Law School: Liberty University School of Law
Course ID: LAW 661
Term: Fall 2019
Instructor: Prof. Connors
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.
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:
- 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.
To be an original expression, it must only be minimally creative.
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.
- 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 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.
- Derivative works
- Public performance
- Public domain?
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.
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.
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
- 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.
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.
[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.
Trademarks are source indicators.
Trade dress refers to the visual appearance of a product or its packaging. Usually it is colors and shapes.
- Color never is.
A trademarks must be:
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.
- Related names, geography, etc. are always descriptive.
- Examples include Reese's, Nike, Arizona Iced Tea, Shredded Wheat, and Zatarain's Fish-Fri.
Fanciful, arbitrary, and suggestive are inherently distinctive.
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.
The basic test for infringement is "likelihood of confusion."
An infringing use of a trademark must be a "use in commerce."
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
A dilution action only applies to purely commercial speech.
There are six factors used to determine dilution by blurring:
- Degree of similarity
- Degree of distinctiveness
- Exclusive use/Policing
- Actual association
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
- 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
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.
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:
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.
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.
- Compositions of matter
Discoveries of natural phenomena, products or laws of nature, and abstract ideas are not patentable.
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.
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.
- Unlike contractual protections, trade secrets are protected against misappropriation by anyone, even if the other party has no contract with you.
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.
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 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.