I. Intellectual Property Law in Context – pp. 1-35
A. Having intellectual property gives people incentive to invent or come out with better product even though it gives a monopoly over something
B. Trademark
1. Word, phrase, logo or symbol used by someone to inform consumer the source of goods.
2. Can last forever, but must be renewed. They get stronger over time.
C. Copyright
1. The right to copy an original work (literary, music, art…)
2. Protects what is non functional
3. Does not protect the idea but the expression of that idea
D. Patent
1. Right to exclude others from making, using, marketing, selling
2. Protects useful things
3. Last 20 years after the application
II. State Law of Intellectual Property
A. Protection of Ideas – pp. 36-43; 49-64
1. Idea must be: (1) Specific (2) Concrete (3) Novel
a. Suggests something new, not common knowledge
2. Misappropriation of property: Must have value for property. NY permit recovery for misappropriation that an idea or theory be:
a. Novel (Factors: specificity, commonality, uniqueness, commercial availability)
b. Concrete (e.g.: script, prototype)
c. Use (The Δ makes use of the idea)
3. Seller v. American Broadcasting: (How Elvis Died Info) Court will not enforce if an essential element is vague, indefinite or incomplete. The only specific part of the idea was the induced heart attack and suffocation. ABC did not use the specific part. à Did not misappropriate information.
4. Contract (Express or Implied)
a. Express Contract – a contract with specific agreed terms (service v. idea). Includes non disclosure agreements.
b. Implied-in-Fact Contracts – reasonably should assume submission was for compensation
c. Quasi Contract – Δ derives benefit of π idea, but there was no agreement to pay
d. ‘Concrete’ and ‘Novelty’ are applied less rigorously in express contracts and more rigorously in implied contracts.
e. Damages
i. Express: terms of compensation govern
ii. Implied: measure is what is presumed Δ would pay or is reasonable
iii. Quasi: measured by Δ unjust enrichment
5. Nadel v. Play-by-Play Toys: (Spinning Taz) Remanded to determine if the idea was novel or merely clever adaptation. Δ said they developed their toy independently, though the prototype was never returned to the π, satisfying use. Prototype satisfies concrete. Court said novelty differs between contract (implied contract in this case) and misappropriation. à Contract has to be novel to the user, because trying to prove true novelty is almost impossible.
6. Masline: The court that the π idea of advertising on cars and railways was not used by the Δ, the idea was “perfectly obvious to all men.” Express Contract could not be enforced for an idea that was not new. (Not NY view)
7. Limits of Protection: §301
a. §301 of the Federal Copyright preempt a state law if:
i. The work protected by state law is “fixed in a tangible medium of expression”
ii. Work comes “within the subject matter of copyright” AND
iii. State law grants a right that is “equivalent to any of the exclusive rights within the general scope of copyright”
B. Unfair Competition – pp. 65-76
1. Unfair Competition: Dishonest or fraudulent rivalry in trade and commerce; esp., the practice of endeavoring to pass off one’s own goods or products in the market for those of another by means of imitating or counterfeiting the name, brand, size, shape, or other distinctive characteristic of the article or its packaging. [Also the Federal Lanham Act has provision for Unfair Competition §43 (a)]
a. Passing Off – The act or an instance of falsely representing one’s own product as that of another in an attempt to deceive potential buyers. • Passing off is actionable in tort under the law of unfair competition. It may also be actionable as trademark infringement.
b. Reverse Passing Off – The act or an instance of falsely representing another’s product as one’s own in an attempt to deceive potential buyers.
c. Dilution – Trademarks. The impairment of a famous trademark’s strength, effectiveness, or distinctiveness through the use of the mark on an unrelated product, usu. blurring the trademark’s distinctive character or tarnishing it with an unsavory association. •
i. Trademark dilution may occur even when the use is not competitive and when it creates no likelihood of confusion.
ii. The elements of trademark dilution are
1. ownership of a famous mark and
2. actual dilution.
iii. But a plaintiff does not have to proveactual loss of sales or profits. Moseley v. V Secret Catalogue, Inc.
d. Likelihood of Confusion: Testfor Lanham Act USCS §1125 (a) [EMS RIDE]
i. Strength of the π mark
ii. Relatedness of the goods
iii. Similarity of the marks
iv. Evidence of actual confusion
v. Marketing channels used
vi. Likely degree of purchaser care
vii. Δ intent in selecting the mark
viii. Likelihood of expansion of the product lines
e. Transformative Use – The use of copyrighted material in a manner, or for a purpose, that differs from the original use in such a way that the expression, meaning, or message is essentially new.
2. Theories of Protection
a. Misrepresentation –use of deceptive or misleading representation in marketing goods or services is likely to deceive consumers, and injure a competitor’s commercial interests
b. Misappropriation –The CL tort of using the non-copyrightable info or ideas that an organization collects and disseminates for a profit to compete unfairly against that organization, or copying a work whose creator has not yet claimed or been granted exclusive rights in the work.
c. Int’l News Serv. v. Associated Press: The elements of misappropriation are:
i. π invested time, money, or effort to extract the information;
ii. Δ took info with no similar investment; AND
iii. π suffered a competitive injury because of the taking
d. Board of Trade of City of Chicago v. Dow Jones & Co. (IL SC): The court held that because direct competition was not essential for liability under the doctrine of misappropriation, appellee was entitled to protection against misappropriation by appellant of its proprietary interests. (analogous to INS case)
a. If no 2m (cocoquine, merely descriptive, chocolate as element was functional), must prove: (1) df actively palmed off its goods as coming from plf (2) deceived consumers as to source (3) consumers in fact confused as to source
b. Yes 2m, must prove (1) likelihood of confusion that df’s use will deceive consumers as to source
c. Distinctive/nondescriptive fnc’ing exclusively as ID of source = conclusive that df’s use caused confusion (fanciful, arbitrary, suggestive)
d. Must be actually used in bsn (exception of zone of expansion)-2m, priority, notice, LOC?
3. Rights in One’s Name – treated just as a brand name, need to show damage by confusion/diversion if no relief – competition kinda.. UC and injury to plf.. ELEMENTS: if common but 2m (LOC), if 2m/distinct (no LOC nec), if no 2m/comm. (intent to pass off AND actual confusion)
4. Economic Interests & UC – can copy unless protected by © or patent, if fnc’al not protected, 2m attached to shape/fnc’al feature vs actual name… not gonna work.. STATE UC preempted by fed
C. Right of Publicity – pp. 123-62
1. Right of Publicity – The right to control the use of one’s own name, picture, or likeness and to prevent another from using it for commercial benefit without one’s consent
a. Unfair Competition and injury to π if:
i. Intent to pass off AND
ii. Actual confusion
b. Injunction is the typical remedy
2. Parody – Transformative use of well known work for purposes of satirizing, ridiculing, critiquing, or commenting on the original work. In
oland Spring bottle water, what would a person never seeing it before think about? A spring of water in Poland. We, knowing the secondary meaning, think of a company of water.
b. Developed the secondary meaning by:
i. Consumers like the product
ii. Advertising – repetition though marketing
c. How do you prove secondary meaning
i. Look at how much was put into advertising
ii. Survey the public, using experts
iii. Level of sales
4. William R. Warner v. Eli Lilly: Eli made quinine to treat malaria called Quin-Coco. π made Coco-Quinine that was quinine with chocolate added to disguise the taste. The color is not utilitarian, but the taste is utilitarian. Δ told pharmacies to “pass it off” at lower price. If trademark is functional then it cannot be protected. No trademark infringement, but remanded for unfair competition.
5. Abroad: In European countries allowed for registration for intent to use, and American companies were put at a competitive disadvantage. A compromise was made. An American company can apply to register for a trademark based upon the intent to use a trademark in commerce.
a. Process:
i. File ITU application at Patent & Trademark Office (can do online)
ii. The patent and trademark office publishes the mark to give other companies the chance to oppose it.
iii. There applicant will not be able to register the trademark unless the applicant has been able to verify that it has used the mark.
1. The applicant is given a green light to spend money developing the product. The applicant needs that assurance. It get the notice goes ahead spends money making the product, marketing, and finally get the product out. Once it finally makes it statement of verifying use, the office will then register it.
2. R symbol on product is the PRINCIPLE REGISTER. If a TM follows it then it means that the trademark has been filed. Once they have the trademark they have a monopoly over that symbol [is that just in the field? Or broader?]
C. Requirements for Protection
1. Use and Use in Commerce – pp. 175-90 15 USCA §§ 1051, 1055, 1057, 1060, 1127
a. Use and Use in Commerce: Application For Use v. Intent to Use (max 4 yrs to reserve mark) – must be used in commerce, public sale, not internal, no token use. TM = mark affixed to good and good sold/displayed for sale/publicly distributed = bona fide use
b. Blue Bell v. Farah Mfg: State case (applicable to federal). Both were clothing manufacturers who created identical trademarks for substantially identical goods at approximately the same time, and they sought injunctions against each other based on common law trademark infringement and unfair competition. The court agreed with the lower court that appellant’s actions in affixing the new mark to goods previously manufactured under a different name was a bad faith attempt to reserve a mark, and shipment of those goods was not a valid date of first use. Moreover, the court found the date of first sales to customers to be determinative and awarded priority to appellee.
Farah is the first developer of Time Out mark. “Time Out” was used for