· Intellectual Property
o Patents
§ Inventions
o Copyright
§ Source identifiers
o Trademark/unfair competition
§ Communicative works
o Trade secrets
§ Proprietary nature (secret)
· Why Intellectual Property?
o Not tangible products made from natural elements or resources, but products of the mind, the intellect and human creativity.
· The Property
o What are we trying to protect?
§ Not the ownership element
§ Protecting the commercial value
· Intellectual Property One Page Primer
o Copyright
§ Requirements
· Originality
o Doesn’t have to be unique, just have to be original to the creator
· Fixation
o Must be copied down to preserve it for the public domain after the lifetime of the copyright
· Creativity
o A phonebook is not original. Has to have some aspect of creativity/originality. The yellow pages part would be acceptable because there is some organization/decision making to create the list. The way the data is arranged can be protected.
§ Exceptions
· Idea
o Can not protect the idea. The expression of the idea can be protected by copyright.
§ Rights
§ Infringement
o Copyright Certificate is prima facie evidence of 1-5 elements
o 2 types of copying
§ Verbatim
§ Non-literal
· Must prove access to original work and substantial similarity to original and also improper appropriation
§ Defense
· Fair use
o Purpose and character of use
§ Is it for a commercial use? Not protected.
o Nature of the work copied
§ More creative=more protection
o Amount and substantiality of portion used.
§ If used just a portion its ok
o Effect upon potential market
o Patent
§ Subject Matter
· Can add Design as 6.
§ Requirements
· Must be new. Over a year old, won’t be granted.
· Non-obvious
o If ordinary person skilled in the art can come up with it or a minor improvement, then its obvious
§ Rights
· As long as the patent exists no one else may make, use , or sell
o Trademark
§ Likelihood of confusion
· Strength of Ps mark
· Similarity of the marks
o Lexis-Lexus
· Proximity of the markets
· Bridging the gap
· Actual confusion
· Good faith of D
· Quality of Ds goods
· Sophistication of the buyers
o Trade secret
§ No uniform trade secret law
§ How to maintain a secret
· Restrict access to pertinent areas
o Warning signs
o Established security systems
o Confidentiality agreements with everyone who comes in contact with secret
o Clearly label all documents
§ Loss of secret
· Neglect of owner
· Independent discovery (reverse engineering)
· Misappropriation through improper means
· Trademark Law
o A. Theories of Protection: Passing Off
§ Warner v. Eli Lilly
· P had name Coco-Quinine and was trying to stop D from using Quin-Coco.
· Court says the name is descriptive of the ingredients in the mixture so it is not protectable by either w/out secondary meaning.
· But, court says since D was using the same mixture and trying to palm off the Ps product. The knocking off of the product is ok, but the D can not try to confuse as to source.
o B. Requirements for Protection
§ 1. Use and Use in Commerce
· Must have use and use in commerce. Public use in commerce
· Two types of applications for TM
o Use Based
§ Already established use
o Intent to Use
§ Up to 3 years grace period to use. Once you file the clock starts and the use date starts that day. Must have a bona fide intent to use the mark in commerce. Cant just save names.
§ Constructive Use
· Filling date of ITU starts date of use. Once registration is issued, all newcomers have constructive notice of use of the mark.
· Blue Bell v. Farah
o Two companies both trying to use “Time-Out”.
o Court says the rule is that a mark is “used” when it is affixed to the goods and the goods are sold displayed for sale or otherwise publicly distributed.
o Ownership of a mark requires a combination of both appropriation and use in trade. Ownership accrues when goods bearing the mark are placed on the market. There must be an “open” use.
o A shipment must be publicly distributed
consumers mind is still a goods identifier
o Abandonment
§ Two distinct tests for abandonment
· Non-use in connection with goods or services can lead to loss of rights. Use discontinued with intent not to resume w/in reasonably foreseeable future (inferred after 3 years of non-use)
· Owners conduct results in loss of distinctiveness: genericide, naked licensing, failure to police, assignment in gross
· b. Deceptive Matter
o Confusingly Similar TM Terms of Art
§ The Deception Test
· Is the term misdescriptive of the character, quality, function, etc. of the goods?
· Are prospective purchasers likely to believe the falsehood actually describes?
· If so is the mis-description likely to affect the decision to purchase?
o IF-Yes, No, No=misdescriptive-Can be TM
o IF-Yes, Yes, No=deceptively mis-descriptive-Need 2nd
o IF Yes, Yes, Yes=deceptive-no good
§ Deceptive is an absolute bar. Deceptively mis-descriptive can be saved by 2ndary meaning
· Deceptive is when the lie would sway a consumer to buy
o In re Budge
§ USTO rejected TM registration of LOVEE LAMB as deceptive.
§ Court says 3 part test for whether the term is misdescriptive is
· Whether the term is misdescriptive as applied to the goods
· If so, whether anyone would be likely to believe the misrepresentation,
· Whether the misrepresentation would materially affect a potential purchaser’s decision to buy the goods
§ Court runs thru the test and finds that evidence shows the deception is likely to affect the decision to purchase. Court says the mark deceives the public, and this is not allowed.
· c. Confusing Similarity to Prior Marks
o in re N.A.D.
