Professional Documents
Culture Documents
Consumer-based
theory
(primary)Provide
info
to
consumer
abt
a
particular
product/service
re:
its
source
(lwrs
information/transx
costs)
TRADEMARKincludes
any
word,
name,
symbol
Producer-based
theorymore
property
based
(Protecting
TMs
gives
producers
incentives
to
invest
in
high
quality
goods
to
build
good
will)
(Qualitex,
p.3),
or
device,
or
any
combo
(TD)
used
to
LEGAL
BASIS
distinguish
a
producers
goods
from
those
sold
by
others
CONST:
The
Commerce
Clause
STAT:
Lanham
Act
(LA)Covers
both
registered
and
unregistered
marks,
including
TRADE
DRESS
(TD)
(LA
43(a)federal
CL
protection)
'S
MOVES
S
MOVES
1) _____INFRINGEMENT
C/A
=
1)
VALID
TM/TD
+
2)
USAGE
BY
;
RESCUECOM,
P.12
+
3)
LIKELIHOOD
OF
CONFUSION
1) _____FAIR
USE
DOCTRINE
(inf/dil)
a. Factors
relevant
to
likelihood
confusion;
Sleekcraft,
p.
12
a. Descriptive/ClassicA
can
use
mark
i. Strength
of
mark
(strongerless
p(confusion))
Proximity
of
the
goods
(if
the
goods
are
complementary;
sold
to
the
same
class
of
ppl,
etc)
is
primary
descriptive
form
(still
cant
Similarity
of
the
marks
(sight,
sound,
meaning)
Evidence
of
actual
confusion
Mkting
channels
used
(if
the
goods
are
used
in
the
same
confuse
consumers);
Zatarains,
p.6
channelhigher
p(confusion))
Type
of
good/likelihood
of
close
inspection
by
consumer
(more
$$$
higher
p(inspection)lower
i. NOTE:
even
though
this
is
an
affD;
p(confusion)
bad
faith
by
(goes
to
remedy)
likelihood
of
expansion
of
products
the
degree
of
consumer
confusion
b. Other
types
of
confusion:
confusion
as
to
source
(s
products
not
related
to
s)
confusion
as
to
sponsorship
(confuses
the
consumer
to
believe
goes
to
objective
fairness;
KP
that
s
mark
is
related/sponsored
by
)
initial
interest
confusion
(consumer
is
baitedno
longer
confuseddoesnt
go
for
s
product
b/c
of
Permanent,
p.
18
inertia;
PETA
case,
p.
13
post-sale
confusion
(3p
confusion
after
consumer
bought
product;
Rolex
hypo)
reverse
confusion
(when
the
senior,
b. Nominative
(non-TM
use)not
using
larger,
user
trades
on
the
rep
of
the
smaller,
junior
markshadowing;
Big
O
Tire,
p.
71)
passing
off
(
junior
mark
holder
puts
his
product
in
TD
~
the
s
mark
to
describe
s
own
product,
to
seniors)
reverse
passing
off
(when
the
senior
mark
holder
puts
his
product
in
TD
~
junior
mark
holder)
rather
referential
usage
2) _____DILUTION
C/A
=
1)
VALID
TM/TD
+
2)
USAGE
BY
+
3)
FAMOUSNESS
+
4)
LIKELIHOOD
OF
ASSOCIATION
W/
FAMOUS
MARK
+
5)
BLURRING/TARNISHMENT
i. Comparative
advertising
a. NOTE:
actual
economic
harm
to
OR
likelihood
of
confusion
not
necessary
ii. Expressive:
Communicative;
NKOB,
b. FamousnessFrom
the
persp
of
the
general
consuming
public
(NO
niche
famousness;
Lexis/Lexus
hypo)
p.
19
i. Inferred
from:
extent
of
advertising
extent
of
sales
extent
of
actual
recognition
whether
registered
1. 9th
Cir
test,
p.
20
c. AssociationREMEMBER:
p(association)
p(blurring),
a
sep
inquiry;
NOTE:
coined
(probative
p(assoc))
vs.
non-coined
fanciful
marks
(p(assoc)
2. 3d
Cir
test,
p.
20
must
be
proven)
iii. Expressive:
Parody;
Mattel,
p.
20
d. BLURRING
(impairs
the
distinctiveness
of
the
mark)
1. 2d
Cir
Rogers
approach
for
i. LV
v.
Haute
Diggity
Dig,
p.
15
factors
for
blurring:
degree
of
similarity
b/t
the
marks
degree
of
distinctiveness
owner
engaging
in
exclusive
artistic
works,
p.
21
use?
deg
of
recognition
of
famous
mark
intentional
assoc
by
actual
association
b/t
marks
2. EXCEPT:
when
uses
parody
e. TARNISHMENT
(harms
the
reputation
of
the
mark;
Gemini
Rising,
p.
15)
as
a
designation
of
source
3) _____INDIRECT
LIABILITY,
PP.
72;
76ALWAYS
req
proof
of
underlying
direct
infringement
2) _____FUNCTIONALITY
DOCTRINE
defense;
a. ContributoryInwood
test:
providing
something
that
contribs
to
inf
and
does
NOT
have
sufficient
non-infringing
use
+
knowledge
of
TrafFix,
p.
83
(inf)
infringement
(REQs
>general
knowledge;
OR
willful
blindness);
Tiffany,
p.
76
a. Aesthetic
functionality
b. InducingInwood
test:
based
on
intentionally
inducing
the
an
activity
that
there
is
knowledge
of
infringement;
Tiffany,
p.
76
b. Utilitarian
functionality
---------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------
3) _____GENERICNESS/
GENERICIDE
(inf);
4) VALID
TM
(registered,
see
p.
9
for
reqs,
or
unregistered)
reqs
Murphey
Bed,
p.
16
Natl
Biscuit
Co.,
p.
16
a. Distinctivenesshas
to
function
as
a
source
designator;
spectrum
of
dist.
a. PolicyYou
are
aiding
consumers
b/c
of
i. See
chart,
p.
4
network
externalities
(costs
to
ii. Secondary
meaningwhen
a
consumer
associates
a
descriptive
mark
w/
a
single
source
of
products
(inc
single,
but
anonymous
source);
consumers
to
use
a
2d
best
term)
NOTE:
BOP
is
on
(and
is
not
easy
to
satisfy
w/
direct
or
indirect
evidenc,
Zatarain,
p.5)
4) _____ABANDONMENT
(inf)the
use
has
been
b. Use
in
commerce
(Commerce
Clause!)
discontd
w.
the
intent
not
to
resume;
non-use
i. Unregistered
markmore
than
token
usage;
Zazu,
p.
6
for
3
years
=
PF
abandonment;
MLB
ii. Registered
markintent
to
use
is
sufficient
w/
a
6mo
allowance
window
Properties,
p.
17
c. Priorityhas
to
be
the
senior
mark
a. Unsupervised
licenses;
Dawn
Donut
i. Unregistered
markneed
>token
usage;
Zazu,
p.6
dissent,
p.
17
1. Only
protected
in
area
where
products
are
sold
(b/c
TM
is
not
supposed
to
confer
broad
property
rights
outside
areas
w/o
consumer
b. Rule
against
assignment
in
goodwill)
grosstransfer
of
a
mark
w/o
any
a. Exceptionarea
of
normal
expansion;
where
rep
precedes
the
product
being
sold
in
an
area
underlying
assets
is
not
allowed
(a
TM
is
ii. Registered
markpriority
date
is
date
of
application
nws
non-usage
(intent
to
use)
a
goodwill
repository)
5) VALID
TD
(ONLY
protectable
under
43(a)
of
LA
(Fed
CL))
OR
PRODUCT
DESIGN
[line
drawing
problem
b/t
product
design
and
TD]
5) _____News
reporting
(dil)
a. TD
can
be
(but
is
not
necessarily)
inherently
distinctive
(doesnt
need
2dry
meaning),
if
it
isProtection
(Two
Pesos,
p.
7)
6) _____Non-commercial
use
(dil);
Mattel,
p.
21
b. Product
designcan
never
be
inherently
distinctive
(ALWAYS
reqs
2dry
meaning),
Samara
Bros,
p.8
7) _____Antitrust
c. If
either
TD
or
product
design
is
functional NO
PROTECTION,
nws
2dry
meaning
8) _____Laches,
estoppel
REMEDIES,
PP.
65-66;
70-71
(NOTE:
same
w/
indirect
liability
c/a)
1) _____INJUNCTION
(1116(a))given
as
a
matter
of
course
(Property
rulemakes
sense
here
as
it
serves
to
protect
a
unique
good
(goodwill);
and
the
REAL
damage
would
be
consumers,
who
are
not
compd)
a. Affirmative
injunctionreq
corrective
advertising
or
the
inclusion
of
disclaimers
on
products
that
sells
2) _____DAMAGES
(liability
rule)
(1117)
less
prevalent
than
w/
injunction
(dilution,
only
if
willful);
when
granted,
includes:
a)
s
profits
(ONLY
in
the
case
of
willfulness;
Pic
Pen,
pp.
70-71);
b)
damages
sustained
by
(WILLFULNESS3x!!!;
Lee,
p.
71);
c)
atty
fees
(in
extreme
cases);
d)
corrective
advertising
award;
Goodyear,
p.
71;
e)
statutory
damages
($500<$100k)
3) _____CRIMINAL
penalties
(TM
Counterfeiting
Act
of
1984;
18
USC
2320)
a. Trafficking
in
counterfeit
marks10yrs
in
prison
(20
for
2d
offense);
$2MM
fine;
Forfeiture
POLICY/THEORIES
COPYRIGHT under
106,
the
exclusive,
but
ltd
Utilitarian
(predominant)in
order
to
support/incentivize
Progress,
the
govt
should
grant
temporary
monopolies
to
authors
for
their
works
(in
order
to
right
for
an
author
who
has
a
valid
CR
to:
a)
reproduce
(p.
ensure
a
FAIR
(not
excessive)
return)
|
Kantian/natrl
rightsthere
is
a
natural
obligation
to
respect
the
authors
ownership
in
his
work
33
w/
ltds);
b)
prepare
derivative
works
(p.
34;
Stallone,
LEGAL
BASIS
p.
34);
c)
distribute
copies
(p.
35;
BUT
see
First
Sale
CONST:
IP
Clause
(Art
I,
8,
cl.
8)To
promote
the
Progress
of
Science
and
useful
Arts,
by
securing
for
limited
Times
to
Authors
and
Inventors
the
Doctrine,
p.
35);
d)
perform/display
(p.
35
w/
ltds,
p.
36);
exclusive
Right
to
their
respective
Writings
and
Discoveries.|
STAT:
1909
CR
Act;
1978
CR
Act;
1989
Amendments
p/t
the
Berne
Convention
|
STATE:
e)
moral
rights
(for
visual
works,
p.
36)
preempted
by
301
of
the
1976
CR
Act
(unless
(1)
not
equiv
to
CR
exclusive
rights;
(2)
not
a
fixed
work
of
authorship;
(3)
not
w/in
statutory
subject
matter
of
CR
S
MOVES
S
MOVES
1) _____INFRINGEMENT
C/A
(
501)=
1)
VALID
CR/JOINT
CR
+
2)
COPYING
+
3)
IMPROPER
APPROPRIATION
1) _____FAIR
USE
(
107)p.
39-44,
the
ultimate
inquiry
is
a) Copyingit
is
a
broad
grant
of
the
right
to
prevent
others
from
making
exact
or
substantially
similar
reproductions;
can
be
proven
by
direct
or
whether
the
CR
laws
goal
of
promoting
the
Progress
circumstantial
evidence
(access
+
probative
similarity);
Arnstein,
see
chart,
p.
37
would
be
better
served
by
allowing
the
use
rather
than
i) Subconscious
copying
=
copying;
p.
37
preventing
it
b) Improper
Appropriationwhether
the
copied
sufficient
protected
expression
to
violate
s
rights;
Nichols
levels
of
abstraction
test
(literal
a) Factors
elements),
p.
37-38;
9th
Cir
objective/subjective
analysis
test,
p.
38;
Altai
Abstraction-Filtration-Comparison
test
(non-literal
elements),
p.
39;
i) Purpose/character
of
the
use
BUT
see,
De
Minimis
Doctrine,
p.
38
(1) Bad
faith
();
Harper
&
Row,
p.
40-41
2) _____INDIRECT
LIABILITY,
P.
72;
73-75ALWAYS
req
proof
of
underlying
direct
infringement
(2) Parody
(+)
v.
Satire;
Campbell,
p.
41
a) ContributoryProvides
technology
that
facilitates
infringement
and
that
isnt
capable
of
substantial
(?)
non-infringing
use
+
knowledge
that
the
(3) Transformative
use
(+);
Campbell,
p.
41
activity
is
infringing;
Sony,
p.
73
(a) Blanch
test
for
transformative
b) InducingIntent/active
steps
to
encourage
infringement
(evidence
can
be
circumstantial)
+
knowledge
that
the
activity
is
infringing;
Grokster,
p.
73
use,
p.
42-43;
Perfect
10,
p.
43
c) Safe
Harbors
wrt
indirect
remedies
for
ISPs/search
engines,
p.
74
ii) Nature
of
the
CRd
work
d) Notice
and
Takedown
procedurefor
sites
that
constain
CRd
material;
Vicacom,
p.
75
(1) Published
(+)
v.
Unpublished
---------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------
(2) Factual
(+)
v.
fictional
3) VALID
CR
=
1)
Proper
subject
matter
+
2)
Originality
(102(a))
+
3)
Fixation
in
a
Tangible
Medium
of
Expression
+
[4)
Formalities]
+
[5)
Proper
iii) Amt
and
substantiality
of
the
portion
used
in
ownership
by
]
+
[5)
NOT
expired
,
i.e.
duration
issue]
+
[6)
Rights
have
NOT
been
transferred]
relation
to
the
whole
work
a) Proper
SM,
p.
24
(1) Amt
AND
quality
play
a
role;
Harper
&
i) Idea/expression
dichotomy
(102(b))NO
love
for
ideas,
procedure,
system,
method
of
operation,
concept,
principle,
or
discovery;
Baker,
Row,
p.
41
p.
25;
Lotus,
p.
25
(2) Reverse
engineering?;
Sega,
p.
83
(1) Merger
doctrinewhen
there
are
few
ways
to
express
an
idea,
then
the
two
merge
to
be
UNCRable
(e.g.
Scenes
a
Faire);
Morrissey,
p.
26
iv) The
effect
of
the
use
upon
mkt
or
value
of
the
ii) Works
of
authorship
(102),
pp.
26-281)
Literary
works;
2)
Pic,
Graphic,
Scul
(PGS)
works
(ltd
by
Useful
Article
Doctrine);
3)
work
Architectural
works
(Architectural
Works
CR
Protection
Act
of
1990,
p.
27);
4)
Musical
works/sound
recordings;
5)
(1) Negative
effects
();
Harper
&
Row,
p.
41
Dramatic/Patomime/Choreo
works;
6)
Motion
pics/AV
works;
7)
Semiconductor
chip
designs;
8)
Vessel
Hull
designs;
9)
Derviative
(2) Even
mkt
effects
of
potential
derivative
works/compilations
works;
Campbell,
p.
42
iii) Works
of
the
US
Govt
are
not
CRable
2) ______USEFUL
ARTICLE
DOCTRINE
(PGS
works)is
b) Originality,
p.22req
independent
creation
and
a
modicum
of
creativity
(no
love
for
sweatworks;
Feist,
p.
22-23;
but
maps
are
OK;
Mason,
p.
23)
there
conceptual
seperability;
Brandir,
p.
82
c) Fixation,
p.
24Const
mandate
as
an
interp
of
Writings;
TEST,
p.
24:
sufficiently
perm
or
stable
to
permit
the
work
to
be
perceived,
reproduced,
3) ______FIRST
SALE
DOCTRINE
ISSUE?,
p.
93-94,
95
or
otherwise
communicated
for
a
pd
of
more
than
transitory
duration;
policyp.
24
4) ______OTHER
defenses
(p.
44/pp.
664-666)
d) Formalities,
p.
24more
relaxed
over
time
a) Independent
creation
e) Ownership,
p.
28author
incs
employers
in
the
case
of
works
made
for
hire
(WMfH)
doctrine
(policy,
p.
28)
b) Consent/license
i) WMfH
doctrinepresumption
that
a
work
made
by
an
emp
(CL
definition;
CCNV,
p.
29-30)
w/in
scope
of
empmt
is
a
WMfH
c) Inequitable
ConductCR
owner
obtains
CR
thru
(1) ALSO
WMfH
if
work
falls
w/in
9
enumerated
categories
(see
p.
29)
+
agmt
signed
by
both
parties
stating
WMfH
fraud
(2) Teacher
exception
to
WMfH
doctrine,
p.
29
d) CR
Misuseif
the
CR
holder
has
engaged
in
f) Duration,
p.
31-32;
Eldred,
p.
31;
Golan,
p.
31
abusive
or
improper
conduct
in
exploiting
or
g) Termination
of
Transfer,
p.
32-33law
is
in
the
biz
of
giving
orig
CR
owners
a
2nd
chance
to
recognize
the
value
in
their
works
after
having
transferred
enforcing
the
copyright,
,
p.
92
the
rights
e) First
Amendments
right
to
publish
is
protected
4) VALID
JOINT
CR
=
1)
Valid
CR
(see
above)
+
2)
2
Authors
+
3)
Intention
that
contributions
be
merged
into
inseparable/interdependent
parts
of
a
by
1st
Am
(usually
weak
arg)
unitary
whole;
Alamuhammed,
p.
30
f) Immoral/Illegal/Obscene
WorksBUT
cts
rarely
a) 9th
Cir
reqsea
author
have
a
independently
Crable
contribution
(not
norm)
enforce
b/c
of
this
tho
b) Joint
workstenants-in-common
and
ea
author
has
equal,
undivided
ownership
interest,
p.
31
g) Statute
of
limitationpost
3
years
after
actual
c) Collective
works,
p.
31CR
in
ea
piece
is
distinct
from
CR
in
the
whole
work;
NYTimes,
p.
31
infringement
REMEDIES,
PP.
65-66;
68-70
(NOTE:
same
w/
indirect
liability
c/a)
1) _____INJUNCTION
(property
rule):
Temporary
and
permanent
injunctions
allowed
|
Traditionally
granted
as
a
matter
of
course,
but
now
BALANCING
TEST;
MercExchange,
p.67
|
Preliminary
injunctions
may
have
issues
in
1st
Am
context;
Suntrust
Bank,
p.
69
2) _____DAMAGES
(liability
rule)
(
504)EITHER/OR
regime,
you
either
get
actual
(cant
be
a
penalty;
Sheldon,
p.
69)
or
statutory
damages
a) NO
reasonable
flr
(cf.
Patent);
but
see
Deltak,
p.
69
|
NO
PUNITAVE
damages
generally;
but
see
TVT,
p.
70
|
Stat
damagesNEED
REGISTRATION,
p.
70.
$750<$30K/work,
p.
66
|Atty
fees,
p.
70
3) _____CRIMINAL
(506(a))
for
intentional
acts
of
infringement
for
financial
gain,
p.
66;
Piracy
and
Counterfeiting
Amen
Act,
p.
69
1) Notice
and
Takedown
procedurefor
sites
that
constain
CRd
material;
Vicacom,
p.
75
POLICY/THEORIES
PATENT Utility
patents
Utilitarian
(predominant)in
order
to
support/incentivize
Progress,
the
govt
should
grant
temporary
monopolies
to
authors
for
their
works
(in
order
to
ensure
a
FAIR
(not
excessive)
return)
|
Natural
rights/personhood
theoriesplays
less
of
a
role
than
in
other
areas
of
IP
(the
focus);
Design
patents;
plant
LEGAL
BASIS
patents.
AIA
goes
into
affect
CONST:
IP
Clause
(Art
I,
8,
cl.
8)To
promote
the
Progress
of
Science
and
useful
Arts,
by
securing
for
limited
Times
to
Authors
and
Inventors
the
exclusive
Right
to
their
3/13
respective
Writings
and
Discoveries.
|
STAT:
Patent
Act
(35
USC)
S
MOVES
S
MOVES
1) _____LITERAL
INFRINGEMENT
C/A
(35
USC
271)
=
1)
VALID
PATENT
+
2)
ALL
ELEMENTS
RULE
(CLAIM
INTERPRETATION
ANALYSIS)
SATISFIED
(Larami,
p.
61)
S
device
contains
every
1) _____EXPERIMENTAL
element
from
s
interpreted
claim
USE
defensejudicially
i) Claim
interpretation,
p.
59interpd
by
the
Ct;
Markman,
p.
60.
USING:
Traditional
cannons
of
claim
construction,
p.
60;
Philips,
p.
60
|
NOTE:
Independent
claims
v.
Dependent
created
exception
claims;
Open
transition
(comprising)
vs.
Closed
transition
(consisting
of)
vs.
means
plus
function
(VERY
LTD)
to
(1) Added
elements
to
s
deviceif
all
other
elements
from
claim
are
there
the
infringement,
p.
61;
no
blocking
patent
if
claim
is
open
infringement
that
2) ____INFRINGEMENT
UNDER
DOCTRINE
OF
EQUIV
C/A
(
271)
=
1)
VALID
PATENT
+
2)
ALL
ELEMENTS
INSUBSTANTIAL
DIFFERENCE
RULE
SATISFIED
there
must
be
an
equivalent
for
each
supports
the
Progress
element
(PHOSITA
std);
Warner-Jenkinson,
p.
62
policy
for
pure
scientific
a) Insubstantial
difference
inquiry
i) Triple
Identity
Test,
substituted
element
performs
same
function,
same
way,
same
result
Graver,
p.
61-62
a) No
love
for
b) After
arising
technologiesTEST:
whether
the
patent
and
the
accused
device
are
substantially
equivalent
as
of
the
time
of
the
infringement,
not
when
the
invention
was
made
university
(according
to
a
PHOSITA)
research;
Duke,
p.
i) Substantially
equivalent=the
element
substituted
in
the
accused
device
for
the
element
set
forth
in
the
claim
must
not
be
such
as
would
substantially
change
the
way
in
which
the
64
function
of
the
claimed
invention
is
performed;
Hughes
Aircraft,
p.62
b) Use
for
FDA
ii) BUT
major
improvements
in
all
the
essential
elements
of
the
claimed
devicethe
improved
device
is
non-infringing;
Texas
Instruments,
p.
62
testing
purposes
c) LIMITATION
OK
via
Congress
i) Hypothetical
claim
rulecannot
have
infringement
by
DOE
if
could
not
have
received
a
patent
on
a
claim
covering
the
accused
product
or
process
(271(e)(1),
p.
ii) Prosecution
history
estoppelcannot
use
DOE
to
reclaim
territory
given
up
in
order
to
obtain
the
patent
64killing
Roche
3) ____JOINT
INFRINGEMENTmastermind
test
via
vicarious
liability
theory;
Paymentech,
p.
63
decision,
p.
64);
4) ____INFRINGEMENT
INVOLVING
FOREIGN
ACTIVITIESsignificant
presence
test;
Research
in
Motion,
p.
63
Merck,
p.
64
5) ____INDIRECT
LIABILITY,
P.
72-73
ALWAYS
req
proof
of
underlying
direct
infringement
2) ______PRIOR
USE
a) Contributory
(271(c))
develops
a
component
adapted
for
infringement
and
is
NOT
suitable
for
substantial
noninfringing
use
AND
has
knowledge
that
the
component
was
defense
(273/AIA),
p.
adapted
for
infringement;
C.R.
Bard,
p.
72;
Global-Tech
Appliances,
p.
73
65,
apdx
1prior
b) Inducing
(271(b))the
induces
infringement
(e.g.,
provides
instructions)
+
knowledge
of
patent
AND
the
infringing
activities
(or
willful
blindness);
Water
Tech,
p.
73
commercial
use
by
---------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------
of
a
claimed
invention,
6) VALID
PATENT
=
1)
Patentable
SM
+
2)
Utility
+
3)
Novelty
+
4)
Nonobviousness
+
5)
enablement/description
+
[6)
NOT
expired
(20
yrs
minus
prosec)]
which
is
filed
by
a) Patentable
SM
(101)
a
any
PROCESS
(business
methods
not
ok;
machine/transformation
test
not
suff;
Bilksi,
p.
47
|
Medical
carve-out,
287(c)non-patentability;
p.
47),
a) Prior=
>
1
yr
b4
MACHINE,
MANUFACTURE,
COMPOSITION
OF
MATTER
(Diamond
[contrast
Funk
Bros],
p.
46)
or
IMPROVEMENT
thereof;
BUT
not
PRODUCT
OF
NATURE
(
Purification
exceptionthe
std
is
application
markedly
different
from
what
is
found
in
nature;
Parke-Davis,
p.46-47)
b) commercial
use
b) Utility
(101)
a)
operability
(it
has
to
workno
perpetual
motion
machine);
b)
practical
utility
(substantialgenetic
lab
mouse
as
snake
food,
specific
and
practical);
PTO
includes
guidelines,
p.
48;
Brenner
(not
a
hunting
license),
p.
49
BUT
NOT
c)
moral/benefical
utility;
Juicy
Whip,
p.
50
nonprofit
lab
c) Novelty
(102)the
claim
is
new
compared
to
prior
art
(a
single
ref
from
any
art;
AIA globally,
p.54,
Appdx
1).
NOTE:
Prior
art
needs
to
be
reduced
to
practice
and
not
merely
work
experimental;
Rosaire,
p.50;
Picard,
p.
51
c) NOTE:
not
avail,
if
i) Statutory
bar
(102(b)):
BARRED
ifa)
disclosed
in
printed
publication
anywhere
(In
re
Hall,
p.
51);
or
b)
public
use/sale
in
this
country
(Egbert,
p.
52);
c)
>1yr
prior
to
patent
derived
from
app.
Policy,
p.
51
|
NOTE:
3d
party
actions
can
bar
patentability,
p.
52
|
ALSO
NOTE:
Experimental
Use
exception;
City
of
Elizabeth,
p.
52;
Fed
Cir
factors,
p.
53
3) ______MISUSEif
the
ii) Priority
rules/First
to
invent
(now
file)
system
(
102(g)):
Priority
goes
to
first
inventor
who
a)
reduces
invention
to
practice;
without
b)
abandonment,
suppression
or
patentee
impermissibly
concealment
broadened
the
scope
of
(1) First
to
invent
systemif
an
inventor
is
first
to
conceive,
but
last
to
file,
he
will
get
priority
if
he
was
diligent
in
reducing
to
practice;
Griffith,
p.
53
|
First
to
file
the
patent
(ltd
mostly
to
system
(AIA
puts
into
place,
p.
54,
Appdx
1)brings
into
alignment
w/
intl
systems
antitrust),
p.
92.
d) Nonobviousness
(103)NO
patent
if
the
A)
diff
b/t
the
subject
matter
claimed
and
the
prior
art
are
such
that
B)
as
a
whole
would
have
been
obvi
to
a
PHOSITA
(Graham,
p.
56)
4) ______EXHAUSTON
and
C)
the
secondary
considerations
point
to
obviousness
ISSUE
(273(b)(2),
sup
i) Prior
Art:
a
single
prior
art
need
not
disclose
the
entire
claimed
invention
to
bar
patent;
ref
has
to
be
in
an
analogous
art
(narrower
than
w/
novelty).
NOTE:
No
need
for
rigid
TSM
p.
152);
Quanta
p.
94-
test
for
combining
prior
analogous
refs;
KSR,
p.
56
|
Obvi
to
try
may
=
obviousness;
KSR,
p.
57;
In
re
Kubin,
p.
57
95
ii) Secondary
considerations/objective
evidence:
may
have
relevancy
in
determining
obviousness
(check
on
hindsight
bias),
Graham,
p.
57;
see
factors,
p.57
e) Enablement/description
(112)
you
need
both
enablement
(Incandescent
Lamp,
p.
58)
AND
written
description
(w/
best
mode
disclosed)
(Genrty
Gallery,
p.
59)
REMEDIES,
P.65-66;
67-68
(NOTE:
same
w/
indirect
liability
c/a)
DESIGN
PATENTS,
p.80protects
the
aesthetic
appearance
of
a
product
rather
than
1) _____INJUNCTION
(property
rule):
NOT
a
per
se
rule
any
longer;
proper
test
is
the
MercExchange
4
Factor
test,
p.
67
its
functional
features;
protection
for
14
yrs
;
NOTE:
can
only
have
one
claim
2) _____DAMAGES
(liability
rule)
(
284):
damages
adequate
to
compensate
w/
reasonable
royalty
as
a
flr
1) INFRINGEMENT
C/A
=
1)
VALID
DESIGN
PATENT
+
2)
THE
EYE
OF
THE
ORDINARY
a) Lost
profits:
Valuation
problem;
Panduit
4
Factor
test,
p.
68
OBSERVER
TEST;
GORHAM,
P.
81
b) Reasonable
royalty:
statutory
flr;
hypothetical
negotiation
to
determine
the
fair
price;
Georgia-Pacific
factors,
p.
68
---------------------------------------------------------------------------------------------------
c) Willfulness
=
3x
damages
2) VALID
DESIGN
PATENT,
p.
80-81
=
1)
PROPER
SM
+
2)
NOVELTY
+
3)
ORIGINALITY
+
d) Atty
fees
only
in
exceptional
cases
4)
NONOBVIOUSNESS
+
5)
ORNAMENTAL
+
6)
NON-FUNCTIONAL
3) CRIMINALNONE
a) Originalitymeans
not
copied
from
somewhere
else,
meaning
another
person,
or
nature;
a
low
std
POLICY/THEORIES
Utilitarian
theoryprotecting
against
the
theft
of
proprietary
info
encourages
investment
in
such
info
|
Tort
theoryemphasizes
deterrence
of
wrongful
acts
and
the
maintenance
of
commercial
morality
TRADE
SECRET
LEGAL
BASIS
CONST:
NONE
|
STAT:
Economic
Espionage
Act,
p.
89makes
the
theft
or
misappropriation
of
a
trade
secret
a
federal
crime
|
STATE:
Uniform
Trade
Secrets
Act,
adopted
by
most
states,
p.
85
S
MOVES
S
MOVES
1) _____MISAPPROPRIATION
OF
TS
=
1)
VALID
TS
+
2)
used
IMPROPER
MEANS
or
ABUSED
CONFI
RELATIONSHIP
to
acq
info
1) _____PREEMPTION
(by
Patent)
a) Improper
meansDuPont,
p.
87;
can
be
proven
by
circumstantial
evidence
in
(some
jx);
Pioneer
Hi-Bred
Intl,
p.
87
a) Supremacy
clause
analysis,
p.
i) NOT
reverse
engineering
93
(no
express
provision)
b) Confidential
relationship
abusedconfi
rel
can
be
express
(e.g.
empl;
Metallurgical,
p.
86)
or
implied
(Dravo,
p.
88);
NOTE:
R.3d
of
Unfair
Competition
i) Conflict
preemptionNO
41
factors
for
confi
relationship,
p.
88
conflict
if
not
---------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------
patentable;
Kewanee
2) VALID
TS
(UTSA)
=
1)
Proper
Subject
Matter
+
2)
Independent
economic
value
from
secrecy
+
3)
Reasonable
efforts
to
maintain
secrecy
Oil,
p.
86-87
a) Proper
subject
matter
(UTSA
1(4))
info,
including
a
formula,
pattern,
compilation,
program,
device,
method,
technique,
or
process
(1) Doesnt
upset
i) Arguably
not
exhaustive
list
including??
balance/policy
set
b) Economic
value
from
secrecy
(UTSA
1(4)(i)must
not
generally
known
to
all;
spending
$$
to
keep
secret
is
probative
of
economic
value
Metallurgical
out
by
PA
Indust.,
p.
85
i) Known
v.
Knowablesome
cts
interpret
to
mean
that
a
secret
must
actually
be
known
to
break
secrecy;
Rohm,
p.
86
ii) Publication
(or
selling
a
product
that
embodies
the
secret)
generally
destroys
secrecy,
EXCEPT
if
stolen
and
then
published;
Rohne-Poulenc,
p.61
iii) Independent
discovery
also
destroys
secrecy
c) Reasonable
precautions
to
maintain
secrecy
(UTSA
1(4)(ii)policy,
p.
85;
Metallurgical
Indust,
p.
86
i) Depends
on
the
balancing
of
costs/benefits;
Rockwell,
p.
86
REMEDIES
(NOTE:
no
worries
abt
indirect
liability)Under
the
UTSA,
one
can
get
a)
INJUNCTIONS;
b)
DAMAGES;
c)
or
(if
not
completely
compensated
by
damages)
an
ACCOUNTING
OF
THE
INFRINGERS
PROFITS.
POLICY/THEORIES
Utilitarian
theoryencourages
investment
in
useful
activities
(overcome
Arrows
paradox,
p.
78)
|
Tort
OTHER
STATE
LAW
REGIMES
Tort-based/K-based
theoryemphasizes
deterrence
of
wrongful
acts
and
the
maintenance
of
commercial
morality
|
K
theory
claims
LEGAL
BASIS
CONST:
NONE
|
STAT:
NONE
|
STATE:
Tort
law
(misappropriation);
K
law
S
MOVES
S
MOVES
1) _____MISAPPROPRIATION
(UNFAIR
COMPETITION)
C/A
(TORT)there
is
a
(quasi)
property
right
basis
being
unfair
competition
2) _____PREEMPTION,
p.
79
a) This
is
the
case
even
if
the
underlying
product
was
not
CRable;
news
facts
INS,
p.
76
a) Express
preemption
(CRA
301)
b) This
claim
has
been
narrowed
only
to
cover
hot
news
misappropriation
in
light
of
CRA
301;
NBA,
p.
77;
other
cts
have
overturned
the
hot
i) Shrinkwrap
license?
K
is
b/t
news
doctrine
as
preempted
under
CRA
like
2d
Cir;
Barclays
Capital,
p.
77
two
private
parites,
doesnt
create
---------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------
exclusive
right
(unless
antitrust
2) _____IMPLIED
K
BREACH
C/Acan
be
used
as
a
means
to
protect
ideas
that
dont
rise
to
the
stds
of
patent
protection
issue);
ProCD,
p.92
a) Consideration
can
be
supported
by
the
novelty
of
the
idea
to
the
,
not
necessarily
in
absolute;
see
Nadel
factors
for
subjective
novelty,
p.
78
ii) Addtl
element
rule
in
CR,
p.
92
b) Mutual
assentstill
necessary;
Desny,
p.
78
b) Supremacy
clause
analysis,
p.
93
3) _____EXPRESS
K
BREACH
C/A
license
agmts
to
protect
products
that
fall
outside
scope
of
fed
IP
protection
(Patent
Act/
LA)
a) Shrinkwrap
licensesVALID,
ProCD,
p.
90
i) Conflict
preemptionupset
b) Clickwrap/Browsewrap
licensesVALID,
if
you
are
req
to
scroll
thru
entire
agmt,
otherwise
NO;
Specht,
p.
90-91
balance?
ii) Field
preemption;
Bonito
Boats
(hull
design),
p.
84