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Trademarks and Unfair Competition
Temple University School of Law
Casey, Kevin R.

I.        INTRODUCTION
·     Intellectual Property: Creations of the mind that the law deems worthy of protection under property law. Three types: Patents, Copyrights, Unfair Competition
·     Unfair Competition: Trade Secrets, Trademarks, Other
A.   Patents
·     Meet the Press
·     Supreme Court Cases
o KSR v. Teleflex 103 nonobviousness standard
o Tamoxifen Citrate: Reverse payment settlement antitrust
o Medimmune v. Genentech: Licensee patent validity challenges
o Microsoft v. AT&T: 271(f) export of unpatented component
o Integra v. Merch: experimental use, safe harbor
·     Art 1 sec 8 clause 8
·     Types of patents
o Utility: Machine, Manufacture, Composition of Matter, Process, or Improvement
§ Most are improvements
§ Software and businejss methods are patentable
§ New (102)- not previously known or disclosed in the prior art,
§ useful (101),
§ nonobvious- would the claimed invention have been obvious to one of ordinary skill in the art at the time of the invention,
§ federal preemption
o Design: Ornamental Aspects of Utilitarian Objects
§ Nymph designs around lamp base
o Plant: Asexually Reproduced Plants
B.   Trade Secrets
·     Definition- common law – State law
o Information used in a business (Trade)
o Gives owner a competitive advantage over competitors
o who do know the information (secret)
§ Reas steps taken to keep secret and
§ “Improper means” used to discover secret
·     Examples: Distinguish Patents: independent development or reverse engineering are OK for trade secrets.
·     Reasonable Measures
o Internal: Access limited, published policies, policies should be changed if not followed
o External: Confid agreements, Licenses
C.    Copyright Law
·     Derives from same clause in constitution
·     Duration: 70 years from date of author’s death
·     Two major turning points:
o Pre-1978 (1909 act)
o 1978-89
o 1989-present (Berne convention- did away with formalities, including notice requirement)
·     Sources of Law
o Congress: www.copyright.gov (17 USC 101 et seq)
§ Read the statute first- it’s very detailed
o Copyright Office (37 CFR 202.1-202.23)- circulars
·     References: Nimmer, Boorstyn, Henn
o McCarthy on Trademarks, Chisum on Patents
·     Protected Subject Matter
o Expression- not the idea
o Originality
o Fixation (into tangible medium)
o Types of CR SM
§ Literary
§ Compilations
§ Collections
§ Derivative Works -Translations, screenplays
·     Ownership
o Author
o Joint works
o Works made for hire (non employment context – must have written agreement)
o Ownership v. material object- physical text book vs. copyrighted work
·     Scope of Protection
o Reproduction
o Adaptation
o Publication
o Performance
o Display
o Authorize others to exercise transfer of rights- applies to every kind and category
·     Limitations on Exclusive Rights
o “Fair use” doctrine; 17 USC 107
§ Commercial vs. non, how much you took, impact on market of original,
o Libraries and archives
o Transfer of lawfully made copy
o Computer programs (back up copy)
o Compulsory Licenses (E.g. popular songs)
o At 35 years, author of work for display can terminate a license
·     Notice
o March 1 1989 is last date requirement of notice for copyrightability
o Form of Notice Three elements ©, Copyright, CR
·     Copyright Registration
o File application with CR office
o Three Elements:
§ Deposit copies, Fee, Application form
·     Examination
·     Reexamination -Protecting the party or the public
 
II.        The Right to Compete 1
A.   Unfair Trade 1       
·     See Supplement- FTC regulations- Unfair Trade Practices
B.   Right To Enter Markets And To Compete Fairly 4
·     Entering a market and competing fairly is allowed.
o Schoolmaster’s case 5- two schoolmasters sue new schoolmaster for injuring their business by charging students less
§ First theory: D was intentionally causing harm to P’s
·      Held: no case because means were not improper
·      Students benefit from competition
o More choices
o Lower prices= More people can afford it
o Quality of education might improve to keep customers        
§ Second theory: D violated an exclusive franchise granted by the prior
·      Still seen today
·     Improper means are unfair competition
o Shooting at customers is improper means of competing (duh): See Tarleton 6 Note 2
o Shooting a gun (even on your own land) to scare away P’s ducks was unfair competition.
§ See Keeble 6 note 4: pltf used duck decoys, defendant shot his gun in the air (on his own property) to scare the ducks away.
·      Because of D’s malicious intention to interfere, it was actionable (though setting up his own decoys on his land would not have been)
§ What if you are a wildlife lover and are scaring ducks- probably not going to work as a justification, but if you have some other might be ok?
·      You don’t have to be a competitor to be found in violation of law
·     Motive to run out of business with intent to withdraw is unfair competition
o Restatement (third) Unfair Competition s 1 (comment c): Motives of the actor
§ Requires both Bad motive and intent to withdraw later
§ CA: Public benefits are better independent of motives: freedom to compete
o See Tuttle v. Buck 7: banker defendant wrongfully interfered enters barber market with malicious intent to run barber out of business, by charging lower prices without regard to his own losses
§ Dissent: motive is not enough when action is not illegal and is normally encouraged
§ What if defendant wins this case?
·      Short term: Prices may go down, Better hair cuts
·      Long term: no barbers, but presumably new barber will come in and may charge higher prices
 
 
C.       Interference with Contractual Relationships and the Right to Compete 13
1.   Intentional Inducement of Breach of Contract 13
·     Intentional Interference with Another’s Performance of His Own Contract (Rest 766A)
o One who (1) intentionally and (2) improperly (3) interferes with the performance of a contract between (4) another an

oto of a man wearing Henley shirt with the words “This is Don” in large print, and an arrow pointing toward the man’s head from the words. Underneath the words is the statement “This is Don’s Henley”
·     Right of publicity: the inherent right of every human being to control the commercial use of his or her identity
·     Rule: (1) the defendant appropriated the plaintiff’s name or likeness for the value associated with it
o Does not have to use celebrity’s name or likeness
o Intent for customers to associate expression Don’s henley with Don Henley
o Must be not “incidental”
·     2) Can plaintiff be identified form the publication
o Plaintiff as a human being must be identifiable from the total context of the d’s use
o Intent state of mind and degree of knowledge of D may shed light on identifiability
o Identifiable to a De minimus number of persons
o Survey showed fifteen percent believed don Henley was a spokesman for the add
·     3) Was there an advantage or benefit to D
o D Derived some commercial benefit from the name or likeness
o Intent to make a profit from the add is not enough
o Use of name or likeness must be used for Express purpose of appropriating the commercial benefit.
o Focus is on D’s intent. (we make assumption that if D intended it, then it happened)
o P does NOT have to prove actual benefit
·     Policy: D didn’t do the hard work of becoming famous so should not be allowed to “reap where she has not sown”
·     Right of publicity= PROPERTY interest
·     Right of privacy= right to dignity and tranquility
·     Defense: 1stAmendment- entitled to write a book
·     Can write “unauthorized biography
·     Look at pages 997-1000 for Right of Publicity Restatement
C.    Trade Secrets
·     Kewanee Oil Co. v. Bicron Corp.
·     Issue: do the federal patent laws preempt state trade secret laws?
·     Held: They do not
·     Ended up in Federal court due to 1332 Diversity. Applies Ohio state law.
·     Theft of Trade Secrets requires:
o A Secret
o Improper means: theft, etc
§ Independent discovery and reverse engineering are FINE = safe harbors
·     Dupont Denemours & Co.v. Christopher: Christophers hired to take aerial photo’s of methanol plant under construction
o ‘improper means’ includes deviousness under circumstances in which countervailing defenses are not reasonably available
·     Note 1: Reverse engineering okay
·     Statute book: page 982