Select Page

Property I
Villanova University School of Law
Caudill, David S.

Caudill 2014 Property Outline


– Authors can own their writings which is a copyright

– Inventors can own their inventions which is a patent

o Copyrights


· Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

§ Art. I Sec. 8 Cl. 8

· Congress shall have power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries

§ Often interpreted more broadly than its actual language

§ Will trump any statute in place

§ A little originality goes a long way – even a literal translation of a work involves the “selection” of some words

§ OddzOn v. Oman

· HUGE judicial deference to agencies

· Must be an abuse of discretion of the agency

· SHAPES are not copyrightable because we do not want to copyright a ball

· The way it feels is a functional part of the work which is not copyrightable

· There was simply not enough additional creative work beyond the object’s basic design here

· Could not separate the tactile qualities of this ball from the functionality of the ball

§ A medium of expression is copyrighted after an original art of work


o Lanham Act of § 1127

o Requirements

§ A trademark can be used for a good that is

· Distinguished from the goods of others

o Exceptions

§ Unless it

· 1) Resembles a registered trademark and may cause confusion, mistake, or deception of the goods

· 2) Merely descriptive

· 3) Comprises any matter that as a whole is functional

o Definitions

§ Distinguished from goods of others can be shown by proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for 5 years before date of application of distinctiveness

o Companies with the same name?

§ Have to show that people are getting confused with the names

§ GM cars vs GM tools

§ What about generic name cereals that are pretty much rip-offs?

· Because they make an agreement

§ What is the standard of confusion?

· Likelihood of confusion

· Picking up something instead of the other

§ Don’t need to show actual confusion, just need to show the likelihood of theoretical confusion

· This is a legal question that can be proven by evidence

· Could probably sell Chevrolet toothpaste, because who would think it’s actually the car company selling toothpaste?

o Qualitex v. Jacobson

§ Specific color of pads they were using in dry cleaning

§ Qualitex registered the color with the Patent and Trademark Office and then brought a trademark infringement suit

§ Can color be a trademark under the Lanham act? Yes

§ Shape (Coca-Cola bottle) Sound (NBC chimes) Fragrances (Blossoms on sewing thread) have all been trademarked

§ Requires that a person “use or intend to be used”

§ Colors in limited supply? Well if that is the case eventually it would be the functionality doctrine

o Secondary Meaning – acquired when in the minds of the public, the primary significance of a product feature… it is to identify the source of the product rather than the product itself

o Functionality doctrine – prevents trademark law, which seeks to promote competition by protecting firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature

o Restatement of Unfair Competition – If a design’s aesthetic value lies in the ability to confer a significant benefit that cannot practically be duplicated by the use of alternative designs, then the design is functional

o Policy? Want people to know the quality of certain products


o § 43 of the Lanham Act covers certain other kinds of unfair competition, aside from infringing registrable marks

o Overall appearance of “Total Image”

o Many times it cannot be trademarked, but sometimes a feel can be part of intellectual property

o Two Pesos v. Taco Cabana

§ Basically two taco bells

§ Trademarks can be 1) generic 2) descriptive 3) suggestive 4) arbitrary 5) fanciful

· 3-5 are inherently distinctive and are entitled to protection

· Descriptive may be if they acquire distinctiveness (secondary meaning)

· General rule on distinctiveness: An identifying mark is distinctive and capable of being protected if it either (1) inherently distinctive or (2) acquired distinctiveness through secondary meaning

· Trade dresses do not require secondary

aintain its secrecy

§ “Misappropriation” – (1) Acquisition of the secret by someone who has reason to know that it was obtained by improper means (2) Disclosure or use by someone who used improper means to acquire it or who had reason to know that it either was derived improperly or was the subject of a duty to maintain its secrecy or limit its use

o Trade Secret Factors

§ (1) The extent to which the information is known outside the business

§ (2) The extent to which it is known to those inside the business i.e. employees

§ (3) The precautions taken by the holder of the trade secret to guard the secrecy of the information

§ (4) The savings effected and the value to the holder in having the information as against competitors

§ (5) The amount of effort or money expended in obtaining and developing the information

§ (6) The amount of time and expense it would take for others to acquire and duplicate the information

· If it’s really hard for the competitor to figure it out then it’s probably protectable

Review Problems

– Copyrights

o Involve works of art, generally writings, but sometimes music recordings, anything that is created and put into a medium

o A cannonball sculpture was not viewed as a work of art

o Koosh ball did not get copyright protection

o The right arises whenever you create something, but you can always register copyrights

o Sometimes when you do something that looks creative, you can just be copying somebody else’s work

– Trademarks

o Idea behind protecting trademarks

o Unfair to allow somebody to use other people’s trademarks to identify where something comes from

o If we want a really good German car then we want to know which one is BMW and which ones aren’t

o Encourages quality and helps consumer to pick the best products

o Trade Dress

§ Particular appearance of a store or a business that is marked (Two Pesos Inc.)