-charting and debugging, that process doesnt always result in inherently protectable expression. e. In cases where the technology in question doesnt allow for a literal application of the test, cts. may apply a modified version f. 10th Cir Modified Altai Test (Gates Rubber) (Also adopted by 5th Cir) 1. Abstraction: 6 levels of generally declining abstraction: 1. The main purpose of the computer program 2. The structure or architecture of a program, generally as represented in a flowchart 3. Modules that comprise particular program operations or types of stored data 4. Individual algorithms or data structures employed in each of the modules 5. The source code that instructs the computer to carry out each necessary operation on each data structure, and 6. The object code that is actually read by the computer 2. Filtration: Filter out six unprotectable elements: 1. Ideas 2. Processes or methods of the computer program 3. Facts 4. Material in the public domain 5. Expression that has merged with an idea or process, and 6. Expression that is so standard or common as to be a necessary incident to an idea or process. 3. Comparison: Must be done on a case-by-case basis, with an eye toward determining whether a substantial portion of the protectable expression of the original work has been copied 4. Input formats of a computer program: (organization and configuration of information to be input) Different possible configurations, some more convenient or easier to produce than others. The format may be expressed in several different ways: by a prose description, through a diagram, or otherwise. Each particular expression of the format may be protected, but another programmer not prohibited from having input using the same format. (Synercom Technology) 5. Operating Systems (Altai) a. OS is a program that manages the resources of the computer, allocating those resources to other programs as needed. Generally, a program written for one OS, wont, without modification, run under another operating system Protection for Functional Elements and Protocols (Lotus v. Borland) 1. Where D literally copies particular pieces of Ps program to create a functionally equivalent program or to reproduce the internal program interface necessary to make two programs compatible. a. EX: Literal copying of a menu command hierarchy that users are familiar with

a.

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4.

Test: Whether the component is ed at all look to the material as a whole 102(b) Bar for Methods of Operation: a. Defined: Means by which a person operates something, like a computer. Others are free to employ the method and to describe it in their own words. b. Factors: 1. Must users use the material to tell the computer what to do? 2. Without the material, could users access and control, or make use of functional capabilities? c. Menu hierarchy is a method of operation. 1. Users operate the program by using the menu command hierarchy, and the entire menu command hierarchy is essential to operating the program, so no need to inquire further into whether that method of operation could have been designed differently. The expressive choices of what to name the command terms and how to arrange them dont magically change the unable menu command hierarchy into able subject matter. 2. Comparison to VCR buttons not the writing on the buttons, but the actual buttons, which are methods of operating the VCR. When a user chooses a command, he effectively pushes a button. Unlike the labels on the buttons, which merely make operating the VCR easier by indicating the buttons functions, the buttons are essential to operating the VCR 3. The menu commands (e.g., print and quit) are largely for standard procedures the company didnt invent and are common words the company cant monopolize. What is left is the particular combinations and sub-grouping of commands in a pattern devised by the company. Important that if the company is given a monopoly on the pattern, users who learned the structure of the program would be locked into the company. If a better program comes along, it is hard to see why customers who have learned the program should remain captives of it b/c of an investment in learning made by the users and not by the company. The company already reaped a substantial reward for being first. Assuming a later competitor is now better, good reasons exist for freeing it to attract the earlier companys customers: to enable the old customers to take advantage of a new advance and to reward the later entrant for making a better product. d. Long Prompts: Unnecessary to the operation of the program e. Screen Displays: Users dont need to use any expressive aspects of the screen display in order to operate the machine. The way the screens look has little bearing on how users control the program. f. Underlying computer code: While code is necessary for the program to work, its precise formulation isnt. d. Protection for Program Outputs: User Interfaces 1. Screen displays (the output of the computer program) are protectable as audiovisual or pictorial works. 2. To a greater extent than other types of screen displays, user interfaces are dictated by industry and product market standards and functional considerations. User interfaces include input/output devices, like keyboards, pointing tools, disk drives, audio equipment, microphone, and screen displays. a. excludes functional works like keyboards, pointing objects, speaker systems, and other hardware devices. Cts. have also found that data input formats, such as the order and size of data fields, arent protectable. 3. Visual images and text of screen displays may qualify as audiovisual, graphic, or literary works. a. Choice of typeface on user screen display and choice of words such as choose a font for the title of a screen for producing cards, are audiovisual displays dictated primarily by artistic and aesthetic consideration rather than utilitarian or mechanical ones. Such works are still subject to the originality requirement, functionality limitations of 102(b), and the merger doctrine (Broderbund Software) 4. Video Games: a. Video games are protected as audiovisioual works under 102(a)(6) (Galloob v. Nintendo) b. No infringement if similarities flow from constraints inherent in the sport/game itself, like rules of the game or the idea of an interactive prediction game, or from various constraints inherent in the use of the particular type of computer (Data East v. Epyx; Interactive Network) 5. Virtual Identity Standard for claims of software infringement in a computer-user interface based on a compilation of unable elements: Unless the user interface consists of unique combination of otherwise unable elements, elements of the graphical user interface arent protected if they: (Apple v. Microsoft) a. Lack originality b. Arent protectable under 102(b) c. Are scenes a faire d. Unprotectable under merger doctrine, or e. Unprotectable b/c of the external constraints imposed by the computer system 6. Many elements of the desktop-based graphical user interface are in the public domain (Apple v. Microsoft) Right to Make Copies of Computer Programs a. Running a computer program necessarily involves copying the program from long-term memory (ROM or disk) into the short-term memory (RAM) of the computer. This copy, however, is erased whenever the application is exited or the computer is turned off. Controversy over whether these copies are fixed, potentially violating the owners rights in 106(1) b. COPYING: Loading a computer program into RAM is making a copy under 106. In the absence of ownership of the or express permission by license, such acts constitute infringement. One is able to view the system error log and diagnose any problems with the computer, so the representation created in the RAM is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicate for a period of more than transitory duration. (MAI Systems, 9th Cir) c. NOT COPYING: Copies stored in RAM are only temporary. H.R. on definition of fixed in 101 says definition of fixation excludes purely evanescent or transient reproductions such as those projected briefly on a screen, shown electronically on a television or other crt, or captured momentarily in computer memory. (Apple v. Formula) d. Congress enacted 117, making it possible for computer program users to make certain copies without fear of liability. 2. 3.

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5.

6.

Allows users to make backup copies of their programs and to load the programs onto hard drives from a floppy disk. Multiple archival copies may be made of a single computer program, but users may not make copies and distribute them to others for commercial purposes 2. The right to make essential copies is controversial. Intention seems to be to allow copies like those made in MAI. 3. 117(1) extends not only to identical copies but to such adaptation of programs as is necessary to use them with a particular computer a. Adaptations arent limited to those intended by the software vendor. To develop a program, D may analyze Ps program by copying it into its computers memory under the 117(1) exemption. Loading Ps program into the memory of a computer is an essential step in the utilization of Ps program. Therefore, D hadnt infringed by loading Ps program into its computers memory. Even though the program wasnt used for the purpose of the program, and was made with the express purpose of devising a means of defeating its protective function, the copy made was an essential step in the utilization of Ps program. (Vault) 4. Language says OWNERS OF A COPY. Cts. differ on how to treat licensees: a. Licensees may be owners. Distinction b/tween ownership of a , which can be licensed, and ownership of copies of the ed software. Party who purchases copies of software from the owner can hold a license under a while still being an owner of a copy of the ed software for purposes of 117. (DSC Communications) 1. Exception: If agreement b/tween sophisticated parties, imposes more severe restrictions on Ds rights with respect to the software than would be imposed on a party who owned copies of software subject only to the rights of the holder under the Act. They possess only the limited rights set forth in their licensing agreements. Therefore, must look to the agreements to determine whether they establish that the party is an owner of the copy of the software 2. In the mass-market context, most cases considering the issue conclude that mass-market, over-the-counter transfers of computer programs at retail stores constitutes sales of goods subject to the UCC, rather than license agreements. b. 9th Cir = all licensees are non-owners 5. DMCA created an exemption from liability for owner or lessee of a computer to make or authorize the making of a copy of a computer program for purposes of maintenance or repair of the computer hardware. However, the copy thus made must be made solely by turning the machine on, be used for no other purpose, and no other programs can be copied. Also doesnt apply to maintenance or repair of software, just hardware. The exception benefits independent service organizations that service computer hardware Fair Use of Computer Programs, 107 a. Whether the use of ed material is fair use is a mixed question of law and fact. If DC finds sufficient facts to evaluate each of the statutory factors, AC may decide whether D may claim fair use defense as a matter of law. (Galloob v. Nintendo) b. P must show by a preponderance of the evidence that some meaningful likelihood of future harm exists. If Ds work adversely affects the value of any of the rights in the ed work the use isnt fair even if the rights thus affected havent as yet been exercised by P. c. Existence of a potential market cant be presumed. d. Existence of market for royalty payments of copies undercuts fair use argument (American Geophysical Union) e. Video Games: D distributed files displaying new game levels of Ps videogame when run in conjunction with Ps game. The files described the game levels in detail, but didnt actually contain any of Ps code or graphics. They merely instructed the computer how to use images from Ps game. The audiovisual displays created when the software was run in conjunction with Ds files were recorded in permanent form in Ds files and therefore qualified as derivative works. (Micro Star v. FormGen) Reverse Engineering a. Issue: Manner by and extent to which competitors can develop compatible or interoperable programs, competitive programs, and enhancements of programs. b. Reverse Engineering Defined: Starting with the product and working backward to derive the process which aided in its development or manufacture. Typically involves 2 phases: 1. Disassembly or decompilation of the program in order to create human-readable source code that may be analyzed, and 2. Using the results of this analysis to create a commercially viable program c. Most computer programs are distributed only in object code form, making it difficult to discover the ideas and principles contained in a program without reverse engineering. Some programs have special devices designed to prevent inspection. There are several methods of reverse engineering computer programs: 1. Black Box Testing: By systematically inputting instructions, a computer programmer can learn how the program processes information and can construct a program that produces the same outputs for given instructions. B/c of the complexity of most programs today this approach is often infeasible. 2. Studying the technical specifications and user manuals: Often these materials dont contain sufficient information to achieve full compatibility and interoperability. 3. Taking a machine apart and directly observing its operation or decompiling the program d. Computer programs are written in specialized alphanumeric languages, or source code. In order to operate a computer, source code must be translated into computer readable form, or object code. Object code uses only two symbols, 0 and 1, in combinations which represent the alphanumeric characters of the source code. A program written in source code is translated into object code using a computer program called an assembler or compiler, and then imprinted onto a silicon chip for commercial distribution. Devices called disassemblers or decompilers can reverse this process by reading the electronic signals for 0 and 1 that are produced while the program is being run, storing the resulting object code in computer memory, and translating the object code into source code. Both assembly and disassembly devices are commercially available, and both types of devices are widely used within the software industry. (Sega v. Accolade) e. Rejected Justifications of Copying for Reverse Engineering 1. Intermediate Copying (Sega v. Accolade) 1.

43

f.

Intermediate copying of computer object code may still be infringing, regardless of whether the end product of the copying also infringes those rights and even though it is only an inchoate representation of some final product to be marketed commercially b. The computer file generated by the disassembly program, the printouts of the disassembled code, and the computer files containing Ds modifications of the code that were generated during the reverse engineering process all satisfy copying definition 2. Idea/Expression Dichotomy: Even though disassembly of computer object code into human-readable form is necessary to gain access to the ideas and functional concepts embodied in the code, which arent protected by , copying expression is still infringing. (Sega v. Accolade) 3. 117 doesnt protect a user who disassembles object code, converts it from assembly into source code, and makes printouts and photocopies of the refined source code version (Sega v. Accolade) Accepted Justification of Coping for Reverse Engineering: Fair Use (Sega v. Accolade) 1. Where disassembly is the only way to gain access to the unprotected elements embodied in a ed computer program, and where D has a legitimate reason for seeking such access (like compatibility or interoperability), disassembly is a fair use of the ed work, as a matter of law 2. Rejection of Counterarguments: a. 117 doesnt preclude an assertion of a fair use defense for uses of computer programs not covered by 117. 107 and 117 serve entirely different functions. 117 defines a narrow category of copying that is lawful per se. 107 establishes a defense to an otherwise valid claim of infringement b. Semiconductor Chip Protection Act (SCPA), 906 authorizes copying of the mask work on a silicon chip in the course of reverse engineering the chip. The mask work in a standard ROM chip is a physical representation of the computer program that is embedded in the chip. The zeros and ones of binary object code are represented in the circuitry of the masks work by open and closed switches. Congress express authorization of copying in the particular circumstances set forth in 906 dont constitute a determination that other forms of copying of computer programs are prohibited LH of the SCPA reveals that Congress passed a separate statute to protect semiconductor chip products b/c it believed semiconductor chips were intrinsically utilitarian articles that werent protected under the Act. B/c Congress didnt believe semiconductor chips were eligible for protection in the first place, fact that it included an exception for reverse engineering of them in the SCPA says nothing about its intent with respect to the lawfulness of disassembly of computer programs under the Act. Additionally, Congress expressly stated it didnt intend to limit, enlarge or otherwise affect the scope, duration, ownership or subsistence of protection in computer programs, data bases, or any other able works embodied in semiconductor chip products 3. 1st Factor a. Copying for a commercial purpose weighs against finding of fair use; but presumption of unfairness can be rebutted by the characteristics of a particular commercial use. If the use is only intermediary, any commercial exploitation is indirect or derivative. Although Ds ultimate purpose is commercial, its direct purpose in copying the code is simply to study the functional requirements for compatibility so that it could make its own work interoperable. b. Factor whether other methods of reverse engineering than decompiling was available. c. If D copied Ps code for a legitimate, essentially non-exploitative purpose, the commercial aspect of its use is of minimal significance d. Consider public benefit resulting from even a commercial use. Public benefit neednt be direct or tangible. 4. Second Factor a. Idea/Expression Dichotomy: To the extent there are many possible ways of accomplishing a given task or fulfilling a particular market demand, the programmers choice of program structure and design may be highly creative and idiosyncratic. However, computer programs are, in essence, utilitarian articles articles that accomplish tasks. They contain many logical, structural, and visual display elements dictated by the function to be performed, by considerations of efficiency, or by external factors like compatibility requirements and industry demands. When specific instructions, even though previously ed, are the only and essential means of accomplishing a given task, their later use by another wont amount to infringement b. Translation of a program from object code to source code (disassembly) cant be accomplished without making copies of the code 1. Chip peeling yields only a physical diagram of the object code embedded in a ROM chip. It doesnt obviate the need to translate object code into source code. 2. Programmers in clean rooms are provided only with the functional specifications for the desired program. The use of a clean room wouldnt have avoided the need for disassembly b/c disassembly was necessary in order to discover the functional specifications to be used in the clean room. c. Policy: If disassembly of ed object code is per se unfair use, owner gains a de facto monopoly over the unable aspects of the work as well. d. If Ps work contains unprotected aspects that cant be examined without copying, ct. will afford him a lower degree of protection than more traditional literary works e. 102(b): Code allowing for interoperability is functional 5. Third Factor a. Copying of an entire work doesnt preclude fair use per se (Sony). Where the ultimate use is limited, the factor is of very little weight 6. Fourth Factor a. Distinguishes b/tween copying to make independent creative expression possible and simple exploitation of anothers creative efforts.

a.

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g.

h.

Test: If the challenged use becomes widespread, would it adversely affect the potential market for the ed work, by diminishing potential sales, interfering with marketability, or usurping the market? 1. These consequences dont attach to a use which simply enables the copier to enter the market for works of the same type as the copied work. Little weight if D sought only to become a legitimate competitor in the field. c. By facilitating entry of a new competitor, Ds disassembly of Ps software affected the market in an indirect fashion. An attempt to monopolize the market by making it impossible for others to compete runs counter to the statutory purpose of promoting creative expression and cant constitute a strong equitable basis for resisting a fair use defense 7. Policy Consideration: Fact that computer programs are distributed for public use in object code form often precludes public access to the ideas and functional concepts contained in those programs, conferring on the owner a de facto monopoly over those ideas and functional concepts. This result defeats the fundamental purpose of the Act to encourage production of original works by protecting expressive elements of those works while leaving the ideas, facts, and functional concepts in the public domain for others to build on. Whether software manufacturers can prohibit reverse engineering through contractual terms in shrinkwrap licenses and whether such provisions are preempted by federal law: 1. Yes: Contractual restriction on reverse engineering is preempted (Vault) 2. No: Contractual restrictions enforced (Bowers v. Baystate) See Act 1201(f): A person who has lawfully obtained the right to use a copy of a computer program may circumvent a technological measure that effectively controls access to those elements of the program that are necessary to achieve interoperability of an independently reated computer program with other programs, and that havnet previously been readily available to the person engaging in the circumvention, to the extent that any such acts of identification and analysis dont constitute infringement under this title

b.

TRADEMARK LAW SOURCE OF AUTHORITY 1. 2. Derived from tort common law: Unfair competition, misappropriation, and consumer deception/misrepresentation Commerce Clause (Art 1, 8, cl. 8) + Necessary and Proper Clause

FUNCTION OF TMS 1. 2. 3. 4. 5. Form of advertising b/c allows makers to get their name in front of potential customers cheaply Guarantees quality and competition, since a merchant who identifies herself with her goods puts her reputation on the line Reduces information and transaction costs by allowing customers to estimate the nature and quality of goods before purchase Competitors may be tempted to copy the TM of a rival producer known for superior quality b/c it is easier to copy a TM than to duplicate production techniques, quality assurance programs, etc. Protects holders investment in creation of the mark, in advertising and promoting the product with the mark, and in high-quality raw materials, production equipment, and quality assurance techniques. Assures producer that it (and not an imitating competitor) will reap the financial and reputation-related rewards associated with a desirable product TMs have come to serve a more expressive role in addition to their original function of identifying a source for a commercial product. The logo in some sense is being sold by itself; the item to which it is attached is an add-on, a substrate for the real product of value. Certainly this is true of T-shirts, pins, and other logo-bearing items. Instead of logos identifying products, products carry logos

6.

TM CREATION 1. 2. 3. Use or bona fide intention to use In commerce Of a distinctive mark

SCOPE OF TM RIGHT 1. 2. 3. The senior (first) user may prevent junior (subsequent) users form employing the same or a similar mark, where there is a likelihood of confusion b/tween the two marks Protection lasts only so long as mark is used or there is intent to resume use Not an interest in the mark per se, but in the goodwill/reputation the mark has created for the business

TM REGISTRATION 1. 2. 3. 4. 5. Use-based registration Intent-to-Use registration: One may register and protect a TM based on an intention to use that mark in commerce within three years. However, right remains inchoate until use actually occurs Cancellation of TMs, 37: When a ct. determines mark is either generic or descriptive lacking secondary meaning, it may enter order cancelling registration 8: Each term lasts 10 years; but under 9, it can be renewed indefinitely Benefits of Registration: a. 7: Prima facie evidence of validity; 7(c) application to register mark considered constructive use

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b. c. d.

22: Constructive notice of ownership 33(a) presumptions Opportunity to become incontestable: 15, 33(b) presumptions

TYPES OF TMS 1. 2. TM, 45 Servicemark, 45 a. Service marks generally subject to the same rules as TMs b. Attempts to register service marks for services closely related to the sale of goods: Where the services are expected or routine in connection with the goods, registration is rejected. Otherwise, closely related registrations will proliferate, clogging the register Trade Names: a. Identify the company rather than goods/services. b. Cant be registered unless they actually function to identify the source of particular goods or services, rather than merely identifying the company. However, generally registrable in state offices c. State and federal common law may provide protection against confusingly similar company names

3.

UNFAIR COMPETITION, 43(a) 1. 2. 3. 4. Passing Off: Producer misrepresents his own goods or services as someone elses (Dastar) Reverse Passing Off: Producer misrepresents someone elses goods or services as his own (Dastar) TM is a subset of unfair competition Federal remedy against one who used in commerce either a false designation of origin, or any false description or representation in connection with any goods or services. But not a federal codification of the overall law of unfair competition - it applies only to certain unfair trade practices explicitly prohibited by its text (Dastar) Attribution and the Meaning of Origin of Goods (Dastar) a. Origin of Goods refers to the producer of the tangible goods offered for sale, not to the author of any idea, concept, or communication embodied in those goods. To hold otherwise would be akin to finding that 43(a) created a species of perpetual patent and , which Congress cant do. b. Justifications For No Attribution Requirement 1. 43(a) prohibits actions that deceive consumers and impair a producers goodwill. Consumers buying a branded product dont assume the brand-name company is the same entity that came up with the idea for or designed the product. Typically, she doesnt care who did so. 2. Allowing a cause of action under 43(a) for failure to attribute would create a species of mutant law that limits the publics federal right to copy and to use expired s. Once the patent or monopoly has expired, the public may use the invention or work at will and without attribution. In construing the LA, cts. prevent misuse or over-extension of TM and related protections into areas traditionally occupied by patent or . 3. Practical problems of reading origin to require attribution of uned materials a. Figuring out who is in the line of origin is difficult b. Manufacturers of products would always be liable: Liable for failing to credit the creator of a work on which their lawful copies are based, and liable for false sponsorship of the copy for crediting the creator c. 43(a)(1)(A) doesnt give one a claim for failure to attribute authorship, but under the correct circumstances, failure to attribute authorship might create problems under 43(a)(1)(B) 1. EX: If D represents, in advertising materials or similar promotional items, that its copy of an uned work is much different than the original, he could be liable under 43(a)(1)(B) 43(a), protecting qualifying unregistered marks, prohibits a broader range of practices than 32 for registered marks. (Two Pesos)

5.

6.

DISTINCTIVENESS 1. Distinctiveness Classifications: a. Arbitrary and Fanciful: 1. Mark bears no relationship to the product/services to which it is applied. 2. Strongest b/c any value it creates is from association of the mark with the source rather than with a product. Inherently distinctive b. Suggestive: 1. Suggests some particular characteristic of the goods or services to which it applies and requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the goods and services - suggests a product in peoples minds. 2. Inherently distinctive c. Descriptive: 1. The mark conveys an immediate idea of the qualities, characteristics, effect, purpose, or ingredients of a product or service (i.e., color, odor, function, or dimensions) 2. Require proof of secondary meaning ( 2(e)(1) + 2(f)) d. Generic: 1. The natural way to refer to that type of product - the name of a particular genus or class of which an individual article or service is member. Tells the buyer what it is, not where it came from 2. Unprotectable b/c of language by which the goods may be distinguished from the goods of others 3. If a registered mark becomes generic as to a particular product or service, the registration is subject to cancellation, 14 4. Mark may be generic in one market, but protectable in another

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2.

3.

4.

5.

Burden of Proof: Distinction b/tween a term generic by reason of common usage and by reason of expropriation (Murphy Bed) a. If mark is generic before the product developer applied them to his product, P has burden of proving the mark is a valid TM and that its unregistered mark isnt generic b. Where the public has appropriated a term established by a product developer, D has burden of proving genericness 6. Factors to determine whether D proved, in the eyes of a substantial majority of the public, that Ps term is generic: (Murphy Bed) a. Whether PTO or TTAB has made a decision, such a decision is to be accorded great weight b. Whether term is included in dictionaries as a standard description. Dictionary definitions arent conclusive proof of genericness, but they are influential b/c they reflect general publics perception of a marks meaning and implication c. Whether D introduced as evidence numerous examples of newspaper and magazine use of the phrase to describe generally a type of product. Such evidence isnt determinative, but is a strong indication of the general publics perception that the product connotes something other than the product manufactured by the particular source 7. Once mark is generic, proof of policing cant pull it out of the public domain, competitors can use it for the same or similar products 8. Preventing and Policing Genericide: Apart from general advertising, firms police the uses of their marks via lawsuits and by constraining the use of marks by the public, advertisers and newspapers. This potentially conflicts with competition (comparative advertisement, consumer product reviews) and 1st A. (news reporting, free speech) values. It also may extend the TM owners power beyond bounds of commercial use, one of the elements of TM infringement. 9. Trade dress and product configurations can be generic. Generic product configuration may be cancelled even if incontestable 10. 14: The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become generic. A mark may become generic as to some, but not all, goods and that in that case it may be cancelled in part. 11. Generic marks may be entitled to protection against some forms of unfair competition. A generic mark that has acquired secondary meaning may require that other users take steps to avoid confusion. e. Classification is a factual issue, reviewed under a clearly erroneous standard (Zatarains) Colors, Shapes, Sounds, and Scents (Qualitex v. Jacobson) a. TMable b/c LA definition is expansive (any) and each is capable of identifying and distinguishing source b. Color requires proof of secondary meaning Secondary Meaning: a. Acquired when the relevant public associates the mark with the source, rather than the product. Buyers neednt know the identity of the source (source can be anonymous), only that the product or service comes from a single source. Burden of proof to establish secondary meaning rests at all times on the party seeking to establish legal protection for the mark, and a high degree of proof is necessary for descriptive terms. (Zatarains) b. Existence of secondary meaning is a factual question reviewed under the clearly erroneous standard. (Zatarains) c. Both direct and circumstantial evidence is relevant (Zatarains) 1. Circumstantial Evidence none of these factors alone will prove secondary meaning, but in combination they may a. Amount and manner of advertising not the extent of the promotional efforts, but their effectiveness in altering the meaning of the term to the consuming public b. Volume of sales, and c. Length and manner of use 2. Direct evidence - Survey evidence, most persuasive d. An incontestable mark under 15 cant be challenged as lacking secondary meaning, although subject to other statutory defenses (Zatarains) e. TM Office generally requires applicants for federal registration to show more than secondary meaning in a limited area. (Adray v. Adry-Mart) f. Some cts. (esp 2d Circ) have done away with need to prove secondary meaning where P can point to some other equitable factor in their favor, like intentional deception or palming off. g. Marks Requiring Secondary Meaning: 1. Geographic marks 2. Titles of single literary works 3. Descriptive titles of literary series 4. Not-inherently distinctive designs and symbols 5. Non-inherently distinctive trade dress and packaging 6. Non-inherently distinctive product and container shapes 7. Personal names 8. Color Tests to determine whether a mark is descriptive (Zatarains) a. Dictionary Test: Start with dictionary b/c dictionary definition of the word is an appropriate and relevant indication of the ordinary significance and meaning of word to the public b. Imagination Test: If a term requires imagination, thought and perception to reach a conclusion as to the nature of goods, it is suggestive. Alternatively, term is descriptive if standing alone it conveys information as to the characteristics of the product c. Whether competitors would be likely to need the terms in describing their products. A descriptive term generally relates so closely and directly to a product or service that other merchants marketing similar goods would find the term useful in identifying their own goods. The fact that a term isnt the only or even the most common name for a product isnt determinative d. The extent to which a term actually has been used by others marketing a similar service or product. If multiple people select the same term to describe their similar products, the term in question is most likely descriptive Misspellings and Acronyms: a. Majority Rule: Use of the phonetic equivalent of the words, like misspelling it, doesnt render the mark protectable (Zatarains)

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b.

6.

7. 8.

Minority Rule: Ask whether the misspelling or acronym has the same connotation as the original descriptive or generic mark. If it does, the acronym isnt entitled to protection. If some operation of the imagination is required to connect the initials with the product, the initials cant be equated with the generic phrase, but are suggestive in nature, thereby rendering them protectable. Foreign Marks: a. Doctrine of foreign equivalents: Foreign words must be translated into English for purposes of determining their protectability. b. Similarity of meaning in translation is important, but not determinative, in deciding descriptiveness issue. The relation in sight and sound b/tween the English and foreign terms is also important; a much closer approximation b/tween the meaning of the foreign term and the English equivalent is necessary to justify a refusal to register on that basis alone where the marks otherwise are totally dissimilar Use of the letter e as a prefix or virtual in front of a commonly known and understood word yields a descriptive term Domain names begin as descriptive terms with a generic suffix (.com) but may build source identification and goodwill over time b/c of the uniqueness of the address

INFRINGMENT 1. P must prove: a. He has a valid mark b. Likelihood of confusion Fair Use Defense: (Zatarains) a. An affirmative defense to a claim of TM infringement b. Elements: 1. Action involves descriptive terms 2. D used the mark fairly and in good faith only to describe to users his goods or services, or their geographic origin, 33(b)(4) c. Factors: 1. Whether Ds intend to use the term in a TM sense and had never attempted to register the words as a TM 2. Whether D consciously packaged and labeled his products so as to minimize any potential confusion in the minds of consumers 3. Extent of dissimilar trade dress 4. Defense isnt negated by proof of likelihood of consumer confusion. Otherwise, there would be no defense at all, since proof of consumer confusion is necessary to make out a claim of TM infringement. Ct. declined to specify how much confusion necessary before use was unfair (KP Permanent Makeup) d. Justification: 1. D is using the term in its primary, descriptive sense rather than its TM sense 2. Prevents TM holder from preventing others from accurately describing their own goods 32(a) Registered marks; 43(a)(1)(A) Unregistered marks

2.

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LIKELIHOOD OF CONFUSION 1. Determine whether the goods compete for sales: (Sleekcraft) a. If Ds goods compete with Ps, infringement is usually found if the marks are sufficiently similar so that confusion can be expected b. If the goods are totally unrelated, no infringement b/c confusion is unlikely c. If goods are related, but not competitive, must consider non-exhaustive list of factors. Related goods are those products which would be reasonably thought by the buying public to come from the same source if sold under the same mark. The actual factors considered vary in each circuit 1. Strength of the mark: a. If Ps weak is mark, it is entitled to a restricted range of protection. Only if the marks are quite similar, and the goods closely related, will infringement be found b. An incontestable mark isnt necessarily a strong mark for purposes of determining likelihood of confusion. Validity and infringement are separate inquiries and incontestability applies only to TM validity. 2. Proximity of the goods a. Ensures public wont mistakenly assume there is an association b/tween the producers of the related goods. b. The more likely the public is to make such an association, the less similarity is required for a finding of likelihood of confusion. Less similarity b/tween the marks will suffice when the goods are complementary, the products are sold to the same class of purchasers, or the goods are similar in use AND function c. Relevant whether the items are sold to the same class of purchasers (Death Tobacco) 3. Similarity of the marks a. Tested on 3 levels: sight, sound, and meaning. Each must be considered as they are encountered in the marketplace. Similarities weigh more heavily than differences. b. A distinctive logo on the product and brochures may negate similarity of the words, if often present c. Generally tested by comparing the marks as a whole, rather than by dissecting them, but dissection is appropriate if the aim is to prevent TM owners from exercising control over generic, functional, or disclaimed portions of a TM or trade dress. B/c the perception of the consumer when exposed to the whole mark in context is the linchpin of TM infringement, Ds use of a similar or even identical TM on similar products may be ameliorated by other differences b/tween the mark and the packaging. For example, similarities in trade dress may not confuse consumers if the packages contain very different product names in large, obvious letters on the front. Disclaimers may also be effective in reducing confusion, if consumers notice them. If consumers would nonetheless be confused, however, efforts to ameliorate the effects of similar marks wont avoid TM infringement. 4. Evidence of actual confusion:

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Persuasive proof that future confusion is likely. B/c such evidence is so influential and there is a potential for abuse in the survey process, cts. are relatively strict about the surveys they allow, routinely rejecting or discounting surveys that are improperly designed or that ask ambiguous or leading questions. c. Likelihood of confusion is regularly found if as few as 10 to 15 percent of the consumers surveyed were confused. 5. Marketing channels used a. Factors: 1. Convergent marketing channels increase likelihood of confusion 2. Whether they both sell through authorized retail dealers in diverse localities 3. The sales methods employed 4. Price ranges 5. Whether advertised extensively though different national magazines b. If different submarkets are involved, determine whether the general class of product purchasers exposed to the products overlaps 6. Type of goods and degree of care likely to be exercised by the purchaser a. Standard is the typical buyer exercising ordinary caution, must include the ignorant and the credulous. b. When buyer has expertise in the field or the goods are expensive, buyer can be expected to exercise greater care in his purchases c. Even if Ds goods are of equal quality, present quality is no assurance of continued quality. The wrong inheres in involuntarily entrusting ones business reputation to another. 7. Ds intent in selecting the mark, and a. If D knowingly adopts a mark similar to anothers, presume the public will be deceived. Good faith is less probative of the likelihood of confusion, yet may be given considerable weight in fashioning a remedy 8. Likelihood of expansion of the product lines: A strong possibility that either party may expand his business to compete with the other will weigh in favor of finding present use infringing. When goods are closely related, any expansion is likely to result in direct competition. Types of Confusion Actionable Under the LA a. Source Confusion 1. Consumers believe Ds product is the same as Ps b/c of the similarity b/tween the marks, allowing D to take sales away from P by trading on Ps goodwill. 2. Confusion can occur whether both companies actually sell the same or similar products or not. Identical TMs can cause source confusion even in the absence of direct product competition. D wont take sales away from P, but will hurt P: a. If Ds product quality is inferior, consumers may blame P and stop buying Ps products b. P may expand into Ds market, in which case confusion will result b. Sponsorship Confusion 1. Consumers are caused to believe P is somehow affiliated with or sponsors Ds products or vice versa 2. Only expressly addressed in 43(a), but likely can be applied to registered marks under either 43(a) or 32 3. Test is still whether consumers are likely to be confused by the similarity of the marks, so many of the same factors apply c. Initial Interest Confusion 1. D uses Ps mark to lure consumer to his business. P doesnt have a business there, so confusion dispelled before an actual sale occurs. However, D is still trading on Ps good will to get business. 2. Product relatedness (whether parties compete) and level of care exercised by consumers are relevant factors (Checkpoint Systems) 3. Web pages often use metatags - words on the page invisible to the user but which are read by computer search engines. Some companies put the names of their competitors products (or popular TMs) into their metatags in an effort to draw unsuspecting consumers to their site. Infringement cases seem to turn on whether there was a legitimate reason to make reference to the TM on the web page: a. Use of Ps TM in a website metatag is TM infringement if it contributed to customer confusion (Brookfield Commns) b. Use of the mark in a metatag okay if it accurately describes Ds product (Playboy Enterprises) d. Post-Sale Confusion 1. Majority of cts. recognize post-sale confusion as actionable 2. Wrong consists in that a 3d party is likely to confuse Ds product as being Ps. 3. Justification: a. Some customers will buy Ds knock-off to acquire prestige gained by owning Ps product. b. If there are too many knockoffs in the market, sales of the originals may decline b/c public is fearful that what they are purchasing may not be an original. c. Public may be deceived in the resale market if it requires expertise to distinguish b/tween an original and a knockoff. d. Purchaser of an original is harmed by the widespread existence of knockoffs b/c high value of originals, derived in part from their scarcity, is lessened e. Reverse Confusion 1. When a large company adopts mark of a smaller TM owner. Risk is that the public will come to associate the mark not with its true owner but with the infringer (who has spent a great deal of money to advertise it). 2. Cts. say the relative size of the companies doesnt matter - companies have periodically been forced to halt or even retract major advertising campaigns b/c of reverse confusion problems 3. Posner recently created a new TM classification: The dual use TM. Reasoned that where the public, not D, had appropriated a TM for use to describe another product or service, TM law shouldnt stand in the way. Both parties then have rights to the mark (IL High School Assn)

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PRIORITY AND RELATED MATTERS 1. Priority and ownership based on use a. Prevents warehousing of brand names to make a rivals marketing more costly b. Lets others know they shouldnt invest resources to develop a mark similar to one already used in the trade. 22 Registration gives nation-wide constructive notice A trade name, even one that lacks any independent TM significance, may bar registration of a TM or service mark that is confusingly similar to that trade name. (Malcolm Nicol) ITU Applications: Assuming an ITU application is otherwise allowable, the TM Office will issue a notice of allowance to the TM owner TM owner then has six months (extendable to 1 year automatically and to 3 years for good cause shown) to submit a verified statement the TM has in fact been used in commerce, at which point it is entered on the Principal Register. If the TM owner doesnt submit such a statement, TM is considered abandoned. Assuming ITU registrant does eventually use the mark, the initial application will be considered constructive use, entitling the registrant to nationwide priority from the date of the application. Priority By Contract: Covenants Not to Sue When a well-known TM is abandoned, priority question involves a race among rivals to capture the mark.

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5. 6.

GEOGRAPHIC LIMITATIONS 1. CL: TM protected only in the areas where the marked products are sold or advertised. Still the rule for unregistered marks. a. Exceptions: 1. TM owner is entitled to the exclusive use of her mark in any geographic area in which the marks reputation has been established (e.g., by national advertising or media coverage), even if the product isnt sold there. 2. TM owner is entitled to protect the mark in a territory which he is expected to reach in the normal expansion of his business, even if there is no current likelihood of confusion in that area 3. TM owner can prevent anyone from intentionally trading on her goodwill, even outside her established geographic area. Only innocent (or good faith) use of the same mark is protected Registration: a. Automatically confers nationwide protection of the mark, retroactive to the date of the TM application, even if the goods for which the mark is used are sold or advertised in only a small part of the country b. Protects businesses that plan to expand and those that fear a large national company might use the same name Same Mark, Same Goods, Different Geographic Areas a. If neither party registers its mark, the common law rule applies. Each party is entitled to exclusive use of the mark in the areas where it has established goodwill. b. Should the marks come into conflict in a particular geographic area, conflict is resolved in favor of the earliest user in that area. c. Once one registers her mark, he is entitled to the exclusive right to use the mark throughout the country, except in areas where an unregistered user has established prior use. The non-registering party is frozen in the use of his mark, however, and cant expand it outside his existing territory or a natural zone of expansion. d. If both parties file for registration, the TM Office will generally declare an interference b/tween the 2 applications. If the parties agree, or if the TM Board determines that registration of both marks is unlikely to cause confusion, it is possible that both marks may be registered for concurrent use. If two or more marks are registered concurrently, however, the TM Office will impose whatever restrictions on the use of the marks are necessary to prevent confusion among consumers 1. Concurrent use applies only to two marks that are actually in use, not to ITU applications Priority disputes often resolved by TTAB through oppositions or interferences a. 13: Any person who believes he would be damaged by the registration of a mark upon the principal register may file an opposition in the PTO, stating the grounds therefore. b. 1062(a): TM applications are published before issuance, so interested parties have the opportunity to search for and oppose potentially damaging applications. c. Applications may be opposed by showing the mark isnt entitled to registration. Often the party objecting to an application will have filed an application for the same or a similar mark. In that circumstance, TM Commissioner may declare an interference b/tween the two applications. d. 16: Interferences may also be declared b/tween pending applications and registered TMs (unless they have become incontestable.) e. Interferences are heard by TTAB, which may register neither, either, or both, marks, and may impose restrictions or conditions on the registration of the mark, 1067, 1068. Both oppositions and interference decisions may be appealed to CAFC Secondary Meaning in the Making a. Tension: Priority based on first use, but P must prove secondary meaning before a descriptive mark receives protection b. Policy For: Seeks to prevent pirates from intentionally siphoning off anothers nascent consumer recognition and goodwill 1. Response: Existing law prevents piracy in the early stages of product development: a. Intentional copying is persuasive evidence of secondary meaning b. Secondary meaning can develop quickly to preclude knock-off artists from infringing c. State unfair competition law may protect trade dress without proof of secondary meaning against bad faith Ds through actions for palming off, actual deception, appropriation of anothers property, or deliberate copying c. Tension: The secondary meaning requirement exists to insure something worth protecting exists before TM law limits the freedom of a competitor to compete by copying. But the so-called doctrine of secondary meaning in the making, by affording protection before prospective purchasers are likely to associate the trade dress with a particular sponsor, constrains unnecessarily the freedom to copy and compete. Focuses solely upon the intent and actions of the seller of the product to the exclusion of the consuming public, but the very essence of secondary meaning is the association in the mind of the public of particular aspects of trade dress with a particular product and producer.

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1.

d. e.

Rest, 17, cmt b: Freedom to copy product and packaging features is limited by the law of TMs only when copying is likely to confuse prospective purchasers as to source or sponsorship of the goods. Imitation or even complete duplication of anothers product or packaging creates no risk of confusion unless some aspect of the duplicated appearance is identified with a particular source. Unless a design is distinctive and thus distinguishes the producers goods from those of others, it is ineligible for protection as a TM Cts. virtually unanimous in rejecting the idea of protecting secondary meaning in the making, as inconsistent with the idea that descriptive marks arent protected. TM Offices Theory of Priority for Marks with Secondary Meaning: Where two parties seek to register the same descriptive marks, registration is granted to whichever mark first acquired secondary meaning, regardless of when the two marks were first used.

2 BARS TO REGISTRABILITY IMMORAL, DISPARAGING, OR SCANDALOUS MARKS 1. 2. 2(a): Must consider the term in context in the manner used in the marketplace. (Harjo v. NFL) Scandalous Marks: 2-step Test to Determine Whether Matter is Scandalous a. Ct. or Board determines the likely meaning of scandalous for the relevant period (registration), consider the mark in the context of contemporary attitudes also b. Whether, in view of the likely meaning, the matter is scandalous to a substantial composite of the general public. Factors: 1. Intent, or lack thereof, to shock or ensure the scandalous connotation of the mark is perceived by a substantial composite of the general public. However, such intent, or a lack thereof, isnt dispositive Disparaging Marks: a. Determination is highly subjective b. In determining whether a mark is disparaging, perceptions of the general public are irrelevant. Rather, b/c the portion of 2(a) proscribing disparaging marks targets certain persons, institutions or beliefs, only the perceptions of those referred to, identified or implicated in some recognizable manner by the involved mark are relevant to this determination. Who comprises the targeted, or relevant, group must be determined on the basis of the facts of each case Contemptuous or Disreputable Marks: a. Determine ordinary meaning of contempt and disrepute, as they were defined at the time of registration and more recently b. Same rule for whether such matter brings persons, living or dead, institutions, beliefs, or national symbols into contempt or disrepute

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GEOGRAPHIC TERMS 1. 2. 3. 4. 2(a) Deceptive Marks a. Never Registerable 2(e)(1): Merely Descriptive of Goods 2(e)(1): Deceptively Misdescriptive of Goods 2(e)(2): Primarily Geographically Descriptive a. Public Association Test: In determining whether a geographical term is primarily geographically descriptive of a product, ask whether there is an association in the public mind of the product with the particular geographical area (In re Nantucket) b. Can be registered if theres secondary meaning 2(e)(3): Primarily Geographically Deceptively Misdescriptive a. Never registerable b. There must be a reasonable basis for believing that purchasers are likely to be deceived c. Ask whether the public associates the goods with the place which the mark names. If the goods dont come from the place named, and the public makes no goods-place association, the public isnt deceived and the mark is accordingly not geographically deceptively misdescriptive (In re Nantucket) Appellations of Origin: a. In many countries, geographic terms usually for food or wine certify composition, traditional preparation techniques, quality, and actual taste b. 1994 GATT Amendments: Congress adopted limited recognition of the appellations of origin concept in 2(a) c. 2(e) has also long provided that appellations of origin registered under 4 collective and certification marks are an exception to the prohibition on geographically descriptive TMs. A certification mark is a guarantee of authenticity. Certification marks may be registered without proof of secondary meaning, but must be made available in a nondiscriminatory fashion to anyone who complies with the terms of the certification. Group certification marks serve much the same quality assurance function as individual TMs, but they may effectively protect small businesses who couldnt establish a well-known mark on their own

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SURNAMES 1. 2. 2: Marks that are primarily merely a surname in the minds of consumers are descriptive, whether or not the mark actually represents the owners surname Test: What is the primary significance to the average member of the purchasing public would they, upon seeing it used as a TM, recognize it as a surname? Cant stop with the directory listings and absence of other meanings, but must evaluate all the relevant factors. While rare surnames may nevertheless be considered to be primarily merely surnames, the degree of a surnames rareness should have material impact on the weight given the directory evidence. (In re Garan) Cts. consistently impose restrictions on subsequent users when there is a likelihood of confusion, even if subsequent user is using his own name. A junior users right to use his name yields to the extent its exercise causes confusion with the senior users mark. Cts. are more likely to permit the junior use if the user disclaims any connection with the more famous senior user. Recent trend is to forbid any use of the name as part of the proprietors TM, permitting use only in a subsidiary capacity, and with the first name attached in equal

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size. In either event, the junior user has almost uniformly been bound to display negative disclaimers. Equivalent to a limited fair use defense tailored to personal names along the general contours of the fair use defense for descriptive terms OPPOSITION, 13(a) 1. 2. Opposition requires frequent searches of the Official Gazette, where prospective TMs are published. An opposer must plead and prove that: a. It is likely to be damaged by registration of the applicants mark (the standing requirement), and 1. To establish standing, opposer need only be something more than a gratuitous interloper or an avenger of someone elses rights b. That there are valid legal grounds why the applicant isnt entitled to register its claimed mark 1. Often rely on one of the bars to registration described in 2, 2(d) being the most common, where the applicants mark so resembles either: a. Opposers registered mark, or b. Opposers prior common law mark or trade name, as to be likely to cause confusion Opposer = P; Applicant =D, so opposer has burden of proving the applicant has no right to register the contested mark. Likelihood of confusion test the same as used in general litigation

3. 4.

CANCELLATION 1. 2. 3. One who believes he is or will be damaged by registration may petition for cancellation of marks on either the Principal or Supplemental Register, 18. Cancellation petitions heard by TTAB. In civil suits where a federally registered mark is at issue, ct. may order cancellation Even after cancellation, mark may still enjoy common law rights

CONCURRENT REGISTRATION, 2(d) 1. 2. Such registration cant be likely to cause confusion Senior user can be awarded registration covering all parts of the US except those regions where the subsequent (junior) user can establish existing rights in its actual area of use or zones of natural expansion. The junior user must show that confusion isnt likely to result from the concurrent registration. 3 Exceptions (Beatrice Foods) a. PTO isnt required to grant registration contrary to an agreement b/tween the parties that leaves some territory open b. Where the junior user is the first to obtain federal registration, the junior user obtains nationwide rights subject only to the territorial limitations of the senior user c. Areas of mutual nonuse may be maintained if the mark, goods, and territories are such that this is the only way to avoid the likelihood of confusion

INCONTESTABILITY 1. 2. Incontestable status provides, subject to the provisions of 15 and 33(b), conclusive evidence of the registrants exclusive right to use the registered mark, 33(b) 15 incorporates by reference subsections (c) and (e) of 14. An incontestable mark that becomes generic may be canceled at any time pursuant to 14(c), allowing cancellation of an incontestable mark at any time if it: a. Has been abandoned b. Is being used to misrepresent the source of the goods or services in connection with which it is used, or c. Was obtained fraudulently or contrary to the provisions of 4 Incontestability is a quiet title provision (Park N Fly) Concern: Incontestable status of a descriptive mark might take from the public domain merely descriptive language (Park N Fly) a. LA allows a mark to be challenged at any time if it becomes generic, and, under certain circumstances, permits the nonTM use of descriptive terms contained in an incontestable mark. b. If monopolization of an incontestable mark threatens economic competition, 33(b)(7), provides a defense on the grounds that the mark is being used to violate federal antitrust laws It is not a defense in an infringement action that an incontestable mark is merely descriptive. (Park N Fly) For a registrants mark to be deemed incontestable, registrant must use the mark for five continuous years following the registration date and must file certain affidavits with the Commissioner.

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5. 7.

PRINCIPAL V. SUPPLEMENTAL REGISTER 1. Advantages of Registration on the Principal Register a. Nationwide constructive use and constructive notice, which cut off rights of other users of the same or similar marks, 22 and 7(c) b. Possibility of achieving incontestable status after 5 years, which greatly enhances rights by eliminating some defenses, 15 c. Right to bring a federal cause of action without regard to diversity or minimum amounts in controversy, 39 To be eligible for the Supplemental Register, a mark need only be capable of distinguishing goods or services used primarily for US companies to establish TMs in foreign countries that have registration systems a. Not available for generic names, but available for registration of trade dress b. Confers no substantive TM rights beyond common law

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c.

d.

Has no evidentiary effects, doesnt provide constructive notice of ownership, cant become incontestable, and it cant be used as a basis for the Treasury Dept to prevent importation of infringing goods. However, a mark on the Supplemental Register may be litigated in federal ct; may be cited by the PTO against a later applicant; and may provide notice to others that the mark is in use. Marks not subject to ITU filings, interference proceedings, or opposition challenges, but may be canceled at any time by a ct.

TRADE DRESS 1. 2. 3. Defined: A products total image and overall appearance, like size, shape, color/color combinations, texture, graphics, or even particular sales techniques (Two Pesos) Principles qualifying a mark for registration under 2 are applicable in determining whether an unregistered mark is entitled to protection under 43(a) (Two Pesos) Product Design v. Product Packaging (Samara Bros.) a. Product design cant be inherently distinctive, must acquire secondary meaning 1. Policy: No consumer predisposition to equate the feature with source. Consumers are aware that even the most unusual of product designs is intended not to identify source, but to render the product more useful or appealing 2. Alternatives ameliorate any hardship caused by secondary meaning requirement: If product design is inherently distinctive but hasnt yet obtained secondary meaning, producer can ordinarily obtain a design patent or for the design. b. Product packaging can be inherently distinctive, neednt acquire secondary meaning 1. Policy: Very purpose of attaching a particular word to a product, or encasing it in distinctive packaging, is most often to identify the source of the product. Although the words and packaging can serve subsidiary functions, like attracting consumers attention to the product on a crowded store shelf, their predominant function remains source identification. Consumers are therefore predisposed to regard those symbols as indication of source Where it isnt reasonable to assume consumer predisposition to take an affixed word or packaging as indication of source, inherent distinctiveness wont be found c. Tertium quid can go either way, depending if more like design or packaging 1. Restaurant dcor is either product packaging or else some TERTIUM QUID akin to product packaging d. To the extent there are close cases, cts. should err on the side of caution and classify ambiguous trade dress as a product design, thereby requiring secondary meaning Unregistered Trade Dress Infringement, 43(a)(3): P must prove: a. Trade dress is non-functional b. Ds trade dress is likely to cause confusion with the product for which protection is sought c. Distinctiveness, proven b/c either 1. Inherently distinctive (arbitrary/fanciful, suggestive) 2. Has acquired secondary meaning (descriptive + SM) TM v. Trade Dress Protection a. Ability to prevent importation of confusingly similar goods, 1124 b. Constructive notice of ownership, 1072 c. Incontestable Status, 1065 d. Prima facie evidence of validity and ownership, 1057(b)

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FUNCTIONALITY 1. 2. For a trade dress claim, features are deemed functional until proved otherwise by the party seeking protection (Traffix) A utility patent is strong evidence the features therein claimed are functional. (Traffix) a. If trade dress protection is sought for those features, the strong evidence of functionality based in the previous patent adds great weight to the statutory presumption for functionality b. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing the feature isnt functional, for instance by showing it is merely an ornamental, incidental, or arbitrary aspect of the device c. Consider the patent as a whole and the prosecution history to see if the feature in question is shown as a useful part of the invention. Claims made in earlier litigation are relevant to the functionality inquiry (Traffix) Functionality Test: Product Feature is Functional if it: (Traffix) a. Is essential to the use or purpose of the article, or b. Affects the cost or quality of the article. Aesthetic Functionality Test: Functional feature if the exclusive use of it would put competitors at a significant non-reputation-related disadvantage (Traffix) a. Pagliero: If the particular feature is an important ingredient in the commercial success of the product, to enjoin its use in the absence of a patent or would undermine the interest in free competition. 1. Subsequent cases relaxed this standard by focusing on the extent to which trade dress protection forecloses alternative designs b. Prevents Color Scarcity: Where a color serves a significant nonTM function, cts. will examine whether its use as a mark would permit one competitor to interfere with legitimate (non-TM related) competition through exclusive use of an important product ingredient Functionality is a threshold issue if functional, no need to go on to distinctiveness inquiry (Traffix) Alternative Designs: SC says if functional, no need to determine whether alternative designs exist; Lower cts. say this is true, but that the presence of alternative designs may help make a determination of whether the design is functional in the first place. Design Patents, PA 171: Ornamental means not utilitarian Relationship b/tween a design patent and aesthetic functionality? a. Neither can be functional b. No exclusive advantage allowed for aesthetic design under TM, but does allow exclusive advantage for patent

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11. 12.

13.

c. To get a design patent you need to prove the more searching requirements of the patent Act (nonobviousness, novelty, etc.). d. If something is aesthetically functional, not protected by TM law, but would be protected by design patent law. Functional marks may appear on the Supplemental Register. Just b/c product is patented, doesnt necessarily mean all its features are functional. Many patented products have distinctive features that can be separated from the functional elements. a. : Manufacturer of useful articles can show the expressive elements are physically or conceptually separable. b. : Manufacturer can overcome the presumption for functionality De Jure (Legal) v. De Facto (Factual)Functionality Policy: Prevents a producer from controlling a useful product feature into perpetuity (Qualitex v. Jacobson) a. Policy: Patent law, not TM law, encourages invention by granting inventors a monopoly over new product designs or functions for a limited time, after which competitors are free to use the innovation. If products functional features could be ed, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever Relevant LA Provisions: a. 2(e)(5): Subject matter bar for functional features b. 43(a)(3): Person trying to assert an unregistered trade dress protection must prove its not functional c. 33(b)(8): Functionality is a defense to incontestability

ABANDONMENT, 45 1. Federally registered TM abandoned if: (MLB v. SNOD) a. Its use has been discontinued b. With intent not to resume 1. May be inferred from circumstances 2. Reluctant to find no intent to resume if mark owner had excusable reason for nonuse i.e. nonuse was involuntary (bankruptcy) c. Nonuse for 3 consecutive years is prima facie abandonment, establishing a rebuttable presumption of abandonment - TM registrant must produce evidence there was an intent to resume use of the TM. Party seeking cancellation of the registered mark has burden of proving abandonment by a preponderance of the evidence (MLB v. SNOD) a. Justification: A certificate of registration is prima facie evidence of the registrations validity and continued use Minor changes in the mark that dont affect the overall commercial impression of the mark dont constitute abandonment (MLB v. SNOD) Resumption: When P abandons the mark and thereafter resumes limited use of the mark a.. Any interest P has in the mark arose when commercial use of the mark resumed. Ps preemptive rights in the mark would extend only to the precise goods on or in connection with which the TM was used since resumption b. A mark retains residual goodwill if the proponent of a mark stops using it but demonstrates an intent to keep the mark alive for use in resumed business. The claim to residual goodwill wont preclude a finding of abandonment where the owner unequivocally declares its intention to discontinue use. A proper name cant be deemed abandoned throughout its possessors life, despite his failure to use it. (Kareem Abdul-Jabaar) 33(b)(2): Abandonment defenses and other defenses Abandonment is an affirmative defense

2. 3. 4.

6. 7. 8.

LICENSING 1. Unsupervised Licenses a. A TM can be licensed separately from the business in connection with which it had been used provided the licensor retains control over the quality of the goods produced by the licensee. Licensor has an affirmative duty to take reasonable measures to detect and prevent misleading uses of his mark by his licensees or suffer cancellation of his federal registration. Naked licensing, the grant of licenses without the rentention of control, is invalid (Dawn Donut v. Harts) 1. 14: A TM registration may be cancelled b/c the TM has been abandoned. 2. 45 Definition of abandoned includes any act or omission by the registrant which causes the TM to lose its significance as an indication of origin. b. See 5 and 45: Related Companies Doctrine 1. 5: TM owner can license related companies to use the mark 2. 45: related companies are companies are companies whose use is controlled by the TM owner. c. Policy For Control Requirement 1. Discourages products bearing the same TM that might otherwise be of diverse qualities from being released into the market, depriving the public of its most effective protection against misleading uses of a TM. d. Test: Whether P sufficiently policed and inspected its licensees operations to guarantee the quality of the products they sold under its TMs to the public. 1. Absence of an express contract right to inspect and supervise a licensees operations doesnt mean Ps method of licensing failed to comply with the requirements of the LA. P may in fact have exercised control in spite of the absence of any express grant by licensees of the right to inspect and supervise The Rule Against Assignments in Gross a. 10: Assignments of TMs alone, without any underlying assets or goodwill, are called assignments in gross. They are invalid b/c TMs are only repositories and symbols of goodwill, not true property rights. Consumers, having come to rely on a TM to identify the characteristics of a product as manufactured and sold by Firm A, would be harmed if A simply sold the mark outright to Firm B without transferring any of the employees or production machinery that Firm A had used to make its product. By the same reasoning, cts. invalidated TMs when sold to another firm for use on a different product.

2.

54

b.

c. d.

Traditional rule has been relaxed, allowing assignment of soft TM-related assets, such as customer lists, production formulas (as opposed to machinery), and even amorphous goodwill. 1. Some cases say that were the assignee has the requisite assets already, you dont have to transfer other assets to prevent it form being an assignment in gross Policy: If the symbol changes hands, and is now used to refer to a different product, consumers might be confused. The risk of confusion is greatest when TM assignor leaves the market. GATT Article 21: The owner of a registered TM shall have the right to assign his TM with or without the transfer of the business to which the TM belongs possible conflict here

NOMINATIVE USE: PARODY AND THE FIRST AMENDMENT 1. 1st A (Mattel v. MCA Records) a. Problems arise when TMs transcend their identifying purpose. Some TMs enter our public discourse and become an integral part of our vocabulary. TMs often fill in gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with such expressive value, the TM becomes a word in our language and assumes a role outside the bounds of TM law. (Mattel v. MCA Records) b. 1st A. may offer little protection for a competitor who labels its commercial good with a confusingly similar mark, but TM rights dont entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view. Were we to ignore the expressive value that some marks assume, TM rights would grow to encroach upon the zone protected by the 1st A. When unauthorized use of anothers mark is part of a communicative message and not a source identifier, the 1 st A. is implicated in opposition to the TM right. Simply put, TM owner doesnt have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source identifying function. (Mattel v. MCA Records) c. And Parody 1. Where an artistic work targets the original and doesnt merely borrow anothers property to get attention, 1 st A. interests implicated. A parodist whose expressive work aims its parodic commentary at a TM is given considerable leeway, but a claimed parodic use that makes no comment on the mark isnt a permitted TM parody use. 2. 2nd Circuit: Multi-factor likelihood of confusion analysis is awkward for parody. A parody must convey 2 simultaneous and contradictory messages: that it is the original, but also that it isnt the original and is instead a parody. To the extent that it does only the former but not the latter, it isnt only a poor parody but also vulnerable under TM law, since the customer will be confused d. Literary titles dont violate the LA unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work. 1. Justification: Though consumers frequently look to the title of a work to determine what it is about, they dont regard titles of artistic works in the same way as the names of ordinary commercial products. Nominative use doctrine: a. Defined: Where D uses a TM to describe Ps product, rather than its own b. Must meet 3-Prong Test (Playboy v. Netscape) 1. The product or service in question must be one not readily identifiable without use of the TM 2. Only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and 3. The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the TM holder c. Nominative Use v. Fair Use 1. Fair use uses Ps mark to describe Ds product

2.

DILUTION, 43(c) 1. Defined: Lessening the capacity of a famous mark to identify and distinguish goods or services regardless of the presence or absence of: a. Competition b/tween the parties, or b. Likelihood of confusion, mistakes, or deception Applies when the unauthorized use of a famous mark reduces the publics perception that the mark signifies something unique, singular, or particular. TRIPS Agreement includes a provision designed to provide dilution protection to famous marks. Federal dilution statute consistent with the terms of the agreement, as well as the Paris Convention. Addresses 1st A. concerns b/c a. Doesnt prohibit or threaten noncommercial expression. Nothing in this Act is intended to alter existing case law on the subject of what constitutes commercial speech. b. Exempts from liability the fair use of a mark in the context of comparative commercial advertising or promotion and all forms of news reporting and news commentary Doesnt pre-empt existing state dilution statutes. State laws are applied in cases involving locally famous or distinctive marks. Ownership of valid federal registration acts as a complete bar to a dilution action brought under state law. Limits remedy to an injunction unless the wrongdoer willfully intended to trade on the TM owners reputation or to cause dilution of the famous mark, in which case remedies under 35(a) and 36 are available Elements of a Dilution Claim (Nabisco v. PF Brands) a. The senior mark must be famous b. It must be distinctive c. The junior use must be a commercial use in commerce d. It must begin after the senior mark has become famous; and e. It must cause dilution of the distinctive quality of the senior mark Dilution Factors: (Nabisco v. PF Brands)

2. 3. 4.

5. 6. 7.

8.

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a.

4.

Distinctiveness of the senior mark 1. The more distinctive the mark, the greater the interest to be protected; Weak marks especially problematic if Ds use is in a distinctly different field. 2. Distinctiveness also measures likelihood the mark evokes the type of exclusive images and associations protected under the antidilution statutes. A very distinctive mark is thus more likely to suffer dilution of distinctiveness than is less distinctive mark b. Similarity of the Marks 1. The marks must be of sufficient similarity so that, in the mind of the consumer, the junior mark will conjure an association with the senior. In that manner the junior mark will lessen the distinctiveness of the senior mark. 2. Dilution can occur in a post-sale or a point-of-sale context c. Proximity of the Products and Likelihood of Bridging the Gap 1. Congress was especially concerned with junior uses of famous marks on products unrelated to the senior area of commerce, but dilution can occur where the products are competing as well. The closer the junior user comes to the seniors area of commerce, the more likely it is that dilution will result from the use of a similar mark. 2. There may be instances where, b/c of the low level of distinctiveness of the senior mark, or insufficient similarity b/tween the two, the use of the junior mark in a remote area of commerce would have little tendency to remind consumers of the senior mark and thus little capacity to dilute its effectiveness, but where use of the same junior mark in a closely related area would bring about the harm the statute was designed to avoid. A junior use that confuses consumers as to which mark is which dilutes the distinctiveness of the senior mark. 3. Where the junior mark is used on a different product, cts. examine whether the senior is likely to enter the juniors market, or bridge the gap. This factor recognizes the seniors interest in preserving avenues of expansion and entering into related fields d. Shared Consumers and Geographic Limitations 1. Extent of overlap among consumers for P and Ds products is meaningful b/c dilution requires that a mark become less distinctive to consumers. If the consumers who buy the products of the senior user never see the junior users products or publicity, then those consumers will continue to perceive the senior users mark as unique, notwithstanding the junior use. e. Sophistication of Consumers 1. Consumers familiar with the particular market segment are less likely to be confused by similar marks and may discern quite subtle distinctions. Conversely, unsophisticated customers lack this discrimination and are more vulnerable to confusion, mistake and misassociation. Purchasers of relatively inexpensive goods such as ordinary grocery store foods are held to a lesser standard of purchasing care. 2. While children may be the primary ultimate consumer of the product, they are generally not the purchaser f. Actual Confusion 1. While neither actual confusion nor likelihood of confusion is necessary to sustain an action for dilution, it can be highly probative evidence. Confusion lessens distinction. When consumers confuse the junior mark with the senior, blurring has occurred. 2. Except as surveys are used to test the likelihood of consumer confusion b/tween existing and yet-to-be marketed products, actual confusion can arise only where the junior and the senior mark have coexisted in the marketplace. g. Adjectival or Referential Quality of the Junior Use 1. Anti-dilution statute guarantees exclusivity to the senior in unrelated areas of commerce. The seniors mark might be arbitrary or fanciful in the senior area of commerce but highly adjectival or even generic in the juniors area. 2. The stronger the adjectival association b/tween the junior use and the junior area of commerce, the less likelihood there is that the juniors use will dilute the strength of the seniors mark. h. Factors not an exhaustive list 1. Other circuits modify: EX: 9th Circ (Playboy) a. Strength of the mark b. Proximity of the goods c. Similarity of the marks d. Evidence of actual confusion e. Marketing channels used f. Type of goods and the degree of care likely to be exercised by the purchaser g. Ds intent in selecting the mark, and h. Likelihood of expansion of the product lines i. There is a close interdependent relationship among the distinctiveness, similarity, and proximity factors. The weaker any of the 3 factors may be, the stronger the others must be to make a case of dilution Need Proof of Actual Dilution (Moseley v. Victoria Secret) a. Language of the Act is causes dilution. b. Supported by dilution definition: The contrast b/tween the initial reference to an actual lessening of the capacity of the mark, and the later reference to a likelihood of confusion, mistake, or deception in the second caveat confirms the conclusion actual dilution is needed c. Doesnt mean the consequences of dilution, such as an actual loss of sales or profits, must also be proved. If marks arent identical, the mere fact that consumers mentally associate the junior users mark with a famous mark isnt sufficient to establish actionable dilution. Such mental association wont necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution. Blurring isnt a necessary consequence of mental association. d. Direct evidence of dilution by consumer surveys may not be necessary if actual dilution can reliably be proven through circumstantial evidence the obvious case is one where the junior and senior marks are identical e. Kennedy, concurrence in Mosley 1. Considerable attention should be given to the word capacity in the definition of dilution as the lessening of the capacity of a famous mark to identify and distinguish goods or services.

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Capacity defined: Power or ability to hold, receive, or accommodate. If a mark will erode or lessen the power of the famous mark to give customers the assurance of quality and the full satisfaction they have in knowing they have purchased goods bearing the famous mark, the elements of dilution may be established. 3. Diminishment of the famous marks capacity can be shown by the probable consequences flowing from use or adoption of the competing mark. This analysis is confirmed by the statutory authorization to obtain injunctive relief. The essential role of injunctive relief is to prevent future wrong, although no right has yet been violated. Equity principles encourage those who are injured to assert their rights promptly. A holder of a famous mark threatened with diminishment of the marks capacity to serve its purpose shouldnt be forced to wait until the damage is done and the distinctiveness of the mark has been eroded. 5. 2 Types of Dilution: Blurring and Tarnishment a. Blurring: Reduces the exclusive association that consumers have b/tween the mark and source b. Tarnishment arises where a junior user undermines the image that consumers hold of a famous mark by using the mark to advertise unsavory products. Using a mark to criticize it isnt tarnishment 6. Fame Requirement: a. Outside the domain name context, a few cts. have significantly reduced the standard for fame by finding that a mark can be famous in a narrow product market. b. 43(c)(1)(F) indicates fame may be constricted to a particular market. 7. Use in Commerce Requirement: a. D must make commercial use in commerce of Ps famous mark, 43(c). b. Mere registration of a TM as a domain name doesnt constitute commercial use. When a domain name is used only to indicate an address on the Internet, the domain name isnt functioning as a TM. Something more than registration of the name is required before use of a domain name is infringing. In the interest of policing TMs on the Internet, however, cts. have stretched the definition of commercial use. 8. International Obligations: a. The Paris Convention: Article 6bis has been used to target TM pirates: individuals who identify famous TMs not yet used in their country and register those marks in anticipation of the famous TM owners expansion abroad. b. GATT-TRIPs signatory countries must provide some form of protection against dilution of famous marks. 9. Extension by Contract: Licensing and Franchising a. Turning Logos into Profit Centers: 1. TM licensing is growing. Badges of affiliation and prestige are increasingly common on products of all kinds. 2. Turning logos into profit centers poses problems for the legal system b/c traditionally, TMs were thought of as symbols representing products, rather than as products in and of themselves. Traditional TM law protects a TM only b/c, and only insofar as, it is emblematic of the goodwill behind a product. The mark itself is simply a vehicle to convey useful information regarding a products quality, prestige, etc. All this changes when the TM becomes the product. In these cases, the consumer is buying an image. The TM owner possesses rights in a symbol associated with certain qualities. Lending that symbol to diverse products connects those products to the feelings the symbol evokes. 3. 1975 case held that unauthorized sales of team emblems violated LA: The certain knowledge of the buyer that the source and origin of the TM symbols were Ps satisfies requirements of the Act. The argument that confusion must be as to source of the manufacture of the emblem itself is unpersuasive, where the TM, originated by the team, is the triggering mechanism for the sale of the emblem. a. Holding suggests it is improper to permit an anonymous 3 rd party to profit from Ps logo. Such a holding, however, is arguably at odds with traditional TM theory. 4. Although TM owners must still clear some formidable doctrinal hurdles, cts. have shown a willingness to expand doctrine beyond traditional limits in the face of these new commercial trends. b. TMs and Organizational Forms: Franchising 1. TMs are the cornerstone of a franchise system. TM of the franchisor is the identifiable symbol of continuity; indicating the presence of the national brand at each location. Thus, whatever the precise nature of the franchise, the franchisor and franchisee are very likely to be parties to a TM license agreement. 2. To maintain uniformity the franchisor almost invariably imposes certain contractual requirements on the franchisee, including agreements to purchase ingredients and other inputs from the franchisor, stipulations to frequent inspections, and profit-sharing arrangements 3. In many states various aspects of franchise contracts especially termination provisions are closely regulated. 10. Internet Banner Ads (Playboy v. Netscape) a. Keying: Allows advertisements to target individuals with certain interests by linking advertisements to pre-identified terms. b. If D displays competitors unlabeled banner ads, with no comparison to P, after Internet users type in Ps TM, then have a dilution cause of action 1. Ct. doesnt address situation where the banner ad or the search engine clearly identifies the ads source or where there is comparative advertising. c. Berzon, concurrence in Playboy 1. Thinks Brookfield should be reconsidered: Brookfield held use of the TMed terms in metatags (Part of the HTML code of a Web page,invisible to Internet users. Search engines use these metatags to pull out Web sites applicable to search terms) violated the LA b/c it caused initial interest confusion. 2. Brookfiled might suggest there could be a LA violation even if the banner advertisements were clearly labeled, either by the advertiser or by the search engine. So read, the metatag holding in Brookfield would expand the reach of initial interest confusion from situations in which a party is initially confused to situations in which a party is never confused. Unreasonable to find initial interest confusion when a consumer is never confused as to course or affiliation, but instead knows, or should know, from the outset that a product or link isnt related to the TM holder b/c the list produced by the search engine so informs him.

2.

57

11.

12. 13. 14.

There is a big difference b/tween hijacking a customer to another Web site by making the customer think he is visiting the TM holders Web site (even if only briefly), which may happen when the banner advertisements arent labeled, and just distracting a potential customer with another choice, when it is clear that it is a choice. (compare to generic products at Target) d. The mere sale of a keyword cant constitute direct TM infringement, but unclear whether the advertisers themselves might be liable for infringement if the text of the ads were confusing, and whether Google might be liable for contributory infringement if it encouraged such confusion. (GEICO v. Google) 3 Statutory Exemptions, Subsection (4) a. Comparative advertising b. News reporting and commentary, and c. Noncommercial use. 1. Meant as a 1st A. Defense: Noncommercial use refers to use that consists entirely of noncommercial, or fully constitutionally protected, speech. Intended to prevent cts. from enjoining constitutionally protected speech, like parodies. 2. To determine whether D can claim the exemption, look to the definition of commercial speech under the SCs 1 st A. caselaw 3. The core notion of commercial speech is that it does no more than propose a commercial transaction. If speech isnt purely commercial that is, if it does more than propose a commercial transaction then entitled to full 1st A. protection. No tarnishment cause of action in the federal statute Subsection 3: Safe Harbor Provisions TM Infringement v. Dilution: Damages a. TM allows damages b. Dilution almost always equitable relief only need willfulness to get damages

3.

ANTICYBERSQUATTING ACT 1. 2. Domain Names: Mnemonic devices that map to an IP address.; registered on a first-come, first-served basis by a variety of registrars Problem: People registered domain names that corresponded to the name or TM of someone else, often a large corporation, not in order to use it themselves, but to sell the valuable domain name to the TM owner for a price well in excess of normal price. This practice is known as cybersquatting. Others may register a companys name for legitimate reasons: to criticize a company or to advertise availability of a companys products at a website ANTI-CYBERSQUATTING CONSUMER PROTECTION ACT (ACPA), 43(d) a. TM infringement and dilution arent well suited to preventing cybersquatting. In a small number of cases where TM is famous, cts. sometimes stretch requirements to stop cybersquatting by ignoring or reducing the fame requirement b. ACPA makes it illegal for a person to register or to use with the bad faith intent to profit from an Internet domain name that is identical or confusingly similar to the distinctive or famous TM or Internet domain name of another person or company, 43(d). c. Cybersquatting Defined: The bad faith, abusive registration and use of the distinctive TMs of others as Internet domain names, with the intent to profit from the goodwill associated with those TMs. (Shields v. Zuccarini) d. Successful Ps may recover statutory damages in an amount to be assessed by the DC in its discretion, from 1,000 to 100,000 per domain name. Successful Ps may recover attnys fees in exceptional cases, 117(a) e. To succeed on an ACPA claim, P must prove that: 43(d)(1)(A) (Shields v. Zuccarini) 1. The mark is a distinctive or famous mark entitled to protection a. Factors to determine if mark is famous or distinctive, 43(c)(1) 1. Ct. considers: longevity of use; references in national media; sale of merchandise nationally; advertising in periodicals with wide circulation; large number of web-site visits 2. Ds domain name is identical or confusingly similar to Ps mark, and a. A few additional or deleted letters, or rearranging the order of the words is a strong similarity that is confusingly similar. b. Evidence of Internet users who were actually confused by Ds sites is useful c. Conduct covered by the phrase confusingly similar is the intentional registration of domain names that are misspellings of distinctive or famous names, causing an Internet user who makes a slight spelling or typing error to reach an unintended site. (Shields v. Zuccarini) 3. D registered the domain names with the bad faith intent to profit from them a. 43(d)(1)(B)(i) provides a non-exhaustive list of nine factors for determining whether there was bad faith b. In addition to listing the nine bad faith factors, the ACPA contains a safe harbor provision stating that bad faith intent shall not be found in any case in which the ct. determines the person believed and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful. (PETA v. Doughney) 1. A D who acts even partially in bad faith in registering a domain name isnt, as a matter of law, entitled to benefit from the safe harbor provision f. Ds fair use of a distinctive or famous mark only after the filing of a complaint alleging infringement cant absolve D of liability for his earlier unlawful activities. (Shields v. Zuccarini) g. Damages: 1. D who registers domain names in bad faith can be held liable for statutory damages even though registration was prior to enactment of the ACPA, Nov. 29, 1999, if D continued to use the site after the enactment of the Act. (Shields v. Zuccarini) 2. The ACPA expressly states that it shall apply to all domain names registered before, on, or after the date of the enactment of this Act. While the ACPA precludes imposition of damages in cases in which domain names were registered, trafficked, or used before its enactment, it doesnt preclude imposition of equitable remedies. (PETA v. Doughney) h. 3 Gray Area Scenarios: 1. D has its own TM that corresponds to the domain name. Identical TMs often coexist in different industries. If more than one company has a legitimate claim to a TM, any of those companies can register the domain name. The ACPA doesnt require that

3.

58

i.

j.

the domain name be assigned to the best or largest TM owner. However, ct. may rule for Ps where Ds bad faith outweighed its legitimate rights in the name. a. D violates ACPA when D knew there was likely confusion with Ps mark, and it discussed the possibility of selling the domain name to P he didnt have a legitimate interest in the name despite its corporate name (Virtual Works v. Volkswagen) 2. D is a legal reseller of Ps product. A number of independent businesses sell TMed products. They may be retailers who sell consumer products, independent service organizations who service or resell used cars, or the like. Decisions on both sides of the issue 3. D wants to criticize or make fun of P. Disaffected customers often set up criticism sites ([company name]sucks.com.) Consumers viewing the site are unlikely to be confused into thinking it was owned or sponsored by the company. Some cases have held that sucks sites are noninfringing, others have granted the TM owner the right to prevent the registration of such sites TM owners have difficulty finding the cybersquatters in order to sue them. The ACPA includes two ways for Ps to get jurisdiction over cybersquatters. 1. A TM owner who finds a cybersquatter in the US can sue him in any district with which the cybersquatter has minimum contacts. 2. If a TM owner cant find the cybersquatter, it can obtain in rem jurisdiction in the jurisdiction where the domain name resides by publishing legal notice of the suit and then filing suit against the domain name itself. 2 cases have held both upholding the constitutionality of the ACPA in rem provisions B/c the ACPA is designed to protect TM owners, it doesnt create rights in generic terms. Nonetheless, generic domain names are very popular and many gained widespread recognition. Some cts. have given protection to generic domain names on a theory of unfair competition. TM Any symbol or device capable of identifying the source of goods Distinctiveness Functional matter, generic terms Using the mark in commerce As long as the mark is used and is distinctive None or Reg. U.S. Pat. & Tm. Off. After registration, or TM or SM before registration Notice affects remedies Works of authorship Utility Patent Any process, machine, manufacture, or composition of matter, or improvement thereof Novelty, nonobviousness, utility, and adequate disclosure Abstract ideas, products of nature Obtaining a patent from the PTO 20 years from filing No rights prior to grant of patent Patent or pat. And patent number after grant of patent Notice affects remedies

Protectable Subject Matter

Primary Threshold for Protection Principal Exclusions from Protection How to Acquire Rights Duration Required Formalities Form of Notice

Originality Ideas, Facts Fixation in a tangible medium of expression Life of the author plus 70 years None with year of publication and name of owner Registration required to sue for infringement of US works; notice and registration affect remedies and Patent Clause (Art. I, 1, cl. 8) Incentive for creative conduct Exclusive right to make copies of the work

Benefits of Complying with Optional Formalities Constitutional Authority Policy Scope of Principal Rights Acquired

Commerce Clause Consumer Protection Right to stop the unauthorized use of the same or similar mark in a ways that are likely to cause consumer confusion Rights obtained on a country by country basis, or through a centralized registration mechanism like the Madrid Protocol

and Patent Clause (Art. I, 1, cl. 8) Incentive for innovative conduct Right to exclude others from making, using, offering for sale, or selling the invention Obtained by securing rights on a country-by-country basis, or through a centralized mechanism like the Patent Cooperation Treaty or the European Patent Convention

International Protection

Protected without formalities in most countries under the law of the country in question

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RELEVANT PATENT PROVISIONS 100 Definitions Invention and Process 101 Patentable Subject Matter 102 Novelty/Statutory Bars 103 Nonobviousness 112 Specification: Written Description, Enablement, Best Mode, Means + Function 122 Publication of Patent 171 Design Patents 271 Infringement 281 Presumption of Validity RELEVANT TRADE SECRET PROVISIONS R 757 R 759 U 3426.1 Liability Improper Means Definitions

RELEVANT COPYRIGHT PROVISIONS 101 102 103 105 106 106A 107 108 109 110 111 112 113 114 115 117 120 201 202 203 302 305 411 501 512 1201 Definitions Copyrightable Subject Matter Compilations and Derivative Works Govnt Works Exclusive Rights Moral Rights or Works of Visual Art Fair Use Defense for Libraries First Sale Doctrine Defenses for Certain Performances and Displays Defenses for Secondary Transmissions Defense for Ephemeral Recordings Scope of Exclusive Rights in PGS Works Limited Rights for Sound Recordings - Only Right to copy, derivative, distribution, and digital performance Compulsory License for Musical Works The Cover License Limitations on Exclusive Rights for Computer Programs Limitations on Rights for Architectural Works Ownership of Copyright Initial Ownership, Joint works, Works Made For Hire, Collective Works Ownership of Copyright Distinct from Ownership of the Object Termination of Transfers and Licenses by Author After 35 Years Duration of Copyright 70 years + life of author; 95/120 for works made for hire Calendar Year for Duration of Copyright Copyright Must be Registered Before You Sue Copyright Infringement Subpoena to Identify Infringers Anti-Circumvention Provisions for Protection Measures

RELEVANT TRADEMARK PROVISIONS 1 2 3 5 7 8 9 10 14 15 22 32 33 43 45 Registration use- and intent-based Registration and Bars to Registration of Trademarks Registration of Servicemarks Surrogate Use Certificate of Registration prima facia evidence of validity and application to register = constructive use Duration of Registration =10 Renewal of Registration = Successive 10 Years Terms Assignment No Assignments in Gross Cancellation of Registration; Statute of Limitation and Reserved Challenges Incontestability Registration as Constructive Notice of Claim of Ownership Infringement (a) Presumptions for Registration; (b) Defenses for Incontestability Unregistered Trademark Infringement; Trade Dress Evidentiary Presumption; Dilution; Cybersquatting Definitions

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