Intellectual Property Outline


1-    What can be protected as a TM? 

a)      TMs, Trade Names (TN), & Service Marks (SM)

-          TM are the words, phrases, logos & symbols that producers use to identify their goods

-          SM: serve the same purpose as TM but they are use to identify services rather than goods.

-          TN: TN identify the company itself. They cannot be registered under the Lanham Act unless they actually function to identify the source of particular goods or services, rather than merely identifying a company. However, a TN is generally registrable in state offices, & state & fed. CL may provide protection vs. confusingly similar company names.

Note: to use the “registered” symbol the TM must be registered.

Note: “TM” & “SM” symbol are used to claim a TM ownership under CL.


b)     Color, Fragrances, & Sounds

QUALITEX Co. vs. Jacobson Products Co., Inc.

Facts: Qualitex’s use (since the 1950’s) of a special shade of green-gold color on the press pads that it makes and sells. Jacobson began to sell its own press pads & it colored those pads a similar green-gold.

n  Green-gold for dry cleaning pads

n  Issue: Can color alone be a registered trade mark?

–        Yes!


Rule: a color alone may be recorded where it “has become distinctive of the applicant’s goods in commerce,” provided that there is no competitive need for colors to remain available in the industry” & the color is not functional.


Holding: the green-gold color acts as a symbol. Having developed secondary meaning (customers identifies the green-gold press pads color as Qualitex’s), it identifies the press pads source. &, the green-gold color serves no other function.


Certification & Collective Marks

-          Certificate Marks (Cert. Marks): generally used by trade associations or other commercial groups to identify a part. type of goods. Cert. Marks cannot be limited to a single producer, they must be open to anyone who meets the standards set forth for certification. It is used for the companies certified meeting the qualifications to use the TM. Ex. Angus, Belgian Chocolates.

Collective Marks: used for the members of some group to identify prods. & servs. or membership to the group.


c)      Trade Dress (TD) & Product Configurations (PC)


TD: the design & packaging of materials, & even the design & shape of a product itself, if the packaging or the product configuration serve the same source-identifying functions as TM.  


2-    Establishment of TM rights – Distinctiveness


Classification of Marks & Reqs. for Protection


1-      Marks inherently distinctive (fanciful-XEROX, arbitrary-APPLE & suggestive TMs): capable of identifying a unique product source. The rights of the TM are determined solely by priority use.


-          Suggestive Mark: suggest, rather than describes, some part. characteristic of the goods or servs. to which it applies & requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the goods & servs. A suggestive mark is protective w/o the necessity for proof of secondary meaning.

-          Arbitrary or fanciful terms bear no relationship to the prods. or servs. to which they are applied. Like suggestive terms, arbitrary & fanciful marks are protectable w/o proof of secondary meaning.


2-      Marks which acq. distinctiveness– the Lanham Act requires proof of secondary meaning + priority use.

-          Primarily geographic TMs

-          Descriptive TMs

-          Deceptively Misdescriptive (DM)

-          Surnames

-          Colors

-          Trade Dress-product design & “tertium quid”. Not Trade Dress-product packaging


Secondary Meaning: in the mind of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself. It exists when the Bs associate a prod. w/ a single source. It does not mean that Bs need to know the identity of the source, only that the product or serv. Comes from a single source, even an anonymous source. In the minds of the public the primary significance of a TM is identify the source of the prod. rather than the prod. itself.


-          A TM w/ a secondary meaning, is a TM w/o inherent distinctiveness but because the public associate the TM w/ the source of the sources of the prods. or servs., the TM has acquired distinctiveness.

Zatarain’s Inc. v. Oak Grove Smokehouse, Inc

Facts: Zatarain’s Inc. is the manufacturer & distributor of a line of over 100 hundred foods products. 2 of these products “Fish-Fri” & “Chic-Fri,” are coatings or batter mixes to fry foods Oak Grove began mkting a “fish fry” & a “chicken fry” for coating mix sufficient to fry enough food for one meal.


“Fair Use” Defense: available only in actions involving descriptive terms & only when the term is used in its descriptive sense rather than its TM sense. It prevents a TM registrant from appropriating a descriptive term for its own use to the exclusion of others, who may be prevented thereby from accurately describing their own goods. The holder of a protectable descriptive mark has no legal claim to an exclusive right in the primary, descriptive meaning of the term.


Rule: whenever a word or phrase conveys an immediate idea of the qualities, characteristics, effect, purpose, or ingredients of a prod. or serv., it is classified as descriptive & cannot be claimed as an exclusive TM.


Holding (fish-fri): Fish-Fri is a descriptive TM subject to protection under the theory of secondary meaning. However, upon the “fair use” defense, Ds are still free to use the words “fish fry” in their ordinary, descriptive sense, so long as such use will not tend to confuse customers as to the source of the source of the goods.


 Holding (chick-fri): descriptive & lack secondary meaning.


-          Generic Mark: indicates what type or category a product belongs to, rather than indicating the producer or other source of the prod. It tells the B what it is, not where it comes from. Ex. “bed, chair & pants.”

-          Descriptive Mark: “identifies a characteristic or quality of an article or service,” such as its color, odor, function, dimensions, or ingredients. Ordinarily are not protectable as TMs, they may become valid marks, however, by acquiring a secondary meaning in the minds of the consuming public. Ex. Vision Center.


3- TD (trade dress), Priority


Two Pesos, Inc. v. Taco Cabana, Inc.


Facts: Taco Cabana, operates a chain of fast-food restaurants in TX. The restaurants serve Mexican foods. The 1st Taco Cabana restaurant was opened in San Antonio, TX in 09/1978. In Dec. 1985, a Two Pesos, Inc., restaurant was opened in Houston. Two Pesos adopted a motif very similar to the Taco Cabana’s TD. Taco Cabana filed sue.


n  Trade dress of a restaurant

–        Trade dress: total image and overall appearance of [product or business]

n  Issue before Sup. Ct.?

–         Must secondary meaning be shown or can trade dress be inherently distinctive


Rule: if a TD is inherently distinctive secondary meaning is not required.


Holding: we see no basis for requiring secondary meaning for a inherently distinctive TD. Taco Cabana prevails upon Two Pesos in the use of the TD.


Wal-Mart Stores Inc. v. Samara Brother, Inc.


Facts: Samara designs & manufactures children’s clothing. Wal-Mart k’ed w/ one of its suppliers, to manufacture a line of children outfits for sale in the 1996 spring/summer season. Wal-Mart sent photographs of Samara’s clothing, the supplier copies, w/ only minor modifications the Samara’s clothing, many of which contained copyrighted elements. In 1996 Wal-Mart sold its clothing & Samara filed sue.


n  Design of seersucker outfits decorated with appliqués of hearts, flowers, fruits, etc.

n  Issue: can the design of a product itself be protected trade dress without a showing of secondary meaning?

Note: in addition to protecting registered TMs the Lanham Act, it § 43(a) gives a producer a COA for the use of any person of “any word, term, name, symbol, or device, or any combination which is likely to cause confusion as to the origin sponsorship, or approval of his or her goods.


Holding: Two Pesos establishes the legal principle that TD-product packaging can be inherently distinctive but it does not establish that product-design TD can be. A product’s design is distinctive, & protectable, only upon a showing of secondary meaning. Product packaging van be inherently distinctive while product design cannot.


TD Classification:


1-      Product packaging – Two Pesos

2-      Product design – secondary meaning

3-      A “tertium quid” – something indefinite related in some way to 2 definite or known things, but distinct from both. – secondary meaning


1-      Const. Use – registration

2-      Actual Use

3-      Analogous Use


  • Shipment
  • Solicitation
  • Advertising – (any promotional activities “must be within a commercially reasonable time prior to actual use” for them to be considered analogous uses)

The Lanham Act requires that the mark either be (1) used in commerce or (2) registered w/ a Bona Fide (BF) intention to use it in commerce. Determining who owned a TM meant determining who was 1st to use it (Lanham Act & CL).

1-      Use in Commerce (Lanham Act) - results of the constitutional basis for the TM laws, which rely on the congressional power to regulate interstate commerce. It is commercial use which is typical in a part. industry.

2-      Intention to use a mark – the TM office will issue a “notice of allowance” to the TM owner (rather that simply registering the mark on the Ppal Register). After the notice is granted, the TM owner has 6 months (extendable to 1 Y automatically & to 3 Ys for good cause shown) to submit a verified statement that the TM has in fact been used in commerce, at which point is entered on the Ppal Register. Assuming that the intent-to-use registrant does eventually use the mark , the initial application will be considered “const. use”, entitling the registrant to nationwide priority from the date of the application.

Zazu Designs v. L’Oreal, S.A.

Facts: Zazu is a hair salon in IL since 1980. Zazu owns an IL TN registration for beauty salon. L’Oreal began to use the TM ZAZU for hair products in 1986. Zazu sued to L’Oreal.

Note: § 43(a) of the Lanham Act indirectly allows the enforcement of unregistered TMs. Contrarily § 32 applies to registered TMs only. See § 32.

-          Use (CL): sales to the public of a product w/ the mark attached. Only active use allows consumers to associate a TM w/ part. goods & notifies other firms that the mark is so associated. Under the CL, one must win the race to the mkt to establish the exclusive right to a TM.


Holding: a few bottles sold over the counter in IL, & a few more mailed to friends in TX & FL, is not use. ZAZU had no product until months after L’Oreal campaign and sales. L’Oreal prevailed upon ZAZU because won the priority race.


Note: registration itself establishes only a rebuttable presumption of use as of the filing date.


Geographic Limitations & TM Use


-          At CL (& today for unregistered marks), ownership of a TM does not necessarily confer nationwide protection. Thus the O of an unregistered TM for goods sold in OR & WA but not elsewhere, in entitled to prevent others from using that mark for similar goods only in OR or WA.

-          The geographic area where the TM is used + a natural area of expansion (2 exceptions)

-          Even if a TM O register a TM before another identical TM is used by 1st time, the Sr. O would not be able to enjoin the use of the Jr. user if there is not an actual conflict because the Sr. user begins to use (actual or analogous – establishing reputation is enough too) the TM in the geographic area of the Jr. user.




1-      a TM O is entitle to the exclusive use of her mark in any geographic area in which the mark’s reputation has been established even if the product is not sold in that geographic area.

2-      a TM O is entitled to prevent anyone from intentionally trading on his/+her goodwill, even outside her established geographic area. Only innocent (or GF) use of the same mark is protected.


-          In CL if 2 marks come into conflict in a part. geographic area, the conflict will be resolved in favor of the earliest user in that area. If one party register her/his  mark & the other does not, the registrant will generally be entitled to the exclusive right to the use the mark thought the country. However, the non registering party may assert a “limited area” defense. This defense allows the non-registering party to claim priority in those geographic areas where he has made continuous use of the mark since before the registering party filed her app. The non-registering party is “frozen” in the use of his mark, & cannot expand it outside his existing territory or a natural “zone of expansion.”



  • TMEP – “TM Manual of Examining Procedure” the manual used by the USPTO to decide to reject or admit a TM app.
  • TTAB – Trademark Trial and Appeal Board: it deal w/ the litigations & after its decision you can appeal in fed. ct.


  1. a.      Ppal v. Supp. Register


Ppal Register


-          TMs registered on the Ppal Register enjoy a No. of significant advantages. The primary advantages are:


1-      Nationwide const. use & const. notice, which cut off right of other users of the same or similar marks.

2-      The possibility of achieving incontestable status after 5 Ys, which greatly enhances rights by eliminating a No. of defenses.

3-      The right to request custom officers to bar the importation of goods bearing infringing TMs.

4-      Automatic nationwide protection of the mark, retroactive to the date of the TM app., even if the goods for which the mark is used are sold or advertised in only a small part of the country.


Supp. Register – Marks that can become distinctive – marks that are not yet distinctive but capable of becoming distinctive


-          Because there are countries where TM registration is granted to TM reg. is granted to TMs that would not qualify for the Ppal Register, the Supp. Register was created. Thus, even if a U.S. cannot gain the advantages of reg. on the Ppal Register, it may obtain protection in foreign countries.

-          To be eligible for the Supp. Register a mark need only be capable of distinguishing goods or servs. There is not need to prove that it actually functions in that capacity.

-          Unlike the Ppal Register, reg. on the Supp. Register confers no subst. TM rights “beyond CL.” However, a TM on the Supp. Register may be litigated in fed. ct. may be cited by the PTO vs. a latter applicant, & may provide notice to others that the TM is in use.

-          Marks registered on the Supp. Register are not subject to intent-to-use filings, interference proceeding, or opposition challenges, but may be cancelled at any time by a Ct.

-          The TM has to be in use, no ITU.


  1. b.      Registration types


-          §1(a) – actual use in commerce (prove of use)

-          §1(b) – ITU (intent to use) the registration goes back retroactively to the date in which the app. was filed.  

-          §44 – foreign reg. in U.S.

-          §66 – Madrid Protocol – U.S. registration around the world.


  1. c.       Grounds for refusing reg.


-          See § 2 of the Lanham Act.

-          Some of the statutory bars of § 2 of the Lanham Act are absolute & others can be overcome w/ prove of secondary meaning.


Some categories:


1-      Immoral or scandalous marks – even if it is otherwise eligible for TM protection.

2-      Geographic Marks

3-      Marks which are “primarily a Surname”


-          § 2 treats as descriptive marks which are “primarily merely a surname” in the minds of consumers, whether or not the mark actually represents the owner surname.

-          That there are no other meanings of the name in the English language will not support refusal of registration of the surname under the “primarily merely a surname” statutory language unless the average member of the purchasing public would, upon seeing it used as a TM, recognize as a surname.

-          CL policy: in favor of the right to use one’s name, still has some life. However, the modern trend indicated in Basile, S.p.A v. Basile expresses that the modern businessman loses nothing by losing the name. A Jr. user’s right to use his name thus must yield to the extend its exercise causes confusion w/ the Sr.’s user’s mark.

-          Cts. are more likely to permit the Jr. use if the user disclaims any connections w/ the more famous Sr. user.

-          No all surnames are going to be treated such a primarily merely name.

















NondeceptivelyMisdescriptive (subset of arbitrary marks)


APPLE (PCs and MP3 players) MisdescribesNo reas. belief

No materiality

Inherently distinctive
DeceptivelyMisdescriptive (DM)


GLASS WAX(glass cleaner that does not contain wax)


MisdescribesReasonable belief

No materiality

Need secondary meaning
Primarily GeographicallyDeceptively



WISCONSIN(used for cheese from Illinois) Geographically misdescribesReasonable belief

No materiality


(but note CAFED In re Cal. Innov., geog. part must be material – this guts 2(e)(3) treating it like 2(a))


Not registrable
Deceptive(2(a)) LOVEE LAMB(car seat covers) MisdescribesReasonable belief



Never registrable

-          TMs bar under 2(e)(1)(2) & (4) are recordable if secondary meaning is shown.

-          TMs bar under 2(e)(3)(5) are un-recordable even if secondary meaning is shown.

-          See § 2(f)


  1. d.      Opposition – 30 days after the publication before the TM app. Is granted.


An opposer must plead & prove that:


1-      It is likely to be damaged by registering of the applicant’s mark (this is the standing req.)

2-      That there are legal grounds why the applicant has no right to register its claimed mark.


-          The opposer has BOP that the applicant has no right the contested mark.

-          The opposer may rely on any legal ground that negates the applicant’s right to registration.

-          The PTO publishes the apps. & the new TMs granting.

-          Objections – are issued for the PTO addressing formal matters such as errors in classification, good or services identification, incorrect addresses, etc.


  1. e.      Cancellation – after the TM app. Is granted.


-          One who “believes that he is or will be damaged by the reg.” may file a petition for cancellation of marks on either the Ppal or Supp. Register.

-          Cancellations petitions are heard by the Trademark Trial & Appeal Board (TTAB).

-          Even after cancellation of the registration, a mark may still enjoy CL rights.


  1. f.        Incontestability – See §1065, 1115 (b), 1064 (3) & 1052 (a)(b)(c) 

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.

Facts: petitioner operates long term parking lots near airports starting business in 1967. It applied in 1969 to the PTO to register a SM consisting on the logo of an airplane & the words “Park ‘N Fly”. The registration issued in 1971. Nearly 6 Ys later, petitioner filed an affidavit with the PTO to establish the incontestable status of the mark. Respondent also provides long-term airport parking services but only in Portland, OR. It calls its business “Dollar Park & Fly” Petitioner filed suit in 1978 & responder counter claim that petitioner’s mark is unenforceable because it is merely descriptive.


“Incontestable Status” – provides “conclusive evidence of the registrant’s exclusive right to use the registered mark.


Holding: mere descriptiveness is not recognized as a basis for challenging an incontestable mark, & an enjoin action may not be defended o the grounds that incontestable TM is merely descriptive.


-          Generic TMs can be challenged (even if incontestable) or can be a defense vs. a claim seeking injunction & damages.

-          Functionality may be assented even vs. an “incontestable” mark.

-          There are lot of defenses to incontestability

-          The main benefit of incontestability is in regard w/ Marks which acq. Distinctiveness that cannot be invalidated once they become incontestable. However, the validity of a TM cannot be attacked on base of incontestability, the TM strength can be attacked for its not inherently distinctiveness.

Claims for Trademark Infringement:

32(1)/114(1) – Trademark Infringement for Registered Marks

43(a)/1125(a) – Trademark Infringement for Trademark (Not registered)

43(c)/11125(c)- Dilution

43(d)/1125(d) – ACPA – Anti-Cyber Consumer Protection Act


Levels of Distinctiveness

Arbitrary/Fanciful – Higher degree of protection.

Suggestive – Less protective

Descriptive – Even less protection




  • The consumer believes that the infringer’s product is the same as the TM O’s product because of the similarity btw the marks.
  • When the goods produced by the alleged infringer compete for sales w/ those of the TM O, infringement usually will be found if the marks are sufficiently similar that confusion can be expected. When the goods are related, but not competitive, several other factors are added to the calculus. If the goods are totally unrelated, there can be no infringement because confusion is unlikely.
  • “related goods” – those products which would be reasonably thought by the buying public to come from the same source if sold under the same mark.
  • In case of TM there is 3 source of protection:


1-      § 32 (1) registered TMs only

2-      § 43 (a) CL TMs/registered TMs

3-      State Law


  • Factors relevant to likelihood of confusion


1-      Strength of the mark – It refers to the TM of the O. Presumption that the TM has already been determined valid.


a)      The level of acquired v. inherently distinctiveness

b)      Commercial strength (not distinctiveness) such as advertising, consumer recognition, use & other factors.

-          An incontestable mark is not necessarily a “strong” TM for purposes of determining likelihood of confusion. Validity &b infringement are separate inquires & that incontestability applies only to the validity of a TM


2-      Proximity of the goods

-          For related goods the danger presented is that the public will mistakenly assume there is an association btw the producers of the related goods, though no such association exits. The more likely the public is to make such an association the less similarity in the marks is requisite to a finding of likelihood of confusion.


3-      Similarity of the mark – totally dissimilar TMs can never be confusing.

-          This element w/ intent are the most important

-          Similarity is tested on 3 levels: sight, sound & meaning; & the TM O shouldn’t be able to point to similarities btw parts of a composite mark that are generic.

-          Similarity is generally tested by comparing the marks as a whole, rather than by dissecting them.

-          Dissecting is appropriate if the aim is to prevent TM Os from exercising control over generic, functional, or disclaimed portions of a TM or TD.

-          A D’s use of a similar or even identical TM on similar prods. may be ameliorated by other differences btw the mark & the packaging. For ex., similarities in TD may not confuse consumers if the packages contain very different products names in large, obvious letters on the front.

-          Disclaimers may also be effective in reducing confusion, if consumers notice them. If consumers notice them. If consumers would nonetheless be confused, however, efforts to ameliorate the effects of similar marks will not avoid TN infringement.

-          If the P holds a family of related marks (such as the use of the “MC” phrase in various McDonalds’s products), Cts. may be more willing to find similarity where the D copies the common element in the family.

4-      Evidence of actual confusion – evidence that the use of the 2 marks has already led to confusion is persuasive proof that future confusion is likely. Cts. generally allow the results of consumer surveys as evidence of “actual” confusion. Because of the potential for abuse of the survey process, Cts. are relatively strict about the surveys they allow, routinely rejecting or discounting surveys that are improperly designed or ask ambiguous or leading questions.

-          Likelihood of confusion is regularly found if a few as 10 to 15% of the consumers surveyed were confused.

-          Cts. do not require actual confusion but is another element to consider.


5-      Mkting channels used – convergent mketing channels increase the likelihood of confusion.

6-      Type of goods & the degree of care likely to be exercised by the purchaser

-   The standard used by the Cts. is the typical B exercising ordinary caution. The consumer   who is tested is the “reas. purchaser” of the products at issue.

-          When the B has expertise in the field, a higher standard is proper though it will not preclude a finding that confusion is likely. Similarly, when the goods are expensive, the B can be expected to exercise greater care in his purchase; though confusion may still be likely.

-          The quality of the goods is not relevant


7-      D’s intent in selecting the mark – it refers to the infringer’s intent to likely confuse the public selecting the mark.  

-          Good faith (GF) is less probative of the likelihood of confusion, yet may be given considerable weight in fashioning a remedy. This element w/+ similarity of the TM are the most important.

-          Intentional copying is likely to be closer than accidental similarity, & therefore quite possibly more confusing.

-          These intent can be prove in 3 ways:

1-      Some circuits have found that a presumption of intent to confuse arises when evidence of copying is presented; recognizing that if there is no real issue of a likelihood of confusion, evidence of copying is of no import. Rebuttable presumption. The D has the BOP.

2-      Evidence to the infringer’s intent to likely confuse the public.

3-      Inference to the infringer’s intent to likely confuse the public.


8-      Likelihood of expansion

-          A “strong possibility” that either party may expand his business to compete w/ the other will weight in favor of finding that the present use is infringing. When goods are closely related, any expansion is likely to result in direct competition.

AMF Inc. v. Sleekcraft Boats

Facts: AMF and Sleekcraft both manufacture recreational boats. AMF uses the mark Slickcraft & Sleekcraft uses Sleekcraft. AMF’s predecessor used the name Slickcraft Boat Company from 1954 to 1969 when it became a division of AMF. The mark Slickcraft was federally registered on April 1, 1969, & has been continually used since then as a TM for this line of recreational boats. In 1968 Sleekcraft began to use the mark Sleekcraft. AMF suits for injunction.


Holding: a limited mandatory injunction is warranted. Upon remand the DC should consider an appropriate relief.


Other types of Confusion


-          The traditional case for consumer confusion is that consumers will believe the infringer’s product is the same as the same as the TM O’s product because of the similarity btw the TMs.


1-      Confusion as to source – identical TMs can sometimes cause confusion as to the source of the prods. even in the absence of direct product competition.

-          The public will assumes that the products are made by the Sr. user when in fact are made by the Jr. user.

-          See ex. page 833

2-      Confusing as to sponsorship – even in situations in which consumers will not believe TM O is the one selling the product, the use of a similar TM may still confuse them by causing to believe that the TM O is affiliated w/ or sponsors the infringer’s products.

-          See ex. page 833

3-      Initial interest confusion – the confusion is dispelled before a product is even purchased.

-          See examples (McDonald’s sign example, & metatags cases & Doughney) page 834

4-      Post-sale confusing – confusion after the sale of a prod. is actionable in many jurisds.

-          Is not the B who is confused, it is any other person.

-          See ex. page 835

5-      Reverse confusion – a large company adopts the mark of a smaller TM O. The risk here is that the public will come to associate the mark not w/ its true O but w/ the infringer.

-          “dual use TM” – where the public, not the D, had appropriate a TM for use to describe another prod. or serv., TM law should not stand in any way.

-          In IHSA v. GTE Vantage the Ct. held that after the media began using the term “March Madness” to describe the NCAA college basketball tournament< & the NCAA & its various licensees adopted the term & used it in advertising their own prods. & servs., both IHSA & NCAA now have right to the TM.


6-      Dilution – the lessening of the capacity of a famous TM to identify & distinguish goods or servs. regardless of the presence or absent of (a) competition btw the parties, or (b) likelihood of confusion, mistakes or deception.

-          Ex. the use of DUPONT shoes.

-          Dilution applies when the unauthorized use of a famous mark reduces the public’s perception that the mark signifies something unique, singular or part.

-          See § 43 (c) (d) FEDERAL ANTI-DILUTION STATUTE (FTDA)

-          Dual reqs. of distinctiveness & fame – the FTDA requires proof of both distinctiveness of the P’s mark & fame in order to receive fed. protection. Famous marks can be either inherently distinctive or have acquired distinctiveness. Not only inherently distinctive TMs qualify for dilution protection.      

-          Geographic definition for a “famous TM” – widely recognized by the gral consuming public of the U.S. – not only in a specific area.

-          Non-commercial & Non trademark uses: D must engage in TM use to be liable under the dilution statute. Mere registration of a TM as a domain name (DN) does not constitute commercial use.

-          That a TM is strong in the mkt does not mean that a TM is qualifies for dilution protection because the TM might have diluted itself. Ex. Delta Airlines.

-          2 Types of dilution:


1-      Blurring: it occurs where the D’s use creates the “possibility that the famous mark will lose its ability to serve as unique identifier of the P’s product. It is an impairment to the distinctiveness of famous marks.

2-      Tarnishment: see 43 (c)(2)(C) – ex. “Enjoy Cocaine” rather than “Enjoy Coca-Cola”

  • It arises where a Jr. user undermines the image that consumers hold of a famous mark by using the mark to advertise unpleasant products, causing the public to draw a connection btw the P’s goods & the D’s.
  • In contrast, using a mark to criticize the mark’s O is not tarnishment under the statute. Nor it is illegal to use the TM to use the mark to display or refer to the P’s own product, even if it is in a context the P might find repugnant. See Caterpillar v. Walt-Disney – P’s bulldozers being used by a villain in a children’s movie did not tarnish P’s marks.


On Oct. 6, 2006, the Trademark Dilution Revision Act of 2006 was signed into law.  See Pub. L. No. 109-312, 120 Stat. 730.  This Act made significant revisions to the dilution provisions of the Lanham Act, most significantly section 43(c), 15 U.S.C. § 1125(c).  One of the major motivations for the Act was to expand the scope of dilution law in response to judicial limitations, including the Supreme Court’s decision in Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003), which rejected a “likelihood of dilution” standard in favor of an “actual dilution” standard.

Among the highlights:

  • Likely dilution is now enough.  Actual dilution need not be shown; likely dilution is enough.  This overrules Moseley’s requirement of actual dilution.
  • Blurring & tarnishment.  Dilution may be shown either by blurring or tarnishment.  It would appear that other arguable theories of dilution are rejected by negative implication.
  • Trade dress.  Unregistered trade dress may be diluted.
  • Descriptive famous marks ok.  A famous mark may now be protected even if it was originally descriptive and acquired its distinctiveness through secondary meaning.  This overrules some decisions that limited dilution protection to famous marks that were inherently distinctive.
  • Niche fame probably no longer ok.  Niche fame is probably out of the door due to the new language that “a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”
  • Fair use defenses.  Clarified somewhat, including a reference to “nominative” fair use.
  • “Commercial use in commerce” language changed.  The old statute confusingly referred to “commercial use in commerce.”  Now it simply says “use . . . in commerce.”
  • Housekeeping changes.  The Act made minor changes to other portions of the Lanham Act, including removing the definition of “dilution” from section 45, 15 U.S.C. § 1127, because the definition of dilution is now part of section 43(c), 15 U.S.C. § 1125(c).

1125(c) Dilution by blurring; dilution by tarnishment

(1) Injunctive relief

Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(2) Definitions

(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii) The extent of actual recognition of the mark.

(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

(3) Exclusions

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with–

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.

(4) Burden of proof

In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that–

(A) the claimed trade dress, taken as a whole, is not functional and is famous; and

(B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.

(5) Additional remedies

In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) and 1118 of this title, subject to the discretion of the court and the principles of equity if–

(A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2006; and

(B) in a claim arising under this subsection–

(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or

(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.

(6) Ownership of valid registration a complete bar to action

The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that–

(A)(i) is brought by another person under the common law or a statute of a State; and

(ii) seeks to prevent dilution by blurring or dilution by tarnishment; or

(B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

(7) Savings clause

Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.

Louis Vuitton Case

Facts: Louis Vuitton, that manufactures luxury luggage, handbags, & accessories commenced action vs. Haute Diggity that manufacture & sells pet products alleging TM dilution  because Haute Diggity manufactures & sells a chew toys which are small imitations of handbags that are labeled “Chewy Vuitton.”


Rule: a successful parody is not probable that impairs the distinctiveness of a famous TM. This might not be true if the parody is so similar to the famous mark that it likely be construed as actual use of the famous mark itself.


Holding: Haute Diggity Dog’s “Chewy Vuitton” marks are a successful parody, thus, they will not blur the distinctiveness of the famous mark as unique identifies of its source. The public is going to appreciate that there is a reference to LV’s TMs but at the same time they are not LV’s TMs.




-          Parody is not automatically a complete defense to a claim dilution by blurring. Under § 1125 parodying a famous mark is protected by the fair use defense only in the parody is not a “designation of source for the person’s own goods or servs.

-          If Haute Diggity used the actual marks of LVM (as a parody or otherwise), it would dilute LV’s marks by blurring.

-          D used “Chewy Vuitton” rather than “Louis Vuitton”, “CV” rather than “LV”; it adopted imperfectly the items of LV’s designs.  

-          A TM to be considered famous has to be famous for the public in gral in U.S., not just for a sector or consumers of the TM. See 43(c)(2)(A).

-          Dilution COA may lie Vs. those employing a TM in a way that threatens to make it generic.

-          Actual v. Likely Dilution

  • Likely to cause dilution is the standard today.


7-    Domain Names & Cybersquatting


-          Internet DN’s are registered on 1st-come, 1st served basis.


  1. a.      Anticybersquatting Consumer Protection Act (ACPA) – See 1125 (d)(1)(A)


  • It makes illegal to register or use a DN that corresponds to a TM where the DN registrant has no legitimate interest in using the name & acts in bad faith to deprive the TM O of the use of the name.
  • A web site need not sell goods or servs. for the use of a mark in that site’s DN to constitute a use in connection w/ goods or servs.
  • ACPA was not intended to prevent “noncommercial uses of a mark, such as for comment, criticism, parody, news, reporting, etc. & thus they are beyond the scope of the ACPA.
  • To establish an ACPA violation, it is required to:


1-      Prove bad faith – 1125 (d)(B)(i)

2-      The DN is identical or confusingly similar to, or dilutive of the distinctive & famous mark.




People for the Ethical Treatment of Animals (PETA) v. Doughney


Facts: the D registered the Internet DN, where he set up a page entitled “People Eating Tasty Animals” that was a parody of PETA & its goals.  Doughney had many DNs referring to famous marks & offered the web site to PETA for sale.


Holding: the safe harbor provision of ACPA, stating that bad faith intent shall not be found in any case in which the Ct. the Ct. determines that the person believed & had reas. grounds to believe that the use of the DN was fair or otherwise lawful does not apply to D.

Lamparello v. Falwell

Facts: Reverend Falwell is “a nationally known minister who has been active as a commentator on politics & publics affairs.” Mr. Falwell Ministries can be found online at, a web site which receives 9,000 visits per day. Lamparello registered the DN Lamparello created a website at that DN to respond to what he believe were untruths about gay people.


Rule: when dealing w/ the DNs, a Ct. must evaluate an allegedly infringing DN in conjunction w/ the content of the website identified by the DN.


Rule: the use of a mark in a DN for a site criticizing the markholder does not constitute cybersquatting.


Holding: Falwell cannot demonstrate that Lamparello “had a bad faith intent to profit from using the DN simply to criticize Reverend Falwell’s views.


Note: the use of a DN to engage in criticism or commentary “even where done for profit” does not alone evidence a bad faith to profit.


The Uniform Dispute Resolution Process (UDRP) – See policies relevant fragment pages 872-873


  • In this process there is no discovery, no oral presentation, & the process is quick & relatively small.
  • Whether or not to transfer the DN in question to the complainant is the only possible decision.
  • 10 days to object the decision in Ct. UDRP decisions are reviewed “de novo” in the Cts.
  • Whether a bona fide reseller of trademarked goods is entitled to use a DN incorporating the TM has been decided in his favor & vs. him
  • Prove of a legitimate nickname or name/surname provides a legitimate reason to register a DN.
  • Elements of an UDRP claim:


1-      A legitimate TM right

2-      An identical or confusingly similar DN. TM Os are entitle to challenge the registration only of DNs that are identical or so confusingly similar to their TMs.

3-      Absence of a legitimate right – the DN registrant lacks any legitimate right to use the DN. TM Os cannot use the UDRP to oust other TM Os from the use of a mark; if both has a legitimate claim to use the name in commerce the UDRP will not step in to decide who is “best” entitled to use the mark.

4-      Bad faith – registration of multiples names, demanding money to relinquish them, & providing false address information are all considered evidence of bad faith. We must see evidence of the registration & use of a DN in bad faith.


Possible COA in DN cases.


1-      ACPA – 43(d) we compare the client mark w/ the D’s DN

2-      ® TM – 32 (1)

3-      TM – 43(a)

4-      Dilution – 43(c)

5-      State – statute/CL

6-      UDRP – more complainant friendly (only transfer or cancellation of DN)


Indirect infringement – secondary liability


  • Cts. have held that indirect infringement of TMs extends to manufacturers & distributors, as well as to flea mkts operators.  
  • A DN registry has no responsibility to screen DNs. The ACPA immunizes DN registrars from monetary relief for registering a DN that infringes TM rights. See too the Lanham Act § 32 (2)(D) & 1114 (2)(D).
  • In Inwood the Sup. Court established a two-part test for evaluating contributory liability claims. Specifically, if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit.
  • There is no affirmative duty to take precautions under the doctrine.
  • In Tiffany the ct. held that the standard was not whether eBay could reasonably anticipate possible infringement, but rather whether eBay continued to supply its servs. to Ss when it knew or had reason to know of infringement by those Ss. The Ct. held for eBay based on its proactive policy of promptly removing counterfeiting listings when they were brought to its attention. eBay Verified Rights Owner (VERO) program allows IP rights O to report  eBay any listing offering potentially infringements items so that eBay could remove such listings. Rights Os can submit a Notice of Claimed Infringement (NOCi) form claiming that they posses a “good faith belief” that the item infringed a copyright or TM. The Ct. ruled that the mere generalized knowledge that counterfeit goods might be sold on eBay’s website is not sufficient to impose liability. Rather, the law demand more specific knowledge as to which items are infringing before requiring eBay to take action.

False Advertising-§ 43(a)(1)(B)

  • Only competitors have standing to bring a Lanham Act suit in federal or state court, so a potential plaintiff can only sue for the false advertising of its competitors.


  • Rule: A competitor can use another’s trademark as long as the use is not likely to

cause consumer confusion as to source, quality or affiliation (comparative advertising).


  • Literal v. Implied Falsity


-          False advertising claims can be found to be literally false or implicitly false.

-          If an advertisement is literally false, many courts do not require evidence that the ad is

likely to deceive consumers. That the ad contains false claims is enough to establish that consumers will believe these false claims and be deceived.

-          Both types of falsity are actionable but implied is not usually raised.





8-    Defenses


a)      Genericness


  • Generic terms are either “born generic” or “generic ab initio”, or they become generic over time through a process “genericide.”
  • Dictionary definitions are not conclusive proof of a mark’s generic nature, they are influential because they reflect the gral public’s perception of a mark’s meaning & implication.
  • When a mark “has entered the public domain” policing is of no consequence to a resolution of whether the mark is generic. Ex. Du Pont Cellophane Co. v. Waxed Prod. – “Cellophane” generic despite vigorous policing efforts.
  • However, the role of policing costs can be important such as in duPont – “Teflon” not generic in part because du Pont’s vigorous education & policing campaign.    
  • A TM O may lose his TM for genericness for a prod. or serv. but keeps it for another prods. or servs. An important point would to consider if the TM O even when he lose the TM for some prods. or servs. he is available to keep away the use of other competitors for the prods. & servs. affected because the TM O makes a use in related prods. or servs. (no affected) that if no confusion at least will cause a serious risk of association btw the prods. & servs. of the TM O & those of others competitors. Ex. if XEROX becomes generic for copier machines it will not become generic for other prods. made under the XEROX brand.
  • BOP – Burden of proving


1-      The BOP is on the Jr. user where the public is said to have expropriated a term established by a product developer.

2-      The BOP is in the Sr. user where the term at issue is claimed to be generic by reason of common usage.

“Murphy Bed” Case

Facts: Mr. Murphy invented a bed that when not in use could be concealed in a wall closet. In 1918, the USPTO granted Mr. Murphy a patent for the bed. The Murphy Co. has used the words Murphy & Murphy bed as its TM for concealed bed. On March 23, 1981, & again on 1982, the USPTO denied the Murphy’s Co. application to register the Murphy bed TM. In August 1984, the TTAB affirmed the denial of registration. After learning of the TTAB’s 1984 decision defendants – Interior Sleep Systems, Inc. – filled certain order w/ both beds of its own making (under Murphy beds) & beds from the Murphy Company.


  • There is a presumption of non-genericness of a product name in a case of apparent public expropriation.
  • Standard: genericness in the eyes of “a subst. majority of the public.” It refers to a [category of goods]”
  • The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether a mark has become generic.


Holding:Murphy bed mark is generic.


Generic risks


Solutions to the “unique goods” problem?

–        Give product two names – one  a trademark, the other a word for the public to use

–        Police use in an attempt to prevent genericide

  • Advertisements
  • Letters (incl. to dictionary companies)
  • Lawsuit


b)      Functionality


  • A patent is strong evidence that the features claimed are functional (claims as TD – a TM protection). That features are deemed functional until proved otherwise by the party seeking TD protection. The only possibility to get protection is showing that the features are ornamental, incidental or arbitraries aspects of the devise.
  • Definition of “functional” – a product feature is functional, & cannot serve as a TM, “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. This is a utilitarian meaning. However, there is a definition comprehending the aesthetic functionality doctrine when the “exclusive use would put competitors at a significant non-reputation disadvantage.”
  • 3 tests:


1-      Essential to the use or purpose (utilitarian) – if a product feature is “essential”, it would be found to be functional even if there are competitive alternatives.

2-      Affects the cost or quality of the article (utilitarian)

3-      competitors at a significant non-reputation disadvantage (aesthetic functionality) – when goods are bought largely for their aesthetic value, their features may be functional. Ex. a heart-shaped box for chocolates. It cannot be characterized as functional in utilitarian sense, but it is easy to see why the heart-shaped box will be particularly appealing to consumers, specially on Valentine’s Day. The aesthetic functionality doctrine aims to ensure that such shapes are not monopolized (in the absence of patent or copyright protection).

Traffix Devices v. Mktg. Displays, 532 U.S. 23


Upon expiration of respondent’s patents for a dual-spring mechanism to permit signs to withstand strong winds, petitioner copied the design and marketed its own sign stands. Respondent alleged that its mechanism acquired secondary meaning such that consumers associated the look of the dual-spring design with respondent, and that petitioner thus infringed respondent’s trade dress. The United States Supreme Court held that any acquired secondary meaning was irrelevant, since trade dress protection was precluded by respondent’s failure to sustain its burden of demonstrating that its design was not functional. Both the disclosure of the dual-spring design in the claims of the expired patents and respondent’s prior patent infringement litigation indicated that the design provided a unique and useful mechanism to resist the force of the wind. Respondent’s trade dress claim was thus precluded, since trade dress protection only extended to product features which were not functional.

Defendant has to prove that it is not generic..

Rule: the party asserting TD has the burden to establish the functionality of alleged TD features.

Rule: no TD protection for prods. features that are functional.

Holding: functionality having established, whether MDI’s dual spring design has acquired secondary meaning need not be considered. The dual-spring design the user the device will work. It is functional.

c)      Abandonment – see § 1127

Ways to abandonment

1)      Nonuse with intent no to resume: – Failure to use for more than 3 years- Creates a presumption of failure to resume use

2)      Stuff the TM Owner does:

  1. Naked Licensing- Licensing without exercising quality control- not reserving the rights, etc
  2. Assignment in gross- Assigning without the underlying goodwill


3)      Express abandonment statement- changing name and making it clear (not a written statement necessary but rare)


Major League Baseball Properties, Inc. v. Sed Non Olet Denorious, Ltd.

Facts: Ps Major League Baseball Properties, Inc. & Los Angeles Dodgers, Inc. filed complaint v. Ds by their use of the words “The Brooklyn Dodger” as the name & service mark of 3 restaurants operated by Ds in Brooklyn, NY, beginning in 03/1988.

Rule: the BOP abandonment falls upon the party seeking cancellation of a registered mark because a cert. of registration is “prima facie evidence of the validity of the registration & continued use.”

Rule: Minor changes in a TM that do not affect the overall commercial impression of the mark do not constitute abandonment.

Holding: Ps have not even demonstrated an intent not to abandon, much less the statutory req. of intent to resume. Ps unequivocally declared its intention to discontinue use.

  • The party seeking cancellation must establish abandonment by a preponderance of the evidence.
  • The Lanham Act provides that 2 consecutives Ys shall be prima facie abandonment. Prima facie abandonment establishes a rebuttable presumption of abandonment.   
  • The change here, from “Brooklyn Dodgers” to “Los Angeles Dodgers” was not minor, it involved an essential element affecting the public’s perception of the mark & the team.
  • Cts. have been more reluctant to find an absence of intent to resume where the TM O had an excusable reason for non-use – that is, where nonuse was involuntary. Voluntary vs. Involuntary Non Use.
  • Abandonment under the Lanham Act requires both nonuse & intent not to resume use.
  • Once prima facie abandonment has been proven, the TM registrants – must carry their burden of producing evidence that there was intent to resume use of the TM. A shift of the BOP.
  • The fact that Ps resumed use prior to D’s use does not mean that Ps may preclude D’s use of the mark “Brooklyn Dodgers” in the restaurants business in Brooklyn. P’s preemptive rights in the “Brooklyn Dodgers” mark would extend only to the precise goods on or in connection w/ which the TM was used since its resumption (clothing, jewelry, other goods)
  • Intent not abandon is different to intent to resume use.
  • See note 20 page 915.


d)     Defenses unsupervised licenses (§ 1127), assignment in gross & fair use (descriptive & nominative) – Statutory fair use defense, Lanham Act 33 (b)(4), 15 U.S.C. 1115(b)(4)


1-      Unsupervised licenses or “naked licensing” – the second type of abandonment


  • § 1064 – provides that a TM registration may be cancelled because the TM has been abandoned.
  • § 1127 – includes any act or omission by the registrant which causes the TM to lose its significance as an indication of origin as cause of abandonment.
  • naked licensing”- the grant of licenses w/o the retention of ctrol in the use of the brand.
  • § 1055 Use by Related Companies Affecting Validity & Reg.
  • The TM lose its significance as a mark


Dawn Donut Company v. Hart’s Food Stores, Inc.

Facts: Dawn brought a TM infringement suit v. D, which used the mark “Dawn” in connection w/ its sale of doughnuts & baked goods in stores in & around Rochester, NY. D filed counterclaim to cancel P’s regs., on the ground that P has abandoned its TMs due to inadequate quality ctrol & supervision on the part of its licensees – the retail bakeries that sold doughnuts made from Dawn’s mix.

Rule: controlling licensing does not work an abandonment of the licensor’s registration, while a system of naked licensing does.

  • w/o the req. of ctrol, the right of a TM O to license his mark separately from the business in connection w/ which it has been used could create the danger that prods. bearing the same TM might be of diverse qualities.
  • The absence of an express K right to inspect & supervise a licensee’s operations does not mean that the P’s method of licensing fails to comply w/ the req. of the Lanham Act. Ps may in fact exercise ctrol.
  • TMs rights are regularly lost because of unsupervised licensing.
  • 2 situations here:


1-      No K to supervise quality & use;

2-      Even w/ a K no effectively exercised quality ctrol.


* at the time to draft quality provisions is important to see what our client can really do.



2-      The Rule Vs. Assignments in Gross


  • See § 10
  • “assignments in gross” – assignment of TMs alone w/o any “assets” or “goodwill”.
  • assets” – customer lists, production formulas, machineries.
  • Nominal recitation of “goodwill” in assignment K, w/o transfer of any “assets” is enough.
  • The TM lose its significance as a mark.
  • An assignment requires the attachment of the TM goodwill.
  • See 1060 (a)(1) – assignment of an IU app. § 1051(b)
  • What is a portion of the business?


3-      Fair Use (FU) – See § 1115 (b)(4)


  • See § 114 (1)(a)
  • Some cts. indicate that FU can be argued as a defense for the other types of inherently distinctive marks. While the statute speaks in terms of a D’s use “to describe” an attribute of the D’s product, both the 2nd & 9th circuits have held that the D is available for inherently distinctive marks as well.
  • 2 types:


1-      Classic/descriptive – no a use in bad faith as a TM

Ex. we offer a BEST BUY on DVDs.

2-      Nominative use to talk about the P  – New Kids on the Block v. News Am. Publ’g, Inc. – REFER TO THE GIANTS TO REFER TO THE GIANTS…


  • Where the D uses a TM to describe the P’s product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following 3 reqs.:

1-      The prod. or serv. in question must be one no readily identifiable w/o use of the TM.

  1. Necessity of using the Plaintiff’s mark

2-      Only so much of the mark or marks may be used as is reasonably necessary to identify the prod. or serv. See Playboy Enterprises, Inc. v. Welles – Welles was free to use Playboy’s trademarks to accurately advertise her affiliation w/ the magazine, but could no go beyond that to trade on those marks.

  1. Did you take too much? Does it use the Barbie logo, making a logo HUGE

3-      The user must do nothing that would, in conjunction w/ the mark, suggest sponsorship or endorsement by the TM holder. No LOC likely of confusion. The user that no create sponsorship, endorsement, confusion in the eyes of the public.

Ex. PEPSI tastes better than COCA-COLA.

Did you create a likelihood of confusion


  • § 1115 (b)(4) – 2 elements:


1-      Places a BOP likelihood of confusion (infringement) on the party charging infringement even when relying on an incontestable reg. If the P meets his burden, then, the D can argue the FU doctrine.

2-      Congress said nothing about confusion as an element of the FU defense.

KP Permanent Make-Up, Inc.(D)  v. Lasting Impression I, Inc (P). U.S. Sup. Ct. Case.

Facts: Each party to this case sells permanent makeup. The PTO registered the mark “micro color” to Lasting in 1993, & in 1999 the reg. became incontestable. It was also in 1999 that KP produced a 10-page advertising brochure using “microcolor” in a large, stylized typeface, provoking Lasting to demand that KP stop using the term.

Issue: defendant who is alleging a fair use defense, who has the burden of showing likelihood of confusion?

Rule: mere risk of confusion will not rule out fair use. Accuracy & other elements such as commercial justification & the strength of the P’s mark might play an important role in the while infringement analysis.

Holding: a P claiming infringement of an incontestable mark must show likelihood of consumer confusion as part of the prima facie case, § 1115 (b), while the D has no independent burden to negate the likelihood of any confusion in raising the affirmative the affirmative defense that a term is used descriptively, not as a mark, fairly & in good faith, § 1115 (b)(4). Only after the P has met his burden, the defense plays some role in the whole infringement analysis.


-          Notes:


  • The judgment was vacated & the case remanded for further proceedings consistent w/ the Ct. decision because the Ct. of Appeals had place the BOP on KP (D) to show absence of consumer confusion.   
  • Accuracy – “used fairly” req. in § 1115 (b)(4) demands only that the descriptive term describe the goods accurately.
  • While no longer determinative, consumer confusion is still relevant in deciding whether a use was fair.
  • While the statute speaks in terms of D’s use “to describe” an attribute of the D’s product, the 2nd & 9th Circuits have held that the defense is available for inherently distinctive marks as well.


4. Non-trademark (or Nominative) Use, Parody, & the 1st Amend.





Mattel Inc. v. MCA Records

Initial notes:

  1. 1.      Parody
  2. 2.      Ginger Rogers test-
  3. 3.      Nominative fair use defense:

Not adopted by all the courts of appeals,

  1. 4.      Likelihood of confusion test


Facts: the toy company owned the trademark to and was the maker of a certain doll. The doll had become a cultural icon. A Danish rock and roll band had a song that parodied the doll. The toy company brought the instant action against the music companies who produced, marketed, and sold the song.

Holding: The court of appeals held that the music companies use of the doll was not an infringement of the toy company’s trademark because the song’s title was relevant to the underlying work and the song did not suggest that it was created by the toy company. The song was not purely commercial speech and was fully protected by the First Amendment. The use of the toy company’s doll mark in the song fell within the noncommercial use exemption to the Federal Trademark Dilution Act.

1-      Expressive meaning: 1st amend. analysis (the ct. used it)

2-      Parody: (the ct. used it)

3-      Nominative FU: (the ct. does not use it)

4-      Literally titles – Roger test (the ct. used it)

5-      Likely of confusion: (the ct. does not use it)

Rogers 2 prong test for literally titles:

1-      Literary titles do not violate the Lanham Act “unless the title has not artistic relevance to the underlying work, or

2-      If it has some artistic relevance, the title explicitly misleads as to the source or the content of the work.




  • In this case, 1) the use of BARBIE in the song title clearly is relevant to the underlying work. The song is about BARBIE & the values ACQUA claims she represents. 2) the song tile does not explicitly mislead or otherwise suggest that it was produced by Mattel.
  • Dilution law seeks to protect the mark from assocs. In the public mind w/ wholly unrelated goods & servs.
  • About dilution Hoffman ctrols – Barbie Girl is not purely commercial speech & is therefore fully protected for the 1st amend. & the non-commercial exception of the Dilution Act. “Barbie Girl” is entitled to full 1st amend. protection in regard w/ the tile & the own song.
  • The dilution act “non-commercial use” exemption is consisting w/ the 1st amend. Under the 1st amend. if a speech is not “purely commercial” – it is entitled to full 1st amend. protection.
  • purely commercial” 1st amend. – if a speech does more than propose a commercial transaction.
  • What a parody does? A parody must convey 2 simultaneous – & contradictory messages: that it is the original, but also is not the original & instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under TM law, since the customer will be confused. A parody that confuses consumers will not be immune from TM infringement.

1-      It makes fun of the original

2-      It is important that the public get the joke to have a fair parody.


9-    International Matters and Trademark Remedies


1-      Intert. issues in TM.


  • A § 44 reg. requires use in the part. geographic area to suit an infringer.
  • For § 44 you don’t have to prove use to renewal of the TM. For TMs registered under use in US, a renewal requires prove of use.
  • Although § 44(d(2) requires a statement of “bona fide” intent to use, no subsequent proof of actual use in commerce in the US is required. This allows foreign owners to register their marks in US w/o use.   
  • The Madrid Trademark Agreement (MTA) is the main intert. TM convention. Under the MTA, a TM o files a single reg. its domestic TM office. The O may then extend this “basic reg.” by filing within 6 months of the orig, filing an Intert. App. w/ the domestic TM office designating other MTA members’ countries in which protection is sought.
  • One Ct. has held that the Lanham Act incorporates the substantive provisions of the Paris Convention governing TMs & unfair competition, providing a COA for .violation of those provisions. See General Motors Corp. v. Lopez, 948 F. Supp. 684 (E.D Mich. 1996)


2-      “Gray Mkt” or “parallel imports”


  • It prohibits the importation of any goods bearing a registered US TM w/o the consent of the domestic TM O, even if the goods are genuine & even if the goods are genuine & even if they are imported by a licensed manufacturer (or the original TM O itself), §1526.
  • Cts. have held that “Gray Mkt” importation is legal unless the imported goods differ in some relevant way from the goods the TM O sold in the US. See American Circuit Breaker Corp. v. Oregon Breakers Inc. (circuit breakers that differed only in color from those sold in the US could legally be imported after 1st sale abroad).
  • Variation in goods could include variation in technical support provided.
  • 1st sale doctrine does not protect resellers who don’t provide the same warranty as the orig. manufacturer.
  • Injunctions are possible if there is consumer’s confusion or deceive.


3-      Remedies


1-      Injunctions

  • § 34 (a) gives cts. the power to grant injunctions “to prevent the violation of any right of the registrant of a mark or to prevent a violation.”
  • Injunctions may include prohibitions vs. the sales of goods or the use of a mark on goods or in advertising, or they may be affirmative injunctions requiring corrective advertising or the inclusion of disclaimers on prods. or advertising.


2-      Damages

  • § 35(a) provides Ps are entitled: to recover (1) D’s profits, (2) any damages sustained by the P, & 3) the cost of the action.
  • In assessing profits the P must prove D’s sales only; D must prove all elements of cost or deduction claimed.
  • The Ct. may enter judgment for any sum above the amount found as actual damages, not exceeding 3 times such amount.

Big O Tire Dealers, Inc. v. The Goodyear Tire & Rubber Company

Facts: Big O decided to identify 2 of its lines of private brands tires a “Big O Big Foot 60” & “Big O Big Foot 70.” Big O dealers began to selling these tires to the public in 04/1974. Big O did not succeed in registering “Big Foot” as a TM the USPTO. In 07/1974 Goodyear decided to use the term “Bigfoot” in a nationwide advertising campaign. On 08/1974 Goodyear 1st learned of Big O “Big Foot” tires. Big O representatives objected to Goodyear using “Bigfoot” commercials & other promotional materials. On Sept. 10, 1974 Big O representatives objected to Goodyear using “Bigfoot” in connection w/ tires because they believe any such use would severely damage Big O. However, on 09/1974 Goodyear launched its nationwide “Bigfoot” promotion. Big O filed suit on 11/1974.

Rule: a dollar-for-dollar expenditure for corrective advertising is unnecessary to dispel the effects the effects of confusing & misleading advertising.

Holding: Big O is entitled to recover a reas. amount equivalent to that of a concurrent corrective advertising campaign to counteract the public confusion resulting from D’s wrongful conduct. Big O has right to an amount resulting from taking 28% (presence in 14 states, the 28 states percent of the 50 states) of the Goodyear’s budget on its “Bigfoot” campaign, & then reducing that figure by 75% in accordance w/ the Federal Trade Commission (FTC) rule.

  • The instant case involves reverse confusion because the infringer’s use of P’s marks results in confusion as to the origin of P’s mark results in confusion as to the origin of P’s product.
  • The Federal Trade Commission (FTC) often requires businesses who engage in misleading advertising to spend 25 of their advertising budget on corrective advertising.


See: other potential remedies & COA in gral

- § 1117(d)

- § 32 (1) ®

- § 43(a) – Possible COA TM cases.

- CL

- State Statutory Law

- Dilution

- § 43(d)


















1- Original Works of Authorship – § 102 Subject Matter of CR.

  • 2 ftal criteria of CR protection:


1-      Originality

2-      Fixation in a tangible form

(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.


-          Originality:


a)      Entails independent creation – it requires only that the author not have copied the work from other source. Cts. do not judge the artistic merit of a work. Independent creation is a defense to CR’s infringement, & a req. of the law for protection of a work.

b)      At least some minimal degree of creativity – even a slight amount will suffice.

Feist Publications v. Rural Telephone Serv.


Respondent sued petitioner for copyright infringement because petitioner had used information contained in its white pages in the compilation of its own directory. The court reversed a grant of summary judgment in favor of respondent because the selection, coordination, and arrangement of respondent’s white pages did not satisfy the minimum constitutional standards for copyright protection. Specifically, the court found that respondent’s white pages, which contained only factual information, i.e., phone numbers, addresses, and names listed in alphabetical order, lacked the requisite originality because respondent had not selected, coordinated, or arranged the uncopyrightable facts in any original way.

Rule: No one may claim originality to facts.

Rule: Factual compilations may possess originality. However, CR protection may extend only to those components of a work that are original to the author.

  • A subseq. compiler remain free to use the facts contained in another publication to aid in preparing a competing work so long as the competing work does not feature the same selection & arrangement.
  • See § 103 pages 179-180 Compilations & derivative works
  • To establish infringements 2 elements must be proven:


1)      Ownership of a valid CR

2)      Access to the work – striking similarity does not require an independent proof of access because the similarity btw the works is striking.

3)      Copying of constituent elements of the work that are orig. The question to be answer is: did you copy original content?

Holding: no originality in the facts compilation. No creativity at all here.

2- Fixation in a tangible medium of expression.

  • Unless & until a work of authorship is so fixed, it does not qualify for CR protection.
  • See § 202 – the ownership of the CR is separate from the ownership of the tangible object. This is very important.

3- Formalities

  1. a.      Notice – no notice req. in works created after March, 1989. However, the symbol © is very important because can increase the infringement’s damages barring the possibility that a violator may argue an innocent use.
  2. b.      Publication – since March 1, 1989 publication is no longer a factor in determining the validity of works created after that date. Once a work is published, state law ends & fed. law governs. State law is only applicable to works not fixed at all or pre 1976 works.
  3. c.       Registration: req. of registration prior to suit for domestic works & works originating in Non-Berne nations. No registration req. for a work w/ country of origin another Berne member nation. See § 411 – A work’s country of origin is the country in which it was 1st published, or in the case of unpolished works, the country in which it was created. Registration is also necessary to claim statutory damages. See § 412.
  4. d.      Deposit: § 407 requires deposit of 2 copies of each work published in the U.S. for which CR is claimed within 3 months after publication

4- Copyrightable subject matter. See § 102

  • CR protects expressions but not ideas.

Baker v. Selden


Plaintiff, testator for complainant, obtained a copyright for a book on the art of bookkeeping written by complainant and sued defendant, an author of another book on the subject, for copyright infringement. A decree was rendered for plaintiff, and defendant appealed. Plaintiff claimed defendant had infringed the copyright by using account books with columns and headings similar to those explained in the copyrighted work. On appeal, the Court held that the record failed to show that defendant had violated the copyright of complainant’s book and that the matter plaintiff alleged was infringed was not even a lawful subject of copyright. The Court drew a distinction between an author’s original writing, which was a valid subject of copyright, and the art or practical knowledge explained by the writing, which generally was considered to be community property and was the subject not of copyright but of a patent if completely original to the author. The Court drew analogies from other areas of science and practical arts, such as medicine and mathematics. The Court reversed the judgment and remanded the cause.

Holding: Blank account books are not the subject of CR; & the mere CR of Selden’s book did not confer upon him the exclusive right to make & use account books.

  • “Art” – the process, techniques, ideas, methods, inventions.
  • See § 102 b)
  • The accounting forms were not copyrightable
  • The accounting systems were not copyrightable
  • The book itself is copyrightable
  • There is a difference btw the book itself & the art it expects to explain.
  • Distinguishing idea from expression
  • See Note 3 page 462
  • Book:

1-      Overall

2-      Textual expression

-          Both expressionof ideas are CR protectable.

-          Idea (no protected)/expression of ideas (protected)

Morrissey v. Procter & Gamble

Facts: P is the CR O of a set of rules for a sales promotional contest. P alleges D infringed by copying almost precisely, Rule 1.

Holding: CR does not extend to the Subject Matter at all, & P cannot complain even if his part. expression was deliberately adopted.

Court: Expression conveyed and idea.

Merger: expression of an idea but can only be expressed in one or a few ways than the idea behind the work merges with its expression and the work is not copyrightable.

Brandir’s Case

Facts: this case is about a bicycle rack made of bent tubing that is said to have originated from a wire sculpture. In November 1982 Brandir discovered that another company, Cascade Pacific was selling a similar product. Brandir filed suit.

Rule: a copyrighted work of art does not lose its protected status merely because it subsequently is put to a functional use.

Holding: the rack is not copyrightable. The form of the rack is influenced in significant measure by utilitarian concerns & any aesthetically elements cannot be said to be conceptually separable from the utilitarian elements. No artistic element at the rack that can be identified as separate of the utilitarian aspects of the article.

  • The useful article doctrine

-          “useful article”an article having an utilitarian function. An article that is normally a part of a useful article is considered a useful article. See § 101.

-          Only elements which can be identified separately from the useful article as such are copyrightable.  

-          3 elements:

1-      Pictorial Graphic & sculptural works (PGS)  – see § 101 definition

2-      Under the “useful article” doctrine there is no protection of the utilitarian elements.

3-      Separate aesthetic from functionality

  1. a.      Physical
  2. b.      *Conceptually*


-          Physical: the elements are physically separable. An expressive element of a useful article is physically separable if it can stand alone from the article as a whole & if that separation does not impair the utility of the article.


-          Conceptual: no physical separation. It is about if the elements are conceptually separable.

* That physical or conceptual separability is sufficient to establish copyrightability.

* Test: copyrightability ultimately should depend on the extend to which the work reflects artistic expression uninhibited by functional considerations. Denicola test.

5- Rights – see § 106 page 186, & § 101 definitions

6- Government works – page 473 * See §105 & 101

-          State works are affected too for the §105.

7- The Domain & Scope of CR Protection

1-      SM of CR – § 102

  • The list of works is not exclusive, & even the categories are not exclusive into each other.


  1. Literary works – see § 101
  • The term literary works includes, catalogs, directories, instructional works, compilations of data, computer data bases, computer programs.
  • § 202.1 – words & short phrases such as names, titles, & slogans are not subject to CR. – TM or unfair competition protection.
  • The scope of protection extends not only to the literal text but also to non-literal elements of a work such as its structure, sequence & organization.
  • Computer software = text
  • Characters can be literary work (?)


  1. PGS works – see § 101
  • PGS are not protectable to the extend that they have a utilitarian rather than artistic function.





  1. Musical Works & Sound Recordings – see § 101
  • Musical works: Music, lyrics & arrangements written on paper or otherwise fixed in a tangible medium of expression. The work must be original in its melody, harmony, or rhythm, individually or in combination.
  • Sound recordings – recorded versions of a musical composition (including spoken words, animal sounds, or sound effects). It excludes “the sounds accompanying a motion picture or other audiovisual work – motion picture or audiovisual work.
  • The difference btw these categories are very important because: 1) there are no public performance rights for sound recordings. This is not the case w/ musical records; and 2) to violate the right of reproduction of sound recording works the violator has to copy the exact sound. This is not the case for musical works.


  1. Dramatic, Pantomime, choreographic works. see § 101
  • Unrecorded dancing is not a protectable work because it is not fixed in a tangible medium.
  • All 3 forms of work are entitled to protection not only vs. literal copying but also vs. copying of their expressive elements, character, action, & dialogue.


  1.  Motion Pictures & Other Audiovisuals Works – see § 101


  1. Derivative works & compilations – see § 101 & 103
  • The CR extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work.


2-      Ownership


  • Separation of CR from the object in which the object is fixed.


a)      Initial Ownership of CRs. See § 101


1-      Works made for hire (WMH) – § 101, 201(a)(b), 102

Cmty. for Creative Non-Violence v. Reid


The U.S. Supreme Court affirmed a judgment which held that a sculpture created by an artist hired by an organization was not a “work made for hire” under provisions of the Copyright Act of 1976, 17 U.S.C.S. § 101. Petitioners, a non-profit organization, hired respondent artist to create a sculpture of homeless individuals for a Christmas contest. The Court held that under § 101, a work was a work for hire when either the work was prepared by an employee within the scope of his or her employment or it was included in the list of nine categories of works enumerated in § 101. The Court rejected petitioners’ arguments that the hiring party’s right to control or actual control tests should determine whether the work was for hire. The Court stated that because the statute did not define the terms “employer” or “employee,” they had to rely on the conventional master-servant relationship understood by the common law. Respondent was not an employee given the facts that he was hired only for one specific task for a limited time, worked in his own studio with his materials, and was a skilled sculptor. Finding that respondent was an independent contractor; the Court affirmed the judgment.

Holding: Because Reid was an independent contractor, whether “3rd World America” is a work for hire depends on whether it satisfies the terms of § 101(2). This petitioners coincide it cannot do.

  • Sculptures does not fit within any of the categories of “specially ordered or commissioned works enumerated in § 101(2), & no written agreement btw the parties establishes “3rd World America” as a work made for hire.
  • The term employee should be understood in light of the gral CL of agency.
  • §101 plainly creates 2 distinct ways in which a work can be deemed for hire: 1) for works prepared by employees; 2) for others specially or ordered commissioned works which fall within 1 of 9 enumerated categories & are subject to a written agreement.
  • Within the scope of employment – even if a work is created by an employee, it must also be within the scope of his or her employment” in order to be deemed a WMH. An employee’s work is deemed within the scope of the employment if:

a)      It is within the kind he is employed to perform;

b)      It occurs substantially within the authorized time & space limites; &

c)      A purpose to serve the master


-          Teacher exception: it prevents universities from claiming to own professor’s works under the WMH doctrine.

-          An employee not necessarily must be acting as an agent because is possible that he is acting out the scope of his employment.


2-      Joint Works

Aalmuhammed v. Lee


Plaintiff claimed that the movie Malcolm X was a joint work of which he was an author, thus making him a co-owner of the copyright. He sought a declaratory judgment to that effect, and an accounting for profits. He was not claiming copyright merely in what he wrote or contributed, but rather in the whole work, as a co-author of a joint work. The district court granted defendants summary judgment against plaintiff’s copyright claims. The court ruled that creative contributions did not suffice to establish authorship of the movie. Plaintiff did not at any time have superintendence of the work and he lacked control over the work, and the absence of control was strong evidence of the absence of co-authorship to the court. The record before the lower court established no genuine issue of fact as to plaintiff’s co-authorship of the movie as a joint work.

Holding: P is not author because valuable contributions to the movie do not become him an author. He worked under Lee’s ctrol. Warner Brothers which signed a “work for hire” agreement w/ Lee is the author of the movie.

-          2 points here:


1-      Some copyrightable contributions

2-      The understanding that the contributor is considered author of the work


  • Joint works: a worked prepared by 2 or more authors w/ the intention that their contributions be merged into inseparable or independent parts of a unitary whole
  •  Co-ownership of Jointly Authored Works: Tenancy in Common – in the absence of an agreement in the contrary, each of the co-owners has an equal, undivided ownership interest in the entire work, even where is clear that the respective contributions to the join work are not equal.
  • Each O can use the work & license others to do so, subject to a duty to account to the others for profits.


* See collective works – §101, 201(c) – newspapers, magazines, & other.

8- Duration & renewal

  • Life of Author (LOA+70)
  • However, it depends of the nature of authorship such as works made for hire w/ a different duration.
  • If anonymous works, pseudonymous works, or WMH, 95 Ys from creation, whichever is less.
  • See table 4-1 page 509
  • Is very important the determination if the initial O & author is who made directly the work & after that assigns the work or if the initial O & author rests on who requires a work made for hire.

9- Division, transfer & reclaiming of CRs.

  • See § 202


a)      Division & transfer of CR interests – see § 202 (d), 101, 205 & 204

b)      Reclaiming CRs – see § 203(a)(3) & 304(c) – termination rights 35 Ys after the assignment. No for WMH.

c)      There is implied (arising of conduct licensing) & express licenses (written or oral)

d)     Exclusive licenses have to be in written


10- Traditional Rights of CR Os – §106

1- The right to make copies – §106

  • See §101 – definition of copies
  • A copyrighted work would e infringed by reproducing it in whole or in any subst. part, & 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 the merely the author’s ideas are taken.

a) Copying

Arnstein v. Porter

Facts: Plaintiff filed a complaint for copyright infringement of musical works, and made a jury demand. The trial court disbelieved plaintiff’s accusation that defendant had access to the works,  and similarities, standing alone, did not compel the conclusion or permit the inference that defendant copied. However, the case was remanded because copying & improper appropriation are both issues of fact to be determined by the trier of fact.

  • If evidence of access is absent, the similarities may be so striking as to preclude the possibility that P & D independently arrived at the same result.
  • In some cases, similarities btw the P’s & D’s work are so extensive & striking as to justify an inference of copying & to prove improper appropriation.
  • Access & copying may be inferred when 2 works are so similar to each other & not to anything in the public domain that is likely that the creator of the 2nd work copied the 1st, but the inference can be rebutted by disproving access or otherwise showing independent creation.
  • CR is a strict liability infringement. If the violator copies he is liable, he does not need to copy consciously.

Holding: the case was remanded because copying & improper appropriation are both issues of fact to be determined by the trier of fact.

b)  Improper Appropriation – whether the D has copies sufficient protected expression to violate the P’s CR interests.

REPRODUCTION RIGHT – Infringement analysis


Copying + Improper Appropiation (SS*)


  1. COPYING (No Independent Creation): did the defendant copy?
  • Direct Proof: admitted by defendant, video footage, direct testimony, etc.
  • Indirect Proof
    • Access
    • Prob. Simil (SS**)
      • Probative evidence of similarity.


  1. Improper Appropriation of Protected Content: what protected expression copied.


SS= Substantial Similarity

SS**= Did the defendant actually copy.




2nd, 7th & 9th Courts of appeals <- Most important I.P. Courts



            =                                              =                                                          =

No Copying                             Jury Issue                                            Directed Verdict?



What about STRIKING SIMILARITY but NO Proof of Access?


Court of Appeals 2nd Circuit -> enough to send to a Jury Issue.

Court of Appeals 7th Circuit ->disagrees with 2nd circuit, not enough to send to jury.



-          Literal & Non-literal both implicate the reproduction doctrine. Fragments are also included.


Example: Law review article with literal quote written by others:

Looking at CR infringement:

1. do you own  the work?

2. is it a valud CR?

3. has their been copying?

4.are their any defenses?


In this example, there are defenses – eg: fair use – which allow us to use other peoples work when we right la review articles.

Nichols v. Universal Pictures Corp.


Plaintiff alleged that the copyright in her play, concerning a marriage between a Jewish man and an Irish woman and the resulting difficulties between both families, was infringed by defendant’s movie about the marriage of an Irish man and a Jewish woman, also focusing on differences between their families. The court affirmed the judgment for defendant, finding no infringement. As for plots, the only matter common to the two was a quarrel between a Jewish father and an Irish father, the marriage of their children, the birth of grandchildren, and a reconciliation. The court found such theme was only a part of plaintiff’s ideas, and therefore was not copyrightable. Only four characters were common to both stories; two were “no more than stage properties,” while there were numerous differences between representations of the other two.

Holding: CR protects expressions rather than ideas. Here, nothing protected is copied.

c) – Limitations on the exclusive right to copy

a)      Archival copies for public libraries – § 108

b)      Ephemeral copies by broadcasters – § 112 & 118 (d)

c)      Cover License – § 115, 114 (b) See page 555 – very important

d)     Non commercial copies of musical compositions & sound recordings – §1008

e)      Running computer software – § 117(a) See page 556

f)       Maintaining computer software – 117(c)

g)      Fair use – a defense in many instances of copying.

2- The right to prepare derivative works – § 106(2) – If you make an unauthorized derivative work you don’t have any CR at all.

3- The distribution right – 106(3)

  • 1st sale doctrine – §109 (a) & (b)

-          §109 (b)(1)(A) does not authorize the rent of computer programs & sound recording works, however, libraries can do it. See §109 (b)(2)(A)

  • Importation right – §602

4- Public Performance & Display Rights – §106(4)(5) § 101 definition of “display” & “perform”

  • Sound recordings – only digital performances of sound recordings, ex. performances transmitted over the Internet.
  • No public display right exists in architectural works
  • See 109(c)

- Statutory limits on performance & display rights

1- Public interests exceptions – § 110

2- Compulsory licenses

  • Cable retransmission – §111
  • Satellite retransmission – §119
  • Jukeboxes – §116 “coin – operated phonorecord players”
  • Public Broadcasting – §118
  • Webcasting – §114 (d)-(j)

11- Vicarious liability

  • CR liability extends no just to those who infringe directly but also to those who contribute to or ctrol the infringing acts of others.


1-      Respondeat Superior: employers liable for the infringing acts of their employees under traditional master-servant principles. The direct infringer us an employee or agent of the indirect infringer & is acting on his behalf. 


2-      Specific Vicarious liability (VL) – liability to those who profit from infringing activity having the right & ability to prevent infringement. No master-servant relation. See ex. page 582-583


a)      Right & ability to ctrol the direct infringer


b)      Direct financial benefit


  • No extend liability to landlords who leased premises to a direct infringer for a fixed rental & did not participate directly in organizing or soliciting the infringing activity.   
  • No employment relationship at all, & the infringer is not acting in name of the indirect infringer.


3-      Contributory Infringement – a CL creation


a)      Knowledge – > Know or reason to know


b)      Inducemet -> Induces, causes or materially contributes


  • Knowledge is not required for direct infringement (only for indirect infringement) because CR, TM & Patents are strict liability (SL) infringements.


4-      Inducement as a separate theory

Sony Corp. of Am. v. Universal City Studios, Inc.


Petitioners manufactured and sold home video tape recorders. Respondents owned the copyrights to television programs broadcast on public airwaves. Respondents sued petitioners for copyright infringement, alleging that because consumers used petitioners’ recorders to record respondents’ copyrighted works, petitioners were liable for the copyright infringement allegedly committed by those consumers.

Rule: a sale of an article which though adopted to an infringing use is also adopted to other & lawful uses, is not enough to make the Sony a contributory infringer.

Holding: a subst. portion of the public’s use of VCR did not implicate CR ar all. Sony’s sale of such equipment to the gral public does not constitute contributory infringement of respondent’s CRs.

  • To copy a program for later viewing at the home is a fair use – time shifting. Some authors authorized the reproduction.
  • Test: merely a substantial non-infringement use. Only whether the equipment is capable of subst. non-infringement use.
  • There was no evidence of mkt harm.

12- Defenses

1-      Fair Use (FU) – § 107

  • § 107 List of factors is illustrative rather than exhaustive
  • § 107 establish presumptive examples of FU, no automatically FU.

Secondary Liability in Copyright

-          Secondary liability is Judge-made

-          Requirements. Direct Infringement


-          Flavors

  • Respondeat Superior
  • Vicarious Liability
    • Right & Ability to control
    • And Direct Financial Interest
  • Contributory Infringement
    • Know or RTK
    • ACT (Induce, Cause,  Materially contribute)

Harper & Row, Publrs. v. Nation Enters.


Petitioners alleged that the lower court erred in ruling in favor of respondents and holding that respondents did not infringe upon petitioners’ copyright because use of the material was excused by the public’s interest in the subject matter and by a finding that the fair use defense was established.

Rule: where an author & publisher have invested resources in creating an original work & are poised to release it to the public, no legitimate own is served by pre-empting the right of 1st publication.

  • FU Factors:


1-      The purpose & character of the use – it favored the P

2-      The nature of the copyrighted work – this not favored the P too much. “creative in nature works” v. “more fact based works”

3-      Amount & substantiality of the portion used – D took the most important parts of the manuscript.

4-      The effect of the use upon the potential mkt for or value on the copyrighted work. – this is the most important factor & favored the P too. Mkt harm is presumed if the use is commercial.



  • FU is an affirmative defense requiring a case by case analysis
  • Every commercial use of copyrighted material is presumptively an unfair exploitation
  • Fair use presupposes fair dealing & good faith
  • The fact that a work is unpublished is a critical element of its “nature”. The scope of FU is narrower w/ respect to unpublished works. The author’s right to ctrol the 1st public appearance of his expression weighs vs. FU of the before its release.
  • The right of 1st publication encompasses not only the choice whether to publish at all, but also the choice of when, where, & in what form 1st publish a work.
  • FU when properly applied, is limited to copying by others which does not materially impair the marketability of the work copied.
  • To negate FU one need only to show that if the challenged use should become widespread, it would adversely affect the potential mkt for the copyrighted work.
  • Harm not only to the original but also harm to the mkt for derivative works.
  • A challenge to a noncommercial use of a copyrighted work requires proof either that the part. use is harmful, or that if it should become widespread, it would adversely affect the potential mkt for the copyrighted work.
  • Test: only a preponderance of evidence that some meaningful likelihood of future harm exits.
  • Likelihood of future harmful may be presumed if the intended use is for commercial gain. But if it is for noncommercial purpose, the likelihood must be demonstrated.

Holding: no FU in the present case.

2- Parodies – FU

5-      A parody is the use of some elements of a prior author’s work to create a new that, at least in part, comments on that author’s work.

Campbell v. Acuff-Rose Music


Petitioners, a rap music group (2 Live Crew’s), were sued by respondent, the corporate owner of an original rock ballad, for copyright infringement. Petitioners claimed the song was a parody entitled to fair use protection under the Copyright Act of 1976, 17 U.S.C.S. § 107.

Analysis: here the BOP is on Ds.

1-      The purpose & character of the use

  • A parody’s commercial character is only 1 element to be weighted in a FU analysis.
  • It is only 1 element of the 1st factor inquiry into its purpose & character


2-      The nature of the copyrighted worked

  • Original’s creative expression falls within the core of the CR’s protective purposes. However, parodies almost invariably copy publicly known, expressive works.
  • “creative in nature works” v. “more fact based works”


3-      The amount & substantiability of the portion used in relation to the copyrighted work as a whole – the quantity & value of the materials used.

  • The extend of permissible copying varies w/ the purpose & character of the use (1st factor)
  • This factor also tends to address the 4 & moist important factor, by revealing the degree to which the parody may serve as a substitute for the original or potentially licenses derivatives.
  • In a parody context – once enough has been taken to assure identification (as the previous work), how much more is reas. will depend, say, on the extend to which the song’s overriding purpose & character is to parody the orig. or, in contrast, the likely that the parody may serve as a substitute for the orig. But using some characteristic features cannot be avoided.
  • Copying does not become excessive in relation to parody purpose merely because the portion taken was the orig.’s heart.


4-      The effect of the use upon the potential mkt for or value on the copyrighted work.

  • Actual & potential mkts involved.
  • Harm to the orig. but also the harm to the mkt of derivative works.
  • The mkt for potential derivative uses include only those that creators of org. works would in gral develop or license others to develop.
  • The law recognizes no derivative mkt for critical works such as a parody.
  • If a parody whose wide dissemination in the mkt runs the risk of serving as a substitute for the orig. or licensed derivatives mkts there is not FU. By contrast, when there is little or no risk of mkt substitution, whether because the large extend of transformation of the earlier work, the new work’s minimal distribution in the mkt, the small extend to which it borrows from an orig., or others factors,  may be found FU.

Holding: Possibly a legitimate parody’s FU. The Ct. held that the COA erred because rendered presumptively unfair the commercial nature of 2 Live Crew’s parody of “Oh, Pretty Woman. No such evidentiary presumption is available to address either the 1st factor, the character & purpose of the use, or the 4th, mkt harm, in determining whether a transformative use, such as parody, is a fair one.

  • Scope of the derivative work right – See note 10 page 634
  • Parody or satire? See note 4 page 632
  • transformative work” – the new work is supplanting the orig., or instead add something new, w/ a different purpose or different character, altering the 1st w/ new expression, meaning, or message.
  • Some derivative works are transformative, & all transformative works are derivative.
  • The more transformative the new work the less will be the significance of other factors such as commercialism, that may weight vs. a finding of FU.
  • Commercial use raises a presumption of mkt harm unless the use of the work is transformative because “mkt substitution is at least less certain, & mkt harm may not be so readily inferred.

13- Digital CR

1- Anticircumvention Protections – see 1201 (a) & (b)

  • The FU doctrine did apply to circumvention claims.
  • Anticircumvention claims are not acts of CR infringement, but separate offenses. They are governed by the Digital Millennium CR Act (DMCA) – tengo la ley en la computadora.

2- Online Service Provider (OSP) Safe Harbors (SH)

  • Congress established a series of SH insulating OSP’s from liability for various acts, such as transmitting, storing, or linking to unauthorized content as Title II of the Digital Millennium CR Act (DMCA)
  • OSP must meet 3 conds. in order to qualify for SH treatment:


1-      Adopt, implement, & inform its subscribers of its policy for terminating service to users who are repeat CR infringers. §512(i)(1)(A)

2-      Adopt standard technical measures used by CR Os to identify & protect copyrighted works. §512(i)(1)(B)

3-      Designate an agent to receive notifications of claimed infringement from CR Os & register that agent w/ the CR Office.


  • However, the act imposes more specific criteria in order to qualify for the part. SHs (OSP satisfying these reqs. are shielded from monetary relief):


1-      Transmission & routing – transmitting copyrighted material w/o authorization, requiring that the OSP act as a passive conduit, neither directing, initiating, selecting, or modifying the content being transmitted by 3rd parties – see §512(a);

2-      Caching – making temporary copies on their systems – see  §512(b)

LIMITATION ON LIABILITY.—A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of

copyright by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider in a case in which—


(A) the material is made available online by a person other than the service provider,

(B) the material is transmitted from the person described in subparagraph (A) through the system or network to a person other than the person described in subparagraph (A) at the direction of that other person, and

(C) the storage is carried out through an automatic technical process for the purpose of making the material available to users of the system or network who, after the material is transmitted as described in subparagraph (B), request access to the material from the person described in subparagraph (A), if the conditions set forth in paragraph (2) are met.

3-      Storage – storing infringing material on their servers, see §512(c) (requiring that the OSP not have actual or constructive notice that infringing material resides on its serves & promptly remove or block access to infringing material upon learning of CR violations.

IN GENERAL.—A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright

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, if the service provider—


(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;


(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and


(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.


  • In order to protect user’s rights, the OSP must promptly notify users that material has been blocked or removed. The user may then provide a “counter notification” stating that the material may be properly stored, which the OSP must promptly pass along to the CR O. The OSP must replace or unblock the material within 10 to 14 business days of receiving the counter notification unless the CR O informs the OSP that it has filed a Ct. action to restrain the infringement. see §512(g)(2)


4-      Linking – providing links to infringing material. see §512(d)



  • Volition req. By the terms of §512, the volition element applies to the transmission  §512(a) & caching §512(b), but not the storage §512(c) & linking §512(d)
  • Thus, automatic temporary copying and transmission of copyrighted materials, when instigated by others, does not render an ISP strictly liable for copyright infringement.


3- Digital CR: FU & DMCA safe harbors

Perfect 10, Inc. v., Inc.

Page: 702


The alleged infringer operated a search engine. The owner marketed and sold copyrighted images of nude models. Subscribers paid a monthly fee to view the images in a “members’ area” of the site. Subscribers must use a password to log into the members area. Perfect 10 filed an action vs. Google that included CR infringement claims. This was follow by a similar action vs. Perfect 10 sought a preliminary injunction to prevent & Google, respectively from “copying, reproducing, distributing, publicly displaying, adapting or otherwise infringing, or contributing to the infringement” of Perfect 10 photographs; “linking to websites that provide full-size infringing versions of Perfect 10’s photograph; & infringing Perfect 10’s username/password combinations. There are 2 types of images here: 1) “thumbnails,” which are reduced, as lower resolutions versions of full sized images stored on 3rd party computers. 2) Full size photographic images when Google frames in line linked images that appear on a user’s computer screen.

Holding: Perfect 10 has made a prima facie that Google’s communication of its stored thumbnail images directly infringes Perfect 10’s display right because Google initiates & controls the storage & communication on these images, however, the Ct. concluded that Google’s use of P’s thumbnails is a FU. About the full-size image, Google does not, however, display a copy of full size infringing photographic images for purposes of the CR Act when Google frames in-line linked images that appear on a user’s computer screen. Because Google’s computers do not store the photographic images, Google does not have a copy for purposes the CR Act. Instead of communicating a copy of the image, Google provides HTML (a computer language to build web pages) that direct a user’s browser to a website publisher’s computer that stores the full-size photographic image. Providing these HTML instructions is not equivalent to showing a copy.

1-      HTML instructions are lines of text, not a photographic images.

2-      HTML instructions do not themselves cause infringing case infringing images to appear on the user’s computers screen. The HTML instructions merely give the address of the image to the user’s browser. The browser then interacts w/ the computer that stores the infringing image. It is this interaction that causes an infringing image to appear on the user’s computer screen. Google may facilitate the user’s access to infringing images. However, such assistance raises only contributory liability issues, & does not constitute direct infringement of the CR’s O’s display rights.

3-      No violation of the distribution right either in regard w/ the full size images because Google did not communicate the full-size images to the user’s computer, Google did not distribute these images.

4-      Google’s search engine communicates HTML instructions that tell a user’s browser where to find full-size images on a website’s publisher’s computer, but Google does not itself distribute copies of the infringing photographs. It is the website publisher’s computer that distributes copies of the images by transmitting the photographic image electronically to the user’s computer. The user, can then obtain copies by downloading the photo or printing it.

5-      “copies” means “material objects in which a work is fixed”  See §101

6-      Although the P has succeeded in showing it would prevail in its prima facie case that Google’s thumbnail images infringe P’s display rights Google contends that its use of thumbnail is a FU of the images.

7-      FU statutory factors must not be treated in isolation, one from another


a)      Purpose & character of the use – this to determine whether & to which extend the new work is “transformative”.

6-      A search engine puts images “in a different context” so that they are transformed into a new creation. The Ct. concluded that the significant transformative nature of the Google’s search engine, outweighs Google’s superseding & commercial uses of the thumbnails.


b)      The nature of the copyrighted work – not too much relevant here

7-      “creative in nature works” v. “more fact based works”


c)      The amount & substantiality of the portion used. This factor did not favored neither party.


d)     Effect of use on the mkt – the ct. concluded that this factor favors neither party.

Caching – DMCA 

Field v. Google

Facts: This is an action for copyright infringement brought by plaintiff Blake Field (“Field”) against Google Inc. (“Google”). Field contends that by allowing Internet users to access copies of 51 of his copyrighted works stored by Google in an online repository, Google violated Field’s exclusive rights to reproduce copies and distribute copies of those works. Plaintiff Field, an author and an attorney who is a member of the State Bar of Nevada, filed a complaint against Google asserting a single claim for copyright infringement based on Google’s alleged copying and distribution of his copyrighted work entitled Good Tea. Field himself had previously published this work on his personal Web site, On May 25, 2004, Field filed an Amended Complaint, alleging that Google infringed the copyrights to an additional fifty of Field’s works, which likewise had been published on his personal website. Google makes and analyzes a copy of each Web page that it finds, and stores the HTML code from those pages in a temporary repository called a cache. When clicked, the “Cached” link directs an Internet user to the archival copy of a Web page stored in Google’s system cache, rather than to the original Web site for that page. The “Cached” link, and the consequences that flow when a user clicks on it, is the subject of Field’s lawsuit.


Other relevant facts:


* Using meta-tags, a Web site owner can also tell Google’s robot that it can include a given page in Google’s index, but that it should not provide a “Cached” link to that page in Google’s search results.  The “no-archive” meta-tag has been a widely recognized industry standard for years.

* If a Web site owner includes the “no-archive” meta-tag on a page, then Google does not provide a “Cached” link when it lists that page in its search results. A Web site owner can add the “no-archive” meta-tag to a Web page in a matter of seconds. Web site owners can also use a Google-specific “no-archive” meta-tag to tell Google that it cannot provide “Cached” links, while allowing other search engines (e.g., Yahoo! and MSN) to do so.

* Web site owners can also communicate with search engines’ robots by placing a “robots.txt” file on their Web site. For example, if the Web site owner does not want robots to crawl the owner’s Web site, the owner can create a robots.txt file with the following text: “User-agent: * Disallow: /”. The above text tells the robots that they should not crawl the owner’s Web site.  If Google’s robot encounters a robots.txt file with the above text, then it will not crawl the Web site, and there will be no entry for that Web page in Google’s search results and no cached link.

* Field decided to manufacture a claim for copyright infringement against Google in the hopes of making money from Google’s standard practice.

* Over a three-day period in January 2004, Field created the 51 works at issue in this lawsuit. Field registered copyrights for each of these works separately on January 16, 2004. Field then created a Web site at and published his works on pages where they were accessible, for free, to the world starting in late January 2004.

* Field created a robots.txt file for his site and set the permissions within this file to allow all robots to visit and index all of the pages on the site. Field created the robots.txt file because he wanted search engines to visit his site and include the site within their search results.

* Field knew that if he used the “no-archive” meta-tag on the pages of his site, Google would not provide “Cached” links for the pages containing his works. Field consciously chose not to use the “no-archive” meta-tag on his Web site.

* As Field expected, the Googlebot (Google robot) visited his site and indexed its pages, making the pages available in Google search results. When the pages containing Field’s copyrighted works were displayed in Google’s search results, they were automatically displayed with “Cached” links, as Field intended they would be. According to Google’s records, an individual or individuals clicked on the “Cached” links for each of the pages containing Field’s works, and retrieved copies of each of the those pages from Google’s system cache. When Google learned that Field had filed (but not served) his complaint, Google promptly removed the “Cached” links to all of the pages of his site.

* Google also wrote to Field explaining that Google had no desire to provide “Cached” links to Field’s pages if Field did not want them to appear.

* Field alleges that Google directly infringed his copyrights when a Google user clicked on a “Cached” link to the Web pages containing Field’s copyrighted works and downloaded a copy of those pages from Google’s computers.


Holding: when a user requests a Web page contained in the Google cache by clicking on a “Cached” link, it is the user, not Google, who creates and downloads a copy of the cached Web page. Google is passive in this process. Google’s computers respond automatically to the user’s request. Without the user’s request, the copy would not be created and sent to the user, and the alleged infringement at issue in this case would not occur. The automated, non-volitional conduct by Google in response to a user’s request does not constitute direct infringement under the Copyright Act.


Google’s defenses:


A. Implied License


  • A license is a defense to a claim of copyright infringement. A copyright owner may grant a nonexclusive license expressly or impliedly through conduct.
  • consent given in the form of mere permission or lack of objection is also equivalent to a nonexclusive license.
  • Web site publishers typically communicate their permissions to Internet search engines (such as Google) using “meta-tags.” A Web site publisher can instruct a search engine not to cache the publisher’s Web site by using a “no-archive” meta-tag.
  • the “noarchive” meta-tag is a highly publicized and well-known industry standard.


            Holding: Google reasonably interpreted absence of metatags as permission to present “Cached’ links to the pages of Field’s site.


B. Estoppel


  • A plaintiff is estopped from asserting a copyright claim “if he has aided the defendant in infringing or otherwise induced it to infringe.
  • Google must prove 4 elements: 1. Field knew of Google’s allegedly infringing conduct; 2. Field intended that Google rely upon his conduct or acted so that Google had a right to believe it was so intended; 3. Google was ignorant of the true facts; and

4. Google detrimentally relied on Field’s conduct.


1-      First, Field knew of Google’s allegedly infringing conduct well before any supposed infringement of his works took place. Field concedes that he knew that Google would automatically allow access to his works through “Cached” links when he posted them on the Internet unless he instructed otherwise. Field also knew that if an Internet user clicked on the “Cached” links to his web pages, the user would immediately download a copy of those pages from Google’s system cache. Field was aware of steps he could take to ensure that his web site would not be archived and not included in Google’s cache. There is no dispute that Field was aware of the conduct that he challenges in this lawsuit.


2-      Second, Field remained silent regarding his unstated desire not to have “Cached” links provided to his Web site, and he intended for Google to rely on this silence. Field could have informed Google not to provide “Cached” links by using a “no archive” meta-tag or by employing certain commands in robots.txt file. Instead, Field chose to remain silent knowing that Google would automatically interpret that silence as permission to display “Cached” links. Field’s silence, particularly given his knowledge of the consequences of that silence, satisfies the second estoppel factor.


3-      Third, Google was not aware that Field did not wish to have Google provide “Cached”

links to his works.


4-      Fourth, Google detrimentally relied on Field’s silence. It is undisputed that if Google had             known of Field’s preference, it would not have presented “Cached” links to Field’s       pages. Google honors copyright holder’s requests that it not display “Cached” links to their pages.


            Holding: All four estoppel factors are present based on the undisputed facts.


C. Fair Use

  • The fair use doctrine “creates a limited privilege in those other than the owner of a copyright to use the copyrighted material in a reasonable manner without the owner’s consent.


  1. 1.      Factor One: Purpose and Character of the Use.


  • the fair use analysis largely turns on one question: whether the new [use] merely “supersedes the objects” of the original creation . . .or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative” . . . Although such transformative use is not absolutely necessary for a finding of fair use, . . . the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works.
  • Assuming that Field intended his copyrighted works to serve an artistic function to enrich and entertain others as he claims, Google’s presentation of “Cached” links to the copyrighted works at issue here does not serve the same functions. For a variety of reasons, the “Cached” links “add something new” and do not merely supersede the original work.
  • First, Google’s cache functionality enables users to access content when the original page is inaccessible.
  • Second, providing “Cached” links allows Internet users to detect changes that have been made to a particular Web page over time.
  • Third, offering “Cached” links allows users to understand why a page was responsive to their original query. It is often difficult for users to locate their query terms within a given page, and may be impossible where the language of a page has been modified. Because it controls its archival copy, Google can automatically highlight the user’s query in the copy that the user then retrieves. The objective of enabling users to more quickly find and access the information they are searching for is not served by the original page.
  • Fourth, Google utilizes several design features to make clear that it does not intend a “Cached” link of a page to substitute for a visit to the original page.
  • Fifth, Google ensures that any site owner can disable the cache functionality for any of the pages on its site in a matter of seconds. Thus, site owners, and not Google, control whether “Cached” links will appear for their pages. The fact that the owners of billions of Web pages choose to permit these links to remain is further evidence that they do not view Google’s cache as a substitute for their own pages.
  • Google’s Status as a Commercial Enterprise Does Not Negate Fair Use.
  • When a use is found to be transformative, the “commercial” nature of the use is of less importance in analyzing the first fair use factor.
  • There is no evidence Google profited in any way by the use of any of Field’s works. Rather, Field’s works were among billions of works in Google’s database.

2. Factor Two: The Nature of the Copyrighted Works

  • When dealing with transformative uses, this factor has been described as “not . . . terribly significant in the overall fair use balancing”.
  • Accordingly, assuming the works at issue are creative, as in Kelly, the “nature” of the works weighs only slightly in Field’s favor.
  • The second fair use factor weighs only slightly against fair use because Field made his works available in their entirety for free to the widest possible audience.

3. Factor Three: The Amount and Substantiality of the Use

  • See Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 449-50 (1984) (emphasis added; citations omitted) (affirming as a fair use the “timeshifting” of entire television shows). Similarly, the Ninth Circuit has held that “the extent of permissible copying varies with the purpose and character of the use” and that “[i]f the secondary user only copies as much as is necessary for his or her intended use, then this factor will not weigh against him or her.”
  • Google’s use of entire Web pages in its Cached links serves multiple transformative and socially valuable purposes. These purposes could not be effectively accomplished by using only portions of the Web pages. Without allowing access to the whole of a Web page, the Google Cached link cannot assist Web users (and content owners) by offering access to pages that are otherwise unavailable.
  • Because Google uses no more of the works than is necessary in allowing access to them through “Cached” links, the third fair use factor is neutral, despite the fact that Google allowed access to the entirety of Field’s works.

4. Factor Four: The Effect of the Use upon the Potential Market for or Value of the Copyrighted Work


  • The fourth fair use factor considers the effect of the defendant’s use upon the potential market for the plaintiff’s work.
  • Here there is no evidence of any market for Field’s works. Field makes the works available to the public for free in their entirety, and admits that he has never received any compensation from selling or licensing them. See Field Dep. at 132:10-17. There is likewise no evidence that by displaying “Cached” links for pages from Field’s site, Google had any impact on any potential market for those works. More generally, there is no evidence before the Court of any market for licensing search engines the right to allow access to Web pages through “Cached” links, or evidence that one is likely to develop. “Cached” links are simply one way that search engines enable end-users to obtain information that site owners make freely available to the world. There is compelling evidence that site owners would not demand payment for this use of their works.
  • Because there is no evidence that Google’s “Cached” links had any impact on the potential market for Field’s copyrighted works, the fourth fair use factor weighs strongly in favor of a fair use determination.


5. Additional Factor: Google’s Good Faith in Operating Its System Cache Weighs In Favor of Fair Use.


  • The Copyright Act authorizes courts to consider other factors than the four non-exclusive factors discussed above. See 17 U.S.C. § 107 (noting court is to consider factors including four specifically listed).
  • In particular, the Ninth Circuit has stated that courts may evaluate whether an alleged copyright infringer has acted in good faith as part of a fair use inquiry.
  • Because ‘fair use presupposes “good faith” and “fair dealing,”’ courts may weigh the ‘propriety of the defendant’s conduct’ in the equitable balance of a fair use determination.”
  • The fact that Google has acted in good faith in providing “Cached” links to Web pages lends additional support for the Court’s fair use finding.
  • Google does not provide “Cached” links to any page if the owner of that page does not want them to appear. Google honors industry-standard protocols that site owners use to instruct search engines not to provide “Cached” links for the pages of their sites.
  • Google also provides an explanation on its Web site of how to deploy these industry-standard instructions, and provides an automated mechanism for promptly removing

“Cached” links from Google’s search results if the links ever appear.

  • Google takes steps to ensure that users seeking an original Web page through Google’s search engine can easily access it, and that any user viewing a page from Google’s cache knows that it is not the original.
  • Google’s good faith is manifest with respect to Field’s works in particular. Field did not include any information on the pages of his site to instruct Google not to provide “Cached” links to those pages. Google only learned that Field objected to the “Cached” links by virtue of discovering Field’s Complaint in this litigation. At the time, Field had not even served the Complaint. Nevertheless, without being asked, Google promptly removed the “Cached” links to the pages of Field’s site.
  • Field’s own conduct stands in marked contrast to Google’s good faith. Field took a variety of affirmative steps to get his works included in Google’s search results, where he knew they would be displayed with “Cached” links to Google’s archival copy and he deliberately ignored the protocols that would have instructed Google not to present “Cached” links. Comparing Field’s conduct with Google’s provides further weight to the scales in favor of a finding of fair use.



D. Digital Millennium Copyright Act


  • The safe harbor of Section 512(b) is directed to system caches and states that “[a] service provider shall not be liable for monetary relief . . . for infringement of copyright by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider” provided certain requirements are met.
  • See Ellison v. Robertson, 357 F.3d 1072, 1081 (9th Cir. 2004) (AOL’s storage of online postings for 14 days was “intermediate” and “transient”
  • Google’s cache is a repository of material that operates between the individual posting the information, and the end-user requesting it. Further, the copy of Web pages that Google stores in its cache is present for approximately 14 to 20 days.
  • The Court finds that Google’s cache for approximately 14 to 20 days – like the 14 days deemed “transient storage” in Ellison – is “temporary” under Section 512(b) of the DMCA. The Court thus concludes that Google makes “intermediate and temporary storage” of the material stored in its cache, within the meaning of the DMCA.
  • Field next claims that Google’s cache does not satisfy the requirements of Section 512(b)(1)(B). Section 512(b)(1)(B) requires that the material in question be transmitted from the person who makes it available online, here Field, to a person other than himself, at the direction of the other person. Field transmitted the material in question, the pages of his Web site, to Google’s Googlebot at Google’s request. Google is a person other than Field. Thus, Google’s cache meets the requirement of Section 512(b)(1)(B).
  • Finally, Field contends that Google’s cache does not fully satisfy the requirements of Section 512(b)(1)(C). Section 512(b)(1)(C) requires that Google’s storage of Web pages be carried out through “an automated technical process” and be “for the purpose of making the material available to users . . . who . . . request access to the material from [the originating site].”  There is no dispute that Google’s storage is carried out through an automated technical process. There is likewise no dispute that one of Google’s principal purposes in including Web pages in its cache is to enable subsequent users to access those pages if they are unsuccessful in requesting the materials from the originating site for whatever reason. Google’s cache thus meets the requirements of Section 512(b)(1)(C).


DMCA takedown notices


  • Takedown notices will be sending to an intermediary. A lot potential of abuse because the potential infringer usually will not answer back.
  • See take down elements of notification – §512(c)(3)
  • FU has to be considered at the moment of use a takedown notice because § 512(c)(3)(A)(v) requires a statement that the complaining party has a good faith (GF) belief that the use of the material in the manner complained of is not authorized by the CR O, its agent, or the law.
  • The intermediary wants to keep the safe harbor then the takedown will be allowed.
  • Takedown notices are functional not persuasive.
  • Cease & Desist Letter (C&D L) will be send to the direct infringer.
  • (C&D L) are persuasive


Lenz v. Universal Music Corp.


Facts: On February 7, 2007, Plaintiff Stephanie Lenz (“Lenz”) videotaped her young children dancing in her family’s kitchen. The song “Let’s Go Crazy” by the artist professionally known as Prince (“Prince”) played in the background. The video is twenty-nine   seconds in length, and “Let’s Go Crazy” can be heard for approximately twenty seconds, albeit with difficulty given the poor sound quality of the video. The audible portion of the song includes the lyrics, “C’mon baby let’s get nuts” and the song’s distinctive guitar solo. Lenz is heard asking her son, “what do you think of the music?” On February 8, 2007, Lenz titled the video “Let’s Go Crazy # 1″ and uploaded it to (“YouTube”), a popular Internet video hosting site, for the alleged purpose of sharing her son’s dancing with friends and family. 1 YouTube provides “video sharing” or “user generated content.” The video was available to the public at

Universal owns the copyright to “Let’s Go Crazy.” On June 4, 2007, Universal sent YouTube a takedown notice pursuant to Title II of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512 (2000). The notice was sent to YouTube’s designated address for receiving DMCA notices, “,” and demanded that YouTube remove Lenz’s video  from the site because of a copyright violation. YouTube removed the video the following day and sent Lenz an email notifying her that it had done so in response to Universal’s accusation of copyright infringement. YouTube’s email also advised Lenz of the DMCA’s counter-notification procedures and warned her that any repeated incidents of copyright infringement could lead to the deletion of her account and all of her videos. After conducting research and consulting counsel, Lenz sent YouTube a DMCA counter-notification pursuant to 17 U.S.C. § 512(g) on June 27, 2007. Lenz asserted that her video constituted fair use of “Let’s Go Crazy” and thus did not infringe Universal’s copyrights. Lenz demanded that the video be re-posted. YouTube re-posted the video on its website about six weeks later. As of the date of this order, the “Let’s Go Crazy # 1″ video has been viewed on YouTube more than 593,000 times.

On July 24, 2007, Lenz filed suit against Universal alleging misrepresentation pursuant to 17 U.S.C. § 512(f). Universal filed motion to dismiss.


  • Fair Use and 17 U.S.C. § 512(c)(3)(A)(v).


-          In order for a copyright owner to proceed under the DMCA with “a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law,” the owner must evaluate whether the material makes fair use of the copyright. 17 U.S.C. § 512(c)(3)(A)(v).

-          “the ‘good faith belief’ requirement in § 512(c)(3)(A)(v) encompasses a subjective, rather than objective, standard”).

-          Subjective bad faith is the standard to prevail upon § 512 f


MISREPRESENTATIONS.—Any person who knowingly materially misrepresents under this section—

‘‘(1) that material or activity is infringing, or

‘‘(2) that material or activity was removed or disabled by mistake or misidentification,


shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.


Holding: motion to dismiss is DENIED. Universal shall file its answer within twenty (20) days of the date of this order.

  • See 512(g)

14- File sharing & inducement; Remedies.

MGM Studios Inc. v. Grokster, Ltd.


The distributors were aware that users employed their free software primarily to download copyrighted files, but the distributors contended that they could not be contributorily liable for the users’ infringements since the software was capable of substantial noninfringing uses such as downloading works in the public domain. The U.S. Supreme Court unanimously held, however, that the distributors could be liable for contributory infringement, regardless of the software’s lawful uses, based on evidence that the software was distributed with the principal, if not exclusive, object of promoting its use to infringe copyright. In addition to the distributors’ knowledge of extensive infringement, the distributors expressly communicated to users the ability of the software to copy works and clearly expressed their intent to target former users of a similar service which was being challenged in court for facilitating copyright infringement. Further, the distributors made no attempt to develop filtering tools or mechanisms to diminish infringing activity, and the distributors’ profit from advertisers clearly depended on high-volume use which was known to be infringing.

Rule: one who distributes a device w/ the object of promoting its use to infringe CR, as shown by clear expression or other affirmative step taken to foster infringement, is liable for the resulting acts of infringement by 3rd parties.

Holding: the record is replete w/ evidence that from the moment Grokster & StreamCast began to distribute their free software, each one clearly voiced the objective that recipients use ot to download copyrighted works, & each took active steps to encourage infringement.

-          3 important features here:


1-      Intent: each company showed itself to be aiming to satisfy a known source of demand for CR infringement, the mkt comprising former Napster users.

* this is the most important factor.


2-      Neither company attempted to develop filtering tools or other mechanisms to diminish the infringing activity using their software.

* in the absence of other evidence of intent, a Ct. would be unable to find CI liability merely based on failure to take affirmative steps to prevent infringement, if the device was capable of subst. noninfringing uses. This is supported for Sony safe harbor.


3-      Since the extend of the software’s use determines the gain to the distributors, the commercial sense of their enterprise turns on high volume use, which the record shows is infringing. This evidence alone would not justify an inference of unlawful intent, but viewed in the context of the entire record its import is clear.

* factors 2 & 3 alone are not enough to support liability.


  • When a widely shared serv. or prod. is used to commit infringement, it may be impossible to enforce rights in the protected work effectively vs. all direct infringers, the only practical alternative being to go vs. the distributor of the copying device for secondary liability on a theory of contributory or vicarious infringement.
  • One infringes contributorily by intentionally inducing or encouraging direct infringement, & infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it.
  • The classic instance of inducement is by advertisement or solicitation that broadcast a message designated to stimulate others to commit violation.
  • Whether the advertisement is communicated is not relevant. Because the function of the advertisement in the theory of inducement is to prove by a D’s own statements that his unlawful purpose disqualifies him from claiming protection.
  • The “staple article doctrine” absolves the equivocal conduct of selling an item w/ subst. lawful as well unlawful uses, & limits liability to instances of more acute fault than the mere understanding that some of one’s product will be misused.
  • Mere knowledge of infringing potential or of actual infringing uses would not be enough to subject a distributor to liability. Nor would be acts incident to product distribution, such as offering customer technical support or product updates, support liability.
  • Where evidence goes beyond a prod’s characteristics or the knowledge that it may be put to infringing uses, & shows statements or actions directed to promoting infringement, Sony’s staple-article doctrine will not preclude liability.
  • Ds provide the technology that others use to infringe.

Remedies-See §501-505

1-      Injunctions: The CR Act authorizes Cts. to issue “temporary” injunctions & permanent injunctions “on such terms it may deem reas. to prevent or restraint infringement of a CR.” §502(a) Further, Cts. may order the seizure or impoundment of allegedly infringing articles while a CR case is pending under the authority of §503(a) in civil cases or §509(a) (in crim. cases). Those articles may be destroyed or forfeited to US after the judgment.

  • While in a vast majority of cases, an injunctive remedy is justified because most infringements are simple piracy,” such cases are “words apart from many of those raising reas. contentions of FU” where there may strong public interest in the publication of the secondary work & the CR O’s interest may be adequately protected bu an award of damages for whatever infringement is found; Abend v. MCA, Inc. (finding “special circumstances” that would case “great injustice” to Ds & “public injury” were injunction to issue.
  • Injunctions are readily available in “simple piracy” cases, although less likely where there the D contributes transformative creativity or engages in political or social commentary. This may be specially true where the CR O refuses to license his or her work.
  • The Sup. Ct. has consistently rejected to replace traditional equitable consids. w/ a rule that an injunction automatically follows a determination that CR has been infringed.

2- Damages:

a)      Actual Damages & Profits: the CR law authorizes the CR O to collect actual damages or profits (defined as the loss to the CR holder + additional profits made by the infringer) §504.


b)      Statutory Damages: CR Os who register their CR prior to infringement (or within 3 months of publication) may elect, at any time prior to the entry of judgment, to relinquish recovering actual damages & profits to obtain statutory damages. Where the P has not proved that the D intentionally infringed, the Ct. must award btw $750 & $30,000 per infringed work. The lower bound falls to $200 where the infringer establishes that he or she was not aware & had no reason to believe that his or her acts constituted infringement. Where willful infringement is established the upper bound rise to §150,000 per infringed work. See §504.


  • CRs have a right to a jury determination of the statutory damages amount.
  • see § 412 registration as a pre-requisite to certain remedies for infringement

-          3 months after publication for reg. to get statutory damages & attorneys fees.

-          Another option is to register the work 1 month after the CR O has learned of the infringement.


c)      Attorney fees: §505 of the CR Act authorizes the award of attorney fees in the discretion of the Ct. to “prevailing parties.” The Sup. Ct. interpreted this provision as allowing attorneys fees to be awarded to prevailing Ps or Ds. On a equal basis.

                        Misappropriation, Right of Publicity; Trade Secrets

1-      Misappropriation

Int’l News Serv. v. AP (1918)


Defendant engaged in the systematic practice of taking the bodies of news stories from bulletin boards and early editions of complainant’s newspapers and selling them as its own. Complainant sued, seeking, among other things, to enjoin defendant from engaging in such activity. The trial court decided to withhold the injunction in anticipation of the appeal. The appellate court, however, issued the injunction and thus restrained defendant from taking or gainfully using any of complainant’s news until its commercial value as news had passed away. Emphasizing the competitive relationship between the parties, the Supreme Court concluded that, although it involved misappropriation rather than misrepresentation, defendant’s strategy amounted to unfair competition in business. Refusing to create a more specific injunction, the court affirmed the decree of the appellate court.

Holding: the Ct. raised a risk of mkt failure resulting from the INS free ride because AP may have a lack of incentive to continue w/+ its activity if INS is allowed to take advantage from AP’s news. The Ct recognized a “quasi prop.” btw the parties in conflict.

  • The instant case differs from the ordinary case of unfair competition because instead of selling is goods as those of complainant, is substitutes misappropriation in the place of misrepresentation, & sell complainant’s goods as its own.
  • In NBA v. Motorola, Inc. – the Ct. held that International News survives today where:


1-      A P generates or gather information at a cost;

2-      The information is time-sensitive;

3-      A D’s use of the information constitutes free-riding on the P’s efforts;

4-      The D is in direct competition w/ a product or serv. offered by the Ps; and

5-      The ability of other parties to free-ride on the efforts of the P or others would so reduce the incentive to produce the product that its existence or quality would be substantially threatened.


2-      Right of publicity

White v. Samsung Electronics America, Inc. (1993) – page 1026

Facts: the act that spawned this litigation starred a robot dressed in a wig, dress & jewelry resembling Vanna White’s hair & dress; the robot was posed next to a Wheel-of-Fortune-like game board. The caption read “Longest running game show. 2012 AD.” White sued, alleging Samsung infringed her right of publicity by “appropriating” her identity.


  • Right of publicity is state law.
  • It can be statutory, CL or CL & statutory
  • Right of publicity – an exclusive right to name, likeness, signature & voice.

Dissenting: Vanna White & those like her have been given something they never had before. In the name of fostering creativity, the majority suppress diminishing the rights of CR holders & the public at large.

3-      Trade Secrets (TS)


  • It is mostly state law. Statutory or CL. Some states only CL w/o any reference to the Uniform Trade Secret Act (USTA) or the restatement.
  • The life of a TS is indefinite as long as is still as TS.
  • Independent parties can have the TS. Ex. one parties gets the TS for reverse engineering and keep it secret.
  • Definition – §1 of the Uniform Trade Secret Act (it has not been uniformly adopted in each state): TS means information, including a formula, pattern, compilation, device, method, technique, or process, that:


(1)   Derives independent economic value, actual or potential, from not being generally known to, & not be readily ascertainable by proper means by, other persons who can obtain economic value for its disclosure & use, &

(2)   Is the subject of efforts that are reas. under the circumstances to maintain its secrecy.

 Metallurgical Industries, Inc. v. Fourtek, Inc.


Appellant challenged the adverse judgment in its action for alleged misappropriation of trade secrets by appellees. The court concluded that the inferences from the facts, construed favorably to appellant, were that appellant wished only to profit from its secrets in its business dealings, not to reveal its secrets to the public. Here, in the mid-1970’s Metallurgical began to consider using the zinc recovery process for the carbide reclamation. In that connection, it came to appellee Irving Bielefeldt, a representative of Therm-O-Vac, Negotiations led to a K authorizing Therm-O-Vac to design & construct 2 zinc recovery furnaces.

The 1st furnace arrived in 04/1977. Dissatisfied w/ its performance Metallurgical modified it extensively. These efforts proved successful & the modified furnace soon begun commercial operation.  A 2nd purchase was signed in 01/1979, & the furnace arrived that July. Further modifications again had to be made.

In 1980, after Therm-O-Vac went bankrupt, Bielefeldt & 3 other former Therm-O-Vac employees formed Fourtek, Inc. Soon thereafter, Fourtek agreed to build a zinc recovery furnace for appellee Smith International, Inc. Metallurgical brought action for misappropriation of TSs.

In this case Metallurgical revealed its information to Consarc Corp. in 1978, it also disclosed information in 1980 to La Floridienne. Disclosure to Consarc was made w/ the hope that Consarc could build the 2nd furnace. Agreement w/ La Floridienne gave it the right, as a licensee, to the information in exchange for royalty payments.

Holding: a TS here because Metallurgical presented evidence of the secrecy of the process, the value of the modifications & the cost of developing the secret device or process.

  • Factors to be considered in determining whether information constitutes a TS:


1-      The extend to which the information is known outside the claimant’s business.

2-      The extend to which is known by the employees & others involved in the business.

3-      The measures taken by the claimant to guard the secret of the information. Besides the existence of a TS, Ps must show under the Uniform Act that they have taken “reas. measures” to protect the secrecy of their idea. Generally, they must include certain efforts to prevent theft or use of the idea for former employees. Measures are so relevant to determine the value of the secret, & the information as a secret itself. 

4-      The value of the information to the business & the competitors.

5-      The amount of effort or money expended by the business in developing the information.

6-      The ease or difficult w/ which the information could be properly acquired or duplicated or duplicated by others


  • To be protectable, information must not be “generally known or “readily ascertainable by competitors in the industry.  
  • Although the law requires secrecy, it need not be absolute.
  • Public revelation would dispel all secrecy.
  • Novelty is not required in TS.


Rockwell Graphic Systems, Inc. v. Dev. Industries, Inc.


Plaintiff, a manufacturer of newspaper printing presses and supplier of parts, sued defendant corporation, a competing manufacturer, and defendant president, a former employee of plaintiff (the cached him trying to steal drawings), for misappropriation of trade secrets. The district court granted summary judgment for defendants based on a magistrate’s conclusion that plaintiff had no trade secrets because it had failed to take reasonable precautions to maintain secrecy.

Pointing out that plaintiff had made some efforts to keep its piece part drawings secret, the court reversed and remanded. The court held that the mere fact that plaintiff gave piece part drawings to vendors who made parts for plaintiff did not forfeit trade secret protection.

Holding: The mere fact that Rockwell disclosed its TSs to a “limited number of outsiders for a part. purpose” – did not forfeit TS protection. On the contrary, such disclosure, which is often necessary to the efficient exploitation of a TS, imposes a duty of confidentiality on the part of the person to whom the disclosure is made.

Data General Corp. v. Digital Computer Controls, Inc.


Plaintiff sought an order preliminarily enjoining defendant from making use of claimed trade secrets allegedly contained in design drawings, defendant having acquired such drawings from one of plaintiff’s customers. Said drawings having been furnished to Mini Computer by the P in order to facilitate maintenance of a Nova 1200’s bough for D. The corporate D’s thereafter proceeded to use such design drawings as a pattern for the construction of a competing machine w/ only minor changes.

Plaintiff’s attempts to maintain secrecy consisted of (1) not giving copies of the design drawings to those customers who did not need them for maintenance of the computer, (2) obtaining agreements not to disclose the information to those customers who were given copies of the drawings , (3) printing a legend on the drawings which contained the allegedly confidential information which identified the drawing as proprietary information, the use of which was restricted.

Holding: the Ct. held that at a preliminary stage of the case it cannot be held as a matter of law that the P’s precautions were inadequate. D’s motion for summary judgment must accordingly be denied.

  • See Note 1 pages 60-63 Disclosure of a once protected TS can occur in a number of ways:


1-      A TS O may publish the secret, whether in an academic journal or any other forum, In that case, secrecy is lost, at least provided the publication is accessible to those interested in the SM. Ex. a publication of an issue patent. An inventor must “elect” either patent or trade secret protection, for the 2 cannot protect the same invention simultaneously.

-          In Rhone Poulenc Agro v. DeKalb Genetics Corp. the D had stolen the P’s TS & publish them in its own patent application. The Ct. concluded that in those circumstances the TS O hadn’t had the opportunity to “elect” to give up TS protection, & so ruled that the publication of D’s patent hadn’t disclosed P’s TS.

2-      Selling a commercial product that embodies the secret. However, sales of a product to the public do not necessarily disclose a TS simply because the product embodies the TS. The question is whether the secret is apparent from the product itself. Secrets that are apparent to the Bs of a product are considered disclosed by the product, but secrets contained in undecipherable from within the product are considered secret when the product is sold.

3-      TSs may be publicly disclosed (through publication or the sale of a product) by someone other than the TS O. Commonly, this occurs when someone other than the TS O has independently developed or discovered the secret. See ex. page 61.

-          A disclosure at the internet not necessarily destroys a TS protection.

-          Cts. has been willing to recognize that publication on the Internet does not automatically terminate the existence of a trade secret and considered the amount of time the information was posted and thus available for inspection. To the courts, where the posting is “sufficiently obscure or transient or otherwise limited so that it does not become generally known to the relevant people, i.e., potential competitors or other persons to whom the information would have some economic value,” the trade secret status is preserved.

4-      TS may be disclosed inadvertently (for ex. by being left on train or elsewhere in public view).

-          A truly accidental disclosure should not defeat TS protection if reas. precautions have been taken. On the other hand, if the inadvertent disclosure is widespread, it would seen unfair (as well as impracticable to require the public as a whole to “give back” the secret. §1(2)(ii)(C) of the UTSA provides that it is misappropriation for someone to disclose a TS that they have reason to know has been acquired “accident or mistake.” There is constructive notice of the secrecy of the information.

5-      Government agencies sometimes require the disclosure of TSs by private parties in order to serve some other social purpose. See Corn Products Refining Co. v. Eddy (requiring a food manufacturer to label its products w/ an accurate list of ingredients). Health & environmental concerns are a very common reason for the government to require disclosure of product contents.

TS misappropriation see §1 UTSA

1-      Improper acquisition

2-      Improper use

3-      Improper disclosure


E. I. Du Pont de Nemours & Co. v. Christopher


Defendant photographers were hired by an unknown third party to take aerial photographs of new construction at Plaintiff Company’s plant. Plaintiff subsequently filed suit against defendants, and alleged defendants had wrongfully obtained photographs revealing plaintiff’s trade secrets, which they then sold to the undisclosed third party.  

Holding: The Christopher’s deliberately flew over the P’s plant to get pictures of a process which DuPont had attempted to keep secret. The Christophers delivered their picture their pictures to a 3rd party who was certainly aware of the means by which they been acquired & who may be planning the use of the information to manufacture methanol by the DuPont process. The 3rd party has right to use this process only if he obtains this knowledge through his own research efforts. All the information indicates that the 3rd party has gained this knowledge solely by taking from DuPont at a time when DuPont was making reas, efforts to preserve its secrecy.

  • “reverse engineering” – that is, buying a product & taking it apart to see how works – is not a misappropriation of a TS.

Smith v. Dravo Corp.


Plaintiff was a producer of freight containers. Defendant was interested in purchasing plaintiff’s business and was provided detailed information on the business to assist in making its decision. The sale was not completed, but defendant made use of certain information obtained during the sale discussions. In particular, defendant used plaintiff’s designs to design a competing but non-infringing product. Plaintiff brought suit.

Rule: secrets that have been properly obtained may still be misappropriated if they are improperly used or disclosed. Agreements to keep certain information confidential are generally enforceable, at least if the information meets the definition of TS. But confidential relationships may also arise w/o any express agreement.

Holding: Here, Ps disclosed their design for one purpose, to enable defense to appraise it w/ a view in mind of purchasing the business. D’s own evidence discloses that it did not begin to design its container until after it had access to P’s plans. D improperly used the information obtained from the Ps.

  • The restatement holds that a confidential relationship is established in the following circumstances:


(a)    The person made an express promise of confidentiality prior to the disclosure of the TS; or

(b)   The TS was disclosed to the person under circumstances in which the relationship btw the parties to the disclosure or the other facts surrounding the disclosure justify the conclusion that, at the time of disclosure,

(1)   The person knew or has reason to know that the disclosure was intended to be in confidence, and

(2)   The other party to the disclosure was reas. in inferring that the person consented to an obligation of confidentiality.

-          A had reason to know standard following the restatement.






















  • See §100 definitions & § 101 inventions patentable
  • Process=methods
  • Patents: 1) utility 2) design 3) plants
  • In patent there is not adaptation right. Then, an inventor cannot stop others to improve his patent, however, the 2nd patent may be dependent of the 1st one that cannot be used w/o the holder’s authorization.

a) Patent reqs.:

1-      Patentable SM – 101

2-      Novelty – §102

3-      Utility – 101 – the patent has to work (no social benefit) Standard: it is specific, substantial & practical

4-      Nonobviousness – 103: different to novelty. Novelty just express that it is new. Nonodviousnees that it more than a trivial step in regard w/ what it is known already.

5-      Enablement/best mode – 112: the patent is described by the applicant in such a way as to enable others to make & use the invention. Thus “one of ordinary skill in the art” would be able to make & use the invention.

a)      enablement: is an objective standard measured from the perspective of a person having ordinary skills in the trade or art.

b)    Best mode: is a subjective standard. The best mode to carry out the invention according to the inventor.


  • See §156 – establish a duty to disclose information material to patentability.

b) Rights conferred by a patent (a negative right)

  • It confers the right to exclude others from making. Using, selling, offering for sale, or importing the claimed invention for a specific term iof Ys (20 Ys. from the date the patent application was filed, a patent is in force 20 Ys minus the amount of tinme the patent spent in the application process).

c) § 101 Inventions Patentable

-         Products                                                                                 Processes

  • Machine – an equipment
  • Manufacture – ex. a table
  • Composition of matter

Diamond v. Chakrabarty


Respondent microbiologist filed patent claims for human-made, genetically engineered bacterium that was capable of breaking down multiple components of crude oil. The court affirmed the judgment that allowed respondent’s claims. The court rejected the argument of the patent office board of appeals that 35 U.S.C.S. § 101 was not intended to cover living things such as laboratory created micro-organisms. The court held that respondent’s micro-organism constituted a “manufacture” or a “composition of matter” within the meaning of 35 U.S.C.S. § 101 and thus qualified as patentable subject matter.

Holding: The court found that respondent had produced a new bacterium with markedly different characteristics from any found in nature and which had the potential for significant utility. The court held that the language of 35 U.S.C.S. § 101 embraced respondent’s invention.

  • Something from the nature purified or modified may be patentable.
  • Limitations to patentability: the law of nature, physical phenomena, & abstracts ideas. Other categories usually denied are computer software & business methods.


1-      Software – however, some computer software may be patentable according to the Cts. The fed. circuit already allowed a software as patentable, the case is pending before the Sup. Ct. The test used in State Street is whether there is a useful, concrete & tangible result.


2-      Business methods patents -  The same case that allowed the patentability of a software, allowed the patentability of a business method. State Street. “today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price constitutes a patent because it produces a useful concrete & tangible result.”

Bilski v.Kappos

Facts: Petitioner’s app. Seeks patent protection for a claimed invention that explain how Bs & Ss of commodities in the energy mkt can protect, or evade, vs. the risk of price changes.

  • Here, the Ct. adopted the machine/transformation test, not using the useful, concrete, tangible test of State Street.
  • Under the machine/transformation test an invention is a “process” only if:


(1)   It is tied to a particular machine or apparatus, or

(2)   It transforms a part. article into a different state or thing.

Holding: the patent application at issued here falls outside of §101 because it claims an abstract idea. However, after this case the Ct. recognized that a business method can be patentable.

  • The majority argues that §273 appears to leave open the possibility of some business method patents.
  • Under §273(b)(1), if a patent-holder claims infringement based on “a method in a patent,” the alleged infringer can assert a defense of prior use. For purpose of this defense alone, “method” is defined as “a method of doing or conducting business. §273(a)(3). By allowing this defense the statute itself acknowledges that there may be business method patents.
  • After this case the Ct. recognized that a business method can be patented.


- 35 U.S.C. § 102 Novelty: only truly new inventions deserve patents

* 102- prior art references that ‘anticipate” the invention. It refers to all the elements of the invention.

* 102(a) – 1) the invention was known or used by others in this country; or 2) patented or described in a printed publication in this or a foreign country before the patent’s app.

* 102(b) – 1 Y before date of the patent app. the invention was patented or described in a printed publication in this or a foreign country or in public use or in sale in this country.

*102(c) abandonment

*102(e) a problem of priority about a Int. Patent designating the U.S.

*102(f) about if the applicant actually invented the invention

*102(g) – previous reduction to practice, actual made of the invention, constructive (filling of app.) – “reas. diligence” of one who is 1st to conceive to determine priority.

- Statutory bars: means “a bar to patentability based on too long a delay seeking protection.”

* If an inventor fails to file a patent app. within a Y’s of an article publication, he/she is barred from receiving a patent. She/he has suffered a “loss of right.”

- Novelty: means “new compared to the prior art.”

Rosaire v. Nat’l Lead Co.

Facts: Appellant sues appellee for patent infringement based on 2 patents, & appellee answer that work carried by one Teplitz for the Gulf Oil Corporation invalidated both patents by reason of the relevant provisions of the patent laws which state that an invention is not patentable if it was known or used by others in this country before the patentee’s invention – §102(a).

  • §102(a) provides that an applicant is not entitled to a patent if her invention was “known or used by others” prior to the date of the applicant invention. The word “known” denotes a public character.
  • See 102(b) statutory bars
  • The relevant work here was performed in the filed under the ordinary conds. w/o any deliberate attempt at concealment or effort to exclude the public & w/o any instructions of secrecy to the employees performing the work. The program was not a suspended to test the worth of the method but to examine the data that was produced by use of the method involved. This is not a incomplete or abandoned experiment that cannot be considered an anticipation or a part of the previous art.
  • The mere fact that a “machine” or “manufacture,” sold or used, was an experiment does nor prevent its becoming an anticipation or a part of the prior art, provided it was perfected & thereafter became publicly known.

Holding: No infringement here. Both patents were invalidated for lack of novelty. Teplitz‘s work for the Gulf Oil Corporation invalidated both patents by reason of the relevant provisions of the patent laws which state that an invention is not patentable if it was known or used by others in this country before the patentee’s invention – §102(a).


In re Hall

Facts: application included, in an appendix, a copy of a doctoral thesis that was found to have been available as a printed publication more than one year prior to the application’s filing date. Based principally on the printed publication bar under 35 U.S.C.S. § 102(b), the application was rejected. The board of appeals sustained the rejection and appellant sought review. On appeal, the court affirmed and held that evidence in the record established a prima facie case for unpatentability of the claims under § 102(b) and that the evidence was unrebutted. The court also held that the evidence showed that the doctoral thesis at issue was available as a printed publication under the applicable statute and that a single catalogued copy constituted sufficient accessibility under the statute.

Rule: the proponent of the publication bar must show that prior that prior to the critical date the reference was sufficiently accessible at least to the public interested in the art, so that such a one by examining the publication could make the claim invention w/o further research or experimentation.

Holding; the evidence of records consisting of Dr. Will’s affidavits established a prima facie case for unpatentability of the claims under §102(b) publication bar.

  • In gral a publication becomes public when it becomes available to at least 1 member of “the gral public”
  • Ex. temporary display of scientific research information at conference constituted publication under §102(b).
  • A magazine or technical journal is effective as of its date of publication when someone 1st receives it, rather than the date a manuscript was sent to the publisher or the date the magazine or journal was mailed. Actual publication – receipt by subscribers is req.

Egbert v. Lippmann

Facts: evidence established that the original inventor made public use of the invention, presented samples of invention to others, and imposed no obligation or restriction of secrecy when samples were not presented for purposes of experiment, and when public use of the invention was complete, such evidence was competent to establish public use. The corset springs case.

* no duty of secrecy

* no need of experimentation

Holding: public use even if nobody can see the invention.

e) The experimental use exception




City of Elizabeth v. Am. Nicholson Pavement Co


The patent infringement suit was brought by appellee, a patent holder for a type of wooden pavement, against appellants, a city, an individual, and a corporation. Appellant city contracted with appellant corporation to construct wooden pavements but claimed that construction did not infringe on appellee’s patent. The court below ruled in favor of appellee and entered a decree against all appellants. On appeal, appellants claimed that appellee’s invention had no novelty. The Court disagreed and found that none of the similar patents appellants referenced combined all the elements of appellee’s invention.  The Court also found that appellee’s experimental use of his pavement prior to obtaining a patent did not constitute public use within the meaning of patent law. Accordingly, the Court affirmed the lower court’s finding of infringement.

  • The nature of street pavement is such that it cannot be experimented upon satisfactorily except on a highway, which is always viable.
  • If durability is one of the qualities to be attained, a long period, perhaps Ys, may be necessary to enable the inventor to discover whether his purpose was accomplished.
  • See §102, 103
  • Factors to be considered:


1-      The necessity for public testing

2-      The amount of ctol over the experiment retained by the inventor

3-      The nature of the invention

4-      The length of the test period

5-      Whether there was secrecy obligation

6-      Whether records of the experiment were kept

7-      Who conducted the experiment

8-      Whether payment was made

9-      The degree of commercial exploitation during testing

10-  Whether the invention reasonably req. evaluation under actual conditions of use

11-  Whether testing was systematically performed

12-  Whether the inventor continually monitored the invention during testing

13-  The nature of contacts made w/ potential customers


* even 1 factor can be decisive

Rule: an invention used under the surveillance of the inventor, & for the purpose intended, & make such alterations demonstrates to be necessary, it will still be a mere experimental use, & not a public use.

Holding: The Court also found that appellee’s experimental use of his pavement prior to obtaining a patent did not constitute public use within the meaning of patent law.


e) Nonobviousness – 103

Graham v. John Deere Co.


The Ct. reviews the validity of patents in light of the Patent Act of 1952, 35 U.S.C.S. § 103, which provided that in determining the patentability of a device it was necessary to consider not only its novelty and utility, but also its obviousness to one of ordinary skill in the art.

Holding: the Ct. found that the differences btw the Graham’s patents would be obvious, considering non-infringement of these patents for the D.

  • See §103 obviousness for a person having ordinary skills in the trade or art (PHOSITA)

KSR Int’l Co. v. Teleflex Inc.


To satisfy customer needs, the competitor modified its design for an adjustable pedal system for vehicles with cable-actuated throttles by adding a modular sensor to make the system compatible with vehicles using computer-controlled throttles. The licensees contended that the competitor infringed the patent claim of a position-adjustable pedal assembly with an electronic pedal position sensor attached a fixed pivot point. The U.S. Supreme Court unanimously held that the patent claim was invalid as obvious since mounting an available sensor on a fixed pivot point of the competitor’s pedal was a design step well within the grasp of a person of ordinary skill in the relevant art, and the benefit of doing so was obvious. The marketplace created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for doing so. Further, the problem to be solved by the patent claim did not limit its application as prior art, the competitor’s showing that it was obvious to try a combination of elements sufficiently supported the finding of obviousness, and the claim was the result of ordinary skill and common sense rather than innovation.

  • §103 – an objective analysis because it is about what is known for a PHOSITA.

Holding: The U.S. Supreme Court unanimously held that the patent claim was invalid as obvious since mounting an available sensor on a fixed pivot point of the competitor’s pedal was a design step well within the grasp of a person of ordinary skill in the relevant art, and the benefit of doing so was obvious.

  • Secondary Factors – Objective evidence of non-obviousness:


1-      Commercial success

2-      Long-felt need & failure by others

3-      Awards & praise

4-      Skepticism, “teaching away,” & Unexpected Results

5-      Licensing Activity

6-      Copying

7-      Advances in collateral technology

8-      Near simultaneous invention


* these “secondary considerations” may work as “plus factors” in the obviousness analysis.

* “primary factors” – (1) the scope & content of the prior art, (2) the difference btw the claim invention & the prior art, & (3) the level of ordinary skill in the art. 

f) Infringement

1) literal infringement – every element of a claim is literally infringed.

Consists v Comprised

Consists is closed, while comprised is open.

Section 271

A) Literal infringement (102 Prior Art) and Doctrine of Equivalence (103)

B) Inducement

C) Contributory infringement

F) Outside – Foreign Activities

G) Product by process

Larami Corp. v. Amron


Plaintiff, a manufacturer of toy water guns, brought a declaratory judgment action against defendant, another manufacturer of toy water guns, seeking a judgment that plaintiff had not infringed defendant’s patent. Plaintiff then moved for partial summary judgment on its claim and on defendant’s counterclaim of patent infringement. The court found for plaintiff. Plaintiff’s device had not literally infringed defendant’s patent because an element of defendant’s claim was missing from plaintiff’s product. There was no genuine issue of material fact as to whether plaintiff’s devices infringed defendant’s patent under the doctrine of equivalents because of several differences between plaintiff’s devices and defendant’s patent.

  • A patent O’s right to exclude others from making, using or selling the patented invention is defined & limited by the language in that patent’s claim.
  • Claim interpretation is a question of law.
  • The words in a claim should be given their “ordinary or accustomed” meaning.

Holding: no patent infringement.

2) The doctrine of equivalents

1- if 2 devices do the same work (the same function) in substantially the same way, & accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.

2- “triple identity test” or “equivalence test”: (it applies to the individual claims, not to the invention as a whole)

a)      The same function

b)      The same way

c)      The same result

3- Standard of analysis: “all elements rule”

  • An analysis of the role played by each element in the context of the specific claim  well inform the inquiry as to whether a subst. element matches the function, way & result of the claimed element, or where the subst. element plays a role substantially different from the claimed element.

3) Contributory infringement

C.R. Bard, Inc. v. Advance Cardiovascular

Facts: This is a case of claimed infringement of a method of patent for a medical treatment. D (Advance) was mkting a caterer for use in coronary angioplasty. P (Bard) sued D for alleged infringement of patent which relates a method for using a caterer in coronary angioplasty. Drs. are the direct infringers.

Holding: no contributory infringement can be used in different ways, there is other non-infringement uses here.

  • §271 reqs. a showing that the alleged contributory infringer knew of the patented invention & his/her infringement of the patented invention. See §271(c)
  • §271(b) is about to induces someone to infringement – another type of secondary liability. Whether the “D is willfully blind to the infringement” – deliberate indifference is enough for inducement liability. This is the current standard. Thus, “deliberate indifference” to patent rights is sufficient to satisfy the knowledge req. of inducement.
  • Direct infringement – §271(a) – no reqs. evidence of knowledge & intent.
  • While proof of intent is necessary, direct evidence is not req., rather circumstantial evidence may suffice. The requisite intent to induce infringement may be inferred from all the circumstances.
  • P has a BOP that D knew of patent & knew that acts being induce would lead to actual infringement of it.
  • §287(c)(1) exempts Drs. who perform medical process from liability from infringement. However, leaves device manufactures liable from contributory infringement & to the Drs. for §271(c) – that is contributory infringement. The Drs. exception applies to health care entities too.


4) Joint Infringement – see BMC case page 339

* 2 possible approaches:

1- Functional approach (what happened here? – maybe an infringement in BMC case.

2- Formulistic – It is req. an infringer of all the necessary elements of the claim of a patent for one infringer, if not there is not infringement like in BMC case.

5- Infringement involving foreign activities

  • See §271(f)(1), (2), (g)

g) Remedies

1- Injunctions:

eBay Inc. v. MercExchange, L.L.C.

Facts: MercExchange sued eBay for patent infringement & req. injunction. According to well-established principles of equity, a plaintiff seeking a permanent injunction had to satisfy a four-factor test before a court could have granted such relief. The Supreme Court found that these familiar principles applied with equal force to disputes arising under the Patent Act. A major departure from the long tradition of equity practice should not have been lightly implied. Nothing in the Patent Act indicated that Congress intended such a departure. To the contrary, the Patent Act expressly provided that injunctions could have issued in accordance with the principles of equity, under 35 U.S.C.S. § 283.

  • Injunction 4 factor test:


1-      An irreparable injury

2-      Remedied available at law, such as monetary damages are inadequate to compensate for that injury

3-      That, considering the balancing hardship btw the P & D. a remedy in equity is warranted

4-      The public interest would not be disserved by a permanent injunction


  • Injunction is an equitable discretion by the DC.
  • Injunctive relief “may” issue only in accordance w/ the pples of equity – see §283

Holding: the decision whether to deny or grant injunctive relief rests within the equitable discretion of the DCs, & that such discretion must be exercised consistent with the traditional pples of equity.

2- Damages – Lost Profits

  • To obtain as damages the profits on sales he would have made absent the infringement, the sakes made by the infringer, a patent O must prove:


(1)   Demand for the patented product

(2)   Absent of acceptable non-infringement substitutes

(3)   His manufacturing & mkting capability to exploit the demand

(4)   The amount of profit he would have made


  • When lost profits cannot be proved, the PO is entitled to a reas. royalty.
  • Reas. royalty – the amount which a person, desiring to manufacture & sell a patented article, as a business proposition, would be willing to pay as royalty & yet to be able to make & sell the patented article, in the mkt at a reas. profit.
  • Polaroid v. Kodak steers n interesting middle course. While conceding that there are not substitutes in the mkt for the patented prods., the Ct. goes on to consider the effect of economically significant prods. on the profit the patentee would have made absent infringement even though those prods. are not close substitutes in a strict sense. In a word, there may be no exact substitutes, but there are economic substitutes.

3- Willful Infringement – see §284

In re Seagate Tech., LLC

Facts: The court confronted the willfulness scheme and its functional relationship to the attorney-client privilege and work product protection.

Rule: to establish willful infringement, a patentee must show by clear & convincing evidence that the infringer acted despite an objectively high likelihood that its action constituted infringement of valid patent (reckless).

Rule: the significantly different functions of trial counsel & opinion counsel, advice against  to extending waiver to trial counsel advise when the possible infringer has decided to waive the attorney-client privilege in regard w/ the counsel attorney.

Holding: asserting the advice of counsel defense & disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege for communications w/ the trial counsel. This is not an absolute rule. Instead, TCs remain free to exercise their discretion in unique circumstances to extend waiver to trial counsel. The DC will reconsider its discovery orders in light of this opinion.

  • Patent infringement is a SL.
  • A finding of willfulness does not req. an award of enhanced damages; it merely permits it.
  • Willful infringement = at least recklessness, not merely negligent. This is an objective inquiry. The state of mind of the accused infringer is not relevant to this objective inquiry.
  • No affirmative opinion to obtain opinion of counsel to prove un-willfulness
  • Reckless: a person who acts in the face of an unjustifiable high risk of harm that is either known or so obvious that it should be know.
  • In ordinary circumstances willfulness will depend on an infringer’s pre-litigation conduct. No reason for trial counsel waiver.
  • If patentee attempts to secure injunctive relief but fails, it it likely the infringement did not rise to the level of recklessness req. for willful infringement.
  • Opinion letters are very helpful in avoiding willful infringement liability but they are not dispositive.