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Intellectual Property
University of Dayton School of Law
Germain, Kenneth B.

I.                  Introduction. The origins of IP goes back to an Unfair Competition case in England in 1410 known as The Schoolmaster’s Case. It was based on a schoolteacher who took another’s job by lobbying the townspeople to hire him. There was no contract or misrepresentation in the case. The displaced schoolmaster lost the case & the court said that competition is “an ease to the people.” Even then, the policy was in favor of competition and against monopolies. Schoolmaster #1 was definitely injured, but it was damne abscum injuria. This case came out of a court of equity rather than a court of law. An injunction could only be gotten in equity courts – the law courts was only available for damages. Unfair competition was therefore less technical and more based on conscience since it came out of equity.
IP cases are three partied – not just Pl. and Def., but the public as well. They’re three cornered cases and the litigants invoke the third parties interests. Competition is an inherent value – we like competition because it’s an “ease to the people.” Unfair is a negative value though since we don’t want competition to be the law of the jungle – we want competition on a fair playing field.
Intellectual property is intangible and it is the recognition that someone came up with something mentally innovative. There is strict liability in violating Intellectual Property, like being a trespasser on real property.
Always ask ourselves, “If I could have advised the innovator early on, how could I have protected him or her effectively.”
A.                Intellectual Property Regimes. IP is an umbrella term that includes trademarks, copyrights, patents, and trade secrets. The IP spectrum also includes rights of publicity, rights in ideas, and unfair competition. 
Trademark Law. Trademark law protects symbols which can include words, logos, pictures, slogans, colors, smells, symbols, and productpackaging and designs. Three principle policies underlying trademark law: First, exclusive rights to trademarks prevent consumer confusion and reduce consumer search costs. Trademarks serve as signals. Second, these consumer expectations encourage trademark owners to invest in and maintain a consistent level of quality. Third, would-be competitors cannot free ride on the good will of the trademark owner. The dilution doctrine protects trademark owners from use of their marks in a disparaging way (“tarnishment”) and from overuse by others (“blurring”). Dilution law protects trademarks’ signaling power from tarnishing and blurring uses even by suppliers who do not compete with the mark owner. Trademark rights last in perpetuity as long as the mark is continuously being used. Congress derives its power to enact trademark legislation from the Commerce Clause of the Constitution. Trademark law is a mix of federal and state statutory and common law. The federal statutory scheme is set forth in Title 15 of the United States Code and is frequently referred to as the Lanham Act. The Lanham Act was enacted in 1947. Federal rights in a mark exist only when the mark is used in interstate commerce. State trademark law, which is nearly identical to federal law, applies to intrastate commerce. Onedoes not have to register a mark federally with the Patent and Trademark Office (PTO) to obtain federal trademark protection , although there are several advantages to registration. Misappropriation law and the right to publicity are recognized in some states, but are not specifically recognized in federal law. They both are designed to protect a person’s investments in business ventures and in their own celebrity.
Trademark gives an instantaneous recognition of a product by a consumer. It conveys a lot of information in a nanosecond – what it is, what it is NOT, and what it represents. Trademarks identify and distinguish (1) a single source of a product, (2) distinguish it from other types of products, and (3) they serve as a repository of goodwill. The fundamental rule in trademarks are validity, priority, and likelihood of confusion. Trademark’s are NOT limited in time, whether or not registered. Trademark law is based on common law principles with a federal overlay. This is because trademark doesn’t monopolize in the same way as a patent or copyright does. A trademark doesn’t cut off the market for other competitive products.
a)                 Michael Wilson, Chinatown Stores Raided in Counterfeit-Goods Sweep. “The counterfeit industry is a perennial target of law enforcement and Fortune 500 corporations.” “Last year [2002], the International Chamber of Commerce said that counterfeiting accounted for an estimated 5 to 7 percent of global trade, and that it continues to grow. A 1994 study by the city [of New York] estimated the cost of unpaid taxes on counterfeit goods to be $350 million.”
b)                Omega, S.A. v. S & N Jewelry Inc. (S.D.N.Y. 1992) (Omega watches sue to stop counterfeit sellers from trademark infringement). 
“Section 32(1) of the Lanham Act applies to claims for the infringement of registered trademarks and provides in part that: Any person who shall, without the consent of the registrant- (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or * * * shall be liable in a civil action by the registrant for the remedies hereinafter provided.”
“In order to prevail on their claims for trademark infringement under §32,plaintiffs ultimately will have to prove (1) ownership of a valid registered trademark and (2) that defendants’ use of the trademark creates a likelihood of confusion as to the source of the goods.” Trademark infringement under § 32 require VRT & LC
In determining whether plaintiffs have demonstrated a likelihood of confusion, the Court adheres to the eight-factor test articulated by Judge Friendly in Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961). The Polaroid test looks to the following factors: the strength of the prior owner’s mark, the similarity between the two marks, the competitive proximity of the products, the likelihood that the prior user will bridge the gap, actual confusion, the defendant’s good faith, the quality of defendant’s product, and the sophistication of the buyers. Polaroid, 287 F.2d at 495. “In applying this test, the list of factors does not exhaust the possibilities, and no single Polaroid factor is determinative.” Lang v. Retirement Living Publishing Co., 949 F.2d 576, 580 (2d Cir.1991)
Primary Points: (1) The Lanham Act is the federal statute governing trademark law. (2) Infringement requires proof of one’s ownership of a valid trademark and another’s non-consensual use in commerce of an imitation of a trademark (a registered trademark in this case but the same elements apply to an unregistered trademark) in connection with the sale, distribution, or advertising of goods or services (the same elements apply to both goods and services) that is likely to cause confusion, mistake, or deception. (3) The eight-part Polaroid test is one test for determining whether confusion, mistake, or deception (usually summarized as simply “confusion”) is likely to result from the other’s use of the mark: (1) strength of the plaintiff’s mark, (2) similarity of the marks, (3) proximity of the products, (4) bridging the gap, (5) actual confusion, (6) defendant’s good faith, (7) quality of the defendant’s products, and (8) sophistication of buyers.
c)                 The Eight-Factor Polaroid “likelihood of confusion” test:                 (Strength, Similarity, Proximity, Bridge, Confusion, Good Faith, Quality & Sophistication – SS PB CG QS)

dcasting, the computer software industry, academic scholarship, personal diaries, journals, letters, journalists’ news reports, photographs, maps, and even day-to-day communications such as e-mail.
Copyright law gives a bundle of rights to the creator. It protects original expression. Copyright is different in that independent actors could come up with the same thing. The right to copy goes to the innovator, initially at least. More than one person can have rights to the same thing in copyright. Copyright can have two things which are basically identical, yet each has the right to copy. Copyright is given for the expression and not for the idea. The explanations or ideas in a book are free to everyone, but the book itself & the particular words he uses are protected. Sometimes this is not a bright line. This is called the idea/expression dichotomy.
a)                 Tom Zeller, Link by Link; the Imps of File Sharing May Lose in Court, But They Are Winning in the Marketplace. “Despite the music industry’s legal victories against file sharing … the strategy has not earned the industry any more control over a marketplace forever changed by digital technology ….” “[I]n the long run, copyright holders are no match for the ability of file-sharing technology to adapt, mutate, evolve and expand.” 
3.                 Patent Law. Patent law protects inventors’ technologic creations, which may include software, pharmaceuticals, processes, compositions of matter, or electronicand mechanical devices. One must file a patent application with the Patent and Trademark Office to obtain patent protection and, of course, not all applications result in issued patents. To be patentable, an invention must be useful, novel, and nonobvious; and several disclosure requirements also must be satisfied. A patent’s term is typically 20 years from date of filing, and provides its owner with a right to exclude others from making, using, and selling the claimed invention. A patent does not give the owner the right to make, use, and sell the claimed invention. Neither independent creation nor third-party experimental use, other than for amusement or philosophical reasons, are recognized as defenses. Patent law is exclusively federal and is set forth in Title 35. A balance must be struck between encouraging innovation through property rights in the form of a patent and access to the patent product. In determining this balance, it is important to keep in mind that patents rarely provide an economic monopoly as there are usually viable substitutes available that compete with the patented product.
Patents are “gimmicks, gadgets, or gook” – they’re inventive stuff or processes that make other stuff work better and they’re covered by patents if they meet certain standards. Both patents and copyrights come from the copyright patent clause of the Constitution (even though neither of those words are in it). Congress is authorized to pass laws to promote science and the useful arts. Useful arts relates to patents, and science (learning) relates to copyrights. Article I, Section 8, Clause 8. “For limited Times” is the limiting phrase there – they didn