Intellectual Property, Patents,Trademarks, and Copyright in a Nutshell
Authors:
Miller, Arthur R. / Davis, Michael H.
Edition:
5th
Copyright Date:
2012
37 chapters
have results for Patent Law
Chapter 1. The Foundations of Patent Protection 35 results (showing 5 best matches)
- During the life of the patent, the owner has the complete right to determine who, if anybody, will have the right to use, make, offer to sell, or sell the patented item, 35 U.S.C.A. § 261, and to a more limited extent, how or where it will be initially exploited. Under the America Invents Act, however, patents granted under first-to-file provisions will be subject to prior user rights, enjoyed by those who, while failing to patent, nevertheless practiced the invention commercially one year prior to the application date. It is important to understand that American law does not require the patentee to put the patent into use or to allow others to do so. The first requirement, of putting the device to use, is called “working” the patent, a requirement with some historical meaning and considerable foreign patent law significance. The second requirement, of allowing others to use the patent, is called “compulsory licensing.” Like working, there is no absolute requirement in United States
- 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.
- 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.
- of monopolies by the Crown. Note that the Statute of Monopolies, the classical starting point in the development of patent law, was a reaction the unrestricted grant of patent monopolies. This theme of antimonopolism is notable since the law does not favor monopolies generally and patents have a monopolistic character.
- It is possible to trace the development of American patent law back to ancient Greece. However, the accepted useful starting point is the Statute of Monopolies, adopted in England in 1623, an act that addressed a number of basic patent issues that remain relevant today.
- Open Chapter
Chapter 7. The Patenting Process 53 results (showing 5 best matches)
- What centralizing review in the Federal Circuit is designed to achieve, however, is more consistency and coherence in patent law. Instead of having each different court of appeals applying its own construction of the patent laws, as well as an additional view emanating from a specialty court, the former Court of Customs and Patent Appeals, we now have only one. In addition, the Supreme Court no longer is faced with the same kind of pressures to decide issues formerly raised by intercircuit differences on patent matters.
- The Patent Office is an administrative agency; patent practice is essentially part of administrative law. Thus, because of the constitutional and statutory sources of patent law, and the fact that the law is applied in the first instance within the confines of administrative practice, the statute and regulations set fairly literal limits on the exercise of agency discretion. There is a real constraint on how far administrative
- The patent process is relatively unique because it involves the grant of a monopoly by an administrative agency to a typically unopposed party at a time prior to that at which other parties who might wish to contest the grant have the opportunity to be heard. This would be less significant if other parties could freely thereafter contest the issuance of the patent. But for two reasons this is not the case. First, there are the practical difficulties of expensive complex patent litigation; to tell a party that a patent can be contested judicially is far more easily said than done. Second, it is a general principle of administrative law that deference is given to agency decisions. To review all agency actions in a plenary fashion would make the agency useless; therefore, some level of deference is appropriate. In patent law, that deference takes the form of the presumption ...patent validity. 35 U.S.C.A. § 282. See § 7.4, supra. The Supreme Court has held that reviewing courts,...
- 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 . He cannot delegate the patent to another, although he can delegate the patenting process to another. Likewise, if a person finds an invention developed by someone else for which a patent has not been sought, he cannot pursue that
- The creation of the United States Court of Appeals for the Federal Circuit has significantly changed judicial review of litigation involving issues of patent law. The Federal Circuit also has assumed the appellate jurisdiction of the Court of Customs and Patent Appeals, which was abolished by the 1982 legislation establishing the Federal Circuit.
- Open Chapter
Chapter 20. The Subject Matter of Copyright 16 results (showing 5 best matches)
- One reason the courts are unwilling to grant copyright protection to purely utilitarian works is that patent protection is reserved to works of utility. Because copyright protection lasts longer than patent protection and also because copyright protection is granted upon the very minimal showing of originality as opposed to the rigorous demonstration of novelty, nonobviousness, and utility required for patent protection, courts attempt to keep the borders between copyright and patent well-defined and clear. Thus, to allow copyright protection for a utilitarian object would allow monopoly control over something that might more appropriately be subject to the very different protection of patent law but probably could not satisfy the demanding prerequisites of the Patent Act (and the constitutional Patent Clause) to qualify for protection.
- Whether a work is protected or not will depend not only upon the idea-expression dichotomy and the utilitarian-nonutilitarian dichotomy, but also on the availability of other types of relief. For instance, the availability of patent protection or of design patent protection may influence a court in denying copyrightability. Although there is no legal bar to simultaneous protection, the availability of patent protection, for instance, may be decisive to a court in determining where on the functional-nonfunctional continuum a particular work lies. The more likely it is that patent protection is available, the more likely it is that a court will hold a work to be functional rather than nonfunctional. , 161 F.2d 910 (D.C.Cir.1947). The same is true of design patents, although the functional character of such works is reduced significantly and, thus, the likelihood that copyright will be denied also is lessened. In .... & Pat.App.1974), the court held that design patents and copyrights...
- It is unclear whether the copyrightability of computer programs will have any effect on attempts to increase protection for them through other means—notably patent law. See § 2.8, supra. Although it seems logical to expect some such relationship, the shifting trends in both areas seem too uncoordinated to sustain any prediction at this time.
- The Semiconductor Chip Protection Act of 1984, 17 U.S.C.A. §§ 902 et seq., although found in the copyright title of the United States Code, is a kind of hybrid, borrowing from both copyright and patent law to provide protection for the physical “chips” upon which computer technology presently depends. The Chip Act protects mask works fixed in a semiconductor chip product—primarily against photographic processes. In a way, the Chip Act protects computer code in the form of circuitry, including, therefore, code fixed in ROM (read-only-memory) chips. Before the Chip Act, this type of code was not universally protected under copyright law by the courts.
- 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
- Open Chapter
Chapter 8. Infringement 32 results (showing 5 best matches)
- “Misuse” means that the patent owner has overreached and tried to do more than legitimately is authorized by the patent monopoly. This can involve more than just patent law, for the abuse of a legal monopoly easily can become a forbidden monopoly prohibited by the antitrust laws. But somewhere between legitimate use and antitrust violation lies a wide range of acts that, although not so gross as to constitute antitrust violations, are nevertheless abuses of the patent right for which the penalty is the temporary loss of the patent privilege. Until a patentee “purges” himself of the misuse, he cannot enforce the patent. Misuse assumes infringement but immunizes it. It bars relief because of the patentee’s culpable conduct.
- 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
- Recent statutory revisions have seriously undermined the previously accepted hornbook law that the Patent Act has no extraterritorial effect. ., 406 U.S. 518 (1972), which held that there is no infringement even if all the parts of a combination patent are manufactured domestically if the final construction occurs abroad, has been statutorily rejected. Now, under, 35 U.S.C.A. § 271(f)(1), one who supplies the components of a combination patent that are combined abroad is an infringer, even though the actual foreign acts may not themselves be infringing. In ., 550 U.S. 437 (2007), the Court held that a master copy of software that is then later copied and installed into computers abroad does not constitute the “component” contemplated by § 271(f). The Court reaffirmed the general principle that patent law has no extraterritorial reach absent express legislative exception, saying it would not expansively interpret the statute absent such an express exception to the general principle....
- It should be noted that the doctrine of equivalents will have varying breadth depending upon the patent. A pioneer patent will have greater breadth than a much later improvement because of the very nature of the policies underlying patent law. The essence of a pioneer invention is that it discovers a very large field for which the inventor is fairly rewarded with a relatively broad patent. However, the inventor of a much later and perhaps less important improvement has not discovered a large field at all and to a great extent her discovery really sits on the shoulders of earlier pioneer inventors. She therefore is rewarded with a commensurately smaller field to monopolize and the range of equivalents thus shrinks.
- Partly because of the growing allowance of patents claiming business methods and partly because of a general trend toward harmonization of United States patent laws with international norms, Congress has enacted “prior user” rights. These allow a person who has been utilizing a business method prior to its patenting by another person, to continue to use the method under limited circumstances. 35 U.S.C.A. § 273. The prior user must have actually practiced the method one year prior to the earliest filing date of the patent application and he must have used the method commercially sometime prior to that date. Under the America Invents Act, this defense has been extended to all prior users, not just those who use business methods. This is consistent with the notion that under a first-to-file system an earlier inventor of any kind of invention may deserve to continue such use when a later inventor, who is nevertheless first to file, obtains a patent on an invention already practiced by...
- Open Chapter
- ., 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 not preempted.
- , 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
- 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.”
- For instance, state unfair competition laws prevent acts characterized by deceptive or other unfair conduct. In ., 376 U.S. 225 (1964), the Supreme Court held that state unfair competition laws could not be used to prohibit 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
- 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.
- Open Chapter
Chapter 2. The Subject Matter of Patents 35 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. ., 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 invention.
- All subject matters, including processes, are subject to the rule forbidding patents on the proscribed areas of laws of nature, natural phenomena, and abstract ideas. Thus, a process patent cannot be so broad as to constitute the very idea of how to do something. It must be more specific. If a pants-presser, for instance, were claimed as new, the idea of pressing pants obviously could not be patented. A particular way of inserting creases, however, might be patentable because as a way of producing creases, the patent would cover the process and not the very idea of creases.
- In addition to utility patents, the Patent Act provides for plant patents, 35 U.S.C.A. § 161, and design patents, 35 U.S.C.A. § 171. Although the dynamics of both these fields substantially parallel the dynamics of utility patents, the particular elements are different because they substitute another requirement for utility as a prerequisite to legal protection.
- One rough benchmark is furnished by the principle that patents only can protect the of an abstract principle. Consistent with the aim of patent law to give the patent owner his due without (1) giving more than he already has specified as his invention, and (2) removing from the public domain basic ideas that should be freely available, the limit on what is patentable subject matter apportions these interests between the public and the inventor in as sensible a way as is possible. To be patentable, an invention must be made by a human. The discoverer of a previously unknown naturally existing animal or naturally occurring plant cannot claim a patent in the discovery. (A
- , 437 U.S. 584 (1978), the Supreme Court held that a process utilizing a scientific principle is patentable only if the “process itself, not merely the mathematical algorithm, [is] new and useful.” Flook had applied for a patent on a method for updating an “alarm limit” in the catalytic conversion of hydrocarbons. Flook’s process used a mathematical algorithm to accomplish this and contemplated use of a computer. The Court held the claim nonpatentable, explaining that “[a]ll that [the claim] provides is a formula for computing an updated alarm limit,” and that the patent, if issued, would be on a law of nature. The Court stated as it had in that the law did not allow a patent on an algorithm, but conceded that a process is not nonpatentable simply because an algorithm is involved. Rather, the Court required of the law of nature.
- Open Chapter
Chapter 5. Patentability—Nonobviousness 25 results (showing 5 best matches)
- For most of the entire history of patent law in this country an invention, to be patentable, has had to be nonobvious to those skilled in the art. This was true even prior to the 1952 Patent Act when this requirement, for the first time, was expressly adopted in section 103. A requirement of nonobviousness
- There are two typical sources of prior art: (1) printed publications, such as books and articles, and (2) testimony and statements of skilled practitioners and experts. The most common sources, however, are publications; this includes prior patents. A patent however, is statutorily confidential and is deemed nonpublic until a patent is granted. As a result, unless it is cited in some other publicly available patent application or office proceeding, if a patent application is abandoned or even if it is rejected early enough (before the 18-month publication that applies to most applications), it never becomes public and the Patent Office does not search these records as prior art for nonobviousness because it is and always remains legally unavailable. However, if an application becomes public through eventual approval or publication by the Patent Office, it then can serve as a source of prior art.
- The judicial standard of invention was an attempt to incorporate into the Patent Act its functional basis—to distinguish between those pedestrian advances that would naturally be disclosed without patent protection because of their easy accessibility to the ordinary mechanic and those true inventions that would be disclosed only in return for patent protection. The new statutory requirement of nonobviousness, and the nonstatutory secondary considerations should be examined with an eye to whether they satisfy the same functional requirements as the old standard of invention.
- , 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 this problem of retroactive obviousness does not occur unless such applications are cited in other, publicly available, applications or Patent and Trademark Office (“PTO”) proceedings.
- The 1952 Patent Act requires “nonobviousness” in section 103. There was no prior explicit statutory requirement; this new objective formula actually was supposed to decrease the judicial standard of patentability, as developed under earlier statutes. In fact, the addition of the nonobviousness requirement probably has left the earlier standard substantially intact, because some version of nonobviousness was required by courts even without any statutory language. Earlier patent laws only expressly required novelty and utility as tests of patentability, but the additional requirement of nonobviousness was derived from the very notion of invention. This mandated that an invention, to be patentable, had to represent some advance over the prior art so that the ordinary mechanic skilled in that prior art would not have been capable of making the advance. “Invention” required some degree of special subjective ingenuity in the development of the invention. The test was supposed to...
- Open Chapter
Chapter 26. Remedies 3 results
- 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.
- 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
- 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.
- Open Chapter
Chapter 6. Double–Patenting 6 results (showing 5 best matches)
- 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.
- 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. , 319 F.2d 225 (Cust. & Pat.App.1963). If the modification naturally would follow the development of the earlier patent, the inventor cannot claim a second patent for the later modification without running afoul of both the double-patenting rule and the nonobviousness or anticipation doctrines. Of course, a patentable “improvement” (under section 101) of an earlier invention will not be barred by the double-patenting doctrine. This is true even though technically the earlier patent “dominates” the improvement, that is, even though, until the expiration of the first, the second, “narrower or more specific claim” will by definition infringe the earlier, broader claim.
- 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.
- Open Chapter
Chapter 28. International Agreements 10 results (showing 5 best matches)
- Members of the European Union have something approaching a true multinational patent, since, pursuant to the European Patent Convention, applicants can choose to be examined by a central authority that makes a decision on patentability and issues a European patent. Nevertheless, it is still necessary to register formally for a separate patent in each EU member country.
- 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.
- The major international document relating to trademarks is the Paris Convention, which offers to applicants the same basic priority advantage—although of only six instead of twelve months—enjoyed by patent applicants, under a similar mostly procedural regime. A second, more recent agreement is the Trademark Law Treaty, which for the most part simply harmonizes and simplifies several international procedural and formal features such as recordations of assignment, application minimums, and even the physical dimensions of specimens.
- The Patent Cooperation Treaty (“PCT”) is a purely procedural treaty by which applicants can preserve their priority and gain a head start on filing in other countries. By utilizing the PCT, applicants can file one patent application and, in successive national and international “stages,” have patent applications filed in as many signatory countries as desired. The initial application is examined by a central authority, but merely for a limited scope of prior art, resulting in an assessment of, rather than a decision about, patentability. The ultimate decision of patentability is made by each member country relying, only in part, on the PCT examination process results.
- There is no international patent treaty—outside the European Union—by which inventors can gain anything like an international patent. The major patent treaty is the Paris Convention, which is a true national treatment document but whose major characteristic and advantage is the priority—twelve months—it provides for applicants intending to file in other Paris Convention signatory countries. This is an important procedural right, however, because in many countries simply filing an application publicizes the invention, making it ineligible in other countries, many of which demand absolute novelty (including lack of publication) at the time of application. Beyond that, the Paris Convention imposes no particular term, or rights, or disclosure, or any substantive standard of patentability. It does, however, guarantee that signatory countries have the right to impose compulsory licenses and working requirements—insisting that an invention be practiced in the country upon penalty of...
- Open Chapter
Chapter 16. Subject Matter 9 results (showing 5 best matches)
- Whereas a design patent does not bar trademark registration and, in a sense, reinforces it by attesting to the nonutilitarian characteristics of the element, a utility patent acts as a complete bar. Even after expiration of a utility patent, the fact that a claimed distinguishing element is eligible for registration effectively is rebutted by the earlier patent, which demonstrates persuasively that the element was adopted primarily for utilitarian reasons. In ., 362 F.2d 287 (Cust. & Pat.App.1966), a set of ribs on the bottom of a ceramic plate had been patented for their vibration-damping utility and also for their handling utility. Even after the patent expired, the evidence of utility resulting from the patent was fatal to any claim under trademark that functional utility was not a primary purpose of the ribs. When a patent expires, the patented features enter the public domain. Since all have the right to use the feature, the applicant could not identify and distinguish its...
- ., 328 F.2d 925 (Cust. & Pat.App.1964), the court held that it was immaterial that the design claimed as a trademark was also the subject of a design patent. The distinctively fluted shape of the wine bottles that the applicant claimed as a trademark device might be eligible for trademark registration as well as a design patent, said the court, if the design in fact “functions as a trademark to indicate origin.” The
- A device that is solely functional cannot be registered. Goods having such a device could not be identified or distinguished from other goods performing the same function for they would then have to share the same device. To grant registration would be to register not only a trademark but also to exclude others from the function as well, thus converting trademark registration into something approximating patent protection. In holding that the appearance of generic drugs is at least partly functional, since it allows the user to identify the appropriate medicine at the appropriate time, the Supreme Court has said, “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”
- Notes from the Patent Office,
- of trademark rights, or at least without regard to them. Its effect is to create a federal law regulating unfair trade practices. Limited to activities subject to the constitutional interstate Commerce Clause, it provides a broad civil remedy for these practices. Section 43(a) dispenses with intent, requiring only deception about a product, that is, false advertising. It also provides a wide range of equitable remedies, and it does not require proof of actual loss. The importance of section 43(a) aside from the creation of a federal “common law” of unfair competition is that it provides federal subject matter jurisdiction even in the absence of federal trademark registration. This means that trade dress—the appearance or even packaging of a product—can be protected without Lanham Act registration.
- Open Chapter
Chapter 11. The Foundations of Trademark Protection 17 results (showing 5 best matches)
- Thus, to an important extent, federal laws do not expressly create new rights nor do they even codify the common law of trademark; instead, they merely provide a structure within which the common law of trademark can be enforced at the federal level. This is because unlike the Patent Clause, there is nothing specifically applicable to trademark law in the Constitution. The only relevant constitutional grant is the Interstate Commerce Clause, which allows Congress to regulate interstate commerce and to enact necessary and proper legislation to achieve that regulation.
- 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 (by itself) because its nature is incapable of such existence. A trademark is something that only exists with respect to some other commercial activity; this principle is at least in part due to the history of trademark law. Since it developed as a device to identify a businessperson’s goods, the trademark, absent the sale of goods, had no function, and therefore no existence as a trademark. A device meant to identify the origin of goods, which identifies neither origin nor goods, is simply not a trademark. Thus, a trademark is always ...because of this central characteristic that trademark law differs from that relating to other intellectual property. Accordingly, it is said that trademark rights cannot be obtained by mere adoption. They must be appropriated through use and...
- The common law always has recognized that one goal of trademark law is to prevent mistake, deception, and confusion with regard to the origin of goods. ., 131 F.Supp. 846 (D.Md.1955). Protection of the public is thus one central feature of common law trademark. An immediate byproduct of prevention of confusion and protection of the public, however, is that businesspeople who have adopted trademarks acquire a means of protecting their good will. Thus, trademark law tends to protect both sellers and purchasers.
- Trademark law traditionally has been considered a part of the law of unfair competition. At the most basic level, it is unfair competition for a competitor to “palm off” his goods as those of another. The essence of the tort of unfair competition also explains why trademarks can be acquired only by use. At least at common law, trademark has no purpose absent competition. Therefore, only when there is the prospect of competition (within the same geographical area or between the same or similar products) does trademark law, as a category of unfair competition, have a legitimate place.
- Nonetheless, the basic scheme of the Lanham Act is still that of a national registration system. It explicitly expands common law rights by allowing service marks, 15 U.S.C.A. § 1053, as well as trademarks, and creates the new categories of collective and certification marks as well, 15 U.S.C.A. §§ 1054, 1127. One section of the Lanham Act, section 43, 15 U.S.C.A. § 1125, significantly expands common law rights and creates a new federal cause of action. These rights go beyond the protection of marks meant to indicate origin. Section 43 of the statute is the federal counterpart of certain state unfair competition and antidilution rights. It prohibits the deceptive marketing of goods and services that causes injury to other competitors. This prohibition is not limited to the use of a competitor’s trademark, and it has no geographic or product scope limitations, either. In effect, the provision sometimes protects the owner of a mark from its use by any other person in any way at all....
- Open Chapter
Chapter 9. Remedies 6 results (showing 5 best matches)
- 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...
- 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.
- The traditional American rule that each party bear its own attorneys’ fees is varied by statute in patent law. In an “exceptional case,” the prevailing party may be granted such fees. Thus, either the plaintiff or defendant may recover them when the case is deemed exceptional. An exceptional case is one involving knowing infringement by a defendant, ., 351 F.2d 557 (7th Cir.1965), or “when the plaintiff has acquired his patent by fraud or brings an infringement suit with no good faith belief that his patent is valid and
- 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.
- 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.
- Open Chapter
Chapter 3. Patentability—Novelty and Statutory Bar 34 results (showing 5 best matches)
- Prior patent by anyone, printed publication or prior patent application by the applicant (but only if a patent is granted prior to domestic application).
- If an inventor is the first to invent but waits more than a year to apply for a patent after someone else describes, publicly uses, sells, or patents the invention in this country, the invention is unpatentable by the inventor, even though he was truly the one who invented first. This is explained by the patent policy favoring speedy disclosure and the disfavor with which the patent system views inventors who “sit on their rights” (or on their inventions). If the inventor waits, hoping to delay his patent application and thereby effectively extend his patent monopoly beyond its twenty-year limit, while others do any of those acts, he will certainly violate those patent objectives and encounter the statutory bar. Importantly, the “on sale” bar does not mean that the inventor must have actually sold her invention. Any efforts to make a sale, even if unsuccessful, violate the policy of statutory bar against attempts to extend illegitimately the patent monopoly. Even placing an item...
- What degree of publicity is required? Generally, only a minimal level, corresponding to the fact that statutory bar does not require publicity sufficient to inform the public but, rather, sufficient to demonstrate unacceptable conduct on the part of the inventor. That is the situation, for instance, with respect to public use. Statutory bar holds that only minimal public use, even though it does not disclose the secrets of an invention, should trigger the twelve-month period in which an inventor must initiate the patent prosecution process. Since one function of patent law is to encourage disclosure to further the advancement of technology, this minimal publicity is enough to bar a later patent. Thus, for instance, it is not even necessary that the inventor publicly use any more than just one sample of his product for it to be
- The major exception is public use, which will foreclose a patent without full disclosure as long as the public use discloses the invention’s benefits— . The patent system does not favor granting a patent on an invention whose benefits, at least, already have been made public. Thus, if a senior inventor publicly uses an invention even though without completely revealing its basis, the inventor obviously is barred because of the public use if it occurs more than a year before the application. Less obviously, even a diligent junior inventor also is statutorily barred and cannot obtain a patent despite the lack of truly complete disclosure. See
- Foreign anticipation can take only two forms: the availability of a documentary description by prior patent or publication. If either of these occurs with respect to the invention at issue, , the anticipation will bar the issuance of a patent. Domestic anticipation, however, can take five forms: a prior patent, publication, use, knowledge, or invention. Again, if any of these occurs with respect to the invention at issue, , there is anticipation, a lack of novelty, and a patent will not issue. What constitutes a “printed publication” for documentary anticipation is expanding to include modern information retrieval technologies, such as computers and microfilm. The emphasis is less on whether the information is either “printed” or “published” but on whether it is publicly disseminated or accessible. , 655 F.2d 221 (Cust. & Pat.App.1981). There is serious doubt, however, whether, absent a change in the statute, the Patent Office will accept computer database information as
- Open Chapter
Chapter 4. Patentability—Utility 9 results (showing 5 best matches)
- 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 are key: the Court clearly wanted to prevent industry attempts to carve out large technical areas—making them immune to research by competitors—with patents that, from the point of utility, are not ripe.
- Patent protection depends not only upon novelty but also upon utility. If novelty is the brain of invention, then one might say utility is its muscle. The utility requirement is derived, first, from the constitutional clause (granting potential patent protection to “ Arts”) and, second, from the Patent Act (giving protection only to “useful” inventions, consistent with the constitutional enabling clause). 35 U.S.C.A. § 101. Even without the language of section 101, an argument could be made for the utility requirement on at least two grounds. The first is the constitutional argument; the second is that the very meaning of “invention” seems to imply something with utility, although this is undermined by the existence of plant and design patents. See § 2.10, supra.
- , 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
- 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.
- One of the reasons that utility must be affirmatively demonstrated is that to hold otherwise would be to grant a patent on an unknown range of applications. Because we cannot know whether a process has broad or narrow applications until we are told its exact scope, patenting a process without a description of its utility or that of its products would monopolize something with such broad potential scope as to encompass what essentially is an idea rather than an application.
- Open Chapter
Outline 22 results (showing 5 best matches)
Chapter 19. Foundations of Copyright Protection 13 results (showing 5 best matches)
- 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 This interest, however, has left few important legacies; by far, the most enduring influence on the development of copyright law was that of the publishers themselves.
- 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 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
- Just as patent protection extends to any useful, nonobvious, novel,
- American copyright law came to distinguish between the “common law” right of an author to his unpublished creations, and the statutory copyright that might be secured upon publication. Until recently, therefore, an author had a perpetual right to his creation, which included the right to decide when, if, and how to publish the work, but that common law right terminated upon publication at which time statutory rights became the sole rights, if any, to which the author was entitled. This distinction was altered by the Copyright Act of 1976 (the “new Act”), which shifts the line of demarcation between common law and statutory copyright from the moment of publication to the moment of fixation of the work into a tangible form.
- Open Chapter
Introduction 3 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...
- 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 write nor was the patent system necessary to encourage the first inventor of the wheel).
- 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.
- Open Chapter
Chapter 17. Infringement 6 results (showing 5 best matches)
- Especially because of the patent-law doctrine that unpatented products should be in the public domain, when parties attempt to copy unpatented items, the doctrine of fair use prevents trademark protection from becoming the equivalent of illegitimate patent protection. The courts have held that to disallow fair use would prevent the copier from informing the public about the availability of a substitute. Of course, if a party makes untrue claims of equivalence instead of engaging in mere comparison, or makes claims implying that a used product is new, that may constitute a violation of section 43(a). See
- Although Congress attempted to abrogate the states’ Eleventh Amendment immunity by defining “person” in sections 43(a) and 1127 to include states and their instrumentalities, the Supreme Court has held, in a section 43(a) action, that this is constitutionally invalid absent a pattern of state trademark infringement, similar to its reason for rejecting immunity in the patent law context. See §§ 9.5, 10.1, supra, and § 26.6, infra.
- 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.
- 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 legislation because trademark law alone offers no comfort when the trademark is legitimate. The Tariff Act of 1930 forbids the importation of a very limited category of parallel imports, 19 U.S.C.A. §§ 1301 et seq. The Supreme Court upheld the Customs Service position that the statute does not apply when there is common control, that is a relationship of parent, subsidiary, or sibling subsidiary, between the domestic and foreign party. 19 C.F.R. § 133.21(b) (1987). Only when the gray...law
- 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
- Open Chapter
Chapter 22. Infringement 2 results
- Contributory infringement exists as a judicial doctrine in copyright law just as it does, though in codified form, in patent law. See supra, § 8.5. In
- 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.
- Open Chapter
Chapter 12. Distinctiveness 8 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.
- ., 497 F.2d 1351 (Cust. & Pat.App.1974). It essentially implies that an otherwise descriptive mark has been used so long that it has come to be synonymous with the goods or services with which it is connected, at least with respect to the content of the particular trade and with respect to the consumers within that market. Proof of secondary meaning is aided by a prima facie presumption afforded by five years of continuous use in commerce. 15 U.S.C.A. § 1052(f). A user who comes to the Patent and Trademark Office (the “PTO”) with a mark he has used for five continuous years may benefit from the presumption despite the fact that the mark is facially descriptive or nondistinctive in some other way. A frequent practice is for a rejected applicant to accept registration
- The federal bar against registration of a mark resembling that of a prior user is primarily a codification of the common law. An applicant cannot obtain rights in a mark that another person has not abandoned if use of that mark by the applicant would be
- Of course, it is possible that a descriptive term could indicate origin. However, at common law, the fact that a descriptive mark also was distinctive was irrelevant. All descriptive marks, no matter what degree of distinctiveness they also acquired, were
- A suggestive mark is one that may be partly descriptive but is primarily distinctive. If a mark conveys the nature of the product only through the exercise of imagination, thought, and perception, it is suggestive. On the other hand, if a mark immediately conveys the nature of the product, it is descriptive. The category of suggestive marks was necessary only because under prior versions of the federal trademark law, a mark that was in any way descriptive was ineligible for registration. Thus, a category of suggestive marks was developed by the courts to allow registration of marks having some, even though minimal, descriptive qualities. Under present law, if a mark is suggestive, there is no need for proof of secondary meaning as long as it is not primarily descriptive.
- Open Chapter
Chapter 25. Formal Requirements 2 results
- 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 ...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 requisite qualities nor to put other authors on notice that a work is protected.... ...patent...
- Because notice is so obviously a formal requirement, which historically had potentially disastrous consequences for noncompliance, it has been progressively deemphasized in American copyright law. Now, except for foreclosure of the defense of innocent infringement, 17 U.S.C.A. § 401(d), all of the notice requirements are completely optional for works distributed on or after March 31, 1989. For those works covered by the 1976 Act distributed prior to March 31, 1989, however, notice requirements did apply, but with elaborate provisions to allow failure to affix proper notice to be cured within a five-year period. 17 U.S.C.A. § 405(a).
- Open Chapter
Index 36 results (showing 5 best matches)
Part I. Patents 1 result
Title Page 3 results
Copyright Page 2 results
- and the Nutshell Logo are trademarks registered in the U.S. Patent and Trademark Office.
- 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.
- Open Chapter
Chapter 18. Remedies 3 results
- 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.
- 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
- 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.
- Open Chapter
Chapter 15. Trademark Practice 9 results (showing 5 best matches)
- Ex parte proceedings involving only the applicant and the Office are the most frequent. They usually result from a dispute between the examiner and the applicant over registrability. As with patents, see § 7.4, supra, the examiner must reexamine a refused application at least once. After the examiner issues a final refusal, the applicant may appeal the decision to the Trademark Trial and Appeal Board (“TTAB”) which consists of the Commissioner, the Assistant Commissioners, and selected examiners appointed by the Commissioner. It is usual for a panel of three from the TTAB to hear appeals.
- 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.
- 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.
- Since both requirements had the same statutory source, it is not completely surprising that courts treated them similarly, despite the fact that their external sources, one being common law, the other being constitutional, were profoundly different. In constitutional law, there was a steady liberalization of the interstate requirement in all areas of Commerce Clause legislation for many years. which, prior to the TLRA, defined use in commerce in terms confusingly similar to those that are relevant only to use in trade. Thus, although cases have minimized the interstate requirements, following the development of constitutional law generally, it seems to have gone unnoticed that to liberalize the use in trade requirement in a similar fashion had an extraordinary effect on the basis of the marks being registered, with respect to ownership, property, and common law issues generally.
- 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.
- Open Chapter
Chapter 14. Loss of Trademark Protection and Partial Protection 13 results (showing 5 best matches)
- The Court of Customs and Patent Appeals has stated that a senior user is entitled to a presumption
- rights between two users. Thus, just as in the common law example described above, it is possible that a registrant may have acquired rights in a mark while another user may have acquired rights in a remote area. The first user—or, in fact, a later user—may apply for registration based on the common-law rights it has even though the other user also has common-law rights. The resolution of these conflicting rights within the Lanham Act is difficult.
- Even with the advent of federal trademark legislation, it still is possible for the common law to operate in the traditional manner described above with respect to unregistered marks and marks that for some reason will be decided on the basis of common law without regard to federal legislation. For instance, despite registration, disputes concerning products or services outside those for which the mark was registered may be determined on the basis of traditional common law rules.
- Even though the situations in (a) and (b) are fairly indistinguishable, they present problems because of the Lanham Act’s language. At common law, in different markets, it did not matter so much who was the earlier user so long as each party used the mark without knowledge of the other. Alternatively, at common law one could say that each person was the earlier within its own particular area (since the common law does not have the doctrine of constructive notice). This is not the case, however, under the Lanham Act. Under 15 U.S.C.A. § 1051, an applicant must certify that nobody else has rights to the mark. But the Lanham Act provides for the possibility of
- , 571 F.2d 564 (Cust. & Pat.App.1978), the Court of Customs and Patent Appeals applied a presumption in favor of the prior user, holding that it is entitled to nationwide registration and that any concurrent registration can be accomplished only through a concurrent registration proceeding. In
- Open Chapter
Chapter 27. Copyright Laws and the Intersection of State and Federal Regulation 16 results (showing 5 best matches)
- 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
- 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.
- On the other hand, some state statutory or common law protection still is viable to the extent it is not described by the two basic elements: if the cause of action does not secure rights to copy, display, distribute, or perform, it might be a viable state regulation even if it regulates a tangible medium of expression. For instance, laws of theft are not preempted despite the fact that they cover, among other things, tangible means of expression of original works of authorship. To steal a book is not to copy it, necessarily, and a law against theft is not preempted because it does not grant a right equivalent to any of the federal exclusive rights. Similarly, a state cause of action granting protection to a speaker against someone else copying or performing his extemporaneous speech may not be preempted because such intangible expressions are not within the subject matter of copyright. A number of areas of intangible expressions therefore are still viable candidates for state...
- 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, .) because they comprise a substantial and independent body of common law doctrine. However, it is important to recognize the overlapping of federal and state regulation of these similar interests for at least two major reasons.
- The result was a compromise by which Congress asserted that the terms of the Berne Convention “do not expand or reduce any right of an author of a work, whether claimed under Federal, State, or the common law—(1) to claim authorship of the work; or (2) to object to any distortion, mutilation, or other modification of, or other derogatory action in relation to, the work, that would prejudice the author’s honor or reputation.” Thus, it remains to be seen whether further federal or state legislation ...rights or whether federal and state courts will take Berne as a signal that the common law should expansively protect moral rights. Several states have enacted “moral rights” statutes protecting various categories of fine and graphic art and a federal statute, the Visual Artists Rights Act of 1990, has been enacted. Any further expansion that does occur would not be based on the Implementation Act, which prohibits the use of Berne as the basis for recognizing more moral rights, but...
- Open Chapter
Chapter 13. Dilution and the Expansion of Trademark Doctrine 12 results (showing 5 best matches)
- The adoption of some elements of common law unfair competition into federal trademark law was marked by the deletion from the Lanham Act of any requirement of confusion by purchasers as to source. In 1961, the Act was amended to prohibit any use of a mark that is likely to cause confusion, apparently in any way at all, not just confusion by purchasers as to the source of a particular product. 15 U.S.C.A. § 1114(1). This shift in trademark law is based in large part on the unfairness perceived in allowing competitors to profit from the reputation of others.
- Although the Lanham Act has been amended so that the confusion necessary for infringement is not limited merely to that between competing goods, but is extended to confusion generally so as to include some dilution doctrine, that development has occurred only recently. In addition, federal courts have been somewhat reluctant to embrace the dilution doctrine wholeheartedly and therefore have construed the “confusion” requirement with varying degrees of strictness. In fact, it is possible that with the adoption of an explicitly federal antidilution statute limited to “famous” marks, see § 13.6, infra, courts will be more reluctant to expand the Lanham Act to embrace dilution concepts in other ways. Finally, even with federal acceptance of the dilution doctrine, many marks that are either not registered or otherwise ineligible for registration are protected solely by state law. But state law until recently has consisted entirely of common law and there has been judicial resistance to...
- —it is tantamount to the claim of an owner that he has the right to a trademark simply by adoption, rather than by use. At common law a person could not simply adopt a mark and forbid others from its use on the claim that there was a future intention to enter a market. A right could be developed only after use. Under the expansion doctrine, however, modern trademark law allows an owner to prohibit use of the mark in commercial areas that are not presently used by the owner.
- 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,
- “SweetTest” apples against various apple competitors, the confusion against which the common law protects—without regard to the expansion doctrine—is the confusion between the owner’s apples and apples marketed by competitors. Trademark at common law would forbid another apple marketer from attempting to confuse the public about which apples were marketed by the “SweetTest” owner and those marketed by imitators. However, under the likelihood-of-expansion doctrine, the owner also would have protection against a marketer of “SweetTest” oranges, even though the owner does not market oranges. The potential for confusion does exist, but not with respect to any present use of the mark by the owner.
- Open Chapter
Chapter 23. Fair Use 9 results (showing 5 best matches)
- If copyright law is the “metaphysics” of law (see page one of the Introduction), fair use is its “semiotics.” The boundaries of fair use are difficult to ascertain. Fair use is analogous to a privilege in tort law and, just as tort privileges are determined and justified by broad notions of policy rather than by strict statutory or common law definitions, so too is fair use. It is akin to a privilege because it is essentially a defense to a charge of infringement. As with a defense of privilege in a tort action, the defense of fair use acknowledges the elements of the tort but affirmatively raises other important issues and policies by way of mitigation or exonoration.
- Prior to the current Copyright Act the fair-use doctrine was totally a matter of common law; section 107 of the Act purports to codify the common law: it simply says that fair use is a defense to infringement and goes on to give examples, but not a definition, of fair use. It states that “criticism, comment, news reporting, teaching …, scholarship, or research,” are the types of purposes that may justify a finding of fair use. It also provides some general guidelines by which fair use may be ascertained. Those include the purpose of the activity, including whether it is profitable or not, the nature of the underlying work, the proportion of the material used, and the economic effect upon the copyright owner. The Act expressly states that those guidelines are not exhaustive.
- ., 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 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 of common law copyright by statutory copyright through the 1976 Act, even though not as a prerequisite to protection as it had been under common law copyright, but as a fair use factor because of its arguably obvious economic impact.
- Just as commercial purpose has been a basis for deciding against fair use, an educational purpose, especially a nonprofit one, has been a traditional basis in favor of fair use. Although the statute joins the terms nonprofit and educational, it is not at all clear that an educational fair use also must be nonprofit. The congressional history of the 1976 Act indicates that the legislative intent was to codify existing fair-use law. Prior case law does not require that an educational fair use also be a completely noncommercial one. At the same time, it should not be surprising that even when educational and nonprofit purposes coincide, fair use does not necessarily result. In
- Thus, the dynamics of the fair-use doctrine involve weighing the various, and typically competing, interests. These interests have ambiguous boundaries, cannot be measured with any precision, and overlap with one another. It should be no surprise, therefore, that fair use has been termed “the most troublesome in the whole law of copyright.”
- Open Chapter
Advisory Board 11 results (showing 5 best matches)
- Professor of Law, Michael E. Moritz College of Law,
- Professor of Law, University of San Diego Professor of Law Emeritus, University of Michigan
- Professor of Law, Chancellor and Dean Emeritus, Hastings College of the Law
- Dean and Professor of Law, Stanford Law School
- Professor of Law, Yale Law School
- Open Chapter
Chapter 24. Ownership 9 results (showing 5 best matches)
- 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.
- A problem that naturally results from the enactment of a new copyright Act with radically different features from the earlier one, is how to treat the terms of preexisting copyrighted works. This becomes an even more serious problem when it is realized that many works that were not even subject to statutory copyright, because they were not “published” within the meaning of the 1909 Act, suddenly were brought within the 1976 Act because they had been fixed in tangible form. Thus, because the present Act so radically diminished the potential area of common law copyright and brought so many previously common law materials into the federal domain, the inevitable problem of how long, if at all, those works should be protected under the 1976 Act also was created.
- The two basic problems with respect to preexisting works concern (a) those common law works that never were subject to federal copyright and suddenly were brought into the Copyright Act, and (b) those works that were federally copyrighted but whose terms were to be measured by two twenty-eight-year periods instead of a term related to the lifetime of the author.
- The effects of determining that a work is joint on the basis of the authors’ intent are numerous. As already stated, although the current Act provides that a copyright usually expires seventy years after the death of the author, a joint work has joint authors and does not expire until seventy years after the last to die. On the other hand, some common law doctrines relating to joint authorship still are viable. The most important of these are those relating to ownership rights and duties. Basically, joint authors become owners in common and their property rights and duties are determined accordingly. See § 24.3, infra.
- Many works that enjoyed common law copyright but were not subject to the 1909 Act—mostly because ...conception of that term—theoretically had perpetual common law protection. Whether “published” or not, they were brought under the 1976 Act by their tangible fixation, thereby destroying the author’s expectation of perpetual protection. Thus, the problem for Congress was how equitably to grant federal protection that eventually would expire to a work that formerly had unlimited protection. Many of the authors of those works might have been dead for far more than the seventy years of protection now provided by the statute. If they were treated under the literal provisions of the Act, the effect of the Act could have been simply to cast them into the public domain. Because of this conflict between policy and private expectations, it was decided that the only equitable solution was to treat all these works as all new works would be treated, with protection terminating seventy years...
- Open Chapter
Acknowledgments 1 result
Chapter 21. Exclusive Rights 6 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).
- 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
- avoided liability because of a gap in the law (filled by congressional action in 1870), would be held infringing today under the statute’s broad definition of derivative works since it expressly includes translations. It is not so clear, however, that the kind of plot outlines involved in
- In addition to the exclusion of sound recordings from the performance right, one of the most significant effects of section 106(4) is the absence of any requirement that performances that allegedly violate the copyright owner’s exclusive right be for profit. This represents a major departure from the law under the 1909 Act, which, although not imposing the profit requirement uniformly, limited the exclusive performance right for musical compositions to “for profit” performances. A good deal of judicial energy was invested in devising a broad enough definition of “profit” to allow musical composers control over performances that had few indicia of profit. In
- Many people believe that one of the most glaring—but historically based—anomalies of the 1976 Act is the absence of a performance right for owners of sound recordings. Because of established industry relationships that have developed out of reliance upon this feature of American copyright law, it has been impossible to alter despite occasional lobbying efforts to do so. With the advent of an entirely new sphere of music distribution and performance based on computer digital transmissions over the Internet, the opportunity was ripe to recognize these performance rights because of a lack of developed industry relationships in that sector that otherwise might have opposed legislation. The pressure to amend the Copyright Act succeeded in 1995. Thus, with respect to digital transmissions, sound recording copyright owners have full performance rights
- Open Chapter
- 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