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Chapter 11. The Foundations of Trademark Protection 18 results (showing 5 best matches)
- The manner in which a businessperson acquires a trademark is different from that in which other intellectual property, such as copyright or patent, may be legally protected. A trademark cannot be appropriated
- The growth of an increasingly complex and sophisticated body of state trademark common law was accompanied by attempts to federalize it, despite the lack of an express constitutional grant of power to do so. The first trademark laws were enacted by Congress in 1870 and 1876. Those statutes were declared unconstitutional in 1879 by the Supreme Court. , 100 U.S. 82 (1879) (The Trademark Cases). The Court held that Congress had no power to regulate purely state matters such as trademark rights. In response to those cases, Congress passed statutes in 1881 and 1905 solely addressing the interstate use of trademarks. In 1946 Congress passed the most recent substantial revision of federal trademark legislation, the Lanham Act.
- A national system of trademark registration has numerous advantages over state common law trademark rights. First, the acquisition of federal registration allows the registrant to overcome any claims by later users of good faith. Federal registration upon the Principal Register, see § 12.6, infra, gives to all later users. 15 U.S.C.A. § 1072. As a practical matter, this constructive notice changes the substance as well as the procedure of trademark rights, because it effectively abrogates the doctrine of geographical limits. Constructive notice affords the registrant nationwide trademark enforcement. Thus, despite the traditional doctrine that trademarks are rights appurtenant to commercial activity and are not rights in gross, they in fact become rights in gross in all geographically distant areas in which the registrant is not using the mark.
- Some of the most important and disputed issues in contemporary trademark law can be traced back to its historical development. For instance, the current disagreement over the objectives of trademark protection has its parallel in the history of conflicting claims for trademark protection from different interest groups centuries ago. A useful place to start the exploration of today’s controversy over the objectives of trademark law is to look at the original purpose of guild members during the medieval period who affixed the mark of their guild to the goods they sold. The mark was meant to identify the good as the product of a particular craftsman or group of craftsmen. The original function of trademark, therefore, was simply to indicate the origin of goods, by identifying the craftsmen who produced them. But those producers also saw in trademark the opportunity to gain a competitive edge over others. This partially explains the development of the philosophy underlying the current
- The expanded function of trademarks can be attributed in part to the fact that the modern market is not susceptible to or even dependent upon knowledge of the identity of different sellers. Trademark does serve to indicate origin, as one court has said, “though the identity of that source may in fact be unknown to the public,” ., 439 F.Supp. 1022 (D.Del.1977). The functions of the modern trademark thus have expanded, as the modern market has evolved, to include (1) an indication of origin, (2) a guarantee of quality, and (3) a marketing and advertising device. , 477 F.Supp. 936 (D.D.C.1979). Therefore, the legal protection of a trademark serves both to protect the public from confusion as well as to protect the trademark owner from losing his market. In fact, it is the express purpose of the Lanham Act to protect the owner’s rights as well as those of the public. 15 U.S.C.A. § 1127. Although the purposes of trademark have thus expanded, the Lanham Act did ...law doctrine that a...
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Chapter 28. International Agreements 21 results (showing 5 best matches)
- There are only a handful of important multilateral international agreements to which the United States is a party that directly affect intellectual property. The major agreements are the Paris Convention (addressing patent and trademark), the Patent Cooperation Treaty, or PCT (addressing patent), the Trademark Law Treaty, or TLT (addressing trademark), the Berne Convention (addressing copyright), The Universal Copyright Convention, or UCC (addressing copyright), NAFTA (addressing all three), and the Trade Related Aspects of Intellectual Property Rights, or TRIPS (also addressing all three). Although all differ in more than just their subject matter, they share certain characteristics that have historical and continuing significance. In 2003, the United States acceded to the Madrid Protocol of the Madrid Agreement, governing trademark, and is now a part of the so-called Madrid system of international trademark registrations.
- GATT and NAFTA are departures from the tradition of national treatment with few substantive minimums. Despite being trade, not intellectual property, agreements, both NAFTA and GATT adopted substantive terms addressing intellectual property. NAFTA, comprising only Canada, the United States, and Mexico, although with provisions for extensions throughout the Western Hemisphere, was in many ways a precursor to TRIPS. Under the banner of globalization, both NAFTA and TRIPS member signatory countries have agreed upon substantive minimum standards for patent, trademark, and copyright—as well as trade secrets and unfair competition—with various although severely limited opportunities for developing countries to delay compliance temporarily. GATT, which has been absorbed into an umbrella organization, the World Trade Organization, or WTO, includes TRIPS as part of its overall terms. TRIPS, in turn, imposes upon its members most of the provisions of the Paris and Berne Conventions, with some...
- The oldest and most well-established characteristic of intellectual property agreements is that of national treatment, which can best be understood historically. When the first intellectual property treaties were proposed in the nineteenth century, different countries, at different levels of economic and cultural development, favored different coverage, treatment, and terms. Because it appeared impossible to reach an agreement on the level of protection that should be guaranteed in all signatory countries, a compromise was reached.
- The undemanding approach of national treatment has been the stated rubric of international intellectual property treaties even as, in fact, they depart from that approach in favor of agreement upon transnational minimum provisions. Thus, even NAFTA and TRIPS, which create important transnational norms of substantive intellectual property purport to be documents incorporating national treatment.
- Perhaps as a result, the United States has reserved to itself the right to address international legal disputes over intellectual property in a unilateral fashion. The Trade Act of 1974, as amended, includes a provision, Special Section 301 of the Act which authorizes sanctions against foreign countries in violation of trade agreements or even, absent such violations, when they unfairly restrict our foreign trade. Amendments in 1988 produced so-called “Super 301,” which enhances these penalties and also includes the creation of various watch and priority lists and, ultimately, trade sanctions. What is most surprising is that even when a state is in full compliance with international agreements to which we adhere—such as TRIPS, for instance—the United States reserves, under section 301 of the Trade Act, the right to impose penalties upon countries that, in its view, do not provide “adequate and effective” intellectual property protection. There is some doubt whether the application...in
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Copyright Page 4 results
- Nutshell Series, In a Nutshell
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- Thomson Reuters created this publication to provide you with accurate and authoritative information concerning the subject matter covered. However, this publication was not necessarily prepared by persons licensed to practice law in a particular jurisdiction. Thomson Reuters does not render legal or other professional advice, and this publication is not a substitute for the advice of an attorney. If you require legal or other expert advice, you should seek the services of a competent attorney or other professional.
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Introduction 4 results
- A book presenting the basics of intellectual property faces two difficulties. First, intellectual property traditionally includes the three legal areas of patents, trademarks, and copyrights. However, except for tradition and the fact that the three subjects are commonly taught together in one survey course, one might question why a single book should include these three divergent subjects. What they have in common is a relatively amorphous character and a highly abstract concept of property. Only two of them, patent and copyright, share a common constitutional source. That brings up the second difficulty. The “property” of intellectual property is not the concrete form that characterizes the area of real property, for instance. It has been said, with respect to tort law, and the supposed ease with which students grasp its basics, that anyone can recognize a punch in the nose. Unlike a punch in the nose, however, the force of intellectual property is more like that of the invisible...
- Two considerations, however, make our task easier. First, the areas of patent, trademark, and copyright, are substantially statutory. Although that means that the law cannot be understood without occasional reference to the statute, it also means that, with the statute, at least some “black letter” law is immediately available. With the recent explosion of intellectual property as a mainstay of national and international trade has come a concomitant explosion of statutory changes. This presents a challenge to students and practitioners to stay up-to-date. Second, although intellectual property is relatively abstract, that is not to say that it is unfamiliar.
- Trademark, for instance, is hopefully even more commonplace than a punch in the nose. We all have seen Xerox machines and the ads that manufacturer places periodically to reinforce the strength of its mark. We have used aspirin, which once was a trademark but is no longer. Likewise, although most people have not seen a patent document, we all have seen, used, and benefitted from patented items, processes, combinations, and the like. We have seen and used copyrighted materials, including this book, and enjoyed many of them. Without patented and copyrighted items, our lives would be quite different. The richness they bring to us is one of the justifications for these protective legal concepts (although one always should note that copyright was not necessary to inspire Shakespeare to
- Finally, a basic book in any area cannot pretend to be the last word. As is true of all legal subjects, the field of intellectual property is hopelessly entangled with other legal areas, such as torts and property. It is inextricably bound up with antitrust and government regulation. It also is affected by concepts of federalism and the conflict created by simultaneous state and federal regulation of the same area. Although the basics are necessary for a good beginning, their mastery does not imply that the task is finished.
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Chapter 27. Copyright Laws and the Intersection of State and Federal Regulation 28 results (showing 5 best matches)
- Many state common law doctrines function in a way that is comparable to federal copyright in protecting interests and subject matter similar to those governed by the federal copyright laws. These state doctrines are described in a variety of ways. They can be included under the rubrics of unfair competition, unfair trade practices, misappropriation, and trade secrets. Some of them can be called moral rights, see § 27.4, infra. They relate to the law of intellectual property to the extent that they grant remedies for interferences with intangible property rights. The common law torts of defamation and invasion of privacy also affect and interact with interests related to copyright protection. They will not be extensively discussed in this volume (see McManis,
- Moral rights refers to those inherent rights of authorship recognized in many other countries, that exist in individuals who create intellectual works separate and apart from the property rights created by copyright law. These rights allow authors to object to a use or distortion of their works, even if they no longer own or even never owned, the copyright, if it would injure their reputation or honor. Issues such as film colorization, see 2 U.S.C.A. § 178, defacement, or removal of artistic works, ., 847 F.2d 1045 (2nd Cir.1988), and selective distortion or commercialization of a work, ., 538 F.2d 14 (2nd Cir.1976), commonly implicate moral rights. Other elements of moral rights include the right to be identified as the author of a work—the “paternity” or “maternity” right—and the right to recapture or suppress the work. Note that in all those instances, the person claiming the moral right typically no longer owns the work itself or the copyright. The claim is thus based on a...
- The tort of passing off is characterized by some kind of fraudulent conduct and, unlike copyright, focuses primarily on the defendant’s intent. It bears more resemblance to trademark than to copyright protection because its essence is that the defendant is attempting to sell its goods under the pretense that they are plaintiff’s—passing them off as someone else’s. To the extent, however, that the remedy sought is to forbid the defendant from selling a work that resembles the plaintiff’s—that is, to forbid defendant from deceptively imitating the works of the plaintiff—the similarity to copyright protection is obvious. In order to avoid federal preemption, the state remedy must turn on some kind of deceptive conduct.
- The clearest case of preemption is common law copyright. Any state cause of action securing to an author an exclusive right to copy a tangible expression clearly interferes with federal regulation and is preempted. In this sense, section 301 is what Congress termed the “bedrock” provision of the Copyright Act; it had as a primary goal the destruction of common law copyright protection.
- Preemption is the doctrine recognizing that, because of the Constitution’s Supremacy Clause, federal copyright protection is superior to any and all other state remedies dealing with the area and that federal law therefore always must be, in the end, the controlling principle. A corollary of this principle, which is far more vague and uncertain, is that to the extent federal copyright law does control matters with respect to which it has potential power, there may be an implied federal intent to leave that area free from both federal and state regulation. Any state law that attempts to control such an area may be held preempted by the federal legislation. Thus, state attempts to control matters already by the copyright law potentially are preempted and invalid. Likewise, state attempts to regulate matters that the copyright law could regulate but have been left by federal legislation similarly are potentially preempted and also invalid. The 1976 Act contains an explicit section...
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Chapter 19. Foundations of Copyright Protection 25 results (showing 5 best matches)
- The basic concept of copyright is . The parallel in patent law are the concepts of novelty, nonobviousness, and utility, and, in trademark, distinctiveness. An invention, to be patentable, must be new or novel; it cannot have been invented previously by another. A copyrighted work, however, need not be novel. The author need not demonstrate that he was the first to create the particular expression embodied in his work. Since his work need not be novel, all that is needed to obtain copyright is originality—that the work have with him; the author cannot have copied it from another. 17 U.S.C.A. § 102(a). Therefore the author’s ideas and themes may have appeared in earlier works. Indeed much of the expression may have been produced before, but copyright will be available to the second author if his is a work of independent creation.
- The development of copyright law in England was shaped by the efforts of mercantile interests to obtain monopoly control of the publishing industry—similar to those of the guilds that were instrumental in shaping patent and trademark law. The history of copyright law is largely the story of judicial and statutory reactions to the resulting monopolistic restraints. In addition to the interest of publishers in having a monopoly over the production of books similar to the interest of medieval guilds in having control over the production of new technology, the development of copyright law also was uniquely influenced by those with an interest in controlling the of new works of authorship. The most significant interest of this character was the church, which sought to restrict the dissemination of anticlerical and reformation publications. ..., however, has left few important legacies; by far, the most enduring influence on the development of copyright law was that of the publishers...
- Copyright, at least in Anglo–American jurisprudence, never has developed a procedure of administrative examination before registration as is true of both patent and trademark law. Instead, copyright has developed the doctrine that expressive works are entitled to protection without examination—and, in fact, largely without registration. At common law, prepublication protection would have been impossible, of course, if prior examination were required since one of the purposes of protection was the author’s privacy. Registration is significant to modern American copyright law but the basic doctrine of this country’s copyright law is to protect authors without requiring it.
- The historical distinction between the rights of an author to his unpublished creation and the rights of the publisher—whether an independent printer, bookbinder, or the author himself—to exclusive control of the exploitation of the copying enterprise found a sturdy and long-lived home in the American copyright statutes and the body of common law rights that developed around them. The distinction produced two separate concepts of copyright. The
- Although Congress need not exercise the constitutional power at all, if it does, it must do so within the wording of the clause. Perpetual rights probably would be unconstitutional, therefore, because the grant in Article I, section 8 is only for “limited times.” But exactly how to implement that term, and perhaps the entire constitutional clause itself, seems to be within a virtually unassailable Congressional discretion. , 132 S.Ct. 873 (2012). Also, the subject matter of copyright protection is somewhat loosely circumscribed by the use of the words “Authors” and “Writings.” As will be seen, the word “writings” has been very broadly construed, so as to include even such things as sculpture, videotape, notated or recorded choreography, and computer programs. On the other hand, the Supreme Court has invalidated an attempt to enact trademark legislation under this clause, see § 11.1, supra, because trademarks are not writings.
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Chapter 15. Trademark Practice 28 results (showing 5 best matches)
- Use in commerce was and is required similarly by section 1051, which allows registration of a trademark “used in commerce.” This requirement exists because there is no trademark clause in the Constitution. In fact, early attempts to regulate trademarks federally under the Patent and Copyright Clause were rejected as unconstitutional. (1879). The Lanham Act gains constitutional legitimacy because it is founded upon the Commerce Clause, under which federal regulation of commerce is legitimate if, and only if, the regulated activities are interstate. Thus, unless an owner has used its mark in interstate commerce, it cannot comply with the requirement in section 1051 that the mark be “used in commerce.” This, then, is what is called the use-in-commerce requirement.
- The “in connection with” requirement, set out in sections 1051(a)(1) and 1051(b)(1)(A), means that registration can be obtained only with reference to whatever goods or services actually were used in commerce. The sale or transport of apples in commerce under the mark “Sweet–Test,” for instance, will not allow the applicant to claim registration for that mark for later shipments of peaches or pears. In addition, the mark actually must be used as a mark and not in some ineligible sense. For instance, the sale of “Sweet–Test” apples in interstate commerce with the promise that any bruised apples could be returned under a “bruise-free” guarantee would not qualify the term “bruise-free” as the trademark of the goods sold. The term “bruise-free” would not be in connection with the sale of the goods, but in the marketing of the guarantee. In one case, it was held that the term “Syncom,” which identified a computer that was used by the trademark owner to test speakers but that was not...
- Use in trade was required by section 1051, prior to the TLRA, which allowed registration to the “owner” of a trademark. This immediately raises common law issues because ownership of a trademark, at common law, requires the proprietor to use the device in trade. Thus, unless an owner actually had established a state common law right of ownership in the mark, he could not comply with the requirement in section 1051 that he be an “owner.” This, then, is what is called the use in trade requirement.
- The increasing liberality with which courts treated the requirement of a use in commerce was more than the simple lifting of technical statutory requirements and, in fact, represented a profound alteration in the nature of the Lanham Act. Because of the fundamental distinction between use in commerce and use in trade, the tendency of courts to liberalize both of these requirements, without distinguishing between the two, had the effect of transforming the law of federal trademarks from that based upon the traditional common law rights flowing from actual use of the mark in trade to that of the European doctrine, which allows business persons to claim rights in marks simply by establishing an intent to use the mark. Although it may not always be obvious, this transformation is immediately apparent, however, through an understanding of that fundamental distinction.
- As an example, in ., 495 F.2d 1265 (2nd Cir.1974), Patou owned the registration to the mark SNOB for perfume that Patou “never made a serious effort to merchandise” and sold in only minimal amounts. In fact, the court interestingly found that the real purpose of registration was to reserve the name for future use as part of a “trademark maintenance program.” Although this token use might be sufficient to gain registration, it was insufficient to establish a lasting claim to ownership. “Adoption and a single use may be sufficient to entitle the user to register the mark, … but more is required to sustain the mark against a charge of nonusage.”
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Chapter 26. Remedies 17 results (showing 5 best matches)
- Section 505 of the Copyright Act provides that costs shall be awarded in any civil infringement action except one against the government. In addition, the court has discretion to award “reasonable” attorneys’ fees to the prevailing party. This differs from patent and trademark law, which provides for attorneys’ fees only in special, “exceptional,” cases. On the other hand, it is not clear from some older copyright infringement cases that the courts’ views of what are “reasonable” amounts are realistic, perhaps due to the fact that these fees are awarded more often than in patent or trademark cases. See ., 257 F.Supp. 729 (S.D.N.Y.1966) (only $15,000 for 2,000 hours). However, since the federal courts have been developing experience with attorneys’ fees in recent years under numerous other statutes and in class actions, this is less of a problem today. In any event, the Supreme Court has indicated that attorneys’ fees are to be awarded on a strictly party-neutral basis.
- The classic remedy for copyright infringement is equitable relief. This includes both preliminary and permanent injunctive relief. Although in theory the standards applicable to copyright cases with respect to preliminary relief are no different than for other substantive areas of the law, it has been observed that preliminary relief is far more likely than in other contexts, especially when contrasted with patent law. As a matter of evidentiary proof this can be explained by the fact that proof of a valid copyright and of infringement is easier to develop at the pretrial stage than it is to prove comparable elements of other substantive violations of law, such as patent infringement. Perhaps more importantly, copyright infringers, like trademark infringers, but unlike patent infringers, are more likely to be transient entities who, absent injunctive relief, are apt to disappear before judgment is rendered or can be collected.
- The states are immune from suit for copyright infringement and, along the same lines that such immunity exists in patent and trademark law, §§ 9.5, 10.1, 17.8, supra, it cannot be abrogated pursuant to the Fourteenth Amendment Due Process Clause absent some pattern of state infringement. The attempt by Congress to abrogate the immunity, 17 U.S.C.A. § 511, appears ineffective.
- The criminal provisions do provide broader remedies with respect to seizure, forfeiture, and destruction making these procedures mandatory upon conviction rather than discretionary and generally giving the court broad powers with respect to the treatment of infringements as contraband. 17 U.S.C.A. § 506(b). Finally, the current Act also criminalizes the fraudulent use of copyright notices, the fraudulent removal of copyright notices, and the fraudulent representation of material facts with respect to copyright registration applications. 17 U.S.C.A. § 506(c)(d)(e).
- Copyright infringement if committed willfully is a federal crime punishable by imprisonment for one to ten years, depending upon the particular infringement and whether it is a first offense, and a fine determined by the Federal Sentencing Guidelines. Prosecutions under this and predecessor statutes have been infrequent, except for some recent record, DVD, and tape piracy cases. Nevertheless, it does present a possible deterrent to copyright infringement. Although only willful infringement is subject to criminal penalties and must generally be accompanied by “purposes of commercial advantage or private financial gain,” any infringements with a total retail value of $1,000 committed within a six-month period are conclusively commercial in nature. 17 U.S.C.A. § 506(a).
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Chapter 25. Formal Requirements 13 results (showing 5 best matches)
- Unlike patent protection, and markedly different from trademark protection, copyright protection basically is self-executing. An author automatically is protected by federal copyright when he fixes the work in a tangible medium. 17 U.S.C.A. § 102(a). There is no need to obtain approval, conduct a prior art search, or secure registration by any agency. The ease in acquiring protection is related to the nature of copyright: since protection is only against not against independent coincidental creation, there is no need for any governmental decision about the propriety of protection, as there is for patent protection, which forbids the duplication of the product or process whether done independently or by copying. Since other authors are free to create whatever they wish as long as they do not copy a protected work, and even to duplicate a protected one so long as they do it independently without copying, there is no need to search prior art to insure that the work has any particular...a
- In a very real sense, both registration and deposit are optional. Copyright protection will exist despite lack of registration and failure to deposit cannot destroy a subsisting copyright. 17 U.S.C.A. § 408(a). However, registration and deposit have significant legal consequences, the most notable of which is that an owner of a “United States work” cannot sue for copyright infringement until he has registered the copyright. 17 U.S.C.A. § 411(a). Importantly, however, as long as registration is accomplished before litigation, there is nothing wrong in most cases with registering a copyright only after discovering an infringement and deciding to sue. Nevertheless, it is a defense to an infringement suit that plaintiff has failed to register a United States work prior to instituting the action. However, the Supreme Court has held that registration is not a jurisdictional requirement, so that just because some members of a class have not registered their works does not deprive a court...
- There are two deposit requirements in the Copyright Act, neither of which imposes severe requirements or even has significant legal effects upon copyright ownership. There is a general deposit requirement for all copyrighted works that mandates deposit of two “best editions” within three months of publication but which explicitly specifies that deposit is not a condition of copyright protection. 17 U.S.C.A. § 407(a). Failure to deposit a copy, but only after a demand for deposit by the Copyright Office, creates a potential liability of no more than $250, 17 U.S.C.A. § 407(d)(1), although a potential $2500 fine exists for those who willfully and repeatedly fail to make deposit after demand is made. 17 U.S.C.A. § 407(d)(3). Thus, at least until demand is made, the requirement of section 407 is in all respects an optional one.
- The requirement of registration as a prerequisite to an infringement suit raises two important problems. First, it is possible that registration may be denied by the Copyright Office. In fact, the question of whether an infringement has occurred may turn upon the very same issue that led the Copyright Office to deny copyrightability—for instance, if it were a work based upon a new technology of questionable copyright subject matter. To require registration in such a circumstance prior to suit would pose something in the nature of a Catch–22 situation: one could not sue for infringement of a work whose copyright status was questionable because registration is denied on that very ground. Under earlier acts, the remedy was to sue the Copyright Office to compel registration. ., 260 F.2d 637 (2nd Cir.1958). Under section 411 of the 1976 Act, one can sue an infringer despite refusal of the Copyright Office to register, by giving notice to the Office that the suit has been instituted.
- Of course, when notice still is relevant—to preclude the defense of innocent infringement—it must comply with the terms of the Copyright Act. The Act requires that, to constitute proper notice, upon any publicly distributed copy of a work of authorship, a notice must be affixed containing the following information: (1) the emblem C, the letter C in a circle, the word “Copyright,” the abbreviation, “Copr.,” and (2) the date of first publication (except for greeting cards, postcards, stationery, jewelry, dolls, toys, or useful articles), and (3) the name of the copyright owner or a recognizable abbreviation or designation thereof. 17 U.S.C.A. § 401(b).
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Chapter 22. Infringement 24 results (showing 5 best matches)
- On the other hand, the simple title of a literary property is not subject to copyright protection—although it may be more than adequately protected under common law theories of unfair competition, misappropriation, or possibly even trademark law. For instance, in ., 70 F.2d 310 (2nd Cir.1934), the plaintiff sought to enjoin the defendant’s use of the title “Gold Diggers of Paris” as the title of a movie because the plaintiff owned the rights in a script entitled “The Gold Diggers.” The court denied the plaintiffs relief under copyright law, saying: “A copyright of a play does not carry with it the exclusive right to the use of the title.” However, it granted an injunction upon common law trademark grounds, since the title had acquired secondary meaning, the public having come to identify it with the plaintiff’s property. The possibility of public deception justified the relief.
- The concept of innocent infringement is equally applicable to the rights of reproduction, derivation, distribution, performance, and display. Thus, in a situation similar to it is possible that an author might create a work that is unconsciously based on a prior work and therefore impermissibly infringes the original copyright owner’s exclusive right to prepare derivative works.
- Infringement—a word that is not defined anywhere in the Copyright Act—occurs whenever somebody exercises any of the rights reserved exclusively for the copyright owner without authorization. 17 U.S.C.A. § 501(a). Infringement need not be intentional. Liability for innocent infringement is well-established. ., 201 F.Supp. 301 (D.Haw.1961). There even can be unconscious infringement in the sense that an author, in creating what he conceives to be his own original product, unintentionally and thus in a sense unconsciously, “borrows” the work of another. For instance, in ., 420 F.Supp. 177 (S.D.N.Y.1976), the court held that George Harrison of the “Beatles” singing group, had infringed a song previously recorded by the “Chiffons.” The plagiarism, even though unconscious, was actionable. It seems Harrison had access to the earlier work (meaning he had heard it performed) and, because of the almost exact similarity between Harrison’s work, “My Sweet Lord,” and the earlier composition, “He...
- Just as the physical act of copying is the paradigmatic act of infringement, literary infringement seems to represent the paradigmatic subject matter of infringement. This is at least historically understandable, see § 19.1, supra, since in its beginnings copyright infringement involved nothing but literary works. With respect to the elements of an infringement action, literary infringement does not differ from any other copyright subject matter: illegitimate copying must be proven, usually by demonstrating access and substantial similarity. The application of the substantial-similarity test to literary works poses difficulties because so many writing elements inevitably are repeated from one work to the next. Since some elements will be common to numerous works, the courts have struggled to develop ways of distinguishing those aspects that can . The greater detail that individual authors create, and which the courts are willing to protect, are their ...fact that it is a series...
- A showing that the allegedly “borrowed” element exists in the public domain tends to support a defendant’s contention that he independently or with the help of other works than the plaintiff’s, created the work without infringing the plaintiff’s work. supra. Sometimes, in fact, the defendant explicitly claims to have taken from the public domain—as when a composer claimed to have borrowed fourteen notes of a Dvorak sixteen note sequence, supra. In supra, the defendant claimed that the similarities between his work and the plaintiff’s also were present to a certain extent in the public domain. The court found that the public domain did not include the precise figure found in both the plaintiff’s and defendant’s work but it did find similarities between the plaintiff’s work and the public domain. The court then articulated two important principles with respect to public domain matter and musical copyright: the existence of a similar public domain work is no defense to a claim of...
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Chapter 13. Dilution and the Expansion of Trademark Doctrine 28 results (showing 5 best matches)
- The development of a property right in the good will embodied in a trademark is the basis of modern expanded trademark rights and antidilution concepts. The rights in a trademark at common law were only those meant to prohibit confusion with respect to the origin of products. Therefore, those rights were very limited and were highly evanescent, since they could exist only with respect to the sale of particular products. The bar against ownership of trademark rights
- At common law, a trademark was intended primarily to distinguish between different sources so that the consumer would not be confused between similar products. In a market that has evolved to the point at which the consumer probably neither knows nor cares exactly who the producer is, the trademark serves a substantially different function. In a market composed of anonymous sources, trademarks are treated not so much as identifying the particular source, but rather as indicating a common (though anonymous) source of ownership such as a product line. The trademark tends to trade on consumer loyalty instead of producer identity. It attributes to the product the image upon which the trademark is based. The reaction of the consumer is central. The consumer may prefer a certain product not because the trademark has identified a source whom the consumer values, but because the trademark itself has a certain value.
- Thus, as courts sanctioned good will as a protectible feature of trademarks, the property interest in a trademark expanded. As that interest expanded, the bar against ownership
- ., 818 F.2d 254 (2nd Cir.1987). This is based on the belief that the owner of a mark should not have to determine whether its reputation is being hindered or benefitted. In this view, a mark is like someone’s face and nobody has a right to appropriate the use of a mark any more than they have the right to use that person’s likeness without permission. The rationale behind these cases is quite ambiguous. One prophylactic theory is that all uses should be prohibited that might be detrimental. Another is that it is difficult to prove inferiority or superiority, and it should not be the owner’s task to establish quality. Thus, the scope of trademark protection has exceeded the common law limits of simple source confusion and, much like rights in one’s likeness, provide protection under a theory of misappropriation, thereby converting trademarks into property rights
- For instance, if consumers purchase shirts with alligators on them merely to have the alligator, it does not matter if a competitor markets an alligator shirt with a conspicuous disclaimer that they are only imitations. In this case, the owner has acquired a right in the mark itself, because the prohibition of the infringement does not prevent confusion so much as it prevents the marketing of similar marks. Confusion, if any, goes only to the mark and not to the product. In a sense, then, the requirement of confusion becomes collapsed into the element of similarity of mark. Such an expanded trademark theory elevates the trademark to a property interest. See supra. Once the marks are confusingly similar and the mark is the basis of commerce, relief is awarded under this doctrine to prevent dilution but not confusion.
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Chapter 24. Ownership 42 results (showing 5 best matches)
- In the case of anonymous and pseudonymous works, the same ninety-five to 120 year scheme applies. 17 U.S.C.A. § 302(c). However, an anonymous or pseudonymous work can be “opted out” of this scheme if, anytime during the ninety-five to 120 year period, a person with an interest in the copyright reveals to the Copyright Office the true identity of at least one of the real authors of the work. In that event, the copyright term reverts to the natural timetable with respect to the author or authors revealed and expires seventy years after death. Thus, if a work were first published and created by a pseudonymous author in 1980 who died in 1981 the copyright would expire at the earliest in 2075. If however, somebody who had an “interest” in the copyright were to reveal the identity of the author in 2051, the work might then lose copyright and enter the public domain. If that person were held not to have an interest, the copyright owner at least theoretically could enjoy copyright...
- Consequently, the traditional rule forbidding accountings between coowners of commonly owned property is modified in the copyright context. Coowners of other kinds of property are permitted to use the property without accounting because it is assumed that all coowners can use the property in one way or another. But intellectual property is not so amenable to multiple uses. For example, the sale of rights to a song or dramatic composition immediately forecloses coauthors from doing the same. The market, in that sense, is more limited than it is for other forms of property, being less elastic and less amenable to multiple uses, either in space or time. Thus, copyright law has allowed the use of equitable relief, including demands for an accounting, which would be prohibited in other areas of property law.
- Section 201 of the Copyright Act delineates the respective rights of the compiler and of the contributors. The compiler has the right to publish the collective work and owns the copyright in that work; he can revise the collective work and also can publish the contributions in a later collective work if it is part of the same series. However, a computer database of contributions to more than one collective, originally print, work constitutes a new work, not a later collective work belonging to the same series, and therefore infringes the individual authors’ rights to their contributions. This is so even though the database “tags” each contribution so that the original arrangement remains evident online. , 533 U.S. 483 (2001). A contributor owns the copyright in the contribution subject to the rights of the compiler, unless he otherwise has expressly transferred the ownership of it. Under section 404, the contributor will not be prejudiced by a failure of the compiler to place a...
- The particular label used to characterize multiple claims to authorship determines important legal issues. If a composer authors a musical composition in 1990 and a lyricist authors the lyrics in 2000, the characterization of their status as separate or joint authors or that one or both produced the work for hire may determine when the copyright expires, whether termination of a license of the copyright by one of them effectively will terminate the license of the entire work (or just the part individually authored by that person), and the legal duties, if any, each owes the other. If the musical composition is deemed a new work when the words and music were combined in 2000, and the authors are deemed joint, the copyright in the work will not expire until seventy years after the death of the surviving author. However, if the authors are not deemed joint, the music and lyrics are viewed as separate entities and each will fall into the public domain separately ...of the copyright...
- The duration of copyright has been consistently increased by Congress since the first copyright statute in 1790. There appears to be little if any constitutional limit upon Congress’ power to determine the length of the copyright term. “Calibrating rational economic incentives … is a task primarily for Congress, not the courts.” , 537 U.S. 186 (2003). Under the 1909 Act, copyright ownership vested in the author for an initial period of twenty-eight years. During the final year of copyright protection, the author had the right to renew the term for another twenty-eight years. The maximum period during which an author could exclude others from using the work therefore was fifty-six years. Under the present Act, copyright extends for the lifetime of the author (if the author is an identified natural person and did not produce the work for hire) plus seventy years. 17 U.S.C.A. § 302(a). This is subject to the modification that if the work is joint, the terminal date is seventy years...
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Chapter 17. Infringement 41 results (showing 5 best matches)
- Parody has been held a legitimate form of trademark fair use, and, in fact, the subject is informed by the Supreme Court’s treatment of copyright parody in ., 510 U.S. 569 (1994). See § 23.7, infra. But it is not fair use when a claimed parody is used to promote competitive goods or services.
- So called “gray market” goods bear valid trademarks, are imported into the United States, and compete with domestically manufactured or marketed goods bearing the same, equally valid, trademark. The term “gray market” is used to imply that something is wrong with them or their marketing, although their trademark status is often perfectly legitimate, which is why they are certainly not “black market” goods. Domestic parties complain that these lower-priced “parallel imports,” for one reason or another, compete unfairly with their own products. However, it is clear that trademark law does not give a party the right to exclude the sale of most gray market goods. The fact that the gray market trademark was authorized by a legitimate trademark owner is enough to remove any claim of trademark infringement. The dispute over parallel imports usually is not one of trademark law, but one of international trade law sometimes bordering on protectionism. It requires, at least, particular...
- Since trademark law is equitable, it utilizes the traditional equitable defenses with the added element of a presumption favoring the registrant. Whereas in most equitable cases the court considers the public interest generally, the scale is usually tipped considerably in trademark cases in favor of the registrant, who not only has the statutory license to use the mark but comes equipped with the presumption of validity that registration confers. Nevertheless, the equitable doctrines of laches, estoppel, and unclean hands are all applied in appropriate trademark infringement cases.
- Fair use allows fair comment that incidentally involves use of the mark for a purpose other than that normally made of a trademark. Collateral use allows the use of goods that bear a preexisting mark, resembling the repair-reconstruction doctrine in patents. See § 8.6, supra. The parallel between collateral use and repair-reconstruction is striking in some cases. When a party uses a trademarked item as a component of a more complex product, the doctrine of collateral use allows the party to so identify the component by its trademarked name without fear of being liable for infringement. This is true, however, only insofar as the party does not deceive the public into thinking that the product, as sold, actually is marketed by the owner of the trademark. Thus, the reprocessor can use the trademark in a nonconspicuous way solely to identify the component, but not to misattribute the finished product to the trademark owner.
- On the other hand, there are courts that reject this kind of monopolization by which a registered owner attempts to forbid all use of the mark by any other party, whether or not in competition and irrespective of actual confusion, simply by defining the category of goods or services so broadly that it effectively prohibits the use of the mark by any other person. For instance, one court called the attempt by the owner of “Sunkist” in connection with the marketing of fruits to prohibit the use of that mark in the marketing of bread products an “unconscionable” attempt to “monopolize the food market by the monopoly of the word ‘Sunkist’ on all manner of goods sold in the usual food stores.” ., 166 F.2d 971 (7th Cir.1947). The court noted that in modern society marketing is accomplished in supermarkets and similar establishments in which many different products are sold under one roof. To call all these products “related goods” would broaden trademark rights so wide as to destroy the...
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Chapter 20. The Subject Matter of Copyright 53 results (showing 5 best matches)
- The essence of copyright is originality, which implies that the copyright owner or claimant originated the work. By contrast to a patent, however, a work of originality need not be novel. An author can claim copyright in a work as long as he created it himself, even if a thousand people created it before him. Originality only implies that the copyright claimant did not copy from someone else. From that definition of originality comes the common but true example that an author could gain a copyright on the
- The constitutional limits and powers of the Copyright Clause are not necessarily coextensive with the powers and limits defined by the copyright statutes. The Constitution first defines the outer limit of protectability but Congress must expressly grant protection. Under the 1976 Copyright Act, the statute appears coextensive with the constitutional power, since although it lists, as previous statutes did, specific forms of works subject to copyright, it also states that copyright protection “subsists … in original works of authorship fixed in any tangible medium of expression, ….” 17 U.S.C.A. § 102(a) (emphasis supplied). In addition, the specifically listed categories are introduced by the phrase that copyright is to “include” those categories, thus demonstrating that copyright is not to be limited merely to the specifically listed categories. As nearly as it could, Congress attempted in the 1976 Act to extend copyright protection to all major categories of works cognizable under...
- Recognizing this untenable situation, Congress finally granted record companies a copyright in their phonorecords in 1972 and empowered them to bring infringement actions against pirates. Under the 1976 Act, sound recordings and phonorecords are not treated differently from other mediums of expression with respect to being copyrightable subject matter. 17 U.S.C.A. § 102(a). Since a phonorecord is a fixation in tangible form of the underlying musical composition, composers have copyright protection under the current Act with respect to sound recordings and phonorecords. Since phonorecords also are granted copyright protection as independent works, producers likewise have some, although severely limited, copyright protection.
- The boundaries of copyright thus are not defined by the statutorily listed categories of works in section 102. They are defined instead by the broader concepts of copyright articulated in the case law. One of the most basic of those concepts is the distinction between utilitarian and nonutilitarian objects. Purely utilitarian objects are not subject to copyright protection. However, to the extent a work is nonutilitarian or with respect to those separable portions of a work that are nonutilitarian, there is no reason to deny copyright protection, assuming it is statutorily authorized. For instance, in , 347 U.S. 201 (1954), the Supreme Court allowed the copyright of lamp bases, in the form of statuettes, despite the fact that the lamp itself was functional and clearly utilitarian.
- Under the new Act, the analog to the constitutional term “writings” is “works of authorship.” One issue is whether anything can qualify as a work of authorship beyond the notion of a writing. Because of the broad construction given the term “writing,” however, as “any physical rendering of the fruits of creative, intellectual or aesthetic labor,” , 412 U.S. 546 (1973), and because of the equally broad definition of originality, it is unlikely that the constitutional clause will be a realistic barrier to any tangible item that an author may claim to have originated. Congress has explicitly denied that the language “works of authorship” was intended to be coextensive with the constitutional term “writings,” but it is unlikely that there are substantial areas in which copyright coverage is doubtful merely because of the wording of the statute. To avoid taking a firm position with respect to new technologies, Congress explicitly limited the term “original works of authorship” to... ...in...
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Chapter 21. Exclusive Rights 31 results (showing 5 best matches)
- The first-sale doctrine assures the copyright owner that, until she parts with ownership, she has the right to prohibit all others from distributing the work. On the other hand, once a sale has occurred, the first-sale doctrine allows the new owner to treat the object as his own. Thus, although a copyright owner might transfer ownership to a buyer and impose certain conditions, it is not a violation of copyright for the buyer to sell the work to another, even if the copyright owner had conditioned the sale upon a promise of no resales. Copyright law and the distribution right only secure to the copyright owner the right to control the first transfer of ownership. A statutory exception to the first-sale doctrine, enacted at the behest of the computer and record industries, forbids the commercial rental, lease, or lending, or anything “in the nature of rental, lease, or lending,” of phonorecords and computer programs. 17 U.S.C.A. § 109(b)(1).
- The Intellectual Property and Communications Omnibus Reform Act of 1999 adopted further provisions respecting advanced technologies, many of which establish rights far broader than those of traditional copyright. These provisions make it unlawful to circumvent protection measures that control access to copyrighted works. Unlike traditional copyright, the 1999 law does not directly protect the expressions themselves, but, instead, the “technological measures” employed to prevent the expressions from being copied—forbidding descrambling, decrypting, or otherwise circumventing those measures. 17 U.S.C.A. §§ 1201 et seq. One collateral, perhaps unintended, effect of this legislation is that the measures—usually computer programs—that are meant to protect underlying works become, themselves, works that receive even greater protection than the underlying works receive from traditional copyright. The “technological measure” is protected from being deciphered, even though any other work...
- Thus, the owner of a copy of a painting, a photograph, a microfiche or even a computerized memory of copyrighted materials might publicly display the work by showing the painting or photograph to others or by making the microfiche or computer terminal available to the public at one location and be immunized in doing so by section 109(b). But, in order to protect the authors of copyrighted works from having their products unfairly exploited by developing and future communications technology, Congress has granted the copyright owner the exclusive right to display the copy in a way that would make it available in either multiple images or to persons outside the actual physical location of the copy. Thus, any digital form of network or Internet transmission would constitute a public display that violates the copyright owner’s exclusive display right and that is not immunized by the more narrow privilege granted by section 109(b) limited strictly to “no more than one image at a time, to...
- Largely due to the highly developed and profitable communications and entertainment industries and technologies of the twentieth century, the right of the copyright owner to exclude all others from publicly performing his work has become one of the most important rights secured by the copyright laws. Because large segments of our population now receive copyrighted information through mass media, electronic motion pictures, television tapes and discs, radio broadcasts, and a host of other technologies by which information is delivered the consumer—or, in other words, publicly —the right of public performance has become extremely valuable to a copyright proprietor.
- A copyright owner has the right to exclude all others from creating works based on his own. This right safeguards a copyright owner from what otherwise might be an unduly narrow interpretation of the reproduction right, which would permit another to vary elements of the work sufficiently or change the medium of presentation and then assert that it is not actually a copy. In addition to safeguarding the reproduction right, however, the Act’s grant of the exclusive right to prepare derivative works has enormous independent significance. 17 U.S.C.A. § 106(2).
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Chapter 16. Subject Matter 39 results (showing 5 best matches)
- Service marks are essentially trademarks that are used in the sale of services instead of goods. 15 U.S.C.A. § 1127. Otherwise, trademarks and service marks are in all respects identical. There is some question whether a service mark is registrable as such when the service is primarily promoting the sale of specific goods. For instance, the use of “Weathervane” as a mark indicating the service of promoting sporting events was questioned when the owner also sold “Weathervane” clothing and it seemed clear that sponsorship of the sporting events was intended to promote the sale of the goods. It was decided, however, that as long as the service is a bona fide one and the effect on the sale of goods is only incidental, there is no reason to refuse registration. A correlative holding is that an owner may own a mark as both a service mark and a trademark if it is used in both ways.
- The statute also prohibits “palming off” by which a competitor deceives buyers into believing that its product or service is that of another. In “palming off,” the injured party may be the purchaser if the purchased goods are inferior to the goods that they were represented to be. In addition, the competitor as to whose goods the bogus products were misdescribed has a remedy for assumed loss of business. Although section 43(a) is not simply “palming off,” especially since the TLRA expanded the action to include not only false statements about the plaintiff’s products or services but also competing ones, it still is true that “palming off” is one of its paradigms. However, to prevent collision between trademark and copyright law, it has been held that a section 43(a) action cannot be based on a misrepresentation of authorship of a noncopyrighted work, and that the “origin” of goods within the meaning of 43(a) does not extend to the origin of ideas contained within those goods.
- Therefore, if an owner has both certification and trademarks, they cannot be identical. To the extent they are similar, they must be distinguishable so that consumers are not deceived into believing that the products sold under the trademark are somehow of the quality that the certification indicates. For example, the mark “Good Housekeeping” serves to indicate the origin of a particular magazine. The mark “Good Housekeeping Seal of Approval” indicates that particular products or services meet the standards set by the owners of that mark (and of the magazine). The marks must be distinguishable, however, to prevent the magazine from appearing to meet the certification standards and thus achieve an unfair advantage over other magazines. Since trademarks indicate origin and certification marks indicate a guarantee of a certain characteristic, a common owner must be careful to ensure that the marks are distinguishable.
- A certification mark is used in connection with goods or services to indicate that those products or services originated in a particular region, or that they are of a particular nature, quality, or characteristic, or that they were produced by a member of a particular organization, usually a labor union. 15 U.S.C.A. § 1127. In other words, the mark is used to certify a characteristic of the goods or services that is significant to consumers and about which it is important to avoid confusion. Certification marks share a distinctive feature with collective marks in that the owner of the mark may not be the producer or provider of the services or products with which the mark is used. This, of course, is radically different from trademarks and service marks with respect to which any use of the mark by one other than the owner is severely restricted. See § 14.5, supra. In fact, engaging in actual production or marketing of the goods or services is expressly grounds for cancellation of a...A
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Chapter 12. Distinctiveness 58 results (showing 5 best matches)
- The distinctiveness requirement is roughly analogous to the requirement of novelty for patent rights and to the requirement of originality for copyright. Without distinctiveness, either based on the inherent nature of the mark or developed by the owner through marketing, trademark rights fail.
- Naturally, a trademark must be distinctive if it is to serve the function of identifying the origin of goods and thereby avoid confusion, deception, or mistake. If a trademark is to protect purchasers from confusion over what they are purchasing, then the trademark somehow must be recognizable, identifiable, and different from other marks.
- Under the Lanham Act the prior use does not have to be as a trademark. The language of the Act simply states that a previously used “mark” cannot be appropriated by an applicant. Thus, it has been held that a mark used by an organization, but not in a trademark sense, is still the kind of mark that would bar later appropriation by another for use in trade. In , 515 F.2d 1128 (Cust. & Pat.App.1975), the prior user was a science research institute that did not market goods under a trademark at all, but did conduct scientific research in connection with the mark in question. This prior use of a mark, despite the lack of trademark use, was sufficient to bar later use in a confusingly similar environment by the applicant.
- The Lanham Act provides that a nondistinctive mark cannot be placed on the principal register of trademarks. And, if a mark is not on the principal register, it has no real protection under the federal trademark statute. Many marks that are ineligible for protection within the United States however, may be eligible in other countries because of differences in trademark statutes. To have protection in many other countries, treaties often provide that a foreign mark must be registered in its home country. Therefore, the Lanham Act provides for registration of marks that are of distinctiveness, even though they are not, at the time, actually distinctive in the United States.
- In re Riverbank Canning Co
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Index 65 results (showing 5 best matches)
Chapter 9. Remedies 6 results (showing 5 best matches)
- States are protected from suit for patent infringement by Eleventh Amendment sovereign immunity as they are from trademark and copyright suits. See §§ 17.8, 26.6, infra. This is so even if Congress expressly attempts to abrogate such state immunity, which it has done in the patent statute. 35 U.S.C. §§ 271(h), 296. Although patents are property under the Fourteenth Amendment and thus are protected against state deprivation without due process, absent a “pattern of patent infringement,” states enjoy immunity against patent suits.
- Unlike the Lanham Act, which governs trademarks, the Patent Act does not define damages in terms of profits, see § 18.3, infra. Since the prior Patent Act did include profits, there is reason to believe that the deletion of the term is meant to distinguish between damages and profits.
- The remedies for infringement under the Patent Act consist of: (1) injunctive relief, 35 U.S.C.A. § 283, (2) damages, adequate to compensate the plaintiff but in no case less than what would constitute a reasonable royalty, which damages can be trebled when appropriate, 35 U.S.C.A. § 284, (3) attorneys’ fees in exceptional cases, 35 U.S.C.A. § 285, and (4) costs, 35 U.S.C.A. § 284.
- The general principles of equity apply to injunctions under the Patent Act, including the standard equity defenses. However, there is a reluctance to grant preliminary injunctive relief since courts consider that to grant relief based on patents granted through ex parte proceedings held before overworked examiners is to carry the presumption of patent validity beyond its intended purpose. ., 443 F.2d 867 (2nd Cir.1971). In fact, the standard of “likelihood of success on the merits,” usually applicable to preliminary injunctions is radically altered in patent cases. Traditionally, a plaintiff had to demonstrate “beyond question that the patent is valid and infringed.” The Federal Circuit, however, has rejected the “beyond question” rule replacing it with a requirement of a “clear showing” that is still, of course, something beyond the traditional burden of “likelihood of success on the merits.” Once validity and infringement clearly are established, immediate irreparable harm is...
- The Patent Act authorizes damages “in no event less than a reasonable royalty for the use made of the invention by the infringer together with interest.” Even prejudgment interest normally is to be awarded without satisfying the standard common law requirements of liquidation and exceptional circumstances. ., 461 U.S. 648 (1983); 35 U.S.C.A. § 284. When there is an established royalty, there is little problem in setting a minimum amount. , 1975 WL 21408 (Ct.Cl. Trial Div.1975). Sometimes, however, royalty rates may be depressed because of the infringement itself or other factors. The court has the power to treble damages whenever it is shown that the plaintiff was damaged to a greater extent than the demonstrated royalty rate or other proffered evidence.
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Chapter 23. Fair Use 47 results (showing 5 best matches)
- There are at least two additional interests relevant to fair use. First, although infringement need not be intentional and although the intent of the defendant is not determinative, the intent and motives of the defendant often are relevant. Second, a First Amendment interest often opposes the copyright monopoly. However, in ., 471 U.S. 539 (1985), the Supreme Court found no inherent conflict between copyright law and the First Amendment, especially because of the very existence of the fair use defense. In magazine had published excerpts from the memoirs of former President Ford before they were to be published in to report the important facts of the memoir without “scooping” its very language and that, furthermore, there was no expansion of fair use based on a claimed “public figure” exception to copyright. The Court also emphasized the fact that the work had not yet had its “first publication,” the significance of which apparently continues, even after the near-total replacement...
- Fair use under section 107 specifically allows for multiple copying of copyrighted works when done for classroom use under certain conditions. The exact scope of this permissible copying is not defined in the statute itself, however. Likewise, section 108 provides for a limitation on the copyright proprietor’s exclusive rights and authorizes libraries to make copies of certain works. It also implicitly recognizes the right of others, under what presumably is fair use, to make photocopies in libraries having photocopying machines and immunizes libraries from any copyright liability if certain notices are posted.
- One response to the defense is that the First Amendment creates no exception to copyright because, as a constitutional doctrine, it is opposed by an equally constitutional doctrine: the Copyright Clause. This response, however, has been dismissed by most courts and commentators as excessively simplistic for at least two reasons. First, a literal reading of the Constitution will show that since the First Amendment is an amendment to the Constitution and to the Copyright Clause itself, the amendment should control. Second, even if the Bill of Rights and the Constitution are taken as a whole, priority must be given to the specific protections contained in the Bill of Rights. To do otherwise would be to grant carte blanche under a number of general constitutional powers such as the Commerce Clause, thereby creating a risk of utterly destroying the rights granted by the Amendments.
- First Amendment claims also have been evaluated under a rule of reason. In doing so, a court usually avoids the somewhat circular trap of the constitutional argument by acknowledging the constitutional right of criticism and fair use but insisting that the criticism and fair use be done reasonably. Using a greater amount of the copyrighted work than is reasonably necessary in reporting matters of public interest can defeat a fair-use defense. See ., 433 U.S. 562 (1977). Indeed, the idea-expression dichotomy dictates that even when there is a clear First Amendment right involved, such as the memoirs of an ex-President, the First Amendment does not override copyright interests when a lesser taking would communicate the same ideas and facts and satisfy First Amendment interests. Furthermore, the very existence of the fair-use privilege undercuts the notion that the First Amendment either conflicts with copyright or creates its own privilege such as, for instance, a public-figure...
- The more accepted response to claims of First Amendment fair-use rights is found in the idea-expression dichotomy. Viewing the First Amendment as prohibiting any restraints on the free communication of ideas, courts have held that there is no constitutional violation as long as copyright merely restrains using a particular expression as opposed to the idea itself. However, matters of public interest sometimes become so important that copyright has been lost because the particular work is uniquely situated to convey the ideas. In , 293 F.Supp. 130 (S.D.N.Y.1968), the Zapruder films of the Kennedy assassination were held too important to be restricted by copyright claims. It may be thought that in such a case the idea and expression tend to merge. Generally, the courts have found the idea-expression line a convenient and workable way of resolving ., 562 F.2d 1157 (9th Cir.1977). The Supreme Court has dismissed the potential conflict between copyright and free speech because fair use
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Chapter 14. Loss of Trademark Protection and Partial Protection 51 results (showing 5 best matches)
- Trademark rights can be acquired only through use rather than adoption or appropriation in gross. Trademark rights therefore are a function of commercial reality. Thus, just as absence of use is a bar to the acquisition of legal rights, failure to use a mark after the acquisition of legal protection may constitute a bar to continued protection. The latter context is called abandonment.
- Because trademark rights never were considered to be property rights at common law except insofar as they actually were used in a particular commercial activity, the resolution of conflicting rights to the same trademark were and are determined, under common law, on the basis of both priority and market. The first user normally has priority but priority is measured and awarded only with respect to the market in which the first user conducted commercial activity. Since it was possible or even probable that a first user limited its commercial activity to only one area, it was not unusual for a second user to acquire rights in another area. With respect to that second area, the second user was, of course, actually the first user.
- Incontestability has some rather striking effects on a registrant’s rights. The most common situation involves the use of a mark that has descriptive qualities. The doctrine has the effect of expanding federal trademark rights far beyond common-law doctrine, allowing the incontestable registrant to forbid competitors from using descriptive and competitively useful terms.
- For many years, various circuits and even the Trademark Office applied a defensive/offensive distinction between a registrant who might permissibly resist cancellation with an incontestable though descriptive mark and a registrant who sought to enforce such a mark offensively against another. These offensive attempts were resisted by jurisdictions applying the distinction. That distinction, however, has been firmly rejected by the Supreme Court.
- It also has been held that a cancellation proceeding commenced by a prior user against a registrant is not appropriate for the issuance of a concurrent registration as an alternative to complete cancellation of the registrant’s rights. In ., 579 F.2d 75 (Cust. & Pat.App.1978), the court held that until incontestability, the junior user registrant is vulnerable to complete cancellation despite the policy favoring nationwide registration as a reward for promptly seeking federal registration. Thus, within five years of registration, the trademark is subject to cancellation. It is not appropriate for the junior user-registrant to seek a restricted registration in the form of a concurrent registration in a cancellation proceeding. Instead, the junior user-registrant must seek concurrent registration only through a concurrent registration proceeding.
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- Finally, another area at the intersection of state and federal regulation is state immunity from patent suits, under the Eleventh Amendment. See § 9.5, supra. Congress tried to abrogate that immunity by defining “whoever” in section 271 to include states and their instrumentalities. The Supreme Court has held that the Constitution’s grant of immunity to the states cannot be abrogated by Congress under the Patent Clause nor, of course, the Patent Act itself. Furthermore, the immunity cannot be abrogated under the Fourteenth Amendment unless it is shown that the states have engaged in a pattern of patent infringement. ., 527 U.S. 666 (1999). The same is true of trademark and copyright infringement. See §§ 17.8, 26.6, infra.
- On the other hand, not all state doctrine regulating intellectual property impermissibly “clashes” with federal protection. In ., 416 U.S. 470 (1974), the Supreme Court held that state trade secret law could prohibit the disclosure of industrial technology developed by the plaintiff even though that technology was unpatented. Trade secret law does not necessarily interfere with federal policies—it provides far weaker protection, it addresses different, noninventive subject matter, and focusses on conduct instead of technology. Since, at least within those limits, trade secret law and patent law can coexist, the doctrine of preemption does not apply. The doctrine of preemption applies to copyright law as well as to patent law, see § 26.1, infra. Similarly, state claims, such as unfair competition or interference with prospective advantage that allege misconduct by the patentee in obtaining or enforcing the patent address not the patent, but the activities of the patentee and are thus...
- Inventors have state remedies in addition to federal patent protection. The relationship between federal and state protection is governed by the doctrine of federal preemption. Whether a state doctrine can coexist with federal patent protection depends upon whether the state doctrine is inconsistent or incompatible with federal protection. To the extent that the state remedy interferes with federal regulation, the state doctrine is preempted under the Supremacy Clause of the Constitution. “States may not offer patent-like protection to intellectual creations which would otherwise remain unprotected as a matter of federal law.”
- The exact dimensions of the federal preemption doctrine are uncertain. In , supra, for instance, the Court held that a state attempt to prevent copying of boat hull designs was preempted by the patent laws. Because the designs were functional, they did not clearly qualify for design patents. Furthermore, because they were functional, they would certainly have to qualify under the requirements of novelty, nonobviousness, and utility in order to gain utility patents. The Court made it fairly clear that the state provisions were preempted because they intruded upon an area that could be protected only by federal patent law and, if that protection had not been granted, the hull designs must belong to the public domain. Nevertheless, Congress attempted to reverse the effects of ...Hull Design Protection Act, intended to protect boat hull designs, despite their functionality. If that legislation is constitutional it means that preemption based on a presumed constitutional purpose... ...in...A
- For instance, state unfair competition laws prevent acts characterized by deceptive or other unfair conduct. In a company from marketing an unpatented pole lamp even though it confusingly resembled that manufactured by the plaintiff. According to the Court, to do so would give the plaintiff the equivalent of a patent monopoly. In ., 376 U.S. 234 (1964), the Court similarly held that state unfair competition laws could not prohibit a defendant from manufacturing an unpatented item, although a state could impose requirements to prohibit confusion as to the identity of the manufacturer. In other words, state doctrine can protect against undesirable conduct in the manufacture and marketing of certain products, but it cannot protect against the manufacture itself, which is regulated exclusively by the federal patent laws. See
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Chapter 1. The Foundations of Patent Protection 36 results (showing 5 best matches)
- The existence of a constitutional patent power had and continues to have important consequences. For one thing, it is far more explicit in its goals and purposes than is the Commerce Clause, for instance, which undergirds trademark law, thus subjecting patent law to what at least appear to be more rigid constitutional constraints.
- The patent application is submitted to the Patent Office but no rights immediately accrue. Unlike a copyrighted work, for instance, there is no monopoly right in an invention until a patent actually is issued by the Patent Office. (There may be other rights created by state common law, however, such as the law of trade secrets or unfair competition.) The Patent Office examines the application and conducts a search of past patents and of relevant technical literature to ascertain whether the claims are actually new, useful, and nonobvious—in other words, whether the new invention is patentable. The Patent Office examiner frequently denies patentability to some, or perhaps all, of the claims and the application may then be revised to meet the examiner’s objections. Or, sometimes, the application is resubmitted with an explanation of why the examiner is mistaken, arguing that the application is suitable in its original state.
- At the Constitutional Convention, in 1787, a measure was proposed to incorporate as one of the new federal powers the ability to secure, for limited times, patents and copyrights. The measure was adopted without debate. It reads:
- , 132 S.Ct. 873 (2012). In addition to creating limits, the constitutional provision also makes the of Congress’ patent power quite large. For instance, the trademark statute, unlike the patent laws, is founded upon the Interstate Commerce Clause and, as a result, federal trademark legislation must have some relationship to interstate commerce to be valid. The patent power, however, has no such interstate limitation. The strength of the explicitly worded Patent Clause also includes the potential to preempt state regulation. This, very briefly, means that there is a strong presumption in favor of federal regulation of this area. The consequence is that state regulation may be invalid if it interferes in any way with the objectives of the patent power. There is some support for the view that federal preemption is stronger in the case of a specific power, like the Patent Clause, than in the case of a less specific power, like the Interstate Commerce Clause.
- An infringement suit is only one way that a patent may be contested. Any person has the right to ask the Patent Office to reexamine a patent; if the Office grants the request, the patent application will be subjected to a second, although drastically more limited (in fact it is limited to the consideration of documents that were not considered initially), patent application examination. 35 U.S.C.A. § 302. Under the America Invents Act, reexamination will include both ex parte and inter partes review, will be an administrative adjudicatory proceeding rather than examination, and has different time limits than the current reexamination procedure. There will also be a new procedure, called post-grant review. A party who wishes to use a patent, believing it to be invalid, also can ask a federal court for a declaratory judgment that the patent is invalid. The party seeking the declaration must demonstrate that a real controversy about the patent exists—which means that this remedy is...
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Chapter 5. Patentability—Nonobviousness 48 results (showing 5 best matches)
- In a sense, nonobviousness follows on the intellectual heels of novelty; but it is distinctively different. An invention may not have been developed before a certain date. It is, at that point in time, new; it has novelty. However, just because it never was invented before does not mean it was not hypothetically conceivable. It is possible that someone skilled in the relevant field of technology and familiar with its subject matter could have invented it with comparative ease had he tried; such an “invention” would be novel but obvious to that person. The reader should be cautioned that, under the America Invents Act, nonobviousness, like novelty, is determined as of the application date, not the date of invention.
- The effect of automatically recognizing as prior art for nonobviousness purposes the kind of prior art that is used for determining novelty is the creation of a doctrine of constructive prior art. Constructive anticipation for novelty purposes is a result of statutory command under section 102(d) and (e). The importation of constructive prior art, however, for nonobviousness purposes under section 103 is strictly a matter of judicial fiat. , 382 U.S. 252 (1965). Because a patent may be granted long after its application date, it suddenly may become available as constructive prior art with respect to an already issued patent since that issued patent may have been filed the constructively and retroactively available application was filed. Obviously, this can happen because patents are not granted in the order in which their applications are filed. With respect to abandoned and rejected applications, which are kept confidential, prior art only arises upon an actual publication and so...
- The standard of nonobviousness is applied in three steps—(1) a survey of the scope and content of the prior art, (2) an examination of the differences between the invention and the prior art, and (3) a determination of the level of ordinary skill in the art. In the light of that three-stage process, one can decide whether the differences revealed in the second stage are nonobvious. ., 383 U.S. 1 (1966). The Federal Circuit has held that the so-called “secondary considerations” constitute a fourth stage.
- The secondary tests are highly useful because they call upon judges to undertake tasks similar to those that courts traditionally perform. Courts are used to examining the forces of the marketplace. Secondary considerations are economic and motivation issues and closely resemble the inquiries routinely made, for instance, in tort and contract law. Additionally, they are objective and prevent the court from wandering too far from established facts. For instance, it is difficult for a court to declare an invention obvious when the invention has met with instant success in an industry characterized by high levels of research and development. Thus, any attempt to apply a subjective “hindsight” test tends to be countered by an examination of secondary considerations.
- Nonobviousness and novelty intersect because of the similarity of some of the factual questions involved in both inquiries. Novelty requires that the invention has not been anticipated. This necessarily involves an investigation of the prior art; that is, what people actually knew, published, and did at earlier times. Likewise, the standard of nonobviousness requires an investigation of the prior art; that is, in light of the prior art, the invention must not have been obvious. Note, however, that there is no hypothetical inquiry in the test for novelty: actual anticipation is the standard. “Secondary evidence,” such as commercial success and unexpected results, is admissible to show that an invention was not obvious to those skilled in the prior art. But under section 102, that evidence is not relevant to the question of novelty.
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Chapter 2. The Subject Matter of Patents 41 results (showing 5 best matches)
- The major issue relating to design patents is that field’s affect on copyright and utility patent law. Since the protection afforded design patents is against copying, it bears a striking resemblance to copyright. Similarly, because design patents by definition involve designs on articles of manufacture, they intersect with matters of utility patentability and threaten to protect by design that which may have a function otherwise nonpatentable under utility patent protection. As a result, a design patent cannot be obtained for an exclusively functional design. ., 396 F.2d 340 (9th Cir.1968). Furthermore, when a design includes both functional and merely ornamental elements, the substantial similarity required for infringement must be based solely on the nonfunctional, merely ornamental elements. ...597 F.3d 1288 (Cir.2010). But it is clear that both design and utility patents can apply to the same product as long as the design patent protects only nonfunctional aspects of the...
- , supra (in which the Supreme Court held that the mere presence of a computer in an otherwise patentable process does not render the invention unpatentable) and ., 149 F.3d 1368 (Fed.Cir.1998) (in which the Federal Circuit held, , that a mathematical algorithm in the form of a computer program is patentable if it is applied in a useful way), although an isolated computer program that is not entwined in a specific statutory process will be labeled a mere method of calculation and, therefore, will not be patentable, see
- Processes are more intangible and difficult to define than products. In a sense, they are a way of getting somewhere else from where one starts, and they may be either a way of getting to something inventive or they may be an inventive way of getting to something already known (or, at least, something noninventive). A typical process is the chemical one, which produces a compound through a series of steps that may be embodied in a particular machine in which case both the process and the machine may be patentable, although that is not always true.
- In addition to the four categories of patentable subject matter, there is a blanket supplementary gloss that applies to all of them. This permits a patent to issue on “any new and useful improvement” on a process, machine, manufacture, or composition. Obviously, though, an improvement still will have to fit in one of the four categories first before it can be a new and useful improvement thereof.
- The Court noted that there are limits on what may be patented under section 101, specifically the exclusion of laws of nature, physical phenomena, and abstract ideas. Both and was distinguishable, said the Court, because in that case the only way to use the algorithm was in connection with a computer. Since no one could have used the algorithm in a computer program without infringing Benson’s patent, the Court explained, the grant of a patent in effect would have allowed a monopoly on an idea. Addressing the Court stated that the claim in that case was nothing more than a formula for computing an alarm limit, which, the Court declared, “is simply a number.”
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Chapter 18. Remedies 10 results (showing 5 best matches)
- Additionally, the plaintiff does not have to demonstrate that, had the defendant not made these sales, the consumers would have purchased from the plaintiff instead. In other words, plaintiff does not have to prove that defendant’s sales directly competed with plaintiff’s. In order to vindicate the public interest in preventing deceptive trade practices, it is deemed appropriate to allow the plaintiff to be the beneficiary and receive the profits rather than defendant. It effectively allows the trademark plaintiff to be a private attorney general.
- Otherwise, the grant of preliminary and permanent equitable relief mirrors other areas of the law. In trademark cases, equitable relief must be carefully framed in an affirmative manner so as to prohibit illegitimate infringement while allowing legitimate competitive activity. A plaintiff may well demand that the defendant cease all activity but courts are exceedingly careful to recognize that some of the activities of defendants that cost plaintiff business nevertheless may be the results of legitimate competitive practices. For instance, when a plaintiff demanded that defendant be enjoined from competing, the court instead affirmatively required that the defendant conspicuously notify all prospective purchasers that the defendant’s product was not the same as the plaintiff’s, thereby prohibiting the infringement but continuing fair competition.
- The normal equitable principles apply to trademark law, including the standard defenses. However, in awarding equitable relief, the general rule that the public interest is to be considered has a particular cast to it since the Lanham Act is considered a statement of the public interest. Thus, the grant of equitable relief usually protects not only the plaintiff from infringement but also the public from deception. On the other hand, there are instances when relief might create an effective monopoly in the plaintiff over the product as well as the mark. Therefore, the public interest tends to cut both ways. See
- At one time, the traditional American rule against the award of attorney’s fees to the successful party was good law in trademark cases. The Supreme Court held that there was no reason to vary the rule absent statutory authorization. ., 386 U.S. 714 (1967). However, in 1975, Congress amended the Lanham Act to include the award of attorneys’ fees in “exceptional cases.” 15 U.S.C.A. § 1117. This mirrors the provision in the Patent Act, 35 U.S.C.A. § 285, also allowing attorneys’ fees in the identical circumstances. See § 9.4, supra. It is fairly certain that attorneys’ fees are to be awarded on a party-neutral basis, although there may be some reason to favor prevailing defendants.
- Importantly, these remedies are cumulative so that a plaintiff may recover not only the defendant’s profits, but damages, as well. In addition, both damages and profits can be adjusted by the court above those actually proven—damages to an extent three times that demonstrated, and profits to an amount that the court finds appropriate.
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Outline 54 results (showing 5 best matches)
Chapter 7. The Patenting Process 60 results (showing 5 best matches)
- A breach of the duty can result in the striking of an application or in the invalidation of a patent; it can defeat an otherwise valid claim of infringement; it even can result in a patent being issued to a rival party in an interference proceeding despite priority or other merit lying in the party who violated the duty. The duty of candor is thus enforced with the threat of invalidity. In addition, if the positive duty of candor is breached to the extent of an actual fraud, attorney’s fees may be awarded against the defaulting party in a later lawsuit. Attorney’s fees always are available in patent litigation if it involves an “exceptional” case. 35 U.S.C.A. § 285. And it has been held that, among other things, an exceptional case may be one involving a breach of the duty of candor. , 459 F.2d 403 (9th Cir.1972). However, under the America Invents Act, a patentee may request a Supplemental Examination Proceeding to cure errors, mistakes, or omissions in the examination of an issued...
- Continuations have become controversial. In a substantial number of patent prosecutions, the applicant intentionally engages in continuation practice in order to preserve the ability effectively to expand the scope of the patent over the course of the patent prosecution. Section 120 of the patent Act allows the filing of a continuation patent any time before a patent is actually issued or before an application is abandoned. After a final rejection—or in some cases, even after an allowance—the applicant will file a continuation application, and abandon the original application. This allows the applicant to keep the original priority filing date but file additional or different claims. A continuation normally repeats the original specification but also may include new matter (which will not benefit from the original filing date) in which case it is called a continuation-in-part. In theory, and often in practice, this can go on for the entire life of the patent, where a continuation “...
- The Act further requires that the specification be an . It must be specific enough to enable a skilled practitioner to accomplish the invention in its best mode. And it must enable the full scope of the invention, not just most or even the most important parts of it. , 516 F.3d 993 (Cir.2008). A vague specification, one that requires the skilled practitioner to do the invention by trial and error, is not an enabling disclosure and thus is invalid. In addition, the specification must give a description that is “clear, concise and exact.” 35 U.S.C.A. § 112. The Federal Circuit has held that the written description requirement is separate and in addition to the enablement requirement.
- In response to these two factors, which recognize the practical influence that the initial Patent Office decision has in finally determining most patent issues both before and even after judicial review, and concomitantly, the unique position an applicant has to influence or affect the initial decision, a duty of candor is imposed upon the applicant. Since the patent process is ex parte and because that process will inure to the benefit of the applicant, this duty of candor is meant to balance the unfairness that otherwise would occur if the applicant were to have the benefits of an ex parte process without any corresponding accountability.
- The Patent Act is quite specific about who may claim patent rights. Although an invention otherwise may be patentable, if the wrong person claims the patent, all may be lost. The person claiming the patent must be the original and authentic inventor. 35 U.S.C.A. § 111. He cannot be assigned the right to pursue the patent in his own name and neither can he have obtained the patent idea from others. Thus, this doctrine does more than merely prohibit the “stealing” of another’s patents. It also prohibits even a permissive use for purposes of obtaining patent protection. If an inventor wishes to give his idea to a friend, employer, or relative, that inventor must obtain the patent himself and then assign it—or at least assign the right to obtain the patent
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Chapter 8. Infringement 37 results (showing 5 best matches)
- and that of respectively narrow and broaden patent claims and thereby (but inversely) the possibilities of infringement. First, literal overlap of a claim over an accused structure requires that, for infringement, each and every element of the claim be found in the alleged infringement. The requirement of literal overlap presumes that each and every element of a claim is material and essential.
- for instance, assumes that different claims apply to different devices or processes. Claim interpretations that tend to make one or more claims surplusage and merely repetitive of other claims are avoided. On the other hand, the rule of claim differentiation is really a guide or presumption, not a hard-and-fast rule, and the plain language of a claim that effectively duplicates another claim will not be contorted to read differently than it does. Claim construction is a matter of law, and it is up to the judge to determine the meaning of each and every word in the claims; this is so even though the Seventh Amendment guarantees a jury trial for patent infringement ., 517 U.S. 370 (1996). In construing the meaning of words in a claim, when there is a choice, the narrower meaning of a word in a claim controls.
- A patent holder cannot rely on the terms of a license that bars its licensee from contesting the validity of a patent. Because the integrity of the patent system is so important, and because a licensee is frequently the best-informed and best-situated person to contest a patent, a licensee can seek to have a patent declared invalid despite contractual terms that may forbid such a challenge. The interest in policing the patent system and ridding it of invalid patents is simply more important than the interests of contract law in that context. , 395 U.S. 653 (1969). Furthermore, such a licensee need not even disclaim the licensee before challenging the patent, and may continue paying royalties, remain a licensee in good standing and, at the same time, sue for a declaration of invalidity.
- The doctrine of equivalents is meant to discount the presence of minor changes and substitutions in the accused infringement. It prevents the elevation of form over substance that otherwise might allow a canny infringer to avoid the exact duplication of an invention while still capitalizing upon the work of the inventor. But the Supreme Court has cautioned that the doctrine is to be confined to finding that each and every element of a claim, or its equivalent, is found in the alleged infringement. It is error to apply the doctrine to the invention as a whole (that is, finding that the invention as a whole performs substantially the same function, in substantially the same way, to achieve substantially the same result). In addition, this is not the same as the slightly different doctrine of equivalents used to interpret the scope of a means-plus-function claim. In means-plus-function claims, what the Supreme Court has characterized as a “limiting” doctrine of equivalents prevents...
- Contributory infringement can occur only in connection with a of a component knowing it to be specially made or adapted for use in a patented device or process and the component is not a staple article suitable for some substantial noninfringing use. Thus, a contributory infringer can be liable for infringement even though what he has sold is completely in the public domain and has no patent protection itself. It has the practical effect of extending the patent to items that are not patented and presents the possibility of a sanctioned monopoly over the unpatentable. Contributory infringement effectively allows the patent system to extend to ineligible subject matter. Of course, this presents serious constitutional questions.
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Chapter 3. Patentability—Novelty and Statutory Bar 48 results (showing 5 best matches)
- Under that standard, the total combination of prior art and references thereto can make an invention unpatentable if that combination, as a whole, constitutes an enabling disclosure. The combination of references and prior art allows one to “borrow” prior art to understand a reference that by itself (at least to a court or perhaps to a nonskilled practitioner) might not otherwise necessarily constitute an enabling disclosure. In
- Sometimes, a reference can be fatal even though, by itself, it is not an independently enabling disclosure, in the sense that every last detail of producing the product or performing the process is to be found in the reference. Since the test of whether a disclosure is enabling is whether the person with ordinary skill in the pertinent art could reproduce the invention on the basis of the reference, there are some things that such practitioners are held to bring with them to the reference. Their skills and expected body of knowledge therefore need not be found in a particular reference in order to make that reference enabling. In other words, other references can be used in order to demonstrate the level of skill in the art. As was said in
- Under section 102, a patent is barred for lack of novelty if there is enough in the prior art to enable someone skilled in the area to perform the process or produce the product described in the patent application. The Patent Office will cite prior publications in a “reference.” If a reference is held to be an “enabling disclosure,” it bars patentability. A reference is considered enabling and the invention is thereby anticipated and unpatentable if the reference discloses information that would enable a person having ordinary skill in the appropriate art to duplicate the invention. The requirement that a disclosure be “enabling” comes not from section 102, but from section 112.
- An inventor who does not immediately seek a patent is in jeopardy of a rival claim by a junior inventor who makes the same invention and acts with due diligence. The junior inventor may successfully unseat the senior inventor by proceeding with dispatch. The relative merits of such senior and junior inventors in that situation are mapped out in section 102(g). Priority depends upon three factors: the time of conception, the time of reduction to practice, and the use of due diligence in pursuing both patent protection and perfection of the discovery. By definition, a senior inventor is one who conceives first. The time of conception is defined as that moment when the inventor unambiguously had made mental discovery of the invention. The Federal Circuit has held that the mere formation of the idea, as long as it is definite, permanent, and particular, is enough. The inventor need not know, said the Court, that her idea will work, since that is not conception, but reduction to practice.
- The novelty provisions in section 102 focus on certain events constituting and, if they do, prohibit patentability for lack of novelty. Statutory bar focuses on events that may occur and which, if they do, prohibit patentability. In other words, the inventor is given a grace period of twelve months from the event within which he may still apply for an invention. But after that grace period, statutory bar occurs and he loses what might be termed his application priority and right to a patent, the invention still has novelty. Events of anticipation, defined by the novelty provisions, have no comparable grace period; if an anticipation occurs prior to invention, the inventor has no right to a patent.
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Chapter 6. Double–Patenting 5 results
- It therefore is possible to obtain a patent on a machine and a patent on a composition of matter that is produced by the machine, if both the composition and machine are independently patentable entities. However, if it would be impossible to produce one without inevitably producing the other—if the machine were the only possible way that the composition could be produced—then the two inventions are the same and the double-patenting bar would prevent the grant of two separate patents. , 104 U.S. 356 (1882). A closely related issue is that of the “best-mode” disclosure requirement, see § 7.5, infra. Obviously, these two doctrines tend to interact. Likewise, the duty of candor, see § 7.8, infra, is involved in any type of illegitimate attempt to expand the patent monopoly and brings with it the issue of patent misuse, see § 8.7, infra. Of course, there are a few legitimate, although limited, statutory ways by which the patent term may be extended. See § 1.2, supra. And, in fact,...
- The rule against double patenting relies on the same principle as do the anticipation and nonobviousness doctrines. Nobody, including the inventor himself, may duplicate a prior invention and obtain a patent for it. Thus, if an inventor is to obtain a patent on an invention related in any way to an earlier one, it must be clear that the second invention is distinct and substantially different from the first. Not surprisingly, the later invention must satisfy all the requirements of patentability. On the other hand, an inventor may be able to gain different patents for inventions that, although intimately related, are definable as either different categories of subject matter or distinct entities.
- Having developed a useful, nonobvious, and new invention, the inventor may claim a patent. The inventor is only entitled to one patent for any one invention, however. ., 119 F.Supp. 541 (S.D.Cal.1954). This may seem obvious, but there is a natural temptation for inventors to try to extend patent protection as far as possible—sometimes beyond the statutory period. One way of attempting an impermissible extension is by breaking up one invention and trying to secure a series of patents. In spite of both the strict bar against double patenting and what seems an obvious rule, inventors sometimes claim only certain features of their inventions, saving others for later patenting as the earlier patent expires, thereby obtaining greater protection than the statute is intended to furnish.
- The double-patenting bar also involves the requirement of nonobviousness by forbidding the issuance of a second patent that is obvious in light of the first or for an obvious modification of an earlier patent.
- The terminal disclaimer allows inventors to incorporate later developments into their original patents without violating the double-patenting bar. 35 U.S.C.A. § 253. Since the purpose of the double-patenting bar is to prevent extensions past the statutory period for any one invention, it does not contravene that purpose if an inventor agrees, in his later patent application, to allow the second patent to expire simultaneously with the first. This is called terminal disclaimer, since the inventor agrees to disclaim any right to have the patent terminate later than the earlier patent. The concept is best understood by realizing that the terminal portion of the later patent is disclaimed by the inventor. Since they both terminate at the same time, the inventor who agrees to a terminal disclaimer can obtain his second patent without violating the policy of the double-patenting rule.
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Chapter 4. Patentability—Utility 9 results (showing 5 best matches)
- Utility cannot be presumed. It must be disclosed as an integral part of the patent specification. 35 U.S.C.A. § 112. And, in fact, merely proving the utility of a new process may be insufficient if the result it produces is of no demonstrable utility. For instance, that a new chemical produced by an inventive process closely resembles another useful one is insufficient to patent the process or the chemical for it is impermissible to presume that the new chemical would have similarly useful properties.
- In the chemical process for which patent protection was sought had no demonstrable utility. A strong argument was made, however, relying on the importance of basic research, that chemical process patents need only show a likely utility. Justice Fortas, writing for the majority, rejected that because such a doctrine, if extended, would have overly broad consequences. If a patent application fails to describe the “specific benefit” of a new process, it threatens to “engross … a broad field,” and is therefore unpatentable. “A patent is not a hunting license.” The policy implications of
- The bar against presumed utility forces the inventor to limit his claims to the demonstrated usefulness of his product or process. Speculative utility, just like presumptive utility, would allow an inventor to gain a patent on a process or product that eventually might constitute an entire field of knowledge. Therefore, an inventor must identify a utility. A product must have a demonstrable utility specified in the patent application. A process must demonstrate utility with respect to its product. This is because a process that results in useless products does not increase the fund of useful knowledge nor confer any real benefit.
- An invention must be of some benefit qualitatively, but no particular quantum of benefit is required. , 480 F.2d 1392 (Cust. & Pat.App.1973). Thus, an invention cannot be patented if it is a mere novelty or curiosity. The quality concept also forbids the grant of a patent on illegal or immoral items. And, by necessary implication, an invention cannot be beneficial if it is solely detrimental. Therefore, dangerous items that have no beneficial use are not patentable.
- If the claim of utility is fabricated by the inventor to give his invention market appeal, there may be no intrinsic and therefore legally cognizable benefit. The inventor of an ineffective drug, for instance, may not obtain a patent merely because he convinces gullible patients that it has a nonexistent curative effect. It is not so much that it lacks a minimum of benefit (after all, the patients may find it subjectively useful), but it is, instead, that it has an impermissible fraudulent
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Acknowledgments 2 results
- I also thank Astrika Wilhelm who, as a pre-law Barnard student, was as competent and skillful a legal researcher as any 3L.
- This is for Zoe and Izzie. This Fifth Edition, like several previous ones, owes its existence to Dr. Dana Neacsu who, always filled with provocative thoughts but armed with a newly minted PhD, reminded me that a good idea is its own incentive. Without her love, companionship, and help, I would not be able to thank my coauthor for the continuing pleasure of working with him.
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- Publication Date: March 30th, 2012
- ISBN: 9780314278340
- Subject: Intellectual Property
- Series: Nutshells
- Type: Overviews
- Description: Miller and Davis’ Intellectual Property, Patents, Trademarks, and Copyright in a Nutshell presents the fundamentals of trademark and copyright laws. Authors Michael Davis and famed Harvard professor Arthur Miller provide authoritative coverage on the foundations of patent protection, patentability, and the patenting process. The text addresses: Torts and property Antitrust and government regulation Concept of federalism State and federal conflicts