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Copyright
Rutgers University, Newark School of Law
Kettle, John R.

3 objectives under IP law:5
Constitutional Origins of IP Law.. 5
I. State/ Common Law Intellectual Property. 5
1) Rights in Undeveloped Ideas. 5
Elements of Misappropriation. 5
Idea Submission (the 4 general scenarios. 5
2) Protection of Ideas. 5
Theories of Recovery (levels of proof vary depending of theory of recovery. 5
Contract Theories. 5
Other Theories. 6
Courts vary by j6
An Idea must be NOVEL and CONCRETE especially w/o an express K.. 6
RULE: K claim generally requires less novelty and originality than CL Misappropriation claim   6
3) LIMITS ON PROTECTION.. 7
II. UNFAIR COMPETITION.. 8
1) Passing off & Secondary Meaning. 8
THE LEVEL OF PROOF CONTINUUM… 8
2) Zone of Expansion. 9
4) Misappropriation OF FACTS. 10
Hot News Exception. 10
5) Personal Names and the Rights afforded to them.. 10
6) TradeDress, Design, Functionality. 11
Economic Interests- Unfair Comp in the Competitive Plan. 11
Federal IP law Preempts State IP law.. 12
PREEMPTION.. 12
STATE V. FED LAWS. 12
Trade Secrets. 12
Elements of a T/S Claim?. 12
3rd party beneficiary of TS. 12
Source of Law:12
RESTATEMENT §757, comment B.. 13
Reverse Engineering. 13
How do you protect a [trade] secret?. 13
How do confidential relationship arise in TS?. 13
RULE:   public has free access to trade secrets.13
Why Patent v. TS?. 13
Theory of Protection. 13
IV. Right of Publicity. 16
ROP claim test:17
Federal Law of Intellectual Property. 20
Supplemental Jurisdiction. 20
Federal Jurisdiction. 20
CAFC (Court of Appeals for Federal Circuit)20
Trademark Law.. 20
First TM Statute. 20
Lanham Act (July 5, 1946)20
SMs v. TMs. 20
3 levels of TM Protection (all exist congruently):20
Legal steps to follow after choosing a mark. 21
A. Requirements for Protection. 21
Use & Use in Commerce. 21
Intent to Use. 21
DATE OF FILING.. 21
N/O/A- notice of allowance. 22
Applications that say “cancelled, abandoned, not in use”. 23
Process for getting a TM:23
Lanham Act §1052/§2 (REASONS FOR REJECTION.. 23
Selecting a TM/ (how strong it is too):23
Level of Distinctiveness. 23
Rejections: 2(e)24
Concurrent Registration. 24
Ways to renew a TM… 24
Supplemental Register. 24
Process for Appealing a TM denial:24
Defenses to infringement25
Licensing A Mark. 25
(a) Trademarks that distinguish from Goods of Another. 25
(b) Deceptive Matter:25
Confusing Similarity to Prior Marks. 26
Concurrent Registration. 26
Merely Descriptive. 26
Primarily Geographically Descriptive. 26
TYPES OF MARKS. 26
Service Mark. 26
Certification Mark-. 26
Collective Marks. 27
Licensee Estoppel27
Abandonment27
Content of Marks. 27
Administrative Procedures – “going to the show” §283. 27
. Rights & Remedies. 28
Geographic Boundaries. 28
Dilution. 28
Limitations on Rights of TM owner. 29
Fair Use. 29
4 categories of Fair Use under TM… 29
DOMAIN NAMES. 29
ICANN.. 29
Cybersquatting. 29
Metatag. 30
ICAN.. 30
REMIEDIES – primarily an injunction in TM law.30
For Пs loss. 30
REMEDIES. 31
SECONDARY LIABILITY.. 31
TM Infringement31
Trade Dress – 43(a) Action. 32
43(a) Elements for unregistered marks. 32
Defenses for TM Infringement33
Copyright33
Requirements for Protection. 33
HISTORY.. 33
Pre 1976. 33
POST 1976. 33
Berne Convention. 34
FORMALITIES REQUIRED FOR PROTECTION.. 34
Notice. 34
1909 Act (all works created before 1/1/78. 34
REQUIREMENTS TO ESTABLISH NOTICE.. 34
1976 Act35
The Dates in a NUTshell:35
NOTICE ISSUES. 35
RENEWAL ISSUES. 35
Omission of copyright notice. 35
Publication. 36
Registration & Deposit36
Statutory Subject Matter:36
17 USC §102(a)36
(b)36
What is Copyrightable?. 36
What is not ©?. 36
Forms:37
How Long for Protection of Copyright?. 37
RECAPTURE versus TERMINATION OF GRANTS/LICENSES. 38
Exclusive Rights. 38
General Problem.. 38
17 USC §203 TERMINATION.. 38
SUMMARY under §203:38
SUMMARY under §304: RECAPTURE.. 39
Summary of Terms and Concerns for Particular Types of Work. 39
RECAPTURE.. 40
PUBLIC ACCESS PROVISIONS. 40
3. Originality. 41
B. Ownership. 42
17 USC §201. 42
WMFH (Work Made For Hire)42
Works for Hire. 43
Transfer & Term.. 44
Rights & Remedies. 44
§ 109 F.S.D. (First Sale Doctrine)45
DERIVATIVE WORK.. 45
b. Secondary Liability. 46
C. §107 Fair Use. 46
Fair Use:47
Public Access Provisions. 47
Compulsory Licensing. 47
Phonorecords. 47
§107 (see above) Fair Use. 47
TYPES of Licenses & Rights:48
§110 Single Receiver Exception. 48
17 USC §115. 48
Exclusive Rights & New Technologies- Time Shifting. 49
ASCAP, BMI, SESAC.. 50
To Prove Infringement50
Computer programs/Software programs. 50
The collecting Societies (reduce transaction costs)52
D. Establishing Infringement see 17 USC §501. 53
Literature- scenes a faire (general fair scenes)-53
2. Music. 53
3. Visual Arts. 53
Duration of protection. 54
Preemption of State Law:55
DEFENSES:55
Are blueprints copyrightable? YES. 56
What about state statutes?. 56
Can a state be an author?. 56
US government?. 56
Things lawyers can copyright56
Fair Use: Sega v. Accolade. 56
Patents. 57
Types of patents. 57
In order to qualify for patents, need all three:57
If get patent rights, you control who can:58
Process for getting a a Patent:58
3 objectives of Patent Law:58
How long to monopolize patent?. 58
Novelty. 59
Prior Art:59
12 Month Use Bars Application. 59
Publication. 59
Test for non-obviousness. 60
2 types of patent infringement61
Sometimes patent trials split in parts:61
Non-literal infringement61
Copyright and Trademark Outline
3 objectives under IP law: àenrich society with products, entertainment, and literature
protect creator (author/inventor) à if we protect they will continue to create b/c they make money
Protect publisher/investorà person who is going to put the money up, b/c the creator most likely won’t have it.
Enrich/protect the consumer à public
The Overall Goalà Investor will invest, creator will continue to create and the consumer will be enriched with whatever is produced.

Constitutional Origins of IP Law
Article I, § 8, clause 3, “Trademark Law”à “Congress shall have the power to regulate Commerce with Foreign Nations, and among the several states”
Article I, § 8, clause 8, “Copyright & Patent Law” à “Congress shall have the power to Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their Re

ells Chevy their heavy parts are all on the wrong side, and wants to submit his idea. Letters back and forth, and tells them what his solution would be, but he never sends them the requested drawings. Chevy’s new model incorporates some of p ideas
Holding: Chevy is not liable for incorporating into its product generalized suggestions made regarding its product. Ideas must be novel and specific. Here, Chevy requested for more concrete form, such as drawings, but p did not provide idea in concrete form. A common-sense idea relating to a product in a generalized way is not novel. p’s suggestion was the logical solution of re-distributing weight is not novel. p did NOT obtain proprietary interest in idea sufficient to form basis of implied K. Expectation of payment is not enough, because was NOT in express agreement.

Ways to improve a Breach of Confidentiality claim
Standard Approachà Non – disclosure agreement (NDA)
Soft Approachà shower with letters suggesting “I trust you will not make any use of this .” Make it that so every correspondence includes mentions of confidentiality Repeat, Repeat, Repeat. 

RULE: K claim generally requires less novelty and originality than CL Misappropriation claim.
Nadel v Play by Play (2000) à (spinning monkey case)
p is a pro toy idea man. He has an idea for a spinning toy that sings. p wants to share idea with a company that manus toys. He sends a prototype, and they were supposed to send him some samples which p never got, nor did he get his prototype back. D then puts out toy with similar qualities, and claims they did not use his idea based on lack of novelty claim and that they never got his toy, which meanwhile was sitting on Ds desk.
Holding: Remanded. Under K law in NY, the novelty standard is “novelty to buyer,” so while an idea may be unoriginal, it may have particular value to the buyer and this is evident by willingness to enter into K. In contrast, a misappropriation claim requires that idea be novel and original in absolute terms, because this is a property law theory which only protects that which is not free and available to all.
The Nadel Test for Novelty
1.       Generality v Specificityà is it a general concept or one of specific application?
2.       Commonalityà how many people are aware of the idea?
3.       Uniquenessà how different from ideas generally known?
4.       commercial availabilityà how available is the idea to the industry
Ink is still Wet ƈ companies claim idea was yrs old, but in the end the evidence shows otherwise. (See Nadel).