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

KETTLE- Fall 2017
Protect Creator (Author/Inventor)à Protection will allow them to continue creating
Protect Publisher/Investorà Person who is going to put the money up
Enrich/Protect the Consumer (Public)à Enrich society w/ products, entertainment, literature
Constitutional Origins of Intellectual Property 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 Respective Writings and Discoveries
C.   IDEAS are expressed into: Trade Secrets, Copyright, R/O/P, Trademark, Patent. Ideas are
        protected through Common Law NOT STATE/FED STATUTES.
First Thing to do Before Meeting Prospective Clientà Conflict Check! (Want to make sure that commitment to your client’s matter will not be distracted by your commitment to any other person. 
Golan v. Holder (2012)à Case regarding foreign authors publishing their books here. It used to be that formalities were required to get published in the US w/ protection. However, most did not follow formalities so work was put in public domain. Golan, a muscian who utilizes works in the public domain, filed suit.
                                          Holding: An exhaustive recount of the history of copyright law showed that public domain is not untouchable, and Congress has the power to remove works from the public domain and grant them protection. Court rejected Golan’s argument that taking works out of the public domain violated the constitutional “limited times” requirement (Congress took this action after joining BURN convention 03/01/1989)
*Reliance Partiesà Those who rely on public domain to obtain works, etc.
Functional DEF: Essential to the use or purpose of the article or if it affects the cost or quality of the article (Inwood)
a. Aesthetic Functionalityà Considers whether purely aesthetic features might be considered “functional” because, essentially, they are pretty and therefore desirable for that reason alone. 
Cannot be Functional or Essential to be eligible for protection
Patents and Trade Secrets are ONLY things that can protect functionality!
A) Rights in Undeveloped Idea
Sellers v. ABC (1982): (Application of State Law)
Seller’s advertised a unique/”exclusive story” to ABC, but ABC ran story about Elvis’s death that did not include any of Seller’s info
HOLDINGà Elements of Appropriation were not met because: 1) p theory was not novel, 2) p idea was NOT concrete but vague, 3) ABC did not use p’s idea, BUT 4) p did expect money for his idea
TWO STEPS to IDEA PROTECTION:1) Misappropriation and 2) Theory of Recovery
1) Elements of Misappropriation
Idea has to be novel (the standard differs, NY says need to be novel to recipient, because novelty takes the place of consideration in the K, the idea becomes the value)à QUESTION FOR JURY POSSIBLY
Concrete form à has to be written, and detailed enough that someone would know how to act upon it.
D uses the p idea (the most common defense D claim is that they did not use p idea)
p has expectation of $$$
Contrary Types of Novelty
(Type Varies State to State)
Receipent Noveltyà May have particular value to the buyer even though it does not to others (EX: Others in the toy industry). Disclosure of an idea can be bargained for consideration.
General Noveltyà It’s got to be novel across the board and no one knows about it
2) Theory of Recovery (For Ideas)
      A) EXPRESS K IN WRITING à Lowest level of novelty allowed.
           Damages will be based on compensation mentioned in K
      B) IMPLIED “IN FACT”à “the law will imply a promise” but to do so court will examine the         
           Relationship between parties à Has the submitter shown confidential relationship with the       
           recipient (this inferentially implies contractual relationship because confidentially implies that
           submitter did NOT want to divest her rights and recipient aware means he understood not to
           publish without consent or compensation).
           Damages determined by presumed amount of payment of reasonable value of idea)
       C) QUASI “IN LAW”à this probably requires the highest level of novelty (pet rock is novel) and  
            some proof of unjust enrichment on part of recipient.
            Damages measured by level of unjust enrichment à actual profit from the use of idea).
Other Theories: (NOT REALLY USED)
            a) Breach of Confidentiality (Fiduciary Duty)
                Ways to Improve This Type of Claim:
                     a) STD Approachà Non-discoloure agreement
                     b) Soft Approachà  Shower w/ letters suggesting: “I trust you may not use any of this”.
                                                       Basically every correspondence incorporates confendiatlity
            b) Tort of Conversion à convert someone else’s property into your own, but Courts don’t really
                                                     do this much and it’s the hardest to recover under.
Idea Submission (the four general scenarios)
X submits her idea to Y upon Y’s express solicitation
X informs Y that she would like to submit an idea of possible value to Y and Y does nothing to block the submission.
X thrusts upon Y a full disclosure of her idea before Y has the opportunity to block the submission
X makes no submission at all but charges that Y has copied her idea.
Various Methods to Protect Your Idea
        1)  Agreements, 2) Double Envelope, 3) Soft-Shell
Luddecke v. Chevrolet Motor (1934)
ISSUE: Did unlawful misappropriation occur?
HOLDINGà NO, Chevy is NOT liable for incorporating into its product generalized suggestestions  made regarding its product. Must be novel and specific.
Chevy requested more concrete info (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 just a logical solution of redistributing weight, which is not novel (Everyone knew about it)
p did NOT obtain proprietary interest in

contrasting or distguishing goods, so long as no misrepresentation occurs
A’s product à  descriptive and has no secondary meaning  à A must prove that B palmed off goods and by words or deed deceived consumers as to source and A must also show actual confusion by consumers.
A’s product à common but has secondary meaning à A must prove ONLY that There is a likelihood that confusion will result from B’s use of the symbol.
A’s product à  distinctive, non- descriptive symbol that is solely for the identification of A à A can rely on Presumption created in her favor that A, due to other alternative symbols, in choosing to use A’s was motivated by intent to deceive and was successful in doing so.
IMP NOTES: Acutally identical symbols NOT needed in above JUST similarity, which the greater the more probable a finding of intent to deceive & Name to be Protected must be in ACTUAL USE, cannot save for later
SECONDARY MEANING DEF: The trade meaning which may attach to a particular mark because its user has expended time and money in the promotion of the mark. A p must prove that “the primary significance of the term in the minds of the public is NOT the product BUT the producer”.
William Warner v. Eli Lilly (1924) (Issue of Functionality) (NO TRADE SECRET HERE)
ISSUE: Passing off:  Whether passing off cheaper brand for more expensive brand made by different manufacturer  constitutes passing off and thus is an unfair competitive act? (unfair comp)
FACTS: P began to sell a product called Coco-Quinine, and then D began to sell an almost idntical product seven years later (essentially “passing off” their product as Ps). D’s saleman suggested that prescriptions and orders for Coco-Quinine could be filled by substiting Quin Coco thus “passing off” and causing deception
HOLDINGà A manufacturer may not pass off its product as product of another. A party is entitled to make product identical to any other non-patented product (reverse engineering). But can’t tell public that product is same as original. Here, BAD FAITH such as inducement to by manufacturer to pass off is very bad.
IMP. NOTEà Although a product may not be “protectable” due to lack of patent and functionable features, bad faith inducecment to PASS OFF product is NOT OK
NO TM INFRINGMENTà Product name is merely descriptive of the ingredients and thus cannot be trademarked
Court says others could include chocolate could just not PASS OFF
Functional elements ARE NOT protectable, such as color brown liquid being result of chocolate. Thus, a functional element will kill a ™ but Patent will protect functional elements.