Law School: Liberty University School of Law
Course ID: LAW 661
Term: Fall 2019
Instructor: Prof. Connors
My Grade Earned: A−
- Intellectual Property Law: Legal Aspects of Innovation and Competition by Kurt M. Saunders
- 1st edition (2016)
- Paperback (ISBN: 9781634596985)
- 1st edition (2016)
- Intellectual Property: Law & the Information Society by James Boyle & Jennifer Jenkins
- 4th edition (2018)
- Paperback (ISBN: 9781535598163)
- 4th edition (2018)
There are three philosophies justifying intellectual property:
Utilitarian theory says that intellectual property should be protected as is needed to protect consumers and encourage further innovation.
Trademarks protect consumers because without them, consumers could become confused and accidentally buy lower quality products without knowing.
Trademarks also encourage further innovation by rewarding companies who are the first to use a design with the exclusive right thereto. Without this protection, companies would have little reason to innovate when others could copy their work without penalty or having to work themselves.
This theory is advocated by the Constitution in Article I, Section 8, Clause 8—the intellectual property clause.
Locke said that property was created by the creation of value from a common resource by one's labor.
The personhood theory says something like that something created from your mind is a part of your personhood, which should be protected.
This theory mainly just appears in Europe.
There are five types of intellectual property:
Copyrights protect creative expressions from unauthorized reproduction.
- Only the original expression though. All the ideas and facts of a work immediately go into the public domain. 17 U.S.C. § 102.
The power to regulate copyrights comes from Article I, Section 8, Clause 8.
For one to have a copyright, the work must be:
- Work of authorship
- Fixed in a tangible medium of expression
- Capable of reproduction and human readable
Copyrights must be registered to file a lawsuit, and there are perks to having registered the copyright beforehand.
Copyrights last for the author's life plus 70 years.
Work of Authorship
Works of authorship are defined in 17 U.S.C. § 102:
- literary works;
- musical works, including any accompanying words;
- dramatic works, including any accompanying music;
- pantomimes and choreographic works;
- pictorial, graphic, and sculptural works;
- motion pictures and other audiovisual works;
- sound recordings; and
- architectural works.
A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission.
It does not have to be fixed for very long. Merely loading it into RAM is sufficient.
“Copies” are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term ‘’copies” includes the material object, other than a phonorecord, in which the work is first fixed.
“Phonorecords” are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “phonorecords” includes the material object in which the sounds are first fixed.
Originality is a requirement to copyright your work.
To be an original expression, it must only be minimally creative.
Scènes à Faire
The scènes à faire doctrine says you cannot protect generic plot lines or themes.
Having someone create something like your work independently does not invalidate the original's originality.
A “compilation” is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term “compilation” includes collective works.
While facts are not protectable, compilations are. However, it must have at least some creativity. This is a very low bar however.
Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340
To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, “no matter how crude, humble or obvious” it might be.
Basically, it has to be anything more than an alphabetical list of people. Categorize it or something.
Copyright only protects expressions, not ideas or functions.
- 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.
If an expression is indistinguishable from the underlying facts, the merger doctrine prohibits copyright protection. E.g., maps.
To be entitled to copyright protection, characters must pass a three-part test from DC Comics v. Towle:
- Character must have "physical as well as conceptual qualities."
- The character must be "sufficiently delineated" to be recognizable as the same character whenever it appears.
- It must display consistent, identifiable character traits and attributes, although the character need not have a consistent appearance.
- The character must be "especially distinctive" and "contain some unique elements of expression."
- It cannot be a stock character such as a magician in standard magician garb.
For there to be copyright infringement, there must be:
- a valid copyright
- a "copying of constituent elements"
- Violate an exclusive right in 17 U.S.C. § 106
- It doesn't matter if the results are the exact same if they were developed independently.
- The standard is "substantial similarity."
- Access is usually used as evidence of copying.
The Abstraction-Filtration-Comparison test is a test used to determine if the non-literal parts of computer programs are substantially similar. It comprises three steps:
- Isolate the abstract elements of the works and identify which are ideas and which are expressions.
- Filter out the non-protectable elements from the products.
- Compare the remaining elements.
In determining substantial similarity, the intended audience must be considered. If something targets an expert group, it should be tested if it is substantially similar to that group, not to lay people.
Holding a copyright gives one the exclusive right to:
- Derivative works
- Public performance
- Public domain?
For damages, the copyright owner can either get profits or (if registered) statutory damages. 17 U.S.C. § 504(a).
For profits, you can get actual damages plus all profits attributable to the infringement, and the burden of showing actual damages shifts to the infringer. (You get all profit unless the infringer can show just actual damages.) 17 U.S.C. § 504(b).
For statutory damages, you can get $750–$30,000 per work infringed upon. (not per infringement) If willful, it can go up to $150,000. 17 U.S.C. § 504(c). You can also get attorney's fees and possibly punitive damages.
- For statutory damages, you have to have registered an unpublished work or register a published work before or within three months of publishing it. 17 U.S.C. § 412.
- Statutory damages are subject to the innocent infringement defense. If the infringer had no reason to believe that his acts constituted copyright infringement, the damages may be reduced, to a minimum of $200. This defense cannot be raised if there was a notice of copyright with the work.
Copyright infringement is de minimis if the average audience would not recognize the appropriation.
A copyrighted work may be reproduced without constituting copyright infringement if it is for a protected purpose and if it is fair use. In determining whether a use is fair use, four factors are considered.
Fair use is largely judicially-created, as it was created and defined before being codified in the Copyright Act and statutory law is not very specific about how to define it.
A protected purpose is something
such as criticism, comment, news reporting, teaching, scholarship, or research.
Parody is a subset of criticism or commentary, and thus parody works must direct commentary or criticism at the work. Just being a parody or funny is not a protected purpose. The leading case on the matter is Dr. Seuss Enterprises v. Penguin Books.
- Purpose and character of the use
- Commercial or non-profit?
- Nature of the copyrighted work
- Has it been transformed into something beyond the work itself?
- Fact-based works are more likely to be fair use than creative works
- Portion of the copyrighted work used
- Effect of the use on the market
- Hardest to determine
- Most important
Secondary liability is imposed on one who did not commit the legal wrong directly, but is found responsible for encouraging, facilitating, or profiting from it.
Secondary liability is entirely based on common law.
For there to be secondary liability, there always has to be underlying direct liability for copyright infringement.
Contributory infringement is imposed on one who has control over an unauthorized use.
Vicarious liability is imposed on one who has the right and ability to supervise the infringing activity and has a direct financial interest in the activity.
A third, newer form of secondary liability is inducement liability.
[O]ne who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties. MGM Studios Inc. v. Grokster, Ltd.
Copyrights can be licensed expressly or impliedly and can be exclusive or non-exclusive.
For more information on trademarks, see that section from my Trademark class outline.
Trademarks are source indicators.
Trade dress refers to the visual appearance of a product or its packaging. Usually it is colors and shapes.
Trade dress is protectable like trademarks.
Trade dress must still be a source indicator. Functional elements cannot be protected as trade dress. This includes visual functionality, where a design is used because it is visually appealing.
Trade dress usually is not inherently distinctive, but it can be.
- Color never is.
A trademarks must be:
- A mark used as a source indicator in connection with a good or service
- Used in commerce
- Having priority
- Priority is determined by the first intent to use or by when it was filed on the supplemental register (which you can register for if descriptive)
Trademarks are afforded some common law protection. However, registration is prima facia evidence of a valid trademark and provides notice to others.
There are five classes of terms in regards to trademark protection. In order of ascending protection, they are:
- This means that it is "merely descriptive" and has no inherent distinctive character.
- Descriptive marks can acquire a distinctiveness by acquiring a secondary meaning associating the mark with the product.
- Five years of substantially exclusive and continuous use in commerce is evidence that can establish acquired distinctiveness and can be accepted as prima facie evidence of such.
- Or five years on the supplemental register
- Related names, geography, etc. are always descriptive.
- Examples include Reese's, Nike, Arizona Iced Tea, Shredded Wheat, and Zatarain's Fish-Fri.
- This means that it "requires imagination, thought, and perception to reach a conclusion as to the nature of goods" and is entitled to registration without proof of secondary meaning.
- Examples include Coca-Cola, Logitech, and Dupli-Color.
Fanciful, arbitrary, and suggestive are inherently distinctive.
Marks can shift between classes as language changes. If they become the generic name of an article or substance, the trademark can be cancelled.
A trademark becomes incontestable after five years of continuous use.
Incontestability precludes cancellation on the grounds of descriptiveness.
Use in Commerce
According to the Lanham Act, a mark on goods is used in commerce when "it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce".
A use in commerce does not have to be commercial.
Causes of Action
Trademark infringement is the violation of another's trademark rights by using the mark without authorization.
The basic test for infringement is "likelihood of confusion."
An infringing use of a trademark must be a "use in commerce."
Likelihood of Confusion
Each circuit has its own test to determine the likelihood of confusion.
There are some factors that are common to most of these tests however:
- Similarity of the marks
- Proximity of the goods or services
- Whether the products are sufficiently related in the mind of the consumer
- Strength of the plaintiff's mark
- Actual confusion
- Defendant's intent
Contributory infringement occurs when one induces another to infringe yet another's trademark or continues to supply his product to one that he knows or should have known is infringing upon another's trademark.
Trademark dilution is making a famous mark weaker.
Trademark dilution can occur "by blurring" or "by tarnishment."
A dilution action only applies to purely commercial speech.
- Famous mark
- Similarity to mark
Dilution by Blurring
Trademark dilution by blurring is when a "famous mark" loses some of its distinctiveness because of the use of a similar mark, regardless of what for.
There are six factors used to determine dilution by blurring:
- Degree of similarity
- Degree of distinctiveness
- Exclusive use/Policing
- Actual association
Dilution by Tarnishment
Trademark dilution by tarnishment is when a "famous mark" has its reputation hurt because of a similarly named product of poor quality or unwholesome context.
There is no hard line for what a famous mark is, but it has to be really famous. Usually around 70% recognition among the general consuming public is required.
To determine whether a mark is famous, four factors are used:
- The extent of duration and geographic reach
- The volume and geographic extent of sales
- The extent of actual recognition
- If it was registered before the creation of the principal register
Under the Lanham Act, false advertising requires:
- A false or misleading statement of fact about a product;
- Such statement either deceived, or had the capacity to deceive a substantial segment of potential consumers;
- The deception is material, in that it is likely to influence the consumer’s purchasing decision;
- The product is in interstate commerce; and
- The plaintiff has been or is likely to be injured as a result of the statement at issue.
Cybersquatting is when one registers the domain name of another's distinctive mark with the bad faith intention to profit from it.
It requires that the person:
- has a bad faith intention to profit from the mark and
- registers or uses a domain name that is identical, confusingly similar, or dilutive of a distinctive mark.
Factors for bad faith intention to profit
Whether or not a person has a bad faith intention to profit is determined by balancing nine factors:
- His IP rights in the domain name
- The extent to which the domain name consists of his legal name or other common name
- His prior use of the domain name in connection with the bona fide offering of goods or services
- His bona fide noncommercial or fair use of the mark in a site at the domain name
- His intent to diver consumer from from the mark owner's site, either for commercial gain or to tarnish the mark by creating a likelihood of confusion
- His offer to transfer or sell the domain name for financial gain without using it in the bona fide offering of any goods or services, or a history or doing this
- His provision of false contact information which registering the domain name, failure to update it, or history of doing this
- His acquisition of multiple domain names identical or confusingly similar to marks of others
- The extent to which the mark is distinctive and famous
Under 15 U.S.C. § 1125 (of the Landham Act), false advertising requires:
- false designation of origin;
- false/misleading description; or
- false/misleading representation of fact;
- in commercial advertising/promotion
- misrepresents nature/character/quality/geography of goods and sources of himself or another
- person is harmed
False endorsement is also false advertising.
Classic Fair Use
Classic fair use requires that the mark be used:
- other than as a mark,
- in a descriptive sense, and
- in good faith.
E.g., referring to a product made by someone else which you sell.
Nominative Fair Use
When a defendant uses a trademark to describe the plaintiff's product, even if his end goal is to describe his own product, he is entitled to a nominative fair use defense provided he meets the following three requirements:
- the product or service in question must be one not readily identifiable without use of the trademark;
- only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
- the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
This includes comparative advertising, but that is not the only scenario.
- First Amendment
- Comparative advertising
- Parody (commentary/criticism) – not just a joke
- Failure to Police
- Fraud on the office
There are three types of patents:
To be patentable, an invention must be:
Patents must be novel; they cannot do the exact same thing as an existing patent. 35 U.S.C. § 102.
Novelty rejections are very rare unless your just wrote your claim too broadly and included already-existing patents.
To be novel, a patent cannot the exact same as prior art.
Prior art is the technology already in the field at the time the patent was filed.
It can have been publicly disclosed anywhere in the world. It does not have to be in English. It just have to be that people in the field should have been aware of it.
It also has to have been filed before you publicly disclosed it or within one year of you publicly disclosing it.
- In almost every other country, there is no one-year grace period.
In a weird scenario, if you are not ready to patent something but need to and do not want to file a provisional patent application, you can publicly disclose a patent to ensure that no one else can patent it while giving yourself one year to patent it yourself in the US.
Patents must not be obvious. 35 U.S.C. § 103.
Obviousness is determined by whether the claimed invention would have been obvious "to a person having ordinary skill in the art to which the claimed invention pertains." 35 U.S.C. § 103.
It also assumes that he knew of the problem solved.
Obviousness has a four-step test to determine it:
- The scope and content of the prior art are to be determined.
- Differences between the prior art and the claims at issue are to be ascertained.
- And the level of ordinary skill in the pertinent art is to be resolved.
- Such secondary consideration as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.
- I.e., if previous attempts failed, unsolved needs took forever, etc. then the solution apparently was not obvious.
If the solution to a problem would be obvious if the problem were to be considered, the solution is usually going to be considered obvious. The non-obviousness of the problem itself does not provide protection.
Obviousness is the most-often contested element.
Patentable Subject Matter
Congress specifically listed four types of things as patentable:
- Compositions of matter
Discoveries of natural phenomena, products or laws of nature, and abstract ideas are not patentable.
Processes, including business methods are patentable, but they cannot just be abstract ideas.
If a patent claim is over an excluded subject matter, it must have an "inventive concept" that transforms the idea into a patent-eligible invention.
You cannot patent food recipes, even though it would seem to fit the requirements. They would have to be trade secrets instead.
Patents must be described specifically enough so that "any person skilled in the art to which it pertains" could recreate and use it. 35 U.S.C. § 112.
In the United States, patents must be filed within one year of publicly disclosing the invention or making sale efforts therefor.
- Most foreign countries give no grace period. Patents must be filed before it is ever publicly disclosed.
A trade secret is any form of information the owner has taken reasonable measures to keep secret and from which he derives independent economic value by virtue of its secrecy. 18 U.S.C. § 1839(3).
They last for as long as they are kept secret, so potentially infinitely.
The most common types of trade secrets are client lists and recipes.
They are protected by federal law in 18 U.S.C. § 1836, but the federal law does not preempt state trade secret protections, which also exist.
- Unlike contractual protections, trade secrets are protected against misappropriation by anyone, even if the other party has no contract with you.
Trade secrets are privileged information and do not have to be disclosed in court. Cases about them can be sealed.
Reasonable measures include:
- Keeping such knowledge to only those who need to know such things for the business.
- Access control—both physical and electronic
- Splitting the project into smaller parts
- Confidential markings
What is reasonable is ultimately a jury question.
Trade Secret Misappropriation
You can sue for trade secret misappropriation under 18 U.S.C. § 1836 if you have a valid trade secret which someone else misappropriated.
Misappropriation means acquiring something by improper means.
Improper means of acquiring trade secrets include theft, bribery, lying, breaching or inducing someone to breach a duty, and espionage, but it does not include reverse engineering, independent derivation, or other lawful means of acquisition. 18 U.S.C. § 1839(6).
Someone else breaching a contract does not make your use of the information misappropriation if you did not induce him to break the contract.
Improper means do not have to be illegal, but anything illegal is improper means.
You can get attorney's fees for trade secret misappropriation at the judge's discretion.
- General knowledge in the industry
- Reverse engineering
Trade secrets are property—intellectual property.
Right of Publicity
Right of publicity allows one to control commercial use of his name.
Violating another's right of publicity requires:
- Use of image/name/likeness
- Name means any identifier
- The name/likeness must be used in advertising or trade. Someone's likeness being reproduced does not make it used for that purpose.
- In advertising (or trade in Virginia)
- Without written consent
- I.e., damages from false endorsement
One's right of publicity lasts for the life of the person plus 20 years in Virginia.
Right of publicity is all state law.
A knowing violation gives punitive damages.
Any person who, on or in connection with any goods or services … uses in commerce … [any] false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the … sponsorship, or approval of his or her goods, services, or commercial activities by another person … shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
Although separate from right of publicity, it is often used as a substitute for such.