Intellectual Property, Patents, Trademarks, and Copyright in a Nutshell
Authors:
Miller, Arthur R. / Davis, Michael H.
Edition:
6th
Copyright Date:
2018
36 chapters
have results for INtellectual property in a nutshell
Chapter 28 International Agreements 477 16 results (showing 5 best matches)
- 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.
- 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.
- 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
- 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...
- Open Chapter
Introduction 1 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...
- 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.
- 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 write nor was the patent system necessary to encourage the first inventor of the wheel).
- Open Chapter
Chapter 24 Ownership 419 40 results (showing 5 best matches)
- Coauthors of joint works stand in relation to each other much as do coowners in common of any other kind of personal property, with some modifications peculiar to intellectual property. Thus, each owner has the right to use the property for her own purposes, but neither has the right to exclude the other from using the property. Likewise, neither owner can commit waste by depleting, squandering, or otherwise destroying the value of the property. As a result of these reciprocal rights, each joint author has the duty to account to the other for any benefits if using the property either excluded the other from using it or destroyed any part of the property. This is because intellectual property is not like real property; it is not possible for one person to use it— except in complete privacy—without effectively excluding the other from important uses.
- 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.
- The distinction between the physical object and the copyrighted work in it is fundamental and applies to any work of authorship, no matter how far down the totem pole of artistic creation the work may lie. Thus, cases dealing with letters written from one person to another have held that, although the property interest in the physical object passes from writer to recipient, the right to reproduce the contents and the copyright generally can be retained by the writer when there is evidence of such an interest. held that the transferee of a manuscript by Mark Twain, although the legal owner of the manuscript, did not have the right to claim the copyright and thus to reproduce and publish the contents. This distinction is intimately related to the first-sale doctrine which provides that the sale transfers title to the object, but not its underlying copyright. The Ninth Circuit held, in
- 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.
- In the case of anonymous and pseudonymous works, the same 95 to 120 year scheme applies.
- Open Chapter
Copyright Page 5 results
- Nutshell Series, In a Nutshell
- The publisher is not engaged in rendering 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.
- Printed in the United States of America
- © West, a Thomson business, 2000, 2007
- © 2018 LEG, Inc. d/b/a West Academic
- Open Chapter
Chapter 11 The Foundations of Trademark Protection 179 16 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
- In its infancy, the Anglo-American common law of trademark clearly was meant only to prevent “palming off,” that is, passing off goods of one producer as those of another. The legal protection meant that a producer could prevent others from producing goods and selling them as those of the original producer; it protected, in other words, against a junior producer trading on the good will of a senior producer. Today, trademark law allows the buyer to assert a preference in his or her purchasing, allows the manufacturer to promote its product, and (perhaps only incidentally, at least in most cases) serves to assure a certain level of quality.
- 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,” . 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. . 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.
- 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,
- 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
- Open Chapter
Chapter 18 Remedies 311 10 results (showing 5 best matches)
- Accounting is a traditional equitable remedy available to recover profits unfairly gained from another’s property. Under the Lanham Act, plaintiffs are entitled to an accounting
- 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.
- The remedies for infringement under the Lanham Act are statutory and consist of: (1) injunctive relief, (2) an accounting for profits, (3) damages, including the possibility of treble damages when appropriate, (4) attorney’s fees in “exceptional cases,” and (5) costs.
- 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. . However, in 1975, Congress amended the Lanham Act to include the award of attorneys’ fees in
- 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
- Open Chapter
Chapter 27 Copyright Laws and the Intersection of State and Federal Regulation 461 24 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 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.
- 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
- The tort of misappropriation is similar in that the remedy can bear a marked resemblance to an injunction against copying. In it was to misappropriate to itself property that belonged to the plaintiff. That the defendant was acting in bad faith was important, although the case also focused on the property rights of the respective parties. The result in is viewed in that way, it might represent an impermissible encroachment upon federal copyright protection by state law. However, the Court found that the essence of the suit and of the remedy awarded was not a restriction on copying “but only postpones participation by complainant’s competitor in the processes of distribution and reproduction of news that it has not gathered, and only to the extent necessary to prevent that competitor from reaping the fruits” of the plaintiff’s efforts. Thus, ...exclusive right to copy, which would be equivalent to federal copyright but the right to be free from unfair competitive conduct—was one in...a
- The Visual Artists Rights Act of 1990 is an attempt to create moral rights but it, too, falls short of the mark for reasons of both coverage and substance. First, it applies only to “works of visual art”—which is technically defined as only a very small part of copyrightable works of authorship—only works of essentially fine art that, if distributed in copies such as prints, may not be issued in quantities greater than 200, numbered and signed. Traditionally, moral rights cover virtually all copyrightable works of authorship. Second, and more importantly, the substantive distinction between moral rights and economic rights is that moral rights cannot be bargained away and authors, as a result, can never lose them. (In fact, the copyright termination right—being nontransferrable even by agreement—seems the only United States right that can be characterized as a moral right.) The Visual Artists Rights Act specifically allows authors to “waive” the rights safeguarded by the Act and,...
- First, the availability of another substantial body of law offers the possibility that a state remedy may be available despite the failure of copyright law to offer protection or that a state remedy may be available even in addition to federal protection. Thus, merely because a work is not fixed in a tangible medium of expression—for instance, a circus act that has not been recorded but is distinctive enough to be of value to the performer—does not mean that others are free to copy it just because it does not qualify for federal copyright. . One cannot conclude that there is not a viable cause of action simply because a copyright remedy is unavailable or insufficient. One must always consult the battery of state remedies.
- Open Chapter
Chapter 7 The Patenting Process 111 59 results (showing 5 best matches)
- The language of the claims should be descriptive and not functional. Functional language describes the invention’s effect on other things but fails to describe the invention itself. For instance, to claim a novel element, the claim must specify something about the invention that does not appear in the prior art. But if a claim simply states a new function or property, there is nothing new being claimed; it may well be a thing that is already in the prior art. If all that is claimed is a new function or property of something already in the prior art, such a claim would be barred by the rule prohibiting patents on newly discovered properties of old elements. New applications of known, even patented products, however, are not necessarily barred by that doctrine.
- Inequitable conduct 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, and maybe even a derivation, 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.
- 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, when a continuation “...
- Reissue proceedings are available to cure defects caused by various errors in the original patent.
- 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. . 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.”
- Open Chapter
Chapter 5 Patentability—Nonobviousness 81 46 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 test of nonobviousness thus always must be directed toward the inventive new properties of the discovery, and not other features that may or may not themselves be nonobvious. In fact, the very obviousness of an invention’s structure may make its unexpected function nonobvious. A chemical easily may be described theoretically as an obvious derivative of other known chemicals. Similarity of related chemical formulas may make nonobvious an otherwise obvious derivative if the actual substance described by the compound has surprising, nonobvious qualities. A yet unanswered issue in this context is whether the invention covers only the nonobvious uses of a chemical or whether the entire chemical might receive protection.
- The nonobviousness of any invention must be unambiguously revealed in the application itself. A patent cannot rely on undisclosed properties, uses, or qualities for nonobviousness. The general rule is pungently restated in Justice Fortas’ aphorism that the patenting process does not confer a hunting license. . However, a minor line of cases does suggest that later discoveries of nonobvious qualities may support patentability but this seems to be limited to features which, though unrealized or misunderstood at the time of application, were nevertheless inherent to what was disclosed in the patent application . It is doubtful, however, that without some previously disclosed nonobvious inventive step, a later-discovered advance can support patentability on its own.
- Normally, then, the secondary considerations should have great significance. A court that declares obvious an “invention” that achieves great commercial success in a field in which significant research is conducted may be very unrealistic. Rejecting the secondary consideration of commercial success in such a case probably is due to an impermissible hindsight assessment of nonobviousness by the court.
- 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 or something quite similar to it was judicially recognized as a basic requirement of “invention.”
- Open Chapter
Chapter 13 Dilution and the Expansion of Trademark Doctrine 215 27 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
- Thus, as courts sanctioned good will as a protectible feature of trademarks, the property interest in a trademark expanded. As that interest
- 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
- . 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
- In a market in which the trademark functions not to distinguish on the basis of origin but on the basis of attributing to the product qualities of consumer preference based on advertising, its value to the owner is essentially good will. By investing resources in the mark itself as opposed to the product, the owner is developing a symbol of its reputation.
- Open Chapter
- On the other hand, not all state doctrine regulating intellectual property impermissibly “clashes” with federal protection. In , 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.
- 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 , 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 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
- The exact scope of the federal preemption doctrine is 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 ...Protection Act, intended to protect boat hull designs, despite their functionality and unpatentability. If that legislation is constitutional it means that preemption based on a presumed constitutional purpose...
- 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 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 22 Infringement 379 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 , 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 classic distinction between protected and unprotected elements of literary creations is that articulated by Judge Learned Hand in . Since literary properties consist basically of characters and sequence, it is necessary to identify the point at which either characters or sequence or a combination thereof become copyrightable. held that there is no clear and precise line but the point at which either incident or character becomes protected depends upon their complexity or development in the context of the individual work. “The less developed the characters, the less they can be copyrighted.” Instead of articulating a particular point at which infringement occurs, identified a continuum along which the development of characters and sequence and other literary elements lie. This is called the “abstractions” test and is commonly adapted and applied by the courts in various contexts, even to computer programs.
- 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...
- 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 , the Supreme Court held that simply producing a device that infringes does not constitute contributory infringement so long as it has substantial non-infringing uses as well. See § 23.3, infra. In
- For instance, the presence of a certain series of notes in the public domain may indicate that the alleged infringer could as easily have made up the sequence as did the plaintiff. Conversely, the presence of a unique element of the plaintiff’s work in the defendant’s suggests copying. In , the court said that, even absent any proof of access at all, infringement could be proven if “a single brief phrase, contained in both pieces, was so idiosyncratic in its treatment as to preclude coincidence.” Because of the limited basic musical elements, this “coincidence” defense has a certain plausibility, but when proof of access shows a closeness in time and space between the defendant’s contact with the plaintiff’s work and the creation of the alleged infringement, proof of possible coincidence frequently is overcome.
- Open Chapter
Chapter 21 Exclusive Rights 359 34 results (showing 5 best matches)
- 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, the Digital Millennium Copyright Act (DCMA) 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.
- The exclusive rights are systematically presented in the current Act in section 106. But, first it should be noted that of the six exclusive rights—(1) the reproduction right, (2) the derivative work right, (3) the distribution right, (4) the performance right, (5) the display right, and (6) the digital transmission performance right—the last four are limited to the exercise of those rights. The first two are infringed whether done publicly or privately. “Publicly” is defined by the Act as a performance or display to a “substantial number of persons” outside of family and friends.
- 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...
- In addition to the exclusion of sound recordings from the performance right, one of the most significant effects of 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 , Justice Holmes held that the requirement of “profit” for the public performance of musical compositions meant only that the musical performance had to have some connection with a profit-making activity; in that case it was playing music in a hotel dining room.
- One of the earliest of these was the Audio Home Recording Act of 1992 that attempted to protect the rights of sound recording proprietors in digital recordings, because digital, unlike analog recordings, suffer no degradation as they are duplicated. In order to afford these proprietors rights against, and royalties in, such flawlessly accurate reproductions, various copy protection measures were adopted, including a prohibition on the distribution of digital recorders without special protective measures—the Serial Copy Management System. These measures make it possible to assess royalties on both the machines and the media—disks, tapes, and drives, for instance.
- Open Chapter
Chapter 20 The Subject Matter of Copyright 329 52 results (showing 5 best matches)
- 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,” , 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 something less than the full...
- Similarly, there were some doubts as to the copyrightability of computer programs based on a number of objections, one of them being the writing requirement. Whether a computer program is a writing in the constitutional sense was questioned in part because, by itself, the program has little or no expressive capacity. A program’s significance is when it is operated in conjunction with a machine and, therefore, its status as a writing is somewhat vitiated and it seems to be a utilitarian work. Nevertheless, even prior to the 1976 Act, the Copyright Office decided to accept deposit of programs. The Act, as a result of a 1980 amendment, now seems explicitly to accept protection for programs.
- 17 U.S.C.A. §§ 902
- Despite the extremely broad manner in which “writings” has been construed, such things as computer programs, phonorecords, and dramatic personalities, have at times been denied protection. Even today no matter how much is invested in developing a dramatic character for a public performance, it is not copyrightable unless it is at some point reduced to a physical expression. In , the plaintiff had developed a character called “Paladin,” consisting of a western cowboy personality dressed in black who would appear at public occasions on horseback and hand out a calling card with the statement “Have Gun Will Travel—Wire Paladin” on it. The plaintiff claimed that the defendants had stolen his character and developed it into a television series called “Have Gun Will Travel” in which the character bore a striking resemblance to the one he had created. Because he had never reduced his creation to a fixed form, however, the court found that he had no copyright protection. The mere... ...an...
- The most important limitation upon sound recordings aside from the existence of the compulsory license of the composer’s work is the limitation upon exclusive rights. Owners of copyright in sound recordings have only the right to prevent literal copies. Whereas most copyright owners have all of the applicable rights listed in section 106, owners of copyrights in sound recordings—meaning basically producers of sound recordings—do not have, for instance, the right to exclude others from performing the work (the recording) publicly. This means that once a sound recording is produced, purchasers are free to perform the recording publicly (such as radio broadcasts) without paying the producer or performers any fee (although the composer of the underlying work has full rights over such performances). Additionally, the other exclusive rights listed in section 106 are also eliminated by section 114. The rights to exclude others from reproducing the work or from preparing derivative works...
- Open Chapter
Chapter 4 Patentability—Utility 77 9 results (showing 5 best matches)
- Utility cannot be presumed. It must be disclosed as an integral part of the patent specification.
- 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.
- 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
- Of course, a process that results in a useless product might be useful for yet unknown applications. But that states the very argument against speculative or presumptive utility. Open-ended patents are prohibited by the bar against presumptive or speculative utility because, as the courts have described it, such a patent threatens a “monopoly of knowledge.”
- holds that utility for pure research is not enough, drugs that exhibit desirable qualities in standard experimental animals may be patentable even if they ultimately prove ineffective in humans. This is because one need not show proven utility to gain patent protection; it is sufficient to show a reasonable expectation of utility, which such tests presumably demonstrate.
- Open Chapter
Chapter 15 Trademark Practice 251 28 results (showing 5 best matches)
- 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. . As a result, trademark cases have held that equally minimal interstate contacts are sufficient to satisfy the use-in-commerce requirement. . However, an apparent confusion between the use in commerce and use-in-trade requirements led the courts blindly to treat both as identical, without regard to the different results liberalization of each may have. This confusion was more understandable, however, upon examination of the Lanham Act itself, 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...
- Use in trade has always been required by section 1051, which allows 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 “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...
- It therefore seems entirely appropriate for courts to have liberalized what was referred to as “registration use,” which was a euphemism for use in commerce, since this was and is, in fact, a very minimal constitutional requirement. When courts proceeded, however, to accept minimal and even token uses also to satisfy the use in trade requirement, they were effectively transforming the common law basis of the Lanham Act, which required state ownership of a mark before registration could be obtained. In European and other civil law jurisdictions, it often is possible for a business person to register a mark without actually using it in trade first, simply by having the intent to use it and complying with the applicable registration procedures (including a search of existing registrations). But, under the Lanham Act, prior to the TLRA, to equate what should be a substantive use in trade with a grossly liberalized and minimized use in commerce effectively created something quite...
- The courts, at times, recognized this danger. To avoid it, when they allowed a minimal use to satisfy both use in trade and use-in-commerce requirements, they occasionally would warn that the use would not necessarily afford full protection if a dispute arose with a nonregistrant who, in fact, did establish a real use in trade and that, generally, the “liberal policy” only would be applied in cases “in which a dispute as to priority of use and ownership of a mark is not involved.” supra. A minimal use that ordinarily would allow a proprietor to register his mark, therefore, would not necessarily protect against the claims of another who actually used the mark in trade. One might say that registration use provided only a presumption of ownership and that the liberalized rules for registration use were ineffective when there was a dispute over ownership of the mark.
- Open Chapter
Chapter 14 Loss of Trademark Protection and Partial Protection 229 49 results (showing 5 best matches)
- 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.
- A junior user who knows about a senior user has the duty to disclose that in the federal application and then seek a concurrent rather than exclusive registration. In such a situation, an inter partes proceeding most likely will result in registration being awarded on a concurrent and limited basis.
- In a registration proceeding, a claim by the applicant of a prior user’s abandonment may be challenged by that prior user insisting that it still has the right to the mark. Similarly, in an opposition proceeding, or in an interference declared by the PTO, an applicant may have to answer the claim by a prior user that the mark never had been abandoned. More frequently, the issue of abandonment arises in a cancellation proceeding in which the government or a rival party seeks to cancel the registration of a user who allegedly has failed to exercise the federal rights conferred by registration. It also may arise in a judicial proceeding, most often involving infringement, when a user defends its use of a mark by claiming that the plaintiff abandoned the mark.
- The first user is very likely also to be the first applicant. If he is successful in gaining registration, he obtains incontestability for the mark after five years. In that event, the most another user could gain is the right to continue use in areas where that user has established rights. What might appear to be a presumption in favor of the prior user is merely a result of the following pragmatics of trademark litigation. Even if a second user contests the registration, it has no absolute right to oppose it, since it cannot claim that the use was a “previous” one. The most that it can claim is that the use of the mark made it nondistinctive as applied to the registrant, as in . Obviously, that kind of a claim raises a question subject to far more dispute than the simple factual inquiry involved in a senior user’s opposition based on a “previous” use.
- 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.
- Open Chapter
Chapter 23 Fair Use 395 42 results (showing 5 best matches)
- First Amendment claims sometimes are avoided by defining copyright as a property right, and therefore not subject to significant free speech defenses. In cases involving fraud or piracy, courts have dismissed defenses based on freedom of speech by noting that the defendants have no interest in speech and are exercising no right to communicate but, instead, are attempting to take the property of others.
- In recent years, the First Amendment has been claimed as a defense in a number of infringement cases. The claim is strongest, of course, when raised in connection with matters of public interest or with respect to criticism or parody. Critics or parodists who take portions of another’s original works often claim a right to do so based on either fair use, First Amendment considerations, or a combination of both.
- Satire is making fun of something far larger: A culture, a practice, a political view. Of course, there is a large overlap. A parody can make a much larger point, too. Was the parody in making fun of machismo, sexual harassment, country values? In any event, satire is the same comic technique as parody but using a particular work to make the larger point. Note 14 of is well-known for avoiding holding that only parody is fair use. In that footnote, the Court said that parody is easier to gain fair use but satire can do the same if it passes the section 107 requirements.
- However, in a true judicial , Justice Souter, writing for the Supreme Court in , supra, recast the parody test. The case involved a parody by the rap group, 2 Live Crew, of a song, “Oh Pretty Woman,” originally recorded as an emotional rock ballad by Roy Orbison. Justice Souter wrote that it is not a matter of how much is taken, but for what purpose is it taken and to what effect is it put that determines whether a parody is fair use. themselves or license others to do so. A parody does not act as a market substitute. Parody, said the Court in , is a true transformative use, creating a new work of a different character. Thus, it is not within the scope of the original author’s expectations of profit. As a result, it does not even matter that the parodist takes the “heart” of a work—first, because a parody, to be effective, relies upon the very nature and “heart” of the original, and second, because “heart” or not, being parody it takes nothing from the economic expectations of the...in
- Fair use most commonly is raised in certain traditional contexts. These include educational activities, literary and social criticism, parody, and, importantly, First Amendment activities such as news reporting. Fair use almost invariably is a conclusion based upon the weighing of competing policies in terms of the specific facts before the court. The broad policies justifying the copyright monopoly always militate in favor of a finding of infringement. It is only because fair use allows an inquiry into the particular facts of a case that the opposite conclusion sometimes is reached. But because fair use requires such a specific inquiry, one cannot say that generally, a fair use.
- Open Chapter
Chapter 3 Patentability—Novelty and Statutory Bar 49 47 results (showing 5 best matches)
- An anticipating disclosure must be identical to the claimed invention to bar it. A rough similarity is not enough. “That which infringes, if later, anticipates, if earlier,” goes a patent law aphorism. . Just as it sometimes is doubtful whether a later product or process infringes a patent because the “infringement” does not identically repeat the invention, it sometimes will be argued that a reference does not anticipate because some details are different. A reference need not identify every property of an invention to anticipate it, though; it need only . The test for anticipation therefore mirrors the substantiality test of infringement. See § 8.1, infra. However, for a reference to anticipate, it must contain within the four corners of the document, all the limitations recited in the claim, and they must be arranged or combined in the same way.
- 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
- 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
- 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
- Foreign anticipation involves only prior patents or publications and it is accurately characterized as documentary anticipation—that is, it takes a printed form. A very limited publication, such as a manuscript deposited in a library, may constitute enough of a printed publication to qualify as anticipation. Oral publication is not enough, although handwritten information may be. Whether something is a printed publication for purposes of the foreign anticipation doctrine is determined by reference to the purposes of the doctrine: whether the document was to an extent that it added to the prior art. The information must be sufficiently
- Open Chapter
Chapter 1 The Foundations of Patent Protection 7 34 results (showing 5 best matches)
- The natural rights theory has a very different emphasis. Under this theory, the product of mental labor is by right the property of the person who created it. Having all title to the invention, the inventor has no obligation to disclose anything and has every right to be compensated therefor. In order to obtain disclosure—and thus allow for other, later, inventors to build upon the earlier creation—the government assures an exclusive right to profit from the invention. This theory, too, is supported at least in part by the Constitution, since it mentions the “rights” of inventors and states that the advancement
- The theoretical arguments relating to natural rights also have great force in the continuing debate over the patent system. Critics argue that it serves only to increase the monopoly power of large corporations which receive the bulk of modern patents and that the government is failing to bargain sharply enough on behalf of its citizens. Supporters, however, pointing to the Constitution’s reference to “rights” of inventors, argue that inventors have a natural right to their inventions and that to shorten periods of exclusive rights or to stiffen the test of inventiveness is akin to a taking of the inventor’s property and is unjust.
- 35 U.S.C.A. § 261
- Both of these theories, of course, are partially incomplete. The bargain theory denies any absolute right of the inventor to his productivity—he must accept the government bargain or have no protection at all. Likewise, the natural rights theory is inconsistent with the idea of a limited monopoly since, if the inventor has complete rights to the invention, it is not clear how the government can declare the invention public property after the patent expires.
- In time, the right to control various sectors of the market became a royal privilege, granted by the monarch in return for various benefits. These early “patent” monopolies were not concerned with invention, but, rather, with commerce. Thus, the “importation patent” became very common: the monarch would grant the privilege to practice a particular art or manufacturing process to a foreigner who brought new technical skills into the jurisdiction. The patentee frequently would be required to train a number of citizens in the new art. The term of the patent was almost always for a certain number of years.
- Open Chapter
Chapter 2 The Subject Matter of Patents 25 48 results (showing 5 best matches)
- , 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 , supra (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
- 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.”
- 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.
- In , 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 that the claim demonstrate novelty
- Open Chapter
Chapter 16 Subject Matter 267 41 results (showing 5 best matches)
- 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.
- A collective mark indicates either that goods or services are produced by members of a collective group or simply indicates membership in a particular group.
- Collective marks and certification marks tend to become coextensive when membership in the group is founded upon or relates in some way to certain standards relevant to quality or regional origin. For instance, a group of producers who base their membership requirements on regional location may obtain a collective mark indicating association with the group. But membership in the group, because of the qualifications for membership, inherently involves an identification of regional association. The mark would then indicate both that the producer was a member of the group (the function of the collective mark) and also that the product originated in a particular region (theoretically the only function of a certification mark). Thus a collective mark, to the extent that membership is premised on particular standards, in effect may certify the presence of those standards.
- Although it is not clear how a court or the Trademark Office would respond to the use of a collective mark in what is essentially a certification activity, service marks have been cancelled when they effectively function as collective marks. The cancellation in was based on fraud in representing that the applicant provided the service of bus transportation when, in fact, it was a membership organization. Only the members, not the applicant, actually provided the services. It is possible that an applicant who gained a collective mark and, by limiting membership rights, effectively certified the quality or origin of goods or services in a discriminatory way could be held fraudulent in applying for a collective mark when the mark identified and distinguished quality instead of membership.
- In
- Open Chapter
Chapter 12 Distinctiveness 189 54 results (showing 5 best matches)
- The claim of the prior user to rights in an area in which it has no established use is very much the same as a user who wishes to appropriate a mark merely by adopting it. In the undeveloped territory, the prior user (elsewhere) and the nonuser are functionally on an equal footing. Neither has established any use
- A second user therefore may establish a strong consumer identification in an area geographically removed from that of the first user. In a sense, then, the second user is really the first user within its geographical market. Thus, the rule of priority of appropriation frequently is modified to favor the second user, provided the second use was established in a distant geographical area. However, the second user will obtain rights only if that use was in
- 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 , 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 primary significance of a mark in terms of surname status must be measured with direct reference to the product and not in the abstract. Merely because a surname is very common does not mean that it is primarily a surname. As applied to a certain product, its association in the mind of the consumer is of controlling significance. Even a common name such as Jones, when applied to a particular product market, may evoke associations with the product. As long as the purchasing public associates the name with the product and not with its surname status, it is eligible for registration. Thus, acquisition of secondary meaning is central. Likewise, if a name is very famous, that, too, is not controlling. If a name such as Mozart is primarily perceived as a surname, a user could not register it until and only if the user succeeded in investing the mark with secondary meaning. But “Mozart” for apples would be registrable upon gaining secondary meaning even though non-apple-purchasers...
- 15 U.S.C.A.
- Open Chapter
Chapter 9 Remedies 167 9 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.A. §§ 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.
- 35 U.S.C.A. § 283
- 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, , 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 infringed.” . The Federal Circuit’s insistence on subjective bad faith and baselessness has been rejected by the Supreme Court, suggesting a single totality-of-the-circumstances test: “An ‘exceptional’ case, then, is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated”
- 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.
- 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. . 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 normally presumed for purposes of...
- Open Chapter
Chapter 8 Infringement 143 38 results (showing 5 best matches)
- Although good faith or ignorance is no defense for direct infringement, that is not the case with contributory infringement. Thus, it is a defense for an accused contributory infringer to show that he had no knowledge that the goods were substantially suitable only for infringement. Contributory infringement, however, is founded upon the sale of items for which there is no other substantial use other than in the patented invention. It therefore is unlikely that, at least with respect to anything but the simplest of inventions, a seller could market such items without knowledge that there was an infringement occurring. The statute redundantly, in fact in three ways, states the requirement that there be no substantial noninfringing uses for the suspect items by requiring that the article be “especially made or adapted,” “not a staple or commodity,” and not “suitable for substantial noninfringing use.”
- Therefore, a patent owner legitimately can sue for contributory infringement if a seller is vending a nonstaple item whose only substantial use is in connection with the patented device. The patent owner will be liable for misuse in this context only if he refuses to license the patented process except upon agreement to purchase items which have other uses, in other words, staple items.
- 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. . 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
- Open Chapter
Chapter 17 Infringement 289 36 results (showing 5 best matches)
- It is partly evidentiary and party equitable. As an evidentiary function, intent may be relevant in the close case. When an intentional act is involved, a court might justifiably conclude in a close case that confusion is likely. As an equitable measure, it is an important factor that the defendant acts in bad faith, so that the presence or absence of intent may determine whether an injunction will issue.
- confusion can be persuasive. The factors are interrelated. Thus, the nature of the mark may interact with the relative strength of the mark; for instance, a fanciful or arbitrary mark may receive more protection than a common phrase, partly because there is less of a public interest in preserving public rights in a fanciful mark than there is in a word or phrase that is a part of our language. At the same time, it is possible that a fanciful or arbitrary mark may become a much stronger mark than will a common phrase or word, simply because it is more recognizable and distinctive. Likewise, because intent is persuasive, intentional infringements of fanciful or arbitrary marks frequently are enjoined, because it is a justifiable inference that a second-comer did not just “happen upon” a fanciful mark.
- Whether the average consumer is likely to be confused by similar marks applied to similar products or services may depend upon the consumer and his environment. When dealing with “impulse” buying in a supermarket, for instance, where goods are stocked closely together, and in which the consumer may be relatively inattentive, confusion may be a likely and common phenomenon. When considering purchases of expensive automobiles or highly technical equipment in which consumers exercise sophisticated judgments, confusion may be an almost nonexistent phenomenon. Similarity of goods and similarity of marks are weighed in a scale that is adjusted by considering the character of the market; the scale is recalibrated as the sophistication of the market changes. The “discriminating purchaser” theory frequently is decisive. For instance, in an opposition between a registrant of the mark “Climatrol” for air conditioning equipment and an applicant for the mark “Climematic” for identical equipment,...
- Determining similarity of goods may involve defining the goods, as well as the relevant market. In a way, this process is closely related to the problem of defining the product and market in antitrust cases. The broader the market and product definition are, the more likely it is that goods will be found similar. For instance, in a case involving the marketing of men’s clothing by a prior user of the mark “Hyde Park” who claimed infringement by a later user of the identical mark on women’s clothing, the court found no infringement, largely by determining that men’s clothing is not similar to women’s clothing. . Had the court defined the goods as clothing instead of men’s clothing, the goods would have then been identical and the result may well have changed, for it would be difficult to deny infringement in a case in which both the goods and the mark are absolutely identical. Similarly, the distinction between men’s and women’s clothing may not, in the 21st century, be the same as...in
- That the parties market their products in wholly different ways, that is, retail and wholesale, may mean that confusion is impossible because definably different classes of customers exist. Of course, it also is true that there is no competition in such a case. If separate categories of customers exist who are aware of the different products or services and who may tend to associate the two in a general way, a court may decide to protect the deserving mark through a doctrine of expanded rights, despite the fact that there is no real confusion. A lack of competition is not necessarily decisive. Many modern courts find that irrelevant when trademark rights are subject to dilution. In these cases, courts tend to equate, perhaps illegitimately, similarity with confusion. . However, this position seems supported by a literal reading of the present Lanham Act, in which the former language, requiring likelihood of confusion as to the source of goods or services, was amended, abandoning any...
- Open Chapter
Chapter 26 Remedies 451 16 results (showing 5 best matches)
- The Copyright Act expressly provides for injunctive relief, to be fashioned in a way that is “reasonable to prevent or restrain infringement.”
- Under the 1976 Act, statutory damages are strictly within the plaintiff’s discretion. Plaintiff has the right to a minimum of $750 and a maximum of $30,000, according to what the court finds “just.” On the other hand, innocent infringers can prove their good faith and have the sum reduced to $200. At the same time, a court has the power to award as much as $150,000 if the infringement is found to be willful. That is, essentially, punitive damages. In certain cases involving a good faith belief that the defendant was exercising a fair use privilege, the court has the power to remit all damages.
- Monetary awards in copyright infringement actions are categorized under three headings: damages, profits, and statutory damages. Under the 1909 Act, a plaintiff was entitled to damages “as well as” profits, leading some courts to interpret this as meaning that a plaintiff could recover both. In , the plaintiff recovered his own actual damages (lost profits) and also recovered all of the profits received by the defendant. The present Act clearly is designed to avoid that duplication of damages. Under section 504(a), a plaintiff is entitled to actual damages plus profits that are “additional” to those damages. Section 504(b) makes it clear that profits should be added to actual damages only if they were “not taken into account in computing the actual damages.”
- , if the defendant claims that many of the profits were not due to the infringement but, instead, were due to its own creation, or to public domain material, or in any case, to elements not owned by the plaintiff, defendant must somehow establish how much of the profits are attributable to elements not owned by the plaintiff. In , it was found that defendants had infringed the plaintiff’s play when they produced a motion picture partly based on the play and an award of profits was made to the plaintiff. However, the total profits were reduced by eighty per cent because the court also found that only twenty per cent of the profits could be attributed to the plaintiff’s creation. The majority of profits were attributable to the fact that a number of famous stars were in the movie, and further reduction was due to the fact that the story itself consisted largely of a plot that was in the public domain. This approach clearly is contemplated under the current Act, but the burden is...
- 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.
- Open Chapter
Chapter 25 Formal Requirements 443 13 results (showing 5 best matches)
- For instance, in the case of the transmission of a championship game, the owners of the (future) copyright in that program effectively may prevent a threatened transmission of the program over a cable network by sending a notice to the cable company that registration is intended. If the cable company persists in promoting their planned transmission of the game, the owners then are allowed, by , to institute suit prior to registration and, in fact, prior to creation of the work itself (the live transmission of the game) in order to enjoin the threatened infringement. Without this provision, the requirement of prior registration would have made equitable relief impossible.
- 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.
- 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.
- 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.
- 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. . Under section 411 of the 1976 Act, one can sue an infringer despite refusal of the Copyright Office to
- Open Chapter
Chapter 19 Foundations of Copyright Protection 319 21 results (showing 5 best matches)
- Under the 1976 Act an author is protected as soon as a work is recorded in some concrete way, since the Act protects all expressions upon fixation in a tangible medium.
- All of the Acts have required deposit or registration of the protected work in one form or another either with a United States District Court, the Secretary of State, or, as is presently the case, the Register of Copyrights. At one time deposit was a prerequisite to protection but by 1909 deposit was merely a formality and became mandatory only to initiate an infringement suit. Registration has experienced a similar decline in significance.
- 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
- 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 became the right of an author to exclude all others from his unpublished works. Someone who purloined another’s unpublished manuscript, produced copies of another’s unpublished artistic creation, or published the score of an unpublished musical composition could be sued for infringement of the creator’s common law copyright. The common law copyright was perpetual and an author who decided not to publish and keep her creation to herself could prevent others from copying the work forever. In fact, the creator’s heirs likewise could prevent...
- Until recently, the United States always had granted protection in multiples of fourteen years. The 1909 Act had an initial term of twenty-eight years followed by a possible renewal for another twenty-eight years. The 1976 Act, however, adopted a lifetime-plus-fifty-years (now a lifetime-plus-seventy-years) period.
- Open Chapter
Chapter 6 Double-Patenting 107 5 results
- 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.
- 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. . A closely related issue is that of the “best-mode” disclosure requirement, see § 7.5, infra. Obviously, these two doctrines tend to interact. Likewise, inequitable conduct, see § 7.8, infra, may be 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, special bills, of...
- 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. . 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.
- 35 U.S.C.A. § 253
- Open Chapter
Table of Cases xv 60 results (showing 5 best matches)
Index 487 7 results (showing 5 best matches)
Outline 5 results
- Publication Date: June 1st, 2018
- ISBN: 9781634599023
- Subject: Intellectual Property
- Series: Nutshells
- Type: Overviews
- Description: Authors Michael Davis and famed Harvard professor Arthur Miller provide authoritative coverage on the foundations of patents, trademarks, and copyright laws. Authoritative treatment of all relevant doctrines and the latest statutory and judicial changes. Text further addresses relevant torts, property, antitrust, regulatory, and federalism intersections with intellectual property law.