Property as a Bundle of Rights
Modern Rights
Acquisition
Transfer
Use (Destroy)
Roman Lawyers Rights to Property
Possess
a. Possession is not ownership; it is simply a part of it.
Exclude
a. If you have no right to keep people from trespassing or taking your property, then you don’t own the property.
Transfer
Use
Profit
Destroy
Acquisition by Capture
Overview
1. In its natural (original) state, property is the res (it belongs to no one in particular).
a. What is wild: wild animals (deer, fox, etc), natural gas, oil, water, hit baseball, anything with wild properties (wild and fugacious in nature).
b. Domesticated animals do not count.
2. One can acquire the property only by actually taking possession.
Types of Law of Ferae Naturale
1. Wild Animals (Example: Pierson v. Post)
a. MAJORITY: Three Things to Claim a Wild Animal (Tompkins)
i. An appropriation of such animals to private use, so as to exclude the claims of all other persons. (Manifestation of intent to capture it.)
ii. Intercepting the animal in such a manner as to deprive it of its natural liberty and render escape impossible. (Deprive it of its natural liberty.)
iii. Manucaption, or mortally wounded and are still in pursuit (you cannot stop pursuit), or trapped it. (Bringing it without your certain control.)
iv. ***Applies only to wild animals.
b. MINORITY: (Livingston
i. The pursuer must:
1. Be within reach. OR
2. Have a reasonable prospect of taking what he has thus discovered with an intention of converting to his own use.
c. Exceptions
i. Constructive Possession: In a suit between a landowner and someone who comes onto the land to take the wild thing, the landowner gets the wild thing even though he may not have otherwise owned it.
2. Natural Gas
a. Basic Rule
i. “Water and oil, and still more strongly gas,…have the power and the tendency to escape without the violation of the owner.”
ii. “Gas and oil belongs to the owner of the land, and are part of it, so long as they are on or in it, and are subject to the owner’s control; but when they escape, and go into other land, or come under another’s control, the title of the former owner is gone. Possession of the land, therefore, is not necessarily possession of the gas.”
iii. You can lose your right if you return it to its original and natural state; you do not need to have intent to abandon.
1. After Hammond, a gas company would need to find another way to store their gas rather than underground, get lease agreements from all property owners, buy the property above the basin, etc.
2. ***Note on ABANDONMENT
a. There need be no intent to abandon property if it is returned to its natural state
b. i.e. If you return gas to its natural state by pumping it back into the ground, you have abandoned the gas and the gas becomes the property of the owner of the land under which the gas rests.
b. Difference between Gas and Animals
i. Gas doesn’t reproduce like animals do (it’s exhaustible).
ii. There is a finite number of potential owners of the gas in comparison to an infinite number of potential owners of a wild animal.
iii. Gas is important to our economy; normally animals aren’t.
3. Oil
4. Water
Acquisition by Creation
Trademark
Purpose
To protect the owner’s brand equity.
To protect the customer from being confused or deceived as to the source of the goods or services.
To protect the customer from false statements about the quality or characteristic of goods.
Characteristics
Once a mark has been used in commerce, a company can register it and have nationwide rights to it.
a. A slogan can be trademarked if used for brand recognition, but it cannot be copyrighted.
A mark is not protected unless a company registers it.
a. i.e. In 1960, Burger King registered with the national PTO.
Trademarks are based on sphere of influence.
a. i.e. If someone opens a Burger King in CA and there is no national Burger King in CA already, the Burger King can operate until the national Burger King comes to CA.
b. The sphere of influence can be different between industries and in different parts of the country or the world.
To receive a trademark, it must be through a bonafide sale.
a. It cannot be a sham transaction just to gain the rights to the mark.
b. The mark must be attached to a product for brand recognition.
Intent to Use (ITU)
a. To gain the rights to a mark, you have to have an intent to use, and you have to file it with the USPTO every 6 months.
b. You can re-register for up to three years, then you have to refile again with the USPTO.
c. ITU is a way to reserve the mark without actually using the mark in commerce, but you must use it in commerce within three years or else you lose your rights to it.
d. Marks last as long as a company continually uses it in commerce, it has not been abandoned, and it has not become a generic terms.
Abandonment
a. Discontinued use in commerce for two years is prima facie abandonment and indicates that you have no present intent to resume use.
Distinctiveness
The stronger the mark, the better the protection.
i.e. The word “office” cannot be trademarked.
Five Classifications of Marks
Inherently Distinctive (Can register immediately.)
i. Immediately able to get nationwide rights to the mark:
ii. Fanciful
1. No meaning in any language.
2. Made up words.
3. i.e. Microsoft, Kodak, Starbucks, Polaroid, Reebok
iii. Arbitrary
1. Common, real words used in a unique way so that the word has no relation to the product it is branding.
2. i.e. Apple, Amazon, Grey Goose
iv. Suggestive
1. Words the indirectly allude to the product.
2. i.e. Playboy, Jaguar, Mustang, Coppertone, Greyhound, Roach Motel
Not Inherently Distinctive (Cannot immediately register.)
i. Descriptive
1. Describes the types of goods or services that are marketed.
a. You don’t have to think about it because the type of product is immediately described.
b. Only one meaning.
2. You cannot immediately register a descriptive mark.
a. It can be put on a supplemental register until such time (usually 5 years) that it has brand meaning.
b. It must be capable of becoming distinctive to be registered.
c. i.e. Computer Land Computer Store, Vision Center, Office Max, Park & Fly
Never a Mark
i. Generic
1. Words that describe the entire class of product cannot be registered.
a. i.e. “milk” for milk.
2. Words might become generic by the continued use of the term by a competitor.
a. It is a company’s responsibility to police its mark or else risk becoming victim to “naked licensing” and losing the rights to the mark.
i. The owner can only stop a competitor from using the mark as a source indicator.
ii. i.e. Consumerss can call generic tissues “Kleenex,” but Target cannot label their tissues as “Kleenex.
iii. A company must go after its competitors that are infringing or risk losing the mark.
b. i.e. Band-Aide, Xerox, Kleenex
ii. Section II Statutory Bars
1. Vulgar language and offensive marks cannot be registered.
2. Coats of Arms without the permission of the person.
3. Deceptive marks (marks that lie).
Tradedress
i. Package or design or the product that indicates to the consumer that the product comes from a unique source.
ii. Sometimes the tradedress will be considered, but most of the time it isn’t.
Fair Use
1. Comparative Fair Use
a. You can use someone else’s mark if you are comparing your product and you use their appropriate mark.
b. You cannot alter the mark if you use it as a comparison.
2. Descriptive Fair Use
a. As long as you are not using it as a source indicator but are using i
a dispute about who is the author?
a. The law doesn’t specify about who is considered an author (it doesn’t even say it has to be human), but most of the time, it has to be a human.
b. For two or more authors:
i. In order to be a co-author, you have:
1. to make an independently copyrightable contribution. AND
2. to have intent at the time it was created to be combined into a unitary whole
ii. If one author uses the material without the other’s permission, all that happens is that the author who used it owes half the profits made to the other.
1. A co-author cannot stop the other co-author from doing what he wants with the material, but the one who uses it has a duty to give the other their share of the profits.
Patent
General Information
– Used to protect useful items.
– Patents last 20 years from the date of filing.
– They give exclusive rights to utility patents, ornamental design patents, and plant patent.
– Patent law does not give you a patent just for inventing.
o A patent must be granted by the government.
o Patent prosecution was the process of filing, talking to the examiner, having meetings, and getting the patent granted.
– Who gets the patent?
o By law, the first person to get to the patent office and file for a patent is the inventor and gets the rights.
§ If there is a dispute, it comes down to who
– To get a patent on an invention, you must:
1. Show it is useful.
o History
§ Under older law, you used to need to show morality because as long as it wasn’t for an evil purpose and as long as it did something, it was considered useful.
§ NOW: Useful if it’s operative and functions for its intended purpose and the morality component is no longer relevant.
o Statutory Subject Matter
§ Is it something that Congress has said cannot be patented?
· Cannot patent abstract ideas.
· Cannot patent natural phenomenon.
o Anything made by a human can be patented.
2. Show it is something new (novel)
o Patents for things not anticipated or new.
o What is new?
§ Is the invention published in any kind of world publication?
· Four things invoke the “Hot News Rule”:
o Company/person has invested valuable resources to develop a valuable resource.
o Another company/person has free written the same information without investing the resources, not incurring costs, only had to verify the news.
o Public policy grants the monopoly to the first company/person who gets the news with resources.
o Parties have to be competitors.
§ Has the invention been sold anywhere in the US?
· If the invention has been around for more than a year before filing for a patent, a patent cannot be granted.
3. Show it is non-obvious.
o There must be a flash of genius by looking at it with the eye of a skilled of expert in trade.
Infringement
– Direct Infringement
o Show that the infringer’s product has every element that my product does (All Element Pool)
o Literal Infringement
§ Every element is met literally with no deviation.
o Infringement through Doctrine of Equivalence
§ Non-textual infringement because we don’t want people to make minor tweaks to patents to avoid infringement. (i.e. glue and tape are both adhesives)
– Indirect Infringement
o Either:
§ Not the infringer.
§ Encouraging others to infringe.
§ Import or export a component where the part is only for infringing purposes.
Trade Secrets
– If you take reasonable steps to keep your trade secret, you can keep it secret forever and the state protects them.
– Trade secret law is protected by state law, not federal law.
